1

IN THE HIGH COURT OF JUDICATURE

AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION

NOTICE OF MOTION NO.97 4 OF 200 8

IN
SUIT NO. 134 2 OF 200 7

Satish Kantilal Mehta ...Plaintiff

Vs.
Jayesh Kantilal Mehta & Ors. ...Defenda nt s
And
Universal Pharm a & Ors. ...Responden t s

Mr.Ravi Kadam, Advocate General with

Mr.V.R. Dhond and Mr. A. Kamath i/b. Mr. S. Nair for Plaintiff
Mr. D.D. Madan, Senior Advocate a /w. Mr. Kiran Mehta and
Mr. Dhiren Karania for Defenda nt No.1 and Responde nt No.1.
Mr.Rahul Chitnis with Mrs. Bhagwati Trivedi for Defendan t
No.3

CORAM: SMT.ROSHAN DALVI, J.

DATED: 12 TH AUGUST, 200 8

P.C.

1. The Plaintiff's suit is essentially for injunction in respect

of certain tradem a rk s claimed by the Plaintiff essentially
against Defenda nt No.1, his brother. The Plaintiff has
claimed to be the joint owner with Defenda nt No.1 of 24
registered tradem a rk s shown in Exhibit- B to the plaint. The
Plaintiff also claims to be the joint owner of 352 other marks
shown in Exhibit- D to the plaint. Whereas the tradem ar k s
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shown in Exhibit- B are registered, the marks shown in

Exhibit- D are unregistered. The Plaintiff applied for the
relief of injunction by way of a Notice of Motion in respect of
these tradem ar k s . In the ad- interim application taken out
by the Plaintiff, the Plaintiff restricted his claim of injunction
in respect of the registered tradem a rk s alone. The Plaintiff
has been granted reliefs of ad- interim injunction in terms of
prayer clauses b(i) and b(iv) in relation to the registered
tradema rk s only. Prayers b(i) and b(iv) run thus:

“b(i) From in any manner using the five

purpor t e d l y assi gne d tra d e mar k s , i.e. ENAC GEL, ENAC
EXCEL GEL, FUNGDID CREAM, FUNDID-B CREAM and
SILVOPEX CREAM and/or any of the tra d e m a r k s set
out in the Exhibi t- “B” and Exhibi t- “D” to the the
Plaint and/or any of the m set out in the Annexure to
the purpor t e d Deed of Assign m e n t or any other
simil a r and/or decep t i v el y simil a r mar k s / n a m e s
in respe c t of the phar m a c e u t i c a l prep a r a t i o n s of the
Defend a n t Nos.1, 3 to 7, so as to infringe the regis t e r e d
tra d e m a r k s of the Plaint iff , the Defend a n t Nos.1
and 2 and/or pas s off the Defend a n t s produc t s as
and for those of the Plaint iff, the Defend a n t Nos.1
and 2.
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b(iv) From in any manner using wit h or deal i ng

in medici n a l and phar m a c e u t i c a l prep a r a t i o n s
under the name “Univers a l Impex” and/or
“Univers al Pharm a Impex” and/or any other
name s simil a r and/or dece p t i v e l y simil a r to
“Univers al Impex”.

2. The relief under prayer clause b(i) and b(iv) is not

granted as prayed. The aforesaid prayers show relief also in
respect of product s which are not registered tradema r k s
listed in Exhibit- D to the plaint. Conseque ntly, prayer
clause (b) is granted for the registered tradem a r k s of the
Plaintiff. Hence, it is seen that impliedly prayer (b) is refused
for the unregistered tradema r k s mentioned in Exhibit- D to
the plaint as also in respect of the product s mentioned in
annexure to the Deed of Assignment, which is the part of the
plaint.

