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IN THE HIGH COURT OF JUDICATURE

AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION

NOTICE OF MOTION NO.974 OF 2008

IN

SUIT NO. 134 2 OF 2007

Satish Kantilal Mehta ...Plaintiff

Vs.

Jayesh Kantilal Mehta & Ors. ...Defendan ts

And

Universal Pharma & Ors. ...Respondents

Mr.Ravi Kadam, Advocate General with

Mr.V.R. Dhond and Mr. A. Kamath i/b. Mr. S. Nair for Plaintiff

Mr. D.D. Madan, Senior Advocate a/w. Mr. Kiran Mehta and

Mr. Dhiren Karania for Defendant No.1 and Respondent No.1.

Mr.Rahul Chitnis with Mrs. Bhagwati Trivedi for Defendant

No.3

CORAM: SMT.ROSHAN DALVI, J.DATED: 12 TH AUGUST, 2008

P.C.

1. The Plaintiff 's suit is essentially for injunction in respect

of certain trademarks claimed by the Plaintiff essential ly

agains t Defendant No.1, his brother . The Plain tiff has

claimed to be the joint owner with Defendant No.1 of 24

registered trademarks shown in Exhibit- B to the plaint. The

Plaintiff also claims to be the joint owner of 352 other marks

shown in Exhibit- D to the plaint. Whereas the trademarks

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show n in Exhibit- B are regist er ed , the mar ks show n in

Exhibit- D are unregistered. The Plaintiff applied for the

relief of injunction by way of a Notice of Motion in respect of

these trademarks . In the ad- interim applica tion taken out

by the Plaintiff, the Plaintiff restricted his claim of injunction

in respect of the registered trademarks alone. The Plaintiff

has been granted reliefs of ad- interim injunction in terms of

prayer clauses b(i) and b(iv) in relation to the registered

trademark s only. Prayers b(i) and b(iv) run thus:

b(i) From in any manner using the f ive

purpor tedly ass igned trade marks , i.e. ENAC GEL, ENAC

EXCEL GEL, FUNGDID CREAM, FUNDID-B CREAM and

SILVOPEX CREAM and/or any of the trade m ar k s set

out in the Exhibi t- B and Exhibit- D to the thePlaint and/or any of them set out in the Annexure to

the purpor ted Deed of Assignment or any other

similar and/or decept ively similar marks /na me s

in respec t of the phar ma ce ut ic al prep ar at io ns of the

Defen da n t Nos. 1, 3 to 7, so as t o infrin ge the regis te re d

t rademark s of the Pla in t i ff , the Defendan t Nos.1

and 2 and/or pass off the Defendan t s product s as

and for those of the Plaint iff, the Defendan t Nos.1

and 2.

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b(iv) From in any manner using with or deal ing

in med ici na l an d pha rm a ce u ti c al prep ar a ti o ns

under the name Universa l Impex and/or

Univer sa l Phar ma Impex and /o r any othe r

names similar and/or decept ively simil ar to

Universal Impex.

2. The relief under prayer clause b(i) and b(iv) is not

granted as prayed. The aforesaid prayers show relief also in

respect of products which are not regis tered tr ademarks

listed in Exhibi t- D to the plaint . Consequent ly , prayer

clause (b) i s granted for the registered t rademarks of the

Plaintiff. Hence, it is seen that impliedly prayer (b) is refused

for the unregiste red t rademarks ment ioned in Exhibi t- D to

the plaint as also in respect of the products ment ioned inannexure to the Deed of Assignment, which is the part of the

plaint.

3. The Plaint iff contends that Defendant No.1, Defendant

No.3 and Respo nd en t No.1 have breac he d the order of

injunction dated 6 th July, 2007. It may be ment ioned tha t

the purview of the order which is narrower than the reliefs

claimed in the sui t is set out in paragraphs 13,15 and 16 of

the order . The aforesaid paragraphs run thus :

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13. In my opinion, Plaint iff has made out

for midab le case for gran t of ad- int er im rel ie f a t

leas t in ter m s of pr ay e r claus es b(i) and b(iv) in

rela t ion to reg is te red Trade marks . At th is s tage ,

al though the Plainti ff has insis ted for

appointment of Court Receiver, in my opin ion , the

arrang eme nt under ad- interim relief would

suffic ient ly protec t the interes t of the Plaint i ff .

