SMITHKLINE BEECHAM LTD & ANR vs. HANISH K AJMERA & ANR

* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ IA Nos. 19404/2011 (O.XXXIX R.1 & 2 CPC) & 7794/2012
(O.XXXIX R.4 CPC) in CS(OS) 3024/2011
nd
% Reserved on: 22 November, 2013
th
Decided on: 10 January, 2014
SMITHKLINE BEECHAM LTD & ANR ..... Plaintiff
Through Mr. Manav Kumar, Mr. Manoj Kumar
Sahu, Advs.
versus

HANISH K AJMERA & ANR ..... Defendant
Through Mr. Gautam Panjwani, Mr. Rahul
Malik, Advs.
Coram:
HON'BLE MS. JUSTICE MUKTA GUPTA
1. Both the applications can be decided by a common order as one seeks
grant of interim injunction pending the disposal of the suit and the other
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vacation of the ad interim injunction granted on 12 December, 2011 by this
Court in favour of the plaintiff.
2. Learned counsel for the plaintiff contends that the registration of the
trademark CROCIN a Paracetamol tablet in favour of the plaintiff relates
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back to 26 April, 1982. CROCIN is a household name used everywhere.
No part of the plaintiff‟s mark CROCIN is derived from the Paracetamol and
is a coined and adopted name. The defendant infringed the trademark of the
plaintiff by adopting the trademark PIROCIN for their Paracetamol tablet.
The defendant has not been able to show how it adopted the mark PIROCIN
as neither the same relates to the salt in the medicine nor the diseases to be
cured. Since it is a case of infringement of plaintiff‟s trademark the plaintiff

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is only required to show that the marks are similar and once the same is
shown no further evidence is required to be led. The plaintiff‟s existence in
India dates back to 1963 when it was first adopted by Dhapur Interfan
Limited. The mark was then acquired by Smithkline Beecham Plc. In 2010
Smithkline Beecham Plc changed its name to Smithkline Beecham Limited
and became the proprietor of mark CROCIN in India. Medicinal preparation
under the mark CROCIN are extremely popular and widely consumed in
India and the plaintiff‟s have incurred substantial expenditure in establishing
their goodwill and reputation. The blister blue strip packaging of CROCIN
launched since the year 2002 has acquired great recognition and thus in
addition to being licensed user of the registered trademark CROCIN owned
by plaintiff No.1, plaintiff No.2 is the owner of the copyright in the artistic
work comprising CROCIN blue blister packaging. Not only the defendants
have copied the trademark of the plaintiffs, but have also copied the phrase
used “the effective relief from pain - gentle on stomach”. Thus, the
defendants are copying all the essential features of the plaintiff‟s mark. The
defendants are also in the pharmaceutical business. In 2010 the plaintiff‟s
were alerted to the sale of analgesic and anti-pyretic tablets by the defendant.
The defendants have adopted the mark PIROCIN virtually identical to the
plaintiffs‟ well-known and registered CROCIN mark and merely replaced
the alphabet „C‟ with „PI‟. The members of the trade and purchasing public
are likely to perceive the defendants‟ products as originating from the
plaintiffs‟; which is absolutely false. Further, the two rival marks are
virtually identical. The two products with rival marks are used for identical
purposes i.e. both provide relief from pain, the class of consumers directly
overlap and the channel of trade is also identical. The plaintiffs sent a legal

IA Nos. 19404/2011 & 7794/2012 in CS(OS) 3024/2011 Page 2 of 13

notice to the defendant. The stand of the defendant in the reply to the legal
notice is different than the written statement. Even the name of the product
has been mentioned wrongly. The defendant failed to mention, since when
they were using the name and how they acquired the same. The defense
taken is that the two marks are not similar. Both are honest and concurrent
user of the marks. In case of infringement of the trademark, once marks are
found to be similar then honest and concurrent use has no relevance.
Secondly, the mark has to be compared as a whole and the same cannot be
dissected. The principle to be applied is that of an ordinary man with
imperfect recollection. The defendant‟s plea of want of territorial
jurisdiction is also not maintainable, as the plaintiff has an office in Delhi as
is mentioned in memo of parties. Thus, the plaintiff works for gain in Delhi.
Further, the plaintiff‟s goods are extensively sold in Delhi. The plaintiff has
also filed the sale invoices relating to Delhi. The case of the defendant that
the registration is bad and is not valid is not relevant for the present suit, as
for the same he has to file an application before the Registrar of Trade
Marks. The plea of delay and latches is also unfounded. Though the
defendant claim to be using PIROCIN since 1998, the plaintiff has come to
know about the same now. Thus, the plaintiff immediately sent a notice to
the defendant. The protection under Section 34 of the Trademarks, as
claimed by the defendant, is not available to the defendant. Merely because
the plaintiff has not taken action against other users of the mark „CIN‟ in
their pharmaceutical preparation would not render any benefit to the
defendant. Reliance is placed on Cadila Health Care Ltd. Vs. Cadila
Pharmaceutiacals Ltd. AIR 2001 SC 1952; Kaviraj Pandit Durga Dutt
Sharma Vs. Navratna Pharmaceutical Laboratories AIR 1965 SC 980;

