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Apex Laboratories Limited Vs. India Pharmaceuticals - Court Judgment

LegalCrystal Citation
CourtChennai High Court
Decided On
Case NumberC.S.No. 367 of 2000
Judge
AppellantApex Laboratories Limited
RespondentIndia Pharmaceuticals
Excerpt:
.....of plaintiff and all prayers of plaintiff deserve to be acceded to - with regard to damages, it was open to plaintiff to take out separate application for quantification of damages - if plaintiff chooses to pursue such course, such application shall be entertained in light of damages prayer being acceded to and decreed - suit decreed. paras : (16,17) cases referred: venkateshwara camphor works case reported in 2000(4) ctc 222, exphar sa vs. eupharma laboratories ltd. (a.i.r. 2004 sc 1682) glaxo operations u.k.ltd., vs. rama bhaktha hanuman candle and camphor works, ptc (suppl.)(2) 293 (mad.), cunniah and co. v. balraj and co.(1960-1 mad.lj 58 (air 1961 mad 111), .....extracted above, the following issues were framed by this court: (1) whether the plaintiff has got copyright under the name and style of zincovit ? (2) whether the plaintiff is entitled to permanent injunction restraining the defendant, their men and agent from using the name zincovit label ? (3) whether the plaintiff is entitled to permanent injunction restraining the defendant from passing off or enabling others to pass off their goods violating the alleged copyright ? (4) whether the plaintiff is entitled to rendition of accounts from the defendant as prayed for ? (5) whether the plaintiff is entitled to get damages from the defendant for violating any copyright ? (6) whether the defendant has to surrender all product cartons and labels, literature, promotional material etc., bearing.....
Judgment:

(Prayer: Suit with prayers for granting a permanent injunction restraining the defendants either by themselves, their servant or agents or any one claiming through or under them from committing an infringement of the plaintiff's Copy right in the artistic work 'ZINCOVIT' label by the use of the infringing BICAL label or any other label work or representation the use of which would be an infringement of the plaintiff's artistic work 'ZINCOVIT' Label; a permanent injunction restraining the defendant, either by themselves, their servant or agent or any one claiming through or under them from passing off or enabling others to pass off their goods as or for the well known and reputed goods of the plaintiff by using the BICAL Label for Pharmaceutical and/or Medicinal preparations or like goods or any other Label work or representation which is in any manner deceptively or confusingly similar to the plaintiff's well known and reputed 'ZINCOVIT' Label; direction to the defendant to render a true account and to pay to the plaintiff a sum equivalent to the profits earned by the defendant through the sale of the said offending goods in the alternative to pay to the plaintiff such sum as this Court may determine by way of damages for the passing off committed by the defendant; directing the defendant to surrender to the plaintiff for destruction all product cartons and labels, literature, promotional material etc., bearing the said offending mark, together with all implements used by the defendant for imprinting the said offending work; directing the defendant to pay to the plaintiff the costs of the suit and for any other such order.)

1. The suit has been filed by the plaintiff, for granting a permanent injunction restraining the defendants either by themselves, their servant or agents or any one claiming through or under them from committing an infringement of the plaintiff's Copy right in the artistic work 'ZINCOVIT' label by the use of the infringing BICAL label or any other label work or representation the use of which would be an infringement of the plaintiff's artistic work 'ZINCOVIT' Label; granting a permanent injunction restraining the defendant, either by themselves, their servant or agent or any one claiming through or under them from passing off or enabling others to pass off their goods as or for the well known and reputed goods of the plaintiff by using the BICAL Label for Pharmaceutical and/or Medicinal preparations or like goods or any other Label work or representation which is in any manner deceptively or confusingly similar to the plaintiff's well known and reputed 'ZINCOVIT' Label; directing the defendant to render a true account and to pay to the plaintiff a sum equivalent to the profits earned by the defendant through the sale of the said offending goods in the alternative to pay to the plaintiff such sum as this Court may determine by way of damages for the passing off committed by the defendant; directing the defendant to surrender to the plaintiff for destruction all product cartons and labels, literature, promotional material etc., bearing the said offending mark, together with all implements used by the defendant for imprinting the said offending work; directing the defendant to pay to the plaintiff the costs of the suit and for any other such order.

