Dashrathbhai K. Patel vs ACME Pharmaceuticals Pvt. Ltd.

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S.G. Shah, J.—The appellant is original plaintiff, whereas respondent is original defendant before the trial Court, being Civil Court [Senior Division], Ahmedabad [Rural], in Regular Civil Suit No. 11/2005 preferred by the plaintiff for infringement of registered trade mark and permanent injunction. They are referred in the same capacity in this judgment also. In the suit, the plaintiff has also prayed for interim relief to restrain the defendant from using in any manner the name of "ACME" Pharmaceuticals for the products of the defendant so as to protect the public from the deception and confusion in the largest interest of the public: Such application has been dismissed by the impugned judgment and order dated 7/5/2013. However, there was ad-interim relief in favour of the plaintiff which was continued till date of the impugned order by the trial Court and by order below exh. 60, the trial Court has continued the interim relief till 29/6/2013. The same order was continued by this Court vide order dated 26/6/2013. Thereby the plaintiff is enjoying interim relief till date since the year 2005.

I have heard learned advocate Mr. Y.J. Trivedi for the plaintiff/appellant and Mr. B.S. Chittle, learned advocate for the defendant/respondent at length and perused voluminous record as well as citations referred by both the sides.

It is admitted position that this being appeal against interim order and both the sides have yet to adduce relevant evidence on record to prove their case, there cannot be a mini trial at this stage, else discussion and determination on any factual aspect would unnecessarily prejudice the final trial. Therefore, though available material is appreciated, discussion for determination of the present appeal is restricted for deciding the present appeal only. However, any of the observations made herein shall not preclude the trial Court to decide the issues in accordance with law pursuant to evidence that may be adduced by both the sides during trial.

The controversy is with reference to using a trademark, namely, "ACME PHARMACEUTICALS''. Both the sides are claiming that they are entitled to use such name as their trade name. However, record shows that pending this litigation because of some other litigation before the Madhya Pradesh High Court, details of such litigation are very well described in the pleadings, the defendant has changed their name from ''ACME Pharmaceuticals'' to ''ACME Therapeutics [I] Pvt. Ltd.'' Therefore, prima-facie so far as the interim relief is concerned, the plaintiff''s grievance should come to an end when his suit for damages is yet to be decided by the trial Court after scrutinizing the evidence that may be adduced by both the sides. However, the plaintiff has continued to agitate this appeal solely on the ground that the defendant is not entitled to even utilize word ''ACME'' at all. For determination of present appeal, details of previous litigation before different authorities are now not much material. Therefore, its history and details are not reproduced herein. The only issue remains for consideration is whether the defendant is entitled to use the word ''ACME'' or not and whether the plaintiff is entitled to the interim relief, as prayed for?

On perusal of available record, prima-facie it is found that once name of the defendant has been changed from ''ACME Pharmaceuticals'' to ''ACME Therapeutics [I] Pvt. Ltd.'', the only disturbance remains in the nature of writing word ''ACME'' in the name of the company. Prima-facie it is seen that there is no similarity whatsoever except word ''ACME'' since both words are differently adopted by both the sides. Therefore, at present it is not material to discuss or determine on other issues regarding right and entitlement of both the sides, more particularly with reference to who is using such word first and whether both are entitled to use such word or not.

I have also studied all the citations referred by both the parties. The list of the citations referred by the plaintiff is as under:

a] Simatul Chemical Industries Pvt. Ltd. Vs. Cibatul Ltd.,

b] Rangoli reported in 2009 [39] PTC 91 [Guj.]

c] Rupa Don reported in 1998 [0] GLHEL-HC 210633

d] Muktajivan reported in 2002 [24] PTC 1 SC

e] Kaviraj Pandit Durga Dutt Sharma Vs. Navaratna Pharmaceutical Laboratories,

f] Ruston Rustam reported in PTC [Sup] [1] 175 SC

g] Ultra Tech reported in AIR 2012 [NOC] 54[Bom.]

h] Eenadu reported in 2011 [0] GLHEL-SC-49501

i] Bhagwandas reported in 2013 [53] PTC 287 Pel.]

j] K.G. Khosla Compressors Ltd. Vs. Khosla Extrakting Ltd. and Others, ]

k] Montari reported in 1996 [16] PTC 142 Pel.]

l] Kalpataru - N.M. No. 3320/2010 in Suit No. 2976/2010 [Bombay HC]

m] Whirlpool reported in 1996 [0] GLHEL-SC 18776

The list of the citations referred by the defendant is as under:

a] Skyline Education Institute (Pvt.) Ltd. Vs. S.L. Vaswani and Another,

b] The Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd.,

c] 543 WN Sharpe Ltd. Reported in Trade Mark, Trade Name & Passing off Cases, Volume 1

d] Indo-Pharma Pharmaceutical Works Ltd. Vs. Citadel Fine Pharmaceuticals Ltd.,

e] ITC Ltd. Reported in 2007 Law Suit [Bom.] 914

f] ITC Ltd. Reported in 2002 Law Suit [Bom.] 501

g] Glaxo Smithkline Consumer Healthcare Ltd. Reported in 2008 Law Suit [Cal.] 399

h] Ayushakti Ayurved P. Ltd., reported in 2003 [2] CTMR 206 [Bombay]

i] Vijay Kumar Ahuja reported in 2002 [1] CTMR 105 [Delhi]

j] Manish Vij reported in 2002 [CC3] GJX 0047 Del.