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Automatic Electricc Ltd. Vs. R.K. Dhawan & Anr. 77 (1999) DLT 292; Corn
Products Refining Vs. Shangrila Food Products AIR 1960 SC 142; Himalaya
Drug Company Vs. S.B.L. Limited 2030 (53) PTC 1(Del)(DB); United
Biotech Vs. Orchid Chemicals and Pharmaceutical Limited 2012 (50) PTC
433 (Del.) (DB): Pankaj Goel Vs. Dabur India Ltd. 2008 (38) PTC 49 (Del)
(DB); Novartis AG Vs. Crest Pharma Pvt. Ltd. & Anr. 2009 (41) PTC
(57)(Del); Go Delhi Luxury Vs. Go Delhi Tours 2012 (51) PTC 273 (Del);
Express Bottlers Service Vs. Pepsi Inc. & Ors. 1989 (14) PTC 14 (Del);
Anglo French Drugs & Industries Ltd. Vs. Eisen Pharmaceutical Company
Pvt. Ltd. 1998 (1) ARB LR 61; Simatul Chemical Industries Pvt. Ltd. Vs.
Citabul Ltd. PTC SUPPL. 1 600 (Guj)(DB); Amritdhara Pharmacy Vs. Satya
Deo Gupta AIR 1963 SC 449; M/s. Hindustan Pencils Pvt. Ltd. Vs. M/s.
India Stationery Products Co. and Anr. AIR 1990 DELHI 19; Midas Hygiene
Industries P. Ltd. & Anr. Vs. Sudhir Bhatia & Ors. 2004 (28) PTC 121 (SC)
and Laxmikant V. Patel Vs. Chetanbhat Shah & Anr. 2002 (24) PTC 1 (SC ).
3. Learned counsel for the defendant on the other hand contends that the
injunction is liable to be vacated because the plaintiff has concealed material
facts from this Court. The defendant is preparing ayurvedic medicine which
material fact has not been stated in the plaint. Reliance is placed on S.P.
Chengalvaraya Naidu Vs. Jagannath AIR 1994 SC 853; T. Arivandandam
Vs. T.V. Satyapal and Anr. AIR 1977 SC 2421 and Satish Khosla Vs. Eli Lilly
Ranbaxy Ltd. 71 (1998) DLT 1 . Though the defendant did not state that it
was manufacturing and selling ayurvedic medicine in its reply to the legal
notice of the plaintiff, however in the second reply the defendant stated that
it was manufacturing and selling ayurvedic medicine which reply has not

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been filed along with the documents by the plaintiffs. The mark CROCIN is
not an invented word and is a word in the dictionary which means saffron.
The plaintiffs are neither honest adopter nor the registered owner of the
trademark. There are number of medicines ending with the alphabet „CIN‟
who are prior adopters than the plaintiff. There are number of distinctions
between the two marks i.e. CROCIN and PIROCIN. CROCIN is allopathic
medicine used for cold and fever only, the price of 15 tablets is Rs. 20.35/-,
Overdose can potentially damage the liver, it is packed in a blue packaging,
cannot be taken without the Doctor‟s prescription and its composition is
Paracetamol 500 mg, caffeine 25 mg and Phenylephrine 5 mg, no particular
course of medicine is required and is available in almost every general store
and medical shops, shape and colour of the tablet is round and white, is a
Schedule „H‟ drug, whereas PIROCIN is used in cold, fever, headache and
bad throat etc., is a ayurvedic medicine, the price of 10 tablets is Rs. 125/-,
there are no side effects, is packed in silver transparent packaging, is sold
solely on medical prescription, the composition of drug is herbal and
ayurvedic, it has a minimum course of five days, is available only in
particular ayurvedic medicine shops, the tablet is not round in shape, the
colour of the tablet is light brown, there is nothing written on the tablet and
below PIROCIN it is written analgesic and anti-pyretic along with being an
ayurvedic medicine and is sold in Madhya Pradesh and Southern Parts of
India only. This Court has no territorial jurisdiction to entertain the suit as
the defendant has no existence in Delhi. As per the documents filed the
plaintiff‟s registered office is in Gurgaon. The sale invoices filed relate to
the period of 2005-2006 whereas the suit has been filed in 2011. The
plaintiffs have failed to show that at the time of institution of suit, the

