BLUE CROSS LABORATORIES LTD. VS.

RB REMEDIES PVT. LTD.

February 6, 2015 by Ankit Rastogi in Intellectual Property Rights, Passing Of,Trade Mark.

Blue Cross Laboratories Ltd. Vs. RB Remedies Pvt. Ltd.

IN THE HIGH COURT OF BOMBAY

Decided On: 27.01.2015

Plaintif was registered proprietor of the trade mark CEDON as of 14.08.1996 in respect of
pharmaceutical products.

In August 2014, the Plaintif 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 of had arisen outside the jurisdiction of this Court. In light of the same,
the Plaintif filed a leave petition for combining the two causes of action, i.e. infringement of
trade mark as well as passing of.

The said special leave was allowed to the Plaintif 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 of.

(ii) To avoid multiplicity of proceedings

(iii) No prejudice was likely to be caused to the Defendant thereby.

Defendants Case:
Plaint has been affirmed on behalf of the Plaintif by an unauthorized person. Plaintif 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
Plaintif 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 Plaintif has coined the word CEDON from Cefpodoxime.

The present suit sufers 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.

Plaintifs trade mark being descriptive of the particular drug used in its preparation, no
monopoly can be claimed by the Plaintif.

CEDON and CEFDON contain common elements which are commonly used in the trade.

Held:
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 Plaintif Company. The Plaintif 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 of 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 Plaintifs 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 of his goods as those of the Plaintif is not an
essential ingredient of a passing of action. It is sufficient if there is a likelihood of the goods
being so passed of.

On delay
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 Plaintif with any knowledge of the Defendants 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 Plaintifs
mark CEDON is copied in the Defendants 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 efect of the word CEFDON from that of CEDON.

On descriptive nature of the Plaintiffs mark CEDON

Though the Plaintifs trade mark, just as the Defendants, 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 Plaintifs 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 Plaintif can certainly claim
an injunction against an identical or descriptively similar trade mark.

The application of the Plaintif for interim relief was allowed.

KAVERI HOTELS PRIVATE LIMITED VS.

INTELLECTUAL PROPERTY APPELLATE
BOARD & ANR.
February 6, 2015 by Ankit Rastogi in Intellectual Property Rights, Trade Mark.

Kaveri Hotels Private Limited Vs. Intellectual Property Appellate Board & Anr.

IN THE HIGH COURT OF GUJARAT AT AHMEDABAD

Decided On: 06.01.2015

Facts:
An application for registration of a trade mark was filed by one Mr. Gulraj Vaswani, as the
proprietor of CHOKHI DHANI, to register the mark (logo) Chokhi Dhani in respect of food
items, ready to serve food (Class-30). Before acceptance, the said mark was advertised in
the Trade Marks Journal.

Second Application was filed by the same person on 08.12.2003 with the same mark for
registration under Class-42. The said mark was also advertised in the Trade Marks Journal.

Mr. Gulraj Vaswani, entered into a trade mark assignment agreement with Pink Pearl Leisure
& Amusement Pvt. Ltd. Consequential application, praying for correction in the name of the
applicant also came to be made to the Registrar in Form TM-16.

In the meantime, Petitioner filed the notice of opposition, opposing the grant of registration
of the said applications. Against the said opposition, counter statement was filed on behalf
of Pink Pearl Leisure & Amusement Pvt. Ltd.

During pendency of applications for amendment in the name of the applicant in view of
taking over the business by the with Pink Pearl Leisure & Amusement Pvt. Ltd., applications
were filed by the present Petitioner before the Registrar taking a stand that, since Mr. Gulraj
Vaswani has not filed counter statement to the opposition, in view of provisions of Section
21(2) of the Trade Marks Act, 1999, the trade mark applications be deemed to have been
abandoned by the applicant.

The Registrar of trademarks allowed the change in name of the applicant and rejected the
argument of the Petitioner that no counter statement to the opposition is filed on behalf of
the original applicant and thereby in view of provisions of Section 21(2) of the Trade Marks
Act, 1999, the applications be deemed to have been abandoned by the applicant.

The order of the Registrar was the Intellectual Property Appellate Board. The Board refused
to interfere.

Petitioners Case:
No opposition came either in the name of, or under the power of, or on behalf of the original
applicant.

Counter statement to the opposition was filed by the third party, a stranger to the
proceedings.

Original applicant had not authorised the present respondent No. 2 to file counter statement
or had agreed to the counter statement to the opposition.

Issue:
Whether the Registrar has committed any error by allowing the request for amendment of
the applications for registration in Form TM-16, and further by not treating the said
applications as having been abandoned in view of Section 21(2) of the Act.