k] Hindustan Development Corporation Ltd. Vs. The Deputy Registrar of Trade Marks and Another,

l] Bisazza India Ltd. Reported in [2011] 162 CC 145 [Guj.]

m] Girnar Food and Beverages Pvt. Ltd., reported in 2001 [1] CTR 348 Delhi]

n] Godfrey Philips India Ltd. Reported [2005] 123 CC 334

o] Tee Cee Hosiery Works reported in 2004 [2] CTMR 272 Delhi

p] Dabur India Ltd. Vs. K.R. Industries,

q] Dhodha House Vs. S.K. Maingi,

r] Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Ltd. Vs. Mohan Meakin Breweries Limited,

s] Smithkline Frensh Laboratories Ltd., reported in 2001 [2] CTMR 375 Madras]

t] N. Khadervali Saheb (Dead) by LRs. and Another Vs. N. Gudu Sahib (Dead) and Others,

u] Bacha F. Guzdar Vs. Commissioner of Income Tax, Bombay,

v] Ashok Transport Agency Vs. Awadhesh Kumar and Another,

w] State of Uttar Pradesh and Others Vs. Ram Sukhi Devi,

x] State of U.P. Reported in 1995 Supp. [3] SCC 590

y] U.P. Junior Doctors'' Action Committee and Others Vs. Dr. B. Sheetal Nandwani and Others,

z] Horil Vs. Keshav and Another,

aa] Gomzi Active Vs. Reebok India Co. and Another,

bb] Bajaj Auto Limited Vs. TVS Motor Company Limited, .

All above judgments are dealing with all relevant issues concerning such litigation. However, at present we are concerned with prima-facie case only and, therefore, discussion of all such judgments would not be necessary at present. As already observed herein-above, when the word ACME is used by both the parties in absolutely different manner, at present only following two judgments are relevant.

In the case of Skyline Education Institute [I] Pvt. Ltd. [supra], Bench of three Judges of Hon''ble Apex Court has confirmed that there cannot be monopoly over particular word which is a general word and which is used by several companies. In such reported case, the word ''Skyline'' was used by 32 companies in Delhi and 117 companies all over the country and worldwide. So far as word ACME is concerned, the defendant has produced a list to show that there are as many as 370 companies in India only wherein the word ACME is used. Therefore, when the word ACME being neither invented nor specific word and when the defendant herein has also produced list of companies where such word is being used, this judgment is directly applicable to the present case. The Hon''ble Apex Court has also relied upon the decision in the case of Wander Ltd. and Another Vs. Antox India P. Ltd., as well as in the case of Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., . Therefore, when hundreds of companies are using the word ACME, it cannot be said at such interim stage that only plaintiff is entitled to use the word ACME and nobody else. Considering the decision in Bajaj Auto Ltd. [supra], it would be appropriate to balance the situation between both the parties at such interim stage. In such reported judgment, the Hon''ble Apex Court, instead of deciding the case at such interlocutory stage, directed the trial Court to dispose of the suit finally at an early date without going into the merits of the controversy. Therefore, present appeal is also required to be disposed of in the similar manner as it was done by the Hon''ble Apex Court in the case of Bajaj Auto Ltd. [supra] by following order.

The interim order of this Court as well as of the trial Court are vacated and substituted by the following directions:

I The defendant/respondent shall be entitled to sell its products but it shall maintain accurate records/accounts of its all-India and export sales.

II The trial Court shall forthwith appoint Receiver to whom the record of such sale shall be furnished every fortnight by the respondent/defendant and the same shall be signed and authenticated by a responsible officer of the defendant/respondent.

III Such report shall be filed before the trial Court regularly by such Receiver and copy of the same shall be provided to the plaintiff/appellant also.

IV The defendant/respondent shall submit sale records and accounts to the Receiver and the Receiver shall verify the same.

V This direction will continue till pendency of the suit. The remuneration of the Receiver shall be fixed by the trial Court.

It is made clear that no observations on the merits of the case are made herein and the trial Court shall decide the suit without being influenced by this order or any observation made herein.

The appeal is disposed of accordingly. Civil Application also stands disposed of.

Further Order:

After pronouncement of above order, Ld. Advocate Mr. Tejas Trivedi for Mr. YJ Trivedi, Ld. Counsel for the plaintiff/appellant has requested to stay the operation of this order, submitting that interim relief was continued for couple of years. Whereas, Mr. MP Prajapati, Ld. Advocate for the defendant/respondent has objected to continue the interim relief and further contended that the trial Court has decided the application at Exh. 5 on merits. However, considering the fact that interim relief was in operation for couple of years, the present judgment and order is stayed for a period of three weeks from today.