Himalaya Drug Company ‘Liv.52’ trademark infringement case
Facts of the case
In the present case, the plaintiff (Himalaya Drug Co.) is a registered partnership firm involved in manufacturing, sales and promotion of ‘Liv.52’ which is used to cure liver ailments. The firm has been in the business since 1930 and the impugned product has been part of the firm since 1955 which has gained popularity with the time. The plaintiff firm deals in ayurvedic medicines only whereas, the defendant (M/s. SBL Limited) is engaged in manufacturing, sale and marketing of homeopathic medicines. It manufactures a liver tonic with the mark ‘LIV-T’. On 14th March, 1996, the Plaintiff sent a legal notice to the defendant to desist the use of the trademark ‘LIV-T’. The present appeal has been filed by the appellant (hereinafter referred to as plaintiff) seeking permanent injunction against the infringement and damages.
Trial Court’s Decision
The trial court decided the suit in favour of the defendant stating that there was no infringement of registered trademark by the defendant and dismissed the suit with costs of Rs. 50,000/- to be paid to the defendant by the plaintiff within four weeks.
The plaintiff contends that the prefix ‘Liv’ has no dictionary meaning or any meaning in general and the said prefix has been coined and adopted by the plaintiff and has been used all over India. The plaintiff states that ‘Liv.52’ and ‘LIV-T’ are deceptively similar and that the defendant’s medical preparation is bound to be presumed to have an association or nexus with the plaintiff.
The plaintiff cited some cases such as: – Pankaj Goel v. Dabur India Ltd., Kirorimal Kashram Mktg. & Agencies Pvt. Ltd. vs. Shree Sita Chawal Udyog Mill Tolly Vill etc. to strengthen his contention.
The defendant contended that the word ‘LIV’ is publici juris i.e., a generic component and is an abbreviation of the word ‘LIVER’. The defendant also contended that his product was of homoeopathic nature which is sold only through homeopathic stores while the product of the plaintiff was of ayurvedic nature which is sold through ayurvedic stores so, no question of confusion on the part of customers arise.
Several issues were framed by the trial court but the most relevant of them are:
- Whether the products of the defendant company can be sold only through homeopathic outlets?
It was held that the defendant’s product need not be sold only through homeopathic outlets but also through chemist shops.
- Whether the use of trademark LIV-T by the defendant amounts to infringement of trademark registration numbers 180564, 290061, 401959 in class 5?
The court held that ‘If the defendant’s mark is closely, visually and phonetically similar, even then no further proof is necessary. It is not necessary for the plaintiff to adduce evidence of actual deception in order to prove the case of infringement. If packaging of two products is different in an action of infringement, the same is immaterial’. The word LIV written in isolation is an essential feature of the trademark Liv.52. Referring to Cadila Healthcare Ltd. v. Cadila pharmaceuticals Ltd. court observed that it is the infringement of trademark of the plaintiff.
- Whether the word mark LIV is publici juris and if so, to what effect?
The court observed that ‘In absence of any cancellation petition filed by the defendant, the plea of generic word or publici juris was not available to the defendant as the same was contrary to the statutory provision of exclusive use conferred under Section 28 and right to relief arising for infringement thereof conferred under Section 29 of the Trade Marks Act, 1999’.
The court set aside the judgement of the learned single judge and decreed the appeal in favour of the plaintiff. The court concluded that the use of expression LIV in isolation is an infringement of the essential feature of the plaintiff’s registered trademark. It also advised the defendant to use mark LIV not written in isolation accompanied by suffixes such as: – Livogen, Livpar, Livosin, Livasol, Livernut, Livdro etc. The court granted six months to the defendant to liquidate all its pending stocks further no order for costs was delivered.
The case on a whole gives an impression that the trademark to be used by a proprietor should be chosen very carefully taking into consideration other products circulating in the market. Here it has been emphasized by the court that the mark used by the defendant was similar to that of the plaintiff’s mark as both of them used the term ‘LIV’ in isolation which could create confusion into the mind of the customers.
Read the judgement here
– Saurav Kumar Singh (Intern), BHU, Varanasi
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