Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
13.
+ CS (OS) 3164/2015
STAAR SURGICAL COMPANY ..... Plaintiff
Through: Mr. Sanjay Singh and Mr. D.K. Yadav,
Advocates.
versus
CARE GROUP INDIA & ANR. ..... Defendants
Through: Mr. D.K. Rustagi and Ms. Medha Arya,
Advocates.
CORAM: JUSTICE S. MURALIDHAR
O R D E R
% 30.08.2016
IA No. 22150 of 2015 (under Order XXXIX Rules 1 and 2 CPC) & IA
No. 24468/2015 (under Order XXXIX Rule 4 CPC)
1. IA No. 22150 of 2015 under Order XXXIX Rules 1 and 2 of the Code of
Civil Procedure, 1908 („CPC‟) is by the Plaintiff and IA No. 24468/2015
under Order XXXIX Rule 4 of the CPC is by Defendant No.1. The
background to these applications is that the Plaintiff, Staar Surgical
Company, is a company duly organised and existing under the laws of the
State of Delaware having its registered office in California, USA. The
Plaintiff states that it has been carrying on trade and business of
manufacturing, worldwide marketing and sales of implantable lenses for
eyes and delivery systems. The plaintiff claims to be solely dedicated to
CS (OS) No. 3164 of 2015 Page 1 of 11
ophthalmic surgery for over 25 years and the designs, develops and
manufactures and markets implantable lenses for the eye and delivery
systems. The Plaintiff claims to have patented and licensed the first foldable
intraocular lens (IOL) for cataract surgery. The Plaintiff also claims to have
invented and designed a new eye lens and got it patented in different
jurisdictions. The Plaintiff also states to have adopted the trade mark Visian
ICL and/or ICL for its aforesaid products since 1990.
2. It is stated that the Plaintiff has been using the trade mark ICL with a
prefix or suffix but that the essential portion of the trade mark is always ICL.
It started selling products bearing the said trade mark outside the USA in
1996. It is stated that biocompatible Collarmer lens material is used to make
the Plaintiff‟s product which is then implanted behind the iris and in front of
the patients natural lens to treat refractive errors such as myopia, hyperopia,
and astigmatism. It is stated that the lenses of this design are generally called
„phakic lOLs‟ or „phakic implants‟ because they work along with the
patients natural lens rather than replacing it.
3. The Plaintiff claims to be selling its product in more than 60 countries. Its
product has been stated to have been implanted in more than 5 lakhs eyes
worldwide. 80% of its revenue is stated to be generated outside USA. It is
stated that the Plaintiff‟s policy of safety is not only limited to human beings
but environment also.
4. The Plaintiff is stated to have commenced its business operations in India
in 2010 and has gradually expanded its business by making an extensive
presence in India. It is stated to be operating its business in New Delhi,
CS (OS) No. 3164 of 2015 Page 2 of 11
Chennai and Mumbai.
5. In para 14 of the plaint, the Plaintiff has set out the details of the patent
applications made by it for various types of lenses and the status of the said
patent applications. It is stated that owing to continuous and ubiquitous use
of the trade mark Visian ICL/ICL, the said mark is exclusively associated
with the Plaintiff and is distinctive of the Plaintiff‟s products. In para 17 of
the plaint, the worldwide registration and pending trademark applications
filed in India and other countries are set out. As far as India is concerned all
of the Plaintiff‟s applications for Visian ICL/ICL and Design and ICL per se
are stated to be pending.
6. The Plaintiff‟s case is that its trade mark has acquired goodwill in India as
well as in the global market. Its volume of sales year-wise worldwide and
marketing expenses are set out in paras 27 and 28 of the plaint.
7. The case of the Plaintiff is that the Defendants are engaged in the business
of manufacturing and marketing of similar implantable lenses for eyes as
that of the Plaintiff. The Defendants are stated to have adopted and started
using the trade mark IPCL in respect of manufacturing, selling and
exporting of intraocular lenses manufactured and marketed by it. It is stated
that while Defendant No.1 manufactures, sells and exports its product,
Defendant No.2 is the distributor.
8. The case of the Plaintiff is that the Defendants have adopted an
identical/deceptively similar trade mark/label IPCL in relation to the
impugned goods and business. It is, according to the Plaintiff, similar in
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each and every aspect including phonetically, visually, structurally, in its
basic idea and in its essential features. According to the Plaintiff the
Defendants have merely inserted „P‟ in between the said trademark/label
ICL of the Plaintiff. Therefore, it is claimed that the Defendants have passed
off and continued to pass off their mark as that of the Plaintiff which is
harming the goodwill and reputation of the Plaintiff. It is claimed to be in
violation of the Plaintiff‟s proprietary rights in the trade mark/label ICL in
respect of its goods.
