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2014 Supreme(Del) 3402
IN THE HIGH COURT OF DELHI
MANMOHAN SINGH, J.
Cadila Healthcare Ltd. - Appellant
Versus
Hari Om Shukla And Others - Respondent
CS (OS) No. 3527 of 2012
Decided on : 10-10-2014
For the Appellant :Bitika Sharma and Ujjwala Jeremiah, Advocates
The central legal point established in the judgment is the protection of trademark rights, the prevention of infringement and passing off, and the award of damages to compensate for loss of reputation and goodwill.
Headnote:
TRADEMARK - Infringement - Medicinal Preparations - PANTODAC - [Trade Marks Act, 1999, Section 29(4), Section 35] - The court discussed the plaintiff's rights in the trademark PANTODAC, the defendants' adoption of the deceptively similar mark PANTADONE-OD, and the deliberate and dishonest use by the defendants. The court highlighted the plaintiff's extensive use and distinctiveness of the trademark, the potential confusion among consumers, and the deliberate attempt by the defendants to trade upon the plaintiff's reputation and goodwill. The court granted a decree of permanent injunction and awarded both ordinary and exemplary damages to the plaintiff.
Fact of the Case:
The plaintiff filed a suit for permanent injunction against the defendants for infringement of trademark PANTODAC and passing off. The plaintiff, a well-known pharmaceutical company, had exclusive rights in the trademark PANTODAC for medicinal preparations of the drug Pantoprazole. The defendants adopted a deceptively similar mark PANTADONE-OD for identical goods, claiming use since 2009, which created confusion among consumers.
Finding of the Court:
The court found in favor of the plaintiff, granting a decree of permanent injunction and awarding both ordinary and exemplary damages to the plaintiff. The court held the defendants liable for deliberate and dishonest infringement, causing loss to the plaintiff's reputation and goodwill.
Issues: The issues involved the infringement of the plaintiff's trademark, the deliberate adoption of a deceptively similar mark by the defendants, and the confusion created among consumers.
Ratio Decidendi: The court's decision was based on the plaintiff's exclusive rights in the trademark, the deliberate and dishonest adoption of the deceptively similar mark by the defendants, and the potential confusion among consumers, leading to the grant of permanent injunction and award of damages to the plaintiff.
Final Decision: The court granted a decree of permanent injunction in favor of the plaintiff and awarded both ordinary and exemplary damages, along with costs of the suit, while rejecting the other prayers.
JUDGMENT :
Manmohan Singh, J.
The plaintiff has filed a suit for permanent injunction restraining infringement of trademark "PANTODAC", passing off, dilution, rendition of accounts, delivery etc. against the defendants.
2. The matter was listed on 20th December, 2012 before Court who after hearing restrained the defendants from launching the medicinal preparation under the mark PANTADONE-OD if the same has not been launched in the market till date.
Case of the plaintiff.
3. The plaintiff is a successor to the business, trademarks, goodwill, assets and liabilities of the erstwhile Cadila Group of companies, including Cadila Chemicals Ltd. The plaintiff is a well known company in India engaged in the manufacturing and marketing of various drugs, pharmaceutical formulations, vaccines and other related products under various unique and distinctive brand names. The plaintiff and its affiliates have several brands that feature amongst the top 300 pharmaceutical brands in India.
4. The plaintiff has proven expertise in manufacturing and marketing different dosage forms such as solid dosage forms, injectables, metered dose inhalers, dry powder inhalers, transdermal patches, suppositories and oncology formulations through three multi-therapy divisions and eleven speciality divisions - Zydus Cadila, Zydus Aalidac, German Remedies, Zydus Biogen, Zydus Neurosciences, Evona Respicare, Alidac Corza, Alidac Fortiza, Zydus Nutriva, Zydus Synovia and Liva Healthcare Limited. The gross sales turnover of the plaintiff for the year 2009-2010 was around Rs. 3700 crores.
5. The plaintiff also exports its products to more than 30 countries including USA, Japan, Brazil, Europe, South Africa etc. The plaintiff's research activities have resulted into more than 400 patents related to new drug discoveries, drug delivery systems and also in the field of biotechnology products, in India and abroad and more than 75 patent applications filed by the plaintiff have been accepted and patents granted in various countries including USA, Japan, European Union etc.
6. Among the important brand names coined and adopted by the plaintiff is the trademark PANTODAC which is a registered trademark since the year 1996, and has been used exclusively, extensively and continuously since then by the plaintiff in respect of pharmaceutical preparations of the drug Pantoprazole. A copy of the Legal Proceedings Certificate of the same issued by the Trade Marks Registry has been placed on record and details of the registrations are as under:
7. It is averred by the plaintiff that the trademark PANTODAC is used for the preparation of a drug 'Pantoprazole' used for the treatment of Gastro Esophageal Reflux Disease (GERD) and Peptic Ulcers. The drug Pantoprazole was developed by Altana Pharma AG (owned by Nycomed) and is currently manufactured and marketed in India by the plaintiff under a license from Altana Pharma AG and is sold under the brand name PANTODAC. The drug is available by prescription in tablet form and is also available for intravenous use.
8. The plaintiff is manufacturing and selling the formulation under the trademark PANTODAC and its variants such as PANTODAC FAST, PANTODAC 40, PANTODAC 20 and PANTODAC IV etc.
It is averred that the trademark PANTODAC has acquired distinctiveness in the trade as a result of long, extensive and continuous use since as early as the year 1999. The plaintiff has also acquired enormous goodwill and reputation in trademark PANTODAC.
9. It is further averred that the plaintiff was the first to coin and adopt the trademark PANTODAC for its product. The stated trademark of the plaintiff is novel, fancy and invented word/coined mark which has gained immense public reputation in the name of plaintiff.
10. The plaintiff has been protecting trademark PANTODAC by filing various suits in different courts and notice of oppositions against the registration of identical and/or deceptively similar trademarks before the Trade Mark Office. The rights of the pl
