Case Note & Summary
The plaintiff, Glenmark Pharmaceuticals Ltd., filed a suit against G.R.A.F. Laboratories Pvt. Ltd. and Valence Health Care for infringement of its registered trademark 'ZITA' and for passing off. The plaintiff, a pharmaceutical company with over three decades of business, derived title to the mark through two assignments: first from Hardeep Singh Bhatia to Sahil Juneja, and then from Sahil Juneja to the plaintiff. The assignments were executed in January 2013, and the plaintiff's name was entered on the Register of Trade Marks in April 2014. The defendants used the identical mark 'ZITA' for pharmaceutical products, causing confusion and damage. The defendants were served but failed to appear, leading to an ex parte hearing. The court examined the evidence, including the assignment deeds and registration certificate, and found that the plaintiff had established its title and the defendants' infringement. The court held that registration of assignment is not a prerequisite for filing a suit and that the plaintiff's mark is valid. Consequently, the court decreed the suit ex parte, granting a permanent injunction restraining the defendants from using the mark 'ZITA', ordering delivery up of infringing goods, and awarding costs of Rs. 50,000.
Headnote
A) Trade Marks - Infringement - Identical Mark - Section 29 of the Trade Marks Act, 1999 - Plaintiff, owner of registered trademark 'ZITA' for pharmaceuticals, sought decree against defendants using identical mark 'ZITA' - Court held that use of identical mark by defendants for similar goods constitutes infringement - Ex parte decree granted (Paras 1-10). B) Trade Marks - Passing Off - Identical Mark - Common Law Remedy - Plaintiff established prior use and reputation in mark 'ZITA' - Defendants' use likely to cause confusion and deceive public - Passing off established (Paras 1-10). C) Trade Marks - Assignment - Registration of Assignment - Section 45 of the Trade Marks Act, 1999 - Plaintiff derived title through two assignments - Registration of assignment with Registry is not a condition precedent for filing suit - Plaintiff's title valid (Paras 5-7). D) Civil Procedure - Ex Parte Decree - Order 8 Rule 10 CPC - Defendants failed to appear despite service - Suit decreed ex parte (Paras 2, 10).
Issue of Consideration
Whether the plaintiff is entitled to an ex parte decree for trademark infringement and passing off against the defendants for using the identical mark 'ZITA' for pharmaceutical products.
Final Decision
Suit decreed ex parte. Defendants are permanently restrained from using the mark 'ZITA' or any deceptively similar mark. Defendants are ordered to deliver up all infringing goods, labels, etc. for destruction. Defendants to pay costs of Rs. 50,000 to the plaintiff.
Law Points
- Trademark infringement
- passing off
- ex parte decree
- assignment of trademark
- registration of assignment not mandatory for filing suit
- pharmaceutical products
- identical marks
