Allowed

Dabur India Limited v. Bison Laboratories Pvt.Ltd.

Madras HC22 Jun 2021CS/919/2001

Case brief

AI extract

What is this about?

The Court granted a perpetual injunction restraining defendants from infringing plaintiff's registered trade mark ODOPIC or using the similar mark ODOSOL or passing off goods under those marks. The plaintiff withdrew claims for accounts and damages.

What did the court decide?

Perpetual injunction restraining infringement of trade mark ODOPIC and use of mark ODOSOL; researchws bear their respective costs.

Dabur India Limited Vs Bison Laboratories Pvt.Ltd. — Intellectual Property | Madras HC (2021)

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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(ORDINARY ORIGINAL CIVIL JURISDICTION)

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TUESDAY, THE 22ND DAY OF JUNE, 2021

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THE HON'BLE MR. JUSTICE R. SUBRAMANIAN

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C.S. No.919 of 2001

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DABUR INDIA LIMITED(*), Having its Registered Office at 8/3, Asaf Ali Road, New Delhi - 110 002 . A company registered under the Companies Act, 1956, having its corporate office at Balsara House, 43, Nagindas Master Road, Fort, Mumbai - 400 001. (*) amended as per order dated 4/10/2007 in Application No.6301 of 2007

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..Plaintiff

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Vs.

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BISON LABORATORIES PRIVATE LIMITED Represented by its Managing Directors 34, Krishnapuram Street, Choolaimedu, Chennai 600 094.

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K.M. Thomas proprietor of Bison Laboratories 34, Krishnapuram Street, Choolaimedu, Chennai 600 094. ..Defendants

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Civil Suit praying that this Hon'ble Court be pleased to pass a

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Judgement and Decree of

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(a) Perpetual injunction restraining the Defendants whether by

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https://hcservices.ecourts.gov.in/hcservices/

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themselves or their respective servants or agents or assigns or otherwise

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howsoever from infringing the registered trade marks "ODOPIC" of the Plaintiff in any way and from selling or offering for sale or marketing any of the Defendants products under the said trade mark "ODOSOL" or any mark deceptively or confusingly similar to or in colourable imitation of the Plaintiff's said registered trade mark ODOPIC.

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(b) Perpetual injunction restraining the Defendants, whether by themselves or by their servants or agents or assigns or otherwise howsoever from passing off or attempting to pass off or causing, enabling or assisting others to pass off the products not of the Plaintiff as and for the products of the Plaintiffs by use in connection therewith or in course of trade the said word or trade mark "ODOSOL" or any word name or mark being a substantial reproduction or colorable imitation of the Plaintiff's trade marks ODOPIC and/or ODOMOS and/or ODONIL.

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(c) Delivery up or destruction upon oath of all cleaning preparations bearing the trade mark "ODOSOL" together with all the cartons, labels, stamps stationery, price lists, literature, advertising materials, blocks, scripts, dies, and all other materials bearing the infringing trade mark "ODOSOL" and instruments used for printing the same or any mark deceptively similar to or in colourable imitation of the Plaintiff's trade mark ODONIL and/or ODOMOS and/or ODOPIC in the possession, custody or

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https://hcservices.ecourts.gov.in/hcservices/

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control of the Defendants and verification upon oath that the Defendants

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have no such further materials in their possession, custody or control.

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(d) Decree directing the Defendants to render a true and faithful

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account in respect of the infringed products sold by the Defendants;

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(e) For payment of damages of the amount so found to have been suffered by the Plaintiff and a decree for the amount found upon such enquiry.

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(f) Costs

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This Suit coming on this day before this court for hearing in the presence of Mr. H. Karthik Seshadri, Advocate for the plaintiff herein and Mr. Rahul, M. Shankar for Mr. A.A. Mohan, Advocates for the defendants herein and upon reading the plaint filed herein and the other exhibits therein referred to and upon perusing the evidence adduced therein and the learned counsel for the plaintiff having submitted that he is not pressing the prayes

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(c), (d) and (e), it is ordered and decreed as follows:-

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That (1) BISON LABORATORIES PRIVATE LIMITED, Rep. by its Managing Directors, (2) K.M. Thomas, Proprietor of Bison Laboratories, the defendants herein, whether by themselves or their respective servants or agents or assigns or otherwise however, be and are hereby restrained by an order of perpetual injunction from (a) infringing the Registered trade marks.

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"ODOPIC" of the plaintiff in any way and from selling or offering for sale

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https://hcservices.ecourts.gov.in/hcservices/

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or marketing any of the defendants products under the said trade mark

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"ODOSOL" or any mark deceptively or confusingly similar to or in colourable imitation of the Plaintiff's said registered trade mark ODOPIC.

