Supreme Court upholds injunction on Wockhardt in passing off action by Torrent

The Supreme Court last month dismissed Wockhardt’s petition against a Bombay High Court order which had restrained the pharma giant’s continued use of the impugned mark “CHYMTRAL FORTE”..Confirming the injunction imposed by a Division Bench of the Bombay High Court, the Supreme Court Bench of Justices Rohinton Nariman and Indu Malhotra dismissed the SLP filed by Wockhardt in the passing off case involving Torrent Pharmaceuticals Ltd..Torrent had filed a suit against Wockhardt for passing off based on their registrations for the marks CHYMORAL and CHYMORAL FORTE, alleging that Wockhardt’s use of the mark CHYMTRAL FORTE violated Torrent’s trademark rights..Wockhardt had raised the defence of delay and acquiescence, as its product under the brand CHYMTRAL FORTE had co-existed in the market with Torrent’s product CHYMORAL FORTE for a period of seven years..The Single Judge Bench of the Bombay High Court dismissed Torrent’s plea, holding that mere similarity is not sufficient for claiming action for passing off. The Bench even held that there was a long period of co-existence of both drugs, where no actual confusion was found to have been reported..Aggrieved by this order, Torrent approached the Division Bench of the Bombay High Court, which allowed the appeal. It was found by the Division Bench that the test for establishing passing off was satisfied..The Division Bench opposed the view taken by the Single Judge Bench and held that an action is not quia timet merely on the ground that the competing products have co-existed in the market for a long period of time. The Division Bench thus granted interim relief to Torrent and restrained Wockhardt from using the impugned mark..It was against this order that Wockhardt approached the Apex Court; the company was represented by Senior Counsel Guru Krishna Kumar. Torrent was represented by Senior Counsel Abhishek Manu Singhvi, who was briefed by a team from AZB & Partners led by Partners Nandan Pendsey and Vijayendra Pratap Singh, along with Senior Associate Bhargavi Kannan and Associates Kirti Balasubramanian, Sayobani Basu and Aishwarya Modi, .In its judgment, the Supreme Court considered the issue of ‘misrepresentation’, which is an important ingredient of passing off, and held that no overt mala fide conduct needs to be demonstrated for ‘misrepresentation’ to be established. It was held,.“…this Court has in a plethora of judgments 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.”.The Court also clarified the standard for determining acquiescence and upheld the view taken by the Division Bench of the Bombay High Court that mere silence or inaction, including failure to object to the use and registration of a trademark, does not amount to acquiescence. Some positive act is required in order to infer acquiescence, Justice Nariman clarified in the judgment he authored..It was also brought to the Court’s notice that Wockhardt commenced the sale of its products with the impugned mark despite the interim injunction granted by Bombay High Court. Additionally, the Court was also apprised that Wockhardt obtained a registration for an alternate brand “Chymowok” back in 2009. This brand was adopted only after the injunction order..The Court consequently dismissed the appeal and upheld the injunction order against Wockhardt..Read the judgment: