Winthrop Products Inc. vs Eupharma Laboratories Ltd.

on 2 September, 1997

Bombay High Court Bombay High Court Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997 Author: A Sakhare Bench: A Sakhare ORDER A.Y. Sakhare, J. 1. By this motion, plaintiffs are seeking order of injunction against defendants from using in any form or manner trade mark or name PANADOL and/or from passing off or attempting to pass off defendants' product in the name of PANADOL. Plaintiffs' claim is based upon infringement of trade mark and passing off. 2. Plaintiffs are corporation organised and governed by the State of Dalaware and has its head office at U.S.A. Plaintiffs are manufacturer of drugs and pharmaceuticals including an Antipyretic and Analgesic drugs, which is marketed by plaintiff on the trade mark PANADOL, a word mark invented by plaintiffs. 3. Plaintiffs claim to be the proprietor of trade mark PANADOL, which has been registered by plaintiffs in several countries across the world. Plaintiffs sell the said drug in several countries. Plaintiffs have started using this trade mark since about 1955. As per plaintiffs, said trade mark PANADOL is internationally famous mark and has acquired an extensive and valuable goodwill. Plaintiffs' annual global sales of 1994 off PANADOL was 240 million U.S. Dollers. The drug marketed under the trade mark PANADOL is an antipyretic and analgesic and is sold across the counter. 4. As per plaintiffs, word PANADOL was invented by plaintiff's predecessor in or about 1955. On 9-6-1955, a circular was issued to the staff of the plaintiffs' predecessor inviting suggestions of a short name for a new analgesic product. After suggestions were received, seven names were shortlisted. Plaintiff finally adopted PANADOL as trade mark with TRIMON as a reserve. Plaintiffs have placed reliance upon circular dated 9-6-1955, internal date on shortlisted trade mark including PANADOL, internal memo dated 27-4-1956, internal memo dated 10-10-1956 relating to questionnaire on PANADOL. Plaintiffs have also placed upon Hospital Price List of February 1968, circular dated 8-11-1968. National Health Service Dispensing Doctors' Price List dated 1-2-1968, Dispensing Doctors' Price List of January 1969, Hospital Price List of January 1970, Dispensing Doctors' Price List of January 1970, circular on price change dated 16-7-1970 and Price List of 1971. On this material, plaintiffs claim that its product is marketed under trade mark PANADOL right from 1955 or thereabout and is sold across various countries. Plaintiffs have also placed reliance upon several medical journals published between 1956 to 1962. The said journals are British Medical Journal, the Lancet Journal, the Pharmaceutical Journal, the Chemist and Druggist Journal, the Irish Chemist, Druggist Journal and the Chemist and Druggist Year Book to show that plaintiffs have used this trade mark for its product and said trade mark has a worldwide recognition. 5. On 21-10-1982, plaintiffs were registered as proprietor of the trade mark PANADOL in India under Clause 5 of IV Schedule to the Trade and Merchandise Marks Act (hereinafter referred to as the 'Act' for the sake of brevity) under No. 396820. Plaintiffs have received intimation of such registration in or about February 1995. As per plaintiffs, when its application for registration was in process, on 13-1-1992, notice of opposition was filed by the predecessor of defendant to oppose the registration of the aforesaid trade mark. The said opposition was on the basis of its alleged use of the trade mark PANADOL by defendant since 1972. In notice of opposition, defendants filed interlocutory petition, which was dismissed by the Deputy Registrar and plaintiffs were granted registration. Defendants have challenged the order passed by the Deputy Registrar by filing F.A.O. No. 187 of 1993 before Delhi High Court. The said appeal is still pending without any interim orders in defendant's favour.

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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

