Mcam Surlon India Ltd. Vs MS Metalon Marketing Delhi Partnership firm and another

Legal Implications of Trademark Use Post-Termination of a License Agreement

Introduction:

This article provides a detailed analysis of the legal principles surrounding post-termination trademark use, illustrating the stringent protections available under Indian trademark law. Trademark law serves as a guardian of brand identity, ensuring that the reputation and goodwill associated with a trademark remain intact and exclusive to the rightful owner. One of the critical areas of concern in trademark law is the unauthorized use of a trademark by a former licensee after the termination of a license agreement. The recent case of MCAM Surlon India Ltd. v. MS Metalon Marketing Delhi Partnership Firm & ANR. before the High Court of Delhi brings to light the legal implications of such unauthorized use and the courts' approach in dealing with these matters.

Background of the Case:

In CS(COMM) 846/2023 & I.A. 23556/2023, MCAM Surlon India Ltd. (the plaintiff) sought injunctive relief against MS Metalon Marketing Delhi Partnership Firm and another defendant. The plaintiff, a manufacturer of engineering plastic products, has been using the trademark "METALON" since 1994, with a valid registration in Class-17 for Plastics and Nylon. The trademark "METALON" enjoys a high degree of distinctiveness, exclusively associated with the plaintiff's products.

The defendants, who were related to the plaintiff’s director, had entered into a Distribution Agreement in 2012, which allowed them to use the trademark "METALON" for business purposes. However, due to their failure to make timely payments, the plaintiff terminated the agreement, demanding the outstanding amount of ₹30,67,673. Despite the termination, the defendants continued to use the trademark without authorization, prompting the plaintiff to seek legal intervention.

Legal Issues Involved:

Infringement Post-Termination of License:

The central issue before the court was whether the defendants' continued use of the trademark "METALON" after the termination of the license agreement constituted trademark infringement under the Trade Marks Act, 1999.

Right to Injunctive Relief:

The plaintiff sought an injunction to prevent the defendants from further using the trademark, arguing that their continued unauthorized use would result in irreparable harm to the plaintiff's brand reputation and goodwill.

Balance of Convenience and Irreparable Harm:

The court also had to consider whether the balance of convenience favored the plaintiff and whether the plaintiff would suffer irreparable harm if the injunction was not granted.

Court's Analysis and Findings:

Ownership and Validity of Trademark:

The court first established the plaintiff’s ownership and the validity of the "METALON" trademark. The plaintiff's long-standing use and the distinctiveness of the trademark were undisputed, affirming the plaintiff’s exclusive rights over it.

Existence and Termination of License Agreement:

The court acknowledged the existence of the Distribution Agreement between the parties and the subsequent termination due to the defendants' failure to fulfill their payment obligations. The termination of the agreement nullified any rights the defendants had to use the trademark.

Continued Use as Infringement:

Citing legal precedents, the court held that once a license is revoked, any further use of the trademark by the licensee amounts to infringement. The defendants' continued use of "METALON" post-termination was, therefore, deemed infringing.

Grant of Injunction:

The court found that the plaintiff had a prima facie case, and the balance of convenience was in the plaintiff's favor. It was also noted that the plaintiff would suffer irreparable loss if the injunction was not granted. Consequently, the court restrained the defendants from using the trademark "METALON" for any business purposes or as a trade name.

Implications of the Judgment:

This judgment reinforces the principle that the rights conferred under a trademark license are contingent upon the subsistence of the agreement. Upon termination, the licensee must cease all use of the trademark, failing which, they risk infringing the trademark rights of the licensor. The case highlights the importance of clear and enforceable license agreements and the legal remedies available to trademark owners to protect their rights.

Conclusion:

The MCAM Surlon India Ltd. case serves as a crucial reminder to both trademark licensors and licensees of the legal boundaries governing trademark use. It underscores the severe legal consequences of unauthorized trademark use post-termination of a license agreement, including the risk of injunctive relief and potential damages. For businesses, it is essential to ensure that all licensing agreements are meticulously drafted and that any termination is promptly followed by the cessation of trademark use to avoid legal disputes.

