This is an order passed by the Delhi High Court in an application to set aside the ex parte injunction, granted in favour of Win-Medicare Pvt. Ltd (WMPL) against the Defendants, Galpha Laboratories Ltd (GLL) and others. Win-Medicare filed a suit for permanent injunction restraining infringement of trademark, copyright, passing off, delivery up, etc.
Plaintiff (WMPL) in the suit contended:
- WMPL was incorporated in the year 1981 and is engaged in the business of manufacturing and marketing of pharmaceutical preparations.
- They are the registered proprietor of the trademark BETADINE in India in Class 5 which is also registered in several countries of the world. The mark BETADINE was assigned to them by Mundipharma AG, vide Deed of Assignment dated September 01, 1990. The earliest registration for the BETADINE mark in India is with a claim use since the year 1979.
- BETADINE is a medicinal preparation consisting of Povidone-Iodine combination and WMPL manufactures microbicidal solutions, surgical scrubs, microbicidal ointments, germicidal gargles etc. under the said mark bearing a very distinctive trade dress and is sold in various packaging including tubes, bottles, jars, cartons.
- Due to long, extensive and continuous use since 1979 by their predecessors-in-title and since 1990 by WMPL the trademark BETADINE and/or its variants and packaging have come to be associated exclusively with them.
- WMPL has registered the copyright in the artistic work in the label for the BETADINE product and has protected its rights in the BETADINE mark and distinctive trade dress up by filing successful actions against infringers.
- In May 2013, WMPL became aware of GLL’s BECTODINE mark when the same was published in the Trade Marks Journal for opposition purposes. WMPL opposed the said mark and the opposition proceedings are pending before the Trade Marks Registry. The BECTODINE product purchased from the market (by WMPL) shows that a third party manufacturer on behalf of GLL.
- Perusal of the BECTODINE product evidences that GLL has not only adopted a deceptively similar mark BECTODINE for identical products but also adopted an identical get up, lay out and colour scheme as used by WMPL. Further, GLL on its website claims to be marketing ointments, gargle and solutions of Povidone-Iodine under the mark BECTODINE.
The defendants contended as follows:
- GLL is the proprietor of the trademark BECTODINE and defendant nos. 2 to 4 are its authorized manufacturers/dealers.
- In 2006, GLL honestly conceived and adopted the mark BECTODINE-M for use in respect of its medicinal and pharmaceutical preparation containing the molecule Povidone-Iodine. BECTODINE is an anti-bacterial preparation and the mark was coined by taking prefix "BECT" from BECTERIA and suffix "ODINE" from the generic name/molecule "IODINE".
- More than 700 trademarks are registered and/or pending with the common suffix "DINE" therefore suffix "DINE" is a word/expression which is common to the pharmaceutical trade.
- GLL launched the BECTODINE product in March, 2006 and since then the said mark is extensively used throughout most of India and they are the only entity using the trademark BECTODINE as on date.
- The mala fide conduct of WMPL is evident from the fact that the notice of opposition filed by them against GLL is pending since 2013 but WMPL had no complaint about the actual use of the mark BECTODINE.
WMPL filed replication refuting the contentions in the written statement. Both sides filed evidence and relied on case laws to substantiate their case. After considering the pleadings and submissions, the court made the following findings:
The documents evidence that WMPL is prior in adoption and use and the trademark BETADINE was and continues to be well-known on the date GLL allegedly adopted/commenced use of a deceptively similar mark BECTODINE in relation to identical goods. The rival marks when compared in their entirety are deceptively and confusingly similar. It is beyond doubt that GLL knowingly adopted and used a deceptively similar mark BECTODINE, with an identical trade dress and get up in relation to identical products and have evidently strained every nerve to bring their product close to WMPL’s product BETADINE. It is evident that the adoption/use of the mark BECTODINE by GLL is subsequent and mala fide and void ab initio.
The court therefore proceeded to confirm the ex-parte injunction granted earlier restraining GLL and others from using the trademark "BECTODINE/BECTODINE-M" or any other mark identical or deceptively similar to the WMPL's registered trade mark "BETADINE".