Delhi District Court
Marion Biotech Pvt Ltd vs Brawn Laboratories Limited on 27 September, 2023
DLCT010046042021
IN THE COURT OF SH. SANJEEV KUMAR AGGARWAL : DISTRICT
JUDGE (COMMERCIAL) 01 : CENTRAL, TIS HAZARI COURTS,
DELHI
CS (Com.) No. 1053/21
M/s. Marion Biotech Pvt. Ltd.,
Having its registered office at :
1497, 1st Floor, Bhardwaj Bhawan,
Bhishm Pitamah Marg,
New Delhi - 110003. ...... Plaintiff.
Versus
M/s. Brawn Laboratories Limited,
Having its office at :
Delhi Stock Exchange Building,
4/4B, Asaf Ali Road,
New Delhi110002. ...... Defendant.
Date of Institution: 23.03.2021
Date of reserving the judgment: 02.09.2023
Date of Judgment: 27.09.2023
CS (Comm) No. 1053/21 Page 1 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
JUDGMENT
1. Vide this Judgment, I will decide the present suit filed by plaintiff against the defendant for permanent injunction restraining infringement of copyright, passing off, delivery up, rendition of accounts etc.
2. Brief facts as stated in the plaint are that plaintiff company is engaged in the business of manufacturing, trading, distribution and exporting of medicinal and pharmaceutical preparations i.e. prescription drugs over the counter (OTC) products, herbal products and cosmetics. having its business operations in various countries around the world such as Azerbaijan, Georgia, Kazakhstan, Kyrgyzstan, Tajikistan, Turkmenistan, Uzbekistan, Ukraine, Central and South American, African and South East Asian Countries.
3. It has been stated that the plaintiff during the course of its business has coined a trade mark "CINEPAR" in respect of its one product (medicine) in the year 1995 and since then it is manufacturing, exporting and selling the goods under the trade mark CINEPAR since the year 1995 openly and extensively. The trade mark CINEPAR is also registered with the Registrar of Trade Mark since 04.11.2009 and the said registration is stated to be still valid, subsisting and in full force.
4. It has further been stated that plaintiff with respect to the packaging / tradedress of the said product has adopted a unique colour combination, design, placement of words, writing style, lay out etc. and CS (Comm) No. 1053/21 Page 2 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. which is original artistic work and thus plaintiff claims existence of its copyright in the said artistic packaging. The said packaging bearing mark CINEPAR is also registered with Registrar of Copyright since 10.06.2013.
5. It has further been stated that on account of open, long and continuous use of the said packaging/trade dress for more than a decade, the said packaging has acquired a high degree of recognition, reputation and goodwill among the buying public in general and trade in particular. It has been thus stated that the said packaging /trade dress connotes and denotes its origination from the plaintiff and from no one else. The impugned product under the said unique packaging and colour combination and also carrying the word "CINEPAR" in English and Russian language on the outer covering is stated to be widely sold in Turkmenistan.
6. The plaintiff has also stated that its has very high sales figures running into 100 of crores over a period of around ten years showing the reputation created by the plaintiff in the said goods. Plaintiff also claims to have invested heavily in the Research & Development of its products and also towards promotion and advertisement of its products all over the world including Turkmenistan. Plaintiff has also mentioned the high sale figures its products in Turkmenistan.
7. It is further stated that in February, 2021, the plaintiff came to know that defendant is also engaged in manufacturing, selling and exporting of medicines is exporting one of its medicine in Turkmenistan in CS (Comm) No. 1053/21 Page 3 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. deceptively similar packaging / trade dress bearing mark "DIKLOPAR".
8. It is stated that the packaging / tradedress being used by defendant is having colour combination, designs, placement of words and design and writing style, lay out etc. which is substantially similar to that of the plaintiff packaging / tradedress. The plaintiff has further stated that there are following similarities between the plaintiff and defendant's tradedress / packaging : S. Plaintiff's Packaging Defendant's packaging No.
1. The shape of box is cuboidal The shape of box is cuboidal with with a hanging thin flap. a hanging thin flap.
2. On front, top of the cuboidal box On front, top of the cuboidal box and on the front of the flap, there and on the front of the flap, there is a clear yellow / golden / is a clear yellow / orangeblue orangeblue color scheme. This color scheme. This has blue text has blue text on yellow / golden on yellow / orange background background majorly along with a majorly along with a small corner small corner top left portion with top left portion with white text on golden text on blue background. blue background.
3. On front, top of the cuboidal box On front, top of the cuboidal box and on the front of the flap, there and on the front of the flap, there are rays of light radiating are rays of light radiating outwards from the center shown outwards from the center shown in the background. Also, these in the background. Also these CS (Comm) No. 1053/21 Page 4 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. regions on lower half have regions on lower half have horizontal lines in background. horizontal lines in background.
4. On front, top of the cuboidal box On front, to of the cuboidal box and on the front of the flap, in and on the front of the flap, in the the small corner top left portion, small corner top left portion, the the text is written in foreign text is written in foreign language language which means "New which means "New Formula". Pack".
5. The placement of various text The placement of various text and design elements are as and design elements are as under : under :
On front, top of the cuboidal box On front, top of the cuboidal box and on the front of the flap : and on the front of the flap :
Brand name in center. Brand name in center.
Foreign text meaning Foreign text meaning "New
"New Pack" on top left Pack" on top left corner.
corner. Design element of 4
Design element of drawing pictures of human body
of a human body on parts on bottom right
bottom right corner. corner.
On back of the box : On back of box :
Indications, dosage on Indications, dosage on
back of box. back of box.
On left, right side of box : On left, right side of box :
Brand name. Brand name.
CS (Comm) No. 1053/21 Page 5 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
On bottom of box : On bottom of box :
Manufacturing details. Manufacturing details.
9. It has been further stated that the Defendant has adopted and used the impugned packaging/trade dress which is deceptively similar to the plaintiff said packaging/trade dress and the Defendant has published/reproduced and used the impugned packaging/trade dress in respect of medicines and defendant has used the impugned packaging/trade dress in order to confuse the unwary customers and members of trade and give a false and fraudulent impression amongst them such that the Defendant's impugned medicines in the impugned packaging/trade dress have a trade connection or trade association with the Plaintiffs source which is not true.
