M.M. Sundresh, J.@mdashThis original side appeal has been preferred by the appellant being aggrieved against the order of the learned single
Judge in dismissing the application filed for interim injunction pending suit in O.A. 30 of 2012 in C.S. No. 19 of 2012 on the ground of infringement
of a registered trade mark. The facts in brief:
1.1. The appellant was a company incorporated under the Companies Act in the year 1992. An agreement followed by an undertaking was
entered into between the appellant and M/s. Mano Pharmaceuticals Private Limited in the year 2003. The said M/s. Mano Pharmaceuticals Private
Limited has filed an application under the Trade Marks Act, 1999 (hereinafter referred to as ""the Act"") for registration of trade mark ""METO"".
TM-16 was filed in the name of Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited) on 24.02.2003. A registration
certificate for trade mark ""METO"" was issued in No. 321616.
1.2. The respondent/defendant is said to have adopted the trade mark ""METOX"". Both the products of the appellant and the respondent are
pharmaceutical products meant for the same ailment. A notice was issued by the appellant on 05.04.2011 restraining the respondent from using the
trade mark ""METOX"", as it is deceptively similar to the trade mark ""METO"". Thereafter, a suit in C.S. No. 19 of 2012 was filed in the month of
January, 2012. Pending suit, a Legal Use Certificate was issued reflecting the name of Mano Pharma (a Division of Orchid Chemicals and
Pharmaceuticals Limited) on 07.02.2012.
1.3. The learned single Judge dismissed the injunction application on the ground that at the time of filing the suit, the appellant was not the
registered trade mark holder, as it was in the name of M/s. Mano Pharmaceuticals Private Limited. The procedure contemplated under the Act for
the registration of Assignment Deed was not done and therefore, the appellant cannot maintain the suit. There is no phonetical, structural and visual
similarities between the two products. The word ""METO"" has been derived from the chemical component Metoprolol and therefore, it is ""publici
juris"" and generic. Both the products are in scheduled ""H"" drugs. The respondent is using the product ""METOX"". The scheduled ""H"" drugs can
only be sold on prescription of the registered medical practitioners. Both the products are having different colour scheme apart from their distinct
package. Accordingly, the learned single Judge both on facts and on law, has dismissed the application filed for injunction. Challenging the same,
the present Original Side Appeal has been filed.
2. Submissions of the appellant:
Shri R. Muthukumarasamy, learned Senior Counsel appearing for the appellant, would submit that the appellant, having a registered trade mark, is
entitled for an order of injunction. Admittedly, the respondent''s name is unregistered. Having applied for registration, the respondent cannot raise a
plea of ""publici juris"". TN-16 was filed as early as on 17.03.2003. The Legal Use Certificate was issued on 07.02.2012 much prior to the order of
the learned single Judge. The judgments relied upon by the learned Senior counsel appearing for the respondent have primarily dealt with the cases
of passing off. The learned Senior Counsel also submitted that in view of the express provision contained u/s 29 of the Trade Marks Act, 1999,
the appellant is entitled for an order of injunction. In support of his contention, the learned Senior Counsel has made reliance upon a Division
Bench judgment of this Honourable Court in Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and Dilip Chhabria Design Private Ltd., .
3. Submissions of the Respondent:
Per contra, Shri P.S. Raman, learned Senior counsel appearing for the respondent, would submit that the suit itself is not maintainable on two
grounds. Admittedly at the time of filing the suit, the registration certificate stood in the name of M/s. Mano Pharmaceuticals Private Limited. Even
assuming the Legal Use Certificate dated 07.02.2012 is valid, the same will not cure the defect. Such a certificate cannot be issued in law as it is
required to be issued during the pendency of the application and not after the grant of registration certificate. Section 29 of the Trade Marks Act,
1999, is subject to Section 28 of the Act. The respondent has raised objections to the issuance of registration certification to the appellant. The
documents produced would show that there are number of companies having the prefix ""METO"". It is the common name of the chemical
component, as the name is ""publici juris"", and hence, an order of injunction cannot be granted. There is no explanation for the delay in moving the
Court. Since an order of injunction is discretionary, unless prima facie case, balance of convenience and irreparable loss are shown, this Court
normally cannot grant it. The judgment of the Division Bench relied upon by the appellant does not apply to the facts of the case as it was with
reference to running of a transport business. The learned single Judge, whose decision was confirmed, has himself distinguished the same. Hence,
the learned Senior Counsel submitted that the appeal will have to be dismissed.
