ORDINARY ORIGINAL CIVIL JURISDICTION v. Intas Pharmaceuticals Limited & Anr.

nms.1756.06.s.1513.06.999.sxw 6 Then there is reference to the another application of the Centaur Drug House Private Limited (original Plaintiff No.1) dated

03.12.2002 for registration of the trade mark KOFAREST artistic label in its name under the Trade Marks Act, 1999 being Application No.1155188 in Class 05 in respect of medicinal and pharmaceutical preparations. The search report was issued by the Registrar of Trade Marks in that behalf and the said application was ordered to be advertised. 7 It is stated that the trade mark KOFAREST in respect of Application No.974144 was registered on 04.08.2005 and Annexure I to the plaint is a copy of the certificate of registration. Thereafter, the Plaintiffs made an application on 30.03.2006 to the Trade Mark Registry for issuing a certificate for use in legal proceedings the trade mark KOFAREST. Then reliance is placed upon registration of the trade mark KOFAREST label on 30.08.2005, copy of which is at Annexure L to the plaint. 8 It is stated that the Plaintiffs were informed by the Assignor that prior to adopting the trade mark KOFAREST, they had ascertained its *5* nms.1756.06.s.1513.06.999.sxw availability for use and registration by searching records at the Trade Marks Registry, Mumbai and conducting a market survey through their own market network and searching through the Indian Pharmaceutical Guides, etc.. Thus, it is tried to be demonstrated that prior to coining, adopting, filing application for registration of the word and label mark, it was ascertained that there was no mark KOFAREST or similar trade mark registered in the territory of India. 9 Then it is stated that in the year 2005 new range of products came to be added by the Plaintiffs which are drops, syrup, etc. and they are referred to in paragraph 11 of the plaint. 10 In paragraph 12 of the plaint, what is stated is that year-wise sales figures for the period from 1999 to 2006 would evidence extensive sale of KOFAREST products. Even expenses of sale promotions are referred to in paragraph 13 of the plaint. 11 It is then contended that in or about March, 2006, it came to the notice of the Plaintiffs that the Defendants are engaged in manufacturing and/or marketing and/or dealing in and/or offering for sale the pharmaceutical and/or medicinal preparations or similar goods *6* nms.1756.06.s.1513.06.999.sxw by recently commencing their activities under the trade mark KUFREST and a reference is made to the licence of April, 2005 in that behalf. It is stated that the goods in respect of which the Plaintiffs are registered and are using the trade mark KOFAREST and the goods in respect of which the Defendants have subsequently adopted the identical and/or deceptively similar mark, are similar. It is contended that the Plaintiffs are manufacturing and distributing their products under the trade mark KOFAREST whereas the Defendants by adopting and using the trade mark KUFREST, have committed infringement of the word mark of the Plaintiffs and they are also trying to pass off their goods as that of the Plaintiffs. 12 It is on these allegations that the suit for permanent injunction has been filed seeking to restrain the Defendants, their servants, representatives and agents from, in any manner, infringing the trade mark KOFAREST registered under Nos.974144 and 1155188 and to restrain passing off, which are main prayers, namely, prayer clauses (a) and (b). Rest of the prayers pertain to inventory of stock, accounts of profit and delivery of material for destruction. 13 It is in furtherance of these reliefs that an application for urgent ad-interim relief was made by the Plaintiffs before this Court vide *7* nms.1756.06.s.1513.06.999.sxw Notice of Motion No.1756/2006. That was placed before the learned Single Judge of this Court on 23.06.2006, however, that application for ad-interim relief was rejected on the ground that the Plaintiffs have failed to aver as to how the Plaintiff No.2 is claiming the rights and infringement on that basis. It was pointed out, at that stage by the Plaintiffs, that there is no material to show that there is infringement of the registered trade mark, but an action for passing off would lie against the Defendants. The Plaintiff No.2 is manufacturer of medicinal products in the trade name KOFAREST and that is how the argument proceeded, but what the learned Single Judge held is that there is no material on record to show that the registered trade mark has either been assigned or licenced to the Plaintiff No.2 by the Plaintiff No.1. There is no material on record to show that the Plaintiff No.1 is manufacturing the products. Therefore, the sales figures mentioned are not relevant. The learned Single Judge also opined that the question of passing off would arise only if there is some arrangement between the Plaintiffs for the use of the registered trade mark. On these reasonings, ad-interim relief was refused. 14 However, it is stated that the plaint was amended subsequently and the Plaintiffs have brought on record enough material which shows that the Centaur Drug House Private Limited (original *8* nms.1756.06.s.1513.06.999.sxw Plaintiff No.1) filed Company Petition No.745/1006 along with Company Application No.1084/2006 for amalgamation with the Plaintiff No.2 (Centaur Pharmaceuticals Limited). Similarly, Centaur Laboratories Private Limited also filed Company Petition No.246/2006 along with Company Application No.1085/2006 for amalgamation with the Plaintiff No.2. The Plaintiff No.2 also filed Company Petition No.747/2006 along with Company Application No.1086/2006 for approval of the scheme of amalgamation and by an order dated 09th March 2007 passed by this Court, these applications were granted. The Centaur Drug House Private Limited (original Plaintiff No.1) and Centaur Laboratories Private Limited merged with the Plaintiff No.2 (Centaur Pharmaceuticals Private Limited) and thus, the Plaintiff No.2 is entitled to exclusive properties and use of all immovable, movable and intangible properties including trade mark, copyright originally conceived, designed and developed, adopted, prior used, registered or pending registration in Class 05, together with goodwill and reputation in respect of medicinal and pharmaceutical products. That is how the Plaintiff No.2 was held to be entitled for proprietorship of the registered trade mark KOFAREST registered under Nos.974144 and 1155188. 