Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on: 19.12.2016
Decided on: 16.01.2017
+ CS(COMM) 506/2016 & I.A.2589/2013 (u/O 39 R 1 & 2 CPC)
M/S MOREPEN LABORATORIES LTD ..... Plaintiff
Through: Mr.Lokesh Chopra, Advocate
versus
M/S EAST WEST PHARMA ..... Defendant
Through: Defendant is ex-parte.
CORAM:
HON'BLE MS. JUSTICE DEEPA SHARMA
JUDGMENT
1. The case of the plaintiff in brief is that it has been manufacturing and
marketing the medicines since the year 1995 under the brand name ‘DOM
DT’ under Licence No. MB/96/5 and MNB 96/6 which is used for
suppressing the stomach infection, nausea and vomiting and that it is the
registered trademark under Class 5 and valid up to 14.08.2019. The plaintiff
has also given the sales figures as well as the expenditure incurred by it on
the publicity, advertisement and marketing for the said trademark.
2. It is submitted that in third week of January, 2013 the plaintiff
company came to know through one of its sales team member that defendant
CS(COMM) 506/2016 Page 1
under the brand name ‘DOM’ was manufacturing the medicine for curing
stomach infection, nausea and vomiting. Hence, it was contended that their
brand name DOM has deceptively similar name and this act of the defendant
is causing immense financial loss to the plaintiff company. It is submitted
that the defendant is not only selling the counterfeit medicine but also
infringing the plaintiff’s registered trademark by branding its medicine as
DOM.
3. This Court vide order dated 15.02.2013 while issuing the notice to the
defendant of the suit as well as application for grant of ex-parte injunction
restrained the defendant by way of an ex-parte injunction. Notices were duly
served upon the defendant but none on its behalf had attended the court
proceedings and they were proceeded ex-parte by this Court vide order
dated 21.11.2013, absolute till the disposal of the suit.
4. The plaintiff led the ex-parte evidence and examined Mr. Deepak
Talwar. The witness has duly proved the board resolution as Ex. PW 1/1
authorising him to represent the plaintiff company. He has proved on record
the copy of incorporation certificate of the company as Ex. PW 1 /2. He has
also duly proved that the plaintiff company is engaged in manufacturing and
marketing the medicine under the brand name DOM DT under the Licence
CS(COMM) 506/2016 Page 2
No. MB/96/5 and MNB 96/6 which is used for suppressing stomach
infection, nausea and vomiting since 1995 and also is owner of the
registered trademark and also is owner of the registered trademark of the
brand name DOM DT from the year 14.08.1995 which was renewed from
time to time and valid up to 14.08.2019. All these documents are proved as
Ex. PW 1/3. He has also proved that the product of the plaintiff’s company
qualifies to the standards of US Food and Drug Administration (USFDA)
and World Health Organisation Good Manufacturing Unit (WHO GMP).
He has further deposed that the plaintiff company caters directly upto 75000
outlets in India through its sales team consisting of about 1000 people. The
various invoices are exhibited as PW 1/ 4 and the list of stockists is
exhibited as PW 1 / 5. The certificate of the Chartered Accountant dated
18.12.2012 issued on the basis of audited balance sheets of the plaintiff
company for the year 2007 to 2012, showing that the turnover/sale and the
expenditure with respect to this trademark is exhibited as Ex. PW 1/6.
5. He has further deposed that the defendant is a pharmaceutical
manufacturing unit who is carrying out its manufacturing in District
Haridwar, Uttarakhand. He has further deposed that one of the sales man of
the plaintiff company came to know that defendant company is selling the
CS(COMM) 506/2016 Page 3
medicine under the brand name DOM for curing stomach infection, nausea
and vomiting. The original strip/medicine of plaintiff’s mark DOM DT is
exhibited as Ex. PW 1/ 7 and original strip/medicine of defendant’s mark
DOM is exhibited as Ex. PW 1 /8. The witness has deposed that the
medicine manufactured by the defendant under the name DOM is for the
same purpose for which the plaintiff is manufacturing the medicine under
the brand name DOM DT and the salt composition of both the medicine is
also the same. The manufacturing licence of the defendant is shown as
12/UA/2010 and it is deposed that the defendant started using DOM from
the year 2010 with the sole intention to encash goodwill and reputation of
the plaintiff company. The plaintiff company is selling the said medicines
since 1995 and has earned substantial reputation. It is submitted that
defendant is using the deceptively similar name with an intention to deceive
the consumer.
