2013 (2) TMI 297 - HC - Indian Laws

Identical Trademark - Right in the trademark Procare - suit for permanent injunction seeking to restrain the Defendant from passing off, rendition of accounts and delivery up - Plaintiff stated that the trade name/corporate name Procare has been registered by the Defendant with the deliberate object of making illegal profit and for trading on the reputation and goodwill developed by the Plaintiff - Held that - Documentary evidence which is unrebutted on record cumulatively establishes that the Plaintiff is the prior user of the trademark Procare , that it enjoys tremendous goodwill in respect of the said trademark and that the C&F agents, distributors, doctors and others related to the pharmaceutical industry identify the said mark with the Plaintiff s products. There is nothing on record to suggest that the Defendant who is in the same trade as the Plaintiff did not have any express or constructive knowledge of prior adoption and use of the trademark Procare by the Plaintiff. The Defendant s contention that it has never used Procare as a trademark and is being used by it only as a firm s name or trading style is also belied from the documents one of which is a sample of Defendant s packaging where the trademark Procare is used, albeit in a different style. The fact that the Defendant has got incorporated a company using the word Procare and is selling its products under the said trademark, which is identical to the trademark under which the Plaintiff is marketing its most prominent range of products, coupled with the fact that the Defendant is also engaged in manufacturing and marketing pharmaceutical/medicinal products implies that there is every likelihood of deception/confusion. In view of the fact that the medicines sold by the Plaintiff under its Procare division are for chronic care, especially cardiology, thyroid disorder and anti-hypertension, and in the event of any accidental negligence and/or confusion or deception the results can be catastrophic the dicta laid down in the case of Cadila Health Care Ltd. (2001 (3) TMI 928 - SUPREME COURT OF INDIA) that the test is to be applied strictly in the case of passing off of medicinal products squarely applies. The Court is, therefore, of the view that the adoption of the word Procare by the Defendant as a prominent part of its corporate name/trading style and as its trademark is likely to lead to confusion and/or deception in the minds of customers and others concerned with the pharmaceutical industry, theeby misleading them into believing that the medicinal preparations sold by the Defendant originate from the Plaintiff. Resultantly, the Plaintiff is held entitled to a decree of permanent injunction in its favour and against the Defendant - Procare Laboratories Pvt. Ltd. The Defendant, its principal officers, servants, agents etc. are restrained from in any manner using the Plaintiff s trademark Procare or any other trademark which is deceptively similar to the Plaintiff s trademark as a part of its corporate name and/or trading style or in any other manner as may constitute passing off of the Defendant s medicinal preparations or products as those of the Plaintiff s - damages in the sum of Rs. 5 lacs along with the cost of the suit are also awarded in favour of the Plaintiff and against the Defendant.

Summary

Issues Involved:
1. Passing off and trademark infringement.
2. Delay, acquiescence, and laches.
3. Goodwill, deception, and damage in passing off.
4. Relief of damages and punitive damages.

Issue-wise Detailed Analysis:

1. Passing off and trademark infringement:
The Plaintiff, Macleods Pharmaceuticals Limited, engaged in the manufacture and sale of pharmaceuticals, filed a suit for injunction to prevent the Defendant from passing off its products as those of the Plaintiff's. The Plaintiff's trademark "Procare" has been in use since 2001 for its Procare division, which focuses on chronic care, including cardiology and thyroid disorders. The Plaintiff claimed that the Defendant, who registered "Procare Laboratories Pvt. Ltd." in November 2005, was using the name to trade on the Plaintiff's reputation and goodwill. The court noted that the Plaintiff's adoption and use of the trademark "Procare" predates the Defendant's use and that the Defendant's use of a similar name is likely to cause confusion and deception in the market.

2. Delay, acquiescence, and laches:
The Defendant argued that the suit was bad for delay, acquiescence, and laches. However, the court found that the Plaintiff acted promptly upon discovering the Defendant's use of "Procare" by serving a cease and desist notice in May 2006 and filing the suit in November 2006. The court concluded that the Plaintiff did not acquiesce to the Defendant's use of the trademark and that there was no inordinate delay in filing the suit.

3. Goodwill, deception, and damage in passing off:
The court referred to the principles laid down in previous cases, stating that in an action for passing off, the Plaintiff must prove goodwill, deception, and damage. The Plaintiff established goodwill through evidence of continuous use and promotion of the "Procare" trademark since 2001. The court found that the Defendant's use of a similar name was likely to cause deception, leading consumers to believe that the Defendant's products were associated with the Plaintiff. The court emphasized that in cases involving medicinal products, the potential for confusion can have serious health implications, thus requiring strict measures to prevent such confusion. The court concluded that the Plaintiff had suffered damage due to the Defendant's misrepresentation and deception.

4. Relief of damages and punitive damages:
The court awarded a permanent injunction in favor of the Plaintiff, restraining the Defendant from using the "Procare" trademark or any similar name. Additionally, the court awarded punitive damages of Rs. 5 lacs to the Plaintiff, emphasizing the need to deter those who undermine the law and to compensate for the resources spent in litigating against trademark infringements. The court cited previous judgments to support the award of punitive damages, highlighting the importance of corrective justice and the need to discourage unscrupulous behavior.

Conclusion:
The court ruled in favor of the Plaintiff, granting a permanent injunction and awarding punitive damages, thereby protecting the Plaintiff's trademark "Procare" and preventing the Defendant from passing off its products as those of the Plaintiff's. The judgment underscores the importance of protecting goodwill and preventing deception in the pharmaceutical industry, where confusion can have serious health consequences.