10. It has further been stated that defendant has no right or justification in adoption and use of the impugned packaging / tradedress in respect of similar medicinal preparation and that the plaintiff on account of the said unlawful conduct and unjust trade activities of defendant has suffered immense loss.
11. It is therefore prayed that decree for permanent injunction restraining the defendant from infringing the copy right of the said trade dress/ packaging of plaintiff and passing off the goods by defendant as of plaintiff and be granted and plaintiff be awarded damages.
12. Summons of the suit were sent to defendant and defendant contested the suit by filing written statement. In the written statement, CS (Comm) No. 1053/21 Page 6 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. defendant has made the preliminary objections that the present suit is not maintainable as the claim is barred by the provision of Section 1(2) of The Commercial Courts Act, 2015 as "it extends to the whole of India"
whereas the alleged infringement of copyright indulged by the defendant, albeit not admitted, has occurred in the country of Turkmenistan and the alleged goodwill and reputation and its subsequent alleged loss due to the trade of the defendant has occurred distinctly in Turkmenistan and the alleged confusion, deception of trade, deceiving unwary consumers if any, have occurred in Turkmenistan, hence, the allegation leveled by the plaintiff against the defendant under Section 2(1)(c)(xvii) of the Commercial Court Act, 2015 is not maintainable abinitio and liable to be rejected in limine.
13. It has been further stated that the present suit is not valued correctly for the purposes of court fee and damages.
14. It has been further stated that as a vital anomaly of the suit that the authorized representative of the present suit has been signing and verifying the various documents and on the basis of dubious and deceitful Board Resolution and the Board of Resolution has been drawn on 7th day of January, 2021, which is literally 30 days prior to the date of their alleged cause of action viz. February, 2021 and it is practically impossible for a company's board of directors to give instructions for suing a particular person/entity before the actual commitment of offence by that party, from which the cause of action arises.
15. Defendant has also averred that defendant is a public limited CS (Comm) No. 1053/21 Page 7 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. company which was formed as early as the year 1990 is a WHO GMP & ISO 9001:2008 certified company with state of the art plant, equipped with all modern and advanced technological support for the manufacture of formidable quality pharmaceutical, medicinal preparations, amongst other goods and services. It has been further submitted that the Defendant company has been successfully manufacturing and commercializing their wide array of pharmaceutical and medicinal products through their various distinctive set of trademarks, which are recognized not only in India but in various foreign countries through widespread exportation activities.
16. It has been further submitted that defendant has earned the title of "Star Export House" from the Government of India, besides having received various other accolades and felicitations in lieu of their ardent efforts and successful business in the pharmaceutical industry. It has been further submitted that defendant conducts their exportation business across international borders having its' presence in more than 60+ countries like South East Asia, Africa, Latin America and CIS regions and also holding its International branch/representative offices in Vietnam, Myanmar, Cambodia, Ethiopia and Costa Rica. It has been further submitted that the applicant and its associated group of companies are the legitimate and registered proprietor and/or bonafide licensed user of more than 200 trademarks, particularly in Class05 as recorded in the Trade marks Registry in India and defendants, besides developing distinctive trademarks, have also bonafidely adopted different novel and distinct artistic work which has been incorporated in a CS (Comm) No. 1053/21 Page 8 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. composite form along with their trade marks and only through the implementation of intense artistic craftsmanship, innovative thought process and expenses, the defendant has been able to create their distinct package / label in respect of their trade marks.
17. It has been further stated that one such composite mark adopted by the defendant for the sale of their ever evolving range of manufactures is DICLOPAR, which had been adopted in a composite manner with the articulation of various other artistic features viz. with the device of the sun, horizontal lines, a distinct colour combination, placement of letters, artistic representations and caricatures and is an exquisite and distinctive combination of exceptional artistic representations and caricatures, which is used as the defendant's label / wrapper for the sale of the pharmaceutical preparations in exportation and transborder commerce related purposes.
18. It has been further submitted that defendant had acquired necessary approvals from the state of Turkmenistan for their composite mark /label DICLOPAR for the sale of pharmaceutical preparations in the said country and only after acquiring such permits in all necessary aspects the defendant started manufacturing, selling, exporting and distributing their products under the said mark DICLOPAR in Turkmenistan, which has been in continuance without any break or let till date.
19. Defendant on merits has submitted that the defendant does not hold office or conduct exports, sales of offers for sale any kind of CS (Comm) No. 1053/21 Page 9 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. medicine from the address : 4/4B Asaf Ali Road, New Delhi 110002, as alleged. The defendant holds their registered office at C64, Lajpat Nagar 1, New Delhi 110024, and several other branch and representative offices not only in India but also in foreign territories like Vietnam, Myanmar, Cambodia, Ethiopia and Costa Rica. It is further stated that even though the plaintiff has stated that one Mr. Prashant Kumar has created the said art work in the course of employment, thereafter making the plaintiff the owner of the alleged copyright, they have failed to adduce any evidence to depict the nature of assignment and ownership of the work in accordance to Section 17 and 19 of the Copyright Act, 1957. It has been further stated that the plaintiff has failed to adduce evidence of its usage in the state of Turkmenistan. It is denied that the plaintiff in lieu of their proprietary under the statutory and common law in their packaging/trade dress, its goodwill and reputation, and its copyright, has got exclusive rights to use the same, against others. It stated that the concerned packaging/trade dress is composed of extremely generic illustrations such as colour combination pictorial representations, placement of letters and pictures such as the device of the sub, the horizontal / vertical lines, corner triangular indication of blue colour, device of figurines, and others, those of which are rampantly used in product packaging of various pharmaceutical, medicinal preparations, prescription drugs, OTC drugs.
20. Defendant has denied that the plaintiff is old in the business of manufacturing and exporting medicinal and pharmaceutical preparations. It is stated that defendant who has in the business for last CS (Comm) No. 1053/21 Page 10 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. 30 years whereas the plaintiff company is incorporated in the year 1999 2000. It is further denied that the plaintiff's mark CINEPAR was coined in 1995 or is it inherently distinctive, fanciful or arbitrary. It is stated that the mark is as such not invented in any extent nor has any nature of long term user as claimed at all and the plaintiff's mark CINEPAR has absolutely no relevance to the defendant's business in any manner whatsoever. It is further denied that the plaintiff's products are being sold or marketed or exported to a number of countries. It is stated that the plaintiff's business has not been able to leave a recognizable imprint in the global markets for the sale of pharmaceutical products of any kind, especially in Turkmenistan and the defendant, on the other hand has been conducting trade particularly exportation activities over the past 30 years are well recognized not only by the medical community and Ministries of health and welfare but also amongst the intrinsic chain of distributors, dealers, and various entities of the international network thus preserving transborder reputation for their business through the intrinsic commerce of various kinds of prescription, surgical, pharmaceutical and medicinal drugs sold around the world. It is further stated that the mark CINEPAR is another mark of the plaintiff, which can trade alongside individually and peacefully with other proprietary marks, without causing harm or disturbance as enumerated under the Trade marks law of India.
