Principles of Passing off In Trademarks: Wockhardt Limited Vs. Torrent Pharmaceuticals Ltd.

Background

Torrent Pharmaceuticals Ltd. (Plaintiff/ Respondent) owned a trademark a trade mark called “CHYMORAL” and “CHYMORAL FORTE”, which is a drug administered post-surgically for swellings that may arise and/or wounds that may arise. They filed a suit for infringement and an interlocutory application for passing-off against the rival, Wockhardt Limited (Defendant/ Appellants) for violating its trademark rights by use of the mark “CHYMTRAL FORTE”. Single Judge Bench of Bombay High Court refused to grant the interim injunction for passing-off in favor of Torrent and against Wockhardt. The said order was challenged before the Division Bench, the same was set aside and Torrent was granted interim injunction for passing-off. The said Order of Bombay High Court was appealed, by Wockhardt, in Supreme Court.

Classical Trinity of Passing Off

  • There 3-elements which are to be satisfied to prove a case of passing off are: a) Goodwill and Reputation; b) Misrepresentation by the Defendant; and c) likelihood of damages.
  • The Court held “that though passing off is, in essence, an action based on deceit, fraud is not a necessary element of a right of action, and that the defendant’s state of mind is wholly irrelevant to the existence of a cause of action for passing off, if otherwise the defendant has imitated or adopted the Plaintiff’s mark”. Likelihood of damages is sufficient. The bench quoted the judgment in Laxmikant V. Patel vs. Chetanbhai Shah.

Acquiescence and Delay: Not the same

  • The Court refused the Single Judge’s injunction refusal ground of acquiescence and stated that “We do not think that because the appellants stepped in the year 2014 with notice of the first respondent’s registration and use of the mark that means the appellant-plaintiff has acquiesced in the same. That is not a positive act and which is required to deny the relief on the ground of acquiescence.” Reference was made to the SC judgment in M/s Power Control Appliances and Ors. vs. Sumeet Machines Pvt. Ltd.
  • “Acquiescence is a species of estoppel and therefore both a rule of evidence and a rule in equity. It is an estoppel in pais: a party is prevented by his own conduct from enforcing a right to the detriment of another who justifiably acted on such conduct.”
  • With respect to the point of acquiescence, the Division Bench held that ‘Delay is not to be confused with acquiescence. The latter implies knowledge, and where “knowledge of the defendant’s mark and product is shown and coupled with a long period of inaction against the alleged invasion of an exclusivity claim”, it is not enough to say that “there is no positive act”, as acquiescence explicit consent rather than silent.

Verdict

The Supreme Court bench upheld the law laid down in Laxmikant V. Patel vs. Chetanbhai Shah regarding passing off, dismissed the appeal in favor of Torrent Pharmaceuticals Ltd. and upheld the order of Divison Bench of Bombay High Court.

Author: Ms. Vatsala Singh, Litigation Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at vatsala@khuranaandkhurana.com.

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