15. Suffice it to observe tha t the ad- interi m

rel ie f which I propose to grant in t erms of prayer

cla us es b(i) an d b(iv) rep ro du ce d above is in

rela t ion to the regis te red Trade Marks only , on

acce pt i ng the ple a of the Plai nt if f th at his rig ht

as joint owner/joi nt pro pri et or is infring ed inrespec t of the said reg i ste red Trade Mark .

16. Accordingly , I proce e d to gr an t ad- int er im

rel ief in terms of prayer clauses b(i) and b(iv).

(emphasis suppl ied)

4. It can be, therefore, be seen tha t the ad- interim relief

against infringement of the trademark is granted in relat ion

to the registered trademarks . This ad- interim relief is in

terms of prayers b(i) and b(iv) in relation to registered

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trademarks only upon acceptance of the Plaintiff's case that

his right as the joint owner is infringed in respect of the

registered tr ademarks . It is in these circums tances that

prayers b(i) and b(iv) are granted.

5. The Plaintiff has alleged contempt/ bre ach of the order

dated 6 th July, 2007 by Defendant No.1, Defendant No.3 and

Respondent No.1 in using and dealing in pharmaceut ical

prep ar at io ns un der the na me Universal Impex and / o r

Universal Phar ma Impex an d /o r the name deceptively

similar to the name Universal Impex.

6. Similar ly, the Plaintiff has alleged contempt/b reach of

the order dated 6 th July, 2007 by the acts of the Defendant

No.1, Defendant NO.3 and Respondent No.1 in

manufacturing and selling pharmaceutical preparat ions and

products in the names of registered trademarks or products

deceptively similar thereto, thus infringing the Plaint iff' s

registered trademarks .

7. The Plain tiff has illu st ra te d the acts of brea ch byshowing the cartons of pharmaceutical products

man ufact ur ed and sold by Defenda nt No.1 and 3 and

Responden t No.1.

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8. The fact of these cartons having been used is not denied

by any of these parties. The Defendant No.1 has justified the

user by contending tha t the use does not tantamount to the

breach of the order of injunction.

9. The order dated 6 th July, 2007 came into effect on 18 th

August, 2007 after the initial stay granted.

(i) The very first breach of the order is shown by the

carton Exhibit- E to the affidavi t in support of this

Notice of Motion. It is a carton of a medicinal cream

Fungdid- B stated to be marketed by Defendant No.1

under the name of Universal Impex and manufactured

by Defendant No.3. The car ton shows the date of

ma nufa ctu re to be Septem be r, 2007, which is one

mont h after the order of injun ctio n came to be

effectuated. The Defendant has been injuncted from

dealing in any medicinal and pharmaceutical products

under the name Universa l Impex. The carton shows

Fu ng did- B sold un der th at na me and mark eted by

Defendant No.3. The Defendant No.1 is Director inDefenda n t No.3. He is st at ed to have resigne d

therefrom, in Ja nu a ry, 2008. On the date of the

manufacture of the carton he was the Director of the

Defenda n t No.3. The carton is stat ed to show a

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breach of the injunction granted under prayer b(iv) in

the order dated 6 th July, 2007.

Universal Impex is shown to be the partnershi p firm

of the Plaintiff and Defendants 1 and 2. Hence, it is

that firm and not the new firm of Defenda n t No.1

which is Responden t No.1, which is seen to have

marketed the said prod uct. It appear s that the

product continued to be marketed as before for a short

time as will be seen from the cartons manufactured a

few month s thereafter.

