Full Judgment Text
* THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No. 336/2005
Date of Decision: 14.03.2013
GLAXOSMITHKLINE PHARMA LTD. ..….Plaintiff
Through: Mr. Sushant Singh, Mr. P.C.
Arya, Mr. V.K. Shukla & Ms.
Geetika Kapoor, Advs.
Versus
HIDUSTAN MEDIBIOTIC …...Defendant
Through: Nemo.
CORAM:
HON’BLE MR. JUSTICE M.L. MEHTA
M.L. MEHTA, J. (Oral)
1. The plaintiff is engaged inter-alia in the manufacture, marketing
and world-wide distribution of a wide-range of pharmaceutical,
medicinal and veterinary preparations under various trademarks and
copyrights. The present suit is with respect to the trademark HITEK
and the copyright of the artistic work of the packing material/carton of
the product. The plaintiff has contended that it is the proprietor of the
said trademark and that the registration of the trademark is pending in
the trademark registry vide application No. 1176779 in Class-5. The
plaintiff has claimed to be the user of the said trademark since January
2003.
CS (OS) No. 336/2005 Page 1 of 8
2. The plaintiff seeks permanent injunction against the
infringement of copyright and passing off with respect to the plaintiff‟s
packaging under the trademark HITEK in respect of pharmaceutical,
veterinary and sanitary substances. The plaintiff has contended that the
defendant is marketing its product ITEK , which is deceptively similar
to the trade mark, packing carton, get-up, and colour scheme of the
plaintiff‟s product.
3. The plaintiff has contended that it is using the said trademark
HITEK in respect of Ivermectin Injection which is used for the
treatment and control of internal and external parasites of cattle, sheep
and camel. The HITEK injection is said to contain a combination of
Ivermectin B.P. 10mg and Benzyl Alcohol I.P.85 15mg for each ml.
The packing of the material/carton is contended to be the original
artistic work of the plaintiff within the meaning of Sec. 29(c) of the
Copyright Act, 1957. It is also contended that the plaintiff is the first
person in India to have designed the said carton with the distinctive
colour scheme, getup, layout and unique features. The description of
the plaintiff‟s carton is as follows.
4. The carton has a white background with the upper portion of the
carton containing the trademark HITEK in red colour enclosed inside
a red rectangle. Above this, the words IVERMECTIN INJECTION are
present in black colour. The middle potion of the carton has a white
strip showing cattle, camel, cow and sheep. At the bottom portion,
there is a line above which the descriptive matters and the name of the
CS (OS) No. 336/2005 Page 2 of 8
manufacturing and marketing company are enclosed. The plaintiff
claims to be the user of the said packing/carton since January 2003 and
has annexed the carton as Exhibit PW1/4.
5. The plaintiff has contended that by virtue of extensive
advertisement on a large scale, it has earned substantial reputation and
good will in connection with the above trademark as well as carton.
And that the purchasing public not only identifies the product of the
plaintiff with the trademark HITEK , but also with the distinctive
colour scheme, getup and layout of the carton. And that as a result, the
plaintiff‟s product has earned an enviable goodwill and reputation due
to its intrinsic and good quality.
6. The plaintiff has contended that in the last week of December
2004, it became aware through its representatives that the defendant
has very recently started marketing and selling its Ivermectin Injection
under the trademark ITEK . The plaintiff also became aware that the
defendants products were not only marketed with a deceptively similar
trade mark, but also packaged in a carton having similar getup, colour
scheme and layout with that of the plaintiff‟s packing carton. The
plaintiff also contends that the defendant has consciously made a few
minor changes in the packaging of its product, without changing the
overall impact created in the minds of the purchasing public who
recognize the pattern of the carton as being distinctive representation
of the plaintiff‟s product.
CS (OS) No. 336/2005 Page 3 of 8
7. The plaintiff has contended that the defendant has copied the
trademark of the Plaintiff by simply removing the letter H from
HITEK and adopting ITEK as their trademark, which is deceptively
similar to the trade mark of the plaintiff. Further, the plaintiff has also
contended that by using a deceptively similar packing/carton, the
defendant has infringed the copyright of the plaintiff‟s packing/carton.
