Trade Marks Act, 1999 Section 29 Trademark `BRAVIA’   Adoption of mark Phonetically similar Trademark `FRAVIA’   by the defendants is deceptively and phonetically similar to the plaintiffs registered trademark `BRAVIA’ Plaintiff has been continuously using the mark `BRAVIA’.  Trade mark BRAVIA and FRAVIA are phonetically and  similar Letters `b’ and `f’ are written in running cursive writing, which is how prescriptions are usually written Marks are not just deceptively similar but are in fact identical.

 

Trade Marks Act, 1999 Section 29 Trademark `BRAVIA’   Adoption of mark Phonetically similar Trademark `FRAVIA’   by the defendants is deceptively and phonetically similar to the plaintiffs registered trademark `BRAVIA’ Plaintiff has been continuously using the mark `BRAVIA’.

 Trade mark BRAVIA and FRAVIA are phonetically and  similar Letters `b’ and `f’ are written in running cursive writing, which is how prescriptions are usually written Marks are not just deceptively similar but are in fact identical. They are used for the same class of products Confusion is inevitable.

[Para 8]

Trade Marks Act, 1999 Section 29 Adoption of mark Prior user Nonappearance Adoption Dishonest Plaintiffs mark BRAVIA is in continuous use since 2008 Products have substantial sale Defendants have started using FRAVIA after complete knowledge of the Plaintiffs mark Adoption of the mark FRAVIA is not innocent Defendants have not led evidence in the matter Held, Adoption of the mark `FRAVIA’ was dishonest Defendants have suddenly stopped appearing in the matter Plaintiff is entitled to actual costs in the suit

Therefore Drug approval in the name of Finex Healthcare Pvt Ltd and Elfin Drug Pvt Ltd for the mark `FRAVIA’, is cancelled DCGI and the Controller General of Trade Marks is also directed to file an affidavit regarding steps taken in compliance with the directions.

2018  (76) PTC  108 (DELHI)

IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision:2nd August, 2018
+ CS(COMM) 999/2016
GRANDCURE HEALTHCARE PVT LTD ….. Plaintiff
Through: Mr. Deepak Kumar Mahapatra,
Advocate (M-9212406100).

versus

M/S FINEX HEALTHCARE PVT LTD AND ANR ….. Defendants
Through: None.

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

1. The present suit for infringement of trademark has been filed by the Plaintiff in respect of the trademark ‘BRAVIA‟ for pharmaceutical preparations. The Plaintiff claims to be the registered proprietor of the trademark ‘BRAVIA‟ under Class 5 for pharmaceutical and medicinal preparations. The Plaintiff has launched various products and series of medicines bearing the trademark ‘BRAVIA‟ in various dosages and forms as mentioned in para 3(i) of the plaint. The certificate of registration for the mark BRAVIA in class 5, bearing no.1548232 has been placed on record and exhibited as Ex.PW-1/6. The Plaintiff has also placed on record the original cartons of the products sold by it under various derivatives of the trademark ‘BRAVIA‟, namely, BRAVIA-DSR, BRAVIA-20, BRAVIA-IT, BRAVIA-D. The Plaintiff has further placed on record various sales invoices and promotional material showing use of the mark ‘BRAVIA‟. As per the evidence led by the Plaintiff, the total sales of the Plaintiff from 2008 till 2014 have been approximately Rs.15 crores.

2. The Defendants adopted the trademark ‘FRAVIA‟ in respect of medicinal and pharmaceutical preparations. The present suit was filed in March, 2014 and this court granted an ad-interim injunction in the following terms:

“It is submitted that the plaintiff is engaged in manufacturing, marketing and selling pharmaceutical products under the registered trade mark ‘BRAVIA’. Plaintiff‟s trade mark ‘BRAVIA’ has attained huge reputation in the market, inasmuch as, sales of ‘BRAVIA-20’ during the year 2013 was more than Rs.40 lacs. It is contended that defendants, in order to encash goodwill and reputation of the plaintiff, has adopted deceptively similar trade mark ‘FRAVIA’ with respect to its pharmaceutical preparations. I have perused the plaint and the documents annexed therewith and I am of the, prima facie, view that the mark ‘FRAVIA’ is deceptively similar to the plaintiff‟s trade mark ‘BRAVIA’ and in case defendants are not restrained from using trade mark ‘FRAVIA’ plaintiff shall suffer irreparable loss and injury. Accordingly, till further orders, defendants are restrained from using the trade mark ‘FRAVIA’ or any other deceptively similar trade mark as that of plaintiffs ‘BRAVIA’.
Compliance of Order 39 Rule 3 CPC be made within a week.”
3. On 27th July, 2016, the interim order was made absolute and the following issues were framed in the suit:

