There is no   manner of doubt that the rival marks are phonetically, structurally so also visually almost identical and/or deceptively similar. The Defendant’s label/artwork/packaging/trade dress of SUPER PEPTI is a reproduction of Plaintiff’s label/artwork/packaging/trade dress of SUPER APETI.

MIPR 2018 (2) 0032 = MANU/MH/0303/2018

IN THE HIGH COURT OF BOMBAY

                                                         Shalina Laboratories Pvt. Ltd. and Anr.                                              -.

v.

Syncom Formulation (India) Ltd. and Anr.

 

NOTICE OF MOTION (L) NO. 54 OF 2018 IN COMM. IPR SUIT (L) NO. 31 OF 2018 DECIDED ON: 11.01.2018

Judge

S.J. Kathawalla, J.

Counsel

For Appellant/Petitioner/Plaintiff: Hiren Kamod, alongwith Poonam Teddu,

instructed by Mahesh Mahadgut, Advs.

 

 

Code of Civil Procedure, 1908

Order XL Rule 1

Order XXXIX Rule 3

Companies Act, 1956

Copyright Act, 1957

Trade Marks Act

Section 107

*

 

HEAD NOTE

Trade mark – Copyright – Infringement – Passing off – Strong case in favor of plaintiff therefore Interim relief  granted and HELD  There is no   manner of doubt that the rival marks are phonetically, structurally so also visually almost identical and/or deceptively similar. The Defendant’s label/artwork/packaging/trade dress of SUPER PEPTI is a reproduction of Plaintiff’s label/artwork/packaging/trade dress of SUPER APETI. Considering the fact that the Plaintiffs’ products were being manufactured in the Defendant’s factory on loan license basis during the period 1995-1998, the Defendant was certainly aware about the Plaintiff’s SUPER APETI products and goodwill and reputation attached thereto. It is therefore clear that the Defendant has deliberately and dishonestly adopted and used the impugned Trade mark/label SUPER PEPTI. In the circumstances, a strong prima facie case for the grant of ad-interim reliefs is made out. Unless reliefs as prayed for are granted, the Plaintiff is likely to suffer injury.

JUDGMENT

S.J.Kathawalla J.

 

The Plaintiffs seek to move without notice for the reasons set out in paragraph 23
of the Plaint and paragraph 5 of the Affidavit in support of Notice of Motion. This is
an action for infringement of Plaintiffs’ registered Trade mark and Copyright
combined with a cause of action for passing off.

  1. The Plaintiff No. 1 is described as a private limited company incorporated under
    the Companies Act, 1956 and carrying on business inter alia as manufacturer and
    exporter of pharmaceutical, medicinal preparations and health care products in
    The Plaintiff No. 2 is described as a Company organized and existing under
    the laws of British Virgin Islands and is carrying on business in India through its
    Licensee the Plaintiff No. 1. The Plaintiff No. 2 is the owner of various Trade marks
    and Copyrights including the Trade mark/label SUPER APETI originally belonging
    to Plaintiff No. 1. By Deed of Assignment dated 15th January, 2009, the Plaintiff No. 2
    has acquired the Trade marks and Copyrights of Plaintiff No. 1 along with the
    goodwill. The Plaintiff No. 1 is now the Licensee of various Trade marks, Copyrights
    belonging to Plaintiff No. 2 including the Trade mark/label SUPER APETI.’
  2. In the year 1994, the Plaintiff No. 1 adopted the word mark “SUPER APETI” for use
    in respect of its medicinal and pharmaceutical preparations. On 25th September, 1997,
    the Plaintiff No. 1 applied for registration of the said mark under application
    766836, which was put on the Register of Trade marks on 12th August, 2003. By
    virtue of the Deed of Assignment dated 15th January, 2009, the Plaintiff No. 2 is now
    the subsequent proprietor of Trade mark “SUPER APETI” and its name has been
    brought on record in the Register of Trade marks. Thus, Plaintiff No. 2 is the registered
    proprietor of Trade mark “SUPER APETI” in India. The said registration bearing
    No. 766836 in class 05 has a condition “registration of this Trade mark shall give no
    right to the exclusive use of the words Super”. Mr. Kamod submitted that the disclaimer

 

would not make any difference as the Plaintiff is not claiming any exclusive right in the word ‘Super’. He submitted that it is a well-settled principle that for the purpose of comparing the rival Trade marks, even the disclaimed feature has to be considered i.e. the marks have to be compared as a whole.

