CS(OS) No.1307/2009 Page 1 of 21

* IN THE HIGH COURT OF DELHI AT NEW DELHI

Judgment Reserved on: 08.02.2010 % Judgment Delivered on: 18.02.2010

+ I.A.No.9140/2009 ( u/O 39 Rule 1&2 CPC) in CS(OS)No.1307/2009

NNE PHARMAPLAN INDIA LTD.

………..Plaintiff Through: Mr.P.V.Kapur, Sr.Adv.

with Mr.Manoj Arora, Ms.Girija Krishan

Varma, Advocates. Versus M/S CGMP PHARMAPLAN PVT. LTD. & ORS. ……..Defendants

Through: Mr.G.D.Goel, Sr.Adv. with Mr.Devashis Bharuka & Mr.Praveen Kumar, Advocates.

CORAM: HON'BLE MS. JUSTICE INDERMEET KAUR

1. Whether the Reporters of local papers may be allowed to see the judgment?

2. To be referred to the Reporter or not? Yes

3. Whether the judgment should be reported in the Digest?

Yes INDERMEET KAUR, J.

1. Present suit is a suit for permanent injunction restraining

infringement of trade name, passing off, delivery up, rendition

of accounts/damages.

CS(OS) No.1307/2009 Page 2 of 21

2. Plaintiff is a company incorporated on 30.12.1997 under

the Indian Companies Act 1956. The main objects of the

company include:-

i- Business of technical and industrial consultants and

engineers especially planning, consulting,

engineering, plant and equipment……….. related to

pharmaceuticals, bio-technolocy, medical

device/products and the health care industries.

ii. To carry on business or vocation or acting has

adviser and consultants on all matters and problem

connected or related to pharmaceuticals, bio-

technology, medical device/product and the health

care industries including carrying out of researches,

experiments……. to improve and modernize the

existing or the new process or units.

iii. To enter into any arrangement or

contract……………. relating to pharmaceutical, bio-

technology, medical device/produce and health care

industries.

iv. To provide technical knowhow, render advice on

planning development, research design, plant

operation, provide procurement, construction and

technical services………. for and or relating to

pharmaceuticals, bio-technology, medical

device/product and the health care industries.

CS(OS) No.1307/2009 Page 3 of 21

3. Parent company of the plaintiff was Pharmaplan GmbH

having its head quarters at Germany. Parent company was

acquired by NNE and thus changed its name to NNE

Pharmaplan. Consequent to the acquisition of the parent

company, plaintiff company also changed its name to NNE

Pharmaplan India Ltd. on 27.6.2008.

4. Plaintiff is a leading engineering and consulting company

focused exclusively on pharma and bio-tech industries. The

entity NNE Pharmaplan has 26 subsidiaries all over the world

and employs about 1500 people. Total turnover of the group

worldwide is Euro 157.52 million.

5. Plaintiff has over the years established its name in the

market and acquired a sufficient goodwill. For the financial

year ending on 31.3.2008, it has recorded gross revenue of

Rs.1453.55 lacs and profit after tax was Rs.224.54 lacs.

6. Defendant no.2 was an employee of the plaintiff company

having been employed on 5.6.1998 as its project manager. He

was closely involved in the execution of the projects of the

plaintiff company. As per appointment letter he would treat as

strictly confidential all information and documents that may

come to his knowledge during the period of his services with the

company; information and material provided to him or which

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would have come into his possession from third parties

connected with the company were also to be treated as

confidential. This was in terms of the Invasion and Proprietary

Information Agreement dated 22.08.2003.

7. On 11.05.2009 services of defendant no. 2 were

terminated. His claims were fully and finally settled on

22.06.2009. On 07.07.2009 four employees of the company

working on various projects tendered their resignation. On

enquiry it was revealed that all these persons had been solicited

by defendant no. 2 to join the services of defendant no. 1.

8. Further inquiry revealed that defendants no. 2 and 3 who

are brothers had incorporated a company on 06.07.2009 under

the name of cGMP Pharmaplan Pvt. Ltd. i.e. defendant no.1

9. Objects of defendant no. 1 are similar to the projects of

the plaintiff company. The main objects of defendant no. 1 inter

alia read as under :-

(i) To provide consultancy services for setting up

and upgradation of factories relating to

pharmaceuticals, food FMCG, hospitals etc. to carry

on business as planners …….contractors for various

factories related to pharma and health care.

(ii) To carry on all or any of the business in India

or elsewhere of manufactures, processors, packers,

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importers, exporters, buyers, seller, distributors,

agents, wholesale and retail dealers in all kinds of

pharmasuticals, surgical, bulk drug, medicals,

cosmetics, heavy and fine chemicals, toilet requisites

sera, surgical appliances, equipments and

machineries, medical and x-rays equipments,

laboratory chemicals…… of whatsoever kind for

abovesaid purposes.

