ranbaxy-utl

8/14/2019 RANBAXY-UTL

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY

O. O. C. J.

NOTICE OF MOTION NO.4429 OF 2007

IN

SUIT NO.3221 OF 2007

Ranbaxy Labratories Limited. ...Plaintiff.

Vs.

M/s.Universal Twin Labs. ...Defendant.....

Mr. M.P. Rao with Mr. H.P. Singh, Ms. Henal Vakharia, Ms.Deepti

Trivedi and Ms.Deepti Adhav i/b. Henal Vakharia & Asso. for the

Plaintiff.

Mr.Virag Tulzapurkar with Mr. Ashish Kamath i/b. M/s. Bharat Shah &

Co. for the Defendant.

.....

CORAM :DR.D.Y.CHANDRACHUD, J.January 30, 2008.

JUDGMENT:

The Plaintiff is the registered proprietor of a trade mark,

VOLINI, in respect of medicinal and pharmaceutical preparations

falling in class 5 of the Schedule to the Trade Marks Rules. The

registration continues to be valid and to subsist on the register.

VOLINI which is a word mark, is used by the Plaintiff for an ointment

which is stated to provide relief from pain, swelling and inflammation.


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The mark has been used continuously since 1994. The Plaintiff has,

incidental thereto, prepared and used labels and promotional material

adopting the mark. The sales figures and promotional expenses

between the years 2003 and 2006 are disclosed in the plaint to be

thus:

Sales Figures

2003 - Rs. 215.30 million

2004 - Rs. 246.80 million

2005 - Rs. 301.80 million

2006 - Rs. 382.60 million

Promotional expenses

2003 - Rs. 17.49 million

2004 - Rs. 25.86 million

2005 - Rs. 26.02 million

2006 - Rs. 23.30 million.

In an affidavit filed on 19th January 2008, certain additional facts have

been disclosed. The Plaintiff has relied upon ORG IMS data,


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according to which, the product in question, ranked first among

topical analgesics, anti-rheumatics and non-steroidal anti-

inflammatory drugs. The approved budget on promotional expenses

for the year 2008 is Rs. 127.3 million. The mark has been

extensively advertised on the electronic and print media. The sales

figures for 2007 were estimated at Rs. 404.7 million. The product has

a market share of 28.34%.

2. The sale of the product has taken place in cartons on

which the mark VOLINI appears in a bold typeface. The letters

constituting the mark are printed in mauve with a white background.

The name of the Plaintiff is inscribed on the side of the carton and

along side a logo of what is described as a running person is

printed. The words A Multi action Topical Gel appear on the carton.

On one side of the carton, there are four line diagrams furnishing a

visual indicator of a person depicted to have pain in the lower back,

joint pains and a strain of a muscular nature. Each carton has a

distinctive colour scheme, get up and layout. The Plaintiff claims that


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as a result of prior adoption, long and continuous user and publicity

on a significant scale, the mark together with the associated get up

and colour scheme of the carton and the tube have acquired a

significant reputation in the trade and among the public.

3. The Defendant commenced marketing a product under the

word mark VONIGEL. This mark is, according to the Plaintiff, similar

to or identical with the mark of the Plaintiff visually, phonetically and

structurally. The grievance of the Plaintiff is that the Defendant has

copied the entire get up of the carton and the tube of the Plaintiff. The

carton used by the Defendant uses, according to the Plaintiff,

identically placed four line diagrams containing indications of lower

back pain, joint pain, sprain, strain and muscular pain and the

Defendant has copied the words A Multiple Action Topical Gel with a

similar posture of a person who is running. The overall effect is,

according to the Plaintiff, to deceive the unwary customer with

imperfect recollection into confusing the mark of the Defendant for the

mark of the Plaintiff. A comparison of the two marks is made in


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paragraph 10 of the plaint and is summarised thus, therein:

PLAINTIFF' SPRODUCT DEFENDANT' SPRODUCTIdentical placement of 4

diagrams, indication of Low Back

Pain, Joint Pain, Sprains and

Strains and Muscular Pain.

