Delhi High Court - Orders
Alkem Laboratories Limited vs Danish Health Care Pvt Ltd & Anr on 22 September, 2021
Author: C. Hari Shankar
Bench: C. Hari Shankar
$~15 (original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 466/2021 & I.A.12378/2021, I.A.12379/2021,
I.A.12380/2021, I.A.12381/2021
ALKEM LABORATORIES LIMITED ..... Plaintiff
Through: Mr. Sandeep Sethi, Sr. Adv.
Mr. Sagar Chandra, Ms. Ishani Chandra, Ms.
Srijan Uppal, Ms. Mehek Dua, Advs.
versus
DANISH HEALTH CARE PVT LTD & ANR. ..... Defendants
Through: Mr Shailen Bhatia and Ms.
Vibhuti Sharma, Advs.
CORAM:
HON'BLE MR. JUSTICE C. HARI SHANKAR
ORDER
% 22.09.2021
(Video-Conferencing)
I.A.12381/2021 (exemption)
1. For the reasons stated in this application, the requirement of pre-institution mediation is dispensed with.
2. The application is allowed accordingly.
I.A.12380/2021 (exemption)
3. Subject to the plaintiff filing legible copies of any dim or illegible documents on which it may seek to place reliance within four weeks from today, exemption is granted for the present.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 1 of 2 Signing Date:23.09.2021 16:03:374. The application is disposed of.
I.A.12379/2021 (under Order XI Rule 1(4) of the CPC)
5. Subject to the right of the defendants to admit or deny the same, the plaintiff may file additional documents within a period of four weeks from today.
6. The application is disposed of.
CS(COMM) 466/2021 & I.A.12378/2021 (under Order XXXIX Rules 1 & 2 of the CPC)
7. Issue summons.
8. Summons are accepted, on behalf of the defendants, by Mr. Shailen Bhatia, learned Counsel.
9. Written statement, accompanied by affidavit of admission/denial of the documents filed by the plaintiff be filed within four weeks with advance copy to learned Counsel for the plaintiff who may file replication thereto, accompanied by affidavit of admission/denial of the documents filed by the defendants within two weeks thereof.
10. List before the Joint Registrar (Judicial) for completion of pleadings, admission/denial of documents and marking of exhibits on 22nd November, 2021.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 2 of 3 Signing Date:23.09.2021 16:03:3711. The plaintiff alleges infringement, by the defendants, of the plaintiff's registered trademark "ALDIGESIC P", under which the plaintiff manufactures and markets tablets containing Aceclofenac and Paracetamol.
12. The plaintiff claims to have adopted the mark "ALDIGESIC" in 1999 and to be continuously and uninterruptedly using the mark since 2010. The mark also stands registered in Class 5.
13. To support its claim of continuous and uninterrupted user as well as of its reputation in the market, the plaintiff has provided the sales figures of its product bearing the mark "ALDIGESIC P".
14. The plaintiff also claims that it sells its product "ALDIGESIC P" under a distinctive trade dress, in peach colour tablets, packed in 5 x 3 blister packs. The photograph of the plaintiff's package and strip are provided in the plaint thus:
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 3 of 4 Signing Date:23.09.2021 16:03:3715. The defendant manufactures and markets its product, also containing Aceclofenac and Paracetamol, under the brand name of "ALGESIC-P", again in 5 x 3 blister packs of peach colour tablets. The visual similarity in the products of the plaintiff and the defendant have been demonstrated by the following tabular statement to be found in para 28 of the plaint:
PLAINTIFF'S PRODUCT IMPUGNED PRODUCT 'ALDIGESIC P' BLISTER 'ALEGIS P' BLISTER STRIP (FRONT) STRIP (FRONT) PLAINTIFF'S PRODUCT IMPUGNED PRODUCT 'ALDIGESIC P' BLISTER 'ALEGIS P' BLISTER STRIP (BACK) STRIP (BACK) Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 4 of 5 Signing Date:23.09.2021 16:03:37
16. As such, the plaintiff alleges that the defendant has not only infringed the plaintiff's trademark but has also infringed its unique trade dress.