Case Citation: Mcam Surlon India Ltd. Vs MS Metalon Marketing Delhi Partnership firm and another :23.08.2024 : CS(COMM) 846/2024:2024:DHC:6407:Delhi High Court: Mini Pushkarna: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Mrt Music Vs Paramvah Studios Private Limited

Copyright Infringement in the Digital Age

Introduction:

The recent decision by the Delhi High Court in M/S MRT Music vs. Paramvah Studios Private Limited & Ors. (CS(COMM) 680/2024) reflects the growing complexities of copyright enforcement in the digital era. The plaintiff, M/S MRT Music, filed a suit against the defendants seeking an injunction to prevent further infringement of its copyrighted works, as well as damages and an accounting of profits. The case involves allegations of unauthorized use of audio-visual recordings, sound recordings, and underlying literary and musical works in a commercial cinematograph film titled "Bachelor Party", which was made available on an Over the Top (OTT) platform. This article provides an in-depth analysis of the legal principles at play, the court's reasoning, and the broader implications of this case for copyright enforcement in India.

Background of the Case:

The Plaintiff’s Allegations:

M/S MRT Music, a well-known entity in the music industry, initiated legal proceedings against Paramvah Studios Private Limited & Ors. for what it claimed to be a blatant infringement of its copyright. The plaintiff's core allegation centered around the unauthorized use of two songs in the defendants' film, "Bachelor Party," which was streamed on an OTT platform. According to the plaintiff, the defendants did not obtain the requisite permissions or licenses to use the audio-visual recordings, sound recordings, and the underlying literary and musical works associated with these songs.

The plaintiff contended that despite attempts to engage the defendants in dialogue to amicably resolve the issue, the defendants remained unresponsive. In addition to the suit, the plaintiff lodged a First Information Report (FIR) under Section 63 of the Copyright Act, 1957, which deals with criminal penalties for infringement of copyright. Furthermore, the plaintiff alleged that the defendants compounded the infringement by extracting clips from the film containing the copyrighted works and posting them on their Instagram handle.

The Court’s Interim Orders:

Given the gravity of the allegations, the court took swift action to prevent further harm to the plaintiff. The court allowed the plaintiff to submit documents in a sealed cover to substantiate the reasonableness of its license fee, reflecting the sensitivity and potential commercial impact of such disclosures. As an interim measure, the court ordered the defendants to deposit a sum of ₹20 lacs and to remove the infringing content from their Instagram handle. These orders were aimed at safeguarding the plaintiff’s rights while the case proceeded to trial.

Legal Principles Involved:

Copyright Infringement under the Copyright Act, 1957:

Copyright infringement occurs when a party uses a copyrighted work without the permission of the copyright holder, thereby violating the exclusive rights granted under the Copyright Act, 1957. These rights include the right to reproduce the work, distribute copies, and communicate the work to the public, among others. In the present case, the plaintiff's allegations centered on the unauthorized reproduction and communication of its copyrighted songs in the defendants' film and on social media.

Section 63 of the Copyright Act provides for criminal penalties for infringement, including imprisonment and fines. The lodging of an FIR under this section indicates the plaintiff's intention to pursue both civil and criminal remedies, which is not uncommon in cases involving significant commercial interests.

Injunctions and Interim Reliefs:

Injunctions are a critical remedy in copyright infringement cases, particularly where the infringement is ongoing or likely to cause irreparable harm. The plaintiff in this case sought an injunction to prevent the defendants from continuing to use its copyrighted works without authorization. The court’s decision to order the removal of infringing content from the defendants' Instagram handle and the deposit of ₹20 lacs reflects the application of interim relief principles to protect the plaintiff’s interests during the pendency of the suit.

