9911796707
TMI Blog2010 (6) TMI 863X X X X Extracts X X X X X X X X Extracts X X X X ..... iv.52 is stated to be among several well-known ayurvedic medicines manufactured and marketed by the Plaintiff. 4. Liv.52 is a liver tonic prescribed for liver disorders. It is further advised for promoting appetite and growth, the two biological phenomenon directly related to liver. It is stated that the trademark Liv.52 is a coined mark. According to the Plaintiff, the prefix Liv has no dictionary meaning or any meaning in common parlance. The said trademark is stated to have been coined and adopted by the Plaintiff in 1955 and has been used by it continuously and exclusively all over India since then. 5. It is claimed that at or around the time of the filing of the present suit in 1996, the approximate turnover for sales of 'Liv.52' for the year 1995-96 was over ₹ 30 crores and the promotional expenditure during the same period was ₹ 3 crores. This, according to the Plaintiff, was reflective of the goodwill that the trademark Liv.52 commands in medical circles and in the public. It is stated that the trademark Liv.52, apart from having inherent distinctiveness on account of its being a coined mark, has also become distinctive on account of its extens ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... parations which is phonetically and structurally identical to the trademark Liv.52 of the Plaintiff further amounts to the violation of the Plaintiff's statutory right of exclusive use of the mark Liv.52 and infringement of its trademark registrations under Section 29(1) of the Trade and Merchandise Marks Act, 1958 ('TM Act 1958'). It is submitted that the adoption and use of the trademark LIV-T by the Defendant in relation to the identical trade and goods is fraudulent, dishonest and totally illegal. It is alleged that the use of the said mark LIV-T by the Defendant in relation to identical trade and goods amounts to counterfeiting an offence under Sections 78 and 79 of the TM Act 1958. 9. The Plaintiff sent a legal notice on 14th March 1996 calling upon the Defendant to desist using the trademark LIV-T. However, the Defendant has continued using the said trademark. Accordingly, the present suit was filed seeking the relief of permanent injunction against the infringement and damages. 10. In the written statement filed by the Defendant, apart from raising a preliminary objection as to the territorial jurisdiction of this Court to entertain the suit and the auth ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... DRO, LIVAZOL, LIVERITE, LIVERJET, LIVERNUT, LIVERPOL, LIVUP, LIVEX, LIVIVRON, LIVIBEE, LIVINA, LIVINOL, LIVIPREP, LIVIRILE, LIVIRONVITA, LIVIRUBRA and LIVITA. It is stated that there are at least eight ayurvedic and homeopathic preparations of eight different manufacturers having names beginning with 'LIV'. These include LIVOMAP, LIVION, LIVANO, LIVOTRIT, LIVOSIN, LIVOGUARD, LIVOMYN and LIVOTONE. The Defendant, therefore, denies that they have dishonestly and mala fide adopted the mark LIV-T in relation to its medicinal preparation and that the marks LIV.52 and LIV-T are deceptively similar. Since LIV is an abbreviation of liver, and has been used in over 100 registrations as a constituent of the name under which the products relating to treatment associated with liver are being marketed, it is generic and common to trade as describing the medicines associated with the treatment of liver. The Defendant states that upon independent searches conducted by two trademark search agencies, it transpired that there are several companies that have sought registration of trademarks such as LIVADEX, LIVOGEN, LIVOTONE, LIVOVIBIN and LIVERON. 13. It is submitted that the Plaintiff ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... amendment was allowed by the order dated 29th March 2005. Thereafter the suit was again transferred to this Court. Evidence 18. The Plaintiff examined six 6 witnesses. PW 1 was Mr. K.N. Jairaman, the Commercial Manager of the Plaintiff. Mr. Jairaman stated in his evidence that he has been in the employment of the Plaintiff since 1973. He has stated that 'Liv.52' is a coined trademark of the Plaintiff and the word 'Liv' is not a medically used term. He has also stated that the medicine 'Liv.52' is sold without medical prescription, as it is an Ayurvedic medicine. Mr. Jairaman has also informed that this product is sold through the Plaintiff's 500 stockists throughout the country who in turn sell the products to the retailers. The Plaintiff also has 500 field representatives promoting this product throughout the country. Mr. Jairaman states that in March 1996, they came to know about the use of the mark 'LIV-T' by the Defendant. Mr. Jairaman has stated that the grievance against the Defendant is that in the Defendant's trademark 'LIV-T', they have adopted the Plaintiff's essential word 'Liv', due to which a consumer is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Liv.52. 