Allowed

Ms Supriya Prabhu v. Janus Remedies and Ors.

Bombay HC20 Jun 2007NMS/1933/2007

Case brief

AI extract

What is this about?

Single Judge examined competing claims over pharmaceutical trade marks. The court found the Defendants obtained rights fraudulently from a liquidated company. The Plaintiff was granted an ad-interim injunction against the Defendants marketing their goods under a confusingly similar mark, subject to conditions regarding packaging to ensure public clarity.

What did the court decide?

Ad-interim injunction granted restraining Defendants from using trade mark COLIVAN or deceptively similar marks; Plaintiff ordered to market product in historical pink packaging scheme.

Ms Supriya Prabhu Vs Janus Remedies and Ors. — Intellectual Property | Bombay HC (2007)

¶1

 IN THE HIGH COURT OF JUDICATURE AT BOMBAY

¶2

 ORDINARY ORIGINAL CIVIL JURISDICTION

¶3

 NOTICE OF MOTION NO.1933 OF 2007
 IN
 SUIT NO.1392 OF 2007

¶4

 Ms.Supriya Prabhu,
 an Indian Inhabitant, carrying on
 business as a Sole Proprietress
 of Ayurpriya, having her office at
 8-B-22, Upendra Building,
 Sudhindra Nagar, Dahisar (E),
 Mumbai - 400 068. ...Plaintiff

¶5

 Versus
 1.Janus Remedies,
 an unregistered Partnership Firm,
 having their principal place of
 business at Ganji Punshi Industrial
 Estate, (Next compound to Hindustan
 Petroleum Pump), Western Express Highway,
 Kashigaon (Post-Mira), Thane - 401 104
 and whose partners are:
 2.N.K.Nair (Narayan Kutty Nair),
 of Mumbai, Indian Inhabitant, the
 Partner of the Defendant No.1,
 residing at B-13, Aaram Society,
 Vakola, Santacruz (East),
 Mumbai - 400 055.
 3.Pramod Nair
 4.Vinod Nair,
 residing at B-13, Aaram Society,
 Vakola, Santacruz (East),
 Mumbai - 400 055. ...Defendants

¶6

 Mr.Venkatesh R.Dhond with Ms.Trupti Shetty i/b
 M/s.Dhruve Liladhar & Co. for Plaintiff.

¶7

 : 2 :

¶8

 Mr.Salil Shah with Mr.Ramesh Gajria & Ms.Deepa Hate
 i/b M/s.Gajria & Co. for Defendants.

¶9

CORAM: A.M.KHANWILKAR, J.

¶10

JUNE 20, 2007.

¶11

P.C.

¶12

 1. This order will dispose of prayer for
 ad-interim relief prayed by the Plaintiff during
 the pendency of Notice of Motion.

¶13

 2. After having considered the rival

¶14

 pleadings and the documents on record including the
 oral submissions made by the Counsel for the
 parties across the bar, the position that emerges
 is as follows:

¶15

 . The COLIVAN-D trade mark in India was

¶16

 registered in the name of Janus Pharma Private
 Limited in respect of product of pharmaceutical
 items included in Class 5. The said Company was in
 business of manufacture and dealer in ayurvedic,
 medicinal and pharmaceutical preparations. It was
 marketing several products since prior to 1980,
 amongst others, medicinal preparations in the name

¶17

 : 3 :

¶18

 of Colivan-D tablets which is Dicyclomine HCL,
 Paracetamol. The Defendants 2 to 4 were associated
 with the said Company as Directors. It is also
 noticed that the husband of the Plaintiff was
 working as Managing Director of the said Company
 continuously till 16th July 1996 and was looking
 after marketing, sales, distribution and field work
 for and on behalf of the said Company. It is also
 noticed that there was one sister Company of the
 said Company in the name of Janus Remedies Private
 Limited. Both these Companies, however, have gone
 in liquidation. M/s.Janus Pharma Private Limited
 has been ordered to be wound up in terms of the
 decision of the Company Court dated 15th July 2004
 in Company Petition No.782 of 1997, whereas,
 M/s.Janus Remedies Private Limited has been ordered
 to be wound up in terms of the decision of the
 Company Court dated 9th August 2005 in Company
 Petition No.781 of 1997. These are some of the
 admitted facts as can be culled out from the
 record.

