Delhi District Court
M/S. Laborate Pharmaceuticals India ... vs Nectar Herbs And Drugs on 20 July, 2024
DLCT010073912020
IN THE COURT OF DISTRICT JUDGE (COMMERCIAL COURT)-01,
CENTRAL, TIS HAZARI COURTS, DELHI
PRESIDED BY: MR. SANJEEV KUMAR AGGARWAL
IN THE MATTER OF:
CS (Comm.) No. 1613/20
M/S. LABORATE PHARMACEUTICALS INDIA LTD.
CORPORATE OFFICE
308-309 CROWN HEIGHTS,
SECTOR-10, ROHINI,
NEW DELHI-110085
.......PLAINTIFF
VERSUS
1. NECTAR HERBS & DRUGS
Plot no. B-19, IIE SIDCUL,
Sigaddi Growth Center,
Kottdwar, Distt. Pauri,
Uttrakhand- 246149
..... DEFENDANT NO. 1
2. INVENTIVE MEDICARE INDIA LLP
B-64, Khasra no. 371,
Bawana Road,
Delhi- 110042
..... DEFENDANT NO. 2
CS (Comm.) No. 1613/20
Page 1 of 26
3. SUMANT AGGARWAL
Trading as M/s Shyam Pharma
S-67, F.F., Phase-I,
Badli Industrial Area,
Delhi- 110042
Also at:
Property no. S-67, Ground Floor, Block-S,
Phase-I, Badli Industrial Area, Badli, North West Delhi,
Delhi- 110042
.... DEFENDANT NO. 3
Date of Institution : 28.10.2020
Date of reserving judgment : 10.07.2024
Date of Judgment : 20.07.2024
JUDGEMENT
1. Vide this judgment, I shall decide the suit for permanent injunction restraining infringement of trademarks and copyright, passing off, rendition of accounts etc. has been instituted by the plaintiff company against the defendant no. 1 only as the matter has already been compromised by plaintiff qua defendants no. 2 & 3 and judgement has been passed qua them on 16.12.2023. .
2. Briefly stated the case of plaintiff as stands emanated from the plaint are that plaintiff is a company incorporated on the 1 st day of March, 1990, under the provisions of the Indian Companies Act, 1956, initially under the name of Laborate Pharmaceuticals India Pvt. Ltd., which name was CS (Comm.) No. 1613/20 Page 2 of 26 changed on the 3rdday of October, 1997 to M/s. Laborate Pharmaceuticals India Limited and Shri Hemant Mehta is stated to be the Legal Manager / Constituted Attorney of the Plaintiff company, vide Board Resolution dated 01.02.2017. It has been stated that plaintiff commenced its commercial business of manufacturing pharmaceutical and medicinal preparations more than two decades ago and owing to maintaining high quality standards in manufacturing its several medicinal and pharmaceutical formulations, the Plaintiff Company has established itself as one of the leading manufacturers of pharmaceutical and medicinal preparations in India in the small scale sector. It has been further stated that presently the Plaintiff employs more than 200 medical sales representatives who diligently meet more than 20,000 doctors and 30,000 pharmacies, stockists & retailers physically every month for the promotion of the Plaintiff's various products and the Plaintiff's products which number more than 450 are distributed nationally and internationally through scores of distributors, hundreds of stockiest and thousands of retailers.
3. It has been further stated that the Plaintiff Company at present is manufacturing its various pharmaceutical products from its factory premises situated at Panipat, Haryana and at also Ponta Sahib, Himachal Pradesh and the products of the Plaintiff are sold extensively throughout India and abroad and are widely relied upon as cost effective and reliable preparations and the Plaintiff also enjoys the status of a recognized export house from the Government of India and its said manufacturing plants have due approbation from FDAs and Ministries of Health of more than 15 countries and its pharmaceutical products have a wide acceptability across the globe and its products as of now are exported to more than 30 countries CS (Comm.) No. 1613/20 Page 3 of 26 of the world. It has been further stated that apart from its domestic sales, the Plaintiff is also one of the leading exporters of the pharmaceutical and medicinal products with its annual export sales exceeding Rs. 240 Crores. It has been further stated that plaintiff in the year 2001 adopted the trademark "RELIEF" prefixed by the mark "LABDIC" in respect of an anti-inflammatory analgesic and the trademark RELIEF on the product packaging of the Plaintiff is boldly printed in an angular shaded font with the prefix LABDIC written in the color white within a blue rounded rectangular device. It has been further stated that plaintiff had filed an application for the registration of the trade mark "RELIEF" prefixed with the mark "LABDIC" on the 25th day of October, 2002 in the office of the Registrar of Trade Marks, New Delhi and which application has proceeded for registration and the Plaintiff is as on date the registered proprietor of the trade mark 'LABDIC RELIEF' and which registration is valid and subsisting till date and additionally, the trade mark 'LABDIC RELIEF' is also registered in China with current registration valid till 13.04.2020 and the Plaintiff is in the process of applying for renewal of its said registration.
