Delhi High Court - Orders
Sanofi & Anr vs Zanofi Pharmaceutical Pvt. Ltd on 19 December, 2023
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~39
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 881/2023
SANOFI & ANR. ..... Plaintiffs
Through: Mr. Peeyoosh Kalra, Ms. V.
Mohini, Ms. Pragati Agrawal, Mr. Rishabh
Thakur and Ms. Yashwant, Advocates.
versus
ZANOFI PHARMACEUTICAL PVT. LTD ..... Defendant
Through: Mr. Ritesh Kumar Chaudhary,
Mr. Rakesh Mohan and Mr. Niyas
Valiyathodi, Advocates.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 19.12.2023
CS(COMM) 881/2023
1. Plaintiff 2 is Indian subsidiary of Plaintiff 1. The mark
SANOFI was adopted by plaintiffs in 1973 as their house mark and trade mark. Products bearing the mark SANOFI were introduced in the market in 1980s.
2. In India, Plaintiff 1 is the proprietor of the following registered trademarks :-
Trade Mark Registration Class and Goods No. and Date of Application SANOFI 423613 5 June 25, 'pharmaceutical products 1984 for prophylactice;CS(COMM) 881/2023 Page 1 of 27
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 21/12/2023 at 22:21:54 curatives and surgical; Valid and hygienics, dietetics and Registered veterinary; plasters, upto June material for dressings; 25, 2025 material for filling the teeth and for dental impressions; disinfectants, preparations for destructing the bad herbs and the harmful animals.' SANOFI 423612 3 June 25, 'Preparations for 1984 bleaching and other substances for washing, Valid and preparations for cleaning Registered polishing, degreasing and upto June abrasing, soaps, 25, 2025 perfumeries, essential oil, cosmetics, lotions for the hair, dentifrices.' SANOFI -A 1312119 5 VENTIS September 'pharmaceutical and 30, 2004 veterinary products, hygienic products for Valid and medical use, dietetic Registered products for medical use, upto vaccines, baby foodstuffs, September medical plasters, material 30, 2024 for dressings, disinfectants.' 3 'Non-medical products for hygiene care and maintenance of skin, hygienic body products, cosmetic products, soaps, toothpastes.' 1 'Chemicals for use in the manufacturer of pharmaceuticals or cosmetics.' 38 'Telecommunications, radio phonic, electronic, telephone, computer and telecomputer communications, CS(COMM) 881/2023 Page 2 of 27 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 21/12/2023 at 22:21:54 communications by computer terminals of all type including by internet, communication of messages and images by computer, communication of information of a pharmaceutical or medical nature by all methods including by internet.
Communication of information addressed to all the health organizations.' 10 'Surgical and medical apparatus and instruments.' 42 'Providing medical research assistance to medical researchers, rental of laboratory equipment, biological, pharmaceutical and medical research, clinical research.' 1314718 5 October 12, 'pharmaceutical and 2004 veterinary products, hygienic products for Valid and medical use, dietetic renewed products for medical use upto October ,vaccines, baby foodstuffs, 12, 2024 medical plasters, material for dressings, disinfectants.' 3 'Non-medical products for hygiene care and maintenance of skin, hygienic body products, cosmetic products, soaps, toothpastes.' 1 'Chemicals for use in the manufacturer of pharmaceuticals or cosmetics.' CS(COMM) 881/2023 Page 3 of 27 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 21/12/2023 at 22:21:54 38 'Telecommunications, radio phonic, electronic, telephone, computer and telecomputer communications, communications by computer terminals of all type including by internet, communication of messages and images by computer, communication of information of a pharmaceutical or medical nature by all methods including by internet.
