Glaxosmithkline Pharmaceuticals ... vs Gautam Medilife Private Limited And Anr on 6 September, 2023

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Delhi High Court - Orders

Glaxosmithkline Pharmaceuticals ... vs Gautam Medilife Private Limited And Anr on 6 September, 2023

Bench: Prathiba M. Singh

                                    $~38
                                    *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                                    +                        CS(COMM) 627/2023 and I.A. 17211/2023-17215/2023
                                                GLAXOSMITHKLINE PHARMACEUTICALS
                                                LIMITED                                         ..... Plaintiff
                                                               Through: Ms. Tanya Varma, Mr. Vardan Anand
                                                                        & Ms. Parkhi Rai, Advocates (M-
                                                                        95401 32363)
                                                               versus
                                                GAUTAM MEDILIFE PRIVATE LIMITED AND
                                                ANR.                                      ..... Defendants
                                                               Through: None.
                                                CORAM:
                                                JUSTICE PRATHIBA M. SINGH
                                                         ORDER

% 06.09.2023

1. This hearing has been done through hybrid mode.

I.A.17214//2023 (for exemption)

2. This is an application seeking exemption from filing originals/certified/cleared/typed or translated copies of documents, left side margins, electronic documents, etc. Original documents shall be produced/filed at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.

3. Exemption is allowed, subject to all just exceptions.

4. Accordingly, application is disposed of.

I.A.17213/2023 (for additional documents)

5. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act').

CS(COMM) 627/2023 Page 1 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:47 The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.

6. Application is disposed of.

I.A.17212/2023 (u/S 12A of the Commercial Courts Act, 2015)

7. This is an application seeking exemption from instituting pre- litigation mediation. In view of the orders passed in Chandra Kishore Chaurasia v. R A Perfumery Works Private Ltd, 2022/DHC/004454, the application is allowed and disposed of.

I.A.17215/2023 (for permission to file documents in sealed cover)

8. The Plaintiff seeks permission to file some documents in a sealed cover. Permission is granted. The sealed cover has been brought to the Court. The same has been perused. Let the same be also filed in the Registry and be preserved in the sealed cover. The application is disposed of.

CS(COMM) 627/2023

9. Let the plaint be registered as a suit.

10. Issue summons to the Defendants through all modes upon filing of the Process Fee.

11. The summons to the Defendants shall indicate that the written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

12. Liberty is given to the Plaintiff to file the replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, CS(COMM) 627/2023 Page 2 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:47 filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication 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.

13. List before the Joint Registrar for marking of exhibits on 7th November, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

14. List before Court on 21st February, 2024.

I.A.17211/2023 (u/O XXXIX Rules 1 & 2 CPC)

15. The present suit has been filed by the Plaintiff - Glaxosmithkline Pharmaceuticals Limited seeking protection of the mark 'CEFTUM'. The suit has been filed against Defendant No.1-M/s Gautam Medilife Private Limited and Defendant No. 2-M/s Magma Allianz Laboratories Limited. The Defendants are manufacturing and selling the medicinal preparation under the mark 'CEFOTAM'. The details of the Defendants are under:

Gautam Medilife Private Limited Defendant No.1 B 2/47, Safdarjung enclave, Lower Ground Floor, New Delhi -110029 Also at:

202, Road No. -3/331, New Patliputra Colony, Patna-800013 E-mail: [email protected] Magma Allianz Laboratories Limited Defendant No.2 H.No. 1057, Sector 18-C, Chandigarh-160018 Also at:

CS(COMM) 627/2023 Page 3 of 10

This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:48 Vill. Guruwala, P.O. Bhagani Sahib, Teh. Poanta Sahib, Dist. Sirmour, Himachal Pradesh-173025 E-mail: [email protected]

16. At the outset it has been submitted on behalf of the ld. Counsel for the Plaintiffs that the Defendant has been served with the paper book vide email dated 4th September 2023.