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plaintiffs are carrying on business in Delhi, as is the requirement under
Section 34 of the Trade Marks Act. The availability of plaintiff‟s goods in
Delhi will not confer territorial jurisdiction on this Court as held in Archie
Comic Publications Inc Vs. Purple Creations Pvt. Ltd. & Ors. 2010 (44)
PTC 520 (Del) (DB ). Reliance is placed on M/s. Dhodha House Vs. S.K.
Maingi AIR 2006 SC 730; Alberto Co. Vs. R.K. Vijay & Ors. 2010 (42) PTC
300 (Del) and Sholay Media Entertainment and Anr. Vs. Yogesh Patel and
Ors. MIPR 2010 (1) 268 (Del) . Since the defendant has no existence in
Delhi and the products of the defendant are not sold in Delhi, Section 20
CPC also is not attracted. Relying upon F. Hoffmann- La Roche and Co.
Ltd. Vs. Geoffrey Manners and Co. Private Ltd. AIR 1970 SC 2062 it is
contended that the Supreme Court dismissed the appeal against the order of
the High Court where injunction was asked in two similar trademarks i.e.
DROPOVIT and PROTOVIT. Relying upon M/S Gufic Ltd. & Anr. Vs.
Clinique Laboratories, Llc & Anr., FAO (OS) No. 222/2009 decided by this
th
Court on 29 May, 2009 it is contended that in view of the marked
difference in the two medicines, the customers, price, one being ayurvedic
and other allopathic and on a comparison as a whole, there is no deception
and no similarity. Reliance is also placed on Apex Laboratories Ltd. Vs.
Zuventus Health Care Ltd. 2006 (33) PTC 492 (Mad)(DB); Aviat Chemicals
Pvt. Ltd. and Anr. Vs. Intas Pharmaceuticals Ltd. 93 (2001) DLT 247;
Astrazeneca Uk Limited and Anr. Vs. Orchid Chemicals 2007 (34) PTC 469
(Del)(DB); Shri Atul Rawal Vs. M/S S.B. Equipments 2010 (43) PTC 521
(Del); ACME Pharmaceutical Vs. Torrent Pharmaceuticals Ltd. MIPR 2010
(1) 0217; B.L. & Co. Vs. Pfizer products Inc. 2001 (93) DLT 346 (DB);
Schering Corporation & Ors. Vs. Getwell Life Sciences India 2008 (37) PTC

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487 (Del); Korpan Chemical Co. Ltd. Vs. Sigma Laboratores 1993 (13) PTC
245 (Bom); East African (1) Remedies Pvt. Ltd. Vs. Wallace
Pharmaceuticals Ltd. & Anr. 2003 (27) PTC 18 (Del); Schering Corporation
& Ors. Vs. Alkem Laboratories Ltd. 2010 (42) PTC 772 (Del)(DB); Cipla
Limited Vs. M.K. Pharmaceuticals 2008 (36) PTC 166 (Del); Inco-Pharma
Pharmaceuticals Vs. Citadel Fine Pharmaceuticals AIR 1998 Madras 347
Division Bench and Rich Products Corporation & Anr. Vs. Indo Nippon
Food Limited 2010 (42) PTC 660 (Del) .
4. Heard learned counsel for the parties. The facts relevant to the
applications are borne out from the contentions of the learned counsel for the
parties and thus this Court proceeds to deal with the contentions raised.
5. Learned counsel for the defendant has strenuously contended that the
factum of the defendant‟s product being an ayurvedic medicine has been
concealed from this Court and thus the plaintiff is not entitled to an
injunction from this Court. The case of the defendant is that the second
reply given by the defendant has not been filed on record. The plaintiff had
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issued a legal notice to the defendants on 17 March, 2010. The defendant
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replied to the said notice vide its letter dated 24 March, 2010 wherein there
is no reference to the fact that the drug of the defendant is an ayurvedic drug
and further even the name of the medicine has been wrongly spelt as
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PYROCIN. The plaintiff again replied back vide its letter dated 18 May,
2010. It is the case of the defendant that he had sent a reply to the letter of
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the plaintiff dated 18 May, 2010 which has not been filed. Learned counsel
for the plaintiff has contended that the defendant has not filed any document
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to show that the said reply to the letter of the plaintiff dated 18 May, 2010

