Citation Codes

Equivalent Citations

citation codes

Case Number

IA No. 15609/2008 in CS(OS) No. 2639/2008

Attorney(S)

PRESENT: Mr. Sudhir Chandra, Sr. Advocate with Mr. Sudhir K. Makkar & Ms. Meenakshi Singh, Advocates for the Plaintiff.
Mr. M.K Miglani, Mr. C.L Dhawan & Mr. Kapil Kumar Giri, Advocates for the Defendant.

Judges

Rajiv Sahai Endlaw, J.

Acts

Section 17 of the Trademark Act, 1999;

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Smart Summary

Judgment Summary — Rajiv Sahai Endlaw, J.

Factual and Procedural Background

The plaintiff, registered proprietor of the trademark "HAJMOLA" in Class 05, instituted a suit for permanent injunction and applied for an interim injunction to restrain the defendant from using the mark "PACHMOLA" in relation to the same goods (digestive tablets/chewing tablets). An ex parte order dated 17th December, 2008 restrained the defendant, until disposal of the application, from using "PACHMOLA" or any deceptively similar mark in respect of digestive tablets.

The defendant opposed both the suit and the interim injunction application, asserting multiple defences including that it is the registered proprietor of "PACHMOLA" (registration effective from 11th June, 1997 and claiming user since 1st December, 1995), that the plaintiff concealed material facts, that "MOLA" is common to the trade, and that there is no possibility of confusion between the parties' marks or packaging.

The plaintiff filed a replication denying knowledge of the defendant's registration, asserting a right to restrain the defendant for deceptive similarity and relying on Section 17 of the Trade Marks Act, 1999. The court heard counsel for the parties and examined the documents filed by the defendant, which showed registration of the word mark "PACHMOLA" in Class 05 relating to Ayurvedic Digestive Preparations in favour of the defendant with effect from 1997.

Legal Issues Presented

Whether an interim injunction should be granted to the plaintiff restraining the defendant from using the mark "PACHMOLA" given (a) the plaintiff's registered mark "HAJMOLA" and (b) the defendant's registered mark "PACHMOLA".
Whether the plaintiff's suit is maintainable as one for infringement when the defendant is a registered proprietor, and if Section 124 of the Trade Marks Act (power to grant injunction against registered proprietor) applies when the plaintiff has not pleaded invalidity of the defendant's registration.
Whether the plaintiff's conduct (alleged concealment of the defendant's registration, failure to challenge the defendant's registration) disentitles the plaintiff to the discretionary relief of interim injunction in a passing off claim.

Arguments of the Parties

Pleadings and Arguments Advanced by the Defendant

The defendant is the registered proprietor of the trademark "PACHMOLA" in Class 05 for Ayurvedic Digestive Preparations w.e.f. 11th June, 1997, claiming user since 1st December, 1995.
The plaintiff is guilty of gross and material concealments and instituted the suit to crush competition and secure an illegal monopoly.
The plaintiff was aware of the defendant's registration and intentionally concealed this from the plaint; the plaintiff delayed action despite knowledge and acquiesced in the defendant's use.
The plaintiff has permitted other third parties to use marks containing "MOLA" (examples given), and "MOLA" is common to the trade, so the plaintiff is disentitled to relief.
There is no similarity between "HAJMOLA" and "PACHMOLA" in marks, packaging or trade dress, and no likelihood of confusion.
The defendant has established substantial and continuous trade under "PACHMOLA", supported by invoices (from July 1998 to 2008) and trade directories.

Pleadings and Arguments Advanced by the Plaintiff

The plaintiff denied knowledge of the defendant's registration and maintained that even if the defendant had registration, the plaintiff could lawfully seek an injunction because the defendant's mark is deceptively similar to plaintiff's mark.
The plaintiff relied on Section 17 of the Trade Marks Act, 1999 to argue that the defendant's registration relates to a label inclusive of "PACHMOLA" and not to the word "PACHMOLA" as a trademark (as pleaded).
Regarding delay, the plaintiff pleaded that the defendant's market presence was not significant enough to be noticed earlier and therefore the plaintiff was unaware of the defendant's product until shortly before institution of the suit.
In rejoinder the plaintiff's senior counsel argued that the plaintiff's mark had acquired singular fame in digestive tablets, that "MOLA" usage by others does not defeat protection if the defendant's adoption is dishonest, and relied on authorities (including Hindustan Pencils) to contend that delay may not bar relief where adoption is dishonest.