Identical placement of 4

diagrams, indication of Muscular

Pain, Joint Pain, Sprains &

Strains and Low Back Pain.

Posture of running man Symbol of running man.

Colour scheme in Mauve colour

in bold typeface with white

background and white colouredcarton.

Colour scheme in Mauve colour in

bold typeface with white

background and white colouredcarton.

Written For Quick relief from

Pain, Swelling and Inflammation.

Written For Quick relief from

Pain, Swelling and Inflammation.

Placement of trademark VOLINI

GEL.

Placement of trademark

VONIGEL.

Both products are used for treating the same condition. The adoption

of the mark by the Defendant is submitted to be dishonest and with a

view to trading on the established reputation of the Plaintiff. The suit

has accordingly been instituted for infringement and passing off.

4. An application for interim relief has been made therein.

Injunctive reliefs, a direction for disclosure and the appointment of a


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Receiver have been sought in the Motion. The pleadings in the

Motion being complete, the Motion has been taken up for hearing and

final disposal in pursuance of the agreed order dated 31st December

2007 recording the consent of the parties for disposal of the Motion at

this stage.

5. At the hearing of the Notice of Motion, the averments

contained in the Plaint and the additional affidavit have been pressed

in aid to support the application for interlocutory relief. The

submission is that the adoption of the mark VONIGEL by the

Defendant infringes upon the rights of the Plaintiff as a registered

proprietor of the mark VOLINI. It has also been urged that the

adoption of the mark VONIGEL by the Defendant is not honest and is

with a view to trade on the established reputation of the Plaintiff. The

Defendant who is a subsequent entrant into the market nearly a

decade after the Plaintiff had established a significant reputation and

a goodwill associated with the use of the mark is alleged to have

attempted to pass off its goods as those of the Plaintiff. The colour


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scheme, diagrams and the get up of the carton have all been placed

in aid of the submission.

6. On behalf of the Defendant it has been submitted that (i)

The registration certificate annexed to the Plaint shows that what is

registered is the word mark VOLINI. The mark of the Defendant

VONIGEL is in the submission, word for word not similar; (ii) In so

far as the claim of passing off is concerned, no statement is made in

the Plaint as to when the carton was adopted by the Plaintiff and a

reputation by long user is not established. On the other hand, the

contention of the Defendant is that (a) A firm by the name of Universal

Impex was in existence from 1992 to 2006 and came to be dissolved

due to disputes between its two partners. The firm allegedly was the

proprietor of the carton/label bearing the trade mark ENAC GEL

EXCEL and the firm is alleged to have used the carton bearing the

four diagrams in question for about eight years. One of the erstwhile

partners of the firm Satish Mehta together with the deponent of

the affidavit in reply are stated to be partners of the Defendant. The


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Defendant commenced using the mark VONIGEL EXCEL. The

Defendant is stated to have used the carton including the diagram,

colour scheme, design and get up which had appeared on the carton

of ENAC GEL EXCEL for over eight years; (b) The certificate of

registration of copy right which is relied upon shows that the erstwhile

firm had used the carton from 1998. The Plaintiff, it is urged, has no

material to establish the user of the carton prior to 1998; (c) The

words which are used by the Plaintiff on the carton, namely, (i) 'For

quick relief from pain, swelling and inflammation' ; (ii) ' Amultiple

action topical gel' ;and the four line diagrams are claimed to be only

descriptive of the nature of the product. The logo of a 'running man'

which the Plaintiff adopts is according to the Defendant distinct from

the logo of a dancer which the Defendant has used on its carton; (iii)

Other cartons of similar products are stated to contain similar

diagrams and descriptions; and (iv) The sales of the Defendant

commenced from July 2006 whereas the suit is stated to have been

instituted on 2nd November 2007 over sixteen months after the

commencement of user by the Defendant.