Communication of information addressed to all the health organizations.' 10 'Surgical and medical apparatus and instruments.' 42 'Providing medical research assistance to medical researchers, rental of laboratory equipment, biological, pharmaceutical and medical research, clinical research.' SANOFI AVENTIS 1383078 5 September 7, 'pharmaceutical and 2005 veterinary products, hygienic products for Valid and medical use, dietetic Renewed products for medical use upto ,vaccines, baby foodstuffs, September 7, medical plasters, material 2025 for dressings, disinfectants.' 3 'Non-medical products for hygiene care and maintenance of skin, hygienic body products, cosmetic products, soaps, CS(COMM) 881/2023 Page 4 of 27 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 21/12/2023 at 22:21:55 toothpastes.' 1 'Chemicals for use in the manufacturer of pharmaceuticals or cosmetics.' 38 'Telecommunications, radio phonic, electronic, telephone, computer and telecomputer communications, communications by computer terminals of all type including by internet, communication of messages and images by computer, communication of information of a pharmaceutical or medical nature by all methods including by internet.
Communication of information addressed to all the health organizations.' 10 'Surgical and medical apparatus and instruments.' 42 'Providing medical research assistance to medical researchers, rental of laboratory equipment, biological, pharmaceutical and medical research, clinical research.' SANOFI AVENTIS 1383079 5 BECAUSE September 9, 'pharmaceutical products, HEALTH 2005 hygienic products for MATTERS medical use, dietetic Valid and products for medical use, renewed vaccines.' upto 38 September 9, 'Communication of 2025 information of a pharmaceutical or medical CS(COMM) 881/2023 Page 5 of 27 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 21/12/2023 at 22:21:55 nature by all methods including by internet, information services in the pharmaceutical field.' 42 'Medical Services;
Consultations Concerning Pharmaceutical And Health Matters.' SANOFI 3094580 10 November Medical, surgical, dental 05, 2015 and veterinary apparatus and instruments; artificial Valid and limbs, eyes and teeth;
Registered orthopaedic articles; suture
upto materials; imaging
November apparatus for medical use
05, 2025 and X-ray apparatus for
medical use
BETTER LIFE 3260122 9
WITH SANOFI May 13, Downloadable application
2016 in the field of healthcare
Valid and 41
Registered Educational services,
upto May namely, conducting
13, 2026 seminars, conferences,
courses and workshops for patients and professionals in the field of healthcare; providing on-line non-
downloadable magazines in the nature of a blog featuring health and pharmaceutical information in the field of healthcare; reference libraries for literature and documentary records in the healthcare field; book rental; publication of books 44 Providing medical services, diagnostic services CS(COMM) 881/2023 Page 6 of 27 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 21/12/2023 at 22:21:55 SANOFI IRDI- 1 GENZYME 4052170 'Chemical products for the May 28, manufacture of 2018 pharmaceutical or cosmetic substances and preparations; full line of enzymes for laboratory diagnosis and enzymes for industrial use.' 3 'Non-medicinal preparations for hygiene, skin care and care;
personal hygiene products;
cosmetic preparations;
soaps; dentifrices.'
