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Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. Ltd.
Factual and Procedural Background
The plaintiff filed a suit alleging infringement of its registered trade mark “CALMPOSE” by the defendant, who was manufacturing and marketing a similar medicine under the mark “CALMPROSE”. The plaintiff sought a perpetual injunction and a decree for rendition of accounts. Along with the plaint, the plaintiff applied for an ad interim injunction under Order 39, Rules 1 and 2 of the Civil Procedure Code (CPC), asserting longstanding registration of the trade mark since 1970, substantial sales turnover, and promotional expenditure. The plaintiff contended that the defendant’s mark was phonetically and visually similar and that the packaging was also closely imitated. An ex parte ad interim injunction was initially granted. The defendant replied that the medicines were sold only on medical prescription, thus negating likelihood of deception, and argued phonetic dissimilarity of the marks. The matter proceeded before the court for consideration of these contentions.
Legal Issues Presented
- Whether the defendant’s use of the mark “CALMPROSE” constitutes infringement of the plaintiff’s registered trade mark “CALMPOSE” by being phonetically and visually similar.
- Whether there exists a likelihood of confusion among customers despite the medicines being sold on prescription, sufficient to grant an injunction against the defendant.
- Whether the defendant’s packaging and presentation amount to an attempt to pass off its product as that of the plaintiff.
Arguments of the Parties
Defendant's Arguments
- The marks “CALMPOSE” and “CALMPROSE” are phonetically different.
- The medicine is sold only on the prescription of a medical practitioner, reducing the likelihood of consumer deception.
- The words on the medicine strips differ, supporting the phonetic distinction argument.
- Relied upon the Punjab High Court decision in Stadmed Private Ltd v. Hind Chemicals, AIR 1965 Punjab 17, where phonetically similar marks were distinguished.
Plaintiff's Arguments
- The marks “CALMPOSE” and “CALMPROSE” are both phonetically and visually similar, with the defendant merely inserting an “R” into the plaintiff’s mark.
- The defendant’s intention is to capitalize on the plaintiff’s reputation and goodwill built over many years and significant sales.
- The packaging of the defendant’s medicine closely resembles that of the plaintiff, including colour scheme and packaging materials.
- Despite the medicines being sold on prescription, chemists may still pass off the defendant’s product to unwary customers as that of the plaintiff.
- Relied on the Punjab High Court’s observations in Anglo-French Drug Co. (Eastern) Ltd. v. Belco Pharma, AIR 1984 Punjab 430, which suggested a broader approach to phonetic and visual similarity than in Stadmed.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Stadmed Private Ltd v. Hind Chemicals, AIR 1965 Punjab 17 | Phonetic dissimilarity of trade marks “ENTOZINE” and “ENTROZYME” | The court distinguished the present case, finding the marks “CALMPOSE” and “CALMPROSE” phonetically and visually similar despite the defendant’s reliance on this precedent. |
| Anglo-French Drug Co. (Eastern) Ltd. v. Belco Pharma, AIR 1984 Punjab 430 | Broader approach to phonetic and visual similarity, potentially overruling or qualifying Stadmed | The court agreed with this precedent’s observations, supporting the finding of similarity between the marks in the present case. |
Court's Reasoning and Analysis
The court analyzed the phonetic and visual aspects of the marks “CALMPOSE” and “CALMPROSE”, concluding that the insertion of the letter “R” by the defendant did not render the marks dissimilar. The court found the marks to be both phonetically and visually similar, rejecting the defendant’s reliance on the Stadmed precedent due to factual distinctions. The court also considered the packaging similarities, including colour scheme, materials, and strip dimensions, as indicative of an intent to pass off the defendant’s product as that of the plaintiff. Regarding the defendant’s contention that the medicine is sold only on prescription, the court held that the relevant test is the likelihood of confusion among the unwary purchaser at the chemist’s shop, not the prescribing doctor. The court noted that chemists might substitute the defendant’s product for the plaintiff’s, thus creating a real risk of confusion and deception. Consequently, the court found sufficient grounds to uphold the interim injunction.
Holding and Implications
The court made the ex parte interim injunction absolute pending disposal of the main suit and disposed of the interlocutory application.