It is also contended that the defendant is not disclosing where the
product has been manufactured because the packing/carton only
discloses the name of the firm. The plaintiff has also contended that the
illegal and unauthorised imitation of the plaintiff‟s trademark as well
as packing/carton is calculated to deceive the purchasing public into
believing that the defendant‟s goods are those of the plaintiff or in
some way connected with the plaintiff.
8. In this regard, the plaintiff has submitted that the cause of action
arose during the last week of December. 2004 when the defendant‟s
products were noticed for the first time in the market by the plaintiff‟s
representative. It also submitted that the cause of action continues to
subsist till such time the defendant is restrained by an order of
injunction is passed by this Court. And the plaintiff has also submitted
that this Court has the jurisdiction to entertain and try the present suit
as the defendant is marketing its product in Delhi and is working for
gain within the jurisdiction of this Court.
9. It is pertinent to note at this stage that vide IA 12540/2006 filed
under Order XXII Rule 10 of CPC, the plaintiff has submitted that
CS (OS) No. 336/2005 Page 4 of 8
during the pendency of this suit, the plaintiff has assigned the trade
mark HITEK in favour of M/s. Virbac Animal Health India Pvt. Ltd..
Vide Order dated 216.02.2007, the substitution of the plaintiff as M/s.
Virbac Animal Health Pvt. Ltd. has been allowed. Vide Order dated
20.05.2010, the opportunity to file Written Statement was closed and
the matter was listed for ex-parte evidence.
10. Counsel for the Plaintiff has identified Ex. PW1/1 as the
photocopy of the power of attorney dated 21.07.2003 in favour of Sh.
K. Patel. He has also identified Ex. PW1/3 to be the copy of the
acknowledgment against application for registration of trademark. And
he has also identified Ex. PW1/4 to be the original carton of the
plaintiff‟s product and Ex. PW1/5 to be the original carton of the
infringing copy belonging to the defendant. He has also tendered that
Ex. PW2/1 is the photocopy of the deed of assignment dated
31.07.2006. Ex PW1/2 is not placed on record.
11. In support of its contentions, the plaintiff has sought to rely on
the decision of the Apex Court in the landmark case of Cadila Health
Care Ltd. v. Cadila Pharmaceuticals Ltd. , AIR 2001 SC 1952 ( Cadila
Case ) and the decision of this court in the case of Remidex Pharma
Pvt. Ltd. v. Savita Pharmaceuticals Pvt. Ltd. & Anr. , 2006 (33) PTC
157 (Del.) ( Remidex Case ).
12. I have heard the submissions of the counsel for plaintiff and also
compared the two cartons placed on record. I am of the view that that
CS (OS) No. 336/2005 Page 5 of 8
the two cartons are substantially similar. The defendant‟s carton as
placed on record as Ex. PW1/5 is nearly identical to that of the
plaintiff‟s. The carton has a white background with the upper portion
of the carton containing the trademark ITEK in red colour enclosed in
a red rectangle. Above this are the words IVERMECTIN INJECTION
in black colour. The middle potion of the carton has a white strip
showing the outline of a cow, sheep and a camel. At the bottom
portion, there is a line above which the descriptive matters and the
name of the manufacturing and marketing company are mentioned as
Hindustan Medibiotic. The composition of the injection is also the
same as that of the plaintiff, containing a combination of Ivermectin
B.P. 10mg and Benzyl Alcohol I.P.85 15mg for each ml.
13. With respect to the injunction which is sought for by the
plaintiff, it is pertinent to take note of the observations of the Apex
Court in the Cadila Case . The Apex Court, observing that confusion of
source of product between medicinal products may produce physically
harmful results to purchasers and greater protection is required than in
the ordinary case, formulated the following test:
“ Broadly stated in an action for passing off on the basis of
unregistered trade mark generally for deciding the
question of deceptive similarity the following factors to be
considered:
a) The nature of the marks i.e. whether the marks are
word marks or label marks or composite marks, i.e.
both words and label works.