“(1) Whether the plaintiff is the registered proprietor of the trade mark ‘BRAVIA’? (OPP) (2) Whether the plaintiff is a prior user of the trade mark ‘BRAVIA’? (OPP) (3) Whether the trademark ‘FRAVIA’ used by the defendants is deceptively and phonetically similar to the plaintiffs registered trademark ‘BRAVIA’? (OPP) (4) Whether adoption of the trademark ‘FRAVIA’ by the defendant is dishonest ? (OPP) (5) Whether use of the trademark ‘FRAVIA’ by the Defendant is an infringement of the plaintiff‟s registered trademark ‘BRAVIA’? (OPP) (6) Whether the plaintiff is entitled to the relief of injunction, restraining infringement of the trademark in terms of the prayer (a) of the plaint? (OPP) (7) Whether the plaintiff is entitled to the rendition of accounts in terms of prayer (c) of the plaint? (OPP) (8) Whether the plaintiff is entitled to the destruction of goods in terms of prayer (b) of the plaint? (OPP) (9) Whether the plaintiff is entitled to the punitive damages in terms of prayer (d) of the plaint? (OPP) (10) Whether the plaintiff is entitled to costs? (OPP) (11) Relief.”
4. Thereafter, settlement negotiations were going on between the parties however since there was no settlement, the Plaintiff led the evidence of PW- 1- Sh. Vikas Saxena, Zonal Manager and authorized signatory. The said witness PW-1 has exhibited the following documents:

 Ex.PW-1/1 – Board Resolution nominating him as the authorised representative of the Plaintiff Company;  Ex.PW-1/2 – Memorandum and Articles of Association of Grandcure Healthcare Pvt. Ltd;
 Ex.PW-1/6 – Trade mark registration certificate for „BRAVIA‟;  Ex.PW-1/10 (colly) – Copies of advertisement of drugs „BRAVIA‟ of the Plaintiff published in Drug Today;
 Ex.PW-1/11 to PW-1/54 – Invoices of the Plaintiff Company  Ex.PW-1/55 – Email by Mr. Ravi Shankar, resigning from the Plaintiff Company;
 Ex.PW-1/56, PW-1/57 & PW-1/58- Trade mark applications of the Defendants;
 Ex.PW-1/59 – Packaging of „BRAVIA DSR‟;  Ex.PW-1/60 – Packaging of „BRAVIA-20‟;  Ex.PW-1/61 – Packaging of „BRAVIA – IT‟;  Ex.PW-1/62 – Packaging of „BRAVIA – D‟;  Ex.PW-1/63 – Strip of „BRAVIA DSR‟;
 Ex.PW-1/64 – Strip of „BRAVIA 20‟;
 Ex.PW-1/65 – Strip of „BRAVIA – IT‟;
 Ex.PW-1/66 – Strip of „BRAVIA – D‟;
 Ex.PW-1/67 – Advertisement by Plaintiff Company;  Ex.PW-1/68 – Strip of „FRAVIA – DSR‟;
 Ex.PW-1/69 – Strip of „FRAVIA – 20‟;
 Ex.PW-1/70 – Invoice for sale of the Defendants’ „FRAVIA – DSR‟;  Ex.PW-1/71 – Invoice for sale of Defendants’ „FRAVIA – 20‟
5. His statement was recorded on 23rd December, 2016. The counsel for the Defendants thereafter stopped appearing in the matter. On 24th April, 2018, the right of the Defendants to cross-examine the Plaintiff’s witnesses was closed and the matter has been placed before the court.

6. A perusal of the exhibits on record shows that the Plaintiff has been continuously using the mark ‘BRAVIA‟ for pharmaceutical preparations since 2008. The mark BRAVIA has been used for a combination drug comprising of `Raberprazole Sodium & Domperidone’. The Defendants have adopted and started using the mark ‘FRAVIA‟ for the same medicinal preparation. Following the dictum of the Supreme Court in Cadila Health Care v. Cadila Pharmaceuticals (2001) 5 SCC 73 (hereinafter, „Cadila Health Care‟), in the case of medicines, any chances of confusion should be averted. The law on pharmaceutical preparations and test of deceptive similarity is well settled and needs no reiteration. The fundamental principle in respect of identical/similar marks in pharmaceutical preparations is that confusion is to be averted at all costs. In Cadila Health Care (supra), the Supreme Court, after laying down the law, in fact went ahead and directed the Drug Controller General of India to put in a system to avoid confusing marks from being approved for manufacturing and marketing of drugs. The relevant portion of the judgement in Cadila Health Care (supra) is set out below:

“34. Keeping in view the provisions of Section 17B of the Drugs and Cosmetics Act, 1940 which inter alia indicates an limitation or resemblance of another drug in a manner likely to deceive being regarded as a spurious drug it is but proper that before granting permission to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade Mark office pertaining to the trade mark in question which will enable the drug authority to arrive at a correct conclusion.”
This direction has been subsequently reiterated by this Court in Bio-Chem Pharmaceutical Industries v. Astron Pharmaceuticals and Assistant Registrar of Trade Marks, Trade Mark Registry 2003 (26) PTC 200 (Del).

7. The mark ‘FRAVIA‟ is phonetically and deceptively similar to the trademark of the Plaintiff. The products are the same. Considering the manner in which medicines are dispensed and the class of customers, the marks BRAVIA and FRAVIA are almost identical and confusion is inevitable. There can be confusion not only amongst patients but also amongst doctors and chemists who prescribe and dispense medicines.

8. In this backdrop, the issues framed are answered hereinbelow:

a) Issue No.1 – Whether the plaintiff is the registered proprietor of the trade mark ‘BRAVIA’? (OPP) The trade mark registration of the Plaintiff is duly exhibited by PW-1. Nothing more is required to answer this issue. The issue is answered in favour of the Plaintiff.
b) Issue No.2 – Whether the plaintiff is a prior user of the trade mark ‘BRAVIA’? (OPP) The Plaintiff has adopted the trade mark BRAVIA in 2008. The Defendants, in the Written Statement, simply claim that they adopted the mark FRAVIA in 2009. No sales figures have been given nor advertising figures. Only the total turnover has been stated in the Written Statement. Moreover, no documents have been filed to show that the Defendants actually used the mark since 2009. The Defendants have not even placed their drug approval on record. Thus the Plaintiff is held to be the prior user of the mark BRAVIA.
c) Issue No.3 – Whether the trademark ‘FRAVIA’ used by the defendants is deceptively and phonetically similar to the plaintiffs registered trademark ‘BRAVIA’? (OPP) The Defendant has pleaded that the term RAVIA is derived from the salt RABEPRAZOLE. This Court does not find this explanation convincing at all as the name RAVIA has no connection with the name of the salt. The explanation seems to be an afterthought. The trade mark BRAVIA and FRAVIA are phonetically and ocularly similar. In fact if the letters `b’ and `f’ are written in running cursive writing, which is how prescriptions are usually written, the marks are not just deceptively similar but are in fact identical. They are used for the same class of products i.e., medicinal preparations. The drug which is marketed under these marks is also identical. Thus, confusion is inevitable.
d) Issue No.4 – Whether adoption of the trademark ‘FRAVIA’ by the defendant is dishonest? (OPP) The evidence on record shows that the Plaintiff’s mark BRAVIA is in continuous use since 2008 i.e., for almost a decade. The sales figures for these years is on record which show that the products have substantial sale. The products of the Plaintiff under the mark BRAVIA could not have gone unnoticed in the market. The Defendants have started using FRAVIA after complete knowledge of the Plaintiff’s mark and hence the adoption of the mark FRAVIA is not innocent, to say the least.

e) Issue No.5 – Whether use of the trademark ‘FRAVIA’ by the Defendant is an infringement of the plaintiff’s registered trademark ‘BRAVIA’? (OPP)

f) Issue No. 6 – Whether the plaintiff is entitled to the relief of injunction, restraining infringement of the trademark in terms of the prayer (a) of the plaint? (OPP) The mark BRAVIA being a registered trade mark of the Plaintiff, use of any deceptively similar mark constitutes a violation of the Plaintiff’s rights, as per Sections 28 and 29 of the Trade Marks Act, 1999. Thus the Plaintiff is entitled to an injunction as prayed for.

g) Issue No. 7 – Whether the plaintiff is entitled to the rendition of accounts in terms of prayer (c) of the plaint? (OPP)

h) Issue No. 8 – Whether the plaintiff is entitled to the destruction of goods in terms of prayer (b) of the plaint? (OPP)

i) Issue No. 9 – Whether the plaintiff is entitled to the punitive damages in terms of prayer (d) of the plaint? (OPP)

j) Issue No.10 – Whether the plaintiff is entitled to costs? (OPP)

9. In respect of the above four issues, it is held that the Plaintiff is entitled to a decree of permanent injunction. The Defendants have not led evidence in the matter. Even the Plaintiff’s evidence does not give any justification or basis for the relief of rendition of accounts claimed in the suit. Hence, the prayer of rendition of accounts against the Defendants cannot be granted as there are no estimates of sales available on record. However, the Defendants had filed their written statement and the suit has been pending for almost four years. The adoption of the mark ‘FRAVIA‟ was clearly dishonest. The Defendants have suddenly stopped appearing in the matter, after contesting the matter for four years. Under such circumstances, the Plaintiff is entitled to actual costs in the suit. The Plaintiff has already deposited court fee of Rs.22,400/- and has also incurred legal expenses. Under such circumstances, costs of Rs.2 lakhs are awarded in favour of the Plaintiff.

10. Decree in terms of prayer 46(a) and (b) is passed along with a decree for costs of Rs.2 lakhs.

11. Copy of the present judgment shall be sent to the Drug Controller General of India and to the Controller General of Trade Marks, to ensure that the drug approval in the name of Finex Healthcare Pvt Ltd and Elfin Drug Pvt Ltd for the mark ‘FRAVIA‟, is cancelled within a period of eight weeks. The DCGI and the Controller General of Trade Marks is also directed to file an affidavit in this Court within a period of four weeks stating as to what steps have been taken in compliance with the directions contained in the judgement of the Supreme Court in Cadila (supra). A copy of this judgement is also sent to Mr. Akshay Makhija, Central Government Standing Counsel for being forwarded to the DCGI and the Controller General of Trade Marks.

12. Decree sheet be drawn accordingly. Suit is disposed of. All pending applications also stand disposed of. List on 13th September 2018, for perusal of affidavit of the DCGI and the Controller General of Trade Marks.

 

 

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