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IN THE HIGH COURT OF JUDICATURE AT BOMBAY O. O. C. J. NOTICE OF MOTION NO.4429 OF 2007 IN SUIT NO.3221 OF 2007 Ranbaxy Labratories Limited. ...Plaintiff. Vs. M/s.Universal Twin Labs. ...Defendant. .... Mr. M.P. Rao with Mr. H.P. Singh, Ms. Henal Vakharia, Ms.Deepti Trivedi and Ms.Deepti Adhav i/b. Henal Vakharia & Asso. for the Plaintiff. Mr.Virag Tulzapurkar with Mr. Ashish Kamath i/b. M/s. Bharat Shah & Co. for the Defendant. ..... CORAM :DR.D.Y.CHANDRACHUD, J. January 30, 2008. JUDGMENT: The Plaintiff is the registered proprietor of a trade mark, “VOLINI”, in respect of medicinal and pharmaceutical preparations falling in class 5 of the Schedule to the Trade Marks Rules. The registration continues to be valid and to subsist on the register. VOLINI which is a word mark, is used by the Plaintiff for an ointment which is stated to provide relief from pain, swelling and inflammation.
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The mark has been used continuously since 1994. The Plaintiff has, incidental thereto, prepared and used labels and promotional material adopting the mark. The sales figures and promotional expenses between the years 2003 and 2006 are disclosed in the plaint to be thus: “Sales Figures 2003
Rs. 215.30 million
2004
Rs. 246.80 million
2005
Rs. 301.80 million
2006
Rs. 382.60 million
Promotional expenses 2003
Rs. 17.49 million
2004
Rs. 25.86 million
2005
Rs. 26.02 million
2006
Rs. 23.30 million.”
In an affidavit filed on 19th January 2008, certain additional facts have been disclosed. The Plaintiff has relied upon ORG IMS data,
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according to which, the product in question, ranked first among topical analgesics, antirheumatics and nonsteroidal anti inflammatory drugs. The approved budget on promotional expenses for the year 2008 is Rs. 127.3 million. The mark has been extensively advertised on the electronic and print media. The sales figures for 2007 were estimated at Rs. 404.7 million. The product has a market share of 28.34%.
2.
The sale of the product has taken place in cartons on
which the mark VOLINI appears in a bold typeface. The letters constituting the mark are printed in mauve with a white background. The name of the Plaintiff is inscribed on the side of the carton and along side a logo of what is described as “a running person” is printed. The words “A Multi action Topical Gel” appear on the carton. On one side of the carton, there are four line diagrams furnishing a visual indicator of a person depicted to have pain in the lower back, joint pains and a strain of a muscular nature. Each carton has a distinctive colour scheme, get up and layout. The Plaintiff claims that
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as a result of prior adoption, long and continuous user and publicity on a significant scale, the mark together with the associated get up and colour scheme of the carton and the tube have acquired a significant reputation in the trade and among the public.
3.
The Defendant commenced marketing a product under the
word mark “VONIGEL”. This mark is, according to the Plaintiff, similar to or identical with the mark of the Plaintiff visually, phonetically and structurally. The grievance of the Plaintiff is that the Defendant has copied the entire get up of the carton and the tube of the Plaintiff. The carton used by the Defendant uses, according to the Plaintiff, identically placed four line diagrams containing indications of lower back pain, joint pain, sprain, strain and muscular pain and the Defendant has copied the words “A Multiple Action Topical Gel” with a similar posture of a person who is running. The overall effect is, according to the Plaintiff, to deceive the unwary customer with imperfect recollection into confusing the mark of the Defendant for the mark of the Plaintiff. A comparison of the two marks is made in
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paragraph 10 of the plaint and is summarised thus, therein: PLAINTIFF'S PRODUCT
DEFENDANT'S PRODUCT
Identical placement of 4 diagrams, indication of Low Back Pain, Joint Pain, Sprains and Strains and Muscular Pain.
Identical placement of 4 diagrams, indication of Muscular Pain, Joint Pain, Sprains & Strains and Low Back Pain.
Posture of running man
Symbol of running man.
Colour scheme in Mauve colour in bold typeface with white background and white coloured carton.
Colour scheme in Mauve colour in bold typeface with white background and white coloured carton.
Written “For Quick relief from Written “For Quick relief from Pain, Swelling and Inflammation.” Pain, Swelling and Inflammation.” Placement of trademark VOLINI Placement GEL. VONIGEL.
of
trademark
Both products are used for treating the same condition. The adoption of the mark by the Defendant is submitted to be dishonest and with a view to trading on the established reputation of the Plaintiff. The suit has accordingly been instituted for infringement and passing off.
