Delhi High Court - Orders
Abbott Products Operations Ag & Anr vs Atlantis Formulations Private Limited ... on 5 July, 2024
$~13
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 544/2024 & I.A. Nos. 32338/2024, 32339/2024,
32340/2024, 32341/2024, 32342/2024 & 32343/2024
ABBOTT PRODUCTS OPERATIONS AG & ANR. .....Plaintiffs
Through: Mr. Chander M. Lal, Senior Advocate
with Ms. Gunjan Pahadia, Mr.
Naqeeb Nawab, Ms. Neeru Vaid, Ms.
Apurva Bhutani, Mr. Sejal Tayal, Ms.
Neeharika Chauhan, Mr. Ashutosh,
Ms. Annanya Mehan and Mr.
Abhinav Bhalla, Advocates.
versus
ATLANTIS FORMULATIONS PRIVATE LIMITED &
ORS. .....Defendants
Through: None.
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
ORDER
% 05.07.2024 I.A. No. 32341/2024 (Exemption from filing clearer copies)
1. The present is an application under Section 151 of the Code of Civil Procedure, 1908 ("CPC") seeking an exemption from filing pleadings with proper margins, original documents/certified copies, typed copies/documents with appropriate margins and English translation etc..
2. Exemption is granted, subject to all just exceptions.
3. Applicant shall file legible, clear, and original copies of the documents on which the applicant may seek to place reliance within four Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 1 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 weeks from today or before the next date of hearing, whichever is earlier. Accordingly, the present application is disposed of. I.A. No. 32340/2024 (Application to file additional documents)
4. The present application has been filed on behalf of the plaintiff under Order XI Rule 1(4) of the Commercial Courts Act, 2015 read with Section 151 CPC seeking liberty to file additional documents at the appropriate stage.
5. The plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act, 2015 and the DHC (Original Side) Rules, 2018.
6. Accordingly, the present application is disposed of. I.A. No. 32343/2024 (Application for exemption from instituting Pre- litigation Mediation)
7. The present is an application under Section 12A of the Commercial Courts Act, 2015 read with Section 151 of the Code of Civil Procedure, 1908 ("CPC") for exemption from instituting Pre-litigation Mediation.
8. Having regard to the facts of the present case and in the light of the judgment of Supreme Court in the case of Yamini Manohar versus T.K.D. Keerthi, 2023 SCC OnLine SC 1382, and Division Bench of this Court in Chandra Kishore Chaurasia Versus RA Perfumery Works Private Ltd., 2022 SCC OnLine Del 3529, exemption from attempting Pre-litigation Mediation, is granted.
9. Accordingly, the application stands disposed of. I.A. No. 32342/2024 (Application seeking exemption from serving advance suit papers on the defendants)
10. The present is an application under Section 151 CPC seeking Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 2 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 exemption from serving advance suit papers on the defendants.
11. The plaintiff seeks urgent interim relief and has also sought appointment of a Local Commissioner. Therefore, in peculiar facts and circumstances of this case, exemption from effecting advance service upon the defendants is granted.
12. For the reasons stated in the application, the same is allowed and disposed of.
CS(COMM) 544/2024
13. Learned Senior Counsel for the plaintiff submits that additional documents shall be filed within a period of one week. Liberty is granted.
14. Let the plaint be registered as suit.
15. Upon filing of the process fee, issue summons to the defendants by all permissible modes. Summons shall state that the written statement be filed by the defendants within thirty days from the date of receipt of summons. Along with the written statement, the defendant shall also file affidavit of admission/denial of the plaintiff‟s documents, without which, the written statement shall not be taken on record.
16. Liberty is given to the plaintiff to file replication within thirty days from the date of receipt of the written statement. Further, along with the replication, if any, filed by the plaintiff, an affidavit of admission/denial of documents of the defendant, be filed by the plaintiff, without which, the replication shall not be taken on record. If any of the parties wish to seek inspection of the documents, the same shall be sought and given within the timelines.
17. List before the Joint Registrar (Judicial) for marking of exhibits on 14th August 2024.
Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 3 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:5918. List before the Court on 05th November, 2024.
I.A. No. 32338/2024 (Application under Order XXXIX Rule 1 and 2 read with Section 151 CPC for ex-parte ad-interim injunction)
19. The present application has been filed on behalf of the plaintiff under Order XXXIX Rules 1 and 2 read with Section 151 CPC seeking ex-parte ad-interim injunction against the defendants.
20. Mr. Chander Mohan Lal, learned Senior Counsel appearing for the plaintiffs submits that the present suit has been filed for declaration, permanent injunction restraining infringement of trademarks and passing off, dilution, tarnishment, unfair competition, delivery up, damages and rendition of accounts, etc.