17. The defendant's mark, admittedly, is unregistered as on date.
18. It is in these circumstances that the plaintiff has sought an injunction against manufacturing or marketing, by the defendant, of its Aceclofenac and Paracetamol tablets in packages which are similar to those of the plaintiff and under the brand name "ALGESIC-P" which, alleges the plaintiff, is phonetically and visually similar to the plaintiff's mark "ALDIGESIC P".
19. Mr. Shailen Bhatia, learned Counsel for the defendant, urges, as the sole ground for opposing the plaintiff's plea for injunction, the contention that the plaintiff's mark is invalid, as it is descriptive in nature and is merely a variant of the generic expression "Analgesic" as the constituents of the product are both analgesics. Mr. Bhatia further submits that the plaintiff's registration stands opposed, inter alia, by a German company. The opposition, however, he himself submits, is not on the ground that the mark is descriptive, but on the ground that the prefix "Aldi" is copied from the mark of the opposing German company.
20. Mr. Bhatia does not, however, dispute the position that, till date, the registration of the plaintiff's mark continues to subsist. To support Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 5 of 6 Signing Date:23.09.2021 16:03:37 his submission that the validity of the registration of the plaintiff's mark has to be examined by the court, if raised as a point in defence, even at the stage of grant of injunction, Mr. Bhatia places reliance on the judgment of a coordinate Single Judge of this Court in Lowenbrau AG v. Jagpin Breweries Ltd.1, authored by Sanjeev Khanna, J., as his Lordship then was.
21. Mr. Bhatia has invited my attention to paras 14 and 16 of the report, in the said case, which read thus:
"14. In view of Section 124(5) of the Act, this Court is competent to adjudicate and decide the interlocutory application for injunction. While deciding the interlocutory application in view of language of Sections 28 and 124 of the Act, the Court is competent to take prima facie view on the question of validity of registration of the mark in favour of either side. Merely because the mark is registered, injunction will not automatically follow, when validity of registration is questioned in the written statement/pleadings. While deciding whether injunction should be granted or not, a tentative view is required to be taken on the question of validity of registration and principles for grant of injunction applied. However, final decision on validity of registration is to be taken by the authorities and not by the civil Court. Registration is prima facie regarded as valid but mere registration alone is not conclusive and is not binding on the civil Court when the application for injunction is considered and decided. Onus, however, will be on the party which questions validity of registration to show that the registration is prima facie and tentatively bad or invalid.
*****
16. The said section has to read harmoniously with Sections 28 and 124 of the Act. At the stage of interim application the Court is required to examine question of validity. Registration is prima facie evidence of validity but not conclusive even at this stage. Subsection (2) to Section 31 of the Act, stipulates that registration of the mark will not be 1 (2009) 157 DLT 791 Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 6 of 7 Signing Date:23.09.2021 16:03:37 held to be invalid on the ground that the mark could not have been registered under Section 9 of the Act except upon evidence of distinctiveness and there was failure to submit such evidence before the Registrar, provided evidence is filed in the legal proceedings to prove that the mark had acquired distinctiveness on the date of registration. Legal proceedings will include Suits filed by the registered owner of the mark against third parties. Section 32 of the Act, states that if a mark stands registered contrary to Section 9(1) of the Act and registration is bad for lack of distinctiveness on the date of registration, the party can defend the challenge by showing that they have acquired a distinctive character after registration but before commencement of the legal proceedings. These sections also show that question of distinctiveness can be examined at the stage of grant of interim injunction by the Courts."