CS (OS) No. 336/2005 Page 6 of 8
b) The degree of resemblances between the marks,
phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they
are used as trade marks.
d) The similarity in the nature, character and
performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the
goods bearing the marks they require, on their
education and intelligence and a degree of care they
are likely to exercise in purchasing and/or using the
goods.
f) The mode of purchasing the goods or placing
orders for the goods and
g) Any other surrounding circumstances which may
be relevant in the extent of dissimilarity between the
competing marks ”
14. Further, in the Remidex Case , this Court had examined a similar
case with phonetically similar trademarks regarding medicinal drugs
„ZEVIT‟ and „EVIT‟. The Court held:
“ Comparing the marks 'ZEVIT' and 'EVIT', I find that the
prefixes 'ZE' and 'E' are phonetically quite similar. The
suffix 'VIT' is common to both the marks and is, indeed,
identical. The marks taken as a whole, therefore, include
identical suffixes and quite similar prefixes, therefore, in
my view, the inescapable conclusion is that the mark
'EVIT' is deceptively similar to the registered trademark
'ZEVIT' of which the plaintiff is the proprietor. ”
CS (OS) No. 336/2005 Page 7 of 8
15. I have no doubt in my mind that defendants, by using such
colour scheme and other features, have dishonestly adopted the artistic
work of the plaintiff. I am further satisfied that the plaintiff is the prior
user not only of the trademark HITEK and that the defendant‟s trade
mark ITEK is intended to deceive the purchasing public. Since the
Counsel for the plaintiff has stated that he is not willing to pursue the
prayers regarding delivery-up of infringing goods and accounts
therefore, I dispose of the suit by passing a decree of permanent
injunction in favour of the plaintiff restraining defendant from passing
off by manufacturing, selling, distributing Ivermectin Injections or
other pharmaceutical, veterinary or sanitary substances under the trade
mark ITEK using the colour scheme and getup of the packing/carton
similar to that of the plaintiff.
M.L. MEHTA, J.
MARCH 14, 2013
kk
CS (OS) No. 336/2005 Page 8 of 8
+ CS(OS) No. 336/2005
Date of Decision: 14.03.2013
GLAXOSMITHKLINE PHARMA LTD. ..….Plaintiff
Through: Mr. Sushant Singh, Mr. P.C.
Arya, Mr. V.K. Shukla & Ms.
Geetika Kapoor, Advs.
Versus
HIDUSTAN MEDIBIOTIC …...Defendant
Through: Nemo.
CORAM:
HON’BLE MR. JUSTICE M.L. MEHTA
M.L. MEHTA, J. (Oral)
1. The plaintiff is engaged inter-alia in the manufacture, marketing
and world-wide distribution of a wide-range of pharmaceutical,
medicinal and veterinary preparations under various trademarks and
copyrights. The present suit is with respect to the trademark HITEK
and the copyright of the artistic work of the packing material/carton of
the product. The plaintiff has contended that it is the proprietor of the
said trademark and that the registration of the trademark is pending in
the trademark registry vide application No. 1176779 in Class-5. The
plaintiff has claimed to be the user of the said trademark since January
2003.
CS (OS) No. 336/2005 Page 1 of 8
2. The plaintiff seeks permanent injunction against the
infringement of copyright and passing off with respect to the plaintiff‟s
packaging under the trademark HITEK in respect of pharmaceutical,
veterinary and sanitary substances. The plaintiff has contended that the
defendant is marketing its product ITEK , which is deceptively similar
to the trade mark, packing carton, get-up, and colour scheme of the
plaintiff‟s product.
3. The plaintiff has contended that it is using the said trademark
HITEK in respect of Ivermectin Injection which is used for the
treatment and control of internal and external parasites of cattle, sheep
and camel. The HITEK injection is said to contain a combination of
Ivermectin B.P. 10mg and Benzyl Alcohol I.P.85 15mg for each ml.
The packing of the material/carton is contended to be the original
artistic work of the plaintiff within the meaning of Sec. 29(c) of the
Copyright Act, 1957. It is also contended that the plaintiff is the first
person in India to have designed the said carton with the distinctive
colour scheme, getup, layout and unique features. The description of
the plaintiff‟s carton is as follows.
