Pfizer Products Inc. vs. Rajesh Chopra & Ors.

IN THE HIGH COURT OF DELHI
I.A. Nos. 1879/2005 & 8252/2006 in CS(OS) No. 311/2005
Judgm ent reserved on : 17th April, 2007
Date of decision: 31st May, 2007
Pfizer Products Inc. .... Plaintiff
through: Mr. C.M. Lall, Advocate
VERSUS
Rajesh Chopra & Ors. .....Defendants
through: Mr. N.K. Manchanda,
Advocate
CORAM:
HON'BLE MS. JUSTICE GITA MITTAL.
1. Whether reporters of local papers may be
allowed to see the Judgment? Yes
2. To be referred to the Reporter or not? Yes
3. Whether the judgment should be reported in
the Digest? Yes
GITA MITTAL, J
1. The plaintiff filed the present suit originally seeking
injunction against the defendants from infringing its registered
trademarks and on grounds of dishonest passing off its products
as those having an association with those of the plaintiff and
damages. Along with the present suit, the plaintiff has filed an
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application under Order 39 Rule 1 and 2 of the Code of Civil
Procedure which has been registered as I.A. No. 1879/2005.
During the pendency of the suit, the defendant has also filed
several applications from time to time including an application
seeking rejection of the plaint (under Order 7 Rule 11) and return
of the plaint (under Order 7 Rule 10) amongst others. The
defendant has also filed an application under Section 124 of the
Trademarks Act, 1999.
2. By the present judgment, I propose to decide IA No.
1879/2005, an application filed by the plaintiff under Order 39
Rule 1 & 2 and IA No. 8252/2006 filed by the defendant under
Section 124 of the Trademarks Act, 1999 wherein the defendant
has prayed for stay of the suit of the plaintiff.
3. Inasmuch as there is no material dispute to the facts and
circumstances giving rise to the present case, the same are briefly
noticed hereafter. The plaintiff has claimed that it is a corporation
constituted under the laws of State of of the United States of
America and is a wholly owned subsidiary of Pfizer Inc. - a global
CS(OS) No. 311/2005 page 2 of 78

research based pharmaceutical company claiming responsibility
and credit for discovery and development of innovative value-
added medicines which improve the quality of life of people
around the world. Amongst the various drugs developed and sold
by the plaintiff after investment of enormous sums of money on
research and development worldwide, the plaintiff developed an
anti-depressanty drug and coined the trademark 'Zoloft' in 1989
for use in its respect. The earliest registration for the trademark
'Zoloft' relates to 1989 and the plaintiff claims to have applied for
and obtained registration of this mark in over 90 counties around
the world. This drug has received the approval of the United
States Food and Drug Administration ('FDA' for short) for its
manufacture in marketing in December, 1991 and is stated to be
sold in over 90 counties worldwide. Apart from the expenditure
incurred on development of this medication, since 1991 the
plaintiff has expended millions of dollars to promote and educate
patients and medical professionals about the product sold under
the trademark 'Zoloft'. This product is stated to have received
CS(OS) No. 311/2005 page 3 of 78

enormous media attention. According to the plaintiff it has also
achieved instant fame and recognition in the medical community
as also members of the general public. This drug is utilized as an
anti-depression drug and the plaintiff's product sold under the
trademark 'Zoloft' is the first and only medicine approved by the
United States Food and Drug Administration for the treatment of
postphromatic stress disorder.
4. The plaintiff submits that it applied for registration of the
trademark 'Zoloft' in India on the 18th of November, 1992 in class
5 under the Schedule to the Trademark & Merchandise Marks Act,
1958. This trademark has been registered by the Trademark
Registry and the plaintiff is thus the registered proprietor thereof
having exclusive statutory rights to use the same in respect of its
goods. This registration is stated to be subsisting and valid even
on date.
The registration certificate dated 4th June, 2005 of the
trademark 'Zoloft' in favour of the plaintiff, which was issued on
4th of June, 2005 related back to its application dated 18th
CS(OS) No. 311/2005 page 4 of 78

November, 1992. The same has been placed on record.
5. The plaintiff has complained that the defendant dishonestly
made an application bearing no. 1165372 B in class-5 in respect of
an identical trademark 'Zoloft' which was advertised for
acceptance in the Trademark Journal No. Megha VI dated 25th
November, 2003 wherein the defendant was claiming
proprietorship of the trademark 'Zoloft' which was identical to the
plaintiff's well-known prior trademark 'Zoloft'. The defendant has
also claimed use of this mark since 1st January, 2003. The
application was filed in the name of Shri Rajesh Chopra, defendant
no. 1 trading as the defendant no. 2.
6. In these circumstances, the plaintiff caused a legal notice
dated 8th July, 2004 to be issued to the defendants calling upon
them to cease and desist from manufacturing, selling or offering
for sale, any goods under the trademark 'Zoloft' or any other mark
similar thereto. By a letter dated 15th July, 2004, the defendant's
attorney informed the plaintiff that the defendants had searched
the record of the Trademark registry and that the plaintiff's
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application was not shown in the pending applications in the
Registry. In response thereto, the plaintiff's attorney enclosed the
copy of the prior application of the plaintiff also mentioning that
since the application was not opposed, it was likely to proceed to
registration.
7. The plaintiff also filed a notice of objection against the
defendant's trademark application seeking registration of the
trademark 'Zoloft'. This opposition was filed on the 8th of June,
2004. The plaintiff's attorney again reminded the defendant by a
communication dated 10th August, 2004 to comply with the
requisitions contained in the previous letter. Instead of abiding by
the notice demand, by a communication dated 16th August, 2004
the defendant sought proof of use by the plaintiff of the trademark
'Zoloft'. Despite responses from the plaintiff's attorney on the
20th of August, 2004 and a reminder on 24th September, 2004,
nothing further was received from the defendant.
Instead the defendant filed a cancellation petition dated 9th
November, 2005 against the plaintiff's trademark 'Zoloft' at the
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IPAB. The plaintiff filed a counter dated 25th January, 2006 to
the defendant's cancellation petition. The defendant also filed a
counter statement thereto on the 25th February, 2006. So far as
the cancellation petition filed by the defendant on 9th November,
2005 is concerned, the defendant has filed the reply to the
counter. However, no hearing has taken place in these
proceedings.
8. In the present suit the plaintiff has also claimed exclusive
proprietary rights in the trademark 'Geodon' in respect of which it
received registration in India on the 18th of July, 1996. The
plaintiff received the approval of this drug and name of the United
States Food and Drug Administration in the year 2001. So far as
'Geodon' was concerned, the plaintiff launched the product under
this trademark for the treatment of brain disorder called
Schizophrenia and this product of the plaintiff contains
Ziprasidone and is sold under the names Zeldox and 'Geodon' in
more than 40 countries worldwide.
9. The plaintiff had applied for registration of the trademark
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'Geodon' with the Trademark Registry in India on the 18th of July,
1996 in class-5 of the Schedule to the Trademark & Merchandise
Marks Act, 1958. For this drug and mark, the plaintiff
received the trademark registration certificate dated 24th
February, 2005 from the Registrar of Trademarks after the filing
of the suit which related back to the date of the application made
on 18th of July, 1996. Consequent upon the registration of the
trademark, and by virtue of the applicable statutory provisions,
and now by virtue of Section 31 of the Trademarks Act, 1999 the
plaintiff has exclusive proprietary rights in such trademark
'Geodon' also. The registration of the trademark 'Geodon' in
favour of the plaintiff stands renewed till 18th of July, 2016 and
copy thereof has been placed before this court.
10. The plaintiff became aware of the defendant's action when it
saw the advertisement in respect of an identical trademark
'Geodon' advertised in the Trademark Journal no. Megha VI dated
25th November, 2003 issued in the name of Mr. Rajesh Chopra,
defendant no. 1 herein also trading as defendant no. 2. The
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defendant had claimed proprietorship of 'Geodon' and use of the
mark since 1st of June, 2003. Investigations revealed that the
product under the trademark 'Geodon' of the defendants was
available in the market and that the defendant no. 1 was also the
director of defendant no. 2. The defendant no. 1 was using the
trademark 'Geodon' for B-complex, multi-vitamins and zinc
capsules.
11. The plaintiff immediately filed a notice of objection against
the defendant's trademark application on the 21st of July, 2004.
By a notice dated 3rd November, 2004, the defendants were
called upon to seize and desist against the use of the trademark
'Geodon'. The defendants denied the plaintiff's contentions by the
reply dated 8th November, 2004. Further correspondence
included a letter of 17th December, 2004 from the plaintiff's
counsel enclosing details of their trademark application and a legal
notice dated 11th February, 2005 enclosing their drug licence. On
23rd February, 2005, the defendant responded to the plaintiff's
communication without enclosing any drug licence. The
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defendant filed a counter statement dated 25th February, 2005 in
form TM-6 to the plaintiff's opposition to its trademark
application.
12. The plaintiff has asserted that it has expended millions of
dollars not only in developing these drugs but in promoting and
educating patients and medical professionals about the products
sold under such trademarks. These products have also received
extensive media attention and have been highly publicised having
received coverage in many publications and periodicals whereby
the drugs received instant fame and recognition in the medical
community and general public which publicity has also reached
the shores of India and is stated to be widely appreciated by
members connected with the medical profession and the general
public.
13. The plaintiff's website www.geodon.com provides extensive
information about these drugs and their use which website is
accessible anywhere in the world including in India. The products
are extremely well known and have been discussed in several
CS(OS) No. 311/2005 page 10 of 78

