Delhi High Court - Orders
Abbott Product Operations Ag & Anr vs Uniza Healthcare Llp on 5 August, 2024
$~44
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 647/2024
ABBOTT PRODUCT OPERATIONS AG & ANR ......Plaintiffs
Through: Mr. Jayant Mehta, Ms. Gunjan
Paharia, Mr. Naqeeb Nawab, Ms.
Neeru Vaid, Mr. Ashutosh Ranga,
Ms. Apurva Bhutani, Ms. Sejal
Tayal, Ms. Neeharika Chauhan and
Mr. Rajat, Advs.
Versus
UNIZA HEALTHCARE LLP .....Defendant
Through: None
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 05.08.2024 I.A. 35412/2024 (Pre-Litigation Mediation)
1. The plaintiffs seek exemption from instituting pre-litigation mediation.
2. Considering the averments made in the present application wherein the plaintiffs seek urgent ad-interim reliefs as also appointment of Local Commissioner and further 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. 35410/2024 (Exemption)
4. Exemption allowed, subject to all just exceptions.
CS(COMM) 647/2024 Page 1 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 23/08/2024 at 22:11:27
5. The application stands disposed of.
I.A. 35411/2024 (Exemption from advance service)
6. The plaintiffs, vide the present application, are seeking exemption from advance service upon the defendant.
7. Learned counsel for the plaintiffs submit that considering the position involved, particularly since appointment of Local Commissioner for execution of search and seizure at the premises of the defendant 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.
8. 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 defendant.
9. Accordingly, the present application is allowed and disposed of. I.A. 35409/2024 (Additional Documents)
10. The plaintiffs, vide the present application, are seeking time to file additional documents.
11. The plaintiffs will be at liberty to file additional documents at a later stage, albeit, strictly as per the provisions of the Commercial Courts Act, 2015 and Delhi High Court (Original Side) Rules, 2018.
12. Accordingly, the present application is disposed of. CS(COMM) 647/2024
13. The plaintiffs by way of the present suit, seek permanent injunction restraining infringement of trade marks/device/logo/trade name and passing off, dilution, tarnishment, unfair competition, delivery, damages and rendition of accounts.
CS(COMM) 647/2024 Page 2 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 23/08/2024 at 22:11:27
14. Let the plaint be registered as a suit.
15. Upon filing of the process fee, issue summons of the suit to the defendant through all permissible modes returnable before the Joint Registrar on 04.11.2024.
16. 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 plaintiffs, without which the written statement shall not be taken on record.
17. Replication thereto, if any, be filed by the plaintiffs 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.
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 04.11.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
20. List before the Court on 07.01.2025 I.A. 35407/2024 (Stay)
21. The plaintiffs vide the present application, seek an ex-parte ad- interim injunction against the defendant.
22. As per plaintiffs, they are part of Abbott Laboratories (hereinafter referred to as 'Abbott'), which is a leading global pharmaceuticals and healthcare company, offering a wide range of world-class healthcare CS(COMM) 647/2024 Page 3 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 23/08/2024 at 22:11:27 products. Abbott products Operations AG, the plaintiff no.1 herein is a company established under the laws of Switzerland and Abbott India Limited, the plaintiff no.2 herein is a wholly owned subsidiary of ABBOTT.
23. Abbott is amongst the founders of the scientific practice of pharmacy and is one of the leading world-wide health care companies devoted to the discovery, development, manufacture and sale of healthcare products and services, including diagnostics, pharmaceuticals, nutritional and hospital products since the year 1888 a significant global presence in more than 160 countries including India.
24. Apart from having strong physical presence in the market, it is the registered owner of the domain names https://www.abbott.com/ and https://www.abbott.co.in/ which feature the 'DUPHA' marks.