21. It is further denied that the packaging of the plaintiff's mark has a unique colour combination, design, placement of words and design, writing style, layout etc and is the original artistic work of the plaintiff or any copyright exists in the artistic packaging under the mark CS (Comm) No. 1053/21 Page 11 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. CINEPAR or said packaging has acquired any degree of recognition, reputation and goodwill among the buying public or the trade in particular. It is further denied that the plaintiff's trade dress denotes and connotes an origination from the plaintiff or that it is exclusively associated with the plaintiff being synonymous to them. It is denied that the plaintiff's packaging/ trade dress has been honestly or bonafidely adopted in relation to its goods. It is denied that the defendant has been exporting medicine under their mark DIKLOPAR packaging/trade dress which is similar to that of the plaintiff in colour combination, designs, placement of words, writing style, layout etc. in the country of Turkmenistan. It is denied that the defendant's product reveals a substantial reproduction and deceptive similarity with the plaintiff's packaging/ trade dress. It is further denied that the defendant's packaging under their mark DICLOPAR has been prepared by keeping the plaintiff's said packaging as a model and guide. It is further stated that the plaintiff has intentionally disregarded to arrive at their desired similarity as per their whims.
22. Defendant has further averred that there are following dissimilarities between the plaintiff's and defendant's packaging / trade dress : S. Plaintiff's allegation Denials No. on the defendant.
1. The shape of the That in pharmaceutical trade, cuboidal CS (Comm) No. 1053/21 Page 12 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. box is cuboidal with shape of boxes having a standard size a hanging thin flap. of "80 x 55 x 75 mm" are most commonly shaped carton boxes, owing to the size of standard packaged tablets of "17.0 x 8.0 mm" holding 10 x 10 blister tablets, per box. The thin flap is also a common part of such packaging and literally tons of cartons are shaped in that manner in retail products. Also the plaintiff cannot claim monopoly on cuboidal shaped packaging cartons or flapped cartons for themselves. The shape and design of packaging mostly depends on the size and shape of the products inside the cartons. The plaintiff who has claimed infringement of copyright in their packaging / trade dress cannot thus claim relief for similarity in shape of the packaging, as cubes, cuboid, triangular shapes are publici juris in nature and cannot be owned by one party.
2. On front, top of the Completely disregarding the established cuboidal box and on principles to adjudge composite marks / the front flap there is labels the plaintiff has done critical point CS (Comm) No. 1053/21 Page 13 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. clear yellow / to point analysis, dissected the orange / blue colour composite mark at their whims to arrive scheme. This has at this similarly, which is completely blue text on yellow / unacceptable. Upon perusal of the orange background defendant's composite / mark / label it majorly along with a can be noticed that the defendant's small corner top left carton is composed of is devised of (a) a portion with white device of sun emanating rays and text on blue whereby the plaintiff cannot claim background. monopoly over colour or shape of the sun viz. Yellow or the device by itself (b) device of tablets (c) peach coloured horizontal lines (d) blue colour triangulated indication in the top which is also a very common aspect of retail trade to indicate new aspects of the product (e) the square shaped blue, grey and red collage of human bodies depicting ailments of the body. Under no stretch of imagination, can the plaintiff create monopoly over illustrative devices and its apparent common colour as it exists in nature and restrict the use of available colours. The use of blue text is in artistic consonance of the blue CS (Comm) No. 1053/21 Page 14 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
images which are a prominent and most important part of the packaging, and the plaintiff cannot restrict the use of colours by fellow traders. As such the defendant's packaging / label is completely visually structurally different in all aspects than the plaintiff's packaging.
3. On front top of the As stated above, the plaintiff cannot cuboidal box, the create monopoly over commonly front of the flat there existing pictorial illustrations, which are are rays of light rampantly available in the internet, in the radiating outwards exact same form as the plaintiff's from the centre product. It is indeed an absurd allegation shown in the about radiating sun rays, as sun rays background. Also are always depicted to be emanating these regions on the from the center and the rays emanating lower half have inwards or outwards are all the same. horizontal lines in There are an astounding number of the background. traders who have used the device of the sun in their medicine as well as retail cartons and the plaintiff can't restrict such bonafide traders from implementing the such common to trade illustrations. Similarly horizontal and CS (Comm) No. 1053/21 Page 15 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
vertical lines too can be seen in so many cartons, precisely in pharmaceutical products and implemented commonly.
The plaintiff is making awkward comparisons and monopolistic claims by critically dissecting parts of the defendants' label through meticulous side by side analysis, in order to justify their allegations. It is a fact that the defendant's composite mark / label has been composed artistically with the implementation of artistic work which are both artistically designed along with certain common pictorial drawings, all of which together in a composite manner form the composite label of their brand DICLOPAR. The defendant's composite label cannot be dissected and must only be viewed in a consolidated manner, which is completely dissimilar to the plaintiff's said packaging. The defendant craves leave to display samples of such common aspects of illustrative designs in cartons implanted at bulk, before the Court at the appropriate stage of CS (Comm) No. 1053/21 Page 16 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
proceedings.
4. On front top, top of The blue colour triangulated indication in the cuboidal box the top which is a very common aspect and on the front of of retail trade to indicate new aspects of the flap in the small the product, and are found prevalent in corner top left an astounding number of traded boxes, portion, the text is especially in corners of the cartons in all written in foreign genre of retail product sale. Such language "New indications, in triangulated form are Formula". especially found on top corners. The plaintiff cannot claim similarity based on common practices of retail trade. The defendant craves leave to display samples of such common aspects of new aspect indications in cartons implanted at bulk, before this court at the appropriate stage of proceedings.