6. As per plaintiff, on 7-2-1971, predecessor of defendants applied for registration of trade mark PADADOL for its user. At that time concerned authority pointed out to the defendants' predecessor that the trade mark of similar name has been registered by other party. In view of this objection of the authority, defendants' predecessor abandoned its application but started using name PANADOL for its product from year 1972. As per plaintiffs, the said act of defendants is dishonest, as defendants were aware that the authority concerned has rejected its request and that defendant has abandoned its claim for word PANADOL. After plaintiffs' application for registration, defendants have applied for registration of same trade mark and said application is still pending. As per the record, notice of opposition is filed by plaintiffs. Plaintiffs have filed this suit on the averments that in March 1995, defendants came with share issue, wherein one of the product referred to was PANADOL. As per plaintiffs, at this time it got knowledge about the user by defendants. The plaintiffs have filed this suit on the ground of infringement of trade mark and on passing off. 7. Defendants have registered the claim on the ground that in year 1963, defendants, predecessor in title as a sole proprietor started company in the name of Eupharma Laboratories and started its production. In year 1971, the said proprietory concern was converted in partnership firm under the name M/s. Eupharma Laboratories. In years 1972, defendants started manufacturing an analgesic pharmaceutical product under the trade mark PANADOL. In year 1985, a private limited company was incorporated by name Eupharma Laboratories Pvt. Ltd. As per defendants, partnership was dissolved and its assets and goodwill along with tenancy rights, licenses, trade marks, patents design etc. were taken over by private limited company. In year 1982, said private limited company became a Public Limited Company under the provisions of Companies Act, 1956. 8. As per defendants, word PANADOL was adopted in year 1971 and used since 1972. Relevant statements in defendants' affidavit dated 11-4-1997 are as under : "I say that the word PANADOL was adopted in 1971 and used since 1972 by the Defendants' predecessor-in-title and by the present Defendants. The prefix PAN or PANA often occurs in medical dictionaries such as Butterworth's Medical Dictionary for various medical terms, for example, "panacea" which means a universal remedy or a cure-all. The suffix "Dol" in the mark was taken from the prefix "Dol" occurring in the medical term "DOLOR" which means "physical pain, mental anguish and painful here etc.". In 1971 M/s. Eupharma Laboratories the predecessors-in-title of the Defendants obtained permission from the Controller of Drugs, State of Maharashtra, for manufacturing medicinal and pharmaceutical preparations under the trade mark "PANADOL". The food and drugs administration Maharashtra State Bombay granted. Licence No. 55 on 5th April, 1971 to M/s. Eupharama Laboratories Partnership firm consisting of (1) R. V. SHAH, (2) B. R. SHAH and (3) Smt. S. R. SHAH. The said drug license was renewed from time to time." 9. As per defendants, it is manufacturing and marketing its product in the name of PANADOL and it has vested rights for user of the same. Defendants claim that plaintiffs are not operating in India and that defendants are only using said word PANADOL. As per defendant, out of its total turnover, 3% is turnover from pharmaceutical product marketed under the name of PANADOL. Defendants have resisted this motion on the ground that it has vested rights, trade mark is not used in India by plaintiffs, plaintiffs' registration is not valid as rectification proceedings are pending, adoption of word PANADOL in 1971 was not bad faith, that plaintiffs are unable to point out instances of confusion or deception and plaintiffs have approached the Court at very late stage, or plaintiffs have acquiesced with defendants' user of the word PANADOL for its marketing. 10. On behalf of plaintiffs, it is contended that in year 1955 word PANADOL was invented by plaintiffs' predecessor. Under this trade mark pharmaceutical product is marketed. Now the said product is marketed in nearly 98 countries. All important medical journals right from 1956 are referring to plaintiffs' product PANADOL, even-though, plaintiffs are not marketing its product in India, in view of its international registration drug being pharmaceutical drug, in law Plaintiffs will be entitled for injunction. That application made by defendants' predecessor for registration of trade mark was abandoned in year 1971, in spite of this
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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

abandonment defendants have started using word PANADOL to market its of this abandonment defendants have started using work PANADOL to market its product. This act is dishonest and that as plaintiffs being registered holder of trade mark PANADOL in India defendants are not entitled to use the trade mark PANADOL. Thus, plaintiffs have based its claim on infringement of their mark and on passing off. In support of these submissions plaintiffs have relied upon several decisions of this Court, Delhi High Court and Supreme Court. These decisions are (1) Misc. Petition No. 2 of 1992 Marion Merrell Dow Inc. v. Unichem Laboratories Ltd. decided by Mr. Justice S. N. Variava on 27th April 1994. (2) Kamal Trading Co. v. Gillette U.K. Limited ((1988) IPLR, 135 (Div. B. of this Court)). (3) Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. and another . (4) Schering Corporation and others v. Kilitch Co. (Pharma) Pvt. Ltd. (Division Bench of this Court) ((1994) IPLR 1). (5) National Chemicals & Colour Co. and others v. Reckitt & Colman of India Limited and another . (6) Ruston & Hornby Ltd. v. Zamindara Engineering Co. . (7) Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. and another . 11. As per defendants, in view of Section 33 of the Act defendants have vested rights, as from 1972 the said product is manufactured and marketed by defendants as proprietor and user is continuous. Hence no injunction can be granted in plaintiffs' favour. Plaintiffs' registration is not valid as defendants have filed rectification application, therefore, plaintiff cannot press their claim on the ground that they have registered trade mark as PANADOL in India, defendant claims the user as bona fide user and not in bad faith, that there is no confusion or deception in the customers as plaintiffs are not using trade mark in India, that plaintiffs are not entitled for injunction in view of delay and as no steps are taken by plaintiffs from year 1971. Defendants have placed reliance upon (1) M/s. Radhakishan Narayandas v. Trilokchand and others . (2) Hindustan Pencils Pvt. Ltd. v. Aptudet Industries (Decision of Delhi High Court Dated 10-7-1991). (3) R. J. Reynolds Tobacco Co. v. I.T.C. Limited (1986-87 IPLR 180). (4) Consolidated Foods Corporation v. Brandon & Co. Pvt. Ltd. (1966 B.L.R. 612). (5) Decision of Calcutta High Court in Appeal No. 530 of 1992 decided on 27/28 September 1993 in case of Kabushiki K. Toshiba v. Toshiba Appliance and others. 12. From the facts narrated above, it is clear that plaintiffs have invented word 'PANADOL' in year 1955. In year 1956 the said trade mark is registered. As on today, the said trade mark is registered by plaintiffs in 98 countries. The said trade mark is also registered in India on 21-1-1982. Defendants' objection for its registration was overruled. Thus, plaintiffs are holder of registered trade mark PANADOL. Plaintiffs' product is referred and given wide publicity in all important medical journals. Plaintiffs' trade mark PANADOL is internationally famous mark and has acquired valuable publicity as a mark used by plaintiffs. It is true that said product is not sold in India, however, considering law on this point even-though, plaintiffs are not marketing this product in India in view of drug being pharmaceutical and sold across the counter, plaintiffs have statutory right to claim injunction against defendant. Reference can be made to two decisions of this
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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

