Delhi High Court - Orders
Glaxosmithkline Biologicals Sa vs Human Biolife India Private Limited And ... on 12 February, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~42
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 948/2023 & IA 26277/2023
GLAXOSMITHKLINE BIOLOGICALS SA ..... Plaintiff
Through: Ms. Shwetasree Majumder, Advocate
with Ms. Tanya Varma, Mr. Vardaan
Anand, Mr. Srinivas Venkat and Ms.
Urvi Tripathi, Advocates.
versus
HUMAN BIOLIFE INDIA PRIVATE LIMITED AND ORS
..... Defendants
Through: Mr. Pranav Sapra, Advocate for
Defendant Nos. 2 & 3.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 12.02.2024 I.A. 26277/2023 (under Order XXXIX Rules 1 and 2 for interim injunction)
1. As per affidavit of service dated 25th January, 2024 filed on behalf of Plaintiff, Defendants have been served. Mr. Pranav Sapra, Advocate, appears on behalf of Defendants No. 2 and 3. However, there is no representation on behalf of Defendant No. 1.
2. Mr. Sapra states that written statement on behalf Defendants No. 2 and 3 is on record, wherein they have pleaded as follows:
2.1. The said Defendants are engaged in the business of manufacturing pharmaceutical formulations/ products in India for third parties on a CS(COMM) 948/2023 Page 1 of 9 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 13/02/2024 at 23:04:22 contractual basis. Defendants No. 2 and 3 entered into separate agreements with Defendant No. 1, both dated 20th March, 2021, for the manufacture of certain pharmaceutical formulations, which included the drugs impugned in the instant suit.
2.2. In terms of Clause No. 10(c) of the said agreements, the name to be printed on the labels, cartons and packaging of the pharmaceutical formulations/products was expressly on the instructions of Defendant No. 1. 2.3. Further, in terms of Clauses No. 14 and 16 of such agreements, it had been assured by Defendant No. 1 that the trademark/trade names adopted for the products are owned by the Defendant No. 1, and Defendants No. 2 and 3 entered into the agreements based on this representation. Thus, in case of any infringement of the Plaintiff's trade mark, Defendant No. 1 would be solely responsible and liable. Moreover, in this regard, the responsibility also lies on Defendant No. 1 to indemnify Defendants No. 2 and 3 for any liability arising out of the infringement of any third party's trademark.
3. In light of the aforenoted stand taken by Defendants No. 2 and 3, Mr. Sapra does not oppose the prayers made in the instant application.
4. As noted above, there is no appearance on behalf of Defendant No. 1. Upon specific query of the Court, both, Ms. Shwetasree Majumder, counsel for Plaintiff, and Mr. Pranav Sapra, counsel for Defendants No. 2 and 3, state that Defendant No. 1 Company is operational and is also participating in the opposition proceedings ongoing before the Trademark Registry, however, they have neither responded to the Plaintiff's legal notice nor appeared before this Court.
5. In light of the above, and especially considering that two of the contested marks are in fact registered in favour of Defendant No. 1, the CS(COMM) 948/2023 Page 2 of 9 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 13/02/2024 at 23:04:22 Court finds it odd that they have chosen not to join the present proceedings despite service of summons. Be that as it may, in absence of Defendant No. 1, the Court has heard the present application ex-parte.
6. Ms. Shwetasree Majumder has presented the following facts and contentions on behalf of the Plaintiff:
6.1. The present suit pertains to Plaintiff's registered trademarks 'ROTARIX', 'AMBIRIX', 'CERVARIX' and 'RIX', as well as their other trademarks using RIX as a suffix in respect of vaccines. 6.2. The Plaintiff Company is well known in the field of vaccine research, development and production. Plaintiff started as a pioneer in production of antibiotics before transitioning to vaccine research and production in the 1950s. Since then, they have continued to be involved in the same throughout its different acquisitions and mergers. From its very inception, the vaccines manufactured by the Plaintiff have contributed to many major successes which includes several worldwide 'firsts'. 6.3. Plaintiff's trademark RIX has been derived from the name of a village in Belgium called 'RIXENSART', which is the site for the Plaintiff's registered office and headquarters. Consequently, Plaintiff has registered a large number of trademarks containing the suffix 'RIX', which is primarily used in respect of vaccines.
