MEMORIAL ON BEHALF OF THE PLAINTIFF

IN THE HON’BLE HIGH COURT OF MADRAS

IN THE MATTER OF:

M/S MMC PHARMACEUTICALS LTD.

V.
SAARLIFE HEALTHCARE

COUNSEL FOR THE PLAINTIFF

BHAVANA KHATWANI
SEM- VI SECTION A
ROLL 43

MEMORIAL ON BEHALF OF THE PLAINTIFF

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 MEMORIAL ON BEHALF OF THE PLAINTIFF

TABLE OF CONTENTS

LIST OF ABBREVIATIONS 1

INDEX OF AUTHORITIES 2

STATEMENT OF JURISDRICTION
3

STATEMENT OF FACTS 4

STATEMENT OF ISSUES 6

SUMMARY OF ARGUMENTS 7

ARGUMENTS ADVANCED 8

1. Whether defendant is liable for using deceptively similar trademark

2. Whether defendant should be given order
a. permanent injunction ,
b. to render true and faithful account of profit illegally earned
c. to deliver to the Plaintiff all the goods, dies, labels, wrappers, packages, etc
with respect to the offending trademark “HEMOCARE”
for destruction without compensation

PRAYER FOR RELIEF 13

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LIST OF ABBREVIATIONS

1. & And
2. % per cent
3. AIR All India Reporter
4. ACT,1972 The Payment of Gratuity Act,1972
5. Ed. Edition
6. Etc. Et cetra
7. Hon’ble Honourable
8. i.e. That is
9. LLJ Labour Law Journal
10. No. Number
11. Ors. Others
12. p. Page
13. SC Supreme Court
14. SCC Supreme Court Cases
15. SCR Supreme Court Reporter
16. Sec. Section
17. v. Versus

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INDEX OF AUTHORITIES

CASES

In M/s. Atlas Cycle Industries Ltd. v. Hind Cycles Limited, ILR1 1973 Delhi 393
M/S Radico Khaitan Limited vs M/S Brima Sagar 2013 (53) PTC 1 (Del.)
Maharashtra
. Venkat Rao @ Sakthi Dass vs Chandamama India Limited 2 25 July, 2011
baton Corporation & Anr. vs Bch Electric Limited 3 on 1 July,2014
Castrol Limited vs. Mohammed 10 March,2016
In Himalaya Drug Company v. S.B.L. Limited, 4 15 October2010

DICTIONARIES

1. Black’s Law Dictionary, 7th Edition, 1999.

STATUTES
Trade Marks Act 1999

1
 1973 Delhi 393,
2
on 25 July, 2011
3
on 1 July, 2013
4
2013 (53) PTC 1 (Del.),

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STATEMENT OF JURISDICTION

The Plaint is filed under Order VII Rule 1 of the Code of Civil Procedure read with Order IV
Rule 1 of the O.S. Rules and Sections 27, 134 and 135 of the Trade Marks Act, 1999.

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STATEMENT OF FACTS

The defendant is using mark for a product which is deceptively or confusingly similar to the
Plaintiff’s registered Trademark “HEMOCARE” This Civil Suit has been filed by the Plaintiff
seeking for the following reliefs:

(a) to grant a permanent injunction, restraining by an order of perpetual injunction, the

Defendants, its Directors, their employees, agents, stockists, dealers or others directly or
indirectly involved, from in any manner infringing and using in relation to any medicinal or
pharmaceutical preparation, in manufacturing or marketing the pharmaceutical product bearing
the trademark HEMOCARE or any other trademark which is deceptively or confusingly similar
to the Plaintiff’s registered Trademark “HEMOCARE”

(b) to grant a permanent injunction, restraining the Defendants by themselves, their servants,
agents, men, or anyone claiming through them from manufacturing, marketing, distributing,
offering or advertising for sale any pharmaceutical or medicinal preparation using the Trademark
“HEMOCARE” or any other name which is in any way phonetically similar and visually
dissimilar to the Plaintiff’s Trademark “HEMOCARE” and pass off their pharmaceutical
preparation “HEMOCARE” as the pharmaceutical preparation of the Plaintiff or enable others to
pass off in any manner;

(c) to direct and decree the Defendants to deliver to the Plaintiff all the goods, dies, labels,
wrappers, packages, cartons, boxes, articles, literature and all other materials bearing reference
whatsoever with respect to the offending trademark “HEMOCARE” for destruction without
compensation;

(d) to render true and faithful accounts of the profits illegally earned by the Defendants by using
the deceptively similar and confusing trade name “HEMOCARE” and a decree for the said
amount be passed in favour of the Plaintiff against the Defendants;

(e) to direct the Defendants to pay to the Plaintiff the costs to the suit; and

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(f) pass such further or other order, as this Hon'ble Court may deem fit and proper in the
circumstances of the case and thus render justice.

