Case Note & Summary
The Plaintiff, Wockhardt Limited, filed a suit against Eden Healthcare Pvt. Ltd. seeking to prevent infringement and passing off of its trademark SPASGAN. The Plaintiff claimed to be the proprietor of the registered mark SPASGAN, used for pharmaceutical preparations since 1 January 1991. The application for registration was made on 22 April 1996 and registration was granted on 16 March 2004 under the Trade Marks Act, 1999. The Plaintiff became the owner by a Deed of Assignment dated 31 March 1999. The Defendant was using an identical mark SPASGAN for identical goods. On 23 August 2013, the Plaintiff obtained ex parte reliefs of injunction and appointment of Court Receiver. The Plaintiff also sought and obtained leave under Clause XIV of the Letters Patent, Bombay, to combine the cause of action for passing off with infringement, and ad-interim relief against passing off was granted on 30 March 2013. The Notice of Motion for temporary injunction was taken up for final hearing. The court considered the submissions that the marks are identical and used for identical goods, and that the Plaintiff's registration is valid and subsisting. The court granted the temporary injunction in favor of the Plaintiff.
Headnote
A) Trademark Law - Infringement - Identical Marks - Section 28, 29 Trade Marks Act, 1999 - Plaintiff's registered mark SPASGAN used for pharmaceutical preparations - Defendant using identical mark SPASGAN for identical goods - Court held that use of identical mark for identical goods constitutes infringement and granted temporary injunction (Paras 1-4). B) Trademark Law - Passing Off - Identical Marks - Plaintiff's prior user and registration of SPASGAN since 1991 - Defendant's use of identical mark likely to cause confusion - Court held that passing off is established and granted ad-interim relief (Paras 3-4). C) Civil Procedure - Leave to Combine Causes of Action - Clause XIV Letters Patent, Bombay - Plaintiff sought leave to combine infringement and passing off causes of action - Leave granted on 30 March 2013 (Para 3).
Issue of Consideration
Whether the Plaintiff is entitled to a temporary injunction restraining the Defendant from infringing the Plaintiff's registered trademark SPASGAN and from passing off its goods as those of the Plaintiff by using the identical mark SPASGAN.
Final Decision
The Notice of Motion is allowed. The Defendant is restrained by temporary injunction from infringing the Plaintiff's registered trademark SPASGAN and from passing off its products as those of the Plaintiff by use of the mark SPASGAN.
Law Points
- Trademark infringement
- passing off
- identical marks
- pharmaceutical goods
- registered trademark
- temporary injunction
- Trade Marks Act
- 1999
- Section 28
- Section 29
- Section 134
- Letters Patent Clause XIV
