Bombay High Court
Procter And Gamble Health Limited vs Horizon Bioceuticals Pvt Ltd on 17 March, 2026
Digitally signed
by SHAGUFTA
2026:BHC-OS:6732
SHAGUFTA QUTBUDDIN
QUTBUDDIN PATHAN
PATHAN Date:
2026.03.17 IA-L-39102-2025.doc
17:45:54 +0530
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
INTERIM APPLICATION (LODGING) NO.39102 OF 2025
IN
COMMERCIAL IP SUIT (LODGING) NO.38975 OF 2025
PROCTER & GAMBLE HEALTH LIMITED
a Company registered under the Companies
Act, 1956 and having its registered office at
P&G Plaza, Cardinal Gracious Road
Chakala, Andheri East, Mumbai - 400 099
2. P&G HEALTH GERMANY GMBH
Sulzbacher Str. 40 ...Applicants/
65824 Schwalbach am Taunus Original Plaintiffs
Germany
Versus
1. HORIZON BIOCEUTICALS PVT. LTD.
a Company registered under the Companies
Act, 1956 having its registered office at
Plot No. 240, Sector-29 Huda, Panipat
Haryana, India - 132103
Also at:
3-A, Industrial Area,
Trilokpur Road, Kala Amb Distt. Sirmour,
Himachal Pradesh
2. CUREWELL DRUGS & PHARMACEUTICALS
PVT. LTD. TAR a Company registered under the
Companies Act, 1956 having its registered
office at Plot No. 241, Sector-29
Huda, G.T. Road, Panipat ...Respondents/
Haryana, India - 132103 Original Defendants
------------
Mr. Alankar Kirpekar a/w Mr. Ayush Tiwari, Mr. Vikas Khera, Mr. Amit
Kukreja and Ms. Alpana Mishra i/b Mr. Vikas Khera for the Respondents
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Mr. Anand Mohan a/w Mr. Prasad A. Kamthe and Mr. Aditya Agarwal for
the Respondent/Original Defendant
------------
CORAM : SHARMILA U. DESHMUKH, J.
RESERVED ON : FEBRUARY 4, 2026
PRONOUNCED ON : MARCH 17, 2026
ORDER :
1. The present action is for infringement of the First Plaintiff’s
registered trademark LIVOGEN and the Second Plaintiff’s registered
trademark LIVOGEN-Z and passing off on account of the Defendant’s
adoption of the mark LIVOGEM.
2. The Plaintiffs and the Defendants are engaged in the business of
manufacturing and marketing of pharmaceutical products. The
Plaintiffs health supplements under the trademark LIVOGEN were
introduced in India in the year 1967 and are used as blood health
solutions for adults, pregnant women, and children. The Plaintiff’s
predecessor in title-The British Drug House Limited conceived,
adopted and started use of the trademark LIVOGEN in the year 1930
and the Plaintiffs’ earliest registration of its trademark LIVOGEN in
India dates back to the year 1942 and has been used in India since the
year 1967. In respect of the trade mark LIVOGEN-Z, the application is
filed on 19th September, 2013 with the user claim of 31 st March, 2001.
The 2nd Plaintiff’s domain name comprising of the trademark LIVOGEN
was registered on 26th December 2016. To demonstrate the
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reputation and goodwill, the sales turnover is set-out in Paragraph 14
of the Plaint for the period from 2010 to 2024 as well as the
advertising/commercial expenditure of the product under the mark
LIVOGEN for the year 2021-2024 is set out.
3. It is submitted that in July 2024, the Plaintiffs came across the
Defendant No. 1’s application for registration of the mark LIVOGEM in
Class 5, which was filed on 28 th May, 2024, with user claim of 13 th July,
2012, to which opposition was filed by the 2 nd Plaintiff. In response,
the counter claim of Defendant No.1 stated that the Defendant No.1
had conceived and adopted the mark LIVOGEM on 7 th February, 1997,
however, the said mark was not used and the same was used from 13 th
July, 2012 to treat ailments relating to liver dysfunction. It was claimed
on the basis of uncommon element ‘GEN’ that the mark is different,
and there is no likelihood of confusion or deception. The evidence in
support of the application by Defendant No. 1 comprised of invoices
for the products marketed under the mark LIVOGEM for the year 2012
to 2022. It is stated that in view of the evidence filed by the Defendant
No.1 in August 2025, the Plaintiffs investigated into the business
activities of Defendants, which confirmed the extensive marketing,
manufacturing and selling of products under the mark LIVOGEM.
