Himalaya Drug Company v. S.B.L. Ltd.
2013 (53) PTC 1 (Del.) (DB)
The Appellant filed a suit against the Respondent for infringement of trade mark Liv.52 by use of the trade mark Liv-T. The Learned Single Judge dismissed the suit of the Appellants holding that the mark ‘LIV’ is publici juris and there is no similarity between the two trademarks. ‘Liv’ will be considered as the generic on account of the fact that it is used in respect of medicine used for treatment of ailment of ‘LIVER’ and non-distinctive part of the mark and it is to be ignored even if the two rival marks are to be taken as a whole.
The Plaintiffs filed an appeal before the Hon’ble Division of the High Court of Delhi, whereby the Hon’ble Division Bench reversed the finding of the Learned Single Judge and upheld the clear principles of Trade Mark law of comparison and infringement. The Division Bench also differentiated the present case, with the test of residual portion of marks whereby generic components of the trademarks are separated for comparison of marks.
The Division Bench of the Hon’ble Court held that the onus of proving that the term ‘LIV’ has become generic lied heavily on the Defendant, more so in the light of the fact that the Trade Mark of the Plaintiff had voluminous sales, was being used since the year 1955 and was registered since the year 1957 and as seven years had expired from the date of the registration, the Registration of the trade mark the trade mark was taken to be valid as per Section 32 of the erstwhile Trade Marks Act, 1958.
The Defendant could not prove by way of it’s evidence that the word ‘LIV’ is generic. The Plaintiff on the other hand proved the distinctiveness of it’s mark by way of it’s evidence by providing the orders where the mark ‘LIV.52’ has been granted protection. The Court also relied on the fact, there is no disclaimer on the Plaintiff’s registration. The validity of the Trade Mark has also not been challenged by the Defendant. Defendant itself has applied for registration of the mark ‘LIV.T’. There are no other labels or products on record where the word ‘LIV’ is written in capital words in isolation or coupled by alphabets or numerals. The Division Bench also noted that other then the Single Judge no other Court of Tribunal has held ‘LIV’ to be generic. The Division Bench also noted that consumer asked for Plaintiff’s product as Liv.52 thus ‘LIV’ was the essential and prominent feature of the mark ‘LIV.52’. Thus the Court over-ruled the test of residual portion of marks as followed by the single judge in peculiar facts and circumstances of the present case, and restrained the Defendant from using the mark ‘LIV-T’. However, as the counsel for the Plaintiff had given consent to use of the word ‘LIV’ with another vowel and then use with ‘T’ or as one word like ‘LIVOT’ or ‘LIVIT’, etc. thus Court allowed the Defendant to amend it’s mark accordingly to a mark which will not be similar to the mark of the Plaintiff.
Remark: The Judgment is important as it shifts away from the test of residual portion of marks, and relies on the distinctiveness of a trademark, whose origin per se is generic.
Author: Ankit Rastogi