Table of Precedents Cited

Precedent	Rule or Principle Cited For	Application by the Court
Pankaj Goel v. Dabur Ltd., Division Bench judgment dated 4 July 2008 (FAO (OS) No. 82/2008)	Held (by the Division Bench) on issues such as: (i) "MOLA" being common to trade does not by itself entitle defence; (ii) plaintiff's allowance of other "MOLA" marks was considered in assessing entitlement to relief; and that such findings are binding on this court.	The court treated the Division Bench's findings as binding with respect to negating certain defences (e.g., that "MOLA" is common to trade, and that plaintiff's prior toleration of other "MOLA" marks does not automatically bar relief). The court compared facts of the present case with Pankaj Goel and found important distinguishing features (substantial continuous use by the defendant here; no prior injunction against defendant; no multiple marks being used by the defendant as in Pankaj Goel).
Clinique Laboratories LLC v. Gufic Limited, MANU/DE/0797/2009	Held that under Section 124 of the Trade Marks Act the court is entitled to grant interim injunction even in infringement proceedings against a registered proprietor.	The court observed that although Section 124 can permit injunction against a registered proprietor, Section 124 did not "come into play" here because the plaintiff had not pleaded invalidity of the defendant's registration nor initiated rectification/other proceedings challenging registration; thus the court did not apply Section 124 in this case.
F. Hoffimann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., AIR 1970 SC 2062 (PTC (Suppl) (1) 88)	Supports the principle that failure to challenge a competitor's registration and acquiescence may disentitle a party to injunctive relief.	The court relied on the reasoning approved in this Supreme Court decision to find that the plaintiff's failure to challenge the defendant's registration before the Registrar or the Appellate Board and its failure to plead invalidity amounted to acquiescence/waiver, which disentitled the plaintiff to interim injunction.
Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., AIR 1990 Delhi 19	Authority cited by the plaintiff to support that where adoption of a mark is dishonest, delay may not necessarily bar injunctive relief and the protection of the public is a relevant consideration.	The plaintiff relied on this decision in support of its arguments. The court noted the reliance but stated that, in view of the findings on other issues, there was no need to discuss the authorities at length.

Court's Reasoning and Analysis

The court proceeded in a stepwise legal analysis grounded in pleadings, documentary proof, statutory provisions and precedents cited in the opinion:

Registration status and applicability of infringement provisions:
The defendant's documents showed a registration of "PACHMOLA" in Class 05 (w.e.f. 1997). Because the defendant is a registered proprietor, the court held the plaintiff's suit cannot be treated as one for infringement under Sections 28(3) and 29 of the Trade Marks Act in the usual way.
Applicability of Section 124 (injunction against registered proprietor):
Although the court acknowledged its earlier holding in Clinique that Section 124 permits injunctions against registered proprietors, it concluded that Section 124 did not come into play here because the plaintiff had not pleaded the invalidity of the defendant's registration nor taken proceedings to challenge it. There was therefore no basis on which to treat the suit as an infringement proceeding against an infringing registered proprietor under Section 124.
Passing off claim and the stricter interim-relief test:
The court observed that passing off claims require a stricter test for interim relief than infringement claims and therefore scrutinised whether the ingredients for interim relief in passing off were satisfied by the plaintiff.
Plaintiff's conduct — concealment, evasive replication and acquiescence:
The court found that the plaintiff had not disclosed in the plaint the fact that the defendant was alleged to be registered in "PACHMOLA" despite the registration being on record (via Pankaj Goel pleadings). The replication was described as evasive and the plaintiff's conduct was found to be unfair and amounting to abuse of the court process. The court emphasized the duty on a party seeking interim relief to place all relevant facts before the court and held that this failure disentitled the plaintiff to the discretionary relief of interim injunction.
Failure to challenge registration as acquiescence/waiver:
The court held that the plaintiff's failure to challenge the defendant's registration before the Registrar or Tribunal or to plead invalidity was an act of acquiescence or waiver, referencing the reasoning approved in Hoffimann-La Roche. That conduct further disentitled the plaintiff to interim injunction.
Comparison of trade dress, distinctiveness and possibility of deception:
On the merits of the passing off test, the court examined the trade dress and packaging and found differences in colour scheme, caricature and sachet shape; the defendant's sachet prominently displayed "ALKA-G" immediately above "PACHMOLA", while the plaintiff's packaging emphasised itself as manufacturer. The court concluded that there was, prima facie, no possibility that buyers intending to purchase the plaintiff's goods would be deceived into buying the defendant's goods.
Effect of plaintiff allowing other "MOLA" marks:
The court observed that the plaintiff's prior tolerance of other "MOLA" marks (e.g., "SATMOLA", "SIDHMOLA", "SWADMOLA", "CHATMOLA") had blunted any distinctiveness that "MOLA" might have had. While Pankaj Goel held that such allowance does not license the world to infringe, the court noted that if distinguishing features exist and no likelihood of confusion is shown, mere use of "MOLA" by the defendant would not entitle the plaintiff to injunction.
Defendant's continuous use and balance of convenience:
From invoices and documents the court found continuous use of "PACHMOLA" since 1998. Unlike Pankaj Goel, the defendant did not appear to be trading under several marks nor had it been subject to earlier injunctions. The court considered that an injunction would impinge on 10–13 years of the defendant's use, and the balance of convenience and prima facie absence of deception weighed against grant of interim relief.
Authorities relied upon by plaintiff:
The plaintiff's reliance on multiple authorities (including Hindustan Pencils) and arguments of fame were noted, but the court found no basis to grant interim relief after applying the above reasoning and thus did not discuss those authorities at length.

