Arun Krishnan M. v M/S Cure and Care Therapeutics

``` IN THE HIGH COURT OF KERALA AT ERNAKULAM ``` ## **`PRESENT`** ## **`THE HONOURABLE MR. JUSTICE G.GIRISH`** ``` WEDNESDAY, THE 29[TH] DAY OF MAY 2024 / 8TH JYAISHTA, 1946 ``` ``` FAO NO.117 OF 2022 ``` ``` AGAINST THE ORDER DATED 29.08.2022 IN I.A.NO.2/2021 IN OS NO.5 OF 2021 OF ADDITIONAL DISTRICT COURT - II, MANJERI / II ADDITIONAL MACT, MANJERI ``` ## **`APPELLANT/RESPONDENT/DEFENDANT:`** ``` ARUN KRISHNAN M. AGED 38 YEARS RESIDING AT T.C. 29/202, KRISHNA VILAS, LAKSHMI VILAKAM LANE, THENGAPURA ROAD, PETTAH P.O., THIRUVANANTHAPURAM DISTRICT, PIN - 695024 ``` ``` BY ADVS. ALEX.M.SCARIA ; BEAS K. PONNAPPAN SARITHA THOMAS ; SAHL ABDUL KADER ALEN J. CHERUVIL ; G.SREEKUMAR (CHELUR) SANJITH KUMAR R. ; P.B.KRISHNAN (SR.)(K/1193/1994) ``` ## **`RESPONDENT/PETITIONER/PLAINTIFF:`** ``` M/S. CURE AND CARE THERAPEUTICS ROOM NO. 4/563 (21), KTK COMPLEX, OPP. GOVT. HOSPITAL, PALAKKAD ROAD, PERINTHALMANNA AMSOM, MALAPPURAM DISTRICT, PIN. 679332, REPRESENTED BY ITS PARTNER SUDHEESH PALAT, AGED 41 YEARS, S/O KARUNAKARAN, RESIDING AT PALAT HOUSE, MUNDAKKAD, VALLIKUNNU P.O., KADALUNDI NAGARAM (VIA), KADALUNDI AMSOM, MALAPPURAM DISTRICT, PIN - 673314 ``` ``` BY ADVS. T.M.RAMAN KARTHA ; MANJU R. KARTHA(M-546); M.S.SOUJATH(K/85/2006); REVATHY M.A.(K/001160/2022); GREESHMA T.G.(K/002281/2022); SNEHA BRIGIT PRINCE(K/282/2023) ``` ``` THIS FIRST APPEAL FROM ORDERS HAVING COME UP FOR HEARING ON 20.05.2024, THE COURT ON 29.05.2024 DELIVERED THE FOLLOWING: ``` 2 F.A.O.No.117/2022 ## **G.GIRISH, J.** **--------------F.A.O.No.117 of 2022** **-----------------------------Dated this the 29[th] day of May, 2024 ---------------------------------------------** ## **J U D G M E N T** The order passed by the Additional District Judge-II, Manjeri in I.A.No.2/2022, a petition filed under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure in O.S.No.5/2021, restraining the defendant in the said suit by a temporary injunction from manufacturing and offering for sale medicinal and pharmaceutical preparations under the trade mark ‘CILNICUE’ and from passing off the defendent’s goods as that of the plaintiff by using any name/mark similar to ‘CILNICURE’, is under challenge in this appeal. 2. For the sake of convenience, the parties are referred hereafter in their capacities as ‘plaintiff’ and `defendant’ respectively. The plaintiff obtained trademark registration in respect of the pharmaceutical product with trade name ‘CILNICURE’ on 08.08.2017. The above item is said to be a drug used for the treatment of blood pressure. 3 F.A.O.No.117/2022 The defendant obtained trademark registration on 07.09.2021 in respect of the pharmaceutical product with trade name ‘CILNICUE’, which is also said to be used for the treatment of blood pressure. Alleging that there is infringement of trade mark and passing off by the defendant by resorting to unfair trade practice, the plaintiff instituted the suit for the relief of permanent prohibitory injunction restraining the defendant from manufacturing and offering for sale medicinal or pharmaceutical preparations under the trademark ‘CILNICUE’, or any other mark deceptively similar to the plaintiff’s registered trademark ‘CILNICURE’, and also from passing off the defendant’s goods as that of the plaintiff by using any name or mark similar to ‘CILNICURE’. An interim application was also filed by the plaintiff for restraining the defendant by a temporary injunction till the disposal of the suit upon the same terms as stated above. The defendant appeared and filed counter to the injunction application contending that the trademark name ‘CILNICUE’ was adopted by them by adding the prefix ‘CILNI’ from the content of the product ‘CILNIDIPINE’ and suffixing ‘CUE’ from 4 F.A.O.No.117/2022 the name of his organisation ‘CUE LABS’ which deals with the manufacture of more than 36 products of medicines which are marketed mainly at Thiruvananthapuram, Kollam, Pathanamthitta and Thrissur Districts. The defendant further contended that the plaintiff is not entitled for the injunction prayed for since the defendant has obtained trademark registration for his product ‘CILNICUE’ after complying with all the legal formalities. According to the defendant, the names ‘CILNICURE’ and ‘CILNICUE’ are verbally different from each other, and there is no scope for any confusion leading to passing off or infringement of trademark right. 