The court reinforced that established trademarks warrant protection against similar marks to prevent market confusion, particularly in the pharmaceutical sector, applying principles against passing off and trademark infringement.

ORDER

IA Nos.13365-13367/2021(exemption)

1. Applications are allowed, subject to all just exceptions.

CS(COMM) 506/2021

2. Let the plaint be registered as a suit.

3. Issue summons. Learned counsel for the defendants accepts notice.

4. Pleadings be completed within the statutory period.

IA No.13364/2021

5. This application is filed by the plaintiff under Order 39 Rules 1 and 2 CPC seeking an ex-parte interim injunction to restrain the defendants, their directors etc. from manufacturing, selling, offering for sale, exporting, advertising etc. any pharmaceutical or medicinal preparation or any such allied and cognate goods under the impugned marks `Doctor PAND'/' Doctor PAN'/'Dr.Pan' or any other mark identical and/or deceptively similar to the plaintiff's marks `PAN-D' and `PAN Family of Marks' or doing any other act which tantamounts to infringement of the plaintiff's PAN Family of Marks' registered in Class 5, passing off, dilution etc.

6. The case of the plaintiff is that it adopted the mark `PAN-40' in 2000 and has been used continuously and uninterruptedly by the plaintiff since then for medicinal and pharmaceutical preparations. The plaintiff has a wide array of products which are being manufactured and marketed under the trademark `PAN' which includes PAN-40, PAN-20, PAN-20 MD etc.(hereinafter referred to as `PAN Family of Marks'). The plaintiff obtained registration of the mark PAN-40 on 20.01.2000, the mark PAN-20 was registered on 20.01.2000, and the mark PAN-20 MD was registered on 09.02.2010 and so on. In 2004, the plaintiff adopted the most successful variant of the PAN Family of Marks, i.e. the trademark/brand `PAN-D'. The mark PAN-D has been continuously, extensively and uninterruptedly used for pharmaceutical, medicinal and ayurvedic preparations and substances.

7. In and around September, 2021, it is stated that the plaintiff was shocked when a representative of the plaintiff came across the products of the defendants bearing the marks `Doctor PAN-D' and `Doctor PAN'. It is stated that the same are identical/deceptively similar with the plaintiff's marks `PAN-D' and `PAN Family of Marks'. Further, the ingredients of the plaintiff's product `PAN-D' and the defendants' impugned product `Doctor PAN-D' are identical, namely, Pantoprazole and Domperidone. Similarly, the ingredients of the plaintiff's product `PAN-40' and the defendants' impugned product `Doctor PAN' are also identical. Defendant No.1 has also applied for registration of the impugned mark `Dr.Pan' on 02.12.2019 on a proposed to be used basis in Class 5. The said mark is currently objected to. Similarly, defendant No.1 has also applied for registration of the impugned mark `Doctor PAN' on a proposed to be used basis in Class 5 on 03.02.2021.

8. The products of the defendants are reproduced in the plaint as the follows:

Impugned Product `Doctor PAN-D'

Impugned Product `Doctor PAN'

9. When the matter came up for hearing on 11.10.2021, it was suggested by the court that the parties may try and settle the matter.

10. Today, learned senior counsel for the defendants has made some suggestions which have not found favour with the plaintiff.

11. Learned senior counsel for the defendants who was appeared on receipt of an advance copy of the paperbook has strongly urged that the word `PAN' is derived from the ingredient `Pantoprazole' and `Domperidone'. Hence, it is urged that the said expression is publici juris. It is urged that in the trade of drugs, it is common practice to name a drug on the basis of t