HAB Pharmaceuticals and Research Ltd. and Another vs Pramo Life Science

S.C. Dharmadhikari, J.—The Plaintiffs are two Companies both incorporated and registered under the Indian Companies Act, 1956 having their Registered Office at the addressed mentioned in the title.

It is stated that the Defendant is also a Company incorporated under the Indian Companies Act, 1956. It is stated that the Second Plaintiff is a sister concern of the First Plaintiff and both are engaged in the business of manufacture and marketing of medicinal and pharmaceutical preparations. The manufacturing activity is undertaken by Plaintiff No. 1.

In paragraph 2 of the plaint it is stated that the exact constitution of the Defendant is not known. However, at the same time it is asserted that it is a sole proprietary firm engaged in and carrying on business interalia as manufacturer and/or dealer and/or exporter of pharmaceutical preparations.

The present Suit is filed alleging infringement of registered copy right of the Plaintiff. The copy right is claimed in the packaging of the product ''VEGA 100'' or ''VEGAH 100''. It is stated that the Plaintiffs'' products are sold in Cartons and/or blister pack. The Suit is filed alleging infringement of the First Plaintiffs'' registered trade mark ''VEGAH''. The Suit is also filed alleging infringement of Plaintiff No. 2''s registered trade mark "SIGNATURE". The other relief claimed in the Suit is to restrain the Defendant from passing off their goods as that of the Plaintiffs. There is a claim for damages and incidental and consequential reliefs are also sought by the Plaintiffs.

It is claimed that the Plaintiffs are leading producers of medicinal and pharmaceutical preparations and substances. It is stated that the Plaintiffs have been continuously striving and endeavouring to introduce new and efficacious medicinal preparations for the treatment of various ailments and disorders. The Plaintiffs'' range of medicinal and pharmaceutical preparations, especially of Male Erectile Dysfunction products, is widest in the country.

In paragraph 5 of the plaint, the Plaintiffs allege thus:

The Plaintiffs state that in/or about the year 2001, the Plaintiff No. 1, adopted and commenced marketing of sildenafil citrate tablets for the treatment of the Male Erectile Dysfunction under the trade mark "VEGA" and in/or about the year 2002 Plaintiff No. 1 adopted and commenced marketing sildenafil citrate tablets for the treatment of the Male Erectile Dysfunction under the Trade mark "VEGAH", Since the date of adoption, the same have been in continuous use on an extensive and growing scale. The Plaintiffs state that since long the Plaintiffs have been marketing sildenafil citrate tablets under the trade mark "VEGA" and/or "VEGAH" written in special and particular manner on a blister pack having distinctive and original artistic work, colour scheme, design, lay out and get up. The said "VEGA 100" and "VEGAH 100" blister pack are essentially of yellow colour with the front panel bearing the Plaintiff No. 1''s trade mark "VEGA" or trade mark "VEGAH" respectively represented in Red colour against yellow background. The said front panels also predominantly comprises of picture of space rocket shown as if it is going in the upward direction. The said front panel also comprises of words like "Rx Sildenafil Citrate Tablets" written on the top of the Plaintiffs mark VEGA/VEGAH. At the left bottom of the blister pack, Plaintiff No. 2''s mark "Signature Pharmaceuticals Limited" is depicted in a stylized manner in red colour against the yellow background. It is pertinent to mention herein that the Plaintiff No. 2''s mark "Signature" has been continuously and consistently used on the said blister pack, since 4th September 2002. It is also mentioned that Plaintiff No. 2 is marketer of the said tablets manufactured by Plaintiff No. 1. The front panel of the blister pack is used to give the information about the composition, manufacturer and marketer and information about the manufacturing date, expiry date, etc. Hereto annexed and marked as Exhibit "A" and "A1" are specimens of VEGA 100, VEGAH 100 Blister packs thereof described hereinabove respectively. The Plaintiff No. 1 stated that the said "VEGA 100, "VEGAH 100" blister packs thereof were designed by one Mr. Kishore Mathkar of M/s. Graphique Zone, 6/A, Mehendale Building, 203/233, V.P. Road, Girgaon, Mumbai-400 004 for and on behalf of Mr. Sanjiv Garg and hence the ownership of copyrights in the said cartons were duly transferred in favour of Mr. Sanjiv Garg. The said Mr. Sanjiv Garg, who is one of the Directors in the Plaintiff No. 1 Company, has initially licensed and/or permitted Plaintiff No. 1 to use the said cartons for marketing their sildenafil citrate tables and thereafter, vide Deed of Assignment dated 30th January 2007, assigned all the rights in the said cartons and blister packs to Plaintiff No. 1. Plaintiff No. 1 states that the Plaintiff being lawful assignee of the rights in the blister pack annexed as Exhibit ''A'' and Exhibit ''A1'' hereto no one else is entitled to use, reproduce and/or cause to use or reproduce the said artistic work contained in blister pack and/or any work/mark/label which is substantially similar or colourably similar or an obvious imitation to the artistic work contained in the said blister pack being Exhibit ''A'' and ''A1'' hereto in any manner whatsoever without obtaining prior written permission, license and/or consent in that behalf from Plaintiff No. 1. Hereto annexed and marked as Exhibit ''B'' is a copy of the said Deed of Assignment between Mr. Sanjiv Garg r and Plaintiff No. 1, dated 30th January 2007. The Plaintiff No. 1 states that Plaintiff No. 1 is the owner of the copyright in the said blister pack being Exhibit ''A'' and ''A1'' hereto. The Plaintiffs craves leave to refer to and reply upon the Extracts of the Register of copyrights, when produced.

In paragraph 6 of the plaint, the Plaintiffs have stated that the First Plaintiff is the registered proprietor of the trade mark consisting of the word "VEGAH" since 24th April 2002 and copy of the certificates are annexed as Annexures ''C'' and ''C-1'' to the plaint.

It is stated that the Second Plaintiff is the registered proprietor of the trade mark consisting of the word "SIGNATURE" since 4th September 2002 annexed as Annexure ''C-2'' is a copy of the said certificate.

