1. Although this Appeal From Order is listed on the board for admission, with the consent of the learned counsel appearing for both the parties, it has been taken up for final hearing today.
2. This Appeal From Order under Order XLIII Rule 1(r) of Code of Civil Procedure has been filed by the appellants- original defendant Nos.1 and 2 challenging the order dated 26-6-2012 passed below applications Exs.6 and 7 in Regular Civil Suit No.266 of 2012 by the learned Judge, City Civil Court No.15, Ahmedabad, whereby Notice of Motion was allowed and appellants were restrained from using the word “Medicure” in the trade mark and the words “Surgical Dressing” in internet domain till the final disposal of the suit.
3. The short facts are that a suit being Regular Civil Suit No.266 of 2012 was filed by the present respondent No.1-original plaintiff seeking perpetual injunction restraining infringement of copyright and passing off as also for rendition of accounts/damages together with Notice of Motion Ex.6 and application for temporary injunction Ex.7.
4. During the pendency of the aforesaid suit, a purshis at Ex.45 was filed by the plaintiff abandoning the relief of infringement of copy right from the plaint as well as from Notice of Motion and prayer of the suit was limited to the relief of passing off and rendition of accounts/damages. The trial court vide order dated 27-3-2012 passed below Ex.1 permitted the plaintiff to abandon the relief of infringement and continue the suit with relief of passing off and for rendition of accounts together with the interim relief of passing off.
5. Upon affording opportunity of hearing to the learned advocates appearing for the respective parties, the learned Judge, City Civil Court No.15, Ahmedabad, vide the order dated 26-6-2012 allowed the Notice of Motion and restrained the original defendants from using the words “Medicure” and “Surgical dressing” in the trademark and in internet domain till final disposal of the suit. Hence, the present Appeal From Order along with Civil Application for stay has been filed by the present appellants.
6. Heard learned advocate, Mr.Premal R.Joshi with learned advocate, Mr.Kabil K Acharya for the appellants and learned Senior Advocate, Mr.S.N.Soparkar with learned advocate, Mr.Y.J.Jasani for learned advocate, Mr.Pratik Y.Jasani for the respondents.
7. Learned advocate, Mr.Premal Joshi, submitted that composite suit for infringement of copyright and passing off as also for rendition of accounts/damages is not tenable and, therefore, trial court has committed an error in granting injunction against the defendants. He further submitted that although word 'Medicure' is not trade mark but house mark, trial court considered it to be trade mark. There is difference between trade mark and house mark as per the provisions of Trade Mark Passing Of. According to him, the word 'Medicure' is a house mark which is also known as emblem of the manufacturer and it is the house mark of the appellants while that of the respondent No.1 is 'Medicare” and hence, trial court ought not have restrained the appellants from using the said word.
8. He further submitted that the word 'Medi' in the words 'Medicare' and 'Medicure' is derived from the word 'Medical' and the words 'Care' and 'Cure' are generic words having different dictionary meanings. Since the word 'Medi' is prefixed by many companies in their medicinal products and also since the word 'Medicare' can be treated as house mark, present respondent No.1- original plaintiff cannot have exclusive right over the words 'Medi' and 'Medicare'. According to him, there is no question of misleading the customers by using the house mark 'Medicure' as the products will be sold by product name and not by house mark. Apart from that, the consumers for the surgical dressing products are highly qualified as they are always prescribed by doctors and hence, there is no question of misleading. He also submitted that trial court has erred in observing that both the words “Medicure Hygiene” and “Medicare Hygiene” have identical sound and are deceptively similar. According to him, both these words have different meanings and products manufactured under these house marks have different get up and design and hence, they are not visually, structurally or phonetically identical or deceptively similar.
9. He further submitted that the appellants have started to use the house mark 'Medicure' since 2010 and respondent No.1 sat silent and did not do anything till 2012 and, therefore, as per the rule of acquiescence, respondent No.1 is not entitled for any discretionary relief. He further submitted that respondent Nos.2 and 3 have nothing to do with M/s Medicure Hygiene and although respondent No.3 is not at all connected with the appellant firm, respondent No.1 has filed an affidavit stating that respondent No.3 is selling goods for the appellants since last six months and that has been stated to be the cause of action for filing the suit. However, the suit has been filed after six months and, therefore, no injunction should have been granted to the respondent No.1-plaintiff.
