THE HIGH COURT OF DELHI AT NEW DELHI
% Judgment Pronounced on: 31.05.2011
+ CS(OS) No.2297/2007
PFIZER PRODUCTS INC. & ANR. .... Plaintiffs
- versus -
B.P.SINGH TYAGI & ANR. ... Defendants
Advocates who appeared in this case:
For the Plaintiff: Ms. Aarshia Behl, Adv.
For the Defendants: None.
CORAM:-
HON'BLE MR JUSTICE V.K. JAIN
1. Whether Reporters of local papers may
be allowed to see the judgment? No
2. To be referred to the Reporter or not? No
3. Whether the judgment should be reported No
in Digest?
V.K. JAIN, J. (ORAL)
1. This is a suit for grant of permanent injunction,
rendition of accounts and damages. Plaintiff No. 1 is a
wholly owned US subsidiary of Pfizer Inc., whereas plaintiff
No.2 Pfizer Limited is the Indian Subsidiary of Pfizer Inc.
Pfizer is a large multinational pharmaceutical company
which enjoys a global reputation for the high quality and
CS(OS)No.2297/2007 Page 1 of 10
efficacy of its product. The research and development
budged of Pfizer was estimated at about US$ 7.5 billion in
the year 2004 and it manufactures a number of
pharmaceuticals products, including vitamin, supplements,
antibiotics and cardiovascular products. COREX is one of
the top selling products of the plaintiff and is a highly
sought after drug for treatment of cough and in allergic or
infective conditions of the respiratory passage. This product
is being sold in India since 1964 and the mark COREX is
registered in India since 1963 in Class 5 vide Trademark No.
213825. The trade mark is owned by plaintiff No.1 Pfizer
Product Inc.
2. Defendant No.1 – B.P.Singh is the Managing
Director of defendant No.2 – Omax Healthcare (Pvt. Ltd.). It
is alleged in the plaint that recently the plaintiffs came to
know that defendant No.2 was manufacturing and
marketing a cough syrup under the mark OREX which is
deceptively and phonetically similar to plaintiff’s mark
COREX. On enquiry, the plaintiffs came to know that the
defendants are manufacturing and marketing a cough syrup
under the mark OREX which is similar to the mark of the
plaintiff-company. The defendants, according to the
CS(OS)No.2297/2007 Page 2 of 10
plaintiffs, have thus adopted a mark which is deceptive
similar to their registered mark OREX and are thereby
trying to ride upon the goodwill and reputation of the
plaintiffs. It is also alleged that there is likelihood of the
customers getting induced to believe that the product
offered by the defendants was of the same quality as the
products of the plaintiff-companies are and they may also
believe that the defendants have some connection or
association with the plaintiff-companies or have licensed or
authorized the product being sold by the defendants under
the trademark OREX.
3. The plaintiffs have, therefore, sought injunctions,
restraining the defendants from manufacturing, marketing
or advertising any product under the mark OREX or any
other mark which is identical or deceptively or confusingly
similar to plaintiff No.1’s registered trademark COREX. The
plaintiffs have also sought rendition of accounts for the
profit earned by the defendants by infringing plaintiff’s
trademark and by passing off their goods as the goods of the
plaintiff. They have also sought damages amounting to Rs
2,00,200/- from the defendants.
4. The defendants were served by publication but did
CS(OS)No.2297/2007 Page 3 of 10
not put in appearance. They were proceeded ex-parte vide
order dated 25.04.2011.
5. The plaintiffs have filed affidavit of Ms Anamika
Gupta constituted attorney of the plaintiff-companies in
support of their case. In her affidavit, Ms Anamika Gupta
has supported, on oath, the case set up in the plaint and
has stated that plaintiff’s product under the mark COREX is
being manufactured in India since 1964 and plaintiff No.1 is
the registered proprietor of the trademark COREX, by
virtue of trademark Registration No. 213825 in respect of
medical preparation being an expectorant.