This decision directly restrains the defendant from using the mark “CALMPROSE” and similar packaging during the pendency of the suit, protecting the plaintiff’s trade mark rights and goodwill. The court’s ruling underscores the importance of protecting registered trade marks against phonetic and visual imitations that may cause consumer confusion, particularly in the pharmaceutical sector. No broader precedent beyond the facts of this case was established.
The plaintiff has 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”. The prayer in the suit is for a perpetual injunction and for a decree for rendition of accounts.
2. Along with the plaint the plaintiff has also filed an application under O. 39, Rr. 1 and 2, CPC and has prayed for an ad interim injunction. It is averred that the plaintiff has had the trade mark registered since 6th March 1970 and has sold “CALMPOSE” worth about Rs. 40.16 crores since its adoption and has spent about Rs. 16.43 lakhs on sales promotion from Jan. to Aug. 1987. The said medicine are Diazepam tablets of 5 Mg each. It is also contended that not only is the mark of the defendant phonetically and visually similar, but even the packing of the defendant of the said medicine is similar to that of the plaintiff. The plaintiff is using two colours, namely, silver and brown and the packing is done in aluminium foil on one side and polythene film on the other; and the packing of the defendant is similar to that of the plaintiff.
3. Ad interim ex parte injunction was issued. In the reply which has been filed it is contended that the medicine in question is sold by chemists on the prescription of a medical practitioner and, therefore, the persons cannot be deceived by the said mark. It is further contended that the words used on the strips containing the medicine are different and the word “CALMPROSE” is phonetically different from the plaintiff's mark “CALMPOSE”.
4. Shri Bharat Inder Singh, learned counsel for the defendant has raised two contentions before me. He hair firstly submitted that the two marks are phonetically different. In this connection, he relies upon a Division Bench authority reported as Stadmed Private Ltd v. Hind Chemicals, AIR 1965 Punjab 17. In this case the two words involved were “ENTOZINE” and “ENTROZYME”. The High Court came to the conclusion that the said words were phonetically different. In my opinion, the 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 plaintiff over the years in the sale of its medicine “CALMPOSE”, the turnover of which is stated to be over Rs. 40 crores. It is certainly not by accident that the defendant has coined or hit upon the word “CALMPROSE”. It is, to my mind, a deliberate attempt to adopt another person's trade mark to one's advantage.
5. The decision of the Punjab High Court in Stadmed's case (supra) cannot be of any assistance to the defendant in the present case. The spellings of the two words “ENTOZINE” and “ENTROZYME” are different because the word “ENTROZYME” contained three letters R, Y and M which are not present in the word “ENTOZINE”. It is true that the Court in that case felt that the two words were not phonetically similar, but in this regard reference may also be made to the following observations of another Division Bench of the Punjab High Court in the case of Anglo-French Drug. Co. (Eastern) Ltd. v. Belco Pharma, AIR 1984 Punjab 430 where with reference to the decision in Stadmed's case (supra) the High Court observed as follows :—
“We are not called upon to decide whether ‘ENTROZYME’ and ‘ENTOZINE’ are phonetically and visually similar, but if we had a case like this before us, we might have taken the view that the two names are visually and phonetically similar.”
I also tend to agree with the observations of Punjab High Court in Anglo-French's case. In any case, I have no doubt in my mind that the two words “CALMPOSE” and “CALMPROSE” are phonetically similar.
6. It was then contended by the learned counsel for the defendant that the said medicines can only be sold on the doctor's prescription and, therefore, there can be little likelihood of confusion. It is true that the said drugs are supposed to be sold on doctor's 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 unkown that the chemists who may not have “CALMPOSE” may pass off the medicine “CALMPROSE” to an unwary purchaser as the medicine prepared by the plaintiff. 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.
7. I have also been shown the strips containing the medicines manufactured by the parties. It is clear that the dimension of the strip of the defendant is practically the same as the one made by the plaintiff; the type of packaging is identical; the colour scheme is similar and even the manner of writing is not very different. This is a clear case of an attempt by the defendant to pass off its product as that of the plaintiff.
8. For the aforesaid reasons, the interim injunction issued on 30th Nov, 1987 is made absolute pending disposal of the main suit. I.A stands disposed of.
Petition allowed.
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