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Glaxo Orthopedic U.K. Ltd. Vs. Samrat Pharma - Court Judgment

LegalCrystal Citation
SubjectIntellectual Property Rights
CourtDelhi High Court
Decided On
Case NumberSuit No. 1596 of 1982 and Interim Application No. 4538 of 1982 and 664 of 1983
Judge
Reported inAIR1984Delhi265; 1984RLR291
ActsCopyright Act, 1957 - Sections 62(2)
AppellantGlaxo Orthopedic U.K. Ltd.
RespondentSamrat Pharma
Advocates: N. Anand and; K.G. Bansal, Advs
Cases ReferredZimmer Orthopedic Ltd. v. Zimmer Mfg. Co.
Excerpt:
.....cartons deceptively similar to theirs and passing off his inferior goods as those of plaintiff - copyright with respect to packet of plaintiff registered earlier than that of respondent - plaintiff will suffer irreparable injury in as much as firstly sale of articles of plaintiff will be decreased by that much by which sale of article of defendants takes place - plaintiff entitled to get injunction. - - they complain that deft. the plaintiffs claim rights as proprietor of registered trade mark as well as copyright with respect to the carton of the same very product. (7) the plaintiffs have placed on record photostat copies of the certificate of registration of the trade mark as well as copyright. it is well-known that it is on the basis of the background, colour, get-up and..........by way. of combining his cause of action on the basis of copyright so that they could bring suit in respect of both the causes of action at delhi, that cleverness should not be encouraged and that, thereforee it should be held that this court has no territorial jurisdiction to entertain the suit. but in my view there is hardly any cleverness. the plaintiffs desire protection against infringement of their rights with respect to their product glucose and glucon-d. the products are the same while different types of rights are claimed. the plaintiffs claim rights as proprietor of registered trade mark as well as copyright with respect to the carton of the same very product. not only that the plaintiffs could combine these causes of action on the basis of registered trade mark and.....
Judgment:

G.R. Luthra, J.

(1) [PLAINTIFFS have sued Deft. for Injunction for infringement of their Trade Mark and Copyright about their Glucons-D & Glucon-D. They complain that Deft. is selling his product Glucose-D in cartons deceptively similar to their, by having similar lay-out, get-up, colour combination & arrangement and is passing off his inferior goods as those of the plaintiffs. Plaintiffs applied for interim injunction placing on record documents showing that they are registered owners and users of the trade mark and copyright in question. Deft. made an application saying that Delhi Courts had no jurisdiction. After giving details, Single Judge disposed of the 2 applications thus :

(2) It is apparent from a plain reading of S. 62(2), Copyright Act that the territorial jurisdiction with respect to any suit or other civil proceeding in respect of infringement of the copyright shall be the place where the plaintiffs or if there are more than one, any one of them is residing, carrying on business or personally works for gain. In this case it is stated by the plaintiffs that plaintiff No. 2 has registered office at Dr. Annie Besant Road, Bombay and has local office at Mathura Road, New Delhi. It is apparent from what has been stated by the defendant in the W/S reproduced above) that the defendant does not deny the existence of local office of plaintiff No. 2 at Delhi. Having regard to the fact that the local office of plaintiff No. 2 is situated at Delhi, the plaintiff is obviously carrying on business at Delhi. That being so, this court has jurisdiction with respect to the present proceedings which relate to the infringement of copyright.

(3) During arguments the complaint of the counsel for the defendant was that the plaintiff had acted with cleverness by way. of combining his cause of action on the basis of copyright so that they could bring suit in respect of both the causes of action at Delhi, that cleverness should not be encouraged and that, thereforee it should be held that this court has no territorial jurisdiction to entertain the suit. But in my view there is hardly any cleverness. The plaintiffs desire protection against infringement of their rights with respect to their product Glucose and Glucon-D. The products are the same while different types of rights are claimed. The plaintiffs claim rights as proprietor of registered trade mark as well as copyright with respect to the carton of the same very product. Not only that the plaintiffs could combine these causes of action on the basis of registered trade mark and registered copyright, but also it was absolutely necessary to have done so because the same were being claimed in respect of the same product.

(4) I, thereforee, hold that this court has territorial jurisdiction to entertain the suit. When the objection of the defendant is so hollow and without any force, there is hardly any necessity of framing any issue and then formally hearing arguments again as arguments were heard on this matter. Hence I overrule the aforesaid objection of the defendant.

