Author: Sneha Tandon
In the matter of Emami Limited v. Shree Baidyaraj Ayurved Bhawan Private Limited [CS (COMM) 275/2019], the Delhi High Court, vide its Order dated August 26, 2019, granted a temporary injunction in favour of the Plaintiff, restraining the Defendant from using the trademark PANCHARISHTA in respect of Ayurvedic medicinal preparations. The Plaintiff had filed the suit seeking a permanent injunction restraining infringement of its mark ZANDU PANCHARISHTA, passing off, and other reliefs.
The Plaintiff submitted that the product ZANDU PANCHARISHTA – an ayurvedic digestive tonic – was launched in the year 1968 by its predecessor-in-interest. The Plaintiff placed reliance on its trademark registrations for the ZANDU PANCHARISHTA label since 1986, and the word marks ZANDU PANCHARISHTA and ZANDU PANCHARISHTA PLUS since 2010 and 2014, respectively (both claiming prior use since 1968). The Plaintiff contended that the Defendant’s product, launched in 2019 under the name PANCHARISHTA infringed the Plaintiff’s long-standing statutory rights in its registered trademarks.
The Defendant argued that as per Ayurvedic texts, the word “Arishta” means a drug prepared using water and therefore, no monopoly can be granted over it in respect of an Ayurvedic preparation. The Plaintiff countered by submitting that though the word PANCHARISHTA may be derived from the word Arishta, it has acquired a secondary meaning due to long usage and has therefore acquired distinctiveness. The Plaintiff further argued that PANCHARISHTA is a unique and coined combination of the number 5 (in Devanagari script) and Arishta. In support of this the Plaintiff also submitted an affidavit of an ayurvedic expert, who stated therein that …“Pancharishta” is a proprietary medicine and its formulation is prepared by Research department of the Plaintiff Company. Ayurvedic text books have no reference of the word “Pancharishta” anywhere.”
The Court held that while no monopoly can be exercised over Arishta in respect of Ayurvedic preparations, PANCHARISHTA is not a generic word as it does not exist in Ayurvedic literature and has, in fact, been coined by the Plaintiff. The Court also observed that owing to over fifty years of use, the PANCHARISHTA mark has come to be associated exclusively with the Plaintiff. Placing reliance on the judgment in Cadila Health Care (2001 5 SCC 73), the Court held that a stringent test for determining the likelihood of deception and confusion would be applicable in this case. The Court held that “the consumers may purchase the Defendant’s products simply presuming that because of the use of the word PANCHARISHTA in both products, Plaintiff and the Defendant’s products are one and the same or have the same therapeutic effect.”
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