2011 (8) TMI 1291 - HC - Indian Laws

Summary

Issues Involved:
1. Territorial Jurisdiction
2. Passing Off
3. Entitlement to Injunction
4. Entitlement to Rendition of Accounts
5. Entitlement to Delivery Up of Infringing Packaging Material
6. Relief

Issue-wise Detailed Analysis:

1. Territorial Jurisdiction:
The judgment does not specifically address the issue of territorial jurisdiction in the provided text, implying that the court's jurisdiction to try the suit was either not contested or was resolved prior to the detailed judgment.

2. Passing Off:
The plaintiff, a pharmaceutical company, alleged that the defendant's trademark "NIFTAS" was similar to its own "NIFTRAN," leading to confusion and deception among consumers. The defendant argued that both trademarks were based on the drug Nitrofurantoin and that the suffixes "TRAN" and "TAS" were distinct, representing their respective companies "RANBAXY" and "INTAS." The court noted that both trademarks were registered, and under Section 28(3) of the Trade Marks Act, 1999, no exclusive right against each other was acquired merely by registration. The court emphasized the principle of passing off, focusing on the likelihood of confusion rather than actual confusion. It concluded that the products' differences in packaging, form, and price, along with the distinct phonetic and visual characteristics of the trademarks, reduced the likelihood of confusion.

3. Entitlement to Injunction:
The court denied the plaintiff's request for an interim injunction, citing several reasons:
- The significant differences between the products' packaging, form, and price.
- The phonetic and visual dissimilarity between "NIFTAS" and "NIFTRAN."
- The delay of more than three months in filing the suit after becoming aware of the defendant's product.
- The substantial sales of "NIFTAS" by the defendant since the suit was filed, indicating that an injunction at this stage would be inappropriate.

4. Entitlement to Rendition of Accounts:
The court directed the defendant to keep complete and accurate accounts of sales and profits from the drug "NIFTAS." The defendant was required to file accounts from the launch of the drug until March 31, 2011, within two weeks, and for subsequent financial years within three months of the financial year's closing.

5. Entitlement to Delivery Up of Infringing Packaging Material:
The court did not grant any specific relief regarding the delivery up of infringing packaging material. Instead, it focused on the differences in packaging and the requirement for the defendant to maintain accurate sales records.

6. Relief:
The court disposed of the application in terms of the order, directing the defendant to maintain accounts and not to change the packaging without prior permission. The case was set for further proceedings, with a Local Commissioner appointed to record evidence.

Conclusion:
The court's judgment emphasized the differences between the two products and the lack of phonetic and visual similarity between the trademarks "NIFTAS" and "NIFTRAN." The plaintiff's request for an interim injunction was denied due to the delay in filing the suit, the differences in the products, and the substantial sales of the defendant's product. The defendant was directed to maintain accurate accounts and not change the packaging without court permission. The case was set for further proceedings with a Local Commissioner appointed to record evidence.