Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Reserved on: 24 July, 2019
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Date of decision: 26 August, 2019
+ CS (COMM) 275/2019
EMAMI LIMITED ..... Plaintiff
Through: Mr. Jayant Mehta, Advocate Mr.
Avishkar Singhvi, Ms. Roohina Dua
and Mr. Cheitanya Madan,
Advocates. (M: 8588939380)
versus
SHREE BAIDYARAJ AYURVED BHAWAN
PRIVATE LIMITED ..... Defendant
Through: Mr. Pravin Anand, Mr. Manish Biala
and Mr. Ashutosh Upadhayay,
Advocates. (M: 9810333571)
CORAM:
JUSTICE PRATHIBA M. SINGH
JUDGMENT
Prathiba M. Singh, J.
I.As. 7708/2019 (u/O XXXIX Rules 1 & 2 CPC) & 8563/2019 (u/O
XXXIX Rules 3A and 4 CPC)
1. The present order disposes of the applications under Order XXXIX
Rules 1 and 2 CPC and Order XXXIX Rules 3A and 4 CPC.
Brief Facts
2. The Plaintiff – Emami Ltd. has filed the present suit seeking
protection of the mark „ ZANDU PANCHARISHTA‟ and „ PANCHARISHTA‟.
The case of the Plaintiff is that the product „ ZANDU PANCHARISHTA‟ was
launched in the year 1968 by Zandu Pharmaceutical Works ltd. This
CS (COMM) 275/2019 Page 1 of 14
company was acquired by the Plaintiff – Emami Ltd. sometime in 2008.
Thus, in the present suit, reference to the Plaintiff would include its
predecessor-in-interest. The term „PANCHARISHTA‟ is stated to have been
coined by the Plaintiff and is claimed to be an inherently distinctive
trademark. The product sold under the said mark „PANCHARISHTA‟ with
the house-mark „ ZANDU‟ is an ayurvedic digestive tonic. It treats
consumers with ailments including digestive problems, gas, heaviness in the
stomach, flatulence, belching, loss of appetite and constipation.
3. The Plaintiff admits that the product is based on the traditional Asava-
Arishtas , namely, Drakshasava, Kumariasava, Lohasava, Dashmoolarishta
and Ashwagandharish . The Plaintiff further claims that the product has been
developed with a unique formulation containing 36 ingredients, including
water, using the traditional ayurvedic science of Asavaarishta .
4. The „ ZANDU PANCHARISHTA‟ label has been registered since 1986,
and the word marks „ ZANDU PANCHARISHTA‟ and „ ZANDU
PANCHARISHTA PLUS‟ have been registered since 2010 and 2014,
respectively, in Class 5 for ayurvedic, herbal and medicinal preparations and
similar goods. The sales of the Plaintiff‟s products have risen over the years
and have been between 70 to 100 crores per year in the last five years. The
Plaintiff claims that due to the long and continuous use of over 50 years, the
trademark „PANCHARISHTA‟ is exclusively associated with the Plaintiff
and it enjoys statutory and common law rights in the same.
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5. On 13 April, 2019, the Plaintiff came across the Defendant‟s product
under the name „PANCHARISHTA‟ used along with the house-mark
„ BAIDYARAJ‟ . The Plaintiff immediately filed the present suit, seeking a
CS (COMM) 275/2019 Page 2 of 14
permanent injunction restraining infringement of its registered trademark,
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passing off and other reliefs. This Court, on 27 May, 2019, after hearing
the ld. counsels for both parties, granted an ex-parte ad-interim injunction in
the following terms:
“12. On the basis of the documents filed on record and
those that have been handed over today in Court, the
Court is satisfied that the Plaintiff has made out a
prima face case for grant of an ex-parte injunction.
These being medicinal preparations, the consumers
who consume the Plaintiffs product Zandu
Pancharishta are likely to be confused with the
Defendants‟ Baidyaraj Pancharishta product which is
meant for similar ailments. Accordingly, till the next
date, the Defendant is restrained from using,
manufacturing or selling any medicinal preparations
bearing the mark 'Pancharishta'.”
6. The Defendant moved an application under Order XXXIX Rules 3A
and 4 CPC and during the course of arguments, the Defendant proposed a
new label and name, however, since no amicable resolution could be found,
the matter was heard on merits.
