Case Note & Summary
The appellant, Franco-Indian Pharmaceuticals Pvt. Ltd., filed an appeal against an order of the learned Single Judge refusing to grant interim relief in a suit for trademark infringement and passing off. The appellant is the registered proprietor of the trademark 'DEXORANGE' since 1971 for a hematinic syrup. The respondents, Lupin Ltd. and Smilax Pharmaceuticals, launched a product under the mark 'LUPINEXORANGE'. The appellant alleged that the respondents' mark was deceptively similar and that their carton/label infringed the appellant's copyright. The court analyzed the visual and phonetic differences between the marks, noting that 'DEXORANGE' and 'LUPINEXORANGE' were not similar. The court also compared the cartons and found no substantial similarity. The court held that the appellant failed to make out a prima facie case for interim injunction, and the balance of convenience was against granting such relief. The appeal was dismissed.
Headnote
A) Trademark Law - Deceptive Similarity - Interim Injunction - Sections 28, 29 Trade Marks Act, 1999 - The appellant sought interim injunction against respondents for using mark 'LUPINEXORANGE' allegedly deceptively similar to appellant's registered mark 'DEXORANGE' for pharmaceutical preparations. The court held that the appellant failed to establish a prima facie case of deceptive similarity as the marks were visually and phonetically distinct, and the balance of convenience was not in favour of granting interim relief. (Paras 2-10)
B) Copyright Law - Artistic Work - Infringement - Section 51 Copyright Act, 1957 - The appellant claimed copyright in the artistic work of its carton/label for 'DEXORANGE'. The court found that the respondents' carton/label was not substantially similar to the appellant's, and thus no prima facie case of copyright infringement was made out. (Paras 4-8)
Issue of Consideration
Whether the appellant is entitled to interim relief restraining the respondents from using the mark 'LUPINEXORANGE' or any deceptively similar mark to the appellant's registered trademark 'DEXORANGE'.
Final Decision
Appeal dismissed. The impugned order refusing interim relief is confirmed.
Law Points
- Trademark infringement
- deceptive similarity
- interim injunction
- balance of convenience
- prima facie case
- pharmaceutical products
- Trade Marks Act 1999
- Copyright Act 1957
Case Details
2017 LawText (BOM) (02) 43
Appeal No. 428 of 2006 in Notice of Motion No. 263 of 2005 in Suit No. 288 of 2005
Anoop V. Mohta, P. R. Bora
Mr. Hiren Kamod with Mr. Mahesh A. Mahadgut and Ms. Poonam Teddu for the Appellant; Mr. Rashmin Khandekar with Mr. Minesh Andharia and Mr. Jay Shah for the Respondents
Franco-Indian Pharmaceuticals Pvt. Ltd.
Lupin Ltd. and Smilax Pharmaceuticals
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Nature of Litigation
Appeal against refusal of interim injunction in a suit for trademark infringement and passing off.
Remedy Sought
Appellant sought interim relief restraining respondents from using the mark 'LUPINEXORANGE' or any deceptively similar mark.
Filing Reason
Appellant alleged that respondents' mark 'LUPINEXORANGE' was deceptively similar to its registered trademark 'DEXORANGE' and that the carton/label infringed its copyright.
Previous Decisions
Learned Single Judge refused to grant interim relief on 16 March 2006.
Issues
Whether the appellant has a prima facie case for trademark infringement and passing off.
Whether the balance of convenience lies in favour of granting interim injunction.
Submissions/Arguments
Appellant argued that 'DEXORANGE' and 'LUPINEXORANGE' are deceptively similar and that the respondents' carton/label is a slavish copy of the appellant's artistic work.
Respondents contended that the marks are visually and phonetically distinct and that there is no likelihood of confusion.
Ratio Decidendi
For interim injunction, the plaintiff must establish a prima facie case, balance of convenience in its favour, and irreparable injury. In this case, the appellant failed to show a prima facie case of deceptive similarity or copyright infringement, and the balance of convenience was against granting interim relief.
Judgment Excerpts
The Appellant is the established manufacturer and dealer of a wide range of specialty products in the pharmaceutical field.
The said medicinal preparation sold under the Trade Mark DEXORANGE is not a scheduled drug and is sold and readily available across the counter.
Procedural History
The appellant filed Suit No. 288 of 2005 with Notice of Motion No. 263 of 2005 seeking interim injunction. The learned Single Judge refused interim relief on 16 March 2006. The appellant filed Appeal No. 428 of 2006 against that order. The appeal was heard and finally disposed of on 10 February 2017.
Acts & Sections
- Trade Marks Act, 1999: 28, 29
- Copyright Act, 1957: 51
- Companies Act, 1956:
