Delhi High Court - Orders
Elder Prroject Limited vs Elder Orgichem Private Limited on 28 August, 2024
$~32
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 720/2024
ELDER PRROJECT LIMITED .....Plaintiff
Through: Mr. C. M. Lall, Sr. Adv. with Mr.
Utsav Saxena, Mr. Kaveesh Nair,
Ms. Rachael Tuli, Ms. Mahima
Mukherjee and Ms. Annanya
Mehan, Advs.
versus
ELDER ORGICHEM PRIVATE LIMITED .....Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 28.08.2024
I.A. 37453/2024 (exemption)
1. Exemption allowed, subject to all just exceptions.
2. The applications stand disposed of.
I.A. 37454/2024 (under Order XI Rule 1 (4) of the CCA read with Section 151, CPC seeking exemption from filing additional documents)
3. The plaintiffs vide the present application seek time of thirty days to file additional documents.
4. The plaintiffs will be at liberty to file additional documents within thirty days, albeit, strictly as per the provisions of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018.
5. Accordingly, the present application is disposed of. I.A. 37455/2024 (under Section 12A of the CCA read with Section 151, CPC seeking exemption from pre-institution mediation) CS(COMM) 720/2024 Page 1 of 8 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 31/08/2024 at 03:16:44
6. The plaintiffs vide the present application seek exemption from instituting pre-litigation mediation.
7. Considering the averments made in the present application wherein the plaintiffs seek urgent ad-interim reliefs 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.
8. Accordingly, the present application is allowed and disposed of. CS(COMM) 720/2024
9. The plaintiff by way of the present suit seek permanent injunction restraining infringement of trade mark and copyright, passing off, unfair trade competition, dilution, damages, delivery-up, etc.
10. Let the plaint be registered as a suit.
11. Upon filing of the process fee, issue summons of the suit to the defendant through all permissible modes returnable before the Joint Registrar on 27.11.2024.
12. The summons shall state that the written statement be filed by the defendant within a period of thirty days from the date of the receipt of the summons. Written statement be filed by the defendant along with affidavit of admission/ denial of documents of the plaintiff, without which the written statement shall not be taken on record.
13. Replication thereto, if any, be filed by the plaintiff within a period of fifteen days from the date of receipt of written statement. The said replication, if any, shall be accompanied by with affidavit of admission/ denial of documents filed by the defendant, without which the replication shall not be taken on record within the aforesaid period of fifteen days.
CS(COMM) 720/2024 Page 2 of 8This 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 31/08/2024 at 03:16:44
14. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
15. List before the Joint Registrar for completion of pleadings on 27.11.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
16. List before the Court on 15.01.2025.
I.A. 37452/2024 (under Order XXXIX Rule 1 and 2 read with Section 151, CPC seeking ad-interim ex-parte injunction)
17. The plaintiff, a company incorporated in the year 1985 under the Companies Act, 1956 has an annual turnover of Rs.117.45 crores as on 2022-2023. The said plaintiff is the registered owner of the trademark no. 3931941 "Elder" under Class 5 under the Trade Marks Act, 1999 as also the registered owner of the Label bearing registration No. 2153/2020- CO/A, TMR-CC No. 97155 under the Copyright Act, 1957.
18. As per plaintiff, the said trademark "Elder" is distinctive of the plaintiff's own trading style in as much as it is inherently capable of distinguishing the goods in question. To distinguish its products from those of others and in order to gain statutory rights on the plaintiff's products, the trademark "Elder" has been in continuous use by the plaintiff since its honest adoption way back in the year 1993.
19. The defendant, a company incorporated in the year 2021 under the Companies Act, 2013 having its registered address at B-32, F/F, Preet Vihar, Community Centre, New Delhi-110 092, operates in the business of manufacturing, production and marketing of pharmaceutical products albeit under the false and wrongful use of the name 'Elder'.
CS(COMM) 720/2024 Page 3 of 8This 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 31/08/2024 at 03:16:44
20. Additionally, the defendant has incorporated the label, logo and graphics of the plaintiff in the same and identical font as the trademark "Elder" of the plaintiff on the top left corner with two arches, thereby allegedly infringing and encroaching upon the plaintiff's intellectual property in both the trademark and the copyright. Lastly, the defendant has also mischievously adopted the identical brand name and intellectual property which is being commercialized in a mala fide manner under the product name "ELDERVIT-12" having the same composition, trade dress and layout.
21. As per the learned counsel for plaintiff, the plaintiff instituted the present suit after issuing a Cease and Desist Notice to the defendant on 27.06.2024 with respect to its trademark "Elder" as also qua other requisites. Interestingly, in its Reply Notice dated 29.06.2024 to Cease and Desist Notice dated 27.06.2024, though the defendant undertook to change the visual representation of its mark and that the trade of 'ELDERVIT' has already been stopped since the last six (06) months, however, the impugned products carrying the said impugned mark which is a derivative of the registered trademark "Elder" of the plaintiff are still circulating in the market and persistently creating confusion, diluting the goodwill of the plaintiff and resultantly causing monetary losses. The same was followed up via a further letter of 09.07.2024 by the plaintiff, but the same proved to be of no avail.
