Delhi High Court: In a case wherein, the suit was filed by the plaintiffs, Himalaya Wellness Company, for the grant of permanent injunction, C. Hari Shankar, J.* granted the permanent injunction to the plaintiffs and restrained the defendants from using the mark ‘LIV.55’, ‘LIV 55’ or ‘LIV.999’ or any other mark which deceptively similar to the trade dress of the plaintiff in respect of its ‘LIV.52’ product, either for liver tonics or for any other pharmaceutical preparations or allied goods.
In the instant case, the plaintiffs alleged that the defendants had infringed the mark ‘LIV.52’, which was registered in the favour of Plaintiff 2 with effect from 10-07-1957. The plaintiff asserted that they had amassed goodwill and reputation over a period of time for its ‘LIV.52’ mark. In 2021-2022, the sales of products bearing ‘LIV.52’ mark was Rs 209.02 crores. The plaintiff asserted that because of continuous usage, the ‘LIV.52’ marks had become indelibly associated with the plaintiff and had become source identifiers.
The plaintiffs were aggrieved by the defendant’s use of mark ‘LIV.55 DS’ for a similar tonic, marketed using a trade dress which was deceptively similar to that of the plaintiff.
Comparison of both the products
Analysis, Law, and Decision
The Court opined that a bare glance at the plaintiffs and the defendants trade dress made it ex facie apparent that the defendant had consciously copied the plaintiff’s trade dress including the thin orange border at the top, central white strip and the green lower half of the bottle. The Court opined that the lettering was also similar in white with similar fonts. The marks ‘LIV 52’ and ‘LIV 55’ were clearly deceptively similar.
The Court opined that to the consumer of average intelligence and imperfect intelligence, there was a chance of confusion between the marks LIV.55 and LIV.52 especially when both the marks were used for liver tonic on bottles and packs which were identical in appearance. The mere fact that the defendants products reflected the company’s name could not mitigate the confusion created by the stark similarity between the trade dresses of the defendants and the plaintiffs.
The Court opined that in cases where the Court was prima facie convinced that the defendant had consciously copied or imitated the plaintiff, then the focus should be on similarities rather than dissimilarities. In the present case, the defendants had clearly adopted a trade dress which was identical to the plaintiffs LIV.52 product, which included LIV.55 and LIV.55 DS.
The Court opined that in even in case of the defendant’s product, LIV.999, there was no justification for the defendants to use the combination ‘LIV’ with a number in the manner in which the plaintiffs had used it, for liver tonics. A consumer of average intelligence and imperfect recollection could conclude that ‘LIV.999’ had an association with ‘LIV.52’.
The Court opined that at the first glance, for an untutored consumer, the suggestion was conveyed that they were products of one manufacturer in different strengths. As it was common in the pharma industry that the name of the products was suffixed with different strengths such as ‘Azithral 250’ and ‘Azithral 500’ or ‘Crocin 500’ and ‘Crocin 650’. In such cases, the appearances of the packs were deliberately made dissimilar to avoid any confusion between products of different strengths.
The Court relied on Himalaya Drug Company v. S.B.L. Ltd., 1996 SCC OnLine Del 464 and opined that the plaintiffs were entitled to a decree of permanent injunction as sought in the suit for the marks ‘LIV.55’ and ‘LIV.99’ both in respect of mark and trade dress used by Defendant 1. The Court further opined that whether the defendants products were sold or not sold was not of particular relevance insofar as the infringement was concerned. If the defendant’s mark was deceptively similar to the plaintiff, there was likelihood of confusion infringement as per Section 29 of the Trade Marks Act, 1999.
The Court relied on Sumeet Research and Holdings Pvt. Ltd. v. Sipra Appliances, 2018 SCC OnLine Del 1138; Living Media India Limited v. Vijayan Madhavan Praveen, 2019 SCC OnLine 8180 and Ahmed Oomerbhoy v. Gautam Tank, 2007 SCC OnLine Del 1685 and opined that where there was congruence of similarity or identity of products through the same outlets, the Courts had repeatedly held that the infringement had taken place.
The Court opined that these products were ayurvedic preparations and not allopathic medicines or scheduled drugs for which doctors prescriptions were required. These were over the counter preparations which were often brought by the patients without prescription. The Court opined that considering the similarity of the defendants and plaintiff’s product, there was likelihood that an unwary consumer would purchase the defendants’ ‘LIV.55’ product believing it to be of the plaintiffs’.
Thus, the Court granted the permanent injunction to the plaintiffs and restrained the defendants from using the mark ‘LIV.55’, ‘LIV 55’ or ‘LIV.999’ or any other mark which deceptively similar to the trade dress of the plaintiff in respect of its ‘LIV.52’ product, either for liver tonics or for any other pharmaceutical preparations or allied goods.
[Himalaya Wellness Company v. Abony Healthcare Ltd., 2023 SCC OnLine Del 6594, decided on 17-10-2023]
*Judgement authored by- Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiffs: Prachi Agarwal and Kanupriya Chawla, Advocates;
For the Defendants: Mr. Gagnish Bhatia, Advocate