15 It is, therefore, contended that the basis on which ad-interim *9* nms.1756.06.s.1513.06.999.sxw relief was denied is now taken care of and that reason is not available for the Defendants to resist the application for interim relief. 16 Although there are affidavits filed extensively by the Defendant No.1 and there are rejoinders thereto, but what emerges from the record is that on 18.10.2008 the first Defendant's Written Statement duly affirmed on 10.07.2008 came to be filed. The Defendant No.1 has raised several contentions, principally that the Plaintiffs are disentitled from claiming any injunctive reliefs. It is the case of the Defendant No.1 that they are the prior honest adopters and users of their distinctive trade mark KUFREST having used it openly, extensively and continuously without hindrance for substantially long time at least since December,

2000. They have their own goodwill and reputation. It is stated that the registration certificates, annexures I and L to the plaint, are in respect of the trade mark KOFAREST label and not word per se. The word mark KOFAREST is not registered and it is settled law that for comparison, the trade marks are to be considered as a whole and not in parts. Therefore, there is no question of infringement. 17 The second contention is that the registration certificate is issued to the Plaintiffs subsequent to the date of adoption and use of the *10* nms.1756.06.s.1513.06.999.sxw trade mark by the Defendant No.1 of their trade mark KUFREST and therefore, infringement action is not maintainable. 18 The third contention is that the document styled as Deed of Assignment is between Centaur Laboratories Private Limited and the Centaur Drug House Private Limited (original Plaintiff No.1). The exhibits in support of sale of the products bearing the trade mark in question are issued by the Plaintiff No.2 (Centaur Pharmaceuticals Pvt.Ltd.) and not by the Plaintiff No.1. There is no material annexed by the Plaintiffs to show the use of the trade mark by the Plaintiff No.1. However, the Plaintiff No.2 is allegedly using the trade mark since 2000, but no Deed of Assignment has been produced. The Deed of Assignment is of the year 2002, therefore, the Plaintiffs on their own showing commenced the use of their trade mark label only in 2002. It is in these circumstances and when the permission of the Food and Drug Administration, Goa is dated 23.05.2005 which is subsequent to the date of the use of trade mark by the Plaintiff No.2, that the Plaintiffs cannot be said to be prior users. 19 It is submitted that the user that is claimed in relation to the trade mark label bearing No.1155188 is of 02nd December, 2002, but the application for registration itself is filed on 03rd December, 2002 and the *11* nms.1756.06.s.1513.06.999.sxw advertisement dated 6th December, 2004 contains a statement that registration of this trade mark shall give no right to the exclusive use of the human part device and other descriptive matters appearing on the label. Therefore, the Plaintiffs have no exclusive right over the word KOFAREST which is descriptive in character. In any event it is stated that the label of the Defendants is distinct from the Plaintiffs' label as the colour scheme, arrangement and the descriptive material is different and the added matter on the label is also different and distinct and is capable of distinguishing the Plaintiffs' goods and the Defendants' goods from each other. Finally, it is contended that the Plaintiffs being in trade were aware of the fact that the Defendants are selling products since December, 2000 and the Plaintiffs have stood by and allowed the Defendants to build up an enviable reputation in the trade. In these circumstances there is no question of grant of any injunction as claimed. 20 The reply affidavit filed by the Defendant No.1 of one Mr.Chandrashekhar Yagnik to the Notice of Motion while essentially adopting the stand in the Written Statement additionally states that the Defendants obtained permission from the Food and Drug Administration, Goa on 06.12.2000. From December, 2000 the Defendants are using the trade mark label. It is stated that what the Plaintiffs are seeking to rely on *12* nms.1756.06.s.1513.06.999.sxw is a trade mark which cannot be said to be registrable. They have no exclusive rights over the word KOFAREST which is descriptive word. It is stated that the application for registration of the trade mark No.762608 was made by the Plaintiffs on 09.09.1997. On the date of application there was no intention to use the said trade mark and on their own showing the trade mark was not used. It is stated that the Plaintiffs also filed an application No.974144 dated 30.11.2000 claiming user since