Submissions of Parties
7. It is the submission of the ld. counsel for the Defendant, Mr. Pravin
Anand, arguing the application under Order 39 Rule 4 CPC, that the word
„PANCHARISHTA‟ is based on traditional ayurvedic texts. He relies on an
extract from Sarngadhara-Samhita , published from Varanasi, wherein
„ Arishta ‟ has been described as a drug which is prepared using water and
boiling the same. He submits that since the word „ Arishta‟ is an ayurvedic
preparation, no monopoly can be claimed or granted in respect of the same.
8. He further submits that during the course of registration of the
CS (COMM) 275/2019 Page 3 of 14
„ ZANDU PANCHARISHTA‟ label mark, the trademark agent appearing for
the Plaintiff had conceded that the word „Pancharishta‟ is descriptive.
Extracts from the notings of the ld. Registrar‟s file are relied upon. Mr.
Anand, ld. counsel, relies on the following judgments:
a) Marico Ltd. v. Agro Tech Foods Limited, [FAO (OS) No. 352/2010,
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decided on 1 November, 2010]
b) Schering Corporation & Anr. v. United Biotech (P) Ltd. & Anr.,
MANU/MH/1240/2010
c) Online India Capital Co. Pvt. Ltd. v. Dimensions Corporate, 2000
102 CompCas 352 Delhi
d) Satyam Infoway ltd. v. Signet Solutions P. Ltd., (2004) 6 SCC 145
e) SK Sachdeva & Anr. v. Shri Educate Ltd. & Anr., [FAO(OS)
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531/2014, decided on 25 January, 2016]
9. It is further urged that there are third parties which use the mark
„PANCHARISHTA‟, such as Planet‟s Pancharishta and Gwapha
Pancharishta, and in view of the same, no monopoly can be granted over the
mark. Additionally, it is submitted that the claim of user of the Plaintiff is
also not tenable as in paragraph 16 of the plaint, user is claimed for over 50
years, whereas in paragraph 10, the claim of user is since 2005/2006. It is
further submitted that the Plaintiff admits that „PANCHARISHTA‟ has been
used with the word „ZANDU‟, which is a prominent part of the trademark. In
fact, „ ZANDU‟ is the distinctive part and „PANCHARISHTA‟ is the
descriptive part of the mark.
10. On the other hand, Mr. Jayant K. Mehta, ld. counsel appearing for the
Plaintiff, submits that no written statement has been filed by the Defendant,
CS (COMM) 275/2019 Page 4 of 14
hence there is no denial as the Defendant has only preferred an application
under Order XXXIX, Rules 3A and 4 CPC. The Defendant does not deny
that the Plaintiff‟s product has been in existence since 1968 and in any
event, the label itself is registered in 1986 which proves that the mark is
more than 30 years old. The admitted launch by the Defendant is in 2019.
11. It is submitted that the word „PANCHARISHTA‟ , though it may be
derived from the word Arishta, has acquired a secondary meaning due to
long usage and the same is not a common word. When a Google search is
conducted on the word „PANCHARISHTA‟ almost all the search results
relate to the Plaintiff‟s product and this is evidence of the fact that there is
no other generic meaning for „PANCHARISHTA‟.
12. The mark „PANCHARISHTA‟ is a unique combination of the number
„5‟ in Devanagari /Hindi language, combined with the word Arishta . This
combination did not exist prior to the Plaintiff‟s usage. The fact that the
Plaintiff‟s product is an over the counter drug which requires DCGI
approval shows that consumers can easily purchase the Defendant‟s
products as that of the Plaintiff‟s due to the use of the word
„PANCHARISHTA‟. The Plaintiff relies on the following judgments:
a) Sun Pharma Laboratories Ltd. v. Ajanta Pharma Ltd., [CS
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(COMM) 622/2018, decided on 10 May, 2019]
b) Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449
c) Heinz Italia & Anr. v. Dabur India Ltd., (2007) 6 SCC 1
d) Pidilite Industries Limited v. Jubilant Agri & Consumer Products
Limited, (2014) 2 AIR Bom R 142
CS (COMM) 275/2019 Page 5 of 14
Analysis and Findings
13. The first and foremost question is whether the word
„PANCHARISHTA‟ is either a descriptive or a generic mark and whether
there can be any monopoly associated with the same.
