Brief:
In the captioned matter, the Ld. Trial Court restrained the Defendant form using the mark MEDILICE post long drawn trial and awarded punitive damages of sum of Rs. 10 Lakhs against the Defendant. Furthermore, the mark MEDICLICE was declared WELL-KNOWN by the Ld. Court.
Plaintiff:
Wings Pharmaceuticals Pvt. Ltd.
Defendant:
Kirit Bhadiadra
Competing Marks:
MEDILICE (Identical)
Nature of the Suit:
Suit for infringement, passing off, unfair competition, rendition of accounts, and delivery of impugned goods, etc.
Competing Product Description:
Anti-lice shampoo – Plaintiff
Hair Oil – Defendant
Registration Status of Plaintiff:
The Plaintiff adopted the trade mark MEDILICE in 1998 for the production of anti-lice shampoo. The Plaintiff became the registered proprietor of the trade mark MEDILICE on November 19, 2014, under class 3. This registration remains valid and in effect.
Defendant’s Registration Status:
The Defendant has also applied for registration of the mark MEDILICE in class 5, which is currently pending.
Issues raised:
1. Whether the plaintiff is entitled for permanent injunction restraining the defendant / its agents, etc. from infringing the plaintiff’s trade mark MEDILICE as alleged. ?
2. Whether the plaintiff is entitled for decree for permanent injunction restraining the defendant for passing off their goods as plaintiff’s goods by using trademark MEDILICE?
3. Whether the plaintiff is entitled for rendition of accounts?
Analysis:
Judgments:
Automatic Electrical Ltd Vs I L K Dhwan (1999) 19 PTC 81 (Dimmerdot)
- Defendant applied for registration cannot argue that the mark is descriptive.
Midas Hygiene v. Sudhir Bhatia (2004) 3 SCC 90
- In case of infringement injunction needs to follow
Sun Pharma Industries Ltd. v. Cipla Ltd., 2009 (108) DRJ 207 (Para 8, 11, 23)
- Third party cannot challenge an assignment between the plaintiffs.
Glaxosmithkline Pharmaceuticals Ltd. vs. Horizon Bioceuticals Pvt. Ltd. & Anr. 2023 SCC On-Line Del 2065
- Common to register does not prove that they are common to trade.
Allergan v. Chetana Pharma, 2007 (34) PTC 267 (Cal) (SJ), Para 11
- Mere manufacturing license does not prove usage.
Microsoft Corporation v. Rajendra Pawar & Anr., (36) PTC 697 (Del)
- Where the conduct of the erring party is found to be egregiously invidious and calculated to mint profits for his own self, awarding punitive damages prevents the erring party from taking advantage of its own wrong by escaping prosecution or detection
Reddy Laboratories Ltd. (Dr.) Vs. Reddy Pharmaceuticals Limited, 2004 SCC OnLine Del 668 (2004) 76 DRJ 6161
- to claim the defence of acquiescence, there should be a tacit or an express assent by the plaintiff to the defendant’s using the mark and in a way encouraging the defendants to continue with the business. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant as being violative of the plaintiff’s rights.
Hindustan Pencils (P) Ltd vs India Stationery, AIR 1990 Del 19
- the owners of trademarks or copyrights cannot be expected to run after every infringer and thereby remain involved in litigation at the cost of their business time, but can wait till the time the user of their name starts harming their business interests and starts misleading and confusing their customers.
Emcure Pharmaceuticals Ltd. V. Corona Remedies Pvt. Ltd. MANU/MH/1SS0/2014
- mere failure to sue without a positive act of encouragement is no defence and is no acquiescence
Relief:
A decree for a permanent injunction has been issued in favor of the Plaintiff. This injunction restrains the Defendant from dealing in cosmetic/medicinal preparations under the impugned mark MEDILICE, its variants, or any other trade mark that might be deceptively similar to the Plaintiff’s trade mark MEDILICE, thereby constituting infringement and passing off.
Compensation:
The Plaintiff is also entitled to punitive damages amounting to Rs. 10 Lakhs, in addition to the costs of the suit.
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