3. The learned Additional District Judge, after hearing both sides, arrived at the finding that the parameters of prima facie case, balance of convenience and comparative hardship favoured the plaintiff, and accordingly granted the temporary injunction as per the order which is under challenge in this appeal. 4. Heard the learned counsel for the appellant/defendant and the learned counsel for the respondent/plaintiff. 5 F.A.O.No.117/2022 5. The learned counsel for the defendant argued that the order under challenge is _prima facie_ not sustainable due to the failure of the learned Additional District Judge to have the documents relied on in the order, exhibited and mentioned in an appendix which ought to have been annexed to the said order. It is thus pointed out that the impugned order is inherently defective and liable to be set aside at the threshold. 6. It is true that the impugned order does not refer to the documents relied on as exhibits, and nor does the said order contain any appendix showing the documents relied on under the relevant category as exhibits for the plaintiff, exhibits for the defendant or as court documents. On the other hand, in paragraph Nos.7, 9 and 11, the learned Additional District Judge has referred to various records as produced by the parties, without caring to get those documents provisionally marked and indexed. Though the above defect is sufficient for a remand of this case to the trial court with a direction to comply Rule 181 and Rule 186 of the Civil Rules of Practice, and to pass orders afresh, I do not 6 F.A.O.No.117/2022 venture to adopt the above course since the facts borne out of the said records are more or less undisputed, and the plaintiff has produced the copies of those records in this appeal as Annexures-R1(a), R1(b) and R1(d). 7. Adverting to the maintainability of injunction order as against a registered trademark, when the issue involved is passing off, the learned Additional District Judge observed in the impugned order that the trademark ‘CILNICUE’ coined by the defendant, is deceptively similar to the trademark ‘CILNICURE’ being used by the plaintiff. It is further observed in the impugned order that the product of the plaintiff is in market since 2013, whereas, the trademark of the defendant was registered only in the year 2021. The above aspects are revealed from Annexures-R1(a), R1(b), R1(c) and R1(d), though the said records are not exhibited in the impugned order. Referring to the prior registration and use of the tradename ‘CILNICURE’ by the plaintiff, the trial court observed in the impugned order that the use of the tradename ‘CILNICUE’ by the defendant can cause passing off and infringement of the right of the plaintiff since the 7 F.A.O.No.117/2022 product of the plaintiff is on market since 2013. It is upon the above premises that the trial court allowed the injunction application moved by the plaintiff and passed the order under challenge. 8. In **Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. [AIR 2001 SC 1952]** , the Apex Court carved out the following factors to be considered for deciding the question of deceptive similarity in an action for passing off on the basis of unregistered trademark : “(a) The nature of the marks, i.e., whether the marks are word marks or label marks or composite marks, i.e., both words and label works. (b) The degree of resemblance between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trademarks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and / or using the goods. 