2. Besides prior user there are three points on which the defendant resisted the suit and they are as follows:

(a) Defendant has deprive to show that the label is not subject matter of the copy right registration at all.

(b) Defendant has attempted to show and there is nothing originally in the artistic work.

(c) Defendant has made a faint attempt regarding territorial jurisdiction of this Court.

3. On the rival pleadings extracted above, the following issues were framed by this Court:

(1) Whether the plaintiff has got copyright under the name and style of ZINCOVIT ?

(2) Whether the plaintiff is entitled to permanent injunction restraining the defendant, their men and agent from using the name ZINCOVIT label ?

(3) Whether the plaintiff is entitled to permanent injunction restraining the defendant from passing off or enabling others to pass off their goods violating the alleged copyright ?

(4) Whether the plaintiff is entitled to rendition of accounts from the defendant as prayed for ?

(5) Whether the plaintiff is entitled to get damages from the defendant for violating any copyright ?

(6) Whether the defendant has to surrender all product cartons and labels, literature, promotional material etc., bearing the alleged trademark for destruction ?

(7) To what other reliefs the parties are entitled ? Suit was set down for trial and parties went for trial on the above issues. The plaintiff let in oral evidence through one witness P.W.1 and marked seven exhibits i.e., Exs.P1 to P7. P.W.1 was cross examined in full by the defendant. Thereafter, there was no representation for the defendant. Defendant did not let in any oral or documentary evidence until today. There is no representation or appearance of the defendants. However, this Court is of the view that the available material warrants a judgment on merits.

4. As is evident from the original averments and issues extracted supra, this suit is one complaining of infringement of Copy Right. The plaintiff is a Pharmaceutical Company, complaint of infringement of Copy Right is with regard to the artistic work in the label for 'ZINCOVIT', Vitamin Syrup and drops. The label in which it is packed and the outer cover which has an artistic work is the subject matter of the suit. Ex.P4 is the plaintiff's label and Ex.P5 is the defendant's label. Ex.P3 is the Copy Right Registration Certificate for the plaintiff's label in the category artistic work. Plaintiff has also got 'ZINCOVIT' word mark registered as a trade mark. This is evident from the trade mark Registration Certificate, Ex.P2 which is of the year 1988. A perusal of the same read in conjunction with pleadings and evidence would show that the plaintiff had adopted the mark in 1988 and has commenced use in 1990.

5. A bare perusal of the plaintiff's label Ex.P4 and the defendants label Ex.P5 would clearly demonstrate that they are absolutely identical with the exception of the above said word mark. The time honoured test for comparing the infringing marks, labels or products is that the plaintiff's label should be seen first, that should be taken away from the sweep of one's eye, thereafter the defendant's label should be seen and the question as to whether a man of ordinary identity/imperfect recollection will be lulled into belief that what he is seeing now is what he saw earlier should be answered. This Court applied this time honoured test and compared the two labels Exs.P4 and P5. Only three possibilities emerged and they are as follows:

(a) The plaintiff's label should have been copied from the defendant's label;

(b) The Defendant's label should have copied from the plaintiff's label;

(c) Both the labels originate from the same source;

6. As stated supra, the Court applied the above test and compared the two labels. There is no shred of doubt in the mind of the court that they are absolutely identical and obviously one is a slavish imitation of the other.

7. This takes us to the question of who is the prior user. As stated supra, plaintiff has established from Ex.P2 primarily and other corroborative material that they have adopted the trade mark in 1988 and have been using the same since 1990.

8. There is no contra evidence to show that the defendant is a prior user though a faint attempt is being made in pleadings on the part of the defendants to claim prior use. The defendant has neither let in any oral evidence nor marked any documents. Therefore, the plaintiff is clearly the prior user. Besides prior user there are three points on which the defendant resisted the suit and they are as follows:

(a) Defendant has deprive to show that the label is not subject matter of the copy right registration at all.

