Interim injunction . Civil Procedure Code, 1908 Order 39 Rule 1, 2 . Appeal against  the order of refusing injunction .  No interim injunction against the Respondents .Appeal is dismissed.

2018  (74) PTC  150 (HIGH COURT OF BOMBAY)

 

IN THE  HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION

APPEAL NO. 428  OF 2006                                                                                        IN                  NOTICE OF MOTION NO. 263 OF 2005                                IN                           SUIT NO. 288 OF 2005

Franco-Indian Pharmaceuticals Pvt. Ltd.    A company incorporated under the    Companies Act, 1956 and having its                                                   registered office at 20, Dr. E. Moses    Road, Mumbai 400 011           ig                  …     Appellant                                                       (Original Plaintiff)          vs

1     Lupin Ltd.,          a company incorporated under the          Companies Act, 1956 and having its          place of business at 159, C.S.T. Road,                      Kalina, Santacruz (East),          Mumbai 400 098.

2     Smilax Pharmaceuticals,          a concern having its place of               business at 11 Km Stone, Tonk Road,          Sanganer, Jaipur – 302 011                   ….    Respondents                                                       (Orig. Defendants)

 

Mr.   Hiren   Kamod   with   Mr.   Mahesh   A.   Mahadgut   and   Ms.   Poonam          Teddu i/b y V.S. Hegde & Mahesh A. Mahadgut  for the  Appellant.      Mr. Rashmin Khandekar with Mr. Minesh Andharia and Mr. Jay Shah     i/by M/s. Shantilal & Co.  for the Respondents.

Interim injunction . Civil Procedure Code, 1908 Order 39 Rule 1, 2 . Appeal against  the order of refusing injunction .  No interim injunction against the Respondents .Appeal is dismissed. Copyright Act, 1957 .

 [Para 12] ANOOP V. MOHTA AND P. R. BORA,  JJ.

CLOSED FOR JUDGMENT: 19 January, 2017 PRONOUNCED ON : 10 February, 2017 dgm 2 app-428-2006-judgment.sxw JUDGMENT (Per Anoop V. Mohta, J.):-

Heard finally, by consent of the parties.

2 The Appellant-Original Plaintiff has filed the present Appeal whereby, the challenging is made to impugned order dated 16 March 2006, passed by the learned Single Judge in Notice of Motion thereby, refused to grant interim reliefs in favour of the Plaintiffs.

3 The basic events, as relevant, are required to be noted as under:-

The Appellant is a company registered under the Companies Act, 1956 carrying on business of manufacturing and sale of medicinal and pharmaceutical preparations in Mumbai.

Respondent Nos.1 and 2 are carrying on business of manufacture and sale of pharmaceutical and medicinal preparations.

4 The Appellant is the established manufacturer and dealer of a wide range of specialty products in the pharmaceutical field. The said products have been marketed under the various distinctive Trade dgm 3 app-428-2006-judgment.sxw Marks and cartons/labels/packing. The products of Appellant are sold predominantly throughout India and also in export markets abroad.

The Appellant has been manufacturing and marketing since the year 1971, a pharmaceutical preparation sold in the form of syrup in 200 ml bottles being Hematinic Syrup containing essentially Vitamin B12, Iron and Frolic Acid under registered Trade Mark “DEXORANGE”

bearing No. 269335 as of 11.01.1971 in respect of Pharmaceutical preparations containing orange flavour being goods falling in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002, framed under The Trade Marks Act, 1999. The said medicinal preparation sold under the Trade Mark DEXORANGE is not a scheduled drug and is sold and readily available across the counter and is prescribed in cases of iron deficiency, anemia’s due to chronic blood loss, hook-worm infestation, anemia of pregnancy, lack of appetite etc. The said product is also sold by the Appellant in the form of capsules in bottle packing under the identical carton/label as that of the syrup and is also available as DEXORANGE PLUS.

5 The Appellant is the owner of the copyright subsisting in the artistic work as aforesaid and the same constitutes original artistic dgm 4 app-428-2006-judgment.sxw work under Section 2 (c) of the Copyright Act, 1957. The Copyright of the Appellant is further recognised and registered by the Registrar of Copyright vide Copyright Registration Certificate Nos.A-10551/74 dated 22.01.1974. A-12173/74 dated 06.12.1974 and No. A-

54672/98 dated 20/03/1998 under the Copyright Act, 1957 for the said artistic work and modifications thereof. The Appellant therefore, has exclusive right to use and reproduce the said artistic work wholly or substantially in any material form including its colour combination, get up, layout and arrangement of features. The said copyright Registrations are valid and subsisting.

6 The Appellant states that sometime in February, 2004 the Appellant came across an identical medicinal preparation in the form of syrup of the Respondents sold under the impugned Mark HEPPORANGE / HEPPORANGE PLUS. The said medicinal preparation was sold by the Respondents in an identical packaging as that of the Appellant. On an examination of the Respondents’ packaging, Appellant was astonished to learn that the Respondents had reproduced an identical packaging as that of the Appellant produce DEXORANGE in its entirety. A perusal of the product of the dgm 5 app-428-2006-judgment.sxw Appellant and that of the Respondents which are filed in the present proceedings clearly show that the Respondents have slavishly reproduced the packaging getup of the Appellant. The Respondents have copied every essential feature of the Appellant packaging for its medicinal preparation DEXORANGE including the identical colour scheme, layout, letter style, get-up dimension of the packaging so also the label as is evident from the pack of said product. No doubt, the Mark HEPPORANGE / HEPPORANGE PLUS is phonetically, structurally and visually identical with and/or deceptively similar to the Appellant reputed, well-known and registered trade Mark DEXORANGE / DEXORANGE PLUS. Further, the packaging used by the Respondents is nothing but a slavish copy of the Appellants artistic work. It is significant to note that the rival Marks have been used in respect of similar pharmaceutical preparation which is practice, are often sold over-the-counter without doctors prescriptions. Further there is no distinction between the packaging used by the Respondents for the impugned product HEPPORANGE/HEPORANGE PLUS from that of the Appellant reputed and established product DEXORANGE.

