Ranjan Narula Associates
                             June, 2016

Trade Marks
The deciding question - use as a trademark or in purely descriptive sense
A recent order passed by the Bombay High Court in a suit for trademark infringement and passing off filed by the Plaintiffs, Gufic Private Limited and Ors against the Defendants, Vasu Healthcare Private Limited.

The Plaintiffs had contended that:
  1. The Plaintiffs adopted its mark SALLAKI in the year 1981 and was used in conjunction with ayurvedic tablet which is herbal extract from plant, Boswellia Serrata (Guggal). It is used to relieve pains.

  2. They have valid registration for the mark SALLAKI in Class 05 since January 1982. They have been manufacturing and marketing their products under the mark SALLAKI alongwith other variants using the mark SALLAKI.

  3. Due to their extensive and continuous use, they have acquired considerable reputation and goodwill in the mark SALLAKI which is associated with the Plaintiff’s products alone.

  4. They have incurred considerable promotional expenses and sold SALLAKI branded products worth INR 7.5 crores in the year 2011-2012.

  5. In May 2009, the Plaintiffs came across Defendants' product bearing the mark SHALLAKI. Despite addressing cease and desist notice in May 2009 and subsequent reminders in 2010 and 2012, the Defendants failed to give any explanatory response.

  6. Owing to registration, the Plaintiffs are entitled to protection of SALLAKI mark. That the Plaintiffs have spent considerable amount in development of their brand and acquiring a market.
In order to knock out Defendant’s defence that SALLAKI is a generic name of plant, the Plaintiff relied on their case against The Himalaya Drug Company; 2004 (29) PTC 366, wherein the Single Judge of Bombay HC held that since SALLAKI was not descriptive. Further, they also relied on factual findings by IPAB wherein it was held that the word "SALLAKI" is not descriptive and it has acquired a secondary meaning by virtue of its extensive and continuous use by the Plaintiffs since the year 1982.

The Defendants defended their position contending that:
  1. The injunction order passed by the Single Judge in Himalaya vs. Gufic case was set aside by the Supreme Court in Civil Appeal. However, there was no assessment regarding HC’s findings of fact and law relating to infringement and passing off.

  2. The mark SALLAKI is descriptive. They exhibited an extract from the Indian Council of Medical Research's review of Indian Medicinal Plants and private publication providing general information about the plant. The entry referred to several vernacular names of this plant, one of the Sanskrit names being SALLAKI alongwith other names in other languages.

  3. Various online extracts and product containers of other manufacturers establish that the word SALLAKI is openly and commonly used in trade and such parties are manufacturing products with that name or some variation of it.
The Court observed that:
  1. The deciding question is whether the Defendant is using the mark as a trade mark or in a purely descriptive sense. The Defendants had firstly used the mark "SHALLAKI" with TM symbol. Despite the Defendant’s submission that it was an error which was subsequently rectified, the first iteration did not in any way indicate its use in a descriptive sense. It was clearly being used as a trademark.
  2. Further, use of the revised product packaging i.e. Defendant’s name with the word SHALLAKI, with words “tablets 3 x 10” and ‘Arthritic Care’ appearing below it, it could not be construed as "descriptive". The Defendant’s use of the mark on blister pack’s silver foil confirms that the mark is used in a pure 'trademark' sense and not in any descriptive sense.
  3. It is settled law for several decades that in order to succeed, a defendant must establish that the marks claimed to be generic, common or descriptive are extensively used and are so common that they can no longer connote any one particular vendor, manufacturer or user. The present Defendant has not provided any source material showing any extensive sale.
The Court held that it is a clear case of both infringement and passing off. The two marks being visually, structurally and phonetically indistinguishable, the Defendants should not be permitted to continue the use of the mark. The court assessed that since the rival products are Ayurvedic medicinal preparations, extra caution is required.

The Court confirmed injunction restraining the Defendants from using or manufacturing, selling pharmaceutical and medicinal preparations under the mark “SHALLAKI” and/or any other trade mark deceptively similar to the Plaintiffs' registered trade mark “SALLAKI”.
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