5. The placement of The plaintiff in sheer disregard of the various text and above stated principles of rule of anti design elements are dissection, microscopic analysis and as under : side by side comparison, with sinister On front, top of the intentions bringing out the alleged cuboidal box and comparisons.
the front of the flap. As noted in literally all retail box
Brand name packaging for the instant
CS (Comm) No. 1053/21 Page 17 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
in the center. recognition of the brand / trade
Foreign text mark, name of boxes are always
meaning New kept in the center. No monopoly
pack on left can be claimed over central
corner. placement of brands which is
Design done for the convenience of the
elements of public.
four pictures As discussed above, the corner
of human triangulated indication of new
body parts on aspects of the product are most
bottom right common in trade and the plaintiff
corner. by bringing unnecessary
comparisons are willing to create
monopoly. The corner position of
the such new indication aspects of
the products are generally found
the right hand side corner of
products and owing to the cube /
cuboidal shape of the packaging.
Also the text is entirely different as
it is written "new formula" and has
nothing to do regarding the pack,
which please be noted.
The collage containing 4
illustrations of human indicating
CS (Comm) No. 1053/21 Page 18 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
pain in body parts are the exclusive artistic compilation of the defendant and nowhere similar to that of the defendant.
Like the device of tablets are kept on the left side of the label, the pictorial illustrations are kept a right, placing the indication of the produt being sold, on either sides of the brand writing, in an artistic manner, for the convenience of the public. There is no plausible explanation as to how the plaintiff has the right to dissect intentionally and intrude on the placement of various objects of the defendant's artistic work, at their own whims, completely ignoring other important objects, so as to mislead the court. The overall consolidated label of the plaintiff considering artistic work, placement of words and illustrations, font style, font size, style of writing, depiction of brand CS (Comm) No. 1053/21 Page 19 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
name, colour comination is
completely divergent than the
plaintiff's mark and the allegations
brought on by the plaintiff has
been arrived nefariously by
absolute ignorance of the various
principles of law stated above.
6. On the back of the For the purpose of identification,
box. the defendant has prominently
Indication, covered the entire part of the
dosage on the packaging with the brand name of
back of the their product and with the clear
box. reference of their mark in right left
On left, right top part of the carton. Such an act
side of the box. of brand display containing a mark
Brand name. which is completely dissimilar with
On bottom of plaintiff's mark per se, kind of
the box. similarity can be established with
Manufacturing the farthest of imagination.
details. The manner or writing of dosage,
description and other details of
the prescription drugs are
mandatory aspects in the sale of
pharmaceutical goods, which is
also as a common form of
CS (Comm) No. 1053/21 Page 20 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
practice, indicated in all products in the back part of the box.
Thus, defendant has prayed for dismissal of the suit with costs.
23. Plaintiff has filed replication in which he denied the contents of written statement is incorrect and stated that the contents of the plaint are true and correct. It is denied that the said claim is barred by the preceding provision of Section 1(2) of The Commercial Courts Act, 2015 which is stated that if the Defendant manufactures the incriminating goods in India and packs the same in infringing packaging in India and exports the same from India, the copyright's infringement action and passing off action are maintainable in India. It is submitted that in the first week of January 2021, plaintiff had got knowledge from its own source that the Defendant is manufacturing and packing the medicine in the impugned packaging/trade dress bearing mark DICLOPAR having colour combination, designs, placement of words and design, writing style, lay out etc. substantially similar to the Plaintiffs said packaging/trade dress and thereafter started inquiry in the export market in CIS countries to find out whether the Defendant was exporting the said medicine in the impugned packaging/trade dress bearing mark DICLOPAR or not and hence in January 2021, Board resolution in Board meeting of the Plaintiff company was passed for taking legal action against the Defendant. However, in February 2021 the Plaintiff got confirmation that the Defendant is exporting its medicine in Turkmenistan from India in CS (Comm) No. 1053/21 Page 21 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. deceptively similar packaging/trade dress bearing mark DIKLOP AR and therefore, pleaded cause of action arose in February 2021 when the Plaintiff came to know that the Defendant is exporting its medicine in Turkmenistan in deceptively similar packaging/trade dress bearing mark DIKLOP AR having colour combination, designs, placement of words and design, writing style, lay out etc. substantially similar to the Plaintiff's said packaging/trade dress.
24. It is denied that the Defendant Company is a WHO GMP & ISO 9001:2008 certified company with state of the art plant or equipped with all modern and advanced technological support for the manufacture of formidable quality pharmaceutical, medicinal preparations, amongst other goods and services. It is further denied that the Defendant company was formed as early as the year 1990 or has been successfully manufacturing or commercializing their wide array of pharmaceutical and medicinal products through their various distinctive set of trademarks which are allegedly recognized not only in India but in various foreign countries through widespread exportation activities. It is denied that the defendant does not hold office or conduct exports, sales of offers for sale any kind of medicine from the given address: 4/4B Asaf Ali Road, New Delhi 110002. It is submitted that the defendant on its own website i.e. www.brawnlabs.com has clearly referred the address: 4/4B Asaf Ali Road, New Delhi 110002 as its exports office. It is not denied that the defendant holds their registered office at C64, Lajpat Nagar 1, New Delhi 110024. It is denied that the plaintiff company was incorporated in the year 19992000, is a much a newer business compared to the CS (Comm) No. 1053/21 Page 22 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. Defendant's business group who had been allegedly in the trade of manufacturing or selling or exporting medicinal and pharmaceutical preparations ever since 1985 or subsequently expanded by the incorporation of the defendant company in 1990. Thus, the plaintiff again reiterated that plaintiff is entitled to decree as claimed in the instant suit.
25. Plaintiff alongwith the suit has also filed an application under Order XXXIX Rule 1 & 2 CPC for seeking exparte adinterim injunction but the said application was dismissed vide order dated 01.10.2021 and the said order was challenged by plaintiff before Hon'ble Delhi High Court and Hon'ble Delhi High Court in case FAO (Comm) No. 06/2022 vide order dated 01.02.2022 set aside the impugned order and remanded the case back to rehear the counsels and thereafter, vide order dated 01.12.2022 the application under Order XXXIX Rule 1 & 2 CPC was dismissed.