4. It has been further stated that the trade mark "RELIEF" prefixed with the mark "LABDIC" of the Plaintiff and the Pharmaceutical preparations manufactured there under are being sold in artistic blister packs consisting of a bunch of 50 such blister packs of ten tablets each further packed in an dispenser pack having the mandatory literary matter published upon it and the distinctive features of the outer packaging/trade dress of the Plaintiff's said product include a distinct red background color on which the mark LABDIC is written in white inside a rounded rectangular blue device along with the mark RELIEF printed in a distinct eye-catching gold color beneath CS (Comm.) No. 1613/20 Page 4 of 26 which appears the expression 'TABLETS' in straight font of black color. Additionally, the words FAST DISSOLVING appear below it printed in white font over a multi-colored semi-circular background along with the acronym 'FD' in bold print in a distinct blue and white color above it. It has been further stated that the pack has also got the words 'QUICK RELIEF' printed in a distinct golden font towards its left side and additionally, the blister pack containing the tablets is of a distinct red colour on the front side along with all the literary matter and trademark LABDIC RELIEF printed in a distinct shade of red colour upon a golden background on the back side. A pictorial representation of the Plaintiff's dispenser packaging and its blister packaging is reproduced herein below:-
PLAINTIFF'S PRODUCT Dispenser pack - Front View CS (Comm.) No. 1613/20 Page 5 of 26 Dispenser pack - Back view Blister pack - Front View Blister pack - Back View
5. It has been further stated that the dispenser/blister pack of the Plaintiff with its said distinctive literary/artistic features and eye-catching CS (Comm.) No. 1613/20 Page 6 of 26 get-up, placement, colour combination, etc. has been a great success and has become a major hit in the market and trade and the said dispenser/blister pack has been in use extensively and continuously throughout India by the Plaintiff on a very large scale and consequently, the pharmaceutical preparations bearing the trade mark "RELIEF" prefixed with the mark "LABDIC" along with words 'FD' and 'FAST DISSOLVING' packed in its aforementioned distinctive packaging have come to signify the products originating from the Plaintiff company exclusively and no person without the permission or consent of the Plaintiff has any right to use or reproduce the said dispenser/ blister pack of the Plaintiff or any other dispenser/blister packs which are identical and/or deceptively similar to the above mentioned dispenser/blister pack of the Plaintiff amounting to an infringement of the registered Trade mark as well as Copyright of the Plaintiff along with passing off of the Trade Dress of the Plaintiff's product. It has been further stated that the Plaintiff also operates and manages various social media accounts for its product LABDIC RELIEF like Facebook, YouTube etc. and the Plaintiff's Trademark/product is also well advertised on various other platforms including news channels News 18 India, NDTV, etc.
