2008 Supreme(Guj) 66

2008 (2) GCD 1304 (Guj)
Hon’ble Mr. Justice K.A. Puj
Paras Pharmaceuticals Ltd. [Ahmedabad]
Versus
Ranbaxy Laboratories Ltd. & Ors.
Appeal From Order No. 397 of 20071—Decided on 21/02/2008

Decided in Favour of :
Appellant
Appeal Allowed

Headnote:Subject :

       Temporary Injunction — Product registered under Trade Marks Act and Copy Right Act — Use of identical and deceptively similar telecast for another product — Disparaging and denigrading — Scope of — Finding as to.

       Point in Issue :

       Whether in facts appellant entitled for temporary injunction against respondent.

       Head Note :

       Trade Marks Act, 1999 — Sections 29(4), 29(6), 29(7), 29(8), 29(8)(a), 10(6), 11(2)(b) — Civil Procedure Code, 1908 — Order 39 Rules 2, 3 and 43 Rule 1(1) — Temporary injunction — Product registered under Trade Marks Act and Copy Right Act — Use of identical and deceptively similar telecast for another product — Disparaging and denigrating of — Scope of Finding as to — The appellants product ‘Moov’ is a pain reliever ointment registered under the Act with a particular trade dress, colour scheme get up since 1986-87 — The respondent in order to promote business of his product ‘Volini’ which is also pain reliever ointment has started T.V. commercial with objectionable part with regard colour of the product pack akin to product pack of the appellant product — The basic criteria is the test of average consumer or the objective test is that of reasonable audience — The average consumer or the reasonable audience would normally go by the colour which is shown on T.V. — Court considering the respondent advertisement held that the way in which respondent has introduced it’s product in T.V. commercial telecast is certainly objectionable — The appellant has, therefore, rightly sought injunction which filing civil suit — Court, therefore, allowed the appeal and set aside lower Court order refusing injunction and directed respondent to change the colour of the pack of the product which is non existent product into colour other than colour of appellants product pack.

       Held :

       The comparison can always be made between two existing things and in all these judgments. comparisons are made only between two existing things. There is no question of comparing the respondent’s product with any non-existent product. Even if the respondent had to choose any non-existent product, the same cannot be in the same colour pack i.e. violet colour pack in which the product of the appellant is put. [Para 36]

       There appears to be no honest practice of comparing one’s product with a non-existent product. By adopting a violet colour which is adopted by the appellant to cover up its product and the appellant’s product is by and large known in the general public with that colour, and since the appellant’s product is much popular amongst the general public as a pain reliever, the respondent has tried to take unfair advantage which may amount to an infringement of the Trade Mark within the meaning of Section 29(8)(a) of the Act. By taking shelter of a non-existent product violet coloured pack, if the respondent tries to establish that its product is true pain reliever than the other product it would certainly affect the reputation of the trade mark of the appellant and to this extent, Clause (c) of Section 29(8) of the Act can also be invoked for the purposes of satisfying the Court that the respondent has infringed the trade mark of the appellant. [Para 37]

       The basic criteria is test of average consumer or the objective test is that of reasonable audience. The average consumer or the reasonable audience would normally go by the colour which is shown on the TV commercial. In a country like India, lacks of people are illiterate and they are in need of pain reliever at every stage. The figures given by the appellant indicate that the turnover of the appellant’s product MOOV is on a very large scale and the TV has reached to the remote villages and areas of this country. Thus, there may no be an objection against the TV commercial of the respondent’s product but the way in which the said product was introduced TV commercial and telecasted, is certainly objectionable. [Para 37]

       The Court, therefore, directs the respondent to change the colour of the pack of the product which is stated to have been a non-existent product, into any colour other than the colour of the appellant’s product pack. Till such colour is changed, the Court hereby restrains the respondent, their servants, Agents, Dealers, Distributors, Stockist, Retailers, Printers and Publishers from printing, publishing, advertising and using the artwork of the appellant’s product.

        [Para 38]

       Law Laid Down :

       The basic criteria of impugnment of rights under Trade Mark Act and Copy Right Act is the test of average consumer or the objective test is that of reasonable evidence.

       Case Law Analysis :

       Karamchand Applicances Private limited vs. Shri Adhikari Brothers & Ors., 2005 (2) RAJ 570 (Del) [Para 29];; Midas Hygiene, 2005 (3) SCC 1990 [Para 19].—Relied on

       Dabur India Limited vs. Wipro Limited, Bangalore, 2006 (32) PTC 677 (Del) [Para 28];; Barclays Bank PLC vs. R.B.S. Advanta, 1996 RPC 307 [Para 30];; British Airways PLC vs. Ryanair Limited, 2001 FSR 541 [Para 33].—Distinguished