international conferences and seminars which were attended by
members of the medical profession worldwide including by those
from India.
14. As the defendant failed to respond positively, the plaintiff
was left with no option but to file the present suit seeking an
injunction against the defendant in respect of the user of the
trademark 'Zoloft' and 'Geodon' on grounds of passing off and
unfair competition on or around 7th of March, 2005.
15. The defendants were served with the summons in the suit
and notice in the application and entered appearance on 3rd of
May, 2005. Long thereafter, the defendant filed a cancellation
petition on the 9th of November, 2005 against the plaintiff's
registered trademark 'Geodon' at the IPAB. The plaintiff is
contesting this cancellation petition. Evidence stands filed while
the defendant's evidence is still awaited.
There is no dispute that these proceedings before the IPAB
and the Registrar of Trademarks are still pending in respect of
both the trademarks. 16. During the pendency of the present
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case, the plaintiff received the registration certificates in respect of
these trademarks and filed an application seeking amendment of
the plaint to incorporate an action for infringement of its
registered trademark. This amendment was allowed by this court
by an order passed on 8th February, 2006 and hence the present
suit in the present form.
17. It is noteworthy that during the pendency of the present
case, the defendant filed I.A. No. 1347/2006 being an application
under Order 7 Rule 11 of the Code of Civil Procedure, 1908 praying
for rejection of the plaint for want of territorial jurisdiction. By a
detailed judgment passed on 8th of February, 2006, this court
held that the courts at Delhi has jurisdiction to entertain the
present suit claiming an injunction in respect of the threat of the
defendant to sell the offending goods in Delhi.
18. So far as the present application seeking injunction is
concerned, long arguments have been addressed by the defendant
on the same issue. However, the order dated 8th February, 2006
passed by this court in the facts of the present case has attained
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finality. It is well settled that principles of res judicata apply to
different stages of the same proceedings as well. (Ref :
Satyadhyam Ghosal & Ors vs. Deorajin Devi AIR 1960
SC 941; Hindalco Industries Ltd. vs. Suman Lata Tuteja,
2006(129) DLT 649 )
I have no manner of doubt that the findings returned by this
court in the order dated 8th February, 2006 would guide and bind
adjudication even on the objection again raised by the defendant
so far as territorial jurisdiction of this court is concerned during
the hearing on these applications.
19. Even otherwise, I find that in para 48 of the plaint, the
plaintiff has stated that the defendant has threatened to sell the
offending goods under the infringing trademark at Delhi. There is
no denial to these averments in the written statement filed by the
defendant. The defendant has only made the application for
registration of the trademarks at Delhi and has not restricted the
same to any particular area.
20. I find that the judgment relied on by the defendant in
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support of this objection which is reported at (2006) 33 PTC
107 (Del) Dabur India Ltd. Vs. K.R. Industries is clearly
distinguishable on facts. In this case, the defendant was not only
based in Andhra Pradesh but was restricted to its business
activities within Andhra Pradesh and the neighbouring States.
The defendant had clearly stated that it had never sold any of its
goods within the territorial jurisdiction of this court. The
defendant had also averred that it had neither any place of
business nor any dealer in Delhi. On these facts, the court came to
a conclusion that so far as the cause of action of the plaintiff
pertaining to passing off by the defendant was concerned, this
court does not have the territorial jurisdiction to entertain and
adjudicate upon the present case. For this reason, this judgment
in (2006) 33 PTC 348 Dabur India Ltd. Vs. K.R.
Industries, has no application, which was upheld by the Division
Bench.
21. Mr. N.K. Manchanda, learned counsel for the defendant has
also vehemently urged that the plaintiff is selling these drugs only
CS(OS) No. 311/2005 page 14 of 78

in the United States of America and is not selling them in Delhi
and consequently, it cannot maintain the present suit in Delhi.
22. In my view, this fact would have no bearing so far as the
examination of an issue or an objection relating to territorial
jurisdiction of the court is concerned. Section 20 of the Code of
Civil Procedure mandates that a suit is required to be filed, either
where the cause of action has arisen wholly or in part or where the
defendant resides.
Section 133(5) of the Trademarks Act, 1999 enable a plaintiff
to bring an action for infringement of its registered trademark at a
place where it is located. This in my view, is merely an additional
option made statutorily available to the plaintiff as a place of suing
the defendant for infringement of the trademark.
23. A threat received by the plaintiff of effecting sales in Delhi
and apprehension of sales in this particular region would
constitute cause of action for bringing an action for prohibitory
th
injunction in the courts at Delhi. I find that on 8 of February,
2006, this court has already held that cause of action has arisen
CS(OS) No. 311/2005 page 15 of 78

within the territorial jurisdiction of the court.
For these reasons as well, the objection of the defendant has
to be rejected.
24. The defendant before this court has raised a strong objection
that the plaintiff has failed to establish use of the trademark in
India and consequently, on account of such non-use, it can claim
no benefit thereunder and that the trademark is liable to be
removed from the Register of Trademarks. So far as this
submission is concerned, it is necessary to examine Section
47(1)(b) of the Trademarks Act, 1999 which is the relevant
statutory provision in this behalf. This Section reads thus :-
“Section 47 - Removal from register and
imposition of limitations on ground of non-
use. -
(1) A registered trade mark may be taken off the
register in respect of the goods or services in
respect of which it is registered on application
made in the prescribed manner to the Registrar or
the Appellate Board by any person aggrieved on
the ground either -
(a) ....
(b) that up to a date three months before the
date of the application, a continuous period of five
years from the date on which the trade mark is
actually entered in the register or longer had
CS(OS) No. 311/2005 page 16 of 78

elapsed during which the trade mark was
registered and during which there was no bona
fide use thereof in relation to those goods or
services by any proprietor thereof for the time
being.”
This provision has not so far been the subject of
interpretation by courts so far. However, I find that Section 46 of
the earlier Trade & Merchandise Marks Act, 1958 is akin to
Section 47 of the later statute.
The expression "use" in this statutory provision has been the
subject matter of authoritative judicial pronouncement and would
guide adjudication in the present case as well. In this behalf, it
would be useful to refer to the pronouncement of the Apex Court
reported in (2003) 27 PTC 241 Hardie Trading Ltd. Vs.
Addisons Paint & Chemicals Ltd. The appellant herein was
seeking an injunction based on the registered trademarks 'Sparton'
and 'Sparton Velox'. These trademarks were used by the
appellant/plaintiff or its predecessor in interest in respect of the
paints and lacquers and others surface coatings since its
registration in Australia, New Zealand and thereafter in this
country. Consequently, by virtue of agreement between them, the
CS(OS) No. 311/2005 page 17 of 78

appellants and the respondents were engaged in the introduction
and sale in the Indian market of paints and lacquers prepared
under the appellant's preparation and under its trademark. In this
case, the appellant had filed an application in the Calcutta suit for
stay of the rectification proceedings which had been filed by the
respondents in Calcutta for rectification of the Register of
Trademarks by deleting Hardie's trademarks under Section 46 (1)
of the Trade & Merchandise Marks Act, 1958. A rectification was
sought inter alia on the ground that there was no bona fide use by
the proprietor of the trademark and it ought to be removed. The
court construed the meaning of the expression 'use' in Section 46
(1) of the statute which required non-use for a period of five years
prior to the date of the application. It was held that a proprietor's
intention to abandon the trademark is a necessary component of
their non-user justifying their removal. This was recognised as
early as in 1884 by Chitty, J. in Mouson & Co. Vs. Boehm 26 Ch.D.
398.
25. So far as the expression 'use' in Section 46(1) of the Act of
CS(OS) No. 311/2005 page 18 of 78

1958 is concerned, it was observed by the Apex Court that the
phrase which is used in Section 46 is 'bona fide use thereof in
relation to those goods' which has been defined in Section 2(2)(b)
of the Act (Act of 1958) thus:-
"2(2) In this act, unless the context otherwise requires
any reference -
(a)
(b). to the use of a mark in relation to goods shall be
construed as a reference to the use of the mark upon , or in any
physical or in any relation whatsoever to such goods;"
Further, Section 46(3) of the Act statutorily prescribes the
intention to abandon as an essential component of non-use for the
purpose of Section 46(1) .
26. It is also necessary to bear in mind that under Section 18 of
the Act of 1958 that any person who is claiming to be a proprietor
of the trademark which is used or proposed to be used by him can
apply for registration. Consequently, even if the plaintiff had not
been manufacturing its products under these trademarks, it could
have applied for the registration.
The Apex Court thus held that the use of the trademark may
therefore be other than physical use thereof. It may be in any
CS(OS) No. 311/2005 page 19 of 78

other relation to the goods. Given this statutory meaning, there
was no reason to limit the use of the trademark to use of the goods
or to the sale of goods bearing the trademark. In so holding the
Apex Court placed reliance on Hermes Trademark, (1872)
RPC 425, wherein the registered proprietor had inserted an
advertisement in which the trademark appeared in relation to the
watches it manufactured in the annual trade publication. It was
also in evidence that the registered proprietor placed an order for
parts of the watches during the period of alleged non-use although
actual sale of the watches took place subsequently. The court held
that the words 'other relation' in an identical statutory provision in
the United Kingdom meant 'something other than actually being
upon the goods or in physical relation to them that would cover
the use of the mark, ....... , for example, in advertisements, in
invoices, in orders and so on'. It was also said that the phrase 'in
the course of trade' must be wide enough to embrace the steps
necessary for the production of the goods as well the actual placing
them on the market. Thus, it was held that even though there was
CS(OS) No. 311/2005 page 20 of 78

no use of the mark upon or in physical relation to the goods, but it
was used in 'other relation' i.e. to say in non-physical use.
27. In Bon Matin Trade Mark 1989 RPC 536 use of the
trademark by issue of price lists and promotional literature on two
occasions prior to the application for rectification, had been held
to be 'non physical use' of the trademark.
28. The Apex Court thus held that the additional words 'any' and
'whatsoever' qualifying the words 'other relation' in Section 2(2)(b)
of the Act of 1958 gave the words a much wider meaning. Reading
this definition into Section 46(1), the Apex Court held that the
word 'use' in Section 46(1) may encompass actions other than
actual sale. The court also noticed that there may be other special
circumstances existing which may provide a special defence to the
registered proprietor in an action under Section 46(1) seeking
removal of its trademark with the Registrar of Trademarks. This
may include business exigencies even. In this case, the appellant
before the Supreme Court had urged the restriction on its
importing goods etc. The question therefore which had to be
CS(OS) No. 311/2005 page 21 of 78

examined was as to whether there was non-physical use of the
trademark within the meaning of the expression under Section
2(2)(b) of the Act of 1958 or any special circumstances which could
be urged as a defence to a petition under Section 46(1).
29. It is imperative to notice that the Trade Marks Act of 1999
contains statutory provisions which are akin to the provisions
contained in The Trade & Merchandise Marks Act, of 1958.
Section 2(2)(c) of the Trade Marks Act of 1999 is pari materia to
Section 2(b)(b) of the Act of 1958 which fell for consideration
before the Apex Court in the Hardie Trading Ltd. case (Supra).
Therefore, the principles of law laid down in Hardie Trading Ltd.
vs. Addisons Paint & Chemicals Ltd. will be applicable under the
Trademarks Act, 1999 which has similar provisions.
30. In the present case, the plaintiff has placed extensive details
of advertisements published by it and the seminars held by it in
respect of both the trademarks 'Zoloft' and 'Geodon'. Such
advertisements/material would in my view, satisfy the test of non-
physical use laid down by the Apex Court in Hardie Trading Ltd.
CS(OS) No. 311/2005 page 22 of 78