¶19

 3. The Plaintiff asserts that the trade mark
 COLIVON-D was assigned to the Plaintiff under a

¶20

 : 4 :

¶21

 Deed of Assignment dated 27th October 2005 by one

¶22

 Narsinh Prabhu, proprietor of M/s.Field Marc
 Services. The Plaintiff claims to be the sole
 proprietress of Ayurpriya and is engaged in
 carrying on business of manufacture and dealer in
 pharmaceuticals and medicinal preparations. The
 Plaintiff asserts that her predecessor commenced

¶23

 the business of manufacture and dealer in

¶24

 pharmaceutical and medicinal preparations in the
 year 1992 and was dealing in manufacture and sale
 of product COLIVON-D tablets which is also
 Dicyclomine HCL, Paracetamol. The Plaintiff
 asserts that she has acquired exclusive right of
 user through her predecessor in respect of the
 registered trade mark COLIVON. The Plaintiff has
 also relied on the sales figures as well as the
 annual expenditure for the product, for the period
 1996-97 till date, in respect of the trade mark
 COLIVON. The Plaintiff asserts that the Plaintiff

¶25

 by extensive sales and vigorous promotions of the
 product in the trade mark COLIVON and the
 expenditure incurred thereon has built up a large
 and valuable reputation and goodwill for the goods
 bearing the registered trade mark COLIVON, which

¶26

 : 5 :

¶27

 came to be exclusively associated with the

¶28

 Plaintiff by the members of the profession/trade
 and public. The Plaintiff has approached this
 Court alleging infringement of her trade mark
 COLIVON and also for passing off action against the
 Defendants who are marketing their product as the
 goods of the Plaintiff by using trade mark COLIVAN
 which is deceptively similar trade mark with
 respect to pharmaceutical and medicinal
 preparations and also passing off their goods as
 the goods of the Plaintiff while using and/or
 selling in respect of their goods, the label and
 packing similar to that of the Plaintiff.
 According to the Plaintiff in or about November
 2006, the Plaintiff learnt that the Defendants were
 committing such mischief of infringement of trade
 mark and passing off as referred to above by using
 mark COLIVAN and deceptively similar colour scheme
 for the packing. On these allegations, present
 action has been brought by the Plaintiff.

¶29

 4. The Defendants, on the other hand, asserts
 that the Defendants’ predecessor M/s.Janus Pharma
 Pvt. Ltd. were the users of mark COLIVAN-D for

¶30

 : 6 :

¶31

 their pharmaceutical and medicinal preparations
 from earlier point of time since 1981-82. The
 Defendants by virtue of Deed of Assignment have
 acquired the exclusivity to the trade mark
 COLIVAN-D. The Defendants assert that the
 registration of mark COLIVON taken in the name of
 Narsinh Prabhu was fraudulent from its inception.
 In that, Narsinh Prabhu is the son of Mr.U.R.Prabhu
 (who is husband of the Plaintiff). The said
 U.R.Prabhu was working as Managing Director of the
 predecessor of the Defendants. While in service,
 he floated two proprietary firms one under the name
 of M/s.Field Marc Services (proprietor Narsinh
 Prabhu s/o U.R.Prabhu) and other in the name of
 Ayurpriya (Proprietress Supriya Prabhu w/o
 U.R.Prabhu). The Defendants have relied on figures
 for the relevant period regarding sales and
 marketing since 1980-81 in respect of their product
 COLIVAN-D tablets. The said chart refers to sales
 figure in respect of Janus Pharma Pvt.Ltd. for the
 said product from 1980-1981 till 1999-2000. For
 the latter period from 2000-2001 to 2004-2005, the
 same is shown under the name of Janus Remedies
 Pvt.Ltd. and for the period from 2004-2005 to

¶32

 : 7 :

¶33

 2006-2007, it is shown in the name of Defendant

¶34

 No.1 Janus Remedies, which is a partnership firm.

