Delhi High Court - Orders
Abbott Gmbh & Ors vs Tcsol Biopharma & Ors on 16 July, 2024
$~38
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 573/2024
ABBOTT GMBH & ORS. .....Plaintiffs
Through: Mr. Sandeep Sethi, Sr. Advocate,
Mr. Anirudh Bakhru, Ms. Gunjan
Paharia, Mr. Naqeeb Nawab, Ms.
Neeru Vaid, Ms. Sejal Tayal and
Ms. Apurva Bhutani, Advocates
versus
TCSOL BIOPHARMA & ORS. .....Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 16.07.2024 I.A. 33359/2024 (pre litigation mediation)
1. The plaintiffs vide the present application seek exemption from instituting pre-litigation mediation.
2. Considering the averments made in the present application wherein the plaintiffs seek urgent ad-interim reliefs as also appointment of Local Commissioner and further in view of Yamini Manohar v. T.K.D. Krithi 2023 SCC OnLine 1382 and Chandra Kishore Chaurasia vs. R. A. Perfumery Works Private Limited 2022:DHC: 4454-DB, the plaintiffs are exempted from instituting pre-litigation mediation.
3. Accordingly, the present application is allowed in terms of above CS(COMM) 573/2024 Page 1 of 15 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 09/08/2024 at 21:04:09 and disposed of.
I.A. 33358/2024 (exemption from advance service)
4. Vide the present application the plaintiffs seek exemption from advance service on the defendants
5. Learned senior counsel for the plaintiffs submits that the defendants, if served, are likely to dump the existing stock bearing the impugned trade dress and cap design into the market and that they may also not produce books of account at a later stage as and when a decree for damages or an order for rendition of accounts is passed against the defendants.
6. In view of the statement made by the learned senior counsel for the plaintiffs and the reasons stated in the present application, the present application is allowed and plaintiffs are exempted from affecting advance service to the defendants.
7. Accordingly, the present application is allowed and disposed of. I.A. 33357/2024 (exemption)
8. Exemption allowed, subject to all just exceptions.
9. The application stands disposed of.
I.A. 33356/2024 (additional documents)
10. The plaintiffs seek leave to file additional documents under the Order XI Rule 1(4) ( as amended by the Commercial Court Division and Commercial Appellate Division of High Courts Act, 2015). The plaintiffs will be at liberty to file additional documents at a later stage, strictly as per the provisions of the Commercial Courts Act and the Delhi High Court (Original Side) Rules, 2018.
11. Accordingly, the present application is allowed in terms of above CS(COMM) 573/2024 Page 2 of 15 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 09/08/2024 at 21:04:09 and disposed of.
CS(COMM) 573/2024
12. Let the plaint be registered as a suit.
13. Upon filing of the process fee, issue summons of the suit to the defendants through all permissible modes returnable before the Joint Registrar on 19.09.2024.
14. The summons shall state that the written statement(s) be filed by the defendants within a period of thirty days from the date of the receipt of the summons. Written statement(s) be filed by the defendants along with affidavit(s) of admission/ denial of documents of the plaintiffs, without which the written statement(s) shall not be taken on record.
15. Replication(s) thereto, if any, be filed by the plaintiffs within a period of fifteen days from the date of receipt of written statement(s). The said replication, if any, shall be accompanied by with affidavit(s) of admission/ denial of documents filed by the defendants, without which the replication(s) shall not be taken on record within the aforesaid period of fifteen days.
16. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
17. List before the Joint Registrar for marking exhibits of documents on 19.09.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
18. List before the Court on 14.11.2024.
I.A. 33354/2024 (u/O XXXIX Rules 1 & 2 of the CPC)
19. Vide the present application the plaintiffs seek injunction against CS(COMM) 573/2024 Page 3 of 15 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 09/08/2024 at 21:04:09 the defendants from using the trade dress and/ or any other mark, device, trade dress, logo, domain name or trade name in respect of any goods and services which are identical and/or deceptively similar to the plaintiffs prior, registered and famous PINK and WHITE Bottle and plaintiffs' prior and well-known mark 'THYRONORM' but not limited to pink and white colour combination, used for pharmaceutical and medicinal preparations.