Held:
Section 22 of the Act confers that power on the Registrar and considering the totality, this
Court finds that the Registrar has not committed any error in exercise of the said powers.
Further, the Board, which is the statutory authority, has also gone into this aspect and has
not found any illegality in the said decision of the Registrar. This Court does not see any
legal infirmity either in the decision of the Registrar or of the Board which is questioned in
this petition. It also needs to be recorded that, trademark is a property and there is no
prohibition of passing on the title over it by its original applicant to another person, and in
the event the change as sought for in this case is not permitted, a vacuum like situation may
crop up, since the original applicant may not have locus or at least interest to proceed with
the application, and the person/entity stepping into his shoes would be condemned as a
stranger to the proceedings. The procedural law cannot be stretched to make the
proceedings on merits otiose.

It is not that there was no counter statement to the notice of opposition, but it was filed by
the entity which had taken over the business of the original applicant. Amendment
application in that regard was already filed before the Registrar, which the Registrar has
subsequently allowed. In view of this, the argument of the petitioner that it is the original
applicant, who should have filed counter statement to the opposition, and having failed to
do so, the applications, should be deemed to have been abandoned was based on the illassumed rejection of amendment applications.

The petition was dismissed

RANBAXY LABORATORIES LTD. VS. DUA

PHARMACEUTICALS PVT. LTD.
February 4, 2015 by Ankit Rastogi in Intellectual Property Rights, Passing Of,Trade Mark.

Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Pvt. Ltd.

1988 (8) PTC 273 (Del)

Plaintif had filed a suit alleging that its registered trade mark CALMPOSE has been
infringed by the defendant, who is manufacturing similar medicine and marketing under the
mark of CALMPROSE.

Defendants Case:
Medicine in question is sold by chemists on the prescription of a medical practitioner and
therefore there cannot be any confusion.

The marks are dissimilar.

Held:

Two words in the present case, namely, CALMPOSE and CALMPROSE are phonetically and
even visually similar. What the Defendant has done is to insert the letter R in the middle of
the word and converted CALMPOSE to CALMPROSE. The intention of the Defendant
clearly is to cash in on the reputation which has been built up by the Plaintif over the years
in the sale of its medicine CALMPOSE.

It is true that the said drugs are supposed to be sold on doctors prescription, but it is not
unknown that the same are also available across the counters in the shops of various
chemists. It is also not unknown that the chemists who may not have CALMPOSE may pass
of the medicine CALMPROSE to an unwary purchaser as the medicine prepared by the
Plaintif. The test to be adopted is not the knowledge of the doctor, who is giving the
prescription. The test to be adopted is whether the unwary customer, who goes to purchase
the medicine, can make a mistake.

It is clear that the dimension of the strip of the Defendant is practically the same as the one
made by the Plaintif. The type of packaging is identical; the colour scheme is similar and
even the manner of writing is not very diferent. This is a clear case of an attempt by the
Defendant to pass of its product as that of the Plaintif.

The interim injunction was confirmed in favour of the Plaintif

SANJAY KAPUR & ANR. V. DEV AGRI

FARMS PVT. LTD.;
February 2, 2015 by Ankit Rastogi in Copyright, Intellectual Property Rights,Passing Of, Trade
Mark.

Sanjay Kapur & Anr. v. Dev Agri Farms Pvt. Ltd.;

2014 (59) PTC 93 (Del)

Plaintif was selling tea pouches in a particular packaging since 1981. As per the Plaintif the
packaging was distinctive. It comprised a soft paper packet shaped in rectangular sided
cuboid. This packet was shipped in a fabric sleeve and was closed at top by a

dory/drawstring. The said pack is then decorated with ribbon and the label tied around the
fabric bag.

Plaintif filed a suit for infringement of Copyright and passing of against the Defendant. As
per the Plaintif, the Defendant was using a similar packaging.

Defendant contested the suit on the ground of delay (Defendant claimed use since 2008)
and packaging being non-distinctive and common to trade. Defendant also urged that the
competing products are gift pack aromatic organic teas and hence very expensive and the
buyer is an informed, sophisticated buyer, who will not be confused. Alternatively, the
Defendant argued, that even if the trade dress is considered similar, the trade marks are
diferent.

The Honble Court relied on Section 2(zb) of the Trade Marks Act, 1999 which defines Trade
Mark to recognize protection of shapes as trade marks.

The Honble Court further relied on long user of the Plaintif, extensive sales of the Plaintif,
advertisements in newspapers since 1992 and turn over of the Plaintif to come to a
conclusion towards distinctiveness in the packaging.

The Honble Court found the cuboidal/rectangular shape with unique stand-up pack with
Indian look fabric with the traditional dori on top used with a glossy packing to be distinctive.

The argument of third-party use was rejected by relying on Pankaj Goel v. Dabur India Ltd.;
2008 (38) PTC 49.

The argument of the Defendant of being inn the trade since 2008 was also rejected as the
same appeared to be doctored.