Holding and Implications

Holding:

The plaintiff is not entitled to the interim injunction sought; the interim application is disposed of.

Direct implications and orders:

The court refused to grant interim relief restraining the defendant from using "PACHMOLA" on the grounds examined (registration of defendant, plaintiff's conduct, lack of prima facie deception, acquiescence, balance of convenience).
The court directed the defendant to maintain accounts of sales of Digestive Tablets/Digestive Preparations under the mark "PACHMOLA" and to file those accounts in this court with advance copy to the plaintiff on a quarterly basis.
The court expressly stated that nothing in the order should be taken as an expression of opinion on the merits of the suit.
No order as to costs was made.

Broader implications: The opinion applied settled principles (including the duty to disclose material facts when seeking interim relief and the effect of acquiescence in a competitor's registration) to deny discretionary relief. The court did not set out any new legal principle and did not treat the decision as an adjudication on merits.

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Dabur India Ltd. v. Alka Ayurvedic Pvt. Ltd.

Rajiv Sahai Endlaw, J.:— The application of the plaintiff for interim injunction in a suit for permanent injunction restraining infringement of trademark and passing off, is for consideration. The plaintiff as registered proprietor of trademark “HAJMOLA” in respect of goods in Class 05 has instituted the present suit for restraining the defendant from using the mark “PACHMOLA” in respect of the same goods. On the counsel for the plaintiff citing the judgment dated 4th July, 2008 of the Division Bench of this court in Pankaj Goel v. Dabur Ltd. FAO (OS) No. 82/2008 upholding the ex parte order of injunction (also at the instance of the plaintiff) restraining appellant in that case from using the mark “RASMOLA” in relation to the same goods and further upon the counsel for the plaintiff informing that the Special Leave Petition preferred to the Supreme Court against the said judgment of the Division Bench had been dismissed, vide ex parte order dated 17th December, 2008 in the present case, the defendant till the disposal of the application was restrained from using the trademark “PACHMOLA” or any other mark deceptively similar to the trademark “HAJMOLA” of the plaintiff in respect of digestive tablets or any other chewing tablets.