It is stated that though Plaintiff No. 1 has started using the mark "VEGA" since 2001, both Plaintiffs have started simultaneous use of the marks referred to above on their product/package more particularly depicted at annexure ''A'' and ''A-1'' to the plaint. These activities are going on from 2002. The Plaintiffs are sister concerns having common Directors and Shareholders. They have permitted each other to use the said marks on the Blister Packs without any payment of royalty. It is stated that the present Suit is filed jointly because on account of continuous, extensive sale of the preparation, the marks and the colour scheme, get up have come to be recognized as that of the Plaintiffs alone. The Plaintiffs have acquired goodwill and reputation. They have stated that the blister packet, the design, denote to the trade and public that the said "Sildenafil Citrate Tablets" are of the Plaintiffs alone and none else.

The products are pharmaceutical products. They are manufactured in accordance with the required degree of safety, standard and quality. Tremendous care and caution has been exercised while manufacturing the tablets and other pharmaceutical preparations. The products have been a run away success within a short period of introduction. The demand for the said Tablets grew rapidly and continues to grow consistently not only in India but all over the world. The amount of sales of the tablets under the marks as demonstrated by annexures ''D'' and ''D-1'' would go to show that on account of the efforts of the Plaintiffs, their tablets have acquired enormous reputation not only in India but internationally. The sales promotion efforts are referred to in paragraph 11.

In paragraph 12 of the plaint, it is stated the products/tablets are sold under the said blister pack all over the country through a wide network of dealers, distributors, stockist and chemists and even exported to several countries from India. The pharmaceutical preparations are immensely popular.

In paragraph 13 an 14 of the plaint, this is what is alleged by the Plaintiffs

The Plaintiffs state that recently in the 2nd week of March 2009 through the employees in the Sales Department, it has come to the Plaintiffs'' attention that the Defendant has commenced manufacturing, marketing and selling a similar pharmaceutical preparation i.e. sildenafil citrate tablets with the identical and/or visually, phonetically and structurally similar Trade Mark ''PRAMO VEGA''. The same is also sold in the deceptively/confusingly similar blister pack. The said mark Pramo Vega used by the Defendant is deceptively similar to the Plaintiff No. 1''s registered trade mark ''VEGAH''. The blister pack, which the Defendant has used, is also essentially of yellow colour with the front panel bearing the mark "PRAMO VEGA" represented in Red colour against yellow background. The said front also similarly comprises of picture of space rocket shown as if it is going in the upward direction. The said front panel of the Defendant''s blister pack also comprises of words like "Rx Sildenafil Citrate Tablets" written on top of the alleged mark "PRAMO VEGA". The bottom of the Defendant''s impugned Blister pack comprise of deceptively similar mark "SIGNOUR", which is deceptively/confusingly similar to Plaintiff No. 2''s Registered Mark "SIGNATURE". The right side of Blister pack is used to give information about the manufacturing date, expiry date etc. Hereto annexed and marked as Exhibit "E" is a colour photocopy of the specimen of the Defendant''s Blister Pack "PRAMO VEGA 100". The impugned goods are stated to be manufactured by the Defendant on the said blister pack of the Defendant.

Table showing the vis-a-vis comparison between the Plaintiffs'' Carton/Blister pack and Defendant''s impugned Blister pack. Plaintiffs'' Copyrighted VEGA/VEGAH 100 blister pack Defendants'' impugned Pramo VEGA 100 blister pack.

Mark The Blister pack bears the mark VEGA/VEGAH and Signature,

Mark The Blister pack the mark PRAMO VEGA and Signour written in identical manner,

Colour The Blister pack is essentially of yellow colour with the front panel bearing the trade mark "VEGA" and/or "VEGAH" represented in Red Colour against yellow background.

Colour The Blister pack is also essentially of yellow colour with the front panel bearing the trade mark "PRAMO VEGA" represented in Red colour against yellow background.

Artistic work The front panels comprises of picture of ''Space rocket'' shown as if it is going in the upward direction.

Artistic work The said frond panels also similarly comprises of picture of ''space rocket'' shown as if it is going in the upward direction.

Top The front panel of the Plaintiffs Blister Pack comprises of words "Rx Sildenafil Citrate Tablets" written on the top of the Plaintiffs'' Marks in a typical manner.

Top The front panel of the Defendant''s Blister Pack comprises of words "Rx Sildenafil Citrate Tablets" written on the top of the Defendant''s Mark in a same typical manner.

Bottom of the blister pack On bottom of the Blister pack the Plaintiff Registered mark "Signature" written is artistic manner in red colour.

Bottom of the blister pack On bottom of the Blister pack the Defendant''s written "Signour" written is artistic manner in red colour which k deceptively similar to Plaintiff No. 2 Registered Mark "Signature".

In these circumstances, it is alleged that the Defendants blister pack is substantially similar and/or colourably similar to the Plaintiffs pack. The said blister pack bears the design, lay out, get up, schematic arrangement of various features and colour scheme, which are confusingly similar. The Defendants have imitated the blister pack of the Plaintiffs.

Thereafter, it is alleged that in the year 2008, the First Plaintiff filed a Suit being Suit No. 2483 of 2008 in this Court against one S.P.B. Pharma. In this case, this Court appointed Court Receiver to seize the products bearing the mark "VEGAH" and/or similar artistic work as shown at annexures ''A'' and ''A-1'' to the plaint in the present Suit. The Court Receiver has seizeded the product bearing the mark "VEGA" from said S.P.B. Pharma. As per information received from the said S.P.B. Pharma, documents pertaining to the mark "VEGA" were seized from one PRAMO LIFE SCIENCE" situate at Saki Naka, Mumbai. It is stated that prima-facie the said PRAMO LIVE SCIENCE and the Defendants to this Suit are one and the same. The Plaintiffs being unaware of the link between two concerns have chosen to file a separate Suit. They are also proceeding in contempt against PRAMO LIFE SCIENCE for willful breach and violation of the order passed in the aforementioned Suit.