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was received by the plaintiff. The plaintiff in fact never received any such
reply and thus could not have filed it. Without going into the controversy
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whether the reply by the defendant to the letter of the plaintiff dated 18
May, 2010 had been sent by the defendant or not, or received by the plaintiff
or not, suffice it is to note that the plaintiff has placed on record the
packaging of the strip of tablet of the defendant at page 4 of its document,
which itself notes that PIROCIN is an ayurvedic medicine, and thus, it
cannot be held that the plaintiff concealed material facts before this Court
and thus the injunction is liable to be vacated in view of the law laid down in
S.P. Chengalvaraya Naidu Vs. Jagannath AIR 1994 SC 853; T.
Arivandandam Vs. T.V. Satyapal and Anr. AIR 1977 SC 2421 and Satish
Khosla Vs. Eli Lilly Ranbaxy Ltd. 71 (1998) DLT 1 .
6. The second contention of the defendant is that this Court has no
territorial jurisdiction to entertain the present suit. In fact, this was framed as
issue No.5 and was directed to be treated as a preliminary issue. After
hearing the parties this Court has already held that since the issue involves
mixed question of fact and law, the same cannot be treated as a preliminary
issue in view of the law laid down in Ramesh B. Desai & Ors. Bipin Vadilal
Mehta & Ors. AIR 2006 SC 3672 . However, this Court is dealing with this
issue only to form a prima facie opinion on the issue of interim injunction.
Section 134 of the Trade Marks Act provides that a suit for the infringement
of a registered trademark or any right relating thereto can be filed in a Court
within the local limits of whose jurisdiction, at the time of the institution of
the suit or other proceedings, the person instituting the suit or proceedings,
actually or voluntarily resides or carries on business or personally works for

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gain, notwithstanding the provisions contained in the Code of Civil
Procedure, 1908. As per the memo of parties, the plaintiff has a sales depot
in the name of Glaxosmithkline Consumer Healthcare Limited at 619/1,
Chattarpur, New Delhi 110030. The plaintiff in Para 30 of the plaint has
stated that the plaintiffs have their office and carries on business in Delhi and
are thus voluntarily working within the jurisdiction of this Court. The
plaintiff has placed on record sale invoices pertaining to the medicine
CROCIN from its Smithkline Beecham Consumer Healthcare Limited
office. The case of the defendant is that the said invoices relate to the period
1996, 2004, 2005 and 2006. Thus, at the moment the plaintiff is not working
for gain in Delhi as it has closed down its office. Merely on an oral
averment by the learned counsel for the defendant that the plaintiff has
closed down its office at Chattarpur, it cannot be said that the plaintiff is not
working for gain in Delhi. There is a specific averment in Para 30 with
regard to carrying on business at Delhi. The address of the Delhi office i.e.
Sales Depot at 619/1 Chattarpur, New Delhi has been mentioned. Sale
invoices till the period 2006 have been filed. Thus, at this stage prima facie
on the basis of averments in the plaint, it cannot be said that the plaintiff is
not carrying on business at Delhi and thus no interim injunction be granted
because this Court has no territorial jurisdiction to try the suit. Reliance on
the decision in Archie Comic Publications Inc Vs. Purple Creations Pvt. Ltd.
& Ors. 2010 (44) PTC 520 (Del) (DB ) is misconceived as in the said case
this Court came to the conclusion that when there is a total inherent lack of
jurisdiction on the basis of averments in the plaint itself, then the Court has
no power to even permit amendment of the plaint. In the present case as per
the facts pleaded in the plaint territorial jurisdiction of this Court is made