25. Abbott's predecessors-in-title, Dutch Pharmaceuticals coined the trade mark 'DUPHAR' from their company name and adopted the same as a trade name for the newly created company Philips-Duphar B.V. in the year 1949. Philips-Duphar B.V. created and adopted multiple 'DUPHA' prefix/formative marks for goods of their manufacture and sale which covered a wide range of pharmaceuticals. In 1980, Philips-Duphar B.V. was acquired by Solvay and the newly merged company was named as Solvay-Duphar B.V. manufacturer which later became Solvay Pharmaceuticals B.V. in 1997 and in February 2010, Abbott completed its acquisition of the pharmaceutical operations of Solvay Pharmaceuticals and at the time of acquisition, Abbott paid a substantial amount of money to acquire the business, most of whose valuation was attributed to the sales, revenue and goodwill of the 'DUPHA' marks and ever since continued CS(COMM) 647/2024 Page 4 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 23/08/2024 at 22:11:27 building DUPHA family of marks.
26. Abbott has been expanding its products bearing the DUPHA marks and has adopted various trade marks having 'DUPHA' as an integral part, including but not limited to 'DUPHASTN', 'DUPHALAC', 'DUPHABEARS', ' ', 'DUPHALAC FIBER', 'DUPHACHEWS', 'DUPHAR', 'DUPHAPRO', 'DUPHAACTIVE' and 'DUPHAPLUS'. The pictoral depications of some of the said products of the plaintiffs bearing the 'DUPHA' marks are reproduced herein:-
CS(COMM) 647/2024 Page 5 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 23/08/2024 at 22:11:27
27. The plaintiff no.1 is the proprietor of the following trade marks in India:-
S.No. Trade Mark Registration Filing Date Class No.
1. DUPHASTON 198281 05.10.1960 05
2. DUPHALAC 515614 24.08.1989 05
3. DUPHALAC 2687844 26.02.2014 05 FIBER
4. DUPHAPRO 3689204 28.11.2017 05
5. DUPHABEARS IRDI - 20.02.2018 05, 29, 30 3777878 IR - 1189044
6. 4348989 15.11.2019 05
7. 4348988 15.11.2019 05
8. DUPHAR 148107 22.03.1951 05
28. Learned senior counsel for the plaintiffs submits that the trade mark 'DUPHALAC' bearing registration no. 515614 originally in the name of Abbott Healthcare Products B.V., a Group Company of Abbott has since been assigned to the plaintiff no.1 and request to change the name of the proprietor has been allowed but the status page of the registration still reflects Abbott Health Product B.V. as the registered proprietor for 'DUPHALAC' though the plaintiffs are in process of applying the Legal Proceeding Certificates. The mark 'DUPHAR' bearing registration no. 148107, as reflected by records Trade Marks Registry, is in the name of Philips Electrical Company (India) Limited, for which the request fir name change to Abbott Healthcare Products B.V. is pending before the Trade Marks Registry.
29. Learned senior counsel also submits that the mark 'DUPHABEARS' CS(COMM) 647/2024 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 23/08/2024 at 22:11:27 bearing registration no. IRDI- 3777878 has been filed under the provisions of the Madrid Protocol and has been granted protection, is registered and is valid in India as of the date.
30. Learned senior counsel then submits that both adoption and usage of the impugned mark 'DUFAFEM'/ ' ' by the defendant for the purpose of selling dydrogestrone tablets ' ' for the impugned product is bad in law and facts.
31. Learned senior counsel further submits that it was in March, 2023 that the plaintiffs came across a trade mark application bearing no. 5585766 for the mark 'DUFAFEM' dated 27.08.2022 in Class 5 in respect of "Pharmaceutical and Medicinal Preparations" filed by the defendant on a "proposed to be used" basis. The plaintiffs, after its publication in the Trade Mark Journal No. 2092-0 dated 20.02. 2023, filed an Opposition against the same. Since, no response/ counter-statement was filed by the defendant thereto, the said application was disposed of a being abundant by the Trade Marks Registry vide its order dated 12.04.2024.
32. Learned senior counsel also submits that it was thereafter in the month of May, 2024 that the plaintiffs found the listing of the product on its official website www.unizagroup.com with the heading "launching soon" as also on CS(COMM) 647/2024 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 23/08/2024 at 22:11:28 various online pharmacy portals. In fact, the plaintiffs purchased the said product of the defendant from one online pharmacy portal 'Apollo Pharmacy' which was delivered at a Delhi address.
