S.J. Vaziftdar, J.
1. The Plaintiff filed this suit to restrain theDefendant from infringing its copyright in respect ofits cartons, passing off its goods as the goods ofthe Plaintiff and for damages. The Plaintiff hasalso sought to restrain the Defendant from using, inrelation to any medicinal preparation, the labeland/or cartons so as to pass off its goods as thegoods of the Plaintiff. The Notice of Motion seeksinterim reliefs in terms of the aforesaid reliefs.
2. The Plaintiffs case is that the Defendantmanufactured, sold and distributed pharmaceuticalproducts under the trade mark 'APPETONE' with a labeland in packing and cartons with art work identical tothat of the Plaintiff. Exhibits 'A1' 'A2' and 'A3'to the plaint are copies of the Plaintiffs label andpacking. On the said label is the Plaintiffs trademark 'APPETONE'. The trade mark and the packing usedby the Defendant are at Exhibits 'C1' 'C2' and 'C3'of the plaint. It is not necessary to describe thesame as the trade mark and the packing used by thePlaintiff and the Defendant are identical. A findingas to whether one is deceptively similar to the otheris therefore not necessary. The question before meis whether the Plaintiff is entitled to theinjunctions prayed for.
3. The facts are disputed in almost every othermaterial aspect by the parties. Mr. Birendra Saraf,the learned counsel appearing on behalf of thePlaintiff however submitted that even assuming thatthe Plaintiff was not the proprietor of the mark andthe artistic work and had pirated the same from thethird party it was nevertheless entitled tointerlocutory reliefs against the Defendant as it wasa prior user thereof in India.
4.It is necessary therefore to first set out therival cases.
The Plaintiffs case is that in or aboutAugust, 1994 the Plaintiff coined, conceived andadopted and thereafter started using the trade markconsisting of the word 'APPETONE' for use in respectof medicinal and pharmaceutical preparations. InSeptember, 1994 the Plaintiff got prepared a label,carton, open packet (mono) and a bigger carton forbigger packing containing artistic works, design,layout and getup. The cartons contained the originalartistic works, designs, layouts and a peculiarschematic arrangement of various features, colourschemes and getup. By virtue of the originalitycontained in the artistic works of the labels andcartons, a copyright exists and vests in thePlaintiff, who got the same prepared by an artist oneAvinash Anant Raje under a contract of employmentwith the Plaintiff. The Plaintiffs are therefore theowners of the copyright, exclusively entitled to useand reproduce the same.
It would be convenient at this stage to referto a one page affidavit of Avinash Anant Raje, filedon 21st June, 2002. Only one of the paragraphs isrelevant and it reads as under :
'In or about September 1994, I prepared theart works of label, monocarton and biggercarton for multiple packing of product bearingthe name APPETONE. Copies (reprinted) of thephotograph of the said APPETONE label, monocarton and multiple packing carton are annexedhereto and collectively marked as Exhibit 'A'hereto. I say and submit that the saidcartons and labels were originally designedand created by me for the Plaintiffs andcontains the original artistic works, lay out,color scheme and get up and the copyright ofthe same exclusively vest with thePlaintiffs.'
I will comment on this affidavit later. Atthis stage, it is sufficient to notice that theaffidavit is dated 21st July, 2002 i.e. only threedays before the Notice of motion was heard. There isno dispute that the Plaintiff commenced use of thetrade mark and the labels/cartons inSeptember/October, 1994.
5. The Plaintiff applied for and obtained alicence from the Licensing Authority to manufacturefor sale multi vitamins. The licence was originallyin force from 18th July, 1996 to 31st December, 1997and has thereafter been renewed from time to time,at least till 31st December, 1999.
6. On 29th June, 1996 two 'Loan LicenceAgreements' were entered into by the Plaintiff - onewith Gelsules Medicap Pvt. Ltd. and the other withthe Defendant. The agreement with Gelsules MedicapPvt. Ltd. was referred to on the basis that theCompany is a sister-concern of the Defendant. TheDefendant denies this. As the same is not relevantto the disputes between the parties, it is notnecessary for me to consider this aspect.
Under the Loan Licence Agreement, theDefendant agreed to process raw-material and packingmaterial supplied by the Plaintiff, into the productsof the standard and specifications given to it by thePlaintiff and pack them in bulk or in packs asdirected by the Plaintiff. The Plaintiff was to sendthe raw-material, bottles, containers and otherpacking materials, cartons, labels, indication slips,inserts and other literatures required for thepurpose of manufacturing and packing the products.Clauses 4(xii) and 6(c) read as under :
4(xii)'Not to claim any right to or underany of the trade marks, patents or processesconnected with any of the Products ormanufacture and/or sell any Products under atrade mark connected with the Products orunder a name phonetically or otherwise similarto trade names connected with the Products '
6(c)'GELSULES shall have the right to useand emboss the trade marks on the saidProducts solely for the purpose ofprocessing/packing the Products pursuant tothis Agreement. This Agreement does not giveGELSULES any right to the said trade marks andthe property in any of the material whatsoeveron which the said trade marks shall be usedand the said right shall vest and alwaysdeemed to be vested with IPCA.'