9. Accordingly, the present suit was filed for passing off and an interim
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order was passed by this Court on 20 October 2015 restraining the
Defendants from manufacturing, marketing, exporting, using, selling,
offering for sale, advertising or displaying directly or indirectly or dealing in
any other manner or mode in implantable eye lenses, surgical ocular
implants, instruments for implanting surgical ocular implants regarding
refractive surgery and all allied and cognate goods under the under the
impugned trade mark/label IPCL or any other trade mark/label identical with
or deceptively similar to plaintiffs said trade mark/label Visian ICL and/or
ICL.
10. The Defendants filed FAO (OS) No. 675 of 2015 which came to be
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disposed of by the Division Bench by an order dated 14 December 2015
noting the fact that the Defendants had filed IA No. 24468/2015 under Order
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XXXIX Rule 4 CPC for vacating the order dated 20 October 2015.
11. In their application the Defendants point out that the research and
development was undertaken by Defendant No.1, popularly known as Care
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Group India, to develop its products which are manufactured and marketed
by it beginning with 1987. It is stated that the intra ocular lenses available at
that time was at an unaffordable price of Rs.1200 to Rs.1500 per piece and
that the Defendant No.1 worked at reducing it to less than Rs.200 per piece.
12. The Defendants point out that the use of IPCL as a trade mark has been
since 2013. However, the Plaintiff‟s application for registration of ICL was
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subsequently made on 11 June 2015. The Defendant on their part applied
for registration of the trade mark in April 2013 and also got registration
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certificate on the said mark on 8 February 2014 and all this was in the
knowledge of the Plaintiff who did not choose to object to the registration. It
is further pointed out that the colour scheme, packing of the Defendant for
its IPCL product i.e. implantable Phekic Lense are very different from that
of the Plaintiff. It is denied that ICL is a dominant part of the mark of the
Plaintiff. It is pointed out that Plaintiff‟s own application made in June 2015
constituted an admission that “Visian ICL” and “ICL” are two different
trademarks. It is pointed out that there is no similarity or deception in
trademarks ICL or IPCL, at least for „Phekic Lens‟ which are not bought by
consumers or patients directly but on recommendation of an
Ophthalmologist or Surgeon.
13. The Defendants have also given a comparative table of pricing. The
Visian ICL product is sold at Rs.29,000 whereas the Defendant‟s product is
sold at Rs.8,000 as far as Monofocal (less than-8.0D) is concerned. The
product Toric of the Plaintiff is sold at Rs.42,000 and that of the Defendant
at Rs.26,000. Monofocal (less than -9.0D) is sold by the Plaintiff at
CS (OS) No. 3164 of 2015 Page 5 of 11
Rs.29,000 under the mark Visian ICL whereas by the Defendant under the
mark IPCL at Rs. 17,000.
14. This Court has heard the learned counsels for the parties.
15. As far as the tests for passing off is concerned, the law has been well
settled and summarised in National Sewing Thread Co. Ltd. v. James
Chadwick & Bros. Ltd. [1953] 4 SCR 1028 as under:
“The real question to decide in such cases is to see as to how
a purchaser, who must be looked upon as an average man of
ordinary intelligence, would react to a particular trade mark,
what association he would form by looking at the trade
mark, and in what respect he would connect the trade mark
with the goods which he would be purchasing.”
16. In Corn Products Refining Company v. Shangrila Food Products
Limited [1960] 1 SCR 968 , the Court emphasised that “in deciding a
question of similarity between two marks, the mark has to be considered as a
whole.” In Amritdhara Pharmacy v. Satya Deo [1963] 2 SCR 484 it was
held as under:
“For deceptive resemblance two important questions are: (1)
who are the persons whom the resemblance must be likely
to deceive or confuse, and (2) what rules of comparison are
to be adopted in judging whether such resemblance exists.
As to confusion, it is perhaps an appropriate description of
the state of mind of a customer who, on seeing a mark
thinks that it differs from the mark on goods which he has
previously bought, but is doubtful whether that impression
is not due to imperfect recollection. (see Kerly on Trade
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Marks, 8 Edition, p. 400).”
17. In Durga Dutt Sharma v. N.P. Laboratories [1965] 1 SCR 737 a
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distinction is drawn between an action for infringement and an action for
passing off. It was explained that “the use by the Defendant of the trade
mark of the Plaintiff is not essential in an action for passing off, but is the
sine qua non in the case of an action for infringement. No doubt, where the
evidence in respect of passing off consists merely of the colourable use of a
registered trade mark, the essential features of both the actions might
coincide in the sense that what would be a colourable imitation of a trade
mark in a passing off action would also be such in an action for infringement
of the same trade mark.”
