Aveo Pharmaceuticals PVT LTD vs. Mg Lifecare LLP & Ors.

Facts

The plaintiff, AVEO PHARMACEUTICALS PVT LTD, filed a suit seeking a permanent injunction against the defendants, MG LIFECARE LLP & ORS., for infringing its registered trademark ‘TAFRODOL’ with their marks TAPRADOL-XX and ‘TAPRODOL’. The plaintiff alleged that defendants 1 and 2 were engaged in marketing and defendant 3 in manufacturing the impugned medicines jointly. During the proceedings, the plaintiff sought to delete defendant 3 from the array of parties. Defendant 1 stated in its written statement that it had neither sold nor intended to market the impugned trademark. Defendant 2 also stated similarly in its written statement. However, defendant 2, in its reply to an application, admitted to exporting medicines under a similar mark in September 2020, but claimed to have stopped marketing it after receiving a legal notice from the plaintiff. Defendant 1 also stated it did not have a GST number at the time of filing the suit.

Held

The Court held that the defendants, in their written statements, had categorically stated that they had neither used nor would use the infringing marks. While defendant no. 2 admitted to exporting products under an infringing name in September 2020, it also stated that it had stopped marketing the mark after receiving a legal notice from the plaintiff. The plaintiff did not press for costs and damages. Considering these facts, the Court decreed the suit in favour of the plaintiff and against defendant nos. 1 and 2, granting the relief sought in clauses (a) to (c) of Prayer Clause, Para 29 of the plaint. Defendant no. 3 was deleted from the array of parties at the plaintiff's request. The Court did not expressly leave any issue undecided.

Key Issues

1. Whether the defendants' trademarks TAPRADOL-XX and ‘TAPRODOL’ are deceptively similar to the plaintiff's registered trademark ‘TAFRODOL’, constituting trademark infringement and passing off under relevant provisions of trademark law? Petitioner's Contention: The plaintiff argued that the defendants' marks were deceptively similar to its registered trademark, leading to infringement and passing off. The plaintiff relied on the averments made in its plaint and the admissions by the defendants regarding their activities. Revenue/State's Contention: The judgment does not record any specific arguments from the revenue or state authorities as they are not parties to this commercial suit. The defendants' contentions were primarily based on their written statements and replies, where they denied intent to use the infringing marks or claimed to have ceased such activities after receiving a legal notice.