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Petitioner: VI FOR (INTERNATIONAL) INC. through Authorized Signatory VS Respondent: Me'MON JUDGMENT
Court Name: Sindh High Court Judge(s): Aziz-ur-Rehman Title:VI FOR (INTERNATIONAL) INC. through Authorized Signatory vs Me'MON
JUDGMENT
Reported As: 2013 CLD 1531 Result: Suit decreed Judgment JUDGMENT ' AZIZ-UR-REHMAIJ, J.---The plaintiff has filed the above suit through its duly authorized signatory viz. Babar Waheed son of Abdul Waheed for grant of permanent injunction restraining the defendant perpetually from using the imitated trademark 'MALTOS' in infringement of plaintiffs registered trademark 'MALTOFER' or any colourable imitation thereof in respect of pharmaceutical preparations and for damages, accounts of profits with the following prayers:-- "27. 1. That in view of the above it is respectfully prayed that this Hon'ble Court may be pleased to pass a decree against the defendant and/or its, managers, employees, servants, distributors, men, agents, stockiest, retailers or dealers engaged in the aforesaid illegal activities and all persons claiming through or under them jointly or severally (hereinafter jointly referred to as the defendant) in the following terms:- (a) A decree for permanent injunction restraining the defendant perpetually from using the imitated trademark 'MALTOS' in any manner or any other trademark as may be colourable or slavish imitation and/or infringement of plaintiffs registered trademark MALTOFER'; (b) A decree for permanent injunction restraining the defendant perpetually from using in any manner and selling pharmaceutical preparations under the imitated trademark 'MALTOS' and from using and infringing the plaintiffs registered trademark 'MALTOFER' or any colourable imitation thereof, manufacturing, selling, supplying, stocking, importing, exporting, offering for sale, passing off, advertising or otherwise enabling others to infringe or pass off, offer for sale or use and sell defendant's products in particular pharmaceutical preparations or medicinal products, using the
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imitated trademark 'MALTOS' or any colourable imitation of plaintiffs registered trademark 'MALTOFER'; (c) A preliminary decree for an account to be rendered by the defendant of the sale and profits wrongfully made by the defendant from the sale of his products under the imitated trademark 'MALTOS': (d) A final decree for the payment to the plaintiff of sums, of the money found due on taking of such accounts under the aforementioned preliminary decree; (e) A further money decree against the defendant for payment of Rs, 15,000,000 (Rupees Fifteen million only) to the plaintiff as damages on account of partial compensation for, the loss and damage to the goodwill and reputation of the plaintiff. (f) Costs of the suit may also be awarded; 27.2. This Hon'ble Court may further be pleased to: (i) Pass an order directing the defendant to recall all the stocks of any of his products from the market being sold under the imitated trade mark 'MALTOS' and for destruction or replacement of the labels/packing thereof along with destruction or handing over to the plaintiff for destruction of all the offending labels/packing and other printed material bearing the imitated trademark 'MALTOS'; (ii) An order directing the defendant to declare on oath for delivery up to the plaintiff or for destruction or defacement of all unsold stocks of labels, tins, boxes, cartons, packets and promotional/printed materials along with all printing blocks, dyes, wrappers, plates, advertising materials bearing the imitated trademark 'MALTOS'; (iii) Grant any such further/additional/ other reliefs which this Hon'ble Court may deem jus, fit and proper in the circumstances of the case. 2. The brief facts of the case are:- 3. Per averments made in the plaint the plaintiff is a company organized and existing under the laws of Switzerland of Rechenstrasse 37, St. Gallen Switzerland. According to plaintiffs assertions in Switzerland there are five official languages