9911796707
TMI Blog1999 (12) TMI 889X X X X Extracts X X X X X X X X Extracts X X X X ..... ps, 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 products. The 2nd plai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 they came across counterf ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 (sample annexed at Exhibit I to the p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n 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 word Vicks and that they have misled the Court by claiming exclusive rights to the sole mark Vicks ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt 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 for their pharmaceutical products and illustrative list for that has been furnished by the 1st defendant along with Affidavit. The 1st defendant Company has also stated that the print type on plaintiffs' cartons and strips is very small and the caution printed thereon ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... fendants 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 plaintiffs by the Drug Authorities to manufacture Vicks Action 500 tablets, but the said inspection was not given. The plaintiffs have also not produced and given inspection of original cartons after 1975 and before October 1998 showing colour scheme, get up, lay out then adopted by the plaintiffs. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 Johnson Johnson (Exh. C), colour zerox of 1st defendants' products COLDRIN (Exh. D), colour zerox of the story board (Exh. E), sample of Vicks Pharmaceutical products depicting Distinctive triangular (Exh. F), Affidavits of Mr. Homi Khusrokhan, Mr. A. Anjeneyan, Mr. K.A. Narayan, Mr. Kasim K. Master, Mr. S.R. Keshwani, Mr. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f 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 the products of other pharmaceutical companies (Exhibits 2 to 12) and copy of RG-1 forms by Custom and Excise Department duly certified by Custom Authorities (These documents have been annexed with the Affidavit dated 6th October 1999 by the 1st defendant.). The principles in relation to passing off action are well known and hardly need to be elaborately reiterated. I ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... h 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 carton in the red rectangle band, ACTION 500 is printed, while in the incriminating carton the word ACTION is printed. The green triangles in both the cartons namely, Distinctive carton as well as the incriminating carton have shaded colour inasmuch as the outer part is lighter green while inner part is of dark green shade. The size of the printed words is also broadly similar. The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... olour 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 ACTION 500, Exhibit E and F by the defendants by offending cartons and strips Exhibit I. In paras 11 12 of the plaint the plaintiffs have averred that they were shocked and surprised to recently come across products sub-branded as ACTION containing the same basic ingredients and seeking to have the same therapeutic effect as those of the plaintiffs Action 500 manufactured, sold/marketed in cartons and strips which are colourable imit ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... fendant 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 giving Batch No. 3797 and manufacturing date May 1997 on the carton. The contention of the learned Counsel for the plaintiffs cannot be accepted prima facie for the simple reason that the 1st defendant company is a licensee under the Drugs and Cosmetics Rules, 1945 and the conditions of licence in Form 25 and Form 25-F have to be fully complied with by the 1st defendant. Under the conditions of licence in Form 25 and Form 25-F, the licens ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ckaging 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 Exhibit G to the plaint and from October, 1998 they have been sold under packaging material in Exhibit G to the plaint and samples whereof have been annexed to the plaint. The art work for the cartons and strips/blister packs exhibited in Exhibit E F to the plaint and shown as new cartons/strips in Exhibit G was designed and created by Madison DMB B (a world renewed advertising agency) upon them being commissioned to do so by plaintiff No. 1. (ii) I say and submit that the distinctive t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... KS 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 at best is a prima facie evidence which can be used in support of a pleading, but cannot substitute the pleading itself. The case of the plaintiffs pleaded in the plaint which is spelt out clearly from paragraphs 7, 11, 12 13 of the plaint read thus: 7. In or about October, 1998, plaintiff No. 1's ACTION 500 pharmaceutical product also bearing the house mark Vicks was re-launched in the market under cartons and strips having a distinctive get up and colour-scheme. A sample of the said distinctive carton is annexed hereto at Exhibit E and samples of the said strips also containing the tablets is annexe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eof 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 goodwill and reputation of the plaintiffs' business and is also diluting the distinctiveness of the plaintiffs' mark, get up and colour scheme comprised in the DISTINCTIVE CARTONS/STRIPS and the mark ACTION 500. Such misrepresentation has been deliberately done so as to trade upon the reputation and goodwill of the plaintiffs. The plaintiffs submit that by such misrepresentation the defendants are passing off or attempting to pass off their goods as those of the plaintiffs. The plaintiffs further say and submit that the resemblance of the Counterfeit Products/Cartons/Strips with that of the plaintiffs products and DISTINCTIVE ACTION 500/STRIPS and of the impugned mark Action with the plaintiffs mark ACTION 500 i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s 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 pleading and that pleading alone and since the plaintiffs case is that the distinctive cartons and the strips came into existence in the month of October 1998 and the 1st defendant has been able to show that the alleged incriminating or the offending cartons and strips came on scene in the month of May 1997 much before the plaintiffs' distinctive cartons and the strips came into existence, prima facie, the plaintiffs have failed in making out their case as set out in the plaint. The plaintiffs' case of passing off is based on overall similarity in get up, colour scheme of distinctive cartons/strips and mark ACTION 500 and not on triangle as an essential feature of the distinctiveness. For the self same reasons, the plaintiffs must be held to have ..... X X X X Extracts X X X X X X X X Extracts X X X X
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