Delhi High Court - Orders
Exphar S A & Anr vs Essphar Private Limited on 26 August, 2025
$~35
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 891/2025
EXPHAR S A & ANR. .....Plaintiffs
Through: Mr. Pravin Anand & Mr. Ashutosh
Upadhyaya, Advocates.
Versus
ESSPHAR PRIVATE LIMITED .....Defendant
Through: Mr. Jitendra Bharti, Ms. Shreya Malik
& Ms. Shivangi Banerjee, Advocates.
CORAM:
HON'BLE MR. JUSTICE TEJAS KARIA
ORDER
% 26.08.2025 I.A. No.20812/2025 (Exemption from pre-institution Mediation)
1. This is an Application filed by the Plaintiffs seeking exemption from instituting pre-litigation Mediation under Section 12A of the Commercial Courts Act, 2015 ("CC Act").
2. As the present matter contemplates urgent interim relief, in light of the judgment of the Supreme Court in Yamini Manohar v. T.K.D. Krithi, 2023 SCC OnLine SC 1382, exemption from the requirement of pre- institution Mediation is granted.
3. The Application stands disposed of.
IA No.20814/2025 (O-XI R-1(4) of the Code of Civil Procedure, 1908)
4. The present Application has been filed on behalf of the Plaintiffs under Order XI Rule 1(4) of the Code of Civil Procedure, 1908 ("CPC") as applicable to commercial suits under the CC Act seeking leave to place on record additional documents.
5. The Plaintiffs are permitted to file additional documents in accordance with the provisions of the CC Act and the Delhi High Court CS(COMM) 891/2025 Page 1 of 15 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 05/09/2025 at 22:56:35 (Original Side) Rules, 2018.
6. Accordingly, the Application stands disposed of.
IA No.20815/20257. The present is an Application under Section 151 of the CPC seeking exemption from filing the requisite Certificate under Section 63(4)(c) of the Bhartiya Sakshya Adhiniyam, 2023 and the Affidavit under Order XI Rule 6(3) of the CPC in respect of the electronic records filed by the Plaintiffs in the present Suit.
8. It is submitted that the Plaintiffs have not been in a position to file Certificate and the Affidavit aforesaid, therefore, the Plaintiffs undertake to file the same during the pendency of the present Suit.
9. In view of the undertaking the Plaintiffs shall file the relevant Certificate and the Affidavit during the pendency of the present Suit.
10. Accordingly, the Application is allowed in the aforesaid terms. IA No.20816/2025 (exemption)
11. Exemption is allowed, subject to all just exceptions.
12. The Application stands disposed of.
IA No.20813/202513. The Plaintiffs have filed the present Application under Order XI Rules 1, 3 and 5 read with Section 151 of the CPC seeking discovery, production and inspection of the following documents / information of the Defendant:
"i. Disclose on affidavit, the various physical stores, either of the Defendant or of its dealers, distributors, manufacturers, resellers and online stores/platforms of the Defendant where infringing activities such as advertising, offering to sell, etc. have been taking place;
ii. Disclose on affidavit since when the Defendant its dealers, distributors, resellers and manufacturers have been using the CS(COMM) 891/2025 Page 2 of 15 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 05/09/2025 at 22:56:35 impugned mark for carrying on their business, both online and through physical stores;
iii. Disclose on affidavit the amount of revenue earned on account of using the impugned mark for manufacturing, advertising, and selling infringing goods, both online and through physical stores.
iv. Disclose on affidavit, the amount of revenue generated and profits made by sale of products under the impugned mark; and v. Auditor's certificate detailing the Defendant's balance sheets, profit and loss statements, and statements of assets, which may be required to ensure that the Defendant does not dispose of or deal with its assets in a manner which may adversely affect the Plaintiffs' ability to recover damages, costs or other pecuniary remedies which the Plaintiffs may be finally entitled to after the trial."
14. Issue Notice. The learned Counsel for the Defendant accepts Notice.
15. Let the Reply to the Application be filed within a period of four weeks from date. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
16. List before the Joint Registrar on 13.10.2025 for completion of service and pleadings.
17. List before this Court on 16.12.2025.
CS(COMM) 891/2025
18. Let the Plaint be registered as a Suit.
19. Issue Summons to the Defendant. The learned Counsel for the Defendant accepts Summons.
20. The Defendant is directed to file the Written Statement within 30 days from the date. Along with the Written Statement, the Defendant shall also file an Affidavit of Admission / Denial of the documents of the Plaintiffs, without which the Written Statement shall not be taken on record.
