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2021 Supreme(Online)(MAD) 38696
IN THE HIGH COURT OF JUDICATURE AT MADRAS Reserved on Delivered on
18.08.2021 23.09.2021 CORAM THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN C.S.Nos.687, 703 and 704 of 2014, OA Nos.868 & 870 of 2014 and A.Nos.5519, 5520 & 5521 of 2019 in CS No.687 of 2014 Sun Pharma Laboratories Limited, 187, St. Mary's Road, Alwarpet, Chennai 600 018 Rep by its Authorized Signatory Ms.Chandra Nahata ... Plaintiff Vs
1. D.D.Pharmaceuticals Private Limited, G-1/583, Sitapura Industrial Area, RIICO, Tank Road, Jaipur 302 022, Rajasthan.
2, Lifecare Formulations Private Limited, Plot No.2 & 3, 91/5, Link Road, Sonia Gandhi Nagar Extension, Near Mettupalayam Industrial Estate, Mettupalayam, Puducherry 605 009. ... Defendants Sun Pharma Laboratories Limited, 187, St. Mary's Road, Alwarpet, Chennai 600 018 Rep by its Authorized Signatory Ms.Chandra Nahata ... Plaintiff Vs D.D.Pharmaceuticals Private Limited, G-1/583, Sitapura Industrial Area, RIICO, Tank Road, Jaipur 302 022, Rajasthan. ... Defendant 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;
(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 LOBAZ;
(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 LOBAZ 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 704 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 QUTIPIN by use of deceptively similar trademark QUPIN or any mark similar to plaintiff's registered trademark QUTIPIN;
(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 QUPIN or any other trademark that is identical and/or deceptively similar as that of the plaintiff's registered trademark QUTIPIN and/or use similar packaging as that of the plaintiff's products under the mark QUTIPIN 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;
(c) the defendant be ordered to pay to the plaintiff a sum of Rs.1,00,000/- as liquidated damages for committing acts of infringement against plaintiff's registered trademark so as to pass off its products as and for the plaintiff's products;
(d) the defendant 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 QUPIN;
(e) A preliminary decree be passed in favour of the plaintiff directing the defendant to render accounts of profits made by it by use of the trademarks QUPIN 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 defendant after the latter has rendered accounts;
(f) for costs of the entire proceedings.
For Plaintiff : Mr. Arun C. Mohan (in all the Suits)
For Defendants : Mr.R.Sathish Kumar (in all the petitions)
C O M M O N J U D G M E N T
1. The parties to the above three suits are the same. They are producers of pharmaceutical products. The plaintiff namely Sun Pharma Laboratories Limited, has come up with these suits on the ground that the defendant which is a subsequent user is infringing the registered marks of the plaintiff in respect of three different products which are medicines to treat depression, seizure, bipolar disorders and schizophrenia.
1.1. The claim of the plaintiff in CS No.687 of 2014 is that the first defendant has named its medicinal preparation to treat depression as ‘BUPRO’ which is phonetically and visually similar to its product ‘BUPRON’ which is also used in treatment of the same disease namely depression had infringed the registered trademark of the plaintiff. The plaintiff would claim that its predecessor started using the name ‘BUPRON’ for its pharmaceutical preparation from 12.07.2001 and it had obtained a valid registration on 12.07.2001. The plaintiff would also claim that the user of the name ‘BUPRO’ by the defendant would amount to passing off its products as that of the plaintiff’s.
1.2. It is the further contention of the plaintiff that the drug ‘BUPRON’
manufactured by the plaintiff has acquired a significant market share and the turnover which was about 67.05 lakhs in the year 2001 to 2002 had significantly increased to 476.05 lakhs during the year 2011 to 2012. It is also claimed by the plaintiff that its predecessor which started using the name ‘BUPRON’ in the year 2001 had spent huge amounts for advertising and for circulation of the trade literature, pamphlets, product manual, etc. It had also popularised the drug among the medical practitioners as well as the general public at a huge cost. The defendant by naming its product as ‘BUPRO’ which is deceptively similar both visually and phonetically to the registered trademark of the plaintiff is attempting to encash upon the popularity of the plaintiff’s product.
1.3. On the above contentions, the plaintiff would seek a permanent injunction restraining the defendant from infringing the trademark of the plaintiff by using the identical trademark ‘BUPRO’ or any other mark which is identical or similar to the plaintiff’s trademark ‘BUPRON’. A permanent injunction restraining the defendant from passing off its medicinal preparation as that of the plaintiff has also been sought for. A prayer for a direction to deliver up the preparations, dies, blocks, labels, packaging materials, brochures, leaflets etc., for destruction has been sought for and a decree for accounting apart from liquidated damages has been claimed by the plaintiff.
2. This claim is resisted by the defendant contending that it is also manufacturing tablets for treatment of depression and the products of the plaintiff as well as the defendant being applied in treatment of the same disease and being manufactured from the same active pharmaceutical ingredient viz., Bupropion Hydrochloride, the action of the defendant in adopting a part of the name of the active pharmaceutical ingredient for its end product is in consonance with the common trade practice in the pharmaceutical industry.
2.1. 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. The defendant would further add that major pharmaceutical manufacturers have named their product after the active pharmaceutical ingredient and therefore, such naming would not amount to infringement of the trademark of the plaintiff. It is also pointed out that the fact that the drug is a ‘Schedule H Drug’ which is sold only on the prescription of a registered medical practitioner, the claim of deceptive similarity cannot be countenanced. It is the further claim of the defendant that the protection afforded to a manufacturer who uses a part of the name of the active pharmaceutical ingredient is much less than an invented word or a coined name. The fact that the drug in ques
