Finding that the adoption of the mark ZEROVOL–P by the Defendant is subsequent to the Plaintiff’s registration and use, the Bombay High Court held that the adoption and use of the mark ZEROVOL–P by the Defendant is plainly dishonest and without any due cause, and the use of the mark by the Defendant in respect of pharmaceutical and medicinal preparations constitutes infringement of the Plaintiff’s statutory rights.
Equally, given that the impugned mark is virtually identical to the Plaintiff’s registered trade mark and both are used in respect of medicinal or pharmaceutical products, the Court found the likelihood of confusion as imminent. Thus, the use by the Defendant of the impugned trade mark would almost certainly result in the goods of the Defendant being passed off as those of the Plaintiff.
Hence, the Plaintiff would be entitled to relief to restrain the Defendant from passing off the goods of the Defendant as those of the Plaintiff, and the Plaintiff has made out a case for infringement of its trade mark and for passing off, added the Court.
A Single Judge Bench of Justice Arif S. Doctor observed that the Plaintiff is the registered proprietor of the trademark ‘ZERODOL’, as is evident from the trademark registration certificate, and the Plaintiff has also proved through the evidence that the trademark ZERODOL has been used since the year 2003, which was duly coupled with several sales invoices.
The Bench found that the rival trademarks are virtually identical, and the Plaintiff has established a substantial sales turnover, along with a Chartered Accountant Certificate substantiating its commercial use of the mark. The evidence establishes that ZERODOL has acquired distinctiveness and is exclusively associated by the public and persons in the trade with the Plaintiff alone.
Since the Plaintiff has established goodwill in its registered trade mark ZERODOL, the Bench added that the conduct is an additional factor that makes it clear that the defendant’s adoption of the impugned mark was dishonest and was actuated in bad faith, and concluded that infringed products being medical products, a stricter order of costs must follow.
Accordingly, having regard to the conduct of the Defendant and the statutory mandate under Section 35 of the Civil Procedure Code, 1908, as amended, the Bench directed the Defendant to pay costs of Rs. 15 lacs to the Plaintiff within a period of 8 weeks
Briefly, the Plaintiff coined and adopted the trademark “ZERODOL” in September 1992 for medicinal and pharmaceutical preparations and has been using it since 2003. In October 2013, the Plaintiff discovered the Defendant’s product being sold under the impugned mark “ZEROVOL–P”. The Plaintiff asserted that the Defendant’s mark “ZEROVOL–P” is deceptively similar to its registered trademark “ZERODOL” and is used for the same class of goods, pain relief medicinal preparations.
Appearances:
Advocates Minesh Andharia and Jay Shah, for the Plaintiff
None for the Defendant