3. The Plaintiff contends that Defendan t No.1, Defendant

No.3 and Respondent No.1 have breached the order of
injunction dated 6 th July, 2007. It may be mentioned that
the purview of the order which is narrower than the reliefs
claimed in the suit is set out in paragrap h s 13,15 and 16 of
the order. The aforesaid paragrap h s run thus :
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“13. In my opinion, Plaintiff has ma d e out

formi d a b l e case for grant of ad- interi m relief at
leas t in term s of pray e r claus e s b(i) and b(iv) in
rela t io n to regis t e r e d Trade mar k s . At this stage ,
alt houg h the Plaint iff has insis t e d for
appoi n t m e n t of Court Receiver, in my opinion, the
arrang e m e n t under ad- interi m relief woul d
sufficien t l y protec t the intere s t of the Plaint iff.

15. Suffice it to observe tha t the ad- interi m

relief whic h I propos e to gran t in term s of pra y er
claus e s b(i) and b(iv) repro d u c e d above is in
rela t io n to the “regis t e r e d Tra de Marks” only , on
accep t i n g the plea of the Plaintiff tha t his right
as joint owner/joint proprie t o r is infringe d in
respe c t of the sai d regis t e r e d Trade Mark .

16. Accordi ng l y , I procee d to gran t ad- interi m

relief in term s of praye r claus e s b(i) and b(iv).”
(emph a s i s supp l ie d)

4. It can be, therefore, be seen that the ad- interim relief

against infringement of the tradem a rk is granted in relation
to the registered tradema r k s. This ad- interim relief is in
terms of prayers b(i) and b(iv) in relation to registered
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tradema rk s only upon accepta nce of the Plaintiff's case that

his right as the joint owner is infringed in respect of the
registered tradema r k s. It is in these circum s t a n ce s that
prayers b(i) and b(iv) are granted.

5. The Plaintiff has alleged contempt / b r e a c h of the order

dated 6 th July, 2007 by Defenda nt No.1, Defendant No.3 and
Responde nt No.1 in using and dealing in phar m ace u tical
prepar ations under the name Universal Impex and / o r
Universal Pharm a Impex and / o r the name deceptively
similar to the name Universal Impex.

6. Similarly, the Plaintiff has alleged contempt / b r e a c h of

the order dated 6 th July, 2007 by the acts of the Defenda nt
No.1, Defenda nt NO.3 and Responde nt No.1 in
man ufact u ri ng and selling pharm ace u tical preparations and
products in the names of registered tradema r k s or products
deceptively similar thereto, thus infringing the Plaintiff's
registered tradem a rk s.

7. The Plaintiff has illustrated the acts of breach by

showing the cartons of phar m ace u tical products
man ufact u red and sold by Defenda nt No.1 and 3 and
Responde nt No.1.
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8. The fact of these cartons having been used is not denied

by any of these parties. The Defenda nt No.1 has justified the
user by contending that the use does not tantamo u n t to the
breach of the order of injunction.

9. The order dated 6 th July, 2007 came into effect on 18 th

August, 2007 after the initial stay granted.

(i) The very first breach of the order is shown by the

carton Exhibit- E to the affidavit in support of this
Notice of Motion. It is a carton of a medicinal cream
Fungdid- B stated to be marketed by Defendan t No.1
under the name of Universal Impex and man ufact ured
by Defenda nt No.3. The carton shows the date of
man ufact u re to be September, 2007, which is one
month after the order of injunction came to be
effectuated. The Defendant has been injuncted from
dealing in any medicinal and phar m ace u tical products
under the name Universal Impex. The carton shows
Fungdid- B sold under that name and marketed by
Defenda nt No.3. The Defenda nt No.1 is Director in
Defenda nt No.3. He is stated to have resigned
therefrom, in Jan u a ry, 2008. On the date of the
man ufact u re of the carton he was the Director of the
Defenda nt No.3. The carton is stated to show a
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breach of the injunction granted under prayer b(iv) in

the order dated 6 th July, 2007.

Universal Impex is shown to be the partners hip firm

of the Plaintiff and Defenda nt s 1 and 2. Hence, it is
that firm and not the new firm of Defenda nt No.1
which is Responden t No.1, which is seen to have
marketed the said product. It appears that the
product continued to be marketed as before for a short
time as will be seen from the cartons man ufact u re d a
few month s thereafter.