20. The plaintiffs are a part of Abbott Laboratories (hereinafter referred to as 'Abbott'), which is a leading global pharmaceuticals and healthcare company, offering a wide range of world-class healthcare products. Abbott operates and conducts its business in India through its wholly owned subsidiaries Abbott India Limited, who is plaintiff no.1 herein and Abbott Healthcare Private Limited, who is plaintiff no. 2 herein, whereas, the defendant no.1 is a company incorporated under the laws of India and is engaged in the business of pharmaceutical and medicinal preparations.
21. Abbott is amongst the founders of the scientific practice of pharmacy and is one of the leading world-wide health care companies devoted to the discovery, development, manufacture and sale of healthcare CS(COMM) 573/2024 Page 4 of 15 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 09/08/2024 at 21:04:09 products and services, including diagnostics, pharmaceuticals, nutritional and hospital products which traces its roots back to the year 1888. Today, the company has a significant global presence in more than 160 countries, including India. Some of the well-known, famous and popular products of Abbott include THYRONORM, DIGENE, INFLUVAC, DUPHASTON, DUPHALAC, CREON, CREMAFFIN, CREMALAX, ETC. In fact, 'THYRONORM' is one of the top products of the plaintiffs and is a market leader in the hypothyroidism market.
22. Abbott's predecessors, Knoll AG coined the trade mark 'THYRONORM' in the year 1999 to use the same for the treatment of hypothyroidism and trade mark 'THYRONORM' has been extensively in use by the Abbott's predecessors since 1999 when the products under the said mark were launched by Knoll Pharmaceuticals Ltd. Subsequently, Knoll AG underwent a series of changes in title, pursuant to which, the ownership of the trademark 'THYRONORM' was transferred to Abbott group of companies and the same is currently owned by plaintiff no.1 and is marketed and sold in India by plaintiff no.2
23. Abbott's net sales figures in India during the period 2014-2015 till 2022-2023 was as follows:
Year Net Sales (in Rupees Crores)
2014-2015 2237
2015-2016 2580
2016-2017 2902
2017-2018 3273
2018-2019 3640
CS(COMM) 573/2024 Page 5 of 15
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 09/08/2024 at 21:04:09 2019-2020 4093 2020-2021 4310 2021-2022 4913 2022-2023 5348
24. The plaintiffs claim that they have spent approximately 157 crores rupees in the last ten years in promoting the products under their well- known brand 'THYRONORM' in India.
25. In order to protect its right in and to the prior and famous PINK and WHITE bottle in India, the plaintiff no.1 has acquired trademark registration in India, and the details of such registration are as follows:
Trade Mark Registration Date of Class Status
No. Application
5737928 26/12/2022 05 Registered
5737929 26/12/2022 05 Objected
CS(COMM) 573/2024 Page 6 of 15
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 09/08/2024 at 21:04:09 6293256 08/02/2024 05 Objected User detail:
20.01.2020
26. The 'THYRONORM' products are available in a white coloured bottle with a pink flip-top cap design which is created by plaintiff no.3 in the year 2019 and for which the plaintiff no.3 has obtained a design registration for the said design titled "Pill Dose Cap" under Registration number 323851001 dated 22.11.2019 in class 09-07 under the Designs Act, 2000. A pictorial representation of the registered design is as under:-
27. The defendant no.1 is a partnership firm having defendant no.2, defendant no.3 and defendant no.4 as partners and is engaged in the business of pharmaceutical and medicinal preparation.