01.09.1997. There is third application No.1155188 dated 03.12.2002 claiming user since 02.12.2002. However, once the mark is coined on the basis of the ailment or is derived from the word “cough”, it is not possible to claim any exclusivity. 21 What the Defendants then contended is that the Company Applications or the scheme of amalgamation will not substantiate the claim of the Plaintiffs inasmuch as these applications are vitiated by lack of bonafides on their part. For these reasons, in this affidavit it is asserted that nothing that is annexed to the plaint including the statement of sales, invoices, etc. can be said to be enough to grant discretionary and equitable reliefs. The invoices at Annexures E-1 to E-10 to the plaint do not show which mark is registered in favour of the Plaintiffs and has been used since 2000. Annexures to the plaint are confusing. If the Drug *13* nms.1756.06.s.1513.06.999.sxw Licence was dated 19.10.2000, how the Plaintiffs could commence the commercial use prior thereto has not been explained at all. Attempt is made to demonstrate from Exhibit-3 to this affidavit, as to how the application made for registration cannot be said to be conferring any right. For all these reasons, this application should be dismissed. 22 In the rejoinder of the Plaintiffs, what the Plaintiffs have attempted is to deal with this affidavit and rather the contents of the Written Statement. It is pointed out that the Defendants own documents would show that earliest commercial use of the impugned mark KUFREST was on 17.08.2002. In any event the Drug Licence obtained by the Defendants is dated 06.12.2000 which is subsequent to the Plaintiffs' licence obtained on 19.10.2000. It is stated that the Defendants have failed to adduce any single piece of evidence showing that they are prior adopters and users of the impugned mark KUFREST. It is stated that the Plaintiffs' first sale invoice is dated 28.11.2000 whereas the Defendants' first invoice is dated 17.08.2002. It is, thus, false to suggest that there is any prior use by the Defendants. 23 Then reliance is placed on the scheme of merger approved by this Court and it is submitted that paragraph 1(a) of the plaint obviates *14* nms.1756.06.s.1513.06.999.sxw the requirement of filing of the licence agreement. In any event the relief claimed will have to be considered by looking into the facts, circumstances and documents on record at this stage. Principal contention here is that in comparison of the trade marks, the essential and prominent characteristic of the mark KOFAREST will have to be wholly compared with whole of the impugned mark KUFREST. It is not possible to carry out any exercise of splitting of the mark. It is false to suggest that the mark KOFAREST was incapable of being registered. It is stated that there is nothing unlawful or unusual in the Plaintiffs commencing the use of the trade mark on 02.12.2002 and filing of the application for its registration on 03.12.2002 claiming use accordingly. The registration of the trade mark is effective from the date of its application irrespective when the certificate is issued. In such circumstances what is contended is that the Drug Licence issued on 23.05.2005 is to manufacture the extended version of the product i.e. KOFAREST DROPS and that would not falsify the case as set out in the plaint. The Plaintiffs have established original and honest adoption of the mark in 1997 and the user and registration since 2002. For all these reasons, it is submitted that the Notice of Motion should be made absolute. 24 There is additional affidavit filed by the Plaintiffs in June, *15* nms.1756.06.s.1513.06.999.sxw 2009 stating that they have found an application being No.980738 filed on 01.01.2001 for registration of KUFREST in Class 05 in respect of medicinal and pharmaceutical preparations in the name of the Defendants, but that application was refused. The status report is relied upon. It is stated that this application was made subsequent to the Plaintiffs' application No.762608 filed on 09.09.1997 and the registration application No.974144 filed on 30.11.2000 for registration of the trade mark KOFAREST. 25 There is an affidavit dated 30.11.2010 that is filed by the Defendant No.1 and in that it is stated that there are several registered trade marks which begin with the word or having prefix KUFF or KOF. Therefore, there is nothing unique or distinctive about the Plaintiffs' label or word mark. That is also the assertion in the affidavit dated 23.04.2012 of the authorized officer of the Defendant No.1. Thus, whole emphasis is to show that the trade marks having prefix and suffix KUF or COF or KOF are available in the market. Even updated statements of sales certified by the Chartered Accountant would clearly establish the presence of the Defendants in the market. 26 The Plaintiffs filed the further affidavit dated 30.04.2012 and *16* nms.1756.06.s.1513.06.999.sxw what they have attempted to point out from all this is that one of the marks that is emphasized by the Defendant No.1 i.e. COUGHREST is manufactured by M/s Aukums Drugs & Pharmaceuticals Ltd. and marketed by Mankind Pharma Ltd.. That mark COUGHREST was advertised on 01.02.2010 and on 26.04.2010 the Defendant No.1 filed the notice of opposition to the said application. In that notice the Defendant No.1 contended that the trade mark COUGHREST is identical with and/or deceptively similar to their mark KUFREST. It is stated that therefore, it is no longer open for the Defendant No.1 to argue that these are not distinctive marks, but are commonly used. 27 It is material to note that all the affidavits are containing same assertions and denials thereof. 