January 2, 2015
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RAJ KUMAR PRASAD & ANR. VS ABBOTT HEALTHCARE PVT. LTD. on 10 September, 2014 Whether the registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity which keeps on arising? The consistent view taken by learned Single Judges is that such a suit would be maintainable and thus by way of an interim injunction the defendant can be restrained from marketing goods under the offending trademark. In a recent order the Delhi High court held that injunction can be granted in case there are two registered trademarks and the former trademark is infringed by the latter trademark. In Raj Kumar Prasad & ANR. Vs Abbott Healthcare Pvt. Ltd. a single judge bench issued an injunction on the defendant for infringement of former trademark 'ANAFORTAN' by the latter trademark 'AMAFORTEN'. Brief Facts: Abbott Healthcare Private Ltd (‘Abbott’) is a wholly owned subsidiary of Abbott Laboratories Chicago and manufactures pharmaceutical products, including medicines. Khandelwal Laboratories Pvt. Ltd. had been manufacturing and selling Camylofin Dihydrochloride formulation under the trademark 'ANAFORTAN' since the year 1988 on behalf of Abbott and has registered its trademark with Registrar of Trademarks under the class 5 in the same year. Abbott had established a good will and reputation of the mark 'ANAFORTAN' since then. Mr. Raj Kumar Prasad, carrying on business as a sole proprietor of Birani Pharmaceuticals, was selling pharmaceutical products containing Camylofin Dihydrochloride under the brand name 'AMAFORTEN'. Mr. Raj Kumar Prasad has obtained the registration of the mark 'AMAFORTEN' under same class 5 in the year 2011. A suit has been filed by Abbott for injunction of selling pharmaceuticals preparations under the trademark 'AMAFORTEN' and under the similar packaging which is done by Alicon Pharmaceutiacals Private Limited on behalf of Mr. Raj Kumar Prasad before the Delhi High Court against: 1st defendant - Mr. Raj Kumar Prasad 2nd defendant - Alicon Pharmaceuticals Pvt. Ltd. (who manufacturers the medicinal preparations for Mr. Raj Kumar Prasad) Single Judges has passed an interim injunction restraining the defendants from manufacturing or offering for sale medicinal or pharmaceutical preparations under the trademark ‘AMAFORTEN’ or any other mark deceptively similar to the plaintiff’s registered trademark ‘ANAFORTAN’ aggrieved by which the defendant Mr. Raj Kumar Prasad has made an appeal against order on the following grounds:
- The written statement cannot be filed with the territorial jurisdiction of Delhi Court because Abbott does not sell their products in Delhi.
- Proper stamp duty was not paid on various assignment deeds referred to in the plaint.
- Where two or more persons are the registered proprietors of trademarks which are identical with or nearly resemble each other, each would have a right against third parties but none against each other.
- Abbott had a branch office for sales in Delhi and thus prima facie Courts at Delhi will have territorial jurisdiction.
- Defendants have not made good its plea as to in what manner the assignment deeds drawn up on stamp papers are of inadequate value.
- The trademark used by the defendants 'AMAFORTEN' is ex-facie phonetically and visually deceptively similar to that of Abbott: 'ANAFORTAN' and a registered proprietor of a trademark is entitled to sue a registered proprietor of a trademark if the latter is identical with or nearly resembles the other.
- Abbott is in the market since the year 1988 and the defendant has registered the trademark ‘AMAFORTEN’ in the year 2011.