Hence, the present Suit came to be filed.
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4. The affidavit-in-reply contends that the Defendant No. 1 and
Varav Biogenesis Pvt. Ltd., the Defendant No.2, which is the sister
concern of the Defendant No. 1, honestly and bonafidely coined,
conceived and adopted the trademark LIVOGEM on 7 th February, 1997
and started using the same since 13 th July, 2012 to improve liver health
and digestion. The mark LIVOGEM is a coined term formed by
strategic combination of the words LIVO and GEM. The prefix LIVO is
indicative of liver health which aligns with the purpose of the
Defendants’ products and the suffix GEM denotes something of high-
quality. The Defendants have consistently used the suffix GEM as part
of their bonafide naming convention across multiple products. In
2001, the Defendants adopted another trademark OSSIGEM, which is
registered in the name of Defendant No.2. It is stated that the
expression LIVO is used by third parties as prefix in respect of
medicinal and pharmaceutical preparations and in Paragraph 10, the
extract of the trademark register is set-out showing the use of the
word LIVO as a prefix in various registered trademarks. In Paragraph
11, the details of the trademarks available on-line using the expression
LIVO as prefix in respect of pharmaceutical and medicinal products
etc. is set-out. It is stated that the suffix GEM is entirely different from
the uncommon part GEN and therefore, the trademark LIVOGEM is
different from the trademark LIVOGEN.
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5. It is submitted that there is difference in the composition,
packaging and purpose and unlikely to cause confusion or deception
amongst consumers. There is no material to prove that any section of
public is misled by use of the trademark. The prefix LIVO is descriptive
element widely used in pharmaceutical and health product trade to
refer to liver related drugs and therefore, forms part of public domain
in pharmaceutical industry.
6. In the affidavit-in-rejoinder, it is stated that comparison of the
rival marks as a whole shows the deceptively similarity between the
two marks. The Defendant No.1 has itself filed an application for
registration of its mark and therefore, now cannot plead that the
words LIVO and GEM are common to trade or descriptive.
Submissions :
7. Mr. Kamod, learned counsel appearing for the Plaintiffs has
taken this Court through the pleadings in the Plaint as regards the
adoption and use of the registered trademark. He further points out to
the sales figure and advertisement expenses to demonstrate the
extent of goodwill and reputation garnered by the Plaintiffs. He
submits that the rival products are used for treating different ailments
and therefore, greater care is required. He submits that the
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Defendants are habitual infringers and have been held liable for the
trademark infringement and passing off by the Delhi High Court and
points out the order which is appended to the Plaint. He submits that
it is the Defendants’ case that the mark was conceived on 7 th February,
1997 and has been in use since 13th July, 2012, however, there is no
material to substantiate the adoption since the year 1997. He submits
that the defence of the prefix LIVO being indicative of liver health, is
not substantiated by document showing the industry practice and the
list at Paragraph 10 is not stated to be in respect of mark being
common to liver ailment. He submits that it is well settled that the
marks are to be compared as a whole and cannot be dissected. He
submits that in order to show that the mark LIVO is common to trade,
usage is required to be shown, which is absent in the present case. He
would further submit that the Plaintiffs are prior proprietors and prior
users and the use of the Defendants’ mark even if accepted since
2012, the sales figures produced on record, on the date of adoption of
the mark by the Defendants, shows substantial goodwill. He submits
that the packaging of the two products is similar and the added
material is insufficient to distinguish the Defendants’ product from
that of the Plaintiffs. In support, he relies upon the following
decisions :
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(i) Wyeth Holdings Corporation & Anr. vs. Burnet
Pharmaceuticals (Pvt.) Ltd.1;
(ii) Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. 2
(iii) Glenmark Pharmaceuticals Ltd. vs. Alteus Biogenis Pvt.