CS(COMM) 573/2024 Page 7 of 15This 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 09/08/2024 at 21:04:09
28. The present application relates to the alleged trade mark, trade dress and design infringement, passing off etc. by the defendants of trade dress and/ or any other mark, device, trade dress, logo, domain name or trade name bearing the name 'THYRONORM' products, but not limited to pink and white colour combination, used for pharmaceutical and medicinal preparations. A competing differentiation of the products entailing infringement qua the trade mark, trade dress and design of the plaintiffs and the defendants involved herein is extracted below:
CS(COMM) 573/2024 Page 8 of 15This 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 09/08/2024 at 21:04:10
29. As per plaintiffs, they came across the infringing products being manufactured by the defendants and they are selling the infringing products with the impugned trade dress and cap design by the name 'L- THYRONEU' which are available online and are listed on the e- commerce website IndiaMart. Plaintiffs through their representative were able to procure the defendant's infringing products and a valid invoice in support of the said products was also obtained by them. Furthermore, upon examination it was discovered that the infringing products are being manufactured by defendant no.5, i.e. DM Pharma Private Limited.
30. This Court has heard the learned senior counsel for plaintiffs as also has gone through the averments made in the application as well as the CS(COMM) 573/2024 Page 9 of 15 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 09/08/2024 at 21:04:10 documents filed by the plaintiffs, including comparing both the competing products involved.
31. The impugned mark, trade dress and design adopted by the defendants, are similar to the trade mark, trade dress and design of the plaintiffs' product. The impugned mark of the defendants i.e. 'L- THYRONEU' is also phonetically similar to the registered trademark of the plaintiffs' trade mark i.e., 'THYRONORM'. The trade dress of the defendants' product is also structurally similar to that of the plaintiff's trade dress, as the defendants are also using the same colour combination of white and pink.
32. The defendants are thus guilty of riding upon the trademark, trade dress and design of the plaintiffs as they have tried their level best to come as close as possible to those of the plaintiffs.
33. Since the defendants have adopted and are using the impugned mark, trade dress and design for identically similar pharmaceutical products and they will be operating through the very same trade channels and dealing with the same set of customers, it is worrisome if the defendants, under such circumstances are allowed to continue any further.
34. Since the adoption and usage by the defendants is qua the pharmaceutical products and both plaintiffs and the defendants are operating through same trade challenge and dealing with same set of customers. It would be in interest of one and all, including the general public if the defendants are restrained.
35. In any event, the plaintiffs are the prior adopter, prior user and also the prior registrants of the trade mark, trade dress and the design involved.
36. As the facts are pertaining to pharmaceutical products, in view of CS(COMM) 573/2024 Page 10 of 15 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 09/08/2024 at 21:04:10 what is held in Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952, Heinz Italia & Anr. v. Dabur India Ltd. (2007) 6 SCC 1, Brihan Karan Sugar Syndicate Private Limited vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577 and Brittania Industries Ltd. v. ITC India Ltd. (2021) SCC OnLine Del 1489, this Court is to be more cautious and stringent while dealing with matters relating to such pharmaceutical products since there is a likelihood of confusion arising in the minds of general public, if the competing mark, trade dress and design of the defendants are allowed to subsist and /or continue.
37. Therefore, exercising such due diligence and circumspection as per the settled law and in view of the factual matrix involved, especially as the defendants are guilty of blatantly adopting and using the impugned mark, trade dress and design, the rights and interest of the plaintiffs need protection.
38. The plaintiffs have been able to make out a prima facie case with the balance of convenience for grant of an ad interim ex-parte injunction in their favour and against the defendants. Further, if the defendants are not restrained by way of an ad interim ex-parte injunction, there is a likelihood of the plaintiffs suffering irreparable harm, loss, injury and prejudice which cannot be compensated for in terms of money.
39. As such, the defendants are hereby restrained from using, manufacturing, selling, offering for sale, advertising any pharmaceutical preparations or any other packaging which is a colourable reproduction or a substantial imitation of the plaintiffs' impugned mark, trade dress and design as enumerated above. Additionally, it is further directed that the CS(COMM) 573/2024 Page 11 of 15 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 09/08/2024 at 21:04:10 defendants' listings on IndiaMart with the infringing mark, trade dress and design of the plaintiffs' be also taken down within a period of seventy two hours from the receipt of this order.
40. Upon filing of the process fee, issue notice to the defendants by all permissible modes returnable before the Joint Registrar on 19.09.2024.