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out, further subject to the parties leading evidence in this regard, and thus the
interim injunction cannot be refused to the plaintiff on this ground.
7. In Gufic the word VIT was derived from the word Vitamin and both
PROTOVIT and DROPOVIT were held to be distinct as the word VIT was
essential to the trade both drugs being vitamins and the words „PROTO‟ and
„DROPO‟ were distinct words. In the present case word „CIN‟ neither
relates to the salt in the drug nor the ailment it cures.
8. The present is a suit for infringement of the trademark of the plaintiff
as the plaintiff has placed on record documents to show that plaintiff No.1 is
the registered owner of the trademark CROCIN. In Ruston & Hornsby
Limited Vs. The Zamindara Engineering Co. 1969 (2) SCC 727 the Supreme
Court in Para 7 held:
“7. In an action for infringement where the defendant‟s trade mark
is identical with the plaintiff‟s mark, the Court will not enquire
whether the infringement is such as is likely to deceive or cause
confusion. But where the alleged infringement consists of using not
the exact mark on the register, but something similar to it, the test of
infringement is the same as in an action for passing-off. In other
words, the test as to likelihood of confusion or deception arising from
similarity of marks is the same both in infringement and passing-off
actions.”
9. In Ramdev Food Products (P) Ltd. Vs. Arvindbhai Rambhai (2006) 8
SCC 726 , at page 765 in Para 91 the Supreme Court held:
“Although the defendant may not be using the actual trade mark of the
plaintiff, the get-up of the defendant‟s goods may be so much like the
plaintiff‟s that a clear case of passing-off could be proved. It is also
possible that the defendant may be using the plaintiff‟s mark, the get-
up of the defendant‟s goods may be so different from the get-up of the

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plaintiff‟s goods and the prices also may be so different that there
would be no probability of deception to the public. However, in an
infringement action, an injunction would be issued if it is proved that
the defendant is improperly using the plaintiff‟s mark. In an action for
infringement where the defendant‟s trademark is identical with the
plaintiff‟s mark, the Court will not enquire whether the infringement is
such as is likely to deceive or cause confusion. The test, therefore, is
as to likelihood of confusion or deception arising from similarity of
marks, and is the same both in infringement and passing-off actions”
10. In Kaviraj Pandit Durga Dutt Sharma Vs. Navratna Pharmaceutical
Laboratories AIR 1965 SC 980 it was held:
“28. The other ground of objection that the findings are inconsistent
really proceeds on an error in appreciating the basic differences
between the causes of action and right to relief in suits for passing off
and for infringement of a registered trade mark and in equating the
essentials of a passing off action with those in respect of an action
complaining of an infringement of a registered trade mark. We have
already pointed out that the suit by the respondent complained both of
an invasion of a statutory right under Section 21 in respect of a
registered trade mark and also of a passing off by the use of the same
mark. The finding in favour of the appellant to which the learned
counsel drew our attention was based upon dissimilarity of the packing
in which the goods of the two parties were vended, the difference in
the physical appearance of the two packets by reason of the variation
in the colour and other features and their general get-up together with
the circumstance that the name and address of the manufactory of the
appellant was prominently displayed on his packets and these features
were all set out for negativing the respondent's claim that the appellant
had passed off his goods as those of the respondent. These matters
which are of the essence of the cause of action for relief on the ground
of passing off play but a limited role in an action for infringement of a
registered trade mark by the registered proprietor who has a statutory
right to that mark and who has a statutory remedy for the event of the
use by another of that mark or a colourable imitation thereof. While an
action for passing off is a Common Law remedy being in substance an
action for deceit, that is, a passing off by a person of his own goods as

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11. Thus, in view of the legal position as laid down in Kaviraj Pandit
Durga Dutt Sharma (supra ) in an action for infringement where the plaintiff
is able to show that the defendant‟s mark is likely to deceive either due to
visual, phonetic or otherwise similarity, and the Court reaches a conclusion
that there is an imitation, no further evidence is required to be established
that the plaintiff‟s rights are violated. In the present case, learned counsel for
the defendant has strenuously sought to support that there are numerous

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differences between the two marks, as the packaging‟s are different, the price
is different, one is allopathic medicine and the other is an ayurvedic
medicine. However, the fact remains that there is a very close phonetic
similarity between the two trademarks PIROCIN and CROCIN. Both the
medicines are used for the same ailment i.e. relieving the pain, both are
analgesics and soft on stomach, and there is not much variation in the prices
of the two strips. Thus, the ex-parte ad interim injunction in favour of the
plaintiff is required to be made absolute till the disposal of the suit.
12. Consequently IA 19404/2011 filed by the plaintiff under Order
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XXXIX Rule 1&2 is allowed and the order dated 12 December, 2011 is
made absolute till the disposal of the suit and I.A No. 7794/2012 filed by the
defendant for vacation of interim injunction under Order XXXIX Rule 4
CPC is dismissed.
(MUKTA GUPTA)
JUDGE
JANUARY 10, 2014
‘ga’


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