The Bombay High Court has granted perpetual injunctions restraining Mas Pharmachem (the Defendants) from using “BON K2 FORTE” or any deceptively similar mark in relation to medicinal and/or pharmaceutical preparations so as to infringe Integrace Private Limited (the Plaintiff’s) registered trade mark or pass off the Defendants’ goods as those of the Plaintiff, and directed delivery up for destruction of products, packs, packaging materials, goods and things bearing the impugned trademark. The Court also directed that each of the Defendants shall pay costs of Rs. 1 lakh to the Plaintiff within 8 weeks, failing which interest at 8% would apply.
The Court explained that where the Plaintiff proves subsisting proprietary rights in a registered mark, prior adoption and use, goodwill and reputation, and the impugned mark entirely subsumes the Plaintiff’s registered mark as its essential and leading feature in relation to identical medicinal and pharmaceutical goods, the Court may hold that the rival marks are deceptively similar and that the Defendants’ adoption is dishonest, mala fide, and likely to cause confusion, deception, and misrepresentation.
In matters concerning medicinal and pharmaceutical products, stricter standards apply because even the slightest possibility of confusion is required to be restrained in public interest. The Court therefore held that the Plaintiff had made out a clear case for infringement of trade mark and passing off, but declined damages because the Plaintiff had failed to lead evidence in support of its monetary claim. On costs, the Court applied Section 35 of the CPC as amended by Section 16 of the Commercial Courts Act, 2015, and held that costs ordinarily follow the event, with the conduct of the Defendants being a relevant factor; the Defendants’ failure to defend the Suit or justify adoption of the impugned mark justified an award of costs.
A Single Judge Bench of Justice Arif S. Doctor observed that the Plaintiff had sufficiently proved its subsisting rights in the trade mark “BON K2” through the registration documents, legal proceedings certificates, the Deed of Assignment, and the evidence of the Plaintiff’s witness. The Bench also found that the Plaintiff had established use of the mark since 2010, as well as goodwill and reputation, through annual turnover and publicity expenditure material.
On comparison of the rival marks, the Bench observed that they were “virtually identical” and that the Defendants’ impugned mark “BON K2 FORTE” had “entirely subsumed” the Plaintiff’s registered trade mark “BON-K2”. It further observed that the Defendants had used the exact same mark as the leading and essential feature of the impugned mark, and that the adoption was “plainly dishonest, malafide and with a clear intent to deceive.”
Since the rival goods were medicinal products, the Bench noted that the Defendants’ use was more than likely to cause confusion, deception, and misrepresentation amongst consumers and members of the trade, and that a stricter approach applied because confusion in medicinal products may threaten public interest. The Bench also treated the Defendants’ failure to appear, file a written statement, lead evidence or cross-examine the Plaintiff’s witness as showing dishonesty and lack of bona fides, with the Plaintiff’s case having gone uncontroverted and the evidence remaining unchallenged.
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Briefly, the suit was filed for infringement of trade mark combined with a cause of action of passing off, seeking a permanent injunction to restrain the Defendants from infringing the Plaintiff’s registered trade mark “BON–K2” and from using the trade mark “BON K2 FORTE” to pass off the Defendants’ goods as those of the Plaintiff. The Plaintiff’s case was that its predecessor in title had adopted the mark in early 2010 for medicinal and pharmaceutical products; the Plaintiff later acquired the mark and the goodwill attached to it under a Deed of Assignment dated September 27, 2018, and was notified as the registered proprietor in the records of the Registrar of Trade Marks.
The Plaintiff also relied on its registrations for a range of formative marks including BONK2, BON-K2, BON0K2 (Carton), BON-K2 STRONG and BON-K2 HD, all in Class 5. The Plaintiff further asserted extensive use, turnover, publicity expenditure and reputation in the pharmaceutical market. In May 2014, the Plaintiff’s predecessor discovered the Defendants’ product bearing the impugned mark “BON K2 FORTE” in respect of medicinal and pharmaceutical preparations, issued a cease-and-desist notice on May 27, 2014, and upon continued use by the Defendants, instituted the present proceedings. The Defendants, despite service, neither filed a written statement nor appeared, and the Suit proceeded as an undefended Suit.
