Case Note & Summary
The Plaintiff, Macleods Pharmaceuticals Ltd., filed a suit for trademark infringement and passing off against the Defendants, Swisskem Healthcare and Pisces Lab, alleging that the Defendants' mark 'POLYDERM+' is deceptively similar to the Plaintiff's registered marks 'PANDERM' and 'PANDERM+' for medicinal preparations in Class 5. The Plaintiff sought a permanent injunction restraining the Defendants from using the impugned mark. The Defendants did not appear or contest the suit despite service, and the suit proceeded ex-parte. The Court noted that an earlier application for ad-interim injunction was refused by a different judge on the ground that the marks were not deceptively similar. However, upon hearing the suit, the Court found that the marks 'PANDERM' and 'POLYDERM' are structurally and phonetically similar, with the only difference being the letters 'A' and 'O' and the addition of '+' in the Defendant's mark. The Court held that such similarity is likely to cause confusion among consumers, especially in the context of medicinal products where a high degree of care is expected. The Court also noted that the Plaintiff's marks are registered and have acquired reputation. Consequently, the Court decreed the suit in favor of the Plaintiff, granting a permanent injunction restraining the Defendants from using the mark 'POLYDERM+' or any other deceptively similar mark, and ordered the Defendants to pay costs of Rs. 50,000 to the Plaintiff.
Headnote
A) Trade Marks Act, 1999 - Infringement - Deceptive Similarity - Sections 28, 29 - The Plaintiff, a pharmaceutical company, sought a permanent injunction against the Defendant for using the mark 'POLYDERM+' for medicinal preparations, alleging infringement of its registered marks 'PANDERM' and 'PANDERM+'. The Court held that the marks are structurally and phonetically similar, and the Defendant's use is likely to cause confusion, especially in medicinal products where a high degree of care is expected. The Court granted a permanent injunction restraining the Defendant from using the impugned mark. (Paras 1-10) B) Trade Marks Act, 1999 - Passing Off - Deceptive Similarity - Section 134 - The Plaintiff also claimed passing off, alleging that the Defendant's mark is deceptively similar and likely to cause confusion among consumers. The Court, applying the test of phonetic and structural similarity, found that the marks are deceptively similar and granted relief. (Paras 1-10) C) Civil Procedure Code, 1908 - Ex-parte Decree - Order VIII Rule 10 - The Defendants did not appear or file a Written Statement despite service, and the suit proceeded ex-parte. The Court, after considering the Plaintiff's evidence and submissions, decreed the suit in favor of the Plaintiff. (Paras 2-3)
Issue of Consideration
Whether the Defendant's mark 'POLYDERM+' is deceptively similar to the Plaintiff's registered marks 'PANDERM' and 'PANDERM+', and whether the Plaintiff is entitled to a permanent injunction and other reliefs.
Final Decision
The suit is decreed in favor of the Plaintiff. The Defendants are restrained by a permanent injunction from using the mark 'POLYDERM+' or any other deceptively similar mark in relation to medicinal preparations or any products. The Defendants are also ordered to pay costs of Rs. 50,000 to the Plaintiff.
Law Points
- Trademark infringement
- passing off
- deceptive similarity
- phonetic similarity
- structural similarity
- medicinal products
- ex-parte decree
- Trade Marks Act
- 1999
- Sections 28
- 29
- 134