  1. The Plaintiffs’ product “SUPER APETI” is sold under a label/packaging/trade
    dress which is artistically designed packaging and comprises of distinctive
    colour-scheme, lay out, get up, trade dress. The front panel of carton consists of a
    light blue colour background wherein in the top portion there is a red colour device
    with the Trade mark SUPER APETI written therein in white colour. Below the Trade
    mark, the composition is shown in dark blue and green colour. In the back ground
    there are device of Milk bottle, fruits, chicken and fish spread across the breadth of
    the carton. Similar red coloured device bearing the Plaintiffs’ mark and composition
    shown in dark blue and green colour appears on the flap panels of the carton on
    both sides. Within the carton there are individual strips in silver and light blue
    combination with white coloured tablets. The said artistic work was designed under
    a contract by an employee who is named in the plaint. The Copyright in that artwork
    was registered under the Copyright Act, 1957 on 6th April, 2004 and has been assigned
    by the Plaintiff No. 1 to the Plaintiff No. 2 in 2009. Copyright Registration certificate
    is at Exhibit-G to the Plaint. This registration is valid and subsisting and. The
    Plaintiffs’ label is reproduced hereinbelow:

  1. The Plaintiffs have also secured registration of their Trade mark label SUPER
    APETI bearing No. 1208191 in class 05 as of 20th June, 2003 in respect of the
    pharmaceutical and medicinal preparations. The said registration is subject to a
    condition “registration of this Trade mark shall give no right to the exclusive use of
    the Super, the mark shall be limited to the colours as shown in the representation on
    the form of the application”. Mr. Kamod submitted that the disclaimer would not
    make any difference as the Plaintiffs are neither claiming any exclusive right in the
    word ‘SUPER’ nor claiming right in colours other than those contained in the
    Plaintiff’s Trade mark label.
  2. The Plaintiff No. 1 has been manufacturing and marketing the said product bearing
    the Trade mark “SUPER APETI” and its label/artwork/packaging/trade dress on
    an extensive scale as aforesaid since the year 1994 initially as the owner thereof and

 

presently as a Licensee under the strict supervision and quality control as directed by Plaintiff No. 2. Plaintiffs are using visual aids to promote their product “SUPER APETI” amongst doctors. A statement duly certified by Chartered Accountant showing the sales turnover and promotional expenses of the goods sold under the said Trade mark “SUPER APETI” is at Exhibit-I to the Plaint. By reason of the aforesaid facts, the Plaintiff claim that the said Trade mark “SUPER APETI” and its label/artwork/packaging/trade dress has acquired distinctiveness.

  1. The Defendant carries on a similar business of manufacturing and exporting
    pharmaceutical and medicinal preparations. Sometime in November, 2009, Plaintiffs
    came across the Defendant’s Trade mark application for registration of Trade mark
    “SUPERPEPTI” under application No. 1467465 on 6th July, 2006 filed on proposed
    to be used basis. Upon advertisement of the Defendant’s mark in the Trade marks
    Journal, the Plaintiffs filed a Notice of Opposition against it. Till date, the Plaintiffs
    have not been served with any Counter Statement from the Defendant. During the
    said time, the Plaintiffs had searched for Defendant’s product in the market but did
    not come across the same.
  2. The Plaintiff have now i.e. in December last year come across the Defendant’s
    product “SUPER PEPTI”. A Representation of the Defendant’s product pack “SUPER
    PEPTI” is at Exhibit-M to the Plaint. Mr. Kamod submitted that a bare perusal of the
    Plaintiff’s registered Trade mark label SUPER APETI and the Defendant’s Trade
    mark label SUPER PEPTI would reveal that the Defendant has copied each and every
    element of the Plaintiff’s SUPER APETI Trade mark label/artwork/packaging/trade
    dress including the layout, colour combination, placement and all distinctive
    elements and features of Plaintiffs packaging to the last millimeter. Mr. Kamod
    submitted that the Defendant has merely replaced the letters ‘APE” from the
    Plaintiff’s Trade mark to ‘PEP’ to form its impugned Trade mark. He submitted that
    such a minor alteration does not make the Defendant’s Trade mark dissimilar to the
    Plaintiff’s registered Trade mark. He submitted that the Defendant’s Trade mark
    SUPER PEPTI is phonetically, structurally so also visually almost identical with
    and/or deceptively similar to the Plaintiff’s Trade mark SUPER APETI and the use
    of the same amounts to infringement of the Plaintiff’s registered Trade mark,
    Copyright and passing off. Mr. Kamod submitted that the dishonesty of the Defendant
    is also clear from the fact that the Defendant has also affixed the symbol® besides its
    Trade mark though it is fully aware that its Trade mark has not been registered till
    He submitted that the Defendant has thus in addition to committing the offence
    of infringement of Trade mark also committed the offence punishable under
    Section 107 of the Trade marks Act.
  3. Kamod submitted that the Plaintiffs are no stranger to the Defendant and their
    products including the SUPER APETI products are fully known to the Defendant.
    Between the years 1995 to 1998, the Plaintiffs were getting the very product SUPER
    APETI manufactured from the Defendant in the Defendant’s factory on loan license
    basis. He submitted that the Defendant has therefore been fully aware of the Plaintiffs
    Trade mark and also label/packaging/trade dress of SUPER APETI at least
    since 1995. Copies of Loan License obtained by the Plaintiff for manufacture of their
    various products including SUPER APETI product at the factory of Defendant are at
    Exhibit L-l and L-2 to the Plaint. Copies of invoices of the year 1997 and 1998 for
    removal of Plaintiff’s SUPER APETI products from Defendant’s factory are at Exhibit
    L-3 and L-4 to the Plaint.

