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Poly Medicure Limited V/S Polybond India Pvt. Ltd.

Company & Directors' Information:- POLY MEDICURE LIMITED [Active] CIN = L40300DL1995PLC066923

Company & Directors' Information:- POLYBOND (INDIA) PVT LTD [Active] CIN = U25199MH1983PTC030558

Company & Directors' Information:- MEDICURE PRIVATE LIMITED [Active] CIN = U24231MH1998PTC117391

Company & Directors' Information:- A M POLY LIMITED [Strike Off] CIN = U25209CH1995PLC016202

Company & Directors' Information:- POLY INDIA PRIVATE LIMITED [Strike Off] CIN = U25201PY1974PTC000120

Company & Directors' Information:- R. J. POLY PRIVATE LIMITED [Strike Off] CIN = U00250BR1986PTC002504

Company & Directors' Information:- D-POLY PRIVATE LIMITED [Active] CIN = U25209MH2021PTC354261

    CS (COMM) 1292/2016 and IA No. 4428/2013 (u/O XXXIX R-1 & 2 CPC)

    Decided On, 30 July 2019

    At, High Court of Delhi


    For Petitioner: Vaibhav Vutts, Aamna Hasan and Shreyes Rastogi, Advocates And For Respondents: Nanjappa Ganpathy, Sr. Adv. and Manish Dhir, Advocate.

Judgment Text

1. The application of the plaintiff, in this suit instituted as far back as in the year 2013, for interim relief, being IA No. 4428/2013, is for consideration.

2. The counsel for the plaintiff and the senior counsel for the defendant have been heard.

3. The plaintiff has instituted this suit for permanent injunction to restrain the defendant from infringing the trade mark of the plaintiff and from passing off its goods as that of the plaintiff, by adopting the mark 'POLYSURE', 'POLYBOND' or any other mark deceptively similar to the plaintiff's trade name 'POLY MEDICURE', 'POLY' family trade marks and trade names, and for ancillary reliefs.

4. The suit came up first before this Court on 15th March, 2013, when though was entertained, no ex-parte relief granted to the plaintiff.

5. The pleadings have been completed.

6. It is the case of the plaintiff, (i) that the plaintiff is a medical devices company established in 1995 and manufactures and sells medical devices including intravenous catheters under the trade mark 'POLY MEDICURE' and/or family/series of trade marks such as 'POLY MEDICURE', 'POLYMED', 'POLYSAFETY', 'POLYFLO', 'POLYFLON', 'POLYPEN', 'POLYWIN' etc. (ii) that all the said 'POLY' series/family of marks are being used in relation to medical devices including intravenous catheters; (iii) that the plaintiff has obtained registrations of a series of marks with the prefix 'POLY', in Classes 10, 5 & 17 of the classification provided in the Fourth Schedule of the Trade Marks Rules, 2002; (iv) that 'POLY' forms an integral and conspicuous portion of the plaintiff's trade mark 'POLY MEDICURE' and of the trade name of the plaintiff; (v) that the defendant Polybond India Pvt. Ltd., just prior to the institution of the suit, launched its medical devices business, specifically catheters, under the trade mark 'POLYSURE'; (vi) that the trade name 'POLYBOND' and the trade mark 'POLYSURE' adopted by the defendant are deceptively similar to the trade name and trade marks of the plaintiff; and, (vii) that an ex-employee of the plaintiff, in or about October, 2012, started approaching the customers of the plaintiff on behalf of the defendant.

7. The defendant has contested the suit by filing a written statement, pleading (a) that the defendant was incorporated and has been in existence since the year 1983 i.e. much prior to the incorporation of the plaintiff in the year 1995; (b) that 'POLY' is not a coined word and is devised from the term 'Polymer' which is the chemical compound used in both, rubber as well as plastic, which is the primary material used in the manufacture of disposable medical devices; (c) that there are various entities in the trade using the same as part of their trade mark and trade name; (d) that the word 'POLY' is thus generic, adopted by various manufacturers and users in the field of medical devices; (e) that there are a large number of companies using the said word 'POLY' as part of their trade name/corporate name; (f) that the Telephone Directory also contains a large number of entries with the prefix 'POLY'; (g) that the defendant is the registered proprietor of the trade mark 'POLYBOND' in Class 17 (rubber products) and has also obtained registrations of the domain names www.polybondindia.com and www.polysure.in; (h) that the defendant's product under the mark 'POLYSURE' has a higher price than the plaintiff's product; and, (i) that the plaintiff cannot claim exclusive right to use of the word 'POLY'.

