Glaxo Operations Uk Ltd. v. Samrat Pharmaceuticals

Both these applications (L. As. 4538/82 and 664/83) are connected with the same suit No. 1596/82. The suit is for issue of perpetual injunction restraining the defendant, its servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing with Glucose powder or any other medicinal or food preparation in cartons as are a substantial reproduction of or colourable imitation of the cartons of the product Glaxose-D and/or Glucon-D and from adopting an identical or deceptively similar colour combination, lay-out, get-up and arrangement of features as described in the plaint. In the suit it is also prayed by the plaintiffs that an order for rendition of accounts of profits illegally earned by the defendants by infringing the trade marks, copy rights and by way of passing off its goods and business as the goods and business of the plaintiff be made. They further pray for issue of a direction for delivery for the purpose of destruction of all the impugned material including the infringing copies of the cartons, labels, wrapping and packing materials etc.

2. Plaintiff No. 1 i.e Glaxo Operations UK Ltd. is a company incorporated under the provisions of the English Law having its office at Greenford Road, Greenford, Middlesex, England. Plaintiff No. 2 i.e Glaxo Laboratories (India) Limited is a company incorporated under the provisions of the Indian Companies Act, 1913, carrying on its business at registered office at Dr. Annie Besant Road, Bombay-400025 and local office at Mathura Road, New Delhi. The plaintiffs have been, for the last several years, manufacturing and selling throughout India various well-known pharmaceutical and medical food and chemical preparations. Plaintiff No. 1, as the case of the plaintiffs is, is the proprietor of various trade marks in India in respect of its product Glaxose-D and holds the registration in respect of the said trade mark under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Trade Marks Act). The particulars of those registered trade marks are as under :

No. of registration Date of registration Trade mark (a) 87065 7-10-1943 Diamond device with the letters Gl in an artistic manner. (b) 134280 18-6-1947 Glaxose-D in class 5. (c) 8288 18-11-1922 (?) Device of inverted triangle with words and device of diamond of apex. (d) 110024 7-5-1945 Glucose-D in inverted triangle with the words Glaxo Laboratories Ltd. and the letters GL in a diamond device. (e) 286428 5-3-1973 Glaxose-D is Class 30

3. According to tile plaintiffs, plaintiff No. 2 is the registered user of the various trade marks of plaintiff No. 1 and further plaintiff No. 2 has been manufacturing and selling Glaxose-D for almost four decades and the said plaintiff is the registered proprietor of trade mark Glucon-D registered at No. 305664, under the Track Marks Act. It is alleged by the plaintiffs that plaintiff No. 2 is also the owner of various copy rights in respect of the cartons of Glaxose-D and/or Glucon-D. According to them, the plaintiffs got the copyright registered under the provisions of Copyrights Act, 1957, as per particulars given below :

Registration Status Particulars. A-18891/77 Owner Artistic work on carton of Glaxose-D. A-28436/80 -do- Glaxose-D packet design. A-28441/80 -do- Artistic work on the carton of Glucon-D.

4. It is complained by the plaintiffs that in violation and infringement of the aforesaid trade mark and copyright, the defendant is selling its product Glucose-D in cartons having the various features including the lay-out, get-up, colour combination and arrangement of cartons of Glaxose-D and/or Glucon-D with a view to produce an impact on the public that the products of the plaintiffs are being sold and is thus causing deception so as to encash upon the reputation of the plaintiffs and to pass inferior products as those of the plaintiffs. It is asserted by the plaintiffs that they have built up reputation of their aforesaid product by way of huge expenses on advertisement and giving good quality and that, therefore, they are suffering damages and set back in their sale.

5. I.A 4538/82 was filed along with the suit. The same is for issue of a temporary injunction during the pendency of the suit the same lines and on the same allegations on which the perpetual injunction has been prayed.

6. Both the suit and I.A 4538/82 were contested by the defendants who filed I.A 664/83 to the effect that this Court has no territorial jurisdiction to entertain and adjudicate on present matter and that therefore a preliminary issue be framed in respect of the same and the plaint be returned for presentation to the proper Court.

7. I have heard the learned counsel for the parties in respect of both the applications. First of all I am taking application registered as I.A No. 664 of 1983. As already mentioned, vide the aforesaid application, the defendant urges that this Court has no territorial jurisdiction to entertain and adjudicate the present suit. For deciding that matter, it is necessary to know as to how according to the plaintiffs this Court has territorial jurisdiction. The relevant assertions of the plaintiff are contained in para 22 of the plaint which read as under :

“2. That the plaintiff is carrying on its business at Delhi and under Section 62 (2) of the Copyright Act this Hon'ble Court has jurisdiction to grant relief of permanent injunction. The plaintiff's suit relates to the various reliefs claimed which arise from one and the same act or omission on the part of the defendant and separate suits are neither proper nor required to be filed. This Hon'ble Court has thus jurisdiction to entertain and try this suit considering the circumstances and the nature of the proceedings.”

