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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Saga Lifesciences Limited - Appellant
Versus
Aristo Pharmaceuticals Pvt. Ltd. - Respondent
CS(COMM) 240 of 2022
Decided On : 22-04-2022
Trade Marks - Passing off - Sections 134 and 135 of the Trade Marks Act, 1999 - Summary of Acts and Sections: Sections 134 and 135 of the Trade Marks Act, 1999 - The court discussed the use of the mark 'ULTRAMOL' in relation to pharmaceutical preparations and the prior user rights of the Plaintiff. The court also referred to the definition of 'use' of a mark in relation to goods under Section 2(2) of the Act and the interpretation of the meaning of 'use' in relation to trade marks under Section 46(1)(b) of the erstwhile Trade and Merchandise Marks Act, 1958. The court highlighted the significance of continuous usage and the establishment of goodwill in the mark 'ULTRAMOL' by the Plaintiff. The court also emphasized the need to avoid confusion in the market, especially in cases involving medicinal products.
Fact of the Case:
The Plaintiff filed a suit under sections 134 and 135 of the Trade Marks Act, 1999 for permanent injunction restraining passing off, rendition of accounts, damages, etc. The Plaintiff sought to protect the mark 'ULTRAMOL' used in relation to pharmaceutical preparations. The Defendant was also selling identical products under the mark 'ULTRAMOL', leading to a dispute over prior user rights and passing off.
Finding of the Court:
The court found that the Plaintiff was the prior user of the mark 'ULTRAMOL' since 1992 and had established goodwill in the mark through continuous usage. The court held that the Defendant's use of the mark 'ULTRAMOL' created a likelihood of confusion and misrepresentation. The court also noted the need to protect public health in cases involving medicinal products.
Issues: The issues involved the establishment of prior user rights, goodwill, and likelihood of confusion in the use of the mark 'ULTRAMOL' for pharmaceutical preparations.
Ratio Decidendi: The court's decision was based on the interpretation of 'use' in relation to trade marks, the establishment of goodwill through continuous usage, and the need to avoid confusion in the market, especially in cases involving medicinal products.
Final Decision: The court granted an ad-interim injunction in favor of the Plaintiff, restraining the Defendant from manufacturing any fresh products under the mark 'ULTRAMOL' or any other mark identical or deceptively similar to Plaintiff's mark. The Defendant was given time to exhaust existing stock of 'ULTRAMOL' products and was restrained from obtaining drug registration for a mark identical or deceptively similar to the mark 'ULTRAMOL'.
JUDGMENT
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
I.A. 5841/2022 (for stay)
2. The present suit under sections 134 and 135 of the Trade Marks Act, 1999 (hereinafter `Act') for permanent injunction restraining passing off, rendition of accounts, damages, etc. has been filed by the Plaintiff-M/s Saga Lifesciences Limited. The Plaintiff seeks to protect the mark "ULTRAMOL" used by it in respect of pharmaceutical preparations. The products of the Plaintiff sold under the brand "ULTRAMOL" are paracetamol preparations in different dosage forms. The grievance of the Plaintiff in the present case is that Defendant No.1 is also selling identical products under the mark "ULTRAMOL" in different dosage forms of the same medicine, i.e., paracetamol.
3. The case of the Plaintiff is that it adopted the mark "ULTRAMOL" in several variants and obtained an approval from the Food and Drugs Control Authority (FDCA), Gujarat (hereinafter "Drug Authority") for manufacturing and marketing of products under the mark "ULTRAMOL" as on 28th November, 1991. The Plaintiff launched the products under the said mark in the market in 1992. According to the Plaintiff, products under the mark "ULTRAMOL" are available/promoted on e-commerce platforms such as www.dawabazar.in and www.medindia.net. It is the case of the Plaintiff that the mark "ULTRAMOL" is associated exclusively with the Plaintiff. The mark "ULTRAMOL" has been continuously, uninterruptedly and voluminously used by the Plaintiff in the course of trade and business. The Plaintiff's website www.sagalabs.com also details and lists the products bearing the mark "ULTRAMOL". Thus, the pharmaceutical industry is well aware of the Plaintiff's mark.
4. In the year 2007, the Plaintiff applied for the registration of the mark "ULTRAMOL 650 (LABEL)" vide application no. 1554974 claiming user since 22nd January, 1992. In the said application, an affidavit was filed by the Plaintiff claiming user in the mark from 1992. However, the said mark got abandoned due to some miscommunication with the Trademark Agent who was handling the matter. Upon abandonment of the first application, the Plaintiff filed another application bearing 4322467 dated 16th October, 2019 for the registration of the mark "ULTRAMOL" under class 5 claiming user since 1992. This application of the Petitioner has been opposed by Defendant No.1.
5. Defendant No.1- Aristo Pharmaceuticals Pvt. Ltd. is a company which is also selling identical products, i.e., paracetamol preparations under the mark "ULTRAMOL". Defendant No.1 has also filed an application in the year 2005 bearing No. 1380082 in class-05 for the registration of the mark "ULTRAMOL" on `proposed to be used' basis. Currently, the application of Defendant No.1 is `opposed' by various third parties.
6. The case of the Plaintiff is that Defendant No.1 sought registration from the Drug Authority for products under the mark "ARISTO ULTRAMOL". However, it is using "ULTRAMOL" on a standalone basis on its products, both on the blister packaging as also on the outer carton. The Plaintiff's case is that it is the prior user of the mark "ULTRAMOL". It has placed on record invoices, drug licence and sales figures since the year 1991 showing use of the mark "ULTRAMOL" though the trademark application filed by it earlier may have been abandoned.
7. On behalf of the Plaintiff, Mr. Khera, ld. Counsel submits that the Plaintiff being the prior user of the mark, since it is a case of identical marks on identical products, it is entitled to an injunction. Ld. Counsel, relies upon the fact that Defendant No.1 has no justification for adopting an identical mark for identical pharmaceutical preparations. Defendant No.1 being well aware of the mark "ULTRAMOL" being used by the Plaintiff has dishonestly adopted the mark. He further submits that Defendant No.1 is indulging in misbranding of the drug as the drug approval of the Defendant is for the mark "ARISTO ULTRAMOL
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