CS(OS)/3244/2011 of SUN PHARMACEUTICAL INDUSTRIES LIMITED Vs MUKESH KUMAR P & ORS

IN THE HIGH COURT OF DELHI AT NEW DELHICS (OS) No. 3244 of 2011

Reserved on: July 2, 2013Decision on: July 22, 2013

SUN PHARMACEUTICALS INDUSTRIES LTD...... PlaintiffThrough:Mr. Sachin Gupta and Mr. VikrantNagpal, Advocates.

versus

MUKESH KUMAR P. & ORS...... DefendantsThrough: Mr. Abhishek Malhotra and Mr. AngadSingh Dugal, Advocates.

CORAM: JUSTICE S. MURALIDHAR

J U M N T22.07.2013

1. This suit has been filed Sun Pharmaceuticals Industries Limited (‘SPIL’)against Mr. P. Mukesh Kumar, the proprietor of M/s. Idalis (a division ofMarx Remedies) (Defendant No.1), M/s. Marx Remedies (Defendant No.2),Invision Medi Sciences Pvt.Ltd. (Defendant No.3), M/s. Chimak HealthCare located at Solan in Himachal Pradesh (Defendant No.4) and M/s.Visions located at New Delhi (Defendant No.5) for permanent injunctionrestraining the Defendants from infringing the Plaintiff’s trade markAMLOBET, passing off, rendition of accounts and delivery of the infringinggoods of the Defendants etc.

2. The case of the Plaintiff is that it coined the mark AMLOBET from the

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salt Amlodipine and Atenolol used in treatment of high blood pressure andprevention of chest pain. Exhibit PW 1/4 is photograph of the Plaintiff’smedicine being sold and marked as AMLOBET. On 14[th]October 1996 thePlaintiff obtained drug licence to manufacture medicines under theaforementioned mark. It has been extensively and commercially used sincethen. Exhibit PWs 1/6, 1/7 and 1/8 are invoices of the Plaintiff for the years1998 to 2011 which show sales of AMLOBET. The certificate from theChartered Accountant (‘CA’) certifying the annual sales and promotionalexpenses for the period 2000 to 2011 has been exhibited as PW 1/11. Theoriginal literature and packaging material has been exhibited as PW 1/5.Trade mark registration was granted for the mark AMLOBET in favour ofthe Plaintiff under No. 745615 in Class 5 on 18[th]June 1997. The registrationcertificate is marked as Exhibit PW 1/10.

3. The case of the Plaintiff is that Defendants 1 to 3 who are located inBangalore are marketing similar medicine under the mark AMLOVATE.The said medicine is manufactured by Defendant No.4 at Solan in HimachalPradesh. The printing of the promotional material of the product, and inparticular the leaflets, is being carried out by Defendant No.5 located inNew Delhi. The Plaintiff states that it came across an application forregistration of the trade mark AMLOVATE in favour of Defendant No.1under No. 1964725 published in the Trade Mark Journal No. 1463 dated 20[th]December 2010. The application was on ‘proposed to be used’ basis. ThePlaintiff tried to locate the Defendants’ medicine under the aforementionedmark AMLOVATE. However, it could not find said medicine selling in anymarket or advertised in any trade journal. Accordingly, on 8[th]January 2011

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the Plaintiff requested Defendant No.1 to withdraw its trade markapplication. The Plaintiff then filed notice of opposition in Form TM-5dated 11[th]March 2011 before the Trade Mark Registry stating that theDefendant’s mark was in breach of Sections 9(1)(a), 9(2)(a), 11(1) and11(3)(a) of the Trade Marks Act, 1999 (‘TM Act’). Defendant No.1 filed acounter affidavit dated 15[th]July 2011 in Form TM-6 in the Trade MarksRegistry. It contended that the Plaintiff was seeking monopoly on theprefix ‘AMLO’. Defendant No.1 filed two invoices of sales and pamphletalong with one invoice issued by Defendant No.5 for printing of the leaflets.