(ii) A carton relied upon by the Plaintiff shown in

Exhibit- F to the affidavit in support of this Notice of
Motion shows the same medicinal cream
man ufact u red in December, 2007, but under the
name Universal Phar ma, which is the name of
Respondent No.1. It is, therefore, seen that the initial
breach immediately after the order of injunction came
into effect has been remedied / r ectified a few month s
thereafter.

The Plaintiff, however, contend s that dealing in

medicinal product under the name of Universal
Pharm a would also be a breach of the order of
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injunction under prayer b (iv). Since, the Defenda nt

No.1 was restrained from dealing in any such products
under the name of Universal Impex, Universal Pharm a
Impex, or any name deceptively similar to the name of
Universal Impex. The learned Advocate- General on
behalf of the Plaintiff contended that the name
“Universal Pharm a” is deceptively similar to the name
“Universal Impex”. Mr. Madon, Sr. Counsel on behalf
of Defendant No.1 and Respondent No.1 contended
that the prayer b(iv) as well as the order passed in
terms thereof restrained Defenda nt No.1 and
Respondent No.1 from dealing in the name “Universal
Impex”, Universal Pharm a Impex” or anything which is
similar to “Universal Impex” , but not Universal
Pharm a” . The prayer as well as the order are in terms
of specific names. The word “Universal” is a generic
term, such as the word “Indian”. It is the words
“Impex” and “Pharma Impex” against which the
Plaintiff claims a right of trade mark. Conseque ntly a
specific injunction is with regard to the use of those
words. The prohibition against using a deceptively
similar name is with regard to the name “Impex” and
not “Pharm a”. “Pharma” is not deceptively similar to
the name “Impex”. The injunction order therefore,
does not extend to the word “Pharma”. The Defenda nt
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has not made use of the word “Impex” or “Pharm a

Impex” against the generic word “Universal” while
dealing in Pharm ace utical products.

In fact, I have been shown an affidavit filed by the

Plaintiff in Notice of Motion No.4300 of 2006 in Suit
No.3422 of 2006 filed by the Firm of Universal Impex
against one Universal Twin Labs in which a similar
contention of prohibition of user of the trade name
“Universal” was sought by the Defenda nt No.1 herein.
In paragrap h 14 of the said affidavit filed by the
Plaintiff herein, he had contended that the name
“Universal” is common to the trade and user of such
name cannot be prevented.

(iii) The Plaintiff has shown the carton of a gel under the
name Enac- gel annexed as Exhibit- G to the affidavit
in support of this Notice of Motion. This carton shows
the product man ufact u red in September, 2007. It is
“marketed by” “Universal Impex” and man ufact u red
by Defenda nt No.3. It is contended on behalf of the
Plaintiff that it falls within the mischief of prayer
clause b(iv). It goes the same way as the carton
Exhibit- E.
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The Plaintiff claims that the name Enac Gel is

deceptively similar to the Plaintiff's registered
tradem a rk Enac- P shown at item No.24 in Exhibit- B to
the plaint, which is also a gel. The Plaintiff
conseque ntly alleges breach in terms of prayer b(i).

It is contended on behalf of the Defendan t that this

is a product specifically shown in item No.61 in Exhibit-
D, the claim to which the Plaintiff had given up whilst
applying for ad- interim relief as shown in
paragrap h 3 of the order and in respect of which
injunction is specifically not granted as it is an
unregistered tradem a r k. Conseque ntly Defenda nt No.1
and Responde nt No.1 claim that they are entitled to
market their product Enac- gel. They claim that it is
not deceptively similar to the product Enac- P. It is
contended by Mr. Madon that the term gel, which is the
product itself, cannot be mistaken with the term “P” which is
the specified trade name of the product registered as a
tradem a rk. Mr. Madon argued that if the Defendant had
used the term which is phoenetically or even visually
similar to the name “Enac- P”, he could have been held
liable to the breach of the order of injunction.

Enac- P is the registered tradem a r k. It would be

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infringed if the Defendan t No.1 or Respondent No.1 used

a mark which was either identical with or deceptively
similar to the tradema r k in relation to the
pharm ace u tical goods in a way that would be taken as being
used as a tradema rk by them. The name Enac- gel is not a
registered Tradem ark. Its use cannot amou nt to an
infringement of the Plaintiff's tradem ar k.