28 In support of this Notice of Motion for interim reliefs, Mr.Saraf, learned counsel appearing for the Plaintiffs, submits that ad- interim order passed by this Court was essentially based on non production of any authorization or document which could be styled as assignment rights in favour of the Plaintiff No.2. The Court proceeded on the basis that even the Plaintiff No.1 has failed to prove that it has rights in respect of the said word or label mark. Mr.Saraf submits that such an *17* nms.1756.06.s.1513.06.999.sxw ad-interim order now cannot prevent this Court from independently considering the request for grant of interim relief. He submits that the order passed by this Court on the Company Petitions and Company Applications would show that the sole Plaintiff now (the then Plaintiff No.2) is fully empowered and has got complete entitlement in itself for claiming the rights in relation to the word and label mark. This is not a case where there was absolutely no connection or no material to establish that connection, was ever produced. It is clear that when ad-interim order was passed, the Company Petitions and Company Applications were not decided. Now they having been decided and the Court clearly approving the scheme which scheme takes into account not only the transfer of the undertaking, but all rights including in contracts and other instruments, then, all the more this Court should not find itself bound by the observations made at ad-interim stage. 29 Mr.Saraf also submits that there is no substance in the contentions of the Defendants that the Plaintiffs have failed to prove their user since 01.09.1997 and that the Drug Licence has been obtained in 2000, therefore, there cannot be any claim of prior user. In that behalf, Mr.Saraf invites my attention to the annexures to the plaint. He submits that as far as the Drug Licence is concerned, that is on an application *18* nms.1756.06.s.1513.06.999.sxw made on 11.10.2000. That application was granted and thereafter, what the Plaintiffs have proved is that the invoices, copies of which are at Annexures E-1-1 to E-10, would evidence that the product KOFAREST SYRUP has been supplied in packs to several parties. 30 Mr.Saraf also submits that the Plaintiffs have taken complete search and when there was nothing informed by the Registry of Trade Marks, that ultimately insofar as KOFAREST EXPECTORANT is concerned, the registration has been obtained by Application No.974144 dated

30.11.2000. The certificate of registration being granted subsequently has no adverse legal effect because the registration relates back to the date of application. He submits that if one carefully peruses Annexures-I and L to the plaint that would indicate that the Centaur Drug House Private Limited (original Plaintiff No.1) had obtained registration of KOFAREST EXPECTORANT BRONCHODILATOR MUCOLYTIC. The labels are distinct as would be evident from a bare perusal of the same. It is then contended by Mr.Saraf that the objections raised by the Defendants cannot be accepted inasmuch as the presence of the Plaintiffs in the market is not disputed. That extensive sales have been effected by the Plaintiffs over a passage of time and it is only in March, 2006 that an attempt was made by the Defendants to cash on the reputation and goodwill of the Plaintiffs. For all these reasons, this Court should proceed and grant *19* nms.1756.06.s.1513.06.999.sxw interim relief. 31 Mr.Saraf has relied upon the judgment of the learned Single Judge of this Court in the case of Franco Indian Research Pvt.Ltd. v/s Unichem Laboratories Ltd., reported in 2005(30) PTC (Bom) 131, on the point that once it is found that there is real possibility of there being deception because of the visual and phonetic similarity, the fact that the Defendants might have adopted its trade mark honestly and bonafide, loses its significance. Even where the adoption, is honest and bonafide, but if it is likely to cause deception, then the fact that the adoption was bonafide and honest would not come in the way of the Court granting temporary injunction in favour of the Plaintiffs to prevent possibility of deception and/or confusion. This judgment was relied upon by Mr.Saraf even on the point of delay and latches. It is submitted by him that there is no question of the present application being defeated on the ground of delay and latches. Those principles are too well settled. 32 Mr.Saraf has also relied upon the judgment of the Privy Council in De Cordova and others v/s Vick Chemical Coy in the Reports of Patent, Design and Trade Mark Cases Vol.LXVIII 2 nd May, 1951 No.6 *20* nms.1756.06.s.1513.06.999.sxw page 103, and it is in relation to the word VAPORUB. Mr.Saraf submits that the word KOFAREST is a mark adopted and used by the Plaintiffs. It is not description or recognition of the fact that every Cough Syrup in the market is bound to use and adopt something in relation to the ailment and that by itself will not mean that the Plaintiffs are disentitled from discretionary and equitable reliefs. 33 The judgment in the case of K.R.Chinna Krishna Chettiar v/s Sri Ambal & Company, reported in AIR 1970 SC 146 is relied upon for the proposition that the distinctive and essential feature of the trade mark fixes itself in the recollection of an average buyer with imperfect recollection, therefore, another dealer dealing in the same business cannot be allowed to get the trade mark registered and use the word as there is a striking similarity in such cases. 34 On the other hand, Mr.Parikh, learned counsel appearing for the Defendants, firstly, submits that this suit is filed by the Plaintiffs as early as in 2006. There has been no ad-interim or interim order till this date. Now no useful purpose would be served by considering the request of the Plaintiffs for grant of interim relief. Time lag of over six years makes this matter imminently fit for trial. It should be set down as such *21* nms.1756.06.s.1513.06.999.sxw and when the Written Statement is already on record. In these circumstances this application for interim relief should not be entertained at this belated stage. 35 Mr.Parikh next submits that the Court at the ad-interim stage has clearly expressed a prima facie opinion in relation to the rights of parties. Once that order is still in force, then, this Court cannot take a different view. This Court is equally bound by those observations and the controversy does not remain alive merely because of the order of the learned Company Judge. 