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2018 Supreme(Del) 458
IN THE HIGH COURT OF DELHI AT NEW DELHI
JAYANT NATH, J.
Sun Pharma Laboratories Ltd. – Plaintiff
Versus
Lupin Ltd. & Anr. – Defendants
CS(COMM) 918 of 2016
Decided On : 19-02-2018
For the Plaintiff : Mr. Hemant Singh, Ms. Mamta Jha and Mr. Waseem Shuaib Ahmed
For the Defendants : Mr. C.M. Lall, Mr. Ankur Sangal, Ms. Pragya Mishra
The main legal point established in the judgment is the importance of establishing substantial goodwill and reputation in the market for a trade mark, the rights of prior users, and the principles governing the law of passing off.
Headnote:
TRIVOLIB - Infringement of Trade Mark - Trade Marks Act, 1999 - Section 2(1)(zg), Section 28(3), Section 124(5) - The court discussed the infringement of the plaintiff's trade mark TRIVOLIB by the defendant's mark TRI-VOBIT. The court analyzed the provisions of the Trade Marks Act, 1999, and emphasized the rights of prior users and the principles governing the law of passing off. The court found that the plaintiff had established a prima facie case of substantial goodwill and reputation in the market and that the defendant's mark was phonetically and structurally similar to the plaintiff's trade mark. The court also dismissed the defendant's plea that it was a prior user of the mark VOBIT and had only added a prefix TRI, emphasizing that the full words had to be compared and not a part of the word.
Fact of the Case:
The plaintiff sought a permanent injunction against the defendants from dealing with medicinal preparations under the mark TRI-VOBIT, claiming infringement, passing off, and unfair competition. The plaintiff alleged that it had substantial goodwill and reputation in the market for its trade mark TRIVOLIB, used for the treatment of non-insulin diabetic patients. The defendants argued that the plaintiff had no right to seek injunction against the combination of TRI and VOBIT, as the defendant was a prior user of the mark VOBIT and had only added a prefix TRI.
Finding of the Court:
The court found that the plaintiff had established a prima facie case of substantial goodwill and reputation in the market and that the defendant's mark was phonetically and structurally similar to the plaintiff's trade mark. The court also dismissed the defendant's plea that it was a prior user of the mark VOBIT and had only added a prefix TRI, emphasizing that the full words had to be compared and not a part of the word.
Issues: The issues included the infringement of the plaintiff's trade mark TRIVOLIB by the defendant's mark TRI-VOBIT, the rights of prior users, and the principles governing the law of passing off.
Ratio Decidendi: The court emphasized the rights of prior users and the principles governing the law of passing off. It found that the plaintiff had established a prima facie case of substantial goodwill and reputation in the market and that the defendant's mark was phonetically and structurally similar to the plaintiff's trade mark. The court also dismissed the defendant's plea that it was a prior user of the mark VOBIT and had only added a prefix TRI, emphasizing that the full words had to be compared and not a part of the word.
Final Decision: The court allowed the plaintiff's application for a permanent injunction and confirmed the interim order, while dismissing the defendant's application.
JAYANT NATH, J.
IA Nos. 19585/2014 (u/O 39 R 1 & 2 CPC) & 20124/2014 (u/O 39 R 4 CPC)
1. This suit is filed by the plaintiff seeking a decree of permanent injunction restraining the defendants, etc. from dealing with any medicinal preparations under the impugned mark TRI-VOBIT or any other mark which is phonetically or deceptively similar to the plaintiffs trade mark TRIVOLIB. Other connected relief’s are also sought.
2. Along with the suit, the plaintiff filed IA No. 19585/2014 under Order 39 Rules 1 and 2 CPC. This application along with the suit came up for hearing on 01.10.2014 when this court passed an interim injunction restraining the defendants, etc. from dealing in medicinal preparations under the trade mark TRI-VOBIT or any other trade mark which may be deceptively similar to the plaintiffs trade mark TRIVOLIB till further orders.
3. The defendants thereafter filed IA No. 20124/2014 under Order 39 Rule 4 CPC for vacation of the stay. As the matter was adjourned, the defendants filed an appeal before the appellate court being FAO (OS) 446/2014 seeking to impugn the order dated 01.10.2014. The appeal was disposed of on 17.10.2014 with the direction to the learned Single Judge to endeavour to decide the application expeditiously. The defendants were also permitted to liquidate its existing stock of TRI-VOBIT within a period of six months.
4. The case of the plaintiff is that it is a wholly owned subsidiary of Sun Pharmaceutical Industries Ltd. and in order to strengthen its organizational structure of Domestic Formulation Undertaking, Sun Pharmaceutical Industries Ltd. vide Scheme of Arrangement, spun off its domestic formulation division undertaking including intellectual property thereof to the plaintiff. The Scheme of arrangement was approved by the Bombay High Court vide order dated 03.05.2013. Hence, the plaintiff became the proprietor and owner of all the intellectual property rights of Sun Pharmaceutical Industries Ltd. for the domestic formulation undertaking activities. The plaintiff has recorded itself as the subsequent proprietor of the trade marks with the Trade Marks Registry.
5. It is pleaded that the plaintiff has one preparation (through its predecessor in business) which is marketed under the trade mark TRIVOLIB which is a coined mark. The medicine is used for treatment of non-insulin diabetic patients. The medicine contains salts, namely, Gilmepiride, Voglibose and Metformin Hydrochloride. It is pleaded that the mark TRIVOLIB was coined by the plaintiff as a trade mark in August 2011 and enjoys inherent distinctiveness indicating trade origin. The said trade mark is said to have been used extensively and commercially in the course of trade of medicinal preparations since 2011. The trade mark TRIVOLIB is also registered in Class V vide registration dated 12.08.2011. The statement of annual sales and sales promotional expenditure of the drug using the said trade mark has been stated. It is pleaded that from 01.10.2011 till 31.03.2012, the plaintiff had a sale of Rs.2.86 crores. From 01.04.2012 to 31.03.2013, the sales figures jumped up to Rs.13.39 cores and the next year, it jumped up to Rs.24.39 crores. It is pleaded that the consumers at large distinguish, identify and associate TRIVOLIB with the plaintiff which is a well known trade mark as per the provisions of Section 2(1) (zg) of the Trade Marks Act, 1999.
6. Defendant No.1 is said to be a company which is marketing the medicines manufactured by defendant No.2. It is pleaded that sometimes in the third week of September 2014, the plaintiff came across the medicine of the defendants under the impugned mark TRI-VOBIT 1 and TRI-VOBIT 2 selling in Delhi. The said medicine also contains a composition of the same salts, namely, Voglibose, Metformin Hydrochloride and Gilmepiride and is also for the same ailment, namely, diabetes. It is pleaded that the defendants having seen the success of the plaintiffs medicine have adopted the impugned trade mark TR
