Delhi High Court - Orders
Glaxo Group Limited And Anr vs Elder Laboratories Limited on 5 July, 2024
$~35
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 547/2024
GLAXO GROUP LIMITED AND ANR. .....Plaintiffs
Through: Ms. Shwetasree Majumdar, Ms.
Tanya Verma, Mr. Vardaan Anand
and Ms. Shilpi Sinha, Advocates
versus
ELDER LABORATORIES LIMITED .....Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 05.07.2024 I.A. 32398/2024 (Exemptions)
1. Exemption allowed, subject to all just exceptions.
2. The application stands disposed of.
I.A. 32400/2024 (Extension of time to file Hash Report)
3. The plaintiffs vide the present application seeks extension of 30 days for filing Hash Report in compliance of Section 63(4)(c) of the Bharatiya Sakshya Adhiniyam, 2023.
4. Accordingly, for the reasons stated therein as also in the interest of justice, the present application is allowed and is thus disposed of. I.A. 32396/2024 (u/S 12A of the Commercial Courts Act)
5. The plaintiffs vide the present application seeks exemption from instituting pre-litigation mediation.
6. Considering that the plaintiffs seek urgent ad-interim relief and in view of the orders passed in Chandra Kishore Chaurasia vs. R. A. CS(COMM) 547/2024 Page 1 of 11 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 09/07/2024 at 21:41:19 Perfumery Works Private Limited 2022/DHC/004454 as also the subsequent view taken by the Hon'ble Supreme Court in Yamini Manohar v. T.K.D. Krithi 2023 SCC OnLine 1382, the plaintiffs are exempted from instituting pre-litigation mediation.
7. Accordingly, the present application is allowed in terms of above and disposed of.
I.A. 32399/2024 (Permission to file documents in sealed cover)
8. The plaintiffs vide the present application seek permission to file some documents in a sealed cover. Let the same be filed in the Registry, which shall be kept in a sealed cover.
9. Accordingly, the present application is allowed in terms of above and disposed of.
I.A. 32397/2024 (Additional Documents)
10. The plaintiffs vide the present application seek leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter referred to as 'Commercial Courts Act'). If the plaintiffs wish to file additional documents at a later stage, they shall file the same 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 and is thus disposed of.
CS(COMM) 547/2024
12. Let the plaint be registered as a suit.
13. Upon filing of the process fee, issue summons of the suit to the defendant through all permissible modes returnable before the next date of CS(COMM) 547/2024 Page 2 of 11 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 09/07/2024 at 21:41:19 hearing before the Joint Registrar on 23.08.2024.
14. The summons shall state that the written statement be filed by the defendant within a period of thirty days from the date of the receipt of the summons. Written statement be filed by the defendant along with affidavit(s) of admission/ denial of documents of the plaintiffs, without which the written statement shall not be taken on record.
15. Replication thereto, if any, be filed by the plaintiffs within a period of fifteen days from the date of receipt of written statement. The said replication, if any, shall be accompanied by with affidavit(s) of admission/ denial of documents filed by the defendant, without which the replication 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 23.08.2024. 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 21.10.2024.
I.A. 32395/2024 (u/O XXXIX Rules 1 & 2 of the CPC)
19. The plaintiffs vide the present suit, primarily seeks protection of the name and packaging/ trade dress of their well-known product name/ marks bearing the names, but not limited to 'AUGMENTIN', 'T-BACT', 'CEFTUM', 'COBADEX', 'ZENTEL', 'ZYLORIC', 'ZOVIRAX', 'ZINTEC', 'ZINETEC', 'FEFOL' and 'FEFOL-Z' used for pharmaceutical and medicinal preparations.
20. The plaintiffs claim to be one of the leading pharmaceutical companies in the world, which has a large number of well-known brands CS(COMM) 547/2024 Page 3 of 11 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 09/07/2024 at 21:41:20 as part of its bouquet whereas, as per plaintiffs, the defendant is a company incorporated under the laws of India and is engaged in the business of pharmaceutical and medicinal preparations.
21. The plaintiffs also claim to be a leading international science-led global healthcare company which traces its roots back to the year 1715. Today, the company has a significant global presence in more than 150 countries, including India.