36 As far as the merits are concerned, Mr.Parikh submits that this is not a case where the Plaintiffs can claim any distinctiveness in the mark or label. Ultimately they are in relation to the Cough Syrup. There are number of Cough Syrups available in market which use the word KOF or KUF so as to describe the treatment or prescription for the ailment or for providing relief against cough. The presence of similar Cough Syrups and expectorants in the market cannot be brushed aside. When the Plaintiffs have no material to establish any user as claimed, then, all the more this Court should not grant interim injunction. Mr.Parikh, during the course of his argument, firstly, submitted that the Defendant No.1 is a prior user. *22* nms.1756.06.s.1513.06.999.sxw That is established by the fact that the Plaintiffs' presence in the market has not been proved from 1997. Their applications themselves have been made in the year 2002. There is no user from 1997 as claimed. Further, there is no proprietary interest that could be claimed by the Plaintiff who is now sole Plaintiff on record. 37 My attention is invited by Mr.Parikh to several provisions of the Trade Marks Act, 1999. He, firstly, relies upon the definition of the term “permitted use” in Section 2(1)(r) of the Trade Marks Act, 1999. He submits that in relation to the registered trade mark “permitted use” means the use of trade mark by a person other than the registered proprietor and registered user in relation to the goods or services by consent of such registered proprietor in a written agreement. Therefore, Section 2(1)(r)(ii) clause (c) mandates that there should be consent of the registered proprietor by a written agreement. No such written permission has been produced. Further, the definition of the term “registered proprietor” in Section 2(1)(v) is to mean, in relation to a trade mark a person for the time being registered as proprietor of the trade mark. Mr.Parikh then submits that Sections 34 and 48 of the Trade Marks Act, 1999 have an important bearing on the controversy in this case. His first contention in relation to the applicability of Section 34 is that what *23* nms.1756.06.s.1513.06.999.sxw this Section provides is saving of vested rights. Nothing in the Act shall entitle the proprietor or a registered user of the registered trade mark to interfere with or to restrain the use by any person of a trade mark identical with or nearly resembling it in relation to the goods or services in relation to which that person or a predecessor in title has continuously used that trade mark from the date prior to the use of the first mentioned trade mark or prior to the date of registration of the first mentioned trade mark, whichever is the earlier. 38 Mr.Parikh then submits that even concept of a registered user which is recognized by Sections 48 and 49 of the Trade Marks Act, 1999 will have to be taken into account. Sub-section (2) of Section 48 states that the permitted use of a trade mark shall be deemed to be used by the proprietor thereof and shall be deemed not to be used by a person other than the proprietor, for the purposes of Section 47 or for any other purpose for which such use is material under the Act or any other law. The registration as registered user by Section 49 is also referable, according to Mr.Parikh, to the definition of the “registered user” appearing in Section 2(1)(x) of the Trade Marks Act, 1999. 39 If these fundamental and primary documents are not *24* nms.1756.06.s.1513.06.999.sxw produced, then, the Plaintiffs cannot continue with these proceedings as they have no right to claim any permanent, as also, interim injunction in their favour. Thus, on the grounds of lack of prima facie case and even balance of convenience being not in favour of the Plaintiffs, so also, the Defendants being in the market for more than 10 years, interim injunction should be denied, is the submission of Mr.Parikh. 40 Mr.Parikh has tried to urge from the annexures to the affidavit that is filed in reply and particularly Exhibit-3 that KOFAREST is claimed from September, 1997 and the Plaintiffs have failed to establish anything as far as user since 1997. It is in these circumstances that Mr.Parikh has taken me through some of the documents. 41 With the assistance of both Mr.Saraf and Mr.Parikh, I have perused the plaint, annexures thereto and all affidavits on record, so also, relevant provisions of the Trade Marks Act, 1999 and the decisions brought to my notice. 42 At the ad-interim stage when the application was made, what was argued before the learned Single Judge was that there is infringement of the registered trade mark of the Plaintiff No.1. The suit was instituted *25* nms.1756.06.s.1513.06.999.sxw in this case by two Plaintiffs, namely, Centaur Drug House Private Limited and Centaur Pharmaceuticals Pvt.Ltd.. There is no averment in the plaint as to how the rights of the Plaintiff No.2 are being infringed. At that time a argument was raised that although there was no material to show the infringement of registered trade mark, but an action of passing off would lie against the Defendants. It was submitted that the Plaintiff No.2 was the manufacturer of medicinal products named as KOFAREST and the Defendants were manufacturers of cough syrup known as KUFREST. These are deceptively similar marks and therefore, an injunction should follow. 