(5) In the W/S the defendant also raised an objection to the effect that as plaintiffs have fixed the value of the suit for the purpose of jurisdiction at Rs. 50,000.00, the suit should have been filed in the court of the District Judge and not in the High Court and that, thereforee, the plaint be returned for presentation to the proper court. However, no arguments were addressed on this plea. It is wrong on the part of the defendant to say that the plaintiff fixed the value of the suit at Rs. 50,000.00. Paragraph of the plaint regarding value of the suit for purposes of court fee and jurisdiction is 23. In that paragraph, such value for 5 different reliefs has been mentioned. If the valuations are added, they work out to Rs. 1,00,800.00. That being so, this court has obviously pecuniary jurisdiction to entertain and decide the suit. Hence I reject the aforesaid application (I.A.664 of 1983).

(6) I. A. 4538/82 : The present application was filed along with the plaint. By way of this application the plaintiffs pray for grant of a temporary injunction restraining the defendant through its partners or proprietors, as the case may be, its servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in Glucose powder or any other medicinal or food preparation in cartons bearing the registered trade marks of the plaintiffs and in particular the inverted triangle and the diamond device or any other deceptively similar trade mark amounting to infringement of the plaintiffs' registered trade marks set out in paragraph 4 of the plaint or form substantially reproducing the plaintiffs' Glucons-D and/or Glucons amounting to infringement of registered copyrights of the plaintiffs as set out in paragraph 5 of the plaint or from doing any other activity likely to result in passing off of the defendants goods and business as the goods and business of the plaintiffs.

(7) The plaintiffs have placed on record photostat copies of the certificate of registration of the trade mark as well as copyright. The plaintiffs have further placed on record a a carton (at page 55 of the documents file) in which the defendant is selling his product Glucose-D. The plaintiffs have also filed the cartons of their produce Glucon-D under which the words written are Glucose-D. On a comparison of the two, it is clear that they are similar and the resemblance is to the extent that any product in the carton of the defendant can be taken to be that of the plaintiff. The background of each of them is green. There are criss-cross square at the same place on both of the cartons. In the carton of the plaintiff word 'GL' is written and in that of the defendant word 'SP' is written, but the printing is so small that anybody while purchasing will overlook these small words and he is likely to confuse the product of the defendant as that of the plaintiff. Then there are also resemblance of inverted triangles with a diamond at same place. In the carton of the plaintiff, the words written in inverted triangle are Glucon-D and Glucose-D. In the carton of the defendant, the words written are Glucose-D powder in inverted triangle. Then there is diamond also at the lower angle of the triangle in similar fashion. In nutshell the colour, get-up and general appearance of both the cartons is the same. It is well-known that it is on the basis of the background, colour, get-up and general appearance of the cartons that the articles contained therein are purchased and that being so, a customer is likely to be deceived and he can buy the product of the defendant taking the same for that of the plaintiff.

(8) At pages 41 to 43 of the documents file is the photostat copy of the registration of copyright of the product of the plaintiff known as Glucose-D. At pages 44 to 46 is photostat copy of registration of copyright of Glucon-D of the plaintiff. A copy of the carton forms part of the aforesaid certificate. I have already compared the carton of Glucon-D of the plaintiff with the carton of Glucose-D of the defendant and found the latter deceptively similar. It is, thereforee, obvious that there is infringement of the trade-marks and copyrights of the plaintiff.

(9) Further, it also appears that the defendant is guilty of passing off of his goods as those of the plaintiff by way of using deceptively similar cartons and trade-marks. Learned counsel for the defendant in this connection relied upon Khemraj Shrikrishandass v. M/s Garg & Co. : AIR1975Delhi130 . It was held that action for passing off was a common law remedy, that its gist was deceit and not infringement of a right to exclusive user and that in such an action, it was essential for the plaintiff to establish (1) distinctive features (2) substantial user and (3) wide reputation Counsel contended that in this case the third condition of wide reputation did not stand proved, that although the plaintiff had placed on record a statement of sales worth crores of rupees of their product from the years 1972 to 1982 yet the said statement was no supported by an affidavit and that, thereforee, it cannot be said that their products were so well reputed as to command wide and exclusive sale. I do not, however, agree with the learned counsel. Prima facie all the conditions mentioned in the afore said authority stand established, [t is true that affidavit has not been attached with the statement of sales and the statement of expenditure on advertisement but it was stated at the bar that if the court permitted an affidavit could be filed. Learned counsel for the defendant did point out the defect of absence of affidavit but at the same time he could not dispute correctness of the said statements at the bar. thereforee, prima facie they give correct indication. The other condition obviously stands satisfied. The products of the plaintiff are put in cartons with distinctive features, as already mentioned. The user has been substantial for number of years while the user of the defendant, even according to the case of the defendant, is later in time because according to the plaintiff, their user started in 1979.