Court in (1) Marion Merrell Dow Inc. v. Unichem Laboratories Ltd., and (2) Kamal Trading Co., and others v. Gillette U.K. Limited. In Marion Merrell's case, this court has dealt with somewhat similar situation. Relevant observations in the said decision are as under : "A person who blatantly copies some body else's mark can have no right in that mark and cannot be said to be the proprietor thereof. Therefore, once it is shown that the person has no proprietary rights. Then even though the word is an invented word, the Applicant cannot apply for registration under Section 18(1). Thus, Section 9 must necessarily be read with Section 18(1) and it is only if two are satisfied that the mark can be registered." "In this behalf it is pertinent to note that as shown by International Bibliography voluminous literature on Sucralfate has been existing for a number of years. Not only that but in 1982 there was International Sucralfate Symposium in the 7th World Congress of Gastroenterology at Stockholm. Prior to that in June 1980 there was the 11th International Congress of Gastroenterology at Hamburg wherein the effect of Sucralfate on ulcer has been discussed. Not only that in October 1981 there is an article on Petitioners' product "CARAFATE" as it being an anti-ulcer drug. The 1st Respondents are a medicinal company. It is impossible to believe that they were not aware of the developments in the use of Sucralfate as an anti-ulcer drug and the invention of drug "CARAFATE" by the petitioners as an anti-ulcer drug. In my view, it is too much of a co-incidence that the exact mark and the same preparation for treatment of duodenal ulcers has been suddenly thought of by the 1st Respondent. As stated above a drug or a medicine is not something which can just be thought of. It needs years research and development. It is very clear that the 1st Respondents have done no research and/or development in respect of this drug. It has not been claimed, before the Trade Mark Registry as well as before this Court, that any research was done. No proof of any research or development has been produced. It would therefore, be clear that the 1st Respondents have not developed this drug but merely copied it. They could only have learnt about it from international magazines or seminars. If the drug is copied, it follows that this mark is also copied. In the international market only the Petitioners own the mark "CARAFATE" for an anti-ulcer drug. It is, thus, clear that it is the Petitioners' mark and product which has been copied by the 1st Respondents." "Further in my view, whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicines, the Courts must also keep in mind the fact that nowadays the field of medicine is of an international character. The court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in India and the advertisement and the user by the overseas company. The Court must ensure that public interest is in no way imperiled. The 2nd Respondent has totality ignored this aspect." "I am unable to accept the submissions of Mr. Tulzapurkar. All the authorities relied by Mr. Tulzapurkar very significantly do not deal with the medical field. As already stated above and as set out in the various authorities relied upon by Mr. Chitnis, the medical field has assumed an international character. It is a fact of which judicial notice must be taken. Doctors particulars eminent Doctors, medical practitioners and persons or companies connected with the medical field keep abreast of latest developments in medicine and preparation worldwide. Medical literature is freely available in this country. Doctors, medical practitioners and persons connected with medical field regularly attend medical conferences, symposiums, lectures, etc. Also as set out hereinabove, what is involved is public interest. It would be anomalous situation if an identical mark in respect of an identical drug is associated all over the world with the petitioner but that mark remains of the registered ownership of the 1st Respondents in India. Such a situation would cause immense confusion and deception in the minds of the public. Also as stated above the authority of the Supreme Court in the case of National Sewing Thread Co. Ltd. is binding on this Court and prevails over all contrary authorities of Foreign Courts." "In case like this, where the mark is in respect of a field which is of an international character and it is clear that if the mark is allowed to be registered there will be confusion and deception the question of the petitioner first establishing reputation in India does not arise. As set out earlier in U.S.A. and Australia the Petitioners'
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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

