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IN THE HIGH COURT OF DELHI AT NEW DELHI
Navin Chawla, J.
Modi-mundipharma Pvt. Ltd. – Appellant
Versus
Preet International Pvt. Ltd. & Anr. – Respondents
CS(COMM) 353 of 2018 & CCP(O) 41 of 2010, IA 1241 of 2015
Decided On : 23-03-2023
TRADEMARK - INFRINGEMENT - PASSING OFF - SIMILARITY OF MARKS - BONA FIDE ADOPTION - DESCRIPTIVE MARKS - DELAY AND LACHES - ACQUIESCENCE - FAMILY OF MARKS - CONTINUOUS USE - SECTION 47(1)(B) OF THE TRADE MARKS ACT, 1999 - SECTION 28 OF THE TRADE MARKS ACT, 1999 - SECTION 33 OF THE TRADE MARKS ACT, 1999 - MIDAS HYGIENE P. LTD. & ANR. V. SUDHIR BHATIA & ORS., 2004(28) PTC 121 (SC) - COLGATE PALMOLIVE COMPANY & ANR. V. ANCHOR HEALTH AND BEAUTY CARE PVT. LTD., 2003(27) PTC 478 (DEL) - M/S POWER CONTROL APPLIANCES & ORS. V. SUMEET MACHINES PVT. LTD., (1994) 2 SCC 448 - KHO-DAY DISTILLERIES LTD. (NOW KNOWN AS KHO-DAY INDIA LTD.) V. SCOTCH WHISKY ASSOCIATION & ORS., (2008) 10 SCC 723 - MARICO LIMITED V. AGRO TECH FOODS LTD., 2010 SCC ONLINE DEL 3806 - SCHERING CORPORATION & ORS. V. ALKEM LABORATORIES LTD., 2009 SCC ONLINE DEL 3886 - SUN PHARMACEUTICAL LABORATORIES LTD V. HETERO HEALTHCARE LTD. AND ANOTHER, 2022 SCC ONLINE DEL 2580 - PANACEA BIOTEC LTD. V. RECON LTD., 1996 SCC ONLINEDEL 508 - MADAMANCHI RAMAPPA & ANR. V. MUTHALURU BOJJAPPA, (1964) 2 SCR 673 - BURGER KING CORPORATION V. TECHCHAND SHEWAKRAMANI & ORS., 2018 SCC ONLINEDEL 10881
Fact of the Case:
The plaintiff, a pharmaceutical company, filed a suit against the defendant for infringement of its registered trademarks FECONTIN-F and CONTIN, and for passing off. The plaintiff claimed that the defendant's mark FEMICONTIN was deceptively similar to its marks and was likely to cause confusion among consumers. The defendant denied the allegations and claimed that its mark was adopted in good faith and was not deceptively similar to the plaintiff's marks. The defendant also raised the defenses of delay and laches, acquiescence, and that the plaintiff's mark CONTIN was descriptive and not entitled to protection.
Finding of the Court:
The court held that the plaintiff's mark FECONTIN-F was descriptive and not entitled to exclusive protection. The court also held that the defendant's mark FEMICONTIN was not deceptively similar to the plaintiff's marks and was adopted in good faith. The court further held that the plaintiff was guilty of delay and laches and had acquiesced to the defendant's use of its mark. The court dismissed the plaintiff's suit.
Issues: 1. Whether the court has no jurisdiction to try and entertain the present suit? 2. Whether the present suit is liable to be dismissed on account of delay, latches and/or acquiescence? 3. Whether the present suit is barred by virtue of Section 11 of the Code of Civil Procedure, 1908? 4. Whether the plaintiff is the registered proprietor of the trade mark FECONTIN-F and the trade mark CONTIN/CONTIN family of trademarks in relation to its goods/services? 5. Whether the defendants have infringed the registered trademarks FECONTIN-F and CONTIN of the plaintiff? 6. Whether the use of the deceptively similar mark FEMICONTIN by the defendants amounts to passing off? 7. Whether the plaintiff is entitled to permanent injunction as prayed for? 8. Whether the plaintiff is entitled to damages as prayed for? 9. Whether the plaintiff is entitled to delivery up of materials and rendition of accounts?