41. Reply, if any, be filed within a period of thirty days from the date of service. Rejoinder thereto, if any, be filed within a period of fifteen days thereafter.
42. The provisions of Order XXXIX Rule 3 CPC be complied within a period of two weeks from today.
43. List before the Court on 14.11.2024.
I.A. 33355/2024 (under Order XXVI Rule 4, 9 and 10 and Order XXXIX Rule 7 read with Section 151 of the CPC seeking appointment of local commissioner)
44. Learned counsel for the plaintiffs submits that the defendants are aware of the plaintiffs and their products, the infringing materials placed on record are clear evidence of the intention of the defendants to ride upon the goodwill and reputation of the plaintiffs. The plaintiffs believe that the infringing products are stored at the location set out in the memo of parties annexed with the plaint and the defendants are likely to remove all physical evidence or deny their involvement in the infringing activities.
45. In light of the aforenoted factual matrix and in order to preserve the evidence of infringement, it deemed is necessary that Local Commissioner is appointed to visit the premises of the defendant no.1. Accordingly, the following is appointed as Local Commissioner with a direction to visit the premises of the defendants specified against his name:
CS(COMM) 573/2024 Page 12 of 15This 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 09/08/2024 at 21:04:10 S. Name and contact details of Location No. Local Commissioner(s)
1. Mr. Saksham Gupta TCSOL Biopharma, [+91-9536666954] Plot No. 277, First Floor, Phase-1, Industrial Area, Sector 20, Panchkula-134113.
46. The commission be executed with the following directions:
a) Local Commissioner shall be accompanied by the representative of the plaintiffs as well as counsel of the plaintiffs.
b) Local Commissioner shall visit the premises of the defendant no.1 and prepare an inventory and seize all the infringing products and other infringing materials like packaging and promotional material, catalogues, stationery, signboards and any other material whatsoever including labels, signs, prints, packages, moulds, plates, dies, wrappers, receptacles, advertisements, semi-finished, packed, unpacked infringing goods or any other documents, wrapper, etc, bearing impugned trade dress and impugned cap design or any other mark/logo/device/name, which are deceptively of confusingly CS(COMM) 573/2024 Page 13 of 15 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 09/08/2024 at 21:04:10 identical or similar to plaintiffs' 'THYRONORM' products bearing the distinctive PINK & WHITE colour combination, PINK & WHITE Bottle and PILL DOSE CAP Design . The said products shall after seizure, be returned on superdari to the defendant no.1 after taking an undertaking that the defendants shall not tamper with the sealed products.
c) Local Commissioner shall demand disclosure of the whereabouts of other outlets and locations of the defendants where similar goods have been stocked and upon receiving information visit the said premises and follow the aforesaid directions.
d) Local Commissioner is permitted to take a photocopy/ screenshot of all the books of accounts including ledgers, cashbooks, purchases and sales records, etc. in physical, electronic form and place the same on record.
e) To ensure unhindered and effective execution of the commission, the Station House Officer (SHO) of the local police station within whose jurisdiction the premises of defendants lie, is CS(COMM) 573/2024 Page 14 of 15 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 09/08/2024 at 21:04:10 directed to render all necessary assistance and protection to the Local Commissioner, if and when sought.
f) In the event, the Local Commissioner finds the premises of the defendants locked, the same are permitted to break open in the presence of the SHO/ designated police officer.
47. The commission be executed within a period of one week from today, i.e. on or before 23.07.2024.
48. The fee of the Local Commissioner is fixed at Rupees One Lakh Fifty Thousand Only [Rs.1,50,000/-] to be borne by the plaintiffs and paid in advance. The plaintiffs shall also bear expenses for travel of the Local Commissioner and other miscellaneous out of pocket expenses for the execution of the Commission.
49. A copy of this order be provided to the Local Commissioner named hereinabove.
50. Accordingly, the application is allowed and disposed of.
Dasti.
SAURABH BANERJEE, J JULY 16, 2024/akr CS(COMM) 573/2024 Page 15 of 15 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 09/08/2024 at 21:04:10