At this stage it would be sufficient only tonotice that neither of the clauses mentions that thetrade marks, patents or processes belonged to thePlaintiff.
Schedule II to the agreement with 'GELSULES'sets out 'APPETONE'...Multivitamin Capsules', as oneof the products to be manufactured. Schedule II tothe agreement with the Defendant does not mention'APPETONE' as one of the products to be manufactured.However, in addition to the products mentioned are tobe found in Schedule II, the words, 'Such otherproducts as may be communicated by 'IPCA' (Plaintiff)and agreed by 'SAVITA' (Defendant) from time totime'. I mentioned this aspect only to complete thenarration as apparently the Defendant did manufacture'APPETONE' multivitamins for the Plaintiff under theagreement.
Mr. Saraf further stated that the Plaintiffenjoyed the trust and confidence of the trade and thepublic in respect of the quality of its goods andthat the cartons and labels thereof exclusivelyconnote the products to be those of the Plaintiff.The Plaintiff had sold the said goods under the mark'APPETONE' aggregating to over Rs.75 lacs.
7. In May,1998 the Plaintiff came across similarproducts sold by the Defendant under the identicaltrade mark viz. 'APPETONE' with the same labels andin the same carton. I have said earlier that theartistic work, design, layout, colour scheme andtrade mark used by the Plaintiff and the Defendantare almost identical. The only question is, whetherthe Plaintiff is entitled to the reliefs claimed byit despite the same.
8. The Plaintiff served a notice dated 4th June,1998 through its advocate on the Defendant. TheDefendant, by its advocates letter dated 1st July,1998 called for certain information and stated thaton receipt thereof, a detailed reply would be sent.The Plaintiff, by its advocates letter dated 27thJuly, 1998 furnished the requisite information. ThePlaintiffs advocate sent a reminder dated 19th July,1999 in response to which, the Defendants advocateby their letter dated 9th August, 1999 stated thatthey had not received any reply to their letter dated1st July, 1998. The Plaintiffs advocates, undercover of their letter dated 19th August, 1999forwarded a copy of the said letter dated 27th July,1998. On 21st October, 1999 the Plaintiff filed thissuit. Mr. Shah, the learned counsel appearing onbehalf of the Defendant did not deny that theartistic work, design, layout, and trade mark used bythe Defendant on its products and containers wasalmost identical that of the Plaintiff.
9. The Defendants case however is that the trademark containing the word 'APPETONE' was coined andadopted by JUSTEEN PHARMACEUTICALS LTD. (hereinafterreferred to as JUSTEEN ) a Nigerian Company and notby the Defendant. The Plaintiff had also copied inits entirety the artistic work created by 'JUSTEEN'.The Defendants case is that the Plaintiffnever sold or marketed its goods in India but onlyexported them under an agreement with 'JUSTEEN'. ThePlaintiff manufactured and exported the products forand on behalf of the 'JUSTEEN' under an agreementbetween 'JUSTEEN' and the Plaintiff dated 4thOctober, 1994. The agreement recites that thePlaintiff had agreed to manufacture the product for'JUSTEEN' under the brand name of 'APPETONE' whichbelonged to 'JUSTEEN' and that 'JUSTEEN' had agreedto provide the art work for its products to thePlaintiff under the following conditions :-
'1. IPCA WILL NOT MANUFACTURE AND EXPORTAPPETONE MULTIVITAMIN CAPSULES TO ANYOTHER IMPORTER OTHER THAN JUSTEENPHARMA.
2. IPCA HAVE NO RIGHT ON THE BRAND NAMEOF APPETONE AND ON THE ABOVE MENTIONEDARTWORK.
3. IPCA WILL NOT REGISTER THE BRAND NAMEAPPETONE FOR THEIR MULTIVITAMINPRODUCT OR REGISTER THE COPYRIGHT FORTHE SID ARTWORK OF APPETONE IN INDIAOR ANY OTHER COUNTRY.
4. IPCA WILL NOT OBJECT, IF JUSTEENPHARMA GET THE MULTI-VITAMIN CAPSULESMANUFACTURED UNDER THE BRAND OFAPPETONE AND WITH THE SAID ARTWORKIN FUTURE OR SIMULTANEOUSLY FROM ANYOTHER SUPPLIERS. HOWEVER JUSTEENPHARMA HAVE AGREED TO TAKE THEDELIVERY OF ALL THE