Glenmark Pharmaceuticals Ltd vs Mankind Pharma Ltd on 9 February, 2021

[Cites 4, Cited by 0]

Bombay High Court

Glenmark Pharmaceuticals Ltd vs Mankind Pharma Ltd on 9 February, 2021

Bench: G.S. Patel

                              27-IAL7350-2020 IN COMIPL7340-2020 WITH LPETNL7354-2020.DOCX




                   Atul



                          IN THE HIGH COURT OF JUDICATURE AT BOMBAY
                             ORDINARY ORIGINAL CIVIL JURISDICTION
                                    IN ITS COMMERCIAL DIVISION
                            INTERIM APPLICATION (L) NO. 7350 OF 2020
                                                      IN
                             COMMERCIAL IP SUIT (L) NO. 7340 OF 2020
                                                    WITH
                                LEAVE PETITION (L) NO. 7354 OF 2020


                    Glenmark Pharmaceuticals Ltd                                 ...Plaintiff
                         Versus
                    Mankind Pharma Ltd                                         ...Defendant


                    Mr Hiren Kamod, with Mahesh Mahadgut, & Poonam Teddu, i/b
                         Mahesh Mahadgut, for the Plaintiff.
                    Dr Veerendra Tulzapurkar, Senior Advocate, with Hemant
                         Daswani, i/b Dushyant Krishnan, for the Defendant.


                                           CORAM:          G.S. PATEL, J
Atul G.                                    DATED:          9th February 2021
Kulkarni            PC:-
Digitally signed
by Atul G.
Kulkarni
Date: 2021.02.10
14:19:00 +0530

                   1.

The Suit is an action in trade mark infringement sought to be combined with the cause of action in passing off. The Defendant is represented.

Page 1 of 3

9th February 2021 27-IAL7350-2020 IN COMIPL7340-2020 WITH LPETNL7354-2020.DOCX

2. There is a pending Petition under Clause XIV of the Letters Patent. There is an Affidavit in Reply to oppose that Petition. The ground of opposition is that the Plaintiff has an administrative and other office in Delhi where the Defendant also has its office and, therefore, this Court does not have the jurisdiction to entertain the common law action in passing off. Therefore, it is submitted that the Clause XIV Petition should be rejected.

3. I cannot accept this submission. The position in law is settled under the provisions of the Trade Marks Act, 1999. The Plaintiff has a special jurisdictional dispensation in addition to the regular jurisdictional provision under Section 20 of the Code of Civil Procedure, 1908.1

4. In any case, the Plaintiffs have stated in the Affidavit in Rejoinder in the main Interim Application that they have been able to purchase the Defendant's competing product in Mumbai.

5. Accordingly, the Clause XIV Petition is made absolute.

6. Dr Tulzapurkar for the Defendant states that now that the two cause of actions have been combined, the Defendant will file a further Affidavit in Reply dealing with the cause of action in passing off as well. That Affidavit is to be filed and served on or before 18th 1 Indian Performing Rights Society Ltd v Sanjay Dalia & Anr, (2015) 10 SCC 161; Manugraph India Ltd v Simarq Technologies Pvt Ltd & Ors, (2016) 67 PTC 254 Page 2 of 3 9th February 2021 27-IAL7350-2020 IN COMIPL7340-2020 WITH LPETNL7354-2020.DOCX February 2021. A response Affidavit (by whatever name called) is to be filed and served on or before 26th February 2021.

7. List the Interim Application for final hearing on 10th March 2021.

8. The Registry will ensure that all the Affidavits are sequentially paginated and correctly arranged.

9. This order will be digitally signed by the Private Secretary of this Court. All concerned will act on production of a digitally signed copy of this order.

(G. S. PATEL, J) Page 3 of 3 9th February 2021

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