4. DISCUSSION:
4.1. It is seen that TM-16 was filed to record the name of Mano Pharma (a Division of Orchid Chemicals and Pharmaceuticals Limited) on
17.03.2003. However, the registration certificate was filed only in the name of M/s. Mano Pharmaceuticals Limited on 24.02.2005. The suit was
filed in the month of January, 2012. Thereafter, on 07.02.2012, the Legal Use Certificate was issued reflecting the name of Mano Pharma (A
Division of Orchid Chemicals and Pharmaceuticals Limited). Even though, arguments have been advanced and the learned single Judge has also
given a finding on it, we do not propose to go into this issue, as it is seen that the application in TM-16 was filed well within the time. Further more,
the mistake cannot be attributed to the appellant alone. Therefore, we refrain ourselves from going into the said issue.
4.2. Admittedly, the appellant has not registered the Assignment Deed required under the Act. Under the Trade Marks Act, 1999, a separate
proceeding is contemplated for the above said purpose. If the appellant was desirous of using the trade mark of M/s. Mano Pharmaceutical
Limited, it ought to have filed an appropriate application along with M/s. Mano Pharmaceutical Limited. Inasmuch as the said procedure is
mandatory, we are of the considered view that the appellant cannot seek an order of injunction.
4.3. The learned single Judge has given elaborate reasoning on appraising the facts. Instead of reiterating the same, we wish to extract the relevant
paragraphs dealt with by the learned single Judge.
15. On facts, the two rival trade marks available for comparison herein are METO and METOX-ER. It is not in dispute that both the tablets are
scheduled ''H'' drugs and to be sold on due prescription of registered medical practitioner. Both the medicinal preparations are extended release
tablets containing Metoprolol succinate U.S.P. and both the tablets are manufactured in 25mg, 50mg and 100mg. The carton in respect of both the
medicinal preparations of the plaintiff and defendant produced herein as documents No. 5 & amp; 6 reveal that the tablets of the plaintiff is
prepared as 10 x 10 tablets, whereas the tablets of the defendant is prepared as 1 x 14 tablets. It is also stated in para 11 of the counter affidavit
filed in injunction application that the strips providing for 14 tablets of the drug METOX-ER and METOX-AM is packed in a cardboard box
containing pamphlets providing for the drug literature of Metoprolol along with descriptive materials such as clinical pharmacology, indications and
usage, contraindications, warnings, precautions, adverse reactions, overdose, dosage, instructions, etc. Further the colour scheme and get up of the
packet in which the stripe is sold is different for both medicinal preparations.
35. This Court is by applying the views of the Supreme Court as well as our High Court in the judgments cited on the side of the respondent,
which are also cases in respect of rival trade marks used in medical and pharmaceutical preparations, compelled to hold that in the instant case
also, the common prefix METO is derived from the molecule drug Metroprolol succinate and is generic in nature and is Publici juris and suffix ''X''
in the trade mark METOX, as in the case of PIO and PIOZ makes both marks distinct and phonetically, visually and structurally dissimilar.
36. Further, as both the goods are to be handled under due prescription given by trained physician, both buyers and users will not be misguided or
confused. Thus, the plaintiff has not made out any case in their favour either on the question of locus standi to maintain the present action and on
facts and is hence disentitled to continue to enjoy the order of injunction and the order of injunction already granted by this Court is hence set
aside.