4. The carton has a white background with the upper portion of the
carton containing the trademark HITEK in red colour enclosed inside
a red rectangle. Above this, the words IVERMECTIN INJECTION are
present in black colour. The middle potion of the carton has a white
strip showing cattle, camel, cow and sheep. At the bottom portion,
there is a line above which the descriptive matters and the name of the
CS (OS) No. 336/2005 Page 2 of 8
manufacturing and marketing company are enclosed. The plaintiff
claims to be the user of the said packing/carton since January 2003 and
has annexed the carton as Exhibit PW1/4.
5. The plaintiff has contended that by virtue of extensive
advertisement on a large scale, it has earned substantial reputation and
good will in connection with the above trademark as well as carton.
And that the purchasing public not only identifies the product of the
plaintiff with the trademark HITEK , but also with the distinctive
colour scheme, getup and layout of the carton. And that as a result, the
plaintiff‟s product has earned an enviable goodwill and reputation due
to its intrinsic and good quality.
6. The plaintiff has contended that in the last week of December
2004, it became aware through its representatives that the defendant
has very recently started marketing and selling its Ivermectin Injection
under the trademark ITEK . The plaintiff also became aware that the
defendants products were not only marketed with a deceptively similar
trade mark, but also packaged in a carton having similar getup, colour
scheme and layout with that of the plaintiff‟s packing carton. The
plaintiff also contends that the defendant has consciously made a few
minor changes in the packaging of its product, without changing the
overall impact created in the minds of the purchasing public who
recognize the pattern of the carton as being distinctive representation
of the plaintiff‟s product.
CS (OS) No. 336/2005 Page 3 of 8
7. The plaintiff has contended that the defendant has copied the
trademark of the Plaintiff by simply removing the letter H from
HITEK and adopting ITEK as their trademark, which is deceptively
similar to the trade mark of the plaintiff. Further, the plaintiff has also
contended that by using a deceptively similar packing/carton, the
defendant has infringed the copyright of the plaintiff‟s packing/carton.
It is also contended that the defendant is not disclosing where the
product has been manufactured because the packing/carton only
discloses the name of the firm. The plaintiff has also contended that the
illegal and unauthorised imitation of the plaintiff‟s trademark as well
as packing/carton is calculated to deceive the purchasing public into
believing that the defendant‟s goods are those of the plaintiff or in
some way connected with the plaintiff.
8. In this regard, the plaintiff has submitted that the cause of action
arose during the last week of December. 2004 when the defendant‟s
products were noticed for the first time in the market by the plaintiff‟s
representative. It also submitted that the cause of action continues to
subsist till such time the defendant is restrained by an order of
injunction is passed by this Court. And the plaintiff has also submitted
that this Court has the jurisdiction to entertain and try the present suit
as the defendant is marketing its product in Delhi and is working for
gain within the jurisdiction of this Court.
9. It is pertinent to note at this stage that vide IA 12540/2006 filed
under Order XXII Rule 10 of CPC, the plaintiff has submitted that
CS (OS) No. 336/2005 Page 4 of 8
during the pendency of this suit, the plaintiff has assigned the trade
mark HITEK in favour of M/s. Virbac Animal Health India Pvt. Ltd..
Vide Order dated 216.02.2007, the substitution of the plaintiff as M/s.
Virbac Animal Health Pvt. Ltd. has been allowed. Vide Order dated
20.05.2010, the opportunity to file Written Statement was closed and
the matter was listed for ex-parte evidence.
10. Counsel for the Plaintiff has identified Ex. PW1/1 as the
photocopy of the power of attorney dated 21.07.2003 in favour of Sh.
