The Himlaya Drug Co. & Ors. v. Surjit Singh Sial & Anr.
CS(OS) No. 1371 of 2009
before the Hon’ble High Court of Delhi at New Delhi
The Plaintiffs were engaged in the manufacturing and selling of ayurvedic product preparations. The Defendant on his website was selling herbal and other healthcare products and was also advertising and offering for sale the products of the Plaintiffs at absurd and exorbitant prices.
As per the Plaintiff, the Defendant was selling HIMALAYA products of the Plaintiffs brought from India or other places abroad without obtaining license, permission and authorisation of the Plaintiffs.
The case of the Defendant was that their was no selling of any product of the Plaintiffs as that of their own or using the mark of the Plaintiffs for any drugs other than those manufactured by the Plaintiffs. The Defendant contended that they had never interfered with the package, labeling, design or the contents of the products of the Plaintiffs.
The Hon’ble Court held that the act of the Defendant constitutes unauthorized dealings and selling of products as the same is without obtaining the license, permission or authorization of the Plaintiffs to conduct such sales.
The Plaintiffs have legitimate reasons for not permitting such dealings as they destroy the Plaintiffs’ entire business model, designed to safeguard the Plaintiffs’ valuable goodwill.
The act of the Defendant amounts to substantial change and impairment as contemplated by sub-section (4) of Section 30 of the Trade Marks Act, 1999.
The goods sold by the Defendant under the trade mark of the Plaintiffs are likely to cause confusion or deception because there is an in-built misrepresentation in the sale of the said goods under the trade mark HIMALAYA by Defendant, inasmuch as a false impression is given that the products are approved of or licensed by the Plaintiffs.
By passing itself off as an authorized dealer of the Plaintiffs, the Defendant is also putting Plaintiffs in grave danger of being held liable by consumers for HIMALAYA products which are sold without the knowledge of the Plaintiffs and the condition of which could have been altered or tampered by Defendant and not maintained in a proper condition as authorized retails are obligated to.
The present case is an example of re-selling an already brought product, which falls under the doctrine of exhaustion, which finds it’s place in Section 30(3) of the Trade Marks Act, 1999. However, there is an exception to the said doctrine which is provided under Section 30(4) of the Trade Marks Act, 1999. The present case is an example of granting of injunction by relying on Section 30(4) of the Trade Marks Act, 1999. The Trade Marks Act, 1999 under Section 30 provides for situations which are limitations to the registration of a trade mark. In other words, exceptions or defences to trade mark infringement actions. Section 30(3) is one such defence (whereby if a product bearing the registered trader mark is lawfully acquired and is further re-sold such action will not constitute infringement of trade mark) but Section 30(4) is an exception to Section 30(3) and applies in those cases where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the conditions of the goods, has been changed or impaired after they have been put on the market.
Author: Ankit Rastogi