Delhi High Court - Orders
Alkem Laboratories Ltd vs Eris Health Care Pvt. Ltd. & Ors on 8 July, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS (COMM) 441/2022 & I.A. 9931/2022
ALKEM LABORATORIES LTD. ..... Plaintiff
Through: Mr. Sandeep Sethi, Sr. Advocate with
Mr. Sagar Chandra, Ms. Ishani
Chandra, Ms. Srijan Uppal and Ms.
Mehek Dua, Advs. (M:9654923558)
versus
ERIS HEALTH CARE PVT. LTD. & ORS. ..... Defendants
Through: Mr. Siddharth Bawa, Mr. Anuj Garg
and Mr. Mohit Sharma, Advocates.
(M:9599446470)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 08.07.2022
1. The present suit for permanent injunction has been filed by the Plaintiff- Alkem Laboratories Ltd. against the Defendants- Eris Health Care Pvt. Ltd., Eris Lifesciences Ltd. and Dr. Smiths Biotech Pvt. Ltd. In the present suit, the Plaintiff alleges violation of its rights in trademarks 'GEMCAL' and 'GEMCAL PLUS' as also its packaging, colour combination of the tablets, layout of blister strip etc. The impugned marks of Defendant No.1 are 'DE-CAL GEM' and 'DE-CAL GEM PLUS' for identical products in similar packaging, colour combination, layout of blister strips, and artistic work, both on cartons and blister strips.
2. The suit was first listed on 4th July, 2022, on which date after noticing the matter in the cause list, Ms. Rajeshwari, ld. Counsel, had appeared for the Defendants. She had handed across to the Court, the print out of the proposed artwork of the packaging which the Defendants intended to adopt. The said artwork was taken on record. Ld. counsel had also submitted that CS (COMM) 441/2022 Page 1 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50 the Defendants had decided to adopt the mark 'DE-CAL' and 'DE-CAL PLUS' along with a completely new packaging with different colour combination, artwork etc.
3. On the basis of the submissions of the parties, the following directions were passed on the said date:
"11. Ms. Rajeshwari, ld. Counsel appearing for the Defendants accepts notice in the application. Copy of the paper book has already been served upon her. At the outset, without prejudice, ld. Counsel has handed across to the Court, the printout of new proposed artwork and new mark of the Defendants. The said artwork is taken on record.
12. The ld. Counsel further submits that the Defendants have decided to change the mark 'DE- CAL GEM' and 'DE-CAL GEM PLUS' as well as the packaging to 'DE-CAL' and 'DE-CAL PLUS' along with a completely new packaging with different colour combination of the cartons, capsules, blister packaging artwork etc. In response, Mr. Sethi, ld. Senior counsel appearing for the Plaintiff submits that the Plaintiff itself suggested this particular artwork to the Defendants which has been handed over to the Court today. He points out the correspondence between the parties in this regard.
13. Without going into the merits of the matter at this stage, since it appears that the Defendants have agreed to change the marks as also the colour combination of the packaging, capsules, artwork, blister strip, etc, it is deemed appropriate to give further 2-3 days' time to the Defendants to place the entire artwork with the new marks 'DE-CAL' and 'DE-CAL PLUS' as also the colour combination of the capsules, and blister packaging on record so that comprehensive orders can be passed. Since the Defendants have agreed to change the marks as also the packaging, no injunction order is being passed today against the Defendants.CS (COMM) 441/2022 Page 2 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50
14. Insofar as the existing stock of products under the mark 'DE-CAL GEM' and 'DE-CAL GEM PLUS' are concerned, the Defendants shall place on record the stock statement alongwith the affidavit of a duly competent and authorized person giving the details of the batch numbers, quantum and monetary value of the products, which have been manufactured and sold under the said mark and packaging."
4. As per the directions given, the Defendants were to place on record the new artwork of the outer packaging, blister packaging and colour combination with the new marks. The Defendants were also directed to file the stock statement of the products which have been manufactured by them under the impugned marks 'DE-CAL GEM' and 'DE-CAL GEM PLUS' along with the affidavit of a duly competent and authorised person.
