A. Ramamurthi, J.@mdashPetition filed u/s 151 of CPC to stay the operation of the judgment and decree in O.S. No. 1 of 1999 dated 19.10.2001 on the file of the III Additional District Judge of Krishnagiri pending disposal of this appeal.
2. The case in brief is as follows :- The respondent/plaintiff filed a suit for permanent injunction restraining the petitioner/appellant from using the trade mark BECEF or any other mark as may be identical with or deceptively similar to the plaintiffs'' trade mark BICEF either by manufacturing, selling or in any manner advertising the same. They also sought for a direction to surrender the labels, literatures, packaging materials and dies, etc. They moved an application for interim injunction on 12.03.1999 and it was dismissed on 22.11.1999. They have not filed any appeal against the order of dismissal. However, ultimately the trial court decreed the suit in favour of the respondent/plaintiff. The petitioner/appellant has been manufacturing and marketing their drug with due licence in the form of injection in vial from 1997 till 19.10.2001 continuously and substantially all over India without any interruption. The respondent are manufacturing and marketing only capsules not vial for two different treatment. It can be bought only by doctor prescription. The petitioners have spent enormous sums of money to promote their product and they have acquired enormous goodwill and reputation by using the trade mark BECEF. Unless interim stay is granted, the petitioner will be greatly prejudiced. The suit is admittedly for passing off; but the trial Court has not even framed an issue with reference to passing off. The petitioner have got prima facie case and the balance of convenience is in their favour and hence, the petition.
3. The respondent/plaintiff filed a detailed counter. The respondent company has been carrying on business in the manufacture of medicinal products since 1976. It is a reputed company with annual turn over of Rs. 80 crores. In the course of the business, they have invented, conceived and adopted several trade marks for medicinal preparation and one among them is celebrated trade mark BICEF tablet and suspension form. It is an antibiotic drug used by patients for treating infections. They have been extensively manufacturing and selling this product since 1989. They come across the trade mark BECEF used by the petitioner/appellant as antibiotic medicine as per the claim in the literature, which made for trading Bacterial mengities on serious condition of patient affecting brain. The appellant had commenced recently manufacturing and starting selling an identical trade mark which is structurally and phonetically identical and similar to that of the respondent''s trade mark. Notice was also sent to the petitioner''s company. The respondent''s company filed O.S.I of 1999 on the file of District Court, Krishnagiri seeking the relief of permanent injunction and after contest, the suit was decreed.
4. The documents produced by the respondents were sufficient to prove reputation. The learned trial Judge directed expeditious disposal of the suit and it was taken up for trial on day-to-day basis and after considering the oral and documentary evidence, granted a decree on the ground that the trade mark adopted by the appellant BECEF is similar to the plaintiffs'' trade mark and is a deception. The appellant had adopted the trade mark BECEF with a fraudulent intention to cut into the plaintiffs'' trade. The plaintiff had come to Court immediately after coming to know of the impugned trade mark and obtained a decree for permanent injunction. The learned trial Judge has correctly framed the issues. In any event, both the parties have understood the case correctly and went on trial on the main issue in question. It is not necessary to prove that in fact the purchaser get confused. There are no material to substantiate the allegation of balance of convenience or irreparable loss and, as such, the application is liable to be dismissed.
