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2011 Supreme(Mad) 4660
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE VINOD K. SHARMA
First Petitioner
Versus
Second Respondents
O.A.Nos.548 & 549 of 2011 in C.S.No.436 of 2011
Decided On :Decided on : 02-12-2011
Headnote:
Trade Mark - Infringement - Sections 27, 134, 135 of the Trade Marks Act, 1999 - [PANTODYN] - [Injunction sought for infringement and passing off] - [Sections 27, 134, 135 of the Trade Marks Act, 1999] - The court discussed the provisions of the Trade Marks Act, 1999, specifically focusing on the protection of registered trademarks and the prevention of passing off. The court emphasized the importance of preventing confusion and deception in the pharmaceutical industry, especially for prescription drugs, and applied a stricter approach to judge the possibility of confusion between medicinal products by consumers. The judgment highlighted the need for stringent measures to prevent any confusion arising from the similarity of marks among medicines, considering the potential life-threatening consequences of such confusion.
Fact of the Case:
The plaintiff filed a suit seeking a permanent injunction against the defendant from using the trademark PANTODYN, which was deceptively similar to the plaintiff's registered trademark PANTODAC. The plaintiff, a leading pharmaceutical company, claimed that the defendant's use of the trademark PANTODYN was a deliberate and fraudulent attempt to trade upon the goodwill of the plaintiff's well-known product. The defendant opposed the suit, arguing that the word 'PANTO' was a common part of various trademarks and fell under jurispublici, and therefore, the plaintiff could not claim exclusive rights over it.
Finding of the Court:
The court found that the plaintiff had made out a prima facie case and that the balance of convenience was in favor of the plaintiff. The court granted the injunction, restraining the defendant from marketing their product under the trademark PANTODYN during the pendency of the suit. The court clarified that the observations made were not a final expression of opinion on the merits of the controversy between the parties, as the matter could be finally adjudicated after the parties led evidence in support of their respective stands.
Issues: The issues involved in the case included the infringement of the plaintiff's registered trademark, the prevention of passing off, and the defendant's contention regarding the common use of the word 'PANTO' in various trademarks falling under jurispublici.
Ratio Decidendi: The court applied a stricter approach to judge the possibility of confusion between medicinal products by consumers, emphasizing the need for stringent measures to prevent any confusion arising from the similarity of marks among medicines. The judgment highlighted the potential life-threatening consequences of confusion in the pharmaceutical industry, especially for prescription drugs, and the importance of preventing deception and confusion.
Final Decision: The court granted the injunction, restraining the defendant from marketing their product under the trademark PANTODYN during the pendency of the suit.
VINOD K.SHARMA.J.,
1. The plaintiff / applicant has filed a suit under Order IV Rule 1 of the Original Side Rules r/w Sections 27, 134 and 135 of the Trade Marks Act, 1999, praying therein for grant of permanent injunction, restraining the defendant, its Directors, employees, agents, stockists, dealers or others directly or indirectly involved, from in any manner using in relation to any medicinal or pharmaceutical preparation, in manufacturing or marketing the pharmaceutical product bearing the trademark PANTODYN or any other trademark, which is deceptively or confusingly similar to the plaintiffs registered Trade Mark No.723200 in Class 05.
2. Injunction is also sought on the ground of passing with consequential prayer to direct the defendant to deliver to the plaintiff all the goods, dies, labels, wrappers, packages, cartons, boxes, articles, literature and all other materials bearing reference whatsoever with respect to the offending trademark PANTODYN.
3. Along with the suit, the applicant filed two application nos.548 and 549 of 2011, for interim injunction pending the suit, one for violating the Trade Mark and other for passing off.
4. It is pleaded that the applicant is a company, registered under the Companies Act with its registered Office at Ahmedabad, Gujarat. The applicant is a leading pharmaceutical company in India, engaged in manufacturing and marketing of various pharmaceutical, medicinal and health related products. The gross turnover of the plaintiff is Rs.3,600 crores. The applicant manufactures and markets pharmaceutical, nutraceuticals over the counter sold products, vaccines, diagnostics, Active Pharmaceutical Ingredients (API i.e. active drug used in preparation of what is generally known as formulations, i.e. ready to administer dosage forms like tablet, capsule or injections), cosmetics and healthcare products in India.
5. The applicant has state of the art manufacturing units at village Moraiya (Ahmedabad) and Ankleshawr, Gujarat, Baddi (Himachal Pradesh), Sikkim, Goa and at Rio De Janeiro, Brazil. The applicant exports its products to more than 30 countries, including USA, Japan, Brazil, Europe, South Africa etc. It has joint ventures and collaboration agreements with companies like Nycomed, Hospira and Bio Sidus. It also carries on research work and as to its credits, 400 patents related products and discoveries, drug delivery systems and also in the field of biotechnology products in India and abroad and 100 parent applications have been accepted and patent granted in various countries.
6. One such brand under which the plaintiff manufactures and markets regarding medicinal preparations, is called "PANTODAC". This trademark was adopted by the plaintiff in the year 1996, for pharmaceutical preparations, a medicine used for the fast and sustained control of Gastro Esophageal Reflux Disease (GERD), which is also used for the treatment of Acid related disorders, i.e. Peptic, Ulcer (duodenal and gastric ulcer), and Zollinger – Ellison Syndrome.
7. The drug pantoprazole was developed by Byk Gulden (Germany). The plaintiff entered into a joint venture strategic alliance and formed a joint venture company known as Zydus Byk Healthcare Ltd. The said company has sub-licensed the distribution right of the product Pantoprazole to the applicant and right to manufacture the bulk drug Pantoprazole. Initially, the product was marketed, but thereafter the applicant started manufacturing the finished formulations as well as the bulk drug Pantoprazole.
8. The permission to market was received by the applicant on 09.12.1998 and thereafter, permission was also received for manufacturing of Pantoprazole tablets, which are marketed as Trade Mark PANTODAC.
9. The applicant started marketing tablets PANTODAC only after 2003. The applicant also got the Trade Mark PANTODAC, registered, which is said to be still subsisting.
10. The applicant claims that Trade Mark "PANTODAC" has achieved reputation and goodwi