mark "CARAFATE" was registered prior to the application by the 1st Respondents. It has been registered in U.S.A. since 26th May, 1981 and in Australia since 7th May, 1982. They have given their sales figures. In 1982 they were in the region of US $ 14 million. The International Bibliography is titled "CARAFATE Sucralfate". It contains information about numerous discussions, articles, seminars, conferences, etc. Most of these are prior to the date of Application by the 1st Respondents. On internal Pg. 1918 it sets out Petitioners' product "CARAFATE". It shows that this is available since October 1981. It is impossible to believe that in the filed of medicine, Doctors, medical practitioners and others connected with it would not know of the Petitioners' mark. This is also established by the questionnaire. 13. In Kamal Trading case, this Court has considered the fact of non-availability of the product in India and has held that even though, the product is not available in India the proprietor of trade mark, which is of international repute will be entitled for injunction. Relevant observations are as under : "Mr. Tulzapurkar very rightly submitted that the trade mark '7 O'Clock' had acquired worldwide reputation and any customer purchasing the goods with that mark would immediately connect the goods to the house of Gillette which are the registered owners of the mark '7 O'Clock'. It cannot be overlooked that it is not necessary for the plaintiffs to establish that in fact any customer was deceived, but it is enough if it is shown that there is likelihood of deception. We have no hesitation in concluding that the user of the mark '7 O'clock' by the defendants would clearly result in deceiving the customer with the impression that the tooth brushes come from the house of Gillette. A faint submission was advanced by Mr. Desai that the plaintiffs cannot use trade mark '7 O'clock' simpliciter in India and it is not necessary to add a word 'EJTEK' while selling the razor blades. We fail to appreciate how additional word would make any difference and how it will enable the defendants to pass off their products by using the park '7 O'clock' simpliciter." "We must express our dissent with the view taken in this case. In our judgment, it is not possible to conclude that the goodwill or the reputation stands extinguished merely because the goods are not available in the country for some duration. It is necessary to note that the goodwill is not limited to a particular country because in the present days, the trade is spread all over the world and the goods are transported from one country to another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not necessarily limited to the country where the goods are freely available because the goods though not available are widely advertised in newspapers, periodicals, magazines and in other medias. The result is that though the goods are not available in the country, the goods and the mark under which they are sold acquires wide reputation. Take for example, the television, and video Cassette Recorders manufactured by National, Sony or other well-known Japanese Concerns. There televisions and V.C.Rs. are not imported in India and sold in open market because of trade restrictions, but is it possible even to suggest that the word 'National' or 'Sony' has not acquired reputations in this country ? In our judgment, the goodwill or reputation of goods or marks does not depend upon its availability in a particular country. It is possible that the manufacturer may suspend their business activities in a country for short duration but that fact would not destroy the reputation or goodwill acquired by the manufacturers. An identical view was taken by Division Bench of Mr. Justice S. K. Desai and Mr. Justice Barucha in a judgment dated July 24, 1986 in Appeal No. 368 of 1986. The question for consideration before the Division Bench was whether the goodwill in the trade mark "7 O'clock" stood extinguished because of non-availability of blades with the mark in India after year 1958. The Division Bench turned down the claim by pointing out various reasons and we are in entire agreement with the observations made in the judgment on this aspect. In our judgment, it is not possible to follow the view taken in the case of 'Budweiser'. 14. Considering the decisions of this court referred to above, PANADOL being pharmaceutical product and plaintiffs being proprietor of this trade mark will be entitled to prevent defendant from using the said trade mark even in India. Plaintiffs have also registered this trade mark in India in 1982, that too by overruling defendants' objection. Defendants' appeal is pending before Delhi High Court without any interim orders. Thus, in law defendants will not be entitled to use trade mark PANADOL to market its product. In my judgment, defendants, marketing its product under the name PANADOL is clear infringement of statutory
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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

