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TMI Blog2013 (8) TMI 468X X X X Extracts X X X X X X X X Extracts X X X X ..... IA ]. 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 busin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e marketing a similar medicine under the mark AMLOVATE. The said medicine is manufactured by Defendant No.4 at Solan in Himachal Pradesh. The printing of the promotional material of the product, and in particular the leaflets, is being carried out by Defendant No.5 located in New Delhi. The Plaintiff states that it came across an application for registration of the trade mark AMLOVATE in favour of Defendant No.1 under No. 1964725 published in the Trade Mark Journal No. 1463 dated 20th December 2010. The application was on proposed to be used basis. The Plaintiff tried to locate the Defendants medicine under the aforementioned mark AMLOVATE. However, it could not find said medicine selling in any market or advertised in any trade journal. Accordingly, on 8th January 2011 the Plaintiff requested Defendant No.1 to withdraw its trade mark application. The Plaintiff then filed a notice of opposition in Form TM-5 dated 11th March 2011 before the Trade Mark Registry stating that the Defendant s mark was in breach of Sections 9(1)(a), 9(2)(a), 11(1) and 11(3)(a) of the Trade Marks Act, 1999 ( TM Act ). Defendant No.1 filed a counter affidavit dated 15th July 2011 in Form TM-6 in the Tra ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... cting notice to issue in IA No. 20721 of 2011 under Order XXXIX Rules 1 and 2 CPC on the same date, the Court passed an ad interim ex parte order restraining the Defendants from using the trademark AMLOVATE in relation to the medicinal preparations, or any other trade mark as may be deceptively similar with the trade mark AMLOBET of the Plaintiff amounting to its infringement. 6. On 4th October 2012, the following issues were framed: 1. Whether the Defendants have infringed the registered trade mark AMLOBET of the Plaintiff by using the mark AMLOVATE/AMLOVATE-A? OPP 2. Whether the Defendants are passing off their goods as those of the Plaintiff by using the mark AMLOVATE/AMLOVATE-A? OPP 3. Whether this Court has territorial jurisdiction to try the present suit? OPD 4. Whether the Plaintiff is entitled to damages and if so to, what amount and from whom? OPP 5. Relief. 7. A Local Commissioner ( LC ) was appointed for recording the evidence. In the affidavit of Mr. Hani Rizvi (PW-1) dated 9th November 2012, the averments in the plaint were re-affirmed and the documents relied upon marked as exhibits. The affidavit by way of evidence dated 21st February 2013 of Mr. Asho ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t prove its user at all. It is possible that the mark may have been registered but not used. 11. The two marks have to be compared as a whole. The legal position in this regard is well settled as explained in Durga Dutt v. Navaratna Pharmaceuticals AIR 1965 SC 980 which was followed by this Court in United Biotech Pvt.Ltd. v. Orchid Chemicals 2012 (50) PTC 433 (Del) (DB). In the latter judgment, the Division Bench affirmed the view of the Single Judge in United Biotech Pvt. Ltd. v. Orchid Chemicals 182 (2011) DLT 20 in which it was observed as under: Where the pharmaceutical products are sold with the deceptively similar marks and are likely to cause confusion in the mind of an average consumer with imperfect recollection then a strict test must be applied to them to ascertain the deceptive similarity. 12. In the present case there is phonetic similarity when both marks are pronounced. There is also a structural similarity in the marks. The two drugs are prescribed for treating the same symptom viz., high blood pressure. They may be scheduled drugs sold on prescription. However, that makes even stricter the test of deceptive similarity leading to confusion in the mind of a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he public health. 13. Issue No.1 is answered in the affirmative that the Defendants have indeed infringed registered trademark AMLOBET of the Plaintiff by using the mark AMLOVATE/AMLOVATE-A. Issue No. 2 14. The extensive use by the Plaintiff of the mark AMLOBET commercially, since 1997, has been proved by the Plaintiff through the invoices and the certificate of the CA which have remained unchallenged. The invoices produced by the Defendants show that they have been using the mark AMLOVATE only from May 2010. The Plaintiff is the prior user of AMLOBET. It is unlikely that being in the same trade and industry, the Defendants were unaware of the adoption and use by the Plaintiff of the mark AMLOBET for treating blood pressure. Therefore there is merit in the submission of the Plaintiff that the adoption by Defendants of a phonetically and structurally similar mark AMLOVATE more than a decade after the Plaintiff began marketing its product under the mark AMLOBET is dishonest. 15. It is sought to be contended by the Defendant that Exhibit PW-1/9 (Colly) are electronic printouts of the sale invoices mentioned in the certificate of the CA (Exhibit PW-1/11) and that the person is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Limited having its office at Delhi and its medicines are being sold in Delhi. The lease and licence agreement dated 31st May 2008 in relation to the Delhi office has been marked as Exhibit PW-1/2. The invoices Exhibits PW-1/6 to 1/8 reflect the sales of the Plaintiff s product in Delhi. In the circumstances, the Court negatives the plea of the Defendants that the Plaintiff is not carrying on business within the territorial jurisdiction of this Court. 20. Accordingly, issue No.3 is answered against the Defendants and in favour of the Plaintiff. Issue No.4 21. The Plaintiff has not placed on record sufficient material to enable the Court to accept its plea for damages in the sum of Rs.20 lakhs. Consequently, the issue is answered against the Plaintiff. Nevertheless, the Plaintiff would be entitled to the costs of these proceedings. 22. The suit is decreed in terms of prayers (a), (b) and (c). A decree is also passed directing the Defendants to render to the Plaintiff within eight weeks the accounts of the profits earned by them from the sale of AMLOVATE. The right of the Plaintiff to institute proceedings on that basis to recover the loss of profits is reserved. The suit is dec ..... X X X X Extracts X X X X X X X X Extracts X X X X
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