5. The petitioner/appellant filed a reply affidavit denying the various averments made in the counter statement. The annual turn over of the appellant company during the last year was approximately Rs. 389,14 crores and for promoting sales they have spent Rs. 47.22 crores. The respondent company have not chosen to furnish its turn over and promotional expenses particulars either in the plaint or by the document. The respondents have filed only specimen invoices for each year. The drug manufactured by the petitioner and the respondent are manufactured out of different medicinal preparation and for different treatment. Apart from that, the petitioners'' drug is administered through injection, whereas, the respondents'' drug is a tablet consumed by consumers. Hence, the concept of unwary purchaser of ordinary intelligence with imperfect recollection applicable in suit for passing off is not applicable to the instant case. If the petitioner had the intention to exploit the reputation attached to this trade mark BICEF, they would have adapted this name in respect of pharmaceutical preparation similar to that of the respondent. If the interim stay is not granted during the appeal, the appeal proceedings will be come infructuous. They have got huge stocks in their custody with the name BECEF. The product manufactured by the petitioner cannot be consumed by the public as such. It can be bought and administered only through the assistance of the professional doctor. He cannot mistake one for the other like unwary purchasers of average intelligence to complain passing off. The petitioners are the bona fide and independent adopters/users of the mark BECEF as is evident from the search conducted by them earlier. If the trade mark has commercial pull in the market, the turn over will increase. The petitioner have got huge stock worth over few crores. The proof of huge stock and the stocks in the pipeline will be affected seriously if the interim stay is not granted till the disposal of the appeal.
6. Heard the learned counsel for both sides.
7. The points that arise for consideration are :
(1) Whether the petitioners/appellants have got prima facie case and the balance of convenience is in their favour ?
(2) Whether the petitioners are entitled to get an order of stay of the operation of the judgment and decree in O.S. No. 1 of 1999 dated 19.10.2001 till the disposal of the appeal?
(3) To what relief?
7. Points : It is admitted that the respondent/plaintiff filed the suit for permanent injunction restraining the petitioner/appellant from using the trade mark BECEF or any other mark as may be identical with or deceptively similar to the plaintiffs'' trade mark BICEF either by manufacturing or selling or in any manner advertising the same. The suit was filed on 10.03.1999 and the respondent also filed LA. No. 2 of 1999 seeking interim injunction restraining the appellant from passing off their goods. However, LA. No. 2 of 1999 was dismissed after enquiry on 22.11.1999. The evidence was recorded and the suit was decreed granting permanent injunction in favour of the plaintiff on 19.10.2001. Aggrieved against the decree only, the petitioner preferred the appeal before this Court on 28.11.2001 and obtained interim stay.
8. Learned senior counsel for the petitioner mainly contended that the respondent/plaintiff was not having the benefit of interim injunction from 22.11.1999 to 28.11.2001. The petitioner has been manufacturing and marketing their drug with due licence in the form of injection in vial from 1997 continuously and substantially all over India without any interruption and they have also spent considerable amount towards promotion of the business. On the other hand, the respondent is manufacturing and marketing only capsules and moreover, the two medicines will be used for two different treatments and they can be bought only on the prescription given by a doctor. The petitioner has also acquired enormous goodwill and reputation by using the trade mark BECEF and unless interim stay is granted, they would be put to much loss and hardship. Learned senior counsel further stated that the respondent had failed to establish that there was any fraudulent act on the part of the petitioner. They have got huge stock in their custody with the name BECEF worth few crores and unless the order of stay is granted, they would be affected seriously.
9. Learned counsel for the respondent/plaintiff mainly contended that their company has been carrying on business in the manufacture of medicinal products since 1976 and it is a reputed company with annual turn over of Rs. 80 crores. They have invented, conceived and adopted this trade mark BICEF and no doubt, it is in the form of a tablet used as an anti-biotic drug by patients for treating infections. They have been extensively manufacturing and selling this product since 1989, whereas the petitioner had recently manufactured and started selling an identical trade mark, which is structurally, visually and phonetically identical and similar to their mark. The petitioner had adopted the trade mark BECEF with a fraudulent intention to cut into the plaintiffs'' trade and the plaintiff came to Court, immediately after coming to know of the impugned trade mark and obtained the decree for permanent injunction. It is further stated that when once the respondent/plaintiff had obtained the decree of permanent injunction, it is prima facie clear that they have got a prima facie case and the balance of convenience is in their favour.
