I.A. 8731/2019 (under Order 39 Rules 1 & 2, CPC)
1. Plaintiff has filed the present suit inter-alia seeking a decree of permanent injunction against the defendants, its directors, assignees, distributors, dealers, etc., restraining them from manufacturing selling, offering for sale, advertising, directly or indirectly dealing in medicinal preparation under the impugned mark ANADAY or any other similar trademark which is deceptively similar to the plaintiff's trademark AMADAY amounting to infringement of its registered trademark Nos. 747783, 1305303 and 1518017, delivery of the infringing goods including impugned packaging, dyes, etc., and cost.
2. Case of the plaintiff in the suit is that the plaintiff is dealing in the medicinal and pharmaceutical product under the mark AMADAY which is used for treatment of high blood pressure, heart disease and the defendant is selling its drug under the name ANADAY which is deceptively similar to the plaintiff's well-known registered trademark and amounts to infringement of the plaintiff's rights in its trademark; even though the drug produced and sold by the defendant under the trademark ANADAY is used for treatment of breast cancer.
3. As per the plaintiff, plaintiff first obtained the title in the trademark AMADAY by its first application bearing No. 747783 on 10th July, 1997 and thereafter started using the said trademark AMADAY from 2001. On 4th February, 2008 defendant filed its application bearing No. 1649587 for the impugned mark ANADAY which was duly opposed by the plaintiff and the defendant did not pursue the said application and vide order dated 15 th March, 2016 of the Trade Mark Registry, the same was declared abandoned. On 8th October, 2016 defendant filed another trademark application for registration of the trademark ANADAY vide application No. 3384539 in Class 5 which is currently pending. In the third week of June, 2019 the representative of the plaintiff came across defendant's medicinal preparation AMADAY at Delhi, and hence the suit.
4. Plaintiff claims interim injunction pending disposal of the suit by this application on the ground that admittedly plaintiff is the prior user and registered proprietor of the trademark AMADAY, defendant's first trademark application was abandoned due to opposition by the plaintiff and third parties and the second application which was published on 4 th March, 2019 has also been opposed. Defendant's Counter Statement pertaining to its Trademark Application No. 1649587 has not been uploaded on the website of the Trade Marks Registry till date and besides that the plaintiff has placed on record the entire documents in its power and possession. Defendants having not assailed the abandonment order of the Trade Marks Registry, the plaintiff was all through under the impression that the defendants had never used the impugned mark. Though the plaintiff's products are meant for exports, however even export by the plaintiff amounts to use for the purposes of the Trademarks Act, 1999 and the plaintiff is in no manner precluded from marketing its product in India and has a right to re-launch the same. Claim of the defendant that the two medicinal preparations are used to treat two different ailments cannot be accepted as the prescriptions do not contain the name of the salt or trade dress/packaging and the confusion in reading the prescription would amount to a serious lapse vitally affecting lives of the consumers. Further the test of confusion is to be seen from the perspective of an average person with imperfect recollection getting confused and in view of the two names being almost similar, any ordinary person would get confused and would not be able to distinguish between the two drugs. Reliance is placed on the decision reported as Sun Pharma Laboratories Ltd. v. MSN Laboratories P. Ltd. & Anr., in 2018 (DLT SOFT) 6137=CS(COMM) 637/2018 decided on 4th December, 2018; Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya, 1975 (DLT SOFT) 6120=AIR (1975) Delhi 149; Hindustan Pencils (P) Ltd. v. India Stationery Products Co. & Anr., 38 (1989) DLT 54=AIR (1990) Delhi 19; Cadila Pharmaceuticals Limited v. Sami Khatib, V (2011) SLT 5=2011 (4) ALLMR 152 (DB); Wockhardt Limited v. Eden Healthcare Pvt. Ltd., 2014 (DLT SOFT) 6140 (Bom.)=2014 (58) PTC 14 (Bom); D.K. Electricals Industries & Ors. v. Sancheti Appliances Pvt. Ltd. & Ors., 2012 (DLT SOFT) 6118=2013 (54) PTC 320 (Del) (DB); M/s. Gujarat Bottling Co. Ltd. & Ors. v. Coca Cola Company & Ors., 1995 (SLT SOFT) 406=(1995) SCC 2372; Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., III (2001) SLT 225=(2001) 5 SCC 73; Novartis AG v. Crest Pharma Pvt. Ltd. & Anr., 2009 (DLT SOFT) 6129=2009 (41) PTC 57 (Del) and Charak Pharma Pvt. Ltd. v. Glenmark Pharmaceuticals Ltd., 2014 (57) PTC 538 (Bom).
5. Learned Counsel for the defendant countering the arguments of the learned Counsel for the plaintiff submits that the plaintiff has no license for the sale of drug AMADAY in India, thus AMADAY is not sold in India, hence no case for cause of confusion in India is made out. Since the defendant had filed the application in the year 2008, the knowledge of the defendant's user of the trademark is attributable to the plaintiff since the year 2008 and the present suit has been filed belatedly, thus, liable to be dismissed on this count itself. Even in the second application dated 8th October, 2016 seeking registration of the trademark ANADAY, defendant has claimed user since 28th February, 2008. Thus, in view of the delay, the plaintiff is not entitled to an interim injunction. Defendant has placed on record documents to show invoices from the year 2008 and all these invoices have been uploaded on the Trade Mark Registry's website. In the replication, the plaintiff has admitted its last use in India in the year 2002. There can be no confusion in the minds of the public as the competing goods are not available in the same country. Further, the defendant's drug is sold only on the prescription of Oncologist and not any other Doctor, thus, there is no likelihood of any confusion. Reliance is placed on the decisions reported as Bhaskar Laxman Jadhav & Ors. v. Karamveer, IX (2012) SLT 332=(2013) 11 SCC 531; S.P. Chengalvaraya Naidu (Dead) by L.R’s. v. Jagannath (Dead) by LRs & Ors., II (1993) BC 546 (SC)=1993 (SLT SOFT) 258=AIR 1994 SC 853; Ramjas Foundation & Anr. v. UOI & Ors., 174 (2010) DLT 100 (SC)=VIII (2010) SLT 156=(2010) 14 SCC 38; Champagne Moet & Chandon v. UOI, 2012 (49) PTC 429 (Del); Hindustan Pencils (P) Ltd. v. India Stationery Products Co., AIR 1990 Del 19; B.L. & Co. & Ors. v. Pflizer Products Incl., 93 (2001) DLT 346 (DB)=(2001) 21 PTC 797 (Del); Jagan Nath Prem Nath v. Bhartiya Dhoop Karyalaya (supra); Ponnayal v. Karuppannan (Dead) thr. L.R. Sengoda Gounder & Ors., VIII (2018) SLT 43=AIR 2018 SC 4317; T. Arivandandam v. T.V. Satyapal & Ors., 1977 (SLT SOFT) 254=(1977) 4 SCC 467.
6. Learned Counsel for the plaintiff relies on Section 56 of the Trade Marks Act contending that if the goods are exported outside India, then for the purposes of Indian Law, that mark is said to be used in India. The plaintiff has previously marketed the medicine AMADAY in India and invoices evidencing the same have been placed on record. Further the plaintiff is not precluded from marketing the product under the trade mark AMADAY in India in future. However, learned Counsel for the defendant relies upon Sections 28, 29 and 30(2)(b) of the Trade Marks Act.
7. Dealing with Section 56 of the Trade Marks Act, Bombay High Court in Wockhardt Limited (supra) held:
20. The Defendant has next contended that since the Plaintiff is not selling its goods bearing the mark in India and the use is only in respect of export of the goods bearing the mark SPASGAN, there is no use of the mark in India to maintain the present action against the Defendant.
21. The statutory rights in the mark are conferred on the registered proprietor once the mark is registered by virtue of the provisions of the Act. Once the mark is registered, the proprietor of the registered mark gets an exclusive right to use the same in respect of the goods or services for which it is registered, subject to the provisions of the Act. By virtue of the provisions of Sections 28 and 29 of the Act, the registered proprietor gets a right to sue any rival trader if, inter alia, there is any use of identical or similar mark in respect of identical or similar goods and services for which the mark is registered. There is no requirement under the Act to use the mark prior to enforcing the rights under the Act to prevent the use of the rival mark. What is required to sue for infringement under the Act is the registration of the mark. Once the mark is registered under the Act, then a suit for infringement will certainly lie under the Act without requiring the registered proprietor to show the actual commercial use of the mark. The principle of deemed public user of the mark by virtue of prior registration will also apply in the present scenario and the Suit for infringement of trade mark will be maintainable.
22. In any case, there is no restriction or provision under the Act that the registered mark has to be used only in India and thus, any use for export of goods or services bearing the mark also constitutes use of the mark in India. The provisions of Section 56 of the Act are very clear on the aspect of use of the mark for export and the same read as under:
‘56. Use of trade mark for export trade and use when form of trade connection changes—(1) The application in India of trade mark to goods to be exported from India or in relation to services for use outside India and any other act done in India in relation to goods to be so exported or services so rendered outside India which, if done in relation to goods to be sold or services provided or otherwise traded in within India would constitute use of a trade mark therein, shall be deemed to constitute use of the trade mark in relation to those goods or services for any purpose for which such use is material under this Act or any other law.
(2) The use of a registered trade mark in relation to goods or services between which and the person using the mark any form of connection in the course of trade subsists shall not be deemed to be likely to cause deception or confusion on the ground only that the mark has been or is used in relation to goods or services between which and the said person or a predecessor in title of that person a different form of connection in the course of trade subsisted or subsists.’
23. The provisions of Section 56 of the Act are interpreted by the Division Bench of this Court in Cadila Pharmaceuticals Ltd. v. Sami Khatib of Mumbai and Others, wherein it is held that, "50. Section 56 of the Trade Marks Act, 1999, reads as under:
... ... ... ...
Dr. Tulzapurkar submitted that the point has been considered by a Division Bench of this Court to which one of us (S.J. Vazifdar, J.) was a party in the case of M/s. Maxheal Pharmaceuticals (India) v. Shalina Laboratories Pvt. Ltd. in Appeal No. 88 of 2005 in Notice of Motion No. 2638 of 2004 in Suit No. 2663 of 2004 dated 16th February, 2005. However, the applicability of Section 56 was 5 2011 (3) Bom. C.R. 587 not decided by the Division Bench. This is clear from paragraph 7 of the judgment where the Division Bench stated that it was not necessary for it to dwell on the point as the point taken by the appellant in that matter was raised for the first time only in the appeal.
Our attention was not invited to any other judgment under the said Act on the point. We must, therefore, deal with this question on principle.
51. It is admitted that the appellant applies the impugned mark to the goods in India which are thereafter exported. The impugned mark has thus been applied to the appellant's goods within the meaning of Section 56. Had the mark been applied in relation to goods to be sold within India, it would undoubtedly have constituted use of the trade mark in India. By virtue of Section 56, the application in India of the trade mark, although to goods to be exported from India, is deemed to constitute use of the trade mark in relation to the said goods "for any purpose for which such use is material under the Trade Marks Act, 1999, or any other law". The plain language of Section 56, therefore, constitutes the application in India of trademarks even to goods to be exported from India as use of the trade mark in relation to those goods for any purpose for which such use is material under the Act or any other law.
The use of a trade mark is relevant for more than one reason. It is relevant to a party seeking to establish goodwill and reputation in a mark in an action for passing off. It is also relevant, even if it is not necessary, to establish the act of infringement or passing off.
