9911796707
TMI Blog1999 (12) TMI 889X X X X Extracts X X X X X X X X Extracts X X X X ..... e cartons and strips, samples of which are at Exhibit I and/or the mark ACTION or any other cartons/strips or packing materials or mark resembling the plaintiffs ACTION 500 cartons and strips and the mark ACTION, in any way so as to pass off or enable others to pass off the defendants' goods as those of plaintiffs' goods and also for restraining the defendants from in any manner infringing plaintiffs' copyright in the artistic work reproduced at Exhibit E annexed to the plaint. The plaintiffs have also claimed damages in the sum of Rs. 10 lacs and for other ancillary reliefs. 2. The plaintiffs have averred that 1st plaintiff is a renowned Indian listed company and is a subsidiary of 2nd plaintiff. The 2nd plaintiff in turn is a wholly owned subsidiary of The Procter & Gamble Company being one of the most reputed and largest U.S. multinational. The 1st defendant is a company registered under the Companies Act and 2nd defendant is a firm of chemists and druggists selling the products of 1st defendant. It is stated that 1st plaintiff has been established since 1966 and is engaged in several businesses including consumer products, cosmetics, detergents and pharmaceutical p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rtistic work represented on the DISTINCTIVE ACTION 500 CARTONS. The plaintiffs have averred that the 1st plaintiff incurred in marketing expenditure of approximately Rs. 20 lacs in preparation of re-lunching Action 500 product under Distinctive Action 500 cartons/strips prior to October, 1998. The sales turnover of Action 500 sold under the new Distinctive Action 500 cartons/strips since its re-launch in October 1998 to January, 1999 is about Rs. 24 crores and the plaintiffs have spent about Rs. 265 lacs on advertisement, promotion and marketing of the said product. It is stated that the 1st plaintiff has been selling Action 500 by Distinctive Action 500 strips and Distinctive Action cartons extensively on all India basis and the said brand Action 500/ Distinctive Action cartons/Distinctive Action 500 strips containing the Distinctive colour scheme, get up and lay out are associated by the traders and the members of the public and consumers exclusively with the plaintiffs and the plaintiff alone are entitled to use the mark Action 500/Distinctive Action 500 cartons/ Distinctive Action 500 strips in respect of pharmaceutical products. It is the case of the plaintiffs that recently t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ny other mark, cartons or strips or packaging material resembling the DISTINCTIVE ACTION 500 CARTONS/STRIPS (samples whereof are annexed at Exhibit E and F to the plaint) or the mark ACTION 500 and from using in relation to any products the Counterfeit Cartons and/or Counterfeit Strips (samples whereof are annexed at Exhibit I to the plaint) and/or the mark ACTION or any other cartons/strips or packaging materials or mark resembling the DISTINCTIVE ACTION 500 CARTONS/DISTINCTIVE ACTION 500 STRIPS/the mark ACTION 500 in any manner, so as to pass off or enable others to pass off the defendants' goods as those of the plaintiffs' goods. (b) The pending the hearing and final disposal of the suit, the defendants, its Directors, proprietors, partners, owners, servants, subordinates, representatives, stockists, dealers, agents and all other persons claiming under them be restrained by an order and injunction of this Hon'ble Court from infringing in any manner the plaintiffs' copyright in the artistic work reproduced at Exhibit E hereto and from reproducing/ copying the said artistic work or a substantial part of the said artistic work on Counterfeit Cartons and Strips (sa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... interim order, without notice to the defendants, on 19-2-1999 this Court granted prayers in terms of aforesaid Clauses (a), (b) and (e). 5. The defendants have put in their appearance thereafter and have filed Affidavit in Reply for contesting the prayers made in the Notice of Motion and for vacation of ad interim order. Besides the plea of jurisdiction raised in the Affidavit in Reply filed by Ramesh Kumar Lulla, Managing Director of 1st defendant Company, the 1st defendant Company has denied the plaintiffs' allegations that the 1st defendant Company is passing off their goods and products as the products of the plaintiffs. In affidavit in Reply it is stated by the 1st defendant Company that the 2nd plaintiff made an application on 24th June 1976 for registration of Trade Marks "Vicks Action 500". The said mark was advertised and subsequently registered subject to an express disclaimer by the 2nd plaintiff that they do not claim any right to the exclusive use of the words and numeral "Action" and "500". The 1st defendant therefore has stated