Delhi High Court - Orders
Infringing Products) Glaxo Group ... vs Manoj Kumar Jain And Ors on 31 May, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~16
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 377/2023 & I.A. No. 10885/2023 (seeking recall of
infringing products)
GLAXO GROUP LIMITED AND ANR. ..... Plaintiffs
Through: Mr. Urfee Roomi, Ms. Janaki Arun
and Ms. Anuja Chaudhri, Advocates.
versus
MANOJ KUMAR JAIN AND ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 31.05.2023 I.A. No. 10882/2023 (seeking leave to file additional documents)
1. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
2. Plaintiffs, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
3. Disposed of.
I.A. No. 10883/2023 (seeking exemption from filing clearer copies or documents with exact margins etc. and from filing originals of the relevant documents)
4. Exemption is granted, subject to all just exceptions.
5. Plaintiffs shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
CS(COMM) 377/2023 Page 1 of 7This 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 08/10/2023 at 06:53:36
6. Disposed of.
I.A. No. 10886/2023 (seeking exemption from pre-litigation mediation)
7. Having regard to the facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd.,1 exemption from attempting pre- institution mediation is allowed.
8. Disposed of.
I.A. No. 10884/2023 (seeking permission to file documents in a sealed cover)
9. Plaintiffs claim confidentiality over sales figures of their products generated by a third-party - IQVIA. It is contended that Plaintiffs are contractually obligated to prevent disclosure of said figures. In absence of any material to substantiate this contention, the Court is unable to perceive any confidentiality in the figures relating to sale of its products which are subject matter of the instant lawsuit. Moreover, these sale figures are relied upon to show extensive use of the subject marks and claim reputation therein to seek restraining orders.
10. The request is disallowed. The documents be filed within four weeks from today.
11. Dismissed.
CS(COMM) 377/2023
12. Let the plaint be registered as a suit.
1DHC Neutral Citation: 2022/DHC/004454.
CS(COMM) 377/2023 Page 2 of 7This 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 08/10/2023 at 06:53:36
13. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the 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 Plaintiffs, without which the written statement shall not be taken on record.
14. Liberty is given to Plaintiffs to file replication(s) within 15 days of the receipt of the written statement. Along with the replication(s), if any, filed by the Plaintiffs, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiffs, 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.
15. List before the Joint Registrar for marking of exhibits on 01st September, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
16. List before Court for framing of issues thereafter.
I.A. No. 10881/2023 (u/Order XXXIX Rules 1 & 2, r/w Section 151 of the Code of Civil Procedure, 1908, for grant of ad interim injunction)
17. Mr. Urfee Roomi, counsel for Plaintiffs, has set up the case as follows: -
17.1. Plaintiffs are both members of GSK group of companies of which GSK plc is the parent company, an entity which is engaged in the field of pharmaceuticals and vaccines. Plaintiffs have a significant global presence in over 150 countries, comprising of a network of manufacturing sites and research and development centres.CS(COMM) 377/2023 Page 3 of 7
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 08/10/2023 at 06:53:36 17.2. Plaintiff is using numerous marks in relation to its pharmaceutical and medicinal preparations, which include (i) ZINETAC, (ii) BETNESOL, (iii) COBADEX, and COBADEX formative marks, including COBADEX CZS,
(iv) PHEXIN, (v) FEFOL and FEFOL formative marks, including FEFOL- Z, and (vi) ELTROXIN [hereinafter "Plaintiffs' Marks"]. Details of the registration of the said marks are enumerated at paragraph 37 of the plaint. 17.3. Pharmaceutical preparations bearing Plaintiffs' Marks enjoy impressive sales around the world and Plaintiffs have also expended large sums of money in the promotion of the said products. On account of such efforts, Plaintiffs' products have developed a stellar reputation and goodwill all over the world and also in India. These products are being sold through a network of distributors and stockists as well as online pharmacies, throughout India.
17.4. The Plaintiffs' Marks and trade dress associated with their products have acquired significant recognition as indicators of the Plaintiffs' pharmaceutical products. The distinctive get-up and layout which form part of the trade dress constitute artistic works under the Copyright Act, 1957, and Plaintiffs hold the exclusive right to use them and reproduce them in any form.
