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Lupin Limited v/s McClin Biotech

    Suit No. 879 of 2010
    Decided On, 08 April 2013
    At, High Court of Judicature at Bombay
    By, THE HONOURABLE MR. JUSTICE S.J. KATHAWALLA
    For the Plaintiff: Amit Jamsandekar a/w Vinay Parelkar i/b V.A. Associates, Advocates. For the Defendant: None.


Judgment Text
Oral Judgment:

1. This is an action for infringement of trademark and passing off and unfair trading committed by Defendants by using an identical and/or deceptively similar mark "LNZ-5" and "LNZ-2.5" in relation to pharmaceutical products to the registered trade marks of the Plaintiff.

2. The Writ of Summons is served on the Defendants by way of Substituted service. The Writ of Summons were published in two daily newspapers, namely, BUSINESS STANDARD and WESTERN TIMES circulating and available in Baroda, Gujarat. The Plaintiff has filed an affidavit of service. Despite service the Defendants have not appeared in the proceedings. The Defendants also did not file the written statement. Today the suit is listed on the cause list for ex parte decree.

3. The Plaintiff's witness Mr. R. Kumar is present in Court. The Plaintiff has filed its Affidavit of Documents, the compilation of original documents and the Affidavit in Examination of Chief of Mr. R. Kumar on behalf of the Plaintiff.

4. Mr. Jamsandekar, the Learned Counsel for the Plaintiff submitted that the Plaintiff is by virtue of the Deed of Assignment, the subsequent proprietor of the trademark 'LNZ' bearing Registration No.827555 in respect of goods covered by the Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002. The Plaintiff has been openly, continuously and extensively using the said trademark in respect of its goods since the year 2009. The registration of the mark has been renewed from time to time and is valid and subsisting on the Register of Trademarks in the name of the Plaintiff.

5. Mr. Jamsandekar further submitted that, the trademark "LNZ" is used by the Plaintiff since the year 2009 in respect of goods covered by the registration extensively, continuously and without any interruption. The trademark "LNZ has created tremendous goodwill and reputation in the market and the same is solely and exclusively associated by the members of the public and the traders with the Plaintiff and none else. The Plaintiff has incurred substantial amount of money, time, efforts and skill to promote the mark. The goodwill and reputation in the mark LNZ is owned by the Plaintiff. The Defendants are using the mark "LNZ-5" and "LNZ2.5" The Plaintiff has made detailed statement of facts in the plaint in respect of its statutory and common law rights in the trademark LNZ and the cause of action. The Defendant continued infringement and passing off activities therefore the present suit is filed.

6. The Plaintiff's representative, Mr. R. Kumar Deputy General Manager - Legal of the Plaintiff has led evidence in person by filing his Affidavit in lieu of examination-in-chief. He confirms the correctness of the contents of the Affidavit as well as the plaint. The plaint is verified personally by him. The witness has in support of the Plaintiffs case sought to rely upon documentary evidence which is tendered in the form of a compilation of original documents. The witness has in his affidavit of examination in chief led evidence to prove the admissibility of the documents contained in the compilation as well as evidence to prove the Plaintiff's case. In view of this evidence, the documents contained in the compilation of original documents are duly proved and therefore admitted in evidence and the same are marked as 'P Collectively'

7. It is submitted on behalf of the Plaintiff that the Plaintiff has statutory as well as common law rights in the marks. The registration of the mark 'LNZ' bearing Registration No.827555 in Class 5 is valid and subsisting. The rival marks are used in respect of pharmaceutical products. By nature of the mark used by the Defendant which is phonetically, visually and structurally almost identical with the registered mark of the Plaintiff, confusion and deception is bound to accrue. It is submitted that the evidence on record clearly establishes that the Plaintiff has acquired reputation and goodwill in the mark and the same is owned by the Plaintiff. The members of the public and the traders solely and exclusively associate the trademark "LNZ" with the Plaintiff. There is likelihood of confusion and/or association of the Defendant's goods with the goods of the Plaintiff bearing an identical and/or deceptively similar mark. The adoption of the mark by the Defendant is with express and/or constructive notice of the Plaintiff's statutory and common law rights in the trademark 'LNZ" The Defendant is trading on the goodwill and reputation of the Plaintiff in the "LNZ" trademark.