7              Correspondence   ensued   between   the   Appellant   and                 dgm                                 6                    app-428-2006-judgment.sxw

Respondents which is at Exhibit J to N and P to Q of the plaint. The Respondents continue to use the impugned mark HEPPORANGE / HEPPORANGE PLUS and the impugned carton at Exhibit I and O to the plaint. On 24 January, 2005, the Appellant has filed the present Suit.

8 On 16 March, 2006, the Respondents came before the Court and agreed to use their mark as HEPP-ORANGE and not HEPPORANGE henceforth. The change being inconsequential, Appellant argued the matter. Impugned order was passed on 16 March 2006, by the learned Single Judge, refusing interim reliefs in terms of prayers (a) and (c) of the Notice of Motion. Hence, the present Appeal.

9 The learned Single Judge, has recorded while rejecting the injunction as under:-

“It is clear that the Plaintiffs and the defendants are using the word “ORANGE” because their preparations have orange flavour and the defendants are using the word “HEPP” because it is their registered trademark, and in order to avoid any possibility of confusion, the defendants are also using a dash or hyphen between the two words “HEPP” and “ORANGE”. In my opinion, precaution taken by the defendants is enough to avoid dgm 7 app-428-2006-judgment.sxw possibility of confusion in the mind of purchaser. In this view of the matter therefore, in my opinion, it will not be appropriate to restrain the defendants by an order of temporary injunction from using the trade mark “HEPP- ORANGE”. Notice of Motion is therefore disposed off.”

10 The Appellant has placed on record the Judgments in support of the contention of the principles so required for grant of injunction and/or restrainment order, so prayed. The Respondents conceded the position, so far as the law is concerned.

11 A Division Bench of this Court, in an Appeal against the impugned order, not granted any interim relief while admitting on 25 July 2006 and accordingly no order passed in Notice of Motion. The Appellant, not agitated the issue of no injunction, further. Therefore, there has been no interim injunction operating against the Respondents till this date, though Suit is filed in the year 2005.

12 The Appeal is now called out from the final hearing board after more than 10 years. The aspect of no interim injunction against the Respondents, in such trademark matters, definitely goes against the Appellant when, the Appellate Court required to consider the basic principles of grant of injunction or interim protection, including delay, dgm 8 app-428-2006-judgment.sxw acquiescence, balance of convenience, irreparable injury and/or hardship and the ultimate right of claiming damages, if claim/case is made out in the Suit. All these elements, in our view, are missing to pass reversal order dated 16 March 2006, in the Appeal against the order of refusing injunction by recording the specific reasons, so reproduced above. This is also in the background that, as the learned Single Judge has recorded that the Defendants have taken enough steps to avoid possibility of confusion in the mind of the purchaser, thereby permitted the Defendants to use the trademark “HEPP-

ORANGE”. The Defendants, as stated, have been using the same uninterruptedly till this date. The submissions, are made by the learned counsel appearing for the Appellant, based upon the basic principles of order 39 Rule 1 of the Code of Civil Procedure, 1908, in such intellectual property law matters.

13 The judgments so cited, in any way, are different on the facts and circumstances, so far as the law and the principles are concerned and there is no serious issue, as conceded by the learned counsel appearing for the Respondents, by placing on record the Judgments. In our view also, the law so settled in this regard for dgm 9 app-428-2006-judgment.sxw grant of injunction and/or infringement and/or passing off, need no further discussion specifically, in view of the above facts and circumstances of the present case. Those principles required to be used and utilized by keeping in mind the factual background and the material so placed on record by the parties. The prayers so made by the Appellant at the time of filing of the Suit, based upon then existing position of the mark so challenged, as recorded by the learned Single Judge in the impugned order, the said position remained intact till this date. The Respondents, as recorded, have been using the trademark “HEPP-ORANGE” since then. Therefore, there is no case of confusion in the mind of the purchaser. The Appellant, as recorded, even not taken steps to restrain the Respondents till this date. Therefore, ultimately if the case is made out, the Appellant is definitely entitled to the damages. The Appellant/Plaintiff needs to consider the averments and the prayers in view of amendment to the Trade Mark, as recorded by the learned Single Judge.

14 The question of injunction and/or interim protection, has not granted by the Trial Court, as well as, by the Appellate Court while admitting the matter and specifically rejected the Notice of Motion fordgm 10 app-428-2006-judgment.sxw the same. We see no reason and/or case is made out now, by the Appellant to grant such interim reliefs or protection after more than 11 years. However, considering the scope and purpose of intellectual property laws and as urgent reliefs and protection is required to protect the rights of the parties, but as noted, no such interim protection is granted in a Suit which is pending since 2005, we are of the view that no case is made out by the Appellant to interfere with the order so passed by the learned Single Judge. However, we are inclined to expedite the Suit for the above reasons itself. We are also inclined to keep all points open for the Appellant to re-agitate, including the issue of infringement and/or passing off action, if any, as no reliefs can be granted now to the Appellant after 11 years, even on these issues.

15              Therefore, we pass the following order:-                                               ORDER                a)   The Appeal is dismissed.

  1. b) All the contentions are expressly kept open.
  2. c) Suit is expedited.
  3. d) No costs.

(P. R. BORA, J.)                          (ANOOP V. MOHTA, J.)

 

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