6. It has been further stated that the Plaintiff has till date sold goods bearing the said distinctive packaging, artistic features/trade dress and the registered trade mark "RELIEF" prefixed with the mark "LABDIC" for a value of more than several crores of rupees which clearly demonstrates the popularity, vast goodwill and reputation which the Plaintiff's products have acquired amongst the trade and public and is indicative of the tremendous amount of confidence which the trade and public has in respect of the CS (Comm.) No. 1613/20 Page 7 of 26 products originating from the Plaintiff Company and in fact is a clear indicator that the said trade mark of the Plaintiff has achieved the status of a well-known trade mark. The readily available year wise sales figures of the Plaintiff's aforesaid product are as below:
Sales Turnover Labdic Relief (Domestic) S.No. Year Sales 1 2014-15 Rs. 11975192.00 2 2015-16 Rs. 23351331.62 3 2016-17 Rs. 47441009.00 4 2017-18 Rs. 51246522.5 5 2018-19 Rs. 83977401.00 6 2019-20 Rs. 118479855.00
7. It has been further stated that in the first week of July 2020, it has come to the knowledge of the Plaintiff that the defendants have been manufacturing and marketing their pharmaceutical products bearing the impugned trade mark "RELIEF" prefixed with "INVENTIVE" and the said product of the Defendants is being sold / offered for sale without issuance of any bill/cash memo. It has been further stated that defendant no. 1 is the Manufacturer and Defendant no. 2 is marketing the pharmaceutical product bearing the trade mark "RELIEF" prefixed with the mark "INVENTIVE"
in a deceptively similar packaging as that of the Plaintiff. Pictorial representations of the two competing dispenser packs, one each of the Plaintiff and the Defendants, are reproduced hereunder:
CS (Comm.) No. 1613/20 Page 8 of 26PLAINTIFF'S DEFENDANTS' DISPENSER DISPENSER PACK PACK
8. It has been further stated that the impugned product which the Defendant no. 1 is manufacturing and Defendant no. 2 is marketing, is a near identical pharmaceutical product bearing a deceptively similar trade mark/packaging to that of the Plaintiff. A bare perusal of the competing blister packs/dispenser packs, one each of the Plaintiff and of the Defendant, clearly demonstrates that both of them are deceptively similar to each other. A comparison carried out by the Plaintiff of the competing products of the parties is reproduced herein below :
PLAINTIFF'S PRODUCT DEFENDANTS' INFRINGING
PRODUCT
Dispenser pack- Front view Dispenser pack- Front view
CS (Comm.) No. 1613/20
Page 9 of 26
Dispenser pack- Back view Dispenser pack- Back view
Dispenser pack - Top view Dispenser pack - Top view
Dispenser pack - Side view 1 Dispenser pack - Side view 1
CS (Comm.) No. 1613/20
Page 10 of 26
Dispenser pack - Side view 2 Dispenser pack - Side View 2
Blister pack- Front view Blister pack- Front view
Blister pack- Back view Blister pack- Back view
9. It has been further stated that the adoption of the impugned product and its packaging on the part of the Defendants is actuated by mala-fides and with an intention to encash upon the goodwill and reputation belonging to the Plaintiff and the adoption and use of the impugned product CS (Comm.) No. 1613/20 Page 11 of 26 and its packaging is visually, phonetically and/or structurally similar to the reputed and well known trademark of the Plaintiff in respect of pharmaceutical preparations and is bound to lead to confusion and/or deception amongst the purchasing public and trade. It has been further stated that the defendants have made a misrepresentation in the course of trade to prospective customers, which is likely to lead to immense confusion and deception and create an impression that the Defendant's impugned products are in some way connected with the products of the Plaintiff. It has been further stated that the Plaintiff's and the Defendants' goods are of a cognate and allied nature, having identical trading channels and sold to the same class of purchasers for same purposes and the Plaintiff issued a Cease and Desist Notice dated 11.07.2020 to the Defendant no. 1 and 2, which was duly delivered, but the defendants have neither replied to the same till date nor have stopped their infringing activities against the Plaintiff. The plaintiff has accordingly sought reliefs of permanent injunction restraining the defendants from infringement of plaintiff's registered trademark, copyright, passing off and violation of plaintiff's rights in plaintiff's trademarks, delivery up etc.
10. On the application of plaintiff filed under Order XXXIX Rule 1 and 2 CPC, the interim stay was granted restraining the defendants, its principal officers, servants, stockiest, distributors, agents and retailers from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in pharmaceutical product under the impugned trademark 'INVENTIVE RELIEF' and its deceptive trade dress or from using any trademark and blister packs / dispenser packs which is a copy of the trade dress and registered trade mark of the plaintiff's 'LABDIC RELIEF' and CS (Comm.) No. 1613/20 Page 12 of 26 distinct blister packs / dispenser packs i.e. trade dress and / or any other deceptively similar mark / trade dress / blister packs / dispenser packs.
11. Summons of the suit were issued to the defendants and defendants no. 1 & 2 have appeared and filed their respective written statement and thereafter vide order dated 09.11.2022 the application filed by plaintiff under Order I Rule 10 CPC stands allowed and Ms. Suman Aggarwal was also impleaded as defendant no. 3 in this matter.