CS(COMM) 891/2025 Page 3 of 15This 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 05/09/2025 at 22:56:35
21. Liberty is granted to the Plaintiffs to file Replication, if any, within 30 days from the receipt of the Written Statement. Along with the Replication filed by the Plaintiffs, an Affidavit of Admission / Denial of the documents of the Defendant be filed by the Plaintiffs, without which the Replication shall not be taken on record.
22. In case any Party is placing reliance on a document, which is not in their power and possession, its details and source shall be mentioned in the list of reliance, which shall also be filed with the pleadings.
23. If any of the Parties wish to seek inspection of any documents, the same shall be sought and given within the prescribed timelines.
24. List before the Joint Registrar on 13.10.2025 for completion of service and pleadings.
IA No.20811/2025 (u/O XXXIX R-1 & 2 CPC)
25. The Plaintiffs have filed the present Suit for a permanent injunction restraining the Defendant from infringing Plaintiff No. 1's registered Trade Mark ' ' passing off Plaintiff No. 1's Trade Name 'EXPHAR' and Marks ' ', ' '' ' ("Subject Marks").
26. Plaintiff No. l is a company incorporated in Belgium engaged in the manufacture and export of pharmaceutical products particularly to developing countries under the Subject Marks since 1981. Plaintiff No. 2 is one of the main manufacturers of Plaintiff No. l's pharmaceutical products under the Subject Marks. Plaintiff No. 1 has a business interest in Plaintiff No. 2 on account of being a shareholder since 16.06.2004.
CS(COMM) 891/2025 Page 4 of 15This 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 05/09/2025 at 22:56:35
27. The learned Counsel for the Plaintiffs made the following submissions before this Court:
27.1. Plaintiff No. 1 is the prior adopter and user of the coined and arbitrary Trade Name 'EXPHAR' and Device Mark ' ' which have no dictionary meaning and are inherently distinctive.
The features namely, a red, black and white colour combination, a red '+' (plus) symbol ' ', and lower-case lettering, were conceived in the 1980s and have been in continuous use in India since at least 1991. The Trade Name 'EXPHAR' and Device Mark ' ' serve as the flagship House Mark of Plaintiff No. 1 and appears on pharmaceutical products sold and advertised under the Trade Name 'EXPHAR'.
27.2. Plaintiff No. 1 has secured trade mark registrations for the Mark ' ' in India in Classes 5 and 10 and holds WIPO international registrations covering numerous jurisdictions, with the Trade Name 'EXPHAR' forming the dominant part of each registration. These registrations are valid, subsisting, and confer exclusive statutory rights, with 'EXPHAR' being the dominant and source-identifying element.
27.3. The Trade Name 'EXPHAR' is publicized and visible on every CS(COMM) 891/2025 Page 5 of 15 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 05/09/2025 at 22:56:35 product of Plaintiff No. 1 along with the Subject Marks. The Plaintiffs have generated huge sales turnover by the sale of their products under the Subject Marks in various countries. Plaintiff No. 1 has also acquired transborder reputation in the Subject Marks on account of global distribution network and sales. 27.4. Plaintiff No. 1 has also invested huge sums of money and efforts in relation to promotional activities, which includes organizing seminars and campaigns under the Subject Marks contributing to the exponential growth and reputation of the brand 'EXPHAR'. 27.5. The Subject Marks have acquired distinctiveness and have become exclusively associated with the Plaintiffs' pharmaceutical products in India and abroad due to four decades of uninterrupted use, strict quality control, affordability, and global reach. 27.6. The Subject Marks are well-known trade marks within the meaning of Section 2(1)(zg) of the Trade Marks Act, 1999 ("Trade Marks Act") and entitled to protection under Section 11 of the Trade Marks Act. The Device Mark being an original creation solely owned by Plaintiff No. l also constitutes an artistic work within the meaning of Section 2(c) of the Copyright Act, 1957. The Plaintiffs possess both statutory rights under the Trade Marks Act and common law rights arising from prior adoption and extensive use, entitling them to restrain unauthorized use of identical or deceptively similar marks.
