Allowed

Cadila Healthcare Ltd. v. Laurel Life Science (India) Pvt. Ltd.

Bombay HC1 Jul 2014S/941/2013

Case brief

AI extract

What is this about?

This order is in an ex-parte suit for trademark infringement where the plaintiff sought an injunction, disclosure of sales, and compensation against the defendant for using a mark confusingly similar to the plaintiff's registered mark.

What did the court decide?

Permanent injunction restraining defendant from using mark 'ATENOPIN'; direction to disclose sale details; decree for Rs. 1 lakh compensation with interest.

Cadila Healthcare Ltd. Vs Laurel Life Science (India)… — Intellectual Property | Bombay HC (2014)

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2-S941-13.DOC

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agk

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION SUIT NO. 941 OF 2013

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Cadila Healthcare Limited…Plaintiffs
Versus
Laurel Life Science (India) Pvt. Ltd.…Defendants

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Mr. Sachin Mhaske, i/b M/s. Nayan Rawal & Associates, for the
Plaintiffs.
None for the Defendants.

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CORAM:G.S. PATEL, J
DATED:1st July 2014

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PC:-

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By an order dated 15th April 2014, the registry was directed to give notice to the Defendants stating that this suit would be placed for an ex-parte decree on 7th May 2014. A subsequent service report from the registry shows that the packet sent was returned unserved. On 25th June 2014, after noting these facts, I directed that the suit be listed today for an ex-parte decree.

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The Plaintiffs’ seek an order permanently restraining the Defendant, directly or indirectly, from infringing, in relation to any medicinal or pharmaceutical preparation, the Plaintiffs’ registered

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trade mark “ATEN”, either by using the confusingly or deceptively
similar mark “ATENOPIN”, or any other similar mark. They also
seek details of sale of the product and a money decree in the
amount of Rs. 1 lakh.

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The averments in the plaint indicate that the Plaintiff is a leading pharmaceutical company in India. It manufactures and sells pharmaceutical and various allied products. It has built up a valuable reputation and much goodwill both in India and overseas.

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In 2001, the Plaintiff acquired the trade mark “ATEN” from another company, one Kopran Limited, along with all properties, rights and goodwill by a deed of assignment dated 18th September 2001. Products under this brand name were first launched and used by Kopran Limited from 1986. This was the first use of the distinctive trademark ATEN for a formulation containing Atenolol, used in cardiovascular treatments, treatment for blood pressure and hypertension, among others. The trademark ATEN was duly registered in Class 5 under Registration Certificate No. 655945 dated 25th September 2007.

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According to the Plaintiffs, the mark was removed apparently for non-payment of renewal fees. That order of removal has been challenged before the Intellectual Property Appellate Court and is pending adjudication.

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In the meantime, the Plaintiffs’ product was sold under this trademark. Between 2003 and 2013, sales have crossed Rs. 800 crores. Owing to its long, extensive and exclusive use, and

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promotion and sales publicity, the mark ATEN has now come to be
distinctively and exclusively associated with the Plaintiff’s
product(s). It is a well-known and reputed mark in the relevant
professional circles consisting of doctors, pharmacists and retailers.
The Plaintiff has been vigilant in protecting its trademark.

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In January 2013, the Plaintiffs chanced upon an application by the Defendant for registration of the mark ATENOPIN (“ the infringing mark ”). This application was also made in Class 5. The Plaintiff opposed registration of the infringing mark.

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Mr. Mhaske, learned advocate for the Plaintiffs’, states that a compilation and an affidavit in lieu of examination in chief were filed some time in March 2014. There is, however, no record of this filing traceable at present. Learned advocate for the Plaintiffs has a spare copy. He agrees and undertakes to file a limited further affidavit annexing thereto a copy of the evidence affidavit filed in March / April 2014. This shall be done on or before Monday, 7th July 2014. Also annexed to that limited affidavit shall be a copy of the compilation of documents. It is made clear that the Plaintiff may annex photocopies and not original documents.

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I have perused a copy of the evidence affidavit, as also the a copy of the compilation of documents filed by the Plaintiff. The affidavit of evidence is filed by one Mr. Hiren Trivedi, Executive – Legal of the Plaintiff. He has attested to the documents produced by the Plaintiffs.

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Learned advocate for the Plaintiffs correctly points out that the infringing mark ATNOPIN is confusingly and deceptively similar to the Plaintiff’s mark “ATEN”. Phonetically and structurally, there is no difference. It is also visually similar and is bound to create confusion with the Plaintiff’s mark.

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There is no defence to the suit. In my view, the Plaintiffs are entitled to a decree as prayed. There will be a decree in terms of prayer clauses (a), (b) and (c) of the plaint, set out below:

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“(a) this Hon’ble Court be pleased to, by a permanent order and injunction restrain the Defendant, by itself, its servant and agents, stockist, dealers or others directly or indirectly involved, from in any manner infringing and/or using in relation to any medicinal and pharmaceutical preparations under the trademark “ATENOPIN” or any other mark which is deceptively and confusingly similar to the Plaintiffs registered trademark “ATEN”;

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(b)This Hon’ble Court be pleased to order and direct
the Defendants to disclose details of the sale of
the product from the period it started selling the
same, directly or indirectly by the use of the mark
“ATENOPIN” as a part of the name of its product
or in any other manner howsoever;

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(c)The Defendant be ordered and decreed by this
Hon’ble Court to pay to the Plaintiff a sum
of Rs. 1,00,000/- (Rupees One Lakhs only)
or such other amount as this Hon’ble Court
may deem fit as and by way of
compensation for the wrongful use and
exploitation of the mark of the Plaintiff
together with interest therein at the rate of

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18% per annum from the date of the suit till
payment and/or realization as per
particulars of claim Exhibit – G;”

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The suit is decreed in these terms, with costs. Drawn up decree is dispensed with.

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This order is not to be uploaded till such time as the Plaintiffs files the limited affidavit mentioned above.

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(G. S. PATEL, J.)

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Cadila Healthcare Ltd. v. Laurel Life Science (India) Pvt. Ltd.

Case brief

What is this about?

What did the court decide?

Cadila Healthcare Ltd. v. Laurel Life Science (India) Pvt. Ltd.

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Coram

Case details

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