5
'Pharmaceutical and
veterinary preparations
sold on prescription or
over the counter; sanitary preparations for medical purposes; dietetic substances adapted for medical use;
pharmaceutical preparation for use as replacement enzyme and for the prevention of adhesion during medical surgeries; reagents for medical diagnosis;
chemical preparations for medical or pharmaceutical use; vaccines; food for babies; plasters; materials for dressings; teeth filling materials; dental wax; disinfectants; vitamins;
vitamin preparations; dietetic substances adapted for medical use; dietary natural food for medical use and herbal remedies; beverages and foodstuffs for medicinal use; food additives and supplements for medicinal purposes;CS(COMM) 881/2023 Page 7 of 27
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 21/12/2023 at 22:21:55 food supplements for medical use consisting of minerals; nutritional supplements; plant preparations for medical use; food supplements containing proteins, carbohydrates, lipids and/or fibers, or micronutrients such as vitamins and/or minerals, amino acids and/or fatty acids, for medical use; plants and plant extracts for medicinal use;
preparations for making dietetic beverages for medical use or medicated beverages; medicinal preparations; chemical preparations for medicinal purposes; substances for medicinal use; medicated confectionery and candies for medicinal use;
pharmacological preparations for skin care.' 9 'Contact lenses; spectacles and optical glasses;
software relating to health; video cassettes and audio cassettes; CD-ROMs relating to health; medical imaging software.' 10 'Medical, surgical, dental and veterinary apparatus and instruments; artificial limbs; artificial eyes and teeth; orthopedic articles; suture material; apparatus for imaging and X-Ray apparatus for medical use.' 16 'Printed matter on all media; bulletins;
newspapers; magazines;CS(COMM) 881/2023 Page 8 of 27
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 21/12/2023 at 22:21:55 periodicals; books;
journals (magazines);
newspapers; posters
distributed relating to the field of health.' 35 'Advice in business, namely, business management advice;
advice services, namely, provision of commercial information to the consumer regarding the products; advertising and marketing services;
distribution services, namely, distribution of products and information on pharmaceutical products for advertising purposes; administration and management of business affairs in the field of health; distribution of promotional printed material relating to health.' 38 'Telecommunication services and in particular transmission of information by radio, telephone, television, and by computer terminals via Internet sites regarding the health; transmission of information for others relating to health, communication of information for patients or health professionals via computers, via the Internet, television and radio; provision of online chat rooms and online forums for transmission of messages among Internet users concerning health CS(COMM) 881/2023 Page 9 of 27 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 21/12/2023 at 22:21:55 care, medicines and pharmaceutical and medical developments.' 39 'Storage and delivery of products relating to health.' 40 'Custom manufacture of products relating to health.' 41 'Education and training relating to health;
organization of seminars, conferences and congresses in the aforementioned field; publication of magazines, books and guides; training relating to health using electronic and digital tools.' 42 'Scientific and technological services, namely, research in the fields of chemistry, biology and pharmacy, creation and development of software and databases, clinical studies in the field of health, engineering services relating to research and development of enzymes and genetics.' 44 'Medical services;
veterinary services; beauty and hygiene care services;
consultancy in the
pharmaceutical and
healthcare field; provision of medical information and information relating to health via awareness campaigns.' CS(COMM) 881/2023 Page 10 of 27 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 21/12/2023 at 22:21:55 IRDI- 1 5732111 Chemical products used July 01, for manufacture of 2022 pharmaceutical and cosmetic preparations and Protection substances.
Granted
3
Non-medicated
preparations for skin
hygiene, care and
maintenance; body
hygiene products, namely, toiletries; cosmetic products; soaps;
dentifrices.5
Pharmaceutical and veterinary products sold on prescription or over the counter; sanitary products for medicine; dietetic substances for medical use; chemical preparations for medical or pharmaceutical use;
vaccines; food for babies; plasters, materials for dressings; materials for dental fillings and dental impressions; disinfectants;
vitamins, vitamin-based
preparations, dietetic
substances for medical
use; natural dietetic foods and remedies based on medicinal plants for medical or veterinary use; beverages and foodstuffs for medicinal use; food supplements and additives for medicinal use; mineral food supplements for medicinal use; nutritional supplements, plant-based preparations for medicinal use; food supplements CS(COMM) 881/2023 Page 11 of 27 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 21/12/2023 at 22:21:55 containing proteins, carbohydrates, lipids and/or fibers, or micronutrients such as vitamins and/or minerals, amino acids and/or fatty acids, for medical use; plant-based products and plant extracts for medicinal use;
