Torrent Pharmaceuticals Ltd., ‘first past the post’, has a trade mark called ‘CHYMORAL’ and ‘CHYMORAL FORTE’, which is a drug administered post-surgically for swelling and/or wounds that may arise. They filed a suit against Wockhardt Ltd. for use of the mark ‘CHYMTRAL FORTE’.
Fraud is not a necessary element of ‘passing off’ actions [Laxmikant, (2002) 3 SCC 65; Satyam Infoway, (2004) 6 SCC 145]. Where there is a probability of confusion in business, an injunction will be granted even though a trade name is adopted/registered innocently [‘Horlicks‘ v. ‘Horlioks‘, (2003) 26 PTC 241 (DEL)].
Single Judge, Bombay High Court refused interim injunction, for passing off, in favor of Torrent and against Wockhardt. It was argued that ‘CHYMORAL FORTE’ and ‘CHYMTRAL FORTE’ had co-existed in the market for long and Torrent, despite knowledge, had taken no action.
‘Acquiescence’ is surely a defence. Where a trader ‘sits by’, allows a rival trader to expend money over a considerable period, with the aid of a mark like his own, he will not be allowed to stop his rival’s business. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark. It implies a ‘positive act’ – not merely silence/inaction. No further rule can be laid down. Each case must depend on its own circumstances.
The Division Bench granted the interim inunction. Relying upon Sumeet Machines, (1994) 2 SCC 448 it was noted that no positive act/acquiescence could be attributed to Torrent. Equating delay with acquiescence is incorrect. A mere failure to sue without a positive act of encouragement is no defense and is no acquiescence. Substitution of the letter ‘T’ for the letter ‘O’ is the only difference between the trade names. Confusion on the ground of deceptive similarity would ensue, causing (likely) damages.
The Supreme Court, in turn, noted, interestingly, that Wockhardt had commenced sale of products, with identical composition, as ‘CHYMOWOK’, a trade mark registered in 2008. Sales figures was in Crores. Hon’ble Justice R.F. Nariman upheld the Division Bench Order in Wockhardt v. Torrent Pharmaceuticals Ltd., [Civil Appeal No. 9844 of 2018].
We pray for elaboration on a later date.