10. He further submitted that the trial court wrongly came to the conclusion that appellants used internet domain name of the respondent No.1. According to him, internet domain is the address of internet which does not attract the provisions of Sec.2(z)(b) of Trade Mark Act and, therefore, suit for passing of internet domain is not maintainable. He further submitted that plaint or injunction application does not show as to from which year it is using the domain name www.surgical dressing material.com and trial court did not hold as to who is the first user of said internet domain. It is therefore requested that the impugned order passed by the trial court deserves to be quashed and set aside.
11. In this connection, he relied on the case of Matrix Telecom Pvt. Ltd. Vs.Matrix Cellular Services Pvt. Ltd. reported in 2011(3) GLR page 1951 more particularly para 9.6 wherein it has been held as under:
“9.6 In sum and substance the word “MATRIX” is not a coined word, but it is a generic word. Both the companies are in the same industry, the services of both the companies are entirely different one. The product of the appellant is not in such area and it has different characteristics and therefore there cannot be any possibility of confusion between the products of the appellant and the services provided by the present respondent. It must also be noted that the users are not illiterate or uneducated so as to cause any confusion. The product of the appellant has different characteristics which can be easily distinguished by the users. I am therefore of the view that the appellant has not made out any prima facie case.”
12. He has also relied on the following decisions:
i) J&P Coats Ltd. Vs. Popular Thread Mills reported in 1996(16) PTC 688 (Del;
ii) Thakkar Balvantray Purshottamdas V. Hasmukhbhai Ugarchand Patel;
iii) Cadila Healthcare Ltd. Vs. Swiss Pharma Pvt.Ltd.
Reported in 2002(24) PTC 708(Guj);
iv) AGA Medical Corporation Vs. Faisal Kapadi & Anr reported in 2003(26) PTC 349 (Del);
v) M/s Astra Pharmaceuticals (P) Ltd. Vs. Collector of Central Excise, Chandigarh reported in (1995)2 SCC page 84;
vi) Procter and Gamble India Ltd. * Anr. Vs. Endolabs Limited & Others reported in 2000(20) PTC 532 and
vii) Lark Laboratories Ltd. Vs. Nabros Pharma Pvt.
Ltd.
13. Learned Senior Counsel, Mr.Soparkar, submitted that the suit filed by the plaintiff is not a composite suit as the prayer made for infringement of Copyright has been abandoned by the plaintiff vide purshis Ex.45 and prayer was limited to passing off.
14. He further submitted that the plaintiff is selling the surgical goods since 1995. He further submitted that various trade names such as MEDICARE, MEDIPLAST, MEDITAPE, MEDISOFT, MEDIFIN, MEDIMOP,MEDICREPE, MEDI-PAD, MEDI-SWAB, CANFIX AND CHLODINE for sanitary napkins, boiled bandage, gauze swabs, ortho roll cast padding, dressing pad, cotton crepe bandage, elastic adhesive bandage etc. were introduced by the plaintiff in the market under the name of “Medicare and Hygiene Ltd.”. He further submitted that defendant No.4, Shri Jagdish, who was working as Sales Manager in the plaintiff Company and who later resigned, in collusion with the defendant No.1 and with oblique motive to encash the name of “Medicare Hygiene Ltd.” put same brand in the name of “Medicure” which is deceptively similar and effectively confusing the consumer while purchasing the goods.
15. He further submitted that the words “Medicure and “Medicare” do not have different meanings and by using the article 'u' in place of article 'a', a confusion is created in the mind of customers. According to him, the word “Medicure” has been used with ulterior motive to take disadvantage of the name which has been used by the plaintiffs in its different products in the name of “Medicare” since 1995 and is having a good reputation and goodwill in the market.