preparations for making dietetic or medicated beverages; medicinal preparations; chemical preparations for medicinal use; substances for medicinal use; medicated candy and confectionery for medicinal use;
pharmacological preparations for skin care.9
Contact lenses; spectacles and optical glasses;
software in the field of health; video and audio cassettes, CD-ROMs in the field of health, medical imaging software;
software as a medical
device [SaMD],
downloadable; software
and applications for
mobile devices; software for Web applications only for information and advisory purposes in the field of health; software for Web applications, for sending, receiving and storing digital data, solely for use in the field of health.10
Surgical, medical, dental and veterinary apparatus CS(COMM) 881/2023 Page 12 of 27 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 21/12/2023 at 22:21:55 and instruments; artificial limbs, eyes and teeth;
orthopedic articles; suture materials; medical imaging apparatus; X-ray apparatus for medical use.35
Business consultancy
services; providing
information and advice to consumers concerning a selection of products and items to be sold;
advertising and marketing services; commercial information for customers on pharmaceutical products; business management and administration in the field of health; distribution of printed promotional material in the field of health; promotion and public awareness campaign services in the field of health; advice on communication strategy (advertising and public relations).38
Telecommunication services and particularly transmission of information by radio, telephone, television and computer terminals on Internet sites concerning health care; transmission of information on behalf of third parties in the field of health; communication of information intended for patients or healthcare professionals via computers, the Internet, CS(COMM) 881/2023 Page 13 of 27 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 21/12/2023 at 22:21:55 television and radio;
providing online chat rooms and electronic bulletin boards for transmission of messages among computer users concerning healthcare, pharmaceutical products and medical and pharmaceutical developments.41
Education and training in the field of health;
organization of seminars, conferences and congresses in the field of health; publishing of magazines, books and guides and dissemination of digital media for information and training in the field of health.42
Scientific and
technological services
namely chemical research, biological and pharmaceutical research, design and development of software and databases, in the field of health;
conducting of clinical trials; scientific information services by providing scientific data.44
Medical services;
veterinary services;
hygienic and beauty care, consulting relating to pharmacy and health;
health monitoring and prevention services and information with respect to CS(COMM) 881/2023 Page 14 of 27 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 21/12/2023 at 22:21:55 health; providing medical information; providing medical information on any medium, including online via the Internet and social networks.At Sanofi, we chase IRDI - 1
miracles of science 5739989 Chemical products used to improve people's August 03, for manufacture of lives 2022 pharmaceutical and cosmetic preparations and Accepted & substances.
Advertised
3
Non-medicated
preparations for skin
hygiene, care and
maintenance; personal
hygiene products;
cosmetic products; soaps; dentifrices.5
Pharmaceutical and veterinary products sold on prescription or over the counter; sanitary products for medicine; dietetic substances for medical use; chemical preparations for medical or pharmaceutical use;
vaccines; food for babies; plasters, materials for dressings; materials for dental fillings and dental impressions; disinfectants;
vitamins, vitamin-based
preparations, dietetic
substances for medical
use; natural dietetic foods and remedies based on medicinal plants for medical or veterinary use; beverages and foodstuffs for medicinal use; food supplements and additives for medicinal use; mineral CS(COMM) 881/2023 Page 15 of 27 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 21/12/2023 at 22:21:55 food supplements for medicinal use; nutritional supplements, plant-based preparations for medicinal use; food supplements containing proteins, carbohydrates, lipids and/or fibers, or micronutrients such as vitamins and/or minerals, amino acids and/or fatty acids, for medical use; plant-based products and plant extracts for medicinal use;
preparations for making dietetic or medicated beverages; medicinal preparations; chemical preparations for medicinal use; substances for medicinal use; medicated candy and confectionery for medicinal use;
pharmacological preparations for skin care.9
Contact lenses; spectacles and optical glasses;
software in the field of health; video and audio cassettes, CD-ROMs in the field of health, medical imaging software;
software as a medical
device [SaMD],
downloadable; software
and applications for