Alleging thus, it is contended that by manufacturing the selling and/or offering for sale, the pharmaceutical preparations under deceptively similar mark "PRAMO VEGA" and "SIGNOUR" packed in similar blister pack, the Defendant is violating the Plaintiffs'' valuable, intellectual and intangible proprietary rights in their registered trade marks "VEGA". "VEGAH" and "SIGNATURE". These are the averments in paragraphs 17 to 27 of the plaint.

In paragraph 28 it is alleged that there is no delay in approaching the Court as the Plaintiffs have recently learnt about the impugned goods being sold by the Defendant. It is, in these circumstances, that the Suit has been filed by the Plaintiffs in this Court on 25th March 2009.

A Notice of Motion has been moved claiming interim injunction so as to prohibit and prevent the infringement of the copyright, registered trade mark and passing off.

The Motion is supported by an affidavit of one Sanjiv Surajbhan Garg. He is Director of Plaintiff No. 1.

He has reiterated the plaint averments and has stated more particularly in paragraph 6 that the Plaintiffs'' products/tablets are for treating Male Erectile Dysfunction. The packaging is distinct and special. The blister pack is especially of yellow colour with the front panel bearing Plaintiff No. 1''s trade mark represented in red colour against yellow background. The said front panel also predominantly comprises of picture of space rocket shown as if it is going in the upward direction. The front panel also comprises of words "Rx Sildenafil Citrate Tablets" written on the top of the Plaintiffs'' mark. At the left bottom of the blister packet, Plaintiff No. 2''s mark "SIGNATURE" Pharmaceutical Limited is depicted in a slant manner in red colour against the yellow background. All this has been in continuous use since 4th September 2002. The blister packs were designed by one Kishore Mathkar for M/s. Graphique Zone having his office at Girgaon, Mumbai for and on behalf of Mr. Sanjiv Garg. The ownership of the copyright in Cartons was duly transferred in favour of Mr. Garg. The said Garg is one of the Directors of Plaintiff No. 1. He initially permitted Plaintiff No. 1 to use their Cartons for marketing their Sildenafil Citrate Tablets and thereafter, by a Deed of Assignment dated 30th January 2007, assigned all the rights in the said Cartons and blister pack to Plaintiff No. 1. Thus, the Plaintiffs are lawfully Assignees of all rights in the blister pack.

Thereafter, pointing out the infringement and acts of passing off that the deponent supports the claim for interim relief.

On being served with the plaint and the Motion so also the Annexures thereto, an affidavit has been filed by Mr. Pramod Singh, claiming to be the proprietor of "PRAMO LIFE SCIENCE" - Defendant above-named. He has stated that the Carton and blister pack of PRAMO VEGA 100 is entirely distinct from that of VEGA 100 or VEGAH. He has contended that the Plaintiffs have no right to file the Suit as the Defendant is selling PRAMO VEGA 100 under his own trade mark. It has a distinct identity in the market. Further, it is contended that there are numerous manufactures of the subject medicine with substantial sales. In paragraph 6 of the affidavit, it is stated by the Defendant that search was taken from the Trade Mark Registry which reveals numerous manufacturers but the details do not show that the First Plaintiff is the registered trade mark owner of "VEGA". It is stated that the mark with the word "VEGA" is registered trade mark of Vega Pharmaceutical Pvt. Ltd. who had applied for registration of the trade mark on 23rd December 1998. Further, Dr. Reddys laboratory is using trade mark "VEGAZ" since year 2000 and are registered trade mark owners. Further, it is contended that one VEE Excel Drugs and Pharmaceuticals (P) Ltd. are owners of the trade mark VEGA ASIA. Plaintiff No. 1 had applied for registration of VEGA 50 which is opposed. Further, one Endolabs Limited are owners of VEGA tablets, Plaintiff No. 1 has applied for VEGA 100 (DEVICE) which is also opposed and similarly, Plaintiff No. 1''s registration VEGA Label is also opposed.

It is then contended that it is false that one Kishore Mathkar had designed the blister packs of VEGA 100 and VEGAH or that Mr. Sanjiv Garg is the owner of the design and has assigned all rights in cartons and blister packs in favour of the Plaintiffs. It is stated that the Deed of Assignment is dated 30th January 2007 and it falsifies the claim of the Plaintiffs that they are in use of Cartons and blister packs.

In paragraph 10 of the affidavit it is stated that the Defendant has sold and exported Sildenafil Citrate Tablets since year 2008 under the trade mark PRAMO VEGA 50, PRAMO VEGA 100 and PRAMO VEGA 120. The sales are worth Rs. 80 lakhs approximately in the year 2008-2009 and Rs. 244 lakh approximately in the year 2009-2010. Thus, the sales are growing and they are increasing on account of superior quality and efforts of the Defendants. Further, the Defendant has established these marks in the export market. On the other hand, the Plaintiffs have no sale or negligible sales since no data for subsequent years (after 2005-2006) is produced by the Plaintiffs.

It is stated that the product PRAMO VEGA, rocket and SIGNOUR has no similarity with VEGA or VEGAH, signature and rocket of the Plaintiffs. The Defendant has applied for registration of PRAMO VEGA 100 and in the year 2009 for the registration of the SIGNOUR and Rocket. The proprietor code has been issued by the trade mark registry. Further, colour of the blister packaging of PRAMO VEGA 200 is entirely different from the colour of the Plaintiffs. Even though, proprietor code has been issued to the Defendant, he has changed the design of Rocket and used the words NIGHT RIDER in place of SIGNOUR. The colour printing of blister foil is distinct from the printing of the Plaintiffs. He states that PVC film i.e. back side of the packaging is with star in blue colour and tablet was of dark blue colour. Thus, the Plaintiffs'' packaging and Defendant''s packaging are entirely distinct from each other and there is no similarity between the two. Due to the marketing efforts and quality of the product of the Defendants it is established in the market. PRAMO VEGA 100 is prescribed by the Doctors and is not meant for sale across the counter. The Plaintiffs are trying to snatch away the market of the Defendant by making false statement and claim. The Defendant has annexed as Annexures ''B'' and ''C'' the figures of sales for the aforementioned years and copies of the packages. He has also annexed the copy of the outer carton of VEGA 100 of the Plaintiff. It is stated by him that PRAMO VEGA 100 is sold with outer carton having specific design. The copy right for all designs on outer carton are applied for and it is in the process of registration. The outer carton is of black colour with Arabic write up. Further, PRAMO VEGA 100 is sold with outer carton having single strip only. The strip without carton is not sold.