(supra) and would prima facie give a valid defence to the assertion
of the defendant of non-use of the trademarks on the part of the
plaintiff before this court within the meaning of Section 2(2)(c) of
the Trademarks Act, 1999.
The plaintiff has placed before this court copies of the
worldwide registration certificates of their trademarks in ZOLOFT
as well as GEODON. The plaintiff has also listed several
conferences and international functions conducted in USA, Europe
and Canada where the trademarks ZOLOFT and GEODON have
th
been discussed. These include the 57 APA Institute on Psyciatric
th
Services in October 2005 in San Diego, USA; the 35 NCCBH
Annual Training Conference in March, 2005 in San Francisco,
th
USA; the 18 European Collage of Neuropsychopharmacology in
th
October, 2005 in Amsterdam, Netherlands, and the 159 APA
Annual Meeting in May, 2006 in Ontario, Canada. I find that the
Food and Drug Administration Approval (FDA) for marketing
ziprasidone (Zoloft & Geodon) have been placed before this court
as well as articles relating to Geodon in journals and newspapers
CS(OS) No. 311/2005 page 23 of 78

st
such as American Family Physician, June 1 , 2002 entitled
'Significant FDA Approvals in 2001'; Clinical Psychiatry News,
March 2005, Vol. 33 No. 3 entitled 'The Art of Meghan Caughey';
th
DG News (Doctors Guide), October 12 , 2004 discussing the
comparative study between ziprasidone and olanzapine;
Psychiatric Times, May, 2001, Vol.XVIII Issue 5 entitled
'Examining the Factors that influence Antisychotic Prescribing
st
Decisions'; American Family Physician, June 1 , 2003 entitled
'Use of Atypical Antisychotic Drugs in Patients with Dementia';
Psychiatric Times, April, 2001, Vol XVIII, Issue 4 entitled
rd
'Treating Bipolar Disorder: Toward the 3 Millennium'; JSWE Vol.
38 No. 2 entitled 'Research On the Drug Treatment of
Schizophrenia : A Critical Appraisal and Implications for Social
Work Education and also articles in newspapers featuring Zoloft
st
such as Times of India, February 21 , 2001 entitled 'Medication
Can Lessen the Trauma of OCD Patients'; Times of India, May
th
24 , 2000 entitled 'Anti Depressants Drive Midlife Blues Away';
Business Standard, October 25, 2005 entitled 'An Epidemic of
CS(OS) No. 311/2005 page 24 of 78

Sadness and other newspaper articles published outside India in
USA, France, Spain, Canada, Japan, Australia, UK, Korea,
Germany, New Zealand, Pakistan, Singapore, South Africa,
Argentina and Mexico. There are print outs from the plaintiff's
website www.geodon.com and www.zoloft.com on record .
31. Further the annual reports of the plaintiff company for the
years 2001-2005 prima facie evidence the extensive sales of the
products Geodon and Zoloft and articles have been placed on
record by the plaintiff regarding a drug sold by it under the
trademark geodon and zoloft.
32. In view of the principles laid down in Hardie Trading Ltd.
Vs. Addisons Paint & Chemicals Ltd., this certainly brings the
action of the plaintiff within the meaning of use in Section 2(2)(c)
and Section 47 of Trademarks Act of 1999.
33. The second limb of the defendant's objection has been that it
is an admitted position that the plaintiff is not selling in India and
there is no material of its sales placed before this court. For this
reason, the defendant submits, that the plaintiff is disentitled to
CS(OS) No. 311/2005 page 25 of 78

maintain an injunction action in India. It has further been urged
that the plaintiff is bound to establish a presence and use within
the territorial jurisdiction of this court in order to be entitled to an
injunction. In this behalf, reliance has been placed on AIR 1965
Bombay 35 (Consolidated Foods Corp. Vs. Brandon &
Co.); AIR 1960 SC 142 Corn Products Refinery Company
Vs. Shangrila Food Products Ltd.; 2001 PTC 889
Veerumal Praveen Kumar Vs. Needle Industries (India)
Ltd. & Anr.; (1992) PTC Roebuck & Co. Vs. Happy House;
(2004) 8 PTC 585 Milment Optho Industries Vs. Allegan
Inc.; (1998) PTC 18 156 Cluedent Body Vs. Aero
Apparels.
34. There can be no dispute with the proposition laid down by
the Apex Court in AIR 1960 SC 142 Corn Products Refining
Co. Vs. Shangrila Food Products Ltd. wherein the Apex
Court has observed that the presence of a mark in the register does
not by itself prove its use at all.
However, even the principles laid down by the Apex Court
CS(OS) No. 311/2005 page 26 of 78

cannot be applied in abstract without regard to the facts of the
case. Regard has to be had to the fact that the products in the
present case are medicines and drugs. It is trite that an applicant
can seek registration of a trademark on a proposed use basis as
well.
35. In an action for infringement, it has been held in 1965 SCR
737 Kaviraj Pandit Durgadutt Sharma Vs. Navrattan
Pharmaceutical Laboratory that the plaintiff must make out
use by the defendant's of the plaintiff's trademark or adoption of
its essential features of the trademark of the plaintiff. It was
further held by the court that in an action for infringement, where
the trademark of the defendant is so close to the plaintiff's mark,
nothing further is required to establish the violation.
36. In this regard it is necessary to consider the relevant
statutory provision which reads thus :-
“ 29. Infringement of registered
trade marks – (1) A registered trade mark is
infringed by a person who, not being a
registered proprietor or a person using by way of
permitted use, uses in the course of trade a
mark which is identical with, or deceptively
CS(OS) No. 311/2005 page 27 of 78

similar to, the trade mark in relation to goods or
services in respect of which the trade mark is
registered and in such manner as to render the
use of the mark likely to be taken as being used
as a trade mark.
(2) A registered trade mark is infringed by a
person who, not being a registered proprietor or
a person using by way of permitted use, uses in
the course of trade, a mark which because of -
(a) its identity with the registered trade mark
and the similarity of the goods or services
covered by such registered trade mark; or
(b) its similarity to t
he registered trade mark and the identity or
similarity of the goods or services covered by
such registered trade mark; or
(c) its identity with the registered trade mark
and the identity of the goods or services covered
by such registered trade mark,
is likely to cause confusion on the part of
the public, or which is likely to have an
association with the registered trade mark.
(3) In any case falling under clause (c) of sub-
section (2), the court shall presume that it is
likely to cause confusion on the part of the
public.
(4) A registered trade mark is infringed by a
person who, not being a registered proprietor or
a person using by way of permitted use, uses in
the course of trade, a mark which -
(a) is identical with or similar to the registered
trade mark; and
(b) is used in relation to goods or services
which are not similar to those for which the
trade mark is registered and;
(c) the registered trade mark has a reputation
CS(OS) No. 311/2005 page 28 of 78

in India and the use of the mark without due
cause takes unfair advantage of or is detrimental
to, the distinctive character or repute of the
registered trade mark.
(5) A registered trade mark is infringed by a
person if he uses such registered trade mark, as
his trade name or part of his trade name, or
name of his business concern or part of the
name, of his business concern dealing in goods
or services in respect of which the trade mark is
registered.
xxx”
37. The plaintiff before this court has endeavoured to establish
the reputation of the trademark in question. However, I find that
in 1986 PTC 71 American Home Products Corp. Vs. Mak
Laboratories Pvt. Ltd., the court while dealing with the action
for injunction against infringement of a registered trademark held
that for the purposes of the registration of the trademark, it is not
necessary that the goods should be in existence at the date of the
application for registration and that in an infringement action, the
plaintiff is not required to prove the reputation of his mark. The
observations of the Apex Court in this behalf deserve to be
considered in extenso and reads thus:-
CS(OS) No. 311/2005 page 29 of 78