8. Though the plaintiff is found to have filed replication but the need to refer thereto is not felt.

9. The counsel for the plaintiff has drawn attention to, (I) pages 111 to 175 of Part III-A file, being the copies of various registrations of the trade marks of the plaintiff and has also in Court handed over registrations got affected since the institution of the suit and one of which is of 'POLYCURE' and another of 'POLY', in Class 10; (II) that the plaintiff has also been using a tagline "We Care as We Cure" which has also been registered as a trade mark; (III) that the plaintiff is using the said marks since the year 1995 and has placed invoices with effect from December, 1997 before this Court; (IV) that the plaintiff learnt of the defendant in October, 2012 and instituted this suit in March, 2013; (V) that on a search of the website of the defendant, it was found that the defendant was in the business of automotive parts and in January, 2013 has forayed into the business as of the plaintiff, of manufacture and sale of medical devices; (VI) that the plaintiff is opposing the applications of the defendant for registration of the trade mark 'POLYSURE'; (VII) that an ex-employee of the plaintiff, having left employment in the year 2012, has joined the defendant and the defendant in collusion with him is attempting to lure the customers of the plaintiff; and, (VIII) that the defendant in its dishonest attempt has also adopted the tagline "Care Cure Sure" which is also deceptively similar to the tagline of the plaintiff.

10. The senior counsel for the defendant has contended, (A) that the plaintiff is not entitled to any relief, having practised suppression in the institution of the suit; (B) that the plaintiff has no monopoly on use of the mark 'POLY' which is derived from 'Polymer', a chemical, essentially used in the manufacture of rubber and plastic products; (C) that the incorporation of the defendant in the year 1983 is long before the incorporation of the plaintiff, of the 1995; the defendant has been using the trade name 'POLYBOND INDIA PVT. LTD.' since its incorporation in 1983; (D) that the defendant has filed before this Court the enquiry made by the Registrar of Trade Marks from the plaintiff, when the plaintiff sought registrations of some of its trade marks, citing the other trade marks 'POLYSKOP', 'POLY-JOY', 'POLYGLOV, 'POLYCOL' and 'POLYNEPHRON' etc. already on record in the Register; (E) that the plaintiff, in response thereto took a stand (i) that the cited trade marks and the applied marks were entirely different marks, phonetically, visually, conceptually and structurally; (ii) that the cited marks had only the word 'POLY' in common with the mark of which registration was sought by the plaintiff; (iii) that the correct test for comparing the two trade marks, is to consider the marks as a whole and not in parts; (iv) that greater regard is to be shown to the uncommon elements in the cited marks and the plaintiff's mark; and, (v) that four of the cited marks with the prefix 'POLY' had been registered and hence co-existing on the Register and the Registrar in the past having held the cited marks, all with the prefix 'POLY', to be not in conflict with each other, should have no objection to proceed to register the plaintiff's mark also; (F) that in response to another similar query of the Registrar of Trade Marks to the plaintiff, the reply of the plaintiff was similar; (G) that the plaintiff cannot approbate and reprobate and having taken a stand the word 'POLY' in the mark of the plaintiff and in other marks did not result in the two being similar/deceptively similar, cannot today object to the use by the defendant of 'POLYSURE' and which, applying the same test, is not similar/deceptively similar to the plaintiff's mark 'POLY MEDICURE'; (H) that the emails of the alleged ex-employee of the plaintiff are of after the institution of the suit; that the defendant is not a 'fly by night' operator and has a larger cache of regular customers and employs 1500 people; (I) that the goods of the defendant are capable of being easily distinguished by the name of the manufacturer thereon; (J) that the defendant's products are costlier than that of the plaintiff and that also is sufficient to distinguish the marks; (K) reliance is placed on (i) The Coca-Cola Company of Canada Ltd. Vs. Pepsi-Cola Company of Canada Ltd : AIR 1942 PC 40; (ii) F. Hoffimann La Roche and Co. Ltd. Vs. Geoffry Manners and Co. Pvt. Ltd : 1982 PTC 335; (iii) J.R. Kapoor Vs. Micronix India : 1994 Supp. (3) SCC 215; (iv) Skyline Education Institute (India) Private Limited Vs. S.L. Vaswani : (2010) 2 SCC 142; (v) SBL Ltd. Vs. Himalaya Drug Co : 1997 PTC (17) (DB); (vi) Khandelwal Laboratories Ltd. Vs. FDC Limited : 2001 PTC 864 (Del); (vii) Apex Laboratories Ltd. Vs. Zuventus Health Care Ltd : 2006 (33) PTC 492 (Mad)(DB); (viii) Intel Corporation Vs. Anil Hada : (ix) Astrazeneca UK Ltd. Vs. ORCHID Chemicals & Pharmaceuticals Ltd : 2007 (34) PTC 469 (DB)(Del); (x) FDC Limited Vs. Ajay G. Piramal : 2008 (38) PTC 97 (Del); (xi) Unichem Laboratories Ltd. Vs. Ipca Laboratories Ltd : (xii) Living Media India Ltd. Vs. Alpha Dealcom Pvt. Ltd : (xiii) P.P. Jewellers Pvt. Ltd. Vs. P.P. Buildwell Pvt. Ltd : 2009 (41) PTC 217 (Del); (xiv) Aviat Chemicals Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd : 2001 PTC 601 (Del); (xv) Mankind Pharma Ltd. Vs. Chandra Mani Tiwari : (2018) 253 DLT 39; (xvi) Corn Products Refining Co. Vs. Shangrila Food Products Ltd : AIR 1960 SC 142; and, (xvii) Vardhman Buildtech Pvt. Ltd. Vs. Vardhman Properties Ltd : 233 (2016) DLT 25 (DB), with attention being invited to F. Hoffmann La Roche and Co. Ltd. supra where no injunction was granted qua 'DROPOVIT' and 'PROTOVIT', Unichem Laboratories Ltd. supra where no injunction was granted in relation to 'LORAM' and 'LOPRAM', Living Media India Ltd. supra where no injunction was granted in relation to 'INDIA TODAY' and 'PUNJAB TODAY', and Mankind Pharma Ltd. supra, where on the basis of such replies given to the Examination Report of the Registrar, it was held that the same was relevant for the purpose of grant of interim injunction; and, (L) that the tagline referred to by the counsel for the plaintiff in the hearing is not even a part of the pleadings of the plaintiff.