12. Defendant no. 1 in its WS has taken preliminary objections that :
(1) this Court has no territorial jurisdiction as defendant works for gain at Kotwar, Uttarakhand (2) the suit is liable to be dismissed on the ground that no pre-litigation Mediation proceedings have been initiated by the plaintiff (3) the present suit is bad for misjoinder of the parties as the defendant no. 1 is not the necessary party
13. On merits, defendant no. 1 has denied the contents of the plaint for want of knowledge. It is further denied that the product of the defendant is being sold / offered for sale without issuance of any bill / cash memo within the jurisdiction of this Court. It is stated that defendant no. 1 is sole proprietor of Nector Herbs and Drugs which is a registered proprietorship company incorporated in year 2017 and works at B-19, I.I.E. (SIDCUL), Sigaddi Growth Centre, Kotdwar, Distt. Pauri, Uttarakhand and manufacturing of drugs as per the schedule of licence and that soon after the incorporation of the firm in year 2017, defendant suffered from a brain stroke which left him paralyzed and medically unfit to carry on with his business and manufacturing of the approved drugs. It is further stated that CS (Comm.) No. 1613/20 Page 13 of 26 defendant leased out his unit and business to Sh. Aditya Gautam, Sh.
Yogendra Tyagi, Sh. Sandeep Tyagi and Sh. Sandeep Kumar vide memorandum of understanding dated 14.04.2019 for a period of two years w.e.f. 14.04.2019 till 13.04.2021 but as per the terms and conditions of the Food Safety and Drug Administration Authority, the name of the company could not be changed. It is further stated that defendant personally was not aware of the fact as through whom the second party is marketing the products and sham suit is filed in connivance of the plaintiff and defendant no. 2 as the defendant no.1 has not been marketing its products through defendant no.2 or any LLP. It is also denied that defendant no.1 is the manufacturer and defendant no.2 is marketing the pharmaceutical product bearing the trade mark "RELIEF" prefixed with the mark "INVENTIVE" in a deceptively similar packaging as that of the plaintiff. It is also denied that the adoption of the impugned product and it's packaging on the part of the defendant is actuated by malafides and with an intention to encash upon the goodwill and reputation belonging to the plaintiff as alleged. It is also denied that the defendant is guilty of not only infringement of trademark, copyright and / or passing off of the trade dress and it's goods and business as those of the plaintiff, but also putting risk to the public health owing to interior manufacturing and marketing of the impugned pharmaceutical product as alleged. It is also stated that the ingredients of the alleged impugned product of that of the plaintiff and that of the defendant are not same as the product of the plaintiff contains Cetrizine Hydrochloride and Magnesium Trisilicate apart from Diclofenac Potassium and Paracetamol whereas defendant no.1 product contains only Diclofenac Potassium and paracetamol. It is further stated that the ingredients of the plaintiff's CS (Comm.) No. 1613/20 Page 14 of 26 product and the alleged impugned product contain Schedule-H drug which can only be prescribed by a Registered Doctor and can only be sold by a chemist only on the doctor's prescription. Thus, defendant no.1 prays that plaintiff is not entitled any relief.
14. It is pertinent to mention here that during pendency of the suit, on joint application under Order XXIII Rule 3 CPC the defendants no. 2 & 3 have settled the present dispute with the plaintiff and in this regard, their statements were also recorded on oath on 16.12.2023 and case was fixed for PE for 30.01.2024. On 30.01.2024 Dr. Seema Singhal, learned counsel for defendant no.1 appeared and submitted that since defendant no.1 was not contacting her despite sending notice, and prayed for discharge her and accordingly vide order dated 30.01.2024 she was discharged from the present matter and thereafter, on 30.03.2024 since none appeared on behalf of defendant no.1 despite repeated calls since 03:00 p.m., defendant no.1 was proceeded ex-parte and on the same day, PE was recorded.
15. In order to prove its case plaintiff has only examined one witness i.e. Mr. Ankit Ghangas who tendered his evidence way of affidavit Ex.PW1/A and relied upon the documents i.e. Ex. PW1/1 to Ex. PW1/8B.
16. I have heard arguments from Ms. Sucharu Garg, Ld. Counsel for the plaintiff at length and gone through the record.
17. As stated above, in order to prove its case that defendant no.1 has infringed trademark of plaintiff company has examined only witness i.e. PW1 Sh. Ankit Ghangas. The PW1 in his evidence led evidence through affidavit Ex. PW1/A in which he has almost repeated the same contents as stated in the plaint. Therefore, the same are not repeated here for the sake of brevity. He has also relied upon the following documents :-
CS (Comm.) No. 1613/20 Page 15 of 261. Board resolution dated 25.1.2024 as Ex. PW1/1.
