Dabur India Ltd. (Appellants) vs. Alka Ayurvedic Pvt. Ltd. (Respondent), Decided on 06.10.2009

Dabur India Ltd. (Appellants) vs. Alka Ayurvedic Pvt. Ltd. (Respondent)

NLS/06/10/2009/TM/Del.

IA No. 15609/2008 in CS (OS) No. 2639/2008

Hon’ble Rajiv Sahai Endlaw, J.

Case Notes:

  1. The party which approaches the court, especially for ex parte ad interim relief is bound by duty to carefully place before the court all facts which may enable the court to consider the feasibility of grant of such relief. Otherwise the plaintiff is not entitled to the relief of interim injunction on this ground alone.
  2. The conduct of the plaintiff of not challenging the registration of the mark of the defendant, neither before the Registrar or the Appellate Board nor in the suit for permanent injunction, and of not even averring the registration in favour of the defendant being bad or invalid to be also an act of acquiescence/waiver disentitling the plaintiff to the grant of any interim injunction.

JUDGMENT

  1. The application of the plaintiff for interim injunction in a suit for permanent injunction restraining infringement of trademark and passing off, is for consideration. The plaintiff as registered proprietor of trademark “HAJMOLA” in respect of goods in Class 05 has instituted the present suit for restraining the defendant from using the mark “PACHMOLA” in respect of the same goods. On the counsel for the plaintiff citing the judgment dated 4th July, 2008 of the Division Bench of this Court in Pankaj Goel v. Dabur Ltd. FAO(OS) No. 82/2008 upholding the ex parte order of injunction (also at the instance of the plaintiff) restraining appellant in that case from using the mark “RASMOLA” in relation to the same goods and further upon the counsel for the plaintiff informing that the Special Leave Petition preferred to the Supreme Court against the said judgment of the Division Bench had been dismissed, vide ex parte order dated 17th December, 2008 in the present case, the defendant till the disposal of the application was restrained from using the trademark “PACHMOLA” or any other mark deceptively similar to the trademark “HAJMOLA” of the plaintiff in respect of digestive tablets or any other chewing tablets.
  2. The defendant has opposed the suit as well as the application for interim injunction inter alia on the grounds:
  3. that the plaintiff is guilty of gross and material concealments of facts and particulars and has instituted the suit with the sole intent to crush a competitor and to secure an illegal monopoly;
  4. that the defendant is a registered proprietor of the trademark “PACHMOLA” in Class 05 in respect of Ayurvedic Digestive Preparations w.e.f. 11th June, 1997, claiming user since 1st December, 1995;
  5. that the plaintiff is aware of the registration in favour of the defendant and has intentionally concealed the same from this Court;
  6. it is averred that the plaintiff claiming to be market leader in digestive tablets sector ought to be aware of use since 1995 by the defendant of the mark

“PACHMOLA”;

