JUDGMENT
C.K. Mahajan, J.
1. Plaintiff has filed the present suit for permanent injunction, infringement of trademark, passing off, rendition of accounts and delivery up against the defendants.
2. Briefly the facts are that the plaintiffs are the owners of the trademark “Ostocalcium” in respect of medicinal and pharmaceutical preparations. Plaintiffs are also stated to be the owners of the trademark “Ostocalcium Vet” in respect of veterinary preparations and medicated additives to feed and foodstuffs for animals and birds. The trade mark Ostocalcium is being used by the plaintiffs in a distinctive packing material. The packing material carton is the original artistic work which has been designed by the plaintiffs. The sale figures for the products of the plaintiffs run into several crores of rupees. The plaintiffs have also spent considerable amount of money on popularising the trademarks. The trademarks of the plaintiffs have acquired goodwill and reputation in India as well as in the international markets.
3. It is stated that the defendant is manufacturing and selling the same veterinary products for animal feeding under the trade mark “Oscal-Vet, D3” which is the short name of the plaintiffs’ trademark Ostocalcium and is deceptively similar amounting to infringement and passing off. A notice was sent to the defendant calling upon it to stop using the trademark Oscal-Vet, D3 and the device of Oscal-Vet and from using the artistic work of the plaintiff in the carton/packing material in respect of its colour scheme and get-up which is deceptively similar to the packing material of the plaintiff. It is also stated that the packing material used by the defendant is similar to that of the plaintiffs which amounts to infringement of plaintiffs’ artistic work. The defendant has copied the colour scheme, get-up and layout and colour combinations. The use of the trademark Oscal by the defendant amounts to infringement of plaintiffs’ trademarks. The act of the defendant is mala-fide with an intention to encash upon the goodwill and reputation of the plaintiffs. The defendants are passing off their goods as those of the plaintiffs. The actions of the defendant’s actions have caused immense loss and injury to the plaintiffs’ name, reputation and goodwill.
4. During the pendency of the suit, the plaintiff filed an application under Order 22 Rule 10, CPC praying for substituting the name of M/s. Glaxo Smith Kline Pharmaceuticals Limited in place of M/s. Glaxo India Limited on account of the merger of the plaintiff with Smith Kline Beecham Pharmaceuticals (India) Limited. The said application was allowed on 4th January, 2002.
5. Summons of the suit were served on the defendant. However, the defendant chose not to appear and it was proceeded ex parte on 17th May, 2001. The plaintiff was allowed to lead ex parte evidence by way of affidavits. The plaintiff has filed evidence by way of affidavit of Mr. K.K. Master, Vice President (Legal Affairs and Licensing) and constituted attorney of the plaintiff. Documents were also exhibited.
6. Mr. Master has deposed that the plaintiff is the registered owner and user of the trademarks “Ostocalcium” and “Ostocalcium Vet” in respect of veterinary preparations and medicated additives to feed and foodstuffs for animals and birds. The trade mark Ostocalcium is being used by the plaintiffs in a distinctive packing material. The packing material carton is the original artistic work which has been designed by the plaintiffs. He has also deposed that the sale figures for the products of the plaintiffs run into several crores of rupees. The plaintiffs have also spent considerable amount of money on popularising the trademarks. The trademarks of the plaintiffs have acquired goodwill and reputation in India as well as in the international markets.
7. The deponent has stated that in August, 2000, the plaintiffs came to know that defendant is manufacturing and selling the same veterinary products for animal feeding under the trade mark “Oscal-Vet, D3” which is deceptively similar to the plaintiffs’ trademark Ostocalcium. The deponent has proved that a notice (Exh. P2) was sent to the defendant calling upon it to stop using the trademark Oscal-Vet, D3 and the device of Oscal-Vet and from using the artistic work of the plaintiff in the carton/packing material in respect of its colour scheme and get-up. The deponent has also proved that the packing carton (Exh. P3) used by the defendant is similar to that of the plaintiffs. It is also deposed that the defendant has copied the colour scheme, get-up and layout and colour combinations. The use of the trademark Oscal by the defendant amounts to infringement of plaintiffs’ trademarks. The act of the defendant is mala-fide with an intention to encash upon the goodwill and reputation of the plaintiffs. The defendants are passing off their goods as those of the plaintiffs. The defendant’s actions have caused immense loss and injury to the plaintiffs’ name, reputation and goodwill.
8. In the present case, two questions arise, (i) whether the defendant is infringing the plaintiff’s registered trademark; and (ii) whether the defendant is passing off its goods as those of the plaintiff.
9. According to Section 29 of the Trade and Merchandise Marks Act, 1958, a registered trademark is infringed by a person not being a registered proprietor of the trademark, used in course of trade, a mark which is identical with or deceptively similar to the trademark in relation to goods in respect of which the trademark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trademark. The defendant has adopted the essential features of the plaintiff’s registered trademark. The use of the mark Oscal-Vet, D3 by the defendant is likely to deceive the general public. The trademark of the plaintiff and that of the defendant are visually similar. The defendant has also adopted the essential features of the plaintiff’s trademark. In Durga Dutt Sharma v. N.P. Laboratories, , it was held as under:
“. …In an action for infringement the plaintiff must, no doubt make out that the use of the defendants mark is likely to deceive but where the similarity between the plaintiffs and the defendants mark is so close, either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated. Expressed in another way, if the essential features of the trademark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff….”
10. In Atlas Cycle Industries v. Hind Cycles Limited, 1973 (1) 2nd Delhi 393, it was held as under:
“In an action for an alleged infringement of a registered trademark, it has first to be seen whether the impugned mark of the defendant is identical with the registered mark of the plaintiff. If the mark is found to be identical, no further question arises, and it has to be held that there was infringement….”