2. The defendant has opposed the suit as well as the application for interim injunction inter alia on the grounds:

(a) that the plaintiff is guilty of gross and material concealments of facts and particulars and has instituted the suit with the sole intent to crush a competitor and to secure an illegal monopoly;

(b) that the defendant is a registered proprietor of the trademark “PACHMOLA” in Class 05 in respect of Ayurvedic Digestive Preparations w.e.f 11th June, 1997, claiming user since 1st December, 1995;

(c) that the plaintiff is aware of the registration in favour of the defendant and has intentionally concealed the same from this court;

(d) it is averred that the plaintiff claiming to be market leader in digestive tablets sector ought to be aware of use since 1995 by the defendant of the mark “PACHMOLA”

(e) it is further pleaded that Pankaj Goel appellant in the judgment of the division bench of this court (Supra) in his written statement filed one year prior to the institution of the present suit had pleaded the factum of the defendant herein being the registered proprietor of the mark “PACHMOLA”

(f) it is contended that the plaintiff thus since at least one year prior to the institution of the suit was aware of the registration in favour of the defendant and chose not to take any action and also concealed the factum of registration from the plaint;

(g) it is further pleaded that the plaintiff also became aware of the registration in favour of the defendant, because in response to the application of one M/s Mehta Unani Pharmacy & Co. for registration of the mark “PACHMOLA”, both the plaintiff as well as defendant had filed opposition, again at least one year prior to the institution of the present suit; it is contended that the said fact also has been concealed from this court;

(h) that the plaintiff did not file any opposition to the applications of the defendant for registration of the trademark and label “PACHMOLA” and has thus allowed the defendant extensive use of the mark “PACHMOLA” and acquiesced in the use of the trademark “PACHMOLA” by the defendant;

(i) that the plaintiff itself has allowed use of marks “SATMOLA”, “SWADMOLA”, “SIDHMOLA” & “CHATMOLA” by various third parties and has concealed the said facts also from this court and is not entitled to the relief on this ground also;

(j) that the word “HAJMOLA” or “MOLA” is common to the trade and is in extensive use by various manufacturers of Ayurvedic and Digestive Tablets, Churan etc. for which reason the plaintiff is disentitled to the relief;

(k) instances of other registrations are given;

(l) that various third parties have been opposing the plaintiffs application for registration in respect of trademark “HAJMOLA” and which oppositions are still pending and which also were not disclosed in the plaint;

(m) that the plaintiff itself had in various applications for registration disclaimed the trademark “HAJMOLA” and/or word “MOLA”

(n) That “MOLA” is sui generis and in public domain;

(o) the plaintiff claims registration since 1972 but even prior thereto “CREAMOLA” was registered since the year 1943;

(p) that the plaintiff had made false and vague allegations of having become aware of the defendant just prior to the institution of the suit;

(q) that there is no similarity between “HAJMOLA” & “PACHMOLA” or in the packaging or the trade dress of the products of the plaintiff and the defendant and no possibility of any confusion;

(r) other distinguishing features of the goods of the two are cited;

(s) that the defendant had established a vast trade and carried out substantial commercial activities under the trademark “PACHMOLA” and growing sale figures of the defendant are pleaded.

3. The plaintiff filed a replication to the written statement of the defendant in which the plaintiff inter alia denied knowledge of the factum of the defendant being the registered proprietor of the trademark “PACHMOLA” it is contended that even if the defendant had secured registration of “PACHMOLA”, the plaintiff has a lawful right to restrain the defendant by way of an injunction as the trademark of the defendant is deceptively similar to that of the plaintiff; with respect to the pleadings in Pankaj Goel case it is merely stated that they are a matter of record and it is further pleaded that the plaintiff was not aware of the defendant's product till just prior to the institution of the suit; it is further pleaded that the registration of the defendant is of the label inclusive of “PACHMOLA” and not of trademark “PACHMOLA”—reliance is placed on Section 17 of the Trademark Act, 1999; with respect to delay, it is stated that even if the defendant had any presence in the market, the same was not significant to get noticed and consequently the plaintiff was not aware of any such product; it is denied that there are any distinguishing features—it is pleaded that merely because the trade dress, packaging etc. of the defendant is different, the possibility of deception cannot still be ruled out as there is distinctive resemblance between the two trademarks.

4. The counsel for the parties have been heard.

5. The documents filed by the defendant show the registration of the word mark “PACHMOLA” in Class 05 relating to Ayurvedic Digestive Preparations in favour of the defendant w.e.f 1997. The defendant being the registered proprietor of the mark, the suit for infringement does not lie under Section 28(3) and 29 of the Act.

