Disposafe Health And Life Care Ltd & Anr vs Rajiv Nath & Anr

,,,

YOGESH KHANNA, J.",,,

Since the above suits are cross cases filed by the parties against each other and the injunctions applications under Order XXXIX Rule 1 & 2 CPC,,,

in both suits as well as application under Order XXXIX Rule 4 CPC in CS (COMM) No.139/2018 have been argued, the pleadings in earlier suit are",,,

being taken up for disposal.,,,

Plaintiffs filed suit for permanent injunction for passing off the trademark DISPOSAFE saying the plaintiff is in business since the year 2013, though",,,

incorporated in the year 2007 and marketing its product under the name DISPOSAFE. Since the year 2013 the plaintiff No.1 is a member of,,,

Association of Indian Medical Devices Industry (hereinafter referred as AIMED) having its office at the address of the defendant No.1 and has,,,

extensively sold its product under the trade name and trademark DISPOSAFE and has a turnover of more than Rs.14.00 Crores.,,,

Admittedly, its trademark DISPOSAFE has not been registered as yet. On 17.02.2016 it came across the record of the Trademark Registry and",,,

found the defendant No.2 had applied for registration of trade mark DISPOSAFE vide application No.2654034 dated 03.01.2014 in Class 10 in respect,,,

of disposable syringes, needles, IV cannula etc â€" which application is still pending.",,,

The plaintiff alleges the DISPOSAFE of the defendant is identical and deceptively similar to the plaintiff corporate name Disposafe Health and Life,,,

Care Limited; DISPOSAFE Healthcare Private Limited; Disposafe for Healthy Life and DISPOSAFE Blood Lancets, hence the usage of the",,,

trademark DISPOSAFE by the defendant would amount to passing of the plaintiffs’ reputed trademark and tradename and it has also moved an,,,

application objecting to the impugned trademark/application of the defendant.,,,

The learned counsel for the plaintiff however submitted the plaintiff has no objection to the defendant’s using DISPOVAN and DISPOCANN,,,

but seek restraint from using DISPOSAFE only.,,,

The learned counsel for the plaintiff says he has been using mark DISPOSAFE since the year 2013 for a product which is a disposable medical,,,

device and has taken the word “DISPO†from such device and since this word is descriptive of a medical device hence its proprietary benefit,,,

cannot be claimed by the defendant. The plaintiff relied upon Caterpillar Inc. vs. Mehtab Ahmed & Ors. 2002 SCC Online Delhi 865 wherein the,,,

Court held:,,,

“10. The words or marks can broadly be divided into six categories. The first category of words is ""generic"". These words have dictionary meaning",,,

and are neither specific nor special. These words belong to genus. Generic name is name of genus which names the species. Such words are neither,,,

brand names nor have any protection by a registered trade mark. The words which are directly descriptive or quality of goods belong to second,,,

category. Such words are adjective expressing quality or attribute of an article or goods. These are neither patented nor proprietary names. These,,,

words are in common parlance known as laudatory epithets.â€​,,,

In Rhizome Distilleries P. Ltd. and Ors. vs. Pernod Ricard S.A. France and Ors. 166 (2010) DLT 12 the Court held:,,,

“24. It is our analysis that no exclusive or proprietary rights can be claimed by either of the parties before us in respect of the word IMPERIAL,,,

which is not only in common parlance to be found in every dictionary, but also is laudatory in nature as it alludes to royalty or grandeur. xxxxxxâ€​",,,

Further in Astrazeneca UK Limited vs. Orchid Chemicals & Pharmaceuticals Ltd. ILR (2007) I Delhi 874 the Court held:,,,

“21. In our considered opinion the facts of the said case are almost similar and squarely applicable to the facts of the present case.,,,

“Meropenem†is the molecule which is use for treatment of bacterial infections. In that view of the matter, the abbreviation “Merp†became",,,

a generic term, is publici juris and it is distinctive in nature. Consequently, the appellants/plaintiffs cannot claim exclusive right to the use of",,,

“Mero†as constituent of any trademark. The possibility of deception or confusion is also reduced practically to nil in view of the fact that the,,,

medicine is sold only on prescription by dealers. The common feature in both the competing marks i.e. “Mero†is only descriptive and publici juris,,,

and, therefore, the customers would tend to ignore the common feature and would pay more attention to the uncommon feature. xxxx â€​",,,

