Delhi High Court - Orders
Abbott Products Operations Ag & Anr vs Lincoln Pharmaceuticals Limited & Anr on 22 July, 2024
$~31
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 590/2024
ABBOTT PRODUCTS OPERATIONS AG & ANR. .....Plaintiffs
Through: Mr. Jayant K. Mehta, Sr. Adv.,
Nikita Sethi, Adv. with Ms. Gunjan
Daharia, Mr. Naqeeb Nawab, Ms.
Neeru Vaid, Ms. Apurva Bhutani,
Ms. Sejal Tayal and Mr. Ashutosh
Ranga, Advocates.
Versus
LINCOLN PHARMACEUTICALS LIMITED & ANR.
.....Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 22.07.2024 I.A. 33787/2024 (pre-institution mediation)
1. Vide the present application the plaintiffs are seeking exemption from instituting pre-litigation mediation.
2. Considering the averments made in the present application wherein the plaintiffs seek urgent ad-interim relief and in view of Yamini Manohar vs. T.K.D. Krithi 2023 SCC OnLine 1382 and Chandra Kishore Chaurasia vs. R. A. Perfumery Works Private Limited. 2022:DHC:4454-DB, the plaintiffs are exempted from instituting pre-litigation mediation.
3. Accordingly, the present application is allowed and disposed of. I.A. 33785/2024-Exp
4. Exemption allowed, subject to all just exceptions.
5. The applications stand disposed of.
CS(COMM) 590/2024 Page 1 of 12This 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 16/08/2024 at 20:49:12 I.A. 33786/2024 (Advance service)
3. Vide the present application the plaintiffs are seeking exemption from advance service on the defendants.
4. Learned counsel for the plaintiffs submits that considering the position involved, particularly since appointment of Local Commissioner(s) for execution of search and seizure at the premises of defendants is being sought, there is a likelihood that the apprehensions of the plaintiffs will become a reality in case advance service is affected and therefore, an exemption from effecting advance service is necessary.
5. For the reasons stated in the application as also taking into account the aforesaid factors and in the interest of justice, the plaintiffs are granted exemption from effecting advance service upon the defendants.
6. Accordingly, the present application is allowed and disposed of. I.A. 33784/2024 (Addl. Doc)
7. Vide the present application the plaintiffs are seeking to place on record additional documents.
8. If the plaintiffs wish to file additional documents at a later stage, they shall do so strictly as per the provisions of the Commercial Courts Act, 2015 and the DHC (Original Side) Rules, 2018.
9. Accordingly, the present application is allowed and disposed of. CS(COMM) 590/2024
13. Vide the present suit, the plaintiffs' are seeking permanent injunction restraining the defendants from infringement of their trademark, passing off, damages and rendition of accounts.
14. Let the plaint be registered as a suit.
15. Upon filing of the process fee, issue summons of the suit to the CS(COMM) 590/2024 Page 2 of 12 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 16/08/2024 at 20:49:12 defendants through all permissible modes returnable before the Joint Registrar on 11.09.2024.
16. The summons shall state that the written statement(s) be filed by the defendants within a period of thirty days from the date of the receipt of the summons. Written statement(s) be filed by the defendants along with affidavit(s) of admission/ denial of documents of the plaintiffs, without which the written statement(s) shall not be taken on record.
17. Replication(s) thereto, if any, be filed by the plaintiffs within a period of fifteen days from the date of receipt of written statement(s). The said replication, if any, shall be accompanied by with affidavit(s) of admission/ denial of documents filed by the defendant(s), without which the replication(s) shall not be taken on record within the aforesaid period of fifteen days.
18. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
19. List before the Joint Registrar for marking exhibits of documents on 11.09.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
20. List before the Court on 28.11.2024.
I.A. 33782/2024(stay)
21. The plaintiffs by the present application are seeking restraining the defendants, their partners, principals, employees, agents, distributors, franchisees, representatives, assigns and all those connected with the defendants in their business from using the impugned marks- DUPHALINK/ DHUPHALINK and/ or any other mark, device, trade CS(COMM) 590/2024 Page 3 of 12 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 16/08/2024 at 20:49:14 dress, 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, famous and registered DUPHA Marks including but not limited to DUPHAR, DUPHALAC, DUPHABEARS, Duphalac, BEARS Duphalac CHEWS , DUPHALACFIBER, DUPHASTON, DUPHAPRO AND DUPHACHEWS in any manner whatsoever without the permission, consent, license of the plaintiffs thereby infringing the rights of the plaintiffs in their registered trademarks amounting to an infringement thereof alongwith other reliefs.
22. The plaintiffs are part of Abbott Laboratories, which is a leading global pharmaceuticals and healthcare products company, offering a wide range of healthcare products and established in the year in 1894 by the name "Abbott Alkaloidal Company" and further started operations in India in the year 1910. The worldwide net sales of 'Abbott' during last three years are 43,075 million USD, 43,653 million USD and 40,109 million USD as well qua "Dhupha' marks during the last three years have been Rs.66,274,136/-, Rs.67,964,374/- and Rs. 68,597,478 respectively.
