IA No.4304/2017

1. The plaintiffs no.1 and 2 have filed the present suit seeking permanent injunction against the defendant. On 15.09.2016 an ex-parte ad interim injunction was granted restraining the defendant from manufacturing, selling, distributing, exporting or otherwise dealing in pharmaceuticals products under the name QUMED.

2. The defendant moved an application IA No. 15968/2016 under Order XXXIX Rule 4 CPC claiming concealments by the plaintiffs and on 21.12.2016 the Court suspended the ex-parte injunction dated 15.09.2016.

3. This application under Order XIII-A CPC is now moved primarily on two grounds (a) the plaintiffs filed this suit claiming to be the proprietor of unregistered trademark Q-MED which was stated to be applied for registration in India under Application no. 2400351 by plaintiff no.2 and later it was assigned to plaintiff no.1. It is alleged on 06.03.2017 the counsel for the defendant visited the official website of registered trademark to check the current status of the application and was surprised to note on 28.12.2016 the counsel for the plaintiff had filed a request on the relevant form TM-16 with the Registrar to amend the name of the applicant from plaintiff no.1 to “Nestle Skin Health S.A.” The change was sought to be made in pursuance of a Deed of Assignment dated 10.02.2016, a copy whereof was filed before the Registrar of Trademark with application form TM-16.

4. It is alleged a perusal of the Assignment Deed dated 10.02.2016 reveal that much before the filing of the present suit and much before the deposition of the Statement of Truth on 20.07.2016 in support of the plaint by Mr. Maud Robert, the plaintiff No.l had already assigned its alleged rights in the trademark Q-MED pending for registration under the said application in favour of a separate legal entity namely “Nestle Skin Health S.A.” along with around 90 other registered/unregistered in trademarks inter alia for the Indian territory for a consideration of US$ 100.

5. It is alleged Mr.Maud Robert who signed the Assignment Deed on 10.02.2016 wrongly filed the Statement of Truth along with the plaint claiming himself to be the constituted Attorney for plaintiffs no.1 and 2 but in his affidavit dated 13.10.2016 filed before the Registrar of Trademarks he claimed himself to be a Director of the proposed plaintiff no.3, thus has averred false facts.

6. It is alleged the plaintiffs no.1 and 2 having left with no interest whatsoever in the trademark Q-MED has no real prospect of succeeding in respect of their claim and hence the defendant seek a summary dismissal of the suit in view of the assignment deed dated 10.02.2016.

7. Besides this the defendant relies upon some acts of concealment of the plaintiff as are stated in para 13 of its application but such facts are disputed and cannot be decided in summary proceedings viz. filing of a part of the carton by the plaintiff at page 7 of its documents which shows the name of the product as RESTYLANE and Q-MED is being shown only as a manufacturer. The defendant claims to have filed the full carton to prove its assertions.

8. Heard.

9. There are some admitted facts which can be culled out from pleadings of the parties (a) the plaintiffs No.1 and 2 are billion dollar companies, selling its products worldwide and in India, admittedly, since the year 2000 though have filed the invoices w.e.f. 2002; (b) the earliest in use which the defendant claims is of the year 2010 but the documents filed show its user only since 2012; (c) plaintiff no.2 is still there on record and admittedly the name of the plaintiff no.2 is Q-MED A.B. and (d) admittedly the trademark which the defendant has got registered is QUMED which is exactly/deceptively similar to the plaintiff no.2’s trademark.

10. It is the case of the plaintiffs the assignment deed dated 10.02.2016 only speaks of an intention but whereas the actual assignment took place only in December 2016 which fact can be shown only during the trial.

11. Admittedly, the defendant is using the trade name of plaintiff no.2 for its product without its consent. Though the plaintiff no.2 was an owner of the trademark but it assigned to plaintiff no.1; and the plaintiff no.1 had assigned the same to proposed plaintiff no.3 but admittedly the plaintiffs no.1 and 2 are still before this Court and are trying to implead plaintiff no.3 as a proposed plaintiff, hence where all these parties are before this Court so the effect of execution of assignment deed and the date when it was acted upon, would be question of trial and cannot be determined at this stage.