Finally, it is contended that the design, lay out, get up schematic arrangement of various features and colour scheme are not confusing but entirely different. Once, sildenafil citrate tablets are dispensed/sold by the Chemist and Doctors and there are numerous brands having formula of sildenafil citrate tablets and same are being sold with brand names, then, the Plaintiffs'' attempt to restrain the Defendant from selling the said tablets under his brand name should not be encouraged as the Suit is filed with ulterior motive to grab the market.

For all these reasons, it is stated that the Motion be dismissed.

In answer to the affidavit in reply filed on 12th September 2009, a rejoinder affidavit has been filed by the Plaintiffs. The Plaintiffs have reiterated the plaint averments and have also relied upon orders passed in several Suits instituted by them for protection of their marks. In paragraph 3 of the affidavit in rejoinder, the Plaintiffs have pointed out that their adoption and user of the mark VEGA and VEGAH is prior than that of the Defendant. The Plaintiff No. 1 enjoys copy right ownership in relation to the blister pack and statutory and common law rights in the marks VEGA and VEGAH and SIGNATURE and cartons thereof. It is stated that one "Vega Pharmaceuticals Private Limited, a company based in Tamilnadu is the first adopter of the user of the mark VEGA as a Company name. The said Company has also applied the registration of the mark VEGA and the said mark is registered vide Registration No. 732414. This fact is admitted by the Defendant in his reply. Vega Pharmaceuticals Private Limited by a Deed of Assignment dated 27th April 2004 assigned all their rights, titles and goodwill in the mark VEGA to one "Aurochem Pharmaceuticals (I) Private Limited" a Company based in Mumbai. Aurochem is the owner of the mark VEGA on and from the date of Deed of Assignment. Thus, VEGA PRAMO have assigned all their rights in favour of Aurochem Pharmaceuticals (I) Pvt. Ltd. and in turn, in favour of the Plaintiffs vide a Deed of Cross Licensing dated 7th November 2007 with Aurochem Pharmaceuticals (I) Pvt. Ltd. A copy of the Deed of Cross Licensing is annexed as Annexure ''E'' to the affidavit in rejoinder. By virtue of this Deed, Plaintiff No. 1 can also claim user since 1996. At the time of the filing of the Suit, this fact is not brought on record as the Plaintiff is claiming the rights through the Plaintiffs own registered trade mark VEGAH, use of mark VEGA since 2001 and not through the Deed of Cross License. Further, Plaintiff No. 1 is also a registered proprietor of the mark VEGAH vide registration No. 1098288 in class 5 with effect from 24th April 2002.

It is on this basis that the claim of prior adoption and user is raised by the Plaintiffs. It is then urged that although the mark VEGAZ is registered in the name of Dr. Reddys and the mark VEGA is registered in the name of "Endolabs Limited" no Suit is instituted against the said parties due to Section 28(3) of the Trade Marks Act, 1999. The Defendant is also infringing the rights of these registered proprietors. Further, Dr. Reddys Laboratory or M/s. Endolabs are not causing any monetary or intangible damage and hence, no Suit is filed against them. As regards "Vee Excel Drugs and Pharmaceuticals Pvt. Ltd. is concerned, Plaintiff No. 1 has already filed an application for cancellation of the registration for the mark VEGA ASIA in the year 2005 and the same is pending before Intellectual Property Appellate Board, Chennai. That apart, the Defendant is a recent entrant. It has entered the market in November 2008. It has not build any reputation and/or goodwill for the mark PRAMO VEGA much less independent to that of Plaintiffs'' mark VEGA/VEGAH. In any event, there is an infringement of the Plaintiffs'' copyright. It is pertinent to note that the Defendant has started selling sildenafil citrate tables under deceptively similar mark PRAMO VEGA and blister pack thereof only after the order in Notice of Motion No. 2834 of2008. Prior to the adoption of the mark PRAMO VEGA and SIGNOUR and blister pack thereof, the Defendant has copied the blister pack of the Plaintiffs'' completely. There are certain inconsequential changes made a in marks VEGA and SIGNTURE by using PRAMO VEGA and SIGNOUR. However, the entire blister pack is designed in such a manner so as to create deception in the minds of gullible consumers with imperfect recollection. In such circumstances, the injunction as prayed should be granted. More particularly, when the Plaintiffs do not have any objection to outer carton except the mark PRAMO VEGA. The Defendants have pointed out that even the new blister pack prima-facie appears to be similar to that of the Plaintiffs. It is pertinent to mention that new blister pack also comprises the picture of the Rocket. Thus, the attempt is to come as close as possible with the mark of the Plaintiffs and its packaging. The product is identical. It is also contended that the Defendant''s mark PRAMO VEGA is advertised before acceptance by the Registry vide Journal dated 1423 on 1st September 2009. Any interested person can file opposition to the said trade mark upto 1st December 2009. Plaintiff No. 1 will take appropriate steps to file the opposition within the prescribed time. In paragraph 3 (xvii) the Plaintiffs have set out the cause by which their application for urgent ad-interim reliefs was delayed.

It is on the basis of this material and considering that the affidavit in reply and rejoinder have been filed, that the Notice of Motion was heard finally with consent of parties.