Ltd. & Anr.3;
(iv) Macleods Pharmaceuticals Limited vs. Union of India &
Ors.4;
(v) Encore Electronics Ltd. vs. Anchor Electronics &
Electricals Pvt. Ltd.5; and
(vi) Pidilite Industries Ltd. vs. Riya Chemy6
8. Mr. Kirpekar, learned counsel appearing for the Defendants
would submit that the Defendant’s application for registration of the
mark claims user since the year 2012. He submits that the Plaintiffs
claim that the source of its information is not the market but the
advertisement in the trade mark journal which shows that there was no
instance of confusion, although the Defendants have been marketing
their products since the year 2012. He submits that in the plaint, there
is no pleading about causing any confusion and in fact, the Plaintiffs
have admitted that their investigation reveal that the Defendants are
extensively manufacturing and marketing its product. He submits that
1 2008 SCC Online Bom 76
2 (2001) 5 SCC 73
3 2024 SCC Online Bom 3141 : (2025) 101 PTC 59
4 2023 SCC Online Bom 408
5 2007 SCC Online Bom 147 : (2007) 5 Bom CR 262
6 2022 SCC Online Bom 5077 : (2023) 1 AIR Bom R 710
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if there was any possibility of confusion, then, the Plaintiffs would have
been informed about the confusion. He submits that the Plaintiffs’
product is a medicinal product, whereas, the Defendants’ product is a
nutraceutical product and points out to the license granted by Food
Safety and Standards Authority of India (`FSSI’). He submits that the
Plaintiffs’ products are Schedule H products, which will be sold on
prescription, whereas, the Defendants’ product is a food
supplement/nutraceutical. He points out that the application for
registration of the mark in Class 5 was in respect of dietic food and
substances and not in respect of the medicinal/pharmaceutical
preparations. He points out to the invoices annexed to the affidavit-in-
reply which shows use since the year 2012 and would submit that
considering the co-existence of the Plaintiffs and Defendants, of which,
the Plaintiffs claim to be unaware since the year 2012 , it is evident that
there is no chance of confusion. He would point out that there are
various registrations of the trademark using the prefix LIVO which is
common to the trade and used for liver ailments and points out to one
of the applications for registration of a mark LIVOTONE, which was
filed on 5th April 1943 and would submit that the registration of
LIVOTONE predates the Plaintiffs’ registration. He would further point
out to the e-commerce website selling products under the mark
LIVOGIN, which was for protection of liver and would submit that the
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same constitute use of the mark sufficient for being considered as
LIVO being common to the trade. He submits that there is no question
of LIVOGEM causing confusion and it is not sufficient to show mere
similarity and what is required to be shown is that the similarity is likely
to lead to confusion. He submits that there is a bonafide explanation
for adoption of the mark as LIVO is common to the trade and GEM is a
suffix which is common to the Defendants’ product. He submits that
considering that the Defendants are marketing their product since the
year 2012, the balance of convenience is in favour of the Defendants.
9. In rejoinder, Mr. Kamod would submit that the registration of the
Defendants was sought in Class 5 and an artificial distinction is sought
to be drawn between medicinal products and nutraceutical products.
He submits that even if the drugs are held to be Schedule H drugs, the
same is not sufficient to obviate the confusion. He submits that there is
a misreading of paragraphs 23 and 24 of the Plaint, as the said
paragraphs plead that the Plaintiffs became aware of the Defendants
in view of the evidence filed. He submits that the Defendants have not
taken the defence of acquiescence and did not carry out any search in
the Registry, and therefore the adoption of the mark is at the
Defendants’ own peril. He submits that the Plaintiffs are not required
to seek action against each and every infringer and, in any event, the
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basis for the challenge in the present case is the similarity between
LIVOGEN and LIVOGEM. He further submits that all the trademarks
relied upon by the Defendants do not pertain to liver ailment.
