Blue Cross Laboratories Ltd. Vs. RB Remedies Pvt. Ltd.
IN THE HIGH COURT OF BOMBAY
Decided On: 27.01.2015
Plaintiff was registered proprietor of the trade mark ‘CEDON’ as of 14.08.1996 in respect of pharmaceutical products.
In August 2014, the Plaintiff learnt about the use of the mark ‘CEFDON’ by Defendant in respect of similar goods, namely, antibacterial dry cough syrup.
The Defendant was located outside the jurisdiction of Bombay High Court and the cause of action for passing off had arisen outside the jurisdiction of this Court. In light of the same, the Plaintiff filed a leave petition for combining the two causes of action, i.e. infringement of trade mark as well as passing off.
The said special leave was allowed to the Plaintiff on three grounds:
(i) As the same set of facts, as those alleged in respect of the cause of action of infringement, were the foundation of the plea of passing off.
(ii) To avoid multiplicity of proceedings
(iii) No prejudice was likely to be caused to the Defendant thereby.
• Plaint has been affirmed on behalf of the Plaintiff by an unauthorized person. Plaintiff has not produced on record any resolution passed by its Board of Directors for instituting the suit herein or authorizing the signatory to affirm the plaint on its behalf; and that therefore, having regard to Section 291 of the Companies Act read with Order 29 Rule 1 of CPC, the Plaintiff is barred from instituting the Suit, requiring rejection of its plaint under Order 7 Rule 11.
• The Defendant has adopted the mark CEFDON honestly. Principal drug used in the product is Cefpodoxime, from which the Defendant has coined the word ‘CEFDON’ and adopted it in respect of its goods, just as the Plaintiff has coined the word ‘CEDON’ from Cefpodoxime.
• The present suit suffers from delay as the Defendant has been using the mark CEFDON since 2008.
• Goods in respect of which the parties’ respective trademarks are used are Schedule H drugs sold only on prescriptions of medical practitioners and there is no likelihood of any confusion amongst the buying public.
• Plaintiff’s trade mark being descriptive of the particular drug used in its preparation, no monopoly can be claimed by the Plaintiff.
• ‘CEDON’ and ‘CEFDON’ contain common elements which are commonly used in the trade.
On the issue of authority of the signatory of the Plaint
Under Order 29 Rule 1, in a suit by or against a corporation any pleading may be signed or verified on behalf of the corporation by its Secretary. Suresh Mahalingam is the Company Secretory of the Plaintiff Company. The Plaintiff has produced the requisite Form 32 filed in respect of his appointment.
The plaint has, thus, been affirmed properly. In any event, the question, namely, whether or not the signatory of a pleading is authorised to affirm a pleading or institute the suit or proceeding, is a question which arises in the trial of the suit. The suit cannot be said to be barred by any law within the meaning of Clause (d) of Rule 11 of Order 7, if the authority of the signatory and declarant is not produced with the plaint or shown to exist at the time of filing of the suit.
On honesty of adoption
The Defendant claims to have adopted the word ‘CEFDON’ as its mark honestly. Honesty of adoption by itself is no defence to the action of infringement, though it may have some relevance from the point of view of a passing off action.
The Defendant claims to have adopted the word ‘CEFDON’ from the name of the principal drug contained in the product, namely, Cefpodoxime. This may per se be an honest adoption, but then there was the Plaintiff’s trade mark ‘CEDON’ already on the Register. The Defendant could only be said to have adopted its mark ‘CEFDON’ at its own peril. Any actual intention on the part of the Defendant to pass off his goods as those of the Plaintiff is not an essential ingredient of a passing off action. It is sufficient if there is a likelihood of the goods being so passed off.
It is a well settled position of law that mere delay, without anything more, is never regarded as a good defence to an infringement action. Defendant claims to have used the mark for about five years. The sales of Defendant through this period are not significant enough to impute the Plaintiff with any knowledge of the Defendant’s use of the mark – leave aside any intention of abandonment of the right to relief.
On similarity of marks/likelihood of confusion
Marks ‘CEDON’ and ‘CEFDON’ per se appear to be deceptively similar. There is sufficient phonetic and visual similarity between the two marks, leading to a palpable possibility of confusion.
The test to be adopted is still is, whether an unwary customer, who goes to purchase the medicine, may end up mistakenly buying one medicine in place of the other. The factors leading to the mistake may be many. In the first place, a close phonetic and visual similarity may lead to a mistake on the part of the prescribing doctor in writing the name of the medicine, more so because of the same principal drug contained in the two medicines. It may even be a case of misspelling. The dispensing chemist may make a mistake in reading the name or even slur over it. Besides, it is well known that in practice, medicines of common ailments such as cough and cold are sold in our country without insisting on prescriptions. Closer the similarity of the two marks, the greater the chances of such mistakes. Thus, one will have to go by the degree of similarity between the two marks.
The goods bearing the two trade marks contain the same generic drug; bear the same potency; and the two marks very nearly resemble each other. The whole of the Plaintiff’s mark ‘CEDON’ is copied in the Defendant’s mark with merely the addition of the alphabet ‘F’ between ‘E’ and ‘D’. It lends a very high degree of visual similarity to the two marks. Even phonetically, the similarity is of a very high order. The marks contain two phonetic phrases each, ‘CE’ and ‘DON’ in ‘CEDON’, and ‘CEF’ and ‘DON’ in ‘CEFDON’. The pronunciation of the alphabet ‘F’ as a component of the phonetic element formed by ‘CEF’ does not materially alter the overall phonetic effect of the word ‘CEFDON’ from that of ‘CEDON’.
On descriptive nature of the Plaintiff’s mark ‘CEDON’
Though the Plaintiff’s trade mark, just as the Defendant’s, appears to be derived from the name of the principal drug used in the product, i.e. Cefpodoxime, it cannot be said to be descriptive. It is a known fact that names of pharmaceutical products are often coined from the names of the drugs used in them. It facilitates the medical practitioners’ recollection of the products with reference to the drugs used in them. Unless the word thus coined so closely resembles the name of the drug/s from which it is derived, it cannot be a case of description of the product. In the present case, the Plaintiff’s mark does not describe the product. It cannot be called generic as opposed to distinctive.
On the words ‘CEDON’ and ‘CEFDON’ being common to trade
The Defendant has not produced any material or shown that the word ‘CEDON’ or alphabets forming it are of common use in the trade by reason either of the name of the principal drug being used commonly to form marks in relation to similar medicines or otherwise. It is not shown that the two marks ‘CEDON’ and ‘CEFDON’ contain common elements which are also used in the trade. This is a matter of fact and unless there is evidence of extensive use of a common element in the trade, it is not possible to deny interim relief to the registered proprietor on this ground.
On importance of a registered trade mark
The monopoly is derived from its registration. The registration is prima facie proof of its registrability, that is to say, its being distinctive and not descriptive and its being capable of being accordingly registered. By relying on its registration, the Plaintiff can certainly claim an injunction against an identical or descriptively similar trade mark.
The application of the Plaintiff for interim relief was allowed.