4.
An application for interim relief has been made therein.
Injunctive reliefs, a direction for disclosure and the appointment of a
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Receiver have been sought in the Motion. The pleadings in the Motion being complete, the Motion has been taken up for hearing and final disposal in pursuance of the agreed order dated 31st December 2007 recording the consent of the parties for disposal of the Motion at this stage.
5.
At the hearing of the Notice of Motion, the averments
contained in the Plaint and the additional affidavit have been pressed in aid to support the application for interlocutory relief. The submission is that the adoption of the mark VONIGEL by the Defendant infringes upon the rights of the Plaintiff as a registered proprietor of the mark VOLINI. It has also been urged that the adoption of the mark VONIGEL by the Defendant is not honest and is with a view to trade on the established reputation of the Plaintiff. The Defendant who is a subsequent entrant into the market nearly a decade after the Plaintiff had established a significant reputation and a goodwill associated with the use of the mark is alleged to have attempted to pass off its goods as those of the Plaintiff. The colour
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scheme, diagrams and the get up of the carton have all been placed in aid of the submission.
6.
On behalf of the Defendant it has been submitted that (i)
The registration certificate annexed to the Plaint shows that what is registered is the word mark VOLINI. The mark of the Defendant – VONIGEL – is in the submission, “word for word” not similar; (ii) In so far as the claim of passing off is concerned, no statement is made in the Plaint as to when the carton was adopted by the Plaintiff and a reputation by long user is not established. On the other hand, the contention of the Defendant is that (a) A firm by the name of Universal Impex was in existence from 1992 to 2006 and came to be dissolved due to disputes between its two partners. The firm allegedly was the proprietor of the carton/label bearing the trade mark ENAC GEL EXCEL and the firm is alleged to have used the carton bearing the four diagrams in question for about eight years. One of the erstwhile partners of the firm – Satish Mehta – together with the deponent of the affidavit in reply are stated to be partners of the Defendant. The
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Defendant commenced using the mark VONIGEL EXCEL. The Defendant is stated to have used the carton including the diagram, colour scheme, design and get up which had appeared on the carton of ENAC GEL EXCEL for over eight years; (b) The certificate of registration of copy right which is relied upon shows that the erstwhile firm had used the carton from 1998. The Plaintiff, it is urged, has no material to establish the user of the carton prior to 1998; (c) The words which are used by the Plaintiff on the carton, namely, (i) ' For quick relief from pain, swelling and inflammation'; (ii) 'A multiple action topical gel'; and the four line diagrams are claimed to be only descriptive of the nature of the product. The logo of a ' running man' which the Plaintiff adopts is according to the Defendant distinct from the logo of a dancer which the Defendant has used on its carton; (iii) Other cartons of similar products are stated to contain similar diagrams and descriptions; and (iv) The sales of the Defendant commenced from July 2006 whereas the suit is stated to have been instituted on 2nd November 2007 over sixteen months after the commencement of user by the Defendant.
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7.
These submissions now fall for determination.
8.
The Plaintiff is the proprietor of the word mark, VOLINI,
which is registered in class 5 as a medicinal and pharmaceutical preparation. VOLINI is an invented word. The registration of the word mark by the Plaintiff confers upon the Plaintiff, the exclusive right to use the mark and an entitlement to sue for infringement under Sections 28 and 29 of the Trade Marks Act, 1999. The Defendant commenced business well over a decade after the Plaintiff. Even according to the Defendant, the mark was conceived and adopted “sometime in late 2005” and the application for the registration of the word mark VONIGEL was made on 10th March 2006. Since July 2006, the Defendant claims to be marketing its pharmaceutical preparation under the brand name VONIGEL EXCEL.
9.
The contention of the Defendant is that the mark VONIGEL
is not deceptively similar, word for word or letter for letter. That is not
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a correct approach in a trade mark action. In considering the issue of deceptive similarity, the Court has to have due regard to the rival marks as a whole and to the impact which they would make on an ordinary and, as it is often said, unwary purchaser. The dominant characteristic of the mark which has been adopted by the Defendant is the prefix “VONI” which occurs before the “GEL”. To the average purchaser with an average intelligence, the mark VONIGEL must appear deceptively similar to the mark VOLINI
of which the
Plaintiff is the registered proprietor. The average purchaser is liable to be confused into assuming that the product under the mark VONIGEL which is sold by the Defendant is in fact, the product of the Plaintiff sold under the mark VOLINI. The words VOLINI and VONI are deceptively similar, the only distinction being the deletion of the letters “LI” in the mark of the Defendant. Undoubtedly, both the marks have to be considered as a whole. In doing so, the average purchaser is liable to place a much greater degree of emphasis on the word “VONI” as it appears in the mark of the Defendant leading to a deceptive degree of similarity with the mark of the Plaintiff. A prima
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facie case of infringement has, therefore, been established.