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(b) passing off or attempting to pass off or causing, enabling or assisting others to pass off the products not of the Plaintiff as and for the products of the Plaintiffs by use in connection therewith or in course of trade the said word or trade mark "ODOSOL" or any word name or mark being a substantial reproduction or colourable imitation of the Plaintiff's trade marks ODOPIC and/or ODOMOS and/or ODONIL.

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(2) That the parties hereto, shall bear their respective costs of this suit.

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WITNESS THE HON'BLE MR.JUSTICE SANJIB BANERJEE, THE CHIEF JUSTICE, HIGH COURT AT MADRAS AFORESAID, THIS THE 22nd DAY OF JUNE, 2021.

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Sd./-

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ASSISTANT REGISTRAR (COMM. CASE) //Certified to be true copy//

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Dated at Madras this the day of 2021.

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COURT OFFICER(O.S.) From 25th Day of September 2008 the Registry is issuing certified copies of the Orders/Judgments/Decrees in this format.

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https://hcservices.ecourts.gov.in/hcservices/

VF-13.07.2021

C.S. No.919 of 2001

DECREE :-

DATED: 22.06.2021

THE HON'BLE MR. JUSTICE R. SUBRAMANIAN

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FOR APPROVAL:22.09.2021

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APPROVED ON: 23.09.2021

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https://hcservices.ecourts.gov.in/hcservices/

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IN THE HIGH COURT OF JUDICATURE AT MADRAS

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DATED : 22.06.2021

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CORAM

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THE HONOURABLE MR.JUSTICE R.SUBRAMANIAN

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C.S.No.919 of 2001

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M/s.DABUR INDIA LIMITED, Having its Registered Office at 8/3, Asaf Ali Road, New Delhi – 110 002. A Company registered under the Companies Act, 1956, having its Office at Balsara House, 43, Nagindas Master Road, Fort, Mumbai – 400 011.

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...Plaintiff

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.Vs.

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1.BISON LABORATORIES PRIVATE LIMITED, Represented by its Managing Directors, 34, Krishnapuram Street, Choolaimedu, Chennai – 600 094.

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2.K.M.Thomas,

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Proprietor of Bison Laboratores, 34, Krishnapuram Street, Choolaimedu, Chennai – 600 094.

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... Defendants

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Plaint filed under Order IV Rule 1 of the Original Side Rules read with Order VII Rule 1 of the Code of Civil Procedure and Sections 105 and https://hcservices.ecourts.gov.in/hcservices/ 106 of the Trade and Merchandise Marks Act, 1958 praying for a judgment and decree of

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a) perpetual injunction restraining the defendants whether by themselves or their respective servants or agents or assigns or otherwise hwosoever from infringing the registered trade marks “ODOPIC” of the plaintiff in any way and from selling or offering for sale or marketing any of the defendants products under the said trade mark “ODOSOL” or any mark deceptively or confusingly similar to or in colourable imitation of the plaintiff's said registered trade mark ODOPIC.

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b) perpetual injunction restraining the defendants, whether by themselves or by their servants or agents or assigns or otherwise howsoever from passing off or attempting to pass off or causing, enabling or assisting others to pass off the products not of the plaintiff as and for the products of the plaintiffs by use in connection therewith or in course of trade the said word or trade mark “ODOSOL” or any word name or mark being a substantial reproduction or colurable imitation of the plaintiff's trade marks ODOPIC and/ or ODOMOS and/ or ODONIL.

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c) delivery up or destruction upon oath of all cleaning preparations bearing the trade mark “ODOSOL” together with all the cartons, labels, stamps stationery price lists, literature, advertising materials, blocks, scripts, dies, and all other materials bearing the infringing trade mark “ODOSOL” and instruments used for printing the same or any mark deceptively similar to or in colourable imitation of the plaintiff's trade mark ODONIL and/ or ODOMOS and/ or ODOPIC in the possession, custody or control of the defendants and verification upon oath that the defendants have no such further materials in their possession, custody or control.

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d) decree directing the defendants to render a true and faithful account in respect of the infringed products sold by the defendants.

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https://hcservices.ecourts.gov.in/hcservices/ e) for payment of damages of the amount so found to have been suffered by the plaintiff and a decree for the amount found upon such

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enquiry and

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f) for costs of the suit.

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For Plaintiff : Mr.H.Karthik Seshadri

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For Defendants : Mr.Rahul M.Shankar for Mr.A.A.Mohan

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J U D G M E N T

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The prayer in the suit reads as follows:-

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The plaintiff prays for a judgment and decree of

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(a) perpetual injunction restraining the defendants whether by themselves or their respective servants or agents or assigns or otherwise hwosoever from infringing the registered trade marks “ODOPIC” of the plaintiff in any way and from selling or offering for sale or marketing any of the defendants products under the said trade mark “ODOSOL” or any mark deceptively or confusingly similar to or in colourable imitation of the plaintiff's said registered trade mark ODOPIC.