“35. The reason why the two conditions specified
in Cl.(a) are made cumulative is obvious. As the
definition of “trade mark” contained in Cl.(v) of
S.2(1) shows, a trade mark is a mark used or
proposed to be used in relation to goods for the
purpose of indicating or so as to indicate a
connection in the course of trade between the
goods and some person having the right to use
the mark. It is, therefore, not necessary for the
purpose of registering a trade mark that those
goods should be in existence at the date of
application for registration. A person who
intends to manufacture goods or has made
preparations for the manufacture of goods but the
manufacture has not commenced and, therefore,
goods have not been marketed is none the less
entitled to get the trade mark which he proposes
to use in relation to those goods registered. In
the present-day world of commerce and industry,
a manufacturing industry can neither be
commenced nor established overnight. There are
innumerable preparatory steps required to be
taken and formalities to be complied with before
the manufacture of goods can start and the
manufactured goods marketed. The process
must of necessity take time. If the position were
that the mere non-user of a trade mark for the
period mentioned in Cl.(a) or S.46(1) would make
a trademark liable to be taken off the Register, it
would result in great hardship and cause a large
number of trade marks to be removed from
Register, because the moment one month has
elapsed after the registration of a trademark has
been ordered, a trade rival can make an
application on the ground set out in Cl.(a) of
S.46(1) claiming that there has been no bona fide
CS(OS) No. 311/2005 page 30 of 78

use of the trade up to a date one month before the
date of his application. It is in order to prevent
such harassment and absurd result that the two
conditions specified in Cl.(a) have been made
cumulative.
36. The object underlying S.46(1) is to
prevent trafficking in trade marks. This is, in
fact, the object underlying all trade marks laws.
A trade mark is meant to distinguish the goods
made by one person from those made by another.
A trade mark, therefore, cannot exist in vacuo. It
can only exist in connection with the goods in
relation to which it is used or intended to be used.
Its object is to indicate a connection in the course
of trade between the goods and some person
having the right to use the mark either with or
without any indication of the identity of that
person. Clause (v) of S.2(1) which defines the
expression “trade mark” makes this abundantly
clear. Trade marks became important after the
Industrial Revolution as distinguishing goods
made by one person from those made by another;
and soon the need was felt to protect traders
against those who were unauthorisedly using
their marks and accordingly registration of trade
marks was introduced in England by the Trade
Marks Registration Act, 1875, which was soon
replaced by more detailed and advance
legislation. When a person gets his trade mark
registered, he acquires valuable rights by reason
of such registration. Registration of his trade
mark gives him the exclusive right to the use of
the trade mark in connection with the goods in
respect of which it is registered and if there is any
invasion of this right by any other person using a
CS(OS) No. 311/2005 page 31 of 78

mark which is the same or deceptively similar to
his trade mark, he can protect his trade mark by
an action for infringement in which he can obtain
injunction, damages or an account of profits
made by other person. In such an action, the
registration of a trade mark is prima facie
evidence of its validity. After the expiry of seven
years from the date of the registration a trade
mark is to be valid in all respects except in the
three cases set out S.32. The proprietor of an
unregistered trade mark whose mark is
unauthorisedly used by another cannot, however,
sue for the infringement of such trade mark. His
only remedy lies in bringing a passing-off action,
an inconvenient remedy as compared to an
infringement action. In a passing-off action the
plaintiff will have to prove that his mark has by
user acquired such reputation as to become
distinctive of the plaintiffs goods so that if it is
used in relation to any goods of the kind dealt
with by the plaintiff, it will be understood by the
trade and public as meaning that the goods are
the plaintiffs goods. In an infringement action,
the plaintiff is not required to prove the
reputation of his mark. Further, under S.37 a
registered mark is assignable and transmissible
either with or without goodwill of the business
concerned while under S.38, an unregistered
trade mark is not assignable or transmissible
except in the three cases set out in S.38(2)."
38. So far as acquisition of reputation in relation to a trademark
attached to a product is concerned, law has evolved in tune with
the technical developments and the milestones achieved in trade,
CS(OS) No. 311/2005 page 32 of 78

industry, communication and the media especially the electronic
modes. The courts have repeatedly held that goods do not now
require to be physically traded for establishing existence of
goodwill and reputation of the trademark attached to them. Non-
physical use of a trademark is legally accepted as being covered
under the expression 'use' under the trademark statute.
39. The principles which would govern a passing off action in
deciding the question of deceptive similarity were laid down by the
Apex Court in 2001 PTC 300 (SC) Cadila Health Care Ltd.
Vs. Cadila Pharmaceuticals Ltd. wherein the question had
been raised as to whether the mark 'Falicigo' and 'Falcitab' were
deceptively similar.
40. In this case, the Apex Court held that public interest support
lesser degree of proof showing confusing similarity in the case of
trademark in respect of medicinal products. Emphasising that
confusion between medicinal products may be life threatening and
not merely inconvenient, the court held thus :-
“Public interest would support lesser
degree of proof showing confusing similarity in
CS(OS) No. 311/2005 page 33 of 78

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:
“The tests of confusing similarity are
modified when the goods involved are medicinal p
roducts. Confusion of source or product between
medicinal products may produce physically
harmful results to purchasers and greater
protection is required then 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
fordrugs and medicinal preparations. The same
standard has been applied to medical products
such as surgical sutures and clavicle splints.”
The decisions of English Courts would be
CS(OS) No. 311/2005 page 34 of 78

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 entirely 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 plaintiff's
goods seems to over look the ground realities in
India. While 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 phonetical 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
CS(OS) No. 311/2005 page 35 of 78

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
last 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.
Keeping in view the provisions of Section 17-
B of the Drugs and Cosmetics Act, 1940 which
inter alia indicates an imitation or resemblance of
another drug in a manner likely to deceive being
regarded as a spurious drug it is but proper that
before granting permission to manufacture a drug
under a brand name the authority under that Act
is satisfied that there will be no confusion or
deception in the market. The authorities should
consider requiring such an applicant to submit an
official search report from the Trae Mark office
pertaining to the trade mark in question which
will enable the drug authority to arrive at a correct
conclusion.
So far as medicinal products are concerned, the courts have
emphasised that an exacting judicial scrutiny is required if there is
a possibility of confusion over marks on medicinal products
CS(OS) No. 311/2005 page 36 of 78

because the potential harm may be far more dire than that in
confusion over ordinary consumer products (Ref : American
Cyamid Corporation Vs. Connaught Laboratories Inc. 231 USPQ
128 (2nd 1986). Physicians, parmacists, nurses and patients are
human and are not infallible or immune from confusion or
mistakes. Prescriptions are often handwritten and frequently
telephoned. If drugs of markedly different compositions have
trademarks which maybe visually or phonetically similar, human
life may be imperiled.
The Apex Court also observed that in view of the varying
infrastructure for supervision of physicians and pharmacists of
medical profession in our country due to linguistic, urban, semi-
urban and rural divide across the country and with high degree of
possibility of even accidental negligence, strict measures to
prevent any confusion arising from similarity of marks among
medicines are required to be taken.
41. The Apex Court did not interfere with the judgments of the
lower courts on the ground that the matter required evidence.
CS(OS) No. 311/2005 page 37 of 78

However, the following principles in relation to adjudication on
the question of deceptive similarity in a passing off action were
laid down:-

“(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.
(b) The degree of resembleness 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.”
42. These principles were reiterated in a recent pronouncement
of the Apex Court reported in 2004 (28) PTC 585 (SC)
Milment Oftho Industries & Ors. Vs. Allergan Inc. The
CS(OS) No. 311/2005 page 38 of 78

appellants were an Indian pharmaceutical manufacturing
company while the respondents were a pharmaceutical company
manufacturing pharmaceutical products in several countries. The
respondents filed a suit for injunction based on an action for
passing off in respect of the mark 'Ocuflox' used on the medicinal
preparations manufactured and marketed by it claiming prior user
of this trademark in respect of eye care products, they sought an
injunction against the appellants using 'Ocuflox' in medicinal
preparation also for treatment of eye and ear.
The appellants assailed the grant of injunction on the ground
that the respondent's products were not being sold in India and
that the appellants were the first who introduced the product in
India.
The court laid down the principles on which judicial scrutiny
is required to be conducted in respect of medicinal products and
observed thus:-

“8. In respect of medicinal products it was held
that exacting judicial scrutiny is required if there
CS(OS) No. 311/2005 page 39 of 78

was a possibility of confusion over marks on
medicial products because the potential harm
may be far more dire than that in confusion over
ordinary consumer products. It was held that
even though certain products may not be sold
across the counter, nevertheless it was not
uncommon that because of lack of competence or
otherwise that mistakes arise specially where the
trade marks are deceptively similar. It was held
that confusion and mistakes could arise even for
prescription drugs where the similar goods are
marketed under marks which looks alike and
sound alike. It was held that physicians are not
immune from confusion or mistake. It was held
that it was common knowledge that many
prescriptions are telephoned to the pharmacists
and others are handwritten, and frequently the
handwriting is not legible. It was held that these
facts enhance the chances of confusion or
mistake by the pharmacists in filling the
prescription if the marks appear too much alike.
9. We are in full agreement with what has been
laid down by this court. Whilst considering the
possibility of likelihood of deception or
confusion, in present times and particularly in
the field of medicines, the courts must also keep
in mind the fact that nowadays the field of
medicine is of an international character. The
court has to keep in mind the possibility that
with the passage of time, some conflict may occur
between the use of the mark by the applicant in
India and the user by the overseas company. The
court must ensure that public interest is in no
way imperiled. Doctors particularly eminent
doctors, medical practitioners and persons or
CS(OS) No. 311/2005 page 40 of 78

companies connected with medical field keep
abreat of latest developments in medicine and
preparations worldwide. Medical literature is
freely available in this country. Doctors, medical
practitioners and persons connected with the
medical field regularly attend medical
conferences, symposiums, lectures etc. It must
also be remembered that nowadays goods are
widely advertised in newspapers, periodicals,
magazines and other media which is available in
the country. This results in a product acquiring a
worldwide reputation.
10. In the present case, the marks are the
same. They are in respect of pharmaceutical
products. The mere fact that the Respondents
have not been using the mark in India would be
irrelevant if they were first in the world market.
The Division Bench had relied upon material
which prima facie shows that the Respondents
product was advertised before the Appellants
entered the field. On the basis of that material,
the Division Bench has concluded that the
Respondents were first to adopt the mark. If that
be so then no fault can be found with the
conclusion drawn by the Division Bench."
43. I find that to the same effect are the observations and
findings returned by a learned single Judge of the High Court of
Judicature at Calcutta in the judgment rendered on 27th of
February, 2006 in CS No. 349/1996 entitled Allergan
Inc. Vs. Sun Pharmaceutical Industries Ltd.
CS(OS) No. 311/2005 page 41 of 78