4. The case of the Plaintiff is that the adoption by Defendant No.1 of themark AMLOVATE is dishonest since it knew that the Plaintiff was usingthe trade mark AMLOBET since 1996. It is pointed out that the Defendantshave adopted AMLOVATE with combination of alphabet of numerals being‘L’,‘A’and‘5’suchasAMLOVATE-5,AMLOVATE-LandAMLOVATE-A which is generic and indicative of the salt and/or quantityof salt. It is submitted that the trademark AMLOVATE is ‘non-distinctive’.A cease and desist notice was issued by the Plaintiff to the Defendant on 2[nd]December 2011 asking it to stop using the trade mark AMLOVATE and towithdraw its trade mark application. By reply dated 7[th]December 2011,Defendant No.1 has refused to comply with the terms of the said legalnotice. In the aforementioned circumstances, the present suit was filed on20[th]December 2011. The case of the Plaintiff is that the adoption of thetrademark AMLOVATE by Defendants would cause confusion anddeception as the rival marks are phonetically and structurally similar andlikey to be confused with each other on account of imperfect recollection of

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the Plaintiff’s trademark; the competing/rival marks are used for the sametreatment i.e. high blood pressure and both drugs contain the same salt; theimperfect recollection of the competing trade marks may lead to confusioneven amongst physicians and chemists despite the drugs being scheduleddrugs and consumers may assume one to be variant of another, bothoriginating from the Plaintiff.It is stated that the use of the trademarkAMLOVATE by the Defendants is deceptively similar to the Plaintiff’strademark AMLOBET and constitutes infringement of the Plaintiff’sregistered trademark. The Plaintiff has been using the registered mark inIndia since 1997 and any unauthorised use of the said mark or any otheridentical or similar mark would lead to erosion of the distinctiveness of theregistered trademark AMLOBET and constitutes infringement under Section29 of the TM Act.A case is also made out for passing off an unfaircompetition.

5. Summons in the suit were directed to issue on 21[st]December 2011. Whiledirecting notice to issue in IA No. 20721 of 2011 under Order XXXIX Rules1 and 2 CPC on the same date, the Court passed an ad interim ex parte orderrestraining the Defendants from using the trademark AMLOVATE inrelation to the medicinal preparations, or any other trade mark as may bedeceptively similar with the trade mark AMLOBET of the Plaintiffamounting to its infringement.

6. On 4[th]October 2012, the following issues were framed:

2. Whether the Defendants are passing off their goods as those of thePlaintiff by using the mark AMLOVATE/AMLOVATE-A?OPP

3. Whether this Court has territorial jurisdiction to try the present suit?

OPD4. Whether the Plaintiff is entitled to damages and if so to, whatamount and from whom?OPP

5. Relief.”

7. Local Commissioner (‘LC’) was appointed for recording the evidence.In the affidavit of Mr. Hani Rizvi (PW-1) dated 9[th]November 2012, theaverments in the plaint were re-affirmed and the documents relied uponmarked as exhibits. The affidavit by way of evidence dated 21[st]February2013 of Mr. Ashok S. Mutha, the authorised representative of DefendantNo.3 was filed marking Exhibits D-1/1 to D-1/4.

8. The case of the Defendants is that their product AMLOVATE has beenderived from the generic salt/word ‘AMLO’ which is drug commonly usedall over the country in relation to the treatment of high blood pressure andangina. The generic salt ‘AMLO’ commonly used by the parties is also usedby various other manufactures of similar generic drugs. Further it is statedthat the drug is schedule drug available only through validprescription. The sales promotion and extensive activities for developmentof the product under the trademark AMLOVATE since 2010 and theinvoices raised by Defendant No.2 in respect of AMLOVATE-A andAMLOVATE-5 tablets are Exhibit 1/4.

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9. The cross-examination of the Plaintiff’s witnesses took place on 7[th]December 2012. There was no question put to the witness on the veracity ofthe certificate issued by the CA (Exhibit PW 1/11). The accuracy of thesales figures of the Plaintiff as depicted in the said certificate remainsuncontroverted.