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(b) perpetual injunction restraining the defendants, whether by themselves or by their servants or agents or assigns or otherwise howsoever from passing off or attempting to pass off or causing, enabling or assisting others to pass off the products not of the plaintiff as and for the products of

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the plaintiffs by use in connection therewith or in course of trade the said https://hcservices.ecourts.gov.in/hcservices/

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word or trade mark “ODOSOL” or any word name or mark being a

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substantial reproduction or colurable imitation of the plaintiff's trade marks

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ODOPIC and/ or ODOMOS and/ or ODONIL.

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(c) delivery up or destruction upon oath of all cleaning preparations bearing the trade mark “ODOSOL” together with all the cartons, labels, stamps stationery price lists, literature, advertising materials, blocks, scripts, dies, and all other materials bearing the infringing trade mark “ODOSOL” and instruments used for printing the same or any mark deceptively similar to or in colourable imitation of the plaintiff's trade mark ODONIL and/ or ODOMOS and/ or ODOPIC in the possession, custody or control of the defendants and verification upon oath that the defendants have no such further materials in their possession, custody or control.

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(d) decree directing the defendants to render a true and faithful

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account in respect of the infringed products sold by the defendants.

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(e) for payment of damages of the amount so found to have been suffered by the plaintiff and a decree for the amount found upon such enquiry and

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(f) for costs of the suit.

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2. Though the written statement has been filed and issues have been

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framed, it is seen from the records that there is an injunction operating https://hcservices.ecourts.gov.in/hcservices/ against the defendants restraining them from using the mark ODOSOL. The

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https://hcservices.ecourts.gov.in/hcservices/

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said injunction has been in force for nearly 20 years now.

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3. Mr.Rahul M.Shankar, learned counsel representing the counsel for the defendants would submit that the records in their office would show that the defendants have ceased to use the mark ODOSOL for considerable time and infact he took time to report such non-usage on 22.04.2021. Today, when the matter is listed, the counsel would submit that there is no response from the defendants to the communications addressed to them by the office of the counsel seeking instructions on further proceedings in the suit.

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4. A perusal of the records of the suit and the fact that there was an order of injunction would really lead to the inference that the defendants have no real prospect of successfully defending the claim as the mark of the plaintiff ODOPIC is the registered trade mark and it cannot be said that the mark used by the defendants viz., ODOSOL is materially different from the

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mark ODOPIC.

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5. Applying the tests laid down by the Hon'ble Supreme Court in Parle Products Private Limited Vs. J.P. & Co., Mysore reported in

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AIR 1972 SC 1359, I find that the case of the plaintiff that there is a https://hcservices.ecourts.gov.in/hcservices/ deceptive similarity between the two marks is just. In view of the same, the

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suit is decreed granting the prayer for permanent injunction restraining the

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defendants from infringing the registered trade mark of the plaintiff ODOPIC and offering for sale or marketing any of the defendants products under the said trade mark “ODOSOL” or any mark deceptively or confusingly similar to or in colourable imitation of the plaintiff's said registered trade mark ODOPIC.

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6. In fine, the prayers (a) and (b) are granted as prayed for. Mr.Karthik Seshadri, learned counsel appearing for the plaintiff would submit that he is not pressing the prayers (c), (d) and (e). The parties will bear their respective costs.

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Sd./- R.S.M.J. 22.06.2021

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List of the witnesses examined on the side of the plaintiff :

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PW1 – Dinesh Shah

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List of Exhibits marked on the side of the plaintiff :

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*Sl.* *No.*	*Exhibits*	*Description*	*Dated*
1	Ex.P1	Board Resolution	29.01.2008
2	Ex.P2	Certified copy of order in C.P.No.469 2006 with C.A.No.677 of 2006	of 08.09.2006
3	Ex.P3	Registration of Trade mark ODOPIC	-
4	Ex.P4	Renewal certificate	-
5 https://hcservices.ecourts.gov.i	Ex.P5 n/hcservices/	Trade Mark certificate of ODONIL	-
6	Ex.P6	Renewal certificate	-