27.7. The Plaintiffs first became aware of the Defendant's attempt to adopt the Mark ' ' ("Impugned Mark") in June CS(COMM) 891/2025 Page 6 of 15 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 05/09/2025 at 22:56:35 2024, on noticing Trade Marks Journal No. 2146 dated 04.03.2024 that cited application No. 5043444 dated 14.07.2021 filed by the Defendant for the Impugned Mark on a 'proposed to be used' basis in class 5 for pharmaceutical and medical goods. The Plaintiffs, through counsel, filed a notice of opposition on 04.07.2024, which was taken on record as opposition No. 1330512 and served on the Defendant with a direction to file counterstatement within two months from the date of receipt of the notice dated 21.11.2024. 27.8. The Defendant failed to file any counterstatement within time, and by order dated 17.02.2025, the Deputy Registrar of Trade Marks recorded that application No. 5043444 stands deemed 'Abandoned'. The Plaintiffs were thereby led to believe that the Defendant had desisted from using the Impugned Mark. However, in July 2025, the Plaintiffs discovered that the Defendant was in active commercial use of the Impugned Mark through its two interactive websites, www.essphar.com created on 17.08.2020 and www.essphar.in created in 13.04.2025 and marketplace listings, which necessitated an immediate investigation.
27.9. The investigation revealed that the Defendant is listed on several interactive online trade and pharma directories such as India Mart, Pharma Compass, Just Dial, Tata nexarc, CB Insights. It was found that the Defendant's listings on Just Dial, Tata nexarc and CB Insights were prominently displaying the Impugned Mark. It was also revealed that the Defendant's products bearing the Impugned Mark ("Impugned Products") were listed on the e-retail website of Apollo Pharmacy. The Defendant also has a Linkedln account CS(COMM) 891/2025 Page 7 of 15 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 05/09/2025 at 22:56:35 where they claim to be a Pharmaceutical Research and Development and Supply Company based in Navi Mumbai, Maharashtra and the Impugned Mark was prominently displayed on the said page.
27.10. The telephonic enquiries were also made with one of the dealers of the Defendant in Odisha, namely M/s Bishnupriya Medical Store, Khorda, who confirmed that the Impugned Products could be delivered to Delhi by courier. Pursuant thereto, an order for five strips each of the AZIESS 5OO, ESOMESS D 40, MONESS LS, OFLOESS OZ, PANDOESS 40, PARAESS P, PARAESS SP, REBOESS 20 was placed, an advance payment of ₹3750/- along with packaging charges of ₹50/- was made through UPI payments, and the products were dispatched under Indian Postal Service vide receipt No. 807184303191N dated 29.07.2025. The parcels containing the Impugned Products were delivered in Delhi on 02.08.2025 and 04.08.2025. The physical investigation thus revealed that the Defendant and its dealer based in Odisha agreed to and did supply the Impugned Products into Delhi against advance payment, establishing that the Defendant and its dealers are operating in concert and supplying the products bearing the Impugned Products throughout India, including in Delhi. 27.11. A side-by-side comparison of the Subject Marks with the Impugned Mark as set out in the Application is reproduced below:
CS(COMM) 891/2025 Page 8 of 15This 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 05/09/2025 at 22:56:35 Plaintiff No. 1's trademark Defendant's Mark EXPHAR ESSPHAR i. Both marks have identical color combination of red, black and white;
ii. Both marks are structurally, conceptually and visually identical iii. Both marks are phonetically identical. The Defendant has merely replaced the letter 'X' with 'SS' however, the same does not alter the pronunciation of the words.
iv. Both marks use small letters in the device.
v. Use of red colored plus (+) sign is also identical. vi. The products and services provided under the mark is also identical.
27.12. The Defendant's adoption and use of the Impugned Mark which is ocularly, phonetically, visually and structurally similar to that of Plaintiff No. 1 is dishonest and deliberate. The only alphabetic change is the substitution of X in 'EXPHAR' with SS, which leaves the pronunciation and commercial impression unchanged.
The Impugned Mark is used for the same category of pharmaceutical goods through the same trade channels to the same class of purchasers, which inevitably causes confusion, deception, and association in a field where mistakes can be life-threatening. 27.13. The Defendant has also adopted an almost identical corporate identity, incorporated the Impugned Mark into its Trade Name, embedded it within its Domain Names, and replicated the CS(COMM) 891/2025 Page 9 of 15 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 05/09/2025 at 22:56:35 Plaintiffs' distinctive user interface across its own websites and promotional materials. The duplication of the red plus sign, the identical red, black, and white colour scheme, and the small-letter stylisation are conscious design choices aimed at misleading the public and creating a false impression of source, sponsorship, or affiliation.