22. Having heard learned Counsel for both sides and considered the arguments advanced by them, I find, prima facie, in the first instance, that the trade dress used by the defendants is practically identical to that used by the plaintiff inasmuch as the defendant is also marketing its product in the form of peach colour tablets in 5 x 3 blister packs which are also of a colour similar to that used by the plaintiff. The manner in which the mark "ALGESIC-P" figures on the defendant's packaging is also visually similar to that of the plaintiff. A clear cut case of confusing and deceptive similarity, therefore, exists. There is also, prima facie, every likelihood of an unwary customer of imperfect recollection and average intelligence, who comes across the products of the defendant, after having purchased the product of the plaintiff at an earlier point of time, assuming that the product is the same. The similarity in marks and trade dress would also, prima facie, lead such an unwary customer to presume an association between the product of the defendant and the plaintiff.
Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 7 of 8 Signing Date:23.09.2021 16:03:3723. The plaintiff's mark being registered, a presumption of validity enures in favour of the plaintiff under Section 31 of the Trade Marks Act, 1999 ("the Act"). There can be no cavil with the proposition that, even at the stage of prima facie examination of the prayer for interlocutory injunction, the defendant is entitled to plead invalidity of the plaintiff's mark.
24. Of course, as held in Lowenbrau AG1, the onus in that regard would be on the defendant.
25. At this prima facie stage, however, the right of the defendant to urge this contention, as a defence against the prayer for injunction, is substantially divested by the fact that the defendant itself is marketing its product under the mark "ALGESIC-P". If, therefore, the plaintiff's mark is to be treated as invalid, as being descriptive in nature, that argument would apply even with greater force, in the case of the defendant, whose mark "ALGESIC-P" bears greater similarity to the word "analgesic" than the mark of the plaintiff.
26. In Procter & Gamble Manufacturing (Tianjin) Co. Ltd v. Anchor Health and Beauty Care Pvt. Ltd 2 a Division Bench of this Court has held that the defendant, as an applicant for a mark, cannot plead invalidity of the mark of the plaintiff if similar invalidity would attach to the mark of the defendant, were the arguments were accepted. Para 10 (xix) of the decision may, for this purpose, be 2 Signature Not Verified (2014) 211 DLT 466 Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 8 of 9 Signing Date:23.09.2021 16:03:37 reproduced thus:
"10. We have weighed the rival contentions aforesaid and do not find any merit in this appeal for the following reasons:
***** (xix) As far as the contention, of Automatic Electric Ltd.3 (supra) having stood overruled by Marico Limited4 (supra) is concerned, we have perused Indian Hotels Company Ltd. 5 (supra) and are unable to agree that the reference therein to Automatic Electric Ltd.3 is without affirming the same. It was the contention in Indian Hotels Company Ltd.5 also that the word "JIVA" therein was a descriptive word which could not be protected as a trade mark. The Division Bench however negated the said argument by holding that the appellant therein having itself applied for registration of "JIVA" as a trade mark, could not argue that the mark was descriptive. Reference to Automatic Electric Ltd.3 was made in support of the said reasoning.
Unfortunately, neither Automatic Electric Ltd. nor Indian Hotels Company Ltd. were noticed 3 5 in the subsequent judgment of the Division Bench in Marico Limited.4 We, at this interim stage are inclined to go along with the affirmation by the Division Bench in Indian Hotels Company Ltd.5 with the view in Automatic Electric Ltd.3 (emphasis supplied)
27. Mr. Bhatia submits that his mark is not registered as on date. Moreover, he submits, his application for registration for the mark is "Danish Algesic" and not for the mark "ALGESIC-P". That, however, can make no difference to the application of this principle in law, for the simple reason that the defendant is marketing its product under the name "ALGESIC-P". The mark "Danish Algesic" figures in a font 3 Automatic Electric Ltd. v. R.K. Dhawan (1999) (19) PTC 81 4 Marico Limited v. Agro Tech Foods Ltd. (2010) 174 DLT 279(Del)(DB) 5 Indian Hotels Company Ltd. v. Jiva Institute of Vedic Science & Culture 2008 (37) PTC Signature Not Verified 468 Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 9 of 10 Signing Date:23.09.2021 16:03:37 which is disproportionally similar in size, and, ordinarily, it is a matter of common knowledge that the customer purchases the pharmaceutical product on the basis of the brand name of the product and not on the basis of the brand name of the manufacturer.