that the plaintiffs are not the registered proprietors of any mark word "Label" other than the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... has given details as to when and how their product ENDO Action was launched for marketing in the new carton bearing Distinctive colour scheme, get up and lay out in or about May 1997. It is thus the defence of the 1st defendant Company that ENDO Action tablets are manufactured and marketed in the strips and cartons as per Exhibit I annexed to the plaint long prior to the adoption of new cartons adopted by the plaintiffs in October 1988. The 1st defendant has therefore taken a clear stand that its cartons in the present form, get up and colour scheme are since May 1997 and, therefore, the plaintiffs allegation that the 1st defendant Company is copying the products marketed by the plaintiffs under the get up and colour scheme of the plaintiffs is wholly misconceived. The 1st defendant Company has also stated that the plaintiffs' objection to the use of word "Action" or the numeral "500" is equally baseless and unfounded and cannot have a monopoly over the use of the word "Action". The word "Action" apart from being a common dictionary word is common in all the pharmaceutical industry and many pharmaceutical firms and company use this word f ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y board annexed as Exhibit E to this Affidavit in Rejoinder. The distinctive triangular device has featured since several years prior to October 1998, at least since 1994 in pharmaceutical products of the plaintiffs and the attempt to copy the triangular device is clear evidence that it is the defendants who have copied the plaintiffs packaging material and they have sought to fabricate documentary evidence to the effect that they have introduced the impugned packaging material in May 1997. In the Affidavit in Rejoinder, the plaintiffs have criticised the various Affidavits annexed by the defendants and have challenged their correctness and the stand set up by the 1st defendant company that the defendants are selling their products in the cartons and strips annexed at Exhibit I with the plaint since May, 1997. Along with the affidavit in Rejoinder, the plaintiffs filed 11 affidavits as well. 8. The 1st defendant Company has filed Sur Rejoinder in response to the Affidavit in Rejoinder filed by the plaintiffs and reiterated their case set up in the Affidavit in 1st defendant company in Affidavit in Sur Rejoinder has stated that they wanted inspection of permission granted to the pl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... these documents is only restricted to the portion meeting the document viz., extract of form RG-1. 10. The plaintiffs, in support of their case, are relying upon various documents annexed with the plaint namely, sales turnover of Vicks products sold by plaintiff No. 1 (Exh. A), sales turnover of plaintiff No. 1's Action 500 Vicks Pharmaceutical Products (Exh B), Promotional marketing and advertising expenditure in respect of plaintiff No. 1's various Vicks products (Exh. C), plaintiff No. 1's promotional marketing and advertising in respect of its Action 500 Vicks Pharmaceutical products (Exh. D). Distinctive Action 500 cartons (Exh. E), Distinctive Action 500 Strips (Exh. F), Display poster of relaunch sent to several retailers depicting old carton and new carton of Vicks Action 500, (Exh. G), a sample of the story board of the TV commercial (Exh. H), sample of cartons and strips of defendants (Exh. I), the invoice whereby the defendants' "ENDO ACTION" was sold (Exh. J), reports made by the Court Receiver, pursuant to the ad interim order passed by this Court annexed with the Affidavit in Rejoinder (Exhs. A & B), a colour zerox of COLDARIN products of Jo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... up, lay out and design of plaintiffs carton (Exh. 5), copies of strips and cartons of other manufacturers using the word "Action" (Exh. 6), copy of certificate of Chartered Accountant dated 19-7-1999 (Exh. 7), copies of certificates of Chartered Accountant and Sales of ENDO Action from 1991 (Exh. 8-A & 8-B), a copy of carton and strip of other products of plaintiffs (Exh. 9), copy of various vouchers and products depicting triangle (Exh. 10 and Exh. 11), copy of letter of Excise Department and reply sent by 1st defendants (Exhibits 12 & 13) (These annexures have been annexed with affidavit in Sur Rejoinder by 1st defendant), Affidavit of Mahesh Mandvani (Exh. 1), copy of invoice dated 12th August, 1999 (Exh. 2), copy of letter dated 17-9-1999 by Nagar Chemists (Exh. 3), photocopy of 1st defendant's letter dated 16-9-99 (Exh. 4), photocopy of letter dated 17-9-1999 (Exh. 5), photocopy of Affidavit of Shri Agarwal (Exh. 6) (These documents have been annexed with the Affidavit of Rameshkumar Lulla dated 1-10-99), the statement of different in selling price and maximum retail price of some pharmaceutical companies (Exh. 1), invoice of the chemists in respect of some of t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own." The real question is as to how a purchaser who must be looked upon as an average man of ordinary intelligence, would react with particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. 