¶35

 The Defendants also assert that in fact the
 predecessor of the Plaintiff after entering the
 market to deal in the produce COLIVON-D tablets,
 introduced the packing in pink colour, whereas, the
 scheme and colour of the packing adopted by the
 predecessor of the Defendants in 1996 was entirely
 different. In fact, the Plaintiff has now adopted
 and copied the colour scheme of the packing which
 resembles to that of the packing used by the
 Defendants for their product in green colour.
 Besides, the Defendants are relying on several
 bills issued in the name of Field Marc Services
 relating back to 1996 which would indicate that the
 said firm was purchasing tablets COLIVAN-D from the
 predecessor of the Defendant. The Defendants also
 assert that it is necessary for the Plaintiff to
 establish as to how it has become the originator of
 the word COLIVON to succeed in the present action.
 In substance, the case of the Defendants is that
 the registered trade mark taken by the predecessor
 of the Plaintiff, on which basis the Plaintiff
 asserts exclusive right of user is founded on

¶36

 : 8 :

¶37

 fraudulent claim. The Defendants’ Counsel, during
 the oral arguments, relied on the decisions
 reported in 2002(25) PTC 532 (Bom) Agromore (P)
Ltd. & Anr. vs. Chembond Chemicals Ltd. & Anr.,
2002(24) PTC 226 (Bom)(DB) in the case of Bal
Pharma Ltd. vs. Centaur Laboratories Pvt.Ltd. &
Anr., 2002(6) Bom.C.R. 696 in the case of Ipca
Laboratories Ltd. vs. Savita Pharmaceuticals
Pvt.Ltd. and lastly on 2003(5) Bom.C.R. 501 in
the case of Court Receiver vs. R.R.Ommerbhoy
Pvt.Ltd. & Ors.

¶38

 5. In the first place, the question is:
 whether the Plaintiff has a valid registered trade
 mark COLIVON in respect of all kinds of
 pharmaceutical items included in class 5. That
 plea will have to be accepted having regard to the
 registration certificate issued by the Trade Marks
 Registry, Mumbai originally in favour of Narsinh
 Prabhu, which has now been assigned to the
 Plaintiff under the Deed of Assignment dated 27th
 October 2005. From the sales and marketing figures
 furnished by the Plaintiff, it is seen that the
 product in the trade mark of COLIVON is being

¶39

 : 9 :

¶40

 marketed by the Plaintiff and her predecessor since
 1996-1997 till date, except, for the period between
 2002 to 2005.

¶41

 6. The next question is : whether the
 Plaintiff is the prior user of the trade mark
 COLIVON? From the materials on record, it is seen
 that M/s.Janus Pharma Pvt.Ltd. had got the mark
 COLIVAN-D tablets since 1981. However, the said
 Company has gone in liquidation by virtue of the
 order passed by the Company Judge on 15th July 2004
 in Company Petition No.782 of 1997. It is well
 established position that the winding up action
 relates back to the date of institution of the

¶42

 Company Petition which in this case, would be year
 1997. The Company meets a civil death consequent

¶43

 to winding up. It is not the case of the
 Defendants that the said Company has come out of
 liquidation. The defence of the Defendants is
 that, the said Company, which is in liquidation, is

¶44

 their predecessor in respect of trade mark
 COLIVAN-D and being prior user, the Defendants

¶45

 would have exclusive right to the mark COLIVAN-D,
 for which reason, the Plaintiff cannot succeed in

¶46

 : 10 :

¶47

 the present action.

¶48

 7. The question, however, is, whether the
 Defendants’ claim to have legitimately succeeded to
 the mark COLIVAN-D, which was the registered mark
 in the name of M/s.Janus Pharma Pvt.Ltd.- in
 liquidation, is tenable. The Defendants assert
 that they have succeeded to the trade mark
 COLIVAN-D on account of some Deed of Assignment.
 In the first place, the Deed of Assignment is not
 produced before the Court. The Defendants,
 however, would rely on the certificate of
 registration of trade mark issued under Section
 23(2), Rule 62(1) by the Trade Marks Registry,
 Mumbai to contend that the trade mark COLIVAN-D now
 stands registered in the name of Defendants. As
 rightly argued by the Plaintiff, the Certificate in
 Form 0-2 Exhibit 1 to the affidavit dated 11th June
 2007, cannot be used in legal proceedings-which is
 prominently stated on the certificate itself.
 Significantly, the Defendants have received Food
 and Drug Administration (FDA) Licence only on 4th
 November 2004. The Defendants, therefore, could
 not have engaged in business of pharmaceutical

¶49

 : 11 :