The plea of the defendant is contained in preliminary objection No. 1 of the written statement which reads as under :

“1. That this Hon'ble High Court has no territorial jurisdiction to entertain and adjudicate the instant matter inasmuch as no cause of action or part thereof has been shown to have arisen in Delhi. The provisions of Section 62 (2) of the Copyright Act, 1957 have also been misapplied inasmuch as the registered office of the plaintiff is admittedly situated at Bombay, thus the suit should have been filed in the Court at Bombay. The setting up of a mere sales office at Delhi does not alter the situation. Thus the suit is liable to be returned for presentation to the proper Court.”

8. As is apparent reliance of the plaintiffs is on Section 62 (2) of the Copyright Act, 1957. Section 62 aforesaid reads as under :

“62 (1). Every suit or other civil proceeding arising under this chapter in respect of the infringement of copyright in any work or the infringement of any other right conferred by this Act shall be instituted in the district Court having jurisdiction.

(2) For the purpose of sub-section (1), a “District Court having jurisdiction” shall, notwithstanding anything contained in the Code of Civil Procedure, 1908, or any other law for the time being in force include District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personal bt works for gain.”

9. It is apparent from a plain reading of the aforesaid provision that the territorial jurisdiction with respect to any suit or other civil proceeding in respect of infringement of the copyright shall be the place where the plaintiffs or if there are more than one, any one of them is residing, carrying on business or personally works for gain. In this case it is stated by the plaintiffs that plaintiff No. 2 has registered office at Dr. Annie Besant Road, Bombay and has local office at Mathura Road, New Delhi. It is apparent from what has been stated by the defendant in the written statement (reproduced above) that the defendant does not deny the existence of local office of plaintiff No. 2 at Delhi. Having regard to the fact that the local office of plaintiff No. 2 is situated at Delhi, the said plaintiff is obviously carrying on business at Delhi. That being so, this Court has jurisdiction with respect to the present proceedings which relate to the infringement of copyright.

10. During arguments the complaint of the counsel for the defendant was that the plaintiff had acted with cleverness by way of combining his cause of action on the basis of trade mark with the one on the basis of copyright so that they could bring suit in respect of both the causes of action at Delhi, that that cleverness should not be encouraged and that, therefore it should be held that this Court has no territorial jurisdiction to entertain the suit. But in my view there is hardly any cleverness. The plaintiffs desire protection against infringement of their rights with respect to their product Glucose-D and Glucon-D. The products are the same while different types of rights are claimed. The plaintiffs claim rights as proprietor of registered trade mark as well as copyright with respect to the carton of the very same product. Not only that the plaintiffs could combine these causes of action on the basis of registered trade mark and registered copyright, but also it was absolutely necessary to have done so because the same were being claimed is respect of the same product.

11. I, therefore, hold that this Court has territorial jurisdiction to entertain the suit. When the objection of the defendant is so hollow and without any force, there is hardly any necessity of framing any issue and then formally bearing arguments again as arguments were heard already on this matter. Hence I overrule the aforesaid objection of the defendant.

12. In the written statement the defendant also raised an objection to the effect that as the plaintiffs have fixed the value of the suit for the purpose of jurisdiction at Rs. 50,000/-, the suit should have been filed in the Court of the District Judge and not in the High Court and that, therefore, the plaint be returned for presentation to the proper Court. However, no arguments were addressed on this plea. It is wrong on the part of the defendant to say that the plaintiff fixed the value of the suit at Rs. 50,000/-. Paragraph of the plaint regarding value of the suit for purposes of court-fee and jurisdiction is 23. In that paragraph, such value for 5 different reliefs has been mentioned. If all the valuations are added, they work out to Rs. 1,00,800/-. That being so, this Court has obviously pecuniary jurisdiction to entertain and decide the suit.

Hence I reject the aforesaid application (I.A 664 of 1983).

I.A 4538/82

13. The present application was filed along with the plaint. By way of this application the plaintiffs pray for grant of a temporary injunction restraining the defendant through its partners or proprietors, as the case may be, its servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in Glucose powder or any other medicinal or food preparation in cartons bearing the registered trade marks of the plaintiffs and in particular the inverted triangle and the diamond device or any other deceptively similar trade mark amounting to infringement of the plaintiffs' registered trade marks set out in paragraph 4 of the plaint or from substantially reproducing the plaintiffs' Glaxose-D and/or Glucon-D cartons amounting to infringement of registered copyrights of the plaintiffs as set out in paragraph 5 of the plaint or from doing any other activity likely to result in passing off of the defendants goods and business as the goods and business of the plaintiffs.

