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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 ..... xhibit PW 1/4 is a photograph of the Plaintiff's medicine being sold and marked as AMLOBET. On 14th October 1996 the Plaintiff obtained a drug licence to manufacture medicines under the aforementioned mark. It has been extensively and commercially used since then. Exhibit PWs 1/6, 1/7 and 1/8 are invoices of the Plaintiff for the years 1998 to 2011 which show sales of AMLOBET. The certificate from the Chartered Accountant ('CA') certifying the annual sales and promotional expenses for the period 2000 to 2011 has been exhibited as PW 1/11. The original literature and packaging material has been exhibited as PW 1/5. Trade mark registration was granted for the mark AMLOBET in favour of the Plaintiff under No. 745615 in Class 5 on 18th June 1997. The registration certificate is marked as Exhibit PW 1/10. 3. The case of the Plaintiff is that Defendants 1 to 3 who are located in Bangalore are 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e same salt; the imperfect recollection of the competing trade marks may lead to confusion even amongst physicians and chemists despite the drugs being scheduled drugs and consumers may assume one to be a variant of another, both originating from the Plaintiff. It is stated that the use of the trademark AMLOVATE by the Defendants is deceptively similar to the Plaintiff's trademark AMLOBET and constitutes infringement of the Plaintiff's registered trademark. The Plaintiff has been using the registered mark in India since 1997 and any unauthorised use of the said mark or any other identical or similar mark would lead to erosion of the distinctiveness of the registered trademark AMLOBET and constitutes infringement under Section 29 of the TM Act. A case is also made out for passing off an unfair competition. 5. Summons in the suit were directed to issue on 21st December 2011. While directing 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... trademark adopted by the Defendant is deceptively similar to the registered trademark of the Plaintiff. The two competing marks in this case are AMLOBET of the Plaintiff and AMLOVATE of the Defendants. There is no dispute that 'AMLO' is generic and derived from the salt Amlodipine. The Plaintiff has repeatedly stated that it is not claiming any monopoly in 'AMLO' and has no objection to its use as long as it is not deceptively similar to its trademark AMLOBET. The Plaintiff acknowledges that there are other medicines being sold in the market viz., AMLODIN, AMLOPIN, AMLOC, AMLOGARD, AMLOR, AMLONE etc. It is conceded that 'AMLO' is common to trade and there are 250 applications with the prefix 'AMLO' in Trade Mark Registry. As held by the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 "the presence of a mark in the register does not 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 Biot ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... on would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of nonmedicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ff the product of the Defendants as that of the Plaintiff. Issue No.3 18. The case of the Defendants is that the Plaintiff does not carry on business within the territorial limits of this Court and that its website does not mention the Delhi Office. It is contended that the requirements of 'carrying on business' in terms of Section 134 of the TM Act is not fulfilled in terms of the decision of the Supreme Court in Dhodha House v. Patel Field Marshal Industries (2006) 9 SCC 41. 19. In its replication, the Plaintiff has stated that it has been operating its office at Delhi both for sales as well as liasioning purposes. The Delhi office personnel are employed for obtaining necessary approvals from the various regulatory authorities based in Delhi without which it cannot carry on its business. It also has an exclusive carriage and forwarding agent Aditya Medi Sales 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 neg ..... 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