Case Note & Summary
The Plaintiffs, Indchemie Health Specialties Pvt. Ltd., filed a suit for trademark infringement and passing off against Intas Pharmaceuticals Ltd. and another, alleging that the Defendants' use of the mark 'MULTI CHERRY' infringed their registered trademark 'CHERI' (registered since 14 May 1987 for pharmaceutical preparations in Class 5). The Plaintiffs claimed extensive use and reputation of 'CHERI' for haematinic preparations. In June 2011, they discovered the Defendants' product 'CHERRY FOL' and sent a cease and desist notice, to which the Defendants initially offered to desist. However, in January 2014, the Plaintiffs found the Defendants had launched 'MULTI CHERRY' and sent another notice, which the Defendants refused. The Plaintiffs then filed the suit and an interlocutory application for ad-interim relief. The Defendants opposed, arguing that the Plaintiffs' registration was for 'medicinal and pharmaceutical preparations' and that 'CHERRY' was common to the trade. The court noted that the Motion could not be taken up for final hearing because the Plaintiffs could not press their interlocutory application in the passing off action due to an order of the Appeal Court in the Defendants' appeal from the order granting leave under Clause XIV of the Letters Patent, and because the Defendants had applied for framing and deciding a preliminary issue under Section 9A of the Code of Civil Procedure, 1908. Consequently, the court disposed of the Plaintiffs' ad-interim application in the infringement action without granting any relief.
Headnote
A) Civil Procedure - Preliminary Issue - Section 9A Code of Civil Procedure, 1908 - Jurisdiction - The court disposed of the Plaintiffs' ad-interim application in the infringement action without final hearing because the Defendants had applied for framing and deciding a preliminary issue under Section 9A CPC regarding jurisdiction, and the Plaintiffs could not press their interlocutory application in the passing off action due to an order of the Appeal Court in the Defendants' appeal from the order granting leave under Clause XIV of the Letters Patent. (Paras 1-2)
Issue of Consideration
Whether the Plaintiffs' ad-interim application in the infringement action can be pressed in view of the Appeal Court's order and the Defendants' application for framing a preliminary issue under Section 9A of the Code of Civil Procedure, 1908.
Final Decision
The court disposed of the Plaintiffs' ad-interim application in the infringement action without granting any relief, as the Motion could not be taken up for final hearing due to the Appeal Court's order and the Defendants' application for a preliminary issue under Section 9A CPC.
Law Points
- Trademark infringement
- Passing off
- Preliminary issue under Section 9A CPC
- Clause XIV Letters Patent
- Interlocutory application
Case Details
2015 LawText (BOM) (06) 87
Notice of Motion (L) No. 2540 of 2014 in Suit No. 175 of 2015
Dr. Virendra Tulzapurkar, Senior Advocate with Mr. Mahesh Mahadgut with Ms. Miloni Gala for Plaintiffs; Mr. Venkatesh Dhond, Senior Advocate with Mr. Adheesh Nargolkar, Mr. Shailendra Bhandare, Mr. Rashmin Khandekar, Mr. R.A. Iyer and Ms. Vidhii Partners i/b. M/s. Khaitan & Co. for Defendant No.1
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Nature of Litigation
Suit for trademark infringement and passing off with an interlocutory application for ad-interim relief.
Remedy Sought
Plaintiffs sought ad-interim relief restraining the Defendants from using the mark 'MULTI CHERRY' or any deceptively similar mark.
Filing Reason
Plaintiffs alleged that Defendants' use of 'MULTI CHERRY' infringed their registered trademark 'CHERI' and amounted to passing off.
Previous Decisions
The Appeal Court had passed an order in the Defendants' appeal from the order granting leave to the Plaintiffs under Clause XIV of the Letters Patent, which prevented the Plaintiffs from pressing their interlocutory application in the passing off action. Additionally, the Defendants had applied for framing and deciding a preliminary issue under Section 9A CPC.
Issues
Whether the Plaintiffs' ad-interim application in the infringement action can be pressed given the Appeal Court's order and the Defendants' Section 9A application.
Submissions/Arguments
Plaintiffs argued that the Defendants' use of 'MULTI CHERRY' infringes their registered trademark 'CHERI' and leads to passing off.
Defendants contended that the Plaintiffs' registration was for 'medicinal and pharmaceutical preparations' and that 'CHERRY' is common to the trade.
Ratio Decidendi
An interlocutory application for ad-interim relief in a trademark infringement suit cannot be pressed when the Appeal Court has passed an order in the Defendants' appeal from the order granting leave under Clause XIV of the Letters Patent, and when the Defendants have applied for framing and deciding a preliminary issue under Section 9A of the Code of Civil Procedure, 1908, which must be decided before the merits of the application can be heard.
Judgment Excerpts
This Motion is taken out in a trade mark infringement and passing off suit with leave under clause XIV of the Letters Patent.
The Motion cannot be taken up for final hearing for two reasons, one, because the Plaintiffs cannot press their interlocutory application in the passing off action in view of the order passed by the Appeal Court in the Defendants' appeal from the order granting leave to the Plaintiffs under Clause XIV and secondly, due to the application of the Defendants for framing and deciding a preliminary issue under Section 9A of the Code of Civil Procedure.
Procedural History
The Plaintiffs filed Suit No. 175 of 2015 for trademark infringement and passing off, along with Notice of Motion (L) No. 2540 of 2014 for ad-interim relief. The Defendants appealed the order granting leave under Clause XIV of the Letters Patent, and the Appeal Court passed an order. The Defendants also applied for framing a preliminary issue under Section 9A CPC. The court disposed of the ad-interim application without hearing it on merits.
Acts & Sections
- Code of Civil Procedure, 1908: Section 9A
- Letters Patent of the Bombay High Court: Clause XIV