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7. These submissions now fall for determination.

8. The Plaintiff is the proprietor of the word mark, VOLINI,

which is registered in class 5 as a medicinal and pharmaceutical

preparation. VOLINI is an invented word. The registration of the word

mark by the Plaintiff confers upon the Plaintiff, the exclusive right to

use the mark and an entitlement to sue for infringement under

Sections 28 and 29 of the Trade Marks Act, 1999. The Defendant

commenced business well over a decade after the Plaintiff. Even

according to the Defendant, the mark was conceived and adopted

sometime in late 2005 and the application for the registration of the

word mark VONIGEL was made on 10th March 2006. Since July

2006, the Defendant claims to be marketing its pharmaceutical

preparation under the brand name VONIGEL EXCEL.

9. The contention of the Defendant is that the mark VONIGEL

is not deceptively similar, word for word or letter for letter. That is not


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a correct approach in a trade mark action. In considering the issue of

deceptive similarity, the Court has to have due regard to the rival

marks as a whole and to the impact which they would make on an

ordinary and, as it is often said, unwary purchaser. The dominant

characteristic of the mark which has been adopted by the Defendant

is the prefix VONI which occurs before the GEL. To the average

purchaser with an average intelligence, the mark VONIGEL must

appear deceptively similar to the mark VOLINI of which the

Plaintiff is the registered proprietor. The average purchaser is liable

to be confused into assuming that the product under the mark

VONIGEL which is sold by the Defendant is in fact, the product of the

Plaintiff sold under the mark VOLINI. The words VOLINI and VONI

are deceptively similar, the only distinction being the deletion of the

letters LI in the mark of the Defendant. Undoubtedly, both the marks

have to be considered as a whole. In doing so, the average

purchaser is liable to place a much greater degree of emphasis on the

word VONI as it appears in the mark of the Defendant leading to a

deceptive degree of similarity with the mark of the Plaintiff. A prima


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facie case of infringement has, therefore, been established.

10. But, according to the Defendant, it is only the word mark of

the Plaintiff which is registered while on the other hand, the use of the

carton by the Defendant dates back to 1998. According to the

Defendant, the erstwhile firm of Universal Impex had marketed a

product by the name of ENAC GEL EXCEL and the carton which was

being used by the firm prior to its dissolution has been adopted with a

substantial similarity in terms of the thematic diagrams, colour

scheme, design and get up. According to the Defendant, the plaint

does not contain a precise disclosure of the extent of the use of the

carton by the Plaintiff, the date on which use commenced and the

extent of sales based thereon. Hence, it has been urged that the

prior use of the carton is of the Defendant and the consequence is

that it is the Plaintiff which is passing off its carton as that of the

Defendant.

11. Now, in this regard, it would be necessary to note that in


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paragraph 5 of the Plaint, there is a disclosure of the sales figures and

promotional expenses since 2003 until 2006. Paragraph 6 contains

an elaboration of the nature of the carton that has been used by the

Plaintiff while paragraph 7 contains a submission that by virtue of a

prior adoption and long and continuous user as aforesaid, as well as

owing to the large scale on which publicity has been made, the mark

VOLINI and the get up and colour scheme of the carton and the tube

have acquired an enviable reputation in the minds of the trade and

public.

12. The defence to the action is that an erstwhile partnership

firm Universal Impex were/are the proprietors of the carton/label

bearing the trade mark ENAC GEL EXCEL. According to the

Defendant, the firm has used carton for about eight years. The reply

is, however, completely silent in regard to the sales, if any, that

actually took place under the trade mark ENAC GEL EXCEL. No

figures have been furnished. There is no material before the Court to

establish that there was a continuous use of the aforesaid mark by the


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erstwhile partnership. No details of advertisements or of the

expenditure incurred on sales promotion have been furnished. The

copyright registration of the Enac Gel Excel Carton is of 3rd June

2004. It is true that the year of the first publication is referred to

therein as 1998. However, as noted above, the affidavit in reply is

totally bereft of any material that would establish the actual and

continuous use of the ENAC GEL EXCEL mark or of the existence of

substantial sales in respect of the product.

