Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) 2079/2002
% Date of decision: 23.10.2008
SMITHKLINE BEECHAM PLC & ANR ….… Plaintiffs
Through: Mr Varun Meon, Advocate.
Versus
MR UMESHBHAI PATEL & ORS ....... Defendants
Through: Ex parte
CORAM :-
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment? No
2. To be referred to the reporter or not? No
3. Whether the judgment should be reported No
in the Digest?
RAJIV SAHAI ENDLAW, J.
1. The suit is instituted to restrain infringement and passing off of
the trademark PANADOL and the copyright in the packaging as of in
relation to the product CROCIN both belonging to plaintiffs. The suit
was initially instituted against three defendants of which the
plaintiffs settled with the defendant No.3 and the name of the
defendant No.3 was ordered to be struck off from the array of
th
defendants vide order dated 19 July, 2004. The defendants 1 and 2
could not be served at their address given by the plaintiffs, as were
not found there, and were ultimately served by publication and
rd
ordered to be proceeded ex parte vide order dated 3 October, 2005.
The plaintiff has led ex parte evidence.
CS(OS)2079/2002 page 1 of 3
2. The plaintiffs have, by ex parte evidence, proved that the
trademark PANADOL is registered in the name of M/s Winthrop
Products Incorporated. The plaintiffs claim to be assignee of the
said trademark from M/s Winthrop Products Incorporated and
application for registration of the assignment has been deposed to be
pending with the Registrar of Trademarks.
3. The defendants adopted the trademark PANAMOL in relation
to same goods. It is further in evidence that the defendants have, for
marketing the same goods under the trademark PANAMOL, used a
blue blister strip packing and swirl device which the plaintiffs use for
manufacturing and marketing CROCIN tablets and syrups.
4. As far as injunction restraining the defendants from using the
mark PANAMOL for the same goods is concerned, this court in
SmithKline Beecham Plc v Sunil Singh 2001 PTC 321 found that
PARAMOL EXTRA and PAMACOL used by the defendants in that
case infringed the trademark PANADOL of the plaintiff. Even
otherwise I find the mark PANAMOL adopted by the defendants
likely to create confusion. The Apex Court in Cadila Health Care
Ltd v Cadila Pharmaceuticals Ltd AIR 2001 SC 1952 has laid
down the principles in this regard in relation to pharmaceutical
products. Even though the mark PANADOL is not registered in the
name of plaintiffs but it has been held by this court in M/s. Modi
Threads Limited v. M/s. Som Soot Gola Factory and another
AIR 1992 (Delhi) 4, Grandlay Electricals (India) Ltd v Vidya
Batra 1998 PTC (18) Delhi and Astrazeneca UK Ltd. and Anr. v.
CS(OS)2079/2002 page 2 of 3
Orchid Chemicals and Pharmaceuticals Ltd. (2006) PTC 733
DELHI that rights in the trademark accrue on the basis of
assignment deeds and such rights cannot be denied on the ground
that in the records of the Registrar of Trademark, the mark is still
shown in the name of the assignor and that the assignee is entitled
to protect the violation of the trademark at the hands of
unscrupulous persons. The plaintiffs as assignees would thus be
entitled to injunction.
5. As far as other relief claimed of restraining the defendants
from using the swirl device as used by the plaintiffs in relation to
CROCIN is concerned, the plaintiffs have failed to prove the said
swirl device used by them in relation to CROCIN. The affidavit by
way of ex parte evidence of the plaintiffs merely refers to the same
without proving the same before the court. In the absence of any
evidence, no relief can be granted to the plaintiffs.
6. As far as other reliefs claimed of accounts, delivery and
damages are concerned, the plaintiffs having failed to even serve the
defendants at the address given of the defendants and it being on
record that the defendants are no longer at the said addresses, it is
clear that the defendants are not marketing the products infringing
rights of plaintiffs. If the defendants were still marketing the
infringing products, the plaintiffs would have been able to locate the
defendants and to serve the defendants. In any case, vide ex parte
th
order dated 17 December, 2002, the defendants were restrained
and there is no averment that the said injunction order has been
violated. Thus, the present is not the case where the defendants by
CS(OS)2079/2002 page 3 of 3
remaining away from the court are seeking to avoid any enquiry into
accounts or a decree for damages against them. I, therefore, do not
find the plaintiffs entitled to the other reliefs.
7. Accordingly, a decree for permanent injunction is passed in
favour of the plaintiffs and against the defendants restraining the
defendants, their partners, proprietors, officers, servants, agents
from manufacturing, marketing, offering for sale, advertising directly
or indirectly or dealing in pharmaceutical preparations under the
trademark PANAMOL or any other mark identical or deceptively
similar to the trademark PANADOL, so as to infringe the plaintiff’s
registration No.396820 in class 5. They are also restrained from
reproducing, printing or publishing any label or packaging which is a
colourable imitation or substantial reproduction of the plaintiffs’
PANADOL label and packaging as described in paragraph 11 of the
plaint. The plaintiffs shall also be entitled to costs of the suit against
the defendants.
The decree sheet be drawn up accordingly.