(iii) To act as consultants and planners for

designing, engineering and master planning. To

provide related services ……..to sectors like

pharmasuticals, food FMCG hospital etc.

(iv) To carry on the business of bottling, packing,

re-packing, processing of capsules, syringes,

injections, ointment, medicines, medical and surgical

equipments, devices and disposals …………to end

provide consultancy for the same.

10. It is stated that the plaintiff had already been registered

as NNE Pharmaplan India Ltd. Under Section 20(2) of the

Indian Companies Act, no company shall be registered in a

name which is identical with or resemble the name of the

company in existence. The name of defendant no. 1 cGMP

Pharmaplan Pvt. Ltd. is misleading to the customers of the

plaintiff in view of the fact that the business of both companies

is the same.

CS(OS) No.1307/2009 Page 6 of 21

11. It is not in dispute that an application ;under Section 22 of

the Companies Act is pending adjudication with regard to the

similarity in the names of the two companies; plaintiff has

pleaded that defendant no. 1 be directed to change its name.

12. Erstwhile of the plaintiff company i.e. Pharmaplan GmbH

had filed an application for the registration of trademark

„PHARMAPLAN‟ under Trademark Act in the year 2006. The

holding company of the plaintiffs i.e. NNE Pharmaplan in

December, 2007 made an application for registration of same

trademark „PHARMAPLAN‟ under Class 37 and Class 42 i.e.

with regard to organization and business consultancy for the

engineering, implementation, modernization and optimization of

production and research development facilities as well as

production process for pharmaceutical, biotechnological,

medical devices and GMP oriented industries worldwide.

13. By way of the present application a prayer is sought that

the defendant be restrained from using the business name of

the company i.e. „PHARMAPLAN‟ which is attached to the

business house of the plaintiff company.

14. Reliance has been placed upon Shree Sainath Industries

Vs. Sainath Auto Industries 2004(28) PTC 377 (Guj). It is

submitted that the facts of the instant case are paramateria to

CS(OS) No.1307/2009 Page 7 of 21

the said case. In the said case the defendant who was earlier a

partner with the plaintiff firm had started his own business

under the same trade name as that of the plaintiff; the parties

having same line of business the ensuing customer was led to

believe that the products purchased from the defendant were

actually the products of the plaintiff; he was restrained from

doing so.

15. Reliance has also been placed upon Laxmikant V.Patel Vs.

Chetanbhat Shah & Anr. 2002(24) PTC 1 (SC); it is submitted

that common law business practice does not permit another to

carry on his business in such a way as to persuade the

customers or clients in believing that the goods or services

belonging to someone else are his or are associated therewith.

16. (India TV) Independent News Service Pvt. Ltd. Vs. India

Broadcast Live Lic & Ors. 2007 (35) PTC 177(Delhi) has been

relied upon by the plaintiff to substantiate his submission that

the trade name „Pharmaplan‟ has come to be associated with the

business of the plaintiff company and cannot be termed as

descriptive as is the defence taken by the defendant.

17. The written statement and the reply to the pending

application have made counter averments. It is stated that

name of defendant no. 1 i.e. cGMP Pharmaplan Pvt. Ltd. is

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distinct and clearly distinguishable from the name of the

plaintiff company and this is evident from the fact that the first

word used in the name of plaintiff and the defendant company

are both entirely different. Plaintiff is associated with the

compendious term NNE Pharmaplan and the acronym NNE is

the most significant component of that term; there is no intent

to mislead any prospective client. Term „Pharmaplan‟ originates

from word „pharmaceutical‟ which is related to the

pharmaceutical industry and the later word „plan‟ is also

descriptive of the word „Pharmaplan‟. There are other two

companies also which are using the name of Pharmaplan. These

companies are two Indian Companies i.e. the Pharmaplan India

Pvt. Ltd and Pharmaplan Technologies Pvt. Worldwide; two

international companies are also using this name Pharmaplan.

It is absurd on the part of the plaintiff to assert that it can claim

monopoly over the term „Pharmaplan‟. Certificates issued by

the clients of the defendant have revealed that there is no

confusion or deception in the class of the customer of the

plaintiff who is an educated and intelligent category of clients

associated with the products /services sought to be rendered by

the plaintiff. This customer is not the general public at large as

CS(OS) No.1307/2009 Page 9 of 21

is also clear from the averments made in para no.19 of the

plaint; it is the specialized class of customer.