26. After completion of pleadings, the following issues were framed on 06.01.2022 :
1. Whether the defendant by use of packaging/trade dress bearing mark DIKLOPAR in respect of medicine being manufactured, sold and exported by it has infringed the plaintiff's copyright in the packaging /trade dress being used by it for its medicine CINEPAR ? OPP.
2. Whether the plaintiff is entitled to decree for perpetual injunction restraining the defendant or his servants, agents or persons claiming under him from using, CS (Comm) No. 1053/21 Page 23 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. reproducing, publishing and/or visual representation of the impugned packaging with respect to its medicine DIKLOPAR which is stated to be deceptively similar to the plaintiff's packaging / trade dress with respect to its medicine CINEPAR ? OPP.
3. Whether the plaintiff is entitled to decree for perpetual injunction restraining the defendant or his servants, agents or persons claiming under him from manufacturing, exporting, selling, offering for sale and/or dealing in any manner medicinal and pharmaceutical preparation and/or allied/cognate goods and/or goods of same trade connection in the impugned packaging/trade dress with respect to its medicine DIKLOPAR which is deceptively similar/substantial reproduction to the plaintiff's packaging/trade dress with respect to its medicine CINEPAR amounting to passing off the defendant's goods as that of plaintiff ? OPP.
4. Whether the plaintiff is entitled to decree of damages for a sum of Rs. 10,00,000/ against the defendant ? OPP.
5. Whether the plaintiff is entitled to decree for rendition of accounts of profits stated to have been earned by the defendant by allegedly infringing its trademark ? OPP.
CS (Comm) No. 1053/21 Page 24 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
6. Who is entitled to the costs, against whom and in what quantum? Onus on parties.
7. Relief.
27. In order to prove its case plaintiff has examined Ms. Ishita Sinha as PW1 who tendered her evidence by way of affidavit Ex.PW1/A and relied upon the documents i.e. Ex. PW1/1 to Ex. PW1/11.
28. In order to disprove the claim of plaintiff, defendant has ex amined Sh. Satyendra Verma as DW1 who led his evidence by way of affidavit Ex.DW1/A& Ex. DW1/B and relied upon the documents i.e. Ex. DW1/1 to Ex. DW1/3.
29. Arguments were heard from Sh. Vivek Singh, Ld. Counsel for plaintiff and Ms. Garima Gupta, Ld. Counsel for defendants.
30. I have heard submissions and gone through the record. My issue wise findings are as under : ISSUE NO. 1 : Whether the defendant by use of packaging/trade dress bearing mark DIKLOPAR in respect of medicine being manu factured, sold and exported by it has infringed the plaintiff's copy right in the packaging /trade dress being used by it for its medicine CINEPAR? OPP.
AND ISSUE NO. 2 : Whether the plaintiff is entitled to decree for perpetual injunction restraining the defendant or his servants, CS (Comm) No. 1053/21 Page 25 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. agents or persons claiming under him from using, reproducing, publishing and/or visual representation of the impugned packaging with respect to its medicine DIKLOPAR which is stated to be deceptively similar to the plaintiff's packaging / trade dress with respect to its medicine CINEPAR ? OPP.
AND ISSUE NO. 3 : Whether the plaintiff is entitled to decree for perpetual injunction restraining the defendant or his servants, agents or persons claiming under him from manufacturing, exporting, selling, offering for sale and/or dealing in any manner medicinal and pharmaceutical preparation and/or allied/cognate goods and/or goods of same trade connection in the impugned packaging/trade dress with respect to its medicine DIKLOPAR which is deceptively similar/substantial reproduction to the plaintiff's packaging/trade dress with respect to its medicine CINEPAR amounting to passing off the defendant's goods as that of plaintiff ? OPP.
31. Since the aforesaid three issues are interconnected hence, I shall decide all the three issues simultaneously.
As stated above, plaintiff in order to prove its case has ex amined only one witness i.e. Ms. Ishita Sinha as PW1 who tendered her evidence by way of affidavit Ex.PW1/A. He through his evidence affidavit CS (Comm) No. 1053/21 Page 26 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. has reiterated the same facts in his examination in chief as stated by plaintiff in the plaint and relied upon the following documents :
1. Copy of board resolution dated 07.03.2023 is Ex. PW1/1 (OSR).
2. Printout of address of defendant taken from website www.brawnlabs.in is deexhibited, which is Ex. PW1/2 in my affidavit, and same is now marked as MarkA (being not accompanied with certificate u/s 65B of Evidence Act).
3. Certificate by way of affidavit of Ms. Ishita Sinha is de exhibited, which is Ex. PW1/3 in my affidavit, as same is not on record.
4. Copy of entry in the Register of Trademarks relating to registered trade mark no. 1880495 is deexhibited, which is Ex. PW1/4 in my affidavit, and same is now marked as Mark B (being photocopy).
5. Copy of legal proceedings certificate dated 12.03.2021 is Ex. PW4A.
6. Copy of copyright registration certificate under no. A 101027/2013 dated 10.06.2013 alongwith specimen of plaintiff's packaging / trade dress are deexhibited, which are Ex. PW1/5 & Ex. PW1/6 respectively in my affidavit, and same are now marked as Mark C & D respectively (being photocopy).
7. Copy of sales invoices from 2011 to 2020 is de CS (Comm) No. 1053/21 Page 27 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. exhibited, which is Ex. PW1/7 (Colly) in my affidavit, and same is now marked as Mark E (being photocopy).
8. Front portion of plaintiff's and defendant's packaging are Ex. PW1/8 & Ex. PW1/9 respectively.
9. Back portion of plaintiff's and defendant's packaging are Ex. PW1/10 & Ex. PW1/11 respectively.
32. In his cross examination, PW1 has admitted that there is only prayer for infringement of copy right and there is no prayer for in fringement of trade mark there is no flap on the packing of the trademark which she has filed today which is part of the registration copyright Ex. PW1/6. She stated that they got information about the infringement of plaintiff trade mark by defendant in January 2021. She stated that plaintiff company export to CIS countries including Uzbakistan and Turk menistan. She further stated that presently plaintiff company is not ex porting. She stated that she does not whether the certificates issued by the National and International authorities in the form of GMP, GLP and ISO 9001:2008 still stand valid. She stated that she does not know whether WHO has issued any warning against the usage of plaintiff com pany product. She denied the suggestion that there is no similarities be tween the packaging of plaintiff and defendant or that there is lot of differ ences between plaintiff and defendant packaging as stated by defendant in written statement. She denied the suggestion that there is no infringe ment of the copyright of packaging of the plaintiff by the defendant as both packagings are different.
