Mr. Pravin Anand and Ms. Prachi Agarwal, Advs v. SPECIALITY MEDITECH PVT. LTD. ANR

Judgment

1. This is a regular first appeal filed at the instance of Modi- Mundipharma Pvt. Ltd, the plaintiff in CS (Comm) 353/2018, assailing judgment and decree dated 23 March 2023 passed by a learned Single Judge of this Court, whereby the aforesaid suit has been dismissed. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023

2. Respondent 1, who alone ultimately contested the suit, has also filed cross objections, challenging the impugned judgment to the extent it decides Issue 2, as framed in the suit, against Respondent 2 and in favour of the appellant.

3. This judgment disposes of the appeal and the cross-objections. The lis

4. By the suit, the appellant-plaintiff alleged that, by use of the trade mark FEMICONTIN, the respondents were infringing the registered trade marks FECONTIN-F and CONTIN, for both of which the appellant possesses registrations under the Trade Marks Act 1999. Respondent-1 Speciality Meditech Pvt Ltd. is admittedly manufacturer of the allegedly infringing product and Respondent 2 Preet International Pvt Ltd. markets the product. It is alleged that Respondent 2 is the principal infringer who has, from time to time, been contracting with different manufacturers to manufacture the infringing products.

5. The appellant, therefore, sought a decree of permanent injunction, restraining the use, by the respondents, of the mark FEMICONTIN, or any mark which included CONTIN as a part thereof, for pharmaceutical preparations. Additionally, damages, costs etc., were also sought in the suit.

6. Signature Not Verified The learned Single Judge has, by judgment dated 23 March Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 2023, dismissed the suit. Aggrieved thereby, the appellant has instituted the present appeal under Section 13 of the Commercial Courts Act 2015. The appellant has, therefore, prayed, in the present appeal, that the impugned judgment and decree dated 23 March 2023, of the learned Single Judge, in CS (Comm) 353/2018 be quashed and set aside and that the respondents and all others acting on their behalf be restrained permanently from using the mark FEMICONTIN or any other mark deceptively similar to FECONTIN-F or the CONTIN “family of marks” of the appellant.

7. Photographs of the appellant and respondents’ products were filed before the learned Single Judge and have also been placed on record with the present appeal. The said photographs may be shown, side by side, thus: Appellant’s product Respondents’ product

8. Are the products Schedule H drugs? Signature Not Verified A somewhat puzzling feature may be noted here. Both sides have Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 pleaded, and argued, on the presumption that the products are Schedule ‘H’ drugs, i.e. drugs which are contained in Schedule H to the Drugs and Cosmetics Rules, 1945 and cannot, therefore, be dispensed without a doctor’s prescription. In all such cases, the fact that the formulation is a Schedule ‘H’ drug, and requires a doctor’s prescription for being dispensed, invariably finds place on the package and the strip of the tablets/capsules. We do not find any such mention on the packages or strips either of FECONTIN-F of the appellant, or of FEMICONTIN, of the respondents. We have also scanned the Internet in this regard, and it does not appear that either product is, in fact, a Schedule H drug. Nonetheless, as both sides have argued on this basis, we, in appeal, do not propose to disturb this position. In any event, as the discussion hereinafter would reveal, this fact does not seriously impact the outcome of the present appeal. We merely note it, as it appears strange that, on facts, both sides appear to be proceeding on a wrong premise. Rival pleadings before the learned Single Judge in CS (Comm)

