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Delhi High Court - Orders

Saga Lifesciences Limited vs Aristo Pharmaceuticals Pvt. Ltd. & Anr on 13 April, 2022

Author: Prathiba M. Singh

Bench: Prathiba M. Singh

                                                         Signature Not Verified
                                                         Digitally Signed By:Devanshu
                                                         Signing Date:15.04.2022
                                                         12:40:45



$~45
*    IN THE HIGH COURT OF DELHI AT NEW DELHI
+            CS(COMM) 240/2022 & I.As. 5841-45/2022
      SAGA LIFESCIENCES LIMITED                                     ..... Plaintiff
                          Through:     Mr. Vikas Khera, Advocate.
                          versus

      ARISTO PHARMACEUTICALS PVT. LTD. & ANR...... Defendants
                          Through:     Mr. Sagar Chandra, Ms. Surabhi Mer
                                       & Ms. Mehek Dua, Advocates for D-
                                       1 (M-9654923558)
      CORAM:
      JUSTICE PRATHIBA M. SINGH
               ORDER

% 13.04.2022

1. This hearing has been done through hybrid mode. I.A. 5842/2022 (u/S 2A)

2. This is an application seeking exemption from instituting pre- litigation mediation. In view of the orders passed in CS (COMM) 132/2022 titled Upgrad Education v. Intellipaat Software, exemption is allowed.

3. I.A.5842/2022 is disposed of.

I.A. 5843/2022 (exemption from advance service to the Defendants)

4. In view of the fact that the Plaintiff has sought an ex parte ad-interim injunction along with the appointment of Local Commissioner, the exemption from advance service to the Defendants is granted.

5. I.A. 5843/2022 is disposed of.

I.A. 5844/2022 (u/S 151 CPC)

6. This is an application for seeking exemption from filing original documents at this stage. For the reasons stated in the application, exemption CS(COMM) 240/2022 Page 1 of 8 Signature Not Verified Digitally Signed By:Devanshu Signing Date:15.04.2022 12:40:45 is allowed.

7. I.A.5844/2022 is disposed of.

CS (COMM) 240/2022

8. Let the plaint be registered as a suit.

9. Issue summons to the Defendants through all modes upon filing of Process Fee. Summons are accepted by ld. Counsel for the Defendant No.1.

10. The summons to the Defendants shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.

11. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement(s). Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

12. List before the Joint Registrar for marking of exhibits on 14th July, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

13. List before Court on 22nd April, 2022.

I.A.5841/2022 (u/O XXXIX Rule 1 and 2 CPC)

14. This is a suit filed by the Plaintiff- Saga Lifesciences Limited seeking protection of its trademark 'ULTRAMOL'. The Plaintiff is a company established in 1981 and is stated to have adopted the trademark 'ULTRAMOL' in respect of paracetamol preparations, in several variants, in CS(COMM) 240/2022 Page 2 of 8 Signature Not Verified Digitally Signed By:Devanshu Signing Date:15.04.2022 12:40:45 November, 1991. The first drug approval to the Plaintiff from the Food and Drugs Control Administration (hereinafter "Drug Authority") for the manufacturing and marketing products under the mark "ULTRAMOL" is of 28th November, 1991. The commercial launch of products, being pharmaceutical preparations, under the mark 'ULTRAMOL' took place in 1992. The Plaintiff has after the commercial launch in 1992, made the product 'ULTRAMOL' available across the country as also on e-commerce platforms such as www.dawabazar.in and www.medindia.net. The Plaintiff is also stated to be promoting the said product through its website www.sagalabs.com.

15. The Plaintiff had applied for the registration of the mark 'ULTRAMOL 650 LABEL' in 2007 vide application bearing no.1554974, claiming user since 1992. However, as per the Plaintiff, the said mark got abandoned due to some miscommunication with the Trademark Agent. In support of the said application, the Plaintiff had filed an affidavit claiming user in the mark from 1992. In the said affidavit the Plaintiff had also given the sales figures of the 'ULTRAMOL' brand of products which is signed by Mr. Viranchi Arvindbhai Shah. Upon the first application being abandoned, the Plaintiff filed the second application being number 4322467 dated 16th October, 2019 for the word mark 'ULTRAMOL' claiming user since the year 1992 which has been opposed by the Defendant No.1.