CS (Comm) No. 1053/21 Page 28 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
33. On the other hand, in order to deny the relief of plaintiff, de fendant has also examined one witness i.e. Sh. Satyendra Verma as DW1 who led his evidence by way of affidavit Ex.DW1/A& Ex. DW1/B has almost repeated the same contents as stated in the written statement and relied upon the following documents :
1. Board resolution dated 22.01.2022 is Ex. DW1/1.
2. Copy of acquired permits is Ex. DW1/2.
3. Certificate under Section 65B of Indian Evidence Act is Ex. DW1/3.
34. In his cross examination, DW1 has deposed that composite mark is an exquisite and distinctive combination of exceptional artistic representation and caricature. He further deposed that the graphic de signers designed the packaging of the product DICLOPAR. He further deposed that he does not remember whether the graphic designer was in house or it was outsourced and he is not aware whether the art work on the packaging of the product DICLOPAR is registered. He further de posed that the medicine DICLOPAR is used as a painkiller. He denied the suggestion that they had any knowledge of the product CINEPAR be fore exporting DICLOPAR to Turkmenistan. He was shown the packag ing of CINEPAR and DICLOPAR at Ex. PW1/8 and Ex. PW1/9, he had admitted that both the boxes are cuboidal but they have different dimen sions. He further admitted that both the boxes have flaps and it is a com mon practice and the product name on both the boxes are in different colourshades of blue. He further admitted that both the boxes CS (Comm) No. 1053/21 Page 29 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. have emanating rays device but it is a common practice. He further ad mitted that both the boxes have horizontal lines below the rays but with different width and different pattern and different colourshade. He further admitted that both the boxes have blue corner triangulation on top left but of different shades and it is a common practice in retail / pharma packaging. He further deposed that Ex. PW1/8 has a depiction of a vector at bottom right corner and Ex. PW1/9 has depiction of multiple human body pain images. He denied the suggestion that the packaging of DICLOPAR is identical to plaintiff's product CINEPAR.
35. It is argued by Ld. Counsel for applicant/plaintiff that both plaintiff and defendant are in similar trade of medicines/ pharmaceutical goods. The plaintiff's trademark was registered in the year 2009 and artistic work was registered in year 2013 and there are numerous distin guish features of artistic work such as curve horizontal lines of sun rays, blue print, flap on the box, glossary paper and the yellow/golden/orange blue color scheme. The defendant has copied the tradedress / packag ing which plaintiff is using for its product used in Turkmenistan and the same is deceptively similar to the plaintiff tradedress / packaging, thus, violated the copyright of the plaintiff's aforesaid tradedress / packaging.
36. Ld. Counsel for plaintiff further argued that while deciding whether defendant has infringed the trademark of plaintiff's both packag ing are not to be kept by side by side but has to be seen from the eyes of a laymen i.e. whether he get confused and thought that he is purchasing the goods of the plaintiff due to the similarities or packaging/ trade dress CS (Comm) No. 1053/21 Page 30 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. of plaintiff and defendant goods. He argued that the color combination used by the defendant for his trade dress is similar to plaintiff i.e. use of yellow, orange colour and blue colour, the sun rays and horizontal line under the sun rays like sun rays are coming out of waves and use of flap for the box at first glance make defendant product look are so simi lar to that of plaintiff that public can get deceived that it is product of the plaintiff.
37. Ld. Counsel for plaintiff further argued that since plaintiff's and defendant's products are medicinal in nature, therefore, more strin gent test are required. Thus, defendant has tried to encash the popularity of the plaintiff's good. Therefore, decree for permanent injuction be passed in favour of plaintiff and defendant is to be restrained by using the similar kind packaging for its products.
38. Ld. Counsel for plaintiff further argued that both plaintiff and defendant are selling their products mainly in Turkmenistan where plain tiff's brand was already established which is evident from its sale figures which goes in crores and considering the popularity of plaintiff trade mark, trade dress defendant with malafide intention adopted the similar trade dress and trade packaging and same is causing loss to the plaintiff and thus plaintiff is entitled to the damages as claimed in the suit.
39. On the other hand, Ld. Counsel for defendant has argued that it is settled law that while comparing two different trade mark/ dress/ packaging whether they are deceptively similar or not, rule of anti dissec tion which clearly states that in relation to composite mark the subject CS (Comm) No. 1053/21 Page 31 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. mark must be compare with rival mark in its entirety, rather than dissect ing into its components, micro analysis i.e. mark must be compare as a whole, and side by side analysis should not be done.
40. Ld. Counsel for defendant has argued that the trade dress/ packing of defendant's products are altogether different from the packag ing of plaintiff's products and thus there is no infringement of copyright of goods by the defendant as the goods of the plaintiff. He argued that size of the boxes of plaintiff and defendant product are quite different as plain tiff package is quite bigger than defendant box, the paper used by the both the boxes are quite different as plaintiff has used glossy paper where as defendant paper is non glossy, plaintiff has only used Russian language on his packaging whereas defendant has used both Russian and English language for his packaging, plaintiff has shown vec tor of a single man doing exercise whereas defendant has depicted pain in four different body parts in four square boxes and displayed defendant company name BRAWN prominently on all sides of packaging thus there is lots of differences between plaintiff and defen dant packing.
41. Ld. Counsel for defendant further argued that similarities pointed out by the Ld. Counsel for plaintiff i.e. sun rays, horizontal line and triangle in blue colour on all the sides are quite common in medicinal product since no injunction can be granted on the basis of said similari ties. Therefore, suit is liable to be dismissed with costs.
CS (Comm) No. 1053/21 Page 32 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
42. I have heard the arguments and gone through the record. Admittedly both plaintiff and defendant trade mark are not similar as plaintiff trade mark is "CINEPAR" and defendant trade Mark is "DI CLOPAR". Even Plaintiff has not sought the relief of injunction on the ground of infringement of its trade mark and only sought injunction on the ground of infringement of copy right of its trade dress/ trade packaging being deceptively similar/substantially reproduction of the plaintiff trade dress/ packaging. According to testimony of PW1 defendant is passing off its goods as goods of plaintiff by using similar kind of trade dress/ packaging.