Ratio Decidendi: 1. A registered trademark may be removed from the Register where it is shown that up to a date three months before the date of the application filed seeking its removal from the Register of trade marks, a continuous period of five years from the date on which the trade mark is actually entered in the register or longer had elapsed during which the trade mark though registered was not bona fide used in relation to the goods and services for which it had been registered. (Section 47(1)(b) of the Trade Marks Act, 1999) 2. The exclusive right to the use of the trade mark in relation to the goods and services in respect of which it is registered is given to the proprietor, if such registration is valid. (Section 28 of the Trade Marks Act, 1999) 3. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark and it implies positive acts and not mere silence or inaction such as is involved in laches. (M/s Power Control Appliances & Ors. v. Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448) 4. Mere delay in bringing action is not sufficient to defeat grant of an injunction. (Midas Hygiene P. Ltd. & Anr. v. Sudhir Bhatia & Ors., 2004(28) PTC 121 (SC))
Final Decision: The plaintiff's suit was dismissed.
JUDGMENT
1. This suit has been filed by the plaintiff praying for the following reliefs:
"a) An order for permanent injunction restraining the Defendants, its partners or proprietor, as the case may be, its offices, servants, and agents from reproducing on the label or packaging of their product, the trademark FEMICONTIN or any other trademark deceptively similar to the Plaintiffs trademark FECONTIN-F or from using the Plaintiffs registered trademark CONTIN amounting to an infringement of the Plaintiff's registered trademarks bearing No. 518596 & 518594 respectively in class 5.
b) An order for Permanent Injunction restraining the defendants, its partners or proprietor, as the case may be, its offices, servants, and agents from manufacturing, selling, offering for sale advertising, directly or indirectly dealing in medicinal and pharmaceutical preparation in packaging bearing Trademark FEMICONTIN which is identical or deceptively similar to the Plaintiff's CONTIN series of marks and the trademark FECONTIN-F or from doing any other act which would amount to passing off of the Defendant's goods or business as the goods and business of the Plaintiff.
c) An order for delivery up of all the goods bearing the impugned mark, dies, cartons, labels, packaging and any other infringing material to the authorised representative of the Plaintiff for the purposes of destruction /erasure;
d) Direct the Defendants to pay a sum of Rs.48,00,000/- towards damages which is the estimated loss of sales by the Plaintiff as also the loss of reputation owing to the illegal activities of the Defendants.
e) An order for rendition of accounts of profits of the Defendants on account of sales of the medicines bearing the trademark FEMICONTIN and for any other products bearing the Plaintiff's Trademarks and the sum due paid to Plaintiff.
f) An order directing the Department of Drugs Control Administration, Government of Andhra Pradesh to cancel the Drug manufacturing licence of Defendant No. 1."
PLEADINGS
2. It is the case of the plaintiff that the plaintiff company is the proprietor of a family of trade marks bearing the word CONTIN as the common feature in the same. The said trade mark CONTIN is also registered under No. 518594 in Class 5 in favour of the plaintiff since 19.10.1989. The subject mark FECONTIN-F is also registered in favour of the plaintiff under No.518596 in Class 5. The plaintiff claims that it has been using the said trade mark for its product since March 1993. The plaintiff states the sale figures and the advertisement figures, and claims that by virtue of long, continuous and extensive user of the said trade mark throughout India since the year 1993, the plaintiff has acquired tremendous goodwill and reputation in the said mark.
3. The plaintiff is aggrieved of the adoption of the mark FEMICONTIN by the defendant no.2. The plaintiff claims that the said mark is deceptively similar to the plaintiff's CONTIN family/series of marks and more particularly the trade mark FECONTIN-F.
4. The plaintiff claims that it first acquired the knowledge of the adoption and use of the said mark by the defendant no.2 in July, 1999. It issued a cease-and-desist notice dated 10.07.1999 to the defendant no.2. At that time, the pharmaceutical drug with the impugned name was being manufactured by one `M/s Eubiotics Pharmaceuticals' at Hyderabad, who by its reply dated 03.08.1999, refused to acknowledge the proprietary rights of the plaintiff in the said marks.
5. The plaintiff claims that its agents thereafter informed the plaintiff that the pharmaceutical product with the trade mark FEMICONTIN was not being marketed and, therefore, the plaintiff believed that `M/s Eubiotics Pharmaceuticals' and the defendant no.2 had stopped manufacturing and marketing the pharmaceutical products under the trade mark FEMICOTIN.
6. The plaintiff claims that sometime in March, 2001, the plaintiff came across pharmaceutical products manufactured and marketed under the impugned tr
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