mobile devices; software for Web applications only for information and advisory purposes in the field of health; software for Web applications, for sending, receiving and storing digital data, solely for use in the field of CS(COMM) 881/2023 Page 16 of 27 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 21/12/2023 at 22:21:55 health.10
Surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth;
orthopedic articles; suture materials; medical imaging apparatus; X-ray apparatus for medical use.35
Business consultancy
services; consultation
services, namely,
providing consumer
information relating to
goods and services;
advertising and marketing services; distribution services, namely, delivery of goods and information about pharmaceutical products for advertising purposes; commercial business management and administration in the field of health; distribution of printed promotional material in the field of health; promotion and public awareness campaign services in the field of health; advice on communication strategy (advertising and public relations); advertising services for promoting public awareness concerning health issues.38
Telecommunication services and particularly transmission of information by radio, telephone, television and CS(COMM) 881/2023 Page 17 of 27 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 21/12/2023 at 22:21:55 computer terminals on Internet sites concerning health care; transmission of information on behalf of third parties in the field of health; communication of information intended for patients or healthcare professionals via computers, the Internet, television and radio;
providing online chat rooms and electronic bulletin boards for transmission of messages among computer users concerning healthcare, pharmaceutical products and medical and pharmaceutical developments.41
Education and training in the field of health;
organization of seminars, conferences and congresses in the field of health; publishing of magazines, books and guides and dissemination of digital media for information and training in the field of health.42
Scientific and
technological services
namely chemical research, biological and pharmaceutical research, design and development of software and databases, in the field of health; clinical studies; scientific information services by providing scientific data.CS(COMM) 881/2023 Page 18 of 27
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 21/12/2023 at 22:21:55 44 Medical services;
veterinary services;
hygienic and beauty care, consulting relating to pharmacy and health;
providing information
with respect to health;
providing medical and
scientific information;
providing medical
information on any
medium, including online via the Internet and social networks."
3. To vouchsafe the reach and reputation of the plaintiffs, the plaint provides the annual sales figures of the plaintiffs from 2004- 2005 to 2021-2022. During the year 2021-2022 alone, the sales figures of Plaintiff 2 in India is to the tune of ₹ 2500 crores.
4. The plaintiffs also claim to be expending considerable amounts towards advertising and promotion of their products.
5. The plaintiffs are also owners of various domain names which use SANOFI as their Secondary Level Domain (SLD). The plaintiffs also operate the websites www.sanofi.com and www.sanofi.in since 1995 and 2005 respectively.
6. The plaintiffs are aggrieved by defendant's use of ZANOFI, both as part of its corporate name (which is Zanofi Pharmaceuticals Pvt. Ltd.) as well as the brand/mark under which it sells its products.
7. Mr. Kalra, learned counsel for the plaintiffs submits that there is CS(COMM) 881/2023 Page 19 of 27 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 21/12/2023 at 22:21:55 clear phonetic and structural similarity between SANOFI and ZANOFI, there is every likelihood of confusion in the market. It is quite possible that a drug which is manufactured by the defendant is mistakenly prescribed instead of a drug manufactured by the plaintiff.
8. Mr. Ritesh Kumar Chaudhary, who appears on behalf of the defendant, contests the submissions of Mr. Kalra. He submits that the marks SANOFI and ZANOFI are distinct and different from each other. However, without prejudice to the aforesaid contentions, Mr. Chaudhary submits, on instructions, that his client is willing to discontinue use of the mark ZANOFI, both as his brand name as well as part of its corporate name. He submits that his client would apply immediately with the Registrar of Companies for change of its corporate name to a name which does not incorporate ZANOFI, or any other part which is deceptively similar to SANOFI.
9. Mr. Chaudhary, however, prays that his client may be permitted to exhaust the stocks of pharmaceutical products lying with it, as it is in public interest that the drugs in question are available, for patients who may be in need of them.
10. This Court, therefore, granted Mr. Chaudhary a day's time to place on record a statement regarding batch numbers and the quantities of stocks of drugs bearing their infringing brand name available with it. Mr. Chaudhary has provided the following tabular statement:
CS(COMM) 881/2023 Page 20 of 27This 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 21/12/2023 at 22:21:55 S. Item Name Item BATCH NO BATCH NO No. Stock quantity 1 2 CHYNOL-D inj 7090 A-2362 3 CHYNOL-P 1571 T1090791 TABLET 4 CHYNOL-SP 4964 MMT- MMT-
TABLET 7246(1964) 7263(3000) 5 CLONIC-BETA 91 AT230098 TAB.
