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If Essential Features Of The Registered Trademark Are Infringed, The Difference In Layout, Packaging, Etc Is Of No Consequence: Delhi High Court

Ausaf Ayyub
5 July 2022 7:45 AM GMT
If Essential Features Of The Registered Trademark Are Infringed, The Difference In Layout, Packaging, Etc Is Of No Consequence: Delhi High Court
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The High Court of Delhi has held that in an action for infringement of a trademark once it is shown that essential features of the trademark are adopted by the defendant, the difference in layout, packaging etc. would be of no consequence.

The Single Bench of Justice Jyoti Singh was dealing with a suit for permanent injunction filed by Sun Pharmaceutical Industries Ltd. (Plaintiff) to restrain Punam Devi (Defendant) from using the trademark RANBAXY LABORATORIES.

The plaintiff is involved in the manufacturing of speciality pharmaceuticals since the year 1978. In 2014 they acquired all the assets along with intellectual property of Ranbaxy Laboratories along with its intellectual property including the trademark RANBAXY and RANBAXY LABORATORIES LIMITED.

It was averred that the plaintiff markets drugs and formulations in more than 150 countries under its extensive range of well-known trademarks and has a consolidated turnover of over Rs. 30,000 Crores. It was further averred that the plaintiff has 45 manufacturing sites on six continents and 10 world class-research centres.

It was stated that Ranbaxy Laboratories Ltd. adopted the tradename RANBAXY in the year 1961 and applied for its registration in 1991 which was assigned to the plaintiff in 2015 and now the plaintiff is the proprietor of trademarks RANBAXY and RANBAXY LABORATORIES LIMITED across the globe.

It was further averred that the plaintiff has made efforts to popularize the trademark/corporate name and has spent huge sums of money on sales promotion, advertisement and publicity of the same and it due to its trademark it has acquired immense reputation and goodwill.

It was the case of the plaintiffs that in the third week of August, 2019, the plaintiff came to know about defendant's mark when the application for registration of trademark RANBAXY LABORATORIES in class 35 was published in the Trade Marks Journal. The application was filed on 'proposed to be used' basis for the whole of India.

Thereafter, the plaintiff did some research and found out another application filed by the defendant under class 5 which was also on the 'proposed to be used' basis and the same was objected to under Section 11 of the Trade Marks Act, 1999 due to the existence of a similar marks on the register.

The plaintiff is aggrieved by the action of the defendant in adopting a mark that is blatant and slavish imitation of its well-known trademark and its formative marks and a consumer with average intelligence and imperfect recollection is bound to be confused and deceived as the goods are similar. Intent of the Defendant is to take unfair advantage of the reputation of Plaintiff's registered trademark RANBAXY, by misrepresenting to the public and creating a belief that the goods and services offered by the Defendant under the impugned mark have some association or connection with the Plaintiff, while none exists and resultantly causing injury and loss to the Plaintiff.

Several notices were served on the defendant but it did not appear, therefore, the Court decided to proceed with the matter ex parte.

The Court at the outset held that since the defendant has chosen not to contest the suit, plaintiff need not file evidence by way of affidavit as the averments in the plaint are supported by an affidavit and hence the suit can be disposed of. The Court observed that plaintiff has valid registration in its name.

The Court held that the cause of action for the present suit arose when the defendant applied for the impugned trademark and when it was granted the drug license by the Central Licensing Authority and the plaintiff has reasonable apprehension that the defendants might start operations in Delhi.

The Court held that the mark RANBAXY LABORATORIES mark is visually, phonetically, structurally identical to the trademark RANBAXY and RANBAXY LABORATORIES LIMITED and the goods being pharmaceuticals products in class 5 are also identical.

The Court further held that a case for infringement of trademark under Section 29(2)(c) of the Trade Marks Act, 1999 is made out as the identity of the trademark and the goods and services covered under it are similar and the same is likely to cause confusion on the part of public.

The Court held that in an action for infringement of trademark once it is shown that essential features of the trademark are adopted by the defendant, the difference in layout, packaging etc. would be of no consequence.

Accordingly, the Court decreed the suit of the plaintiff and passed a permanent injunction against the defendants from using the tradename RANBAXY LABORATORIES in any manner. The Court awarded Rs. 6,00,000/- as the Cost.

Case Title: Sun Pharmaceutical Industries Ltd v. Punam Devi, CS(COMM) 504 of 2019

Citation: 2022 LiveLaw (Del) 608

Date: 13.05.2022

Counsel for the Plaintiff: Mr. Sachin Gupta and Ms. Jasleen Kaur, Advocates.

Counsel for the Defendant: N/A

Click Here To Read/Download Order

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