Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. LTD

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Page 1 Wednesday, May 11, 2022

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1988 SCC OnLine Del 149 : AIR 1989 Del 44 : (1988) 36 DLT 133 : 1988 PTC
273
In the High Court of Delhi

(Single Bench)
(BEFORE B.N. KIRPAL, J.)
Ranbaxy Laboratories Ltd. … Plaintiff;

versus
Dua Pharmaceuticals Pvt. Ltd. … Defendant.
I.A. No. 8916 of 1987 in suit No. 2614 of 1987
Decided on July 22, 1988.
ORDER
The plaintiff has filed a suit alleging that its registered trade mark “CALMPOSE” has
been infringed by the defendant, who is manufacturing similar medicine and
marketing under the mark of “CALMPROSE”. The prayer in the suit is for a perpetual
injunction and for a decree for rendition of accounts.
2. Along with the plaint the plaintiff has also filed an application under O. 39, Rr. 1
and 2, CPC and has prayed for an ad interim injunction. It is averred that the plaintiff
has had the trade mark registered since 6th March 1970 and has sold “CALMPOSE”
worth about Rs. 40.16 crores since its adoption and has spent about Rs. 16.43 lakhs
on sales promotion from Jan. to Aug. 1987. The said medicine are Diazepam tablets of
5 Mg each. It is also contended that not only is the mark of the defendant phonetically
and visually similar, but even the packing of the defendant of the said medicine is
similar to that of the plaintiff. The plaintiff is using two colours, namely, silver and
brown and the packing is done in aluminium foil on one side and polythene film on the
other; and the packing of the defendant is similar to that of the plaintiff.
Page: 45
3. Ad interim ex parte injunction was issued. In the reply which has been filed it is
contended that the medicine in question is sold by chemists on the prescription of a
medical practitioner and, therefore, the persons cannot be deceived by the said mark.
It is further contended that the words used on the strips containing the medicine are
different and the word “CALMPROSE” is phonetically different from the plaintiff's mark
“CALMPOSE”.
4. Shri Bharat Inder Singh, learned counsel for the defendant has raised two
contentions before me. He hair firstly submitted that the two marks are phonetically
different. In this connection, he relies upon a Division Bench authority reported as
Stadmed Private Ltd v. Hind Chemicals, AIR 1965 Punjab 17. In this case the two
words involved were “ENTOZINE” and “ENTROZYME”. The High Court came to the
conclusion that the said words were phonetically different. In my opinion, the two
words in the present case, namely, “CALMPOSE” and “CALMPROSE” are phonetically
and even visually similar. What the defendant has done is to insert the letter “R” in
the middle of the word and converted “CALMPOSE” to “CALMPROSE”. The intention of
the defendant clearly is to cash in on the reputation which has been built up by the
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plaintiff over the years in the sale of its medicine “CALMPOSE”, the turnover of which
is stated to be over Rs. 40 crores. It is certainly not by accident that the defendant
has coined or hit upon the word “CALMPROSE”. It is, to my mind, a deliberate attempt
to adopt another person's trade mark to one's advantage.
5. The decision of the Punjab High Court in Stadmed's case (supra) cannot be of
any assistance to the defendant in the present case. The spellings of the two words
“ENTOZINE” and “ENTROZYME” are different because the word “ENTROZYME”
contained three letters R, Y and M which are not present in the word “ENTOZINE”. It is
true that the Court in that case felt that the two words were not phonetically similar,
but in this regard reference may also be made to the following observations of another
Division Bench of the Punjab High Court in the case of Anglo-French Drug. Co.
(Eastern) Ltd. v. Belco Pharma, AIR 1984 Punjab 430 where with reference to the
decision in Stadmed's case (supra) the High Court observed as follows:—
“We are not called upon to decide whether ‘ENTROZYME’ and ‘ENTOZINE’ are
phonetically and visually similar, but if we had a case like this before us, we
might have taken the view that the two names are visually and phonetically
similar.”
I also tend to agree with the observations of Punjab High Court in Anglo-French's case.
In any case, I have no doubt in my mind that the two words “CALMPOSE” and
“CALMPROSE” are phonetically similar.
6. It was then contended by the learned counsel for the defendant that the said
medicines can only be sold on the doctor's prescription and, therefore, there can be
little likelihood of confusion. It is true that the said drugs are supposed to be sold on
doctor's prescription, but it is not unknown that the same are also available across the
counters in the shops of various chemists. It is also not unkown that the chemists who
may not have “CALMPOSE” may pass off the medicine “CALMPROSE” to an unwary
purchaser as the medicine prepared by the plaintiff. The test to be adopted is not the
knowledge of the doctor, who is giving the prescription. The test to be adopted is
whether the unwary customer, who goes to purchase the medicine can make a
mistake.
7. I have also been shown the strips containing the medicines manufactured by the
parties. It is clear that the dimension of the strip of the defendant is practically the
same as the one made by the plaintiff; the type of packaging is identical; the colour
scheme is similar and even the manner of writing is not very different. This is a clear
case of an attempt by the defendant to pass off its product as that of the plaintiff.
8. For the aforesaid reasons, the interim injunction issued on 30th Nov, 1987 is
made absolute pending disposal of the main suit. I.A. stands disposed of.
Petition allowed.
———
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SCC Online Web Edition, © 2022 EBC Publishing Pvt. Ltd.

Page 1 Wednesday, May 11, 2022

In the High Court of Delhi

Ranbaxy Laboratories Ltd. … Plaintiff;

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