43 The learned Single Judge relied upon the judgment of the Supreme Court in the case of M/s Gujarat Bottling Company Ltd. and others v/s Coca Cola Company and others, reported in AIR 1995 SC 2372 and specially paragraphs 11, 12 and 13 that are relied upon by Mr.Parikh. In these paragraphs what the Supreme Court held is that the law contemplates the use of the registered trade mark by the registered user, but that is subject to fulfillment of certain conditions and for the purpose of registration of a registered user it is necessary for the registered proprietor of the trade mark and the proposed registered user to execute an agreement which must contain the prescribed particulars and must be submitted along with the application for registration as a registered user. *26* nms.1756.06.s.1513.06.999.sxw The registration as registered user enables the use of the trade mark by the registered user as being treated as use by the proprietor of the trade mark and enables the registered user to take proceedings in his own name to prevent infringement of the trade mark. Thus, both the use and the right to sue is based on the registered user agreement. 44 Then the Supreme Court in paragraph 13 of this decision held that it is permissible for the registered proprietor of a trade mark to permit a person to use its registered trade mark. Such licensing of trade mark is governed by common law and is permissible provided: (i) the licensing does not result in causing confusion or deception among the public; (ii) it does not destroy the distinctiveness of the trade mark, that is to say, the trade mark, before the public eye, continues to distinguish the goods connected with the proprietor of the mark from those connected with others; and (iii) a connection in the course of trade consistent with the definition of trade mark continues to exist between the goods and the proprietor of the mark. Thus, the use of a registered trade mark can be permitted to a registered user in accordance with provisions of the Act and for that purpose the registered proprietor has to enter into an agreement with the proposed registered user. The use of the trade mark can also be permitted dehors the provisions of the Act by grant of licence by the registered proprietor to the proposed user and such a licence is *27* nms.1756.06.s.1513.06.999.sxw governed by common law. 45 The learned Single Judge held that the mark KOFAREST has been assigned to the Plaintiff No.1 under a Deed of Assignment dated

20.11.2002. There is no averment in the plaint that the registered trade mark has either been assigned or licenced to the Plaintiff No.2 by the Plaintiff No.1. There is no material on record to show that the Plaintiff No.1 is manufacturing the product. 46 Mr.Saraf would urge that all this is now wiped out and insignificant after the order passed by the Company Judge in the Company Petitions and Company Applications approving the scheme of amalgamation. While Mr.Saraf does not dispute that in the original petition what has been asserted in paragraph 4 is that the Plaintiff No.1 became entitled for proprietorship of the word KOFAREST by virtue of the Deed of Assignment which is entered into between Centaur Laboratories Private Limited as party of the First Part (Assignor) and the said Centaur Drug House Private Limited (original Plaintiff No.1) as party of the Second Part (Assignee). But, what has happened is that post sanction of the scheme of amalgamation, the Company, namely, Centaur *28* nms.1756.06.s.1513.06.999.sxw Pharmaceuticals Limited is entitled to exclusive properties and use of all immovable, movable and intangible properties including trade mark, copyright originally conceived, designed and developed, adopted, prior used, registered or pending registration in Class 05 of the Trade Marks Act, 1999, together with goodwill and reputation in respect of medicinal and pharmaceutical products or similar goods or marks. Annexure-A to the plaint is a copy of the Deed of Assignment which is executed at Mumbai on 20.11.2002 between Centaur Laboratories Private Limited and Centaur Drug House Private Limited (original Plaintiff No.1). It is stated that the Assignor (Centaur Laboratories Private Limited), by virtue of honest and original adoption, use, registrations and applications for registration under the Trade and Merchandise Marks Act, 1958, claims proprietorship of trade marks, a list whereof is annexed to the Deed of Assignment as Schedule-A in respect of medicinal and pharmaceutical preparations and goods of similar description included in Class 05 of the 4th Schedule to the Trade and Merchandise Marks Rules, 1959. It is stated that for commercial expediency and diverse other reasons, the Assignee (Centaur Drug House Private Limited) is desirous of acquiring the absolute right, title and interest in the said trade mark alongwith goodwill including common law rights and that is how the Assignor (Centaur Laboratories Private Limited) was requested to assign the mark and for *29* nms.1756.06.s.1513.06.999.sxw consideration that is mentioned in the said Deed of Assignment. What has been done by the Assignor is that all the rights, titles, benefits and interest of and vested in the said trade marks in Class-05 as above, have been assigned in favour of the Assignee. 47 The learned Single Judge, at the ad-interim stage, held that the mark KOFAREST has been assigned to the original Plaintiff No.1 (Centaur Drug House Private Limited) under the Deed of Assignment dated 20.11.2002, but there is no averment in the plaint that the registered trade mark KOFAREST has either been assigned or licenced to the Plaintiff No.2 by the Plaintiff No.1. There is no material on record to show that the Plaintiff No.1 is manufacturing the products. 