2006 (5) TMI 539 - HC - Indian Laws

Court denies plaintiffs' injunction, vacates interim order, allows defendant's request, orders sales account maintenance.

The court dismissed the plaintiffs' application for an injunction, vacated the interim order, and allowed the defendant's application to vacate the ... - Issues Involved:1. Infringement of Trademark2. Passing Off3. Validity of Trademark Registration4. Rectification Proceedings5. Balance of Convenience and Irreparable Harm6. Proprietorship and Assignment of Trademark7. Power of Attorney and Proper Institution of SuitDetailed Analysis:1. Infringement of Trademark:The plaintiffs alleged that the defendant's use of the trademark 'MEROMER' was deceptively similar to their registered trademark 'MERONEM', constituting trademark infringement. The defendant argued that their trademark 'MEROMER' was registered on 1st December 2005, and the registration relates back to the application date of 2nd August 2004. Under Section 23 of the Trade Marks Act, 1999, the registration of a trademark relates back to the application date, making the defendant's trademark registration effective from 2nd August 2004. Consequently, both parties having registered trademarks negates the plaintiffs' claim of exclusive rights against the defendant under Section 28 of the Trade Marks Act, 1999.2. Passing Off:The plaintiffs claimed passing off, arguing that 'MEROMER' was deceptively similar to 'MERONEM' and could cause confusion. The court considered the principles laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., emphasizing the need for strict measures to prevent confusion in medicinal products. However, the court noted that both products were the same drug, Meropenem, marketed under different names, with only a difference in shelf life. The court found that the non-descriptive suffixes 'NEM' and 'MER' were distinct and there was no reasonable probability of confusion.3. Validity of Trademark Registration:The defendant's trademark 'MEROMER' was registered during the pendency of the suit, and the plaintiffs filed a rectification application challenging this registration. The court noted that under Section 124 of the Trade Marks Act, 1999, the suit could be stayed pending rectification proceedings, but the plaintiffs had not sought the court's prima facie satisfaction regarding the invalidity of the defendant's trademark before filing the rectification application.4. Rectification Proceedings:The plaintiffs initially filed a rectification application before the Registrar and later before the Appellate Board. The court highlighted that under Section 124 of the Trade Marks Act, 1999, rectification proceedings should be filed with the court's prima facie satisfaction of the invalidity of the opposing mark. The plaintiffs' failure to seek the court's satisfaction before filing the application rendered their rectification proceedings procedurally flawed.5. Balance of Convenience and Irreparable Harm:The court emphasized the principle of 'balance of convenience,' weighing the inconvenience and irreparable harm to both parties. The defendant had already launched their product, invested significantly, and had substantial stock. The court found that granting an injunction would cause greater inconvenience and irreparable harm to the defendant. The court directed the defendant to maintain accounts of the sale of 'MEROMER' and submit them to the court every half-yearly.6. Proprietorship and Assignment of Trademark:The plaintiffs claimed rights in the trademark 'MERONEM' through assignment deeds from Zeneca Ltd. The court noted discrepancies in the plaintiffs' statements regarding the merger and assignment but found that the plaintiffs had provided sufficient evidence of the assignment of the trademark. The court held that the plaintiffs' rights emanating from the assignment deeds could not be denied due to pending formal registration with the Trademark Registry.7. Power of Attorney and Proper Institution of Suit:The defendant challenged the suit's institution, arguing that it was filed without a proper power of attorney. The court found that the plaintiffs had filed a valid power of attorney authorizing the attorneys to continue the proceedings, and therefore, the suit was properly instituted.Conclusion:The court vacated the interim order dated 6th October 2005, dismissed the plaintiffs' application for an injunction, and allowed the defendant's application to vacate the interim order. The court directed the defendant to maintain and submit accounts of the sale of 'MEROMER' to the court every half-yearly. The views expressed were tentative and not final on the case's merits.