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1996 DIGILAW 414 (DEL)

Hoechst AG v. Unisule (P) Ltd.

1996-05-01

LOKESHWAR PRASAD

body1996
JUDGMENT : Lokeshwar Prasad, J. (1) The plaintiffs, named above, have filed the present suit for permanent injunction, restraining infringement of trade mark, copy right passing off, delivery of infringed goods and damages etc. against the defendant. The case of the plaintiffs, in brief, is that plaintiff No.1 and 2 are Joint Stock Companies, organized and existing according to the laws of Germany, carrying on business inter- alias as manufacturers of pharmaceutical and medicinal preparations. plaintiff No.3 is a Company, incorporated in India under the Companies Act, 1956 carrying on inter-alia the business as manufacturers of pharmaceutical and medicinal preparations. The defendant is a firm too carrying on inter- alias the business as manufacturers of pharmaceutical and medicinal preparations. It is alleged that plaintiff No. 1 on 9.1.1961 applied for and obtained registration of the mark "BARALGAN" (word per se) under No. 200032 in respect of pharmaceutical products falling in Class 5 of the Fourth Schedule to the Trade and Merchandise Marks Rules, 1959. The registration of the said mark is valid and subsisting. It is further alleged that on 4th July, 1989 plaintiff No.2 applied for the registration of trade mark comprising the words Cassella-Med & Device of Two Bands (hereinafter referred to as the said devise) under No. 512886 and the said application is still pending for registration. It is alleged that plaintiff No.1 and 2 have allowed plaintiff No.3 to use the above referred trade marks in respect of the goods manufactured by plaintiff No.3 in India under strict supervision and control and according to the standards and specifications prescribed in that behalf by plaintiff No. 1 and 2 respectively. Thus, plaintiff No.3 is a Registered User of the said Trade Mark "BARALGAN' and a licensed User of the said device. (2) It is alleged that plaintiff No.3 has been manufacturing and selling the said product 'BARALGAN' since 1967 in India in strips and carton, having a distinctive colour scheme a get up which is also an original artistic work within the meaning of Section 2(c) of the Copyright Act, 1957. The plaintiffs are Therefore the only persons entitled to reproduce the same. The plaintiffs are Therefore the only persons entitled to reproduce the same. (3) It is averred that plaintiff No.3 has spent considerable amount by way of promotional expenditure for popularising the said trade marks and by reason of extensive publicity and use of the said trade mark carried out as aforesaid the trade marks have come to be associated by the traders and the members of the public exclusively with the plaintiffs. It is Therefore, the case of the plaintiffs that by reason of the aforesaid registration the plaintiffs alone are entitled to use the said trade marks in India. (4) It is further alleged that in or about 2nd week of June, 1995, the plaintiffs came across defendants products, bearing the mark " Baralgan " sold in strips identical and/or deceptively similar to the plaintiffs product, tearing the trade mark Baralgan and the Use of the Trade Mark "BARA:LGAN" impugned strips in respect of medicinal and pharmaceutical preparations manufactured by the defendant is dishonest. (5) By using the impugned trade mark 'BARAGAN' and the said device, the defendants have infringed the said registered trade marks 'BARALGAN' strip and have passed off their goods as and for the goods of the plaintiffs enabling the others to do so. It is alleged that the defendant is also guilty of infringing the copyright as claimed by the plaintiffs as the defendant has copied the strip in material form. The plaintiffs have alleged that by using the impugned marks the defendant has infringed and/or are continuing to infringe the said registered trade mark "BARALGAN' and that by reasons of extensive user of the impugned mark, the impugned strips and carton, the defendants have passed off and are trying to pass off and /or are enabling others to pass off the defendants goods as for the goods of the plaintiffs or in some way connected with the plaintiffs. It is alleged that the impugned strip, bearing the mark "BARAGAN" is almost identical and/or deceptively similar to the strip used by the plaintiffs for their product "BARALGAN" and that the defendant deliberately adopted and used the mark "BARAGAN" and the impugned strips with a view to trade upon the reputation acquired by the plaintiffs in their mark "BARALGAN". It is alleged that the impugned strip, bearing the mark "BARAGAN" is almost identical and/or deceptively similar to the strip used by the plaintiffs for their product "BARALGAN" and that the defendant deliberately adopted and used the mark "BARAGAN" and the impugned strips with a view to trade upon the reputation acquired by the plaintiffs in their mark "BARALGAN". The plaintiffs have prayed that a decree may be passed in their favor and against the defendant restraining the defendant its servants, agents by a perpetual order and injunction from manufacturing selling, marketing, and/or in any manner using in relation to medicinal and pharmaceutical preparations the impugned mark "BARAGAN" or any other deceptively similar mark so as to infringe the registered trade mark of plaintiff No.1 Baralgan, bearing No. 200032 and plaintiff No.2's trade mark, bearing No. 512886,when registered. It has also been prayed that the defendant its servants agents be also restrained by a perpetual order and injunction from manufacturing, selling, marketing and/or in any manner using in relation to medicinal and pharmaceutical preparations the impugned strip bearing the mark 'BARAGAN' which amounts to infringement of the copyrights of the plaintiffs or any other strip which is deceptively similar and reproduction of the plaintiffs strip in any manner. The plaintiffs have also prayed that the defendant its servants and agents be also restrained by a perpetual order and injunction from manufacturing selling, marketing and/or in any manner using in relation to medicinal and pharmaceutical preparations the impugned mark "BARALGAN" and the impugned strip bearing the mark "BARALGAN" or any other deceptively similar Trade Marks so as to pass off or enabling others to pass off the defendant's goods as and for the goods of the plaintiffs or in some way connected