Delhi High Court
Lilly Icos Llc & Another vs M/S Scilla Biotechnologies Pvt Ltd. & ... on 11 December, 2008
Author: Rajiv Sahai Endlaw
Bench: Rajiv Sahai Endlaw
*IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(OS) No.40/2007
%11.12.2008 Date of decision: 11.12.2008
LILLY ICOS LLC & ANOTHER .............................Plaintiffs
Through: Mr.Dushyant K. Mahant &
Mr. Manish Dhir , Advocates
Versus
M/S SCILLA BIOTECHNOLOGIES PVT..........Defendants
LTD. & ANOTHER
Through: Ex-parte
CORAM :-
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW
1. Whether reporters of Local papers may
be allowed to see the judgment? NO
2. To be referred to the reporter or not? NO
3. Whether the judgment should be reported
in the Digest? NO
RAJIV SAHAI ENDLAW, J.
1. The suit has been filed for permanent injunction restraining the defendants from infringing the registered trademark of the plaintiffs and passing off their goods as those of the plaintiffs and for the ancillary reliefs of blocking the internet website of the defendants recalling the products from the market, delivery, discovery, accounts and costs. Vide ex-parte order dated 10th January, 2007 the defendants were restrained from manufacturing, selling, marketing etc. under the trademark and trade dress of the plaintiff. Both the defendants were served with the summons/notice. The defendant No.1 appeared on 22nd March, 2007 through counsel and the counsel for the plaintiff informed that the defendant No.2 had approached the plaintiff for settlement. However, none of the defendants appeared thereafter. CS(OS)40/2007 Page No. 1 of 6 Vide order dated 21st April, 2008, the defendant No.1 was ordered to be proceeded against ex-parte. However, no order of proceeding ex-parte against the defendant No.2 was made on that date on the settlement of the counsel for the plaintiff that the plaintiff was entering into a compromise with the defendant No.2. The plaintiff was ordered to lead their ex-parte evidence. No compromise with the defendant No.2 was filed thereafter and the defendant No.2 also did not appear before the court. In the circumstances, the defendant No.2 is also deemed to have been proceeded against ex-parte, though no express order to that effect was made. Both the defendants remain ex-parte. The plaintiff has led its ex-parte evidence.
2. It is the case of and in evidence of the plaintiff that the plaintiffs are engaged inter-alia in the business of research, development, manufacturing & marketing of pharmaceutical products; that the plaintiff No.1 had developed pharmaceutical preparation for the treatment of male erectile dysfunction; the active ingredient in the said preparation is tadalafil which has been patented in numerous countries worldwide by the plaintiff No.1; that the said preparation was commenced to be marketed under the market/name "CIALIS" having no descriptive meaning and which is a coined name; that the said trademark "CIALIS" was made public in July, 2001; a unique and unusual packaging with the unique and unusual artwork referred to as „CIALIS SWIRL‟ was also developed and the tablet was given a unique light yellow colour and shaped in a unusual and distinctive almond shape; the plaintiff‟s trademark C20 was also inscribed in a unique and distinctive script on the tablet. The tablet shape with the CS(OS)40/2007 Page No. 2 of 6 inscription of C20 is referred to as the "CIALIS TABLET DRESS". The said drug/formulation of the plaintiff„s has found much success all over the world. The trademark "CIALIS", the "CIALIS TABLET SHAPE WITH THE ALPHABET C20", the "CIALIS TABLET SHAPE WITH THE ALPHABET „C‟ 20", the "CIALIS SWIRL", and the word "C20" are all registered in India in class 5 relating to pharmaceutical and medicinal preparations for sexual dysfunction since 1999/2004. Copies of the said registrations have been collectively proved as Exhibit PW1/9 & PW1/11. The plaintiff No.2 was granted marketing approval on 11th September, 2003 to import and market the said drug in India.
