Delhi High Court
M/S Vest Pharma Pvt Ltd vs M/S Vets Farma Ltd & Anr on 16 August, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~8 & 9
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision:16th August, 2023.
+ C.O. (COMM.IPD-TM) 79/2022
M/S VEST PHARMA PVT LTD ..... Petitioner
Through: Mr. Umesh Mishra, Advocate.
(M. 9868401295)
versus
M/S VETS FARMA LTD & ANR ..... Respondents
Through: Mr. Amit Jain, Mr. Nakul Mehta and
Ms. Ishita Suri, Advocates.
(M. 9818558690)
9 AND
+ C.O. (COMM.IPD-TM) 554/2022
VETS FARMA LTD. ..... Petitioner
Through: Mr. Amit Jain, Mr. Nakul Mehta and
Ms. Ishita Suri, Advocates. (M.
9818558690)
versus
VEST PHARMA PVT. LTD. AND ANR. ..... Respondents
Through: Mr. Umesh Mishra, Advocate for R-1
(M. 9868401295)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh (Oral)
1. This hearing has been done through hybrid mode.
2. The present two cancellation petitions seeking cancellation of the
following two trademarks:
Petition No. Mark Application Class
No.
C.O. (COMM.IPD-TM) CALPHO - Registered in 1212278 31
favour of Respondent M/s
79/2022
Vets Farma Ltd
C.O. (COMM.IPD-TM) CALFOS AD3 PLUS - 1399331 05
Regd. in favour of Petitioner
554/2022
M/s.Vest Pharma Pvt Ltd
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 1 of 8
By:RAHUL
Signing Date:19.08.2023
16:48:36
3. These two petitions before the Court, C.O. (COMM.IPD-TM) 79/2022
and C.O. (COMM.IPD-TM) 554/2022 were initially filed before the IPAB in
2013 and 2012 respectively. They have been transferred to this Court upon
the enactment of Tribunal Reforms Act, 2021. A tabular representation of
the Petitioner and Respondent in both the Petitions is set out below:
Petition No. Petitioner Respondent
C.O. (COMM.IPD-TM) M/s Vest Pharma Pvt M/s Vets Farma Ltd
79/2022 Ltd
C.O. (COMM.IPD-TM) M/s Vets Farma Ltd M/s Vest Pharma Pvt
554/2022 Ltd
For the sake of clarity and consistency, M/s. Vest Pharma Pvt Ltd is referred
to as `Petitioner' and M/s. Vets Farma Ltd is referred to as `Respondent'.
4. From the above table, it is clear that the two petitions are cross
petitions which were filed by the parties. Disputes had arisen between the
parties resulting in filing of civil and criminal proceedings. The promoters of
the Respondent were convicted by the Court of the Chief Judicial
Magistrate, Jalandhar vide order dated 4th December, 2010 and the said
conviction was upheld by the Additional Sessions Judge, Jalandhar vide
order dated 12th September, 2012 in Criminal Appeal No.
CRA/020000/2011 titled Vets Farma Private. Limited & Ors. v. State of
Punjab & Ors.
5. Civil litigation also ensued between the parties and in CS 17/2010
titled Vest Pharma Pvt Limited v. M/S Vets Farm Ltd, final judgement was
passed by the Additional District Judge, Jalandhar, dated 23rd March, 2011.
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 2 of 8
By:RAHUL
Signing Date:19.08.2023
16:48:36
By the said order, the Respondent has been injuncted in the following terms:
"34. In view of my above said findings on the issues,
the suit of the plaintiff for Permanent Injunction is
decreed with costs, to the effect that the defendant is
restrained from infringing the aforesaid three Trade
Marks CALFOS AD3, GALFOS AD3 PLUS and ANIMIN
of the plaintiff either themselves or through any of their
agents and also passing off goods under such Trade
Marks in any manner and further to destroy all the
materials such as advertisements etc. claiming the
aforesaid trade mark to be its own. Preliminary decree
for rendition of account is also passed in favour of the
plaintiff. Decree sheet be drawn accordingly and the file
be consigned to the Record Room."
6. The said decree/order was upheld by the Punjab & Haryana High
Court vide decision dated 17th August, 2022 passed in RFA 4412/2011 titled
M/ s Vets Farma Ltd. v. Vest Pharma Pvt. Ltd. The Punjab & Haryana
High Court has also upheld the assignment of the trade marks in favour of
the Petitioner and observed as under:
"23. It may be noted here that although, the
alleged deed of cancellation of assignment has not
been brought on record, however, even if it is assumed
that there is cancellation, the same shall be hit by
Section 202 of the Indian Contract Act, 1872, which
debars the principal from terminating the agency
where the agent has an interest in the subject matter.