16. The grievance of Plaintiff in the present case is that the Defendant No.1-Aristo Pharmaceuticals Pvt. Ltd. has also adopted an identical mark 'ULTRAMOL'. Defendant No.1 filed a trademark application bearing no. 1380082 in 2005 for the registration of the mark 'ULTRAMOL' in class 5 on 'proposed to be used' basis which is opposed by third parties. Defendant CS(COMM) 240/2022 Page 3 of 8 Signature Not Verified Digitally Signed By:Devanshu Signing Date:15.04.2022 12:40:45 No.1 started using the mark 'ULTRAMOL' in 2006. Thereafter, other applications have been filed by the Defendant No.1 for the registration of the mark 'ARISTO ULTRAMOL' which are also opposed. The case of the Plaintiff is that the rights of the Plaintiff in the mark 'ULTRAMOL', which is being used by the Defendant No.1 in identical manner for identical pharmaceutical preparations i.e, paracetamol, deserves to be protected as the Plaintiff is the prior user.

17. Mr. Khera, ld. Counsel appearing for the Plaintiff submits that the Plaintiff has placed on record, sufficient number of invoices as also the drug license which show the mark 'ULTRAMOL' was approved by the Drug Authority as far back as 28th November, 1991. The invoices placed on record date back to January, 1992 and a large number of invoices between 1992 to 2020 have also been placed on record. ld. Counsel for the Plaintiff submits that the mark is in continuous use since 1992. Various products such as 'ULTRAMOL' tablets in various variants of dosage and 'ULTRAMOL SYRUP' are sold by the Plaintiff under the mark 'ULTRAMOL'. Ld. Counsel for the Plaintiff further submits that the drug approval given to Defendant No.1 is for the mark 'ARISTO ULTRAMOL'. However, Defendant No.1 is using 'ULTRAMOL' on a standalone basis which is impermissible.

18. Mr. Sagar Chandra, ld. Counsel appearing for Defendant No.1 after noticing the matter in the cause list, submits that the Plaintiff has been aware of use of the mark 'ULTRAMOL' by Defendant No.1 since the opposition was filed by Defendant No.1. He further submits that the mark 'ULTRAMOL' is not on the register, except for the applications of the Plaintiff and the Defendant No.1 which have both been opposed. He further CS(COMM) 240/2022 Page 4 of 8 Signature Not Verified Digitally Signed By:Devanshu Signing Date:15.04.2022 12:40:45 highlights the fact that at the time when Defendant No.1- Aristo Pharmaceuticals Pvt. Ltd. adopted the mark 'ULTRAMOL', the Plaintiff's product was not available in the market in India. The sale figures of the Plaintiff are to the tune of Rs.63 lakhs annually. On the other hand, Mr. Chandra, ld. Counsel submits that sales figures of the Defendant No.1 are of more than Rs.1 crore annually.

19. Heard ld. Counsels for the parties.

20. From the documents placed on record and the stand taken by the ld. Counsel today, prima facie it appears that the Plaintiff is the prior adopter and user of the mark 'ULTRAMOL' for medicinal preparations. The Plaintiff also got the first approval from the Drug Authority for the manufacture of pharmaceutical preparations under the mark 'ULTRAMOL'. The mark that has been approved by the Drug Authority on 12th February, 2007 to be used by the Defendant No.1 is 'ARISTO ULTRAMOL'. However, Defendant No.1 is using the mark 'ULTRAMOL' on a standalone basis. Even on the packaging, the word 'ARISTO' is written in smaller size and is hardly readable. Thus, the Plaintiff's and Defendant No's.1 marks are identical. The products are also identical i.e., pharmaceutical preparations containing `Paracetamol'. Defendant No.1 is the subsequent user of the mark 'ULTRAMOL' and at best Defendant No.1's user since 2006, after 14 years, of the Plaintiff's adoption and use. Another fact which goes in favour of the Plaintiff are the undertakings which have been given by the Defendant No.1 to the Drug Authorities which read as under:

"2. We under take to comply with all the provisions of the law in force and the directions issued from time to time by the licencing authority and not to manufacture any drug/cosmetics under a name CS(COMM) 240/2022 Page 5 of 8 Signature Not Verified Digitally Signed By:Devanshu Signing Date:15.04.2022 12:40:45 belonging to another manufacturer.

xxx xxx xxx

2. We under take to comply with all the provisions of the law in force and the directions issued from time to time by the licensing authority. We intend to manufacture the above product with trade name ARISTO ULTRAMOL and not to manufacture any drug under a name belonging to another manufacturer.

xxx xxx xxx

3. It is further declared that if the brand names, artworks or designs of our products are found to be imitation of or resemble in a manner likely to deceive, another drugs manufactured by another company prior to ours, we undertake to stop to sell, or distribute of our products and we understand that we shall be liable for legal action in such eventuality."

21. A perusal of the above facts would show that there can be no doubt that the Defendant NO.1 was clearly aware of the existence of the mark 'ULTRAMOL' and the product 'ULTRAMOL' of the Plaintiff. Therefore, it sought to distinguish itself by adding the word 'ARISTO' before 'ULTRAMOL'.

22. At this stage, Mr. Sagar Chandra, ld. Counsel submits that he would seek instructions in the matter.

23. List on 22nd April, 2022.

I.A. 5845/2022 (for appointment of Local Commissioner)

24. This is an application filed by the Plaintiff seeking appointment of a Local Commissioner. The Court has arrived at the prima facie finding that the Plaintiff is the prior user and prior adopter of the mark 'ULTRAMOL'. The fact that Defendant No.1 is not adhering to the drug license which has been given for the use of the mark 'ARISTO ULTRAMOL' but is using the mark 'ULTRAMOL' on a standalone basis, is also a crucial aspect.

Accordingly, it is deemed appropriate to appoint a Local Commissioner to the visit the premises of the Defendant No.1 at-

● M/s Aristo Pharmaceuticals Pvt. Ltd.,Survey No.371. Kunbar Falia, Dabhel Village, Nani Daman-396210, Daman (U.T).

25. Mr. Himanshu Yadav, Advocate (Mob. No.8178985152) who is present in Court is appointed as the Local Commissioner to carry out the following directions:

i) The Local Commissioner shall make a complete inventory of the products bearing the mark 'ULTRAMOL' or 'ARISTO ULTRAMOL'.

Insofar as already manufactured products bearing the impugned mark are concerned, after inventorizing the same, they shall be returned to the Defendant No.1.

ii) Cartons, labels and other packaging material including pamphlets, brochures bearing the impugned marks shall also be inventorized by the Local Commissioner.

iii) Defendant No.1 shall give full access to the accounts, either in electronic or in physical form, which contain the sales figures of the products bearing the mark 'ULTRAMOL' or 'ARISTO ULTRAMOL', since inception, to the Local Commissioner. If the same is in password protected, the password of the same shall be given to the Local Commissioner by Defendant No.1. The accounts shall be filed by the Local Commissioner on a pen drive with the report. At this stage, the copy of the same shall not be given to the Plaintiff.

iv) The Local Commissioner is permitted to take photographs or videography of the proceedings if it is deemed appropriate. The ld.

Counsel for the parties as also their representatives (not more than two), are permitted to accompany the Local Commissioner. Ld. counsels for the parties are permitted to coordinate with the Local Commissioner.

v) Defendant No.1 has agreed to give full cooperation to the Local Commissioner and accordingly no police assistance is being directed. However, if the need arises, the Local Commissioner is free to approach the SHO of the concerned police station.

26. The fee of the Local Commissioner is fixed at Rs.1 lakh to be paid by the Plaintiff. The commission shall be executed by 20th April, 2022. The report shall be filed before the Court on the next date.

27. The expenses for the Local Commissioner's travel and stay shall be borne by the Plaintiff.

28. Let the Copy of the paper book be served upon Mr. Sagar Chandra, ld. Counsel today itself.

29. List the application before the Court on 22nd April, 2022.

30. Copy of this order be given dasti under signatures of the Court Master.

PRATHIBA M. SINGH, J.

APRIL 13, 2022 Rahul/SK CS(COMM) 240/2022 Page 8 of 8