1995 Supreme(Mad) 686

High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE THANGAMANI AND THE HONOURABLE MR. JUSTICE ARUNACHALAM
Ciba Geigy Limited and Another - Appellant
Versus
Crosslands Research Laboratories Limited - Respondents
Osa No. 51 of 1995 and Cmp No. 3002 of 1995
Decided On : 25 August 1995

The use of a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark, is an infringement of the trade mark.

Headnote:

TRADE AND MERCHANDISE MARKS ACT, 1958 - SECTION 28, 29 - INFRINGEMENT OF TRADE MARK - SIMILARITY OF MARKS - BALANCE OF CONVENIENCE - INJUNCTION - GENERIC TERM - LACHES - ACQUIESCENCE.

Fact of the Case:

The appellants are engaged in the business of marketing medicinal and pharmaceutical preparations. The first appellant is the registered proprietor of the Trade mark 'EMULGEL' in India which stands registered in its name with effect from 4.11.1987. Pursuant to the licence granted by the first appellant, the second appellant is manufacturing and marketing medicines under the Trade Mark 'EMULGEL' in India. The appellants claimed that they have acquired a common law right in the said trade mark 'EMULGEL'. In and around November, 1992, they came to know that the respondent is manufacturing and marketing a product called 'EMUGEL'. On 4.11.1992, the appellants caused a letter to be issued to the respondent to cease and desist from using the trade mark 'EMUGEL'. In their letter dated 12.11.1992 the respondent repudiated the claim of the appellants. A further letter was sent to the respondent on 2.7.1993. Thereafter, in his letter dated 7.7.1993 the respondent assured the appellant that he would stop using the name 'EMUGEL' and switch over to an alternative brand name. However, the alternative brand name he adopted is 'EUGEL' by which he has only dropped the letter M from the expression 'EMUGEL'. What is significant is that while the respondent changed over to 'EMUGEL' by dropping the letter 'M' from 'EUGEL' he also simultaneously changed the colour scheme and geometric design of the carton and tube similar to those of the appellants. The usage of the name 'EUGEL' with the said colour scheme and geometric design would create deception or confusion to the appellants' product 'EMULGEL', Besides, products under the Trade Mark 'EMUGEL' manufactured by the respondent are still available in the market and the respondent continues to solicit orders and supply goods under the trade mark 'EMUGEL'. The use of the said trade name is prohibited under Sections 28 and 29 of the Trade and Merchandise Marks Act, 1958.

Finding of the Court:

The court held that the use by the respondent of the mark EUGEL is an infringement of the appellants' mark EMULGEL as the adoption of a single leading characteristic of the plaintiff's trade mark may constitute an infringement, notwithstanding that each mark contains other matter which distinguishes one from the other. The court also held that the learned single Judge was wrong in refusing relief to the appellant on the ground that the word 'GEL' in the rival marks is a generic term used in medicinal products, as in deciding the question of similarity between the rival marks, they have to be considered as a whole. The court also rejected the Respondents objection as to delay and laches as, the appellants could file a suit for injunction only after the mark is registered as the registered proprietor gets an exclusive statutory right to the use of the registered trade mark under Section 28 of the Act. The court also held that the balance of convenience is also in favour of the appellants and as such there being infringement of the trade mark of the appellants, temporary injunction as prayed for is granted.

Issues: 1. Whether the use by the respondent of the mark EUGEL is an infringement of the appellants' mark EMULGEL? 2. Whether the learned single Judge was right in refusing relief to the appellant on the ground that the word 'GEL' in the rival marks is a generic term used in medicinal products? 3. Whether the Respondents objection as to delay and laches is valid? 4. Whether the balance of convenience is in favour of the appellants?

Ratio Decidendi: 1. The court held that the use by the respondent of the mark EUGEL is an infringement of the appellants' mark EMULGEL as the adoption of a single leading characteristic of the plaintiff's trade mark may constitute an infringement, notwithstanding that each mark contains other matter which distinguishes one from the other. 2. The court held that the learned single Judge was wrong in refusing relief to the appellant on the ground that the word 'GEL' in the rival marks is a generic term used in medicinal products, as in deciding the question of similarity between the rival marks, they have to be considered as a whole. 3. The court rejected the Respondents objection as to delay and laches as, the appellants could file a suit for injunction only after the mark is registered as the registered proprietor gets an exclusive statutory right to the use of the registered trade mark under Section 28 of the Act. 4. The court held that the balance of convenience is also in favour of the appellants and as such there being infringement of the trade mark of the appellants, temporary injunction as prayed for is granted.

Final Decision: The appeal is allowed and the order of learned single Judge dated 9th December, 1994 in O.A. 736 of 1994 and Application No. 4871 of 1994 in C.S. No. 896 of 1994 are set aside. While O.A. No. 736 of 1994 is allowed and temporary injunction prayed for is granted, Application No. 4871 of 1994 seeking to vacate the interim injunction granted on 9.8.94 is dismissed. No cost throughout.