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*Sl.* *No.*	*Exhibits*	*Description*	*Dated*
7	Ex.P7 series	Form TM-12 addressed to Trade mark Registry	-
8	Ex.P8 series	Form TM-24 addressed to Trade mark Registry	-
9	Ex.P9	Registration of Trade mark ODOMOS	-
10	Ex.P10	Renewal certificate	-
11	Ex.P11 series	Form TM-24 addressed to Trade mark Registry	-
12	Ex.P12	Registration Certificate of ODOPIC	-
13	Ex.P13	Renewal certificate	-
14	Ex.P14	True copy of the Trade Mark certificate relatingto Trade Mark No.251697	-
15	Ex.P15	Renewal certificate	-
16	Ex.P16	Certificate of validityof trade mark	-
17	Ex.P17	Registration of renewal	-
18	Ex.P18	Registration of trade mark ODMOS	-
19	Ex.P19	Notarized copy of certificate of trade mark No.303048	-
20	Ex.P20	Certified true copy of application for grant of trade mark ODONIL in Russia	-
21	Ex.P21	Copy of the registration certificate of Trade Mark No.102135	-
22	Ex.P22	Certified true copy of the intimation regarding filing of application before National Intellectual Property office of Srilanka for ODONIL	-
23	Ex.P23	Certified true copy of the intimation regarding filing of application before National Intellectual Property office of Srilanka for ODOPIC
24	Ex.P24	Certified copy of the letter	10.05.2006
25 urts.gov.	Ex.P25 in/hcservices/	Certified copy of the letter	13.03.2005

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*Sl.*	*Exhibits*	*Description*	*Dated*
*No.*
26	Ex.P26	Certified copyof the letter	17.01.2005
27	Ex.P27	ODOPIC bar lable	-
28	Ex.P28	ODOPIC scouring powder lable	-
29	Ex.P29	ODONIL air freshener(Mogra)lable	-
30	Ex.P30	ODONIL air freshener(Jasmine)lable	-
31	Ex.P31	ODONIL air freshener(Lavender)lable	-
32	Ex.P32	ODONIL air freshener(Rose)lable	-
33	Ex.P33	ODONIL moth repellant(Jasmine)lable	-
34	Ex.P34	ODONIL moth repellant(Mogra)lable	-
35	Ex.P35	ODONIL moth repellant(Rose)lable	-
36	Ex.P36	ODONIL moth repellant(Lavender)lable	-
37	Ex.P37	ODONIL moth repellant(Lemon fresh)lable	-
38	Ex.P38	ODONIL moth repellant (Country spice) lable	-
39	Ex.P39	ODONIL moth repellant (Old English Lavender)lable	-
40	Ex.P40	ODONIL moth repellant(NAF-Guard)lable	-
41	Ex.P41	ODOMOS mosquito repellant cream lable	-
42	Ex.P42	ODOMOS mosquito coils lable	-
43	Ex.P43	ODOMOS mosquito mats lable	-
44	Ex.P44	Lawyer's notice	24.09.2001
45	Ex.P45	Lawyer's replynotice	01.10.2001
46	Ex.P46	Rejoinder	19.10.2001
47	Ex.P47	Further reply	06.11.2001
48	Ex.P48	Notice of 1^stAnnual General Meeting	-
49	Ex.P49	Notice of 2^ndAnnual General Meeting	-
50	Ex.P50	10 Annual Report 2005-06	-
51	Ex.P51	Agreement	28.06.2002
52 urts.gov.	Ex.P52 in/hcservices/	Certified copyof Agreement	31.05.1999
53	Ex.P53	Certified copyof Agreement	02.07.1999

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*Sl.*	*Exhibits*	*Description*	*Dated*
*No.*
54	Ex.P54	True copyof Agreement	15.12.1999
55	Ex.P55	Certified copyof the Agreement	31.03.2000
56	Ex.P56	Certified copyof the Agreement	15.12.1999
57	Ex.P57	True copyof Agreement	30.09.1999
58	Ex.P58	True copyof Agreement	11.05.2000
59	Ex.P59	True copyof Agreement	30.09.1999
60	Ex.P60	True copyof Agreement	21.06.2000
61	Ex.P61	True copyof Agreement	30.09.1999
62	Ex.P62	True copyof Agreement	04.11.2000
63	Ex.P63	22^ndAnnual Report 1999-2000	-
64	Ex.P64	22^ndAnnual Report 1999-2000	-
65	Ex.P65	28^thAnnual Report 2005-2006	-
List o	f the witne	sses examined on the side of the defendants:	Nil
List o	f Exhibits	marked on the side of the defendants: Nil

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Sd./- R.S.M.J. 22.06.2021 // Certified to be true copy// Dated at Madras this day of 2021. Court Officer(O.S.) From 25th day of September 2008 the Registry is issuing certified copies of the Orders/Judgments/Decrees in this format.

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https://hcservices.ecourts.gov.in/hcservices/

Dabur India Limited v. Bison Laboratories Pvt.Ltd.

Case brief

What is this about?

What did the court decide?

Dabur India Limited v. Bison Laboratories Pvt.Ltd.

Case brief

What is this about?

What did the court decide?

What the court decided

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