44. The Apex court has repeatedly held that so far as medication
was concerned, especially where it is extensively advertised,
worldwide use would guide adjudication and that the mere fact
that the plaintiff was not in the Indian market, in a given case may
be irrelevant.
45. It is necessary to notice that in Milment Optho Industries,
the trademark of the respondent was not even registered with the
Registrar of Trademarks in India.
46. Entitlement to injunction relief based on trans-border
reputation even without selling the product in India has been the
subject matter of several judicial pronouncements today. The
judgment in N.R. Dongre Vs. Whirlpool Corporation
reported at 1996 (5) SCC 714 . is a landmark decision on several
legal issues. In this case the appellants got the mark “Whirlpool”
registered in respect of washing machines. The Whirlpool
Corporation (respondent before the Apex Court) brought a passing
off action to restrain the appellants from manufacturing, selling,
advertising or in any way using the trade mark “Whirlpool” over
CS(OS) No. 311/2005 page 42 of 78

which they claimed exclusive rights. It was held that an injunction
was a relief in equity and was based on equitable principles and
that passing off action was maintainable in law even against the
registered owner of the trademark. The court observed that the
name “Whirlpool” was associated for long with the Whirlpool
Corporation and that its trans-border reputation extended to
India. It was held that the mark “Whirlpool” gave an indication of
the origin of the goods as emanating from or relating to the
Whirlpool Corporation. It was held that equity required that an
injunction be granted in favour of the Whirlpool Corporation and
that the refusal of an injunction could cause irreparable injury to
the reputation of the Whirlpool Corporation, whereas grant of an
injunction would cause no significant injury to the appellants who
could sell their washing machines merely by removing a small
label bearing the name “Whirlpool”.
47. The defendants have placed reliance on the judgment
reported at AIR 1965 Bombay 35 Consolidated Foods
Corp. Vs. Brandon & Co. Pvt. Ltd. to urge that registration of
CS(OS) No. 311/2005 page 43 of 78

the trademarks by itself without use of the trademark would not
establish the case of the plaintiff. This case raised a challenge by
the petitioner to the rejection of its opposition to the application
submitted by the respondent for registration of its trademark. The
observations of the High Court in para 42 of the judgment deserve
to be considered in extenso inasmuch as international or
worldwide reputation has been accepted as an indicator of
reputation and goodwill. Further the court has accepted
promotional activity in India also as a concomitant of such
reputation without the plaintiff having effected sales of the
products in this country. Such advertisements were also accepted
to attribute knowledge of the plaintiff's reputation to the
defendant and the dishonest intention of the defendant. In this
behalf, the court observed thus:-

“42. Lastly, it was urged by Mr. Shah, the
learned counsel for the respondent company, as
also by Mr. Sastri learned counsel appearing for
the Registrar of Trade Marks, that I should
exercise my discretion under sub-section (3) of
Section 12 of the Act and order concurrent
CS(OS) No. 311/2005 page 44 of 78

registration of the word 'Monarch' both in favour
of the petitioner corporation as well as the
respondent company. I am afraid, however, I
cannot accept this contention in view of my
finding that the respondent company has been
guilty of having copied the mark of the petitioner
corporation. The discretion under the section
referred to by the two counsel can only be
exercised where two or more parties unknown to
each other innocently adopt and use the same
mark in respect of their respective goods of the
same nature. In this case, however, as I have
found that the petitioner corporation was already
the sole proprietor of the mark 'Monarch' in
respect of its food products in several countries
of the world and its products were widely
advertised in various American magazines
having a large circulation in different parts of the
world including this country and in view of the
fact that the petitioner corporation could have
without importing any of its food products to this
country bearing that mark applied for
registration of that mark as proprietor thereof
prior to 1951 before the respondent company
started using that mark, it is difficult to hold that
the respondent company had started using that
mark quite innocently and without any
knowledge on its part about the same being
widely used by the petitioner corporation on its
food products. On the facts of this case and also
in the interest of business morality, it is
impossible to exercise my discretion under sub-
section (3) of section 12 of the Act and order
concurrent registration of the mark 'Monarch' in
favour of both the petitioner corporation and the
respondent company.”
CS(OS) No. 311/2005 page 45 of 78

48. In Consolidated Foods Corp. Vs. Brandon , the court
was concerned with the trans-border reputation of the products
and the trademark which were not being used in India especially
the international character of medicines and the need to protect
them. Taking notice of the extensive advertising by the petitioner,
the court held that the adoption of the identical mark by the
respondent were held to be deliberate and with the knowledge of
the petitioner's mark.
In these circumstances, the order passed by the Joint
Registrar of the Trademark on the respondent's application
registering the trademark of the plaintiff in favour of the
respondent was set aside.
The principles laid down by the court in my view support the
case of the plaintiff before this court.
49. Mr. N.K. Manchanda, learned counsel for the defendant has
vehemently urged that delay in bringing the suit would itself
disentitle the plaintiff to the relief of injunction. In this behalf,
reliance has been placed on 2001 PTC 889 Veerumal
CS(OS) No. 311/2005 page 46 of 78

Praveen Kumar Vs. Needle Industries (India) Ltd. &
Anr. This case is clearly distinguishable on facts of the present
case.
The suit was filed two years after the cause of action stated to have
arisen in favour of the plaintiff.
50. In any case in the instant case, the trademark 'Zoloft' is
registered with effect from 18th November, 1992 and 'Geodon' is
registered from 18th July, 1996. The plaintiff has placed extensive
evidence to show international use of the trademark 'Zoloft' since
1991 and of 'Geodon' since 2001. There is no dispute that the
defendant's claimed use is much later.
51. Before this court, the plaintiff has urged that it learnt of the
illegal actions of the defendants from the advertisements which
were issued in the Trademark Journal. So far as 'Geodon' was
concerned, the defendants application was advertised in
Trademark Journal of which the plaintiff learnt in 2004 and it
immediately filed the notice of objection with the Registrar of
Trademark. Its counsel also issued legal notices to the defendant
CS(OS) No. 311/2005 page 47 of 78

to cease and desist from using the registered trademark 'Geodon'
of the plaintiff. So far as 'Zoloft' was concerned, the plaintiff learnt
of the same from the publication of the defendants application in
Trademark Journal in 2004 and identical steps were taken by the
plaintiff.
The defendants have not claimed to have been a long user of
these trademarks. The defendants have also admitted that the
plaintiff had registrations in these trademarks and that, long after
the filing of the present suit and receipt of summons by the
defendants, they have initiated the steps for removal of these
trademarks from the Registrar of Trademarks.
52. In these circumstances, on facts it cannot be held that the
suit or the application of the plaintiff would be barred on grounds
of unreasonable delay and latches.
53. In any case, I find that in a judgment of the Apex Court
reported at 2004 (28) PTC 121 Midas Hygiene Industries
Pvt. Ltd. Vs. Sudhir Bhatia & Ors., the Apex Court has held
that in cases of infringement of trademark or copyright, normally
CS(OS) No. 311/2005 page 48 of 78

an injunction must follow and that mere delay in bringing the
action would not be sufficient to defeat grant of injunction in such
cases.
In this behalf, the Apex Court has held thus:-
“5. The law on the subject is well settled. In
cases of infringement either of Trade Mark or of
Copyright normally an injunction must follow.
Mere delay in bringing action is not sufficient to
defeat grant of injunction in such cases. The grant
of injunction also becomes necessary if it prima
facie appears that the adoption of the mark was
itself dishonest.”
54. This issue had also fallen for consideration before this court
in the pronouncement reported at 1989 PTC 61 M/s
Hindustan Pencils Pvt. Ltd. Vs. M/s India Stationery
Products Company & Anr. . wherein the court succinctly laid
down the principles thus:-
“29. It would appear to be difficult to accept
that relief of temporary injunction should not be
granted, because of the delay on the part of the
plaintiff, even though the court feels, at that point
of time, that ultimately permanent injunction will
have to be granted.
30. Even though there may be some doubt as to
whether laches or acquiescence can deny the relief
of a permanent injunction, judicial opinion has
CS(OS) No. 311/2005 page 49 of 78

been consistent in holding that if the defendant acts
fraudulently with the knowledge that he is violating
the plaintiff';s rights then in that case, even if there
is an inordinate delay on the part of the plaintiff in
taking action against the defendant, the relief of
injunction is not denied. The defence of laches or
inordinate delay is a defence in equity. In equity
both the parties must come to the Court with clean
hands. An equitable defence can be put up by a
party who has acted fairly and honestly. A person
who is guilty of violating the law or infringing or
usurping somebody else's right cannot claim the
continued misuse of the usurped right. It was
observed by Romer, J. in the matter of an
application brought by J.R. Parkington and Coy.
Ltd., 63 R.P.C. 171 at page 181 that “in my
judgment, the circumstances which attend the
adoption of a trade mark in the first instance are of
considerable importance when one comes to
consider whether the use of that mark has or has
not been a honest user. If the user in its inception
was tainted it would be difficult in most cases to
purify it subsequently”. It was further noted by the
learned Judge in that case that he could not regard
the equitable relief will be afforded only to that
party who is not guilty of a fraud and whose
conduct shows that there had been, on his part, an
honest concurrent user of the mark in question. If a
party, for no apparent or a valid an reason, adopts,
with or without modifications, a mark belonging to
another, whether registered or not, it will be
difficult for that party to avoid an order of
injunction because the 'Court may rightly assume
that such adoption of the mark by the party was not
an honest one. The Court would be justified in
concluding that the defendant, in such an action,
CS(OS) No. 311/2005 page 50 of 78

wanted to cash in on the plaintiff's name and
reputation and that was the sole, primary or the
real motive of the defendant adopting such a mark.
Even if, in such a case, there may be an inordinate
delay on the part of the plaintiff in bringing a suit
for injunction, the application of the plaintiff for an
interim injunction cannot be dismissed on the
ground that the defendant has been using the mark
for a number of years. Dealing with this aspect
Harry D. Nims in his “The Law of Unfair
Competition and Trade-Marks”, Fourth Edition,
volume Two at page 1282 noticed as follows :
“Where infringement is deliberate and wilful
and the defendant acts fraudulently with knowledge
that he is violating plaintiff's rights, essential
elements of estoppel are lacking and in such a case
the protection of plaintiff's rights by injunctive
relief never is properly denied. “The doctrine of
estoppel can only be invoked to promote fair
dealings.”
31. It would appear to me that where there is an
honest concurrent user by the defendant then
inordinate delay or laches may defeat the claim of
damages or rendition of accounts but the relief of
injunction should not be refused. This so because it
is the interest of the general public, which is the
third party for such cases, which has to be kept in
mind. In the case of inordinate delay or laches, as
distinguished from the case of an acquiescence, the
main prejudice which may be caused to the
defendant is that by reasons of the plaintiff not
acting at an earlier point of time the defendant has
been able to establish his business by using the
infringing mark. Inordinate delay or laches may be
there because the plaintiff may not be aware of the
infringement by the defendant or the plaintiff may
CS(OS) No. 311/2005 page 51 of 78

