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"We allow the appeal. The judgement and decree dated 3rd June, 2010 is set aside. Suit of the plaintiff (Himalaya Drug Company) with regard to infringement of trade mark is decreed.
"The defendant (SBL Ltd) is restrained from using the mark LIV as part of its trade mark LIV-T while dealing with the medicinal preparations. Decree be drawn accordingly...," a bench of justices Pradeep Nandrajog and Manmohan Singh said.
The court set aside its single judge bench judgement which had held that homoeopathic firm M/s SBL Limited did not infringe trademark Liv.52 of Himalaya Drug Company, registered way back in 1957, in making its own medicine Liv-T.
Writing the verdict for the bench, Justice Singh granted six months to SBL Ltd to "liquidate" existing stock of Liv-T.
"As we have arrived at the finding that the 'LIV' written in isolation is an essential feature of the trade mark Liv.52 and also noticed the rules of comparison which is that the marks are to be compared as whole.
"Therefore, presence of mark 'LIV' which is an essential feature of the mark Liv.52 shall be considered for the purposes of comparison with that of LIV-T," the court said.
During the hearing, SBL Limited had said the word 'LIV' is "generic and common to the trade as medicines in question manufactured and marketed by both parties are meant for treatment of liver.
It was also said two products were "different, one is an ayurvedic medicine and the other homoeopathic preparation."
Himalaya Drug had filed the appeal against the judgment of a single judge bench by which the suit against M/s SBL Ltd for "infringement of trade mark Liv.52 by use of trade mark LIV-T by SBL Ltd was dismissed and it was held that there is no case made out of infringement of registered trade mark."
Allowing the appeal, the bench said, "The plaintiff (Himalaya Drug) in the present case was able to prove that the Liv.52 is still distinctive. The customers purchase the product of the plaintiff by asking Liv.52 which is being used for over the last 57 years.
"It has also come in evidence that the mark LIV is the essential feature of the registered trade mark Liv.52. On the other hand, the defendant (SBL) was unable to prove that it is a generic word and becomes common to the trade."
I a 32-page judgement, the court said it was pertinent to mention that on one hand, SBL Ltd's entire case is that mark 'LIV' is a generic word and is "unprotectable" in law, but on the other hand, "the defendant itself applied for registration of 'LIV-T' in the Trademarks Registry for getting the exclusive right ...Therefore, the findings arrived at by the single judge ...are not correct and the same are set aside."
