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TMI Blog2013 (2) TMI 297X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e products such as Amlovas-H, OMnitan, Amlvas, Omnitam-H, Amolvas-LS, Tenomac, Amlovas-AT, Amlovas-L, Thyrox, Anti-Thyrox, PTU, K-Cor, Q-Pril, Dynamide, Myogrel, under the trademark Procare since then. The trademark Procare , it is stated, has been used by the Plaintiff since August, 2001, on visiting cards of its Procare division, promotional literature distributed to doctors, letter heads of its Procare division, website of the Plaintiff Company i.e. www.macleodspharma.com, invoices raised on C F agents and distributors and sample gifts. 3. The Plaintiff claims that the Plaintiff has built up a large and valuable reputation for the aforesaid medicinal preparations sold under the trademark Procare on account of intrinsic quality and efficacy of the said medicinal preparations, the care and skill exercised by it in marketing the same and the labour, effort and money expended by it in promoting the sales thereof and the said trademark Procare has come to be associated exclusively with the Plaintiff by members of the trade and public. It is further claimed that the doctors, C F agents, distributors and others related to pharmaceutical industry are aware that Procare is a d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... x.PW1/3; statement showing the sales of the Plaintiff s various medicinal preparations under Procare division from the period July 2001 to June 2006 exhibited as Ex.PW1/4 and the original invoices for the said products for the period July 2001 to September 2006 exhibited as Ex.PW1/8(colly); office copy of the notice dated 20.05.2006 exhibited as Ex.PW1/5; reply of the Defendant dated 03.06.2006 exhibited as Ex.PW1/6 and the statement of Plaintiff s claim exhibited as Ex.PW1/7. 7. PW-1, Shri Mahesh Bauskar, Deputy General Manager of the Plaintiff Company, in his affidavit by way of evidence Ex.PW1/A, corroborated on oath the averments made in the plaint and proved on record documents Ex.PW1/1 to Ex.PW1/7 to support the said averments. PW1 also relied upon the document Mark A , an extract from the records of the Registrar of Companies enlisting the name of Companies which were registered in November, 2005 which includes the name of the Defendant company. 8. On the basis of the aforesaid evidence, the learned counsel for the Plaintiff submits that the Plaintiff s adoption and use of the trademark Procare in respect of medicinal preparations is prior in point of time and accordi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... esced or intended to acquiesce to the Defendant s use of the same. In the circumstances, issue no.5 is decided in favour of the Plaintiff and against the Defendant. 11. This Court in the case of Beirsdorf A.G. versus Ajay Sukhwani and Anr. 156 (2009) DLT 83, laid down that in an action for passing off, the Plaintiff is required to prove (a) goodwill; (b) deception by a third person; and (c) damage or possible damage to the claimant/Plaintiff and that goodwill includes benefit or advantage of a name and reputation in business, that the Plaintiff to succeed in a claim for passing off is required to prove and establish goodwill and the mark associated or identified with the Plaintiff is distinctive of Plaintiff s goods or services as a source of the said goods or services and that the mark or label should distinguish the Plaintiff from others. Deception implies misstatement by the Defendant so as to take benefit and advantage of Plaintiff s goodwill. Misrepresentation, it was held, can be implied and can take various shapes and forms but it is established when the Defendant adopts and starts using distinctive features identified with the Plaintiff or his goods to market his ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a dictionary word and only with the passage of time it has acquired distinctiveness. In case of coined words, the question of monopoly and justification for claiming monopoly is not relevant. The Defendants have tried to justify adoption of the word NIVEA from the alphabet N in the name of Narender, one of the partners of Defendant No.2. It is also claimed that the words VE have been taken from the name Vemla middle name of wife of Defendant No.2, other partner of the company. It is also claimed that the alphabet A is taken from the name of Mr. Ajay, one of the partners of the NIVEA Trading Company. The above contention is too specious and farfetched to be accepted. Defendants are Indians, who have been using NIVEA cream and cosmetics for last more than 50 years. They belong to middle class who are familiar and aware that the said mark commands respect as a high quality international product. The initial adoption by the Defendants is therefore fraudulent and wrongful. The explanation given for the said adoption by the Defendants is rejected. It is quite clear that the Defendants have deliberately, intentionally and wrongly adopted the mark/word NIVEA which belongs to and ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... and therefore I accept the argument of the Plaintiff that there is injury as the Defendants had acted in the manner calculated to deceive. Damage/loss in the present case can be presumed as a natural consequence of misrepresentation. The present case is one of misappropriation of business reputation of the Plaintiffs by the Defendants by using the mark NIVEA International. The present case is also one of erosion and delusion of exclusiveness, which the Plaintiff enjoys in the mark NIVEA, a coined word created by the Plaintiff. It is invasion of this right of the Defendants which has caused injury to the Plaintiff. Thus, the third trinity is also satisfied in the present case. 12. The Supreme Court in the case of Cadila Health Care Ltd. versus Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, dealing with a case of passing off initiated by one pharmaceutical company against another, observed that strict measures to prevent any confusion arising from similarity of marks with regard to medicines are required to be taken to avoid possibility of even accidental negligence in view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our cou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... medicines are required to be taken. 28. to 31. 32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critica1/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edn., para 23.12 of which reads as under: The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... intiff. The Defendant s contention that it has never used Procare as a trademark and that the word Procare is being used by it only as a firm s name or trading style is also belied from the documents collectively marked Ex.PW1/2, 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. Further, 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 by the Apex Court in the case of Cadila Health Care Ltd. (supra) that the test is to be applied strict ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... resources are spent in litigating against those who infringe the trademark and copyright of others and try to encash upon the goodwill and reputation of other brands by passing off their goods and/or services as those of that well-known brand. If punitive damages are not awarded in such cases, it would only encourage unscrupulous persons who actuated by dishonest intention, use the well reputed trademark of another person, so as to encash on the goodwill and reputation which that mark enjoys in the market, with impunity and then avoid payment of damages by remaining absent from the Court, thereby depriving the Plaintiff an opportunity to establish actual profit earned by him from use of the infringing mark, which can be computed only on the basis of its accounts books. This would, therefore, amount to putting premium on dishonesty and give an unfair advantage to an unscrupulous infringer over those who have a bonafide defence to make and therefore come forward to contest the suit and place their case before the Court. 18. In view of the aforesaid, 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 Defenda ..... 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