52. There is little doubt that the use of a trade mark within Section 56 can be relied upon to maintain an action for infringement. Section 28 of the Act gives to the registered proprietor of the trade mark, the exclusive right to "use" the trade mark in relation to the goods or service in respect of which the trade mark is registered and to obtain relief in respect of infringement thereof in the manner provided by the Act. Section 29 enumerates various circumstances that would constitute infringement of registered trademarks by the use thereof by a person who is not entitled to use the same. For instance, Section 29 of the Act provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of a permitted use, "uses" in the course of trade, a mark which is identical with or deceptively similar to the registered trade mark. Section 29(2) provides that a registered trade mark is infringed by a person who not being a registered proprietor or a person using by way of a permitted use, uses in the course of trade, a mark which because of the factors enumerated therein is likely to cause confusion on the part of the public or which is likely to have an association with the registered trade mark. Section 29(6)(c) expressly provides that for the purpose of Section 29, a person uses a registered mark if he, inter-alia, imports or exports goods under the mark.
53. Thus Section 56 would clearly apply to an action for infringement if the trade mark is applied in India to goods to be exported from India as the same is deemed to constitute use of a trade mark in relation to those goods for any purpose for which such use is material under the Act.
54. The position would be no different in the case of a passing off action. Whether passing off is considered to be an action under the said Act in view of Section 27(2) or not makes little difference in view of the concluding words of Section 56 "or any other law". Even in a passing off action, the use of the impugned mark by the defendant is important. It is one of the factors which even if not necessary, entitles a plaintiff to maintain an action for passing off. There is no warrant for limiting the ambit of Section 56 which is in consonance with the intention of the Legislature to protect intellectual property rights. There is nothing in the plain language of Section 56 that supports Mr. Dwarkadas' alternative submission that Section 56 is restricted to the protection of the statutory right of infringement and does not apply to an action for passing off.
A Court must tread carefully and be slow to imply a restriction which does not appear from the words in a statute.”
24. Thus by virtue of the deemed equivalent public user of the mark as held by the Apex Court in Meghraj Biscuits Industries Ltd. (supra) and by the Division Bench of this Court in Medical Technological Led. (supra) and by virtue of the provisions of Section 56 of the Act, the Suit for infringement will be maintainable even if the use of the mark is only for export purpose. As held by the Division Bench in Cadila (supra), the Suit for passing off will also be maintainable by virtue of the provisions of Section 56 of the Act even though the mark is used by the proprietor of the mark in respect of export of his goods and there is no actual use of the mark in India. The use of the mark for the export of goods constitutes use of the mark in India, to maintain the action for infringement and passing off.
25. Therefore, there is no merit in the argument of the Learned Advocate for the Defendant that the Suit for infringement and passing off is not maintainable because the Plaintiff is only exporting its goods and not using the mark in India.
26. Once it is held that the action for infringement and passing off is maintainable and the Defendant has not established its alleged prior use of the mark in accordance with the provisions of Section 34 of the Act, prima facie, then the use by the Defendant of the impugned mark is in clear infringement of the Plaintiff's registered trademark. The mark used by the Defendant is SPASGAN which is identical to the registered mark SPASGAN of the Plaintiff.
The rival marks are used in respect of identical goods i.e. pharmaceutical preparations. Once the marks are identical and are used in respect of identical goods then no further enquiry is required in a suit for infringement. In view of the provisions of Section 29(3) of the Act, it will have to be presumed that the use of the identical mark in respect of identical goods is likely to cause confusion in the minds of the public. The Plaintiff's mark having been registered as of 22nd April, 1996, the Defendant cannot be said to be unaware of the same, since the Defendant is in the same pharmaceutical business.
Importantly, the Defendant was also the subsequent applicant for the identical mark SPASGAN, which application is admittedly abandoned by the Defendant.
There appears to be no valid reason for the Defendant to adopt an identical mark as that of the Plaintiff. Confusion and deception is bound to occur because the mark is phonetically, visually and structurally identical.”
