Delhi High Court - Orders
Cipla Health Limited vs Aishwarya Healthcare & Ors on 28 May, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 451/2024
CIPLA HEALTH LIMITED ..... Plaintiff
Through: Ms. Archana Sahadeva and
Mr. Harshit Bhoi, Advocates.
versus
AISHWARYA HEALTHCARE & ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 28.05.2024 I.A. 30631/2024 (seeking permission to file copies/ dim documents as it is and without the prescribed margin)
1. Exemption is granted, subject to all just exceptions.
2. The Applicant shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
3. Accordingly, the application stands disposed of. I.A. 30632/2024 (seeking exemption from instituting pre-litigation mediation)
4. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
5. Disposed of.
12023 SCC OnLine SC 1382.
CS(COMM) 451/2024 Page 1 of 8This 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 30/05/2024 at 21:31:25 CS(COMM) 451/2024
6. Let the plaint be registered as a suit.
7. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement(s), the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
8. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). 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 Plaintiff, 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.
9. List before the Joint Registrar for marking of exhibits on 29th August, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
10. List before Court for framing of issues thereafter. I.A. 30630/2024 (under Order 39 Rule 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908)
11. Ms. Archana Sahadeva, counsel for Plaintiff, contends as follows:
11.1. The present suit has been filed seeking inter-alia seeking permanent injunction restraining the Defendants from using the mark/trade dress/label "OMNICEL/OMNICEL CS(COMM) 451/2024 Page 2 of 8 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 30/05/2024 at 21:31:25 PRO/ / "2 and/or any other mark identical or deceptively similar to the Plaintiff's mark/trade dress/label "OMNIGEL/ " in respect of same products-
Pain relief ointment, amounting to copyright infringement and passing off of the Plaintiff's mark and label.
11.2. Plaintiff, Cipla Health Limited, is a part of the Cipla Group and has undertaken the consumer healthcare business of Cipla Limited since 2015. Plaintiff's products range from pharmaceuticals, healthcare products, over- the-counter products, nutraceuticals etc. 11.3. Plaintiff's predecessor company viz Cipla Limited, concieved and adopted the trademark "OMNI" in the year 1937. Plaintiff's predecessor also obtained registration of the mark " " bearing registration no. 3996 in class 5 in 1942. Subsequently, in the year 2000, the Plaintiff's predecessor adopted the trademark "OMNIGEL" for its topical analgesics, containing the active pharmaceutical ingredient Diclofenac. OMNIGEL is a coined word employing the prefix 'OMNI' which has been used by the Plaintiff's predecessor for a variety of its trade marks such as Omniclav, Omnisoothe, Omnix, Omnixim, Omnitor. The rights in the mark "OMNIGEL" has been assigned to the Plaintiff vide assignment deed dated 8th March, 2023.
11.4. While Plaintiff, as of this date, does not have trademark registration 2 Impugned marks and labels CS(COMM) 451/2024 Page 3 of 8 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 30/05/2024 at 21:31:26 for the mark "OMNIGEL" nonetheless, owing to the long, continuous and uninterrupted use of the mark OMNI / OMNIGEL and its variants, is associated solely and exclusively with the Plaintiff and the common Law rights in the said mark vest exclusively with the Plaintiff. This is evidenced from the annual turnover of the Plaintiff for FY 2023-2024 which amounted to INR 231 crores. Furthermore, the Plaintiff has spent considerable amounts of money towards promotion and marketing of its mark 'OMNIGEL' details whereof are mentioned in paragraph 27 of the application. That apart, Plaintiff has significant presence on social media platforms such as Facebook, Instagram and YouTube. The Plaintiff also maintains and operates the website https://www.omnigel.com/ in order to dispense useful information about its products marketed under the mark OMNIGEL.
11.5. Plaintiff also asserts copyright in the packaginging of the OMNIGEL Products which was designed by an employee working in the Plaintiff's predecessor company in august 2000. The copyright in the said packaging stands transferred in the Plaintiff's name vide assignement deed executed in 2000.
11.6. Defendant No.1 is a pharmaceutical company engaged in the manufacturing and marketing of pharmaceutical and medicinal products under the Impugned marks and labels. Defendant No.2 is the manufacturer of the products marketed by Defendant No.3 beaing the Impugned marks and labels.
