Passing off of Trade Mark
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United Biotech (P) Ltd (Plaintiff)
Schon Pharmaceuticals Ltd (Defendant )
2010 (42) PTC 103(Del.)
TAZIN v/s. TAZIN
LAW OF PASSING OFF PREVENTS COMMERCIAL DISHONESTY REPRESENTING ONE'S GOODS AS THE GOODS OF SOMEBODY ELSE
The plaintiff has filed the suit for permanent injunction, passing off, rendition of accounts of profits / damages and delivery up etc against the defendant.
Passing off of Trade Mark
The plaintiff claims to be one of the fastest growing and reputed pharmaceutical company in India engaged in the manufacturing and marketing drugs and formulation since the year 1997. The Plaintiff declares that it has dedicated specialty therapy in areas like oncology medicinal preparation for the treatment of cancer. The plaintiff states that one of the medicinal preparations manufactured and marketed by it is piperacillin and tazobactam under the trade mark TAZIN which is a semi-synthetic antibiotic and is used in therapy for appendicitis and peritonitis, uncomplicated and complicated skin and soft issue infection, pelvic inflammatory disease, community acquired or nosocomial pneumonia, febrile neutropenia etc.
The plaintiff entered into an agreement with Schon Pharmaceuticals Limited the defendant herein for the purpose of manufacturing the said pharmaceutical preparation under its trade mark TAZIN in the year 2001. The plaintiff submits that as a matter of record, no manufacturing activity was undertaken by the defendant herein for the plaintiff's products, being sold under the trade mark TAZIN. The plaintiff submits that even prior to agreement the plaintiff has been marketing its drug under the trade mark TAZIN. The plaintiff has spent enormous money to promote the sale of the said medicinal preparations bearing the trade mark TAZIN in medicinal journals, bulletins, etc and also promoted it by way of leaflets, booklets and other visual aids in respect of the said preparations. The plaintiff enjoys formidable reputation and goodwill and has been very widely accepted all over the country for the medicinal preparations under the trade mark TAZIN.
The plaintiff submits that after the expiry of the agreement with the defendant, the plaintiff came to know that the aforesaid medicines comprising of the same salts was being manufactured by the defendant under the same trademark TAZIN. The plaintiff immediately cautioned the defendant by writing letters calling upon the defendant to stop manufacturing and marketing the said product under the said trade mark TAZIN. Then after, the defendant is stated to have discontinued the infringing activity. In the year 2008 the plaintiff through its sales representatives learnt that the defendant has restarted manufacturing and selling spurious medicinal preparations under the trade mark TAZIN. The Plaintiff stated that defendant knowingly and deliberately adopted an identical trade mark TAZIN with malafide intention to cause confusion and deception about the source of the goods and marketed under the said trade mark.
The plaintiff submits that the use of the trade mark TAZIN by the defendant constitutes an act of misrepresentation of the source and origin, and leads to misappropriation of the goodwill and reputation enjoyed by the plaintiff's trade mark TAZIN. It is stated by the plaintiff that the use of the trade mark TAZIN by the defendant is bound to lead to passing off of the defendant's goods and business for those of the plaintiff. It is also stated that the defendant also constitutes an act of unfair competition as the mark TAZIN is identical trade mark for identical drug of the plaintiff.
It is stated that the summons in the suit were issued to the defendant and an ex parte ad interim order was granted in favour of the plaintiff. It is submitted by the plaintiff that immediately local commissioner was also appointed to visit the premises of the defendant and to seize and take into custody the infringing article in possession of the defendant. The local commissioner has inspected the premises of the defendant and filed a list of inventory along with his report containing the details of infringing material found at the premises of the defendant containing the mark TAZIN.