18. Reliance has been placed upon Cadila Health Care Ltd.

Vs. Cadila Pharmaceuticals Ltd (2001) 5 SCC 73. It is submitted

that while deciding the question of deceptive similarity the class

of purchasers who are likely to buy the goods is one of the most

relevant factors which has to weigh in the mind of the Court

while granting or refusing an ad interim injunction. In the

instant case this class of purchasers/ to whom services are to be

rendered is an intelligent class.

19. Reliance has also been placed upon S.M.Dychem Ltd. Vs.

Cadbury ( India) Ltd. (2000) 5 SCC 573 where these principles

have been reiterated. Unless and until the pre-conditions

requisite for the grant of a temporary injunctions are made out

by the plaintiff, no such order should be passed.

20. Admittedly, trade mark of neither party has been

registered. On 17.12.2007, NNE Pharmaplan had applied for

the registration of trademark „Pharmaplan‟ in class 35, 36, 37,

41 and 42. Earlier its holding company i.e. Pharmaplan GmbH

had applied for the registration of the same trademark. The

defendant company i.e. cGMP Pharmaplan Pvt.Ltd. had applied

for registration of the trademark in class 42 on 6.7.2009 before

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the Trademark Registry. Applications of both parties are

pending.

21. This court is not dealing with an application for

infringement of the trademark. This is a case of passing-off. In

view of Section 27 (2) of the Trade and Merchandise Marks Act,

1958, in the case of unregistered trade marks, a passing-off

action is maintainable. The passing-off action depends upon the

principle that nobody has a right to represent his goods as the

goods of somebody. In other words, a man is not to sell his

goods or services under the pretence that they are those of

another person.

22. What is contended and has to be answered by this court is

as to whether the names of the two companies i.e. of the

plaintiff company “NNE Pharmaplan India Ltd.” is deceptively

similar to the name of the defendant company i.e. “cGMP

Pharmaplan Pvt. Ltd.” in use of the common mark „Pharmaplan‟;

whether the goods of the plaintiff can be passed-off as the goods

of the defendant.

23. In Cadila Health Care Limited (supra), the guidelines to be

considered by a court in deciding a question of deceptive

similarity include inter alia the following factors:

CS(OS) No.1307/2009 Page 11 of 21

(a) The nature of the marks i.e. whether the marks are

word marks or label marks or composite marks i.e. both

words and label works.

(b) The degree of resembleness between the marks,

phonetically similar and hence similar in idea.

(c) The nature of the goods in respect of which they are

used as trade marks.

(d) The similarity in the nature, character and

performance of the goods of the rival traders.

(e) The class of purchasers who are likely to buy the

goods bearing the marks they require, their education

and intelligence and the degree of care they are likely to

exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders

for the goods.

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

24. The object clause of both the companies i.e. the plaintiff

and the defendant evidence that the business of the two

companies is by and large similar; i.e. they act as consultants,

engineers and technologists for pharmaceutical foods and other

related products of the pharmaceutical industry. Both the

parties have also sought registration under the same class;

whereas the defendant has sought the registration of his trade

mark under class 42 alone, the plaintiff has sought registration

under other classes as well.

25. The word „pharmaplan‟ is disjunctive. It comprises of two

words „pharma‟ and „plan‟. Both have a dictionary meaning.

CS(OS) No.1307/2009 Page 12 of 21

The word „pharma‟ necessarily connotes its distinct relation to

pharmaceutical; whether it‟s the pharmaceutical products or

other matters related to the pharmaceutical industry. „Pharma‟

is noun comprising collectively of pharmaceutical companies.

Word „pharma‟ is a part and parcel of the word

„pharmaceutical‟, it is also a part and parcel of words

„pharmacist‟ and „pharmacy‟, all these words necessarily denote

their relation with medicine; whether it be in its preparation,

use or its sale or whether it relates to the person who dispenses

such medicine. The word „pharma‟ is a description of the

pharmaceutical industry and all other matters related to it.

26. The word „plan‟ necessarily connotes a preparation, a pre-

devised strategy, a scheme of action, a design and an

organized/detailed method according to which something is to

be done. This word by its dictionary meaning is also essentially

descriptive in nature.

27. The word „pharmaplan‟ as used thus gives the impression

that it is a scheme or a proposed method of dealing with the

pharmaceutical products and other matters related to the

pharmaceutical industry.

28. In so far as descriptive names are concerned, the position

at law is that as in the case of geographical names, a descriptive

CS(OS) No.1307/2009 Page 13 of 21

mark may be granted protection where the same has assumed a

secondary meaning which identifies it either with particular

goods or services or as being from a particular source.