8 F.A.O.No.117/2022 (f) The mode of purchasing the goods or placing orders for the goods, and (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.” 9. As far as the present case is concerned, clauses (a) to (f) enumerated in the aforesaid decision of the Apex Court are clearly attracted due to the use of the word mark ‘CILNICUE’ by the defendant, though the defendant has got trademark registration for the same, after four years from the trademark registration obtained by the plaintiff for the product ‘CILNICURE’. The degree of resemblance of the above two trademarks is very high, and phonetic similarity is also of the higher level so that there is every possibility of a customer getting misguided. As already stated above, both the above pharmaceutical products are said to have been used for the treatment of blood pressure, and hence, any mistaken consumption of the medicine is likely to cause injury and complications. It is to be noted that the chances of pharmacists misreading the prescription written by doctor, cannot be ruled out since the only difference in the names of the drug is the absence of the letter ‘R’ in ‘CILNICUE’, which 9 F.A.O.No.117/2022 does not make any marked phonetic dissimilarity. Taking into account of the above peculiar facts and circumstances, the trial court cannot be found fault with for granting the temporary injunction sought for by the plaintiff. 10. The learned counsel for the defendant pointed out that the product ‘CILNICUE’ is marketed only in Thiruvananthapuram, Kollam, Pathanamthitta and Thrissur Districts, and hence, the trade of the defendant in the above regard would no way affect the trade of the plaintiff, which is mainly concentrated at Malabar area. The above contention of the defendant is no excuse for refusing the temporary injunction order sought for by the plaintiff. It is not possible to expect that the defendant will not expand his trade and business to the Districts, north of Thrissur. Nor could it be said that the plaintiff should confine their business to Malabar area to avoid the risk of passing off due to the subsequent registration of a trademark, by the defendant, deceptively similar to the trademark of the plaintiff. Thus, there is absolutely no merit in the argument advanced by the learned counsel for the defendant in the above regard. 10 F.A.O.No.117/2022 11. As a conclusion to the above discussion, I find no reason to interfere with the impugned order passed by the learned Additional District Judge, and hence, the appeal fails. In the result, the appeal is hereby dismissed. No costs. **Sd/-** **G.GIRISH, JUDGE** jsr/vgd 11 F.A.O.No.117/2022 ## **`APPENDIX OF FAO 117/2022`** ## **`PETITIONER’S ANNEXURES`** ``` ANNEXURE A1TRUE COPY OF THE PLAINT IN OS. NO 5 OF 2021 DATED 07/10/2021 ON THE FILES OF HONOURABLE DISTRICT COURT, MANJERI. ``` - **`ANNEXURE A2 TRUE COPY OF THE I.A. NO. 2 OF 2021 IN OS. NO 5 OF 2021 DATED 07/10/2021 ON THE FILES OF HONOURABLE DISTRICT COURT, MANJERI`** - **`ANNEXURE A3 TRUE COPY OF THE COUNTER STATEMENT IN I.A. NO. 2 OF 2021 IN OS. NO 5 OF 2021 DATED 25/11/2021 ON THE FILES OF HONOURABLE DISTRICT COURT, MANJERI.`** - **`RESPONDENT’S ANNEXURES`** - **`ANNEXURE R1(A) TRUE COPY OF THE JOURNAL PUBLICATION OF THE APPLICATION FOR REGISTRATION OF THE TRADE MARK DT. 20.03.2017`** - **`ANNEXURE R1(B) TRUE COPY OF THE CERTIFICATE OF REGISTRATION OF TRADE MARKS DT.8.8.2017`** - **`ANNEXURE R1(C) TRUE COPY OF THE JOURNAL PUBLICATION DT. 19.4.2021 OF THE APPLICATION FOR REGISTRATION OF THE TRADE MARK OF THE APPELLANT`** ``` ANNEXURE R1(D)TRUE COPY OF THE CERTIFICATE OF REGISTRATION OF TRADE MARKS DT.7.9.2021 ```