Debangana Ray
Published on July 5, 2022 at 19:06 IST
The High Court of Delhi has held that if in action for infringement of a trademark, it is shown that the essential features of the trademark are breached by the defendant, the difference in layout or packaging would be of no consequence.
The Single bench of Justice Jyoti Singh was dealing with a suit for permanent injunction filed by Sun Pharmaceutical Industries to restrain the defendant, Punam Devi from using the trademark RANBAXY LABORATORIES.
The plaintiff was involving in manufacturing of pharmaceuticals since the year of 1978. In 2014, they acquired the assets and intellectual property of Ranbaxy Laboratories along with the trademarks of RANBAXY and RANBAXY LABORATORIES LIMITED.
The plaintiff markets drugs and formulations in over 150 countries and has a consolidated turnover of over Rs. 30000 Crores. It has over 45 manufacturing units on six continents and 10 world class research centres.
It was stated that Ranbaxy Laboratories Ltd. adopted the trademark RANBAXY in 1961 and applied for registration in 1991 which was assigned to the plaintiff in 2015 who is now the proprietor of trademarks across the globe.
It was further contended that the plaintiff has made efforts to popularize the trademark name and has spent large amounts of money on sales, promotion, advertisement and publicity of the same from which it has acquired a good reputation.
In August 2019, the case of the plaintiffs became aware of the registration of trademark RANBAXY LABORATORIES in class 35 was published in the Trade Marks Journal.
The application was filed on proposed to be used basis for the whole of India. However, after some research, the plaintiff found another application filed by the defendant under class 5 which was also on the proposed to be used basis.
The same was objected under Section 11 of the Trade Marks Act, 1999 due to the existence of a similar marks on the register.
The action of the defendant was a blatant and slavish imitation of its well known trademark and a consumer with average intelligence is bound to be confused and deceived as the goods are similar.
Hence, the plaintiff alleged that the intent of the defendant is to take unfair advantage of the reputation of its registered trademark RANBAXY by misrepresenting to the public and creating a belief that the goods and services offered are connected to the plaintiff.
Several notices were served on the defendant but it did not appear, therefore, the Court decided to proceed with the matter ex parte. The Court observed that plaintiff has valid registration in its name.
The Court held that the cause of action for the present suit arose when the defendant applied for the impugned trademark and when it was granted the drug license by the Central Licensing Authority and the plaintiff has reasonable apprehension that the defendants might start operations in Delhi.
The Court held that the mark RANBAXY LABORATORIES mark is visually, phonetically, structurally identical to the trademark RANBAXY and RANBAXY LABORATORIES LIMITED and the goods being pharmaceuticals products in class 5 are also identical.
The Court further held that a case for infringement of trademark under Section 29(2)(c) of the Trade Marks Act, 1999 is made out as the identity of the trademark and the goods and services covered under it are similar and the same is likely to cause confusion on the part of public.
The Court held that in an action for infringement of trademark once it is shown that essential features of the trademark are adopted by the defendant, the difference in layout, packaging etc. would be of no consequence.
Accordingly, the Court decreed the suit of the plaintiff and passed a permanent injunction against the defendants from using the trade name RANBAXY LABORATORIES in any manner. The Court awarded Rs. 6,00,000/- as the cost.