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IN THE HIGH COURT OF DELHI
Manmohan Singh, J.
Sanofi India Ltd. - Appellant
Versus
Universal Neutraceuticals Pvt. Ltd. - Respondent
I.A. No. 11376/2014 in CS(OS) No. 1808/2014
Decided On : 15-10-2014
Plaintiffs filed a suit for permanent injunction restraining infringement of trademark, copyright, passing off, unfair competition, dilution, tarnishment etc. against the defendant. The defendant company was formed by ex-employees of plaintiff No. 2 whose services were taken over by plaintiff No. 1 consequent on the transfer of plaintiff No. 2's nutraceutical business to plaintiff No. 1. The defendant has adopted a trade name UNIVERSAL and the impugned trade dress in respect of the said products and business is approximately 42 years subsequent to plaintiff No. 2's adoption of the trade mark/name UNIVERSAL and is clearly in bad faith. The defendant's use of the plaintiff's trade mark/name UNIVERSAL, either in isolation or in conjunction with the word NEUTRACEUTICALS is bound to cause confusion among the relevant class of consumers. The defendant's adoption of the trade name UNIVERSAL and the impugned trade dress in respect of the said products and business is approximately 42 years subsequent to plaintiff No. 2's adoption of the trade mark/name UNIVERSAL and is clearly in bad faith. The malafide nature of the adoption of the impugned name and trade dress by the defendant is demonstrated by the formation of the defendant company by ex-employees of the plaintiffs. The defendant's use of a trade mark/name identical to the plaintiffs clearly constitutes infringement and amounts to passing off the defendant's products and business as that of the plaintiffs and will inevitably cause confusion amongst the consumers. Irreparable loss, damage and injury would be caused to the plaintiff's goodwill, reputation and business if the defendant is not restrained by an immediate interim injunction. The Court held that the plaintiffs have been able to make out a strong prima facie case in its favour who are the proprietors of the trademark UNIVERSAL registered in their favour. The balance of convenience also lies in favour of the plaintiffs. The use of the mark UNIVERSAL by the defendant company, that has been formed by ex-employees of plaintiff No. 2, would cause irreparable loss and injury to the plaintiffs, in case the interim order is not passed. Accordingly, till further orders, the defendant, its partners, franchises, officers, servants, agents, distributors, stockists, representatives and all others acting for and on its behalf, are restrained from using the trade mark/name UNIVERSAL or any other mark/name that is deceptively similar thereto in any manner including as a part of its corporate name/trading style and/or domain name or doing any other act amounting to infringement of the plaintiffs' registered trademark and/or passing off its products and/or business as that of the plaintiffs'. Since the plaintiffs have been able to make out a prima facie case of infringement against the defendant, that admittedly comprises of the ex-employees of the plaintiff, under Section 29(5) of the Act, injunction as prayed for is granted in favour of the plaintiffs, the defendant is given one month's time to change its corporate/trade name from Universal Neutraceuticals Pvt. Ltd.
Fact of the Case:
Plaintiffs filed a suit for permanent injunction restraining infringement of trademark, copyright, passing off, unfair competition, dilution, tarnishment etc. against the defendant. The defendant company was formed by ex-employees of plaintiff No. 2 whose services were taken over by plaintiff No. 1 consequent on the transfer of plaintiff No. 2's nutraceutical business to plaintiff No. 1. The defendant has adopted a trade name UNIVERSAL and the impugned trade dress in respect of the said products and business is approximately 42 years subsequent to plaintiff No. 2's adoption of the trade mark/name UNIVERSAL and is clearly in bad faith.
Finding of the Court:
The Court held that the plaintiffs have been able to make out a strong prima facie case in its favour who are the proprietors of the trademark UNIVERSAL registered in their favour. The balance of convenience also lies in favour of the plaintiffs. The use of the mark UNIVERSAL by the defendant company, that has been formed by ex-employees of plaintiff No. 2, would cause irreparable loss and injury to the plaintiffs, in case the interim order is not passed. Accordingly, till further orders, the defendant, its partners, franchises, officers, servants, agents, distributors, stockists, representatives and all others acting for and on its behalf, are restrained from using the trade mark/name UNIVERSAL or any other mark/name that is deceptively similar thereto in any manner including as a part of its corporate name/trading style and/or domain name or doing any other act amounting to infringement of the plaintiffs' registered trademark and/or passing off its products and/or business as that of the plaintiffs'. Since the plaintiffs have been able to make out a prima facie case of infringement against the defendant, that admittedly comprises of the ex-employees of the plaintiff, under Section 29(5) of the Act, injunction as prayed for is granted in favour of the plaintiffs, the defendant is given one month's time to change its corporate/trade name from Universal Neutraceuticals Pvt. Ltd.
Issues: Whether the defendant's use of the trade mark/name UNIVERSAL, either in isolation or in conjunction with the word NEUTRACEUTICALS is likely to cause confusion among the relevant class of consumers.