17. The Plaintiff is a prominent member of the GSK group of companies, with its ultimate parent company being GlaxoSmithKline plc. Established in the year 2000 following the merger of Glaxo Welcome plc and SmithKline Beecham plc, GSK has a rich legacy dating back to the year 1715. GSK's impressive global presence extends to more than 150 countries, where it operates commercial activities. The company's dedication to research and development is evident through its continuous emphasis on innovation and excellence.

18. GSK stands as one of the largest pharmaceutical entities in the world, producing and delivering a staggering 1.8 billion packs of medicines in the same year. The Plaintiff avers that for the past eight years, GSK has received the prestigious number one ranking in the Access to Medicine Index, which evaluates pharmaceutical companies worldwide based on their efforts to enhance medicine accessibility in developing regions.

19. GSK has been present in India for over 90 years, with the Plaintiff incorporated in 1924. As a market leader in the pharmaceutical and vaccines sector, the Plaintiff reported turnovers of approximately Rs. 3,200 crores, as report in March 2022. During the financial year 2021-22, the Plaintiff has achieved significant accolades, ranking 1st in the vaccines self-pay market CS(COMM) 627/2023 Page 4 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:48 segment and the dermatology segment in the country. It has also earned the distinction of being the 2nd ranked multi-national pharmaceutical company and the 5th largest pharmaceutical company in terms of volume sales in India. The Plaintiff provides various pharmaceutical products in India, including AUGMENTIN, CALPOL, COBADEX CZS, NEOSPORIN, CEFTUM, SUPACEF, ELTROXIN, BETNOVATE, and T-BACT. The Plaintiff's manufacturing unit is located in Nashik, Maharashtra, spread over 47 acres and manufactures tablets, creams, and ointments. Plaintiff's mark 'CEFTUM'

20. Plaintiff's mark 'CEFTUM' is used for a pharmaceutical preparation consisting of 'cefuroxime' in tablets ('Plaintiff's product'). It is an oral prodrug, and is a bactericidal cephalosporin antibiotic. The active ingredient of the product is Cefuroxime Axetil. The drug is used for treatment of infections caused by susceptible bacteria such as the respiratory tract, urinary tract, skin and soft tissue infections, gonorrhea, acute uncomplicated gonococcal urethritis, and cervicitis.

21. The said mark was adopted by the Plaintiff in 1986, when the first trademark application was filed in India. Plaintiff's products under the said mark were launched in India in March, 1991. The mark 'CEFTUM' is registered in India since 5th June, 1986 bearing no. '455064' in Class 5, and is valid till 5th June 2027. It is a matter of fact for which judicial notice can be taken that 'CEFTUM' is prescribed as a medicine for a large range of infections, and is sold for different doses forms such as 'CEFTUM' 125 mg, 250 mg, 500 mg. There are several variants of the product, with appropriate suffixes that designate its ingredients and its mg description, all of which together constitute the CEFTUM brand. In India, the Plaintiffs CEFTUM CS(COMM) 627/2023 Page 5 of 10 This is a digitally signed order.

22. The sales of the products of the Plaintiff have been placed on record. A perusal of the same would reveal that the global sales of the 'CEFTUM' product is over 36 million dollars and in India the sales are over Rs.290 crores annually in 2022.

23. The Plaintiff's grievance in the present case is that it came across the trademark application of the Defendants sometime in February, 2023 bearing no. 5245951, and was for applied on 13th December 2021. The Plaintiff filed a notice of opposition under Section 21(3) of the Trade Marks Act, 1999 on 24th February 2023 in respect of the mark to which the Defendants filed their counter statement dated 30th May 2023. A comparative table of the Plaintiff's and Defendants' marks are as follows:

Plaintiff's product Defendants' product

24. In terms of the counter statement, the earliest invoice filed by the Defendants are of July, 2022 and September 2022. According to the ld.