43. Passing off is an action founded in common law, which is based on the principle that noone has the right to represent their goods or services as those of someone else.
44. In Cadila Health Care Ltd Vs. Cadila Pharmaceuticals Ltd., 2001 (5) SCC 73, the Hon,ble Supreme Court laid down the fol lowing test for determining deceptive similarity:
"35. Broadly stated, in an action for passingoff on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are CS (Comm) No. 1053/21 Page 33 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks".
45. In Satyam Infoway v. Siffynet Solution Pvt. Ltd., (2004) 6 SCC 145 Supreme Court, the Hon'ble Court has held that :
"13. The next question is, would the principles of trade mark law and in particular those relating to passing off apply? An action for passing off, as the phrase "passing off" itself suggests, is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are the plaintiff's. The action is normally available to the owner of a distinctive trade mark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then the trader who is able to establish prior user will succeed. The question is, as has been aptly put, who gets these first? It is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would CS (Comm) No. 1053/21 Page 34 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
depend upon the volume of sales and extent of
advertisement.
14. The second element that must be established by a plaintiff in a passingoff action is misrepresentation by the defendant to the public. The word misrepresentation does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is such that it is worth the defendant's while to cash in on it. An innocent misrepresentation would be relevant only on the question of the ultimate relief which would be granted to the plaintiff[Cadbury Schweppes v. Pub Squash, 1981 RPC 429 : (1981) 1 All ER 213 : (1981) 1 WLR 193 (PC); Erven Warnink v. Townend, 1980 RPC 31 : (1979) 2 All ER 927 :
1979 AC 731 (HL)] . What has to be established is the likelihood of confusion in the minds of the public (the word "public" being understood to mean actual or potential customers or users) that the goods or services offered by the defendant are the goods or the services of the plaintiff. In assessing the likelihood of such confusion the courts must allow for the "imperfect recollection of a person of ordinary memory" [Aristoc v. Rysta, 1945 AC 68 : (1945) 1 All ER 34 (HL)] .
15. The third element of a passingoff action is loss or the likelihood of it."
46. Though in the present case, similarity of trade mark is not in question as only similarity of trade dress/ trade packaging has been claimed by the plaintiff but in my view aforesaid principal would apply in CS (Comm) No. 1053/21 Page 35 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. this case too. Applying the principles of passing off as set out in the aforesaid precedents to the facts of the present case, in my prima facie view, the plaintiffs has failed established a case of passing off, for the reasons set out hereinafter. I am fully agree with the submissions of Ld. Counsel for parties that while making comparison whether packaging of the color scheme of the product and the infringed product is similar. Both the products has not to be put side by side and only product seen as a whole and if packing of the two products looks similar then it could cause deception in the mind of public who purchases then injunction is to be granted.
47. From the perusal of the pleadings it is evident that the dispute is with respect to the packaging of the drugs CINEPAR being marketed by applicant/plaintiff and correspondence drugs DIKLOPAR being marketed by respondent / defendant both in Turkmenistan. The case of the plaintiff is that plaintiff is the registered proprietor of the trademark CINEPAR which was registered on 04.11.2009 and thereafter plaintiff started manufacturing the drugs with the said trademark. Further, case of the plaintiff is that the said packaging of CINEPAR has been registered under the Copyright Act, 1957 on 10.06.2013 and the said packaging has acquired high degree of recognition, reputation and goodwill among the buying public in general and trade in particular. According to the plaintiff, the packaging / tradedress of defendant's drugs i.e. DIKLOPAR is similar to the packing / tradedress of plaintiff's drugs and the similarity has been pointed out as (1) the shape of the box is cuboidal with a hanging thin flap (2) on front, top of the cuboidal box CS (Comm) No. 1053/21 Page 36 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. and on the front of the flap, there is a clear yellow/golden/orangeblue color scheme whereas on defendant, there is a clear yellow/orangeblue color scheme (3) on front, top of the cuboidal box and on the front of the flap, there are rays of light radiating outwards from the centre shown in the background and also these regions on lower half have horizontal lines in background in both the packaging (4) on front, top of the cuboidal box and on the front of the flap, in the small corner top left portion, the text is written in foreign language which means "New Pack" in plaintiff and "New Formula" in defendants packaging (5) on front, top of the cuboidal box and on the front of the flap, brand name written in centre and foreign text meaning "New Pack" on the top left corner in both packagings and design element of drawing of a human body on bottom right corner in plaintiff and design element of 4 pictures of human body parts of bottom right corner in defendant packaging (7) indication, dosage on back of box, on left, right side of boxbrand name, on bottom of box manufacturing details in both packaging.
48. Undoubtedly above mentioned similarities exist in plaintiff's and defendant's packaging/ trade dress. But there are various dissimilarities too which make both packaging look quite dissimilar. To better understand the similarities and dissimilarities of two trade dress / packaging, it would be appropriate to put pictures of the both packaging scanned copy of which is as under : CS (Comm) No. 1053/21 Page 37 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
PLAINTIFF'S PACKAGING
CS (Comm) No. 1053/21 Page 38 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
DEFENDANT'S PACKAGING
CS (Comm) No. 1053/21 Page 39 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
49. From perusal of both the Packagings, it can be said that both packaging are cuboidal boxes and there is flap but the size of cuboidal box of defendant is quite smaller than that of plaintiff. On the box of plaintiff there is specific display trademark of the plaintiff trade name CINEPAR and others details in English Language on the one side of the box in Russian language whereas in the defendant's box the trade name and others details are in Russian Language. The Trade name of defendant DICLOPAR is mentioned in BOLD letters on all sides in Russian Language on all the sides and also on flaps.