14. The documents on record at this stage show that the word Arishta in
Ayurveda is a form of drug which is prepared with water. The relevant
extracts of Chapter 10 - Sandhana Kalpana (Galenicals, Fermented Liquids)
of the aforementioned ayurvedic text read as under:
“ CHAPTER 10
Sandhana Kalpana (Galenicals, Fermented liquids)
…
Water in which, drugs kept for long periods, getting
fermented are known asavas and aristhas. Such of
them useful in medical treatement are described in
chapter (1).
…
Asava is prepared in cold water without boiling the
drugs whereas aristha is prepared by boiling. The
medicinal dose of both is the same as that of water
taken for early morning drink (i.e., about two palas)
(2)”
In the above extracts from the ayurvedic text, the word Arishta is used, thus,
the word Arishta is generic to the nature of the drug and cannot be
monopolized.
15. The question, however, does not end here. Does „PANCHARISHTA‟
become generic? There is no doubt that the Plaintiff launched the product
„PANCHARISHTA‟ in 1968 and thus, the product is more than 50 years old.
The Plaintiff has relied upon the affidavit of an ayurvedic expert, Dr. Neena
Sharma, which reads as under:
CS (COMM) 275/2019 Page 6 of 14
“ I, Dr. Neena Sharma, D/o Sh. Dr. Indravadhan
Mehta, aged about 57 years, residing at 1/1A Umakant
Sen Lane. Kolkata 70030 do hereby solemnly affirm
and state as under:
1. I state that I am a qualified doctor having the degree of
B.A.M.S, MD (Ayurveda) In Ayurvedic.
2. I state that I am working as Associate Vice President
and have an experience of 29 years in the field of
Ayurveda & Ayurvedic Pharmaceutics. I say that I am
duly authorized and competent to swear the present
Affidavit on behalf of the Plaintiff Company.
3. I state that the word "Pancharishta" is not a generic
word but it is a coined word which is made by the
Plaintiff Company. In the entire Ayurvedic
Pharmacopeia, the word "Pancharishta" is not
mentioned unlike 'Chyawanprash' which is a generic
medicine whose formulation is prescribed in Ayurvedic
text books.
4. I state that "Pancharishta" is a proprietary medicine
and its formulation is prepared by Research
department of the Plaintiff Company. Ayurvedic text
books have no reference of the word "Pancharishta"
anywhere.
5. I further state that five different 'Asav' & 'Arista' (1)
Angurasava (2) Ashwagandharista (3)
Dashamoolarista (4) Kumari asava (5) Lohasava have
been combined by Zandu Pharmaceutical Works
Limited, the predecessor in interest of the Plaintiff
Company to make one medicine named Pancharistha.
6. I state that there is no such formulation existing with
any other entity in the Industry and therefore, the word
"Pancharishta" is not applicable to any other medicine
and it is an unique formulation created by the Plaintiff
Company.
7. I state that as per entire content of all Ayurvedic
Pharmacopeia under the Drugs and Cosmetics Act,
1940, there is nothing which allows anyone to use the
CS (COMM) 275/2019 Page 7 of 14
word "Pancharishta" freely other than the registered
owner of brand.”
A perusal of this affidavit shows that whereas the word „Chyawanprash‟ is
claimed to be found in ayurvedic texts, the word „PANCHARISHTA‟, a
combination of panch and arishta, is not found in any ayurvedic text. The
expert has stated that „PANCHARISHTA‟ is a proprietary medicine and the
formulation of this medicine has been prepared by the Research and
Development wing of the Plaintiff Company. She further states that five
different Arishtas have been combined to make this formulation.
