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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:
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.
2
The mark has been used continuously since 1994. The Plaintiff has,
incidental thereto, prepared and used labels and promotional material
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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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%.
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
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,
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
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
imperfect recollection into confusing the mark of the Defendant for the
paragraph 10 of the plaint and is summarised thus, therein:
PLAINTIFF'S
PRODUCT DEFENDANT'S
PRODUCT
Identical placement of 4 Identical placement of 4
diagrams, indication of Low Back diagrams, indication of Muscular
Pain, Joint Pain, Sprains and Pain, Joint Pain, Sprains &
Strains and Muscular Pain. Strains and Low Back Pain.
Posture of running man Symbol of running man.
Colour scheme in Mauve colour Colour scheme in Mauve colour in
in bold typeface with white bold typeface with white
background and white coloured background and white coloured
carton. carton.
Written “For Quick relief from Written “For Quick relief from
Pain, Swelling and Inflammation.” Pain, Swelling and Inflammation.”
Placement of trademark VOLINI Placement of trademark
GEL. 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.
Injunctive reliefs, a direction for disclosure and the appointment of a
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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.
contained in the Plaint and the additional affidavit have been pressed
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
decade after the Plaintiff had established a significant reputation and
attempted to pass off its goods as those of the Plaintiff. The colour
7
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
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
8
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
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)
commenced from July 2006 whereas the suit is stated to have been
commencement of user by the Defendant.
9
7. These submissions now fall for determination.
preparation. VOLINI is an invented word. The registration of the word
mark by the Plaintiff confers upon the Plaintiff, the exclusive right to
Sections 28 and 29 of the Trade Marks Act, 1999. The Defendant
“sometime in late 2005” and the application for the registration of the
word mark VONIGEL was made on 10th March 2006. Since July
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
10
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
characteristic of the mark which has been adopted by the Defendant
is the prefix “VONI” which occurs before the “GEL”. To the average
Plaintiff is the registered proprietor. The average purchaser is liable
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
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
11
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
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
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
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
12
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
Defendant, the firm has used carton for about eight years. The reply
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
13
expenditure incurred on sales promotion have been furnished. The
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.
clever disguise for passing off its own product – VONIGEL – as 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
14
representation. The carton of the Plaintiff contains four line diagrams
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 'd
ancing man' a
s 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
purveys. A rapidly advancing industrial economy as in India can ill
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
Plaintiff. The word mark, colour scheme, layout and get up adopted
by the Defendant are deceptively similar.
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
16
demonstrate before the Court that there are other products in the
market which fall in the same segment of pharmaceutical preparations
diagrams as those which have been adopted by the Plaintiff. Now, in
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
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
17
marks had acquired a reputation by user in the market. ...
Nothing of the kind has been established before the Court by the
Defendant.
case for the grant of interlocutory relief has been made out. The
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
3 1994(1) PTC 117
18
case here. On the contrary, material has been placed by the Plaintiff
infringements of its mark and attempts at passing off. Reference in
that connection is made to the proceedings which have been adopted
High Court.
17. For all these reasons, I am of the view that the grant of
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
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
19
(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 this
Hon' 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'b le
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 in
the 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
20
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 bills
and 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.
.......