CS(COMM) 627/2023 Page 6 of 10

This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:48 Counsel for the Plaintiff, the Defendants listed the products under the mark 'CEFOTAM' for the first time in March, 2023 on their website www.gautammedilife.com. Upon acquiring knowledge of the Defendants' listing of the products on the website through Way-back machine, the Plaintiff issued a legal notice dated 21st March, 2023 in respect of which the Defendants merely replied as under:

"Hi, We filed a counter statement against GlaxoSmithKline Pharmaceuticals Limited notice on IPR Website.

Thanks, Amrita"

25. The said email was addressed by the company from email id [email protected]. Submission of ld. Counsel for the Plaintiff is that the mark 'CEFTUM' and 'CEFOTAM' are almost identical and considering that the product is, in effect, being manufactured for paediatric use, no scope of confusion should be permitted.

26. The Court has perused the matter. None has appeared for the Defendant despite advance service. The pleadings of the opposition proceedings reveal that in the counter statement, the Defendants' claimed user since 2021. The mark 'CEFTUM' has been used by the Plaintiff since 1991 in India and thus, it is one of the leading products of the Plaintiff with extensive sales. The adoption of the mark 'CEFOTAM' by the Defendants, that too for pharmaceutical preparations, which are not identical ingredients to the Plaintiff's preparation, and using the same for the paediatric use, is bound to result in confusion. Considering this situation, if 'CEFTUM' is prescribed, there is possibility that 'CEFOTAM' would be dispensed by the CS(COMM) 627/2023 Page 7 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:48 chemist.

27. The law on this aspect is well settled since the judgment of the Supreme Court in Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952 held that a stricter approach is required in cases of medicinal preparations and products since any confusion between the respective medicinal products is likely to have a disastrous effect on public health. The Supreme Court observed that even a remote chance of confusion in pharmaceutical medicines products has to be avoided. The relevant paragraphs of the judgment read as follows:

"39. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.

40. [...] A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non- medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and CS(COMM) 627/2023 Page 8 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:48 in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health."

28. In the present case, though the active pharmaceutical ingredients belong to the same family of products i.e. Cefuroxime in case of the Plaintiff and Cefixime in case of the Defendants, this Court is of the opinion that they may or may not be used interchangeably. The possibility of deception and substitute dispensing by the chemist is quite high. Therefore, the Plaintiff has made out a prima facie case for grant of injunction. Balance of convenience also lies in favour of the Plaintiff, and they are likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

29. However, since the Defendants are claiming to be using the mark since 2021-2022, they are permitted to exhaust the existing stock bearing the mark 'CEFOTAM', which may be remaining with them. For the time being, the fresh manufacturing under the mark 'CEFOTAM' is being restrained.

30. Considering the above factual legal position, the following interim injunction order is granted in favour of the Plaintiff:

(1) Insofar as the Plaintiff's mark 'CEFTUM' is concerned, the Defendants shall cease all fresh manufacture, sales, advertising of any pharmaceutical preparation under the mark 'CEFOTAM' or 'CEFTUM' including any extensions thereof. (2) Insofar as the existing stock is concerned, the Defendants shall place on record a proper stock statement giving details of the existing stock and the monetary value thereof along with the CS(COMM) 627/2023 Page 9 of 10 This is a digitally signed order.

(3) Defendant No.2- Magma Allianz, the manufacturer of Defendant No.1-Gautam Medilife Pvt. Ltd., shall place on record a complete statement of account of the total manufacturing carried out for the Defendant No.1.

31. Compliance of Order XXXIX Rule 3 CPC be done within one week.

32. Reply to the application be filed within four weeks from the service of the present order along with the paper book. The documents shall be resealed in the sealed cover and sent to Registry.

33. List the application before the Court on the date above fixed.

PRATHIBA M. SINGH, J.

SEPTEMBER 6, 2023/dk/dn CS(COMM) 627/2023 Page 10 of 10 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/09/2023 at 17:08:48

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Delhi High Court - Orders