21. It is submitted that plaintiffs are a part of Abbott Laboratories, which is a leading global pharmaceuticals and healthcare products company, offering a wide range of world-class healthcare products. Abbott operates and conducts its business in India through its wholly owned subsidiary i.e., Abbott India Limited, plaintiff No. 2 herein.
22. It is submitted that the goodwill and reputation that has accrued over the years due to the extensive sales and marketing of the healthcare products, have accrued to the sole benefit of the plaintiffs. It is further submitted that plaintiff no. 1 is the proprietor of the trademarks and plaintiff no. 2 is the Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 4 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 proprietor of the trademark „DUPHAPRO‟.
23. He submits that the present suit relates to the defendants‟ adoption and offending use of the marks DUPHATIS and DUPHATIC, as follows:-
24. He further submits that the aforesaid impugned marks are used by the defendants for the purpose of selling lactulose solution. The use of the impugned marks by the defendants amounts to passing off/violation of plaintiffs prior well-known DUPHA Marks.
25. Learned Senior Counsel for plaintiffs submits that the defendants have knowingly adopted identical/ nearly identical/deceptively, confusingly, visually and phonetically similar marks DUPHATIS and DUPHATIC for its impugned products, in respect of identical goods.
26. It is submitted that plaintiffs prior registered and famous DUPHA marks as well as the defendants impugned marks, have been tabulated in a table, which is as follows:-
Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 5 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:5927. It is submitted that by virtue of extensive activities carried out worldwide, the plaintiffs have acquired and continue to maintain a strong goodwill and reputation in the market, as well as among the consumers. It is further submitted that ever since its coining and adoption of the mark DUPHAR in 1949, the plaintiffs‟ predecessor in interest has adopted various DUPHA prefix/formative marks with one intention, i.e., to build a DUPHA family of marks, which has been continued by the plaintiffs after acquisition.
28. He also submits that the plaintiff has been expanding its products bearing the DUPHA Marks and during the course of business has adopted various trademarks containing DUPHA as an integral part, including, but not limited to DUPHALAC, DUPHASTON, DUPHABEARS,
29. It is submitted that marks of the plaintiff are well known amongst the members of the trade and the public at large. The images of few well-known products bearing the DUPHA marks, have been given in the plaint, which are reproduced as follows:-
Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 6 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 7 of 15By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 8 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59
30. Learned Senior Counsel for the plaintiff submits that the DUPHA Marks being coined & invented words, are inherently distinctive and exclusively associated with the plaintiffs owing to its extensive, longstanding use and promotion spread across many countries of the world, including in India.
31. It is submitted that in India, the plaintiffs have obtained registrations for the following DUPHA marks:-
32. It is further submitted that the aforesaid trademark registrations are Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 9 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 renewed, valid and subsisting in the Register of Trade Marks in India as well as of the registered date.
33. It is also submitted that the plaintiff has an active and dominant presence on the World Wide Web and is the registered owner of the domain name, https://www.abbott.com and https://www.abbott.co.in, which feature the DUPHA Marks. It is submitted that the plaintiffs also have the following various domain names dedicated to the trademark DUPHALAC as follows:
34. Thus, it is submitted that the present dispute relates to the malafide as well as dishonest adoption and infringing use of the impugned marks „DUPHATIS‟ and „DUPHATIC‟ by the Defendants for the purpose of selling lactulose solution. The impugned marks are partially identical and/or deceptively similar to the plaintiffs prior, registered and famous DUPHA Marks, in particular its registered and famous DUPHALAC mark in respect of identical goods.
35. Learned Senior Counsel for the plaintiffs submits that in and around May 2024, the plaintiffs were made aware of the availability of a product bearing the impugned mark DUPHATIS being sold as a lactulose solution in the markets. Thus, the plaintiffs through their representatives conducted an online search to understand the activities of the defendants.
36. He further submits that the online search revealed that the impugned Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 10 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 product bearing the impugned mark DUPHATIS is listed on the e-commerce platform www.indiamart.com. It is further submitted that the impugned product bearing the impugned mark DUPHATIS is being sold by Atlantis Formulations Private Limited, i.e., defendant no. 1 herein.
37. It is submitted that the representatives of the plaintiffs procured the sample of the lactulose solution sold by the defendants, which bears the impugned mark DUPHATIC, while the order was placed for the impugned mark during DUPHATIS. The photographs of the sample as given in the plaint, are reproduced as follows:-
38. Learned Senior Counsel has also handed over certain documents during the course of hearing, to submit that whenever the word "DUPHA" is put on the search engine Google, all the products of plaintiffs, are shown by the Google search.
Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 11 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:5939. In view of the above circumstances, the plaintiffs have demonstrated a prima facie case for grant of ex-parte ad interim injunction and in case, no ex-parte ad-interim injunction is granted, the plaintiff will suffer an irreparable loss. Further, balance of convenience also lies in favour of the plaintiffs.
40. Accordingly, till the next date of hearing, the defendants, their partners, principals, employees, agents, distributors, franchisees, representatives, assignees and all those connected with the defendants in their business, are restrained from using the impugned marks DUPHATIS and DUPHATIC and/or any other mark, device, logo, domain name or trade name in respect of any goods/ services whatsoever, inter alia, pharmaceutical products which are deceptively or confusingly similar to the plaintiffs earlier and registered DUPHA Marks, including but not limited to in any manner whatsoever, without the permission, consent, license of the plaintiffs, thereby infringing/passing off the rights of the plaintiffs in their registered trademarks.
41. Issue notice to the defendants by all permissible modes, upon filing of process fees, returnable on the next date of hearing.
42. Reply, if any, be filed within a period of four weeks from the date of Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 12 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 service.
43. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
44. Compliance of Order XXXIX Rule 3 CPC, be done within a period of two weeks from today.
45. List on 05th November, 2024.
I.A. No. 32339/2024 (for appointment of Local Commissioner)
46. The present application has been filed on behalf of the plaintiffs under Order XXVI Rule 9 and Order XXXIX Rule 7 read with Section 151 CPC for appointment of a Local Commissioner. It is submitted that in order to preserve evidence of infringement, it is necessary that a Local Commissioner be appointed to visit the premises of the defendants.
47. Accordingly, the following directions are issued:
47.1 Mr. Rajnish Kumar Jha, Advocate (Mob. No. 8800690988), is appointed as Local Commissioner with a direction to visit the following premises of the defendants:
15/3, Lalpur Road, Gwarighat, Jabalpur-482008, Madhya Pradesh, India.
47.2 The Local Commissioner, along with a representative of the plaintiff and its counsel, shall be permitted to enter upon the premises of the defendants mentioned above, or any other location/premises, that may be identified, during the course of commission, in order to conduct the search and seizure.
47.3 The Local Commissioner shall conduct a search at the defendants‟ premises and seize impugned goods bearing any Mark, which are similar to Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 13 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 the plaintiffs‟ goods, bearing the defendants‟ impugned Marks, or any other Mark, which is identical or deceptively similar to the plaintiff‟s trademarks;
including all the offending and other incriminating materials, like packaging and promotional material, catalogues, and any other material whatsoever, including labels, signs, price, packages, wrapper, etc., bearing the impugned marks.
47.4 After seizing the infringing material, the same shall be inventoried, sealed and signed by the Local Commissioner, in the presence of the parties, and released on superdari to the defendants, on their undertaking to produce the same, as and when further directions are issued, in this regard. 47.5 The Local Commissioner shall also be permitted to make copies of the books of accounts including ledgers, cash books, stock registers, invoices, books etc., in so far as they pertain to the infringing products. 47.6 Further, the Local Commissioner shall be permitted to undertake/arrange for photography/ videography of the execution of the commission.
47.7 Both the parties shall provide assistance to the Local Commissioner for carrying out the aforesaid directions.
47.8 In case, any of the premises are found locked, the Local Commissioner shall be permitted to break open the lock(s). 47.9 To ensure an unhindered and effective execution of this order, the Station House Officer ("SHO") of the local Police Station, is directed to render all assistance and protection to the Local Commissioner, if and when, sought.
47.10 The fee of the Local Commissioner, to be borne out by the plaintiff, is fixed at ₹ 2,00,000/-. The plaintiff shall also bear all the expenses for travel Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 14 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59 and lodging of the Local Commissioner and other miscellaneous out-of- pocket expenses for the execution of the commission. The fee of the Local Commissioner shall be paid in advance by the plaintiff. 47.11 The Local Commission shall be executed within a period of two weeks from today. The Local Commissioner shall file the report within a period of two weeks from the date, on which the commission is executed.
48. The order passed today, shall not be uploaded for a period of two weeks.
49. In terms of the forgoing, the present application stands disposed of, in the aforesaid terms.
50. Dasti under the signatures of the Court Master.
MINI PUSHKARNA, J JULY 5, 2024 c Signature Not Verified Digitally Signed CS(COMM) 544/2024 Page 15 of 15 By:AMAN UNIYAL Signing Date:29.07.2024 17:49:59