Win-Medicare Ltd. v. DUA Pharmaceuticals (P) Ltd. [ 1997 SCC OnLine Del 803 ]
FACTS:
The Plaintiff Company filed a suit for permanent injunction against the Defendants stating that the Plaintiff is a Company incorporated under the Companies Act 1956 and have gained a stealthy reputation in manufacturing and developing high-end pharmaceutical products.
One of the products is an anti-inflammatory medicine registered under the trademark name of “DICLOMOL”, and the trademark was obtained in 1988, after which the medicine has gained tremendous reputation, along with all concerned approvals from the Drug Authorities.
In 1995, the Plaintiffs learned of a pharmaceutical product being sold under the name of “DICAMOL”, and the Plaintiff feared that the uncanny similarities between both products would cause confusion and harm their trade. The Defendants, in reply to the notices to cease marketing of the product under the name of “DICLOMOL”, stated that DICAMOL and DICLOMOL varied in colour and different batch numbers with no similarities between the two.
The matter was appealed before the High Court of Delhi.
ISSUE:
Whether the mark “DICLOMOL” being used by the Plaintiff and “DICAMOL” being used by the Defendant, for the manufacture of their products, are so similar that confusion is likely to be created amongst consumers, the public and those who are dealing with the Plaintiff Company?
Whether the Plaintiffs have a legal right to prevent the Defendants from using the mark “DICAMOL” to carry on their business, manufacturing, and marketing of the product?
HELD:
The Court laid emphasis on the test for comparison laid down by Lord Parker in Pionotist Co Ltd.’s case, and the two marks in contention were placed in juxtaposition from one another and approached the issues with the point of view of a man with average intelligence and imperfect recollection.
The Court held that the applicants had a prima facie case for the grant of an injunction in their favour and stated that the Defendants and any related authorities are restrained from manufacturing, selling, marketing or offering DICAMOL or any other mark similar to that of the Plaintiffs.
The court also said that it would be enough if the impune mark both such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.