8. Learned Counsel for the defendant contends that the rights of registration of the trademark under Section 28 of the Act are subject to other provisions and by virtue of Section 28 read with Section 30(2)(b) of the Act, use of a trade mark by a third party having regard to the conditions or limitations placed on the registered trade mark, does not amount to infringement of the registered trade mark. The argument put forth by the learned Counsel for the defendant is fallacious for the reason there is no territorial restriction on the use of the mark by the plaintiff by virtue of registration of the trademark and after obtaining the necessary licenses required under the other enactments, plaintiff can sell its drugs under the mark in India.
9. Two other main grounds seeking declining of grant of interim injunction in favour of the plaintiff by the defendant is that there is a long delay in filing the present suit and application and there is concealment of material facts as the plaintiff had the knowledge of the use by the defendant of the trademark ANADAY since the year 2008 which fact has been concealed and the plaintiff in the year 2019 cannot claim an injunction once the defendant is using the trademark for its product since 2008. The plaintiff having knowledge of use of the impugned trademark by the defendant since the year 2008, the plaintiff has thus acquiesced to the use of the trademark by the defendant. Further, the adoption of the defendant of the mark ANADAY is bona fide as the same has been coined by amalgamation of the name of the molecule used in the treatment of breast cancer i.e. ANASTROZOLE and the fact the tablet is taken once a DAY.
10. In the application for registration by the defendant for its mark ANADAY dated 4th February, 2008 being No. 1649587, the defendant has stated 'proposed to be used'. In the Counter Statement filed by the defendant to the opposition of the plaintiff, the defendant has stated that on or about 28th February, 2008, the defendant has obtained the necessary approval from the Maharashtra F.D.A. for manufacturing Anastrozole Tablet under the trademark ANADAY through their contract manufacturers Khandelwal Laboratories Pvt. Ltd. and immediately thereafter, they commenced marketing the goods under the trademark ANADAY and their goods under the said mark were being extensively sold and widely promoted all over the India. Though the plaintiff claims that this Counter Statement has not been received by it from the Trade Marks Registry, however, a perusal of the documents reveals that plaintiff continued participating in the proceedings and vide letter dated 4th June, 2012 i.e. subsequent to the filing of the Counter Statement by the defendant, the plaintiff stated that they did not wish to file any evidence at this stage and craved leave to rely upon the statements and averments made in the notice of opposition reserving their right to file evidence at a later stage. In the letter dated 4 th June, 2012 by the plaintiff, no averment in the Counter Statement was refuted. Further, in the rejoinder filed to the reply filed by the defendant in the present injunction application, plaintiff has simply stated that the Counter Statement was not uploaded on the website of the Trade Marks Registry and 'could not be found in the records maintained by the plaintiff'. Thus, the plaintiff does not deny having received the Counter Statement, however, states that the same could not be found in the records maintained by the plaintiff. The letter dated 4th June, 2012 by the plaintiff being a sequel to the Counter Statement of the defendant, it is apparent that the plaintiff had received the counter statement and has concealed the material fact of knowledge of the defendant selling goods after obtaining necessary approval from on or about 28th February, 2008. In any case, the defendant having placed its sales figures since the year 2008, the plaintiff has thus not done due diligence to see since when the impugned product is under sale under the impugned mark. Abandonment of the application seeking registration of the mark ANADAY does not mean abandonment of the sale of the drug under the mark ANADAY. The plaintiff thus having not bothered to find out whether defendant's drug is being sold in the market under the mark ANADAY despite due notice, is bound to suffer the consequences of delay in seeking injunction.
11. Learned Counsel for the plaintiff relies upon the decision in Hindustan Pencils (P) Ltd. (supra) to contend that even if this Court comes to the conclusion that there is delay in seeking the injunction, the same would not entail in denial of the injunction because it is the interest of the general public which is the third party which has to be kept in mind. In Hindustan Pencils (P) Ltd. (supra), this Court held as under:
“16. It has been contended by the learned Counsel for the defendants that there has been inordinate delay on the part of the plaintiffs in approaching this Court and, therefore, on this ground alone no interim relief should be granted. It is also submitted by Mr. Anand that he is entitled, in this ease, to raise successfully the other equitable defense of the plaintiffs having acquiesced to the defendants' user of the impugned mark.