RAJIV SAHAI ENDLAW
(JUDGE)
October 23, 2008
M
CS(OS)2079/2002 page 4 of 3
+ CS(OS) 2079/2002
% Date of decision: 23.10.2008
SMITHKLINE BEECHAM PLC & ANR ….… Plaintiffs
Through: Mr Varun Meon, Advocate.
Versus
MR UMESHBHAI PATEL & ORS ....... Defendants
Through: Ex parte
CORAM :-
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment? No
2. To be referred to the reporter or not? No
3. Whether the judgment should be reported No
in the Digest?
RAJIV SAHAI ENDLAW, J.
1. The suit is instituted to restrain infringement and passing off of
the trademark PANADOL and the copyright in the packaging as of in
relation to the product CROCIN both belonging to plaintiffs. The suit
was initially instituted against three defendants of which the
plaintiffs settled with the defendant No.3 and the name of the
defendant No.3 was ordered to be struck off from the array of
th
defendants vide order dated 19 July, 2004. The defendants 1 and 2
could not be served at their address given by the plaintiffs, as were
not found there, and were ultimately served by publication and
rd
ordered to be proceeded ex parte vide order dated 3 October, 2005.
The plaintiff has led ex parte evidence.
CS(OS)2079/2002 page 1 of 3
2. The plaintiffs have, by ex parte evidence, proved that the
trademark PANADOL is registered in the name of M/s Winthrop
Products Incorporated. The plaintiffs claim to be assignee of the
said trademark from M/s Winthrop Products Incorporated and
application for registration of the assignment has been deposed to be
pending with the Registrar of Trademarks.
3. The defendants adopted the trademark PANAMOL in relation
to same goods. It is further in evidence that the defendants have, for
marketing the same goods under the trademark PANAMOL, used a
blue blister strip packing and swirl device which the plaintiffs use for
manufacturing and marketing CROCIN tablets and syrups.
4. As far as injunction restraining the defendants from using the
mark PANAMOL for the same goods is concerned, this court in
SmithKline Beecham Plc v Sunil Singh 2001 PTC 321 found that
PARAMOL EXTRA and PAMACOL used by the defendants in that
case infringed the trademark PANADOL of the plaintiff. Even
otherwise I find the mark PANAMOL adopted by the defendants
likely to create confusion. The Apex Court in Cadila Health Care
Ltd v Cadila Pharmaceuticals Ltd AIR 2001 SC 1952 has laid
down the principles in this regard in relation to pharmaceutical
products. Even though the mark PANADOL is not registered in the
name of plaintiffs but it has been held by this court in M/s. Modi
Threads Limited v. M/s. Som Soot Gola Factory and another
AIR 1992 (Delhi) 4, Grandlay Electricals (India) Ltd v Vidya
Batra 1998 PTC (18) Delhi and Astrazeneca UK Ltd. and Anr. v.
CS(OS)2079/2002 page 2 of 3
Orchid Chemicals and Pharmaceuticals Ltd. (2006) PTC 733
DELHI that rights in the trademark accrue on the basis of
assignment deeds and such rights cannot be denied on the ground
that in the records of the Registrar of Trademark, the mark is still
shown in the name of the assignor and that the assignee is entitled
to protect the violation of the trademark at the hands of
unscrupulous persons. The plaintiffs as assignees would thus be
entitled to injunction.
5. As far as other relief claimed of restraining the defendants
from using the swirl device as used by the plaintiffs in relation to
CROCIN is concerned, the plaintiffs have failed to prove the said
swirl device used by them in relation to CROCIN. The affidavit by
way of ex parte evidence of the plaintiffs merely refers to the same
without proving the same before the court. In the absence of any
evidence, no relief can be granted to the plaintiffs.
6. As far as other reliefs claimed of accounts, delivery and
damages are concerned, the plaintiffs having failed to even serve the
defendants at the address given of the defendants and it being on
record that the defendants are no longer at the said addresses, it is
clear that the defendants are not marketing the products infringing
rights of plaintiffs. If the defendants were still marketing the
infringing products, the plaintiffs would have been able to locate the
defendants and to serve the defendants. In any case, vide ex parte
th
order dated 17 December, 2002, the defendants were restrained
and there is no averment that the said injunction order has been
violated. Thus, the present is not the case where the defendants by
CS(OS)2079/2002 page 3 of 3
remaining away from the court are seeking to avoid any enquiry into
accounts or a decree for damages against them. I, therefore, do not
find the plaintiffs entitled to the other reliefs.
7. Accordingly, a decree for permanent injunction is passed in
favour of the plaintiffs and against the defendants restraining the
defendants, their partners, proprietors, officers, servants, agents
from manufacturing, marketing, offering for sale, advertising directly
or indirectly or dealing in pharmaceutical preparations under the
trademark PANAMOL or any other mark identical or deceptively
similar to the trademark PANADOL, so as to infringe the plaintiff’s
registration No.396820 in class 5. They are also restrained from
reproducing, printing or publishing any label or packaging which is a
colourable imitation or substantial reproduction of the plaintiffs’
PANADOL label and packaging as described in paragraph 11 of the
plaint. The plaintiffs shall also be entitled to costs of the suit against
the defendants.
The decree sheet be drawn up accordingly.
RAJIV SAHAI ENDLAW
(JUDGE)
October 23, 2008
M
CS(OS)2079/2002 page 4 of 3