Issue No.1:

10. The Defendants do not deny that the Plaintiff’s mark AMLOBET isregistered in its favour under No. 745615 in Class 5 of the Schedule to theTM Rules. Under Section 28, the Plaintiff is the registered proprietor andhas the right to extensive use thereof. There is no challenge to the validity ofthe Plaintiff’s trademark registration. Section 29 of the TM Act requiresexamination whether in fact the trademark adopted by the Defendant isdeceptively similar to the registered trademark of the Plaintiff. The twocompeting marks in this case are AMLOBET of the Plaintiff andAMLOVATE of the Defendants. There is no dispute that ‘AMLO’ isgeneric and derived from the salt Amlodipine. The Plaintiff has repeatedlystated that it is not claiming any monopoly in ‘AMLO’ and has no objectionto its use as long as it is not deceptively similar to its trademark AMLOBET.The Plaintiff acknowledges that there are other medicines being sold in themarket viz., AMLODIN, AMLOPIN, AMLOC, AMLOGARD, AMLOR,AMLONE etc. It is conceded that ‘AMLO’ is common to trade and there are250 applications with the prefix ‘AMLO’ in Trade Mark Registry. As heldby the Supreme Court in Corn Products Refining Co. v. Shangrila FoodProducts Ltd. AIR 1960 SC 142 “the presence of mark in the register does

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not prove its user at all. It is possible that the mark may have been registeredbut not used.”

11. The two marks have to be compared as whole. The legal position inthis regard is well settled as explained in Durga Dutt v. NavaratnaPharmaceuticals AIR 1965 SC 980 which was followed by this Court inUnited Biotech Pvt.Ltd. v. Orchid Chemicals 2012 (50) PTC 433 (Del)(DB). In the latter judgment, the Division Bench affirmed the view of theSingle Judge in United Biotech Pvt. Ltd. v. Orchid Chemicals 182 (2011)

DLT 20 in which it was observed as under:

“Where the pharmaceutical products are sold with thedeceptively similar marks and are likely to causeconfusion in the mind of an average consumer withimperfect recollection then strict test must be appliedto them to ascertain the deceptive similarity.”

12. In the present case there is phonetic similarity when both marks arepronounced. There is also structural similarity in the marks. The two drugsare prescribed for treating the same symptom viz., high blood pressure.They may be scheduled drugs sold on prescription. However, that makeseven stricter the test of deceptive similarity leading to confusion in the mindof an average customer. comparison of the two marks AMLOBET andAMLOVATE as whole lends support to the Plaintiff’s case that there is anoverall structural and phonetic similarity between the marks when examinedfrom the point of view of man of average intelligence and imperfectrecollection. It is likely that one drug could be confused for the other. In

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Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. AIR 2001 SC1952, the Supreme Court held:

“33. ……. In country like India where there is no singlecommon language, large percentage of population is illiterateand small fraction of people know English, then to apply theprinciples of English law regarding dissimilarity of the marks orthe customer knowing about the distinguishing characteristicsof the plaintiffs goods seems to over look the ground realities inIndia. While examining such cases in India, what has to be keptin mind is the purchaser of such goods in India who may haveabsolutely no knowledge of English language or of the languagein which the trade mark is written and to whom different wordswith slight difference in spellings may sound phonetically thesame. While dealing with cases relating to passing off, one ofthe important tests which has to be applied in each case iswhether the misrepresentation made by the defendant is of sucha nature as is likely to cause an ordinary consumer to confuseone product for another due to similarity of marks and othersurrounding factors. What is likely to cause confusion wouldvary from case to case. However, the appellants are right incontending that where medicinal products are involved, the testto be applied for adjudging the violation of trade mark law maynot be at par with cases involving non-medicinal products. Astricter approach should be adopted while applying the test tojudge the possibility of confusion of one medicinal product foranother by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to theplaintiff, confusion between the two medicinal products mayhave disastrous effects on health and in some cases life itself.Stringentmeasuresshouldbeadoptedspeciallywheremedicines are the medicines of last resort as any confusion insuch medicines may be fatal or could have disastrous effects.The confusion as to the identity of the product itself could havedire effects on the public health.”

13. Issue No.1 is answered in the affirmative that the Defendants haveindeed infringed registered trademark AMLOBET of the Plaintiff by usingthe mark AMLOVATE/AMLOVATE-A.