17. It has first to be considered as to what is the meaning, which has been ascribed to the expressions "inordinate delay", "laches" and "acquiescence".
18. Shri Anand, learned Counsel for the defendants, has fairly conceded that mere delay, without anything more, cannot by itself be regarded as a good defense. This also seems to be the correct position in law. 'Inordinate delay', however, has been a factor, which has been taken into consideration while declining the relief of a grant of temporary injunction. In the case of Vine Products Limited v. Mackenzie & Company Limited, (1969) RPC 1, the delay in approaching the Court was nearly 100 years. The question in that case was whether the plaintiffs were entitled to a declaration that they could call their product British Sherry. The defendants filed a counter-claim for an injunction to restrain the plaintiffs from passing, off their wines as Sherry which was the produce of Jerez District of Spain. The Court held that the word "Sherry" had been used for British products of the same type of wine for nearly a hundred years and, therefore, there-was inordinate delay on the part of the defendants and they were not entitled to the grant of an injunction. A declaration was issued whereby the plaintiffs were entitled to call their products British Sherry. In the case of Cluett, Peabody & Co. v. McIntyre, Hogg Marsh & Co. (1958) RPC 35 an injunction was not granted because the plaintiffs had, approached the Court after nearly 30 years. 'Inordinate delay' would, therefore, be delay of such a long duration that the defendant could have come to the conclusion that the plaintiff has, possibly, abandoned his right to seek relief or to object to the defendant using the trade mark. "Equity aids the vigilant, not those who slumber on their rights".
19. It would appear that 'inordinate delay', which has never been defined by the Courts so far, would be analogous or similar to 'laches'. In Whitman v. Disney Productions, 263 F2d 229 it was observed by the 9th Circuit Court of Appeal in U.S.A. as follows:
‘Mere passage of time cannot constitute laches, but if the passage of time can be shown to have lulled defendant into a false sense of security, and the defendant acts in reliance thereon, laches may, in the discretion of the Trial Court, be found.’
It would follow, logically, that delay by itself is not a sufficient defense to an action for interim injunction, but delay coupled with prejudice caused to the defendant would amount to 'laches'. As observed by McCarthy at page 383 "Laches - delay X prejudice". In this formula, it is the magnitude of the product of delay and prejudice which must be weighed, not the magnitude of solely the quantum of delay or prejudice alone. For example, in one case, a long delay coupled with even a slight amount of prejudice may suffice to prove an adequate defense of laches. Yet, in another case, a short delay coupled with a great amount of resulting prejudice to defendant may also suffice for laches". It has been emphasized that it is for the defendant to show Thai there has been prejudice caused by reason of the delay and that it would be unfair to inject the defendant from carrying out its activities.
20. "Laches" and "Inordinate delay" however, are not similar to "acquiescence". Acquiescence is a different concept, which has been explained by Kerly at Page 310, para 15.45 as follows:
‘The classic case of acquiescence proper is where the proprietor, knowing of his rights and knowing that the infringe is ignorant of them, does something to encourage the infringer's misapprehension, with the result that the infringe acts upon his mistaken belief and so worsens his position. It seems clear that something legs than that is needed to offer a defense, but how much less is not clear. The current tendency is to hold that a defense of acquiescence or laches may be set up whenever it is unconscionable for the plaintiff to deny anything that he (consciously or unconsciously) has allowed or encore aged the defendant to believe. Mere failure to without some positive act of encouragement is not in general enough to give a defense. A defendant who infringes knowing of the plaintiffs mark can hardly complain if he is later sued upon it, nor is a defendant who starts to infringe without searching the Register of Trade Marks in any better position than if he had searched and so learned of the plaintiffs mark. Acts of the proprietor done in ignorance of the infringement, or even done without his own registration in mind, will not amount to acquiescence. A defense of estoppels by acquiescence is to be distinguished from a defense that by delay the mark has become public juris.’