(b) Defendant has attempted to show and there is nothing originally in the artistic work.

(c) Defendant has made a faint attempt regarding territorial jurisdiction of this Court.

9. A perusal of Ex.P5, defendant's label would clearly show that Ex.P4 label is the subject matter of the Copy Right Registration. The statutory obligation of artistic work under the Copy Right Act as well as judgments in this regard which shall be referred to infra, would clearly show that the label in fact is the subject matter of the Copy Right Registration and the argument on the part of the defendant that there is no originality in the artistic work is merely an argument in vain.

10. With regard to territorial jurisdiction, Section 62 of the Copy Right Act is abundantly clear. The plaintiff is clear that the defendant is out side the territorial jurisdiction of this Court and that cause of action may or may not have arisen within the territorial jurisdiction of this Court. Further, there is no dispute that the plaintiff is within (ordinarily carrying on business) the territorial jurisdiction of this Court. Therefore, the suit was laid with the aid of Section 62 of the Copy Right Act. This Court is of the view that there is absolutely no legal infirmity in such a course. Therefore, the attempt on the part of the defendant to attack the suit on the ground of lack of the territorial jurisdiction falls flat in the light of Section 62 of the Copy Right Act.

11. In the judgment of the Division Bench of this Court in the Wipro Limited Case dated 29.02.2008 in OSA.Nos.64 to 67 of 2008 authored by Justice A.P.Shah (Chief Justice of this Court as his Lordship then was) speaking for the Division Bench in Paragraphs 12, 13 and 14 held as follows:

12. The provisions of Section 62 of the Copyright Act fell for consideration of the Supreme Court in Exphar SA vs. Eupharma Laboratories Ltd. (A.I.R. 2004 SC 1682) Justice Ruma Pal, speaking for the Bench observed as follows:

"We would like to emphasise the word (Included) This shows that the jurisdiction for the purposes of Section 62 is wider than that of the court as prescribed under the Code of Civil Procedure, 1908. The relevant extract of the report of the Joint Committee published in the Gazette of India dated 28.11.1956 which preceded and laid the foundation for Section 62(2) said:

In the opinion of the Committee many authors are determined from instituting infringement proceedings because the court in which such proceedings are to be instituted is situated at a considerable distance from the place of their ordinary residence. The Committee feels that this impediment should be removed and the new sub-clause (2) accordingly provides that infringement proceedings may be instituted in the District Court within the local limits of whose jurisdiction the person instituting the proceedings ordinarily resides, carries on business etc., It is therefore, clear that the object and reason for the introduction of sub-section (2) of Section 62 was not to restrict the owners of the copy right to exercise their rights but to remove any impediment from their doing so Section 62(2) cannot be read as limiting the jurisdiction of the District Court only to cases where the person instituting the suit or other proceedings or where there are more than one such persons, any of them actually and voluntarily resides or carries on business or presently works for gain. It prescribes in additional ground for attracting the jurisdiction of a court over and above the normal grounds as laid down in Section 20 of the Code

13. In Glaxo Operations U.K.Ltd., vs. Rama Bhaktha Hanuman Candle and Camphor Works, PTC (Suppl.)(2) 293 (Mad.), a learned single Judge of this Court (J.Shanmukham, J) observed:-

In Section 62(2) a deliberate departure is made from Section 20 of the Code of Civil Procedure to enable the plaintiff to sue one who infringed his copyright in the Court within whose local limit he carried on business at the time of the institution or other proceedings. That such a privilege extended to a plaintiff in the prejudice of the defendant cannot be doubted. This additional factor will also suggest that the expression carries on business is too wide to embrace the branch or branches where the business activities are carried.