  1. it is further pleaded that Pankaj Goel appellant in the judgment of the division bench of this Court (Supra) in his written statement filed one year prior to the institution of the present suit had pleaded the factum of the defendant herein being the registered proprietor of the mark “PACHMOLA”;
  2. it is contended that the plaintiff thus since at least one year prior to the institution of the suit was aware of the registration in favour of the defendant and chose not to take any action and also concealed the factum of registration from the plaint;
  3. it is further pleaded that the plaintiff also became aware of the registration in favour of the defendant, because in response to the application of one M/s Mehta Unani Pharmacy & Co. for registration of the mark “PACHMOLA”, both the plaintiff as well as defendant had filed opposition, again at least one year prior to the institution of the present suit; it is contended that the said fact also has been concealed from this Court;
  4. that the plaintiff did not file any opposition to the applications of the defendant for registration of the trademark and label “PACHMOLA” and has thus allowed the defendant extensive use of the mark “PACHMOLA” and acquiesced in the use of the trademark “PACHMOLA” by the defendant;
  5. that the plaintiff itself has allowed use of marks “SATMOLA”, “SWADMOLA”, “SIDHMOLA” & “CHATMOLA” by various third parties and has concealed the said facts also from this Court and is not entitled to the relief on this ground also;
  6. that the word “HAJMOLA” or “MOLA” is common to the trade and is in extensive use by various manufacturers of Ayurvedic and Digestive Tablets, Churan etc. for which reason the plaintiff is disentitled to the relief;
  7. instances of other registrations are given;
  8. that various third parties have been opposing the plaintiff’s application for registration in respect of trademark “HAJMOLA” and which oppositions are still pending and which also were not disclosed in the plaint;
  9. that the plaintiff itself had in various applications for registration disclaimed the trademark “HAJMOLA” and/or word “MOLA”
  10. That “MOLA” is sui generis and in public domain;
  11. the plaintiff claims registration since 1972 but even prior thereto “CREAMOLA” was registered since the year 1943;
  12. that the plaintiff had made false and vague allegations of having become aware of the defendant just prior to the institution of the suit;
  13. that there is no similarity between “HAJMOLA” & “PACHMOLA” or in the packaging or the trade dress of the products of the plaintiff and the defendant and no possibility of any confusion;
  14. other distinguishing features of the goods of the two are cited;
  15. that the defendant had established a vast trade and carried out substantial commercial activities under the trademark “PACHMOLA” and growing sale figures of the defendant are pleaded.
  16. The plaintiff filed a replication to the written statement of the defendant in which the plaintiff inter alia denied knowledge of the factum of the defendant being the registered proprietor of the trademark “PACHMOLA”; it is contended that even if the defendant had secured registration of “PACHMOLA”, the plaintiff has a lawful right to restrain the defendant by way of an injunction as the trademark of the defendant is deceptively similar to that of the plaintiff; with respect to the pleadings in Pankaj Goel case it is merely stated that they are a matter of record and it is further pleaded that the plaintiff was not aware of the defendant’s product till just prior to the institution of the suit; it is further pleaded that the registration of the defendant is of the label inclusive of “PACHMOLA” and not of trademark “PACHMOLA” – reliance is placed on Section 17 of the Trademark Act, 1999; with respect to delay, it is stated that even if the defendant had any presence in the market, the same was not significant to get noticed and consequently the plaintiff was not aware of any such product; it is denied that there are any distinguishing features – it is pleaded that merely because the trade dress, packaging etc. of the defendant is different, the possibility of deception cannot still be ruled out as there is distinctive resemblance between the two trademarks.
  17. The counsel for the parties have been heard.
  18. The documents filed by the defendant show the registration of the word mark “PACHMOLA” in Class 05 relating to Ayurvedic Digestive Preparations in favour of the defendant w.e.f. 1997. The defendant being the registered proprietor of the mark, the suit for infringement does not lie under Section 28(3) and 29 of the Act.
  19. I have in Clinique Laboratories LLC v. Gufic Limited held that the court under Section 124 of the Act is entitled to grant the relief of interim injunction even in the case of infringement against a registered proprietor. However, in this case Section 124 does not come into play. Though the defendant has pleaded registration of its marks and thus raised a defence under Section 30(2)(e) of the Act but the plaintiff has not pleaded invalidity of the registration of the defendant’s mark. As aforesaid the plaintiff in spite of being informed in the written statement in the Pankaj Geol case of the registration of mark “PACHMOLA” in favour of the defendant, concealed the said fact from the plaint. Even after the defendant expressly raised a plea in this regard in its written statement, the replication of the plaintiff is evasive. Though the replication with respect to pleadings in Pankaj Goel case is of the same being a matter of record but the plaintiff still has put the defendant to strict proof on the plea of its registration. I find such behavior/pleadings of the plaintiff to be unfair. Once the defendant has expressly pleaded that the plaintiff is aware of the registration of the defendant’s mark and has also filed along with its written statement the documents showing registration of its mark, the plaintiff even if till then not aware of the same could have very well verified the same and ought to have made an express plea with respect thereto. The plaintiff however persisted with the plea of being entitled to maintain a suit for infringement. I have carefully gone through the replication of the plaintiff and do not find any plea therein of the invalidity of the registration of the defendant’s trademark. It is not even urged that any proceedings for rectification of the registration in relation to the defendant’s trademark have been initiated by the plaintiff or are pending. Thus the question of applicability of Section 124 of the Act does not arise in the present case. The suit of the plaintiff cannot thus be treated as for infringement of a trademark in view of the registered trademark of the defendant.