13. Prima facie, what the defendant has done is to adopt a

clever disguise for passing off its own product VONIGEL as the

product of the Plaintiff. The mark of the Defendant is deceptively

similar. The Defendant uses the same colour combination. The

Plaintiff's cartons contain a description to the effect that the

preparation is For quick relief from pain, swelling and inflammation.

The same description appears on the carton of the Defendant, word

for word. The Plaintiff's carton represents the product to be A Multi

Action Topical Gel. The Defendant's carton contains an identical


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representation. The carton of the Plaintiff contains four line diagrams

containing a thematic illustration of the efficacy of the product in

treating of (i) low back pain; (ii) joint pain; (iii) sprains and strains; and

(iv) muscular pain. The Defendant has adopted an almost identical

depiction of a person suffering from the same four conditions. The

Plaintiff's carton contains a depiction of a human being involving in

the process of running. The Defendant has chosen to adopt a logo in

the same colour as that of the Plaintiff Orange and it is no answer

to submit, as did Counsel appearing on behalf of the Defendant, that

the logo of the Defendant is of a ' dancing man' as opposed to the logo

of the Plaintiff which is of 'a running man'. Such niceties may provide

interesting trivia in a 'spot the difference in the pictures' contest but do

not constitute a valid test in trade mark law. Trade mark law

postulates the protection of a purchaser as average as the common

citizen who goes about his daily chores. Trade mark law must also

protect the just proprietary rights of manufacturers. Unless such a

protection is afforded, the goodwill and reputation associated with an

established mark ceases to be distinctive of the goods which it


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purveys. A rapidly advancing industrial economy as in India can ill

afford such invasions. It may well be that some of the

representations which are made on the carton of the Plaintiff are

descriptive of the condition which the product is intended to treat.

There can be no monopoly on the description of an ailment which a

pharmaceutical preparation is intended to treat. The Court must,

however, look at the entirety of the depiction. Doing so leads the

Court prima facie to the irresistible inference that what is being done

by the Defendant is to replicate the representation made by the

Plaintiff. The word mark, colour scheme, layout and get up adopted

by the Defendant are deceptively similar.

14. The decision of the Supreme Court in F. Hoffimann La

Roche and Co. Ltd. vs. Geoffry Manners and Co. Pvt. Ltd.,1 lays

down that both the word marks must be compared as a whole. In the

present case, this exercise is prima facie indicative of the fact that

there has been a passing off by the Defendant.

1 1982 PTC 335


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15. An effort has been made on behalf of the Defendant to

demonstrate before the Court that there are other products in the

market which fall in the same segment of pharmaceutical preparations

designed to provide local relief from pain and inflammation. The

submission was that several of those products involve similar line

diagrams as those which have been adopted by the Plaintiff. Now, in

view of the decision of the Supreme Court in Corn Products v.

Shangrila Food Products,2 it is well settled that the existence of a

mark on the register of trade marks is not indicative of the use of the

mark. Before the Court can come to the conclusion that the

constituent elements that are used in the mark of the Plaintiff are

common to the trade, the Defendant has to discharge the burden of

establishing substantive sales involving such competing products.

The Supreme Court observed as follows:

...before the applicant can seek to derive assistance for

the success of his application from the presence of a

number of marks having one or more common features

which occur in his mark also, he has to prove that these

2 AIR1960 SC 142


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marks had acquired a reputation by user in the market. ...

The series of marks containing the common

element or elements therefore only assist the applicant

when these marks are in extensive use in the market. The

onus of proving such user is of course on the applicant,

who wants to rely on those marks.

(Paragraphs 13 and 15)

Nothing of the kind has been established before the Court by the

Defendant.