9. The plaint

9.1 The appellant alleged and asserted, in the plaint before the learned Single Judge, thus: (i) The appellant is the proprietor of family of trade marks of which CONTIN is the common feature. CONTIN itself is registered as a trade mark in favour of the appellant in class 5. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 The list of the registered trade marks of the appellant, all of which are in Class 5, have thus been provided in the plaint: S.No. Trade Mark 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 30 31 32 ACOCONTIN ALPROCONTIN AMBROCONTIN ANGICONTIN ARCONTIN ASACONTIN ASPICONTIN BUCOCONTIN BUCONTIN CONTIN CONTINUS CORBUCONTIN DILCONTIN DIUCONTIN DIUCONTIN-K FECONTIN FECONTIN-F FECONTIN-Z FENCONTIN GLIPICONTIN INDICONTIN ISOCONTIN METOCONTIN MORCONTIN NAPROCONTIN NITROCONTIN PYRICONTIN SALCONTIN THEOCONTIN TRD-CONTIN UNICONTIN VASCONTIN (ii) The products of the appellant bearing CONTIN as a part of their names/trademarks have, by dint of extensive and continuous use, amassed considerable reputation in the market. Signature Not Verified The use of the mark CONTIN as a part of the name of Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 pharmaceutical product acts as a source identifier for the appellant. (iii) FECONTIN-F, in respect of which the appellant has a separate trade mark registration, is a combination of Ferrous Glycrine Sulphate, equivalent to 100 mg iron1, and folic acid. The mark is in use by the appellant since 1993. The sales turnover and expenses involved in promotion and advertising of the mark were thus provided in the plaint: S. No. Period 1 2 3 4 5 6 7 8 9 10 11 12 Total March 93 to Dec 93 Jan 94 to Dec 94 Jan 95 to Dec 95 Jan 96 to Dec 96 Jan 97 to Dec 97 Jan 98 to Dec 98 Jan 99 to Dec 99 Jan 00 to Dec 00 Jan 01 to Dec 01 Jan 02 to Dec 02 Jan 03 to Dec 03 Jan 04 to Dec 04 Total Sales (₹) in lakhs) 16.85 32.41 53.07 73.76 94.58 105.60 112.60 116.20 147.13 143.18 215.16 233.89 1344.43 Advertisement (₹) (in lakhs)

0.19

0.02

0.85 0.75 21.12 23.18 46.2 (iv) The appellant has, therefore, a right to claim exclusivity over the use of CONTIN as a part of the name of any pharmaceutical product as well as specifically against any trade mark which was deceptively similar to the registered trade mark FECONTIN-F. (v) In July 1999, the appellant came across the product Signature Not Verified 1 “Ferrum” being the chemical name for iron Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 FEMICONTIN, being manufactured by M/s Eubiotics Pharmaceuticals2, the predecessor-in-interest of Respondent 1. (vi) FEMICONTIN contains 150 mg Ferrous Sulphate, 61.8 mg Zinc Sulphate Monohydrate, 1.2 mg Cyanocobalamin, 1.2 mg, Folic Acid and Vitamin B12. (vii) The use of the mark FEMICONTIN by the respondents infringed registered trade marks FECONTIN-F and CONTIN, of the appellant. (viii) The appellant, therefore, addressed a cease and desist notice to Eubiotics on 10 July 1999, calling on the respondents to discontinue use of CONTIN as a part of the name of any of their pharmaceutical products as well as specifically to discontinue the use of the mark FEMICONTIN. Eubiotics responded on 3 August 1999, disputing the proprietorial rights of the appellant over the trade marks FECONTIN-F and CONTIN. (ix) As the respondents’ product FEMICONTIN was not being sold in the market, the appellant did not institute any suit at that point of time. However, on finding the product FEMICONTIN in the market in March 2001, the appellant instituted OS 33/2004 before the District Court at Ranga Reddy in Hyderabad, alleging that Eubiotics was infringing the appellant’s registered trade marks FECONTIN-F and CONTIN and, therefore, seeking an injunction against the respondents in Signature Not Verified 2 “Eubiotics” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 that regard, apart from other reliefs. (x) Though OS 33/2004 was instituted in 2002, Eubiotics changed its name to Stanbiotic Pvt Ltd in 2004, upon which the appellant had to file an amendment application to change the name of the defendant in the array of parties. The suit thus got renumbered as OS 33/2004. (xi) Respondent 1, as Defendant 2 in OS 33/2004, disputed the territorial jurisdiction of the Ranga Reddy District Court to entertain the suit, as it was submitted that the allegedly infringing products were not being sold in Andhra Pradesh. Among the places where the products were being sold was, however, New Delhi. (xii) Accordingly, on 23 August 2004, the learned Additional District Judge3, Ranga Reddy District Court, allowed OS 33/2004 to be withdrawn with liberty to the appellant to file a fresh suit in the appropriate court. (xiii) In the meanwhile, the manufacturer of the allegedly infringing FEMICONTIN changed to Mark Drugs Pvt. Ltd4, though the marketing company remained Respondent 2. (xiv) Pursuant to the liberty granted by the Ranga Reddy District Court, vide order dated 23 August 2004, the appellant Signature Not Verified 3 “the learned ADJ” hereinafter 4 “Mark Drugs” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 instituted CS (OS) 577/2005 before this Court, seeking the same relief against the respondents as were sought in OS 33/2004

