Southern Petrochemical Industries Corporation Limited vs Vision Medilink, 5 Celler Neptune Tower

M. Jeyapaul, J.—These Applications are filed by the plaintiff seeking to restrain the respondent from in any manner infringing the applicant''s

trademark ''SPIC'' by using the offending identical trade mark ''SPIC'' for their pharmaceutical and medicinal preparations and also to restrain them

from passing off their pharmaceutical and medicinal products using the offending trade mark as and for the well known trade mark of the applicant-

Company. The applicants have sought that they have a pharmaceutical division of M/s. Southern Petrochemical Industries Corporation Limited

(SPIC) a company incorporated under the Companies Act, 1956. From its very inception applicants are in the forefront in manufacturing and

marketing chemicals and fertilizers for over 35 years. They attained great reputation in the said field. They have honestly conceived and adopted

the trade mark SPIC for their chemicals and fertilizers manufactured for the past 35 years. The applicant-Company is famously identified and

referred to by the general public and the industrial community by the trade mark SPIC. Because of the wide sale turnover and long, continuous and

extensive user, the applicant''s trade mark SPIC has come to be associated with the applicant-Company and the consumers including the industrial

community and general public identified the said trade mark SPIC only with the applicant-Company and no one else. The applicant-Company

commenced its diversified business activities by setting up a pharmaceutical division in the year 1985. They have invested huge amounts in various

research and developmental activities. They have applied and obtained very many registration for their various products in class 5 for all its

pharmaceutical and medicinal preparations. Some of the Applications for registration are pending in the name of the applicant-Company. The

applicants have got exclusive right to use the trade mark SPIC either independently or as part of the trade mark. The respondents have

commenced manufacturing and marketing inferior quality pharmaceutical and medicinal preparation using the identical trade mark SPIC. The

respondents are guilty of infringing the applicant''s trade mark SPIC by using the offending identical trade mark SPIC in its pharmaceutical and

medicinal preparations. The use of the trade mark SPIC by the respondents for their pharmaceutical and medicinal preparations would create utter

confusion in the market. It has also caused great loss, hardship and damage to the business. Therefore, the applicants have sought for the relief''s as

stated supra.

In the counter filed by the respondents, they have contended that the applicants are, in fact, carrying on business in the filed of chemicals and

fertilizers. The word SPIC is only an acronym of the applicant-Company. But, the respondents are not aware of the pharmaceutical division of the

applicant-Company. The respondents are not aware of the registered trade mark owned by the applicant. The respondent-Company commenced

their business in the year 1999. The annual turnover of the respondent-Company in the year 2005-2006 was Rs. 1.5 crores and in the year 2006-

2007, it was Rs. 3.9 crores. The respondent-Company is manufacturing about 150 pharmaceutical products about which SPIC is one of the

products. The respondent''s products SPIC was launched as early as in the year 2000 by the respondent-Company as a formulation of

Roxithromycin, an antibiotic widely used in the treatment of infections. The respondent''s formulation was named SPIC which stands for S =

Staphylococcus, P = Pneumonia, I = Irritating Cough and C = Chlamydia which are the names of some of the infections that the product SPIC is

used for treatment. Therefore, the word SPIC is the acronym of four diseases for which the drug Roxithromycin is prescribed for treatment. The

respondents deny that they have commenced manufacturing and marketing inferior quality pharmaceutical and medicines using the identical trade

mark SPIC. The respondent-Company applied for trade mark SPIC about eight years ago. No objection to the said trade mark was received by

the Trade Mark registry till date. The applicants do not have strong presence in the Northern Region of India and their brand is non-existent there.

Therefore, the respondent seeks for dismissal of the Applications.

Learned Counsel appearing for the applicants would submit that the applicant''s trade mark SPIC is a registered one. Admittedly, the applicants

are the prior users of the trade mark SPIC. The traders and public have come to identify the trade mark SPIC with the applicants. The public will

be deceived if the respondents are permitted to trade with the mark SPIC. Therefore, the learned counsel appearing for the applicants would

submit that the applicants are entitled to the relief sought for.

Learned Counsel appearing for the respondents would contend that the word SPIC is only the acronym of Southern Petrochemical Industries

Corporation Limited. They produce fertilizers in a large scale. The volume of sale and the business turnover were not shown before this Court to

seek an order of injunction. After all, the Doctor prescribes the medicine and therefore, there is no question of contusion that may arise in the

minds of the consumers of such pharmaceutical products. The respondents have also applied for registration of the trade mark SPIC. Therefore,

the learned counsel appearing for the respondents would submit that the Applications deserve dismissal.

The applicants have produced documents to establish that the trade mark SPIC was registered in respect of fertilizers in India. They have also

produced voluminous documents to establish that they have registered the trade marks CEFSPIC, ERYSPIC, GALSPIC PLUS, SPICBALAM,

SPICLYTE, SPICMENT, SPICMOX, SPICOF, SPICTOL, SPICLIDE and SPICLOX and their Applications seeking registration in respect of

the trade marks AMISPIC, SPICTER, PANSPIC, TRIOSPIC, SPICLAV, SPICZONE and TAZOSPIC are pending with the Trade Mark

registry. The documents produced by the applicants would establish prima facie that they have started manufacturing the pharmaceuticals suffixing

or affixing the core trade mark SPIC prior to the manufacture of the pharmaceuticals and medicines by the respondents in the year 2000. They

have got a reputation of their own in the trade for their trade mark SPIC. The word SPIC has acquired a distinctive character though it is an

acronym of the name of their Company. It is found that many pharmaceutical and medicinal products are being sold with their registered trade

name affixing or suffixing the core mark SPIC. In fact, the respondents have feigned ignorance of the pharmaceutical division established by the

applicants manufacturing and marketing their products with various trade names with the core mark SPIC. When the applicants are the prior users

of the registered trade mark, their proprietorship over the trade mark will have to be protected by injuncting the infringement committed by the

respondents.

It is true that a Doctor alone prescribes medicines. But, it is common knowledge that the prescription is based on the name of the product and

not the name of the Company which produced such product. A new entrant of the pharmaceutical business cannot be permitted to ride on the

reputed trade mark of the applicants, who had acquired name and fame among he consumers and traders. Therefore, the respondents cannot be

permitted to pass off their products using the offending identical trade mark SPIC as and for the well known trade mark SPIC of the applicant-

Company. The applicants have established prima facie case for grant of order of injunction as prayed for. If the respondents, who are the

subsequent users of the trade mark are not restrained, much hardship will be caused to the prior user who have acquired proprietorship over the

trade mark SPIC by registration. The balance of convenience is also found in favour of the applicants. Therefore, both the Applications in O.A.

Nos. 806 and 807 of 2007 stand allowed. No cost.