23. As per learned senior counsel for the plaintiffs, the predecessor of 'Abbott' Dutch Pharmaceuticals coined the unique trademark "DUPHAR" from their company name in the year 1949 and started production of lactulose syrup in the year 1960 and first time used the said prefix and named the product as "DUPHALAC". Subsequently, through various acquisition the said mark was transferred to "Abbott" in the year 2010.
24. The plaintiff no.1 is the proprietor of the trademarks 'DUPHASTON', 'DUPHALAC', 'DUPHABEARS', 'DUPHALAC', CS(COMM) 590/2024 Page 4 of 12 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 16/08/2024 at 20:49:17 'FIBER', 'DUPHACHEWS', 'DUPHAR', " " and " " and plaintiff no.2 is the proprietor of mark 'DUPHAPRO' in Classes 05, 29 and 30, list whereof is enumerated below:-
Trade Mark Registration Filing Date Class
No.
DUPHASTON 198281 05.10.1960 05
DUPHALAC 515614 24.08.2989 05
DUPHALAC FIBER 2687844 36.02.2014 05
DUPHAPRO 3689204 20.02.2018 05
DUPHABEARS IRDI -3777878 20.02.2018 05,29,30
IR-1189044
4348989 15.11.2019 05
4348988 15.11.2019 05
DUPHAR 148107 22.03.1951 05
25. As per learned senior counsel for the plaintiffs, the plaintiff no.1 filed an opposition to defendant no.1's mark "DUPHALINK" against the application no. 5099463 in Class 5, which was eventually abandoned by the Trade Mark Registry vide order dated 28.05.2024.
26. As per learned senior counsel for the plaintiffs, the plaintiffs then served two Cease and Desist notice/s dated 25.11.2022 and 13.06.2024 CS(COMM) 590/2024 Page 5 of 12 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 16/08/2024 at 20:49:17 upon the defendants. Thereafter, on 30.04.2024, the plaintiffs were able to procure a sample of the defendants' product, pictorial representation thereof is as under:-
CS(COMM) 590/2024 Page 6 of 12This 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 16/08/2024 at 20:49:18
27. As per learned senior counsel for the plaintiffs, the impugned products of the defendants are also available on e-pharmacy websites/ platforms like "POSITRA Rx", TATA 1MG, APOLLO, TRUE MEDS, RIG MEDS, NET MEDS and DAWA KING.
28. This Court has heard the learned senior counsel for the plaintiffs and perused the documents on record.
29. What follows from the aforesaid is that plaintiffs are the registered proprietors of various trademarks with 'DUPHA' as a prefix and they are valid, subsisting and have been renewed from time to time. All the said registered trademarks wherein 'DUPHA' is used as a prefix are solely associated with the plaintiffs. Since, the defendants herein have adopted and is using the impugned mark with 'DUPHA'/'DHUPHA' as a prefix, this is a case of multiple registered trademarks with 'DUPHA' used as a prefix by the plaintiffs against a singular impugned mark with 'DUPHA' as a prefix.
30. The marks of the defendants have a similar visual, phonetic and structural resemblance with the plaintiffs registered trademarks as it is identically similar in more than one respect. The same is prone to cause confusion amongst the general public. More so, since the impugned mark of the defendants has been adopted and is being used for medicinal preparations as that of the plaintiffs and is amongst circulation, offered for sale and sold through the very same trade channels as that of the plaintiffs. So much so, the end users/ consumers are also the same as that of the plaintiffs.
31. Therefore, the defendants were well aware of the plaintiffs, their various registered trademarks with 'DUPHA' as a prefix, their long-
CS(COMM) 590/2024 Page 7 of 12This 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 16/08/2024 at 20:49:19 established goodwill and reputation, in and to therein. Under such circumstances, there was no plausible reason for the defendants to adopt and/ or use the impugned mark with 'DUPHA' as a prefix, similar to that of the registered trademarks of the plaintiffs, save and except that the defendants are trying to come as close as possible to the plaintiffs and ride upon their goodwill and reputation.
32. Consequently, allowing the defendants to continue using the impugned mark with 'DUPHA' as a prefix, there is a likelihood of deception and confusion and may also tantamount to misrepresentation amongst the general public.
33. In any event, since this Court is dealing with pharmaceutical products, it calls for a more careful and strict approach [see Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952 and reiterated and reaffirmed by it in Heinz Italia & Anr. v. Dabur India Ltd. (2007) 6 SCC 1 and Brihan Karan Sugar Syndicate Private Limited vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577 as well as by this Court in Brittania Industries Ltd. v. ITC India Ltd. (2021) SCC OnLine Del 1489].
