Delhi High Court: A suit was filed by Hind Chemicals Limited (plaintiff), under Section 134 of the Trade Marks Act, 1999 relating to its mark ‘SU-MAG’ challenging the defendants’ mark ‘GUDMAG’ (‘impugned mark’) used in respect of pharmaceutical preparations in Class 5. Prathiba M Singh, J., grants injunction against Mankind Pharma Limited (as defendant 2, 3 and 4 has merged with Mankind Pharma Limited) for infringing plaintiff’s mark SU-MAG by using the offending packaging for its mark ‘GUDMAG’.
The plaintiff was the registered proprietor of the trademark ‘SU-MAG’, and was using the said mark for a cream-based composition marketed as ‘SU-MAG’ ointment since 1949. Defendant 3 and 4-Lifestyle Pharma Pvt. Ltd. has merged with Mankind Pharma Ltd. According to the plaintiff, its main product line ‘SU-MAG’ constitutes nearly 93% of its manufacturing business and overall sales in 2005-06. ‘SUMAG’ is a recommended medicine and is available throughout India. It also manufactures ‘MAG-MAG’, ‘CREMOBAR’, ‘COFEX’, ‘GLYCERIN’, ‘SUPPOSITORY’ as well as other ayurvedic products namely ‘Livzon Syrup and Capsule’ and ‘Imminex Syrup and Capsule’.
Since 1950, as is claimed by the Plaintiff, ‘SU-MAG’ was packaged in a container featuring original artistic work, layout, a distinct get-up, and a peculiar schematic arrangement of various features such as circles, frames, text font and color, blocks, and a distinctive and unique color scheme of white, orange, and grey. Additionally, the mark ‘SUMAG’ is prominently outlined on this packaging. The Plaintiff also holds a copyright for this unique and distinct packaging. The plaintiff’s allegation is that the Defendants, started using the mark ‘GUDMAG’, for an identical composition, which not only imitated the Plaintiff’s mark ‘SU-MAG’ container, but also reproduced the wrapper label, containing original artistic work, and a distinctive colour scheme of white, orange and grey colours.
An ex-parte interim injunction was granted. As per evidence placed on record, the plaintiff’s witness has stated that he had received the sales of the Plaintiff from the accounts branch of the Plaintiff company, and the sale figures were not personally verified by him. The DW-1 claimed that he did not find out as to who were the competitors in respect of ‘GUDMAG’ products which were launched. Further, the search conducted by them was only in respect of the trade mark only. It is also claimed that the DW-1 was not aware of the Plaintiff’s product ‘SU-MAG’.
The Court noted that the present case is one where the plaintiff’s and the defendants’ packaging has an almost identical colour combination. After examining both the packaging, and the marks, the Court concluded that defendants have attempted to imitate the Plaintiff’s well known packaging, which has been an established product since 1967.
Thus, the Court decreed the present suit for a sum of Rs.3 lakhs as damages and directed sum of Rs.5 lakhs to be paid to the plaintiff within a period of three months, failing which, the plaintiff is free to execute the present decree. Upon the expiry of three months, interest on the sum of Rs.5 lakhs, at the rate of 8% per annum would be liable to be paid, if the Plaintiff is forced to take execution proceedings.
[Hind Chemicals Limited v Rajesh Chawla, 2023 SCC OnLine Del 7675, decided on 01-12-2023]
Image Source: https://www.mankindpharma.com/ and https://www.rxindia.com/medicines/medicines-by-therapeutic-class/skin-infections/su-mag-75-gm-sumag-ointment/
Advocates who appeared in this case :
Mr. Siddharth Dutta, Ms. Neha Singh, & Mr. Vishesh Goel, Advocates for plaintiff
Mr. Hemant Daswani, Ms. Saumya Bajpai, Ms. Pranjal, Advocates for defendants
Buy Trade Marks Act, 1999 HERE