¶50

 products prior to that. To the misfortune of the
 Defendants, the Company whom the Defendants claim
 to be their predecessor and having executed an
 assignment deed in favour of the Defendants, itself
 was ordered to be wound up in earlier point of time
 on account of order dated 15th July 2004. In law,
 that Company (Janus Pharma Pvt.Ltd.), therefore,
 could not have executed any valid Assignment Deed
 in favour of the Defendants. The fact that the
 Defendants have engaged themselves in the
 pharmaceutical business only after 2004-2005 is
 admitted in the statement Exhibit 4 appended to the
 Defendants’ affidavit dated 30th May 2007. The
 said document indicates that the product COLIVAN-D
 tablets was marketed by Janus Pharma (Pvt.) Ltd.
 between 1980 till 2000. For the period 2000 to
 2005 the same was marketed by Janus Remedies
 Pvt.Ltd. Both these Companies, however, have gone

¶51

 in liquidation. From the figures indicated, the
 Defendants claim to be marketing the said product
 only since 2004 onwards. Advisedly, this
 disclosure is made keeping in mind the licence
 issued by the FDA in favour of Defendants only on
 4th November 2004. In that sense, the Defendants

¶52

 : 12 :

¶53

 cannot claim that they are the prior users of the
 mark COLIVAN-D. Only for that reasons, it is
 asserted on behalf of the Defendants that they are
 claiming exclusivity to the said mark COLIVAN-D
 because of the Deed of Assignment in their favour
 by M/s.Janus Pharma Pvt.Ltd. As mentioned earlier,
 the Assignment Deed is not produced on record.
 Admittedly, it is not the case of the Defendants
 that the Assignment Deed in their favour was prior
 to 1997 or for that matter prior to 15th July 2004.
 The fact that the said Company has gone in
 liquidation on account of the order of the Company
 Court dated 15th July 2004 in Company Petition
 No.781 of 1997 is indisputable. Thus understood,
 it is incomprehensive as to how the Defendants can
 claim to have legitimately succeeded to the mark
 COLIVAN-D from M/s.Janus Pharma Pvt.Ltd. which was
 an independent entity.

¶54

 8. In other words, the Defendants cannot
 claim to be legitimate assignees of the mark
 COLIVAN-D from the said Company. No such argument
 can be countenanced in the face of Section 531 of
 the Companies Act. As is mentioned earlier, the

¶55

 : 13 :

¶56

 Defendants 2 to 4 are none else but the former
 Directors of the Company in liquidation. On
 account of order of winding up passed against the
 Company, the said Company has ceased to transact
 through the former Directors. One of the argument
 of the Plaintiff is that the so called Assignment
 Deed relied upon by the Defendants of which
 inspection was given to the Counsel for the
 Plaintiff, would reveal that there is some
 interpolation in the Deed and more significantly,
 the signatories of same persons as assignors as
 well as assignees. It is debatable that assignor
 and assignee can be one and the same person. It
 only means that the Defendants 2 to 4 represented
 themselves to be the assignors on behalf of the
 Company in liquidation as well as assignees to give
 right to the Defendant No.1, their partnership
 firm. Here, I may record that I am not going into
 the correctness of this stand of the Plaintiff, nor
 basing my decision on this count. But, if this is
 true, the said Assignment Deed will be of no avail
 to the Defendants. Be that as it may, as mentioned
 earlier, the Company in liquidation could not have
 transferred any right or entered into Deed of

¶57

 : 14 :

¶58

 Assignment in respect of the registered mark
 COLIVAN-D and such Deed of Assignment even if
 existing would be invalid in view of Section 531 of
 the Companies Act.

¶59

 9. Faced with this situation, the Defendants
 Counsel has placed heavy reliance on the decision
 of the Single Judge of this Court in Ipca
Laboratories Ltd. (supra) particularly Paragraphs
 28, 29 and 35 thereof. In Paragraph 28, the
 learned Judge has referred to Full Bench decision
 in the case of Abdul v. Mahomedaly reported in 3
Bom.L.R.220. In Paragraph 29 of the said decision,
 reference is made to the exposition in the case of
Prem Singh v. M/s.Ceeam Auto Industries reported
in AIR 1990 (Delhi) 233. It will be useful to
 advert to the said Paragraphs 28, 29 and 35 of that
 decision, which read thus:

¶60

 "28. Mr. Saraf fairly invited my
 attention to a judgment of the Full Bench
 of this Court in the case of (Abdul v.
Mahomedaly), reported in 3 Bom.L.R. 220.
 The Full Bench accepted the evidence of a
 witness of the plaintiff who deposed
 thus:-

¶61

 : 15 :

¶62

 "I first collected the bottles
 of the European makers who had
 the largest sales. Waterlow
 and Sons, Lyons and Co.,
 Stephens and Hollidge were four
 of the principal ones......
 The label designed was by
 combination of all four
 labels."