rights available to plaintiffs, therefore, plaintiffs will be entitled for injunction. Even otherwise under Common Law Rights as the product being invented by plaintiffs in 1955 and registered nearly in 98 countries including India, plaintiffs will be entitled to prevent defendants under the Common Law Rights of passing off. 15. At this stage, defendants' case that defendants have vested rights to use the said trade mark will have to be considered because defendants have placed reliance upon Section 33 of the Act. As per this section, if defendants are able to establish bona fide user of trade mark PANADOL for its product from 1972 then no injunction can be granted against defendants. Much will depend upon finding as to whether defendants' user right from 1972 is bona fide and honest. In year 1955, the word PANADOL was invented by plaintiffs' predecessor and came to be registered subsequently. The said trade mark is registered by plaintiffs in nearly 98 countries. Thus, plaintiffs have acquired goodwill in respect of the said trade mark through out the world. The medical magazines referred to above also show that plaintiffs have advertised their product in various medical magazines of international repute. There show that persons concerned with the medical profession were aware about the said trade mark and product marketed by plaintiffs under the said trade mark. Medical literature is freely available through out the world including India. Doctors, practitioners and person connected with medical field regularly attend medical conferences, symposium, lectures etc. Plaintiffs company is registered in U.S.A. and plaintiffs' product is registered in several countries such as Australia, Behrein, Bangladesh, Canada, Denmark, France, Greece, Hongkong, Indonesia, Iraq to name few. There is tourist traffic across these countries and tourists visit India. Thus, defendants' case of its ignorance about user of plaintiffs company cannot be accepted. In year 1971, first time attempt was made by defendants' predecessor to register PANADOL trade mark for its product, however, the said application was abandoned when the objection was raised by the authority that word PANADOL is reserved for some other company and registration of word PANADOL by defendant will not be permissible. Instead of prosecuting the said application, defendants abandoned the said application and started marketing its products under mark PANADOL. Thus, in year 1972 itself defendant was aware that said word PANADOL is a trade mark reserved by other company and in India authorities have refused to grant registration of the said word PANADOL for defendants' product. User of the word PANADOL in spite of knowledge cannot be termed as honest user. The said user must be treated as dishonest user and trying to take advantage of goodwill earned by trade mark PANADOL Defendants are marketing its product under mark PANADOL and customers may receive the same under the bona fide belief that the said product is that of plaintiffs. Plaintiffs have invented word PANADOL in year 1955, from year 1956, product is manufactured and marketed under trade mark PANADOL. Throughout world, plaintiffs have acquired goodwill as it is registered in nearly 98 countries and available mostly throughout world. Explanation given by defendants as to how they started using said word cannot be accepted as the said word was invented by plaintiffs in year 1955 and by 1972 the said words has acquired considerable goodwill being plaintiffs' product throughout the world. Defendants' Explanation as referred to above is afterthought. Defendants cannot show ignorance nor any attempt is made to show that defendants are unaware about the user of this name by plaintiffs. In year 1983, it is plaintiffs who applied first for registration in India, who succeeded in getting registered its trade mark, while defendants' application for registration is still pending. Defendants' rectification proceedings are also pending. In these circumstances, I have no hesitation to come to the conclusion that user of word PANADOL by defendants from year 1972 is dishonest user, therefore, defendant will not get any protection of Section 33 of the Act. 16. Now, the question which is to be considered about the laches or acquiescence on the part of plaintiffs. Plaintiffs have claimed that plaintiffs came to know about the user in March 1995. Even-though, this explanation is not proper as law stands today delay would not defeat plaintiffs' rights. Reliance place by plaintiffs on decisions of Apex Court, this Court and Delhi High Court to contend that delay cannot defeat their right to seek injunction will have to be accepted. Apex Court in cases of Ruston & Hornby Ltd. v. Zamindara Engineering Co., (supra) as observed as under : "5. But in an infringement action the issue is as follows :

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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

"Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiffs' registered trade mark ?" It very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get-up of the defendant's good may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issued as soon as it is proved that the defendants is improperly using the plaintiff's mark. 6. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that a did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception not any actual damage need by proved. At common law the action was not maintainable unless there had been fraud on A's part. In equity, however, Lord Cottenham L.C. in Millington v. Fox ((1833)3 My & Cr. 388), held that it was immaterial whether the defendants had been fraudulent or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the equitable rule the victory over the common law rule. 7. The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd. ((1941)58 RPC 147 (161)). "The Statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing off. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passing-off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the courts have held, and it is now expressly provided by the Trade Marks Act, 1938, Section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive." In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark the Court will not inquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it the test of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions." 17. Delhi High Court in Hindustan Pencils Pvt. Ltd. v. M/s. India Stationary Products Co. and another (supra), has considered at length the question of delay and has held that delay will not defeat statutory rights. The relevant observations are as under : "31. Even though there may be some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiffs rights then in that case, even if there is an inordinate delay on the part of the plaintiffs in taking action against the defendant, the relief of injunction is not denied. The defence of laches or inordinate delay is a defence in equity. In equity both the parties must come to Court with clean hands. An equitable defence can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else's right cannot claim the continued misuse of the usurped right. It was observed by Romer J. in the matter of an application brought by J. R.
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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