10. In sur-rejoinder, Mr. Kirpekar would submit that the listings
which are placed on record would show that the products are being
marketed with the prefix LIVO. He submits that in the Defendants’
application, the Plaintiffs’ mark LIVOGEN was not cited, and it is
immaterial as to whether the Defendants conducted a search before
filing their application. In support, he relies upon the following
decisions:
(i) Macleods Pharmaceuticals Ltd. vs. Intas
Pharmaceuticals Ltd. & Anr.7;
(ii) Sun Pharmaceuticals Industries Ltd. vs. M/s West Coast
Pharmaceuticals Works Ltd. & Anr.8;
(iii) Sun Pharmaceuticals Industries Ltd. vs. Emcure
Pharmaceuticals Ltd.9,
(iv) Ruston & Hornsby Ltd. vs. Zamindara Engineering
Co.10;
(v) Sun Pharmaceutical Industries Ltd. vs. Meghmani
Lifescience Ltd. & Anr.11; and
7 2013 SCC OnLine Bom 1779
8 2012 SCC OnLine Guj 6290
9 2012(2) Mh.L.J. 37
10 (1969) 2 SCC 727
11 2025 SCC OnLine Bom 5394
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(vi) Corona Remedies Pvt. Ltd. vs. Franco-Indian
Pharmaceuticals Pvt. Ltd.12
11. Rival contentions now fall for determination:
12. The Plaintiffs had applied for registration of its trademark
LIVOGEN, in the year 1942 and is stated to be introduced in India in the
year 1967. The Defendants have applied for registration of its mark
LIVOGEM on 28th May, 2022, with a user claim of 13 th July, 2012. The
Plaintiffs’ product LIVOGEN is used for the prevention of iron
deficiency anemia, and the active ingredients are mainly Ferric
Ammonium, Protein Hydrochloride, Nicotinamide, D-Panthenol,
Pyridoxine Hydrochloride, Folic Acid, Cyanocobalamin, and Zinc
Sulphate Monobydrate. The Defendants’ product LIVOGEM is for
supporting liver health and digestion with active ingredients such as
Choline Citrate, L-Ornithine, Silymarin Extract, Niacin, Pantothenic Acid,
and Vitamin B-complex. The ailments which the rival drugs treat are
different, and the active pharmaceutical ingredients of both the drugs
are different. The vast difference in the target ailments and
compositions would impose greater duty on the Court as even the
slightest possibility of confusion would lead to disastrous effect. The
statutory framework of Trade Marks Act, 1999 uses the expression
likelihood of confusion, whereas judicial pronouncements have applied
12 2023 SCC OnLine Bom 833
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the test of possibility in case of medicinal and pharmaceutical products
having lesser threshold as any harm whatsoever resulting from any
kind of confusion would be disastrous as there is element of public
interest and health involved.
13. In the case of Cadila Health Care Ltd. Vs. Cadila
Pharmaceuticals Ltd. (supra), the Hon’ble Apex Court has held that a
stricter approach should be adopted while applying the test to judge
the possibility of confusion of one medicinal product for another by
the consumer. It has further held that in the field of medicinal
remedies, the Courts may not speculate as to whether there is a
probability of confusion, and if there is a possibility of confusion, the
use of confusingly similar marks is required to be injuncted.
14. Mr. Kirpekar would seek to make an artificial distinction by
stating that the Defendants’ products are nutraceutical products,
whereas the Plaintiffs’ products are medicinal preparation, and
therefore there is no likelihood of confusion. On the contrary, the
submission would assist the case of the Plaintiffs, as the consumption
of one medicine for the other, would lead to disastrous consequences.
It is no answer to say that the Plaintiffs’ drugs are Schedule H drugs, as
the Apex Court in the case of Cadila Health Care Ltd. Vs. Cadila
Pharmaceuticals Ltd. (supra) has held that it is not uncommon that,
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because of lack of competence or otherwise, mistakes can arise even in
the case of prescription drugs and their dispensation by pharmacists.
The pleaded case of the Defendants is that the respective marks
operate in separate commercial channels without any specification as
to the different commercial channels and indeed there can be none as
the Plaintiffs as well as the Defendants’ products would be generally
sold through pharmacy shops. The Defendants have also applied for
registration of their product in Class 5 which renders unsustainable the
artificial distinction sought to be created by Mr. Kirpekar.