22. PW 3 was Mr. V. Vashisht, a consumer of 'Liv.52', who was running a garment fabrication unit in Noida. He hE He stated that he was consuming 'Liv.52' for last six years for liver related ailments. He further states that he has not heard of any medicine other than 'Liv.52' for treatment of liver related ailments. After seeing the label 'LIV-T', he stated that he felt it should be by the manufacturers of 'Liv.52' as 'Liv' has been written on it. 23. PWs 4, 5 and 6 were Mr. Deepak Ohri, Mr. Atul Sarin and Mr. Navin Dutt respectively. They are the medical representatives of the Plaintiff who conducted survey on the significance of the distinctiveness of Liv . They produced reports exhibited as Ex. PW 4/1 to PW 4/4, PW 5/1 to PW 5/4 and PW 6/1 to PW 6/2. PW 4 stated that he did not try to find out from doctors, chemists or from journals whether there were other drugs in the market for treatment of liver disorders. 24. The Defendant tendered three witnesses. DW 1 Mr. Sangeet Aggarwal, Manager-Finance and Accounts of SBL Ltd., DW 2 Mr. Rakesh Saxena, the Search Assistant of Indmark and DW 3 Mr. Amarnath Saini, an emplo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Plaintiff has proved by production of an invoice Ex. P-2 that the product LIV-T of the Defendant is being sold at Delhi. In fact, there is no contest on this issue at all. This issue is decided against the Defendant and in favour of the Plaintiff. 29. Issue No. 3: Whether the suit is maintainable in its present form? Under Order XXX Rule 1, the partnership firm can sue or be sued in the name of the firm. The record of change of the constitution of the Petitioner firm is Ex. PW1/I. There was no cross-examination of PW-1 on this aspect. Ex. PW1/J is the application filed before the Trade Marks Registry in Form TM-24 for recording the additional partners as subsequent proprietors of the registered trade mark Liv.52. The order passed by the Registrar on 29th August 1996 is Ex. PW 1/K. It has been established that the Plaintiff has been able to discharge the onus of showing that the suit is maintainable in its present form. The issue is decided in favour of the Plaintiff and against the Defendant. 30. Issue No. 4: Whether there is no cause of action for institution of the present suit? (OPD) There is a specific averment in para 14 of the plaint that the use of the trademark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... icenced for that purpose. 35. Issue No. 9: Whether the Plaintiff is the proprietor of the trade mark Liv.52 in respect of drugs and Pharmaceuticals? (OPP) The registration certificate Registration No. 180564 dated 10th July 1957 for the trade mark Liv.52 has been produced by the Plaintiff and marked as PW 1/B. The registration is valid and in terms of Section 28 of the TM Act 1958 it makes the Plaintiff the registered proprietor of the said registered trademark. Although the Defendant has averred in the written statement that the grant of such registration is not valid since the mark lacks distinctiveness, the fact remains that till date the Defendant has not raised any challenge to the validity of the grant of registration of the trademark Liv.52 in favour of the Plaintiff. Apart from the above, the Plaintiff has also sought to establish its proprietary right over the trade mark Liv.52 on account of long usage. Invoices of sales since 1972 have been exhibited as Ex. PW 1/1 to PW 1/38. Ex. PW X-1 to X-14 is the literature pertaining to Liv.52. The evidence of PW-1 shows that Liv.52 is sold through 500 stockists throughout the country. Ex. PW 4/1 to PW 4/4, PW 5/1 to PW 5/4 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... hat added matters to the features of similarity are sufficient to distinguish its goods. 40. Mr. Hemant Singh submits that keeping in view the above test as laid down in para 28 of Durga Dutt, the present case requires comparison of the two marks Liv.52 and LIV-T for the purposes of determining deceptive similarity . 41. The case of the Plaintiff is that LIV-T is deceptively similar to Liv.52 on account of its overall structural and phonetic similarity when compared as a whole, and when examined from the point of view of a man of average intelligence and imperfect recollection , not having both drugs together for side by side comparison. Basing the argument on Section 29 of the TM Act 1958, reliance is placed on the judgment in Amritdhara Pharmacy v. Satyadeo Gupta, AIR 1963 SC 449 : PTC (Suppl) (2) 1 (SC), Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 : PTC (Suppl) (1), 13 (SC) and Cadila Health Care Ltd. v. Cadila Pharma Ltd., AIR 2001 SC 1952 : 2001 PTC (21) 541 (SC). 