34. In view of the aforesaid, the plaintiffs have been able to make out a prima facie case for the grant of an ex parte ad interim injunction in its favour and against the defendants with the balance of convenience also in their favour. If the defendants are allowed to continue using the impugned mark with 'DUPHA'/'DHUPHA' as a prefix, the same may result in the plaintiffs suffering irreparable harm, loss and injury.
35. Accordingly, till the next date of hearing, the defendants their partners, principals, employees, agents, distributors, franchisees CS(COMM) 590/2024 Page 8 of 12 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 16/08/2024 at 20:49:19 representatives and all those connected with the defendants in their business are refrained from using, the impugned marks- 'DUPHALINK'/ 'DHUPHALINK' and/or any other mark, device, trade dress, 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 registered 'DUPHA' marks, in any form or manner.
36. Upon filing process fee, issue notice to the defendants through all permissible modes returnable before the Joint Registrar on 11.09.2024.
37. Reply, if any, be filed within a period of thirty days from the date of service. Rejoinder thereto, if any, be filed within a period of fifteen days thereafter.
38. The provisions of Order XXXIX rule 3 CPC be complied within a period of two weeks from today.
39. List before this Court on 28.11.2024.
I.A. 33783/2024 (Local Commissioner)
40. The plaintiffs, vide the present application, are seeking appointment of Local Commissioner(s) to the address of the defendants as mentioned in the array of parties.
41. Learned counsel for the plaintiffs submits that the defendants are aware of the plaintiffs and their products and the infringing materials placed on record are clear evidence of the intention of the defendants to ride upon the goodwill and reputation of the plaintiffs. The plaintiffs believe that the infringing products are sold at the locations set out in the memo of parties annexed with the plaint and the defendants are likely to remove all physical evidence or deny their involvement in the infringing activities.
CS(COMM) 590/2024 Page 9 of 12This 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 16/08/2024 at 20:49:20
42. In view of the aforesaid as also considering the factual matrix involved, and most relevantly, in order to preserve the counterfeit and infringing materials involved, in the considered opinion of this Court, it is deemed appropriate to appoint a Local Commissioner to visit the premises of the defendants.
43. Accordingly, the following is appointed as Local Commissioner with a direction to visit the premises of the defendants as specified against his name:
Address of the Defendant Local Commissioner
Defendant no.1/ Lincoln Mr. Sachin Dubey, Advocate
Pharmaceuticals Limited:- [+91-9205248110]
Lincoln House, B/h Satyam
Complex, Science City Road,
Sola, Ahmedabad, 380060,
Gujarat, India
44. The Local Commissioner to execute the commission in the premises of the defendants with the following directions:-
a) The Local Commissioner shall be accompanied by a representative and/ or its counsel, who shall be permitted to enter the premises of the respective defendant(s) as per the addresses hereinabove. The Local Commissioner shall seize, pack and seal the infringing products and handover the same on Superdari to the respective defendant(s) upon the said defendant(s) giving an 'Undertaking' that they shall not tamper with or remove the sealed products as also shall in compliance of the orders of this Court, as and when passed, produce the sealed products under Superdari.
b) The Local Commissioner shall be permitted to take CS(COMM) 590/2024 Page 10 of 12 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 16/08/2024 at 20:49:20 photocopies and/ or screenshots of all the books of accounts including ledgers, cashbooks, bill books, purchases and sales records or any document(s) deemed necessary found in the premises of the defendant(s), etc. for placing the hard copies or e copies thereof on record.
c) The Local Commissioner shall be permitted to make a video recording of the commission of the execution at the premises of the defendants in compliance of the present order.
d) The Local Commissioner shall be permitted to take the assistance of the Station House Officer [SHO] of the local Police Station within whose jurisdiction the premises of the defendant is situated. The said SHO is directed to render and provide all and every necessary assistance and protection to the Local Commissioner(s), if as and when sought for ensuring unhindered and effective execution of the commission at the premises of the defendants in compliance of the present order.
e) If the premises of the defendant(s) is/are found under lock(s), the Local Commissioner is permitted to break open the said lock(s) in the presence of the SHO/ any designated Police Officer from the concerned local Police Station.
45. The fee of the Local Commissioner is fixed at Rupees Two Lakhs Only [Rs.2,00,000/-] in addition to all the related expenses for travel as also any other miscellaneous out of pocket expenses incurred for the execution of the commission. All the aforesaid expenses shall be borne by the plaintiffs and be paid in advance to the Local Commissioner.
46. The commission be executed within a period of two weeks from CS(COMM) 590/2024 Page 11 of 12 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 16/08/2024 at 20:49:21 today, i.e. on or before 05.08.2024.
47. The report of the Local Commissioner be filed within a period of two weeks from the execution of the commission.
48. Copy of this order be provided to the Local Commissioner named hereinabove.
49. Accordingly, the application is allowed and disposed of.
50. Copy of this order be given Dasti.
SAURABH BANERJEE, J JULY 22, 2024/So CS(COMM) 590/2024 Page 12 of 12 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 16/08/2024 at 20:49:21