33. Learned senior counsel further submits that the impugned mark/ device/ logo/ name/ packaging/ trade dress 'DUFAFEM' is visually, structurally conceptually, and phonetically identical and/ or deceptively similar to the plaintiffs prior, registered and well-known 'DUPHA' marks. The fact that the defendant exchanged the letters 'PH' with the letter 'F' does not differentiate the impugned product from the well-known 'DUPHA' prefix of the plaintiffs 'DUPHA' marks because the letters 'PH' are pronounced and used interchangeably with the letter 'F'.
34. This Court has heard the learned senior counsel for the plaintiffs and perused the documents on record.
35. At the outset given herein below is a comparative table exhibiting the impugned mark of the defendant with the registered trade marks of the plaintiffs:-
Plaintiffs' DUPHA registered Defendant's impugned mark trade marks DUPHASTON DUFAFEM DUPHALAC DUPHABEARS DUPHALAC BEARS DUPHACHEWS DUPHALAC CHEWS DUPHALAC FIBER DUPHAPRO DUPHAR CS(COMM) 647/2024 Page 8 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 23/08/2024 at 22:11:28
36. The representation of the plaintiffs' registered trade mark 'DUPHASTON' and the defendant's impugned mark 'DUFAFEM' are as under:-
Views Plaintiffs' registered trade mark Defendant's impugned DUPHASTON mark DUFAFEM Front View Back View CS(COMM) 647/2024 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 23/08/2024 at 22:11:28
37. A bare perusal whereof clearly reflects that the defendant has chosen not only to adopt and use an identically similar mark as that of the registered trade mark of the plaintiffs coming from the house of 'DUPHA' but also using the similar device/ logo/ packaging/ trade dress as also the alignment of the product as that of the plaintiff. The similarity of the impugned mark and the impugned product is thus in more than one respect and is writ large.
38. Since the plaintiffs are the prior adopter, prior user as also the prior registrant of the trade marks involved, they have better rights than those of the defendant and also are prima facie well and truly entitled for protection as sought against the defendant. Furthermore, since the defendant is engagement in the same line of business, is/ will be operating in the same circle of trade channels and dealing with the same set of consumers, there is all likelihood of the general public getting deceived and confused into thinking that the product of the defendant is actually coming from the house of the plaintiffs or that it may have any connection with the plaintiff. It is also hard to believe that the defendant was unaware of the plaintiffs and/ or their goodwill and reputation in and to the numerous duly registered 'DUPHA' trade marks.
39. 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, this Court is required to be more cautious and stringent. As such, the competing CS(COMM) 647/2024 Page 10 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 23/08/2024 at 22:11:28 impugned mark/ device/ logo/ name/ packaging/ trade dress of the defendant cannot be allowed to subsist and/ or continue further.
40. In view of the aforesaid, the plaintiffs 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. Further, if the defendant is not restrained by way of an ad interim ex-parte injunction, there is a likelihood of the plaintiffs suffering irreparable harm, loss, injury and prejudice which cannot be compensated for in terms of money.
41. 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 'DUFAFEM'/' ' or any other mark/ device/ logo/ name/ packaging/ trade dress which is identical and/ or deceptively or phonetically similar to the plaintiffs earlier, famous and registered 'DUPHA' marks including but not limited to 'DUPHASTON', 'DUPHALAC', 'DUPHABEARS', ' ', ' ', 'DUPHALAC FIBER', 'DUPHAPRO', 'DUPHACHEWS', 'DUPHAR' in any manner whatsoever without the permission, consent, or license of the Plaintiffs, thereby infringing the rights of the plaintiffs in their registered, earlier and famous 'DUPHA' marks including but not limited to 'DUPHA' Marks including but not limited to 'DUPHASTON', 'DUPHALAC', 'DUPHABEARS', ' ', ' ', 'DUPHALAC FIBER', CS(COMM) 647/2024 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 23/08/2024 at 22:11:28 'DUPHAPRO', 'DUPHACHEWS', 'DUPHAR' amounting to infringement and passing off its goods and businesses as and for the goods and business of the plaintiffs and from taking benefit of the reputation and goodwill of the plaintiffs in any manner whatsoever.