16. He further submitted that this Court has limited powers to interfere with the order passed by the trial Court. According to him, this Court should not reassess or appreciate the material with a view to arrive at a different conclusion. He further submitted that though the suit and the injunction application were initially filed with both the prayers, suit for infringement of trade mark was abandoned and relief was limited to prayer qua passing off action. He further submitted that what is required to be seen in such a suit is as to whether the plaintiff is able to establish that it was the prior user of the trade mark. According to him, the prior user of the trade mark is the plaintiff and hence, the trial court has rightly granted injunction and hence, sought to dismiss this Appeal From Order.
17. He has also relied on the following decisions:
i) 1989(0)AIJ-DL 1306862 in the case of Hindustan Pencils Private Limited Vs. India Stationery Products Company;
ii) (2007)6 SCC page 1 in the case of Heinz Italia and another Vs. Dabur India Ltd;
iii) 2004(3) G.L.H. 24 in the case of Shree Sainath Industries Vs. Sainath Auto Industries;
iv) 2002(25) PTCX 308(Del)(DB) in the case of Madhubhan Holiday Inn Vs. Holiday Inn Inc.;
v) 2004(29)PTC 435(Del) in the case of Dr.Reddy's Laboratories Ltd. Vs. Reddy Pharmaceuticals Ltd.;
vi) (1960) 1 SCR 968:AIR 1960 SC 142 in the case of Corn Products Refining Co.Vs. Shangrila Food Products Ltd.;
vii) 1962(0) GLHEL-SC 1186 in the case of Amritdhara Pharmacy Vs. Satya Deo Gupta;
viii) (2005)8 SCC 308 in the case of Commissioner of Central Excise Chandigarh II Vs. Bhalla Enterprises;
ix) (2002) 3 SCC 65 in the case of Laxmikant V.Patel Vs. Chetanbhai Shah and another;
x) (2005)3 SCC page 63 in the case of Dhariwal Industries Ltd. And Anr. Vs. M.S.S. Food Products;
xi) 2007(35) PTC 599(SC) in the case of Meghraj Biscuits Industries Ltd. Vs. Commissioner of Central Excise, U.P. and
xii) Appeal From Order No.119 of 2012 rendered on 6- 7-2012 in the case of Rangoli Chemfoods Pvt. Ltd. And Indo Brine Industries Ltd.
18. This Court has gone through the impugned judgment and order passed by the trial court together with the submissions made by learned counsel appearing for the respective parties. This Court has also gone through the principles laid down by Hon'ble Supreme Court as well as other High Courts in various decisions relied on by the learned counsel for the respective parties. Keeping in mind the principles laid down therein, this Court is proceeding further.
19. This Court has considered the aspect that present Appeal From Order is challenging a discretionary order passed by the trial Court. In this connection, reliance is placed on a decision of this Court in the case of Matrix Telecom Pvt.Ltd. Vs.Matrix Cellular Services Pvt.Ltd. reported in 2011(3) GLR 1951 more particularly towards paragraph 6.1 which reads thus:
“6.1 It is required to be noted that it is well settled law that the Appellate Court may not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. The Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by the court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion.”
20. In view of the above settled principle of law, power of this Court as an Appellate Court to interfere with the order passed by the trial court is very limited and only in exceptional circumstances, the appellate Court can interfere with the discretionary order passed by the trial Court. The appellate Court cannot reevaluate the entire evidence and arrive at a conclusion contrary to the conclusion arrived at by the trial Court. However, in case where the order passed by the trial court is found to be invalid, illegal, arbitrary, perverse or contrary to the settled principles of law, the Appellate Court has all powers to interfere with the same. Considering the above principles of law, this Court has only to see as to whether the trial court has committed any error in passing the impugned order. It has also to see whether the main basic principles of law namely, prima-case, balance of convenience and irreparable loss are satisfied or not in passing the order.
