Blue Cross Laboratories Pvt. Ltd. v. RB Remedies Pvt. Ltd. & Anr.
Commercial IP Suit No. 231 of 2015
ARIF S. DOCTOR, J.
Overview
The Bombay High Court, Commercial Court, passed a judgment in which the court ordered permanent injunctive relief in favour of the plaintiff on the motion of trademark infringement and passing off. The court ordered the defendants not to use the mark “CEFDON”, which was deemed to be deceptively similar to the plaintiff’s registered trademark “CEDON” in respect of pharmaceutical preparations. The court also awarded high costs in favour of the plaintiff, underlining the more stringent cost mechanism that applies in commercial cases, as well as in cases involving pharmaceutical trademark disputes.
Facts
The plaintiff, Blue Cross Laboratories Private Limited, is a pharmaceutical company, and they are also the registered owner of the trademark “CEDON,” registered since August 14, 1996. In their claim, they said that they were able to coin and use this trademark, acquiring distinctiveness, with continuous use since 2004 for a dry cough syrup marketed across all of India.
In August 2014, the plaintiff came to know that Defendant No. 1 was selling an innovative drug with the name “CEFDON,” which was produced at first by Origin Formulations Pvt. Ltd., but later by Defendant No. 2. Upon that, the plaintiff sent a cease-and-desist letter, claiming that the name “CEFDON” was very similar to their “CEDON” brand name. Even though the company agreed at first to cease the production process, the defendants later continued selling the suspected product. This motivated the plaintiff to file the suit.
Earlier, by its order dated January 27, 2015, the Court had granted the ad interim relief in favour of the plaintiff and rejected the application made by the defendants under Order VII Rule 11 of the Code of Civil Procedure. The defendants had neither challenged the said order nor submitted a written statement, and hence, the case is treated as an undefended commercial suit.
Legal Issues
- Whether the defendants’ mark ‘CEFDON’ was deceptively similar to the plaintiff’s registered mark ‘CEDON’, amounting to trademark infringement.
- Whether the defendant’s act was passing off his goods as those of the plaintiff.
- Whether the plaintiff is entitled to compensatory costs under Section 35 CPC as amended by the Commercial Courts Act 2015.
Decision and Reasoning
The Court decided in favour of the plaintiff on all counts. The Court declared that the plaintiff has conclusively established its statutory rights through registration and common law rights by prior, continuous, and extensive usage. It was established that “CEDON” has acquired distinctiveness and goodwill solely identified with the plaintiff.
The Court stated that there was a complete inclusion of “CEDON” within “CEFDON,” so there was obvious visual similarity. As both trade marks covered the same products, namely pharmaceutical products, it was obvious that there was a likelihood of confusion, especially among those who have imperfect recall. In pharmaceutical products, this type of confusion is dangerous because of health concerns.
The Court also referred to the fact that the defendants failed to contest the case, holding it a fact that this amounted to dishonest adoption and improper intentions. Consequently, the case was ordered in favour of the plaintiff, with permanent injunctions granted for infringement and passing-off.
Regarding cost, the court referred to the provisions under the amended Section 35 CPC, stating that cost must normally follow events. In view of the conduct of the defendants and also due to the nature of the suit, a compensatory cost of ₹5 lakhs was imposed upon every defendant with default interest.