6 EMIZA MD 3578 T230757 tablet 7 ESOUP-DSR 655 MA2210003C cap.
8 LUKA-LM KID 3320 MMT-8591 TABLET 9 LUKA-AB CAP 51 C-2202359 10 Luka-LM SYP. 692 ABL-014A 11 Luka-LM tablet 3909 MMT-8064 12 Lysovit drop 339 ZEL-721 15ML 13 Lysovit syp 100 2245 INT23191 ML 14 LYSOVIT 1553 IN23243 SYRP 200 ML 15 LYZOFER XT 3010 MMT-8185 TABLET 16 LYZOVIT gold 2627 A-23331 inj 17 LYZOVIT SYP 706 IN23158 200 ML 18 LYZOVIT 73 SM3951 TABLET 19 Sekal D3 tab 733 SM4091 20 TRAX-1gm 2025 D-23326 21 TRAX-O 200mg 2068 CT1423004A( CT2923002E TABLET 108) (1960) 22 TRAX-O DRY 1128 CD0423063F SYP.
23 TRAX-O 2486 CD0323023A( CD0323052
FORTE SYP 526) A(1960)
24 TRAX-OF 1108 CT0723010G
TABLET
25 Trax-SB 1.5 gm 1565 JDB23- 131
26 URDOLIV -150 2081 ABPT-0388
CS(COMM) 881/2023 Page 21 of 27
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 21/12/2023 at 22:21:55 mg tablet 27 URDOLIV -300 1950 ABPT-0385 mg tablet 28 VERTIZA- 22 GT-3324B 24MG 29 VERTIZA 16mg 585 ST2480A tablet 30 Vertiza 8mg 1312 PT-22756 Tablet 31 ZABKOF-D 1931 FL230005A SYP.
32 ZABKOF-LS 2665 FL230011A
KID SYP
33 ZANOHEAL 1955 167
OINTMENT
Total 60088
11. On seeing the said statement, Mr. Kalra seriously opposes Mr. Chaudhary's request for permission to sell the products in the market, pointing out that there are over 60,000 units of the products in question.
12. The facts stated hereinabove make out a prima facie case of infringement, by the defendant, of the registered trade mark of the plaintiffs. The marks SANOFI and ZANOFI are undoubtedly phonetically nearly identical. Indeed, the phonetic difference between the two words is so slight as to be almost negligible. The marks in question are used for pharmaceutical products. The Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd1, has clearly held that in the case of pharmaceutical products, there must be least possibility of any confusion in the market and that courts have to be doubly cautious in that regard in order to ensure that one drug is not prescribed instead of another, owing to the similarity in their marks or 1 (2001) 5 SCC 73 CS(COMM) 881/2023 Page 22 of 27 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 21/12/2023 at 22:21:55 names.
13. Apropos the prayer of Mr. Chaudhary that his client may be permitted to release the stock of drugs bearing the infringing marks, available with it, into the market, given the quantity of such stocks, I am not convinced that such a prayer should be granted at this stage. The prayer would be considered on the next date of hearing.
14. As the marks are, prima facie, deceptively similar, and as the extent of phonetic similarity also indicates, prima facie, a conscious attempt by the defendant to adopt a trade name which is almost identical to that of the plaintiffs, the Court has necessarily to pass an order of injunction.
15. In the circumstances, let the plaint be registered as a suit.
16. Issue summons. Summons are accepted on behalf of defendant by Mr. Chaudhary.
17. Written statement, accompanied by affidavit of admission and denial of the documents filed by the plaintiffs be filed within 30 days with advance copy to learned Counsel for the plaintiffs, who may file replication thereto, accompanied by affidavit of admission and denial of the documents filed by the defendant within 30 days thereof.
18. List before the learned Joint Registrar (Judicial) for completion of the pleadings, admission and denial of documents and marking of exhibits on 11 March 2024, whereafter the matter would be placed CS(COMM) 881/2023 Page 23 of 27 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 21/12/2023 at 22:21:55 before the Court for case management hearing and further proceedings.