22. This Court has heard the learned senior counsel for the plaintiff and gone through the pleadings as also perused the documents on record.
23. For ease of reference and better understanding of the disputes raised qua the intellectual property rights of the impugned mark of the defendant CS(COMM) 720/2024 Page 4 of 8 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 31/08/2024 at 03:16:44 and the registered trademarks of the plaintiff, given hereinbelow is a comparative table of them:-
Trademark/ Product of the Trademark/ Product of the plaintiff defendant
24. Additionally, the plaintiff has also recently applied for registration of various "Elder" formative marks, which are as under:-
Date of Application Number Class Application 26.07.2024 6545307 Class 1 26.07.2024 6545308 Class 3 26.07.2024 6545309 Class 5 26.07.2024 6545310 Class 35
25. The defendant is guilty of blatantly adopting and using the identically similar, in fact the very similar trademark as that of the CS(COMM) 720/2024 Page 5 of 8 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 31/08/2024 at 03:16:44 plaintiff. So much so, the placement thereof on the vials of the defendant is also the same as that of the plaintiff. Succinctly put, the defendant has tried to make efforts to show/ portray to the general public that it is also the plaintiff and that its product is also coming from the house of the plaintiff. The defendant has adopted and is using the registered trademark "Elder" of the plaintiff as a part of its corporate name also reflects that it is trying to reflect that it is the same as the plaintiff.
26. As such, since the defendant has adopted and is using the very same corporate name/ device/ logo/ packaging/ trade dress as also the alignment in its product as that of the plaintiff, there is hardly any scope of having any semblance of doubt that the defendant is an extension of the plaintiff and the competing products of the defendant are originating from the very same source.
27. The defendant being in the very same line of business as that of the plaintiff and since it is/ will be operating in the same circle of trade channels as that of the plaintiff and since it is/ will be offering and selling its products to the very same set of consumers as that of the plaintiff, there is a strong presumption that the defendant was well aware of the plaintiff and/ or their goodwill and reputation in and to the duly registered trademark "Elder" and that it is the sole basis and reason for it to adopt the very same trademark as a part of the corporate name/ device/ logo/ packaging/ trade dress.
28. All this is likely to create a lot of confusion and deception in the minds of the general public, who, can presume that the product of the defendant is actually belonging to the plaintiff or that it may be an extension of the plaintiff.
CS(COMM) 720/2024 Page 6 of 8This 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 31/08/2024 at 03:16:44
29. There is no gainsaying that the plaintiff is the prior adopter, prior user as also the prior registrant of the trademark "Elder" and it has a right to seek protection against anyone like the defendant qua the same.
30. Most relevantly, in view of the law laid down in Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952, Heinz Italia & Anr. v. Dabur India Ltd. (2007) 6 SCC 1, Brihan Karan Sugar Syndicate Private Limited vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577 and Brittania Industries Ltd. v. ITC India Ltd. (2021) SCC OnLine Del 1489 qua pharmaceutical preparations since this Court is warranted to act cautiously and stringently, since the defendant is an entity dealing in such pharmaceutical products, it cannot be permitted and/ or allowed to subsist and/ or continue any further to offer/ deal/ sell/ compete using the impugned mark/ corporate name/ device/ logo/ packaging/ trade dress as that of the plaintiff.
31. In view of the aforesaid, the plaintiff have been able to make out a prima facie case with the balance of convenience for grant of an ad interim ex-parte injunction in their favour and against the defendant with respect to its registered trademark "Elder". The same, coupled with the fact that if the defendant is not restrained by way of an ad interim ex-parte injunction, there is a likelihood of the plaintiff suffering irreparable harm, loss, injury and prejudice.
32. Accordingly, till the next date of hearing, the defendant, its directors, partners, principals, employees, agents, distributors, franchisees, representatives, assigns and all those connected with it in its business are hereby restrained from using, the impugned mark "Elder" or any other mark/ device/ logo/ name/ packaging/ trade dress which is identical and/ CS(COMM) 720/2024 Page 7 of 8 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 31/08/2024 at 03:16:44 or deceptively or phonetically similar to the plaintiff earlier, famous and registered trademark "Elder" in any manner whatsoever without the permission, consent, or license of the plaintiff.
33. Upon filing of the process fee, issue notice to the defendant by all permissible modes returnable before the Joint Registrar on 27.11.2024.
34. 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.
35. The provisions of Order XXXIX Rule 3 CPC be complied within two weeks.
36. List before the Court on 15.01.2025.
SAURABH BANERJEE, J.
AUGUST 28, 2024/rr CS(COMM) 720/2024 Page 8 of 8 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 31/08/2024 at 03:16:45