Damages and Accounting of Profits:

The plaintiff’s claim for damages and an accounting of profits is grounded in the need to recover the financial losses suffered due to the infringement. Damages in copyright cases are typically calculated based on the loss of revenue to the copyright holder or the profits unjustly gained by the infringer. An accounting of profits, on the other hand, requires the infringer to disclose and pay over any profits made from the unauthorized use of the copyrighted works. This remedy aims to strip the infringer of any financial benefit derived from the infringement, thereby deterring future violations.

Court’s Analysis and Reasoning:

Balancing Interests in the Digital Environment:

The court’s interim orders demonstrate a careful balancing of interests between protecting the plaintiff’s copyrights and ensuring that the defendants are not unduly prejudiced before a full trial. By allowing the plaintiff to file documents in a sealed cover, the court acknowledged the commercial sensitivity of the license fee information while ensuring that the plaintiff’s claims could be substantiated. The interim deposit of ₹20 lacs and the removal of infringing content were necessary to prevent further harm to the plaintiff’s business and reputation, especially in the rapidly evolving digital environment where content can be widely disseminated in a short period.

Emphasis on Judicial Vigilance:

The court’s orders also reflect a broader judicial approach that emphasizes vigilance in protecting intellectual property rights, particularly in the face of technological advancements that make copyright infringement easier and more widespread. By imposing interim measures, the court sent a strong message that infringement, especially in the digital realm, will be met with swift and effective judicial intervention.

Broader Implications:

Copyright Enforcement in the Digital Age:

This case highlights the challenges of enforcing copyright in the digital age, where content can be easily reproduced and distributed across multiple platforms. The court’s approach underscores the need for robust legal mechanisms to protect copyright holders from unauthorized use of their works, particularly on digital platforms like OTT services and social media.

Implications for Content Creators and Platforms:

The ruling also has significant implications for content creators and platforms that distribute digital content. It serves as a reminder of the importance of obtaining proper licenses and permissions before using copyrighted material, as failure to do so can result in substantial legal and financial consequences. For platforms, the case emphasizes the need for vigilance in monitoring content to avoid facilitating or being complicit in copyright infringement.

Conclusion:

The Delhi High Court’s decision in M/S MRT Music vs. Paramvah Studios Private Limited & Ors. is a critical development in the ongoing evolution of copyright law in India, particularly in the context of digital content. The case reinforces the importance of adhering to copyright laws and obtaining the necessary permissions before using protected works. The court’s interim measures, including the deposit of ₹20 lacs and the removal of infringing content, demonstrate the judiciary’s commitment to protecting intellectual property rights in an increasingly digital world. As content consumption continues to shift online, the principles established in this case will likely play a pivotal role in shaping future copyright enforcement strategies.

Case Citation: Mrt Music Vs Paramvah Studios Private Limited:12.08.2024 : CS(COMM) 680/2024: Delhi High Court: Mini Pushkarna: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Mr. Nadir Rizvi Vs Rafiq Ahmed

Prior leave of Civil Court under Section 124 of Trademarks Act 1999

Introduction:

The High Court of Delhi's recent ruling in the trademark infringement cases, C.O. (COMM.IPD-TM) 301/2022 and 469/2022, underscores the critical importance of adhering to procedural requirements under the Trademarks Act, 1999. The cases, involving the petitioner Mr. Nadir Rizvi of M/S. Amroha Mehndi Udhyog and the respondent Rafiq Ahmed of M/S. Shahji General Store, revolved around the contentious issue of the removal of the trademark 'HINA ZULFI' from the Register of Trade Marks. The court’s decision to dismiss the rectification petitions filed by the petitioner due to non-compliance with Section 124(1)(ii) of the Act serves as a crucial lesson for litigants in trademark disputes. This article examines the legal reasoning behind the court's order, the procedural significance of Section 124, and its broader implications for trademark litigation in India.

