India: Scan Biotech India & Another Successful In Establishing Infringement Of Its Trademark As Well As Infringement In Terms Of Section 29 (5), Trademark Act, 1999.

In Scan Biotech India & Another v Scan Biotech India , Scan Biotech India & Another (Plaintiffs), a pharmaceutical product manufacturing concern sought permanent injunction against Scan Biotech India (Defendant) for their use of the trademark "BOLRAN" and the use of the trade name "SCAN BIOTEK INDIA".

Owing to the absence of the written statement of the Defendant, the High Court of Delhi deemed it appropriate to invoke the powers under the provisions of Order 8, Rule 10, Code of Civil Procedure (CPC) and proceeding to dispose of the matter.

The Plaintiffs submitted that their firm was registered with the appropriate authorities i.e. Drug Controller. They further relied upon an export import license issued on 31.3.2003 and its membership with the Drug Export Promotion Council. In order to support the user of the trademark "BOLRAN" as well as to evidence the use of the name "SCAN BIOPTEK INDIA and SCAN BIOTECH LIMITED", the Plaintiffs relied on the registration certificates issued by the Trademark Office as well as the licenses and documents issued by the drug authorities and the import and export license issued by Drug Export Promotion Council. It was also submitted that the Plaintiffs usage of the registered mark "BOLRAN" was exclusive to Ukraine and such use was not restricted in any manner in terms of Section 47 (2) (a) of the Trademark Act.

The Plaintiffs laid down a final contention that the near identical trade name 'SCAN BIOTECH INDIA' used by the Defendant's in India was calculated to cause confusion amongst the consumers in Ukraine in respect of the same product i.e. BOLRAN for which the Plaintiffs owned trademark registration.

The Court opined that the materials on record and averments supported by affidavits clearly established that the Plaintiff was the registered owner of "BOLRAN". The court further observed that the Defendant's usage of "SCAN BIOTEK INDIA and SCAN BIOTECH LIMITED" with little or no variations was intended to cause confusion and amounted to infringement under Section 29 (5) of the Trademarks Act. The said section reads as follows:

"A registered trademark is infringed by a person if he uses such registered trademark, as his trade name or part of his trade name or name of his business concern or part of the name, of his business concern dealing in goods or services in respect of which the trademark is registered."

In view of the above discussion, the Court felt that the Plaintiff's had been successful in establishing infringement of its trademark as well as infringement in terms of Section 29 (5) by the Defendant. The decree of permanent injunction was thus passed in favour of the Plaintiff.

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