HC grants injunction restraining the Defendant from using the word “PANCHARISHTA” as a trademark for medicinal preparations; says “PANCHARISHTA” is not a generic term as it has been coined by the Plaintiff and has been in prolonged use by the Plaintiff.
In the present matter, the Plaintiff – Emami Ltd. has filed the present suit seeking protection of the mark “ZANDU PANCHARISHTA” and “PANCHARISHTA” which have become the marks of the Plaintiff on account of the Plaintiff acquiring Zandu Pharmaceutical Works ltd who had launched the product “ZANDU PANCHARISHTA” in 1968. Plaintiff submits that “ZANDU PANCHARISHTA” label has been registered since 1986, and the word marks “ZANDU PANCHARISHTA” and “ZANDU PANCHARISHTA PLUS” have been registered since 2010 and 2014, respectively, in Class 5 for ayurvedic, herbal and medicinal preparations and similar goods and further that the trademark “PANCHARISHTA” is exclusively associated with the Plaintiff and it enjoys statutory and common law rights in the same. Plaintiff came across the Defendant’s – SHREE BAIDYARAJ AYURVED BHAWAN PRIVATE LIMITED’s product under the name “PANCHARISHTA” used along with the house-mark “BAIDYARAJ”. Plaintiff immediately filed the present suit, seeking a permanent injunction restraining infringement of its registered trademark, passing off and other reliefs. HC granted an ex-parte-ad- interim injunction. Defendant contends that the word “Arishta” is an ayurvedic preparation and no monopoly can be claimed or granted in respect of the same.
HC analyses the facts and submissions of the parties and proceeds to address the issue whether the word “PANCHARISHTA” is either a descriptive or a generic mark and whether there can be any monopoly associated with the same. HC observes that the word Arishta is generic to the nature of the drug and cannot be monopolized. However, based upon the affidavit of an ayurvedic expert, Dr. Neena Sharma relied on by the Plaintiff, HC observes that the word “PANCHARISHTA” has not been found in any ayurvedic text and has been coined by the Plaintiff. HC further observes that the ingredients of the two products being different, the effect on the consumer/patients would also be different and the use of “PANCHARISHTA” has a scientific basis insofar as the Plaintiff is concerned, however, its use by the Defendant is in a general manner and there is no reasonable basis for use of the number “5” with Arishta. HC places reliance on In Godfrey Philips India Ltd. v. Girnar Food & Beverages (P) Ltd., (2004) 5 SCC 257, in which the Supreme Court has clearly held that, “ if a descriptive mark acquires secondary meaning, the same can be granted protection.”
HC finds that Arishta is a method of preparation of drugs in Ayurveda, however, “PANCHARISHTA” is a unique formulation of five different ingredients which have been prepared by the Plaintiff and the long and continuous use of the mark since 50 years clearly tilts the balance in favour of the Plaintiff.
HC states that the case law cited by the Defendant, i.e., Marico Ltd. v. Agro Tech Foods Limited [FAO (OS) No. 352/2010, decided on 1st November, 2010] is clearly distinguishable as the mark therein was not used for such a long period.
Applying the test laid down in Bata India Limited v. Chawla Boot House, [CS (COMM) 110/2019, decided on 16th April, 2019] on the question of generic and descriptive words, HC observes that the mention of the word “PANCHARISHTA” does not give any direct connection to a medicinal formulation meant for curing digestive aliments and it sounds like a medicine based on traditional ayurvedic knowledge but the exact formulation or purpose, its nature and effect on ailments etc., is not decipherable. HC finds that there is overwhelming evidence to show that there has been no significant third-party use of the mark “PANCHARISHTA‟ and there has not even been a trademark application by any party for the mark “PANCHARISHTA”. In the absence of any amicable resolution between the parties, HC finds that the Plaintiff is entitled to an injunction restraining the Defendant from using the word “PANCHARISHTA” as a trademark for medicinal preparations. It is, however, clarified that the Defendant would be at liberty to use the word Arishta in a manner so as to not result in violation of the Plaintiff’s statutory and common law rights.