16. For all these reasons, I am of the view that a prima facie

case for the grant of interlocutory relief has been made out. The

sales of the Defendant are stated to have commenced from July

2006. The suit was instituted on 2nd November 2007. There is

absolutely no warrant for the Court to draw an inference that there

has been any acquiescence on the part of the Plaintiff in the business

of the Defendant. Such acquiescence must be of the nature that has

been referred to in the judgment of the Supreme Court in Power

Control Appliances vs. Sumit Machines Pvt. Ltd.3 That is not the

3 1994(1) PTC 117


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case here. On the contrary, material has been placed by the Plaintiff

to establish that the Plaintiff has been vigilant in espousing its

entitlement under the Trade Marks Act, 1999 to deal with

infringements of its mark and attempts at passing off. Reference in

that connection is made to the proceedings which have been adopted

by the Plaintiff against offending manufacturers before the Delhi

High Court.

17. For all these reasons, I am of the view that the grant of

interlocutory relief is warranted. The balance of convenience is in

favour of the Plaintiff which has a long prior user. The adoption of the

mark by the Defendant is, for the reasons already indicated, not

honest. Irreparable injury is liable to be caused to the Plaintiff if

interlocutory relief were to be refused. The Notice of Motion is made

absolute in terms of prayer clauses (a) to (d) [save and except for the

bracketed portion of prayer clause (c )]:

a) That pending the hearing and final disposal of the

suit, defendant, by themselves, their servants and agents,

distributors, stockists and the like be restrained by an order


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and injunction of this Hon'ble Court from manufacturing,

selling, offering for sale, advertising, marketing, exporting

and/or in any manner using in relation to any medicinal or

pharmaceutical preparation bearing the impugned

mark/carton VONIGEL or any other deceptively similar

mark/so as to infringe the Plaintiffs' registered trade mark

VOLINI bearing no.609904;

(b) That pending the hearing and final disposal of the

suit, the defendants, by themselves, their servants and

agents, partners, proprietors/licensees, distributors and

stockists be restrained by an order and injunction of thisHon'ble Court from in any manner using in relation to any

medicinal or pharmaceutical preparations meant for sale in

India or export outside India, the impugned mark VONIGEL

and/or any other mark deceptively similar to Plaintiffs

registered trade mark VOLINI and copyright of artistic work

associated with the Plaintiffs' product VOLINI so as to pass

off or enable others to pass off the Defendants goods as

and for the goods of the Plaintiffs;

(c ) That pending the hearing and final disposal of the

suit, the Defendants be directed by an order of this Hon' ble

Court to disclose the names of the printers, stockists,

exporters, dealers and distributors and all other concerned

parties dealing with the impugned product VONIGEL in

order to enable the Plaintiffs to proceed against the said

parties (and that this Hon'ble Court be pleased to grant

leave to the Plaintiffs to amend the Plaint as and when such

names and addresses of the necessary parties dealing inthe impugned product VONIGEL are disclosed by the

Defendants herein to include the said parties as parties in

the proceedings herein);

(d) That pending the hearing and final disposal of the


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suit, Court Receiver, High Court, Bombay or any other fit

and proper person be appointed as Receiver with all

powers under order XL Rule 1 of the Civil Procedure Code,

1908 to attend the premises of the Defendants and/or any

other premises where the impugned products are stocked,

lying retailing or manufactured and to make inventories of

the impugned products packed or unpacked and/or in the

process of manufacturing, packing, relabelling, or retailing

bearing the impugned mark/carton and the defendants by

themselves their servants, agents, distributors be ordered

and directed to deliver up the aforesaid goods, articles and

documents including invoices, registers, bills, airways billsand bills of lading and all infringing materials relating to the

impugned products to the Court Receiver, High Court,

Bombay or to such other fit and proper person as this

Hon'ble Court may think fit.

18. There shall be an order on the Motion in these terms.

.......

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