Mr. Kirpekar, Learned Counsel appearing on behalf of the Plaintiffs invited my attention to the averments in the plaint and the annexures thereto. He also took me through the reply affidavit and the annexures thereto. He invited my attention to the rejoinder of the Plaintiffs and contended that the product is a medicinal and pharmaceutical preparation. It is a Schedule ''H'' Drug. He submits that the undisputed facts are that the tablets sold by both Plaintiffs and Defendant are identical. This is a drug prescribed for treating Male Erectile dysfunction. He submits that there are no denials of the basic averments in the plaint. Further, he invites my attention to the averments and statements in the plaint and the affidavit in support with regard to the user of the mark VEGA by Plaintiff No. 1. It is contended that Plaintiff No. 1 is the Registered Proprietor of the trade mark consisting of the word VEGAH. He submits that Plaintiff No. 2 is the Registered Proprietor of the trade mark consisting the word "Signature. The registration is valid, subsisting and in force. Further, as far as the mark VEGA is concerned, there is no denial of the fact that the Plaintiffs are using the same since 2001. On the basis of prior adoption and user, it is clear that the interim reliefs claimed should be granted so as to protect the marks in question.

Mr. Kirpekar has invited my attention to annexure ''A'' to the plaint and has submitted that the get up, design and colour scheme of the Plaintiffs'' product is distinct. The tablet VEGA 100 and VEGAH 100 are both marketed by Plaintiff No. 2. He has invited my attention to the Deed of Assignment and had contended that the same is between Mr. Sanjiv Garg and Plaintiff No. 1. It is stated by the said Garg claims to be the assignor and/or owner of the copy right of the artistic word VEGA 100. Though there is a registration under the Copy Right Act in favour of the said Garg, he can assign the same and has therefore, assigned it in favour of Plaintiff No. 1.

As far as Plaintiff No. 1 is concerned, it has applied for and has been granted registration under Trade Marks Act, 1999 in class 5 under No. 1098288 as of 24th April 2002 with regard to VEGAH tablets. My attention is also invited by Mr. Kirpekar to the certificate in favour of Plaintiff No. 2 with regard to the goods falling under class 5 and this registration is of 4th September 2002. Mr. Kirpekar has, then, invited my attention to the colour scheme, design, lay out and get up of the Defendant''s product PRAMO VEGA 100 and has contended that it is nothing but a copy of the Plaintiffs'' products. The manner in which the words are written, the place at which the Rocket sign is drawn and the placement of the word "SIGNATURE" and "SIGNOUR" is identical. As far as the products are concerned, their identity is enough to grant the reliefs claimed. As far as the mark VEGA is concerned, Mr. Kirpekar has invited my attention to the rejoinder affidavit and has contended that the Plaintiff has adopted and used the mark VEGA pricr to the Defendant and therefore, they are entitled to protection, more particularly, when the Defendant is recent entrant to the market. The Defendant has been associated with S.P.B. Pharma against whom an order of injunction has been claimed by the Plaintiffs in a distinct Suit. Even a Court Receiver has been appointed in that Suit by this Court and to get over the orders of the Court that the mark PRAMO VEGA has been adopted. In such circumstances, the injunction as prayed be granted. Mr. Kirpekar has relied upon several orders passed by this Court and has contended that all these orders are in relation to the same product and in matters involving identical controversy.

On the other hand, Mr. Tulzapurkar, learned Senior Counsel appearing on behalf of the Defendant contended that the Plaintiffs do not have any right to file the Suit. He submits that there are numerous manufactures of the medicines in question. Further, there is no infringement of the copy right VEGA 100 or VEGAH 100 or trade mark SIGNOUR as alleged. The carton and blister pack of PRAMO VEGA 100 is entirely distinct from that of VEGA 100 or VEGAH. The Defendant has specifically denied that Plaintiff No. 1 adopted in or about year 2001 and commenced marketing of sildenafil citrate tablet under trade mark VEGA and in or about year 2002, the mark VEGAH. The search of the trade marks registry reveals names of numerous manufacturers. VEGA is registered trade mark of some other company. In such circumstances, there cannot be any question of infringement of the trade marks or passing off. In any event, the Defendant has firmly established itself in the market whereas the Plaintiffs have no or negligible sales. Thus, the marks have no similarity so also the packaging. In any event, the design of Rocket has been changed and even the words "NIGHT RIDER" now replace the term "SIGNOUR". The colour printing of blister foils is distinct from the printing of the Plaintiffs as explained in paragraph 13 of the reply. For these reasons, the interim injunction as claimed should not be granted. He has pointed out that the tablets are sold in the market openly and as far as the Defendant''s product is concerned, it is explained in the affidavit in reply that PRAMO VEGA 100 is not sold locally. The dis-similarities and distinguishing features are pointed out on affidavit and therefore, interim reliefs as prayed should not be granted.

For properly appreciating these contentions, firstly, it would be necessary to note that the Plaintiffs have approached this Court urging that they are in the business of manufacturing of pharmaceutical preparations and substances for past many years. They are sister concerns. Plaintiff No. 1 claims to have a copy right in the blister packaging and the packaging which is more particularly described in the plaint. Further, Plaintiff No. 1 also claims to have a registration of the mark VEGAH in its favour. Plaintiff No. 2''s registered trade mark is "SIGNATURE".

Plaintiff No. 1 claims that in or about the year 2001 it adopted and commenced marketing of sildenafil citrate tablets under the trade mark VEGA and in or about the year 2002, Plaintiff No. 2 adopted and commenced marketing sildenafil citrate tablets under the trade mark VEGAH. They claim that the packaging of the products as demonstrated by Annexures ''A'' and ''A-1'' to the plaint is unique to that of the Plaintiffs. The packaging has been designed by one Kishore Mathkar for and on behalf of Mr. Sanjiv Garg. Said Sanjiv Garg is one of the Directors of Plaintiff No. 1 and he initially licensed and/or permitted Plaintiff No. 1 to use the carton for marketing their tablets and thereafter, executed a Deed of Assignment in their favour.

It is pertinent to note that the Plaintiffs are not claiming to have a registration of the mark VEGA in their favour. They claimed to be registered proprietor of the trade mark VEGAH since 24th April 2002 as evidenced by Annexure ''C''. Further, they claimed to be registered proprietor of the trade mark consisting of the word "SIGNATURE", since 4th September 2002 as evidenced by Annexure ''C-2'' to the plaint.