Background of the Case:

In these cases, the petitioner sought the removal of the respondent's trademark 'HINA ZULFI' from the Trade Marks Register, arguing that the registration was invalid. The petitioner’s challenge was part of an ongoing legal battle, with related suits pending in the District Court of Jyotiba Phule Nagar, Amroha. Specifically, Suit No. 1/2016 was pending, while another suit (No. 01/2013) filed by the petitioner had already been dismissed.

The respondent’s counsel raised a procedural objection, asserting that the petitioner had failed to seek prior leave from the court under Section 124(1)(ii) of the Trade Marks Act, 1999 before filing the rectification petitions. This objection became the focal point of the court's analysis.

Understanding Section 124 of the Trademarks Act, 1999:

The Purpose and Scope of Section 124:

Section 124 of the Trademarks Act, 1999 governs the process to be followed when the validity of a trademark’s registration is questioned during an infringement suit. The provision aims to balance the rights of the trademark holder with the need for judicial efficiency, ensuring that challenges to a trademark’s validity are addressed in an orderly and systematic manner.

Section 124(1)(ii) specifically states that if the defendant in a trademark infringement suit challenges the validity of the plaintiff's trademark, the court must stay the suit and allow the party to apply for rectification. However, if no rectification proceedings are pending and the plea appears prima facie tenable, the court is required to adjourn the case, giving the party time to seek rectification. Importantly, the section mandates that a party must obtain prior leave from the court to initiate such rectification proceedings if the matter is already under adjudication.

Legal Significance of Prior Leave:

The requirement of prior leave under Section 124(1)(ii) serves as a procedural safeguard. It prevents the misuse of rectification petitions as a delay tactic and ensures that the court retains control over the proceedings. This provision aligns with the broader principle of judicial economy, preventing parallel litigation and conflicting decisions by different courts.

The Delhi High Court’s Analysis:

Non-Compliance with Section 124:

In the cases at hand, the Delhi High Court critically examined the procedural history and the petitioner's approach. The court observed that the petitioner had bypassed the necessary step of seeking leave from the court before filing the rectification petitions. This oversight, the court noted, was not a mere technicality but a fundamental breach of the procedural requirements laid down by Section 124.

The petitioner’s inability to counter the respondent’s submission regarding non-compliance with Section 124 further weakened his position. The court found that the petitions were filed prematurely and without following the due process, rendering them non-maintainable.

Consequences of Non-Compliance:

As a result of this procedural lapse, the court dismissed the rectification petitions. However, recognizing the petitioner’s right to challenge the validity of the trademark, the court granted liberty to file fresh petitions after adhering to the proper procedure under Section 124. This outcome highlights the judiciary's commitment to enforcing procedural rules while ensuring that substantive rights are not unduly prejudiced.

Broader Implications:

Procedural Rigor in Trademark Litigation:

The court's decision underscores the necessity for procedural rigor in trademark litigation. Compliance with statutory provisions like Section 124 is not merely a formality but a critical aspect of the legal process. The ruling serves as a cautionary tale for litigants and legal practitioners, emphasizing the importance of following established procedures to avoid adverse outcomes.

Impact on Trademark Disputes:

The requirement of prior leave under Section 124 ensures that challenges to a trademark's validity are handled in a controlled and efficient manner. By enforcing this provision, the courts can prevent the dilution of the trademark register through frivolous or poorly considered rectification petitions. This, in turn, strengthens the reliability and integrity of the trademark registration system in India.

Conclusion:

The Delhi High Court's ruling in the cases of C.O. (COMM.IPD-TM) 301/2022 and 469/2022 serves as a pivotal reminder of the importance of adhering to procedural requirements under the Trademarks Act, 1999. The dismissal of the rectification petitions due to non-compliance with Section 124(1)(ii) highlights the judiciary’s commitment to upholding the procedural safeguards that underpin the trademark registration system.