¶63

 The evidence of the plaintiff himself
 differed from that of his witness. The
 Full Bench accepted the evidence of the
 plaintiff’s witness and proceeded on that
 basis. Thus the original label was a
 deliberate combination of the four labels
 of the leading ink manufacturers Waterlow
 & Sons, Lyons & Co., Stephens & Sons and
 Hollidge. On behalf of the appellant
 (defendant) it was submitted that the
 labels or trade marks were so tainted in
 their conception and origin that it could
 not form the basis of any relief; and in
 any case not of an injunction. The Court
 came to the conclusion that the label was
 calculated to mislead the public. The
 question before the Full Bench was whether
 the use of the mark by the
 respondent/plaintiff itself being tainted,
 the respondent/plaintiff was entitled to
 an injunction against the third party.
 Chief Justice Jenkins held as under :-

¶64

 "Still confining myself to the
 original label I will first
 consider whether if it were the
 subject of this suit an
 injunction in respect of it
 could be granted. The
 principles on which an
 injunction can be claimed in a
 case of this class are thus
 stated by Lord Westbury in the
Leather Cloth Company Ltd. v.
The American Leather Cloth
Company Ltd. (1) : "These
 conclusions seem to follow

¶65

 : 16 :

¶66

 immediately from the very
 principle to which a plaintiff
 seeking protection for a
 trade-mark appeals. He desires
 to restrain the defendant from
 selling his own goods as the
 goods of another person; but
 if by the use of the trade-mark
 in question the plaintiff
 himself is representing and
 selling his goods as the goods
 of another, or if his
 trade-mark gives a false
 description of the article, he
 is violating the rule on which
 he seeks relief from the
 defendant". This is after all
 but a particular application of
 the more general rule that a
 plaintiff must come into a
 Court of Equity with clean
 hands, and by parity of
 reasoning a plaintiff who seeks
 the relief of an injunction in
 this Court (and it is with that
 form of relief alone that we
 are concerned in this case)
 must answer the same
 description....."

¶67

 It was further contended on behalf of the
 respondent that the four ink companies had
 not taken any proceedings against the
 respondent/plaintiff and therefore, that
 to which they might have objected had
 become publici juris. The contention was
 rejected on the ground that what is
 publici juris for the plaintiff is also
 such for the defendant. The result, it
 was held, was that the marks of the
 plaintiff was not such as to entitle it to
 the relief of an injunction."

¶68

 "29. Again Mr. Saraf fairly invited my
 attention to a judgment of the Delhi High
 Court in the case of (Prem Singh v. M/s.
Ceeam Auto Industries) 2, reported in

¶69

 : 17 :

¶70

 A.I.R. 1990 Delhi 233. The Delhi High
 Court followed the judgment in the case of
Abdul v. Mahomedaly, reported in 3
 Bom.L.R. 220. On behalf of the
 defendant, it was submitted that Waxpol
 Industries and not the plaintiff was the
 original owner of the impugned design and
 therefore the plaintiff was not entitled
 to an injunction against the defendant.
 he Counsel for the plaintiff, however
 submitted that this had no bearing insofar
 as the disputes between the parties to the
 suit inter se were concerned. In
 paragraphs 19, 21 and 23 it was held as
 under:-

¶71

 "19. The principle to guide in
 such cases where both
 contending parties before the
 Court are shown to be pirators
 of a third person’s property in
 trade mark or copyright has
 been very succinctly, but
 pointedly outlined in Kerly’s
 Law of Trade Marks and Trade
 Names, 12th Edn. at page 314
 by laying down that the Court
 may refuse to interfere to
 protect the use of a deceptive
 trade mark, on the basis of the
 maxim; ex turpi causa non
oritur actio, i.e. an action
 does not arise from a base
 case. According to him, it can
 be a defence to an action for
 an infringement, that the mark
 sued upon is invalid, and that
 one of the grounds of
 invalidity is that the mark is
 "disentitled to protection in a
 Court of justice......"