22. The plaintiffs claim to be engaged in various products. The details of the various valid and subsisting registrations for the plaintiff's marks in India are illustrated below :
S. No. Registration No. Trade Mark Class Registration Date Valid Until
1. 354687 AUGMENTIN 05 23.11.1979 23.10.2027
2. 455064 CEFTUM 05 05.06.1986 05.06.2027
3. 3408369 T-BACT 05 14.11.2016 13.11.2026
4. 261202 FEFOL 05 10.12.1969 10.12.2024
5. 598144 FEFOL-Z 05 26.05.1993 26.05.2027
6. 185987 COBADEX 05 18.07.1958 18.07.2027
7. 361874 ZENTEL 05 14.05.1980 14.05.2028
8. 228726 ZYLORIC 05 05.05.1965 05.05.2027
9. 441253 ZINETAC 05 07.08.1985 07.08.2026
10. 327933 ZOVIRAX 05 17.08.1977 17.08.2025
11. 335612 ZOVIRA-X 05 14.04.1978 14.04.2026
23. The defendant is also engaged in the business of pharmaceutical and medicinal preparation and is in fact, the user of various marks bearing the names, but not limited to, 'AMOXCLAV-625', 'CEFACTUM-500', 'ELECFOL' and 'ZYLONOL'.
CS(COMM) 547/2024 Page 4 of 11This 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 09/07/2024 at 21:41:20
24. The present suit relates to the alleged trade mark infringement, passing off etc. by the defendant for various product names/ marks as used by the plaintiffs. A competing differentiation of the products entailing infringement qua singularly trade mark names, as also singularly packaging/ trade dress and cumulatively both trade mark names and packaging/ trade dress of both the plaintiffs and the defendant involved herein is extracted below :
INFRINGEMENT IN ONLY TRADE MARK NAME S.No. Defendant's Trade Mark Plaintiffs' Trade Mark
1. CEFACTUM CEFTUM
2. COBADEX-FORTE/ COBADEX/COBADEX-
ELDERVIT-FORTE FORTE
3. ZTL ZENTEL
4. ZYLONOL ZYLORIC
5. ZORIVAX ZOVIRAX
6. ZINETAC and ZINTEC ZINETAC
INFRINGEMENT IN ONLY PACKAGING/ TRADE DRESS
S. No. Defendant's Plaintiffs' Packaging/ Trade Dress
Packaging/
Trade Dress
1. AMOXCLAV AUGMENTIN
CS(COMM) 547/2024 Page 5 of 11
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 09/07/2024 at 21:41:22 INFRINGEMENT IN BOTH TRADE MARK NAME AND PACKAGING/ TRADE DRESS S.No. Defendant's Trade Mark Name Plaintiffs' Trade Mark Name and and Packaging/ Trade Dress Packaging/ Trade Dress
1. MUPIVACT T-BACT Ointment Tube Ointment Tube OUTER PACKAGING OUTER PACKAGING
2. ELCEFOL and ELCEFOL-Z FEFOL and FEFOL-Z CS(COMM) 547/2024 Page 6 of 11 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 09/07/2024 at 21:41:23 Front Side Blister Package
25. As per plaintiffs, the defendant has been advertising and selling their products bearing their marks and packaging/ trade dress through their website https://elderpharma.com.
26. The plaintiffs claim that sometime in August, 2022 when the plaintiffs came across the afore-mentioned website of the defendant where several products of the defendant (infringing upon the plaintiffs marks and packaging/ trade dress in 'AUGMENTIN', 'CEFTUM', 'ZYLORIC', 'FEFOL' and 'FEFOL-Z') bearing the names, but not limited to, 'AMOXCLAV-625', 'CEFACTUM-500', 'ELECFOL' and 'ZYLONOL' CS(COMM) 547/2024 Page 7 of 11 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 09/07/2024 at 21:41:23 were being sold.
27. Pursuant thereto, the plaintiffs sent a legal notice dated 22.08.2022 to the defendant, which was followed up by sending a reminder on 09.09.20220. Thereafter, sometime in December, 2023, the plaintiffs came across the products of the defendant under the marks 'ELDERVIT- FORTE', 'ZTL-400' and 'ZYLONOL and as per the plaintiffs, the e- posters of these products on the afore-mentioned website of the defendant indicates that these products are similar to the plaintiffs' products under the marks 'COBADEX-FORTE', 'ZENTEL', 'FEFOL-Z', 'T-BACT' and 'ZOVIRAX'. This prompted the plaintiffs to send another legal notice dated 16.01.2024 to the defendant, however, the plaintiff has not received any response thereto from the defendant till date.