Case Citation: Mr. Nadir Rizvi Vs Rafiq Ahmed:16.08.2024 : C.O. (COMM.IPD-TM) 301/2022: Delhi High Court: Mini Pushkarna: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Mangalam Organics Ltd Vs Patanjali Ayurved Ltd

Introduction:

The recent decision of the High Court of Judicature at Bombay in Mangalam Organics Ltd. vs. Patanjali Ayurved Ltd. & Ors. brings to light the critical importance of adhering to judicial orders, particularly interim injunctions, within the framework of Indian civil procedure. The imposition of a substantial cost of Rs. 50 lacs for the violation of an injunction order under Order 39 Rule 2A of the Code of Civil Procedure, 1908 (CPC), serves as a stern reminder of the consequences of contemptuous conduct in the legal process. This article delves into the legal reasoning behind the court's decision, the implications of such punitive measures, and the broader significance for parties involved in civil litigation.

Background of the Case:

In the case at hand, the plaintiff, Mangalam Organics Ltd., initiated legal action against Patanjali Ayurved Ltd. and others, alleging that the defendants had infringed upon its trade dress and packaging design. The plaintiff sought an ex-parte ad-interim injunction to restrain the defendants from using a cone-shaped trade dress and carton packaging similar to that of the plaintiff's product.

On August 30, 2023, the court granted the injunction and appointed a Court Receiver to enforce the order. However, despite being served with the injunction, the defendants continued to manufacture and sell the impugned product, leading the plaintiff to file an application for contempt of court under Order 39 Rule 2A of the CPC.

The Court’s Analysis:

Violation of Injunction and Contempt:

Order 39 Rule 2A of the CPC provides the court with the authority to penalize parties who violate injunction orders. The rule underscores the need to maintain the sanctity of judicial orders, allowing the court to enforce compliance through punitive measures, including monetary penalties and imprisonment.

In this case, the court found that the defendants had willfully disobeyed the injunction order. The plaintiff presented compelling evidence, including invoices and purchase records, showing that the defendants continued to sell the impugned product even after the order was issued. The defendants’ defense, claiming inadvertent and unintentional sales, was dismissed by the court as insufficient and unconvincing, given the prolonged period and frequency of the sales.

Punitive Measures: Cost Imposition:

Recognizing the defendants' conduct as contumacious, the court exercised its inherent powers under Section 151 of the CPC to punish the defendants for contempt. Initially, the court directed the defendants to deposit Rs. 50 lacs as a step towards purging their contempt. However, when additional evidence revealed further sales after the defendants had undertaken to comply with the court's orders, the court deemed it necessary to impose a more severe penalty.

The court ordered the defendants to pay a total of Rs. 4 crores to the plaintiff within two weeks, with the previously deposited sum of Rs. 50 lacs to be remitted to the plaintiff. The order also stipulated that failure to comply would result in the defendants being detained in civil prison for two weeks.

Legal Principles at Play:

Inherent Powers of the Court (Section 151 CPC):

Section 151 of the CPC empowers courts to make orders necessary for the ends of justice or to prevent the abuse of the process of the court. In this case, the court utilized its inherent powers to address the defendants' blatant disregard for the judicial process. The decision to impose a substantial monetary penalty and the threat of imprisonment reflects the court’s determination to uphold the authority of its orders.

Order 39 Rule 2A CPC: Enforcement of Injunctions:

Order 39 Rule 2A is designed to ensure that parties respect and adhere to injunction orders. It allows the court to impose sanctions for non-compliance, including attachment of property and imprisonment. The rule is crucial in maintaining the effectiveness of interim relief, as it deters parties from undermining the judicial process.

Broader Implications:

Deterrence Against Contemptuous Conduct:

The decision in this case sends a strong message to litigants that contempt of court will not be tolerated. By imposing a significant monetary penalty and threatening imprisonment, the court emphasized the seriousness of violating injunction orders. This serves as a deterrent against similar conduct in future cases, reinforcing the importance of compliance with judicial directives.