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 MEMORIAL ON BEHALF OF THE PLAINTIFF

STATEMENT OF ISSUES

1. Whether defendant is liable for using deceptively similar trademark

2. Whether defendant should be given order
d. permanent injunction ,
e. to render true and faithful account of profit illegally earned
f. to deliver to the Plaintiff all the goods, dies, labels, wrappers, packages, cartons, boxes,
articles, literature and all other materials bearing reference whatsoever with respect to
the offending trademark “HEMOCARE” for destruction without compensation

for using deceptively similar trademark “HEMOCARE” which is of the Plaintiff’s registered
Trademark “HEMOCARE”

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SUMMARY OF ARGUMENTS

1. Whether defendant is liable for using deceptively similar trademark

o The defendant is liable for using same trademark as HEMOCARE which is

registered trademark of plaintiff under section 29 and hence liable.

2. Whether defendant should be given order

a. permanent injunction ,
b. to render true and faithful account of profit illegally earned
c. to deliver to the Plaintiff all the goods, dies, labels, wrappers, packages, cartons, boxes,
articles, literature and all other materials bearing reference whatsoever with respect to
the offending trademark “HEMOCARE” for destruction without compensation
for using deceptively similar trademark “HEMOCARE” which is of the Plaintiff’s
registered Trademark “HEMOCARE”

o Under section 135 when there is infringement of right of registered trademark the
wrongdoer is liable for injunction as well as rendering the account of profit illegally
earned and for the delivery-up of the infringing labels and marks for destruction or
erasure, hence in this defendant can be held liable for the same for infringing the
rights.

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ARGUMENTS ADVANCED

A. Whether defendant is liable for infringing registered trademark of defendant by

using deceptively similar trademark

When we refer to section 29 of trade mark act which says :

29 (1) A registered trade mark is infringed by a person who, not being a

registered proprietor or a person using by way of permitted use, uses in the course of
trade, a mark which is identical with, or deceptively similar to the trade mark in relation
to goods or services in respect of which the trade mark is registered and in such manner
as to render the use of the mark likely to be taken as being used as a trade mark:
Effect of removal from register for failure to pay fee for renewal
(2) A registered trademark is infringed by a person who, not be being a registered
proprietor or a person using by way of permitted use, uses in the course of trade a
mark which because of --
(a) its identity with the registered trade mark and the similarity of the
goods or services covered by such registered trade mark : or
(b) its similarity to the registered trade mark and the identity or
similarity of the goods or services covered by such registered trade mark: or
(c) its identity with the registered trade mark and the identity of the
goods or services covered by such registered trade mark.
is likely to cause confusion on the part of the pubic , or which is likely to have an
association with the registered trade mark..

When we see this section it is quite clear that defendant by using the trademark
HEMOCARE which is deceptively or confusingly similar to the Plaintiff’s registered
Trademark “HEMOCARE” has acted contrary to section 29 of the act

The trademark used is deceiptively similar causing infringement can be derived from
following cases

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 In M/s. Atlas Cycle Industries Ltd. v. Hind Cycles Limited, ILR5

while dealing with two rival trademarks „Royal Star‟ and „Eastern Star‟ of the parties, the
Division Bench of this Court held that the trade mark „Royal Star‟ adopted and used by the
Defendant was similar to the Plaintiff‟s trade mark „Eastern Star‟.

In Himalaya Drug Company v. S.B.L. Limited, 6

a Division Bench of this Court held as under:-

"25. After having considered the above mentioned decisions, it is clear to us that it is not the
right test of a meticulous comparison of two marks, letter by letter and syllable by syllable. It is
the person who only knows the one mark and has perhaps an impression, or imperfect
recollection of it, who is likely to be deceived or confused. In fact it depends on first impression
of a person. In case he is aware or familiar with both rival marks of the parties he will neither be
deceived or confused. The degree of similarity between the two rival marks and which depends
upon the first impression whether visual or phonetic and in case court finds that there is a risk of
confusion which is the public interest should not be authorised. The question is merely the
dispute of inter se between the parties but it is matter of right by the registered proprietor who
got the exclusive rights to protect the same, otherwise, many competing marks would be
available in the market in due course and uncertainty might happen in case the infringer is
allowed to use similar mark."

B. Whether defendant should be given order

5
 1973 Delhi 393,
6
2013 (53) PTC 1 (Del.),

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 MEMORIAL ON BEHALF OF THE PLAINTIFF

a. permanent injunction ,
b. to render true and faithful account of profit illegally earned
c. to deliver to the Plaintiff all the goods, dies, labels, wrappers, packages, cartons,
boxes, articles, literature and all other materials bearing reference whatsoever
with respect to the offending trademark “HEMOCARE” for destruction
without compensation

for using deceptively similar trademark “HEMOCARE” which is of the Plaintiff’s registered
Trademark “HEMOCARE”

When we see section 135(1) of trademark act

135. Relief in suits for infringement or for passing off.—

(1) The relief which a court may grant in any suit for infringement or for passing off referred to
in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the
option of the plaintiff, either damages or an account of profits, together with or without any order
for the delivery-up of the infringing labels and marks for destruction or erasure.