15. The defence is (a) bonafide adoption of LIVOGEM (b) prefix LIVO
common to trade (c) difference in rival marks as uncommon element
GEM and GEN are different (d) difference in active ingredients and
target ailments. As far as the last of the defence is concerned, the
same works against the Defendants as the difference in target
ailments and active ingredients would invite injunctive reliefs even if
there is a slightest possibility of confusion. To support of the defence
of no possibility of confusion, Mr. Kirpekar seeks to rely on the
Defendants’ co-existence since the year 2012, and in support has
produced the stock transfer notes and invoices from the year 2012.
Section 29(2) of the Trademarks Act provides that a registered
trademark is infringed by a person who, not being a registered
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proprietor, uses in the course of trade a mark which, because of its
similarity to the registered trademark and the identity or similarity of
the goods or services covered by such registered trademark, is likely to
cause confusion on part of the public, or which is likely to have an
association with the registered trademark. As held in the case of Cadila
Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (supra), it is not the
probability of confusion but the slightest possibility of confusion which
is required to be restrained. It is not necessary to show an actual
instance of confusion for seeking the relief of injunction.
16. In the case of Macleods Pharmaceuticals Ltd. vs. Intas
Pharmaceuticals Ltd. & Anr. (supra), the Hon’ble Division Bench has
rejected a similar contention regarding the absence of actual confusion
by reason of co-existence. The Hon’ble Division Bench has held that in
case of a medicine/pharmaceutical products, the Court should apply a
stricter test. It also noted the decision in the case of Bal Pharma Ltd. v.
Centaur Laboratories Pvt. Ltd.13, which had held that in a situation
where the Defendant has been using the mark, even if concurrently,
without making himself aware of the fact as to whether the same mark
is the subject matter of the registration and belongs to another
person, the first person cannot be heard to complain for he has been
using it negligently without taking the elementary precaution of
13 Appeal No.778/2001 decided on 28.08.2021
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making himself aware by looking at the public record of the Registrar
as to whether the mark in question is the property of another.
17. The co-existence of the Defendants since the year 2012, even if
accepted, cannot constitute a defence where the rival marks are
deceptively similar. The Defendants have stopped short of claiming
acquiescence as a defence, and the ground of co-existence is not a
defence available to the Defendants, as they have failed to take search
of the Registry in order to verify whether any mark existed prior to the
adoption of the mark in the year 2012. Having failed to take the
elementary precaution, the adoption of the mark by the Defendants is
at their own peril. The Hon’ble Division Bench in Macleods
Pharmaceuticals Ltd. vs. Intas Pharmaceuticals Ltd. (supra), has
further held that the duty of the Court must always be to protect the
public, irrespective of what hardship or inconvenience it may cause to a
particular party whose trademark is likely to deceive or cause
confusion.
18. It is well settled that the marks are required to be compared as a
whole, which is the anti-dissection rule. In the case of Macleods
Pharmaceuticals Ltd. vs. Intas Pharmaceuticals Ltd. (supra), the
marks were OFRAMAX vs. OFLOMAC and the proceedings were in the
context of rectification application which had been filed. The Hon’ble
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Division Bench considered the various decisions and culled out the
principles in paragraph 25 as under :
“25. The principles which are emerging from the decisions set out
hereinabove are summarised in the following manner:
(a) When a particular medicinal or a pharmaceutical product is
involved as the impugned trade mark which may deceive the public or
cause a confusion with respect to another trademark, it is the Court’s
primary duty to take utmost care to prevent any such possibility of
confusion in the use of trademarks.
(b) Confusion in case of a non-medicinal or a non-pharmaceutical
product may only cause economic loss to the person, but on the
other hand, a confusion in terms of medicinal or a pharmaceutical
product may have disastrous effect on the health. Hence, it is proper
to require a lesser quantum of proof of confusing similarity for such
products.
(c) The Court may not speculate as to whether there is a probability
of confusion between the marks. Mere existence of the slightest
probability of confusion in case of medicinal product marks, requires
that the use of such mark be restrained.