Parkington and Co. Ltd. (1946)63 RPC 171, at page 181 that "in my judgment, the circumstance which attend the adoption of a trade mark in the first instance are of considerable importance when one comes to consider whether the use of that mark has or has not been a honest user. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently". It was further noted by the learned Judge in that case that he could not regard the discreditable origin of the user as cleansed by the subsequent history. In other words, the equitable relief will be afforded only to that party who is not guilty of a fraud and whose conduct shows that there had been, on his part, an honest concurrent user of the mark in question. If a party, for no apparent or a valid reason, adopts, with or without modifications, a mark belonging to another, whether registered or not, it will be difficult for that party to avoid an order of injunction because the court may rightly assume that such adoption of the mark by the party was not an honest one. The Court would be justified in concluding that the defendant, in such an action, wanted to cash in on the plaintiffs name and reputation and that was the sole, primary or the real motive of the defendant adopting such a mark. Even if, in such a case, there may be an inordinate delay on the part of the plaintiff in bringing a suit for injunction, the application of the plaintiff for an interim injunction cannot be dismissed on the ground that the defendant has been using the mark for a number of years. Dealing with this aspect Harry D. Nims in his "The Law of Unfair Competition and Trade Marks", Fourth Edition, Volume Two at page 1282 noted as follows : "Where infringement is deliberate and wilful and the defendant acts fraudulent with knowledge that he is violating plaintiffs rights, essential elements of estoppel are lacking and in such a case the protection of plaintiff's right by injunctive relief never is properly denied. "The doctrine of estoppel can only be invoked to promote fair dealings." 32. It would appear to me that where there is an honest concurrent use by the defendant then inordinate delay laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is the interest of the general public, which is the third party in such cases, which has to be kept in mind. In the case of inordinate delay or laches, as distinguished from the case of an acquiescence, the main prejudice which may be caused to the defendant is that by reason of the plaintiff not acting at an earlier point of time the defendant has been able to establish his business by using the infringing mark. Inordinate delay or laches may be there because the plaintiff may not be aware of the infringement by the defendant or the plaintiff may consider such infringement by the defendant as not being serious enough to hurt the plaintiff's business. Nevertheless, if the court comes to the conclusion that prejudice is likely to be caused to the general public who may be misled into buying the goods manufactured by the defendant thinking them to be the goods of the plaintiff then an appropriate cases, allow some time to the defendants to sell off their existing stock but an injunction should but denied. 33. Where the plaintiff however, is guilty of acquiescence, the different considerations may apply. As already noted, acquiescence may mean an encouragement by the plaintiff to the defendant to use the infringing mark. It is as if the plaintiff wants the defendant to be under the belief that the plaintiff does not regard the action of the defendant as being violative of the plaintiffs rights. Furthermore, there should be a tacit or an express assent by the plaintiff to the defendant's using the mark and in a way encouraging the defendants to continue with the business. In such a case the infringer acts upon an honest mistaken belief that he is not infringing the trade mark of the plaintiff and if, after a period of time when the infringer has established the business reputation, the plaintiff turns around and brings an action for injunction, the defendant would be entitled to raise the defence of acquiescence. Acquiescence may be a good defence even to the grant of a permanent injunction because the defendant may legitimately contend that the encouragement of the plaintiff to the defendant's use of the mark in effect amounted to the abandonment by the plaintiff of his right in favour of he defendant and over a period of time, the general public has accepted the goods of the defendant resulting in increase of its sale. It may, however, be in stated that it will be for the defendant in such cases to prove acquiescence by the plaintiff, Acquiescence cannot be inferred merely by reason of the fact that the plaintiff has not taken any action against the infringement of its right."

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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