before the Ranga Reddy District Court. Defendant 1, in the suit, was Mark Drugs. (xv) On 24 May 2005, this Court granted an ad interim injunction restraining the respondents from using the mark FEMICONTIN as well as any mark which included CONTIN as a part thereof, as would infringe trade marks 518596 and 518594, under which the trade marks FECONTIN-F and CONTIN respectively were registered in favour of the appellant. Subsequently, however, by order dated 22 May 2006, this Court returned the plaint under Order VII Rule 10 of the CPC, on the ground that the appellant had arbitrarily valued the suit at over ₹ 20 lakhs, with liberty to institute the suit before the court of appropriate jurisdiction. (xvi) The appellant assailed the said order dated 22 May 2006 before the Division Bench of this Court by way of FAO (OS) 476/2006, which was disposed of by the Division Bench of this Court on 30 August 2006 with liberty to move an application before the learned Single Judge. The appellant, therefore, moved an application under Order VI Rule 17 of the CPC to amend the plaint as well as Review Application 07/2007 under order XLVII Rule 1 of the CPC before the learned Single Judge. (xvii) At the time of institution of CS (Comm) 353/2018, from which the present appeal emanates, these applications were Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 pending before the learned Single Judge, as is reflected in para 23 of the plaint. However, subsequently on 12 November 2007, CS(OS) 577/2005 and Review Petition 07/2007 were withdrawn by the appellant. (xviii) Thereafter, Respondent 2 Preet International Pvt Ltd succeeded Mark Drugs as the manufacturer of the allegedly infringing products. (xix) It was in these circumstances that the appellant had instituted the present suit against Respondents 1 and 2. The suit was originally numbered CS (OS) 2176/2007, but, after the coming into force of the Commercial Courts Act in 2015, was renumbered CS (Comm) 353/2018. (xx) Apart from the fact that the use, by the respondents, of the mark FEMICONTIN infringed the marks CONTIN and FECONTIN-F, registered in favour of the appellant, the use of the mark FEMICONTIN also resulted in brand dilution as well as erosion of the goodwill that had been earned by the appellant’s CONTIN series of marks, including FECONTIN-F. The mark FEMICONTIN, therefore, resulted in infringement of statutory and common law rights of the appellant in the CONTIN family of marks, and specifically in FECONTIN-F. (xxi) Besides, the mark FEMICONTIN was practically identical to the appellant’s registered trademark FECONTIN-F. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 (xxii) The composition of the two products was also identical. (xxiii) The two products catered to the same class of consumers and were available through the same trade channels. (xxiv) There was, therefore, every likelihood of a consumer being confused between the appellant’s and the respondents’ products as a result of use of the mark FEMICONTIN by the respondents. (xxv) By use of the mark FEMICONTIN, the respondents were also seeking to pass off their product as the product of the appellant. (xxvi) The case was, therefore, one of rank dishonesty. (xxvii) As the respondents had themselves acknowledged before the Ranga Reddy District Court that they were selling their products in Delhi, this Court possessed territorial jurisdiction to deal with the matter.