Further in Schering Corporation and Ors. vs. Alkem Laboratories Ltd. 2010(42) PTC 772 (Delhi) the Court held:,,,

“The two rival marks - ENERJEX' and - ENERJASE' contain the common feature - ENERJ' which is not only descriptive but also publici juris.,,,

Therefore a customer will tend to ignore the common feature and will pay more attention to uncommon features i.e Rs.JEX' and Rs.JASE'. These,,,

two cannot be said to have such phonetic similarity so as to make it objectionable. ―So the word Rs.ENERG/J' used as a prefix in both the trade,,,

names is the abbreviation of the generic term of the English word Rs.energy'. As such, it is descriptive in nature and common in usage. Nobody can",,,

claim an exclusive right to the use of the word Rs.ENERG/J' as the constituent of any trademark.â€​,,,

Further in J.R.Kapoor vs. Micronix India 1994 Supp (3) SCC 215 the Court held:,,,

“6. xxxx Even the boosters which he manufactures and sells are of two types, viz. transistorised boosters and Integrated Circuit boosters whereas",,,

the respondent- plaintiff manufacturers aerial boosters only of the first type. Thus micro-chip technology being the base of many of the products, the",,,

word 'micro' has much relevance in describing the products. Further, the word 'micro' being descriptive of the micro technology used for production of",,,

many electronic goods which dairy come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with",,,

the use of micro chip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with",,,

the use of electronic goods know fully well and are not only likely to be misguided or confused merely by, the prefix 'micro' in the trade name.",,,

xxxxxâ€​,,,

The learned counsel for the plaintiff then referred to the report of the Trademark Registry at pages no.107, 108 of the defendants documents in",,,

CS (COMM) 1494/2016 to show the trade mark of defendant have been open to various objections:,,,

“ Page 107,,,

The above mentioned application has been examined under the provisions of Trade Mark Act 1999 and Trade Mark Rules,2002 and the trade mark",,,

applied for is open to objection under the following sections:,,,

The trade marks-which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from",,,

those of another person; which consist exclusively of marks or indications which may serve m trade to designate the kind, quality, quantity, intended",,,

purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;",,,

The Trade Mark application is open to objection on relative grounds of refusal under Section 11 of the Act because the same/similar trade mark(s),,,

is/are already on record of the register for the same or similar goods/services. The detail of same/similar trademarks is enclosed herewith. Save as,,,

provided in Sec. 12, a trade mark shall not be registered if, because of-its identity with an earlier trade mark and similarity of goods or services",,,

covered by; the trade mark; or its similarity to an earlier trade mark ""and the identity or similarity of the goods or services covered by the trade mark.",,,

Hence, the above application is liable to be refused. Accordingly, you are requested to submit your response/submissions, if any, along-with supporting",,,

documents, within one Month from the date of receipt of this Examination Report or you may apply for a hearing. Please Note that if no reply is",,,

received or a request for a hearing is applied for within the above mentioned stipulated time, the said application shall be treated to have been",,,

abandoned for lack of prosecution under Section 132 of the Trade Marks Act,l999 and there after the status of application in the computer database",,,

shall reflect the factual position.,,,

It is argued by the plaintiff from the year 2013 till 2016 the plaintiff was a member AIMED of who’s the defendant was a Forum Co-ordinator,,,

and thus the defendant was fully aware of plaintiff’s producing the product under the mark DISPOSAFE and yet did not prefer to allege,,,

infringement for three years.,,,

On the other hand, the defendant has filed suit bearing No.CS(COMM)1494/2016 wherein it has pleaded the defendant is a leading manufacturer",,,

and trader of medical, surgical instruments and appliances, sold under various trademarks and is a proprietor of the trademark DISPOVAN and",,,

DISPOCANN and other DISPO formative marks, internationally as well as in India.",,,

The trademark DISPOVAN was registered in India on 15.07.1986 and mark DISPOCANN was registered in India since the year 2006. The,,,

defendant is rather aggrieved by the plaintiffs’ adoption and use of DISPOSAFE and DISPOCANN, being identical and/or deceptively similar to",,,

the prior registered trademark of the plaintiff. It is alleged the defendant has been selling its products in the USA, Europe, South East Asia and has",,,

seven plants in different locations in India and over 3500 employees.,,,

It is alleged by the defendant it is serving the medical profession with an affordable, world class medical devices and has first entered into the",,,

technical collaboration with Japanese Corporation to produce glass syringes in the year 1959 and thereafter started producing the other products and it,,,

later came up with USD 22.73 million worth state of the art manufacturing facility especially for manufacturing K1 Design Auto Disposable syringes.,,,