(2) The order of injunction under sub-section (1) may include an ex parte injunction or any
interlocutory order for any of the following matters, namely:—

(a) For discovery of documents;

(b) Preserving of infringing goods, documents or other evidence which are related to the subject-
matter of the suit;

(c) Restraining the defendant from disposing of or dealing with his assets in a manner which may
adversely affect plaintiff’s ability to recover damages, costs or other pecuniary remedies which
may be finally awarded to the plaintiff.

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While going through this section it is clear that when there is an infringement of right, the court
may grant relief in the way of injunction and other relief by the way of damages or an account of
profits. The plaintiff is entitled to injunction and other benefits can be settled from various cases

P. Venkat Rao @ Sakthi Dass vs Chandamama India Limited 7

A Permanent injunction restraining the defendants, jointly and severally, their Directors, Editors,
Sub/Assistant Editors, Publishers, Printers, Principal Officers, Staff, men, agents, servants,
successors and assigns-in- business, representatives or any person claiming through or under
them from in any manner using the mark 'CHANDRABALA' as a trademark or trade name or
corporate name or trading style, domain name, or from using any other trade mark,
trade/corporate name, that is identical with or deceptively similar to the registered trademark
"CHANDAMAMA" of the plaintiff under trademark registration number 887024 in Class 16 or
to market, sell, offer for sale, license, advertise, display or indirectly to deal in any goods and/or
services, amounting to infringement of the plaintiff's said registered trademark.

(d) The defendants be ordered to pay to the plaintiff a sum of Rs.25,50,000/- by way of damages

(e) A preliminary decree be passed in favour of the plaintiff directing the defendants jointly and
severally to render a true and faithful account of all profits made by them, using the trademark
"CHANDRABALA" and a final decree be passed in favour of the Plaintiff for the amount of
profits thus found to have been made by the defendants, together with interest, after the
Defendants have rendered accounts

Eaton Corporation & Anr. vs Bch Electric Limited 8

Court held that the defendant, its dealers, agents and representatives on its behalf are restrained
from using impugned arrangement and/or mark(s) CUTLER-HAMMER, BHARTIA CUTLER-
HAMMER, CH(logo) or CH CONTROL or any other mark as may be identical and/or
deceptively similar to the plaintiffs‟ registered trade mark CUTLER-HAMMER under
No.164435 in Class 9 amounting to infringement thereof and also from manufacturing and
7
on 25 July, 2011
8
on 1 July, 2013

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selling, offering for sale, directly or indirectly dealing in goods included in Class 9 and/or any
other cognate or allied goods or the goods of the same description under the impugned
arrangement and/or mark(s) CUTLER-HAMMER, BHARTIA CUTLER-HAMMER, CH (logo)
or CH CONTROL or any other mark as may be identical and/or deceptively similar to the
plaintiffs‟ trade mark CUTLER-HAMMER and CH (label) and from doing any other act as is
likely to cause confusion & deception amounting to passing off their goods and/or business as
and for the goods and/or business of the plaintiffs.

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Castrol Limited vs. Mohammed

The first defendant by itself, their proprietor/partners, heirs, legal representatives, successors-in-
business, assigns, servants, agents, dealers, retailers, distributors, stockists, representatives or any
of them are restrained by way of perpetual injunction, from infringing the plaintiffs' well known
trademark CASTROL registered under nos.1494, 260626, 909193 and 1240239 in various
classes by use of the mark ASTROL or any marks structurally, phonetically, visually identical
and/or deceptively similar thereto in any manner whatsoever.

M/S Radico Khaitan Limited vs M/S Brima Sagar Maharashtra10

The Defendant is restrained by way of an ad- interim injunction from directly or indirectly
selling, manufacturing, offering for sale or in any manner dealing in any Alcoholic Beverage
bearing the mark/label BRIHAN'S DANZ NO. 1 WHISKY/BRIHAN'S NO. 1 WHISKY or from
adopting/using any other identical or deceptively similar trademark/label of plaintiff BRIHAN'S
DANZ NO. 1 WHISKY

Hence from the above cases it is clear that defendant is liable for permanent injunction, to render
true and faithful account of profit illegally earned and to deliver to the Plaintiff all the goods,
dies, labels, wrappers, packages, cartons, boxes, articles, literature and all other materials bearing
reference whatsoever with respect to the offending trademark “HEMOCARE” for destruction
without compensation.

9
10 March, 2016
10
15 October, 2014

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PRAYER FOR RELIEF

Wherefore in the lights of facts stated, arguments advanced and authorities cited, the Hon’ble
High Court may be pleased to adjudicate by:

1. Holding that the defendant is liable for infringement of registered trademark of plaintiff
2. Whether defendant should be given order
a. permanent injunction ,
b. to render true and faithful account of profit illegally earned
c. to deliver to the Plaintiff all the goods, dies, labels, wrappers, packages,
cartons, boxes, articles, literature and all other materials bearing reference
whatsoever with respect to the offending trademark “HEMOCARE” for
destruction without compensation

And pass any other order which this Hon’ble Court may deem it fit in the light of justice,
equity and good conscience.

All of which is most humbly prayed.

Date: 01 april 2019 Counsel on behalf of Plaintiff

BHAVANA KHATWANI

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