Madras High Court Revives ‘777 Oil’ Trademark Suit, Grants Permanent Injunction Against Sanjeevi Pharma

Madras High Court Revives ‘777 Oil’ Trademark Suit, Grants Permanent Injunction Against Sanjeevi Pharma

Introduction

The Madras High Court has granted trademark protection to the mark “777 Oil” used for a Siddha medicinal formulation, setting aside a single judge’s order that had dismissed an infringement suit filed by J.R.K's Research and Pharmaceuticals Pvt. Ltd. against Sanjeevi Pharma.

A Division Bench comprising Justice C.V. Karthikeyan and Justice K. Kumaresh Babu held that the earlier judgment suffered from “perversity” and decreed the suit with a permanent injunction restraining the defendant from using the mark “777 Oil” or any deceptively similar mark.

Factual Background

The dispute arose after Sanjeevi Pharma began marketing its medicinal product under the mark “SANJEEVI 777 OIL.” J.R.K’s Research contended that its promoter, Dr. J.R. Krishnamoorthy, had been using the mark “777 Oil” since 1992 in connection with a formulation developed in association with the National Research Development Corporation.

The plaintiff asserted that the mark had acquired reputation and goodwill in the market, particularly in relation to Siddha medicine used for treatment of psoriasis. It argued that Sanjeevi Pharma’s adoption of the identical alphanumeric expression was not bona fide and was likely to cause confusion and damage to its reputation.

J.R.K’s Research also relied on an earlier decision of the Intellectual Property Appellate Board (IPAB), which had ordered removal of Sanjeevi Pharma’s mark from the trademark register in 2011. That order had subsequently attained finality after dismissal of a writ petition filed by Sanjeevi Pharma.

Procedural Background

The plaintiff instituted a trademark infringement suit before the High Court. The single judge dismissed the suit, holding that the plaintiff had not established exclusive rights over the mark and relying, inter alia, on an email communication suggesting possible abandonment of the original mark. Aggrieved by the dismissal, J.R.K’s Research filed an appeal before the Division Bench of the Madras High Court.

Issues

1. Whether J.R.K’s Research held valid and enforceable trademark rights over the mark “777 Oil.”

2. Whether Sanjeevi Pharma’s use of the mark “SANJEEVI 777 OIL” constituted trademark infringement.

3. Whether reliance on an unproven electronic communication to infer abandonment of the mark was legally sustainable.

Contentions of the Parties

J.R.K’s Research contended that it had continuously used the mark “777 Oil” since 1992 and that both “777 Oil” and the modified mark “Dr. JRK’s 777 Oil” remained valid and subsisting trademark registrations in its favour. It argued that Sanjeevi Pharma’s use of the identical numerical mark was likely to mislead consumers and dilute its established reputation. The company further relied on the earlier IPAB order directing removal of Sanjeevi Pharma’s mark from the register, contending that the respondent could not lawfully continue to use the mark after that order had attained finality. Sanjeevi Pharma argued that the expression “777” referred to its manufacturing process involving three seven-day stages and had become publici juris. It also contended that the plaintiff had begun promoting a modified mark, suggesting abandonment of the earlier mark.

Reasoning and Analysis

The Division Bench observed that both “777 Oil” and “Dr. JRK’s 777 Oil” remained valid and subsisting trademark registrations in favour of J.R.K’s Research. The Court also noted that the IPAB had already ordered removal of Sanjeevi Pharma’s mark from the trademark register and that the order had attained finality after dismissal of the respondent’s writ petition. Consequently, the respondent could not lawfully continue using the mark. The Bench found fault with the single judge’s reliance on an email communication to infer abandonment of the original mark. It held that the electronic record had not been proved in accordance with Section 65B of the Indian Evidence Act, as the mandatory certificate required for admissibility of electronic evidence had not been produced. Accordingly, the Court held that the earlier judgment suffered from perversity and could not be sustained.

Decision

Allowing the appeal, the Madras High Court set aside the single judge’s order and decreed the suit in favour of J.R.K’s Research and Pharmaceuticals Pvt. Ltd. The Court granted a permanent injunction restraining Sanjeevi Pharma from using the mark “777 Oil” or any deceptively similar mark. It also directed the defendant to surrender all goods, cartons, and promotional materials bearing the offending trademark for destruction and issued a preliminary decree directing rendition of accounts of profits earned from sale of the infringing products for assessment of damages.

In this case the plaintiff was represented by Advocate M.S.Bharath. Meanwhile the defendant was represented by Advocate R.Sathish Kumar.