18. It is further explained that in the case of infringement “if the essential
features of the trade mark of the Plaintiff have been adopted by the
defendant, the fact that the get-up, packing and other writing or marks on the
goods or on the packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from that of the
registered proprietor of the mark would be immaterial; whereas in the case
of passing off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the
Plaintiff.”
19. The Court has been shown both the packets in which the implantable
lenses are sold by the Plaintiff and the Defendants respectively.
20. The packing of the Plaintiff‟s product is as under:
CS (OS) No. 3164 of 2015 Page 7 of 11
21. Whereas the packing of the Defendants' product is as under:
22. The Court is prima facie unable to agree with learned counsel for the
CS (OS) No. 3164 of 2015 Page 8 of 11
Plaintiff that as far as the Plaintiff‟s mark appearing on its packing is
concerned, ICL is an essential part of the mark as depicted by it. When
viewed as a whole, the colour scheme, the get-up, the manner of
arrangement of the letters in both the marks make them distinct and
different. Even at a glance it is difficult to accept that an average
Ophthalmologist who is prescribing these lenses for implantation is going to
mistake the product of the Defendants for that of the Plaintiff or vice-versa
since there are sufficient distinguishing features to avoid any deception or
confusion. The colour and the size of the font, the shape of the letters, the
positioning, the overall colour scheme, and even the actual words used in
combination are some of these. The difference in the price is one other
factor but certainly not necessarily the critical distinguishing factor.
23. Learned counsel for the Plaintiff places extensive reliance upon the
decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd. (2001) 5 SCCC 73 and in particular in para 28 which
dealt with medicinal products and emphasised that “exacting judicial
scrutiny is required if there is a possibility of confusion over marks on
medicinal products because the potential harm may be far more dire than
that in confusion over ordinary consumer products.” In the said decision it
was pointed out that even doctors are not immune from mistakes even if it
was a Schedule L product which had to be prescribed.
24. The Court is conscious that the product in question is a medicinal
product in the sense that it is IOL lens which is meant for implantation. An
average person who goes for any such lens is not expected to note the
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distinguishing features. It cannot be sold without a prescription. The
prescription has to be by a qualified Ophthalmologist. It is not in dispute that
the first „consumer‟ is in fact the Ophthalmologist. It cannot be prescribed
even by a General Physician since the product is for a particular use that can
be prescribed only by a specialist. IOLs cannot be bought over the counter in
a medical store. The Court is not satisfied that such Ophthalmologist will be
deceived or confused into prescribing the Defendants‟ product for the
Plaintiff‟s product or vice versa.
25. Another important feature is that the Defendants‟ mark is a registered
mark and subsists as such. Learned counsel for the Plaintiff states that the
Plaintiff has applied for cancellation of said mark. It will be for the Plaintiff
to pursue such application in accordance with law. However, as far as the
present applications are concerned this is an additional factor that weighs in
favour of the Defendants.
26. The tests for passing off explained by the Supreme Court in the above
decisions are not satisfied in the present case. The Court is, therefore, of the
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view that there is no justification for continuing the interim order dated 20
October 2015 in favour of the Plaintiff. It is accordingly vacated.
27. The Defendants will nevertheless account for the sales of their products
made during the pendency of these proceedings and produce accounts as and
when required as may be ordered by the Court. It is further clarified that the
observations made in this order are prima facie and limited to the purpose of
deciding these two applications. The Court finally deciding the matter will
arrive at an independent view based on the evidence led by the parties.
CS (OS) No. 3164 of 2015 Page 10 of 11
28. With the above observations, IA No. 22150 of 2015 filed by the Plaintiff
is dismissed and IA No. 24468/2015 filed by the Defendant No.1 is allowed.
IA No. 588 of 2016 (under Order XXXIX Rule 2A CPC)
29. In view of the dismissal of IA No. 22150 of 2015 filed by the Plaintiff
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and the vacation of the interim order dated 20 October 2015, this Court is
not inclined to entertain the present application. It is dismissed as such.
CS (OS) 3164/2015
30. The suit be re-numbered as a commercial suit.
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31. The suit be listed before the Joint Registrar („JR‟) on 24 October 2016
for admission and denial of documents in terms of the Commercial Courts
Act.
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32. List before Court on 6 December 2016 for framing of issues.
S.MURALIDHAR, J
AUGUST 30, 2016
dn
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