The marketing of the product Enac- gel by Universal

Impex is by the old firm of the Plaintiff and Defendant s
1 and 2, which appear s to have continued for a short
period after the order of injunction came into effect as
can be seen from the cartons of Enac- gel man ufact u red
a few mont hs after the order of injunction.

(iv) Ju st as in the case of the Pharm ace u tical Cream

Fungdid- B, Enac- gel has been marketed by Universal
Pharm a and not Universal Impex from about
December, 2007. That is shown in the 4 th carton
Exhibit- H to the affidavit in support of this Notice of
Motion. It goes the same way as the carton for the
Pharm ace u tical Cream Fungdid- B marketed by
Universal Pharm a since December, 2007.

The carton annexure s F and H show that the

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name “Universal Impex” which Defenda nt No.1 was

injuncted from using has not been used since
December, 2007.

The willful default of the order is, therefore, not

seen. A default of the order, not willful, can be implied
from the earlier cartons which was soon got reprinted
and converted into cartons marketed by the new firm
of Defenda nt No.1 being Responde nt No.1 in which
Defenda nt No.1 is a partner with his wife.

A further carton Exhibit- I to the affidavit in

support of this Notice of Motion is shown it to be for a
pharm ace u tical product which is a Gel marketed by
the Respondent No.1 in the name of Enec- gel Excel in
December, 2007.

(V) . The Plaintiff has sought to show a further carton

for a medicinal cream marketed by Responden t No.1
under the name of Qualiderm Plus in October, 2007
under Exhibit- L. The Plaintiff contends that the name
“Qualiderm” is deceptively similar to the name
“Qliderm” shown at item No.23 in Exhibit- B to the
Plaint, which is one of the registered tradem a rk s
claimed by the Plaintiff.
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The Defenda nt does not accept that these terms are

deceptively similar. The Defendan t No.1 has contended
that the registration of tradema rk “Qliderm” has lapsed,
as it is not renewed and hence, he is entitled to use the
term “Qualiderm”.

(VI) The Plaintiff also claims tradem a rk in the word

“Qualiderm”. However, unfortu n a t ely, the Plaintiff has
not shown that tradem ar k as a registered tradema r k in
Exhibit- B to the Plaint and conseque ntly no injunction
order is passed in respect of “Qualiderm” as a registered
tradem a rk. The user by Defenda nt No.1 or Responden t
No.1 of that tradem ar k, therefore, strictly speaking
cannot be termed as a willful breach of the order of
injunction.

10. Though the Plaintiff has annexed certain other cartons

to the affidavit in support of the Notice of Motion as well as
affidavit in rejoinder, the learned Advocate- General has not
pressed for any reliefs with regard to any other cartons, or
any other acts of Defenda nt No.1 or Responde nt No.1 as
constituti ng an infringement of his registered tradem ar k.

11. Though the Notice of Motion is pressed against

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Defenda nt No.3 also, it is seen that aside from the aforesaid

products marketed by Defenda nt No.3, no other act against
Defenda nt No.3 is shown.

12. It need hardly be mentioned that the breach of order of

injunction is required to be strictly shown and proved. The
Plaintiff got a limited relief in respect of only the registered
tradema rk s as the reliefs prayed for by him were not pressed
for unregistered tradem ar k s or such other trade names and
was not granted.

13. The acts of Defenda nt No.1 or Responde nt No.1 must be

shown strictly to be in willful default of the order of
injunction with regard to the registered tradem a rk s as
shown in Exhibit- B only. The continu a tion of marketing by
the old firm of the “Universal Impex” of the Plaintiff and
Defenda nt s 1 and 2 though shown to be continui ng only
until September 2007, a month after the order of injunction.
It is shown to have been discontin ued at least since
December, 2007 by the change in the firm name of
Defenda nt No.1, which is Responde nt No.1. This act shows
lack of willful default.

14. The case for breach or contempt of the order of

injunction is, therefore, not made out.
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15. Hence, the Notice of Motion is dismissed. No order as to

costs.

(SMT. ROSHAN DALVI, J.)