9.2 Based on the aforesaid assertions and allegations, the appellant prayed, in the suit, thus: It is therefore prayed that the following reliefs be granted to “37. the Plaintiff: a) An order for permanent injunction restraining the Defendants, its partners or proprietor, as the case may be, its offices, servants, and agents from reproducing on the label or packaging of their product, Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 similar the trademark FEMICONTIN or any other trademark deceptively trademark FECONTIN-F or from using the Plaintiffs registered trademark CONTIN amounting to an infringement of the Plaintiff’s registered trademarks bearing No. 518596 & 518594 respectively in class 5. the Plaintiffs indirectly dealing b) An order for Permanent Injunction restraining the defendants, its partners or proprietor, as the case its offices, servants, and agents from may be, manufacturing, selling, offering for sale advertising, in medicinal and directly or in packaging beating pharmaceutical preparation Trademark FEMICONTIN which identical or deceptively similar to the Plaintiff’s CONTIN series of marks and the trademark FECONTIN-F or from doing any other act which would amount to pasting off of the Defendant’s goods or business as the goods and business of the Plaintiff; c) An order for delivery up of all the goods bearing the impugned mark, dies, cartons, labels, packaging and any other infringing material to the authorised representative of the Plaintiff for purposes of destruction/ erasure; d) Direct the Defendants to pay a sum of Rs. 48,00,000/- towards damages which is the estimated loss of sales by the Plaintiff as also the loss of reputation owing to the illegal activities of the Defendants; e) An order for rendition of accounts of profits of the Defendants on account of sales of the medicines bearing the trademark FEMICONTIN and for any other products hearing the Plaintiff’s Trademarks and the sum due paid to Plaintiff; f) An order directing the Department of Drugs Control Administration, Government of Andhra Pradesh to cancel the Drug manufacturing license of Defendant No. 1. And or May Pass any other orders as this Hon’ble Court may deem fit and proper in facts and circumstances of the present case.” Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023

10. Written Statement of Respondent 1 Respondent 1, in its written statement, asserted thus: (i) The word CONTIN was not invented by the appellant, but was merely an abbreviation of the dictionary word “CONTINUE”. It was settled that a person could not be permitted a monopoly over ordinary words which were common to the trade or otherwise descriptive in nature. (ii) As such, the appellant could not claim any exclusive right over CONTIN either as a prefix or as a suffix in the name of any pharmaceutical product. (iii) Thought the appellant possessed a registration for the trademark CONTIN, it had never used the mark. (iv) It was denied that the CONTIN, as a prefix or suffix, was the source identifier of the appellant. A tabular representation of three other pharmaceutical products, of which CONTIN formed part of their names, was thus provided: Marks CONTINUS Application Nos 547328 Status Proprietor -- Elder Pharmaceuticals Ltd, Delhi CONTINA 769168 Registered Schering CONTINUE 1011707 -- Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 Aktiengesellschaft, Germany Weave Pharmaceuticals Pvt. Ltd, Chennai (v) The composition of the appellant and respondents’ products were different. FECONTIN-F contained Ferrous Glycine Sulphate equivalent to 100 mg Iron and 0.5 mg Folic Acid whereas FEMICONTIN contained 200 mg Ferrous Fumurate in sustained release form, 61.8 mg Zinc Sulphate Monohydrate, 10 mcg Cynocobalamin and 1.5 mg Folic Acid. (vi) The appellant had not filed any document to support its user claim of March 1993. (vii) The appellant had also not filed any document to support the sales turnover and promotional expenses reflected in the plaint. Moreover, these figures were provided only till 2004. (viii) The appellant and respondent’s products were Schedule “H” drugs, which could be sold only on prescription by medical practitioners. Medical practitioners were experienced and were unlikely to be confused between FECONTIN-F and FEMICONTIN. (ix) There was, therefore, no likelihood of confusion as a result of use, by the respondents, of the mark FEMICONTIN. (x) Whereas, in OS 33/2004 filed before the Ranga Reddy District Court, the appellant contended that it had come to learn of the use, by the respondent, of FEMICONTIN in January Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 2004, in the present suit, the appellant claimed to have learnt of the use of the mark FEMICONTIN by the respondents in July