6.4. In line with the general custom in the vaccine industry, several of the Plaintiff's trademarks are derived from the disease which the vaccine intends to immunize against, with the proprietary suffix RIX playing a critical part in the arbitrariness of the trademarks. This illustrated at Paragraph No. 18 of the plaint, relevant portion whereof is extracted below:CS(COMM) 948/2023 Page 3 of 9
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 13/02/2024 at 23:04:22 S.No. Trademark Disease
1. VARILRIX Varicella
2. ROTARIX Rotavirus
3. CERVARIX Cervical Cancer
4. HAVRIX Hepatitis A Virus -
(HAY)
5. TYPHERIX Typhoid Fever
6. HIBERIX Haemophilus Influenzae type B (HIB)
7. FLUARIX Flu 6.5. The Plaintiff's 'RIX' suffix trademarks registered in India are delineated at Paragraph No. 19 of the plaint, which are as follows:
S. Trademark Registration Registration Class No. No. date
1. ENGERIX 421433 04/05/1984 05
2. HAVRIX 638704 01/09/1994 05
3. ENGERIX-B 648329 09/12/1994 05
4. TRITANRIX 656030 17/02/1995 05
5. HIBERIX 656493 22/02/1995 05
6. TWINRIX 680441 18/09/1995 05
7. INFANRIX 680452 18/09/1995 05
8. PRIORIX 762435 21/07/1997 05
9. TYPHERIX 798731 16/04/1998 05
10. BOOSTRIX 823941 21/10/1998 05
11. VARILRIX 830146 01/12/1998 05
12. FLUARIX 832562 16/12/1998 05
13. ROTARIX 870321 09/08/1999 05
14. AMBIRIX 876478 15/09/1999 05
15. CERVARIX 1066178 11/12/2001 05 CS(COMM) 948/2023 Page 4 of 9 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 13/02/2024 at 23:04:22
16. SYNFLORIX 1270517 03/03/2004 05
17. RIX 1354194 28/04/2005 05 6.6. Further, the launch dates for the vaccines sold by the Plaintiff in India under the trademark 'RIX' are set out at Paragraph No 20 of the plaint as under:
PRODUCT LAUNCH
DATES
ENGERIX-B (Hepatitis B) 1986
HAVRIX (Hepatitis A) 1998
VARILRIX (Chicken Pox) 1998
HIBERIX (Haemophilus influenza 1999
type B)
TRITANRIX-HR (diphtheria, tetanus, 2000 whooping cough, hepatitis R) TYPHERIX (Typhoid fever) 2000 TWINRIX (Hepatitis A & B) 2002 FLUARIX (Influenza) 2004 PRIORIX (Measles, mumps and 2004 rubella) ROTARIX 2008 CERVARIX 2009 SHINGRIX (Shingles) 2023 6.7. Plaintiff's grievance arises from Defendant No. 1 adopting deceptively similar marks for their pharmaceutical preparations. Defendants No. 2 and 3 have been arrayed as companies which are engaged in manufacturing some of the impugned products. A comparative table between the Plaintiff's marks and the Defendant's impugned marks is as follows:
CS(COMM) 948/2023 Page 5 of 9This 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 13/02/2024 at 23:04:22 SR. PLAINTIFF'S DEFENDANT'S MARKS STATUS DATE OF USE NO. MARKS AND AND USED FOR AS PER USED FOR APPLICATION
1. ROTARIX Opposed by 29.06.2017 Plaintiff Application no.-
870321 Rule 47 filed
Registered since- /
09/08/1999 RUTORIX
(ROTAVIRUS) TM No.-5526002
(PAIN RELIEF
MEDICINE)
2. ROTARIX DROTARIX Objected 28.06.2017
Application no.- TM No.-
870321 5332906 Last hearing
date: 15/02/24
Registered since- (ANTI SPASMODIC)
09/08/1999
(ROTAVIRUS)
3. AMBIRIX AMIRIX Opposed by 19.08.2017
Plaintiff
Application No.- TM No.- 5393214
876478 (ANTI-BIOTIC) Rule 46 filed
Registered since-
15/09/1999
(HEPATITIS A &
B)
4. CERVARIX CEFTARIX Objected 28.06.2017
Application No.- TM No.- 5393216
1066178
(ANTI-BIOTIC)
Registered since-
11/12/2001
(CERVICAL
CANCER)
CS(COMM) 948/2023 Page 6 of 9
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 13/02/2024 at 23:04:23
5. RIX ESOMRIX Opposed by 28.06.2017 Plaintiff Application No.- TM No.- 5393219 1354194 Rule 46 filed (ACID TREATING Registered since- DISEASE AND 28/04/2005 ULCERS)
6. RIX CALCIRIX Objected 28.06.2017 Application No.-
1354194 TM No.-5450854
Registered since- (CALCIUM
28/04/2005 ABSORBANT)
