Allowed

Clenmark Pharmaceuticals Ltd. v. Signova Pharma (P) Ltd. and Anr.

Bombay HC7 Mar 2016NMS/845/2016

Case brief

AI extract

What is this about?

The High Court of Bombay, in a notice of motion, found a strong prima facie case of trademark infringement and passing off regarding the similarity between TELMA and TELZA. The court held that defendants failed to prove fair adoption due to negligence and that public interest did not justify the continued use of the allegedly infringing mark.

What did the court decide?

Interim injunction restrained against manufacturing, marketing, selling, distributing, exporting, or using the trade mark TELZA or any deceptively similar mark to infringe TELMA or pass off goods.

Clenmark Pharmaceuticals Ltd. Vs Signova Pharma (P)… — Intellectual Property | Bombay HC (2016)

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4-NMSL70-16_CF.DOC

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ATUL

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION (L) NO. 70 OF 2016

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IN

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SUIT NO. 189 OF 2016

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Glenmark Pharmaceuticals Ltd.
Versus

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...Plaintiff

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Signova Pharma (P) Ltd. & Anr.…Defendants

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Mr. Viraag Tulzapurkar, Senior Advocate, with Mr. Hiren
Kamod, Mr. Mahesh Mahadgut & Ms. Miloni Gala, i/b Mr.
Mahesh Mahadgut, for the Plaintiff.

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Mr. B.D. Konwar, Senior Advocate, with Ms. Priyanka Jadhav, i/b
Ms. Sapana Rachure, for Defendant No. 1.

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CORAM:G.S. PATEL, J
DATED:7th March 2016

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PC:-

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1.This is an action in trade mark infringement combined with a
cause of action in passing off. The Plaintiff sought and obtained
leave under Clause XIV of the Letters Patent on 19th January 2016
to combine these two causes of action. Thereafter, on 5th February
2016, an Affidavit in Reply to the present Notice of Motion was
taken on record. On that day, parties were also put to notice that the
Notice of Motion would be finally disposed of at the ad-interim
stage on the next date. I now have before me the Affidavit in Reply

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and the Affidavit in Rejoinder, which has been tendered today, a
copy having been furnished previously to the Advocates for the
Defendants. I am therefore taking up the Notice of Motion for final
disposal. Both sides have consented to this.

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2.I have heard Mr. Tulzapurkar, learned Senior Advocate for
the Plaintiff, and Mr. Konwar, learned Senior Advocate for
Defendant No. 1 at some length and, with their assistance,
considered the material on record.

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3.The Plaintiff is a manufacturer, dealer and exporter of
various pharmaceutical and medicinal preparations. It holds various
trade marks. One of these is the trade mark “TELMA”. This is
used in respect of certain medicinal and pharmaceutical
preparations for the control inter alia of blood pressure-related
ailments. It is a product based on a component or ingredient called
Telmisartan.

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4.The Plaintiff has been in business for nearly three decades. It
is a listed company. Its products are sold throughout India. It also
exports many of its products. It claims to have acquired a significant
reputation for the quality and efficacy of its product. It has also
garnered much goodwill in the course of its business. The Plaintiff
claims to be the registered proprietor of the trade mark “TELMA”,
as also of a label mark containing this word, and of word marks that
of which this word is a prominent and memorable part. The
Plaintiff has obtained registrations in different classes and under
different registration numbers between 13th September 2002 and
4th May 2005. Copies of the Legal Proceeding Certificates in

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respect of the Plaintiff’s registrations are annexed as Exhibit “A1”
to Exhibit “A6” to the plaint.

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5.The Plaintiff claims that it has been using this mark for its
products extensively since 2002. It has also actively and
energetically promoted the sale of products under this mark.
Exhibit “B” to the plaint at page 33 is a copy of a certified
statement of domestic sales turnover of the TELMA-branded
product range. The figures are indeed substantial. The first period
shown is April 2003 to March 2004, in which the sales turnover
was nearly Rs. 3 crores. By March 2011, this figure had reached
nearly Rs. 10 crores. From April 2015 till date it has reached nearly
Rs. 160 crores. Exhibit “C”, at page 34, is similarly a certified
statement of international sales in US dollars. Again, there has been
a steady increase from April 2003, when the turnover was USD
5,490, to April 2015, when the corresponding figure crossed USD 1
million. Exhibit “D” to the plaint is a certified statement of the
annual sales promotional expenses in rupees. When the Plaintiff
began marketing its product, it spent just under Rs. 2 crores on
promotional expenses. Today (as of March 2015), that figure has
gone up substantially. There is no real dispute about these figures at
all. The Plaintiff also says that it markets its products in various
formulations. These connote the strength of the product and
certain variations. Particulars are set out in paragraph 5 of the
plaint. It is on this basis that the Plaintiff claims that its mark has
acquired distinctiveness within the medical fraternity, in the trade
and among consumers throughout India. The Plaintiff therefore
says that it is entitled to the exclusive use of the mark and enjoys
both statutory and common law rights in respect of that mark.

