MODI-MUNDIPHARMA PVT. LTD. & ANR. vs WIN HEALTH PHARMA THROUGH ITS PROPRIETOR MR. SANJAY SETH & ANR.
$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 197/2022 & I.A. Nos. 4959/2022, 4960/2022, 21819/2022 & 4172/2023
MODI-MUNDIPHARMA PVT. LTD. & ANR. …..Plaintiffs
Through: Ms. Prachi Agarwal with Mr. Manan Mondal and Ms. Elisha Sinha, Advocates.
(M): 8016736300
Email: manan@anandandanand.com
versus
WIN HEALTH PHARMA THROUGH ITS PROPRIETOR MR.
SANJAY SETH & ANR. …..Defendants
Through: Mr. Ashish Mohan with Mr. Kunal Thakur, Mr. Manish Dubey and Mr. Manish Tiwary, Advocates for defendant no. 1.
(M): 9891599840
7544073835
Email: advkunalthakur@gmail.com
CORAM:
HON’BLE MS. JUSTICE MINI PUSHKARNA
J U D G M E N T
13.11.2024
MINI PUSHKARNA, J:
I.A. No. 4172/2023 (Application under Section 124 of the Trademarks Act, 1999 read with Section 151 CPC seeking permission to challenge the validity of the defendants trademark registrations)
1. The present application has been filed by the plaintiffs under Section 124 of the Trade Marks Act, 1999 read with Section 151 Code of Civil Procedure, 1908 (CPC) seeking permission to challenge the validity of the defendants trademark registrations.
2. The present application seeks framing of an issue pertaining to the invalidity of the defendant no.1s registered trademark WIN HEALTH PHARMA bearing nos. 2445342 and 3123543 and to permit the plaintiffs to file appropriate proceedings for removal of defendant no.1s trademark registrations.
3. The case canvassed on behalf of the plaintiffs, is as follows:
3.1 Plaintiff no.1 is the registered proprietor of more than 80 trademarks registrations in Class 05 bearing the word CONTIN as a common feature/ suffix, as well as CONTIN, in isolation. The trademark CONTIN was initially adopted as a suffix in the year 1982 by the plaintiffs collaborator Mundipharma AG, following which it was also adopted in isolation in 1989, which has been consistently and widely used by the plaintiffs across the country.
3.2 The CONTIN series of marks includes the mark NITROCONTIN, under which the plaintiffs are offering for sale Nitroglycerine Tablets, which bear the trade dress comprising a combination of pink and white or purple and white bottles.
3.3 Plaintiff no. 2 is the prior adopter, user and registered proprietor of the trademark/ trade name WIN-MEDICARE since at least 1981, when the plaintiff no. 2 was incorporated and has been using the trademark WIN-HEALTH CARE at least since 2005. The plaintiff no. 2 also has two additional pharmaceutical divisions WIN NATURALS and WIN HEALTHCARE, details of which, are as follows:
3.4 The present suit was filed as the defendants were found to be manufacturing and selling identical products, i.e., Nitroglycerine Tablets under the trademark CARDIOCONTIN in a similar white and pink trade dress, as used by the plaintiffs for their products under the trademark NITROCONTIN.
3.5 Additionally, defendant no.1 is using the mark WIN HEALTH PHARMA as a mark, trade name and as part of the domain name being winhealthpharma.com, which is also deceptively similar to the plaintiffs trademarks WIN-HEALTHCARE, WIN-MEDICARE, WIN-NATURALS, etc. Further, even the product of the defendants bears the trade name WIN HEALTH PHARMA.
3.6 Defendant no. 1 was also found to possess the following trademark registrations:
3.7 In response to the plaint, the defendant no.1 filed a written statement wherein, the defendant no.1 has expressly contented that it is the registered proprietor of the mark WIN HEALTH PHARA and entitled to statutory protection under the Trade Mark Act, 1999. Thus, the present application has been filed.
4. On behalf of the plaintiffs, it is contented that the plaintiff no.2 is the prior adopter, user and registered proprietor of the trademark/ trade name WIN MEDICARE, since at least 1981, and has been using the mark WIN HEATHCARE, since at least 2005. On the other hand, the defendant no.1 is the subsequent adopter, user, and registered proprietor of the trademark/ trade name WIN HEALTH PHARMA. The marks in question were adopted by the defendant no.1 with an intention to ride upon the reputation and goodwill of well established brands of the plaintiffs under the marks WIN-MEDICARE, WIN-HEALTHCARE, etc. Further, by virtue of the plaintiffs reputation and goodwill generated by their products, it is unfathomable that the defendant no.1 was unaware of their presence in the market or their trade name/ trademark WIN-MEDICARE, WIN-HEALTHCARE and their product NITROCONTIN. Thus, defendant no.1s trademark registrations are invalid and liable to be removed.
5. Per contra, on behalf of the defendants, it is contented that the registration of the mark WIN MEDICARE in favour of the plaintiff does not give right to the plaintiff to the exclusive use of the word WIN. Similarly, the plaintiff is not entitled to claim rights over the word HEALTHCARE. It is contended that since the plaintiffs cannot claim exclusive rights over the mark HEALTH and/or HEALTHCARE, the defendant no.1 is also legally authorized to use the mark WIN, HEALTH and/or PHARMA.