consider such infringement by the defendant as not
being serious enough to hurt the plaintiff's
business. Nevertheless, if the Court comes to the
conclusion that prejudice is likely to be caused to
the general public who may be mislead into buying
the goods manufactured by the defendant thinking
them to be the goods of the plaintiff then an
injunction must be issued. The Court may, in
appropriate cases, allow some time to the
defendants to sell off their existing stock but an
injunction should not be denied.”
For these reasons, the plaintiff cannot be denied relief on
account of culpable delay and laches.
55. I also find that in the light of the principles laid down by the
Apex Court in the aforenoticed judgment and the facts of the
instant case, the judicial pronouncements reported at AIR 1992
Delhi 302 Gopal Engineering Vs. POM Laboratories and PTC
Supp. 1 page 681 Kerala Jewelleries Madras Vs. Kerala Jewel
Trichy would have no bearing to the instant case. In any case,
these judgments were rendered in the facts of the case and had not
laid out an absolute principle of law prohibiting grant of an
injunction. For the same reason, the pronouncement at 1997
PTC 17 at page 794 would also have no application.
CS(OS) No. 311/2005 page 52 of 78

Therefore in this factual and legal background, it certainly
cannot be held that the suit is belated or that the plaintiff cannot
be granted interim injunction on any such ground.
56. The defendant has placed reliance on 1992 PTC 59 Sears
Roebuck & Co. Vs. Happy House (T.V.) Manufacturing
Co. Pvt. Ltd. & Ors. In this case, on facts, the plaintiff was
unable to establish reputation and goodwill of the trademark or
the product and injunction was refused.
I find that the other pronouncements relied upon by the
defendant in 2001 PTC 417 Uniply Industries Vs. Unicon
Plywood and 1987 PTC 240 Usha International Vs. Usha
Television also have no application inasmuch as in those cases,
injunctions were not granted on the facts of the case.
57. I have no manner of doubt that the plaintiff has made out a
prima facie case for grant of an ad interim injunction. I find that
principles laid down in the judgment reported at Cluett
Peabody & Co. Inc. Vs. Arrow Apparals 1998 PTC (18)
relied upon by the defendants themselves render it imperative that
CS(OS) No. 311/2005 page 53 of 78

the plaintiff is granted interim protection. In this case, the court
had succinctly laid down the principles which are required to be
noticed under the Trademarks Act, 1999 and culled out thus:-
(i) Trademark is a property. A mark which is
used in the course of trade to indicate a
connection between the goods and the proprietor
of the mark is a trademark. (See Trade Marks by
Shavaksha, page 14). It is not a property in
pervasive sense. It is property in the sense that
proprietor is entitled to exclusive use of it or to
prevent others from using it in relation to goods
in respect of which it is registered or used. It
must be adopted and used to distinguish the
goods of the proprietor from goods of others.
The mark must be distinctive. It must show the
source or the goods to the customer. Words like,
'Best', 'Superior', etc. are not distinctive of the
goods. They are only descriptive and hence
cannot constitute trademark. The vendor who
sells his goods under a trade mark acquires a
limited right to the use of the mark.
(ii) The above mentioned limited exclusive right
to the use of the mark is acquired by use. It is
recognised as property. A person can also
acquire it by registration. (See para 1.01 of
Narayanan). The proprietor of the mark gets a
perpetual right to the exclusive use of it in
respect of particular goods in respect of which it
is registered or used (see para 10.2 of
Narayanan). Therefore, it can be acquired in
CS(OS) No. 311/2005 page 54 of 78

three ways viz. Registration, User and
Assignment.
(iii) An application for injunction is an
infringement action based on trade marks. It is
an application in support of the right to property.
(iv) An infringement action is based on invasion
of the statutory right. The issues which arise in
this action are whether the plaintiff is a
proprietor of the Trade mark and whether the
defendant's mark is identical or similar to trade
mark of the plaintiff. In an infringement action
the question of deception or confusion will not
arise.
(v) Registration enables the registered
proprietor to sue for infringement of registered
trade mark irrespective of the fact whether it is
used or not used. Registration confers on the
proprietor a monopoly right over the use of the
mark. But, proprietary rights in a trade mark
acquired by use are superior to rights obtained
by registration under the Act. This is the main
defence put up on behalf of the defendants in
this notice of motion. Therefore, prior user of
the marks should be protected against monopoly
rights conferred by the Act. (Pages 5 & 6 of
Narayanan). A trade mark has no meaning even
if it is registered unless it is used in relation to
goods. Otherwise, its non-use may lead to its
death. A trade mark which drops out of the use
dies. Where there are no goods offered for sale,
there is no use of trade mark.
(vi) In an infringement action, defendant is
CS(OS) No. 311/2005 page 55 of 78

restrained from using the infringed mark
whereas in passing off defendant is restrained
from using the mark in such a way so as to pass
off his goods as that of the plaintiff.
(vii) Use of the trademark does not mean user
by affixing the word on the goods. It could be in
the form of advertisements in magazines, T.V.
etc. It would be with regard to goods exported
out of India. With advancement of technology
and globalization after 1991, use of trade mark
can take place in different ways. But, this case
essentially concerns the period 1985-1990.
Property in trade mark can be acquired by public
use of it.
(viii) The mark can loose its distinctiveness by
non-user (para 26 of Narayanana). Therefore,
the enforcement of the right of exclusive use of a
trade mark will depend on continuous use of the
mark by the proprietor. If he fails, piracy will
result and the mark will become common to the
trade because there is no exclusive ownership of
the symbol constituting a trade mark apart from
the use of it in respect of vendible goods,
particularly in context of principles governing
them. Acquisition of proprietary right is
different from enforcement of rights/reliefs.
(ix) Courts shall not protect this right of a
proprietor unless there is sale of the articles to
which trade mark is attached or related to (para
28 of Narayanan). Without use of the mark, the
proprietor cannot restrain others from use of it
on similar goods (page 29 of Narayanan).
CS(OS) No. 311/2005 page 56 of 78

(x) An infringement action is a suit on trade
mark and not on reputation. The defendant
(infringer) who copies the mark cannot plead
delay as a defence particularly because the
defendant is dishonest as he has copied the
mark. But, priority in use cannot be dishonest
and, therefore, the defendant who has prima
facie evidence of priority in use, could plead
delay as a strong defence. This principle is in
context of defence to infringement action,
particularly in context of this notice of motion.
(xi) Object of the Act is to protect the right and
not to be a source of monopoly. It is also to
protect bona fide interests of traders from
harassment by registered owners of a trade
mark, apart from protection of public fraud,
fraud by infringers of genuine trademark.
(xii) The test as to 'who gets it there first' is not
applicable in cases where registration is sought
under Section 18 (page 26 of Narayanan).
After laying down these principles, the court had denied
injunction to the plaintiff in this case only for the reason that the
defendant had made out a prima facie case for using the
trademark since 1985 to the knowledge of the world at large and
without any objection from the plaintiff till 1994 when the suit was
filed.
CS(OS) No. 311/2005 page 57 of 78

58. In the instant case, the defendants have failed to make out
any such case. Learned counsel for the plaintiff has urged at great
length that the defendant has placed no evidence of sales of the
products. As noticed above, the Apex Court has held that trade
mark infringements so far as medical products are concerned have
to be treated strictly. The medicines of the plaintiff's are used
towards treatment of serious diseases and any confusion in the
minds of the medical experts, pharmacists and the patients may
lead to disastrous results. In my view, balance of convenience,
interest of justice and equity are clearly in favour of the plaintiff
and against the defendants. The applicable principles of law are
clear and unambiguous and lead up to only one inevitable
consequence. In my view therefore this application deserves to be
granted for all these reasons.
59. In a judgment dated 27th April, 1994 rendered by the
Bombay High Court in Misc. Petition No. 3/1992 entitled
Marion Merrell Dow. Inc. Vs. Unichem Laboratories
Ltd. and Ors ., the court held that the medical field has assumed
CS(OS) No. 311/2005 page 58 of 78

an international character which is a fact of which judicial notice
must be taken. The observations of the court in this regard are not
only instructive but extremely topical for the purpose of the
decision in the facts of the instant case. The court laid down the
applicable principles as follows :-
“33. I am unable to accept the
submissions of Mr. Tulzapurkar. All the
authorition relied by Mr. Tulzapurkar very
significantly do not deal with the medical field.
An already stated above and as set out in the
various authorities relied upon by Mr. Chitnie,
themedical field has assumed an international
character. It is a fact of which judicial notice
must be taken. Doctors particularly ominent
Doctors, medical practitioners and persons of
companies connected with the medical field
keep abreast of latest developments in medicine
and preparations worldwide. Medical literature
is freely available in this country. Doctors,
medical practitioners and persons connected
with medical field regularly attend medical
conference, symposium, lectures etc. Also set
out hereinabove what is involved in public
interest. It would be annomious situation if an
identical mark in respect of an identical drug is
associated all over the world with the petitioner
but that mark remains of the registered
ownership of the 1st Respondents in India. Such
a situation would cause immence confusion and
deception in the minds of the public. Also as
stated above, the authority of the Supreme
CS(OS) No. 311/2005 page 59 of 78

