JUDGMENT
J.D. Kapoor, J.
1. The plaintiff is the owner of registered trade
mark GLAXO of Glaxo India Limited Company incorpoorated
under the laws of England. Glaxo is one of the world’s
leading research based pharmaceutical companies. The
plaintiff is one of the main respective 10 companies of
India who have residual reputation of trade mark GLAXO.
After from this the plaintiff has been using the mark
GLAXO in a special manner which has an artistic work
within the meaning of Section 2(c) of the Copy Right Act
which encompasses painting, a sculpture, a drawing,
engraving or a photograph etc.
2. It is averred that during the fourth week of
July 2000 the plaintiff came across a medicine namely
ORTHODE manufactured and marketed by the defendant. On the
said product it was written that the ‘product is
cooperated by Glaxo Ayurvedi Limited’. In the price list
also the defendants have been using the said trade mark
GLAXO with effect from 1st April, 2000. According to the
plaintiff he has got no company in the name of Glaxo
Ayurvedi Limited nor have they authorized the defendant to
use the mark ‘Glaxo. Since the defendant is making
mis-representation in the public at large and is
circulating the price list all over India it gives an
impression that the defendant has got relation or
connection with the plaintiff or has got some authority to
use the said name. It is averred that the expression
‘co-operated with GLAXO Ayurvedi Ltd.’ is an essential
feature of the defendants’ name and is, therefore, a
calculated move which is intended to deceive the public
and to trade upon the plaintiff’s goodwill, name and
reputation as it deals with the same set of customers.
They are likely to be confused and deceived as they would
not be able to distinguish the goods of the plaintiff and
defendants.
3. Despite service of the summons of the suit the
defendant did not put in appearance to contest the suit
and was proceeded ex parte.
4. In order to establish its claim the plaintiff
has proved the following documents :-
(i) Exhibit A-1 is the copy of the power of
attorney executed by the plaintiff company in favor of
the Mr. K.K. Master.
(ii) Exhibit A2 is the registered certificate of
the trade mark Glaxo.
(iii) Exhibits P3 and P4 are the copies of the
registration certificates of the Trade Mark. It still
subsists in the Register of the Trade Marks.
(iv) Exhibit P3 and P4 are the copies of the
registration certificates of the Trade Mark. It still
subsists in the Register of the Trade Marks.
(iv) Exhibit A-5 is the report in the business
world containing the article “India’s Most 10 companies
who have residual reputation”. The plaintiff’s name
figured in the said article.
(v) Exhibits P1 and P4 are the material of the
goods manufactured and marked by the plaintiff company
with the trade mark Glaxo used on the said list showing
artistic work within the meaning of Section 2(c) of the
Copy Right Act.
5. In view of the aforesaid averments duly supported
by affidavit and the documents filed by the plaintiff, it
is apparent that the word ‘GLAXO is invented word and
forms essential feature of the plaintiff’s corporate name.
By virtue of the original adoption, registration, long and
continuous user, the plaintiff alone have become entitled
to the exclusive user of the trade mark GLAXO in India and
no one else can use the same name without the plaintiff’s
written permission. It has also statutory right to
protect it under Section 28 of Trade & Merchandise Marks
Act, 1958 which is as follows:-
(1) Subject to the other provisions of this
Act, the registration of a trade mark in Part A or
Part B of the register shall, if valid, give to the
registered proprietor of the trade mark the
exclusive right to the use of the trade mark in
relation to the goods 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.
(2) The exclusive right to the use of a trade
mark given under Sub-section (I) shall be subject
to any conditions and limitations to which the
registration is subject.
(3) Where two or more persons are registered
proprietors of trade marks, which are identical
with or nearly resemble each other, the exclusive
right to the use of any of those trade marks shall
not (except so far as their respective rights are
subject to any conditions or limitations entered on
the register) be deemed to have been acquired by
any of those persons as against any other of those
persons merely by registration of the trade marks
but each of these persons has otherwise the same
rights as against other persons (not being
registered users using by way of permitted use) as
he would have if he were the sole registered
proprietor.
6. Similarly the plaintiff is also entitled to
protect its Copyright registered under the Copyright Act,
1958 as it falls within the definition contained Section
2(c) of the Act. It reads like this:-
“artistic work” means,-
(i) a painting, a sculpture, a drawing
(including a diagram, map, chart or plan), an
engraving or a photograph, whether or not any such
work possesses artistic quality;
(ii) an [Work of architecture]; and
(iii) any other work of artistic
craftsmanship;
7. Any person having long, continuous and prior
use of any non-descriptive, invented and individual mark
having peculiarities of its own in the business has a
right to protect its mark from infringement by way of
either identical mark or mark having deceptive
similarities in look and sound and its artistic work as to
its lay out or colour combination or other distinguished
features. There is statutory protection if these are
registered under The Trade and Merchandise Marks Act or
Copy Rights Act respectively and if not the redressal is
against the offence of pasing off as grave injustice is
occasioned if the trade name of a person being in long,
continuous and exclusive use is either adopted in full or
has elements or deceptive similarity or confusing
identitiy as to its source and origin with an ulterior
motive to trade and thrive upon the reputation and
goodwill of the earlier user.
8. If the infringing party adopts such a trade mark
in respect of the same subject of goods which the
aggrieved party is dealing in it is tantamount to not only
deceiving the customers but also results in dilution of
the trade mark.
9. In view of the aforesaid position of law with
regard to the right of the plaintiff to protect this
trade mark as well as the Copyright under the Copyright
Act, the suit of the plaintiff is decreed in respect of
the prayer made in the suit. Decree sheet be drawn
accordingly.