The court emphasized the importance of protecting registered trademarks and preventing infringement, while also considering the willingness of the parties to reach an agreement.

PRATHIBA M. SINGH, J.

1. The present suit for permanent injunction, restraining passing off, infringement of trademark, delivery up, rendition of accounts and damages has been filed by the Plaintiff in respect of its mark SCABE-LICE. According to the Plaintiff, the mark was coined in 2006 in respect of pharmaceutical preparations for treatment of skin infections. Paragraph 3 of the plaint avers that the trademark of the Plaintiff was coined by telescoping the words SCABIES and LICE.

2. The Plaintiff claims to be using the mark since January, 2008 and has a substantial turnover of Rs. 4.50 crores in 2012-13. The Plaintiff also claims to be advertising the mark extensively. The Plaintiff’s mark is a registered trademark under the registration no. 1514549. The trademark registration certificate for the mark SCABE-LICE has been placed on record. A perusal of the certificate also shows that the same is registered as of 18th December, 2006. The sales figures of the Plaintiff have also been placed on record along with the copies of invoices.

3. The Plaintiff claims to have come to know of the Defendant’s use of the mark SCABILICE in August, 2013. The only difference between the Plaintiff’s and Defendant’s marks is the substitution of the letter ‘E’ with ‘I’. A cease and desist notice was issued by the Plaintiff, which was replied to by the Defendant. However, since the dispute was not resolved, the present suit was filed by the Plaintiff.

4. Vide order dated 21st January, 2014, this Court passed an ex-parte ad interim injunction order restraining the Defendant in the following terms:

“The plaintiff has filed the present suit for permanent injunction for restraining the defendants from infringing the registered trademark of the plaintiff. The case of the plaintiff is that the plaintiff coined and adopted the mark SCABE-LICE in respect of medicinal and pharmaceutical preparation in the year 2006. The mark was got registered with the Registrar of Trademarks under Registration No. 1514549. As per the plaintiff, the annual sale of the plaintiff in respect of the said mark is over Rs. 4.5 crores.

The plaintiff claims to have sold medicinal and pharmaceutical preparation under the trademark SCABE-LICE across the length and breadth of the country. In support of the said claim, the plaintiff has placed on record the Registration Certificate and selective invoices for the sale of the product ranging from the period 2008 till date. The plaintiff has also placed on record various advertisements and materials prima facie evidencing the continuous use of the mark SCABE-LICE.

The plaintiff contends that the defendant has recently adopted a deceptively similar trade mark SCABILICE. Learned counsel for the plaintiff submits that the said adoption is mala- fide and with the intention of encroaching upon the goodwill of the plaintiff. He further submits that the plaintiff even issued a cease and desist notice dated 05.08.2013 setting up their claim and also stating that the product was launched by them in the year 2006. In response to the cease and desist notice, the attorneys of the defendant, in the first instance, asked for certain details and documents from the plaintiff vide their email dated22.08.2013. The plaintiff duly supplied all the materials to the attorneys vide their letter dated 05.08.2013 and reiterated their stand that they had adopted the mark in the year 2006 much prior to the adoption by the defendants. In response to the cease and desist notice and the material supplied, the defendants vide letter dated 29.10.2013 disputed the claim of the plaintiff only on the merits of the matter but did not refute that the adoption of the mark by the plaintiff was in the year 2006,much prior to the adoption by the defendants. In my view, the marks, prima facie, are similar inasmuch as there is a phonetic similarity and even visual similar