Allowed

Ajanta Pharma Limited v. Deccan Healthcare Pvt. Ltd. and Anr.

Bombay HC21 Mar 2017NMS/358/2017

Case brief

AI extract

What is this about?

In a motion to make an interim injunction absolute, the court rejected the defendant's defence that its mark is generic or has different usage. Finding the marks confusing and the public interest at stake due to the plaintiff's early registration, the court granted a permanent injunction against the defendant.

What did the court decide?

The temporary injunction was made absolute, restraining the defendants from using the mark 'CARFIT' or similar marks for any goods pending the final disposal of the suit.

Ajanta Pharma Limited Vs Deccan Healthcare Pvt. Ltd… — Intellectual Property | Bombay HC (2017)

¶1

911-NMS358-17.DOC

¶2

ATUL

¶3

IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 358 OF 2017

¶4

IN

¶5

SUIT NO. 110 OF 2017

¶6

…Plaintiffs

¶7

Ajanta Pharma Ltd …Plaintiffs
Versus
Deccan Healthcare Pvt Ltd.…Defendants

¶8

Mr Ashutosh Kane, with Vrinda Gambhir, i/b WS Kane & Co, for
the Plaintiffs.
Mr Arvind R Singh, for the Defendants.

¶9

CORAM:G.S. PATEL, J
DATED:21st March 2017

¶10

PC:-

¶11

1.I passed an ex parte ad-interim order on 25th January 2017.
paragraphs 2 to 7 of that order read as follows:

¶12

“2.The Suit is the usual action in trade mark
infringement and passing off. There is a pending Petition
for leave under Clause XIV of the Letters Patent to combine
the cause of action in passing off with the cause of action in
infringement. Mr Kane therefore correctly restricts himself
today for the reliefs in infringement.

¶13

3.The Plaintiff is a renowned pharmaceutical
company. It manufactures a wide range of pharmaceutical

¶14

Page 1 of 7

¶15

21st March 2017

¶16

911-NMS358-17.DOC

¶17

and medicinal products. It has to its name several trade
mark registrations for its various products. One of these is
the mark CAROFIT, which the Plaintiff adopted in 1998
for use in relation to its pharma preparations containing
carotenoids. These are in tablet form and prescribed as
nutrition supplements. The mark is also used in respect of
skin creams. On 8th May 1998 the Plaintiff applied for (and
later obtained) registration of these mark under classes 05
(for pharmaceutical and medicinal preparations) and 03 (for
soaps, perfumery, essential oils, cosmetics and hair lotion
preparations). All these registrations are valid and
subsisting. The relevant certificates are annexed.

¶18

4.The mark has been used continuously and without
interruption since 1998. Annexed to the plaint at Exhibits
“C1” and “C2” are copies of sales and expenses statements
certified by the Senior General Manager (Legal) and
Company Secretary. From this it is evident that the sales
are indeed substantial. The total for the period from 1998 to
2016 is over Rs. 6,916 lakhs. Specimens of the packaging
and carton are also annexed.

¶19

5.It is on this basis that Mr Kane for the Plaintiff states
that the Plaintiff has acquired significant reputation and
goodwill in the mark and amongst the pharmaceutical and
medical sector including doctors, chemists and general
public. Prima facie, the submission is justified.

¶20

6.In early January 2017 the Plaintiff learnt of the
Defendants’ product under the mark CARFIT. This is
apparently used for levocarnitine 500 mg tablets. A sample
of the packaging is shown at Exhibit “D” at page 40. From
this it is obvious that the Defendants’ product is used for
significantly different purposes. The Defendants’ product
has applications across a wide range of pathologies. This
supports the Plaintiff’s case, for two different products for

¶21

Page 2 of 7

¶22

21st March 2017

¶23

911-NMS358-17.DOC

¶24

two different medical conditions cannot and should not be
allowed to be confused one for the other. That such
confusion is inevitable is obvious from the phonetic,
structural visual similarity between the two marks.
Separating them is a single vowel “O” and nothing beyond
that. The fact that the Defendants’ product has a different
use and purpose clearly indicates that the Defendants had
several other possible names to select or adopt as their
mark.

