Delhi High Court allows appeal by Liv.52. Restrains LIV-T.

A long drawn out legal battle, which started in 1996, has reached some finality on November 9, 2012 when Their Honours Pradeep Nandrajog and Manmohan Singh sitting in the Division Bench of Delhi High Court reversed the judgement by His Honour Dr. S. Muralidhar dismissing civil action by ‘Liv.52’ against ‘LIV-T’.

The judgement by His Honour Dr. Muralidhar is available here. The decision by the Appeals Court is available here.

Brief facts: Plaintiff, Himalaya Drug Co. (HDC), is registered proprietor since 1957–and user since 1955–of trademark ‘Liv.52’ for medicinal preparationn for treatment of disorder of liver. HDC initiated action against LIV-T trademark of SBL Limited (SBL), the Defendant, for using the trademark for the identical medicinal preparation.

Brief legal hisotry of this battle is that HDC sent a legal notice to SBL in March 1996 to cease and desist the usage of the LIV-T trade mark. The notice wasn’t a success and HDC instituted a civil action against SBL in Delhi High Court in the same year claiming damages to the tune of over Rs. 500,000.

The Court granted ex-parte interim relief to HDC on 23rd May, 96 and restrained LIV-T. The Court later, on 12th July, 96, confirmed the interim injunction and restrained SBL. SBL challenged this injunction order in the Appeals Court claiming LIV to be derived from descriptive and generic term liver and used it in reference to it as well.

Their Honours sitting in the Division Bench vacated the injunction on 15 July, 1997 agreeing with SBL’s contentions that the mark Liv.52 and LIV-T are not deceptively similar. The Court further held that the acronym, LIV, has become publici juris and generic by multiple people using LIV to sell their medicinal preparations.

HDC challenged this order in the Supreme Court which remanded the matter again to the Single Judge with a request to decide the matter expeditiously, on 27 February 1998.

The Single Judge framed issues in the matter on 30th November 98 and the trial commenced.

In 2003, due to increase in the pecuniary jurisdiction of Courts, all the civil suits pending in High Court which were of less than 2 million in valuation were transferred to the District Courts. So was also the fate of HDC’s civil suit. After an amendment application which enhanced the valuation of the suit, the matter was again transferred to the High Court in the year 2005.

Both parties led their evidence and after the final arguments, His Honour Dr. Muralidhar decided all the issues. Issue No. 10, which is reproduced herein, was the crux of the lawsuit: –

Whether the use of the trademark “LIV-T” by the Defendant amounts to infringement of trade mark of the Plaintiff?

His Honour dismissed this issue, as also HDC’s suit, primarily, on following grounds:

1) Liv followed by a dot and numerals cannot be similar to LIV written in capital followed by a hyphen and a capital T;

2) The competing marks ‘Liv.52’ and ‘LIV-T’ are not phonetically similar;

3) There was no likelihood of confusion at the end of a pharmacist in comparing the two marks; and

4) HDC had not been able to establish any evidence on actual confusion by a consumer.

HDC’s counsel, Mr. Hemant Singh, one of the best intellectual property litigation lawyer, stressed on the aspect that SBL, all this while, never raised any objection to HDC’s trademarks and never sought rectification as well. HDC also pressed that the marks Liv.52 and LIV-T were overall structurally and phonetically similar. HDC also argued that being medicinal preparations, utmost care should be there in allowing similar sounding brands to compete.

SBL’s primary argument was that the suffix LIV has become common to the trade and there are various manufacturers using LIV to denote their medicines. This argument weighed in with His Honour Dr. Muralidhar in His observation that LIV has indeed become generic and publici juris.

HDC, obviously, carried the judgement in appeal.

The Division Bench (DB), before deciphering the impugned order, observed that since HDC’s trademark ‘Liv.52’ was registered since 1957, under Section 32 of the old Act, the registration was conclusive proof of its validity. Per the Division Bench, this discussion assumed significance since the Single Judge held that ‘LIV’ has become publici juris which is a wrong finding in light of Section 32.

The DB also placed strong reliance on Issue No. 12 which is reproduced here: –

Whether the word mark “LIV” is Publici-Juris and if so, to what effect?

The Appeals Court further held that the competing mark have to be judged in the light of overall similarity and not by placing them next to each other. The DB also observed that it was SBL which had the onus to prove the issue that whether ‘LIV’ has become publici juris or generic and it produced no such evidence.

Moreover, the DB dealt in detail the case laws protecting the marks even though the marks contained component derived from organ / salt. Furthermore, the DB also held that as ‘Liv.52’ was HDC’s registered mark since 1957 and the fact that SBL never applied for the cancellation of these trademarks, in light of Section 32, ‘Liv.52’ enjoys a formidable and enforceable reputation.

Unlike Section 37 of The Lanham Act of the US which is reproduced here: –

§ 37 (15 U.S.C. § 1119). Power of court over registration; certification of decrees and
orders
In any action involving a registered mark the court may determine the right to registration, order the cancellation of registrations, in whole or in part, restore cancelled registrations, and otherwise rectify the register with respect to the registrations of any party to the action. Decrees and orders shall be certified by the court to the Director, who shall make appropriate entry upon the records of the Patent and Trademark Office, and shall be controlled thereby.

there is no such corresponding provision in Trade Marks Act, 1999 to enlarge the scope of an infringement proceeding, as undertaken by His Honour Muralidhar in the impugned judgement.

The DB, therefore, reversed the judgement by His Honour Muralidhar and granted the injunction to HDC’s Liv.52 against SBL’s LIV-T and allowed SBL to exhaust the pending stock within a period of six months.

That this order shall reach the Supreme Court is a but natural consequence. Let us await what finally becomes of this long legal battle.

But the IP jurisprudence should indeed carve out a stricter measure qua the trademarks for medicinal preparations. Here is an example how a wrong medication can be fatal. A 65 years old male in Mumbai died due to consuming wrong medication which the chemist gave to him. But then, is confusion at the end of a pharmacist alone to be blamed? What about few doctors writing the prescription in largely illegible handwriting? I hope the Indian Medical Council has some study for this and is taking some corrective measures.

Let us await if there is any observation by the Supreme Court in the instant matter.

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Filed under In Accordance With Law, IP reviews, Uncategorized

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