Ratio Decidendi: The defendant's use of a trade mark/name identical to the plaintiffs clearly constitutes infringement and amounts to passing off the defendant's products and business as that of the plaintiffs and will inevitably cause confusion amongst the consumers. Irreparable loss, damage and injury would be caused to the plaintiff's goodwill, reputation and business if the defendant is not restrained by an immediate interim injunction.
Final Decision: Accordingly, till further orders, the defendant, its partners, franchises, officers, servants, agents, distributors, stockists, representatives and all others acting for and on its behalf, are restrained from using the trade mark/name UNIVERSAL or any other mark/name that is deceptively similar thereto in any manner including as a part of its corporate name/trading style and/or domain name or doing any other act amounting to infringement of the plaintiffs' registered trademark and/or passing off its products and/or business as that of the plaintiffs'. Since the plaintiffs have been able to make out a prima facie case of infringement against the defendant, that admittedly comprises of the ex-employees of the plaintiff, under Section 29(5) of the Act, injunction as prayed for is granted in favour of the plaintiffs, the defendant is given one month's time to change its corporate/trade name from Universal Neutraceuticals Pvt. Ltd.
JUDGMENT :
Manmohan Singh, J.-
1. The plaintiffs have filed a suit for permanent injunction restraining infringement of trademark, copyright, passing off, unfair competition, dilution, tarnishment etc. against the defendant.
2. By way of this order I propose to decide the application being I.A. No. 11376/2014 under Order 39 Rule 1 and 2 read with Section 151 CPC filed by the plaintiffs seeking interim injunction against the defendant restraining from using the mark/name UNIVERSAL or any other mark similar thereto including the domain name or doing any other act amounting to infringement of plaintiff's registered trade mark and/or passing off its products and business as that of the plaintiffs.
Case of the plaintiffs
3. Plaintiff No. 1 was originally incorporated under the trading style of Hoechst Fedco Pharma Pvt. Ltd. in May, 1956. Plaintiff No. 1's corporate name was changed to Sanofi India Ltd. with effect from May 11, 2012 consequent to a change of name of its parent company from 'Sanofi Aventis' to 'Sanofi' in May, 2011, in an effort to provide a common identity to the Sanofi Group globally. Plaintiff No. 1 is a strong and cohesive entity in the field of pharmacy and medicine and is engaged in the research, development, manufacture and marketing of prescription based pharmaceutical products as well as over-the-counter (OTC) medication. It is also urged that plaintiff No. 1 has a strong presence in seven major therapeutic areas viz. Diabetes, Oncology, Cardiovascular diseases, Thrombosis, Central Nervous System disorders and Internal Medicine.
Plaintiff No. 2 was incorporated in 1971 and is one of the leading pharmaceutical companies in India and is engaged in the manufacture and distribution of pharmaceutical and nutraceutical products. Plaintiff No. 2 is the holder and proprietor of the trademark/name UNIVERSAL in relation to inter alia pharmaceutical and nutraceutical products which constitute an integral and dominant part of plaintiff No. 2's corporate name/trading style since 1971.
4. Plaintiff No. 2's trademark UNIVERSAL is used in relation to a wide range of plaintiff No. 2's pharmaceutical and nutraceutical products such as UNIVERSAL PRIMOSA, UNIVERSAL'S ICE GEL etc. Plaintiff No. 2 has secured registration of the UNIVERSAL family/series of marks in India. The details whereof are provided in Annexure-A to the plaint.
5. Plaintiff No. 2 has developed a series of trade dresses for the packaging/cartons and strips of its pharmaceutical products which comprise a distinct layout, get up, colour scheme and arrangement of features closely resembling one another. One of these trade dresses is used in relation with plaintiff No. 2's Soft Gel capsules marketed under the trademark UNIVERSAL PRIMOSA (hereinafter referred to as "the PRIMOSA trade dress") the essential elements whereof are as follows:
b) A bright pink device comprising an artistic rectangle with a curved lower right corner, hereinafter referred to as the 'Curved Rectangle Device'.
c) The trade mark PRIMOSA prominently appearing within the Curved Rectangular Device.
6. The PRIMOSA trade dress was created at the instance of the plaintiff No. 2 in exchange for consideration by an independent agency A.V. Graphics and constitutes an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957. Plaintiff No. 2 is therefore the proprietor of the said trade dress and is entitled to the exclusive reproduction thereof.
7. In November, 2011 plaintiff No. 1 entered into an agreement to acquire plaintiff No. 2's business of marketing and distribution of branded nutraceutical formulations in India. As per the terms of the acquisition, plaintiff No. 2 transferred its entire nutraceutical portfolio comprising over 40 branded formulations representing key categories within the nutraceutical market such as antioxidants, vitamins and mineral supplements, anti-arthritics, anti-osteoporotics, liver tonics and other nutrients to plaintiff
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