48 The averment in the plaint is that the Plaintiffs (Centaur Drug House Private Limited and Centaur Pharmaceuticals Limited) are engaged in the business of manufacturing and/or marketing and/or dealing in medicinal and/or pharmaceutical preparations and similar goods. The Plaintiffs state that the goods are manufactured and/or marketed and/or dealt with under their originally conceived, honestly adopted and bonafide used distinctive trade marks, registered and/or pending registration in their name under the Trade Marks Act, 1999. In *30* nms.1756.06.s.1513.06.999.sxw paragraph 4 of the plaint, it is stated that the Plaintiff No.1 became entitled for the proprietorship of the inherently distinctive word KOFAREST adopted and used in respect of the medicinal and pharmaceutical preparations or similar goods by virtue of the Deed of Assignment dated 20.11.2002 entered into between Centaur Laboratories Private Limited (Assignor) and the Plaintiff No.1 (Assignee). 49 A careful perusal of this Deed of Assignment would show that, that is between Centaur Laboratories Private Limited and Centaur Drug House Private Limited (original Plaintiff No.1). Therefore, no question of Plaintiff No.2, namely, Centaur Pharmaceuticals Limited being a party to the Deed of Assignment. After the plaint has been amended, which is post ad-interim order, Centaur Drug House Private Limited has been deleted as Plaintiff from the plaint. Now the sole Plaintiff is Centaur Pharmaceuticals Limited and what it relied upon is the fact that because the original Plaintiff No.1 was Assignee and granted all rights under the Deed of Assignment dated 20.11.2002, same rights would be taken over by the Plaintiff No.2 and that is evident by the order of the learned Company Judge sanctioning and approving the scheme of amalgamation between group companies. *31* nms.1756.06.s.1513.06.999.sxw 50 The learned Single Judge has declined the relief on the ground that the registered trade mark has neither been assigned nor licenced to the Plaintiff No.2 by the Plaintiff No.1 and there is no material on record to show that the Plaintiff No.1 is manufacturing the products. 51 The order passed by the learned Company Judge refers to the scheme of amalgamation of Centaur Drug House Private Limited, which is first Transferor Company and Centaur Laboratories Private Limited, which is the second Transferor Company with Centaur Pharmaceuticals Limited, which is Transferee Company w.e.f. 01.04.2006. It is from that date the rights conferred by the scheme of amalgamation and even transferred in favour of the Plaintiff No.2 would be considered to be effective and complete. 52 Mr.Saraf was unable to point out any provision in the Trade Marks Act, 1999 which demonstrates that by virtue of this order alone the Plaintiff No.2 has become entitled to the rights in respect of the mark, whether, the word or label and therefore, no significance can be attached to the observations or lacuna pointed out by the learned Single Judge in the ad-interim order. *32* nms.1756.06.s.1513.06.999.sxw 53 What is material to note is that the learned Single Judge has pointed out that there is no averment in the plaint that the registered trade mark has either been assigned or licenced to the Plaintiff No.2 by the Plaintiff No.1. There is no material on record to show that the Plaintiff No.1 is manufacturing the products. Prior thereto, the learned Single Judge held that there is no averment in the plaint as to how the rights of the Plaintiff No.2 are being infringed. Therefore, the Advocate for the Plaintiffs based his case on passing off. 54 Now, there is no amendment to the plaint as far as this aspect is concerned, but reliance is placed on the communication from the Director of the Food & Drug Administration, Government of Goa stating that the Centaur Pharmaceuticals Limited is granted permission to manufacture KOFAREST SYRUP under the Manufacturing Licence No.175. 55 The scheme of amalgamation is between Centaur Drug House Private Limited and Centaur Laboratories Private Limited with Centaur Pharmaceuticals Limited. It is stated that the application that was made for the trade mark KOFAREST is by the Assignor. The Assignor was the Centaur Laboratories Private Limited. That made application on

09.09.1997 for registration of the trade mark KOFAREST in its name being *33* nms.1756.06.s.1513.06.999.sxw Application No.762608 and on compliance of the requisites in the examination report accompanying a search report issued by the Registrar of Trade Marks on 30.07.2001, the said application No.762608 was ordered to be advertised in the Trade Marks Journal. Annexure-A to the plaint is stated to be the copy of the Deed of Assignment dated

20.11.2002 whereas Annexure-B is the copy of the New Application Examination Report, Trade Marks Registry, Mumbai dated 30.07.2001. That refers to the name of Assignor- Centaur Laboratories Private Limited. 56 Then it is stated in paragraph 5 of the plaint that in or about May, 2000 the Assignor- Centaur Laboratories Private Limited commenced actual and commercial use of the trade mark KOFAREST by obtaining manufacturing licence from the Food & Drugs Administration, Goa, copy of which is at Annexure-D to the plaint. The averments in paragraph 5 of the plaint would suggest that both the Plaintiffs made the application, but what is clear from the same is that in or about May, 2000 the Assignor commenced actual and commercial use of the trade mark KOFAREST by obtaining the manufacturing licence. That manufacturing licence has been perused carefully by me, it is dated 19.10.2000 and the same is issued in favour of Centaur Pharmaceuticals Limited. That is also evident from page 51 because there Centaur Pharmaceuticals Limited through their Factory Manager gave an undertaking. *34* nms.1756.06.s.1513.06.999.sxw 57 Then it is stated in the same paragraph 5 of the plaint that on or about 28.11.2000 the first batch of KOFAREST SYRUP manufactured in accordance with the manufacturing licence dated 19.10.2000 was sold to the concerns all over the country and reliance is placed on the sales invoices at Annexures E-1 to E-10. These are invoices of the Centaur Pharmaceuticals Limited. 58 Once again in paragraph 6 of the plaint, it is stated that on