One of the cases relied upon by Kerly is that of Electro lax v. Electrix, 71 RPC 23. In that case the defendants had been using the mark Electric for a period of ten years. The plaintiffs filed a suit for injunction alleging that the use of the mark by the defendant amounted to an infringement of the plaintiffs registered mark. The defendant alleged that, there was a bona fide user of the mark, by them. It was sought to be contended that the plaintiffs had acquiesced to the defendants' user and, therefore, were not entitled to any relief. Ever shed M.R. first dealt with the question as to what would amount to acquiescence. It was observed by him as follows:
‘Upon this matter, a great deal of learning has been referred to, and we have also had our attention drawn to a number of cases. The latter include the well-known statement in Willmott v. Barber, (1880) 15 Ch D 96 by Fry, J. (as he then was) at p. 105. He said this: "It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud, and in my view that is an abbreviated statement of. a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those right&'. Let me pause here to say that I do not understand that, by the, word "fraudulent', the learned Judge was thereby indicating conduct which would amount to a common law tort of deceit. "What, then, are, the elements or requisites necessary to continue fraud of that description? In the first place the plaintiff must have made a mistake as to his legal rights. Secondly, the plaintiff must have expended some money or must have done some act (not necessarily upon the defendant's land) on the faith of his mistaken belief. Thirdly, the defendant, the possessor of the legal right, must know of the existence of his own right, which is inconsistent with the right claimed by the plaintiff. If heroes not know of it he is in the same-position as the plaintiff and the doctrine of acquiescence is founded upon conduct with a knowledge of, your legal rights. Fourthly, the defendant, the possessor of the legal right, must know of the plaintiffs mistaken belief of his rights. If he does not, there is nothing which calls upon him to assert his own rights. Lastly, the defendant, the possessor of the legal right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done, either directly or by abstaining from asserting his legal right". In reading that passage, it is perhaps necessary to note (because it makes it at first sight a little more difficult to follow) that the position of plaintiff and defendant as they are usually met with are there transposed, and that one of the parties who is there spoken of as the plaintiff corresponds with the present case with the defendants, and vice versa.’
21. Applying the aforesaid test, the Court of Appeal concluded that there was no fraud which had been played on the defendant by the plaintiff and that the plaintiff was not guilty of acquiescence. A contention was also raised that for a period of nearly ten years no action had been taken by the plaintiff and, therefore, no relief should be granted. This contention was rejected by Ever shed M.R. in the following words:
‘I think, upon analysis, that Mr. Shelley's argument must, in the end of all, come to this that the owner of a registered trade mark who for a substantial period of time has lain by and not asserted his rights has lost those rights, notwithstanding that they are rights conferred upon him by statute. I think so to hold, at any rate in a case where the length of time involved is no greater than in this case would be to introduce a wholly novel - nay, revolutionary - doctrine, and I think also that it would be contrary to the principles laid down by the decided cases.’
The Court was of the opinion that unless something is added to delay the defendant could not continue to use the infringing mark.
22. It is not very clear; and this is still a very gray area, as to whether acquiescence or laches will be regarded as, a good defense to the grant of a permanent injunction in the case of infringement of a registered trademark.
23. Some Courts have declined to grant interim injunction, on ground of laches or acquiescence, while not refusing permanent injunction. In the American case of Helena Rubenstein, Inc. v. Frances Denny Inc., 1968 DC (NY) 286 F Supp 132 it was observed as follows:
‘While latches may not be a sufficient bar to a permanent injunction, it may well be a bar to preliminary relief. A preliminary injunction is sought upon the theory that there is an urgent need for speedy action to protect the plaintiff's rights. By sleeping on its rights a plaintiff demonstrates the lack of need for speedy relief and cannot complain of the delay involved pending any final relief to which it may be entitled after a trial on all the issues.’