10.
But, according to the Defendant, it is only the word mark of
the Plaintiff which is registered while on the other hand, the use of the carton by the Defendant dates back to 1998. According to the Defendant, the erstwhile firm of Universal Impex had marketed a product by the name of ENAC GEL EXCEL and the carton which was being used by the firm prior to its dissolution has been adopted with a substantial similarity in terms of the thematic diagrams, colour scheme, design and get up. According to the Defendant, the plaint does not contain a precise disclosure of the extent of the use of the carton by the Plaintiff, the date on which use commenced and the extent of sales based thereon. Hence, it has been urged that the prior use of the carton is of the Defendant and the consequence is that it is the Plaintiff which is passing off its carton as that of the Defendant.
11.
Now, in this regard, it would be necessary to note that in
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paragraph 5 of the Plaint, there is a disclosure of the sales figures and promotional expenses since 2003 until 2006. Paragraph 6 contains an elaboration of the nature of the carton that has been used by the Plaintiff while paragraph 7 contains a submission that by virtue of a prior adoption and long and continuous user as aforesaid, as well as owing to the large scale on which publicity has been made, the mark VOLINI and the get up and colour scheme of the carton and the tube have acquired “an enviable reputation in the minds of the trade and public”.
12.
The defence to the action is that an erstwhile partnership
firm – Universal Impex – “were/are the proprietors of the carton/label bearing the trade mark ENAC GEL EXCEL”. According to the Defendant, the firm has used carton for about eight years. The reply is, however, completely silent in regard to the sales, if any, that actually took place under the trade mark ENAC GEL EXCEL. No figures have been furnished. There is no material before the Court to establish that there was a continuous use of the aforesaid mark by the
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erstwhile partnership. No details of advertisements or of the expenditure incurred on sales promotion have been furnished. The copyright registration of the Enac Gel Excel Carton is of 3rd June 2004. It is true that the year of the first publication is referred to therein as 1998. However, as noted above, the affidavit in reply is totally bereft of any material that would establish the actual and continuous use of the ENAC GEL EXCEL mark or of the existence of substantial sales in respect of the product.
13.
Prima facie, what the defendant has done is to adopt a
clever disguise for passing off its own product – VONIGEL – as the product of the Plaintiff. The mark of the Defendant is deceptively similar. The Defendant uses the same colour combination. The Plaintiff' s cartons contain a description to the effect that the preparation is “For quick relief from pain, swelling and inflammation”. The same description appears on the carton of the Defendant, word for word. The Plaintiff' s carton represents the product to be “A Multi Action Topical Gel”. The Defendant' s carton contains an identical
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representation. The carton of the Plaintiff contains four line diagrams containing a thematic illustration of the efficacy of the product in treating of (i) low back pain; (ii) joint pain; (iii) sprains and strains; and (iv) muscular pain. The Defendant has adopted an almost identical depiction of a person suffering from the same four conditions. The Plaintiff' s carton contains a depiction of a human being involving in the process of running. The Defendant has chosen to adopt a logo in the same colour as that of the Plaintiff – Orange – and it is no answer to submit, as did Counsel appearing on behalf of the Defendant, that the logo of the Defendant is of a 'd ancing man' a s opposed to the logo of the Plaintiff which is of ' a running man' . Such niceties may provide interesting trivia in a ' spot the difference in the pictures' contest but do not constitute a valid test in trade mark law. Trade mark law postulates the protection of a purchaser as average as the common citizen who goes about his daily chores. Trade mark law must also protect the just proprietary rights of manufacturers. Unless such a protection is afforded, the goodwill and reputation associated with an established mark ceases to be distinctive of the goods which it
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purveys. A rapidly advancing industrial economy as in India can ill afford such invasions. It may well be that some of the representations which are made on the carton of the Plaintiff are descriptive of the condition which the product is intended to treat. There can be no monopoly on the description of an ailment which a pharmaceutical preparation is intended to treat. The Court must, however, look at the entirety of the depiction. Doing so leads the Court prima facie to the irresistible inference that what is being done by the Defendant is to replicate the representation made by the Plaintiff. The word mark, colour scheme, layout and get up adopted by the Defendant are deceptively similar.
14.
The decision of the Supreme Court in F. Hoffimann La
Roche and Co. Ltd. vs. Geoffry Manners and Co. Pvt. Ltd.,1 lays down that both the word marks must be compared as a whole. In the present case, this exercise is prima facie indicative of the fact that there has been a passing off by the Defendant. 1 1982 PTC 335
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15.