27.14. The Defendant's actions have caused, and will continue to cause, irreparable harm to the Plaintiffs' goodwill, reputation, and proprietary rights. Any confusion regarding the source of the products in question could result in patients consuming unverified products, potentially leading to adverse health consequences or loss of life. The Plaintiffs have no control over the quality, efficacy, or safety of the Defendant's goods, and any deficiency or harm caused by such products will be wrongly attributed to the Plaintiffs, tarnishing market standing.
27.15. There is a strong prima facie case for the grant of an ad-interim injunction in favor of the Plaintiffs. The balance of convenience is in favour of the Plaintiffs, as the restraint sought will merely prevent the Defendant from continuing unlawful activities while protecting the public from confusion in the sensitive field of pharmaceuticals. On the contrary, any refusal to grant immediate relief will result in the continued erosion of the Plaintiffs' statutory and common law rights, dilution of their brand, diversion of trade, and irreparable harm to their reputation, which cannot be adequately compensated in monetary terms.
28. The learned Counsel for the Defendant opposed the grant of an ad-
CS(COMM) 891/2025 Page 10 of 15This 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 05/09/2025 at 22:56:35 interim injunction and submitted that this Court does not have the jurisdiction to entertain the present Suit, as Plaintiff No. 1 does not have any office in India and Plaintiff No. 2 is only a manufacturer for Plaintiff No. 1 for the purpose of exporting the manufactured products. The learned Counsel for the Defendant submitted that, firstly, Plaintiff No. 2 is only a permitted user; secondly, the Plaintiff No. 1 have no presence in India; and thirdly, mere export from India is not sufficient to confer jurisdiction, since there must be sale within India.
29. It was further contended by the learned Counsel for the Defendant that the Plaintiffs' reliance on the purchase made in Delhi is misconceived, as the same amounts to a trap sale engineered only to invoke the jurisdiction of this Court. Reliance was placed on the decision of the Division Bench of this Court in Banyan Tree Holding (P) Limited v. A. Murali Krishna Reddy, 2009 SCC OnLine Del 3780 to submit that specific targeted sales cannot confer jurisdiction. Reliance was also placed on the decision in Broad Peak Investment Holdings Ltd. v. Broad Peak Capital Advisors LLP, 2025 SCC OnLine Del 196 to submit that in the absence of any presence of the Plaintiffs in India, jurisdiction cannot be invoked. It was submitted that Plaintiff No. 2 is manufacturing products for Plaintiff No. 1 exclusively for export purposes, and not for sale in India, and therefore the present case does not warrant the grant of injunction.
30. In response, the learned Counsel for the Plaintiffs submitted that the Plaintiffs are carrying on business in India. Plaintiff No. 1 is a shareholder in Plaintiff No. 2 and has been selling products in India since 1992. Attention was drawn to an invoice dated 12.03.1992 evidencing such sale. It was further submitted that the Plaintiffs have been selling their products in India, CS(COMM) 891/2025 Page 11 of 15 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 05/09/2025 at 22:56:35 and that under Section 56 of the Trade Marks Act, 1999 ("Act"), the application of a trade mark to goods in India intended for export is deemed to be use of the trade mark in India. By virtue of Section 134 of the Act also, jurisdiction is available to this Court. The learned Counsel for the Plaintiffs further submitted that in matters concerning pharmaceutical products, the Court must adopt a circumspect approach in the larger public interest.
31. The learned Counsel for the Plaintiffs placed reliance upon a decision of the Supreme Court in proceedings concerning the same Plaintiffs in Exphar Sa v. Eupharma Laboratories Ltd., (2004) 3 SCC 688, wherein it was observed that when the objection to jurisdiction is raised by way of demurrer and not at the trial, the said objection must proceed on the basis that the facts as pleaded by the initiator of the impugned proceedings are true. The Supreme Court in Exphar Sa (supra) observed as under:
"9. Besides, when an objection to jurisdiction is raised by way of demurrer and not at the trial, the objection must proceed on the basis that the facts as pleaded by the initiator of the impugned proceedings are true. The submission in order to succeed must show that granted those facts the court does not have jurisdiction as a matter of law. In rejecting a plaint on the ground of jurisdiction, the Division Bench should have taken the allegations contained in the plaint to be correct. However, the Division Bench examined the written statement filed by the respondents in which it was claimed that the goods were not at all sold within the territorial jurisdiction of the Delhi High Court and also that Respondent 2 did not carry on business within the jurisdiction of the Delhi High Court. Having recorded the appellants' objections to these factual statements by the respondents, surprisingly the Division Bench said:
"Admittedly, the goods are being traded outside India and not being traded in India and as such there is no question of infringement of trade mark within the territorial limits of any court in India what to say of Delhi.""
