Back
IN THE HIGH COURT OF DELHI AT NEW DELHI
Amit Bansal, J.
Sun Pharma Laboratories Ltd. – Appellant
Versus
Cian Healthcare Ltd. – Respondent
CS(COMM) 542 of 2022 & I.A. 12547 of 2022 (O-XXXIX R-1 & 2 of CPC), I.A. 12548 of 2022 (O-XXVI R-9 of CPC)
Decided On : 01-05-2023
Trademark Infringement - Pharmaceutical Trademark - Trade Marks Act, 1999 - Section 2(1)(zg), Section 29 - Section 25(1), Section 134 - Section 135 - Section 136
Fact of the Case:
The plaintiff, a pharmaceutical company, sought permanent injunction against the defendant for trademark infringement and passing off their goods as those of the plaintiff. The plaintiff claimed to be the registered proprietor of the trademark 'Maxgalin' and alleged that the defendant's mark 'MGalin' was deceptively similar and violated their well-known trademark rights.
Finding of the Court:
The defendant failed to appear in the suit despite service, leading to an ex parte proceeding. The court found the defendant's mark 'MGalin' to be visually, phonetically, and structurally similar to the plaintiff's mark 'Maxgalin'. The court also noted the low threshold for proving confusion in the pharmaceutical market and found the defendant's actions to be a dishonest attempt to ride on the goodwill and reputation of the plaintiff. The court granted a decree of permanent injunction in favor of the plaintiff, ordered cancellation of the defendant's trademark registration, and burdened the defendant with costs.
Issues: Trademark infringement, passing off, deceptive similarity of marks, well-known trademark rights, failure of defendant to contest the suit.
Ratio Decidendi: The court applied the provisions of the Trade Marks Act, 1999, particularly Section 2(1)(zg) defining well-known trademarks, Section 29 regarding infringement, and Sections 25(1), 134, 135, and 136. The court emphasized the importance of protecting well-known trademarks and preventing confusion in the pharmaceutical market.
Final Decision: The court granted a decree of permanent injunction in favor of the plaintiff, ordered cancellation of the defendant's trademark registration, and burdened the defendant with costs.
JUDGMENT
Amit Bansal, J. (Oral)
1. The present suit has been filed seeking the relief of permanent injunction restraining the defendant from the infringement of the trademark of the plaintiff, passing off their goods as those of the plaintiff and other ancillary reliefs.
FACTUAL MATRIX
2. The case set up in the plaint is as under:
2.1. The plaintiff company is a wholly owned subsidiary of Sun Pharma Industries Ltd. and is engaged in the business of marketing drugs and pharmaceutical combinations in over 150 countries with 45 manufacturing sites in various countries.
2.2. The plaintiff is the registered proprietor of the trademark "Maxgalin" bearing No. 1402291 since 29th November, 2005 and various other marks, details of which are provided in paragraph 9 of the plaint.
2.3. The "Maxgalin" mark is used by the plaintiff for its medicine used to relieve neuropathic pain. The said drug is sold in the form of tablets and is a Schedule H drug.
2.4. The trademark "Maxgalin" has also acquired goodwill and reputation due to its extensive and continuous use since 2005 and has therefore attained the status of a well-known trademark within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999.
2.5. The sales turnover of the plaintiff from the year 2012-2013 to the year 2020-2021, for the pharmaceutical preparation sold under the mark "Maxgalin," is Rs.383,28,66,000/-. In the year 2020-2021 alone, the sales turnover of the plaintiff in relation to the aforesaid mark was Rs.52,32,23,000/-.
2.6. The defendant is a registered company operating out of Pune and engaged in the business of selling medicines.
2.7. In June, 2022, the plaintiff came across the defendant selling a drug under the impugned mark "MGalin" on various platforms, being "https://www.medplusmart.com/product/mgalin-nt-tab_mgal0001," "https://www.1mg.com/drugs/mgalin-750mcg-75mg-capsule-394027" and "https://pharmeasy.in/online-medicine-order/mgalin-75mg-cap-6102".
2.8. Accordingly, the plaintiff has filed the present suit.
PROCEEDINGS IN THE SUIT
3. Summons in the were issued on 18th August, 2022. Subsequently, affidavit of service dated 2nd September, 2022 was filed on behalf of the plaintiff, wherein it was stated that summons along with the suit papers were dispatched to the defendant through courier. The postal vouchers along with the tracking report have been placed on record. Defendant was additionally served through e-mail dated 31st August, 2022.
4. However, despite service, none appeared on behalf of the defendant on 28th September, 2022. Consequently, the defendant was proceeded against ex parte and an interim injunction was passed by the Court, restraining the defendant from, inter alia, dealing with pharmaceutical preparations under the impugned mark "McGalin" or any other mark either identical or deceptively similar to the registered trademark of the plaintiff.
5. Written submissions have been filed on behalf of the plaintiff in the suit.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF
6. The following submissions have been made on behalf of the plaintiff:
6.1. The impugned mark "MGalin" is deceptively similar to the mark of the plaintiff, "Maxgalin".
6.2. In the cancellation petition, being C.O. (COMM. IPD-TM) 723/2022, the plaintiff has made out a case for removal of the registration granted in favour of the defendant for the mark "MGalin" and therefore, a decree of permanent injunction should follow in the present suit.
6.3. The plaintiff is the prior user of the mark "Maxgalin". The defendant has failed to provide any evidence to support the claim that the defendant has been using the impugned mark "MGalin" bearing Registration No. 3956223 since 2003.
6.4. The defendant has obtained registration of the impugned mark on the basis of a false statement in their trademark application regarding their user of the mark since 7th January, 2003. The said date is the date of incorporation of the defendant and not the date of user of the mark in question.
6.5. By adopting
The central legal point established in the judgment is the protection of well-known trademarks and prevention of confusion in the market, as provided under the Trade Marks Act, 1999.
The central legal point established in the judgment is the protection of trademarks, the establishment of statutory and common law rights, and the imposition of costs for trademark infringement.
Trademark infringement occurs when a mark is nearly identical to a registered mark, leading to consumer confusion, especially when the defendant fails to contest the claims.
The court ruled that the defendant's use of KIMIXIDE infringes the plaintiff's registered trademark AMIXIDE, being deceptively similar and likely to cause consumer confusion.
The court upheld the protection of trademarks and issued a permanent injunction against the Defendants for trademark infringement.
Plaintiff entitled to a permanent injunction against the Defendants for trademark infringement and passing off due to the similarity in marks and packaging.
The use of the impugned marks EYESITE/Fig.2 and KL (Label) by the Defendants is likely to cause confusion and deception, thereby constituting infringement of the Plaintiffs' registered trademarks und....
Point of law: Trade mark copyright - Where there is/are a common element/elements in the marks of plaintiff and defendant which is also contained in a number of other marks in use in the same market,....
An indispensable Tool for Legal Professionals, Endorsed by Various High Court and Judicial Officers
Please visit our Training & Support
Center or Contact Us for assistance
Scan Me!
India’s Legal research and Law Firm App, Download now!
For Daily Legal Updates, Join us on :
Back to top
