Case Analysis: S.B.L. Limited v. Himalaya Drug Company
S.B.L. Limited v. Himalaya Drug Company (AIR 1998 Del 126)
Facts: The Plaintiff, Himalaya Drug Company, deals in the production and sale of Ayurvedic products since the year 1930. While, the defendant is also engaged in the manufacture and sale of both Homeopathic and Ayurvedic medicines. Now, one of the medicines prepared by the plaintiff company is a liver tonic under the trademark Liv-52. Now, this trademark was registered on 10th July, 1957 and 15th February 1987 in the class five as both medical proponent and medical pharmaceutical for the treatment of liver disease. Now contention of the plaintiff is against the use of the trademark, LIV-T by the defendant for a similar medical product, which according to the same has been fraudulently acquired by the defendant to steal the goodwill of the former. While, on the other hand we have the defendant company claiming that they are popular Homeopathic and Ayurvedic medicinal brand. Further they have gathered a drug license to produce LIV-T in 1987. The defendant thus came up based upon Order 39 Rule 3 Civil Procedure Code, with the appeal against an order passed by the same court which rejected the application for vacation of an earlier ex-parte order, confirming the ex-parte order of injunction.
Question of Law: Whether there is any deceptive similarity between the trademarks, Liv-52 and LIV-T?
Judgement: The Hon’ble court based its judgement on the following orders:
- A crucial test for determining any infringement or cases of passing off in the field of medicine and pharmaceutical preparations. But in case trading the preparations which is govern by certain rules, following considerations hold significance, namely:
i. The manner in which the trade is carried, whether the person making such sales is authorized by license and is educated or possess special knowledge in the filed of medicines and drugs.
ii. The class comprising the persons who would be consumers, whether they are accompanied by a proper doctor prescription and in every probability remain connected to the doctor while doing the course of the medicines purchased
Keeping in view the following two points, the Hon’ble Court clearly held that any word or abbreviation which has become public juris cannot be claimed by anyone exclusively. In the trade of medicines/drugs, the drug is commonly named after the name of the organ or the ailment, which the same has been deigned to treat. Now, the abbreviation, ‘Liv’ derived from Liver- organ of Human body is used by about 100 products in the market for the medicinal products manufactured and sold by those companies. It was thus concluded that the abbreviation has thus become a public generic terminology. Having a common usage, nobody is entitled to claim an exclusive right over the application of, ‘Liv’ as a proponent of any trademark whatsoever. Furthermore, the class of purchasers engaged in medicinal products shall distinguish the name of the product by weighing the prefix or suffix attached to the abbreviated terminology, ignoring the term, ‘Liv’. The court has further said that the possibility of confusion regarding the two products shall be minimized to nil since the medicine would be sold on the prescription of medical practitioner well versed in the line of medicine. Also, the surrounding circumstances such as the packing or representation of the cartons of the products hold a significant place in determining between two rival products with similar mark.
Authored By: Adv. Anant Sharma & Aniket Pandey