(d) While arriving at a conclusion with respect to the similarity and
confusion between medicinal products, the same should be
examined from the point of view of an ordinary common man of
average intelligence instead of that of a specialised medicinal
practitioner. Courts must decide the same from the view point of
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the first impression of the mark, salient features of both the
products, nature of the commodity, overall similarity and the
possibility of the same creating a confusion amongst the public at
large.
(e) The primary duty of the Court is towards the public and the purity
of the register. Duty of the Court must always be to protect the
public irrespective of what hardship or inconvenience it may cause to
a particular party whose trade mark is likely to deceive or cause
confusion.
(f) The following rules of comparison can be culled out from various
pronouncement of Court from time to time.
(i) Meticulous comparison is not the correct way.
(ii) Mark must be compared as whole.
(iii) First impression.
(iv) Prima facie view is not conclusive.
(v) Structural resemblance.
(vi) Similarity in idea to be considered.
(g) The main object of maintaining trade mark register is that the
public should know whose goods they are buying. It is therefore
essential that the register should not contain the trade mark which is
identical by which purchaser may likely to be deceived by thinking
that they are buying the goods of a particular company/industry
whereas he is buying the goods of another company/industry.”
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19. When considered in the light of the settled principles above,
taken as a whole LIVOGEM and LIVOGEN are visually and phonetically
similar. The Defendants have sought to emphasis that LIVO is common
to trade and the uncommon element GEM is different from GEN. To
substantiate the contention that LIVO is common to trade, the
Defendant has produced in paragraph 10 list of trade marks registered
in favour of third parties using the prefix LIVO and in paragraph 11 the
list of parties using the trademarks containing the expression LIVO as
prefix in respect of medicinal and pharmaceuticals preparations. The
Defendants have taken a search of the register and internet and placed
on record the result of the search to plead that the mark LIVO is
common to trade. In so far as the marks on the registers are concerned,
mere presence of the mark on the register is not sufficient to prove
user. In Corn Products Refining Co vs Shangrilla Food Products
Ltd.14, the Hon’ble Apex Court observed as under:
“The series of marks containing the common element or elements
therefore only assist the applicant when these marks are inextensive use in the market. The onus on proving such user is of
course on the applicant, who wants to rely on the marks….Now of
course, the presence of mark in the register does not prove its user
14 AIR 1960 SC 142
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used. It is not permissible to draw any inference as to their user
from the presence of the marks on the register.”
In the same decision, the Hon’ble Apex Court held as
under:
” ..before the applicant can seek to derive assistance for the
success of his application from the presence of number of marks
having one or more common features which occur in his mark also,
he has to prove that these marks had acquired a reputation by user
in the market.”
20. The Defendants have placed the products available on the
e-commerce websites to show use of the prefix LIVO in medicinal and
pharmaceutical preparations. For the purpose of being considered
common to trade, it has to be shown that these marks had acquired a
reputation by user in the market. The placing of certain listings from
e-commerce websites or the result from the search taken of the
register is inadequate to demonstrate the fairly extensive use of the
common element. The contention that the prefix LIVO is a common
industry practice in case of drugs dealing with liver ailments by relying
on the e- commerce listings is self defeating that the listings contain
products which treat other ailments and are marketed under the trade
mark containing the word LIVO. The other aspect that militates against
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the defence that the Defendants have themselves applied for
registration of their mark LIVOGEM, and, they are therefore now
estopped from contending that the mark is common to the trade.
21. Even accepting for the sake of arguments that the prefix LIVO is
common to the trade and descriptive, and regard is to be had to the
uncommon element GEN vs GEM, even on that count the defence
would not succeed by reason of visual and phonetic similarity between
the uncommon elements. The Defendants have merely replaced the
last alphabet “N” by “M” and there is strong possibility of them being
pronounced similarly. The hurried utterances of the rival drugs is likely
to result in the pharmacist, when asked for the Plaintiff’s drug, to hand
over the Defendant’s drug as the pharmacist would not inquire about
the ailment in respect of which the drug is being purchased. It is no
answer to say that the drugs are Schedule H drugs as the contention
stands sufficiently answered by the decision in Cadila Health Care Ltd
vs Cadila Pharmaceuticals Ltd. (supra).