(ii) A car ton relied upon by the Plaint iff shown in

Exhibit- F to the affidavit in support of this Notice of

Motion shows the same medicinal cream

man ufact ur ed in December, 2007, but under the

name Universal Phar ma, which is the name of

Respondent No.1. It is , therefore, seen that the initial

breach immediately after the order of injunction came

into effect has been remedied/rect ified a few months

thereafter.

The Plaint iff, however , contends tha t dealing in

medicin al prod uc t u nde r the na me of Universal

Pharma would also be a breach of the order of

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injunction under prayer b (iv). Since, the Defendant

No.1 was restrained from dealing in any such products

under the name of Universal Impex, Universal Pharma

Impex, or any name deceptively similar to the name of

Universal Impex. The learned Advocate- General on

beh alf of the Plain tiff conte nd ed th at the name

Universal Pharma is deceptively similar to the name

Universal Impex. Mr. Madon, Sr. Counsel on behalf

of Defendant No.1 and Respondent No.1 contended

tha t the praye r b(iv) a s well as the order passed in

terms thereof restrained Defendan t No.1 and

Respondent No.1 from dealing in the name Universal

Impex, Universal Pharma Impex or anything which is

similar to Universal Impex , but not Universa l

Pharma . The prayer as well as the order are in terms

of specific names. The word Universal is a generic

te rm, such as the word Indian. It is the words

Impex and Phar ma Impex agains t which the

Plaintiff claims a right of trade mark. Consequently a

specific injunction is with regard to the use of those

words. The prohibit ion against using a deceptivelysimilar name is with regard to the name Impex and

not Pharma. Pharma is not deceptively similar to

the name Impex. The injunction order therefore,

does not extend to the word Pharma. The Defendan t

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has not made use of the word Impex or Pharma

Impex against the generic word Universal while

dealing in Pharmaceutical products.

In fact, I have been shown an affidavit filed by the

Plaintiff in Notice of Motion No.4300 of 2006 in Suit

No.3422 of 2006 filed by the Firm of Universal Impex

against one Universal Twin Labs in which a similar

content ion of prohibi tion of user of the trade name

Universal was sought by the Defendant No.1 herein.

In pa ragraph 14 of the said affidavit filed by the

Plain tiff herein, he ha d con te nded that the na me

Universal is common to the trade and user of such

name cannot be prevented.

(iii) The Plaintiff has shown the carton of a gel under the

name Enac- gel annexed as Exhibit- G to the affidavit

in support of this Notice of Motion. This carton shows

the product manufac tured in September , 2007. It is

marketed by Universal Impex and manufactured

by Defendant No.3. It is contended on behalf of thePlaint iff tha t it falls within the mischief of prayer

clause b(iv). It goes the same way as the car ton

Exhibit- E.

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The Plaint iff claims tha t the name Enac Gel is

deceptively similar to the Plaintiff's regis te red

trademark Enac- P shown at item No.24 in Exhibit- B to

the plaint, which is also a gel. The Plaintiff

consequen tly alleges breach in terms of prayer b(i).

It is contended on behalf of the Defendant that this

is a product specifically shown in item No.61 in Exhibit-

D, the claim to which the Plaintiff had given up whilst

applying for ad- interim relief as shown in

paragraph 3 of the order and in respect of which

injunction is specifically not granted as it is an

unregistered tradem ar k. Conseq uen tly Defenda nt No.1

and Respondent No.1 claim that they are entitled to

market their product Enac- gel. They claim that it is

not deceptively similar to the product Enac- P. It is

contended by Mr. Madon that the term gel, which is the

product itself, cannot be mistaken with the term P which is

the specified trade name of the product registered as a

trademark. Mr. Madon argued tha t if the Defendant had

used the term which is phoenet ically or even visuallysimilar to the name Enac- P, he could have been held

liable to the breach of the order of injunction.

Enac - P is the regi stered trademark . It would be

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infringed if the Defendan t No.1 or Responde nt No.1 used

a mark which was either identical with or deceptively

similar to the trademark in relation to the

pharmaceutical goods in a way that would be taken as being

used as a trademark by them. The name E nac- gel is not a

registered Trademark. I ts use cannot amount to an

infringement of the Plaintiff's trademark .