In paragraph 13 of the plaint which is reproduced above, the Plaintiffs have stated that they came to know through their employees that the Defendant has commenced manufacturing, marketing and selling a similar pharmaceutical preparation with identical and/or visually, phonetically and structurally similar trade mark PRAMO VEGA. The features of the Plaintiffs copy righted material and that of the Defendant is pointed out in paragraph 14 and hence, it is contended that the Defendant''s blister back is substantially similar and/or colourably similar to the Plaintiffs blister pack. The design, lay out, get up, schematic arrangement of various features and colour are similar. Further, it is asserted that a Suit being Suit No. 2483 of 2008 was filed against one S.P.B. Pharma and the said Suit was in relation to the same product. The Court Receiver, High Court, Bombay was appointed by this Court in this Suit with power to seize the product bearing the mark VE GA from S.P.B. Pharma''s premises. As per information received from the said S.P.B. Pharma, the Court Receiver also seized documents pertaining to the mark VEGA situated at Saki Naka, Mumbai. The address of the Defendant mentioned in cause title is that of Saki Vihar Road, Andheri (East), Mumbai. That is the address mentioned by the Defendant in the affidavit in reply as well. The Defendant claims to be the sole proprietor of the PRAMO LIFE SICENCE and it is the case of the Plaintiffs that S.P.B. Pharma and PRAMO LIFE SCIENCE prima-facie appears to be one and the same. However, no details regarding the commencement of business, acquisition of permissions and licences for the sole proprietorship are set out.

With regard to paragraph 16 of the plaint and paragraph 17 of the affidavit in support, all that the Defendant has stated in the reply is that the sale is a matter of record and he will deal with it at the time of hearing. None of the averments in the plaint with regard to S.P.B. Pharma so also the statements in the affidavit in support as far as seizure of the products are denied by the Defendant. The Defendant seems to be relying upon the fact that he is entitled to use the words PRAMO VEGA and PRAMO VEGA 100 in relation to his product/goods as there are several manufacturers using the mark VEGA in the field. He, therefore, claims that there is no infringement of the mark VEGA.

At the outset, it must be stated that the Plaintiffs are not at all asserting their rights on the basis that the mark VEGA is owned by them or that they are registered proprietors thereof. While dealing with the statements in the affidavit in reply and more particularly, paragraph 6 thereof, the Plaintiffs in the rejoinder have clarified that they have adopted and used the mark VEGA and VEGAH prior to that of the Defendant. In addition, they have relied upon the fact that they are registered proprietors of the mark VEGAH. As far as VEGA is concerned, the Plaintiffs have relief upon a Deed of Cross Licensing dated 7th November 2007 executed by one Aurochem Pharmaceutical (I) Pvt. Ltd. but further stated that they are not claiming rights on the basis of this Deed. The Suit claim is based upon the Plaintiffs own registered trade mark VEGAH user of the mark VEGA since 2001.

The Plaintiffs appear to be right in their contentions inasmuch as the Defendant claims to be exporting the tablets since year 2008 under the trade mark PRAMO VEGA 50, PRAMO VEGA 100 and PRAMO VEGA 120. However, the Plaintiffs are alleging that the Defendant has copied the material on the packaging of their Plaintiffs and he is marketing and selling so also distributing his product in a package which is identical to that of the Plaintiffs. This has caused confusion and since the products are pharmaceutical and medicinal, this Court should take a strict view of the matter and should not permit infringement of the copy right in favour of Plaintiff No. 1 and Plaintiff No. 2.

At the outset, I must clarify that I am not proceeding at this prima-facie stage on the basis that the Plaintiffs have any registration of the mark VEGA in their favour. I am proceeding on the basis of their claim that in so far as this mark is concerned, they have adopted and used it prior to the Defendant. In this behalf, the Plaintiffs have pointed out that since 2001 they have been using the mark VEGA. As far as the Defendant is concerned, apart from bare denials what has been alleged is that there are several manufacturers using this mark. However, the Defendant himself in paragraph 10 and 13 of the affidavit in reply states that he is exporting the tablets since the year 2008. He has claimed user by producing statement of sales in relation to the years 2008-2009 and 2009-2010. Additionally, he claims to have applied for registration of PRAMO VEGA 100 in the year 2008. He has also stated that he applied for registration of the word mark SIGNOUR in the year 2009 and proprietary codes have been issued to him. Prima-facie, therefore, the Plaintiffs have substantiated their case of prior user and adoption of the mark VEGA. From the plaint averments and the annexures thereto, so also the clear assertions in the affidavit in support of the motion, it is apparent to me that the Plaintiffs have demonstrated that they are prior users and have adopted the mark VEGA since 2001.

As far as VEGAH is concerned, Plaintiff No. 1 claims to be the registered k proprietor as evidenced by the certificate annexure ''C'' to the plaint. As far as Plaintiff No. 2 is concerned, it claims to be registered proprietor of the trade mark consisting of the word SIGNATURE with effect from 4th September 2002 as evidenced by Annexure ''C-1''. The Suit is essentially based on the fact that the ownership of the copy right in the works and more particularly, the blister packaging of the product/tablet vests in the Plaintiffs. The Plaintiffs have been packaging their goods in the package, copy of which has been annexed to the plaint. They claim to have a devised of unique and distinct colour scheme, design, get up and therefore, complain that the Defendant has deliberately adopted this packaging so as to market and sell his product PRAMO VEGA.

The Defendant on the other hand has contended that he has not copied the designs and colour scheme but has devised a distinct packaging of his own. Prima-facie, this version of the Defendant is difficult to accept at this stage. The colour scheme, get up and design of the Plaintiffs is annexed as annexures ''A'' and ''A-1'' to the plaint. This specific allegation is that the words are written by the Defendant in identical style. Even their placement is similar. The colour scheme is identical. The manner in which the name of the marketing Agent is written as also similar.

As against this the Defendant has contended that there is no attempt to copy the packaging. He has pointed out that there is no similarity inasmuch as colour of blister packaging of PRAMO VEGA is entirely different. The PVC film that is back side of the packaging is with star in blue colour and tablet is of dark blue colour. The packaging is, therefore, distinct from each other and there is no similarity between the two. However, at the same time, the Defendant does not dispute that he has changed the design of Rocket and used the word NIGHT RIDER in place of SIGNOUR.