14. It is thus seen that Section 62 of the Copyright Act and Section 134 of the Trade Marks Act prescribe an additional ground for attracting the jurisdiction of a Court over and above he normal ground, as laid down in Section 20 of the C.P.C. In other words a special right is conferred on the properties of the registered trade mark to institute a suit for infringement of any trade mark or copyright in the district within whose jurisdiction he resides or carries on business. The provisions contained in non-obstante clause by using the phrase 'notwithstanding anything contained in the C.P.C. 1908 (5 of 1908) or any other law for the time being in force is made with a view to give a overriding effect to the said provision. It is equivalent to saying that the provisions would hold the field notwithstanding anything contained in the C.P.C. Or any other law for the time being force. Moreover, by virtue of Section n120 of the C.P.C. The provisions of Section 20 are not applicable as far as High Court is concerned . Therefore, the scope of this Section cannot be curtailed by reference to Section 20 of the C.P.C. Or Clause- 12 of the Letters Patent. Therefore, in a case of infringement of trade mark or copyright concerned by Section 134(2) of the Trade Mark Act or Section 62(2) of the Copyright Act, the question of plaintiff taking prior leave under Clause 12 of the Letters Patent does not arise and the plaintiff need not take leave of the Court under Clause 12 of the Letters Patent even if only a part of the cause of action or no part of the cause of action arose within the jurisdiction of this Court, if the plaintiff ordinarily resides or carries on business within the jurisdiction of the Court. This much on territorial jurisdiction and the finding of this Court on the territorial jurisdiction aspect.

12. Another Division Bench of this Court in a judgment reported in AIR 1961 Mad 114, in Associate Publishers Limited case, Justice Rajamannar (Chief Justice as his Lordship then was) speaking for the Division Bench in Paragraph 5 and 6 wrote as follows:

5. Certainly the plaintiff must have expanded his skill and labour in producing his picture by a combination of parts of two other pictures, in a new way. As Copinger points out (9th Edn. p. 39), neither original though nor original research is essential end the standard of originality required is a low one. It is original skill or labour in execution, and not originality of thought which is required. Of course, it is difficult to state any principle upon which the standard is based and to state the precise amount of the knowledge, labour, judgment or skill or taste which the artist must bestow upon his composition in order to acquire a copyright. We are in entire agreement with Balakrishna Aiyar J. on this point that.

Even if it be that in the present case the plaintiff did nothing more than what Mr. Choudri thinks he did, viz., that he picked up one photograph of Mahatma Gandhi, reversed it and then adapted the head he found in another photograph and brought the two together, even so, he will be entitled to protection in his work because the result is something different and that something was the product of the labours and efforts of the plaintiff. Mr. Rajah Aiyar was unable to seriously upset this finding.

6. The next question is whether there has been an infringement of the copyright which the plaintiff had in his picture M.O.3. The answer to this question depends upon whether M.O. 15 is a copy or colourable imitation of M.O. 3. As was pointed out in the judgment of a Division Bench of this Court to which one of us was a party in Cunniah and Co. v. Balraj and Co.(1960-1 Mad.LJ 58 (AIR 1961 Mad 111), It is impossible to lay down any rule which could serve as a test of what constitutes a copy or colourable imitation. In order to constitute infringement there should be direct or indirect use of those features of the plaintiff in which copyright subsists. It is unusual for an infringement to consist of an exact reproduction of the whole of the plaintiff's work. Consequently it is difficult to be precise as to the amount of copying or degree of resemblance necessary to constitute infringement. Our conclusion must depend, in the words of Lord Herschell. really on the effect produced upon the mind by a study of the picture, and of that which is alleged to be a copy of it or at least of its design.