12. Section 29(5) of the Trademarks Act says what infringement is and it read :

“(5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his trade name, or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trade mark is registered.”

13. In Laxmikant V. Patel vs. Chetanbhai Shah and another (2002) 3 SCC 65 it is noted:

“10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith.xxxx

14. xxxxx Once a case of passing off is made out the practice is generally to grant a prompt ex-parte injunction followed by appointment of local Commissioner, if necessary. xxxx”

14. It is not in dispute Q-MED is still the trade name of plaintiff no.2 and plaintiff no.2 is in healthcare services since 1985 and also its name admittedly was written on the alleged cartons though in a small font.

15. Here one may refer to Section 2(1)(m), Section 2 (2) (c) and Section 2 (2) (i) and Section 29 (6) (d) of the Trade marks Act to show the mark may even be written/shown in the invoices and is not necessarily be shown only on the cartons.

“2(1)(m) “mark” includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colours or any combination thereof;

2(2) In this Act, unless the context otherwise requires, any reference—

(c) to the use of a mark-

(i) in relation to goods, shall be construed as a reference to the used of the mark upon, or in any physical or any other relation whatsoever, to such goods;

(ii) in relation to services, shall be construed as a reference to the use of the mark as or as part of any statement about the availability, provision or performance of such services;

29 (6)(d) uses the registered trademark on business papers or in advertising.”

16. The court also cannot loose sight of the law laid down by the Supreme Court in Cadila Healthcare Limited vs. Cadila Pharmaceuticals Limited Appeal (Civil) 2372/2001 decided on 26.03.2001 as follows:

“The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical structures and clavicle splints.”

17. Further in Milmet Oftho Industries and Others Allergan Incorporation (2004) 12 SCC 624 the Court held:

“7. xxxxx It was held that even though certain products may not be sold across the counter, nevertheless it was not uncommon that because of lack of competence or otherwise that mistakes arise specially where the trade marks are deceptively similar. It was held that confusion and mistakes could arise even for prescription drugs where the similar goods are marketed under marks which looked alike and sound alike. It was held that physicians are not immune from confusion or mistake. It was held that it was common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently the handwriting is not legible. It was held that these facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike. xxxx

8. xxxxx Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the in market. Thus the ultimate test should be who is first in the market.

9. In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world market. xxxxx”

18. Admittedly the plaintiffs are dealing in pharmaceutical products selling worldwide, so adoption of its trademark/name by the defendant if creates confusion is an important issue which need to be considered. The factum of Deed of Assignment and its effect can only be seen once evidence is recorded. Though the defendant has alleged suppression of facts, concealment, withholding documents on the part of the plaitniff an

d has relied upon Microsoft Corporation vs. Pawan Chawla, Commercial Suit (L) 34/2016 (Bombay); S.P. Chengalvaraya Naidu vs. Jagannath AIR 1994 SC 853; Seemax Constructions (P) Ltd. vs. SBI and Anr. AIR 1992 Delhi 197, to press the plaintiffs are not entitled to any relief but the defendant has not described as to what the plaintiffs would have gained on alleged concealments when, admittedly, the plaintiffs are in business prior to the defendants and their contention being the assignment was put to effect in December 2016. 19. It is not denied some corrections are required by the plaintiffs in the plaint and for this reason an application under Order VI Rule 7 CPC is filed. The effect of such application need to be seen. Moreso the defendant cannot avoid the real issue as to when and why the defendant started using the trade name of the plaintiff no.2 and with whose permission; are some questions which the defendant need to answer, hence the suit cannot be brushed aside lightly under Order XIII A CPC. The application is therefore dismissed. CS(COMM) 1271/2016, IA Nos.11291/2016, 7071/2017, 4796/2018 20. List on 28.11.2018.