6. It is further the case of the defendants that the trade name and domain name of defendant no.1 WIN HEALTH PHARMA and winhealthpharma.com, is not deceptively similar with the plaintiffs trademark, having restrictions/conditions imposed not to claim exclusivity over the term WIN and HEALTHCARE. Further, defendant no.1 is using its registered trademark since 2012, and therefore, the present application has been filed at a belated stage. The defendant no.1 has gained significant market presence and the associated consumers/ traders have started to recognize defendant no.1s trade name/ domain name.
7. Having heard learned counsel for the parties and having perused the record, at the outset it is to be noted that at the stage of considering the application under Section 124 of the Trade Marks Act, 1999, this Court is only required to form a prima facie view regarding tenability of the plea of invalidity of defendants registered mark.
8. The present suit has been filed by the plaintiffs seeking permanent injunction against the defendants restraining infringement of trademark, passing off, infringing of copyright, rendition of accounts, damages, etc., regarding the defendants use of the mark CARDIOCONTIN, trademark/ trade name/ domain name WIN HEALTH PHARMA, trade dress, etc.
9. As per the record, plaintiff no. 1 is the registered proprietor of more than 80 trademark registrations in Class 05 bearing the word CONTIN as a common feature/ suffix, as well as CONTIN in isolation. The present suit was filed as the defendants were found to be manufacturing and selling identical products, i.e., NITROGLYCRINE TABLETS under the trademark CONTIN in a similar pink and white trade dress, as used by the plaintiffs for their product NITROCONTIN.
10. Vide order dated 31st March, 2022, this Court granted an ex-parte injunction in favour of the plaintiffs and against the defendants, restraining them from using the mark CARDIOCONTIN or any other mark consisting of the term CONTIN.
11. Subsequently, defendant no.1 filed its written statement, wherein, it was pleaded that the defendant no.1 was the registered proprietor of the mark WIN HEALTH PHARMA. Pursuant thereto, the present application has been filed by the plaintiffs.
12. As per the pleadings on record, the plaintiff no.2 is the prior adopter, user and registered proprietor of the trademark/ trade name WIN MEDICARE since at least 1981, when the plaintiff no.2 was incorporated and has been using the trademark WIN HEALTHCARE at least since 2005. On the other hand, defendant no.1 has been using the marks WIN HEALTH PHARMA and since 06th November, 2012, as per the user detail given in the application for registration. Thus, prima facie, it is established that the plaintiff no.2 is the prior adopter, user and registered proprietor of the trademark/ trade name WIN MEDICARE.
13. It is evident that defendant no.1 is using the mark WIN HEALTH PHARMA, as a mark, trade name and as part of the domain name, being winhealthpharma.com, which is deceptively similar to the plaintiffs trademarks WIN HEALTHCARE, WIN MEDICARE, WIN NATURALS, etc. Further, even the product of the defendants bears the trade name WIN HEALTH PHARMA.
14. This Court notes that though the registration no. 2445342 and 3123543 have been obtained by the defendant no.1 under Class 35, the same are being used on pharmaceutical products, falling under Class 5, including, the defendants products sold under the name CARDIOCONTIN. Thus, it is evident that the trademark/ trade name of defendant no.1 is being used for identical goods and services as that of the plaintiffs, i.e., pharmaceutical products, wherein, the confusion would be life threatening. Further, the products of the plaintiffs and defendants are sold vide the same trading channels, including, retail outlets, street shops, chemists and industries, having identical customer base.
15. It is to be noted that the standard of comparison to be adopted in judging the resemblance is from the point of view of a man of average intelligence and imperfect collection. (See: Amritdhara Pharmacy Versus Satya Deo Gupta, 1962 SCC OnLine SC 13). Further, it is well known that the question whether the two marks are likely to give rise to confusion or not, is a question of first impression. In deciding a question of similarity between two marks, the marks have to be considered as a whole. (See: Corn Products Refining Co. Versus Shangrila Food Products Ltd., 1959 SCC OnLine SC 11).
16. In these circumstances, this Court finds prima facie merit in the contentions raised by the plaintiffs regarding the plea of invalidity of the registrations in favour of the defendants. The plaintiff has raised substantial questions regarding the validity of the registered trademark of the defendants.
17. Accordingly, the following issues are framed:
17.1 Whether the registration of the defendants mark WIN HEALTH PHARMA under registration no. 2445342 in Class 35 is invalid and liable to be removed/ cancelled from the Register of Trademarks? OPP
17.2 Whether the registration of the defendants mark under registration no. 3123543 in Class 35 is invalid and liable to be removed/ cancelled from the Register of Trademarks? OPP
18. The proceedings are adjourned for a period of three months, in view of Section 124(1)(b)(ii) of the Trade Marks Act, 1999.
19. The present application is disposed of in the aforesaid terms.
(MINI PUSHKARNA)
JUDGE
NOVEMBER 13, 2024/kr
CS(COMM) 197/2022 Page 1 of 9