Lastly, the Court relied on Laxmikant V. Patel v. Chetanbhai Shah & Anr. to hold that fraud is
not necessary in passing of, neither the proof of actual damage is necessary and only a
likelihood of damage is sufficient.
The Defendant was restrained from using an identical or deceptively similar packaging as
Plaintifs Packaging.

PHILIPS INDIA PVT. LTD. V. SHREE SANT

KRIPA APPLIANCES PVT. LTD.
February 2, 2015 by Ankit Rastogi in Disparagement.

Philips India Pvt. Ltd. v. Shree Sant Kripa Appliances Pvt. Ltd.;

19.01.2015 (Delhi High Court)

Plaintif was manufacturer of CFLs having a 30% share in the market. Defendant launched an
advertising campaign showing advantages of LEDs over CFLs.

The Plaintif filed a suit for false, misleading and disparaging representations.

The Honble Court relied on Dabur India Ltd. v. Colortek Meghalaya Pvt. Ltd.(Division Bench)
to hold that in cases of disparagement it is necessary to establish malicious intention and
special damage.

In the present case, Court found no malicious intention or special damages.

As per the Court, No prima facie ingredients of disparagement had been established by the
Plaintif.

Interim Injunction was denied.

ATIONAL GARMENTS, KALOOR VS.

NATIONAL APPARELS, ERNAKULAM
February 2, 2015 by Vivek Kumar Verma in Intellectual Property Rights,Passing Of, Trade
Mark.

Citation: AIR 1990 Ker 119

Facts:
The Respondent was a firm of which the Appellant was a partner till her retirement on 1st
September, 1987. The Respondent had applied for the registration of its Mark Tonoform.
The Appellant after retirement from the firm, started an identical business and the trade
name used by her was Tonoform. The Respondent filed a suit for passing of. The District
Court gave a temporary injunction in favour of the Respondent. Aggrieved by the order, the
Appellant preferred the present appeal.
Issue: Whether the Court below was justified in granting the temporary injunction?
Observations in Appeal:
Definition of the word passing of.

It is an actionable wrong for the defendant to represent, for trading purposes, that his
goods are those or that his business is that of the plaintiff, and it makes no difference
whether the representation is effected by direct statements, or by using some of the badges
by which the goods of the plaintiff are known to be his, or any badges colourably resembling
these, in connection with goods of the same kind, not being the goods of the plaintiff, in
such a manner as to be calculated to cause the goods to be taken by ordinary purchasers
for the goods of the plaintiff. (Kerlys Treatise on Law of Trade Marks and Trade Names)
In an action for passing off, a plaintiff need not prove any malice unlike the plaintiff in a
tortious action for injurious falsehood. Likewise proof of damage as such is not essential to
enable the plaintiff to maintain an action for passing-off.
To put it briefly the plaintiff in an action for passing off must show, if not that he has some
sort of business which is threatened by the defendants activities, at least that his interest is
something akin to that of the owner of a business. (Kean v. Mc Given, (1982) FSR 119).
For a temporary order in an action for passing off, the plaintiff need not in general show a
strong prima facie case. However the prima facie case that is required to be shown must be
something more than a case that will avoid the action being struck out as frivolous or
vexatious. Generally stated even if the chance of success at the trial are only 20 per cent,

the interim relief sought for is required to be granted. (Kerlys Law of Trade Marks and Trade
Names, Twelfth Edition).
There is another reason for the grant of the interlocutory injunction under such
circumstances. Such an order would stop the infringement without delay. Not only that from
experience it is clear that a successful motion for interlocutory injunction normally puts an
end to the litigation and the infringement, with a great saving in expense compared with a
full trial and that is the reason why the law insists upon a hearing of such a motion in every
case. It is also clear from this treatise of Kerley that in extremely urgent cases an ex parte
injunction may be obtained before the full hearing of the motion or an Anton Piller order,
for inspection of the defendants premises without prior warning and discovery of his
records, may be obtainable. This Anton Piller order is similar to the ex parte interlocutory
order to take an inventory of the articles etc. passed in an ordinary suit.
The Appeal was dismissed.

DIFFERENCE BETWEEN ISSUE OF NEW SHARES & TRANSFER OF SHARES

January 8, 2015 by Vivek Kumar Verma in Diference Between.

Difference between the issue of new shares by a company

and the transfer of shares already issued by a shareholder
In the first case, it is the company which issues and allots the new shares. In the second, the
transaction is a private arrangement and the company comes into the picture only for the
purposes of recognition of the transferee as the new shareholder. Therefore, while it is
imperative that the company should be a party to any agreement relating to the allotment
of new shares, before such an agreement can be enforced, it is not necessary for the

company to be a party in any agreement relating to the transfers of issued shares for such
agreement to be specifically enforced between the parties to the transfer.
Reference: Para 143 of M.S. Madhusoodhanan and Anr. vs. Kerala Kaumudi Pvt. Ltd.
and Ors., (2004) 9 SCC 204, Supreme Court, decided on 01.08.2003