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IN THE HIGH COURT OF JUDICATURE AT MADRAS
R. Subramanian, J.
Sun Pharma Laboratories Limited, Rep by its Authorized Signatory Chandra Nahata- Plaintiff
Versus
D.D. Pharmaceuticals Private Limited, Rajasthan & Another – Defendants
C.S. Nos. 687, 703 & 704 of 2014 & OA Nos. 868 & 870 of 2014 & A. Nos. 5519, 5520 & 5521 of 2019
Decided On : 23-09-2021
Trade Marks Act, 1999, - Sections 27, 28, 29, 134 and 135 - Code of Civil Procedure ,1908 – Section 20 - Order,IV VII Rule 1 - Copy Right Act - Section 62 - Permanent Injunction - Trademark -A permanent injunction restraining defendants, their manufacturers, distributors, stockists, servants, agents, wholesalers, retailers, legal representatives or any other person claiming under it from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations infringing plaintiff's registered trademark BUPRON by use of almost identical trademark BUPRO or any mark identical or similar to Plaintiff's registered trademark BUPRON or in any other manner whatsoever - Whether, products of plaintiff and defendant are manufactured from a common pharmaceutical ingredient ‘Bupropion Hydrochloride - Whether defendant's adoption of an identical mark amounts to passing off of plaintiff's trademark 'Bupron' – Held ,Court issue in fact does not arise for consideration in suit particularly because of claim of defendant that its medicinal preparations are made using the active pharmaceutical ingredient Bupropion Hydrochloride, which is also active pharmaceutical ingredient for plaintiff’s product ‘BUPRON’ - Written statement, defendant had very clearly conceded that both products are identical medicines with same base ingredient namely Bupropion Hydrochloride - Court find that names adopted by defendant, though based on names of active pharmaceutical ingredient there is a clear lack of bona fides on part of defendant in adopting almost a similar name which would definitely cause confusion among general public or consumer - It is also claimed that the user or adoption of the mark ‘BUPRO’ by the defendant is bona fide and is in line with the trade usage - Defendant would further add that major pharmaceutical manufacturers have named their product after active pharmaceutical ingredient and such naming would not amount to infringement of trademark of plaintiff - It is also pointed out that fact that the drug is a ‘Schedule H Drug’ which is sold only on prescription of a registered medical practitioner claim of deceptive similarity cannot be countenanced - It is the further claim of defendant that protection afforded to a manufacturer who uses a part of name of the active pharmaceutical ingredient is much less than an invented word or a coined name - Dismissed.
JUDGMENT :
(Prayer : Plaints filed under Order IV Rule 1 of the Original Side Rules and Order VII Rule 1 of the Code of Civil Procedure read with Sections 27, 28, 29, 134 and 135 of the Trade Marks Act, 1999, praying for the following judgment and decree:-
in CS 687 of 2014
a. A permanent injunction restraining the defendants, their manufacturers, distributors, stockists, servants, agents, wholesalers, retailers, legal representatives or any other person claiming under it from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations infringing plaintiff's registered trademark BUPRON by use of almost identical trademark BUPRO or any mark identical or similar to Plaintiff's registered trademark BUPRON or in any other manner whatsoever;
b. A permanent injunction restraining the defendants, their manufacturers, distributors, stockists, servants, agents, wholesalers, retailers, legal representatives or any other person claiming under it from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations under the trademark BUPRO or any other trademark that is identical and/or deceptively similar as that of the plaintiff's registered trademark BUPRON and/or use similar packaging as that of the plaintiff's products under the mark BUPRON so as to pass off the defendants' medicinal preparations as and for the medicinal preparations of the plaintiff and/or in any other manner whatsoever connected with the plaintiff;
c. the defendants be ordered to pay to the plaintiff a sum of Rs.1,00,000/- as liquidated damages for committing acts as infringement against plaintiff's registered trademark so as to pass off its products as and for the plaintiff's products;
d. the defendants be ordered and decreed to deliver up for destruction to the plaintiff all the preparations, dies, blocks, labels, packaging either filled or empty, brochures, leaflets, pamphlets, hand bills, hoardings, wall posters, calendars, carry bags, stationery items and such other sales promotional materials bearing and/or containing the impugned trademark BUPRO;
e. A preliminary decree be passed in favour of the plaintiff directing the defendants to render accounts of profits made by it by use of the trademarks BUPRO which is identical and/or deceptively similar and a final decree be passed in favour of the plaintiff for the amount of profits found to have been made by the defendants after the latter have rendered accounts;
f. for costs of the entire proceedings.
in CS 703 of 2014
(a) A permanent injunction restraining the defendant, their manufacturers, distributors, stockists, servants, agents, wholesalers, retailers, legal representatives or any other person claiming under it from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations infringing plaintiff's registered trademark LOBAZAM by use of almost identical trademark LOBAZ or any mark identical or similar to Plaintiff's registered trademark LOBAZAM or in any other manner whatsoever;
(b) A permanent injunction restraining the defendant, their manufacturers, distributors, stockists, servants, agents, wholesalers, retailers, legal representatives or any other person claiming under it from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations under the trademark LOBAZ or any other trademark that is identical and/or deceptively similar as that of the plaintiff's registered trademark LOBAZAM and/or use similar packaging as that of the plaintiff's products under the mark LOBAZAM so as to pass off the defendant's medicinal preparations as and for the medicinal preparations of the plaintiff and/or in any other manner whatsoever connected with the plaintiff
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