The detail of trademarks DISPO of the defendant companies in India are given in para No.11 of the plaint. Though its marks DISPOVAN and,,,

DISPOCANN are registered but application qua DISPOSAFE and DISPO are pending since 2013-14. The sale figures of the defendants product are,,,

given in para No.16 of its plaint in CS (COMM) No.1494/2016 and its advertisement expenses were Rs.166.77 Lacs in the year 2014-15. Hence the,,,

prayer of the defendant is also to the effect the plaintiff has infringed its registered trademark and has deliberately filed this suit, earlier in time,",,,

showing it’s a prior adopter / user of the trademark DISPOSAFE but whereas the defendant has been using DISPOVAN, DISPOCANN since",,,

the year 1986 and 2006 respectively and its application for DISPOSAFE and DISPO is rather pending since 2013-14 and it is the plaintiff who had,,,

infringed the trademark of the defendant by concealing the facts and has obtained an ex parte injunction on 24.02.2016 restraining the defendant from,,,

using the trademark DISPOSAFE. Rather the defendant alleges the plaintiff be restrained from infringing registered trademark DISPOCANN,",,,

DISPOVAN, DISPO, and other formative marks by using the same tradename or any other deceptively similar to the said registered trademarks,",,,

besides other reliefs.,,,

It is urged by the learned counsel for the defendant by using the trademark DISPOSAFE the plaintiff is likely to capitalize on the goodwill and,,,

reputation of the defendant and the user is likely to cause confusion in the minds of the public as if it’s the product of the defendant.,,,

Admittedly the mark DISPOCANN and DISPOVAN were registered since 1986/2007 respectively which fact has been concealed by the plaintiff,,,

in this suit, lest the plaintiff, may not have got an ex-parte injunction.",,,

The test of finding a mark being generic is if on the day when the mark was adopted whether it was general or if there were any other users at,,,

that time. As per the defendant - its company was formed in 1950’s and it started making glass syringes since then and in the year 1986 it started,,,

making Disposable syringes, hence adopted the name of DISPO.",,,

In Procter & Gamble Manufacturing (Tiajin) Co. Ltd. & Ors. vs. Anchor Health & Beauty Care Pvt. Ltd. FAO(OS) 241/2014 decided on,,,

30.05.2014 the Court found:,,,

“10. (xv) The feeling today, of the words ―ALLROUND PROTECTION being descriptive of toothpaste could perhaps be owing to the long",,,

usage thereof in relation to a toothpaste and may not have been so till it was first used in relation to toothpaste; the test, in our opinion, of descriptive is",,,

not of the day after long/repeated usage of some words in relation to a good or service, but of the day before such use; we are of the prima facie view",,,

that before the day of first use of the expression/words ―ALLROUND PROTECTIONǁ in relation to a toothpaste, the same could not have been",,,

said to be descriptive thereof.â€​,,,

Secondly where the plaintiff itself had applied for the trademark DISPOSAFE using the prefix DISPO then can he urge the said mark is generic?,,,

Rather plaintiff has filed seven applications for DISPO formative marks, hence cannot allege it is generic.",,,

In Automatic Electric Limited vs R.K.Dhawan & Another 1999 (19) PTC 81 (Delhi) this Court held:-,,,

“16. The defendants got their trade mark ""DIMMER DOT"" registered in Australia. The fact that the defendant itself has sought to claim trade",,,

proprietary right and monopoly in ""DIMMER DOT"", it does not lie in their mouth to say that the word ""DIMMER"" is a generic expression.â€​",,,

Here I would also like to quote the reply of defendant to objections dated 15.09.2014 of registry as under:,,,

“Page 109:,,,

Sr. No.,Trade Mark,No.,Status

1,DISPOFLON,2500221,Registered

2,DISPONEO ALPHA,2500219,Registered

3,DISPO WAY,2500217,Registered

4,DISPOWAY PLUS,2500216,Registered

DISPOCAN (No. 2569927); DISPOFLEX (No. 2569930), DISPOFLON (No. 2569926); DISPON (No. 2569928); DISPOWAY (No. 3933703) and",,,

DISPONEO (No. 2569929). The aforesaid establishes they are also attempting to secure rights over DISPO formative marks.,,,