14. The plaintiff have placed on record photostat copies of the certificate of registration of the trade mark as well as copyright. The plaintiffs have further placed on record a carton (at page 55 of the documents file) which the defendant is selling his product Glucose-D. The plaintiffs have also filed the cartons of their produce Glucon-D under which the words written are Glucose-D. On a comparison of the two, it is cleat that they are similar and the resemblance is to the extent that any product in the carton of the defendant can be taken to be that of the plaintiff. The background each of them is green. There are crisscross squares at the same place on both of the cartons. In the carton of the plaintiff word ‘GL’ is written and in that of the defendant word ‘SP’ is written, but the printing is so small that anybody while purchasing will overlook these small words and he is likely to confuse the product of the defendant as that of the plaintiff. Then there (is) also resemblance of inverted triangles with a diamond at the same place. In the carton of the plaintiff, the words written in inverted triangle are Glucon-D and Glucose-D. In the carton of the defendant, the words written are Glucose-D powder inverted triangle. Then there is diamond also at the lower angle of the triangle in similar fashion. In nutshell the colour, get-up and general appearance of both the cartons is the same. It is well-known that it is on the basis of the background, colour, get-up and general appearance of the cartons that the articles contained therein are purchased and that being so, a customer is likely to be deceived and he can buy the product of the defendant taking the same for that of the plaintiff.

15. At pages 41 to 43 of the documents file is the photostat copy of the registration of copyright of the product of the plaintiff known as Glaxose-D. At pages 44 to 46 is the photostat copy of registration of copyright of Glucon-D of the plaintiff. A copy of the carton forms part of the aforesaid certificate. I have already compared the carton of Glucon-D of the plaintiff with the carton of Glucose-D of the defendant and found the latter deceptively similar. It is, therefore, obvious that there is infringement of the trade-marks and copyrights of the plaintiff.

16. Further, it also appears that the defendant is guilty of passing off of his goods as those of the plaintiff by way of using deceptively similar cartons and trade-marks. Learned counsel for the defendant in this connection relied upon judgment of this Court in Khemraj Shrikrishnadass v. Garg and Co., AIR 1975 Delhi 130. It was held that action for passing off was a common law remedy, that its gist was deceit and not infringement of a right to exclusive user and that in such an action, it was essential for the plaintiff to establish (1) distinctive features, (2) substantial user and (3) wide reputation. Counsel contended that in this case the third condition of wide reputation did not stand proved, that although the plaintiff had placed on record a statement of sales worth crores of rupees of their product from the years 1972 to 1982 yet the said statement was not supported by an affidavit and that, therefore, it cannot be said that their products were so well reputed as to command wide and exclusive sale. I do not, however, agree with the learned counsel. Prima facie all the conditions mentioned in the aforesaid authority stand established. It is true that affidavit has not been attached with the statement on sales and the statement of expenditure on advertisement but it was stated at the bar that if the Court permitted an affidavit could be filed. Learned counsel for the defendant did point out the defect of absence of affidavit but at the same time he could not dispute correctness of the said statements at the bar. Therefore, prima facie they give correct indication. The other condition obviously stands satisfied. The products of the plaintiff are put in cartons with distinctive features, as already mentioned. The user has been substantial for number of years while the user of the defendant, even according to the case of the defendant, is later in time because according to the plaintiff their user started in 1979.

17. Learned counsel for the defendant also argued that there was delay in filing the suit by the plaintiff inasmuch as he admittedly came to know of the products of the defendant in the year 1980, that they even according to their own case, gave notice in the year 1980-81 and that, therefore, they are not entitled to any injunction on account of laches.

18. On the question of delay, following proposition of law was laid down in Zimmer Orthopaedic Ltd. v. Zimmer Manufacturing Co., (1968) RPC 362:

“The essence of the matter, as I understand it, is this. It is for the plaintiff and his legal advisers to get on with the action and to see that it is brought to trial with reasonable despatch. The defendant is normally under no duty to stimulate him into action, and the plainer cannot complain that the defendant gave him no warning before applying to have the action dismissed for want of prosecution. But the curt will not take the drastic step of dismissing the action unless (a) the delay has been inordinate, (b) there was no excuse for it and (c) the defendant is likely to be seriously prejudiced by it if the action is allowed to go on.”