An effort has been made on behalf of the Defendant to
demonstrate before the Court that there are other products in the market which fall in the same segment of pharmaceutical preparations designed to provide local relief from pain and inflammation. The submission was that several of those products involve similar line diagrams as those which have been adopted by the Plaintiff. Now, in view of the decision of the Supreme Court in Corn Products v. Shangrila Food Products,2 it is well settled that the existence of a mark on the register of trade marks is not indicative of the use of the mark. Before the Court can come to the conclusion that the constituent elements that are used in the mark of the Plaintiff are common to the trade, the Defendant has to discharge the burden of establishing substantive sales involving such competing products. The Supreme Court observed as follows: “...before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these 2 AIR1960 SC 142
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marks had acquired a reputation by user in the market. ... The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks.” (Paragraphs 13 and 15)
Nothing of the kind has been established before the Court by the Defendant.
16.
For all these reasons, I am of the view that a prima facie
case for the grant of interlocutory relief has been made out. The sales of the Defendant are stated to have commenced from July 2006. The suit was instituted on 2nd November 2007. There is absolutely no warrant for the Court to draw an inference that there has been any acquiescence on the part of the Plaintiff in the business of the Defendant. Such acquiescence must be of the nature that has been referred to in the judgment of the Supreme Court in Power Control Appliances vs. Sumit Machines Pvt. Ltd.3 That is not the 3 1994(1) PTC 117
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case here. On the contrary, material has been placed by the Plaintiff to establish that the Plaintiff has been vigilant in espousing its entitlement under the Trade Marks Act, 1999 to deal with infringements of its mark and attempts at passing off. Reference in that connection is made to the proceedings which have been adopted by the Plaintiff against offending manufacturers before the Delhi High Court.
17.
For all these reasons, I am of the view that the grant of
interlocutory relief is warranted. The balance of convenience is in favour of the Plaintiff which has a long prior user. The adoption of the mark by the Defendant is, for the reasons already indicated, not honest. Irreparable injury is liable to be caused to the Plaintiff if interlocutory relief were to be refused. The Notice of Motion is made absolute in terms of prayer clauses (a) to (d) [save and except for the bracketed portion of prayer clause (c )]: “a) That pending the hearing and final disposal of the suit, defendant, by themselves, their servants and agents, distributors, stockists and the like be restrained by an order
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and injunction of this Hon' ble Court from manufacturing, selling, offering for sale, advertising, marketing, exporting and/or in any manner using in relation to any medicinal or pharmaceutical preparation bearing the impugned mark/carton VONIGEL or any other deceptively similar mark/so as to infringe the Plaintiffs' registered trade mark VOLINI bearing no.609904; (b) That pending the hearing and final disposal of the suit, the defendants, by themselves, their servants and agents, partners, proprietors/licensees, distributors and stockists be restrained by an order and injunction of this Hon' ble Court from in any manner using in relation to any medicinal or pharmaceutical preparations meant for sale in India or export outside India, the impugned mark VONIGEL and/or any other mark deceptively similar to Plaintiffs registered trade mark VOLINI and copyright of artistic work associated with the Plaintiffs' product VOLINI so as to pass off or enable others to pass off the Defendants goods as and for the goods of the Plaintiffs; (c ) That pending the hearing and final disposal of the suit, the Defendants be directed by an order of this Hon'b le Court to disclose the names of the printers, stockists, exporters, dealers and distributors and all other concerned parties dealing with the impugned product VONIGEL in order to enable the Plaintiffs to proceed against the said parties (and that this Hon' ble Court be pleased to grant leave to the Plaintiffs to amend the Plaint as and when such names and addresses of the necessary parties dealing in the impugned product VONIGEL are disclosed by the Defendants herein to include the said parties as parties in the proceedings herein); (d)
That pending the hearing and final disposal of the
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suit, Court Receiver, High Court, Bombay or any other fit and proper person be appointed as Receiver with all powers under order XL Rule 1 of the Civil Procedure Code, 1908 to attend the premises of the Defendants and/or any other premises where the impugned products are stocked, lying retailing or manufactured and to make inventories of the impugned products packed or unpacked and/or in the process of manufacturing, packing, relabelling, or retailing bearing the impugned mark/carton and the defendants by themselves their servants, agents, distributors be ordered and directed to deliver up the aforesaid goods, articles and documents including invoices, registers, bills, airways bills and bills of lading and all infringing materials relating to the impugned products to the Court Receiver, High Court, Bombay or to such other fit and proper person as this Hon' ble Court may think fit.” 18.
There shall be an order on the Motion in these terms. .......