6. I have in Clinique Laboratories LLC v. Gufic Limited, MANU/DE/0797/2009 held that the court under Section 124 of the Act is entitled to grant the relief of interim injunction even in the case of infringement against a registered proprietor. However, in this case Section 124 does not come into play. Though the defendant has pleaded registration of its marks and thus raised a defence under Section 30(2)(e) of the Act but the plaintiff has not pleaded invalidity of the registration of the defendant's mark. As aforesaid the plaintiff in spite of being informed in the written statement in the Pankaj Geol case of the registration of mark “PACHMOLA” in favour of the defendant, concealed the said fact from the plaint. Even after the defendant expressly raised a plea in this regard in its written statement, the replication of the plaintiff is evasive. Though the replication with respect to pleadings in Pankaj Goel case is of the same being a matter of record but the plaintiff still has put the defendant to strict proof on the plea of its registration. I find such behavior/pleadings of the plaintiff to be unfair. Once the defendant has expressly pleaded that the plaintiff is aware of the registration of the defendant's mark and has also filed along with its written statement the documents showing registration of its mark, the plaintiff even if till then not aware of the same could have very well verified the same and ought to have made an express plea with respect thereto. The plaintiff however persisted with the plea of being entitled to maintain a suit for infringement. I have carefully gone through the replication of the plaintiff and do not find any plea therein of the invalidity of the registration of the defendant's trademark. It is not even urged that any proceedings for rectification of the registration in relation to the defendant's trademark have been initiated by the plaintiff or are pending. Thus the question of applicability of Section 124 of the Act does not arise in the present case. The suit of the plaintiff cannot thus be treated as for infringement of a trademark in view of the registered trademark of the defendant.

7. However, since the suit is also filed for the relief of passing off and which relief the plaintiff notwithstanding the registration in favour of the defendant is entitled to claim, it has to be seen whether the ingredients for the grant of interim relief in a case of passing off are satisfied by the plaintiff. The test, for the purpose of interim relief is much stricter in case of passing off than in a case of infringement.

8. As far as the defences of the defendant noted herein above are concerned, several of those are no longer res integra in the light of the judgment of the Division Bench of this court in Pankaj Goel (Supra). The pleas of; (i) “MOLA” being common to the trade; (ii) the plaintiff not suing other small scale infringers not affecting the business of the plaintiff; (iii) the plaintiff itself having permitted use of the mark “SIDHMOLA”, “SATMOLA”, “SWADMOLA” & “CHATMOLA”, have been negated.

9. The counsel for the defendant has contended that there are several other distinguishing features in the defence of the defendant than the defence of Pankaj Goel. Firstly, it is contended that the Division Bench in that case was guided by there being no substantial evidence of use of the mark by Pankaj Goel; in the present case there is substantial evidence of use showing significant use of the mark “PACHMOLA” by the defendant; continuous invoices from July, 1998 till 2008 have been filed. The defendant has also filed various trade directories/yellow pages in this regard. However, the same are of 2007, 2008. Secondly, it is contended that Pankaj Goel was found to be selling digestive tablets also in the name of “RASGOLI”, “RASMOLI”, “RASWALI” etc. and the said fact prevailed with the Division Bench in maintaining the order of injunction qua “RASMOLA”. Per contra, the defendant in this case is selling digestive tablets only in the name of “PACHMOLA” and interim injunction against the defendant would destroy 13 years' labour of the defendant in developing the mark “PACHMOLA” and wipe out the defendant from the market. Thirdly, it is contended that Pankaj Goel had already been restrained by another court since 2005 from using the label/device “RASMOLA” at the instance of a third party—that prevailed with the Division Bench in maintaining the injunction; in the present case there is no prior injunction against “PACHMOLA”.

10. Grant of injunction is a discretionary relief, I am quite disturbed by the casual manner/attitude in which the plaintiff has sued. Pankaj Goel case in which pleading was made of defendant herein being the registered owner of “PACHMOLA” has been fought by the plaintiff herein in a close span of one year before three different courts and not so far back as to wipe out its memory. I do not find any explanation whatsoever for the plaintiff not making a clean breast of affairs. It was incumbent upon the plaintiff to disclose before the court the plea taken in the Pankaj Goel case of the defendant herein being the registered proprietor of “PACHMOLA” with respect whereto the present suit had been filed. Not only so, the plaintiff ought to have been put to an enquiry and made its own investigations. The plaintiff is found to be vigorously protecting its intellectual proprietary rights in a large number of suits filed in this court. The suit is instituted and the plaint signed and verified by Mr. B.K Gupta working as Senior Manager (Legal) with the plaintiff company. It reflects that the plaintiff is running a full fledged Legal Deptt.

