JUDGMENT
Sanjay Kishan Kaul, J.
Page 2834
1. The plaintiffs have instituted a suit for permanent injunction restraining the infringement of trademarks, passing off, rendition of accounts, damages, etc. against the defendants. The said suit has been instituted by Mr. Rahul Sethi, the Constituted Attorney of the plaintiff No. 1 and Mrs. Sree Patel, the constituted Attorney of plaintiff No. 2 by virtue of Power of Attorney in their favor respectively (Ex. PW1/2).
2. The plaintiffs are members of the Glaxo Smith Kline group of companies of which Glaxo Smith Kline Plc. is the parent company engaged in the worldwide business of manufacturing and marketing a wide range of research based pharmaceutical, medicinal preparations and health care products. The plaintiff no.1 is a company incorporated under the laws of United Kingdom and is indirectly held, wholly owned subsidiary of Glaxo Smith Kline, which is one of the world’s largest pharmaceutical companies. The plaintiff No. 2 is a company incorporated under the Indian Companies Act, 1956, having its registered office in Mumbai and is engaged in the manufacturing and marketing of various pharmaceutical products in India including but not limited to Iodex, Betnovate, Fortum, Furacin, Ventorlin etc. GlaxoSmithKline has its operations in some 119 countries and has over 100,000 employees worldwide. It is stated that in 2005, its sales were of 21.6 billion pounds and profit before tax was of 6.7 billion pounds with an estimated 6.3% share of the global pharmaceutical market.
3. The plaint states that the trade mark Ventorlin of the plaintiffs is registered in India under number 459325 in class 5 in the name of plaintiff No. 2 and that the said registration has been duly renewed and is valid and subsisting on the Register. It is further stated that plaintiff No. 1 is the proprietary owner of the trademark Ventolin which is registered in India under number 255228 in Class 5 and the said registration is also valid and subsisting on Page 2835 the Register. The product directory of the plaintiffs is exhibited and marked as Ex. PW1/6 and a copy of the certificate of the registration of drug product registration in the name of Glaxo Hong Kong Limited and registrations in Australia, Thailand, Hong Kong and New Zealand are exhibited and marked as Ex. PW1/7 and Ex. PW 1/8 (colly) respectively.
4. It is stated that the products marked Ventolin of the plaintiffs have an excellent reputation which has been earned over a period of time due to extensive use, advertising and promotional campaign as also the Ventorlin, another product of the plaintiffs, which is also one of the well known products in India and Sri Lanka for treatment of symptoms of Asthma. The international sales, advertising and promotional figures for use of the mark/s Ventolin and Ventorlin in countries like Australia, New Zealand, Hong Kong, Thailand and Singapore have been detailed in para 10 of the plaint and para 12 of the affidavit of evidence of Mr. Rahul Sethi (PW 1).
5. It is stated that the defendants (defendant No. 2 of which defendant No. 1 is the Managing Director and defendant No. 4 an associated company of defendant No. 2 of which defendant No. 3 is the managing director) are indulging in the illegal activity of manufacturing and selling of pharmaceutical preparations under the trademark Etolin/Etollin which is deceptively similar to the plaintiffs? aforesaid trademarks amounting to infringement of the plaintiffs? registered trademarks.
6. It is the case of the plaintiffs that in July 2006, during the course of routine search of the Indian Trademarks Journal, the plaintiffs? attention was invited to the publication of the defendants mark Etolin in Journal No. 1337 (suppl. 1) dated 15-12-2005. In order to ascertain the extent of use of the said mark by the defendants, the plaintiffs held discreet inquiries and initiated steps to oppose its registration. The copy of the notice of opposition is exhibited and marked as Ex. PW 1/10. The inquiries made by the plaintiffs revealed that Etolin was an anti asthmatic product and Etollin, another product of the defendants having the same composition, was meant for international markets.
7. It is the plaintiffs? case that the registered marks Ventorlin and Ventolin are coined words having a distinctive character. The defendants have infringed the plaintiffs? marks by adopting Etonlin/Etollin mark/s which is phonetically and visually similar to the plaintiffs? marks causing immense loss, both monetary and otherwise to the reputation of the plaintiffs’ business and their products. It is further stated that since the defendants are in a trade akin to that of the plaintiffs for the same type of products within the same therapeutic area, it can cause confusion and deception in the minds of general public who may purchase defendants products assuming them to be emanating from the plaintiffs.