¶72

 21. The instance of cases of
 concurrent right which are
 given at pages 418, 419 inter
alia are that both the parties
 are equally unmeritorious, in

¶73

 : 18 :

¶74

 the sense that the impugned
 mark or design is neither
 distinctive of the plaintiff
 nor of the defendant i.e not
 distinctive of either party or
 that the goodwill which the
 plaintiff seeks to protect is
 vested in neither of them.

¶75

 23. When therefore in a given
 case it becomes apparent, that
 plaintiff’s own conduct is
 tainted and he himself is prima
facie an imitator of another
 person’s design; then the
 Court would not normally at the
 pre-trial stage, afford him
 protection, on the ere
 assertion or averments in the
 plaint, which the defendant has
 succeeded in showing to be
prima facie unfounded or even
 false."

¶76

 In the case before me of course the
 defendant says it is manufacturing the
 products under a License from JUSTEEN and
 that it is not a pirator. Added to that
 in the fact that the plaintiff’s agreement
 with JUSTEEN permits such an agreement
 between JUSTEEN and others."

¶77

 "35. Firstly the judgment in Omega Ag
Seeds is per incuriam. It has not
 considered the decision of the Full Bench
 in 3 Bom.L.R. 220. Secondly the decision
 in 3 Bom.L.R. 220 is biding on this
 Court. The aforesaid judgments of the
 Delhi High Court and another judgment of
 the Delhi High Court in Jai Prakash Gupta
v. Vishal Aluminium Mfg. Co., 1996(16)
 P.T.C. 575 being contrary to the Full
 Bench decision of this Court, are of no
 assistance to the plaintiff. Lastly a
 judgment sub-silentio cannot be relied
 upon as a precedent.

¶78

 : 19 :

¶79

 I may however mention that subsequently in
 (Baldev Singh v. Godran Rubber Plastic
Industries), 1999(79) Delhi Law Times 517,
 a learned Single Judge of the Delhi High
 Court held that a pirator is not entitled
 to protection of a trade mark or design."

¶80

 10. True it is that the principle of ex turpi
causa non oritur actio, which means "an action does
 not arise from a base case" should be kept in mind.
 In the present case, assuming that both the parties
 have been found to be the pirators of a third
 person’s (M/s.Janus Pharma Pvt.Ltd.) propriety
 right in trade mark COLIVAN-D; even so, the
 Defendants are pirators of the highest order.
 Inasmuch as, the Defendants 2 to 4 were fully aware
 of the order of winding up passed against the
 Company, in which, they were Directors at the
 relevant time. They cannot be permitted to walk
 away with the illegality as the Deed of Assignment
 on which they would seek to rely in law will have
 to be treated as non-est being a fraudulent
 preference. The Defendants, therefore, cannot
 claim to be prior users of the registered mark
 COLIVAN-D in their own rights as such.

¶81

 : 20 :

¶82

 11. To get over this position, reliance is
 placed on the decision in the case of Court
Receiver vs. R.R.Ommerbhoy (supra), particularly
 Paragraph 29 thereof, in which, the learned Single
 Judge of this Court has adverted to the decision of
 our High Court reported in LXXVI Bom.L.R. 146 in
the case of Hindustan Embroidery Mills Pvt.Ltd.vs.
K.Ravindra and Company. The extract from the said
 decision reproduced in Paragraph 29 reads thus:

¶83

 "It is not the practice to consider the
 validity of the registration of a trade
 mark on a motion for interlocutory
 injunction taken out by the person who has
 got the mark registered in his name.
 While a mark remains on the register (even
 wrongly), it is not desirable that others
 should imitate it".