29. In Godfrey Phillips India Ltd. v. Girnar Food and

Beverages (P) Ltd., 2005 (30) PTC 1 the trademark involved was

of a „SUPER CUP‟ in respect of tea. It had been held that

protection can be given to individually descriptive words if they

have acquired a distinctiveness and significance to be

associated with the business of the company.

30. In Living Media India Ltd. v. Jitender V.Jain and Anr. 2002

(25) PTC 61 (Del) on the use of words „AAJ TAK‟ it was held that

the words though individually descriptive and being dictionary

words may not be monopolized by any person but their

combination does provide protection as a trademark if it has

been in long, prior and continuous user in relation to particular

goods manufactured or sold by a particular person and by virtue

of such user, the mark gets identified with such person; this

would be irrespective of facts whether this combination is

descriptive in nature and even has a dictionary meaning. In this

case it was held that in such a case any person can use any of

the two words as their trade mark or mark but has to be

prohibited from using the words as a combination.

CS(OS) No.1307/2009 Page 14 of 21

31. Plaintiff has thus to establish a long, prior and a

continuous user in relation to this particular goods or services

which are being used by him in order that such goods and

services are identified with him i.e. a continuously long and

prior user in relation to the mark „Pharmaplan‟ It may however

be noticed that the plaintiff has not produced any such material

on record to establish that his mark has acquired any secondary

meaning which is a pre-condition for granting protection to

descriptive names. No sale promotion/advertisement or any like

document has been placed on record by the plaintiff to show

that the mark „pharmaplan‟ leads its consumer to believe that

such goods/services offered are those of the plaintiff company

alone and not of any other person. Except for the audited

statement of account for the year March, 2008 the plaintiff has

not filed any other document.

32. In M/s Online India Capital Co.Pvt. Ltd. and Anr. v. M/s

Dimension Corporate, (2000) V AD (Del) 860 the plaintiff

company was running the website „www.mutualfundsindia.com‟

while the defendant had created a similar website

„www.mutualfundindia.com‟. The contention was that „mutual

fund‟ is a generic term and no monopoly can be claimed in

relation thereto by any person. It was observed that the

CS(OS) No.1307/2009 Page 15 of 21

expression „mutual funds‟ forming part of the plaintiff‟s domain

name is the description of the services being offered by the

plaintiff. The material placed on record failed to show that the

said expression had acquired a secondary meaning which is a

precondition for grant of protection to a descriptive name. It

was thus held that no prima facie case was made out for the

grant of an interim injunction prayed for by the plaintiff.

33. In Manish Vij and Ors. v. Indra Chugh and Ors., AIR 2002

Del 243 : 2002 (24) PTC 561 (Del), it was observed:

“….. that a trademark is a descriptive if it imparts information directly which may concern some characteristic or ingredient of the product. The term “kabari bazaar” is descriptive and requires no imagination to connect the same with second hand goods. It was further observed that it is true that descriptive words can be used at times as trademarks where they acquire distinctiveness and signify that particular goods are manufactured or services rendered by a particular person, it may be said that the mark has acquired a secondary meaning. This can be demonstrated by proving advertisements, promotions and sales. It was found that there was no such material to show that the website of the plaintiff had acquired such a secondary meaning.”

34. In the instant case, there is no such material on record to

establish that the mark „pharmaplan‟ which is essentially a

descriptive word has acquired a secondary status connecting it

with the goods/services offered by the plaintiff.

CS(OS) No.1307/2009 Page 16 of 21

35. The plaintiff company is „NNE Pharmaplan India Ltd.‟.

The defendant company is „cGMP Pharmaplan Pvt. Ltd.‟;

business of two companies is by and large the same but the logo

and the formation of the words of the plaintiff company have

distinct attributes. The logo of the plaintiff company reads as:

„nne pharmaplan‟

The alphabets „nne‟ are in small letters. The emphasis is

essentially on the prefixed words i.e. on „nne‟; alphabet „n‟ is

distinct and there is no curve on the top of the alphabet „n‟;

„Pharmaplan‟ follows later. On the other hand, the logo of the

defendant company reads as:

„cGMP Pharmaplan Consulting, Engineering and Validation‟ The emphasis here is on the words „cGMP‟; the alphabets are in

italic form. The colouring of the plaintiff‟s logo which is

distinctly in black colour is again a marked variation with the

mark of the defendant which is in lighter shade and there is no

filling in the alphabets; visual impresion mark of both names is

markedly and absolutely different. There is no scope of

confusion or deception to the proposed customer.