i.e, German, French, Italian, Roman and English. English language is used in international business. Per assertion a company incorporated in Switzerland has three official names. In Switzerland per practice a company may use any form of its name i.e,, either the English form or German form or French form. If the English form is used then incorporated company have to use the denomination of Incorporated/Inc., or limited/Ltd. While, in use of the French .Version a company has to use Society Anonym/SA and likewise, in case of German version a company has to use Aktiengesellschaft/AG. Plaintiffs company name in view of the above can be mentioned below:-- ' Vifor (International) Inc. Vifor (International) Ltd. Vifor (International) AG Vifor (International) SA 4.. Being an export oriented company within the Galenica Holding, plaintiff carries on a worldwide business inter alia from Switzerland. The company thus is represented in more than eighty (80) countries worldwide through its licensing and distribution partners. 5. Per assertion made in the plaint, plaintiff company was founded in 1872 by Conard Ferdinand Hausmann, a pharmacist, who founded his pharmacy in St. Gallen, Switzerland. Hausman Laboratory Inc., was later on founded in the year, 1952 as being production company for pharmaceutical specialties in St. Gallen. Today, where plaintiff with the names Vifor (International) Inc., is based, is the same location where Hausman Inc., was founded. Research and Development activities of the company were extended in the year, 1970 with special focus on replacement therapy. In 1983, Hausman Laboratories Inc., was acquired by Galenica Holding Inc., in Bern, the number one wholesaler in Switzerland. In 1991, per plaintiffs assertions, the activities in the sections of infusion hospital supply within the Galenica Holding were sold to B. Braun Melsungen Inc. However, the activities in the field of pharmaceutical specialties of the former Hausman
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Laboratories Inc., was retained and the plaintiffs company with the name of Vifor (International) Inc., thus came into existence. 6. Per assertion made in the plaint, the treatment of iron deficiency being the core competence of the newly founded company ]Vifor (International) Inc., and/or Vifor (International) AG]. The plaintiff, therefore, decided to dedicate itself entirely to the iron therapy. The plaintiff Vifor (International) Inc., thus focused all its efforts on the development, production and marketing of its unique iron therapy and its unique iron-carbohydrate complexes for the therapy of iron deficiency anemia. Per plaintiffs assertion research and development department develops market-oriented products and new galenic formulations. 7. Per assertion in the plaint, laboratories are well equipped with high technology instruments. All research and development activities are being published in internationally renowned scientific journals and plaintiffs own patents as well. Plaintiffs company has put special focus on- the development of the next generation of iron preparations with a broad safety profile for oral and parenteral application. Of course, over the years, unique know-how in analytical and synthetic chemistry, biochemistry, toxicology and pharmacokinetics of such iron preparations has been accumulated. Amongst other trademarks adopted by the plaintiff for distinguishing its goods trademark 'MALTOFER. Has also been inherently adopted by the plaintiff with a view and for distinguishing its oral iron preparation for the treatment of latent iron deficiency anemia. Per averments, plaintiff used the 'MALTOFER' firstly on November 17, 1994 in Switzerland. Details of countries where plaintiffs products bearing 'MALTOFER' trademark are currently sold, is as under:- Argentina Bulgaria Byelorussia Chile Columbia Czech Republic Dominican RepublicEcuador Finland France Great Britain Guatemala Haiti Hong Kong Hungary Indonesia Jordan Lebanon Liechtenstein Malaysia Morocco Nicaragua Pakistan Paraguay Peru Poland Portugal Romania Russia Switzerland Singapore Slovakia Thailand Ttinidad/Tobago Turkey Uriguay Veveaiela Yemen 8. Trade mark 'MALTOFER', per plaintiffs assertions is used in relation to high efficacy drugs to fight Iron Deficiericy Anemia (IDA), and is available in several pharmaceutical dosage forms viz. Drops, syrups, oral solutions and chewable tablets. Under the trademark 'MALTOFER', the drugs are being sold in over eighty (80) countries of the world. Due to and on account of extensive worldwide circulation, trademark 'MALTOFER' per plaintiffs averment enjoys tremendous reputation and goodwill in more than 80 countries including Pakistan. 