  20. However, since the suit is also filed for the relief of passing off and which relief the plaintiff notwithstanding the registration in favour of the defendant is entitled to claim, it has to be seen whether the ingredients for the grant of interim relief in a case of passing off are satisfied by the plaintiff. The test, for the purpose of interim relief is much stricter in case of passing off than in a case of infringement.
  21. As far as the defences of the defendant noted herein above are concerned, several of those are no longer res integra in the light of the judgment of the Division Bench of this Court in Pankaj Goel (Supra). The pleas of; (i) “MOLA” being common to the trade; (ii) the plaintiff not suing other small scale infringers not affecting the business of the plaintiff; (iii) the plaintiff itself having permitted use of the mark “SIDHMOLA”, “SATMOLA”, “SWADMOLA” & “CHATMOLA”, have been negated.
  22. The counsel for the defendant has contended that there are several other distinguishing features in the defence of the defendant than the defence of Pankaj Goel. Firstly, it is contended that the Division Bench in that case was guided by there being no substantial evidence of use of the mark by Pankaj Goel ; in the present case there is substantial evidence of use showing significant use of the mark “PACHMOLA” by the defendant; continuous invoices from July, 1998 till 2008 have been filed. The defendant has also filed various trade directories/yellow pages in this regard. However, the same are of 2007, 2008. Secondly, it is contended that Pankaj Goel was found to be selling digestive tablets also in the name of “RASGOLI”, “RASMOLI”, “RASWALI” etc. and the said fact prevailed with the Division Bench in maintaining the order of injunction qua “RASMOLA”. Per contra, the defendant in this case is selling digestive tablets only in the name of “PACHMOLA” and interim injunction against the defendant would destroy 13 years’ labour of the defendant in developing the mark “PACHMOLA” and wipe out the defendant from the market. Thirdly, it is contended that Pankaj Goel had already been restrained by another court since 2005 from using the label/device “RASMOLA” at the instance of a third party – that prevailed with the Division Bench in maintaining the injunction; in the present case there is no prior injunction against “PACHMOLA”.
  23. Grant of injunction is a discretionary relief, I am quite disturbed by the casual manner/attitude in which the plaintiff has sued. Pankaj Goel case in which pleading was made of defendant herein being the registered owner of “PACHMOLA” has been fought by the plaintiff herein in a close span of one year before three different courts and not so far back as to wipe out its memory. I do not find any explanation whatsoever for the plaintiff not making a clean breast of affairs. It was incumbent upon the plaintiff to disclose before the court the plea taken in the Pankaj Goel case of the defendant herein being the registered proprietor of “PACHMOLA” with respect whereto the present suit had been filed. Not only so, the plaintiff ought to have been put to an enquiry and made its own investigations. The plaintiff is found to be vigorously protecting its intellectual proprietary rights in a large number of suits filed in this Court. The suit is instituted and the plaint signed and verified by Mr. B.K. Gupta working as Senior Manager (Legal) with the plaintiff company. It reflects that the plaintiff is running a full fledged Legal Deptt.
  24. The senior counsel for the plaintiff engaged to address only in rejoinder, when confronted with the above, replied that the factum of registration of the mark of the defendant was inadvertently not mentioned in the plaint. It was further contended that inadvertently the plea of, the registration of the mark of the defendant being bad, had also not been taken. I find the said explanation by the senior counsel in rejoinder to be not enough. The plaintiff had an opportunity to render an explanation in its replication. However, as aforesaid, the replication in this regard is evasive. The plaintiff in spite of being challenged did not state as to how it had learnt, if not from the written statement in Pankaj Goel case, of the mark “PACHMOLA” of the defendant. If the plaintiff had learnt of “PACHMOLA” from the written statement of Pankaj Goel, then the plaintiff learnt of registration in favour of the defendant of the said mark also from the said written statement. In the replication no explanation of inadvertent error as given by the senior counsel for the plaintiff has been given. On the contrary as aforesaid the factum of registration of “PACHMOLA” is still denied and the defendant put to strict proof thereof.
  25. The question which arises is whether the plaintiff, which indulges in so abusing the process of the courts, entitled to the discretionary relief of injunction. The judgments/precedents in this regard need not be reiterated. The courts have repeatedly held that the party which approaches the court, especially for ex parte ad interim relief is bound by duty to carefully place before the court all facts which may enable the court to consider the feasibility of grant of such relief. The conduct of the plaintiff is found wanting in this regard. The plaintiff is not entitled to the relief of interim injunction on this ground alone.
  1. I also find the conduct of the plaintiff of not challenging the registration of the mark of the defendant, neither before the Registrar or the Appellate Board nor in the present suit, and of not even averring the registration in favour of the defendant being bad or invalid to be also an act of acquiescence/waiver disentitling the plaintiff to the grant of any interim injunction. It shows that it did not occur even to the counsel for plaintiff that there was anything wrong in the registration of the defendant for the reason of the same being similar or deceptively similar to that of the plaintiff. The Supreme Court in F. Hoffimann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. AIR 1970 SC 2062 approved such reasoning. The plaintiff is not entitled to interim relief on this ground also.