28. In any event, the defendant, marketing its product under the brand name "ALGESIC-P", can hardly be held to contend, at least at this prima facie stage, that the plaintiff's mark "ALDIGESIC P" is invalid and, on that ground, contest the prayer for injunction. Nor can the defendant seek to urge that the defendant's mark is as yet unregistered.
29. In view thereof, I am also not convinced with the argument of Mr. Bhatia that the plea of invalidity of the plaintiff's registration can be urged by him solely because the defendant's mark is as yet unregistered. That would go against the very grain of the law laid down in Procter & Gamble Manufacturing2.
30. So far as the aspect of deceptive similarity is concerned, there can, in my view, be no gainsaying that deceptive similarity exists between the product of the plaintiff and that of the defendant, both in respect of the name, and of the trade dress. There is also clear cut phonetic similarity between the name "ALGESIC" and "ALDIGESIC" (Ref: Amritdhara Pharmacy v Satya Deo Gupta6).
31. Mr. Bhatia does not plead priority of user of the mark by the 6 Signature Not Verified AIR 1963 SC 357 Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 10 of 11 Signing Date:23.09.2021 16:03:37 defendant as a defence to the prayer of ad interim injunction. A clear case is made out, therefore, for grant of interlocutory injunction as prayed by the plaintiff.
32. In the circumstances, issue notice in IA 12378/2021.
33. Notice is accepted on behalf of the defendant by Mr Shailen Bhatia.
34. Reply to this application, if any, be filed within two weeks with advance copy to learned Counsel for the plaintiff/applicant, who may file rejoinder thereto, if any, before the next date of hearing.
35. The prayer clause in this application reads thus:
"5. It is therefore respectfully prayed before this Hon'ble Court that it may be pleased to grant the following orders in favour of the Plaintiff and against the Defendants:
i. Pass an ad interim injunction, ex parte or otherwise, restraining the Defendants, their directors, executives, partners or proprietors, as the case may be, their officers, servants and agents or any other persons acting for and on their behalf from manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to any pharmaceutical and/or medicinal preparation and/or such allied and cognate goods under the Impugned Mark/Trade Dress 'ALGESIC/ ALGESIC - P/ALGESIC P - MR/ ALGESIC SP', 'Danish Algesic' and/or any other mark identical and/or deceptively similar mark/ Trade Dress to the Plaintiff's marks 'ALDIGESIC', 'ALDIGESIC - P', 'ALDIGESIC MR', 'ALDIGESIC SP' and 'ALDIGESIC Family of Marks' or doing any other thing amounting to infringement of the Plaintiff's Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 11 of 12 Signing Date:23.09.2021 16:03:37 Trade Marks mentioned in the Plaint including but not limited to Plaintiff's Trade Mark 'ALDIGESIC', 'ALDIGESIC - P', 'ALDIGESIC MR', 'ALDIGESIC SP' and 'ALDIGESIC Family of Marks'; passing off, dilution and unfair competition;
ii. Any other orders as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
36. Till the next date of hearing, there shall be an ad interim injunction in terms of prayer (i) in the application. However, at request of Mr. Bhatia, learned Counsel for the defendants, a week's time is granted to the defendants to remove its products from online platforms and sale thereof.
37. It is made clear, however, that no further packs of the product 'ALGESIC - P' and/or packs deceptively similar to the mark/ Trade Dress of the Plaintiff's product/mark 'ALDIGESIC' or 'ALDIGESIC P' shall be released by the defendants in the market, even if already manufactured till the next date of haring.
38. The Registry is directed to upload this order on the website of this Court and e-mail copies to learned Counsel for the parties as soon as it is corrected and ready and in any event, within 24 hours.
C. HARI SHANKAR, J.
SEPTEMBER 22, 2021 dsn/kr Signature Not Verified Digitally Signed By:SUNIL SINGH NEGI CS(COMM) 466/2021 Page 12 of 12 Signing Date:23.09.2021 16:03:37