However, in the entire affidavit of the Defendant, there is no denial of the fact that the Plaintiffs have a copy right in their favour. The Defendant''s case is that the Plaintiffs have not joined Mr. Kishore Mathkar as a party nor produced any documents to show that Mr. Kishore Mathkar has created the design as alleged. Further, he has denied that Mr. Sanjiv Garg is owner of design and has assigned the right of carton blister pack in favour of the Plaintiffs. Further, his case is that Mr. Sanjiv Garg is not joined as a party to the Suit.

In my view, at this prima-facie stage, the plaint averments being clear they deserved to be accepted. Statement on oath cannot be brushed aside merely because in the opinion of the Defendant Kishore Mathkar and Sanjiv Garg are not parties to the Suit. The affidavit in support is affirmed by Sanjiv Garg. He has also confirmed the affidavit in rejoinder of the Plaintiffs. Further, the Deed of Assignment, copy of which is annexed as Annexure ''B'' to the plaint clearly points out that Sanjiv Garg is the owner of the copy right in the artistic work VEGA 100 etc and there is a copy right registration in his favour. In such circumstances, I cannot proceed on the basis that the Plaintiffs'' case of copy right in their favour is entirely baseless or totally un-substantiated. This is not the stage at which the evidence has to be evaluated or all arguments have to be dealt with as if the Suit itself is being tried. Prima-facie, the Plaintiffs have produced materials to support their claim of copy right in their favour. They will have fuller opportunity to substantiate all their pleas at the trial. Once, the Plaintiffs have relied upon an assignment in their favour by Mr. Garg and all affidavits are affirmed and sworn by Mr. Garg, then, I cannot brush aside the contents thereof. In such circumstances, I proceed on the basis that the Plaintiffs have a copy right with regard to the packaging in their favour.

The next point which arises for determination is whether the Plaintiffs have proved their case of infringement of copy right in the design/works at this prima-facie stage. The Plaintiffs have annexed copy of their packaging. It is a yellow colour blister pack in which the tablets are wrapped. The name of the Plaintiffs appear on this packaging in a stylized manner together with the picture of a Rocket. The averments in paragraph 5 of the plaint would go to show the distinct features of the Plaintiffs'' packaging. In paragraph 14 of the plaint, a comparative chart is set out. It is evident from a perusal of this material so also copies of the packages themselves that the Defendant does not dispute that his tablet is also packed in a yellow colour packet with a red border back side. Initially, the word SIGNOUR was appearing on the left hand corner under the words Dosage as is evident from Annexure ''E'' to the plaint and adjacent to the warning sign. Now, the word SIGNOUR is replaced by the words NIGHT RIDER. Further, the Rocket sign is also visible. Thus, the packaging of the tablet of both Plaintiffs and Defendant is identical. Particularly, manner in which the words VEGA 100 are written below the description of the tablet. The colour and the stylized manners in which the contents are written are prima-facie identical. It is immaterial as to how the outer pack of the Defendant is in this case. It is the Plaintiffs assertion that what they are aggrieved by is the blister pack in yellow colour in which their tablets are packed and sold. The Defendant may now have decided to alter the package but it is apparent from his statement that background printing of the blister pack is in dark blue colour. However, he has not been able to satisfy me as to how design, lay out, get up and schematic arrangement of various features and colour scheme are not confusing with that of the Plaintiff. The distinctive features are not pointed out. The Defendant seems to be relying upon some minor deviations and variations here and there. Such minute inspection and scrutiny is not contemplated at this prima facie stage. It is not permissible at this prima-facie stage to go into such details as the colour of Rocket, etc. The broad features together with get up and colour scheme are identical. Had this not being the case, then, it was unnecessary for the Defendant a to have asserted that he has changed the design of Rocket and used the words Night Rider in place of SIGNOUR. This assertion is of some significance. It supports the Plaintiffs'' case that the entire packaging was identical. The Plaintiffs packaging and the Defendant''s packaging cannot be compared at this primafacie stage by scrutinizing the details such as the PVC film being used on the back side of the packaging. What is apparent is the packaging of the tablets and how they are sold to the consumers. The Defendant has made an attempt to rely upon outer packaging by producing a copy thereof. However, it is not the outer carton which alone is material. The question is of the packaging in which the tablets are sold.

In this behalf, the observations of the Hon''ble Supreme Court in the decision Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., are pertinent. In paragraphs 32 to 34 this is what the Supreme Court observes:

Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Nothing the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition para 23.12 of which reads as under:

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 sutures and clavicle splints.

Keeping in view the provision of Section 17-B of the Drugs and Cosmetics Act, 1940 which inter alia indicates as imitation or resemblance of another drug in a manner likely to deceive being regarded as a spurious drug, it is but proper that before granting permission to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to a submit an official search report from the Trade Mark officer pertaining to the trade mark in question which will enable the drug authority to arrive at a correct conclusion."

Applying these principles to this case, what I find is that the Plaintiffs have substantiated their case as set out in the plaint prima-facie. They have satisfied me that they are entitled to protect their copy right in the blister packaging. The averments in paragraph 20 of the plaint have been primafacie proved by producing the aforementioned materials. An interim injunction therefore to protect the copy right of the plaint in the said pack must therefore followl.

As far as the case of the Plaintiffs with regard to prior adoption and user of the trade mark in the word VEGA is concerned, even the tests in that behalf are well settled. In the same decision viz. Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. the Supreme Court has reiterated them in the following terms:

Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:

(a) The nature of the marks i.e. Whether the marks are word marks or label marks or composite marks, i.e. Both words and label works.

(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.

(c) The nature of the goods in respect of which they are used as trade marks.

(d) The similarity in the nature, character and performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods and

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.