  2. The guiding principle in a case of passing off is the possibility of deception/confusion. A perusal of the trade dress/packaging of the plaintiff does not show any similarity or possibility of deception or confusion in the two. The colour scheme, caricature and shape of sachet of the two are different. The defendant’s sachet also has prominently displayed on the same, immediately above “PACHMOLA” “ALKA-G”. On the contrary, the plaintiff on its packaging displays itself as manufacturer. It thus cannot be said that anyone wanting to buy the goods of the plaintiff would be deceived into buying those of the defendant. The plaintiff in the replication also brushed aside the distinguishing features pleaded by the defendant in the written statement by contending that there is distinctive resemblance between the two trademarks. In this context, the action of the defendant of permitting “SATMOLA”, “SIDMOLA”, “CHATMOLA” & “SWADMOLA” becomes relevant. The said action of the plaintiff shows that the existence of other similar goods with the word “MOLA” was acceptable to the plaintiff. Thus merely because a product bears “MOLA” does not denote or identify the product with the plaintiff i.e. it is not distinctive of the plaintiff. The distinctiveness if any has been blunted by the plaintiff allowing use of “MOLA” by others. The Division Bench in Pankaj Goel has held that that such allowance by the plaintiff cannot be a license to the world at large to infringe “HAJMOLA”. The same is binding on this Court. However, if there are distinguishing features and no possibility of deception/confusion, mere use of “MOLA” by the defendant will not entitle plaintiff to injunction.
  3. The senior counsel for the plaintiff in rejoinder contended that the mark of the plaintiff has acquired singular fame in the realm of Digestive Tablets and is a household mark, is a totally coined mark which the courts have held deserve highest degree of protection. Instances were given of injunction being issued qua “MAYUR” & “PEACOCK” in spite of apparent dissimilarity. It was argued that use by the defendant of “MOLA” would associate the goods of the defendant with the plaintiff. It was further contended that the sale figures cited by the defendant were inclusive of all goods of the defendant and not of “PACHMOLA” only; that the cause of action for the suit to the plaintiff arose only when the defendant started using the mark substantially and started passing off its goods as that of the plaintiff and not by negligible sales/use. It was further contended that the plaintiff cannot even be accepted to have knowledge of all such infringers; instance was given of Pankaj Goel who was advertising on the same channel as the plaintiff but still the Division Bench held that the same could not amount to knowledge of the plaintiff. It was also contended that the sale invoice of the defendant showed that the defendant also was marketing/selling Digestive Tablets under several other names and had falsely argued that it will be wiped out if prohibited from using “PACHMOLA”. Reliance was placed on Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. AIR 1990 Delhi 19 to buttress the proposition that it was also essential to prevent third party consumers from being fooled and that where the adoption of the mark by the defendant was found to be dishonest, no amount of delay could deprive the plaintiff of an injunction though the same may be relevant in assessment of damages. It was further contended that the plaintiff had no objection to the use of the mark “PACHGOLA” which the defendant after the injunction had been using. It was further urged that the present case is fully covered by the Division Bench judgment in Pankaj Goel (Supra). It was also argued that the test was of similarity and not of dissimilarity.
  4. The counsel for the defendant was allowed sur rejoinder. He contended that the Director of the defendant was earlier joint in business of marketing same goods under the marks “CHATMOLA” with his brother; that there was litigation with the brother; that since the plaintiff had given no objection to use of “CHATMOLA”, the Director of the defendant with a view to settle disputes with the brother bonafide adopted “PACHMOLA”, secure in the feeling that the plaintiff having given no objection to “CHATMOLA” would have no objection to “PACHMOLA” also and in fact plaintiff had not raised any objection in the last 13 years. It was further contended that the defendant besides marketing “PACHMOLA” was also carrying on business only in the name of “AAM CHASKA” and which mark had been assigned by defendant in 2008 and since when had been carrying on business only in the name of “PACHMOLA”. With respect to other goods on its invoices, it was stated that the same were not a trademarked but generic products.
  5. I find merit in the distinguishing features aforesaid urged by the defendant with the Pankaj Goel case. From the documents filed by the defendant, continuous use by the defendant of the mark “PACHMOLA” since 1998 is evident. There is nothing to show that the defendant is trading under several other marks, as Pankaj Goel was found to be doing. Similarly, there is no other injunction against defendant, as was against Pankaj Goel. The contentions raised by the senior counsel for the plaintiff in rejoinder are without any basis. It is not pleaded as to how the volume of sales of the defendant has increased for the plaintiff to have decided to sue the defendant now. Moreover, if according to the plaintiff the turnover of the defendant now is more, so as to make the plaintiff sue the defendant, the same would also be of relevance in the balance of convenience in granting the interim relief. As aforesaid, this Court after examining the trade dress of the product of plaintiff and of the defendant prima facie does not find any possibility of the buyers being deceived or there being possibility of any confusion.
  6. The counsel for the plaintiff has also relied upon a number of judgments filed along with the list of authorities. However, in view of the above and the principles being well settled need is not felt for discussing the same.
  7. The plaintiff is not found entitled to the interim relief on the ground of passing off for the reasons aforesaid. The application is disposed of only with the direction to the defendant to maintain accounts of sales of Digestive Tablets/Digestive Preparations under the mark “PACHMOLA” and to file the same in this Court with advance copy to the plaintiff on quarterly basis. Needless to say, nothing contained herein to be deemed to be an expression of opinion on merits of the matter.

No order as to costs.

JUSTICE RAJIV SAHAI ENDLAW

06/10/2009

 

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