4.4. We do not find any reason to differ with the said view of the learned single Judge. There is no contra material to take a different view and in
any case as an appellate Court, we also do not find any perversity in the said findings. In this connection, we wish to quote the judgment of a
Division Bench of this Honourable Court in Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and Dilip Chhabria Design Private Ltd.,
referred supra, wherein it has been held as follows.
61. When the learned trial Judge grants temporary injunction in exercise of discretionary power, the Appellate Court will not usually interfere with
the exercise of discretion of the Court of first instance and substitute its own discretion, except where the discretion has been shown to have been
exercised arbitrarily. Observing that Appellate Court will not lightly interfere with the discretionary power of the trial Court, in Ramdev Food
Products Pvt. Ltd. Vs. Arvindbhai Rambhai Patel and Others, the Supreme Court held as under:-
126. The grant of an interlocutory injunction is in exercise of discretionary power and hence, the appellate courts will usually not interfere with it.
However, the appellate courts will substitute their discretion if they find that discretion has been exercised arbitrarily, capriciously, perversely, or
where the court has ignored the settled principles of law regulating the grant or refusal of interlocutory injunctions. This principle has been stated by
this Court time and again. [See for example Wander Ltd. and Another Vs. Antox India P. Ltd., Laxmikant V. Patel Vs. Chetanbhat Shah and
Another, and Seema Arshad Zaheer and Others Vs. Municipal Corpn. of Greater Mumbai and Others, .
Applying the ratio of the above decision, we are of the view that 1st Defendant has not made out any substantial ground for interference with the
well considered order of the learned single Judge and both the Appeals are liable to be dismissed.
4.5. Since substantial arguments have been made on the interpretation of Sections 28 and 29 of the Trade Marks Act, 1999, and on the
application of ""publici juris"", we would like to go into the same. In order to appreciate the issue raised, it is appropriate to extract relevant portions
from Sections 28 to 30 of the Trade Marks Act, 1999.
28. Rights conferred by registration.-
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the
exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in
respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the
registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive
right to the use of any of those trade marks shall not conditions or limitations entered on the register be deemed to have been acquired by any one
of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same
rights as except so far as their respective rights are subject to any against other persons (not being registered users using by way of permitted use)
as he would have if he were the sole registered proprietor.
29. Infringement of registered trade marks.-
(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the
trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the
course of trade, a mark which because of....
30. Limits on effect of registered trade mark.-
(1) Nothing in section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or
services as those of the proprietor provided the use-....
4.6. Sections 28 to 30 of the Trade Marks Act, 1999, deal with the effect of registration under Chapter IV of the Act. In so far as Section 28 of
the Act is concerned, it deals with the rights conferred by registration. Section 28 of the Act specifically deals with the ""exclusive"" right under the
Act. Therefore, a registered proprietor of a trade mark can assert an exclusive right to use the trade mark u/s 28 of the Act. However, the said
assertion is subject to two conditions. The first condition is that it is ""subject to other provisions of the Act"". The second condition is that it is
subject to its ""validity"".
4.7. Now coming to Section 29 of the Act, it deals with an infringement of the registered trade mark. Section 29 of the Act specifies that an
infringement would occur when an unregistered Proprietor uses a registered trade mark, which is likely to cause confusion on the part of the public
or which is likely to have an association with the registered trade mark. Therefore, if one sees the object and reasons u/s 29 of the Act, it is clear
that it is meant to be used against the person, who is not entitled to use the said trade mark under ""law"". This is required to constitute an
infringement.
4.8. Now coming to Section 30 of the Act, it limits the effect of registered trade mark. A perusal of Section 30 of the Act would show that Section
29 of the Act is subjected to it. Therefore, Section 30 of the Act is an overriding provision to Section 29 of the Act. However, the parameters
stipulated u/s 30 of the Act will have to be complied with. For example, in a case where a party is using a registered trade mark belonging to
another one, if it is in accordance with honest practices in industrial or commercial matters or is detrimental to the distinctive character of the
different trade mark, no infringement would occur as it limits the effect of registered trade mark. Similarly, when the usage is indicative of a kind,
quality or a quantity, then there will not be any infringement notwithstanding the registration.