42. It is further submitted that while undertaking such comparison as a whole, no 'disclaimer' can be read in the prefix 'LIV' since no disclaimer exis ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... latter, according to the Defendant, do not enjoy protection. On this scale, 'Kodak' will be a fanciful mark, 'Apple' for computers will be an arbitrary mark, 'Coppertone and Whirlpool' for washing machines would be suggestive marks, 'Roller Blade and Weight Watchers' can be descriptive marks and 'Aspirin' would be a generic mark. It is emphasised that the prefix LIV is essentially an abbreviated form of Liver which is the name of the organ the ailments of which are sought to be treated both by the Plaintiff's drug as well as by the Defendant's drug. It is a known method of naming medicinal products. This is because both doctors and consumers can easily relate to the drug and recognise it as treating the organ whose name is incorporated in the name of the medicine. It is claimed that manufacturers consistently adopt this trade practice to popularize the medicines and to get their medicines easily identifiable by doctors and consumers. 45. Mr. Dipankar submits that the Plaintiff cannot claim monopoly over an organ name i.e. Liver or its abbreviation. Although at the stage of the interim injunction this was the stand of the Plainti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed by anyone for use as trade mark. In that case it was held that the two marks derived prefix 'Mero' from the drug 'Meropenem' and there was no similarity between 'Meromer' and 'Meronem'. In Schering Corporation v. Getwell Life Sciences Pvt. Ltd., 2008 (37) PTC 487 (Del) which was affirmed by the Division Bench of this Court in Schering Corporation v. Alkem Laboratories Ltd. FAO (OS) 313 of 2008, again it was held that there was no similarity between 'Temodal and 'Temodar' since the prefix derived from the name of the chemical compound Temozolomide to arrive 'Temodal' and 'Temodar' on the one hand and 'Temoget' and 'Temokem' on the other. Reliance is also placed on FDC Ltd. v. Ajay G. Piramal, 2008 (38) PTC 97 (Del) and Lowenbrau AG v. Jagpin Breweries Ltd., 157 (2009) DLT 791 : 2009 (39) PTC 627 [Del.]. 47. Mr. Dipankar, learned Counsel for the Defendant submitted that even prior to the judgment of the Division Bench in SBL v. Himalaya Drug Co. the Supreme Court and in Panacea Biotec v. Recon, 1996 PTC (16) 561 this Court had emphasized that if a manufacturer uses the name of a basic drug of which the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mpression of a composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is important. As the Supreme Court observed: The commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety. The anti-dissection rule is based upon a common sense observation of customer behavior: the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... c domain generic name, the emphasis of enquiry should be upon the confusing similarity of the non-generic portion, with the ultimate issue determined by the confusing similarity of the total impression of both marks. For example, the Second Circuit found that the trademark HIBVAX does not infringe the mark HIB-IMMUNE, both for influenza vaccine against a type of influenza disease named by the generic term HIB . [A] trademark infringement finding cannot be based on the use of a generic or descriptive term such as 'Hib.' The presence of a generic term can make little difference in comparing otherwise similar marks. For example, the Federal Circuit found a likelihood of confusion between applicant's JOSE GASPAR GOLD for tequila and the cited registration of GASPAR'S ALE for beer and ale. The presence of the generic word ale in the cited mark did not prevent likely confusion because it was proper to accord such a generic term less weight in judging the similarity of the marks. 54. Likewise, in Gilson on Trademarks the following passage is relevant particularly with regard to pharmaceuticals products: [iii] Likelihood of Confusion. Two issues set pharmaceut ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... leave on the human eye are distinctively different. Liv followed by a dot does not make the same impact as capital LIV followed by a hyphen. Further, the element of similarity which is urged by the Plaintiff is that the hyphen/dot is followed by an alphabet/numeral. This submission is premised on an understanding that there is essentially no difference between an alphabet and a numeral. This submission cannot be accepted when the name of a medicinal drug is figured prominently and one has it as an essential component of its mark and it brings out a degree of distinction. It cannot be said that there is similarity between the use of the alphabet and the use of the numeral. No phonetic similarity 58. Next is the aspect of phonetic similarity. If one were to simply speak out the two marks Liv.52 and LIV-T clearly they do not sound phonetically similar. Given the nature of the trade and the drugs which are being sold under a mark what is likely to happen is one of the two things. Either the name of the drug is written in a prescription which is then read by the Pharmacist before dispensing the medicine. As already noticed, when he reads the name of the medicine as written it is u ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s likely to be deceived when she is given LIV-T instead. When she reads SBL's LIV-T she is further unlikely to mistake the origin of the product as that of the Plaintiff. The evidence produced by the Plaintiff does not prove its case of either likelihood of or actual deception or deceptive similarity. The submission that a customer with imperfect recollection who might see both Liv.52 and LIV-T side-by-side lying on a shelf, will mistake one for the other, or they are produced by the same manufacturer is not backed by the evidence on record. What is significant to note is that it is not as if as in a department store, the customer walks around picking drugs off the shelf. There is a person dispensing medicines. As pointed out by Gujarat High Court in Cadila Healthcare Ltd. v. Swiss Pharma Pvt. Ltd., 2002 (24) PTC 708 (Guj) : 2002 (24) PTC 708 (Guj) chemist shops are required to have a permanent skilled and qualified person to attend the shop, under whose supervision, all the activities or supply of drugs would go on. This further reduces chances of any mistake. To this, it may be added that persons dispensing medicines in a chemist shop are usually aware of the different me ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ('IPAB') which will have to examine if the mark was validly registered. In the absence of any challenge to validity, it is submitted that the trade mark Liv.52 must be considered entitled to protection as a whole and as granting the statutory right of exclusive use conferred by Section 28 in respect of whole of trade mark and not any part thereof. 63. The above submission essentially concerns the question of validity of the Plaintiff's mark. Even if the Court proceeds on the footing that the registration of the Plaintiff's mark has been validly granted and the Plaintiff is entitled to enforce its right to use 'Liv.52' as a whole in terms of Section 28 of the TM Act 1958, the question that still remains is whether the use of 'LIV-T' by the Defendant amounts to infringement of the Plaintiff's trademark 'Liv.52'. The question, therefore, in the present case is not so much as whether on account of its trademark containing a generic component 'LIV', the Plaintiff's mark lacks distinctiveness and, therefore, is not a valid mark. That is also not the question raised by the Defendant at the stage of final argument. The Defendan ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ct those courts to analyze the length of time and conditions under which there has been concurrent use of the marks without evidence of actual confusion. Courts reason that if there were any confusion between the marks at issue, it would have manifested itself over the time the marks were used simultaneously in the marketplace. 66. In the present case, the suit itself has been pending nearly for 15 years. The Defendant's drug is in the market for over 20 years. The Plaintiff's drugs have been in the market for over 50 years. The sales of neither drugs has diminished. Even on the Plaintiff's own showing, the sales turnover in 'Liv.52' has been progressing from year to year as also that of 'LIV-T'. In other words, it does not appear that 'LIV-T' has made any dent whatsoever in the market for 'Liv.52'. If it did, the Plaintiff's evidence does not show it. 67. Gilson on Trademarks points out at page 5-73 that for proving actual confusion the Trademark owners alleging infringement may prove actual confusion through direct consumer testimony, consumer surveys and anecdotal evidence of consumer confusion. Further, it is observed that ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d against the Plaintiff and in favour of the Defendant. 70. Issue No. 11: Whether the use of trade mark LIV-T by the Defendant amounts to passing off the goods of the Defendant as that of the Plaintiff? (OPP) The Plaintiff has not pressed the relief of passing off and, therefore, there is no need to decide this issue. 71. Issue No. 12: Whether the word mark LIV is Publici-Juris and if so, to what effect? (OPD) The Defendant has produced the trade mark survey report to support its plea that 'LIV' is publici juris. The Plaintiff points out that the said survey report does not prove the use of the mark. It relies upon para 15 of the judgment of the Supreme Court in Shangrila. Further it has been pleaded that the Plaintiff is not required to sue every infringer and the plea of common to trade is not maintainable unless the cited infringement are proven to be substantial. Reliance is placed on the decision in National Bell Co. v. Metal Goods Manufacturing Co., AIR 1971 SC 898 at 908 : PTC (Suppl) (1) 586 (SC) and Dabur v. Pankaj Goel, 2008 (38) PTC 49 [Del]. Reliance is placed on the judgment in Tarun K. Narayanan v. S. Murali, AIR 2008 SC 3261 : 2008 (38) PTC ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
