has been decided on February 3, 2012.
In this case, petitioner had alleged infringement of its trademark ‘Arnimax’ coupled with a trade dress (silhouette of a lady with black hair, for which the petitioner also had a copyright in the artistic work) by the defendant, as well as passing off by the defendant of its products as the petitioner’s. The said mark had been registered by the petitioner for its medicinal and pharmaceutical preparation under Class V of the Fourth Schedule in 2003. The petitioner claimed to have discovered this in 2009 and filed a suit accordingly, in which an interim injunction had been granted in its favour.
The defendant argued saying that it had been provided with a No Objection Certificate to use the mark, that the petitioner is guilty of suppression of facts (since it had not disclosed before the NOC or the existence of dealership) and should thus be deprived of the benefits of the injunction and that the term “Arnimax’ being a generic mark, use by an honest concurrent user will not give rise to an infringement action in any case. The delay by the petitioner in filing the action was also argued to show acquiescence on its part.
The petitioner countered these arguments by saying that the NOC had not been issued by it, but by a Das Homoeo Laboratory (P) Ltd., which had been issued a license to market petitioner’s products, but had not been assigned the mark in any event. Several factual objections were also raised regarding the veracity of the signature of the proprietors of Das Homeo in the NOC. Also, it denied any willful suppression of facts by itself. The passing off allegation was sought to be justified on the ground that to an unwary common customer, the petitioner’s and respondent’s products may appear identical, given similar trade dress and usage of the term ‘Arnimax’.
The Calcutta High Court agreed with the petitioner’s contentions. It also held that had Arnimax been entirely a generic term, then the defendant would not have bothered to obtain an NOC to use the same. Nor was the delay by the petitioner held to amount to acquiescence, since it was because the petitioner was not aware of the infringement till 2009.
Under such circumstances, the Court ruled in the petitioner’s favour and affirmed the injunction, besides appointing a Receiver in pursuance of the reliefs sought for.
