Calcutta High Court Upholds Himalaya's 'PILEX' Trademark Rights Against Kent Pharmaceuticals
Calcutta High Court Upholds Himalaya's 'PILEX' Trademark Rights Against Kent Pharmaceuticals
Introduction
The Calcutta High Court passed a decision in favor of Himalaya Global Holdings Ltd and Himalaya Wellness Company (formerly Himalaya Drug Company) in a trademark infringement and passing off case against Kent Pharmaceuticals and other defendants. The Court upheld Himalaya's long-standing rights over the "PILEX" trademark.
Factual Background
Himalaya adopted the "PILEX" trademark in 1937 and registered it in 1946 under Class 5 for medicinal preparations. The company has been manufacturing and selling products under this trademark for over 80 years. The defendants were found to be selling medicinal products under deceptively similar marks, including "Pilex", "Plax", and "Pilax".
Procedural Background
The plaintiffs filed a suit for trademark infringement and passing off against the defendants. The defendants appeared and submitted an unconditional undertaking that they would no longer use the impugned marks.
Issues Involved
1. Trademark Infringement: Whether the defendants' use of marks similar to "PILEX" constituted trademark infringement under Section 29 of the Trade Marks Act, 1999.
2. Passing Off: Whether the defendants' actions amounted to passing off, considering the extensive goodwill and reputation associated with the "PILEX" trademark.
Contentions of the Parties
Plaintiffs' Contentions: Himalaya argued that the defendants' use of similar marks would cause confusion and deception among consumers, and that they had a long-standing reputation and goodwill associated with the "PILEX" trademark.
Defendants' Contentions: The defendants submitted an unconditional undertaking that they would no longer use the impugned marks, and did not contest the suit.
Reasoning and Analysis
The Court considered the plaintiffs' long-standing use, reputation, and trademark registration, and took note of the defendants' unconditional undertaking. The Court held that the plaintiffs were entitled to relief for infringement and passing off, and directed the defendants to pay consolidated costs of ₹2,00,000 to the plaintiffs.
Final Decision
The coram of Justice Ravi Krishan Kapur disposed of the suit and the connected interlocutory application, granting the plaintiffs relief for infringement and passing off. The defendants were directed to pay costs and comply with the order.
Implications
This decision highlights the importance of trademark protection and judicial recognition of prior use and goodwill, particularly in the pharmaceutical sector where deceptive similarity can lead to serious public harm. It underscores the need for companies to protect their trademarks and take action against infringing parties.
In this case the plaintiff was represented by Mr. Subhatosh Majumdar, Mr. Sayan Roy Choudhury, Mr. Paritosh Sinha, Mr. K.K. Pandey, Mr. Kironjit Majumdar, Ms. Pooja Sett, Mr. A. Sinha and Ms. Mallika Bothra, Advocates.