9. The plaintiff, in order to safeguard its interests in the trademark 'MALTOFER' has obtained registrations and/or has filed applications thereof in various countries of the world. Details of registrations of trademark 'MALTOFER' sc far obtained in various countries of the world by the plaintiff are as under:-- MALTOFER Country Reg. No. Class Reg. Date MALTOFER Australia 714161 05 31-7-2006 MALTOFER AUSTRIA 562300 05 MALTOFER CANADA 591272 05 1-10-2003 MALTOFER FRANCE 262300 05 MALTOFER GERMANY 562300 05
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MALTOFER GREAT BRITAIN 1430113 05 3-7-2002 MALTOFER HONG KONG 09196/1996 05 MALTOFER ITALY 562300 05 17-5-2007 MALTOFER NEW ZEALAND 768587 05 8-8-2006 MALTOFER SINGAPORE T96/08304G 05 MALTOFER SPAIN 56230 05 MALTOFER SWEDEN 562300 05 MALTOFER SWITZERLAND 379016 05 MALTOFER TURKEY 122927 05 29-6-2000 MALTOFER USA 3154270 05 10-10-2006 10. The trademark 'MALTOFER' is continuously being used by the plaintiff for conducting its aforesaid business in Pakistan. First Drug Registration for the products under trademark 'MALTOFER' (syrup), per plaintiff s assertion, was granted by the Ministry of Health to the plaintiffs previous licensee, Getz Pharma, Karachi under No,026757 on March 3, 2001 whereafter since, May 6, 2002, the plaintiffs present Licensee Messrs R.G. Pharmaceutical (Pvt.) Ltd., started selling of products under the trade mark 'MALTOFER' in Pakistan. Accordingly, since the year, 2002, plaintiffs products, under the trademark 'MALTOFER' are being sold under the authority of the plaintiff. The quantum of sale of the plaintiffs products goes as under:-- YEARS SALES IN US $ 2004 460022 2005 631538 2006 642976 2007 755120 2008 776083 11. Per assertion of the plaintiff, with a view and to turn the business of manufacture and/or sale of plaintiffs products more effectively in Pakistan under the well-known trademark 'MALTOFER', the plaintiff has appointed authorized users in Pakistan. Presently, per averments in the plaint, RG Pharma is the authorized user of plaintiff s trademark 'MALTOFER'. The goodwill thus generated due to use of trademark 'MALTOFER' by RG Pharma has accrued to the plaintiff. Per plaintiffs assertions, RG Pharma continues to use plaintiffs registered trade mark MALTOFER' under the instructions, guidance and specifications prescribed and laid down by plaintiff from time to time and also acknowledges proprietorship of plaintiff re trade mark 'MALTOFER'. Further, plaintiff also owns registration for trademark 'MALTOFER' in Pakistan under the Trade Marks Act, 1940 (now replaced by Trade Marks Ordinance, 2011). Details as follows:-- Trade mark Reg. No. Class Dated Goods MALTOFER 159509 15 15-12-1999 Pharmaceuticals veterinary and sanitary preparation 12. Per assertion in the plaint, the products sold under the registered trademark 'MALTOFER' have acquired a high `reputation' and 'goodwill' in Pakistan. The use of a similar or deceptively similar trade mark by another manufacturer or trader indeed amounts to misrepresentation having been made in the course of trade to potential customers. 13. The adoption of any trade mark which is confusingly similar and/or nearly resembles that of plaintiffs trade mark 'MALTOFER' by any party especially in relation to the pharmaceutical products etc., without the permission, consent or license of plaintiff is bound to be dishonest and motivated by an attempt to deceive or confuse the public. Per averments, the plaintiff became aware,