The marketing of the product Enac- gel by Universal

Impex is by the old firm of the Plaintiff and Defendants

1 and 2, which appears to have cont inued for a short

period after the order of injunction came into effect as

can be seen from the cartons of Enac- gel manufactured

a few month s after the order of injunction.

(iv) Just as in the case of the Pharmaceutical Cream

Fungdid- B, Enac- gel has been marketed by Universal

Pharma and not Universal Impex from about

Decem be r, 2007 . That is s how n in the 4 th carton

Exhibit- H to the affidavit in support of this Notice of

Motion. It goes the same way as the carton for thePhar mace utical Cream Fungdid- B marketed by

Universal Pharma since December, 2007.

The carton anne xure s F and H show that the

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name Universal Impex which Defendant No.1 was

injuncted from using has not been used since

December, 2007.

The willful default of the order is, therefore, not

seen. A default of the order, not willful, can be implied

from the earlier cartons which was soon got reprinted

and converted into cartons marketed by the new firm

of Defendant No.1 being Respondent No.1 in which

Defendan t No.1 is a partner with his wife.

A fur ther carton Exhibi t- I to the affidavi t in

suppor t of this Notice of Motion is shown it to be for a

pharmaceut ical product which is a Gel marketed by

the Respondent No.1 in the name of Enec- gel Excel in

December, 2007.

(V) . The Plaint iff has sought to show a fur ther carton

for a medicinal cream marketed by Respondent No.1

under the name of Qualiderm Plus in October , 2007

under Exhibit- L. The Plaintiff contends that the nameQualider m is deceptively similar to the nam e

Qliderm shown at item No.23 in Exhibi t- B to the

Plaint , which is one of the regis te red tr ademarks

claimed by the Plaintiff.

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The Defendant does not accept that these terms are

deceptively similar. The Defendant No.1 has contended

that the registration of trademark Qliderm has lapsed,

as it is not renewed and hence, he is enti tled to use the

term Qualiderm.

(VI) The Plaint iff also claims trademark in the word

Qualiderm. However, unfortunat ely, the Plaintiff has

not shown tha t tr ademark as a registe red tr ademark in

Exhibit- B to the Plaint and consequently no injunction

order is passed in respect of Qualiderm as a registered

trademark. The user by Defendant No.1 or Respondent

No.1 of tha t trademark, therefore , st rict ly speaking

cannot be termed as a willful breach of the orde r of

injunction.

10. Though the Plaintiff has annexed certain other cartons

to the affidavit in support of the Notice of Motion as well as

affidavit in rejoinder, the learned Advocate- General has not

pressed for any reliefs with regard to any other cartons, orany other act s of Defendant No.1 or Respondent No.1 as

constituting an infringement of his registered trademark.

11. Thoug h the Notice of Motion is presse d again st

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Defendant No.3 also, it is seen that aside from the aforesaid

products marketed by Defendant No.3, no other act against

Defendan t No.3 is shown.

12. It need hardly be mentioned tha t the breach of order of

injunction is required to be s trict ly shown and proved. The

Plaintiff got a limited relief in respect of only the registered

trademarks as the reliefs prayed for by him were not pressed

for unregis te red trademarks or such other trade names and

was not granted.

13. The acts of Defendant No.1 or Respondent No.1 must be

show n strictly to be in willful defa ul t of the order of

injunc tion with regar d to the register ed tradem ar ks as

shown in Exhibit- B only. The continuation of marketing by

the old firm of the Universal Impex of the Plaintiff and

Defenda n ts 1 and 2 though show n to be continu ing only

unti l September 2007, a month after the order of injunction.

It is shown to have been discontin ue d at least since

December, 2007 by the change in the firm name of

Defendant No.1, which is Respondent No.1. This act showslack of willful defaul t.

14. The case for breach or contemp t of the order of

injunction is, therefore, not made out.

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15. Hence, the Notice of Motion is dismissed. No order as to

costs.

(SMT. ROSHAN DALVI, J.)