Descriptive trade mark elements and mandatory ex parte injunction notice requirements shaped the dispute over medicinal branding
In medicinal trade mark disputes, deceptive similarity is assessed from the perspective of the ordinary purchaser while also considering the nature of pharmaceutical sales, prescription controls, and trade usage. A descriptive or public juris element cannot be monopolised. On the facts, "LIV" was treated as descriptive of liver-related products, and the marks were distinguished by their dominant suffixes, packaging, colour scheme, get-up, and presentation; confusion was therefore found remote and injunctive relief on infringement and passing off could not stand. The proviso to Order 39 Rule 3 CPC was also treated as mandatory, so failure to comply with the notice and service requirements justified vacation of the ex parte injunction.
Issues: (i) Whether the mark LIV-T was deceptively similar to or confusing with the registered mark LIV-52 in a trade mark action for infringement and passing off; (ii) Whether non-compliance with Order 39 Rule 3 of the Code of Civil Procedure, 1908, required automatic vacation of the ex parte injunction.
Issue (i): Whether the mark LIV-T was deceptively similar to or confusing with the registered mark LIV-52 in a trade mark action for infringement and passing off.
Analysis: The comparison of marks in an infringement or passing off action depends on the overall impression created on the ordinary purchaser, but in the field of medicinal preparations the court must also consider the manner of trade, the class of purchasers, and the safeguards created by prescription-based and licensed sale. A word or abbreviation that has become common to trade or public juris cannot be monopolised. On the evidence, the element "Liv" was found to be descriptive of liver and in wide use in the trade for medicines relating to liver disorders. The rival marks differed in their dominant suffixes, packaging, colour scheme, get-up, and product presentation, and the possibility of confusion was held to be remote in the conditions under which such medicines are sold.
Conclusion: The mark LIV-T was not deceptively similar to or likely to be confused with LIV-52, and no injunction could be sustained on that basis.
Issue (ii): Whether non-compliance with Order 39 Rule 3 of the Code of Civil Procedure, 1908, required automatic vacation of the ex parte injunction.
Analysis: The proviso to Order 39 Rule 3 was treated as mandatory. An applicant who obtains an ex parte injunction must comply with the requirements of notice and service contemplated by the rule, and failure to do so defeats the fairness underlying the grant of interim restraint. Where such non-compliance is established, the proper course is to vacate the ex parte order without deciding the merits of the underlying dispute.
Conclusion: The requirement was mandatory, and non-compliance justified vacation of the ex parte injunction.
Final Conclusion: The injunction in favour of the plaintiff could not stand, both because the rival marks were not deceptively similar on the facts and because the ex parte restraint was liable to be vacated for non-compliance with the procedural requirements governing such relief.
Ratio Decidendi: In medicinal and pharmaceutical trade mark disputes, the court must assess deceptive similarity in the context of the relevant market, including prescription-based sale and the common use of descriptive or public juris expressions, and an ex parte injunction granted under Order 39 can be vacated for breach of the mandatory notice and service requirements of Rule 3.
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