1999. The averment was, therefore, misleading. (xi) In fact, Respondent 1 was using trademark FEMICONTIN since 1999 and had also applied for registration of the mark under the Trade Marks Act, which was pending. (xii) The marks FECONTIN-F and FEMICONTIN were not similar. (xiii) Besides, the products, in appearance, packing, price and composition, were distinct and different, resulting in there being no likelihood of any confusion between them. (xiv) The suit was bad for want of territorial jurisdiction. The statement made by Respondent 1 before the District Court at Ranga Reddy, on which the appellant placed reliance, was that Respondent 1 did not have any sales of its products in the State of Andhra Pradesh, but was selling its products in Delhi, UP and Rajasthan. This was with reference to the overall sales of the products of Respondent 1 and not specifically with respect to FEMICONTIN. In fact, the product FEMICONTIN was not sold in Delhi. (xv) The allegation of passing off was denied. Respondent 1 had no intent to pass off its products FEMICONTIN as the product of the appellant. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 (xvi) In this context, the origin of the mark FEMICONTIN was thus sought to be explained. “FE” in FEMICONTIN referred to Ferrous Fumarate, “FEMI” was an abbreviation for “Female” as the product was of use to pregnant women and the suffix “CONTIN” was an abbreviation for “CONTINUES”. By using the mark FEMICONTIN, therefore, it was sought to be conveyed that the drug, when administered, continuously released iron into the body of pregnant women, resulting in increase in Red Blood Corpuscles5 and overall well-being of the patient. (xvii) The prefix “FE” was generic, and was the origin of both the rival marks FECONTIN-F and FEMICONTIN. The appellant could not, therefore, be permitted a monopoly over the use of the generic “FE” prefix. (xviii) Besides, the use of the “FE” prefix as an abbreviation for Ferrous (Iron) was also suggestive of the ailment which the product was intended to cure, which was Anaemia. (xix) The “FE” prefix was common to the trade. A list of several pharmaceutical products, in the names of which “FE” figured as a prefix was thus provided: Marks FEMICARE Application No’s 728337 Status Proprietor -- Rahul Laboratories Pvt Signature Not Verified 5 “RBC” hereinafter Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 FEMICHROM E 1026073 FEMICOT 1092685 Ltd, Hyderabad Registered Needs pharma Pvt Ltd, Muzaffar Nagar Opposed Guapha Remedies Pvt Ltd, NOIDA FEMICORD 1142048 Registered Focus health care Pvt Ltd, Punjab FEMICON 1194028 FEMIRON -- FEMICLO-V 1332941 FEFODAN FEFODAN-Z FEFOL FEFOL-Z FEM FERGLOW FERINOVA FERITAS FERIZEST FEROSE FEROLUV FERRO FERRODAN FERRUM-FOL -- -- -- -- -- -- -- -- -- -- -- -- -- -- pharma, -- opposed -- -- -- -- -- Opposed Consis Kolkata Swarde Pharmaceuticals, Mumbai Foregen Healthcare Ltd, Delhi Danapharma Danapharma S B S B N A C International Biochem Lupin Laboratories Intas Laboratories D W D C F L Pharma N E U foreva Intra Lab Dhana Pharma Khandelwal -- -- -- -- -- -- -- -- -- (xx) The distinguishing features between the appellant’s and the respondents’ product was thus tabulated: Subject Application No Date Application Class Organisation Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 Femicontin 837309 18.01.1999 March 1993 518596 Fecontin-F 05 Speciality 05 Modi Mundi Remarks Meditech Private Limited. Situated Jaipur Yes Pharmaceuticals Limited. Situated at New Delhi Yes Registered office Is it Schedule H should Both be sold only doctors Prescription. Haemitinic6 Haemitinic Cures disease Is it a tablet or capsule Areas of operation Rajasthan, Capsules Maharashtra, Himachal Pradesh, Haryana, Assam, Manipur, Madya Pradesh, Some Places Uttar Pradesh Cost of 10 Capsules is ₹ 24-00 only. (Variable) Rate of Tablets /Capsules for Strip Tablets All over India Cost of 10 tablets is ₹ 51-05 only. (Variable) Colour Tablets Colour of Packing Box Similarities Sun set yellow (Tablets) Ash Colour Ponceau 4R (Capsules) Lite Saffron Colour Word Marks Word Marks Contents of Tablets Dried Ferrous Sulphate I.P. - 200mg Zinc Sulphate Ferrous Glycine Fumurate equivalent 100mg Ferrous Iron and Folic Acid I.P - O.5mg is no There Andhra Pradesh New Delhi The price of Plaintiff Product approximately doubles to the Defendant. Totally Different Both different Visually, Phonetically or Structurally Different. Contents different. Signature Not Verified 6 Which increases haemoglobin and thereby treats anaemia Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 Monohydrat- e - 61.8mg., Cynocobala- I.P l0mcg, Folic Acid - l.5mg, Sustained Release System Quotation mentioned on strip Controlled Release System There are no chances getting confused. (xxi) The appellant was also disentitled from seeking the reliefs that it had sought in the suit on the ground of acquiescence. It was well-settled that a person could not sit back and allow the use of a trademark by another over a period of time and belatedly seek an injunction against such use from the Court. CS (OS) 2176/2007, from which the present appeal emanates, was filed by the appellant nine months after CS (OS) 577/2005 was withdrawn. This amounted to acquiescence, by the appellant, to the use of the mark FEMICONTIN by the respondents, thereby disentitling it to any injunctive relief. (xxii) The appellant’s assertions, CS (OS) 2176/2007, that it had come to learn of the use, by the respondents, of the mark FEMICONTIN only in 2004, could not be believed, as the respondent’s mark FEMICONTIN was appearing alongside the appellant’s product FECONTIN-F in the Indian Drug Review journal since May 2002. On the basis of the aforesaid assertions, Respondent 1 prayed that the suit be dismissed. Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023