K. Patel. He has also identified Ex. PW1/3 to be the copy of the
acknowledgment against application for registration of trademark. And
he has also identified Ex. PW1/4 to be the original carton of the
plaintiff‟s product and Ex. PW1/5 to be the original carton of the
infringing copy belonging to the defendant. He has also tendered that
Ex. PW2/1 is the photocopy of the deed of assignment dated
31.07.2006. Ex PW1/2 is not placed on record.
11. In support of its contentions, the plaintiff has sought to rely on
the decision of the Apex Court in the landmark case of Cadila Health
Care Ltd. v. Cadila Pharmaceuticals Ltd. , AIR 2001 SC 1952 ( Cadila
Case ) and the decision of this court in the case of Remidex Pharma
Pvt. Ltd. v. Savita Pharmaceuticals Pvt. Ltd. & Anr. , 2006 (33) PTC
157 (Del.) ( Remidex Case ).
12. I have heard the submissions of the counsel for plaintiff and also
compared the two cartons placed on record. I am of the view that that
CS (OS) No. 336/2005 Page 5 of 8
the two cartons are substantially similar. The defendant‟s carton as
placed on record as Ex. PW1/5 is nearly identical to that of the
plaintiff‟s. The carton has a white background with the upper portion
of the carton containing the trademark ITEK in red colour enclosed in
a red rectangle. Above this are the words IVERMECTIN INJECTION
in black colour. The middle potion of the carton has a white strip
showing the outline of a cow, sheep and a camel. At the bottom
portion, there is a line above which the descriptive matters and the
name of the manufacturing and marketing company are mentioned as
Hindustan Medibiotic. The composition of the injection is also the
same as that of the plaintiff, containing a combination of Ivermectin
B.P. 10mg and Benzyl Alcohol I.P.85 15mg for each ml.
13. With respect to the injunction which is sought for by the
plaintiff, it is pertinent to take note of the observations of the Apex
Court in the Cadila Case . The Apex Court, observing that confusion of
source of product between medicinal products may produce physically
harmful results to purchasers and greater protection is required than in
the ordinary case, formulated the following test:
“ Broadly stated in an action for passing off on the basis of
unregistered trade mark generally for deciding the
question of deceptive similarity the following factors to be
considered:
a) The nature of the marks i.e. whether the marks are
word marks or label marks or composite marks, i.e.
both words and label works.
CS (OS) No. 336/2005 Page 6 of 8
b) The degree of resemblances between the marks,
phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they
are used as trade marks.
d) The similarity in the nature, character and
performance of the goods of the rival traders.
e) The class of purchasers who are likely to buy the
goods bearing the marks they require, on their
education and intelligence and a degree of care they
are likely to exercise in purchasing and/or using the
goods.
f) The mode of purchasing the goods or placing
orders for the goods and
g) Any other surrounding circumstances which may
be relevant in the extent of dissimilarity between the
competing marks ”
14. Further, in the Remidex Case , this Court had examined a similar
case with phonetically similar trademarks regarding medicinal drugs
„ZEVIT‟ and „EVIT‟. The Court held:
“ Comparing the marks 'ZEVIT' and 'EVIT', I find that the
prefixes 'ZE' and 'E' are phonetically quite similar. The
suffix 'VIT' is common to both the marks and is, indeed,
identical. The marks taken as a whole, therefore, include
identical suffixes and quite similar prefixes, therefore, in
my view, the inescapable conclusion is that the mark
'EVIT' is deceptively similar to the registered trademark
'ZEVIT' of which the plaintiff is the proprietor. ”
CS (OS) No. 336/2005 Page 7 of 8
15. I have no doubt in my mind that defendants, by using such
colour scheme and other features, have dishonestly adopted the artistic
work of the plaintiff. I am further satisfied that the plaintiff is the prior
user not only of the trademark HITEK and that the defendant‟s trade
mark ITEK is intended to deceive the purchasing public. Since the
Counsel for the plaintiff has stated that he is not willing to pursue the
prayers regarding delivery-up of infringing goods and accounts
therefore, I dispose of the suit by passing a decree of permanent
injunction in favour of the plaintiff restraining defendant from passing
off by manufacturing, selling, distributing Ivermectin Injections or
other pharmaceutical, veterinary or sanitary substances under the trade
mark ITEK using the colour scheme and getup of the packing/carton
similar to that of the plaintiff.
M.L. MEHTA, J.
MARCH 14, 2013
kk
CS (OS) No. 336/2005 Page 8 of 8