2021 Supreme(Del) 1368

IN THE HIGH COURT OF DELHI AT NEW DELHI
J.R. Midha, J.
Nishi Gupta - Appellant
Versus
M/s. Cattle Remedies - Respondent
W.P. (C) No. 13710 of 2018; C.M. Appl No. 53530 of 2018
Decided On : 04-06-2021

Headnote:

The petitioner's trade mark UTROTON is deceptively similar to the registered trade mark UTEROTONE of the respondent. The petitioner has mala fidely dropped the alphabet 'E' from the registered trade mark UTEROTONE of the respondent but such act of the petitioner has made no difference to the visual, structural and phonetic similarity between the two marks. The adoption of the trade mark UTROTON by the petitioner is dishonest and fraudulent which is clear from the fact that the respondent has adopted identical cans for packing and a deceptively similar artistic label as that of the respondent in as much as each and every leading feature of the respondent's packaging including the red packing cans, depiction of petitioner's impugned trade mark UTROTON in a shaded rectangle having two thick parallel lines on the top and below of the rectangle, inscription of the impugned trade mark UTROTON in Hindi language and depiction of a device of a cow on the top and the centre of the petitioner's impugned label have been similarly reproduced. On a plain visual comparison of the two competing products, it is apparent that the petitioner has kept the said distinctive product of the respondent as a model/guide while preparing its own infringing impugned product thereby violating the common law and prior statutory rights of the respondent in its aforementioned registered trade mark UTEROTONE amounting to infringement of the respondents said registered trade mark. The petitioner has used the words 'Uterine Tonic below the mark UTROTON whereas the respondent is using the words 'Ecbolic & Uterine Tonic below its mark. The photographs of the packing colour and designs of both the parties are reproduced hereunder :

Fact of the Case:

The petitioner adopted a deceptively similar trade mark UTROTON and got it registered in Class 31 in 2010 claiming user since 2007. The respondent is the proprietor of the registered trade mark UTEROTONE registered in Class 5 as No.562099 on 18th November, 1991. The respondent adopted this trade mark for its veterinary preparations in the year 1968. The respondent has filed the relevant documents. This Court is satisfied that the respondent adopted the trade mark UTEROTONE in 1968 and is in continuous use since then.

Finding of the Court:

The petitioner's trade mark UTROTON is deceptively similar to the registered trade mark UTEROTONE of the respondent. The petitioner has mala fidely dropped the alphabet 'E' from the registered trade mark UTEROTONE of the respondent but such act of the petitioner has made no difference to the visual, structural and phonetic similarity between the two marks. The adoption of the trade mark UTROTON by the petitioner is dishonest and fraudulent which is clear from the fact that the respondent has adopted identical cans for packing and a deceptively similar artistic label as that of the respondent in as much as each and every leading feature of the respondent's packaging including the red packing cans, depiction of petitioner's impugned trade mark UTROTON in a shaded rectangle having two thick parallel lines on the top and below of the rectangle, inscription of the impugned trade mark UTROTON in Hindi language and depiction of a device of a cow on the top and the centre of the petitioner's impugned label have been similarly reproduced. On a plain visual comparison of the two competing products, it is apparent that the petitioner has kept the said distinctive product of the respondent as a model/guide while preparing its own infringing impugned product thereby violating the common law and prior statutory rights of the respondent in its aforementioned registered trade mark UTEROTONE amounting to infringement of the respondents said registered trade mark. The petitioner has used the words 'Uterine Tonic below the mark UTROTON whereas the respondent is using the words 'Ecbolic & Uterine Tonic below its mark. The photographs of the packing colour and designs of both the parties are reproduced hereunder :

Issues: Whether the petitioner's trade mark UTROTON is deceptively similar to the registered trade mark UTEROTONE of the respondent?

Ratio Decidendi: The adoption of the trade mark UTROTON by the petitioner is dishonest and fraudulent which is clear from the fact that the respondent has adopted identical cans for packing and a deceptively similar artistic label as that of the respondent in as much as each and every leading feature of the respondent's packaging including the red packing cans, depiction of petitioner's impugned trade mark UTROTON in a shaded rectangle having two thick parallel lines on the top and below of the rectangle, inscription of the impugned trade mark UTROTON in Hindi language and depiction of a device of a cow on the top and the centre of the petitioner's impugned label have been similarly reproduced. On a plain visual comparison of the two competing products, it is apparent that the petitioner has kept the said distinctive product of the respondent as a model/guide while preparing its own infringing impugned product thereby violating the common law and prior statutory rights of the respondent in its aforementioned registered trade mark UTEROTONE amounting to infringement of the respondents said registered trade mark. The petitioner has used the words 'Uterine Tonic below the mark UTROTON whereas the respondent is using the words 'Ecbolic & Uterine Tonic below its mark. The photographs of the packing colour and designs of both the parties are reproduced hereunder :

Final Decision: The impugned order of the IPAB is upheld. The petitioner shall remain present in Court on the next date of hearing.