[Emphasis Supplied] CS(COMM) 891/2025 Page 12 of 15 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 05/09/2025 at 22:56:35
32. The learned Counsel for the Plaintiffs also placed reliance on the Investigator's affidavit filed before this Court, the meeting with one dealer of the Defendant and the WhatsApp conversation on record submitting that all of these material corroborate that the Impugned Products were being supplied into Delhi.
33. Having considered the submissions made by the learned Counsels on the issue of jurisdiction, the plea of lack of jurisdiction will be considered at an appropriate stage.
34. The Supreme Court in Exphar SA (supra) has observed that when an objection to jurisdiction is taken by way of demurrer, the Court must proceed on the basis that the facts as pleaded in the plaint are correct, and that it is not permissible, at this stage, to travel beyond the averments in the plaint while examining jurisdiction. In the present case, the Plaintiffs have pleaded that Plaintiff No. 1 is carrying on business in India, that Plaintiff No. 2 manufactures products for Plaintiff No. 1, that Plaintiff No. 1 is a shareholder in Plaintiff No. 2, that sales in India are evidenced since 1992, and have also placed material showing supply of the Impugned Products into Delhi.
35. Accordingly, in view of the submissions advanced by the learned Counsel for the Plaintiffs, the pleadings and the documents on record, a prima facie case has been made out by the Plaintiffs for grant of an ad- interim injunction. The Impugned Mark having adopted identical features of colour combination, and overall get-up are phonetically, visually and structurally similar with the Subject Marks. Such adoption in the pharmaceutical field can have grave consequences. Balance of convenience is thus in favour of the Plaintiffs and against the Defendant. Irreparable CS(COMM) 891/2025 Page 13 of 15 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 05/09/2025 at 22:56:35 injury would be caused to the Plaintiffs if the Defendant is allowed to continue the use of the Impugned Mark as any confusion or defect in the Impugned Products would damage the Plaintiffs' goodwill.
36. Accordingly, the Defendant, its partners, proprietors, officers, affiliates, subsidiaries, agents, representatives, distributors, dealers, retailers and all others acting for and / or on its behalf are restrained from manufacturing, selling, offering for sale, advertising, importing, exporting, or otherwise dealing in pharmaceutical products under the Impugned Mark ' ', Device, Trade Name, Domain Names, or any other indicia identical or deceptively similar to the Subject Marks 'EXPHAR', ' ', ' ', Trade Name, and Trade Dress and are further directed to delist the products bearing the Impugned Mark from the online platform Apollo Pharmacy bearing the URL https://www.apollopharmacy.in/manufacturer/essphar-pvt-ltd-474618, ensure that the content / information displaying the Impugned Mark on the online profile bearing the URL https://www.linkedin.com/in/sanjay-nayak- a7b81a123/?originalSubdomain=in%20%E2%80%93%20 is removed, and delist online profiles from the platforms India Mart, Pharma Compass, Just Dial, Tata nexarc, CB Insights, LinkedIn bearing the URLs as set below:
a. https://www.indiamart.com/essphar-private-limited/ b. https://www.pharmacompass.com/contact-details-essphar CS(COMM) 891/2025 Page 14 of 15 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 05/09/2025 at 22:56:35 c. https://www.justdial.com/Navi-Mumbai/Essphar-Pvt-Ltd- Panvel/022PXX22-XX22-220812115700- G5M5_BZDET?auto=1&trkid=4308062514&term%E2%80%A6 d. https://www.tatanexarc.com/company/essphar-private-limited- utn1333ess90nwn/ e. https://www.cbinsights.com/company/essphar f. https://www.linkedin.com/company/essphar-rnd-pvt-ltd/
37. Let the Reply to the present Application be filed within four weeks after service of pleadings and documents. Rejoinder thereto, if any, be filed before the next date of hearing.
38. List before this Court on 16.12.2025.
TEJAS KARIA, J AUGUST 26, 2025 'gsr' CS(COMM) 891/2025 Page 15 of 15 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 05/09/2025 at 22:56:35