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6.According to the Plaintiff, it found out only in November
2015 that the Defendants were manufacturing an identical
medicinal preparation under a rival mark “TELZA”. A photocopy
of the Defendants’ product pack is Exhibit “G” to the plaint. The
submission made by Mr. Tulzapurkar is, however, not that the
packaging is a colourable imitation, but that the Defendants’ rival
mark itself is structurally, phonetically and visually
indistinguishable from Plaintiff’s. Particularly in the case of a
sensitive Schedule “H” prescription drug, he submits, no
confusion or deceptive similarity should be permitted. The public
interest, quite apart from the Plaintiff’s statutory and common law
rights, demands that a level of distinctiveness be maintained
between competing products. All that the Defendants have done,
the Plaintiff says, is to replace the “M” in their trade mark with a
“Z”. The plaint states that since doctors’ handwritten prescriptions
are often illegible, there is every possibility that a prescription
specifying the Plaintiff’s product will be mistaken for the
Defendants’. This is bound to lead to confusion and the
Defendants’ product will pass off as that of the Plaintiff.

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7.On 10th October 2015, by their Advocates’ notice of that
date, the Plaintiff served a cease and desist notice on the
Defendants. A copy is annexed to the plaint. The Defendants
responded on 12th November 2015 inter alia denying that there was
any similarity between the two products. A copy of this Reply is at
Exhibit “I” to the plaint. The contents of this are substantially
reiterated in the Affidavit in Reply. The Defendants claim that they
coined their mark from the source Telmisartan. They applied for
the registration of their mark. The Defendants’ mark has several

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distinctive suffixes. The Plaintiff cannot claim a monopoly on the
word “TELMA”, since there are several others with that name.
They do agree that this is a prescription medicine, but the
Defendants use this as a defence. In the Affidavit in Reply, an
additional ground is taken, invoking Section 33 of the Trade Marks
Act, 1999, on the basis that the Plaintiff knew, or at any rate must be
deemed to have known, of the Defendants’ existence for several
years, and by refusing to act promptly, the Plaintiff has acquiesced
in the Defendants’ use of the rival mark. The Defendants claim an
honest and concurrent user of the mark in question. The Affidavit
in Reply states in paragraph 5 that the Defendants adopted the mark
some time in 2010. I do not find, however, from the documents
annexed to the Affidavit in Reply anything substantial to evidence
this.

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8.The other submissions by the Defendants are that there is no
phonetic similarity between the two marks. In any case, the
Defendants’ products under the rival mark are sold in a
geographically restricted region of the northeastern states. They are
significantly lower in price. Their packaging is entirely distinctive
and there is no possibility of any person, whether a patient, a
stockist or a medical professional, mistaking one product for the
other. The Defendants also say that they have not been negligent or
clandestine in their use of the mark. Their use has not been
surreptitious, but has been continuous and notorious, and could
therefore not have been unknown to the Plaintiff.

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9.Mr. Konwar makes an additional point when he says that this
drug is required by several patients to whom it is prescribed. It is a

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Schedule “H” prescription drug that is not sold across the counter
and is not taken or not taken at random or at will. It is a sensitive
medication and those who are prescribed it and take it could well be
dependent on it. If this Court were to injunct the Defendants, the
damage to the public at large would be incalculable.

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10.I have considered these arguments. While on the one hand I
find that in the plaint there is verifiable material of the Plaintiff’s
use, expenses and sales, there is no counter-vailing material in
response from the Defendants. What is annexed to the Affidavit in
Reply are some invoices, promotional materials and details of
events or conferences at which the Defendants say that their
product was either launched, introduced or received further
publicity. It is not possible to say from this material what precisely is
the extent of that use, or when the Defendants first adopted the
rival mark..

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11.I regret that I do not find persuasive or convincing the
Defendants’ submission that the two marks are phonetically and
structurally entirely distinctive. Indeed, they are not, particularly in
a country known for its multiple dialects, cadences, and distinctly
relaxed approach to pronounciation. Although the two products
may have the same source, the Defendants undoubtedly had a
plethora of derivative names for adoption as a mark. Suffixes do not
in themselves provide the necessary distinctiveness, for these only
connote the strength of a particular formulation. Once we see the
Plaintiff’s sales figures dating back several years well prior to the
alleged date of adoption of the rival mark by the Defendants, the
reason for the Defendants’ adoption of the rival suggests itself. In

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my view, this can only be, prima facie, an attempt to trade on the
Plaintiff’s quite considerable reputation and goodwill built up over
a long period of time. I do not think that it is any answer to say that
the Defendants are confined to one territorial region or that they
are priced lower.

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12.As to the argument that an injunction would have an adverse
impact on the public health, I think it is regrettable that such a
defence should be advanced. This argument proceeds on the
footing that the Defendants’ product is in fact the only one available
in the north eastern region. This is very seriously disputed by the
Plaintiff, which says that it, too, is in the same market. In any case,
even if the Defendants’ products with the rival markwere the only
ones in that market, that can hardly constitute a defence to a charge
of infringement and passing off.