18. Decision of the Delhi High Court is quoted with approval by this court in case of Schering Corporation and others v. Kilitch Co. (Pharma) Pvt. Ltd. ((1994) IPLR 1). This Court agreed with the law laid down by the Delhi High Court. Relevant observations are as under : "The principles enunciated by the single Judge of the Delhi High Court, in our opinion, are a complete answer to the Defendants' plea on the ground of delay. Once it is established that there is visual and phonetic similarity, and once it is established that the Defendant's adoption of the trade mark is not honest or genuine, then the consideration of any plea as to delay must be on the basis of a consideration whether there has been such delay in the matter as has led the Defendants to assume that the plaintiffs have given up their contention and/or whereby the Defendants have altered their position so that it would be inequitable to grant interim relief to stop them from using the trade mark until the suit is decided ?" 19. Division Bench of this Court in case of National Chemicals & Colour Co. and others v. Reckitt & Colman of India Limited and another (supra), in para 22 has observed as under : "21. The learned single Judge has also negatived any honest, concurrent use of the trade mark proposed to be registered by the appellants which would entitle the Registrar to grant registration to this trade mark under Section 12(3) of the Trade and Merchandise Marks Act 1958. In 1971, when the appellants first applied for registration of their trade mark, they applied for registration, both of the picture marks as also of the word "Bul Bul". It was, however, pointed out to them by the Registrar of Trade Marks that there were other registered trade marks which contained the picture of a bird on a twig. As a result, the appellants dropped the device of the two birds on a twig and merely applied for registration of the word mark "Bul Bul", which registration was granted. It seems that thereafter they continued to use the picture mark for a couple of years. Once again they applied for registration of the picture mark in 1973. The learned single Judge has rightly held that this cannot be considered as an honest concurrent user. The appellants were aware that there were other similar registered trade marks. Nevertheless they continued to use the same device on their product presumably in the hope of getting registration at a subsequent date. Such a user cannot be considered as an honest concurrent user under Section 12(3). We therefore agree with the learned single Judge that the benefit of Section 12(3) cannot be granted to the appellants." 20. In view of the law down by the Apex Court, this court and Delhi High Court, plaintiff cannot be non-suited on ground of delay or laches. On the ground of acquiescence, there is nothing on record to show that any time plaintiffs acquiesced with defendants marketing its product under the name PANADOL. Defendants have placed reliance upon the decision of Madhya Pradesh High Court in case of M/s. Radhakishan Naraindas v. Trilokchand and others (supra). Relevant observations are as follows : "(3) Before us the question has arisen whether Section 25 comes to protect the defendants in their user of the label 'Gilhari Chhap'. The provisions of that section are as follows : 'Nothing' in this Act, shall entitle the proprietor or a registered user of a trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor in title of his has continuously used that trade mark from a date prior : (a) *** *** *** *** (b) to the registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor in title of his, Whichever is the earlier, or to object (on such use being proved) to registration of that identical or nearly resembling trade mark in respect of those goods under sub-section (2) of Section 10. The Learned counsel for the appellant contends on the authority of two cases reported in Reinhardt v. Scalding, and Subbiah v. Kumarval Nadar, that a mere declaration in respect of a label before a Justice of the Peace in the year 1936 was not sufficient to discharge the burden laid by Section 25 upon a defendant who
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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

wished to set up prior user of a lable." "(5) There can be no doubt that if the label was in current use before the registration of the plaintiff's label under the India Trade Mark Act, the provisions of the section above quoted would have prima facie the defendant from the grant of a temporary injunction. For this purpose, however, there has to be evidence. Unfortunately, neither side cared to lead evidence and relied upon affidavits, which in the circumstances of the case were a poor substitute for the kind of proof needed to apply Section 25 of the Indian Trade Marks Act to such a case. Before use also reliance was placed upon those same affidavits and the declaration to which we have referred. We do not think that in view of the dicta in the two cases cited, particularly the dicta of their Lordships of the Privy Council, we can look into this kind of evidence to decide upon the application of Section 25 of the Act. Since there is no material before us, we are unable to give a finding whether in the circumstances of the case a temporary injunction ought or ought not to issue. Equally, the trial Court was not in a position to give such a finding either, whether affirmatively or negatively. The proper course for the subordinate Court was therefore, to call for prima facie evidence of user or non-user and to decide summarily the question of a grant of temporary injunction in the light of such evidence." and decision of Delhi High Court dated 10-7-1991 in Hindustan Pencils Ltd. v. Aptudet Industries, (supra). "7. Coming to the second and third contentions of the defendants, taking into account the various facts and also the documents placed on record by both the parties. I find that the defendants have been using the trade mark NATRAJ as also the device of NATRAJ prior to 1983 and even to the knowledge of the plaintiff since 1986. Such use of marks by the defendants prima facie appears to have been open and honest since before 1975 and that their products are different from those of the plaintiff who is admittedly not producing or selling either sealing wax or the chalks sticks or colouring chalks. These facts coupled with the fact that the plaintiff had taken no steps to enforce any right that it may be having against the defendants for about 5 years has given rise to certain equities in favour of the defendants. It is true that in a number of cases it has been repeatedly held that in an action for infringement of trade mark, delay in initiating an action for infringement is not fatal and that the statutory protection should not be lightly denied to the registered proprietor and that if there is some delay the exclusive right of user cannot be lost by delay alone. Such would be the case in the absence of the circumstances and provision of law referred to hereafter. By placing reliance on these authorities, defendants contend that their act is protected under Section 33 of the Act. However, in view of the decision referred-to above by the plaintiff, defendants' case cannot be accepted. 21. Defendants' further reliance upon decision of this Court in case of Consolidated Foods Corporation v. Bandon & Co. Pvt. Ltd. (supra), wherein it is observed as under : "A trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly the article having assumed a vendible character is launched upon the market. As between two competitors who are each desirous of adopting such mark it is entirely a question of who gets there first. To claim the proprietorship of a mark it is not necessary that the goods should have acquired a reputation for quality under that mark. Actual use of the mark under such circumstances as showing an intention to adopt and use it as a trade mark is the test rather than the extent or duration of the use. A mere casual intermittent or experimental use may be insufficient to show an intention to adopt the mark as a trade mark for specific articles of goods. Registration under the statute does not confer any new right to the mark claimed or any greater rights than what already existed at common law and at equity without registration. It facilitates a remedy which may be enforced and obtained throughout the State and it establishes the record of facts affecting the right to the mark. Registration itself does not create a trade mark. The trade mark exists independently of the registration which merely affords further protection under the statute. Common law rights are left wholly unaffected. Priority in adoption and use of a trade mark is superior to priority in registration."
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Winthrop Products Inc. vs Eupharma Laboratories Ltd. on 2 September, 1997