6. It is further deposed that although the said medicine is Schedule ‘H’
drug which requires prescription from the doctors, however, normally
patients, customers or buyers buys medicines for stomach infection, nausea
and vomiting from the pharmacist or the shopkeepers directly without any
prescription as these infections are very common infections and thus would
CS(COMM) 506/2016 Page 4
buy the defendants’ drug thinking it to be that of plaintiff and thus the
defendant is passing off their goods as that of the plaintiff to the customer.
7. I have heard the arguments and perused the relevant record.
8. Learned counsel for the plaintiff has relied on the findings of the
judgment of Supreme Court in Cadila Health Care Ltd. Vs. Cadila
Pharmaceuticals Ltd., AIR 2001 SC 1952 and has alleged that the suit be
decreed. The plaintiff’s witness proved by his uncontradictory testimony
that plaintiff is the registered owner of the trademark DOM DT which is
valid till 14.08.2019 and that they are in the market since 1995 for the
medicine for stomach infection, nausea and vomiting. He has also proved on
record that plaintiff’s company has earned the goodwill and reputation. In
Cadila Health Care (supra), Supreme Court has held as under:-
“ 18. We are unable to agree with the aforesaid observations in
Dyechem's case (supra). As far as this Court is concerned, the
decisions in the last four decades have clearly laid down that what
has to be seen in the case of a passing off action is the similarity
between the competing marks and to determine whether there is
likelihood of deception or causing confusion. This is evident from
the decisions of this Court in the cases of National Sewing Thread
Co. Ltd.'s case (supra), Corn Products Refining Company's case
(supra), Amritdhara Pharmacy's case (supra), Durga Dutt
Sharma's case (supra), Hoffmann-La Roche & Co. Ltd.'s case
CS(COMM) 506/2016 Page 5
(supra). Having come to the conclusion, in our opinion
incorrectly, that the difference in essential features is relevant, this
Court in Dyechem's case (supra) sought to examine the difference
in the two marks "PiKnic" and "Picnic". It applied three tests, they
being 1) is there any special aspect of the common feature which
has been copied? 2) mode in which the parts are put together
differently i.e. whether dissimilarity of the part or parts is enough
to make the whole thing dissimilar and 3) whether when there are
common elements, should one not pay more regard to the parts
which are not common, while at the same time not disregarding
the common parts?. In examining the marks, keeping the aforesaid
three tests in mind, it came to the conclusion, seeing the manner in
which the two words were written and the peculiarity of the script
and concluded that "the above three dissimilarities have to be
given more importance than the phonetic similarity or the
similarity in the use of the word PICNIC for PIKNIK".
19. With respect, we are unable to agree that the principle of
phonetic similarity has to be jettisoned when the manner in which
the competing words are written is different and the conclusion so
arrived at is clearly contrary to the binding precedent of this Court
in Amritdhara's case (supra) where the phonetic similarity was
applied by judging the two competing marks. Similarly, in Durga
Dutt Sharma's case (supra), it was observed that "in an action for
infringement, the plaintiff must, no doubt, make out that the use of
the defendant's mark is likely to deceive, but where the similarity
between the plaintiffs and the defendant's mark is so close either
CS(COMM) 506/2016 Page 6
visually, phonetically or otherwise and the court reaches the
conclusion that there is an limitation, no further evidence is
required to establish that the plaintiffs rights are violated".
20. Lastly, in Dyechem's case (2000 AIR SCW 2172 : AIR 2000 SC
2114 : 2000 CLC 1338) (supra) it was observed in Para 54 (of
SCC): (Para 53 of AIR SCW, AIR CLC) as under:
"As to scope of a buyer being deceived, in a passing-off action, the
following principles have to be borne in mind. Lord Romer, L.J.
has said in Payton & Co. Vs. Shelling, Lamped & Co. (1900) 17
RPC 48 that it is a misconception to refer to the confusion that can
be created upon an ignorant customer that the courts ought to
think of in these cases is the customer who knows the
distinguishing characteristics of the plaintiffs goods, those
characteristics which distinguish his goods from other goods in the
market so far as relates to general characteristics. If he does not
know that, he is not a customer whose views can properly be
regarded by the Court. (See the cases quoted in N.S. Thread & Co.
Vs. Chadwick & Bros. AIR 1948 Mad 481 which was a passing-of
action.) In Schweppes Case (1905) 22 RFC 601 (HL) Lord
Halsbury said, if a person is so careless that he does not look and
does not treat the label fairly but takes the bottle without sufficient
consideration and without reading what is written very plainly
indeed up the face of the label, you cannot say he is deceived."