5. Today, Mr. Siddharth Bawa, ld. Counsel, has appeared for the Defendants and submits that he has been engaged yesterday only. He further submits that the Defendants have given instructions to him on both the aspects of the previous order passed by this Court. Insofar as the stock statement is concerned, he has handed across a photocopy of the signed/notarized affidavit of Mr. Milind Talegaonkar, the authorized signatory of Defendant No.1. As per the said affidavit, the Defendant has given the following batch numbers as stocks which have been manufactured by it and already sold into the retail market. It is further stated in the affidavit that currently there are no stocks of manufactured products under the impugned mark with the Defendant. The extracts of the affidavit are set out herein below:
"3. I say that the Defendant No.1 got the below batches manufactured from third party manufacturer and sold in the market under the mark DE-CAL GEM and DE-CAL GEM PLUS and packaging:CS (COMM) 441/2022 Page 3 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50
Product Batch No. Sale Qty. in PTS
Description Strips (15 (Rs/strip)
tablets per
strip)
DE-CAL GEM DDC21004 28,400 17.66
DE-CAL GEM DDC21005 28,800 17.65
DE-CAL GEM DDC21134 28,688 17.80
DE-CAL GEM DDC21135 28,790 17.77
DE-CAL GEM DDC21183 28,790 19.42
DE-CAL GEM DDC21184 28,770 19.42
DE-CAL GEM DDC21185 28,785 19.42
DE-CAL GEM DDC21257 28,790 19.46
DE-CAL GEM DDC21350 28,790 19.42
DE-CAL GEM DDC21351 25,190 19.66
DE-CAL GEM DDC21352 28,690 20.10
DE-CAL GEM DDC21090 28,490 24.00
PLUS
DE-CAL GEM DDC21136 28,500 24.00
PLUS
DE-CAL GEM DDC21139 28,780 26.40
PLUS
DE-CAL GEM DDC21 182 25,433 26.40
PLUS
DE-CAL GEM DDC21258 28,790 26.48
PLUS
DE-CAL GEM DDC21373 28,790 26.47
PLUS
DE-CAL GEM DDC21374 28,790 27.87
PLUS
DE-CAL GEM DDC21651 16,910 28.49
PLUS
4. I say that no batches under the mark DE-CAL GEM and DE-CAL GEM PLUS other than those depicted in the above table have been billed after 18.05.2022.
5. I say that the Defendant No.1 does not have any stock of the products under the mark DE-CAL GEM and DE-CAL GEM PLUS, in its inventory."CS (COMM) 441/2022 Page 4 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50
6. Insofar as the proposed packaging, artwork, colour combination are concerned, ld. Counsel Mr. Bawa has handed across the proposed packaging of both the products- 'DECAL PLUS' which is the new mark proposed to be adopted instead of 'DE-CAL GEM' and 'DECAL PLUS K2-7' which is the new mark proposed to be adopted instead of 'DE-CAL GEM PLUS'. The proposed packaging is set out below:
Earlier: DE-CAL GEM Now: DECAL PLUS CS (COMM) 441/2022 Page 5 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50 Earlier: DE-CAL GEM PLUS Now: DECAL PLUS K2-7 CS (COMM) 441/2022 Page 6 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50 Proposed packaging for DECAL 60K CS (COMM) 441/2022 Page 7 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50
7. The said proposed packagings are acceptable to ld. Senior Counsel for the Plaintiff, who however submits that insofar as the proposed blister pack is concerned the same is not reproduced in the documents handed over. Ld. Senior Counsel submits that the layout of the blister pack should not be similar to the Plaintiff's blister pack. Ld. counsel for the Defendants submits that blister pack's look and colour combination etc. would be similar to the outer packaging and that he would hand over the proposed representation of the front and rear of both the blister packs by 12th July, 2022 to ld. Counsel for the Plaintiff. However, ld. counsel for the Defendants, upon instructions, submits that insofar the warning on the blister pack is concerned, the same shall continue to be red as the same should be reflected prominently to the consumers in terms of the Drugs and Cosmetics Act, 1940.
8. Insofar as the layout of the capsules is concerned, the following shall be the layout of the capsules, which shall continue to be in red and yellow capsule colour combination:
9. Thus, the above proposed packings are acceptable to the Plaintiff and the Defendants may proceed to adopt the said proposed packagings. In view of the new packaging being adopted by the Defendants as also the marks being changed, the Defendants shall stand permanently restrained from using the marks 'DE-CAL GEM' and 'DE-CAL GEM PLUS' or packaging, CS (COMM) 441/2022 Page 8 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50 colour combination, layout, arrangements etc which is identical or deceptively similar to Plaintiff's 'GEMCAL' and 'GEMCAL PLUS' marks and packing.
10. The suit stands decreed in terms of the present order. Decree sheet be drawn up accordingly. All pending applications are disposed of.
11. Insofar as the blister packaging, layout and colour combination is concerned, list for compliance and placing of new artwork of the said blister packaging on 13th July, 2022.
PRATHIBA M. SINGH, J.
JULY 8, 2022/dk/sk CS (COMM) 441/2022 Page 9 of 9 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:11.07.2022 17:35:50