We have carefully compared the two pictures. There are obviously differences. M.O. 3 is in monochrome but M.O. 15 is coloured. In M.O. 3 Mahatma Gandhi holds a paper but in M.O. 15 he holds a book. In M.O. 15, before him are placed a watch and a newspaper or journal. In M.O. 3 only four fingers of Mahatmaji's left hand are clearly visible but in M.O. 15 all the five fingers are clearly visible. But these differences appear to us to have been deliberately introduced to avoid a possible charge of infringement. Some of the differences are evidently due to difference in the degree of skill of the plaintiff and Achari, D.W. 3. There can be no doubt that M.O. 3 is a far better picture than M.O. 15. It is curious that the artist himself who drew M.O. 15, K.R.K. Achari, put forward in his evidence the case that he drew the original of M.O. 15 from M.O. 17 and M.O. 20. He took a tracing of M.O. 20 and reversed it and then adapted the body to the head in M.O. 17. Now this is exactly what the first defendant says the plaintiff did. Coincidences do occur in life but we are convinced that this is not such a case of accidental coincidence. It is impossible to believe that by sheer chance D.W. 3 adapted the same combination as the plaintiff adopted, when it is well known that the country was flooded with pictures of Mahatma Gandhi, especially after his tragic assassination in January 1948.

13. The above is in aid of the verdict this Court is returning on the defence of the defendant that there is no artistic work in the label. This Court rejects the plea of the defendant that there is no artistic work in the plaintiff's label, Ex.P4. This is in addition to the obtaining position of law that Copyright Registration cannot be questioned by the defendant in an infringement suit unlike Patent Law.

14. In the Venkateshwara Camphor Works case reported in 2000(4) CTC 222, Justice Prabha Sridevan (as her Lordship then was) held as follows in paragraph 7 and 8:

7. I have seen both the cartons. The central figure of the God is different in both the cartons. The appellant's carton is with the figure Lord Krishna while the respondent's carton is of Lord Muruga . The positioning of the figure on a lotus flower with water in the background against an orange Circle is very similar. The manner in which the different colours are used are also almost identical. Of course, the wording in the front of the appellant carton is in English, while that on the respondent's carton is in Tamil. On the reverse of the carton, the positioning of the words, the colour scheme against which they are set against are almost identical, where the appellant carton's words the respondent's carton is and where the appellant's carton has the words the respondent's carton has the words and where the appellant's carton says the respondent's carton says, and there again there are the words on the appellant's carton you have in them the luster of a diamond with the grace of divinity , on the respondent's carton you have in them the lustre of the sun with the grace of divinity .

8. It is apparent without dissection of the separate features of the two cartons, to arrive at the conclusion, that the respondent while designing the carton, its colour, its getup and while choosing the words that are inscribed on it, could not have done so, without keeping the appellant's carton before him. The similarities are too great to be a mere co-incidence or for us to assume that two persons separated in time and place were inspired in the same manner. The respondent does not deny in the written statement that the appellant has been in the business long before him. The trial Court had observed that the colour scheme is not registered by the plaintiff and importance should be given to the name of the brand and not the colour scheme. The colour scheme is very nearly identical, both as regards the front of the carton and the rear of the carton. There are blue and yellow bands identically designed on the sides of the carton, in both the figure of the God set-against a orange circle, with a similar yellow circle super-imposed and the letterings in white with red border set-against dark blue background is very nearly similar. In any event when a trade-mark is registered, it is registered for all colours. Section 10 of the Act is as follows:

..If and so far as a trade-mark is registered without limitation of colour, it shall be deemed to be registered for all colours. The registration certificate given to the appellant has no limitation regarding colour and therefore, it should be deemed to be for all colours.

15. The above is in aid of the finding this Court has returned on comparison of the rival cartons by applying the legally prescribed test.

With regard to damages, as this is a registered copy right and the complaint is one of infringement of Registration of Copy Right, once infringement is established, this Court is of the view that the plaintiff will be entitled to damages without going into the arduous exercise of proving actual damage as is required in common law remedies such as passing off.

16. Therefore, in the light of all that have been stated supra, all the issues that have been framed by this Court have to be necessarily answered in favour of the plaintiff and all the prayers of the plaintiff deserve tobe acceded to. With regard to damages, it is open to the plaintiff to take out a separate application for quantification of damages. If the plaintiff chooses to pursue such a course, such an application shall be entertained in the light of damages prayer being acceded to and decreed.

17. Suit is decreed with costs as prayed for.


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