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through 'advertisement' in the 'Trade Mark Journal' No, 682 dated November 1, 2007, actually published on January 18, 2008, about application for registration of trade mark 'MALTOS', which besides deceptive is dishonestly opted to confuse the unwary purchasers. 14. Under circumstances, plaintiff with an object to oppose the grant of registration to MALTOS' to the defendant, filed opposition No,307 of 2008 with the Registrar of Trade Marks on May 17, 2008 in the hope that the defendant would refrain from using the above infringing trademark 'MALTOS'. 15. The plaintiffs opposition was served by the Registrar of Trade marks upon the defendant in the manner provided by law for filing its defence in the form of 'Counter Statement' to the 'Plaintiffs Opposition'. The defendant did not file its requisite 'Counter Statement' and finally the Registrar of Trademarks through its letter of January 26, 2009 confirmed/apprised the position to the plaintiff in the following words:- "With reference to the above noted subject, I am directed to inform you that the applicants deemed to have abandoned their application No,217871 under section 28(4) of the Trade Marks Ordinance, 2001, as they have failed to file the Counter Statement (TM-6) within stipulated/finally extended time. As a result thereof, the above opposition proceeding No,307/08 have become infructuous." 16. Per averments, during February, 2009, the plaintiff carried out checks in the markets but the products under trademark 'MALTOS' were not found available then in the markets. Subsequently, however, in or about last part first week of September 2009, the plaintiff came to know that the defendant is about to launch and start selling of its infringing products under imitated 'MALTOS'. The defendant's imitated trademark 'MALTOS', it is worth to note, is phonetically, visually structurally deceptively and confusingly similar and/or nearly resembles plaintiffs registered trade mark 'MALTOFER'. 17. The defendant, per plaintiffs assertions, has exerted every possible efforts to make out a similar/deceptively similar and/or nearly resembling imitation of plaintiff s renowned and registered trademark 'MALTOFER'. The defendant's infringing trademark is nothing but indeed is a mala fide replacement of letters 'FER' of plaintiffs registered trademark 'MALTOFER' with letter 'S' to make it 'MALTOS'. 18. Per averments, the defendant's infringing trade mark 'MALTOS' is confusingly similar to and incorporates dominant and essential part plaintiffs registered trade 'mark 'MALTOFER'. Per plaintiffs assertion, the defendant has no justification and/or any reason for adopting confusingly and deceptively similar and/or nearly resembling imitated trademark 'MALTOS' Such adoption of imitated trade mark 'MALTOS' besides dishonest is fraud upon the plaintiff, public-at-large and unwary, purchasers. 19. Per averments in the plaint, the products (pharmaceutical, products), their uses and sales outlets of both the plaintiff and the defendant are the same. Defendant by manufacturing, offering for sale and selling its products under imitated trade mark 'MALTOS', is infringing plaintiff s vested rights and amounting to 'Passing Off its 'lower quality' products/goods in the garb of plaintiffs best quality products/goods. Per plaintiffs assertions from a cursory look at the Plaintiffs registered trade mark 'MALTOFER' and defendant's imitated trade mark 'MALTOS' one can easily note that the defendant's trade mark 'MALTOS' is acolourable imitations of plaintiffs registered trade mark 'MALTOFER'. Pharmacies in Pakistan, per assertion of the plaintiff, are not regularized and usually pharmaceutical products are being sold without prescriptions. 20. Almost, every employ who dispense drugs besides not qualified has no adequate knowledge of 'English language'. Not only this, the doctors write prescription in a very scribbled writing and that too by abbreviating and slurring the words. All this, due to 'close proximity' of two marks 'MALTOS' and 'MALTOFER' the un-wary purchasers amongst others are bound to get confused.