10. It is admitted that both the companies have not registered their mark under the relevant Act. However, learned senior counsel for the petitioner stated that they have filed an application before the competent authority for registration of the trade mark and before that, they have made a search application also. Whatever it may be, now admittedly both the marks are not registered. Moreover, the respondent has come forward with the suit only to prevent the petitioner from passing off their goods as that of the respondent. In a passing off action, it has to be mainly found out whether the mark is similar and identical and as to who was the prior user of the mark. If that is taken into consideration, it is proved by positive evidence that the respondent is the prior user in point of time. The sales turn over as well as the promotional expenses are already furnished under Ex.A-7. The petitioner also stated that they have also got enough sales turn over and they are also spending money for promotional expenses. When the parties are dealing in pharmaceutical products, they will be manufacturing various medicines and it cannot be said that the sales turn over given by them would relate to the particular medicine in question. But the product of the petitioner is only from the year 1997 or from 1998 whereas the product of the respondent is from 1989 onwards. Hence, on the ground of prior user I am of the view that the respondent/plaintiff has got a prima facie case.
11. Learned senior counsel for the petitioner next contended that proper issues have not bean framed by the court below and there is no evidence to come to a conclusion that the respondent had acquired any goodwill or reputation relating to the product in question. However, learned counsel for the respondent stated that both parties have understood the case correctly and went on trial on the main issue in question and further more, the question whether absence of framing any issue will prejudice the case of the parties and other things can be considered only at the time of hearing the main appeal. For the purpose or deciding this application, the short question that has to be decided is only whether there are any valid and sufficient cause to grant an order of interim stay of the operation of the judgment and decree passed by the court below on merits.
12. It is practically conceded that the mark BECEF and BICEF are visually, phonetically and structurally identical. But the learned senior counsel for the petitioner contended that the product of the petitioner is only in the form of injection in vial, whereas the product of the respondent is in a tablet form. Learned senior counsel further stated that these medicines can be purchased in the medical shop only on the basis of a prescription by a doctor. Normally medical shops are expected to sell the medicines only on a prescription given by a doctor. But in common practice, it is possible for any customer to purchase a medicine in a medical shop across the counter on payment. When both the marks are identical, there is every possibility for mixing one product for the other. Even assuming that only on prescription by a doctor it will be supplied, it all depends upon the efficiency and capacity of a pharmacist or salesman working in the shops to decipher the prescription given by a doctor. Hence, I am of the view that when once it is conceded that the mark is identical, will be deceptive and there is every possibility to supply one product for the other. It is also likely to cause after effects if one medicine is supplied instead of other medicine. Only to avoid such a situation, it is just and necessary that suitable orders have to be necessarily passed relating to the medicines to be supplied in the market.
13. Learned senior counsel for the petitioner relied upon
(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 dis-similarity between the competing marks. It is also made clear that weightage to be given to each of the aforesaid factors depends upon the facts of each case and the same weightage cannot be given to each factor in every case. This principle can be applied to the case on hand.
14. Learned counsel for the respondent relied on the decision reported in
15. Reliance is also placed on
16. It is therefore clear from the aforesaid decisions that the principles can be made applicable depending upon the facts and circumstances in each case. So far as this case is concerned, admittedly both the marks are identical. The decree or resembleness between the marks is phonetically similar. The trial Court has decreed the suit based on the evidence and the documents and apart from that, the respondent has also prima facie established that they are prior user of the product earlier in point of time. The petitioner is not in a position to point out that there was any acquiescence on the part of the respondent and, as such, the petitioner/appellant has no prima facie case. However, the learned senior counsel for the petitioner stated that they have got huge stock and they have to be cleared and, as such, the balance of convenience is in their favour. Simply because huge stocks are kept by a private company, they are not entitled to claim any right. They knew pretty well that the suit was tiled in the Court as early as 1999 and this being so, their manufacture should be less and they cannot manufacture in large quantity and ultimately call upon the Court to come to their rescue. It is their own making on the part of the petitioner, but at the same time, I am of the view that a reasonable time can be given to the petitioner to clear the goods and the points are answered accordingly.
17. For the reasons stated above, the petition fails and is dismissed. However, the petitioner is granted three months time to clear the stock.