 

  1. Kamod submitted that in such circumstances it is absolutely just and
    necessary that an ex-parte ad-interim order be passed restraining the Defendant
    from committing infringement of the Plaintiff’s registered Trade mark, Copyright
    and passing off. Mr. Kamod submitted that considering the dishonest conduct of the
    Defendant, the Plaintiffs apprehend that if the Defendant is given notice of the
    present application, there is a strong likelihood that the Defendant would remove
    the impugned goods from its possession, custody and/or control and sell or part
    with possession thereof or dump their goods in the market and the purpose of
    making the present application will be defeated. He submitted that considering the
    nature of goods involved in the present case viz. medicinal and pharmaceutical
    preparations, it is in the interest of general public alongvvith the Plaintiffs that the
    ad-interim reliefs as prayed be granted without notice to the Defendants.
  2. I have heard the submissions in detail and perused the record. Primn facie, the
    Trade mark/label SUPER PEPTI of the Defendant is almost identical with the
    Plaintiff’s registered Trade mark/label SUPER APETI. A comparison of the rival
    products hardly leaves any doubt about the manner in which Defendant has
    blatantly copied the Plaintiffs’ Trade mark label. Photographs of the rival products
    are reproduced below.

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I am of the opinion that one cannot be distinguished from the other. There is no   manner of doubt that the rival marks are phonetically, structurally so also visually almost identical and/or deceptively similar. The Defendant’s label/artwork/packaging/trade dress of SUPER PEPTI is a reproduction of Plaintiff’s label/artwork/packaging/trade dress of SUPER APETI. Considering the fact that the Plaintiffs’ products were being manufactured in the Defendant’s factory on loan license basis during the period 1995-1998, the Defendant was certainly aware about the Plaintiff’s SUPER APETI products and goodwill and reputation attached thereto. It is therefore clear that the Defendant has deliberately and dishonestly adopted and used the impugned Trade mark/label SUPER PEPTI. In the circumstances, a strong prima facie case for the grant of ad-interim reliefs is made out. Unless reliefs as prayed for are granted, the Plaintiff is likely to suffer injury.

  1. In view of what is stated in paragraph 23 of the Plaint; paragraph 5 of the Affidavit in support of the above Notice of Motion and in view of the above, I am satisfied that the object of granting the following reliefs would be defeated if notice of this application is given to the Defendant. There shall accordingly be an ad-interim order in terms of prayer Clauses (a) and (e) of the Notice of Motion, which read as follows:
  • that pending the hearing and final disposal of the suit the Defendants by
    themselves, their servants, agents, directors, sister concerns, subsidiaries,
    dealers, distributors, stockists, franchisees, representatives, and/or successors
    in title, affiliates and/or assigns and all persons acting for and on their behalf
    be restrained by a temporary order and injunction of this Hon’ble Court from
    manufacturing, selling, offering for sale, exporting, advertising, marketing
    and/or in any manner dealing in relation to any pharmaceutical and/or
    medicinal preparation and/or such allied and cognate goods bearing the
    impugned Trade mark “SUPER PEPTI” or any other deceptively similar Trade
    mark as that of Plaintiff No. 2’s Trade mark “SUPER APETI” so as to infringe
    the Plaintiff No. 2’s registered Trade mark “SUPER APETI” bearing No. 766836
    dated 25th September, 1997 and registered Label mark bearing No. 1208191
    dated 20th June, 2003 or otherwise howsoever;
  • That pending the hearing and final disposal of the suit the Defendants by
    themselves, their servants, agents, directors, sister concerns, subsidiaries,
    dealers, distributors, stockists, franchisees, representatives, and/or successors
    in title, affiliates and/or assigns and all persons acting for and on their behalf
    be restrained by a temporary order and injunction of this Hon’ble Court from
    manufacturing, selling, offering for sale, exporting, advertising, marketing
    and/or in any manner using directly or indirectly in relation to any
    pharmaceutical and/or medicinal preparation and/or such allied and cognate
    goods the impugned label/carton/packaging/trade dress for the product
    “SUPER PEPTI” being Exhibit “M” to the Plaint or any other deceptively similar
    label/Packaging/carton/trade dress   to   that   of   Plaintiff      2’s
    label/packaging/carton/trade dress being Exhibit “F” to the Plaint or which
    is reproduction and/or substantial reproduction of Plaintiffs artistic packaging
    for its product “SUPER APETI” so as to infringe the Plaintiff No. 2’s Copyright
    in the original artistic work contained in the said packaging shown at Exhibit
    “G”   to   the   Plaint  and   registered   under   No.   A-64996/2003   dated
    19″‘ August, 2003 by reproducing the same in any material form or using the
    same or any colourable imitation thereof or otherwise howsoever;