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21. Trade mark 'MALTOS', per averment in the plaint is causing confusion and deception in the mind of unwary purchasers vis-a-vis plaintiffs products under trademark 'MALTOFER' which 'ex facie' is flagrant infringement of plaintiffs registered trade mark. 22. On account of aforementioned illegal/unlawful business activities, damages and losses so suffered are in the tune of Rs,15,000,000 (Rupees fifteen million only). Per averment, the defendant has sold and/or intends to sell its 'lower quality goods/products as those of the plaintiffs 'best quality goods/products', therefore, under the law plaintiff is also entitled to the benefit of income generated by the defendant on account of such sales under their imitated Trade mark 'MALTOS'. Per averments cause of action firstly, accrued in favour of the plaintiff during January, 2008 and also on other dates as mentioned in the plaint. 23. Along with the plaint presented on 10-9-2009, an application under Order XXXIX, Rules 1 and 2, C.P.C. Read with section 151, C.P.C. [C.M.A. No 8513 of 20091 for grant of temporary injunction was also filed. The prayer made in the aforesaid application reads as under:- "This Hon'ble Court may graciously he pleased to grant temporary injunction against the defendant and all persons claiming through or under it jointly or severally restraining them from using the imitated trade mark 'MALTOS', in any manner, or any other trade mark as may be a colourable or slavish imitation or counterfeit and/or infringement of plaintiffs registered trade mark 'MALTOFER'." 24. On 11-9-2009, when the application came up before the court the following order was passed:-- "(1) Granted. (2) Notice for 30-9-2009. Defendants shall not use 'MALTOS' as their trademark for pharmaceutical/ homeo products till 30-9-2009." 25. From the record it appears, that notice issued pursuant to order dated 11-9-2009, had returned unserved. ' Thereafter, summons/notices were issued to the defendant on 1-12-2009 and 16-2-2010. Nonetheless per diary sheet of the Additional Registrar (O.S.), the summons returned unserved with bailiff endorsement as also 'pasted'. Thereafter, plaintiffs application under Order V, Rule 20, C.P.C., per Additional Registrar (O.S.) diary of 5-3-2010 was granted and summons were issued to the defendant. Ultimately, vide order dated 13-5-2010 passed by the Additional Registrar (O.S.), service upon the defendant, was 'held good' because of publication in daily 'JANG' Urdu dated 7-4-2010 and also issuance of summons through other modes as well. 26. On 31-5-2010 when the matter came up before the court, besides holding the service 'good' the case was ordered to proceed 'ex parte' against the defendant. 27. Subsequently, in compliance with court's order dated 31-5-2011, 'affidavit-in-ex parte proof was filed on 26-9-2012 and 'deposition' of the plaintiffs witness viz. Muhammad Babar Waheed son of Abdul Waheed was recorded on 27-9-2012. In 'examination-in-chief the witness produced his 'affidavit-in-ex parte' proof as Exh.P.W.1/3 and other documents as Exh.P.W/4 to P.W.1/7.- Since no one on behalf of defendant was present hence 'cross-examination' of the plaintiffs witness was marked as Nil% 28. On 13-2-2013, when the injunction application under Order XXXIX, Rules .1 and 2, C.P.C. Read with section 151, C.P.C. [C.M.A. No,8513 of 2009] and suit came up for hearing/final disposal, Ms. Amna Salman Ahmed, learned counsel for the plaintiff advanced her arguments and with her able assistance the materials available on record were scanned. 29. Ms. Amna Salman, learned counsel for the plaintiff argued that the plaintiff is the registered proprietor of trademark 'MALTOFER' in respect of pharmaceutical drug to fight Iron Deficiency Anemia (IDA). Learned counsel further contended that Trade mark 'MALTOFER' was first ever used by plaintiff on November 17, 1994 in Switzerland. In this. Regard learned counsel for the plaintiff, made a reference to para 6 of the plaint which contains details of registration of trademark