with .the plaintiffs. It is further grayed that defendants be ordered and decreed to deliver upon affidavit to the plaintiffs for destruction all goods, articles, dies, papers and things bearing the impugned mark and the impugned strip. The plaintiffs have also claimed damages to the extent of Rs. five lakhs from the defendant suffered by the plaintiffs on account of illegal activities of the defendant. The plaintiffs have also prayed for costs being awarded in their favor against the defendant (6) The learned predecessor of this court vide order dated 28.6.1995 passed on LA.No. 6849/95 appointed Ms. The plaintiffs have also claimed damages to the extent of Rs. five lakhs from the defendant suffered by the plaintiffs on account of illegal activities of the defendant. The plaintiffs have also prayed for costs being awarded in their favor against the defendant (6) The learned predecessor of this court vide order dated 28.6.1995 passed on LA.No. 6849/95 appointed Ms. Anuradha Mahajan, advocate as a Court Commissioner with the directions to visit the premises of the defendant or any other place where the infringing goods medicinal and pharmaceutical preparations, bearing the trade mark 'BARAGAN' may be lying finished or in an unfinished condition and prepare an inventory of the said goods and seize the samples of all the infringing goods found at the aforesaid premises and to sign such books of account and stock registers of the defendant as may relate to the infringing goods. (7) The Court Commissioner in compliance of the above directions visited the premises of the defendant on 31st May, 1995 and thereafter submitted report dated 5th July, 1995. In the above said report of the Court Commissioner it is inter alias stated that in the premises one Imt Corton of Baralgan medicinal tablet was found by the Court Commissioner during the visit. The Court Commissioner wanted to sign the books of accounts and stock registers of the defendant firm which were not made available and were not shown to the Court Commissioner. (8) As the defendant did not care to appear despite service the suit was directed to proceed ex parte against the defendant vide order dated 12th February, 1996 and the plaintiff was directed to file evidence by way of affidavits. (9) The plaintiffs, in support of their case have adduced the evidence of Sh. Krishnaswamy Subramani and Sh. K.V. Raghwan by means of filing affidavits duly signed and sworn by the above mentioned persons. Both the above named persons have supported the case of the plaintiff in toto. Their evidence has gone on record unrebutted and unchallenged. (10) On a consideration of the pleadings ,as contained in the plaint, and the evidence adduced by Sh. Krishnaswamy Subramani the constituted attorney of plaintiff No.1 and 2 and Sh. Both the above named persons have supported the case of the plaintiff in toto. Their evidence has gone on record unrebutted and unchallenged. (10) On a consideration of the pleadings ,as contained in the plaint, and the evidence adduced by Sh. Krishnaswamy Subramani the constituted attorney of plaintiff No.1 and 2 and Sh. K.V. Raghvan the constituted attorney of plaintiff No.3, by means of affidavits and the other material on record, this Court is satisfied that plaintiff No.1 and 2 are the registered owners of the trade marks and the device and they have allowed plaintiff No.3 to use the above said trade marks and the said device in respect of goods manufactured by plaintiff No.3 in India and thus plaintiff No.3 is a Registered User of the trade mark "BARALGAN" and a Licensed User of the said device. It is also established that plaintiff No.3 has been manufacturing and selling the said product "BARALGAN" since 1967 in strips and carton, having a distinctive colour scheme and get up and that the plaintiffs are only entitled to reproduce the same. It is further established that by reasons of extensive use of said mark in India and also by reasons of extensive publicity carried out by the plaintiffs, the trade marks have come to be associated by the traders and members of the public exclusively with the plaintiffs. On the basis of the material on record it is also established that the defendant has adopted and used the mark "BARALGAN" in respect of identical goods and that the impugned mark and the impugned strip of the defendant is almost identical and/or deceptively similar to the trade mark of the plaintiffs and that by using the impugned mark the defendant has infringed and/or is continuing to infringe the said registered trade mark "BARALGAN" and by using the impugned mark "BARAGAN" and the impugned strips, the carton the defendant has passed on and is trying to pass off and/or is enabling others to pass off the goods of the defendant as for the goods of the plaintiffs or in some way connected with the plaintiffs thereby making huge profits and causing damages to the tune of Rs. five lakhs. five lakhs. (11) In view of the above discussion, the suit of the plaintiffs is decreed and a decree is passed in favor of the plaintiffs and against the defendant restraining the defendant, its servants and agents from manufacturing, selling, marketing and/or in any manner using in relation to medicinal and pharmaceutical preparations, the impugned mark " BARALGAN" or any other deceptively similar mark so as to infringe the registered trade mark of plaintiff No.1 " BARALGAN" bearing No. 200032 and plaintiff No.2's trade mark bearing No. 512886, when registered; the impugned strip bearing mark "BARALGAN" which amounts to infringement of the copyrights of the plaintiffs or any other strip which is deceptively similar and reproduction of the plaintiffs strips in any manner ; or any other deceptively similar trade marks so as to pass off or enabling others to pass off the defendant's goods as and for the goods of the plaintiffs or in some way connected with the plaintiffs. The defendants are further ordered to deliver upon affidavit to the plaintiffs for destruction all goods, articles, dies, papers and things bearing the impugned mark and the impugned strip. A decree for damages of Rs. five lakhs, suffered by the plaintiff on account of the illegal activities of the defendant is also passed in favor of the plaintiffs and against the defendants. The plaintiffs are also awarded the Costs of the suit against the defendants. Decree sheet be drawn up accordingly and thereafter the file be consigned to record room.