16. This affidavit was filed prior to the conclusion of arguments in the
matter, however, no rebuttal has been filed by the Defendant. Moreover, in
the reply to the Order XXXIX Rules 3A and 4 CPC application, the Plaintiff
has also relied upon Google search results which show that for the word
„PANCHARISHTA‟ almost all the search results are of the Plaintiff‟s
products. There are several advertisements featuring various brand
ambassadors including, Mr. Amitabh Bachchan, Mr. M. S. Dhoni and other
ayurvedic doctors, which shows that the product of the Plaintiff has been
advertised extensively. Further, even before the Registrar of Trademarks, in
Application No. 4206808, an Affidavit of Use has been filed by the Plaintiff
to show that the mark has been used continuously since 1968. The sales
figures of the Plaintiff‟s product run into crores of rupees which reflects the
goodwill of the product. A significant fact to note is that before the Registrar
of Trademarks, there is no other application for the word
„PANCHARISHTA‟ by any manufacturer or trader. These facts clearly go to
show that while Arishta is based on an ayurvedic form of medicine, the
word „PANCHARISHTA‟ is not existing in Ayurveda and has, in fact, been
CS (COMM) 275/2019 Page 8 of 14
coined by the Plaintiff.
17. The Defendant claims that it is using the number „5‟ to signify that its
product combats 5 causes of a poor digestive system. This is completely
different from why the Plaintiff uses the word „PANCHARISHTA‟. The
Plaintiff uses „PANCHARISHTA‟ because its formulation has five traditional
Asava Arishtas. Thus, the use of the number „5‟ by the two parties is for
different reasons. A perusal of the label of the Defendant shows that Aegle
marmelos, clerodendrum phlomidis, oroxylum indicum, gmelina arborea,
stereospermum suaveolens, desmodium gangeticum, uraria picta, tribulus
terrestris, solanum indicum, solanum surattense, emblica officianalis,
terminalia bellirica, terminalia chebula, hemidesmus indicus, messua ferra,
terminalia arjuna, withania somnifera, asparagus raccemosus, tinospora
cordifolia, sida cordifolia, glycyrrhiza glabra, aloe barbadensis, vitis
vinifera, zingiber officinale, piper nigrum, cinnamomum tamala, elettaria
cardamomum, coriandrum sativum, cuminum cyminum, inula racemosa,
trachyspermum ammi, apium graveolens, syzygium aromaticum,
cinnamomum zeylinicum, woodfordia fruticosa, jaggery and water are the
ingredients used by the Defendant. The Plaintiff‟s product, on the other
hand, as per the label, additionally contains rubia cordifolia, symplocos
racemosa, piper longum, amomum subulatum, curcuma longa, hedychium
spicatum, saccharum officinarum, and does not contain uraria picta,
solanum surattense, hemidesmus indicus, messua ferra, vitis vinifera,
elettaria cardamomum, inula racemosa, apium graveolens and jaggery. The
ingredients of the two products being different, the effect on the
consumer/patients would also be different. The use of „PANCHARISHTA‟
has a scientific basis insofar as the Plaintiff is concerned, however, its use by
CS (COMM) 275/2019 Page 9 of 14
the Defendant is in a general manner and there is no reasonable basis for use
of the number „5‟ with Arishta .
18. Considering that the products are medicinal preparations, the effect of
the Plaintiff‟s product on a consumer could be considerably different than
the effect of the Defendant‟s product. The consumers may purchase the
Defendant‟s products simply presuming that because of the use of the word
„PANCHARISHTA‟ in both products, Plaintiff and the Defendant‟s products
are one and the same or have the same therapeutic effect.
19. It is the settled position in law since the judgment in Cadila Health
Care Ltd. v. Cadila Pharmaceuticals Limited, (2001) 5 SCC 73 , that in
medicinal preparations a high standard needs to be imposed for ascertaining
the likelihood of deception and confusion. Recently, in Sun Pharma
Laboratories Ltd. v. Ajanta Pharma Ltd. (supra), this Court has held that
confusion should be avoided in the case of pharmaceutical products. The
observations of this Court are as under:
“ 21. Thus, the settled law in passing off is that of
probability or likelihood of confusion and not actual
confusion. In Cadila , the Supreme court has warned
that in case of products used for the same ailments but
with different composition, a more stringent test needs
to be adopted.
…
23. The overwhelming precedents including in several
Division Bench judgments of this Court is that in the
case of medicinal and pharmaceutical products,
confusion and deception ought to be avoided ”
The Supreme Court in Heinz Italia & Anr. v. Dabur India Ltd. (supra) has
even granted protection for the word marks „ GLUCON-D‟ and „GLUCOSE-
D‟ , which were also descriptive marks. In Godfrey Philips India Ltd. v.
CS (COMM) 275/2019 Page 10 of 14
Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257, the Supreme Court
has clearly held that if a descriptive mark acquires secondary meaning, the
same can be granted protection.