Court in the case of national Swening Thread
Co. Ltd. is binding on this court and prevals
over all contrary authoritation of Foreign
Courts.”
60. The defendants had not proved any research or development
and the court consequently held that the defendant had not
developed the product but merely copied it. In this background,
the court observed that the defendant had come to know of the
product from international magazines, seminars. If the drug is
copied, it follows that the mark is also copied. In this behalf, the
observations of the court deserve to be considered in extenso and
read thus :-
“11. The 1st respondents had filed a
counter statement. It is an admitted position
that in the counter statement they have not
explained as to how they came upon the word
“CARAFATE”. In this court also no affidavit in
reply is filed. Thus, on record admittedly there
is no explanation or submitted before this court
to show how the 1st respondents came upont
he word “CARAFATE”. Int his behalf it is
relevant to note that the 1st respondents
company is a company dealing in manufacture
of medicines and pharmaceutical products. In
my view, it is well known and well established
CS(OS) No. 311/2005 page 60 of 78

that, in the field of medicine, doctors and
persons connected with the field, keep
themselves well abreast of developments which
take place abroad. In my view, it is very
relevant that the petitioners have applied for
registration of this same mark for use in
treatment of duodenal user. It is also not
denred that the composition of the petitioners
product is identical to the product of the 1st
respondents, ie. both are complex salt of
polyaluminium hydroxide with a sulphated
disaoharide akeleton. It is well known that
before a medicinal product can be put into the
market there would have to be research and
development. This may some time take years.
Very significantly, 1st respondents have not
relied upon or shown that any research or
development was carried out by them before
they sought to register the mark.
12. Mr. Tulzapurkar submitted that the 1st
respondent invented the word “CARAFATE”
from sacraflfate. He submitted that the letters
“SU” from the beginning of the word that the
letter from the middle of the word were
omitted. He submitted that the letter “A” was
added between the letters “c” and “r”. This
ingenuines explanation given by the Counsel is
made for the first time across the Bar. It is no
where to be found in the proceedings before th
Trade Mark Registry or in any affidavit before
this court. It is undoubtedly an invention of
the counsel, Such an oral submission made by
the counsel cannot be accepted. Int his behalf,
it is pertinent to note that as shown by
international Bibliography voluminous
literature on sucrafate has been existing for a
CS(OS) No. 311/2005 page 61 of 78

number of years. Not only that but in 1982
there was an international sucrafate
symposium in the 7th world congress of
Gastroenterology at Stockholm. Prior to that in
June 1980 there was the 11th International
Congress of Gantroonterology at Hardburg
wherein the effect of Sucralfate on ulcer has
been discussed. Not only that in October 1981
there is an article on Petitioners' product
'CARAFATE' as it being an anti-ulcer drug. The
Ist respondents are a medicinal company. It is
impossible to believe that they were not aware
of these developments in the use of Sucralfate
as an anti-ulcer drug and the invention of drug
“CARAFATE” by the petitioners as an anti-
ulcer drug. In my view, it is too much of a
coincidence that the exact mark and the same
preparation for treatment of deodenal ulcers
has been suddenly thought of by the Ist
respondent. As stated above a drug or a
medicine is not something which can just be
thought of. It needs years research and
development. It is very clear that the Ist
respondents have done no research and/or
development in respect of this drug. It has not
even been claimed, before the Trade Mark
Registry as well as before this Court that any
research was done. No proof of any research or
development has been produced. It would
therefore be clear that the Ist respondents have
not developed this drug but merely copied it.
They could only have learnt about it from
international magazines or seminars. If the
drug is copied, it follows that this mark is also
copied. In the international market only the
petitioners own the mark “CARAFATE” for an
CS(OS) No. 311/2005 page 62 of 78

anti-ulcer drug. It is thus clear that it is the
petitioners' mark and product which has been
copied by the Ist respondents.”
Thus it was held that judicial notice has to be taken of the
fact that doctors and nurses connected with the case keep
themselves abreast and updated on the developments in the
pharmaceutical fields.
61. Before this court also I find that the defendant has not
placed any evidence or material of having developed these
products. The defendants' "Zoloft" is identical with the product of
the plaintiff. Even the trademarks are identical. The defendant
gives no explanation as to why it has adopted the registered
trademarks of the plaintiff.
62. The defendants have filed documents of sales being
conducted by it only in the year 2003. There is therefore
admittedly no prior use of the trademark by the defendants
conferring any rights in the defendant which could be urged to be
superior than those of the plaintiff in its registered trademark.
Other than the bald claim by the defendants in their
CS(OS) No. 311/2005 page 63 of 78

application for registration of trademark that they commenced
production in 2003, there is hardly any material on record to
substantiate or support this assertion. There is therefore nothing
on record to establish any promotional activity undertaken by the
defendants nor any substantial evidence of any sales effected in
the trademark ZOLOFT and GEODON.
So far as Zoloft is concerned, the trademark and the product
of the defendant is identical to that of the plaintiff and the same
class of consumers is being targeted. The mark Geodon of the
defendant is also identical to that of the plaintiff's Geodon.
Inasmuch as the plaintiff is extensively publicizing its products
which is also feating in medical journals of repute, the plaintiff has
made out a good prima facie case. So far as balance of
convenience is concerned, the defendant has adopted the
registered trademark which is identical to that of the plaintiff.
63. I also find that Section 34 of the Trademarks Act requires
that in order to successfully assert a right against the registered
proprietor of a trademark, the defendant has to establish use of the
CS(OS) No. 311/2005 page 64 of 78

trademark which is prior to the date of registration of the
plaintiff's trademark. In this case, the plaintiff's registrations for
th
Zoloft though granted in the year 2005 related back to 18 of
November, 1992 while for the trademark Geodon, the registration
th
granted in later related back to 18 of July, 1996.
The defendant has filed documents of sales being conducted
by it only in the year 2003. There is therefore admittedly no prior
user giving the defendant any right which could be urged to be
superior to the rights of the plaintiff in the registered trademark.
64. Undoubtedly in the present case, though the suit is prior to
the registration of the trademarks, however the registration which
relates to the year 1992 & 1996. The application for injunction
cannot be defeated only on the ground that the defendants have
sought rectification. The defendant could not have filed the
applications for rectification of the register of trademarks under
Section 124 of the Act of 1999 without showing and obtaining prior
satisfaction of the court about the plea of invalidty registration of
the mark of the defendant.
CS(OS) No. 311/2005 page 65 of 78

65. From the foregoing, it is evident that the suit filed by the
plaintiff is prior and that the applications for cancellation have
been filed only after the defendants had entered appearance in the
matter. The registrations of the plaintiff relate to the year 1992-96
and would have been registered after advertisements in the Trade
Marks Journal. In any case, the defendant is admittedly
manufacturing and trading in pharmaceuticals and consequently
would be aware of the products of the plaintiff.
66. The application for injunction cannot be defeated only for
the reason that the defendant has filed the application for
cancellation of the registered trademark. In the light of the
judicial pronouncements noticed above, the defendant was
required to satisfy this court with regard to existing for prima facie
in its favour case justifying the application for cancellation and
invalidity of the registration of the trademark of the plaintiff.
In this background, the plaintiff has made out a prima facie
case for infringement of its registered trademark as well as
dishonest passing off their products as those associated with the
CS(OS) No. 311/2005 page 66 of 78

plaintiff entitling the plaintiff to grant of ad-interim injunction.
Grave and irreparable loss shall ensure to the plaintiff in case
interim protection is not granted. The injunction is also
necessitated in the larger interests of the consumers of the
products of the plaintiff, inasmuch as disasterous and irreversible
consequences can result from an error made in purchase of the
products of the defendants as if they were the drugs produced and
manufactured by the plaintiffs. Balance of convenience, interest of
justice and equity are clearly in favour of the plaintiff and against
the defendants.
Accordingly, this application is allowed.
The defendants, its directors, principles, proprietor,
partners, officers, employees, agents, distributors, franchisees,
representatives and assigns are restrained from using GEODON
and/or ZOLOFT and/or any other trademark or name similar to
the plaintiff's trademarks GEODON and/or ZOLOFT either as, a
trade mark or part of a trade mark, a trade name or corporate
name or as part of a trade or corporate name, or in any other
CS(OS) No. 311/2005 page 67 of 78

manner whatsoever so as to pass off its goods or business as and
for the goods or business of the plaintiff.
The defendants, its directors, principles, proprietor,
partners, officers, employees, agents, distributors, franchisees,
representatives and assigns are also restrained from using any
other indicia whatsoever to show any association of the
defendants' product currently manufactured and sold under the
trade mark GEODON and/or ZOLOFT with the plaintiff's product
manufactured and sold under the trade marks GEODON and
ZOLOFT respectively.
The defendants including its directors, agents,
representatives and assigns shall at their own expense, recall all
the products and marketing, promotional and advertising
materials that bear or incorporate the GEODON and/or ZOLOFT
mark which has been manufactured, distributed, sold or shipped
by it, and to reimburse all customers from which said materials are
recalled and to deliver to the plaintiff's attorneys or
representatives for destruction all products, labels, signs, prints,
CS(OS) No. 311/2005 page 68 of 78

packages, modes, plates, dies, wrappers, receptacles and
advertisements in its possession or under its control, bearing the
GEODON and/or ZOLOFT mark or any other trademark similar to
GEODON and/or ZOLOFT respectively.
The defendants shall file an affidavit of compliance of the
directions made by this court within six weeks of the passing of
the order.
IA NO. 8252/2006
67. It now becomes necessary to consider I.A. No. 8252/2006
filed by the defendant seeking stay of the suit on the ground that it
had initiated proceedings for cancellation of the plaintiff's
registration. This application has been filed by the defendant
urging that inasmuch as the defendant has filed an application
seeking cancellation of the registered trademark of the plaintiff
which proceedings are admittedly pending before the Registrar,
the present suit is liable to be stayed.
68. For the purposes of this application, Section 124 of the
Trademarks Act, 1999 deserves to be considered in extenso and
CS(OS) No. 311/2005 page 69 of 78

