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2012 Supreme(Del) 3347
IN THE HIGH COURT OF DELHI
Manmohan Singh, J.
Cadila Healthcare Ltd. - Appellant
Versus
Aureate Healthcare Pvt. Ltd. And Another - Respondents
I.A. No. 800 of 2011 and I.A. No. 4580 of 2011 in CS (OS) No. 123 of 2011
Decided On : 30-07-2012
Advocate Appeared:
For the Appellant : Prathiba M. Singh and Ms. Bitika Sharma
For the Respondent: M.L. Mangla, with Mr. Manish Singhal, Anikit Mangla and Mr. Amjad Hussain
Headnote:
PANTODAC - TRADE MARK - INFRINGEMENT - PASSING OFF - SIMILARITY OF MARKS - DECEPTIVE SIMILARITY - ANTIDISSECTION RULE - GENERIC TERMS - COMMON TO THE TRADE - DELAY - BALANCE OF CONVENIENCE - INJUNCTION.
Fact of the Case:
Plaintiff, the registered proprietor of the trademark PANTODAC, filed a suit for infringement of trademark and passing off against the defendants, who were using the trademark PANTOBLOC for similar pharmaceutical products. The defendants contended that the two trademarks were not deceptively similar, that the term PANTO was a generic term common to the trade, and that the plaintiff was guilty of delay in bringing the suit.
Finding of the Court:
The court held that the two trademarks were deceptively similar and that the defendants' use of the trademark PANTOBLOC constituted infringement of the plaintiff's trademark. The court also held that the term PANTO was not a generic term common to the trade and that the plaintiff was not guilty of delay in bringing the suit. The court granted an injunction restraining the defendants from using the trademark PANTOBLOC.
Issues: 1. Whether the two trademarks were deceptively similar. 2. Whether the term PANTO was a generic term common to the trade. 3. Whether the plaintiff was guilty of delay in bringing the suit.
Ratio Decidendi: 1. The court applied the anti-dissection rule and held that the two trademarks were to be compared as a whole. The court found that the two trademarks were visually and phonetically similar and that they would be likely to cause confusion in the minds of consumers. 2. The court held that the term PANTO was not a generic term common to the trade. The court noted that the term PANTO was derived from the chemical name of the active ingredient in the pharmaceutical products, and that it was not commonly used in the trade to refer to those products. 3. The court held that the plaintiff was not guilty of delay in bringing the suit. The court noted that the plaintiff had filed the suit within five years of becoming aware of the defendants' use of the trademark PANTOBLOC.
Final Decision: The court granted an injunction restraining the defendants from using the trademark PANTOBLOC.
JUDGMENT :
Manmohan Singh, J.
By this order, I propose to decide following two pending applications, i.e. I.A. No. 800/2011 under Order XXXIX, Rules 1 & 2 of the Code of Civil Procedure, 1908 (in short, called "CPC") filed by the plaintiff and I.A. No. 4580/2011 under Order XXXIX, Rule 4 CPC filed by the defendants. The plaintiff filed the suit for infringement of trade mark and passing off etc. By order dated 1st February, 2011 passed in I.A. No. 800/2011, the defendant No. 1 was restrained from using the trade mark "PANTOBLOC".
PLAINTIFF'S CASE
2. "PANTODAC" is a registered trademark of the plaintiff under No. 723200 as of 30th October, 1996 in Class-5 and has been used by the plaintiff since year 1999. The annual sales figures of plaintiff's product under the mark/name "PANTODAC" are to the tune of Rs.43.26 crores for the year 2007 and the latest sales figures the plaintiff's products under the mark "PANTODAC" as per the Retail Market Survey Report of the Organizational Research Group (ORG) are given herein :
Period Sales (Rs. In Crores)
01.04.2008 to 31.03.2009 44.90
01.04.2009 to 31.03.2010 55.00
01.04.2010 to 28.02.2011 60.20
3. The product of plaintiff sold under the trade mark "PANTODAC" is available over the counters on prescription across the country from the date of its first formation and launch in the year 1999. The plaintiff claims that the plaintiff was the first to coin and adopt the trade mark "PANTODAC" for its product.
4. The registration continues to remain valid and the mark continues to be there on the register. Thus plaintiff's case is that in case of any use of a deceptively similar trademark, the consequences of infringement under the provision of Section 29 of the Trade Marks Act, 1999 must follow as the defendants in the present case are using the impugned trademark for identical product of that of plaintiff i.e. "PANTAPRAZOLE TABLETS AND INJECTIONS".
5. Any use of an identical or deceptively similar mark by any other party would amount to infringement of trade mark.
6. It is alleged by the plaintiff that the defendants have adopted the mark "PANTOBLOC" in respect of pharmaceutical preparations and medicines and claimed use of the mark since 19th January, 2003. Defendant No. 1 had filed an application for registration of trademark "PANTOBLOC" in year 2006 under No. 1467029 which has been duly opposed by the plaintiff.
7. Case of the plaintiff is that rival marks used by the parties, i.e. PANTODAC and PANTOBLOC in relation to identical goods are almost identical with or deceptively similar. Thus, case of infringement is made out.
8. THE DEFENDANTS' CASE
a) Total sales figures of the defendant No. 1 as well as sales of "medicines" under the trade mark "PANTOBLOC" were Rs.10.49 lacs for the year 2010-11 till the date of injunction order whereas total sales of the said medicines under the trade mark "PANTOBLOC" since its inception were more than Rs.25 lac whereas the total sales of the defendant No. 1 since its inception has exceeded Rs.20 crores till date.
b) That a number of other companies are using the term "PANTO" as prefix in respect of the medicines containing "PANTOPRAZOLE". The plaintiff has admitted this fact in para 5 of its affidavit filed pursuant to the orders of this court.
c) The term "PANTO" is a generic term which has become "publici juris" in respect of medicines containing chemical salt "PANTOPRAZOLE" and as such, nobody including the plaintiff can claim any right over the term "PANTO". It has been held that "Nobody can claim exclusive rights to use any generic word, abbreviation or acronym which has become publici juris. In the trade of drugs, it is common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such a term being in public jurisdiction cannot be owned by anyone for use as a trade mark. By own admissions of the plaintiff, a number of companies including three major companies who hold major share of the market, are using the term "