11. The counsel for the plaintiff, in rejoinder has argued (i) that the defendant has not filed any document to show use of the trade marks cited by the Registrar in response to application for registration of the plaintiff; (ii) that the cited marks were in relation to different products and businesses and the plaintiff had no objection thereto, just like the plaintiff had no objection to the defendant, till the time it was producing only automotive parts; (iii) that the plea of the defendant, of the word 'POLY' being generic, should be accompanied with proof of substantial use of the mark; (iv) that in fact several of the marks cited by the Registrar in response to application for registration of plaintiff, have not even been renewed; documents in this regard are handed over in the Court; (v) that the marks of the plaintiff which were then under opposition have since proceeded to registration, after dismissal of opposition; and, (vi) reliance is place on Pankaj Goel Vs. Dabur India Ltd : 2008 (38) PTC 49 (Del), where injunction against use of 'RASMOLA' was granted, finding the same to be similar to the mark 'HAJMOLA' of the plaintiff.

12. I have considered the rival contentions and am of the view that the plaintiff is not entitled to the interim injunction during the pendency of the suit. The plaintiff, in the plaint did not disclose the replies submitted to the Registrar of Trade Marks in response to the Examination Reports to the applications of the plaintiff for registration. Though the counsel for the plaintiff has drawn attention to last of the grounds taken in the said replies, wherein the plaintiff also pleaded that the specification of the goods in the cited marks was different as compared to that in the plaintiff's mark but else the reply of the plaintiff largely comprised of the plea, that the common element 'POLY' in the plaintiff's proposed mark and in the cited marks, was not to be a ground for refusal of registration, as the correct test for comparing the two trade marks is to compare the marks as a whole and not in parts and on which comparison, there was no commonality in the proposed mark of the plaintiff and the cited marks. Not only so, the plaintiff yet further stated that since in the past several marks with the prefix 'POLY' had been registered and were allowed to co-exist, the commonality of 'POLY' was no ground for the plaintiff to be refused registration.

13. This categorical stand of the plaintiff, at least at this stage, disentitles the plaintiff from interim injunction. The plaintiff, when approaching the Court has to make a clean breast of the state of affairs and ought to have informed the Court so on the very first date when the suit came up before this Court alongwith application for interim relief, including ex-parte relief against the defendant, to enable the Court to consider grant/non-grant of ex-parte relief, in the light of all facts. The plaintiff in this case did not do so. The plaintiff is estopped now from changing the stand taken before the Registrar for obtaining registration.

14. As far as the argument of the counsel for the plaintiff, of the cited marks being in relation to the different goods is concerned, all the cited registrations, including those of prior to the plaintiff's, were in Class 10 and in any case it is a matter of evidence, whether the differences now cited and which did not form part of the reply of the plaintiff, allow the plaintiff to take a different stand today.

15. IA No. 4428/2013 is thus dismissed.

16. The suit is ripe for framing of issues.

17. On the pleadings of the parties, the following issues are framed:

(I) Whether plaintiff has any exclusive right over the word 'POLY' or other POLY formative marks and words? OPP

(II) Whether the use of the mark 'POLYSURE' by the defendant infringes any right of the plaintiff? OPP

(III) Whether the word 'POLY' is generic in nature in respect of medical a

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nd surgical equipment falling in Class 10 of international classification of trade marks? OPD (IV) Whether the word 'POLY' has become common to Trade Marks Register and trade in respect of medical and surgical equipment forming part of Class 10 of the international classification of trade marks? OPD (V) Whether the plaintiff is entitled to an injunction in view of the suppression of material facts from the Hon'ble Court? OPP (VI) Whether the stand of the plaintiff in its letters to the Registrar of Trade Marks in pursuance to the examination report is contradictory to the stand of the plaintiff in this suit and if so, to what effect? OPP (VII) If the aforesaid issues are decided in favour of the plaintiff and against the defendant, to damages in what amount is the plaintiff entitled to against the defendant? OPP (VIII) Whether the use by the plaintiff of 'POLY' is indicative of the series of products of the plaintiff and the marks of the plaintiff constitute a family of marks and all are in use? OPP (IX) Relief. 18. No other issue arises or is pressed. 19. The parties to file their list of witnesses within fifteen days. 20. The plaintiff to file affidavits by way of examination-in-chief of all its witnesses within six weeks. 21. Option given of having evidence recorded on commission has been declined. 22. List before the Joint Registrar on 23rd September, 2019 for scheduling the date/s of trial.