2. Application for receipt of obtaining LPC (for which the Legal proceeding certificate dated 9.2.2021 was received later) for trademark registration No. 1146162 and the LPC as Ex. PW1/2A along with trademark registration certificate as Ex. PW1/2B (OSR).
3. Copy of registration certificate in China as Ex. PW1/3 (OSR).
4. Advertisement bill dated 1.1.2019 as Ex. PW1/5A (OSR), bill dated 28.2.2019 as Ex. PW1/5B (OSR), bill dated 1.4.2019 as Ex.
PW1/5C (OSR) and bill dated 30.4.2019 as Ex. PW1/5D (OSR).
5. Sale invoice / Bill dated 24.7.2010 as Ex. PW1/6A.
6. Bill dated 3.4.2010 as Ex. PW1/6B.
7. Bill dated 17.10.2011 as Ex. PW1/6C.
8. Bill dated 11.1.2012 as Ex. PW1/6D.
9. Bill dated 8.10.2012 as Ex. PW1/6E.
10. Bill dated 30.6.2012 as Ex. PW1/6F.
11. Bill dated 31.12.2013 as Ex. PW1/6G.
12. Bill dated 26.11.2013 as Ex. PW1/6H.
13. Bill dated 18.9.2014 as Ex. PW1/6I.
14. Bill dated 26.3.2015 as Ex. PW1/6J.
15. Bill dated 31.8.2015 as Ex. PW1/6K.
16. Bill dated 30.9.2015 as Ex. PW1/6L.
17. Bill dated 31.1.2017 as Ex. PW1/6M.
18. Bill dated 20.3.2017 as Ex. PW1/6N.
19. Bill dated 28.2.2018 as Ex. PW1/6O.
20. Bill dated 28.3.2018 as Ex. PW1/6P.
21. Bill dated 31.7.2018 as Ex. PW1/6Q.
22. Bill dated 20.8.2018 as Ex. PW1/6R.
23. Bill dated 27.4.2019 as Ex. PW1/6S.
24. Plaintiff's original product's outer packaging as Ex. PW1/7A CS (Comm.) No. 1613/20 Page 16 of 26 and blister packaging as Ex. PW1/7B
25. Defendant's original product's outer packaging as Ex.
PW1/8A and blister packaging as Ex. PW1/8B.
18. Since defendant no.1 did not appear and was proceeded ex-parte, therefore, plaintiff's witness was not cross examined. Though defendant no. 1 is ex-parte despite this I am of the view that its upon the plaintiff to prove its case that defendant no.1 has infringed its trademark and passed off its goods as the goods of the plaintiff. Hence there is no ground to disbelieve the testimony of PW1 that plaintiff is owner of Trade mark Lebdic RELIEF and defendant no.1 is manufacturing its goods with trade mark Inventive RELIEF.
19. The plaintiff trade mark is registered as composite trade mark consist of Two word " Lebdic and Relief" and defendant trademark is consist of Two word "Inventive" and "Relief". So far as first word i.e. Lebdic and Inventive is concerned is concerned both the word are quite dissimilar both visually as well as phonetically. But the second word is same i.e. "RELIEF" in both the trade mark. In my view plaintiff cannot claim an exclusive right on the word "RELIEF" as it is descriptive word which in medicines terms as very significant used as denotes that person get relief either for pain or any other illness which he is suffering. Therefore in my view plaintiff cannot claim exclusive right to use the word "relief" for its product. I am also not agree with the contention of Ld. Counsel for defendant that plaintiff has been granted trade nark registration for the word " Relief". From the trade mark registration certificate EXPW1/3 it is evident that same has been granted for two Lebdic with Suffix Relief hence as far as defendant using the relief as suffix after word INVENTIVE is CS (Comm.) No. 1613/20 Page 17 of 26 concerned, in my view same is not infringement of plaintiff trade mark. Both are not deceptively similar, and do not cause any confusion in the mind of public therefore, plaintiff I hold that is not entitle to the decree of permanent injunction against the defendant so far defendant using the word Relief.