reads thus :-
“124. Stay of proceedings where the
validity of registration of the trade mark is
questioned, etc. -(1) Where in any suit for
infringement of a trade mark-
(a) the defendant pleads that registration of the
plaintiff's trade mark is invalid; or
(b) the defendant raises a defence under clause
(e) of
sub-section (2) of section 30 and the plaintiff
pleads the invalidity of registration of the
defendant's trade mark,
the court trying the suit (hereinafter referred to as
the court), shall,-
(i) if any proceedings for rectification of the
register in relation to the plaintiff's or defendant's
trade mark are pending before the Registrar or
the Appellate Board, stay the suit pending the
final disposal of such proceedings;
(ii) if no such proceedings are pending and the
court is satisfied that the plea regarding the
invalidity of the registration of the plaintiff's or
defendant's trade mark is prima facie tenable,
raise an issue regarding the same and adjourn the
case for a period of three months from the date of
the framing of the issues in order to enable the
party concerned to apply to the Appellate Board
for rectification of the register.
(2) If the party concerned proves to the court
that he has made any such application as is
referred to in clause (b) (ii) of sub-section (1)
within the time specified therein or within such
extended time as the court may for sufficient
cause allow, the trial of the suit shall stand stayed
CS(OS) No. 311/2005 page 70 of 78

until the final disposal of the rectification
proceedings.
(3) If no such application as aforesaid has been
made within the time so specified or within such
extended time as the court may allow, the issue as
to the validity of the registration of the trade mark
concerned shall be deemed to have been
abandoned and the court shall proceed with the
suit in regard to the other issues in the case.
(4) The final order made in any rectification
proceedings referred to in sub-section (1) or sub-
section (2) shall be binding upon the parties and
the court shall dispose of the suit conformably to
such order in so far as it relates to the issue as to
the validity of the registration of the trade mark.
(5) The stay of a suit for the infringement of a
trade mark under this section shall not preclude
the court from making any interlocutory order
(including any order granting an injunction
directing account to be kept, appointing a receiver
or attaching any property), during the period of
the stay of the suit. ”
69. There is no dispute that the suit was filed by the plaintiff on
or about 7th March, 2005. This court has issued summons in the
suit and notice in the application and the defendants were duly
served in the plaint. The defendants first entered appearance on
3rd May, 2005. The application seeking cancellation of the
registered trademarks 'Zoloft' and 'Geodon' of the plaintiff were
filed by the defendant on 9th November, 2005.
CS(OS) No. 311/2005 page 71 of 78

70. A similar issue arose before this court and by a judicial
pronouncement reported at 2006 32 PTC 733 Astrazeneca
UK Ltd. & Anr. Vs Orchid C & P Ltd. The court considered
this issue and held thus:-
“31. On plain reading of this provision, it is
apparent that the plaintiffs could not file the
application for rectification without showing and
obtaining prima facie satisfaction of the Court
about their plea of the invalidity of the registration
of the mark of the Defendant. Section 124 of the
Trade Marks Act, 1999 is similar to the section 111
of the Trade and Merchandise Marks Act, 1958.
Under the Trade and Merchandise Marks Act, 1958
in AIR 1974 Delhi 12 : PTC (Suppl)(1)55(Del.),
Kedar Nath v. Monga Perfumary & Floor Mills, this
Court had held that an application could not be
filed subsequent to the institution of the suit under
section 111(1) (i) of the earlier Act. The learned
Single Judge had held as under :-
“19.......... The defendant cannot file an application
subsequent to the institution of the suit under
section 111 (1)(i) and claim that the plaintiff suit for
infringement must be stayed. If no proceeding for
rectification of the register is pending on the date
of the institution of the suit by the plaintiff then
section 111(1) (ii) is attracted and the Court may
adjourn the case for a period of three months in
order to enable the defendant to app;ly to the High
Court for rectification of the register. In that case
the Court must be satisfied that the contention as
to validity of the defendant's registration is bona
CS(OS) No. 311/2005 page 72 of 78

fide and prima facie sustainable. In the present
case I am not satisfied that the contention as to
validity cand raised by the defendant is bona fide
and prima facie sustainable. No material has been
placed on the record to prove a prima facie case
that the plaintiff's registration is invalid or that the
defendant has been carrying on business since 1952
as alleged by him.”
Reliance can also be placed on Patel Field Marshal
Agencies v. P.M. Diesels Ltd., 1999 IPLR 142 : 1999
PTC (19) 718 (Guj)(DB) where it was held that if
the proceedings are not pending and the plea
regarding invalidity of registration of the mark is
raised, the Court trying the suit is to be prima facie
satisfied about tenability of the issue. The Division
Bench of the Gujarat High Court had held :
“10........... As we notice, under section 107, it has
been provided that on such plea being raised, the
plea can be decided only in an appropriate
rectification proceedings. In conformity with that
provision, section 111 envisages that if proceeding
for rectification of the register in relation to
plaintiff or defendant's trademark, as the case
maybe, are pending before the registrar or the High
Court, further proceedings in the suit shall be
stayed, until final disposal of rectification
proceedings. If proceeding are not pending, and
the plea regarding invalidity of registration of
concerned mark is raised, the Court trying the suit
is to be prima facie satisfied about tenability of the
issue, and if it is so satisfied, it shall frame as issue
to that effect and adjourn the case for three
months, from the date of framing of the issue, in
order to enable the party concerned to apply to the
CS(OS) No. 311/2005 page 73 of 78

High Court for rectification of register. The
consequences of the raising of issue are two fold.
In case, the party concerned, makes an application
for rectification within the time allowed, under
sub-clause (ii) of sub-clause (b) of such section (1),
whether originally specified or extended later on,
the civil Court trying the suit has to stay the further
proceedings of the suit until disposal of the
rectification proceeding. At the same time, if no
such application is made within the time allowed,
the party, has raised the plea of invalidity of the
opponent's registered mark, is deemed to have
abandoned the issue. This provision permitting
raising of an issue only on prima facie satisfaction
of the Court, with further requirement that the
party, at whose instance an issue has been framed,
is to apply for rectification before the High Court
concerned, and failure to make such application
within the time allowed results in deemed
abandonment of plea, leads us to conclude that
once a suit has been filed, the rectification
proceedings at the instance of either party to the
suit against the other, must take the course and
envisaged under section 111, that is to say, if
proceedings for rectification are already pending
before raising the plea of an invalidity, that is to
say, the attention of an appropriate Forum having
already been invited to that issue, those
proceedings must first be continued, decision
thereon to be obtained and then civil suit for
infringement can proceed in the light of that
decision. In case, no such proceedings for
rectification are pending at the time of raising the
plea of invalidity, the prosecution of such plea by
the reason raising it depends on prima facie
satisfaction of the Court, about the tenability of this
CS(OS) No. 311/2005 page 74 of 78

plea. If the plea has been found to be prima facie
tenable and an issue is raised to that effect then the
matter is to be adjourned for three months at least
to enable the person raising such plea to approach
the High Court concerned, with a rectification
application. In case, the rectification proceedings
are not already pending, and the Court is not even
prima facie satisfied about the tenability of the plea
raised before it, the matter rests there.”
(Emphasis supplied)
71. Learned counsel for the defendant has placed reliance on the
pronouncement reported at 1981 PTC 14 Karam Singh
Trading as Mankoo Engineering Works Vs Master
Machine & Service & Ors.
72. I find that in this case, it was held that even while directing
that stay of the suit would require to be ordered for the reason that
the defendant had filed an application for cancellation of the
plaintiff's trademark, the court was amply empowered to pass
interlocutory orders including injunction. The defendant have
also placed reliance on Sarwan Singh & Ors. Vs. M/s Rico
Ind. & Ors. 1981 PTC 14 . Even in this case the court stated that
under Section 111(5) of the Trade and Merchandise Marks Act,
CS(OS) No. 311/2005 page 75 of 78

1958 (now Section 124(5) of the Trade Marks Act, 1999), the court
has power to grant interlocutory orders including injunctions.
73. A bare perusal of the statute shows that it is only if there are
pending proceedings for rectification of the register in relation to
the plaintiffs or defendants trademark at the time of filing of the
suit that the court is required to stay the suit pending final disposal
of such proceedings. However, if no such proceedings are
pending, the satisfaction of the court that the plea regarding the
invalidity of the registrations of the plaintiffs or the defendant's
trade mark is prima facie tenable, is a sine qua non under Section
124(1)(b)(ii). Upon such a prima facie view, the law requires the
court to raise an issue regarding the same and adjourn the case for
a period of three months from the date of framing of issue in order
to enable the party concerned to apply to the appellate board for
rectification of the register.
74. So far as this application is concerned, the defendant
contends that it has filed objections and applications seeking
cancellation of the registered trademark of the plaintiff which
CS(OS) No. 311/2005 page 76 of 78

proceedings are admittedly pending. The prayer of the defendant
is that for this reason, the present suit is liable to stayed.
75. It is noteworthy that the present suit was filed by the plaintiff
th
on or about 7 March, 2005, this court had issued summons in the
th
suit and notice in the application by orders passed on 10 March,
2005 and the defendant was duly served with the same. The
rd
defendant first entered appearance in the case on 3 May, 2005.
The application seeking cancellation of the registered trademark
GEODON and ZOLOFT of the plaintiff was filed by the defendant
on 29th November, 2005. There is no dispute that the defendants
have not sought leave of this court before filing the petition before
the Registrar of Trademarks.
76. Furthermore, in the instant case, I have prima facie found
against the defendant on the pleas raised by it and consequently
there would be no requirement of taking recourse to the procedure
stipulated under Section 124 (1)(b)(ii). A contention has been
raised that the rectification proceedings are pending. The validity
of the same would, needless to say, be an issue raised by the
CS(OS) No. 311/2005 page 77 of 78

present plaintiff before the Registrar of Trade Marks in view of the
mandate of Section 124(1)(b)(ii) of the Trademarks Act and does
not need to be commented upon herein. The defendant before this
court has not satisfied the requirement of law.
In this view of the matter, the present application is wholly
misconceived and is hereby dismissed.
(GITA MITTAL)
JUDGE
May 31, 2007
SD
CS(OS) No. 311/2005 page 78 of 78