The plaintiffs are relying on third party applications filed with the Trade Marks Registry for registration of DISPO formative marks, however, have",,,

failed to adduce any documents showing such marks are in use and whereas on the other hand the defendant has taken actions such as addressing,,,

cease & desist notices against entities found to be using DISPO formative marks or filed opposition proceedings against DISPO formative,,,

applications, as and when it has come to its knowledge.",,,

On account of defendant’s earliest registration for the mark DISPOVAN in India since the year 1986, DISPOCANN/ since 2006;",,,

registrations for the same internationally, use of the said marks in India as well as internationally in over 170 countries, its rights in the marks",,,

DISPOCAN/DISPOCANN and other DISPO formative marks stands established. In fact, it is a matter of record that in the trade/industry,",,,

defendant’s products under the mark DISPOVAN are referred as 'DISPO'. Documents in the form of purchase orders evidencing the same have,,,

been filed on record.,,,

In Godfrey Philips India Limited vs. Girnar Food & Beverages Pvt. Ltd. 2005(3) PTC 1, the Court held :",,,

“4. xxxxx A descriptive trade mark may be entitled to protection if it has assumed a secondary meaning which identifies it with a particular product,,,

or as being from a particular source. xxxxx â€​,,,

It is a settled law of intellectual property the ultimate reason which prevails with the Court in granting injunction i.e. of dishonesty and an attempt,,,

on the part of the defendant to ride on the goodwill of the plaintiffs, to steal the market created by the plaintiffs, to have a headstart from the place to",,,

which the plaintiffs have built the business, to pass off his/her/its goods or services as that of the plaintiffs, all obviously to the prejudice of the plaintiffs",,,

and amounting to cheating the patrons/consumers/customers of the plaintiffs and the public at large. No society governed by law will permit a,,,

defendant to do so. The message which this Court will be sending out if refuses injunction in a case as this is that it, embroiled in its legalese and",,,

technicalities of law as the defendant here has raised, is encouraging such deception in society and allowing hijacking of businesses which another has",,,

toiled to build. Such a message going out from the Court will kill entrepreneurship in the country, thereby spelling the doom for development. Even",,,

laws relating to tangible properties, as distinct from intellectual property have, been interpreted to protect titles in property, as long as acquired honestly",,,

and for consideration, even if imperfect per Sunil Mittal and Another vs Darzi On Call 2017 (70) PTC 346 (Delhi).",,,

Thus in the circumstances it is the plaintiff who has adopted the DISPO mark of the defendant who first started using this mark in the year 1986,,,

when it developed disposable syringes and thus it became a coined/invented word for the defendant in 1986 and plaintiff has no right to use such work.,,,

In the circumstances, the plaintiff’s IA No.2618/2018 under Order XXXIX Rule 1 & 2 CPC is dismissed. Consequently, IA No.8591/2018",,,

moved by defendant under Order XXXIX Rule 4 CPC is allowed and interim order dated 24.02.2016 passed in favour of the plaintiff stands vacated.,,,

However, this order shall be operative after four weeks from today.",,,

IA No.13849/2016 in CS (COMM)1494/2016,,,

This application is moved by the plaintiff under Order XXXIX Rule 1 & 2 CPC. It is well settled principle of law in case where all the three sine-,,,

quo-non for grant of interim injunction namely prima facie case; balance of convenience; and irreparable loss are made out in favour of the plaintiff,",,,

interim injunction should be granted against the defendants till the final disposal of suit on merits. Thus, the application is allowed in favour of the",,,

plaintiff.,,,

Accordingly, the defendants, its promoters, assignees, successors-in-interest, licensees, franchisees, partners, directors, representatives, servants,",,,

distributors, employees, agents, carrying and forwarding agents etc. are restrained from using the trade mark DISPOCAN and other DISPO",,,

formative marks identical/similar to plaintiffs trademarks DISPOCANN singularly or in conjunction with any other word or monogram/logo or label in,,,

any manner whatsoever upon and in relation to its products/services/business whether as a trade mark, service mark, trade name, corporate name,",,,

trading style or as website, domain name and e-mail address etc till the final disposal of this suit. This order shall be operative after four weeks from",,,

today.,,,

Needless to state that nothing observed herein above shall be construed as an opinion on the merits of respective case of either parties which they,,,

shall require to prove during trial.,,,

CS(COMM) 139/2016; and CS(COMM) 1494/2016,,,

List before Roster Bench on 29.01.2019.,,,