36. Section 2 (1) (d) of the Trade and Merchandise Marks Act,

1958 defines the words „deceptively similar‟; it refers to

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situation where one is „deceiving‟ others or „confusing‟ others

the distinction between the words „deceive‟ and „confuse‟ has to

be kept in mind. In a given case if the essential features have

been copied, the intention to deceive or to cause confusion is

not relevant in an infringement action. Even if, without an

intention to deceive, a false representation is made, it can be

sufficient. Similarly, confusion may be created unintentionally

but the purchaser of goods may get confused for the reason that

the purchaser does not have knowledge of the facts which can

enable him to get confused.

37. In this context the guidelines laid down in the case of

Cadila Healthcare (supra) to be considered by the courts in an

action for passing-off become relevant. The class of the

purchasers who are likely to buy the goods is a very relevant

factor and due weightage has to be given to this factor while

deciding an application of this nature.

38. In the instant case, defendant has detailed the process by

which a project of such a nature can be acquired. It is a long

drawn out process starting from the sending of the company‟s

profile to the finalization of the contract. Each prospective

client has specific requirements for their projects in view of

their individual business needs; based on these requirements a

CS(OS) No.1307/2009 Page 18 of 21

plan is customized for the prospective client. Process is need-

based and elaborated, spreading over months. Consumer i.e.

customer of such products/services which are rendered by the

plaintiff are customers from the intelligent and educated

category. It is not the public at large who would be buying the

goods/services offered by the plaintiff. Contracts are awarded

for conceptualization, engineering and validation of

pharmaceutical products, only after due deliberations and

intense discussions; only then will the customer accept the

services of the plaintiff. They are not shelf off goods which are

being sold; but multi crore pharmaceutical projects which are to

be awareded. The clients for such services are entrepreneurs

who are in the process of setting up pharmaceutical plants/units

i.e. big time pharmaceutical companies. Such individuals who

come for consultancy would be experts in their filed with years

of experience. Such a class of customer is not the ignorant

public at large but is high end profile customer who can

distinguish the goods of the plaintiff from the defendant. The

kind of customer in such cases is the customer who knows the

distinguishing characteristics of the plaintiff‟s goods, those

characteristics which distinguish his goods from other goods in

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the mark. He is unlikely to be confused with the use of the

words „Pharmaplan‟.

39. In support of this proposition the defendant has also

placed on record certificates from some of his its clients which

include Kemwell Pvt. Ltd., Famy Care Ltd. and ZYG Pharma

Private Limited. The aforestated companies had contracted

with the defendant i.e. cGMP Pharmaplan Pvt. Ltd. for

engineering and validation services for their pharmaceutical

products as therein mentioned. These documents clearly state

that the contract has been awarded to the defendant after

representation and discussion; it further recites that while

awarding the contract the aforestated customers were aware

that cGMP Pharmaplan Pvt. Ltd. is a separate and newly formed

distinct entity different from NNE Pharmaplan India Ltd. The

customer of the defendant is thus fully aware that he is dealing

with the services offered by the defendant who is a corporate

entity distinct and different from the corporate entity of the

plaintiff. For such a customer there is little chance of confusion

or deception.

40. Defendant has also placed on record the existence of two

Indian and two foreign companies employing the word

„pharmaplan‟. These have been downloaded from the internet.

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Counsel for the plaintiff states that he has instructions that he

would be proposing relevant action against the said companies.

It is relevant to state these documents had been filed on

5.10.2009; till date admittedly no action has been forthcoming

by the plaintiff.

41. In dealing with an application of such a nature all three

preconditions i.e. a prima facie case, an irreparable loss and

balance of convenience has to be established by the plaintiff

before he can obtain an order. None of the aforestated

ingredients have been fulfilled by the plaintiff. There is no

prima facie case made out in his favour. The names of the

plaintiff and the defendant company are in no manner similar;

emphasis is essentially on the prefixed words „NNE‟ of the

plaintiff and „cGMP‟ of the defendant. They are not only worded

differently, the manner and the nature of the composition of

alphabets is also distinct; they are not likely to cause confusion

or deception in the minds of the proposed customers to whom

the defendant is offering its services. Such a customer being a

high profile customer and not an ordinary lay person, no

irreparable loss is also likely to be suffered by the plaintiff and

this is also evident from his own action. In October, 2009, the

plaintiff became aware that two other Indian companies were

CS(OS) No.1307/2009 Page 21 of 21

using the name „pharmaplan‟; admittedly no action has been

taken against them till date. Balance of convenience also does

not lie in favour of the plaintiff; it in fact lies in favour of the

defendant as the business of the defendant company would

come to an entire stand still if this order is made in favour of the

plaintiff.

42. There is no merit in the application; it is dismissed.

(INDERMEET KAUR) JUDGE

February 18, 2010 nandan/rb