On a careful reading of memorandum of understanding
dated 07.02.1998, and various other documents placed
on file, it is evident that the deed of assignment was
signed after receipt of certain amount. It was agreed
that the total consideration for assignment of
trademarks shall be Rs. 1,60,000/- Apart therefrom,
Rs. 25,000/- was agreed to be paid to sign and transfer
the copyrights of the products CALFOS AD3 PLUS
and GALFOS AD3 PLUS, in favour of the plaintiff. It
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 3 of 8
By:RAHUL
Signing Date:19.08.2023
16:48:36
has also come in evidence that the payment has been
made and memorandum of settlement was given effect
to as Sh. H.R. Gupta resigned from Vets Farma Pvt.
Ltd. Immediately after signing the memorandum of
settlement. The memorandum of settlement dated
07.02.1998 itself recognizes that such assignment of
trademarks is irrevocable and final and all the rights
shall absolutely vest with the assignee company subject
to Clause 8 of the memorandum of settlement.
24. Consequently, finding no merit the Regular
First Appeal is dismissed. Decree on the ground that
the present appeal is pending. Now, since the appeal
stands decided, therefore, the revision petition is
rendered infructuous."
7. An SLP was also preferred before the Supreme Court by the
Respondent bearing SLP (C) Diary No. 41108/2022 titled M/s Vets Farma
Ltd v. M/s Vest Pharma Pvt. Ltd. against the said order of the Punjab and
Haryana High Court, which was dismissed as withdrawn on 27th February,
2023 in the following terms:
"Learned counsel for the petitioner contends that there
is an apparent error on the face of the record in the
impugned order as it proceeds on the basis that the
Trademark Act, 1999 had come into force but the fact
is that the said Act comes in force only on 15.09.2003
while the transaction in question was also not of 1999
but 2000. He further rests his case on Section 124 of
the Act.
We consider appropriate to permit the petitioner to
withdraw the petition and file a review application
before the Learned judge of the High Court with liberty
to approach this Court in case of an adverse order.
The special leave petition is dismissed as
withdrawn in terms aforesaid.
Pending applications stand disposed of."
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 4 of 8
By:RAHUL
Signing Date:19.08.2023
16:48:36
8. In the second suit, before the ld. ADJ, Jalandhar relating to the marks
'CALFOS AD3 PLUS', 'GALFOS AD3 PLUS' and 'ANIMIN' in class 31
and 'CALFOS AD3 PLUS' in class 5, in CS 56516/2013 titled Vest Pharma
Pvt Limited v. M/S Vets Farma Ltd, vide order dated 24th February, 2020
the ld. ADJ, Jalandhar has finally decreed the suit in the following terms:
"98. In view of my findings on the aforesaid issues,
the suit of the plaintiff partly succeeds and the same is
hereby partly decreed with proportionate costs:
For declaration to the effect that the plaintiff is the
owner of the copy right design colour combination of
the wrappers/labels/pouches/jars, used by the plaintiff
for marketing its products under the trademark
CALFOS AD3 PLUS, GALFOS AD3 PLUS and
ANIMIN. The suit of the plaintiff is further decreed for
declaration to the effect that the plaintiff is the
proprietor of the trade mark CALFOS AD3 PLUS.
99. The suit of the plaintiff is further decreed for
permanent injunction, restraining the defendant, their
agents, employees, representatives, dealers,
distributors and all other persons claiming through the
defendant from infringing the aforesaid copy right of
the plaintiff by using any wrappers/labels/ pouches,
jars for making or passing off product name identical,
similar or deceptively similar to the trademarks CALFOS
AD3 PLUS, GALFOS AD3 PLUS and ANIMIN.
And further for permanent injunction, restraining the
defendant, their agents, servants, employees,
representatives, dealers, distributors and our other
persons claiming through the defendant from infringing
the trademarks of the plaintiff, by manufacturing,
marketing or selling and passing of any product under
the trademarks CALPHO, CALIPHO AD3 PLUS,
CALFOS, AND CALFOS FORTE, It is further made
clear that, the decree is subject to the decision of any
superior court on the subject matter between the parties.
Decree sheet be prepared accordingly. File be consigned
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 5 of 8
By:RAHUL
Signing Date:19.08.2023
16:48:36
to the record room."