24. As observed by McCarthy at page 388 "Later cases have developed this rule into a two tier approach a given set of facts showing plaintiffs delay and resulting prejudice to defendant may bar monetary recovery but will not bar the issuance of an injunction against future infringements. The Supreme Court later held while laches may not be sufficient to deny relief against instances of "conscious infringement or fraudulent imitation", laches could bar relief against a good faith, "innocent" infringe. That is, the, Supreme, Court held that where defendant, in good faith, and without any prior notice of plaintiffs rights, selected a mark confusingly similar to plaintiffs mark, plaintiffs delay constituting laches; would bar the issuance of an injunction as well as the granting of damages and profits.
25. "However, if defendant acted fraudulently or with knowledge of plaintiffs rights, then relief by injunction is accorded, even though laches and acquiescence bar the recovery of damages or profits ... ... The Courts have been very reluctant to deny injunc
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tive relief because of plaintiffs delay when it appears that defendant knowingly and deliberately adopted the mark, which is an infringement. If such facts are shown, only in an exceptional case will laches bar injunctive relief'. In Anheuser-Busch v. Du Bois Brewing Co., 175 F2d 370 the Court referred to "the doctrine that a fraudulent infringe cannot expect tender mercy of a Court of equity so that mere delay by the injured party in bringing suit would not bar injunctive relief.” 26. Dealing with delay and the question of grant of interlocutory injunctions, W. W Kerr in his Treatise "On the Law and Practice of Injunctions", Sixth Edition at pages 360 361 observed as follows: ‘Mere delay after knowledge of the infringement to take proceedings, not sufficient to call the Statute of Limitations into operation, or where the infringement continues is not, it seems, a bar to the right of an injunction at the trial. Lapse of time unaccompanied by anything else is, it seems, no more a bar to a suit for an injunction in aid of the legal right than it is to an action of deceit. But delay may cause the Court to refuse an interlocutory injunction, especially if the defendant has built up a trade in which he has notoriously used the mark.’ 27. It appears difficult for me to comprehend the distinction which the Courts have sought to make between the grant of interim injunction and permanent injunction If on the facts which are clearly discernible from the record it appears that after trial a permanent injunction is likely to be, granted, notwithstanding the delay on the part of the plaintiff in approaching the Court, there appears to be no reason as to why temporary injunction should be refused.” 12. It is therefore required to be seen that even if there is delay in bringing the action by the plaintiff, whether the adoption of the mark of the defendant is dishonest in which case the plaintiff would be entitled to grant of injunction. Defendant has given its explanation as to why it coined the word ANADAY taking the first three letters of the molecule ANASTROZOLE and since once a day tablet is required to be administered, thereby coining the word ANADAY. Though ANADAY and AMADAY are deceptively similar, however, there is no material on record to show that the defendant dishonestly adopted the mark ANADAY to ride on the reputation and/or goodwill of the plaintiff's mark AMADAY for the reason, the plaintiff has no sales in India and thus, no corresponding goodwill in India. Moreover, the plaintiff's drug is sold for a different ailment i.e. for treating high blood pressure, heart disease etc. whereas, the defendant's drug is used for treatment of breast cancer. Thus the goodwill if any earned by the plaintiff's product cannot be utilized by the defendant. 13. No doubt, there is merit in the contention of the learned Counsel for the plaintiff that there can be confusion to the Chemist as well and in case ANADAY is given instead of AMADAY, the consequence would be disastrous, however, admittedly, the plaintiff is only exporting its drug AMADAY and not selling the same in India and the said drug being not available in India on the counter, there is no likelihood of any confusion caused to the Chemist due to a bad handwriting on the prescription slip. Learned Counsel for the plaintiff in this regard has relied upon the decision of the Supreme Court in Cadila Health Care (supra), however, in Cadila Health Care (supra), the medicines of both plaintiff and defendant therein were being sold by the chemists in India. 14. In view of the discussion aforesaid, this Court finds no ground to grant the relief of interim injunction in favour of the plaintiff pending disposal of the suit. Application is consequently dismissed. Application dismissed.