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2013 (8) TMI 468 - HC - Companies LawInfringement of Registered Trade Mark - Whether the Defendants had infringed the registered trade mark AMLOBET of the Plaintiff by using the mark - Held that - The Defendants had indeed infringed registered trademark AMLOBET of the Plaintiff by using the mark AMLOVATE/AMLOVATE-A - there was phonetic similarity when both marks were pronounced There was also a structural similarity in the marks - The two marks have to be compared as a whole - The two drugs are prescribed for treating the same symptom viz., high blood pressure that makes even stricter the test of deceptive similarity leading to confusion in the mind of an average customer - A comparison of the two marks AMLOBET and AMLOVATE as a whole lends support to the Plaintiff s case that there was an overall structural and phonetic similarity between the marks when examined from the point of view of a man of average intelligence and imperfect recollection - It was likely that one drug could be confused for the other Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 (3) TMI 928 - SUPREME COURT OF INDIA . Passing off of Goods - Whether the Defendants were passing off their goods as those of the Plaintiff by using the mark - Held that - The use by the Defendants of the mark AMLOVATE/AMLOVATE-A amounts to passing off the product of the Defendants as that of the Plaintiff - The adoption by Defendants of a phonetically and structurally similar mark more than a decade after the Plaintiff began marketing its product under the mark was dishonest - Section 65B (4) provided for an alternative method of proving an electronic record by producing the certificate of a person in whose custody the computer device in which the document was stored in an electric form remained. Territorial Jurisdiction - Whether the Court had territorial jurisdiction to try the present suit Held that - The Court negatives the plea of the Defendants that the Plaintiff was not carrying on business within the territorial jurisdiction of the Court - it had been operating its office at Delhi both for sales as well as liasioning purposes - The Delhi office personnel were employed for obtaining necessary approvals from the various regulatory authorities based in Delhi without which it cannot carry on its business. Damages - Permanent Injunction - Whether the Plaintiff was entitled to damages and if so to, what amount and from whom - the issue was answered against the Plaintiff - the Plaintiff would be entitled to the costs of these proceedings The right of the Plaintiff to institute proceedings on that basis to recover the loss of profits was reserved - Rs.30,000 which will be paid by the Defendants to the Plaintiff - injunction Granted to the petitioner.
Issues Involved:
1. Infringement of the registered trademark AMLOBET. 2. Passing off by using the mark AMLOVATE/AMLOVATE-A. 3. Territorial jurisdiction of the Court. 4. Entitlement to damages. Detailed Analysis: Issue No. 1: Infringement of the Registered Trademark AMLOBET The Plaintiff, Sun Pharmaceuticals Industries Limited (SPIL), claimed that the Defendants infringed its registered trademark AMLOBET by using a deceptively similar mark, AMLOVATE. The Plaintiff's mark AMLOBET, registered under No. 745615 in Class 5, has been in use since 1997. The Plaintiff argued that AMLOVATE, used by the Defendants, is phonetically and structurally similar to AMLOBET, leading to confusion among consumers. The Court noted that both marks contain the generic prefix "AMLO," derived from the salt Amlodipine, which is common in the trade. However, the Plaintiff did not claim monopoly over "AMLO" but objected to the similarity of AMLOVATE to AMLOBET. The Court emphasized that the marks should be compared as a whole, considering phonetic and structural similarities. The judgment cited precedents, including Durga Dutt v. Navaratna Pharmaceuticals and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., to stress the importance of avoiding consumer confusion, especially with medicinal products. The Court concluded that AMLOVATE is deceptively similar to AMLOBET, likely causing confusion among consumers, and thus constitutes infringement under Section 29 of the Trade Marks Act, 1999. Issue No. 2: Passing Off by Using the Mark AMLOVATE/AMLOVATE-A The Plaintiff demonstrated extensive commercial use of AMLOBET since 1997, supported by unchallenged invoices and a Chartered Accountant's certificate. The Defendants began using AMLOVATE in May 2010, much later than the Plaintiff's use of AMLOBET. The Court found that the Defendants' adoption of AMLOVATE was dishonest and aimed at benefiting from the Plaintiff's established reputation. The Court rejected the Defendants' objection regarding the electronic printouts of sales invoices, affirming their admissibility under Section 65B of the Indian Evidence Act, 1872. The Court held that the Defendants' use of AMLOVATE amounts to passing off, misleading consumers to believe that the Defendants' products are associated with the Plaintiff. Issue No. 3: Territorial Jurisdiction of the Court The Defendants argued that the Plaintiff did not conduct business within the territorial limits of the Court. However, the Plaintiff provided evidence of operating an office in Delhi for sales and regulatory purposes, supported by a lease agreement and sales invoices. The Court found that the Plaintiff was indeed carrying on business within its jurisdiction, satisfying the requirements of Section 134 of the Trade Marks Act. Issue No. 4: Entitlement to Damages The Plaintiff sought damages of Rs. 20 lakhs but failed to provide sufficient evidence to substantiate this claim. Consequently, the Court did not grant the requested damages. However, the Plaintiff was awarded the costs of the proceedings amounting to Rs. 30,000, payable by the Defendants within four weeks. Relief The suit was decreed in favor of the Plaintiff, granting permanent injunctions against the Defendants from using the trademark AMLOVATE. The Defendants were also directed to render accounts of profits earned from the sale of AMLOVATE to the Plaintiff within eight weeks. The Plaintiff reserved the right to recover lost profits based on these accounts. The Court awarded costs of Rs. 30,000 to the Plaintiff. Conclusion The judgment comprehensively addressed the issues of trademark infringement, passing off, territorial jurisdiction, and entitlement to damages. The Court upheld the Plaintiff's claims, emphasizing the importance of preventing consumer confusion in the pharmaceutical industry.
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