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13.As to the question of acquiescence, Mr. Tulzapurkar is
correct in saying that this was an aspect I had occasion to consider
in paragraphs 7 and 8 of Neon Laboratories Limited v. Themis
Medicare Limited & Another.1 It is settled law now that delay by itself
is not a sufficient defence and that delay simpliciter is no reason to
deny relief. This is, of course, on the footing that the Defendants in
the present case have been actually able to establish their existence
as of April 2010. As I have noted, of this I find next to no evidence.
This question of delay was also considered in the case of Jagdish
Gopal Kamath & Others v. Lime & Chilli Hospitality Services2 (“Café
Madras”) in paragraph 59.

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1 2014 (60) PTC 621 (Bom)

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2 2015 (62) PTC 23 (Bom)

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14.As to the question of the necessity of a search prior to
adoption, this issue too arose in Café Madras and was dealt with in
paragraphs 42 and 43 of that decision. Again, it is settled law that
once a Court arrives at a finding that there is deceptive similarity,
the question of honesty of adoption is wholly irrelevant. Given that
there is material to show prior use by the Plaintiff, it was for the
Defendants to show that they took both a register search and a
market search and that neither of these showed up the Plaintiff’s
mark. This has not been done. A Division Bench of this Court in
Bal Pharma Limited v. Centaur Laboratories Private Limited & Anr.3
held that even where a defendant claims concurrent user, if he has
not troubled himself to ascertain whether or not the same or a
similar mark is the subject matter of another’s registration, he
cannot be heard to complain, for he has been using it negligently.
The new claimant must take the elementary precaution of taking a
search in the register.

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15. What remains is the question of whether, in the public
interest, an injunction should follow given that both are Schedule
“H” prescription drugs. This is also an issue relating to the balance
of convenience. I believe that in assessing such contesting claims,
the Court must have regard not only to the monopolistic privileges
claimed by the competing parties, for that is only one side of the
coin, but must also have regard to the other side of that very coin,
viz., the public interest. This is the interest of the consumer. For,
when we speak of similarity, deception, the likelihood of confusion
and so on, we do so from the perspective of a common man, he of
imperfect recollection and average intelligence. It is he who must be

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3 (2002) 24 PTC 226 (Bom) (DB)

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saved from such deception or confusion. To invoke the public
interest to continue what is, prima facie, both an infringing use and
passing off is untenable. This is particularly so when there is no
material on record to establish the Defendants’ market share in its
limited territory, the extent of its sales of products under the rival
mark. The argument suggests that the continued existence of the
entire populace of the country’s north-east would be threatened
were an injunction to be granted. This is surely an argument in
extremis.

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16.In my view, the Plaintiff has made out a more than sufficient
prima facie case for the grant of an injunction. The balance of
convenience is in their favour. The Notice of Motion is made
absolute in terms of prayer clauses (a) and (b), which read thus:

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a) That pending the hearing and final disposal of suit, the Defendants by themselves, their servants, Directors, dealers, distributors, stockists, franchisees, agents, sister, concerns, subsidiaries, representatives, affiliates and/or assigns and all persons acting for and on their behalf be restrained by a temporary order and injunction of this Hon’ble Court from in any manner manufacturing, marketing, selling, distributing, exporting and/or using in relation to medicinal and/or pharmaceutical preparations and/or such allied and cognate goods the trade mark TELZA or using any other mark being deceptively similar in any manner whatsoever to the Plaintiffs mark TELMA so

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as to infringe the Plaintiff’s registered trade mark TELMA registered under Nos. 1133378, 1176594, 1176595, 1234744, 1240590 and 1355194 all in class 5.

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b) That pending the hearing and final disposal of suit, the Defendants by themselves, their servants, Directors, dealers, distributors, stockists, franchisees, agents, sister, concerns, subsidiaries, representatives, affiliates and/or assigns and all persons acting for and on their behalf be restrained by a temporary order and injunction of this Hon’ble Court from in any manner manufacturing, marketing, selling, distributing, exporting and/or using in relation to medicinal and/or pharmaceutical preparations and/or such allied and cognate goods the trade mark TELZA or using any other mark being deceptively similar in any manner whatsoever to the Plaintiffs mark TELMA so as to pass off the Defendants’ goods as and for those of the Plaintiff.”

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17.Given that the Plaintiff claims to have learnt of the
Defendants’ use of the mark in October 2015 but filed this Suit in
January 2016, the operation of this order is stayed for a period of
three weeks from today.

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(G. S. PATEL, J.)

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Clenmark Pharmaceuticals Ltd. v. Signova Pharma (P) Ltd. and Anr.

Case brief

What is this about?

What did the court decide?

Clenmark Pharmaceuticals Ltd. v. Signova Pharma (P) Ltd. and Anr.

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Cases cited

Statutes considered

Parties & counsel

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