28. After hearing learned counsel for the plaintiffs who has addressed her arguments based on the above as also upon going through the averments made in the application along with the documents on record filed by the plaintiffs and also after comparing all the competing products involved, this Court finds that the various impugned marks of the defendant are pick offs or derivates of the various marks belonging to the plaintiffs and the various packaging/ trade dress adopted with the same colour combination and configurations by the defendant are also blatant copies of those belonging to the plaintiffs.
29. The defendant, while adopting the said marks and packaging/ trade dress, has hardly left any stone unturned to come as close as possible to the marks and packaging/ trade dress of the plaintiffs. In effect, the defendant's marks and packaging/ trade dress for the various products being identically/ deceptively similar to those of the plaintiffs' being CS(COMM) 547/2024 Page 8 of 11 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 09/07/2024 at 21:41:24 visually, phonetically, structurally and otherwise same are thus blatant copies which are offered for sale/ sold through the very same trade channels to the same set of consumers.
30. The adoption thereof is shrouded under suspicion as it is the case of the plaintiffs that they have neither permitted nor authorised the defendant qua any of their marks and packaging/ trade dress. Under such circumstances, it is not wrong to infer that the defendant was well aware of the marks and packaging/ trade dress of the plaintiffs as also the goodwill and reputation attached to them.
31. Allowing the defendant to continue with the impugned marks and packaging/ trade dress can lead to a likelihood of confusion in the minds of general public as regards to the association of the defendant's marks and packaging/ trade dress with that of the plaintiffs'. To advert such situation(s), particularly in the case of pharmaceutical products, it is essential for this Court to adopt a stringent approach for judging the possibility of any such likelihood of confusion and exercise due diligence, circumspection and to be more careful. As per the settled principle of law laid down by the Hon'ble Supreme Court of India in Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952 and reiterated and reaffirmed by it in Heinz Italia & Anr. v. Dabur India Ltd. (2007) 6 SCC 1 and Brihan Karan Sugar Syndicate Private Limited vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577 as well as by this Court in Brittania Industries Ltd. v. ITC India Ltd. (2021) SCC OnLine Del 1489, whereby this Court is to be more cautious and stringent while dealing with matters relating to pharmaceutical products, as involved herein, more so, since confusion may arise in the minds of CS(COMM) 547/2024 Page 9 of 11 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 09/07/2024 at 21:41:25 general public, if the competing marks and packaging/ trade dress of the defendant is allowed to subsist and/or continue.
32. Therefore, considering the factual matrix involved, especially as the defendant is guilty of blatantly copying more than one pharmaceutical products of the plaintiffs in multifarious ways as well as the settled position of law qua such pharmaceutical products, which are involving a public element/ interest, the rights and interest of the plaintiffs in and to its marks and packaging/ trade dress needs to be protected and safeguarded.
33. Cumulatively taken and in view of the fact that this Court is agreeable with the contentions of learned counsel for the plaintiffs qua the aforesaid, 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 defendant.
34. Moreover, under the existing circumstances, in case the defendant is 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 it cannot be compensated for in terms of money.
35. Considering that the various products of the defendant are a look alike imitation of the plaintiffs' marks and packaging/ trade dress in various products, the defendant is 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' marks and packaging/ trade dress as enumerated above. Additionally, it is further directed that the defendant's listings on its website https://elderpharma.com with the infringing marks and packaging/ trade dress of the plaintiffs' be also taken CS(COMM) 547/2024 Page 10 of 11 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 09/07/2024 at 21:41:25 down within a period of seventy two hours from the receipt of this order.
36. Upon filing of the process fee, issue notice to the defendant by all permissible modes returnable on the next date of hearing.
37. 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.
38. The provisions of Order XXXIX Rule 3 CPC be complied within a period of one week from today.
39. List before the Court on 21.10.2024.
SAURABH BANERJEE, J JULY 5, 2024/akr CS(COMM) 547/2024 Page 11 of 11 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 09/07/2024 at 21:41:27