JUDGMENT :

Sanjeev Narula, J.

The present suit concerns Plaintiffs' statutory and common law proprietary rights over the trademark ZENTEL and violation thereof by the Defendants on account of use of a deceptively similar mark FENTEL for identical pharmaceutical preparation.

CASE OF THE PLAINTIFF

2. The case as set out in the plaint is that the Plaintiffs (together and through their subsidiaries/affiliates world-wide), are engaged in the business of manufacturing and marketing a wide range of products, inter alia, pharmaceutical and medicinal preparations and health care products of high quality. Plaintiff No. 1 manufactures and markets various pharmaceutical products in India including, but not limited to, BETNOVATE, CEFTUM, FEFOL, ZENTEL etc. Plaintiff No. 2 (Smith Kline & French Laboratories Limited) is a company incorporated under the laws of the United Kingdom and involved in the business of manufacturing, fabricating, or processing of drugs in pharmaceutical preparations for human or veterinary use. Plaintiffs Nos. 1 and 2 are members of GlaxoSmithKline group of Companies of which GlaxoSmithKline Plc (hereinafter referred to as "GlaxoSmithKline") is the parent Company. GlaxoSmithKline was formed following the merger of Glaxo Wellcome Plc and SmithKline Beecham Plc and is one of the world's largest pharmaceutical Companies.

3. The trademark ZENTEL registered in the name of Plaintiff No.2 under registration No. 361874 in class 5 since May 14, 1980 is an invented word having no dictionary meaning and has a highly distinctive character. The mark is being used in India by the Plaintiffs since 1986 in respect of Albendazole tablets and syrups meant for de-worming purposes in human beings. The said product under the trademark ZENTEL, is extremely well known in this category, both in India and the world over.

4. The aforesaid trademark has been duly renewed from time to time and is subsisting, conferring on the Plaintiffs the exclusive right to its use and to restrain use of any identical or deceptively similar marks by unauthorized persons. Being a 'Part A' registration and over seven years old, the aforesaid registration is conclusively valid by virtue of the provisions of Section 32 of the Trade and Merchandise Marks Act, 1958. Plaintiffs have over the years entered into Registered User Agreements which permitted the use inter alia of the trade mark ZENTEL by Plaintiff No.1 in India, the most recent of which was entered into on 29th October, 1993. Plaintiffs have applied to the Trade Marks Registry for recording of the said Agreement. The trademark ZENTEL, among others, is being used under a Technical Collaboration Agreement with SmithKline Beecham Plc, which was entered into on 1st June 1995.

5. In March 2003, Plaintiffs' attention was drawn to the product FENTEL manufactured and sold by the Defendants. Inquiries revealed that Defendant No. 1, Mr. Naval Kishore Goyal, is the Director of Defendant No.2 company, Faith Pharmaceuticals Ltd., which is engaged in the manufacture and marketing of Albendazole preparation under the mark FENTEL which are being distributed/marketed in various parts of India. Defendant No.3, Mr. Harish Goyal of M/s Samson Laboratories (P) Ltd, is engaged in the manufacturing and marketing of Albendazole preparation under the mark FENTEL for and on behalf of Defendant No. 2.

CASE OF THE DEFENDANTS

6. Defendants contend that they are proprietors of the Trade Mark FENTEL since its introduction in April, 1998. The said Trade Mark is being used only in respect of Albendazole tablets and not for any other purpose. It has acquired substantial reputation in the market due to its high quality, effectiveness and competitive price. Defendants have spent huge amounts of money and extensive resources on clinical trials, research and development, obtaining permissions from various Govt. authorities, applying for registration of the Trade Mark, subsequent order and launching the product in the market and further steps in relati