This decision is of not much assistance to defendants as in view of the decision referred to above as the user of dishonest user defendant will not be entitled for protection. 22. Defendants' argument that as the product is not marketed in India, the plaintiffs will not be entitled for injunction and reliance placed on decision of Calcutta High Court dated 27th/28th September, 1993 in Kabhushiki Kaiha Toshiba (Toshiba Corporation) v. Toshiba Appliances Co. and others cannot be accepted. Said decision on facts is not applicable to the present case. Even otherwise, in view of the decision of this Court as referred to above, defendants cannot be permitted to use word PANADOL to market its product. 23. Defendants' case that registration is not valid as rectification proceedings are pending and its reliance upon decision of 1986/87 I.P.L.R. 180 is not of much assistance to defendants in view of direct decision of this Court in case of Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd. and another (supra), wherein it has been held as under : "41. Mr. Rahimtoola then contended that Santosh Kumar Poddar has filed an application with the Registrar, in his capacity as a shareholder of the second defendants, for holding that the plaintiffs are not entitled to be the registered proprietors of the trade mark, as the assignment of the proprietary rights in the said trade mark by the second defendants to the plaintiffs is invalid. Whatever the worth of the said application, it is not possible to accept the contention that such an application can prevent the registered proprietor from asserting his rights as registered proprietor of the trade mark continues on the register. The short answer to the contention is contained in the judgment of Justice Vimadalal of this Court in Hindustan Embroidery Mills Pvt. Ltd. v. K. Ravindra & Co. (supra), wherein the learned Judge pointed out that it is not the practice of this Court to consider the validity of the registration of a trade mark on a motion for interlocutory injunction taken out by the person who has got the mark registered in his name. While a mark remains on the register (even wrongly), it is not desirable that others should imitate it. I am unable to accept the contention that the pendency of the rectification application prevents the plaintiffs from exercising the statutory rights under the Trade Marks Act or from seeking interim reliefs based thereupon. Application for rectification or removal is not of much assistance to defendant as position stands today in law plaintiffs are proprietor of registered trade mark PANADOL and defendants cannot be permitted to use the same. 24. In view of the aforesaid findings, it must be held that defendants have no vested right to use trade name PANADOL, plaintiffs are registered proprietors, its registration is valid, the adoption of name PANADOL by defendant in 1972 is not in good faith, user from 1972 will not give any right to defendants to claim said name as proprietor and plaintiff cannot be non-suited on the ground of delay or acquiescence. In my judgment, in view of the findings recorded in plaintiffs' favour and law as stand today, defendants will have to be prevented from using the trade mark or name PANADOL as it infringes plaintiffs' rights as plaintiffs are only entitled to use the trade mark PANADOL. Similarly defendants will have to be prohibited from passing off defendants' product by using trade mark PANADOL even under Common Law. 25. In the result, defendant, its servants, officers, agents, assignee, and successors in title are prevented by order of injunction (1) from using in any form or manner whatsoever the trade mark or name PANADOL, (2) from passing off or attempting to pass off defendants' product in the name PANADOL or advertising it in any manner or in any form the PANADOL as its products. 26. Motion made absolute in the aforesaid terms with cost quantified at Rs. 5,000/-. 27. At the question of defendant, operation of this order is stayed for a period of 6 weeks from today. 28. Certified copy is expedited.
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