¶25

7.Prima facie there is a strong case made out in
infringement and possibly, for a later stage, in passing off as
well. The balance of convenience clearly favours the
Plaintiff, it having used this mark since 1998, a matter that
is now demonstrated and part of the record.”

¶26

2.The Notice of Motion was thereafter served and I granted
leave in the Clause XIV Petition on 22nd February 2017.

¶27

3.The 1st Defendant has neither entered appearance nor filed
an Affidavit in Reply. The 2nd Defendant has filed an Affidavit in
Reply. Mr Kane has filed a Rejoinder.

¶28

4.Briefly stated, the defence in the 2nd Defendant’s Reply runs
like this. The 2nd Defendant markets a product under the rival mark
CARFIT. The 2nd Defendant has itself sought registration of the
rival mark through its company Alcuris Pharmaceuticals Pvt Ltd.
Mr Kane points out that the Plaintiffs mark is cited in opposition to
the Defendants’ Application for registration as a conflicting mark.

¶29

5.The submission is that the two marks CAROFIT and
CARFIT are dissimilar. There is no structural or phonetic similarity

¶30

Page 3 of 7

¶31

21st March 2017

¶32

911-NMS358-17.DOC

¶33

between these two marks. This submission must be rejected out of
hand. The addition of a single vowel will not effect the necessary
distinction or distinctiveness. In a country like India where English
is not the first language, mispronunciations are common and are
bound to occur. I do not think it is unreasonable to expect that
persons wanting CAROFIT might pronounce as CARFIT.

¶34

6.The next submission is that the name CARFIT (the 2nd
Defendant’s own mark) is a generic word, publici juris. This is a very
strange submission. Paragraph 7 of the Affidavit in Reply says this:

¶35

“7.That it is also submitted here that the relevant
provisions under the Trade Mark Act word CARFIT is
generic word (Public Juris) and in the medical filed it is very
common that Trade Mark. The Defendant’s Trade Mark
namely, CARFIT consists of a combination of two words
“CAR” & “FIT”. The combination of the words dose not
let in remain same/similar to the Plaintiff’s Trade Mark of
CAROFIT.”

¶36

(Cited verbatim)

¶37

On this submission alone the Defendants’ application for
registration must necessarily fail, and the present Notice of Motion
must be granted. For, it is the 2nd Defendant who says that his own
mark is non-distinctive and is publici juris. It is the 2nd Defendant
who says it has chosen mark CARFIT as a combination of two
words CAR and FIT. The submission destroys any hope the 2nd
Defendant might have had of establishing distinctiveness. I am
wholly unable to understand why such a defence – if it can even be
called that – was attempted.

¶38

Page 4 of 7

¶39

21st March 2017

¶40

911-NMS358-17.DOC

¶41

7.Paragraphs 8 to 10 are important. They are also redolent with
some truly delectable typographical errors. I quote these exactly as
they appear in the Affidavit in Reply.

¶42

“8.That in the aforesaid two medicinal preparations,
ingredient are different, using method is different & in the
background it is required to be Defendant’s medical/tablet
CARGIT could not be obtained without prescription of a
registered medical practitioner while the Plaintiff’s
medicine can be obtained without any medical prescription
in any chemist/medical store.

¶43

9.That the Plaintiff has not been filed aforesaid suit
with clean hand & suppress material facts before this
Hon’ble Court that the ingredient of salt are tautly
different, & Defendant’s medicine while the Plaintiff’s
medicine is a multivitamin & Anto oxidant in nature. As
could not be said that Defendant’s Trade Mark made
likewise Plaintiff’s Trade Mark. Copy of contents of
ingredient is being annexed herewith as Annexure No. 2to
this short reply/written statement.

¶44

10.That it is also not out of place to mention here that
the medicine of Defendant’s is totally different from the
medicine of Plaintiff & both the medicines are used for
deferent purposes. The Defendant’s Medicine is being use
for the purposes of mussels cramps, though the medicine of
Plaintiff is a multivitamin tablet.”

