S.J. Kathawalla JUDGMENT
S.J. Kathawalla, J.
1. The Plaintiff - Lupin Limited has alleged that the Defendants and others are committing acts of infringement, passing off and unfair trading by using the impugned mark "NEBISTOL", which mark is identical with and/or deceptively similar to the Plaintiff's earlier adopted and registered trademark "NEBISTAR". The present Suit is filed by the Plaintiff to prevent acts of infringement, passing off and unfair trading. By the present Notice of Motion, the Plaintiff has inter alia sought an order of injunction against the Defendants from manufacturing and marketing any medicinal preparations/products by using the mark NEBISTOL.
2. According to the Plaintiff, the Plaintiff i.e. Lupin Limited, is the registered proprietor of a word mark 'NEBISTAR'. The mark was registered on 2nd July 2003, which at the time of application for registration was proposed to be used. The mark has been extensively used by the Plaintiff since 2004. The Plaintiff has stated in the plaint that the Plaintiff has developed a series of NEBISTAR marks. The Plaintiff is using the mark NEBISTAR under various strengths, and to denote the strength, the Plaintiff started indicating the strength together with its registered trademark such as NEBISTAR 2.5. mg, NEBISTAR 5. Mg, NEBISTAR 10 mg, NEBISTAR SA and NEBISTAR H. The Plaintiff has produced the Certificate of its Chartered Accountant certifying the sales figures and the promotional activities (undertaken) by the Plaintiff to promote the product bearing the mark NEBISTAR. The Plaintiff has also produced the sample invoices evidencing sale of its product NEBISTAR. (Exhibits C, C1, D to D10 at Pages 31-43 to the plaint).
3. According to the Plaintiff, the first Defendant had made an application for registration of the mark NEBISTOL on 11th April, 2013 as a proposed user of the mark (Exhibit H1 page 61 to the Plaint). The Defendants have started use of NEBISTOL in March/April, 2014. The Registrar of Trade Mark raised an objection to the application of the first Defendant and sent his examination report to the first Defendant on 4th March, 2014, citing the Plaintiff's mark as being a conflicting mark with that of the first Defendant, whilst raising objection under Section 11 of the Trade Marks Act, 1999 ("the Act"), stating that the application of the first Defendant is liable to be refused. The first Defendant has in paragraph 3 (d) of the reply admitted that they generated the online examination report in April, 2014.
4. According to the Plaintiff when the Defendants started use of the mark NEBISTOL, the Plaintiff's trade mark was already on the Register and the products of the Plaintiff bearing the trade mark NEBISTAR had a prominent presence in the market.
5. According to the Plaintiff, by reason of the regular, continuous and extensive sale of the products of the Plaintiff bearing the said registered trade mark NEBISTAR, and due to the efforts taken by the Plaintiff in popularizing its products bearing the said trade mark and also by reason of the high efficacy and superior quality of the said medicinal preparations, the Plaintiff's products bearing the registered trade mark NEBISTAR enjoyed a good reputation and goodwill amongst the doctors, medical fraternity, chemists and members of the trade and public. Apart from the statutory rights, the Plaintiff has also acquired valuable common law rights in the said trade mark by virtue of the goodwill and reputation accrued to the Plaintiff over a period of time. According to the Plaintiff, the Defendants are guilty of committing acts of infringement, passing off and unfair trading by use of the impugned mark NEBISTOL, which mark is identical with and/or deceptively similar to the Plaintiff's earlier adopted and registered trade mark NEBISTAR. The Plaintiff has therefore filed the present Su........