11.7. The Plaintiff's representatives first came across the Defendants' product, in and around the 2nd week of May, 2024, bearing nearly identical/deceptively similar marks "OMNICEL/OMNICEL PRO" , which CS(COMM) 451/2024 Page 4 of 8 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 30/05/2024 at 21:31:26 are being sold in a nearly identical trade dress/packaging " / ." The Defendants have been selling their products bearing an identical trade marks and trade dress on various third-party websites such as TATA 1mg etc. Defendant No. 1 also manages and operates the website viz.
https://www.omnicelpro.com/index.html#.3 As is evident, the domain name adopted by Defendant No. 1 incorporates the Impugned trade mark "OMNICEL PRO", in toto. Further investigation has revealed that Defendant No.1 has filed two trademark applications seeking registration of the Impugned Marks "OMNICEL" and "OMNICEL PRO" under application numbers 6076652 and 6076653 respectively in Class 5. The user date claimed in the said application are 6th January, 2017 and 21st November, 2019 respectively. The status of the said trademark registration applications, as reflected on the E-status page of the Trade Marks Registry, is currently "objected"
11.8. The present case is one of triple identity inasmuch as: a) nearly identical trademark and trade dress: OMNIGEL v. OMNICEL/OMNICEL PRO and v.
/ . b) identical products: pain relief ointment in the form of gel v. pain relief ointment in the form of gel c) identical trade channels and identical class of consumers. Owing to the nature of the goods, nature of purchase and class of customers, the adoption 3 Impugned domain name CS(COMM) 451/2024 Page 5 of 8 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 30/05/2024 at 21:31:26 of an identical trade mark/ trade dress by the Defendants is bound to create confusion and deception in the market. Thus, the Defendants' actions amount to infringement of copyright, misrepresentation, dilution and passing off of the Plaintiff's trademark/ trade dress.
12. The Court has considered the aforenoted contentions. A comparison between the two marks and trade dress and their similarities is as follows:
PLAINTIFF'S TRADE MARK IMPUGNED TRADE MARKS
OMNIGEL OMNICEL/ OMNICEL PRO
The Defendants have dishonestly adopted the marks "OMNICEL/OMNICEL PRO" which are virtually identical to the Plaintiff's mark OMNIGEL. In fact, the Defendants have only deleted the alphabet "G" and replaced the same with the letter "C" viz. OMNIGEL v. OMNICEL.
CS(COMM) 451/2024 Page 6 of 8This 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 30/05/2024 at 21:31:26
13. The Plaintiff is the earlier user of their trademark and trade dress, which commenced since the year 2000. Therefore, evidently the Defendant's adoption of nearly identical trade dress and nearly identical trademark for a competing product, is malafide, dishonest and has been done with the intent to deceive the public and ride upon the goodwill and reputation of the Plaintiff and pass off their goods as being that of the Plaintiff.
14. In light of the above, on a prima facie assessment of the facts and contentions, the Court finds that the Plaintiff has made out a prima facie case in its favour and in case no ex-parte ad-interim injunction is granted Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants.
15. Accordingly, till the next date of hearing, Defendants or anybody acting on their behalf are restrained from manufacturing, selling or offering for sale, advertising or promoting the impugned trademark/ trade label "OMNICEL/OMNICEL CS(COMM) 451/2024 Page 7 of 8 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 30/05/2024 at 21:31:26 PRO/ / "or any other mark which is deceptively similar to Plaintiff's trademark "OMNIGEL"/ " ", thereby amounting to infringement of the Plaintiff's copyright as well as passing off of the Plaintiff's mark and label.
16. Till the next date of hearing, Defendants are restrained from transferring / alienating / creating third party rights in the Impugned domain name viz. https://www.omnicelpro.com/.
17. Issue notice to Defendants, by all permissible modes, upon filing of process fee, returnable on the next date of hearing. Reply, if any, be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
18. Compliance of Order XXXIX Rule 3 of CPC be done within two weeks from today.
19. List before the Court on 28th October, 2024.
SANJEEV NARULA, J MAY 28, 2024 nk CS(COMM) 451/2024 Page 8 of 8 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 30/05/2024 at 21:31:26