30.11.2000 the Assignor-Centaur Laboratories Private Limited filed another application for registration of the trade mark KOFAREST label in its name being Application No.974144 and there was no opposition to this application. 59 In paragraph 7 of the plaint, it is stated that on 03.12.2002 the Plaintiff No.1 (Centaur Drug House Private Limited) filed another application for registration of the trade mark KOFAREST artistic label in its name being Application No.1155188. 60 Throughout the plaint the word “Plaintiffs” is used in plural *35* nms.1756.06.s.1513.06.999.sxw suggesting that the rights in favour of the Assignor which were passed on to the original Plaintiff No.1 were thus taken over by the Plaintiff No.2. However, the arrangement between the Plaintiff Nos.1 and 2 has not been pleaded. Far from it being pleaded, reference is made to several documents in which there is reference of Centaur Pharmaceuticals Limited which is a public limited company and not Centaur Pharmaceuticals Private Limited. This would denote that the lacuna that was pointed out by the learned Single Judge cannot be said to have been taken care of, but for relying on the scheme of amalgamation and the order passed thereon. That scheme or clauses thereof, so also, the order made in sanctioning or approving it, has not improved the case of the Plaintiffs as contended nor the aspect that has been pointed out by the learned Single Judge could be said to be of technical nature. 61 To my mind, when private and public limited corporate entities are before the Court and when they are advised by competent legal practitioners, then, prima facie, absence of legal and jural relationship being established will mean that the Court cannot presume the state of things as are orally urged before it. 62 Law of pleadings is clear. Pleading is the foundation on which *36* nms.1756.06.s.1513.06.999.sxw the relief claimed is based. While it is true that a pleading must be looked at for its substance and not the form, yet, in such cases where distinct corporate entities are involved, then, in absence of factual details and proper particulars the Court cannot grant substantive reliefs. How a legal relationship or contractual arrangement must be inferred and from what facts and circumstances needs to be spelt out in the pleadings. A general assertion and plea that these are group companies and the amalgamation confirms this fact is not good enough in this case. Mr.Saraf would call upon me to assume the fact that intellectual property rights have been acquired by one legal entity and they have now vested in the Transferee Company. However, what vests is what is already acquired and vesting. That is to be established by pleading that originally Plaintiff Nos.1 and 2 had a certain arrangement which would partake the character of a license or assignment and that rights acquired thereunder now vest in the amalgamated and merged unit. That is not pleaded at all. Further, how a public limited pharmaceutical company became a private limited one and when, has not been pleaded. Lastly and additionally, whether the arrangement in the group companies has been recognized statutorily by the authorities under the Trade Marks Act, 1999 and the requisite applications have been made in prescribed forms is also not established. *37* nms.1756.06.s.1513.06.999.sxw 63 The pleadings and documents annexed and relied upon must show the state of affairs as urged and contended. In this case the material in that behalf is not brought before the Court. Even the pleadings are inadequate and lacking. It is not for this Court, therefore, to go into further aspects which are placed before it as any consideration thereof or discussion on the same would be purely academic in the facts and circumstances of this case. 64 Once I have noticed that there is no explanation forthcoming with regard to divergence that has been pointed out in the pleadings and contents of the documents relied upon, then, there is no alternative but to hold that the Plaintiffs have failed to make out a prima facie case. The Notice of Motion is, therefore, required to be dismissed and deserves to be dismissed on this ground alone. 65 As far as other aspects are concerned, I have already indicated that it would not be necessary to undertake that exercise as urged by the counsel for either parties. It is only when complete material is placed before the Court that it is possible to express any opinion on the factual and legal matters. Once there is complete lack of the same and even elementary and basic aspects have not been placed in proper *38* nms.1756.06.s.1513.06.999.sxw perspective which would demonstrate the entitlement of the parties to claim reliefs, then, it is not necessary to go into rival contentions and particularly as to whether, the arrangement as pleaded could be said to be a licence under the common law or concept of registered user or permitted user as envisaged by Sections 48 and 49 of the Trade Marks Act,

1999. Even otherwise, the Plaintiffs seem to have accepted all the above deficiencies and not claimed any protection for nearly six (6) years. They accepted the adverse finding at the ad-interim stage. The Suit itself is ripe for hearing. The steps prior to trial have not been taken expeditiously. Nothing prevented the Plaintiffs from requesting the Court to frame issues and give directions to proceed with the trial. Now, it would be appropriate to direct that the Suit be listed for framing issues and giving further directions. Hence, list the Suit under this head on 02nd July, 2012. Order accordingly. 66 For the reasons afore-indicated, this Notice of Motion fails and is dismissed with costs quantified at Rs.10,000/-. (S.C. Dharmadhikari, J)