21. In the background of the above principles of law, this Court would like to reproduce hereinbelow the main prayers made by the plaintiff in the suit and also in the temporary injunction application:
“A. The defendants by themselves, their proprietors/partners, their servants, agents, dealers, distributors and all other persons connected with them in any manner, may please be restrained by interim injunction order during the pendency of the present suit from in any manner manufacturing, marketing and selling any type of Surgical Dressing Materials and other allied and cognate hospital goods by using the identical/deceptively similar trade name MEDICURE HYGIENE and the identical and deceptively similar mark CANFIX/VENFIX and the imitated packagings having identical/deceptively similar layout, get-up and placement of features including the trade dresses as those of the prior used trade mark labels and artistic works of CANFIX and other trade marks of the plaintiff and the domain name: www.surgicaldressingproducts.com and thereby passing off their said goods as and when for the true goods of the plaintiff and also enabling others from passing off their said goods in any manner and thereby also from infringing the vested property rights including the copyrights of the plaintiff;
B. The ad-interim injunction order in terms of prayer (a) above against the defendants may please be issued ex-parte, as provided under Sec.135(1) & (2) of the Trade Marks Act, 1999.
C. As provided under Sec.135(2) of the Trade Marks Act, 1999, pending the hearing and final disposal of the suit, the Hon'ble Court may be pleased to restrain the defendants from disposing off or dealing with their assets in a manner which may adversely affect the plaintiff's ability to recover damages/accounts of profits etc. that may be finally awarded to the plaintiff by the Hon'ble Court.”
22. Following final order is passed by the trial court in the application for temporary injunction:
“1. Notice of Motion is partly allowed.
2. The defendants, their servants, agents, dealers, partners or any persons on behalf of defendants are hereby restrained from using word “Medicure” in trade mark and word “surgical dressing” in internet domain till final disposal of the suit.
3. Notice of motion is disposed off accordingly.
4. Cost as per the cause.”
23. As far as composite suit is concerned, it is to be noted that during the pendency of the suit, the plaintiff has filed a pursis at Ex.45 abandoning the relief of infringement of copy right from the plaint as well as from Notice of Motion. The plaintiff was permitted to abandon the relief of infringement of copyright by the trial court vide order dated 27-3-2012 passed below Ex.1. Thus the prayer clause was amended by the plaintiff and his prayer was limited to seeking relief for passing off and for rendition of accounts/damages. Therefore, the submission of Mr.Joshi that composite suit is not tenable does not have any bearing.
24. It is clear from the aforesaid that the order was passed by the trial court restraining the defendants from using the words “Medicure” in the trade mark and “Surgical Dressing” in internet domain till the final disposal of the suit. It is to be noted that the word “Medicure” is the word in the medical field. When the prayer in the suit is limited to passing off, what is required to be seen by this Court is whether the plaintiff has prima-facie proved that it is the prior user of the disputed mark or not. “Medicure” is a trade mark or house mark is not material for the purpose of deciding this Appeal From Order as the prayer for infringement of trade mark was permitted to be abandoned by the plaintiff. Therefore, what is material in the present context is whether the mark “Medicure” is deceptively similar to the mark “Medicare” or not, who was the prior use of the mark and also whether the trial court was right in granting injunction or not.
25. The evidence on record shows that the name “Medicare” was being used by the plaintiff on its different products since the year 1995. The evidence on record also shows that the defendant Nos.1 and 2 have been using the name “Medicure” since 2010. Therefore, it is proved prima facie that the prior user of the trade mark is the plaintiff and that is as early as in the year 1995. Therefore, plaintiff is able to prove its prima facie case that it has been using the name since the year 1995.
26. It appears from the documents shown by the learned advocate for the appellants that on all the products, the word “medi” is used. However, in the present case, considering the entire evidence on record, it is clear that the vowel 'a' was removed from the word “Medicare” and the vowel 'u' was inserted to make the word “Medicure”. As discussed above, if the words “Medicare” and “Medicure” are independently read, no different meaning can be made out as they are deceptively similar and as these words are used as single words, it cannot be dissected also and, therefore, by replacing the vowel 'a' with 'u' in the word “Medicare” and using the word “Medicure”, it can be said with certainty that there are all possibilities of creating confusion in the minds of consumers.