3. The cause of action for the present suit was the marketing by the defendant No.1 on its websites www.scillabiotechnidia.com, www.scillabiotech.com & www.sex-enhancement-pills-india.com tadalafil tablets under the brand name SCALIS. The defendant No.2 was found to be exporting the same from India. The defendants besides keeping the trademark/name deceptively similar to the plaintiff‟s were also stated to have copied the CIALIS tablet shape with the inscription of K20 on the tablet and which is also deceptively similar to the inscription C20 on the tablets of the plaintiff. The printouts of the defendant‟s product are Exhibit PW1/17 to Exhibit PW1/19.
4. A perusal of the trademark and the trade dress of the product aforesaid of the plaintiffs and the identical product of the defendants shows a striking similarity therein, having all potential to cause confusion/deception, especially since both are with CS(OS)40/2007 Page No. 3 of 6 respect to the same product. The trademark "CIALIS" of the plaintiff is pronounced as "SI-ALIS" and the defendant‟s trademark is pronounced as "SC-ALIS" and the pronunciation of the two is found to be identical or nearly identical, likely to cause confusion within the ambit laid down by the Apex court in Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd AIR 2001 SC 1952.
5. It is perhaps for this reason only, realising that they would have no defence whatsoever, that the defendants chose not to contest the present suit. The plaintiffs have, thus, become entitled to the relief of injunction as claimed in prayer para A
(i),(ii),(iii),(iv),(v) and in para B (i) (a to d) of the plaint.
6. Before proceeding to consider the other reliefs claimed in the plaint, I may also deal with the objection raised by the Joint Registrar in the order dated 11 August, 2008 as to the documents filed along with the affidavit by way of examination in chief of the only witness of the plaintiffs being photocopies. Vide order dated 29 August, 2008 the said objection was kept open for decision at this stage. I have herein above found similarity in the trade name and the trade dress adopted by the defendants for the same product, to the registered trademark/trade dress of the plaintiff on the basis of the photocopies of the products of the plaintiffs & defendants and on which exhibit marks have been put. This is only for convenience and so as not to burden the court file with the actual products. Such photocopies can be considered in the absence of any plea of the same not being true photocopies. As CS(OS)40/2007 Page No. 4 of 6 far as the certificates of registration are concerned, though exhibit marks have been put on the photocopies but the plaintiffs have also proved the applications made to the Registrar of trademarks for certified copies. I am in the facts of the case inclined to accept the photocopies of the said documents, especially in view of the deposition of the witness of the plaintiffs remaining unchallenged.
7. As far as the other reliefs of delivery, accounts, damages are concerned, the plaintiff had filed a CCP No.7584/2007 under Order 39 Rule 2A of the CPC alleging that notwithstanding ex- parte order dated 10th January, 2007 of this court and which remains in force, and which had been served on the defendants, it had come to the knowledge of the plaintiffs that the Customs Deptt. of Hamburg, Germany had seized a consignment exported by the defendants vide airway bill dated 11 May, 2007 of the same goods under the name of SCIFIL, however with the same dress. It thus appears that defendants, so as to defeat the interim order dated 10th January, 2007, while changing the name of their product from SCALIS to SCIFIL retained the same shape of the tablet and the inscription K20 as well as the Cialis Swirl with respect to which also interim injunction was issued. The witness of the plaintiffs has also deposed with respect to the same. It is, thus, clear that the defendants instead of appearing before this court, attempted to overreach and reap benefits and pass off their goods as that of the plaintiffs, by making a marginal difference only in the trade name. Such conduct of the defendants reeks of their mala-fide intentions. In the circumstances, applying the guidelines in Time Incorporated vs. Lokesh Srivastava & Another 2005 (30) PTC 3 (Del) and Microsoft Corporation vs. CS(OS)40/2007 Page No. 5 of 6 Yogesh Papat & Another 2005 (30) PTC 245 (Del) I award damages to the plaintiffs in the sum of Rs.10 lacs against the defendants jointly and severally. The said amount shall also be recoverable personally from Mr. Amit Singh, Director of the defendant No.1 against whom also CCP 7584/2007 was directed. Let the decree sheet in terms of the above be drawn up. The plaintiffs shall also be entitled to costs of the suit from the defendants jointly and severally. Counsel‟s fee assessed at Rs.25 thousand.
RAJIV SAHAI ENDLAW JUDGE December 11, 2008 PP CS(OS)40/2007 Page No. 6 of 6