17.5. Defendant No. 1, Manoj Kumar Jain and Defendant No. 2, Vipin Kumar Jain, are partners of Defendant No. 3 partnership firm, Macro Pharmaceuticals. In December, 2022, Plaintiffs learned about Defendants selling tablets bearing the mark "COBAMAC-CZS". Subsequently, an investigation by a firm engaged by the Plaintiffs, revealed that Defendants were also manufacturing and selling pharmaceutical and medicinal preparations under the marks "ZINEMAC", "BETLONE", "ELTHROXY", CS(COMM) 377/2023 Page 4 of 7 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 08/10/2023 at 06:53:36 "FERIFOL-Z" and "PHEXIMAC" [collectively referred to as "Impugned Marks"] under trade dress, which are deceptively similar/ identical to that of the Plaintiffs. An affidavit of the investigator along with the brochure of the products and invoice of sales to this effect is annexed to the plaint. 17.6. Plaintiffs' representatives served cease and desist notice to the Defendants on 13th January, 2023 and 23rd January, 2023, to which there has been no response.
17.7. The Defendants' unauthorized use of Impugned Marks constitutes a clear infringement of the Plaintiffs' Marks. Moreover, the Defendants' adoption of identical or deceptively similar trade dress further emphasizes the extent of infringement and the need to restrain such activities. The Defendants' actions demonstrate a blatant disregard for the exclusive rights of the Plaintiffs and the distinctive elements associated with their products.
18. The Court has considered the afore-noted submissions. The comparison drawn by the Plaintiffs between their marks and the Impugned Marks, at paragraph 17 of the application, is outlined in the table below:
S. DEFENDANTS' MARKS PLAINTIFF'S MARKS CHANGES MADE BY NO. THE DEFENDANTS
1. ZINEMAC ZINETAC The Defendants have merely replaced the letter T in the Plaintiffs ZINETAC mark with the letter M to arrive at the Defendants' ZINEMAC mark.
2. BETLONE BETNESOL Both the marks start with the letter combination BET and contains the letter combination NE, and the letters O and L. The Defendants have merely rearranged the CS(COMM) 377/2023 Page 5 of 7 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 08/10/2023 at 06:53:36 letter -combination NE and removed the letter S from the Plaintiffs BETNESOL mark to form the BETLONE mark.
3. COBAMAC COBADEX The Defendants have merely replaced the letter combination DEX in the Plaintiff's COBADEX mark with the letters MAC to arrive at the Defendants' COBAMAC mark.
4. ELTHROXY ELTROXIN Both trade marks start with the letter combination ELT and contain the letter combination ROX.
The Defendants have merely added the letter H and replaced the letter combination IN with the letter Y in the Plaintiff s ELTROXIN mark to arrive at the to arrive at the Defendants ' ELTHROXY mark.
5. FERIFOL-Z FEFOL-Z The Defendants' FEFOL FERIFOL mark incorporates the Plaintiff's FEFOL mark in its entirety, with the exception of adding the letters RI in the middle.
6. PHEXIMAC PHEXIN The Defendants have merely replaced the letter N with the letter combination MAC In the Plaintiffs PHEXIN mark to arrive at the Defendants' PHEXIMAC mark.
19. As regards the Impugned Marks - "ZINEMAC", "COBAMAC", "ELTHROXY, "FERIFOL-Z" and "PHEXIMAC", the Court finds them to be deceptively similar to Plaintiffs' Marks given the phonetic and structural CS(COMM) 377/2023 Page 6 of 7 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 08/10/2023 at 06:53:36 similarity. Further, Impugned Marks are being used for medicinal preparations which are prescribed for the same therapeutic use, contain same active ingredients and are sold through same trade channels. This indicates Defendants' dishonest intention to ride upon the goodwill of the Plaintiffs and mislead the public into purchasing the Defendants' products. Plaintiffs have made out a prima facie case in their favour for grant of an ad interim ex-parte injunction. In case the same is not granted, Plaintiffs will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiffs and against the Defendants.
20. The Court will address the issue concerning the Impugned Mark "BETLONE" and the Plaintiffs' claim regarding the infringing trade dress of the Defendants' products at a later date, once the summons have been duly served on the Defendants.
21. Accordingly, till the next date of hearing, the Defendants and/ or anybody acting on their behalf are restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, directly or indirectly, any pharmaceutical products bearing the Impugned Marks (except "BETLONE") or any other mark which is identical/ deceptively similar to Plaintiffs' Marks.
22. Compliance of Order XXXIX Rule 3 of CPC be done within one week from today.
23. List on 02nd November, 2023.
SANJEEV NARULA, J MAY 31, 2023/as CS(COMM) 377/2023 Page 7 of 7 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 08/10/2023 at 06:53:36