20. The word „PANCHARISHTA‟ is not a generic word. Arishta is a
method of preparation of drugs in Ayurveda, however, „PANCHARISHTA‟
is a unique formulation of five different ingredients which have been
prepared by the Plaintiff. The long and continuous use of the mark since 50
years clearly tilts the balance in favour of the Plaintiff. The case law cited by
the Defendant, i.e., Marico Ltd. v. Agro Tech Foods Limited (supra) is
clearly distinguishable as the mark therein was not used for such a long
period. In the said case, by the time the suit was filed, the mark was only in
use for six to seven years. Insofar as the alleged admission with the
trademark registry is concerned, a perusal of the notes of the Registrar
shows that the Registrar raised an objection that „PANCHARISHTA‟ is
descriptive and the agent of the Plaintiff sought an adjournment. Thereafter,
the mark was amended for a proposed user instead of a registration based on
user.
21. Subsequently, however, two other marks of the Plaintiff have been
registered, i.e., „ ZANDU PANCHARISHTA‟ and „ZANDU PANCHARISHTA
PLUS‟ . Both these trademarks have been registered with a user claim of
1968. There is no disclaimer in either of the trademarks which have been
registered for the Plaintiff. The word mark „ ZANDU PANCHARISHTA‟
having been registered and there being no disclaimer concerning the word
„PANCHARISHTA‟ , even the Trademark Registrar appears not to consider
the word „PANCHARISHTA‟ as being descriptive.
CS (COMM) 275/2019 Page 11 of 14
22. In Bata India Limited v. Chawla Boot House, [CS (COMM)
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110/2019 , decided on 16 April, 2019] on the question of generic and
descriptive marks, it was held as under:
“27. The spectrum of distinctiveness of marks clearly
explains how distinctiveness of marks is to be judged.
The spectrum as explained in McCarthy on „trade
Marks and Unfair Competition‟, can be illustratively
depicted as below:
GENERIC- Least Distinctive
DESCRIPTIVE- Secondary Meaning Required
SUGGESTIVE- Inherently Distinctive
(No Secondary Meaning Needed)
ARBITRARY/INVENTED MARKS-Inherently
Distinctive
28. As the well-known author Mr. J. Thomas
McCarthy, in the treatise on „Trademark and Unfair
Competition‟, opines, the question as to whether the
mark is descriptive or suggestive, can be based on the
following tests:
a) Degree of imagination required to connect the mark
with the product; and
b) The Competitor‟s need to use the mark.”
23. Applying the test laid down above, the mention of the word
„PANCHARISHTA‟ does not give any direct connection to a medicinal
formulation meant for curing digestive aliments. It sounds like a medicine
based on traditional ayurvedic knowledge but the exact formulation or
CS (COMM) 275/2019 Page 12 of 14
purpose, its nature and effect on ailments etc., is not decipherable. The use
by the Plaintiff of the mark „PANCHARISHTA‟ is for a different purpose
from its use by the Defendant. The two alleged third party users which have
been shown are completely unreliable at this stage as there are no details as
to who these parties are, i.e., Planet‟s Pancharishta and Gwapha
Pancharishta. The period from when they are selling their products is also
not known. There is overwhelming evidence to show that there has been no
significant third-party use of the mark „PANCHARISHTA‟ and there has not
even been a trademark application by any party for the mark
„PANCHARISHTA‟.
24. During the course of arguments, the Defendants made a suggestion
that it is ready to amend its label in following manner
CS (COMM) 275/2019 Page 13 of 14
25. In response to this proposal, the Plaintiff suggested that the Defendant
attach this label:
26. Since no amicable resolution took place, the Court would refrain from
suggesting or directing any specific manner of use being adopted by the
Defendant. Under these circumstances, the Plaintiff is entitled to an
injunction restraining the Defendant from using the word
„PANCHARISHTA‟ as a trademark for medicinal preparations. It is,
however, clarified that the Defendant would be at liberty to use the word
Arishta in a manner so as to not result in violation of the Plaintiff‟s statutory
and common law rights.
27. The I.As are disposed of.
PRATHIBA M. SINGH, J.
JUDGE
AUGUST 26, 2019/ dj
CS (COMM) 275/2019 Page 14 of 14