27. In other words, if the defendant Nos.1 and 2 did not have a dishonest intention in using the word “Medicure”, they should also not have used the next word “Hygiene” after the word “Medicure”. This clearly shows that the defendant Nos.1 and 2 are intentionally and deliberately using the said word. It is to be noted that under this name, several products were put differently by the defendant Nos.1 and 2 clearly showing their intention to encash the name, fame and goodwill earned by the plaintiff over a long period of time. Moreover, the defendant Nos.1 and 2 have not placed on record the documentary evidence regarding the sale and profit earned by them before and after using of the word “Medicure” in their products. Affidavits of customers were also placed on record by the plaintiff to indicate fact that defendant Nos.1 and 2 were using the name “Medicure” to mislead the consumers. Thus, ex-facie, this Court is of the opinion that the plaintiff is able to prove that the defendant Nos.1 and 2 were selling their products to lead the purchasers to believe that they are the goods of the plaintiff and this definitely is likely to cause confusion in the minds of the consumers.
28. In view of the what has been discussed above, there is no force in the submission of Mr.Joshi that words “Medicure” and “Medicare” have different meanings and and, therefore, confusion does not arise in the mind of customers and that Medicure's domain name is not deceptively similar to the domain name of Medicare.
29. As regards the submission of Mr.Joshi that the words “care” and “cure” are generic words and hence, plaintiff cannot have any exclusive claim over the word is concerned, it has been held by Hon'ble Apex Court in the case of T.V.Venugopal Vs. Ushodaya Enterprises Ltd. reported in (2011)4 SCC page 85 more particularly in para 75 as under:
“75. The contention of the defendant is that adjectives are normally descriptive words and nouns are generic word. However, McCarthy has said that the said "part of speech" test does not accurately describes the case law results. Therefore, such a criteria cannot be accepted as a safe and sound basis to ascertain as to whether a particular name is generic or descriptive. Besides, even assuming that the said word is generic yet if it is found by the court that such a mark has attained distinctiveness and is associated with the business of the plaintiff for considerable time and thereafter the defendant adopts a similar word as one of his two marks to induce innocent internet users to come to the website of the defendant, which establishes dishonest intention and bad faith, would the court still be not granting injunction to protect the business of the plaintiff? The answer to the said question has to be an emphatic 'No". User of similar word by a competitor coupled with dishonest intention and bad faith would empower a court to restrain such user/misuser to do equitable justice to the aggrieved party.”
30. In view of the above settled principle of law, when this Court has held hereinabove that the defendant Nos.1 and 2 have been using the name with dishonest intention and in bad faith to encash the goodwill and reputation earned by the plaintiff during the past many years, temporary injunction was rightly granted by the trial court.
31. It is true that the word “Medicare” is not registered. However, the plaintiff has been using the same name since 1995 in their products and earned reputation and goodwill in the market and, therefore, although the said name is not registered, however, when the court is convinced that the plaintiff is able to prove its prima facie case, then it is entitled to injunction by restraining the defendants from using the name “Medicure”.
32. On the delay part is concerned, this Court has gone through the averments made in the plaint as well as injunction application and the documents appearing on record and it appears that as soon as it came to the knowledge of the plaintiff that the defendant Nos.1 and 2 have been using the name of the plaintiff, plaintiff has filed the suit and, therefore, there is no delay at all. If at all it is contended to be a delay, said delay has been sufficiently explained.
33. As far as the judgments relied on by the learned counsel for the appellants are concerned, this Court is of the opinion that each case has its own facts and considering the facts of each case, judgments have been rendered. However, as facts of the present case are different from the facts of cited judgments, they would not be applicable to the present case.
34. In the entirety of the facts and circumstances narrated hereinabove, this Court is of the opinion that the plaintiff was able to establish all the three main basic principles in its favour and, therefore, trial court, after considering the evidence on record and after discussing the legal position, was perfectly right in passing the impugned order. Since the said order is just, legal and proper, the Appellate Court should not interfere with the same and hence, this Appeal From Order is required to be dismissed.
35. Thus, the appeal is dismissed.
36. In view of the dismissal of the Appeal From Order, Civil Application does not survive and is disposed of. Notice is discharged.
[M.D.SHAH,J.] radhan