9. This judgment/decree has attained finality.
10. From the above background it is clear that the Respondent has been
injuncted in two civil suits filed by the Petitioner. Even criminal proceedings
have resulted in conviction of the Directors of the Respondent.
11. As captured above, the present two petitions relate to the trademarks
CALFOS and CALFOS AD3 PLUS. The first petition has been filed by the
Petitioner- M/s M/s Vest Pharma Pvt. Ltd. seeking cancellation of trademark
number 1212278. Vide judgment dated 23rd March, 2011, insofar as the use
of the trademark 'CALPHO' is concerned, the same has already been
injuncted by the Court against the Respondent. The present cancellation is
based on this decision dated 24th February, 2020 which has attained finality.
12. In view of this, the Respondent cannot continue to be the registered
proprietor of the mark 'CALPHO' in class 31. Accordingly, the
Respondent's mark CALPHO bearing no. 1212278 is directed to be
removed/cancelled from the Register of Trade Marks.
13. In the second petition, the prayer of the Respondent - M/s Vets Farma
Ltd. is for cancellation of the mark 139931 in class 5 registered by the
Petitioner for the mark 'CALFOS AD3 PLUS .
The status of the said mark is set out below:
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 6 of 8
By:RAHUL
Signing Date:19.08.2023
16:48:36
"As on Date : 14/08/2023
Status : Registered View TM Application
TM Application No. 1399431
Class 5
Date of Application 16/11/2005
Appropriate Office DELHI
State PUNJAB
Country India
Filing Mode Branch Office
TM Applied for CALFOS AD3 PLUS
TM Category TRADE MARK
Trade Mark Type DEVICE
User Detail 09/04/1997
Certificate Detail Certificate No. 628162 Dated : 28/03/2007
Valid upto/ Renewed 16/11/2025
upto
Proprietor name (1) VEST PHARMA PVT LTD
Trading As : VEST PHARMA PVT LTD
Body Incorporate
Proprietor Address 605, PARK ROAD, MODEL TOWN,
JALANDHAR- 144003 PB
Email Id
Agent name MAHTTA & CO. [252]
Agent Address 43- B/3, MAHTTA HOUSE, UDHAM SINGH
NAGAR, LUDHIANA - 141 001, (PUNJAB).
Goods & Service [CLASS : 5]
Details MEDICINAL & PHARMACEUTICALS
PREPARATIONS
Publication Details Published in Journal No. : 1351-0 Dated :
01/09/2006
Trade Mark Image:
Signature Not Verified
Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 7 of 8
By:RAHUL
Signing Date:19.08.2023
16:48:36
14. A perusal of the above would show that the mark is registered since 16th
November, 2005. Since the Respondent itself has been injuncted from using the
CALFO AD3 PLUS and the finding of the Court is in favour of the Petitioner
in respect of this mark, the Respondent being an infringer against whom the
injunction has been upheld till the Supreme Court, would not be entitled to
maintain the present cancellation petition at this stage.
15. The above order is with one caveat. A perusal of the Supreme Court's
order dated 27th February, 2023 would show that the Respondent was permitted
to file a review before the Punjab & Haryana High Court and liberty was
granted to the Respondent to approach the Supreme Court in case if there was
any adverse order. The said order dismissing the review petition was passed by
the Punjab & Haryana High Court on 26th April, 2023. Till date, the
Respondent has not filed any SLP against the said order.
16. Under these circumstances, the second cancellation petition, i.e., C.O.
(COMM.IPD-TM) 554/2022 of the Respondent against the Petitioner is
rejected.
17. It is made clear that the above order shall however, be subject to any
order passed by the Supreme Court in the SLP, if any, which may be filed by
the Respondent challenging the order dated 26th April, 2023 passed in the
review petition by the Punjab & Haryana High Court.
18. Both these cancellation petitions are accordingly disposed of in the
above terms. All pending applications are also disposed of.
19. The Registry is directed to supply a copy of the present order to the
office of the Controller General of Patents, Designs & Trademarks of India on
the e- mail- [email protected] for compliance of this order.
PRATHIBA M. SINGH, J.
AUGUST 16, 2023/Rahul/am Signature Not Verified Digitally Signed C.O. (COMM.IPD-TM) 79/2022 & C.O. (COMM.IPD-TM) 554/2022 Page 8 of 8 By:RAHUL Signing Date:19.08.2023 16:48:36