19. List before Court on 20 February 2024.
I.A. 24954/2023 (Order XXXIX Rules 1 and 2 of the CPC)
20. This is an application by the plaintiffs under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive relief.
21. As the case deals with the adoption, in respect of pharmaceutical products, of a mark which is deceptively similar to the mark of the plaintiffs, the Court has to adopt a stand which is somewhat sterner than usual. A prima facie case of infringement and an attempt to pass off its products as those of the plaintiffs by using a deceptively similar mark is made out on the facts. Inasmuch as the defendant is not restrained from using any mark other than ZANOFI, provided such alternate mark does not infringe the plaintiffs' registered trade mark SANOFI, no irreparable prejudice would result to the defendant even if injunction were granted. On the other hand, allowing the defendant to continue with the use of the infringing ZANOFI mark is bound to result in irreparable prejudice to the plaintiffs, as well as recurring chance of confusion in the market. The balance of convenience would also, therefore, be in favour of grant of injunction at this stage.
22. Accordingly, till the next date of hearing, the following interim CS(COMM) 881/2023 Page 24 of 27 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 21/12/2023 at 22:21:55 directions are passed:
(i) The defendant, as well as all others acting on its behalf shall stand restrained from using the mark ZANOFI in respect of pharmaceutical preparations or for any other drugs or services which may be allied or cognate therewith.
(ii) The defendant shall also continue to retain with it the stock of drugs bearing the infringing ZANOFI mark as tabulated in the table extracted in para 10 supra. The defendant shall stand restrained from releasing the said stock in market.
(iii) The defendant shall also apply, forthwith, to the Registrar of Companies for change of its corporate name and removal, therefrom of the infringing ZANOFI. The application would be moved within a period of one week from today. The Registrar of Companies is directed to process the application expeditiously and at any rate within a period of six weeks from today. The defendant shall also provide a copy of this order to the Registrar of Companies along with its application for change of corporate name for compliance.
(iv) The defendant shall forthwith remove from all physical and virtual sites, references to ZANOFI as the mark under which it sells its products.
I.A. 24955/2023 (Exemption from advance service) CS(COMM) 881/2023 Page 25 of 27 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 21/12/2023 at 22:21:55
23. This is an application for exemption from serving advance copy on the defendant.
24. As advance copy has been served and the defendant has appeared, this application has been rendered infructuous and is disposed of.
I.A. 24956/2023 (Exemption)
25. Subject to the plaintiffs filing original documents within 30 days, exemption is granted for the present.
26. The application is disposed of.
I.A. 24957/2023 (Exemption)
27. Subject to the plaintiffs filing legible copies of any dim or illegible documents within 30 days, exemption is granted for the present.
28. The application is disposed of.
I.A. 24958/2023 (Order XI Rule 1(4) of the CPC)
29. This application seeks permission to file additional documents. The plaintiffs are permitted to place additional documents on record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 190 (CPC) as amended by the Commercial Courts Act within six weeks from today.
CS(COMM) 881/2023 Page 26 of 27This 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 21/12/2023 at 22:21:55
30. The application is disposed of accordingly.
I.A. 24959/2023 (Section 12A of the Commercial Courts Act, 2015)
31. In a case such as present, the possibility of any settlement of the dispute by pre-institution mediation is foreclosed. Further the case deals with pharmaceutical preparations bearing infringing marks in respect of which immediate urgent reliefs are necessary. As such, the plaintiffs are granted exemption from the requirement of pre- institution mediation.
32. The application is disposed of accordingly.
I.A. 24960/2023 (Order XXVI Rule 9 of the CPC)
33. In view of the order passed by this Court directing the defendant not to release the pending stocks in the market, Mr. Kalra does not press this application.
34. The application is disposed of accordingly.
35. Dasti.
C. HARI SHANKAR, J.
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