¶84

 12. Indeed, Section 31 of the Trade Marks Act,
 1999 postulates registration to be prima facie
 evidence of the validity thereof in all legal
 proceedings relating to trade mark. That position,
 however, will apply to both the trade marks; one
 claimed by the Plaintiff and the other by the
 Defendants. For that reason, it was argued that by
 virtue of Section 28(3) r/w Section 30(2)(e), the

¶85

 : 21 :

¶86

 Plaintiff cannot bring action against the Defendant
 in respect of the trade mark COLIVAN or for the
 user of mark COLIVAN-D. Reliance was also placed
 on the decision of the Division Bench in the case

¶87

 of Bal Pharma Ltd. (supra). True it is that by
 virtue of Section 28(3) r/w Section 30(2)(e), it
 will not be a case of infringement as both the
 trade marks are registered under the Act which are
 similar, if not identical, and merely resembles
 each other. In such a case, the question is:
 whether Section 33 or for that matter, Section 34

¶88

 can come to the aid of the Defendants. For that
 purpose, the Defendants will have to show that they
 were continuously legitimate users of the subject
 trade mark from a date prior to the Plaintiff’s
 claim. In the present case, I have already found
 on fact that the Defendants’ claim of prior user of
 the mark COLIVAN-D cannot be accepted for having
 failed to establish the legitimate link with the
 trade mark of M/s.Janus Pharma Pvt.Ltd. in
 liquidation. Thus understood, none of the
 provisions pressed into service or the decisions
 referred to above will be of any avail to the
 Defendants.

¶89

 : 22 :

¶90

 13. The Defendants, however, strenuously

¶91

 pressed into service exposition in the case of
Agromore (P) Ltd.(supra) which has restated the

¶92

 legal position that the Plaintiff will have to
 establish on its own that she or her predecessor
 has been using the trade mark in their own rights
 for a considerably long period and for that, the
 Plaintiff has to plead and prove the same. Indeed,
 in the present case, the Plaintiff has approached
 this Court with mere assertion that she is entitled
 to exclusively use mark COLIVON in the light of
 Deed of Assignment in her favour by the person who
 had got the said mark registered in May 1996.
 However, at this ad-interim stage, the Plaintiff is
 entitled for the benefit of Section 31 of the Act
 which provides that registration of the trade mark
 shall be prima facie evidence of the validity

¶93

 thereof. The decision in Agromore (P) Ltd.
(supra) was also pressed in respect of the
 observations that if the trade mark belonging to
 the Plaintiff is fraudulent from its inception,
 such Plaintiff cannot be heard to get any relief,
 much less, ad-interim relief and should be

¶94

 : 23 :

¶95

 non-suited at the threshold as per the dictum of
 the Apex Court in S.P.Chengalvaraya Naidu v.
Jagannath reported in AIR 1994 SC 853.

¶96

 14. As observed earlier, both parties appear
 to have copied the registered mark of M/s.Janus
 Pharma Pvt.Ltd. in liquidation. Incidentally, the
 Defendants themselves have relied on the bills
 relating back to year 1996 to show that the
 predecessor of the Plaintiff Field Marc Services
 were purchasing product COLIVAN-D from the Company
 now in liquidation. The existence of the
 Plaintiff’s predecessor was to the knowledge of the
 said Company. According to the Defendants, the
 Plaintiff’s predecessor introduced the product in
 the registered mark COLIVON-D packed in carton
 having colour scheme pink and which was different
 from the carton used by the Company in liquidation
 to market its product COLIVAN-D. As already found
 earlier, so far as the Defendants are concerned,
 they have committed fraud of the highest order.
 Defendants 2 to 4 were former Directors of the said
 Company in liquidation. The Defendants have
 created some document in their favour purported to

¶97

 : 24 :

¶98

 be the Deed of Assignment on the basis of which now

¶99

 they would claim to be the successors to the trade
 mark right of the Company in liquidation. However,
 that claim will have to be stated to be rejected.
 The act of the Defendants 2 to 4 to create
 assignment in favour of Defendant No.1 representing
 themselves to be the Directors of the Company in
 liquidation is not only an act of entering into
 fraudulent transaction in relation to the business
 of the Company in liquidation but also fraud
 committed on the Court which had ordered the
 winding up of the Company in liquidation.

¶100

 15. Insofar as Plaintiff is concerned, she is

¶101

 claiming through her predecessor Field Marc
 Services who had commenced business much prior to
 the institution of the action for winding up of the
 Company. In fact, there were transactions between
 the Company in liquidation and the predecessor of
 the Plaintiff.