11. Written Statement of Respondent 2 Respondent 2, in its written statement, merely stated that it was only manufacturing the product FEMICONTIN for Respondent 1 and that such manufacture did not constitute “use” of trademark FEMICONTIN for the purposes of the Trade Marks Act. Besides, the manufacture was only for a period November/December 2005 to September/October 2007, and was discontinued thereafter. Respondent 1, therefore, disclaimed all liability towards any infringement or passing off, as alleged by the appellant.

12. Replication by the appellant to Written Statement of Respondent 2 As the written statement of Respondent 2 was brief, the appellant, in its replication before the learned Single Judge, merely contended that Section 307 of the Trade Marks Act, which was impliedly invoked by 7 30. Limits on effect of registered trade mark. – (1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use— (2) is in accordance with honest practices in industrial or commercial matters, and is not such as to take unfair advantage of or be detrimental to the distinctive (a) (b) character or repute of the trade mark. A registered trade mark is not infringed where— (a) the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services; (b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market or in relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend; (c) the use by a person of a trade mark— (i) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk or which they form part, the registered proprietor or the registered user Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 Respondent 2, was not applicable, as the case did not fall within any of the circumstances envisaged in the said Section. As such, the appellant submitted that the attempt of Respondent 2 to distance itself from the infringement and passing off which had taken place could not succeed.