20. As far as trade-dress / packaging of both plaintiff EXPW1/7A & EXPW7/B and defendant products packaging EXPW1/8A & EXPW1/8B is concerned, on seeing both parties packaging, I am agree with the submissions of learned counsel for plaintiff that both plaintiff packaging EXPW1/7A and defendant no.1 trade-dress / packaging EXPW1/8A appears to be deceptively similar in colour as pre-dominantly red colur is used in both packaging and word relief is written in golden colour FD in blue colour and the manner the word Inventive Relief and FD, Fast dissolve and Quick relief is written. Similarly the blister packaging of defendant EXPW1/8B is also having same colour combination as of plaintiff blister packaging EPW1/7A as golden colour is used. Therefore plaintiff can be granted injunction on this ground. In this regard I rely upon Devagiri Farms Pvt. Ltd. Vs. Sanjay Kapur & Anr FAO (OS) 247/2014 date of order 01.2.2016 (DHC) where in Hon,ble High Court granted injunction on the ground of similar trade dress. The relevant para no.6, 7 and 8, are reproduced as under :-
"6. From a perusal of the trade dress adopted by the appellant, which date of adoption is concededly years after the Kapurs did so, it is apparent that the appellant is using the same share of Maroon and Blue colour in the backdrop with a floral design as are the Kapurs; albeit the floral print being different, but with same golden yellow colour. The third shade, being a Green colour, forming the backdrop hue of the third trade dress is also with a floral design; albeit the floral print being different in design as also colour. For the fourth colour used, there is CS (Comm.) No. 1613/20 Page 18 of 26 complete identity inasmuch as the same shade of Red without any floral design is used by the appellant.
7. Tested on the well recognized touchstone of the principle of deception, it would be apparent to the naked eye that any purchaser of tea with the usual imperfect recollection to which all humans are prone to, would be deceived when she comes across the tea packaged by the appellant.
8. It is the overall get up and similarity which has to be seen and not the minor variations because it is similarity which strikes and not the dissimilarities which distinguish when an ordinary person recollects an object seen in the past."
21. In Marico Limited vs Mr. Mikesh Kumar CS(comm) 1596/2016 dt.27.08.2016 this Hon.ble High Court granted injunction against infringement of trade mark despite the fact that trade mark of both plaintiff and defendant were different i.e. trade mark of plaintiff was "Parachute oil" and trade mark of defendant was "Everest oil" on the basis of similarity in trade design. The relevant para is as under:
"44. Upon comparison of the aforesaid two bottles, it is evident that the background colour (same shade of blue Pantone 285C), bottle size, cap shape, nozzle, flag device, coconut tree, broken coconut device, indentation, print as well as description in white font, are very similar if not identical. This Court is of the prima facie opinion that if the two products are placed next to each other, it would be apparent that each and every important feature of the plaintiff‟s PARACHUTE Coconut Oil product had been copied by the defendants for their EVEREST Coconut Oil product. In the present case, the resemblance in get up and trade dress between the two products is so close that it can hardly occur except by deliberate imitation. In fact, this Court is of the prima facie view that if the two rival products were kept on a display shelf, it may be CS (Comm.) No. 1613/20 Page 19 of 26 well-nigh impossible for a reasonable consumer to tell which product belongs to whom. Consequently, this Court is of the prima facie opinion that the defendants have copied the most relevant, material and essential features of the plaintiff ‟s product in an attempt to pass off its products as that of the plaintiff's.
45.*** 46*** 47*** 48 ***
49. In fact, this Court is of the prima facie view that not only are the three elements of a passing off action namely, the reputation of goods, possibility of deception and likelihood of damages established in the present case, but that the adoption by the defendants of the said trade mark and trade dress was in bad faith. Accordingly, the contention of the defendants that they were honest concurrent users is contrary to facts.
