Sanjay Kishan Kaul JUDGMENT
Sanjay Kishan Kaul, J.
1. The plaintiff has filed this suit for permanent injunction, passing off, rendition of accounts and delivery up etc. in respect of the trademark "GEMCAL" in relation to medicinal preparations.
2. The plaintiff is a company incorporated under the Companies Act, 1956 and is stated to be carrying on business inter alias as a manufacturer, seller and dealer of pharmaceutical and medicinal preparations .
3. The plaintiff claims to have adopted the trademark GEMCAL in August 1999. It is stated that the plaintiff applied for registration of the said trademark in Class 5 in respect of medicinal and pharmaceutical preparations and substances on 17.04.2000 and in the month of July 2000, the plaintiff started manufacturing and marketing its products on a commercial scale bearing the said trademark. The plaintiff claims to have spent a huge amount for popularising the product through advertisements by circulation of trade literature including pamphlets, product information brochures, physician samples etc. Ex. P-11 which is the C.A. certified sales turnover and promotional expenses of the plaintiff shows that in the year 2000-2001, 2001-2002 and 2002-2003, the expenses incurred towards samples and sales promotion are 15.54, 24.37 and 62.12 lacs respectively. The plaintiff claims that its product "GEMCAL" is fast acquiring reputation, goodwill and market sale.
4. The plaintiff has averred that it came to know of the use by the defendant of the said trademark on 27.02.2003 and consequently, a notice was sent to the defendant through its trademark attorney and a reminder is also stated to have been sent on 27.03.2003. The notices are stated to have been replied to by the defendant on 1.04.2003.
5. The defendant then filed a suit in the district courts at Gurgaon against the plaintiff for permanent injunction for issuance of groundless threat of legal proceedings, passing off and damages and the plaintiff is stated to have filed a written statement in that suit.
6. The plaintiff's product is stated to be a formulation which is a combination of calcitrol, calcium carbonate and zinc and is stated to be available in the form of capsules and syrup. The defendant's product on the other hand is a combination of calcium and vitamin D3 and is stated to be available in the form of tablets and syrup.
7. The plaintiff has averred that the defendant is the subsequent user of the trademark; having obtained the drug license on 17.09.1999 and commenced user in November 2000. It is stated that the use of the trademark "GEMCAL" by the defendant is likely to deceive and cause confusion in the market and that the use of an identical trademark by the defendant may help the defendant to pass off its products as those of the plaintiff and make illegal gains on the plaintiff's reputation. The defendant's trademark may be mistaken as being of the plaintiff as the plaintiff's product enjoys high reputation and valuable goodwill throughout the country. The confusion and deception is bound to arise as both the marks are identical and both products are for the same ailment and would be offered for sale through the same media and trade channel for the same class of customers.
8. The plaintiff claims to be the prior user of the trademark to the knowledge of the defendant and being prior in point of time claims to be the proprietor of the said trademark.
9. The defendant, also a company incorporated under the Companies Act, 1956, on the other hand, denies passing off its products as those of the plaintiff and claims to be the legal and lawful proprietor of the trademark "GEMCAL" and denies that it is the subsequent user of the trademark. It is stated that the plaintiff is guilty of suppression veri and suggestion falsi. The defendant contends that from the trademark application o........