13. Replication to Written Statement of Respondent 1

13.1 In response to the written statement of Respondent 1, the appellant submitted that, as the appellant possessed a registration for the mark CONTIN per se, the respondent was not permitted, in law, to use the mark CONTIN, either by itself or as part of any other mark, especially for pharmaceutical products. It was denied that the appellant could not claim exclusivity over the mark CONTIN. conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or (ii) in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark; (d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being be so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be; the use of a registered trade mark, being one of two or more trade marks (e) registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act. (3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of*— the registered trade mark having been assigned by the registered proprietor to (a) some other person, after the acquisition of those goods; or (b) proprietor or with his consent. Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to (4) oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market. the goods having been put on the market under the registered trade mark by the Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 CONTIN, it was submitted, was not a dictionary word but was coined and inventive in nature and was, therefore, entitled to the highest degree of trademark protection. In any event, as the mark CONTIN was registered in the appellant’s favour, the appellant was entitled to claim exclusivity over use of the mark. While it was true that the appellant did not manufacture or sell any product under the mark CONTIN per se, CONTIN formed a common part of all the marks under which the appellant sold its products.

13.2 The appellant denied the respondent’s assertions that the ingredients of the appellant and respondent’s products were different. It was further submitted that both products were aimed at treating the same ailments and, therefore, catered to the same consumer segment. The appellant submitted that, as the rival marks were used for pharmaceutical products, the Court was required to adopt a stricter approach, as an inalienable element of public interest was involved in ensuring that one drug was not mistaken for another.

13.3 In this context, the appellant submitted that, even if the products were Schedule “H” Drugs and dispensable only against a medical practitioner’s prescription, that was no guarantee against confusion. Inasmuch as CONTIN formed an essential part of the names of all the aforesaid products manufactured and sold by the appellant, the use of CONTIN as a part of the name of the respondents’ product was obviously with an intent to create confusion in the market. As such, a clear case of passing off was made out. Signature Not Verified

13.4 The appellant, therefore, reiterated the prayers in the plaint. Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 Proceedings before the learned Single Judge

14. Respondent 2 stopped appearing in the proceedings before the learned Single Judge after 26 March 2010. After that date, Respondent 1 alone contested the suit.

15. Issues framed in the suit The following issues were framed by the Court, for consideration: “1. Whether this court has no jurisdiction to try and entertain the present suit? OPD

2. Whether the present suit is liable to be dismissed on account of delay, laches and/or acquiescence? OPD

3. Whether the present suit is barred by virtue of Section 11 of the Code of Civil Procedure, 1908? OPD

4. Whether the plaintiff is the registered proprietor of the trade mark FECONTIN-F and the trade mark CONTIN/CONTIN family of trademarks in relation to its goods/services? OPP

5. Whether trademarks FECONTIN-F and CONTIN of the plaintiff? OPP the defendants have infringed the registered

6. Whether FEMICONTIN by the defendants amounts to passing off? OPP the deceptively the use of similar mark

7. Whether the plaintiff is entitled to permanent injunction as prayed for? OPP

8. Whether the plaintiff is entitled to damages as prayed for? OPP

9. Whether the plaintiff is entitled to delivery up of materials and rendition of accounts? OPP l0. Relief.” Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023

16. The appellant led the evidence only of Mr. Rajiv Behl in CS (Comm) 353/2018 as PW-1 and Respondent 1 led the evidence of its Director Prem Prakash Bhardwaj as DW-1.

17. The impugned judgment

17.1 As it transpires from a reading of the impugned judgment, the appellant and Respondent 1 reiterated, before the learned Single Judge, the contentions contained in their respective pleadings which have already been noted earlier in this judgment.