6. In CS(OS) No.2244/2007 titled as Pfizer
Products, Inc. and Anr. vs. Vijay Shah and Ors.,
decided on 29.11.2010, this Court had occasion to examine
the right claimed by the plaintiffs in respect of the trade
mark COREX. The trade mark, which the defendant in that
suit was found using in respect of cough syrup was SOREX.
This Court, inter alia observed as under:-
“The case of the plaintiff against the
defendants is based upon infringement of
their registered trade mark as well as on
passing off. Section 28 of Trade Marks
Act, 1999 gives to the registered
proprietor of the trade mark the exclusive
right to the use of the trade mark inCS(OS)No.2297/2007 Page 4 of 10
relation to the goods or services in
respect of which the trade mark is
registered and to obtain relief in respect
of infringement of the trade mark in the
manner provided by this Act. In a case
based on infringement of this statutory
right it is necessary for the plaintiff to
prove that his registered trade mark has
been used by the defendant, though no
such use is required to be established in
an action for passing off. It is also a
settled proposition of law that if the
defendant resorts to colourable use of a
registered trade mark such an act of the
defendant would give rise to an action for
passing of as well as for infringement. In
an action based upon infringement of a
registered trade mark if the mark used by
the defendant is visually, phonetically or
otherwise so close to the registered trade
mark of the plaintiff that it is found to be
an imitation of the registered trade mark,
the statutory right of the owner of the
registered trade mark is taken as
infringed.
In a case of passing off, however, if the
Defendant is able to establish that on
account of packaging, get up and other
writing on his goods or on their
packaging, it is possible to clearly
distinguish his goods from the goods of
the plaintiff, he may not be held liable.
The Defendants, while adopting the name
for their product, need to act honestly
and bona fidely and not with a view to
encash upon the goodwill and reputation
of the plaintiff-company. A fraudulent or
deceptive copying of the trademark owned
by another person also amounts to a false
misrepresentation to the public which
needs to be protected against suchCS(OS)No.2297/2007 Page 5 of 10
misrepresentation. A competitor cannot
usurp the goodwill and reputation of
another by adopting a mark similar to the
established mark of its competitor and
thereby cause injury to the reputation
and business of that person. With the
passage of time, a certain reputation
comes to be associated with a brand
name on account of the quality of the
product sold under that brand and/or
the investment made by the owner of that
brand in brand building and advertising.
Any attempt on the part of another
person to enrich upon the brand value
generated by another person needs to be
curbed by the Court as and when the
aggrieved party approaches the Court in
this regard.
The question as to whether the two
competing marks are so similar as to be
likely to deceive or cause confusion has
to be approached from the point of view
of a man of average intelligence and
imperfect recollection and not from the
point of view of an educated person who
is well placed in life. The Courts also need
to ensure that there is no confusion in
the mind of the consumer as to the
source of the product which he is buying.
The customer needs to be assured that
he buys the same product which he
prefers and identifies by its name. From
the view point of the manufacturer of the
product also, it is necessary for him to
ensure that his business interests are not
harmed by another manufacturer, by
clever manipulations and machinations,
such as colourable use of a name or
device by his competitor.
We cannot be oblivious to the fact that
despite statutory requirements, theCS(OS)No.2297/2007 Page 6 of 10
chemist and druggist in our country do
not hesitate in selling drugs such as
cough syrups and expectorant, without
insisting upon prescription by a medical
practitioner, even if such a prescription is
statutorily required. Drug such as cough
syrups are available over the counter and
without production of a medical
prescription, not only in metropolitan
cities, but only in small towns and
villages. The persons living in small
towns and villages and possessing
average intelligence may not like to take
the trouble of meticulously examining the
label of the cough syrup which they find
in the shop when the names of the two
products are phonetically similar and the
packaging of the product and other
distinguishing features, if any, are not
adequate to enable him to distinguish the
product which he finds in the shop with
the product which he intends to
purchase. Considering the phonetic
similarity between the name COREX and
SOREX and a number of similarities in
the packaging and label and the products
being manufactured and sold by the
plaintiffs as well as the products being
manufactured and sold by the
Defendants, both being cough syrups,
there is a strong likelihood of customer
possessing an average intelligence and
particularly those living him in small
towns and villages buying the product of
the Defendants on the assumption that
they were buying the product of the
plaintiff, which is reputed and well-
known cough syrup.