Issue No. 2

14.TheextensiveusebythePlaintiffofthemarkAMLOBETcommercially, since 1997, has been proved by the Plaintiff through theinvoices and the certificate of the CA which have remained unchallenged.The invoices produced by the Defendants show that they have been usingthe mark AMLOVATE only from May 2010. The Plaintiff is the prior userof AMLOBET. It is unlikely that being in the same trade and industry, theDefendants were unaware of the adoption and use by the Plaintiff of themark AMLOBET for treating blood pressure. Therefore there is merit in thesubmission of the Plaintiff that the adoption by Defendants of phoneticallyand structurally similar mark AMLOVATE more than decade after thePlaintiff began marketing its product under the mark AMLOBET isdishonest.

15. It is sought to be contended by the Defendant that Exhibit PW-1/9(Colly) are electronic printouts of the sale invoices mentioned in thecertificate of the CA (Exhibit PW-1/11) and that the person issuing thecertificate under Section 65B of the Indian Evidence Act, 1872 has not filedany affidavit in support of the said certificate and has not been examinedand, therefore, the said exhibits do not have any evidentiary value.

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16. Section 65B (4) provides for an alternative method of proving anelectronic record by producing the certificate of person in whose custodythe computer device in which the document was stored in an electric formremained. In Rakesh Kumar and Ors. v. State 183 (2009) DLT 658, it washeld that “sub-Section (4) of Section 65B provides for an alternative methodto prove electronic record. Sub-section (4) allows the proof of the conditionsset out in sub-Section (2) by means of certificate issued by the persondescribed in Sub-section 4 and certifying contents in the manner set out inthe sub-Section. The sub-Section makes admissible an electronic recordwhen certified that the contents of computer printout are generated by acomputer satisfying the conditions of sub-Section 1, the certificate beingsigned by the person described therein.” In other words, no oral testimony ofthe person issuing the certificate may be necessary unless there is challengeto the accuracy of the computer evidence on account of misuse of the systemor operational failure or interpolation. Consequently, the aforementionedobjection of the Defendants is rejected.

17. Issue No. 2 is answered by holding that the use by the Defendants of themark AMLOVATE/AMLOVATE-A amounts to passing off the product ofthe Defendants as that of the Plaintiff.

Issue No.3

18. The case of the Defendants is that the Plaintiff does not carry onbusiness within the territorial limits of this Court and that its website doesnot mention the Delhi Office. It is contended that the requirements of‘carrying on business’ in terms of Section 134 of the TM Act is not fulfilled

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in terms of the decision of the Supreme Court in Dhodha House v. PatelField Marshal Industries (2006) 9 SCC 41.

19. In its replication, the Plaintiff has stated that it has been operating itsoffice at Delhi both for sales as well as liasioning purposes. The Delhi officepersonnel are employed for obtaining necessary approvals from the variousregulatory authorities based in Delhi without which it cannot carry on itsbusiness. It also has an exclusive carriage and forwarding agent Aditya MediSales Limited having its office at Delhi and its medicines are being sold inDelhi. The lease and licence agreement dated 31[st]May 2008 in relation tothe Delhi office has been marked as Exhibit PW-1/2. The invoices ExhibitsPW-1/6 to 1/8 reflect the sales of the Plaintiff’s product in Delhi. In thecircumstances, the Court negatives the plea of the Defendants that thePlaintiff is not carrying on business within the territorial jurisdiction of thisCourt.20. Accordingly, issue No.3 is answered against the Defendants and infavour of the Plaintiff.

Issue No.4

21. The Plaintiff has not placed on record sufficient material to enable theCourt to accept its plea for damages in the sum of Rs.20 lakhs.Consequently, the issue is answered against the Plaintiff. Nevertheless, thePlaintiff would be entitled to the costs of these proceedings.

22. The suit is decreed in terms of prayers (a), (b) and (c). decree is also

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passed directing the Defendants to render to the Plaintiff within eight weeksthe accounts of the profits earned by them from the sale of AMLOVATE.The right of the Plaintiff to institute proceedings on that basis to recover theloss of profits is reserved. The suit is decreed in the above terms with costsof Rs.30,000 which will be paid by the Defendants to the Plaintiff withinfour weeks.

23. Decree sheet be drawn up accordingly.

S. MURALIDHAR, J.JULY 22, 2013dn

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