Impact on Civil Litigation:

The case also highlights the importance of interim relief in protecting the rights of parties during the pendency of a lawsuit. By rigorously enforcing injunctions, courts ensure that the status quo is maintained, preventing irreparable harm to the aggrieved party. The imposition of costs and penalties in cases of non-compliance further strengthens the efficacy of interim orders, making them a vital tool in civil litigation.

Conclusion:

The High Court’s decision in Mangalam Organics Ltd. vs. Patanjali Ayurved Ltd. & Ors. underscores the judiciary's commitment to upholding the rule of law and the integrity of judicial processes. The imposition of Rs. 50 lacs as a cost for violating an injunction order serves as a potent reminder that contemptuous behavior will attract severe consequences. This case reaffirms the critical role of injunctions in civil litigation and the courts' willingness to enforce compliance through stringent measures. For litigants, this decision is a clear signal that adherence to court orders is not optional but a fundamental obligation that must be met with the utmost seriousness.

Case Citation: Mangalam Organics Ltd Vs Patanjali Ayurved Ltd:29.07.2024 : COMMERCIAL IPR SUIT (L) NO. 21853 OF 2023: Bombay High Court: R.I.Chagla: H.J

Advocate Ajay Amitabh Suman
IP Adjutor [Patent and Trademark Attorney]
United & United
Email: amitabh@unitedandunited.com,
Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.

Les Laboratories Servier Vs Sefier Life Science

Similar Corporate Name and Trademark Infringement 

Introduction:

The High Court of Judicature at Bombay recently addressed this issue in the case of Les Laboratories Servier and Anr. vs. Sefier Life Science Private Ltd., where the plaintiffs sought to prevent the defendant from using a mark deceptively similar to their well-known trademark, SERVIER. This judgment underscores the legal principles surrounding trademark infringement and passing off, especially in the pharmaceutical industry, where the use of similar trade names can lead to life-threatening confusion.

Factual Background:

The plaintiffs, Les Laboratories Servier and Anr., are part of the SERVIER group, a leading French pharmaceutical conglomerate known globally for its commitment to therapeutic progress. Established in 1954, the SERVIER group operates in over 150 countries and is recognized for its extensive research and development in pharmaceuticals. The group’s trademark, SERVIER, has garnered substantial goodwill and reputation over the decades, making it a distinctive and well-known mark in the pharmaceutical industry.

The defendant, Sefier Life Science Private Ltd., began using the mark SEFIER in relation to pharmaceutical products, both as part of its corporate name and domain name. The plaintiffs argued that SEFIER was deceptively similar to their registered trademark SERVIER, leading to a likelihood of confusion among consumers. The plaintiffs sought an injunction to restrain the defendant from using the SEFIER mark, claiming that the defendant’s adoption of the mark was dishonest and amounted to trademark infringement and passing off.

Legal Issues:

The primary legal issues in this case were:

Whether the defendant’s use of the SEFIER mark constituted trademark infringement under the Trade Marks Act, 1999.

Whether the defendant’s adoption of the SEFIER mark was likely to cause confusion and deception among consumers, particularly in the context of pharmaceutical products.

Whether the use of the SEFIER mark in the defendant’s corporate name and domain name amounted to passing off.

Trademark Infringement: Phonetic and Visual Similarity

One of the core arguments made by the plaintiffs was the phonetic and visual similarity between the marks SEFIER and SERVIER. Trademark law recognizes that even minor similarities in the appearance, sound, or meaning of marks can lead to consumer confusion, particularly when the goods in question are identical or similar.

In this case, the court rejected the defendant’s contention that the marks were phonetically and visually distinct. The defendant argued that the pronunciation of the letters ‘F’ and ‘V’ in SEFIER and SERVIER, respectively, created a different overall impression. However, the court found that this distinction was insufficient to negate the likelihood of confusion, especially given the high degree of similarity in the remaining letters and the overall structure of the marks.

The court further noted that the defendant’s use of the mark as part of its corporate name (Sefier Life Science Private Ltd.) did not diminish the likelihood of confusion. The essential and prominent feature of the defendant’s name was SEFIER, which closely resembled the plaintiffs’ SERVIER mark. In trademark law, it is well established that the addition of descriptive or non-distinctive elements, such as “Life Science Private Ltd.,” does not alter the likelihood of confusion if the dominant part of the name is similar to the registered trademark.

Use of Similar Trade Names and the Application of Section 29(5)

A critical aspect of this case was the application of Section 29(5) of the Trade Marks Act, which deals with the use of a registered trademark as part of a trade name or corporate name. The defendant argued that this provision did not apply because they were not using the plaintiffs’ exact mark but a similar one, and they were not dealing in the same goods or services.

The court dismissed this argument, holding that the defendant’s use of the SEFIER mark as part of its trading name did indeed constitute trademark infringement under Section 29(5). The court emphasized that the mark SEFIER was nearly identical to the plaintiffs’ SERVIER mark and that the defendant was dealing in pharmaceutical products, the same goods for which the plaintiffs had secured trademark registration.

Passing Off and the Likelihood of Confusion:

In addition to trademark infringement, the plaintiffs also claimed that the defendant’s use of the SEFIER mark amounted to passing off. Passing off occurs when one party misrepresents their goods or services as being associated with another party, thereby causing damage to the latter’s goodwill.

The court found that the defendant’s use of the SEFIER mark was likely to cause confusion and deceive consumers into believing that the defendant’s products were associated with or endorsed by the plaintiffs. This was particularly concerning in the pharmaceutical industry, where such confusion could have serious public health implications.

The court also addressed the defendant’s argument that they were not selling goods in India and were only using the mark for export purposes. The court clarified that the application of the impugned mark to goods in India, even for export, constituted use in India and could lead to consumer confusion. This interpretation aligns with the broader objective of trademark law, which is to protect consumers from deception and ensure that trademarks fulfill their role as reliable indicators of the origin of goods and services.

Distinctiveness of the SERVIER Mark:

A noteworthy aspect of the court’s analysis was its consideration of the distinctiveness of the SERVIER mark. The defendant contended that the plaintiffs could not claim exclusivity over a word of common language. However, the court rejected this argument, noting that SERVIER was not a generic term but a distinctive and well-established trademark associated with the plaintiffs’ pharmaceutical products.

The court’s ruling highlights the importance of maintaining the distinctiveness of a trademark. In cases where a mark has acquired substantial goodwill and recognition, even slight variations in a similar mark can lead to a finding of infringement. This is especially true in industries like pharmaceuticals, where consumer trust and safety are paramount.

Conclusion and Implications:

The High Court’s decision in Les Laboratories Servier and Anr. vs. Sefier Life Science Private Ltd. reaffirms the legal principles governing trademark infringement and passing off in India. The court’s order to restrain the defendant from using the SEFIER mark or any deceptively similar mark underscores the importance of protecting trademark rights, particularly in industries where consumer confusion can have dire consequences.

This judgment serves as a reminder to businesses about the significance of conducting thorough trademark searches and ensuring that their chosen marks do not infringe on the rights of established brands. It also highlights the need for courts to adopt a stricter approach in cases involving pharmaceutical products, where the potential for confusion can affect public health.

Case Citation: Les Laboratories Servier Vs Sefier Life Science:19.07.2024 : COM IPR SUIT (L) No.18086 of 2024: Bombay High Court: R.I.Chagla: H.J

Advocate Ajay Amitabh Suman

IP Adjutor [Patent and Trademark Attorney]

United & United

Email: amitabh@unitedandunited.com,

Ph no: 9990389539

Disclaimer:

The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.