11. In Taw Manufacturing Coy Ltd. v. Notek Engineering Coy Ltd. and Anr., Vol. 68 RPC 271, it was held as under:
“A trademark is infringed if a person other than the registered proprietor or authorised user use, in relation to goods covered by the registration, in or more of the trademarks particulars. The identification of an essential feature depends partly upon the Courts own judgment and partly upon the burden of the evidence that is placed before the Court….”
12. The plaintiff designed the carton Annexure “A”. The carton has three basic colours, namely, pink, white and yellow. The upper portion of the carton is in pink colour where the words “Ostocalcium Vet” are written in a characteristic manner in white. The descriptive matters written in black letters which are “Liquid Supplement of Calcium, Phosphorus, Vitamin D3 and B12 for animal feeding’ and immediately thereafter two black colour strips have been shown in between white colour and the picture of animals are shown. The bottom portion of the carton is yellow in colour containing description of price and other directions.
13. In the present case, the plaintiff is using the trademark in respect of medicinal and pharmaceutical preparations as well as in respect of veterinary preparations and medicated additives to feeds and foodstuffs for animals and birds. The use of the mark Oscal-Vet D3 by the defendant in respect of the same veterinary products for animal feeding under the mark Oscal-Vet D3 amounts to infringement of the plaintiff’s trademark Ostocalcium.
14. I have also examined the defendant’s carton marked Annexure ‘X’, the defendant is offering and selling the product under the trademark “Oscal-Vet, D3 which is an abbreviation of the plaintiff’s registered trademark Ostocalcium which is deceptively similar to the mark of the plaintiff. The carton/packing material of the defendant is a slavish copy of the plaintiff’s artistic work/copyright in material form in the colour scheme, get-up, layout, colour and combination. With the intention to cash upon the goodwill and reputation built up by the plaintiff, the defendant is passing off its goods as those of the plaintiff. The goods are identical, class of customers and channels of trade are identical. The goods are sold in the same shops and counters to a class of customers. The packaging used by the defendant is identical to that of the plaintiff and amounts to infringement of plaintiff’s artistic work/copyright in material form.
15. What is to be seen in a case of passing off action is the similarity between the plaintiff’s mark and the offending mark of the defendant and to determine whether there is any likelihood of deception of confusion. Besides whether the cartons of the defendants are deceptively similar to those of the plaintiffs. It would be clear from the decisions of the Supreme Court in National Sewing Thread Co. Ltd. Chidambaram v. James Chadwickand Bros. Ltd., ; Amritdhara Pharmacy v. Satya Dev Gupta, ; and F. Hoffmann-Pa Rocke and Co. Ltd. v. Geoffrey Mannered Co. Pvt. Ltd., . Common features have been copied by the defendant. The words Ostocalcium Vet and Oscal are in use in respect of the same description of goods. They are purchased by people who may come from rural background and from a town, literate as well as illiterate. To a person of average intelligence and imperfect recollection as observed by the Supreme Court, the overall structural similarity is likely to cause confusion, more so when the cartons are similar in almost all respects.
16. In order to create a valid cause of action of passing off, there must be misrepresentation made by a person in the course of trade to prospective customers of his or ultimate consumers of goods or services supplied by him, which is calculated to injure the business or goodwill of another trade and which causes actual damage to a business or goodwill of the trader by whom the action is brought. I draw support from a decision of Lord Diplock in Erven Warnick v. Tonmend, (1980) RPC 31. The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., II(2001) CLT 124(SC)=AIR 2001 SC 1951, observed as under:
“….Public interest would support lesser degree of proof showing confusing similarity in the case of trademark in respect of medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Nothing the frailty of human nature and the pressure placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations….”
It was further observed that:
“….While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors….”
17. On a comparison of both the cartons of the plaintiff and the defendant, I am satisfied that the defendant is infringing the trademark of the plaintiff and passing off its goods as those of the plaintiff. The right of the plaintiff in the goods is injured.
18. From the averments made in the plaint as well as the affidavit filed by way of ex parte evidence and in the absence of any evidence in rebuttal, I have no reason to disbelieve the contentions of the plaintiff. The defendant has neither contested the suit nor repudiated the evidence adduced by the plaintiff. The carton used by the defendant is deceptively similar to that of the plaintiff. The carton used by the defendant has come to be associated with the product of the plaintiff. I am satisfied that the plaintiff is entitled to a decree for permanent injunction and rendition of accounts.
19. Accordingly, a decree for permanent injunction restraining the defendants from manufacturing, selling, offering for sale and distributing pharmaceutical and veterinary preparations under the trademark Oscal-Vet, D3 or any other trademarks which are deceptively similar to the plaintiff’s trademark Ostocalcium/Ostocalcium Vet and from using the packing material pertaining thereto which is identical or deceptively similar colourable imitation of the plaintiff’s packing material is passed in favor of the plaintiff and against the defendant.
20. A decree for delivery of all the offending material, dies, plates and other instruments and printing material cartons and strips bearing the infringing trademark to the plaintiff for their destruction is also passed in favor of the plaintiff and against the defendant. The defendant is also directed to render accounts of profits earned by it on account of sale of pharmaceutical preparations under the mark Oscal-Vet, D3. On such rendition of accounts, the defendants are further directed to pay the amount so found due to the plaintiff. The plaintiff shall also be entitled to costs of the suit.
A decree sheet be prepared accordingly. The suit stands disposed of.