A PRIMA FACIE CASE OF INFRINGEMENT IS MADE OUT INASMUCH AS THE DEFENDANTS HAVE COPIED THE PLAINTIFF‟S REGISTRATIONS. IN FACT, NOT ONLY HAS THE BOTTLE SHAPE, COLOUR AND LABELING BEEN COPIED BY THE DEFENDANTS, BUT ALSO THE INDIVIDUAL ELEMENTS WHICH ARE SUBJECT MATTER OF INDEPENDENT REGISTRATION. SECTION 17 OF THE TRADE MARKS ACT, 1999, APPLIES TO THE PRESENT CASE AND GODFREY PHILLIPS INDIA LIMITED (SUPRA) JUDGMENT, IS INAPPLICABLE TO THE FACTS OF THE PRESENT CASE. "
22. On behalf of Defendant no.1 though the WS was filed by Vishad Kumar has stated that he is proprietor of defendant no.1 has stated that but has not come to the Court to depose that defendant no.1 has adopted the CS (Comm.) No. 1613/20 Page 20 of 26 said packaging prior to the plaintiff adoption of the said packaging. Rather defendant's defence taken in WS are not proved as it did not come to witness box that defendant was not manufacturing the goods but he has given the same on leased to Sh. Aditya Gautam, Sh. Yogendra Tyagi, Sh. Sandeep Tyagi and Sh. Sandeep Kumar vide memorandum of understanding dated 14.04.2019 for a period of two years w.e.f. 14.04.2019 till 13.04.2021, therefore, in these circumstances, I am of the view that defendant no1 when himself stated that he is not manufacturing the goods with the trade mark Inventive relief and defendant no.2 & 3 have already given statement that they will not used the trade mark having word "
Relief" therefore considering the said facts I grant permanent injunction to the extent that defendant no.1, its principal officers, servants, retailers, stockiests, distributors, representatives and agents are restrained from manufacturing, selling, offering for sale, stocking, advertising, using the colour scheme/ trade dress for packaging its goods as is in packaging EXPW1/8A and EXPW8/B or any other deceptively similar trade dress/ colour scheme having similar colour combination/ trade dress in plaintiff packaging EXPW1/7A & & EXPW7/B.
23. As far as rendition of account and passing decree for damages on the basis of said rendition of account is concern, as stated above Sh. Vishad Kumar filed WS on behalf of defendant no.1 as its proprietor and stated that since he has suffered brain stroke which left him paralyzed and medi- cally unfit to carry business therefore he leased out the business of the company to Sh. Aaditya Gautam, Yoginder Tyagi, Sandeep Tyagi and Sandeep Kumar vide MOU dt. 14.04.2019 to manufacture drugs in the name of defendant no.1 and only in the first week of July he came to know CS (Comm.) No. 1613/20 Page 21 of 26 that the defendant have been manufacturing and marketing their products with trade mark Relief prefixed with inventive and the product were never marketed by him by inventive medicare India Pvt. Ltd., i.e. defendant no.2 and thus he denied of using the trade mark "Inventive Relief" Though he has not come to depose his averment taken in WS but Defendant no.2 in their WS has admitted that he has honestly coined the Trade Mark "Inven- tive Relief". The plaintiff has not produced any evidence that Sh. Vishad proprietor of defendant no.1 was manufacturing the goods with Trade Mark Inventive Relief. Plaintiff has already compromised with defendant no.2 &3 and gave undertaking in their statement on 02.12.2023 before this Court that they will not use the trade mark containing word "Relief" and even undertake to withdraw the application file by them registration of trade mark "Inventive Relief". Hence from said compromised it is evident that plaintiff has admitted that it is not Vishad Kumar proprietor of defendant no.1 who was manufacturing the goods with Trade mark Inventive Relief and packaging the same in deceptively similar packaging as of plaintiff and only name of defendant no.1 was used as manufacturer probably because license for manufacture of drugs was in the defendant no.1. but since de- fendant has allowed the defendant no.1 &2 to used its firm name Nector Herbs & Drugs therefore in my view defendant no.1 cannot absolve from its liability. As far as rendition of account is concern, since the defendant no.1 did not choose to appear and stay away from the present proceedings so as to thwart any enquiry into their account for determination of damages. As a result, no inquiry into their accounts could be conducted, for this court to pass an order of rendition of accounts of profits and delivery up, so as to compensate the plaintiff for the extent of damages suffered by them. But, CS (Comm.) No. 1613/20 Page 22 of 26 that alone would not be a deterrent. Merely because the defendant has de- liberately elected to stay away from the court proceedings, cannot be a ground to permit them to reap the benefits of evading the suit proceedings and its outcome. In my view since defendant is not present no purpose would be served by directing defendant to render its account as he will not render the same willfully and it would be impossible for plaintiff to get the same and thus calculate the profit earned by defendant by selling infringed goods. Hence, I am not passing decree of rendition of accounts. However, The court is mindful of the fact that in such a situation where the defendant choose to stay away from the court proceedings, they should not be permit- ted to enjoy the benefits of such an evasion. Any view to the contrary would result in a situation where a compliant defendant who appears in court pursuant to summons being issued, participates in the proceedings and submits his account books, etc., for assessment of damages, would end up on a worse footing, vis-à-vis a defendant who chooses to conveniently stay away after being served with the summons in the suit. That was cer- tainly not the intention of the Statute. Section 135 (1) of the Trademarks Act, 1999 provides that relief that may be granted in any suit for infringe- ment of or for passing off includes injunction and at the option of the plain- tiff, either damages or an account of profits. The plaintiff in the present case has opted for claiming damages and has established beyond doubt that it has suffered damages on account of the conduct of the defendant which are a result of infringement of their trademark and copyright.