The quality of the product of the
Defendants may not be as good as the
quality of the product of the plaintiff. If
that be so, the customer who buys theCS(OS)No.2297/2007 Page 7 of 10
product of the Defendants in the belief
that he is buying the quality product of
the plaintiffs discovers that the product
purchased by him is not of expected
quality and has not given him the relief
which he expected on consuming it, he
may form an opinion that the quality of
the product of the plaintiffs has gone
down. If that happens, it may adversely
affect not only the reputation but also the
business interests of the plaintiffs.
7. Ex.1/2 is the legal proceeding certificate filed by
the plaintiff-companies which shows that CHAZ. PFIZER &
CO. INC. is the manufacturer of the trade mark COREX in
respect of medicinal preparation being an expectorant. It
further shows that the registration was issued on
04.07.1964 and was renewed from time to time.
8. It is difficult to dispute that the mark OREX is
phonetically so close and similar to the word COREX that it
may not be possible for an ordinary buyer of a cough
expectorant to distinguish the product of the plaintiff from
the product of the defendant. In fact the defendants have
left four out of the five words in the registered trade mark
COREX of the plaintiff and have adopted those four words
as its trade mark.
9. For the reasons given in the preceding paragraphs,
I am of the considered view that the plaintiffs are entitled to
CS(OS)No.2297/2007 Page 8 of 10
injunction against the manufacture, sale and distribution of
cough syrup of the defendants under the name OREX or
any other name/mark deceptively similar to the registered
mark COREX of the plaintiff.
10. Though the plaintiffs have also sought rendition of
account for the profits earned by the defendants by
infringing their trademark and passing off their goods as the
goods of the plaintiff, this relief was not pressed during
arguments. The plaintiffs, however, pressed for grant of
damages to them. However, considering that the plaintiffs
have not proved any actual damage to them and even
otherwise it are not possible to work out the profits earned
by the defendants and the damages sustained by the
plaintiffs on account of use of the mark OREX by the
defendants, the plaintiffs are not entitled to actual damages.
However, since the defendants have adopted a mark similar
to the registered trademark of the plaintiff and they have
been manufacturing and selling the cough syrup under that
mark and also with a view to deter the defendants from
indulging in similar acts in future, it is necessary that some
punitive damages are awarded to the plaintiffs. I, therefore,
award punitive damages in the sum of Rs 1 lac to the
CS(OS)No.2297/2007 Page 9 of 10
plaintiff against the defendant No.2.
11. As far as defendant No.1 is concerned, he being the
only Managing Director of defendant No.2, the plaintiff is
not entitled to any relief against him.
12. The suit against defendant No.1 is hereby
dismissed without costs. A decree for injunction is passed
in favour of plaintiffs and against defendant No.2,
restraining defendant No. 2 from manufacturing, selling and
distributing cough syrup under the name OREX or any
other name/mark deceptively similar to the registered mark
COREX of the plaintiffs. Defendant No.2 is also directed to
pay punitive damages, amounting to Rs 1 lac to the
plaintiffs. If the amount of damages is not paid within four
weeks, defendant No.2 will also pay interest on that amount
at the rate of 9% per annum from the date of this judgment.
There shall be no order as to costs. Decree sheet be
prepared accordingly.
(V.K. JAIN)
JUDGE
MAY 31 , 2011
‘sn’/BG
CS(OS)No.2297/2007 Page 10 of 10