7. RIX MERORIXX Accepted on 28.06.2017
Application No.- 7th February
1354194 TM No.- 5393218 2024
Registered since- (BACTERIAL
28/04/2005 INFECTIONS)
8. RIX PIPTARIX Registered 28.06.2017
Application No.-
1354194 TM No.- 5393215 Cancellation
filed
Registered since- (ANTI BIOTICS)
28/04/2005
9. RIX OFZORIX Registered 16.06.2017
Application No.-
1354194 TM No.-4584969 Cancellation
filed
Registered since- (ANTI BIOTIC)
28/04/2005
10. RIX FLUCORIX No application NA
Application No.- filed
1354194 (ANTI FUNGALS)
Registered since-
28/04/2005
CS(COMM) 948/2023 Page 7 of 9
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 13/02/2024 at 23:04:23 6.8. The impugned marks used by the Defendant No. 1 are nearly identical/ deceptively similar to the Plaintiff's registered marks, and/or use a suffix 'RIX'.
6.9. The Plaintiff has, in similar circumstances, taken steps to protect their trademarks rights and has even been granted an ad-interim injunction in their favour by this Court vide order dated 20th February, 2007 in CS(OS) 320//2007.
7. The Court has noted the aforenoted contentions. Defendant No. 1 is not contesting the instant application whereas Defendants No. 2 and 3 have no serious objection to the prayers made in the same.
8. At this juncture, the Court is limiting its scope of consideration to the Plaintiff's registered trademarks delineated at Sr. Nos. 1, 2, 3 and 4 in the table produced above. A comparison of these registered trademarks against the corresponding impugned products of the Defendants reveals that they are prima facie nearly identical/ deceptively similar. The said marks are phonetically as well as structurally similar, which amplifies the likelihood of creating confusion for the general public. It is also pertinent to note that the present discussion is taking place within the context of pharmaceutical products, which demands that this Court use a stricter yardstick in assessing the similarity between the competing marks, as mandated by the Supreme Court in its landmark judgement in Cadila Health Case Ltd. v. Cadila Pharmaceuticals Ltd.1. Given the fact that the Plaintiff's mark is used in respect of vaccines whereas the impugned products of the Defendants are in respect of injectables/infusions for treatment of various ailments, the possibility of harm arising out of any confusion by a consumer could result CS(COMM) 948/2023 Page 8 of 9 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 13/02/2024 at 23:04:23 in grave and potentially disastrous consequences.
9. In view of the above, and noting the public interest involved in this matter, the Court finds that the Plaintiff has made out a strong prima facie case in their favour and in case injunction is not granted, Plaintiff will suffer irreparable harm; balance of convenience also lies in favour of the Plaintiff and against the Defendants.
10. Accordingly, till the next date of hearing, the Defendants and/or anybody acting on their behalf, are restrained from manufacturing, marketing, selling, offering for sale, advertising, directly or indirectly with pharmaceutical products under the trademarks 'RUTORIX', 'DROTARIX', 'AMIRIX' and/or 'CEFTARIX'.
11. Plaintiff's prayer for injunction in respect of its other pharmaceutical products mentioned in the aforenoted comparative table, which is based on their assertion of rights in respect of the 'RIX' suffix, shall be considered on the next date of hearing.
12. Plaintiff shall communicate this order to the Defendants within a period of one week from today.
13. Re-notify on 4th July, 2024.
SANJEEV NARULA, J FEBRUARY 12, 2024 sapna 1 (2001) 5 SCC 73.
CS(COMM) 948/2023 Page 9 of 9This 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 13/02/2024 at 23:04:23