Delhi High Court - Orders
Glaxo Group Limited vs Udhan Kumar Chordia Partner Of And ... on 4 August, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 182/2022
GLAXO GROUP LIMITED ..... Plaintiff
Through: Mr. Dushyant K. Mahant, Ms. Ufree
Roomi, Ms. Janaki Arun and Mr.
Anubhav Chhabra, Advocates.
(M:9818098835)
versus
UDHAN KUMAR CHORDIA PARTNER OF AND TRADING AS,
MEDOPHARM & ORS. ..... Defendants
Through: Mr. D. Bhattacharyya, Mr. Shivam
Chanana and Ms. Sristhti Verma,
Advocates. (M:9818499377)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 04.08.2022
1. This hearing has been done through hybrid mode.
I.A. 12333-34/2022(for delay)
2. These are two applications filed by the Defendants, for condonation of delay of 36 days in filing the reply to I.A. 4665/2022, as also delay in filing the written statement. The same is filed within the overall 120 days. The delay is condoned.
3. The written statement and the reply are taken on record, subject to the costs being handed over today by the ld. Counsel for the Defendants, by way of a cheque, to the ld. Counsel for the Plaintiff. The costs of Rs. 5,000/-, as imposed by the Joint Registrar, shall be deposited with the Delhi High Court Bar Association Pandemic Relief Fund [DHCBA Pandemic Relief Fund A/c No. 15530110152195, IFSC Code- UCBA0001553, UCO Bank, Delhi CS (COMM) 182/2022 Page 1 of 4 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 16:41:28 High Court].
4. Accordingly, I.A. 12333-34/2022, are disposed of. CS (COMM) 182/2022 & I.As.4665/2022, 4668/2022
5. The Plaintiff has filed the present suit for permanent injunction restraining trademark infringement, passing-off and other reliefs, in respect of its trademark 'BETNESOL', in relation to medicinal products which use the active ingredient 'Betamethasone', against the Defendants. The case of the Plaintiff is that it adopted the mark 'BETNESOL' in 1960, and the mark has been in use since then, continuously and extensively.
6. The grievance of the Plaintiff is that the Defendants have adopted the mark 'BETSONE', for 'pharmaceutical and medicinal preparations'. According to the Plaintiff, the said mark is deceptively similar to the Plaintiff's mark 'BETNESOL', and likely to be confused with the Plaintiff's products. Further, the product of the Defendants with the mark 'BETSONE' also uses the same active ingredient 'Betamethasone'. Ld. Counsel for the Plaintiff further submits that Defendants were well aware of the Plaintiff's mark, and despite having been put to notice, the Defendants did not agree to change the said mark. Hence, the present suit.
7. On 25th March, 2022, when the matter was heard, the Defendants had taken a stand that the registered mark 'BETSONE' has been in use by them for the last 20 years. Notice was issued and the Defendants were directed to maintain the accounts of sales of the products under the mark 'BETSONE'. Vide the same order, the matter was referred to mediation. The relevant extract of the order dated 25th March 2022 is set out below:
"18. In the meantime, the Defendants shall maintain accounts of the sale of CS (COMM) 182/2022 Page 2 of 4 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 16:41:28 the products under the mark 'BETSONE'. The accounts for the financial year 2021-2022 shall be filed by 15th April, 2022. Thereafter the accounts shall be filed on a quarterly basis."
As per the above order, some modifications in the mark were to be considered by the Defendants. Some proposals of marks are stated to have been exchanged during the mediation proceedings. However, it is submitted by the ld. Counsels for the parties that the mediation has failed, and therefore, the case was taken up for hearing today, before the Court.
8. This Court has heard the submissions on behalf of the parties and perused the record. During the course of the hearing, when the proposals discussed in mediation were again considered, it appears that the disputes could be resolved. Ld. Counsels for the parties sought passover to obtain instructions. After obtaining instructions, ld. counsel have reported that the parties have amicably resolved their disputes in respect of the impugned mark 'BETSONE', on the following terms and conditions:
(1) The Defendants have agreed to change the mark 'BETSONE', to 'MEDOSONE' or 'MEDOBET'. The Defendants may adopt any of these two trademarks in place of 'BETSONE'. The Plaintiff has no objection to these proposed marks. (2) The Defendants undertake to exhaust their existing stock of BETSONE products and packaging by 31st March, 2023. Post the said date, there shall be no manufacturing, or sale, of products, bearing the mark 'BETSONE'.
(3) The Defendants have a pending trademark application for the mark 'BETSONE', bearing no. 5304186, in Class 5. The Defendants shall write a letter to the Trademark Registry within CS (COMM) 182/2022 Page 3 of 4 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 16:41:28 two weeks for withdrawing the said mark. A copy of the said letter shall be provided to the ld. Counsel for the Plaintiff, who shall follow up with the Trademark Registry. (4) The Plaintiff has no objection in the Defendants continuing their use of the mark CHLOR BETSONE, registered under application no. 322246 in Class 5, which is stated to be in continued use by the Defendants.
9. The Registrar of trade marks, upon the receipt of the said letter to be written by the Defendants, shall pass an appropriate order and reflect the same on the portal of the Trademark Registry, within four weeks.
10. In view of the amicable resolution arrived at today, there shall be a decree of permanent injunction restraining the Defendants, and any one acting on their behalf, from manufacturing, selling or offering for sale, either online or offline, any medicinal or pharmaceutical products, under the mark 'BETSONE', or any other mark identical or confusingly similar with the Plaintiff's mark BETNESOL, with effect from 1st April, 2023.
11. The suit is decreed in the above terms. Decree sheet be drawn accordingly. Terms and conditions set out above shall form part of the decree.
12. In view of the settlement, 50% of the court fee is directed to be refunded to the Plaintiff, through Counsel.
13. All pending applications are also disposed of. No order as to costs.
PRATHIBA M. SINGH, J.
AUGUST 4, 2022/dk/ss CS (COMM) 182/2022 Page 4 of 4 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:08.08.2022 16:41:28