17.2 Dealing with the issues which arose before him, the learned Single Judge noted that Issues 1 and 3 were not pressed by Respondent 1 and were accordingly disposed of. Apropos the remaining issues, the learned Single Judge held as under:

17.3 Re. Issue 2

17.3.1 Issue 2 dealt with the objections of delay, laches and acquiescence, as raised by Respondent 1.

17.3.2 The learned Single Judge noted that there was a dispute regarding the year in which OS 33/2004 was filed by the appellant before the Hyderabad District Court. The appellant contended that OS 33/2004 had originally been filed in 2002 but was renumbered OS 33/2004 only because there was a change of the manufacturer who Signature Not Verified was manufacturing the infringing product, which necessitated an Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 amendment. As against this, Respondent 1 contended that OS 33/2004 was filed only in 2004, as it referred to certain events on 2004 in paras 7 and 10, which read thus: “7. In the month of January 2004, representative of the Plaintiff came across the defendant’s pharmaceutical product bearing the trademark FEMICONTIN relating to the same class of goods as that of the Plaintiff containing Dried Ferrous Sulphate I.P. 150 mg, Zinc Sulphate Monohydrate U.S.P. 61.8 mg, Cyanocobalamin I.P. 1.2 mcg, Folic Acid 1.2 mg with Vitamin B12 capsules. The said product is stated to be a sustained release capsules. Using the mark FEMICONTIN, amounts the statutory trademark rights of the plaintiff and is likely to confuse the prospective buyers, who will associate the same as the product of the Plaintiff thereby passing off their product as those of the Plaintiff. The continued business of the defendants is pure infringement and is involving in the manufacture and marketing of the drug FEMICONTIN, which is causing untold loss of reputation to the plaintiff. Thus the plaintiff is compelled to institute the present proceedings. infringement of *****

10. The cause of action in the present suit first arose in the month of January 2004 when it came to the attention of the Plaintiff that the defendants are manufacturing and marketing a sustained release capsules under the trademark FEMICONTIN. The defendants are continuing to infringe the trademark of the plaintiff. The cause of action is a continuous one and continues until such time as the Defendant is restrained by an order of injunction passed by this Hon’ble Court. (Emphasis Supplied)”

17.3.3 As against this, the appellant sought to rely on certain documents appearing in the Evidence Folder in OS 33/2004 which bone a stamp of acknowledgement from the Ranga Reddy District and Sessions Court dated 30 October 2002.

17.3.4 The learned Single Judge ruled that the documents in Evidence Folder IV B of OS 33/2004, on which the appellant sought to rely, Signature Not Verified Digitally Signed By:AJIT KUMAR Signing Date:01.07.2025 13:29:56 RFA(OS)(COMM) 8/2023 could not be read as evidence, as the appellant had not produced any certified copy of OS 33/2004 as purportedly filed in 2002 or any other evidence of such filing, despite a specific issue to that effect having been framed in the present proceedings. The documents to which the appellant drew attention were registration certificates for its trade marks, and, according to the impugned judgment, they did not show with certainty that they were filed in OS 33/2004. The learned Single Judge, therefore, held that no cogent evidence of OS 33/2004 having been filed by the appellant before the Hyderabad District Court in 2002 had been produced by the appellant.

17.3.5 In that view of the matter, the impugned judgment holds that, though the appellant had become aware of the use, by the respondents, of the allegedly infringing FEMICONTIN mark in 1999, a suit seeking an injunction thereagainst was first filed before the Hyderabad District Court only in 2004, after a delay of five years.

17.3.6 The learned Single Judge, thereafter, proceeds to decide Issue 2, thus: In Midas Hygiene P. Ltd.8, the Supreme Court has held that “53. mere delay in bringing action is not sufficient to defeat grant of an injunction. In M/s Power Control Appliances & Ors9. the Supreme Court has held that acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark and it implies positive acts and not mere silence or inaction such as laches. Therefore, for delay and acquiescence, there has to be something more than a mere delay on part of the plaintiff. In order to support the plea of acquiescence, it must be demonstrated through the conduct of the plaintiff that the plaintiff stood by for a considerable period while the defendant involved Signature Not Verified