11. The senior counsel for the plaintiff engaged to address only in rejoinder when confronted with the above, replied that the factum of registration of the mark of the defendant was inadvertently not mentioned in the plaint. It was further contended that inadvertently the plea of, the registration of the mark of the defendant being bad, had also not been taken. I find the said explanation by the senior counsel in rejoinder to be not enough. The plaintiff had an opportunity to render an explanation in its replication. However, as aforesaid, the replication in this regard is evasive. The plaintiff in spite of being challenged did not state as to how it had learnt, if not from the written statement in Pankaj Goel case, of the mark “PACHMOLA” of the defendant. If the plaintiff had learnt of “PACHMOLA” from the written statement of Pankaj Goel, then the plaintiff learnt of registration in favour of the defendant of the said mark also from the said written statement. In the replication no explanation of inadvertent error as given by the senior counsel for the plaintiff has been given. On the contrary as aforesaid the factum of registration of “PACHMOLA” is still denied and the defendant put to strict proof thereof.

12. The question which arises is whether the plaintiff, which indulges in so abusing the process of the courts, entitled to the discretionary relief of injunction. The judgments/precedents in this regard need not be reiterated. The courts have repeatedly held that the party which approaches the court, especially for ex parte ad interim relief is bound by duty to carefully place before the court all facts which may enable the court to consider the feasibility of grant of such relief. The conduct of the plaintiff is found wanting in this regard. The plaintiff is not entitled to the relief of interim injunction on this ground alone.

13. I also find the conduct of the plaintiff of not challenging the registration of the mark of the defendant, neither before the Registrar or the Appellate Board nor in the present suit, and of not even averring the registration in favour of the defendant being bad or invalid to be also an act of acquiescence/waiver disentitling the plaintiff to the grant of any interim injunction. It shows that it did not occur even to the counsel for plaintiff that there was anything wrong in the registration of the defendant for the reason of the same being similar or deceptively similar to that of the plaintiff. The Supreme Court in F. Hoffimann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., AIR 1970 SC 2062 : PTC (Suppl) (1) 88 (SC) approved such reasoning. The plaintiff is not entitled to interim relief on this ground also.

14. The guiding principle in a case of passing off is the possibility of deception/confusion. A perusal of the trade dress/packaging of the plaintiff does not show any similarity or possibility of deception or confusion in the two. The colour scheme, caricature and shape of sachet of the two are different. The defendant's sachet also has prominently displayed on the same, immediately above “PACHMOLA” “ALKA-G”. On the contrary, the plaintiff on its packaging displays itself as manufacturer. It thus cannot be said that anyone wanting to buy the goods of the plaintiff would be deceived into buying those of the defendant. The plaintiff in the replication also brushed aside the distinguishing features pleaded by the defendant in the written statement by contending that there is distinctive resemblance between the two trademarks. In this context, the action of the defendant of permitting “SATMOLA”, “SIDMOLA”, “CHATMOLA” & “SWADMOLA” becomes relevant. The said action of the plaintiff shows that the existence of other similar goods with the word “MOLA” was acceptable to the plaintiff. Thus merely because a product bears “MOLA” does not denote or identify the product with the plaintiff i.e it is not distinctive of the plaintiff. The distinctiveness if any has been blunted by the plaintiff allowing use of “MOLA” by others. The Division Bench in Pankaj Goel has held that that such allowance by the plaintiff cannot be a license to the world at large to infringe “HAJMOLA”. The same is binding on this court. However, if there are distinguishing features and no possibility of deception/confusion, mere use of “MOLA” by the defendant will not entitle plaintiff to injunction.