50. According to contention of Ld. Counsel for plaintiff colour combination of both the boxes are quite similar as plaintiff have used yellow/ golden and orange colour whereas defendant has used yellow and orange colour but I am not agree with the same. The packaging/ trade dress on the first glance looks quite dissimilar due to the fact that plaintiff has used the glossy paper for its packaging whereas defendant packaging is non glossy paper. Further, defendant has used yellow colour to depict sun rays and back portion and flaps in defendant box is also of yellow colour and portion in which horizontal line are drawn is of orange color where as in plaintiff packaging sun rays appears to be golden colour and not yellow colour and horizontal line also appears to be of brown colour and not pink colour. The flap of plaintiff box is of brown colour. Undoubtedly colour of triangle on the top corner in both the packages are blue but same also look quite different due to use of glossy paper by plaintiff. Furthermore, name of the defendant CS (Comm) No. 1053/21 Page 40 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. company "BRAWN" has been specifically displaced in all sides of box of the defendant packaging whereas in the plaintiff's packaging there is no name of plaintiff company. There are four boxes in blue colour over the horizontal line having different part of human body showing pain through red colour on defendant packaging, whereas plaintiff's box there is a depiction of a man doing exercise or dancing which altogether make both packaging look quite different. There is hologram QURAMAX is written on the plaintiff's box and there is no hologram mark in the defendant's box. The defendant's box contains two tablets on each side of the box whereas there is no picture of tables on the plaintiff's box. In these circumstances, I am agree with the submissions of learned counsel for defendant that due to the said dissimilarities defendant packaging look quite distinct from plaintiff packaging and there appear to be no such similarities between the plaintiff and the defendant box trade dress / packaging so that it can be said that defendant has copied its tradedress / packaging from the trade dress/ packaging of plaintiff goods.
51. I am not agreed with the submissions of plaintiff's counsel that placing of sun rays and horizontal line below in plaintiff's packaging gives impression that sun rays are coming out from waves and same has been copied by the defendant. No such averment has been made by the plaintiff either in the plaint or PW1 in his testimony. Further I am agree with the contention of Ld. Counsel for defendant that picture of sun ray and horizontal line and triangular of blue (on which new pack is written) on the corner of each side exist in both the packagings are quite CS (Comm) No. 1053/21 Page 41 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. common features in tradedress / packaging of the product of different companies and even defendant has shown some boxes of different companies during final arguments which are having pictures of sun rays, horizontal line etc. In my view, because of these similarities it cannot be said that defendant has copied the tradedress / packaging of plaintiff. In these circumstances, I held that plaintiff has failed to prove that defendant has done copy of plaintiff's tradedress / packaging and they are deceptively similar to plaintiff's tradedress / packaging.
52. Further, I am also agree with the submission of the Ld. Counsel for defendant plaintiff goods is medicine and thus cannot be sold without Doctor prescription and usually Doctor prescribe the medicine by its trade name and not by trade dress/ trade packaging therefore it is very difficult that due to some similarities in trade dress/ packaging of plaintiff and defendant any confusion will be caused in the mind of purchaser of the goods.
53. Further plaintiff has claimed that he is prior user of the trade dress/ trade packaging which according to PW1 plaintiff is using the same since 2009. According to PW1 copy right of said trade dress/ packaging was registered under no. A101027/2013 dt. 10.06.2013 and proved the registration certificate and specimen of trade dress/ packaging as Ex. PW1/5 and Ex. PW1/6. According to PW1 said trade dress/ packaging was used in Turkmenistan only. Though plaintiff has in the plaint and PW1 in her evidence affidavit has given the sale figure of goods in said packaging/ trade dress bearing mark CINEPAR from year CS (Comm) No. 1053/21 Page 42 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. 201011 which is approx. Rs. 11 Crore in year 201011 and rose to Rs.22 crore upto 2021 but PW1 in her testimony has not proved any documents to corroborate the sale figure as invoices mark E which she relied upon to prove sale in Turkmenistan cannot be relied upon being photocopy. Even otherwise same are sale of goods in Uzbekistan whereas case of plaintiff is that it is selling goods in Turkmenistan and defendant is also selling goods deceptively similar to its trade dress/ packaging in Turkmenistan and it is not the case of plaintiff that defendant is also selling its goods under similar trade dress/ packaging in Uzbekistan thus the said invoices does not help plaintiff to prove its case that it was selling the medicine " CINEPAR" in Turkmenistan much less to the tune of Rs. 22 crore in year 2020 21 as deposed by PW1 in her testimony. She did not prove any other documents that aforesaid goods/ medicine were being sold in Turkmenistan much less the sale as claimed by plaintiff. Hence plaintiff even failed to proved that plaintiff has such a high sale in Turkmenistan for his medicine and defendant copied its trade dress/ packaging to boost its sale of medicine or that people in Turkmenistan were so familiar with plaintiff medicine that they recognize the same from its packaging and will be confused to purchase goods of defendant due to similarities of packaging.
54. In view of aforesaid discussion, I hold that plaintiff has failed to prove that defendant has copied the trade dress/ packaging for its product from the packaging/ trade dress used by plaintiff or that defendant trade dress/ packaging used by its for its product e. medicine in Turkmenistan is deceptively similar to the trade dress/ packaging of CS (Comm) No. 1053/21 Page 43 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd. plaintiff trade dress/ packaging used by plaintiff for its its medicine in Turkmenistan and thus plaintiff is not entitle to decree of perpetual injunction against the defendant or his servants or agents restraining it from using, reproducing, publishing or visual representing the said trade dress/ packaging. Hence, I decide issues No. 1 to 3 against the plaintiff.
ISSUE NO. 4 : Whether the plaintiff is entitled to decree of damages for a sum of Rs. 10,00,000/ against the defendant ? OPP.
AND ISSUE NO. 5 : Whether the plaintiff is entitled to decree for rendition of accounts of profits stated to have been earned by the defendant by allegedly infringing its trademark ? OPP.
AND ISSUE NO. 6 : Who is entitled to the costs, against whom and in what quantum? Onus on parties.
55. In view of my finding on issues No. 1 to 3, I held that since the plaintiff has failed to prove that defendant has infringed the copy right of trade dress of plaintiff or passed off its goods in packaging which is deceptively similar to plaintiff trade dress/ packaging therefore plaintiff is not entitled to any damages or rendition of account. Issues No. 4, 5 and 6 are decided accordingly against the plaintiff.
CS (Comm) No. 1053/21 Page 44 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.
56. RELIEF.
In view of my finding of aforesaid issues, I held that plaintiff is not entitled to any relief hence the suit is dismissed with costs. Decree sheet be prepared accordingly File be consigned to the record room.
Announced in the open court (Sanjeev Kumar Aggarwal)
on 27.09.2023 DJ (Commercial)01, Central,
Tis Hazari Courts / Delhi
CS (Comm) No. 1053/21 Page 45 of 45.
M/s. Marion Biotech Pvt. Ltd. Vs. M/s. Brawn Laboratories Ltd.