(10) Learned counsel for the defendant also argued that there was delay in filing the suit by the plaintiff inasmuch as he admittedly came to know of the products of the defendant in the year 1980, that they even according to their own case, gave notice in the year 1980-81 and that, thereforee, they are not entitled to any injunction on account of laches.

(11) On the question of delay, following proposition of law was laid down in Zimmer Orthopedic Ltd. v. Zimmer Mfg. Co. (1968) R.P.C. 362 :

'THE essence of the matter, as I understand it, is this. It is for the plaintiff and his legal advisers to get on with the action and to see that it is brought to trial with reasonable dispatch. The defendant is normally under no duty to stimulate him into action, and the plaintiff cannot complain that the defendant gave him no warning before applying to have the action dismissed for want of prosecution. But the court will not take the drastic step of dismissing the action unless (a) the delay has been inordinate, (b) there was no excuse for it and (c) the defendant is likely to be seriously prejudiced by it if the action is allowed to go on.'

(12) In the present case, it cannot be said that the delay was inordinate. The plaintiff has placed on record the notices which were sent by the plaintiffs to the defendant requesting the latter to stop the impugned user. The suit was brought in Nov., 1982 which can be said to be within reasonable dispatch. Further, it is not clear as to how there was a serious prejudice, to the defendant on account of alleged delay caused by the plaintiff. It was contended by the counsel for the defendant that the defendant had in the meantime built up very good sales and that, thereforee, issue of injunction will prejudice him. But the case of the plaintiff is that defendant was served with notice warning the latter in respect of the impugned misuser. thereforee, the defendant was fully in the know of the fact that it was likely to be restrained from carrying on the alleged mis-user. It could have very well stopped and not have tried to build up further sales.

(13) Another defense raised by the defendant is that the carton of defendant is also registered as an artistic work under the copyright Act and that the registration number is A. 36370/1982. The defendant states that in exercise of the copyright it has been using the carton of its product since 1979.

(14) The aforesaid defense raises a question as to what rights are conferred on account of registration of the copy rights and what exactly the nature of copy rights is. The relevant provisions regarding the registration of copy rights are sections 44 and 45 of the Copy Right Act. Section 44 says that there shall be kept at the Copyright Office register in the prescribed form to be called register of copyright. Section 45 reads (......) It is apparent from a plain reading of section 45 that it is discretionary with any author of any work to apply for the registration of copyrights and that registration as such does not confer any rights. There is no other provision at all in the Copyright Act which confers rights on account of registration of a copy right. thereforee, copyrights exist whether the registration is done or not and the registration is merely a piece of evidence as to when a certain author started claiming copyrights in some artistic or some other work.

(15) When the registration does not confer any rights it is to be seen as to how copyrights in favor of a person came into existence. S. 13 of the Copyright Act gives a clue as to how a copy right is acquired. It says that copyright shall subsist throughout India inter alia, in case of original literacy, dramatic, musical and artistic works. thereforee, emphasis is on the originality. It is, thereforee, that artistic work which is original in which copyrights can vest. According to S. 17 the author of the work shall be the owner of the copy right therein. The word 'author' is defined in S. 2(d) of the Copyright Act: (......) That definition of word 'author' and S. 17 lay emphasis on the fact that copyrights vest in that person who is original creator of the work. In some cases it may not be possible to be definite as to who was the original creator. In such cases, thereforee, obviously the person who got registration earlier or who is established to be earlier user can be presumed to be the author or original creator of the artistic work.

(16) In the present case it is apparent from the documents that the copyrights with respect to the packet design of Glucons-D were registered on 5.12.77. It also appears from the photostat copy of the certificate filed by the plaintiff that copyrights with respect to packet design of Glucon D were registered on 1.7.81. The get-up, green background and general appearance of both packets or cartons of Glucons D and Glucon-D is similar. The defendant has not given the date of registration of its copyright but it appears from the figure '82' attached with the registration No. that registration took place in 1982, which obviously was later than 1977 in which year registration with respect to Glucons-D took place and that was also later than registration of Glucon-D, which took place in 1980.

(17) The balance of convenience obviously favors the plaintiff. The plaintiff will suffer irreparable, injury in as much as firstly the sale of articles of the plaintiff will be decreased by that much by which the sale of the articles of the defendants takes place and secondly if the article of defendant is inferior in quality to article of the plaintiffs, there is bound to be damage to the reputation of the plaintiff resulting in considerable decrease of sales of the articles of the plaintiff. There cannot be any injury to the defendant when he is not allowed to sell his articles in such a a manner as to deceive the public and pass off his products as that of the plaintiffs.

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