¶45

8.The submission on these paragraphs as set out in paragraph
11 is that the Supreme Court’s decision in Cadila Healthcare Ltd v
Cadila Pharmaceutical Ltd1was not noticed at the time of my ad-
interim order. On the contrary: it was very much to my mind, and

¶46

1 (2001) 5 SCC 73 : AIR 2001 SC 1952.

¶47

Page 5 of 7
21st March 2017

¶48

911-NMS358-17.DOC

¶49

especially paragraph 32 which says that drugs are poisons, not
sweets; the incorrect administration of a drug may have severe
adverse consequences. According to the 2nd Defendant its drug is a
formulation meant for muscle cramps (in paragraph 10, “mussels
cramps”). But if what the 2nd Defendant says is true, then a person
wanting to take nothing more than an anti-oxidant or multivitamin
might find himself administered a wrong drug only because the
Defendants have chosen a mark that is too similar to that of the
Plaintiffs, viz., a formulation intended to relax cramped muscles.
This is the very rationale enunciated in Cadila and subsequent
decisions that have re-affirmed it over the years.

¶50

9.Thus the Defendants themselves provide more than sufficient
reason to confirm the injunction – not only because the Plaintiff
has established a prima facie case, balance of convenience and shows
irretrievable injury, but also because the public interest clearly
demands this.

¶51

10.The result is that the Notice of Motion succeeds against both
the Defendants. It is made absolute in terms of prayer clauses (a)
and (b), which read thus:

¶52

“(a)that pending the hearing and final disposal of the
suit, the Defendants by themselves, their directors, agents,
servants, stockists, dealers, distributors and all persons
claiming through them be restrained by an order and
temporary injunction of this Hon’ble Court from infringing
the Plaintiff’s registered trade mark CAROFIT and/or its
variations bearing Registration nos. 801403, 834579,
1983795, 2003853 all in class 05 and 1507321, 1507322 both

¶53

Page 6 of 7
21st March 2017

¶54

911-NMS358-17.DOC

¶55

in class 03 respectively by the use of the impugned trade
mark “CARFIT” or any other trade mark identical with or
deceptively similar to the Plaintiff’s said registered trade
marks upon and in respect of the goods covered by the
Plaintiff’s aforesaid registrations or in any other manner
whatsoever;

¶56

(b)that pending the hearing and final disposal of the
suit, the Defendants by themselves, their directors, agents,
servants, stockists, dealers, distributors and all persons
claiming through them be restrained by an order and
temporary injunction of this Hon’ble Court from
manufacturing and/or marketing and/or exporting and/or
importing and/or selling and/or advertising and/or trading
in and/or otherwise dealing in medicinal and
pharmaceutical preparations or similar goods bearing the
impugned trade mark “CARFIT” or any other trade mark
identical with or deceptively similar to the Plaintiff’s said
well-known trade mark CAROFIT so as to pass off or
enable others to pass off the Defendants’ goods as and for
the Plaintiff’s well-known goods or in any other manner
whatsoever;”

¶57

11.In the facts of the case, there will be no order as to costs
against the 2nd Defendant. However, the 1st Defendant is liable to
pay the costs of this Notice of Motion.

¶58

(G. S. PATEL, J.)

¶59

Page 7 of 7
21st March 2017

Ajanta Pharma Limited v. Deccan Healthcare Pvt. Ltd. and Anr.

Case brief

What is this about?

What did the court decide?

Ajanta Pharma Limited v. Deccan Healthcare Pvt. 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

Coram

Case details

Similar cases

M/S. Allen Buildwell Pvt.Ltd. Vs M/S Awersa Engicon (India) Pvt.Ltd. and 2 Ors.

Putlan Faramrose Sorabji Shroff Vs Nazruddin Shaikh and Anr. and Khursheed K. Wadia and 3 Ors. (Applicant)

Zigma International Vs Surendra Overseas (Panama) Inc. and 3 Ors.

Pembridge Associates Limited Vs MD Ashraf Ali Khan

M/S Satyaman Impex Pvt.Ltd Vs M/S Trinity Auto Components Ltd.

Tata Capital Financial Services Limited Vs R Asokan and Anr.