4.9. While considering the statutory provisions, the Courts will have to read them together to understand the intending purpose and object.
Therefore, we are of the considered view that Sections 28 to 30 of the Trade Marks Act, 1999, are to be read in connection with each other.
Such a yardstick will have to be adopted in view of the settled interpretative principle of harmonious construction.
4.10. Accordingly, let us apply the facts to the provisions. The records would show that the word ""METOPROLAL"" is a chemical component. It
is ""publici juris"". There are number of registered Proprietors having the prefix ""METO"". The learned single Judge has also noted the said fact. Now
all of them are identified with the common name, in view of the chemical component. Hence, it is not as if the respondent has infringed the said
word ""METO"". It is already in the public domain, even much prior to the application of the appellant. Applying the said facts when we read
Section 29 of the Act, we can safely come to the conclusion that the limits on effect of the registered trade mark u/s 30 of the Trade Marks Act,
1999, would apply with all force. Therefore, the exclusive right claimed by the appellant in pursuant to the registration would no longer be
available, in view of the fact that the word ''METO"" is already ""publici juris"", thereby, giving protection u/s 30 of the Act. When Section 28 of the
Act is not applicable, then consequently, Section 29 of the Act also is not applicable. Even otherwise, Section 29 of the Act is subject to Section
30 of the Act. As Section 28 of the Act is also subject to other provisions, it is needless to state that it is also subject to Section 30 of the Act.
Therefore, looking from any angle, we have no hesitation in holding that there is no infringement of the appellant''s trade mark u/s 29 of the Trade
Marks Act, 1999.
4.11. Though the learned Senior Counsel appearing for the appellant has made reliance upon the judgment of a Division Bench of this Court
rendered in Blue Hill Logistics Private Ltd. Vs. Ashok Leyland Ltd. and Dilip Chhabria Design Private Ltd., referred supra, the learned Senior
Counsel appearing for the respondent has rightly pointed out that the said judgment is distinguishable on facts. The learned single Judge, whose
order was confirmed by the Division Bench, has clearly held in paragraphs 22 and 23 in the following manner.
22. It is common knowledge that more than buses and transport services, the term ''LUXURY'' has come to be identified by the relevant public,
with cruises, most of which are advertised as Luxury Liners. Some times, the word ''LUXURY'' is also used in association with the word
''SEGMENT'', in relation to cars. But, the term ''LUXURY'' does not become a generic name, because of such usage.
23. In pharmaceutical industries, the usage of generic terms is common and is also unavoidable, due to the fact that every product is a derivative or
species of a generic term. All companies manufacturing a penicillin drug, may out of necessity, name the drugs as variants or derivatives of a
generic name penicillin. Therefore, it is only these names, which have come to be identified with a class or category of goods or services, by the
public at large, that can be called as generic.
4.12. Therefore, the judgment of the Division Bench will have to be understood in the context in which it was held. It is the appellant, who has
come before the Court. Merely because, the respondent filed an application subsequently, it cannot be said that it is totally barred in law in raising
the contentions on facts and law. Hence, the submission of the learned Senior counsel appearing for the appellant cannot be countenanced.
4.13. We are also not inclined to allow this Original Side Appeal on yet another ground. Though we are aware of the fact that mere delay alone
cannot be a ground to deny the relief of injunction, we are of the view that attending facts are to be taken into consideration. In this case, even
according to the appellant, the defendant has been allegedly infringing the registered trade mark of the appellant from November, 2010 onwards.
Thereafter, the appellant gave a notice on 05.11.2011. However, the suit was laid only in January, 2012. There is also no proper explanation for
the said delay.
In the result, the Original Side Appeal fails and the same is dismissed. No costs. Consequently, M.P. No. 1 of 2013 is also dismissed.