22. As the rival marks are visually and phonetically similar, prima
facie case has been made out for infringement of the Plaintiff’s
registered trade mark. The Defendant’s stated existence since the year
2012 cannot tilt the balance of convenience in favour of the
Defendants as it is not pleaded that prior to adoption of the mark, the
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Defendants had taken the elementary precaution of taking search of
the trade mark registry to find out about existence of deceptively
similar mark. There is no defence available as it is not shown that the
prefix LIVO is common to trade and in any event the uncommon
elements are also visually and phonetically similar. The Plaintiff’s have
thus made out prima facie case for grant of injunction against
infringement of their registered trademark.
23. As far as passing off is concerned, it is not necessary that grant
of injunction against infringement must also result in injunction against
passing off. There is no material demonstrated to show that the
Defendants misrepresented that its goods are that of the Plaintiff. The
trinity test is of goodwill and reputation, misrepresentation and
damage to goodwill. The Plaintiff has pleaded about the sales turnover
without attaching the certificate of the chartered accountant certifying
the sales. In any event, it is not only the goodwill and reputation of the
Plaintiff which suffices to arrive at a finding of passing off. The Plaintiff
must show misrepresentation intended or unintended by the
Defendant to make out a case for passing off. The pleadings and
submissions in that respect are silent. The Defendant has placed on
record the difference between the packaging of the two products,
both of syrup and tablets. There are sufficient distinctions between the
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rival packaging in manner of depicting the mark, the added words and
elements. The action for passing off will be a matter of trial and at this
stage, I am not inclined to grant the relief of passing off on the basis of
material placed on record.
24. Dealing with the decisions cited by the Defendants, in Macleods
Pharmaceuticals Limited vs Intas Pharmaceuticals Ltd (supra), the
rival marks therein were Anti Thyrox vs Lethyrox. There was no
registration of the mark Thyrox and the mark Lethyrox was coined from
the active ingredient molecule. The Court found that the marks were
dissimilar and refused injunction. The decision turned on the facts of
that case upon considering the marks therein and will not assist the
Defendant in different factual scenario.
25. The decision of Sun Pharmaceuticals Industries Ltd vs M/s
West Coast Pharmaceuticals Works Ltd (supra), is the decision in
Appeal, where the Appellate Court refused to interfere with the
discretion exercised by the Single Judge. The said decision is
distinguishable and inapplicable to present facts.
26. In Sun Pharmaceuticals Industries Ltd vs Emcure
Pharmaceuticals Ltd (supra), the question of passing off was
considered and the Court was of the view that the rival marks were not
phonetically not similar. The relief was considered on the backdrop of
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assessment of similarities between the rival marks.
27. In the decision of Sun Pharmaceuticals Industries Limited vs
Meghmani Lifesciences Limited & Anr (supra), the Court did not find
deceptive similarity between the marks RACIRAFT and EsiRaft.
28. Each case is to be decided on the basis of the marks therein and
unless there is a proposition of law laid down in the decision, the
decision does not have binding effect.
29. In light of the above, prima facie case has been made out for
grant of interim relief in respect of infringement of trade mark. The
balance of convenience is not in favour of the Defendant as it adopted
a deceptively similar mark without taking the elementary precaution of
taking a search of the register and, even if taken, if it proceeds to
adopt the mark, does so at its own peril. The products being medicinal
and pharmaceuticals products treating different ailments and having
different compositions, even a slightest possibility of confusion is
required to be arrested in public interest. Hence, the Interim
Application is allowed in terms of prayer clause (a), which reads as
under:
“a) that pending the hearing and final disposal of the Suit, the
Defendants by themselves. their promoters, directors, assigns, relatives,
successors-in-interest licensees, franchisees, partners, representatives.
servants, distributors, employees, agents etc. be restrained by an order
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and injunction of this Hon’ble Court from using the mark LIVOGEM
and/or any other mark identical and/or deceptively similar to the
Plaintiffs’ LIVOGEN trade marks under registrations Nos. 9596 and
2599064, in any manner whatsoever upon and in relation to their
business, so as to infringe the same.”
[SHARMILA U. DESHMUKH, J.]
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