Hon‘ble High Court of Delhi held that the defendant is trying to trade upon the plaintiff's goodwill and reputation associated with the drug piperacillin and tazobactam, thus causing loss to the plaintiff company. The defendant is indulging in the acts of passing off by representing its business as that of the or associated with the plaintiff by using the impugned trade mark / name of the plaintiff. The defendant has defrauded the general public and is likely to continue to mislead / deceive or confuse the potential customers into believing that the defendant has the approval or license from the plaintiff. It is also held that the law of passing off prevents commercial dishonesty representing one's goods as the goods of somebody else. The suit of the plaintiff is accordingly decreed. The relief of damages as prayed is granted as compensatory damages and as punitive / exemplary damages. The plaintiff also entitled for the costs in the proceedings.
Modi Mundi Pharma Pvt. Ltd (Plaintiff)
Matrix Formulations & Anr.(Defendant)
2010 (42) PTC 72 (Del.)
CONTIN v/s. NEUROCONTIN
USE THE PART OF THE SERIES MARK WOULD DEGRADE OR DILUTE THE DISTINCTIVENESS AND REPUTATION OF THE MARK
The plaintiff company was established in the year 1990 and is engaged in manufacturing, development and marketing of high quality pharmaceutical formulations. The plaintiff is the proprietor of the registered trade mark CONTIN in respect if pharmaceutical preparations. The plaintiff is also the proprietor of other trademarks in the series containing CONTIN as a common feature including CONTINUS, DILCONTIN, NITROCONTIN, ACRONTIN, BUCONTIN, CORNNUCONTIN, DIUCONTIN-F, FECONTN-F etc. The word CONTIN is a family series of trade mark. By virtue of long, continuous and extensive use of the trade mark CONTIN as suffix and/ or prefix the plaintiff has acquired an immense reputation and goodwill in the market. The plaintiff claims to be entitled to the exclusive use of the trade mark CONTIN family/series marks with respect to the pharmaceutical products.
The representatives of the plaintiff came across a pharmaceutical product bearing the name NEUROCONTIN which was being manufactured and marketed by the defendants. The plaintiff has sent a legal notice to the defendants to cease and desist from using the trade mark CONTIN on its product name NEUROCONTIN. The plaintiff states that the use of the trade mark CONTIN by the defendant in their name NEUROCONTIN amount to infringement of the trade mark which is registered in the name of the plaintiff. The plaintiff further stated that the use of the trade mark CONTIN by the defendants in their name NEUROCONTIN would lead the consumer, being a person name of reasonable intelligence and imperfect recollection, to believe that the same is associated with the large range of pharmaceutical products being manufactured and marketed by the plaintiff which bear the trade mark CONTIN either as their prefix and / or suffix and that it forms part of the plaintiff's family marks. The plaintiff contended that the conduct of the defendants leads to passing off their products as that of the plaintiff and amounts to riding upon the goodwill and reputation earned by the plaintiff in the CONTIN family/ series of marks. It is submitted by the plaintiff that it will also cause confusion and deception in the minds of the general public about a connection or affiliation of the defendant's products with that of the plaintiff's product.
In reply to the legal notice given by the plaintiff, the defendants admitted that they have been using the mark NEUROCONTIN and it will discontinue its use. Further more the plaintiff has also been able to demonstrate that the defendants are engaged in the sale of NEUROCONTIN by filing the invoice showing the purchase of defendant's product and its present carton and packaging bearing the trade mark NEUROCONTIN.
Hon'ble High of Delhi held that the continuous use of the trade mark NEUROCONTIN by the defendants would tarnish, degrade or dilute the distinctiveness of the plaintiff's mark and its reputation. It is also likely to deceive or cause confusion in the minds of the general public as the trade mark of the defendant resembles that of the plaintiff. The acts of the defendants also amounts to passing off as representation by the defendants by the name NEUROCONTIN in the course of trade to prospective customers might lead to the belief that the products of its manufacture belong to or are associated with the plaintiff. The plaintiff has established the case for passing off and injunction. The suit of the plaintiff is thus decreed.
Contributed by : Sejal Shah - Trademark Agent
Edited By : Ketan Bhatt - Trademark Attorney
Designed By : Vikash Singh