In a later decision which has been relied upon by Mr. Kirpekar and reported in Heinz Italia and Another Vs. Dabur India Ltd., ., the earlier view in Cadila has been followed and in relation to passing off, the Supreme Court re-affirms that the colour scheme and overall effect of the packaging has to be seen. In the case of passing off, the Plaintiff has to establish prior user to secure an injunction and that the registration of the mark or similar mark in point of time, is irrelevant. In the instant case, the Defendant does not dispute that the Plaintiffs have a registration in their favour in so far as the mark VEGAH and SIGNATURE is concerned. All that the Defendant would urge is that as far as the mark VEGA is concerned, the Plaintiffs cannot claim any rights therein. However, the Plaintiffs are not relying upon any registration in their favour in so far as this mark is concerned. Their case is based upon prior adoption and user. The prior adoption and user from 2001-2002 is substantiated by the Plaintiffs by producing the statement of sales and the order in their favour in other Suits in relation to the same mark. As far as the Defendant is concerned, he only denies the factum of Plaintiffs'' user being prior in point of time. He produces no material. On the other hand, the documents produced by the Defendants coupled with the statements in his affidavit in reply would show that it is only in the year 2008 that he commenced the business activities. He has claimed that he exports the tablet PRAMO VEGA 100 since 2008-2009. He does not claim that he manufactures them (para 10 of the affidavit in reply). Although, he claims that there are numerous manufacturers of the medicines in the field, he, in his affidavit, states that he is proprietor of PRAMO LIFE SCIENCE. The business activities that he mentions are manufacturing and selling wide range of medicine and pharmaceutical products under its own trade mark. However, absolutely, nothing has been placed on record to show that the Defendant has manufactured PRAMO VEGA tablets. On the other hand, he claims to be an exporter of the same as is evident by a complete reading of the affidavit in reply. Even the pack annexed by him to the affidavit in reply shows his name as an exporter. Even the certificate of the Chartered Accountant shows that PRAMO VEGA is a product exported by the Defendant.

In such circumstances, and when the goods in question are medicinal products, then, the tests laid down by the Supreme Court must be held to be prima-facie applicable. The Supreme Court has emphasized the fact that what is likely to cause confusion would vary from case to case. The test in relation to the pharmaceutical products are somewhat stricter as public interest is at stake. The claim of the Plaintiff with regard to passing off by the Defendants is based on the fact that the tablets are prescribed for treating Male Erectile Dysfunction. Thus, this is a tablet for treating a male sexual disorder. The class of persons who are prescribed such drugs differ. The drugs are prescribed to treat the patients residing both in urban and rural areas. In these circumstances, the adverse effect on account of the confusion about identity of the product could have dire effect on the public health. From the record, it is prima-facie demonstrated that the packaging is identical. It is undisputed that the product is identical. It is further placed on record by the Plaintiffs and which assertion has not been denied even at this prima-facie stage that the Defendant is trying to assist one S.P.B. Pharma, who violated and breached the order of injunction against the said company/concern. There was an order passed against S.P.B. Pharma in a Suit instituted by the very Plaintiffs. The order appoints the Court Receiver with a power to seize the product of S.P.B. pharma at the prima-facie stage. The product is the same and manufactured and/or marketed under the same name VEGA. The products were seized and during the course of the seizure, statement of the Defendant in this Suit has been recorded. It is seriously asserted before me by the Plaintiffs that the present Defendant is just y another face of S.P.B. Pharma. This is an additional reason as to why I am satisfied that apart from the prima-facie case of passing off being proved, the Defendant should be restrained from passing off his goods/products as that of the Plaintiffs. All the tests that are laid down by the Hon''ble Supreme Court in paragraph 35 of the decision of Cadila (Supra) are satisfied in this case. The nature of the marks, the degree of resemblance, nature of goods and similarity in the nature, character and performance of the goods so also the mode of purchasing the goods and the class of purchasers who are likely to buy them and the surrounding circumstances have been duly considered by me. I have already held that the marks in this case are VEGA. Those both are relying upon this mark. The degree of resemblance is also considered inasmuch as the Plaintiffs are marketing and selling their products under the name VEGA 100 and VEGAH 100, whereas the Defendant''s sells them under the mark PRAMO VEGA 100. The packages are identical. I have already pointed out the similarities in their nature and character. I have already commented upon the class of purchasers who are going to be affected.

In view of the aforementioned observations and when the Plaintiffs have to repeatedly approach this Court, for protecting the rights, this is a fit case where the Notice of Motion deserves to be made absolute in terms of prayer Clauses (b) and (e). As far as prayer Clauses (c) and (d) are concerned, the Defendant does not dispute that Plaintiff No. 1 is the registered proprietor of the mark VEGAH. He does not claim to be using the said mark in relation to his products. The statements in the affidavit in reply are in relation to only the word mark VEGA. The Defendant nowhere states that he has used the mark VEGAH in relation to his tablets. In such circumstances, on the own statements of the Defendant, the Plaintiffs are entitled to the injunction so as to protect infringement of their trade mark VEGAH which is evidenced by the registration certificate (annexed ''C'' to the plaint). Hence, the relief of injunction in terms of prayer Clause (c) is restricted to Plaintiff No. 1''s registered trade mark VEGAH and it is directed that the Defendant by itself/himself or its servant, agent, stockist or otherwise is restrained by a temporary order and injunction of this Court from in any manner using in relation to medicinal and pharmaceutical preparation, the mark VEGAH so as to infringe Plaintiff No. 1''s p registration in respect thereof.

As far as prayer Clause (d) is concerned, the Defendant has on his own stated that he has omitted the word SIGNOUR from the blister pack and substituted it with the words NIGHT RIDER. However, since it was pointed out that on earlier occasion the Defendant had used the word SIGNOUR and depicted it in the same stylized manner on his packaging, the Motion is made absolute in terms of prayer Clause (d) as well.

However, in the circumstances, there will be no order as to costs.

At this stage, Mr. Page appearing for the Defendants prays for stay of this order. The request is opposed by the Plaintiffs'' Advocate.

In the peculiar facts of this case and when I find that the goods which were seized from S.P.B. Pharma, the Defendant proprietor''s statement came to be recorded, considering the peculiar facts and the earlier orders, prayer for stay is refused.