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DELHI HIGH COURT
Valmiki J. Mehta, J.
Smithkline Beecham Plc. & Anr. —Plaintiffs
versus
Sunil Sarmalkar & Ors. —Respondents
CS(OS) No. 1181/2003
Decided on 5.10.2012
For the Plaintiffs:Mr. Saif Khan and Mr. Raunaq Kamath, Advocates.
For the Defendants: None.
IMPORTANT POINT
Though the object of the Trade Marks Act is to protect the proprietary rights of a registered trade mark holder, at the same time the object is not to facilitate any monopoly of such trade mark holder despite non-use of the trade mark by him.
Headnote:(i) Trade Marks Act—Registered Trade Mark PANAMAX—Relief of infringement—Defendants proceeded ex parte—Mere registration of a Trade Mark cannot confer a right unless goods were sold under said Trade Mark—Issue of distinctiveness qua a trade-mark is necessarily with reference to sales made under the trade mark—No proof filed by plaintiff of actual user of trade mark PANAMAX in India—A self serving statement in evidence would not be enough—Plaintiff would not be entitled to injunction. (Paras 7 to 12)
(ii) Trade Marks Act—Passing off—Trade Mark PARAMAX—Plaintiff’s case of transborder reputation on the basis of sale of Paracetamol Tablets under the Trade Mark PARAMAX—A mere self-serving statement in affidavit by way of evidence could not be the discharge of proof with respect to vital issue of transborder reputation—Two elements of transborder reputation to be established were the actual sales abroad prior to use of trade-mark by defendants and secondly that there was a spill over reputation of such marks in India—Plaintiff failed to file any document to discharge the onus and thus were not entitled to injunction. (Paras 13 to 15)
(iii) Copyright Act, 1957—Section 13(1)(a)—Right is granted with respect to an original work—Copyright claimed by plaintiff in an artistic work i.e. a swirl device associated with its trade mark product—Since plaintiffs had failed to prove their case of sale of product under trade mark, relief based on copyright could not be granted.
Held: A copyright is granted with respect to an original work in terms of Section 13(1)(a) of the Copyright Act, 1957. In the present case the stand of the plaintiffs with respect to copyright is a copyright in an artistic work. A swirl device in my opinion cannot be said to be such an original artistic work that copyright in the same should subsist. An elliptical design or swirl pattern at best would be for distinguishing goods of the plaintiffs from those of others, and in fact normally would be treated as necessary to decide the issue of passing off in the facts of a particular case. The object of granting of copyright under the Copyright Act is only if there exists original literary, artistic, musical, and cinematographical work. Copyright claim in certain patterns or designs or shapes etc which are well known are really in the nature of a trade mark used with respect to goods and not with respect to an issue of originality in a work for granting of copyright in the same unless the same is really an original work entitling grant of copyright. Since in the present case as already stated above plaintiffs have miserably failed to prove their case of sales even this relief based on copyright claim cannot be granted to the plaintiffs. (Para 18)
Result: Suit dismissed.
Valmiki J. Mehta, J.—The subject suit has been filed by the plaintiffs seeking the reliefs of injunction, rendition of accounts, etc. with respect to two trade marks namely PARAMAX and PANAMAX which are stated to be used by the plaintiffs for paracetamol tablets. The defendants are stated to be using the mark ‘Effer-PARAMAX’ for dissolvable paracetamol tablets.
2. The suit so far as the reliefs qua the trade mark PANAMAX is concerned is based on the registration of the trade mark in India. The registration certificate has been filed and proved on record as Ex.PW1/2. So far as the relief qua the trade mark PARAMAX is concerned, the suit is based on the ground of passing off inasmuch as there is no registration of the said trade mark in India.
3. Defendants initially appeared and filed a joint written statement. They thereafter stopped appearing and were proceeded ex parte. The defendants were restrained by the exparte order dated 28.5.2003 from manufacturing and selling paracetamol tablets under the trademarks of the plaintiffs and which order has been confirmed. The defendants it appears have thus stopped manufacturing and selling and may be therefore not interested in contesting the suit.
4. The following issues were framed in this case on 02.02.2006:
“(i) Whether the plaintiff is prior adopted user and registered owner of the trademark 'Panamax' and 'Paramax'? OPP
(ii) Whether the plaintiff is the copyright owner for the Swirl device adopted for ‘Crocin’ tablets and syrup? OPP
(iii) Whether by adoption of trade mark ‘Paramax’ in respect of identical goods by the defendants amounts to infringement of plaintiff’s mark ‘Panamax’? OPP
(iv) Whether the defendants have infringed the copyright of plaintiff by substantially reproducing the ‘Swirl device of the plaintiff’ ? OPP
(v) Whether the defendant is honest user of trade mark ‘Effer Paramax’? OPD
(vi) Whether this court has no territorial jurisdiction? OPD
(vii) Whether the plaint is not properly instituted, signed and verified by the authorized person? OPD
(viii) Whether the present suit is liable to be dismissed for no cause of action? OPD
(ix) Whether the present suit is liable to be dismissed for non-joinder/misjoinder of parties? OPD
(x) Whether the defendants have passed off their goods as that of the plaintiff? OPP
(xi) Whether plaintiff is entitled to any relief as prayed in paragraph 25 of the plaint? OPP
(xii) Relief.”
5. It is settled law that in order to establish the entitlement of a person to the reliefs of infringement or passing off, it is necessary that although the defendants are ex parte plaintiffs must also prove their case. It has been held by the Supreme Court in the case of Balraj Taneja & Anr. v. Sunil Madan1 that even where there is no defence of a defendant, and the facts as stated in the plaint are such that the same required to be proved, the plaintiff is not automatically entitled to a judgment unless the plaintiff proves his/its case. Paras 42 and 45 of the said judgment are relevant and are reproduced below:-
“42. Judgment” as defined in Section 2(9) of the CPC means the statement given by the Judge of the grounds for a decree or order. What a judgment should contain is indicated in Order 20, Rule 4(2) which says that a judgment:
“shall contain a concise statement of the case, the points for determination, the decision thereon and the reasons for such decision. It should be a self-contained document from which it should appear as to what were the facts of the case and what was the controversy which was tried to be settled by the Court and in what manner. The process of reasoning by which the Court came to the ultimate conclusion and decreed the suit should be reflected clearly in the judgment.
45. Learned Counsel for respondent No. 1 contended that the provisions of Order 20, Rule 1(2) would apply only to contested cases as it is only in those cases that “the points for determination” as mentioned in this Ru