These observations appear to us to be contrary to the decision of
this Court in Amritdhara's case (supra) where it was observed that
the products will be purchased by both villagers and town folk,
CS(COMM) 506/2016 Page 7
literate as well as illiterate and the question has to be approached
from the point of view of a man of average intelligence and
imperfect recollection. A trade may relate to goods largely sold to
illiterate or badly educated persons. The purchaser in India
cannot be equated with a purchaser of goods in England. While we
agree that in trade mark matters, it is necessary to go into the
question of comparable strength, the decision on merits in
Dyechem's case (supra) does not, in our opinion, lay down correct
law and we hold accordingly.
XXX XXX XXX
32. Public interest would support lesser degree of proof showing
confusing similarity in the case of trade mark in respect of
medicinal product as against other non-medicinal products. Drugs
are poisons, not sweets. Confusion between medicinal products
may, therefore, be life threatening, not merely inconvenient.
Nothing the frailty of human nature and the pressures placed by
society on doctors, there should be as many clear indicators as
possible to distinguish two medicinal products from each other. It
is not uncommon that in hospitals, drugs can be requested verbally
and/or under critical/pressure situations. Many patients may be
elderly, infirm or illiterate. They may not be in a position to
differentiate between the medicine prescribed and bought which is
ultimately handed over to them. This view finds support from
McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads
as under:
CS(COMM) 506/2016 Page 8
"The tests of confusing similarity are modified when the goods
involved are medicinal products. Confusion of source or product
between medicinal products may produce physically harmful
results to purchasers and greater protection is required than in the
ordinary case. If the goods involved are medicinal products each
with different effects and designed for even subtly different uses,
confusion among the products caused by similar marks could have
disastrous effects. For these reasons, it is proper to require a
lesser quantum of proof of confusing similarity for drugs and
medicinal preparations.
The same standard has been applied to medical products such as
surgical sutures and clavicle splints."
33. The decisions of English Courts would be relevant in a country
where literacy is high and the marks used are in the language
which the purchaser can understand. While English cases may be
relevant in understanding the essential features of trade mark law
but when we are dealing with the sale of consumer items in India,
you have to see and bear in mind the difference in situation
between England and India. Can English principles apply in their
entirety in India with no regard to Indian conditions? We think
not. In a country like India where there is no single common
language, a large percentage of population is illiterate and a small
fraction of people know English, then to apply the principles of
English law regarding dissimilarity of the marks or the customer
knowing about the distinguishing characteristics of the plaintiffs
goods seems to over look the ground realities in India: While
CS(COMM) 506/2016 Page 9
examining such cases in India, what has to be kept in mind is the
purchaser of such goods in India who may have absolutely no
knowledge of English language or of the language in which the
trade mark is written and to whom different words with slight
difference in spellings may sound phonetically the same. While
dealing with cases relating to passing off, one of the important
tests which has to be applied in each case is whether the
misrepresentation made by the defendant is of such a nature as is
likely to cause an ordinary consumer to confuse one product for
another due to similarity of marks and other surrounding factors.
What is likely to cause confusion would vary from case to case.
However, the appellants are right in contending that where
medicinal products are involved, the test to be applied for
adjudging the violation of trade mark law may not be at par with
cases involving non-medicinal products. A stricter approach
should be adopted while applying the test to judge the possibility
of confusion of one medicinal product for another by the
consumer. While confusion in the case of non-medicinal products
may only cause economic loss to the plaintiff, confusion between
the two medicinal products may have disastrous effects on health
and in some cases life itself Stringent measures should be adopted
specially where medicines are the medicines of lest resort as any
confusion in such medicines may be fatal or could have disastrous
effects. The confusion as to the identity of the product itself could
have dire effects on the public health. "
CS(COMM) 506/2016 Page 10
9. From the above, I am satisfied that the plaintiff is entitled to the relief
claimed. Accordingly, the suit is decreed and by way of this ex-parte order,
the defendant, its partners, principal servants, employees, representatives,
agents are hereby restrained from selling, using, advertising the medicine
under the brand name ‘DOM’ or any other identical or deceptively similar
name to the Plaintiff’s Company medicine ‘DOM DT’ in respect of
medicine used for stomach infection, nausea and vomiting.
Decree Sheet be prepared.
DEEPA SHARMA
(JUDGE)
JANUARY 16, 2017
sapna
CS(COMM) 506/2016 Page 11