8. The defendants also maintain their website which lists out their product/s Etolin/Etollin.
9. Hence, the plaintiffs have filed the present suit in terms of Sub-clauses (i) to (vi) of the prayer clause detailed in para 25 of the plaint.
10. Summons were directed to be issued to the defendants vide order dated 02-03- 2007 returnable on 24-04-2007. The defendants neither Page 2836 filed the written statement nor filed reply to the injunction application after the service and, therefore, the defendants? right to file the written statement was closed vide order dated 21-08-2007 and the plaintiffs were directed to file the affidavit/s by way of evidence. Affidavit of Mr. Rahul Sethi, Constituted Attorney of the plaintiff no.1 was filed and he was examined as PW-1.
11. PW-1 in his affidavit affirmed the various averments made in the plaint. He also proved the copy of Power of Attorney in his favor given by the plaintiff no. 1 and in favor of the Constituted Attorney of plaintiff No. 2 as Ex. PW- 1/2, trade mark registrations as Ex. Nos. PW1/3 and PW 1/4, product directory as Ex. No. PW 1/6, copy of the certificate of registration of drug product registration in the name of Glaxo Hong Kong Limited and registrations in Australia, Thailand, Hong Kong and New Zealand is exhibited and marked as Ex. PW1/7 and Ex. PW 1/8 respectively and copy of the notice of opposition as Ex. PW1/10.
12. The aforesaid facts and circumstances show that the plaintiffs have the ownership of the aforesaid trademarks and therefore no other person has any right to use marks which are phonetically and visually similar to the plaintiffs marks as also such marks being coined words. The defendants have attempted to counterfeit the products of the plaintiffs and pass off their goods as that of the plaintiffs. The defendants have no right to use the aforementioned trade mark/s of the plaintiffs and that too in respect of same goods. This has not only caused loss of profits to the plaintiffs, but also resulted in inferior products being made available to the public at large who have been deceived by the conduct of the defendants by making the public to believe that the marks the defendants used were the valid and the incontestable marks of the plaintiffs. It cannot be lost sight of the fact that the defendants? mark is such that not only would an unwary purchaser be misled and deceived into buying the wrong product but it could in turn lead to disastrous consequences, the products being pharmaceutical products thus endangering human lives. In relation to the same, the judgment of Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd. 2001 (21) PCT 200 (SC) may be referred to wherein the Apex court observed as under:
Public interest would support lesser degree of proof showing similarity in the case of trade mark in respect of medicinal product as against other non- medicinal products. Drugs are poisons not sweets. Confusion between medicinal products may therefore be life threatening, not merely inconvenient.
13. The learned Counsel for the plaintiffs has also relied on a plethora of other judgments to support its case. In Remidex Pharma Private Limited v. Savita Pharmaceutical P. Ltd. and Anr. 2006 (33) PTC 157 (Del) the court while granting the injunction came to a conclusion that there was phonetic similarity between the two marks and the case of infringement was established. The landmark judgment of Amrit Pharmacy v. Satya Dev Gupta lays down the criteria to judge deceptive similarities between the rival marks.
Page 2837
14. Various averments made in the plaint have gone unrebutted as the defendants have not come forward with any defense. The plaintiffs have, therefore, been able to prove that the defendants have been infringing the aforesaid trademarks of the plaintiffs. Insofar as the prayer for damages is concerned, the learned Counsel for the plaintiffs has not been able to seriously substantiate the same as no evidence has been led in this regard.
15. In view of the aforesaid, a decree is passed for permanent injunction in favor of the plaintiffs and against the defendants restraining the defendants, their directors, partners, their officers, servants, agents and representatives from manufacturing, selling and offering to sale pharmaceutical preparations under the trademarks Etolin/Etollin especially in view of the mentioning of the impugned products on defendants? website and/or any other mark deceptively similar to the plaintiffs marks. The plaintiffs are entitled to a decree in terms of prayer Clauses 25 (i) and (ii). The plaintiffs shall also be entitled to costs.
16. Decree sheet be drawn up accordingly.
IA No. 2486/2007 (Under Order 39 Rule 1 and 2 CPC)
No further directions are called for in this application.
The application stands disposed of.