42. Upon filing of the process fee, issue notice to the defendant by all permissible modes returnable before the Joint Registrar on 04.11.2024.
43. 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.
44. The provisions of Order XXXIX Rule 3 CPC be complied within two weeks.
45. List before the Court on 07.01.2025.
I.A. 35408/2024 (Order XXVI Rule 9 CPC, 1908: Appointment of Local Commissioner)
52. The plaintiffs, vide the present application, are seeking appointment of Local Commissioner to visit the premises of the defendant.
53. Learned senior counsel for the plaintiffs submits that the defendant is aware of the plaintiffs and their products and the infringing materials placed on record are clear evidence of the intention of the defendant to ride upon the goodwill and reputation of the plaintiffs. The plaintiffs believe that the infringing products are stocked at the location set out in the memo of parties annexed with the plaint and the defendant is likely to remove all physical evidence or deny their involvement in the infringing activities.
54. 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 CS(COMM) 647/2024 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 23/08/2024 at 22:11:28 deemed appropriate to appoint a Local Commissioner to visit the premises of the defendant.
55. Accordingly, the following is appointed as Local Commissioner with a direction to visit the premises of the defendant as specified against his name:
S. No. Local Commissioner Location
1. Mr. Sameer Sharma, Adv. Uniza Healthcare LLP,
[+91-9213857759] Old Survey No. 404,
Survey No, 919/7,
Pashupati Campus,
Ta-Kadi, Kadi-Detroj Rd,
Balasar, Gujarat-382 715
56. The Local Commissioner to execute the commission in the premises of the defendant with the following directions:-
a) The Local Commissioner be accompanied by a representative and/ or its counsel, who shall be permitted to enter the premises of the respective defendant as per the addresses hereinabove.
b) The Local Commissioner to seize, pack and seal the infringing products bearing the impugned mark or any other mark/ device/ logo/ name/ packaging/ trade dress which is deceptively or confusingly identical and/or similar to plaintiffs' 'DUPHA' marks including but not limited to 'DUPHASTON', 'DUPHALAC', 'DUPHABEARS', ' ', ' ', 'DUPHALAC FIBER', 'DUPHAPRO', 'DUPHACHEWS', 'DUPHAR' and handover the same on Superdari to the defendant CS(COMM) 647/2024 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 23/08/2024 at 22:11:28 upon the said defendant giving an 'Undertaking' that he 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.
c) The Local Commissioner is permitted to take 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, etc. for placing the hard copies or e copies thereof on record.
d) The Local Commissioner is permitted to make a video recording of the commission of the execution at the premises of the defendant in compliance of the present order.
e) The Local Commissioner is 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, if as and when sought for ensuring unhindered and effective execution of the commission at the premises of the defendant in compliance of the present order.
f) If the premises of the defendant is 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 local Police Station.
57. The fee of the Local Commissioner is fixed at Rupees Two Lakhs CS(COMM) 647/2024 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 23/08/2024 at 22:11:28 Only [Rs.2,00,000/-] in addition to all the related expenses for travel as also any other miscellaneous out of pocket expenses for execution of the commission. All the aforesaid expenses shall be borne by the plaintiffs and paid in advance to the Local Commissioner.
58. The commission be executed within a period of two week from today, i.e. on or before 19.08.2024.
59. The report of the Local Commissioner be filed within a period of two weeks from the date of the execution of the commission.
60. A copy of this order be provided to the Local Commissioner.
61. Accordingly, the application is allowed and disposed of.
Dasti.
SAURABH BANERJEE, J AUGUST 5, 2024/rr CS(COMM) 647/2024 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 23/08/2024 at 22:11:28