¶102

 16. Be that as it may, it will not be
 consistent with the public policy to allow the
 Defendants to perpetrate with their illegality and

¶103

 : 25 :

¶104

 fraud. In such a case, the Defendants will have to
 be restrained by order and injunction as prayed by
 the Plaintiff in terms of prayer clauses (a) and
 (b) of the Motion which read thus:

¶105

 "a. That pending the final hearing and
 disposal of the Suit the Defendants by
 themselves their representatives, servants
 and agents be restrained by a interim
 order and injunction of this Hon’ble Court
 from using in relation to pharmaceutical
 and medicinal preparations or goods of the
 same description, the trade mark COLIVAN
 or any marks deceptively similar to the
 Plaintiff’s registered trade mark COLIVON
 bearing registration No.705579 and more
 particularly listed in the Exhibit "E" to
 the Plaint in infringement of the
 Plaintiffs trade mark and rights attached
 thereto;

¶106

 b. That pending the final hearing and
 disposal of the Suit the Defendants by
 themselves their representatives, servants
 and agents be restrained by a interim
 order and injunction of this Hon’ble Court
 from using in relation to pharmaceutical
 and medicinal preparations or otherwise
 howsoever in relation to allied goods any
 of the trade marks or any other marks
 deceptively similar to the Plaintiff’s
 registered trade mark COLIVON bearing
 No.705579 so as to pass off or enable
 others to pass off the Defendants’ goods
 as and for those of the Plaintiffs."

¶107

 17. At the same time, the Plaintiff will have
 to be put to some condition. This is so because

¶108

 : 26 :

¶109

 the assertion of the Defendants that the
 predecessor of the Plaintiff when introduced the
 product COLIVON-D tablets, marketed the same in
 packing which was entirely different in scheme and
 colour. It was in pink colour. Whereas, the
 Plaintiff now claims that it was marketing the said
 product in packing which now resembles to the
 colour scheme of carton in respect of product
 COLIVAN-D which was marketed by the Company in
 liquidation. I am conscious of the fact that the
 condition which I propose to impose on the
 Plaintiff would appear to be against the Plaintiff
 in her own application, but that is the inevitable
 consequence having regard to the fact situation of

¶110

 the present case. For, the Plaintiff has not
 denied the assertion of the Defendant that the
 predecessor of the Plaintiff was using a different
 packing having distinct colour scheme in pink which
 is at Exhibit 3 to the affidavit of the Defendants
 dated 30th May 2007. Accordingly, the Plaintiff
 will have to trade and market its product COLIVON-D
 in packing as would appear in Exhibit 3 which was
 marketed by her predecessor. Such course would
 meet the ends of justice and also ensure that the

¶111

 : 27 :

¶112

 Plaintiff will not be able to pass off its product
 as that of the product of the Company in
 liquidation which will avoid confusion in the minds
 of the unwary general public.

¶113

 18. Accordingly, ad-interim relief in terms of
 prayer clauses (a) and (b) of the Notice of Motion
 as prayed for is granted, on condition mentioned
 hitherto before.

¶114

 19. Notice of Motion is made returnable for
 hearing on 13th August 2007. Pleadings to be

¶115

 exchanged on or before 31st July 2007, to be filed
 in the Registry well in advance.

¶116

 20. At this stage, Counsel for the Defendants
 seeks stay of the operation of the operative part
 of the order. This request is opposed by the
 Counsel for the Plaintiff. However, in the fact
 situation of the present case, the request being
 reasonable, the operative order shall not be given
 effect to for a period of four weeks from today.

¶117

 : 28 :

¶118

 A.M.KHANWILKAR, J.

Ms Supriya Prabhu v. Janus Remedies and Ors.

Case brief

What is this about?

What did the court decide?

Ms Supriya Prabhu v. Janus Remedies and Ors.

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Cases cited

Parties & counsel

Coram

Case details

Similar cases

Punaji Tukaram Naik Vs Gujarat Fluro Chemicals Ltd.

Canara Bank, Trustees of Debentures Vs I.A.E.C. (India) Ltd. and Ors. and the Official Liquidator, High Court and Vijay D. Char (Interveno

B.C. Jhaveri and Anr. Vs Raju Tandon and Ors. and M/S. Shimppi

Keshav Dattatray Malondkar and Ors. Vs Rozy Ellas Kinny and Ors.

hab pharmaceuticals and research limited Vs maiden pharmaceuticals limited

Bindesh Shah Vs Niranjan Shah