 

  • That pending the hearing and final disposal of the suit the Defendants by
    themselves, their servants, agents, directors, sister concerns, subsidiaries,
    dealers, distributors, stockists, franchisees, representatives, and/or successors
    in title, affiliates and/or assigns and all persons acting for and on their behalf
    be restrained by a temporary order and injunction of this Hon’ble Court from
    manufacturing, selling, offering for sale, exporting, advertising, marketing
    and/or in any manner dealing in relation to any pharmaceutical and/or
    medicinal preparation and/or such allied and cognate goods bearing the
    impugned Trade    mark    “SUPER    PEPTI”    and    its    label    Trade
    mark/packaging/artwork/trade dress or any other deceptively similar Trade
    mark and similar packaging/artwork/trade dress as that of Plaintiff No. 2’s
    Trade mark/packaging/artwork/trade dress “SUPER APETI” so as to pass
    off the Defendants goods as and for those of the Plaintiffs;
  • That pending the hearing and final disposal of the Suit, the Court Receiver,
    High Court, Bombay or such other fit and proper person as this Hon’ble Court
    thinks fit be appointed Receiver with all powers under Order XL Rule 1 of the
    Code of Civil Procedure, 1908 in order to attend at and /or enter either by force
    or by breaking open the lock or by removing the obstruction or barrier or
    otherwise into the Defendants premises including godown, warehouse, factory
    premises of the Defendants where the goods bearing the impugned Trade mark
    “SUPER PEPTI” with or without the impugned packaging being Exhibit “M”
    to the Plaint or any other goods bearing the impugned packaging being Exhibit
    “M” to the Plaint with or without impugned mark “SUPER PEPTI” are stocked,
    lying, retailing or manufactured without notice to the Defendants with the
    help of Plaintiffs representatives and Police, if necessary, and to make inventory
    and to take possession, custody and control of all the impugned products,
    packed or unpacked and/or in the process of manufacturing, packing, labeling,
    re-labeling or retailing and the Defendants by itself, its servants, agents and
    distributors be ordered and directed to deliver up the aforesaid goods, articles
    and documents including invoices, sales and excise registers bills, airway
    bills, and all materials relating to the goods bearing the impugned Mark “SUPER
    PEPTI” to the Court Receiver, High Court, Bombay with all powers under
    Order XL of the Code of Civil Procedure, 1908 including power to take physical
    possession thereof with Police protection.
  • That pending the hearing and final disposal of the suit, the Respondents be
    restrained by an order and injunction of this Hon’ble Court from permitting
    export of the medicinal and/or pharmaceutical preparations bearing the mark
    “SUPER PEPTI” and/or bearing the artwork of “SUPER PEPTI” as shown at
    Exhibit “M” to the Plaint.

 

  1. The Court Receiver, High Court Bombay shall keep the impugned goods under
    his seal in the safe custody of the Defendant. He is authorized to take the assistance
    of the local Police Authorities. The Police Authorities concerned are directed to
    render all possible assistance to the Court Receiver on production of an authenticated
    copy of this order. The Court Receiver is directed to submit a report to this Court on
    the next day of hearing i.e. 22nd January, 2018.
  2. This order is not to be uploaded until the Court Receiver executes his Commission.

 

  1. The Plaintiff is to comply with the provisions of Order XXXIX Rule 3 of the Code
    of Civil Procedure, 1908 within four working days of the Court Receiver executing
    this Commission.
  2. The order of injunction is to continue till 24th January, 2018. List the matter on
    22nd January, 2018 for further ad-interim reliefs.
  3. Liberty to the Defendant to apply for variation of this order with 24 hours prior
    written notice to the Plaintiff and/or its Advocates.
  4. All parties including the Court Receiver are directed to act on an ordinary copy
    of this order, duly authenticated by the Associate of this Court/Personal Assistant.

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