19. In the present case, it cannot be said that the delay was inordinate. The plaintiff has placed on record the notices which were sent by the plaintiffs to the defendant requesting the latter to stop the impugned user. The suit was brought in November, 1982 which can be said to be within reasonable despatch. Further, it is not clear as to how there was a serious prejudice, to the defendant on account of alleged delay caused by the plaintiff. It was contended by the counsel for the defendant that the defendant had in the meantime built up very good sales and that, therefore, issue of injunction will prejudice him. But the case of the plaintiff is that defendant was served with notice warning the latter in respect of the impugned misuser. Therefore, the defendant was fully in the know of the fact that it was likely to be restrained from carrying on the alleged misuser. It could have very well stopped and not have tried to build up further sales.

20. Another defence raised by the defendant is that the carton of defendant is also registered as an artistic work under the Copyright Act and that the registration number is A. 36370/1982. The defendant states that in exercise of the copyrights it has been using the carton of its product since 1979.

21. The aforesaid defence raises a question as to what rights are conferred on account of registration of copy rights and what exactly the nature of copyright is. The relevant provisions regarding the registration of copyrights are Sections 44 and 45 of the Copyright Act. Section 44 says that there shall be kept at the Copyright Office register in the prescribed form to be called register of copyright. Section 45 reads as under:

“45 (1) The author or publisher of, or the owner of or other person interested in the copyright in, any work may make an application in the prescribed form accompanied by the prescribed fee to the Registrar of Copyrights for entering particulars of the work in the Register of Copyrights.

(2) On receipt of an application in respect of any work under sub-section (1), the Registrar of Copyrights may, after holding such inquiry as he may deem fit, enter the particulars of the work in the Register of Copyrights.”

It is apparent from a plain reading of S. 45 that it is discretionary with any author of any work to apply for the registration of copyrights and that registration as such does not confer any rights. There is no other provision at all in the Copyright Act which confers rights on account of registration of a copy right. Therefore, copyrights exist whether the registration is done or not and the registration is merely a piece of evidence as to when a certain author started claiming copyrights in some artistic or some other work.

22. When the registration does not confer any rights it is to be seen as to how copyrights in favour of a person come into existence. Section 13 of the Copyright Act gives a clue as to how a copyright is acquired. It says that copyright shall subsist throughout India, inter alia, in case of original literary, dramatic, musical and artistic works. Therefore, emphasis is on the originality. It is, therefore, that artistic work which is original in which copyrights can vest. According to Section 17 of the author of the work shall be the owner of the copyright therein. The word ‘author’ is defined as under in S. 2 (d) of the Copyright Act :

“2. Interpretation- In this Act, unless the context otherwise requires:

(a) “author” means

(i) in relation to a literary or dramatic work, the authority of the work;

(ii) in relation to a musical work, the composer;

(iii) in relation to an artistic work other than a photograph, the artist;

(iv) in relation to a photograph, the person taking the photograph;

(v) in relation to a cinematograph film, the owner of the film at the time of its completion; and

(vi) in relation to a record, the owner of the original plate from which the record is made, at the time of the making of the plate.”

That definition of word ‘author’ and S. 17 lay emphasis on the fact that copyrights vest in that person who is original creator of the work. In some cases it may not be possible to be definite as to who was the original creator. In such cases, therefore, obviously the person who got registration earlier or who is established to be earlier user can be presumed to be the author or original creator of the artistic work.

23. In the present case it is apparent from the documents that the copyrights with respect to the packet design of Glaxose-D were registered on 5th Dec., 1977. It also appears from the photostat copy of the certificate filed by the plaintiff that copyrights with respect to packet design of Glucon-D were registered on 1st July, 1981. The get-up, green background and general appearance of both packets or cartons of Glaxose-D and Glucon-D is similar. The defendant has not given the date of registration of its copyright but it appears from the figure ‘82’ attached with the registration number that registration took place in 1982, which obviously was later than 1977 in which year registration with respect to Glaxose-D took place and that was also later than registration with respect to Glucon-D, which took place in the year 1980.

24. The balance of convenience obviously favours the plaintiff. The plaintiff will suffer irreparable injury inasmuch as firstly the sale of articles of the plaintiff will be decreased by that much by which the sale of the articles of the defendants takes place and secondly if the article of defendant is inferior in quality to article of the plaintiffs, there is bound to be damage to the reputation of the plaintiff resulting in considerable decrease of sales of the articles of the plaintiff. There cannot be any injury to the defendant when he is not allowed to sell his articles in such a manner as to deceive the public and pass off his products as that of the plaintiffs.

25. I, therefore, allow the application (I.A 458 of 1983) and issue the injunction as prayed for till the disposal of the suit. It may be mentioned that whatever has been stated above is only for the purpose deciding this application and shall not have any bearing on the merits of the suit.

Order accordingly.