24. It is well settled that damages in cases like the present one must be awarded and a defendant, who elects stay away from the court proceedings, should not be permitted to enjoy the benefits of staying away from the said CS (Comm.) No. 1613/20 Page 23 of 26 proceedings. In the case of Microsoft Corporation v. Rajendra Pawar & Anr. reported as 2008 (36) PTC 697 (Del.), considering the aspect of puni- tive damages, it was held as below:-
"22. Perhaps it has now become a trend of sorts, especially in matters pertaining to passing off, for the defending party to evade Court proceedings in a systematic attempt to jettison the relief sought by the Plaintiff. Such flagrancy of the Defendant's conduct is strictly deprecatory, and those who recklessly indulge in such shenanigans must do so at their peril, for it is now an inherited wisdom that evasion of Court proceedings does not de facto tantamount to escape from liability. Judicial Process has its own way of bringing to task such erring parties whilst at the same time ensuring that the aggrieved party who has knocked the doors of the Court in anticipation of justice is afforded with adequate relief, both in law and in equity. It is here that the concept of awarding punitive damages comes into perspective.
23. Punitive damages are a manifestation of equitable relief granted to an aggrieved party, which, owing to its inability to prove actual damages, etc., could not be adequately compensated by the Court.
Theoretically as well as practically, the practice of awarding of punitive damages may be rationalized as preventing under compensation of the aggrieved party, allowing redress for undetectable torts and taking some strain away from the criminal justice system. Where the conduct of the erring party is found to be egregiously invidious and calculated to mint profits for his own self, awarding punitive damages prevents the erring party from taking advantage of its own wrong by escaping prosecution or detection."(emphasis added).
25. In view of above discussion, I held that plaintiff is entitled to damages for infringing trademark/copyright of plaintiff. Therefore, CS (Comm.) No. 1613/20 Page 24 of 26 considering the facts and circumstances of the case, in my view, defendant would have earned huge profit by selling infringed goods, I pass a decree for a sum of Rs. 1,00,000/- (₹ One Lakh only) against defendant no.1, by way of punitive /exemplary damages. The damages awarded shall be payable, within a period of three months from the date of passing of the judgment failing which, the said amount shall carry interest @ 8% p.a. from the date of the decree, till realization.
Relief
26. In view of aforesaid discussions, I pass a decree for permanent injunction restraining the defendant no.1, its principal officers, servants, retailers, stockiest, distributors, representatives and agents from manufacturing selling, offering for sale, stocking advertising, using the colour scheme/ trade dress for packaging its goods as is in packaging EXPW1/8A and EXPW8/B or any other deceptively similar trade dress/ colour scheme having similar colour combination/ trade dress in plaintiff packaging EXPW1/7A & & EXPW7/B.
27. Further, I pass a decree for a sum of Rs. 1,00,000/- ( ₹ One lakh only) against defendant no.1, by way of punitive /exemplary damages. The damages awarded shall be payable, within a period of three months from the date of passing of the judgment failing which, the said amount shall carry interest @ 8% p.a. from the date of the decree, till realization. The plaintiff is also entitled to 1/3rd costs of the suit.
28. As far as permanent injunction restraining the defendant no. 1 from using the word Relief for in its trademark & rendition of account are concerned, prayer of plaintiff is declined. Decree sheet be prepared after CS (Comm.) No. 1613/20 Page 25 of 26 payment of deficit court fee, if any.
File be consigned to Record Room.
Digitally signed by SANJEEV SANJEEV KUMAR KUMAR AGGARWAL Pronounced in open Court AGGARWAL Date: 2024.07.20 on 20.07.2024. 16:26:24 +0530 (Sanjeev Kumar Aggarwal) District Judge (Commercial Court)-01, Central, Tis Hazari Courts, Delhi. CS (Comm.) No. 1613/20 Page 26 of 26