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'MALTOFER' and its use in various countries of the world. Ms. Amna Salman, learned counsel for the plaintiff next argued that the plaintiff is the registered proprietor of trade mark 'MALTOFER' and doing business in Pakistan for the last several years. The Drug Registration for the products under 'MALTOFER' was granted to the plaintiffs first licensee on March 3, 2001 (Reg. No, 026757) and the plaintiff s second licensee started selling 'MALTOFER' on May 6, 2002. Per learned counsel the plaintiff is the registered proprietor of trade mark "MALTOFER" with the. Details as follows:-- Trade mark Reg. No. Class Dated Goods MALTOFER 159509 15 15-12-1999 Pharmaceuticals veterinary and sanitary preparation 30. Per learned counsel, plaintiff through advertisement in 'Trade Mark Journal No,682' dated November 1, 2007, actually published on. January 18, 2008, [Exh.P.W.1/6] became aware about the defendant's application for registration of trademark 'MALTOS'. Per learned counsel the choice of defendant for this deceptively similar mark 'MALTOS' is dishonest and has been adopted to only confuse the unwary purchasers amongst others vis-a-vis plaintiffs trademark 'MALTOFER'. 31. Ms. Amna Salman learned counsel for the plaintiff further contended that on January 26, 2009, the Registrar of Trademarks i.e, pursuant to filing of plaintiffs Opposition No,307 of 2008 on May 17, 2008 had confirmed to the plaintiff that the defendant/applicants deemed to have abandoned their application No,217871 under section 28(4) of the Trade Marks Ordinance, 2001, as they have failed to file the 'Counter Statement' (TM-6) within stipulated /finally extended time. As a result thereof, the above opposition proceeding No,307/08 have become infructuous. 32. Ms. Amna Salman, learned counsel for the plaintiff vehemently contended that the defendant's imitated trademark 'MALTOS' on acoount of its being phonetically, visually and structurally deceptive is creating confusion regarding goods/products being sold in markets under plaintiffs registered trademark 'MALTOFER', therefore, inter alia the. Plaintiff company is entitled for restraining order against the defendant. Per learned counsel the plaintiff besides having a good prima facie case the balance of convenience under circumstances of the case lies in favour of the plaintiff. Further if the defendant is not restrained/perpetually restrained from using the imitated trade mark of 'MALTOS' then the plaintiff indeed will suffer irreparable loss and injury. 33. Learned counsel for the plaintiff, next contended that defendant's infringing trade mark 'MALTOS' is nothing but a mala fide replacement of letters 'FER' of plaintiffs registered trademark 'MALTOFER' with letter 'S' of 'MALTOS'. The defendant, per learned counsel, has no justification or any reason for adopting imitated trademark 'MALTOS' much-less in view of other choices available to the defendant. Per learned counsel, adoption of imitated trademark 'MALTOS' by the defendant is not only dishonest but also a fraud upon the plaintiff, Public at large and unwary purchasers as well. 34. Ms. Amna Salman, learned counsel for the plaintiff finally contended that not only the products (pharmaceutical products), but also sales outlets of both the plaintiff and the defendant are the common. The defendant, by manufacturing, offering for sale and selling of its products, or otherwise, continuing the same practice under defendant's imitated trademark 'MALTOS', per learned counsel, is 'infringing' plaintiffs vested rights. Per learned counsel 'passing off and/or attempting to 'pass off 'lower quality products/goods' deceptively and/or by creating confusion vis-a-vis plaintiffs 'best quality products/goods' under trademark 'MALTOFER', is an act of fraud and as such unlawful. A cursory glance at the plaintiffs registered trademark 'MALTOFER' and defendant's imitated trademark 'MALTOS', per learned counsel, evidently shows that defendant's trademark 'MALTOS' is a colourable imitation of plaintiffs registered trademark 'MALTOFER'. 35. Learned counsel for the plaintiff in support of her arguments relied upon following reported cases:--
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(a) PLD 1984 SC 8 Jainia Indus Limited v. Caltex Oil (Pak) Ltd., and another, (b) PLD 1990 SC 1074 Messrs Alpha Sewing Machine Co., v. Registrar of Trade Marks and another, (c) 1987 SCMR 1090 Messrs Tabaq Restaurant v. Messrs Tabaq Restaurant, (d) 2001 SCMR 967 Messrs Mehran Ghee (Pvt.) Ltd. And others v. Messrs Chiltan Ghee Mill (Pvt.) Ltd. And others, (e) PLD 1990 SC 313 Seven-up Co., v. Kohinoor Thread Ball Factory and 3 others, (f) 2006 CLD 1190 Messrs Platinum Pharmaceutical Co. (Pvt.) Ltd., v. Stand Pharm Pakistan (Pvt.) Ltd and 3 others,, (g)…
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