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Scan Biotek India & Another v/s Scan Biotech India

    CS (OS) 2043 of 2007 I.A. No. 11891 of 2007
    Decided On, 29 January 2010
    At, High Court of Delhi
    For the Appellants: Ajay Verma with Guran Bhattacharya & Ms. Swati Gupta, Advocates. For the Respondent: None.

Judgment Text
S. Ravindra Bhat, J:

1. The plaintiffs seek permanent injunction, damages and order or delivery up against the defendants for the latter's use of the trademark "BOLRAN" and the use of the tradename "SCAN BIOTEK INDIA".

2. The defendant was served in the Suit and counsel had appeared on defendant's behalf on 23.10.2008. The suit and the pending applications were listed subsequently on 26.2.2009, 15.5.2009 and 31.7.2009. On the latter date of hearing there was a appearance on behalf of the defendant. However, no written statement had been filed. The suit was again listed on 16.12.2009. By the said date of hearing also, the defendant has not filed any written statement. Even as on date, there is no written statement and the defendant never sought extension of time that could have been granted under the Code for this purpose. In the circumstances, the Court is of the opinion that having regard to the pleadings and material, it is an appropriate case for invoking the powers under the provisions of Order-8, Rule-10 CPC and proceeding to dispose of the matter.

3. The brief facts of the case are that the plaintiffs claim to be a pharmaceutical products manufacturing concern. The first plaintiff - SCAN BIOTEK INDIA is a registered partnership firm since 6.8.2003. The second plaintiff - Scan Biotech Ltd. was incorporated sometime in December, 2003. It is stated that the drug formulation "Bolran" is widely marketed by the second plaintiff in Ukraine. The trademark "BOLRAN" is, however, owned by the first plaintiff in India. It submits that the registration in the said mark was obtained under the Trademarks Act w.e.f. 14.11.2003 in class-5 of the schedule to the Act.

4. The plaintiffs' grievance in the suit is that the defendant M/s Scan Biotech India uses an identical trademark BOLRAN in respect of the same drug formulation and markets it in Ukraine. It is stated that the son of the defendant's proprietor was originally the plaintiff's employee and after his death in 2005, the defendant, purports to have opened a concern and filed a suit against the plaintiff claiming injunction.

5. It is submitted that the plaintiffs' firm is registered with the appropriate authorities i.e. Drug Controller; the plaintiffs rely upon an export import license issued on 31.3.2003 and its membership with the drug Drug Export Promotion Council - registration of which was granted on 6.8.2003. Copies of the said certificates have been placed on record. Similarly, copies of the trademark registration certificate w.e.f. 14.11.2003 in class-5 favouring first plaintiff have been placed on the record. In support of the user of the trademark BOLRAN as well as to evidence the used of the name SCAN BIOTEK INDIA and SCAN BIOTECH LIMITED, the plaintiffs rely upon the registration certificate issued by the Trademark Office as well as the licenses and documents issued by the drug authorities and the import and export license issued by Drug Export Promotion Council. It is submitted that the plaintiffs usage of the registered mark BOLRAN is exclusive for Ukraine and such use has not been restricted in any manner in terms of Section 47 (2) (a) of the Trademarks Act.

6. The plaintiffs submit that the use of the near identical trade name "SCAN BIOTECH INDIA" in India by the defendant is calculated to cause confusion amongst the consumers - in this case in Ukraine in respect of the same product i.e. BOLRAN for which it owns trademark registration.

7. The Court has considered the materials on record as well as the averments. They clearly establish that the plaintiff No. 1 is a registered trademark proprietor of BOLRAN w.e.f. September, 2003. Both the plaintiffs are known as SCAN BIOTEK. The defendant has not refuted these allegations despite service of summons; it has not even chosen to file any written statement in spite of service after more than a year and three months. In fact, the defendant has remained unrepresented on the last few dates of hearing as well as today. In the circumstances, the Court is of the opinion that the plaintiff has established from the materials on record, and the averments, supported by affidavit, that it is the owner of registered trademark BOLRAN. It is also established that the defendant is seeking to unauthorizedly use the said mark in relation to the said product. The defendant, in addition, is using the plaintiff's corporate name SCAN BIOTEK INDIA and SCAN BIOTECH LIMITED with little or no variations. This is bound to cause confusion and amounts to infringement in terms of Section 29 (5) of the Trademarks Act which reads as follows:--

"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."

Having regard to the above discussion, the Court is of the opinion that the plaintiff has established infringement of its trademark BOLRAN as well as infringement in terms of Section 29 (5) by the defendant.

8. Accordingly, the defendant, its partners, servants, distributors or anyone acting on its behalf are hereby restrain

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ed by a decree of injunction, from using the mark SCAN BIOTECH INDIA or any other confusingly or deceptively similar trade name that would tend to confuse it with those of the plaintiff. They are similarly restrained by a decree of permanent injunction from marketing or selling any products under the mark BOLRAN in relation to pharmaceutical goods or any other confusingly or deceptively similar mark. 9. The Suit is decreed in the above terms with costs. Counsel's fee is hereby quantified @ Rs. 50,000/- (Rs. Fifty thousand). All the pending applications are also disposed of.