8. I am satisfied with the contentions and submissions made on behalf of the Plaintiff as the Plaintiff by leading the oral evidence and by filing the documentary evidence have proved that the Trade Mark 'LNZ' bearing Registration No.827555 is the registered trade mark in the name of the Plaintiff. The registration of the "LNZ" trademark is valid and subsisting. The Plaintiff has produced the certified copies of the entry of the Register in respect of the registration of the trademark LNZ in the name of the Plaintiff. Therefore, by virtue of the registration of the mark under the Trade Marks Act, 1999 the Plaintiff is entitled to an exclusive right to use the mark LNZ. The Defendant is using the mark 'LNZ-5' and 'LNZ-2.5' in respect of its pharmaceutical products. The mark of the Plaintiff is registered in respect of goods falling in Class 5, which are pharmaceutical products. The mark used by the Defendant is identical/similar to the mark of the Plaintiff and used in respect of an identical goods covered by the registration. By nature of the mark used by the Defendant which is phonetically, visually and structurally similar to the registered trade mark of the Plaintiff there exists likelihood of confusion and/or association. The members of the public and the traders are bound to get confusion. The rival marks are used in respect of pharmaceutical goods and therefore adverse result or impact of the drugs, if substituted for one another, cannot be ruled out. It is in the public interest to prevent the use of the mark of the Defendant. The Defendants are infringing the registered trade marks of the Plaintiff in Class 5 bearing the registration No.827555 and the Plaintiff is entitled to permanent injunction against the Defendant in respect of the registered trade mark.

9. The Plaintiff has also proved that the Plaintiff has been using the mark LNZ since the year 2009 openly, continuously and extensively and on a growing scale which is evident that the net turnover of the Plaintiff reflected in the statements certified by the Chartered Accountant. The Plaintiff has also produced in evidence the Chartered Accountant Statements of the Plaintiffs turnover and the expenditures towards the advertisements and publicity in respect of the trademark 'LNZ' bearing Registration No.827555. The Plaintiff has proved that the goods bearing the Trade mark LNZ are promoted on a very large scale through out India. The Plaintiff has proved that the Plaintiff has tremendous goodwill and reputation in the LNZ trademark and the same is owned by the Plaintiff. It is proved that the members of the public and the traders solely and exclusively associate the LNZ trademark with the Plaintiff. The goods of the Defendant being identical and the mark being identical/similar in respect of visual, phonetic and general appearance, the confusion and deception is bound to occur in the course of the business. The members of the public are going to associate the Defendant's product with the Plaintiff's product. It is clear from the evidence of the Plaintiff that the Defendant is passing off its goods as and for the goods of the Plaintiff and/or enabling others to do so. The Defendants are trading on the goodwill and reputation of the Plaintiff. There is no explanation for the adoption of the mark "LNZ-5" and "LNZ-2.5" by the Defendants.

10. There is nothing on record that militates against anything that has been averred in the Plaint and deposed by the Plaintiff's witness and proved by him.

11. The Defendants have remained absent despite service of writ of summons by the Plaintiff, both by hand delivery and by

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substituted service by way of publication in Newspapers circulating in the area in which the Defendants have their place of business. There is no written statement on record. The evidence of the Plaintiff/witness is uncontroverted. 12. In the circumstances, suit is decreed in terms of Prayer Clauses (a) and (b) and Costs to be quantified as per rules. 13. Considering the nature of infringement and the acts of the Defendants and with a view to dissuade others from indulging into such activities, it is imperative that some punitive damages are to be awarded to the Plaintiffs. I, therefore award punitive damages amounting to Rs.50,000/- to the Plaintiff and against Defendant. 14. The office shall return the original documents to the Advocate for the Plaintiff upon the Advocate for the Plaintiff handing over Photostat copies of the said documents duly certified by him as true copies.
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