13. Adverting to the plaintiffs DISTINCTIVE ACTION 500 cartons and the incriminating 1st defendant's ENDO ACTION cartons which are annexed as Exhibits E and I respectively with the plaint, the average man of ordinary intelligence with imperfect recollection would form first impression that there is broad similarity in the two cartons. Both cartons have dark blue base and similar lay out. The Distinctive carton has green triangle with rounded edges and so also the incriminating carton has green triangle with round edges though in opposite direction. The triangle in both the cartons have red rectangle band. In Distinctive ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in the Distinctive Cartons and the Strips upon which the entire action is based. 14. The plaintiffs have come out with the specific case in the plaint that in or about October 1998 the 1st plaintiffs' ACTION 500 pharmaceutical product bearing house mark VICKS was re-launched in the market under cartons and strips having the Distinctive get up and colour scheme. A sample of distinctive carton having a distinctive get up and colour scheme has been annexed by the plaintiffs as Exhibit E. Thus, as regards the distinctive carton, the plaintiffs' specific case pleaded in the plaint is in respect of the distinctive get up and the colour scheme which is shown in the sample Exhibit E, which the plaintiffs first started marketing in October 1998. Similarly, the case of the plaintiffs as regards the distinctive strips having a distinctive get up and colour scheme is based on the sample annexed in the plaint as Exhibit F. The 2nd plaintiff claims to be copyright owner in respect of artistic work represented on distinctive ACTION 500 carton Exhibit E. The plaintiffs' cause of action is based on imitation of these distinctive cartons and strips in get up, colour scheme and mark ACT ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ster) for a period from 10-6-1997 to 31-1-1997 in respect of ENDO ACTION product, the bills annexed with the 1st defendant along with its Affidavit in Reply are prima facie verifiable. To demonstrate, it would be seen from the bill No. 490-C dated 3-7-1997 annexed with the affidavit of Subhash Chandra Anand (Exh. 11(e)) annexed with the Affidavit in Reply that 100 ENDO ACTION tablet strips having Batch No. 3797 was sold by the 1st defendant Company to Anand Pharma. This fact is corroborated from form RG-1 which is kept by the 1st defendant company under statutory obligations duly verified by Central Excise Department of Indore. At page 70 of the Affidavit in Reply filed by the 1st defendant, the zerox copy of the carton bearing Batch No. 3797 having manufacturing date May 1997 has been annexed which is the alleged offending carton. The learned Counsel for plaintiffs tried to urge that ENDO ACTION might have been sold vide Bill No 490-C on 3-7-1997 to Anand Pharma, copy of which is annexed at page 69, but the said ENDO ACTION strips tablets having Batch No. 3797 were not sold in the offending carton and the strip and now the evidence has been fabricated by putting a false seal givin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... plaintiffs have tried to base their case on Distinctive triangle as an essential feature of plaintiffs' pharmaceutical products. In Affidavit in Rejoinder, particularly in paragraph 16, the plaintiffs have stated thus:- (i) The colour scheme, get up and lay out of packaging material in respect of VICKS pharmaceutical products sub branded as ACTION 500 as sold prior to October, 1998 is revealed in Exhibit "G" to the plaint as old packaging material. Prior to the packaging material shown as old pack- aging material in Exhibit "G", the packaging material under which VICKS pharmaceutical products sub branded as ACTION 500 was marketed by the plaintiff is shown in the story board of the TV commercial which were aired during the relevant time. A colour xerox of the said story board in respect thereof is annexed hereto as Exhibit "E". Accordingly VICKS pharmaceutical products sub branded as ACTION 500 was sold in packaging material shown in the story board of the TV commercial which is annexed as Exhibit "E" hereto. Thereafter after some alterations the same was sold in packaging material which is referenced as old packaging material in Exhib ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ll generated by the plaintiffs VICKS pharmaceutical products sub branded as ACTION 500 and marketed in packaging