15. The senior counsel for the plaintiff in rejoinder contended that the mark of the plaintiff has acquired singular fame in the realm of Digestive Tablets and is a household mark, is a totally coined mark which the courts have held deserve highest degree of protection. Instances were given of injunction being issued qua “MAYUR” & “PEACOCK” in spite of apparent dissimilarity. It was argued that use by the defendant of “MOLA” would associate the goods of the defendant with the plaintiff. It was further contended that the sale figures cited by the defendant were inclusive of all goods of the defendant and not of “PACHMOLA” only; that the cause of action for the suit to the plaintiff arose only when the defendant started using the mark substantially and started passing off its goods as that of the plaintiff and not by negligible sales/use. It was further contended that the plaintiff cannot even be accepted to have knowledge of all such infringers; instance was given of Pankaj Goel who was advertising on the same channel as the plaintiff but still the Division Bench held that the same could not amount to knowledge of the plaintiff. It was also contended that the sale invoice of the defendant showed that the defendant also was marketing/selling Digestive Tablets under several other names and had falsely argued that it will be wiped out if prohibited from using “PACHMOLA”. Reliance was placed on Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., AIR 1990 Delhi 19 to buttress the proposition that it was also essential to prevent third party consumers from being fooled and that where the adoption of the mark by the defendant was found to be dishonest, no amount of delay could deprive the plaintiff of an injunction though the same may be relevant in assessment of damages. It was further contended that the plaintiff had no objection to the use of the mark “PACHGOLA” which the defendant after the injunction had been using. It was further urged that the present case is fully covered by the Division Bench judgment in Pankaj Goel (Supra). It was also argued that the test was of similarity and not of dissimilarity.

16. The counsel for the defendant was allowed sur rejoinder. He contended that the Director of the defendant was earlier joint in business of marketing same goods under the marks “CHATMOLA” with his brother; that there was litigation with the brother; that since the plaintiff had given no objection to use of “CHATMOLA”, the Director of the defendant with a view to settle disputes with the brother bona fide adopted “PACHMOLA”, secure in the feeling that the plaintiff having given no objection to “CHATMOLA” would have no objection to “PACHMOLA” also and in fact plaintiff had not raised any objection in the last 13 years. It was further contended that the defendant besides marketing “PACHMOLA” was also carrying on business only in the name of “AAM CHASKA” and which mark had been assigned by defendant in 2008 and since when had been carrying on business only in the name of “PACHMOLA”. With respect to other goods on its invoices, it was stated that the same were not a trademarked but generic products.

17. I find merit in the distinguishing features aforesaid urged by the defendant with the Pankaj Goel case. From the documents filed by the defendant, continuous use by the defendant of the mark “PACHMOLA” since 1998 is evident. There is nothing to show that the defendant is trading under several other marks, as Pankaj Goel was found to be doing. Similarly, there is no other injunction against defendant, as was against Pankaj Goel. The contentions raised by the senior counsel for the plaintiff in rejoinder are without any basis. It is not pleaded as to how the volume of sales of the defendant has increased for the plaintiff to have decided to sue the defendant now. Moreover, if according to the plaintiff the turnover of the defendant now is more, so as to make the plaintiff sue the defendant, the same would also be of relevance in the balance of convenience in granting the interim relief. As aforesaid, this court after examining the trade dress of the product of plaintiff and of the defendant prima facie does not find any possibility of the buyers being deceived or there being possibility of any confusion.

18. The counsel for the plaintiff has also relied upon a number of judgments filed along with the list of authorities. However, in view of the above and the principles being well settled need is not felt for discussing the same.

19. The plaintiff is not found entitled to the interim relief on the ground of passing off for the reasons aforesaid. The application is disposed of only with the direction to the defendant to maintain accounts of sales of Digestive Tablets/Digestive Preparations under the mark “PACHMOLA” and to file the same in this court with advance copy to the plaintiff on quarterly basis. Needless to say, nothing contained herein to be deemed to be an expression of opinion on merits of the matter.

No order as to costs.

Dabur India Ltd. v. Alka Ayurvedic Pvt. Ltd.

Judgment Summary — Rajiv Sahai Endlaw, J.

Factual and Procedural Background

Legal Issues Presented

Arguments of the Parties

Pleadings and Arguments Advanced by the Defendant

Pleadings and Arguments Advanced by the Plaintiff

Table of Precedents Cited

Court's Reasoning and Analysis

Holding and Implications

Dabur India Ltd. v. Alka Ayurvedic Pvt. Ltd.

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