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2017 Supreme(Mad) 965
IN THE HIGH COURT OF JUDICATURE AT MADRAS
K.KALYANASUNDARAM, J.
Lee Pharma Limited – Plaintiff
Versus
Lee Pharmaceuticals, Chennai – Defendant
C.S.No.322 of 2014
Decided On : 08-05-2017
For the Plaintiff : Mr. G.Ramji
The central legal point established in the judgment is the application of legal provisions related to passing off, likelihood of confusion, and punitive damages in cases of trademark infringement and trade name disputes.
Headnote:
Passing Off - Trademark Infringement - Trade Name and Trademark - Companies Act - Trade Marks Act - [Companies Act, Trade Marks Act] - The court granted injunction restraining the defendant from passing off by using the trade name and trademark LEE PHARMACEUTICALS, from using a similar website, and ordered surrender and destruction of infringing materials. The court also awarded punitive damages to the plaintiff. The court relied on legal provisions related to passing off, likelihood of confusion, and punitive damages to reach its decision.
Fact of the Case:
The plaintiff, a pharmaceutical company, sought injunction and damages against the defendant for passing off by using a similar trade name and trademark. The plaintiff claimed to be the pre-user of the trade name and trademark since 1997 and alleged that the defendant's actions caused confusion among customers, leading to monetary loss and damage to business reputation.
Finding of the Court:
The court found that the defendant's trade name and trademark were deceptively similar to that of the plaintiff, leading to confusion in the market. The court decreed the suit in part, granting the reliefs sought by the plaintiff and ordering the defendant to pay punitive damages.
Issues: The court was called upon to decide whether the plaintiff was entitled to the reliefs sought in the suit, considering the alleged passing off by the defendant using a similar trade name and trademark.
Ratio Decidendi: The court relied on legal principles related to passing off, likelihood of confusion, and punitive damages to support its decision. It referenced previous judgments to establish the applicability of these principles to the case.
Final Decision: The suit was decreed in part with costs, and the defendant was ordered to pay punitive damages to the plaintiff.
The suit has been filed for the following reliefs:
a. A permanent injunction restraining the Defendant, by himself, his men, servants, agents, distributor, stockiest, representatives or any one claiming through or under him from in any manner passing off and/or enabling others to pass off by using, carrying on business under and using the trade name and trade mark LEE PHARMACEUTICALS as and for the plaintiff's trade name and trade mark LEE PHARMA or in any other manner whatsoever;
b. A permanent injunction restraining the defendant, by himself, his men, servants, agents, distributors, stockiest, representatives or any one claiming through or under him from using, maintaining or operating, posting or in any manner utilizing for the purposes of trade and commerce the website www.leepharmaceuticals.in which is similar to the plaintiff's trade name and trademark LEE PHARMA and their website www.leepharma.com;
c. The Defendants be ordered to surrender to Plaintiffs for destruction of all products, labels, cartons, dyes, blocks, moulds, screen prints, packing materials and other materials bearing the trade name and trademark LEE PHARMACEUTICALS or any mark deceptively similar to plaintiff's trade name and trademark LEE PHARMA.
d. Direct the defendant to pay a sum of Rs.25,00,000/- to the plaintiff as damages on account of passing off;
e. for costs of the suit
2. The case of the plaintiff is that originally, the plaintiff-Company was incorporated under the Companies Act on 6th October 1997 and named as Lee Pharma Private Limited Company to carry on the business of pharmaceutical and other allied business. Subsequently, on 14th September 2005, it was converted into a Public Limited Company and re-named as Lee Pharma Limited. In the course of their business, they have adopted several Trade Marks and applied the same to various pharmaceutical products manufactured by them.
3. The plaintiff has established a State-of-Art Research and Development Centre with experienced team of Senior Scientists. The plaintiff is spending huge amount of money in research and development activities every year and filed many patent applications for the novel process. The plaintiff-Company is the recipient of many awards and they have also participated in a number of national and international pharmaceutical events and exhibitions and spent huge amount of money on marketing.
4. The plaintiff would further state that they have filed several trademark applications to protect their intellectual property rights on 05.11.2011 under various trade names and the applications are still pending. The annual turnover of the plaintiff-Company in 2008-2009 is Rs.58,99,00,635/-, which has raised to Rs.167,98,04,000/- in 2012-2013. In March 2014, the plaintiff became aware that the defendant-Company is carrying on the business under the name and style of Lee Pharmaceuticals and they are also in the same field as that of the plaintiff. The defendant is maintaining a website www.leepharmaceuticals.in, which is almost identical to that of the plaintiff's website www.leepharma.com. The defendant has deliberately copied the plaintiff's trade name and thus infringed the trademark and goodwill and reputation of the plaintiff.
5. The plaintiff would further state that the plaintiff is a pre-user of the trade name and trademark Lee Pharm since 1997. The defendant has commenced the business only in the year 2013. Since the plaintiff and the defendant are carrying on the same business, the use of identical trade name and trademark will cause confusion among the customers, thereby, causing monetary loss and business reputation of the plaintiff. Therefore, the plaintiff caused a notice dated 13.03.2014, for which, the defendant issued a reply on 23.03.2014, stating that Lee is the daughter of the defendant. Despite notice, the defendant is using the trade name and trademark of the plaintiff. Hence, the suit.
6. On the above pleadings, this Court is called upon to decide whether the plai
