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Leeford Healthcare Limited vs Vobb Healthcare & Ors on 8 August, 2022

Author: Navin Chawla

Bench: Navin Chawla

                    $~9
                    *        IN THE HIGH COURT OF DELHI AT NEW DELHI
                    +        CS(COMM) 544/2022& IAs 12582/2022, 12583/2022, 12584/2022,
                             12585/2022
                             LEEFORD HEALTHCARE LIMITED                       ..... Plaintiff
                                           Through: Mr.Neeraj Grover, Mr.Mahir
                                                      Malhotra, Mr.Satish Kumar,
                                                      Ms.Mansha Gupta, Advs.

                                                versus

                             VOBB HEALTHCARE & ORS.                              ..... Defendants
                                         Through: None.

                         CORAM:
                         HON'BLE MR. JUSTICE NAVIN CHAWLA
                                            ORDER

                    %                       08.08.2022
                    IA 12585/2022(Exemption)
                    1.   Allowed, subject to all just exceptions.
                    IA 12583/2022

2. This application has been filed seeking exemption from filing pre- institution mediation under Section 12A of the Commercial Courts Act, 2015.

3. For the reasons stated in the application, the same is allowed.

4. This is an application filed on behalf of the plaintiff seeking leave to file additional documents which are not in the power, possession, control or custody of the plaintiff at the moment.

5. The plaintiff may file the additional documents strictly in accordance with the provisions of the law.

6. The application stands disposed of.

CS(COMM) 544/2022

7. Let the plaint be registered as a suit.

8. Issue summons to the defendants to be served through all permitted modes, including electronically, returnable on 6th December, 2022.

9. The summons to the defendant(s) shall indicate that the written statement(s) to the plaint shall be positively filed within a period of 30 days from the date of receipt of summons. Along with the written statement(s), the defendant(s) shall also file the affidavit(s) of admission/denial of the documents of the plaintiff, without which the written statement(s) shall not be taken on record.

10. Liberty is given to the plaintiff to file replication(s) within a period of 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the plaintiff, the affidavit(s) of admission/denial of documents of the defendant(s) be filed by the plaintiff, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

11. Issue notice.

12. On the plaintiff taking steps, let notice be served on the defendants through all permissible modes, including electronically, returnable on 6th December, 2022.

13. Let reply to the application be filed by the defendants within a period of four weeks of receipt of notice. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.

14. It is the case of the plaintiff that the plaintiff is engaged in the Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:08.08.2022 19:48:08 business of developing and marketing/sale of modern branded generic pharmaceutical products, being tablets, capsules, liquids, ointments, injectables, ophthalmic, and is one of the leading pharmaceutical companies in India with the turnover of Rs.1400 crores annually.

15. In early 2005, the plaintiff's predecessor, Ms. Neha Gupta coined and adopted the distinctive trade mark LEEFORD. In February 2006, Ms. Neha Gupta, in order to expand her business, floated the plaintiff company Leeford Healthcare Limited as a promoter Director. Subsequently, all her pre-existing rights in the trade mark LEEFORD were transferred in the name of the plaintiff company. The plaintiff has been using various sub marks for its various products. Over a period of time, in order to associate its source with its sub-marks/brands, the plaintiff adopted various marks with the suffix FORD and has established a huge family of FORD marks in relation to its medicinal and pharmaceutical formulations, details whereof are given in paragraph 6 of the plaint.

16. The plaintiff has also obtained registrations in LEEFORD and/or FORD family of marks, details whereof are given in paragraph 8 of the plaint.

17. The plaintiff asserts that in the year 2016, it adopted a trade mark LEEFORD DERMIFORD in respect of a medicinal cream by taking the first four alphabets DERM from dermatology, being the branch of medicine with respect to the diagnosis and treatment of skin diseases, and the suffix FORD from its FORD family of marks. The plaintiff also obtained registration of the said mark under Registration No. 3184968, which was registered on 30.03.2017 with effective date of 12.02.2016, in the following form:

18. In between, it also started using the prefix NEO to the brand DERMIFORD, and thereafter the prefix NEW, however, since April 2020 it is using the registered mark LEE FORD DERMIFORD.

19. The plaintiff asserts that for the above product alone, its turnover was Rs.33.57 Crore for the financial year 2021-22 alone.

20. The plaintiff is aggrieved of the adoption of the mark NEO DERMIFORD by the defendants. The plaintiff asserts that it became aware of the defendants' mark when it came across samples of medicinal creams being distributed through various channels in February, 2022. Upon enquiry and conducting an online search on the database as maintained by the Registrar of Trade Marks as maintained on www.ipindia.nic.in, the plaintiff learnt that the defendant no.1 had earlier applied for registration of the mark NEO DERMIFORT under application no. 5316996 under Class 5 on a 'proposed to be used' basis. The plaintiff immediately sent a cease and desist notice to the defendant no.1 and defendant no.3. The plaintiff has now learnt that the defendant no.3 has applied for registration of the mark NEO DERMIFORD/ under registration no. 5536432 recently on 19.07.2022 on a 'proposed to be used' basis. The plaintiff, has also come across of the cream of the defendants Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:08.08.2022 19:48:08 bearing same mark.

21. The learned counsel for the plaintiff asserts that though the registration of the mark of the plaintiff was associated with the earlier registered mark LEEFORD of its sister concern - Leeford Medicare Limited, and that the sister concern has voluntarily surrendered its registration, that would have no bearing on the rights of the plaintiff in the impugned mark. Even otherwise, the claim of the plaintiff is also on the basis of passing off.

22. Having considered the submissions made by the learned counsel for the plaintiff, perused the plaint and the documents filed therewith, I am of the opinion that the plaintiff has been able to make out a good prima facie case in its favour. The plaintiff is not only the registered proprietor of the mark of which DEMIFORD is the predominant part, but also the proprietor of the mark with its prior adoption and use. The balance of convenience is also in favour of the plaintiff and against the defendants.

23. The plaintiff is likely to suffer grave injury in case ad-interim injunction is not granted in favour of the plaintiff. This is more so as the goods in question are medicinal and the defendants, on its own showing, has only recently entered the market.

24. Accordingly, the defendants, their directors/ proprietors/ partner, their agents/ stockiest(s) / dealers, representatives and/ or others acting for and on their behalf are by way of this ad-interim order restrained from manufacturing, selling, offering for sale any goods under the marks NEO DERMIFORD / NEO DERMIFORT/ and/ or any other marks/trade dress as may be identical and/ or deceptively similar and/ or phonetically similar and/or structurally similar to the Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:08.08.2022 19:48:08 plaintiff's registered trademark amounting to infringement thereof; and also from manufacturing, selling, offering for sale any goods/ services under the impugned marks NEO DERMIFORD/ /NEO DERMIFORT or any other marks / trade dress which may be identical and/ or deceptively similar to the trade marks DERMIFORD and of the plaintiff, and from reproducing the said marks in any manner on its packaging(s) or website or advertisement/publicity material amounting to passing off of the defendant's goods and/ or business as those of the plaintiff, till further orders.

25. Compliance with Order XXXIX Rule 3 of the Code of Civil Procedure, 1908, be made within one week from today.

26. Dasti.

NAVIN CHAWLA, J AUGUST 8, 2022 RN Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:08.08.2022 19:48:08