material which is revealed in the story board by imitating the word ACTION and also sharp edged triangular device of the plaintiffs. After the plaintiffs changed their packaging material, obviously the defendants have once again changed its packaging material which also has rounded triangles so as to pass off its goods as those of the plaintiffs. (iv) It may be noted that the distinctive triangular device has featured since several years prior to October 1998 (atleast since 1994) in VICKS pharmaceutical products of the plaintiffs. The attempt to copy the triangular device by the defendants is clear evidence that it is the defendants who have copied the plaintiffs' packaging material which is the subject matter of the suit and they have sought to fabricate documentary evidence to the effect that they have introduced the impugned packaging material in May, 1997." 17. What is stated above in Affidavit in Rejoinder is not the pleading at all in the plaint. By an Affidavit in Rejoinder, the plaintiffs cannot be permitted to materially improve their case. Affidavit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... as "Counterfeit Products/Cartons/Strips. The counterfeit products/cartons/strips are being manufactured and marketed by defendant No. 1. Defendant No. 2 is a retail chemists also selling Counterfeit Products/Cartons/Strips of defendant No. 1. Hereto annexed and marked Exhibit "J" is an invoice for the said products sold by defendant No. 2. 12. Vicks Pharmaceutical products manufactured and marketed by the plaintiffs branded as ACTION 500 and sold under the Distinctive Action 500 Cartons/Distinctive Action 500 strips has acquired valuable countrywide reputation and goodwill in the circumstances explained above. By manufacturing and selling Counterfeit Products /Car tons/ Strips (samples whereof are annexed at Exhibit "I" hereto) which resembles or closely resemble the DISTINCTIVE ACTION 500 CARTONS/ DISTINCTIVE ACTION 500 STRIPS of the plaintiffs and by the use of the mark ACTION which is deceptively similar to the plaintiffs mark ACTION 500, the defendants are misrepresenting their goods as those of the plaintiffs and/or are misrepresenting that their goods have some connection with the goods of the plaintiffs causing damage to the plaintiffs and to the g ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e passing off action has to be pleaded in any of the case of the misrepresentation. A party basing its claim on misrepresentation of the defendant has to specifically plead the details of misrepresentation and cannot leave upon the Court to find out what the misrepresentation is. Order VI Rule 4 of Civil Produce Code provides that in all cases in which the party pleading relies on any misrepresentation, particulars thereof with dates and items shall be stated in the pleading. There is no pleading worth the name in the entire plaint that the essential feature of the distinctiveness is in the triangle which the learned Counsel for the plaintiffs urged on the basis on Affidavit in Rejoinder to be an essential feature of plaintiffs' distinctive cartons and the strips. The prima facie case has to be established by the plaintiffs on the basis of pleadings. When the plaintiffs have solely come out with the case alleging that defendants are passing off their goods as the goods of the plaintiffs in incriminating cartons and the strips as described in Exhibit I which is deceptively similar to distinctive cartons and strips Exhibits E and F, case has to be tested on the basis of that plea ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ave been cited by the learned Counsel for the plaintiffs and which have been referred above, the plaintiffs have disclosed essential features and cause of action based thereon. 19. It may be observed that though in distinctive strip "F" the triangle with band is small and in the alleged incriminating strip "I" triangle with band is large, after the ad interim order was passed and during the pendency of notice of motion, the plaintiffs in their strips have enlarged triangle and band, almost of the size of defendants in the annexure "I". 20. Since I have held that plaintiffs have failed to make out prima facie case of passing off as pleaded and infringement of copyright, there is no need to go into the question of irreparable loss and balance of convenience. 21. For all these reasons, Notice of Motion has to be dismissed and is dismissed. The ad interim order passed by this Court on 19-2-1999 is vacated. 22. Mr. Tulzapurkar, learned Counsel for the plaintiffs submits that the 'plaintiffs intend to file an appeal challenging this order and, therefore for a period of 6 weeks from today, the ad interim order passed by this Court may be allowed of re ..... X X X X Extracts X X X X X X X X Extracts X X X X
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