The judgment established the principle that a descriptive mark can be granted protection if it acquires a secondary meaning, and in the case of medicinal products, confusion and deception among consumers should be avoided.

JUDGMENT :

Prathiba M. Singh, J.

I.As. 7708/2019 (u/O XXXIX Rules 1 & 2 CPC) & 8563/2019 (u/O XXXIX Rules 3A and 4 CPC)

The present order disposes of the applications under Order XXXIX Rules 1 and 2 CPC and Order XXXIX Rules 3A and 4 CPC.

Brief Facts

2. The Plaintiff-Emami Ltd. has filed the present suit seeking protection of the mark "ZANDU PANCHARISHTA" and "PANCHARISHTA". The case of the Plaintiff is that the product "ZANDU PANCHARISHTA" was launched in the year 1968 by Zandu Pharmaceutical Works ltd. This company was acquired by the Plaintiff-Emami Ltd. sometime in 2008. Thus, in the present suit, reference to the Plaintiff would include its predecessor-in-interest. The term "PANCHARISHTA" is stated to have been coined by the Plaintiff and is claimed to be an inherently distinctive trademark. The product sold under the said mark "PANCHARISHTA" with the house-mark "ZANDU" is an ayurvedic digestive tonic. It treats consumers with ailments including digestive problems, gas, heaviness in the stomach, flatulence, belching, loss of appetite and constipation.

3. The Plaintiff admits that the product is based on the traditional Asava Arishtas, namely, Drakshasava, Kumariasava, Lohasava, Dashmoolarishta and Ashwagandharish. The Plaintiff further claims that the product has been developed with a unique formulation containing 36 ingredients, including water, using the traditional ayurvedic science of Asavaarishta.

4. The "ZANDU PANCHARISHTA" label has been registered since 1986, and the word marks "ZANDU PANCHARISHTA" and "ZANDU PANCHARISHTA PLUS" have been registered since 2010 and 2014, respectively, in Class 5 for ayurvedic, herbal and medicinal preparations and similar goods. The sales of the Plaintiff's products have risen over the years and have been between 70 to 100 crores per year in the last five years. The Plaintiff claims that due to the long and continuous use of over 50 years, the trademark "PANCHARISHTA" is exclusively associated with the Plaintiff and it enjoys statutory and common law rights in the same.

5. On 13th April, 2019, the Plaintiff came across the Defendant's product under the name "PANCHARISHTA" used along with the house-mark "BAIDYARAJ". The Plaintiff immediately filed the present suit, seeking a permanent injunction restraining infringement of its registered trademark, passing off and other reliefs. This Court, on 27th May, 2019, after hearing the ld. counsels for both parties, granted an ex-parte ad-interim injunction in the following terms:

"12. On the basis of the documents filed on record and those that have been handed over today in Court, the Court is satisfied that the Plaintiff has made out a prima face case for grant of an ex-parte injunction. These being medicinal preparations, the consumers who consume the Plaintiffs product Zandu Pancharishta are likely to be confused with the Defendants? Baidyaraj Pancharishta product which is meant for similar ailments. Accordingly, till the next date, the Defendant is restrained from using, manufacturing or selling any medicinal preparations bearing the mark 'Pancharishta'."

6. The Defendant moved an application under Order XXXIX Rules 3A and 4 CPC and during the course of arguments, the Defendant proposed a new label and name, however, since no amicable resolution could be found, the matter was heard on merits. Submissions of Parties

7. It is the submission of the ld. counsel for the Defendant, Mr. Pravin Anand, arguing the application under Order 39 Rule 4 CPC, that the word "PANCHARISHTA" is based on traditional ayurvedic texts. He relies on an extract from Sarngadhara-Samhita, published from Varanasi, wherein "Arishta" has been described as a drug which is prepared using water and boiling the same. He submits that since the word "Arishta" is an ayurvedic preparation, no monopoly can be claimed or granted in respect of the same.

8. He further submits that during the course of registration of the "ZANDU PANCHARISHTA" label mark, the trademark agent appearing for the