Delhi High Court - Orders
Alkem Laboratories Ltd vs Medox Lifesciences & Ors on 4 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~74
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 863/2023, I.As. 24144/2023, 24145/2023, 24146/2023,
24147/2023
ALKEM LABORATORIES LTD ..... Plaintiff
Through: Mr. Sagar Chandra, Ms. Shubhie
Wahi, Mr. Om Ram, Advs. (M.
9013685427)
versus
MEDOX LIFESCIENCES & ORS. ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 04.12.2023
1. This hearing has been done through hybrid mode.
I.A.24145/2023 (for additional documents)
2. This is an application seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
3. Application is disposed of.
I.A.24146/2023 (for exemption)
4. This is an application seeking exemption from filing originals/certified/cleared/typed or translated copies of documents, left side margins, electronic documents, etc. Original documents shall be CS(COMM) 863/2023 Page 1 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:48 produced/filed at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
5. Exemption is allowed, subject to all just exceptions.
6. Accordingly, the application is disposed of.
I.A.24147/2023 (u/S 12A of the Commercial Courts Act)
7. This is an application filed by the Plaintiff seeking exemption instituting pre-litigation mediation under Section 12A of the Commercial Courts Act, 2015.
8. Considering that these are medicinal, pharmaceutical and nutraceutical products, wherein the likelihood of confusion can be very high and detrimental to the consumers, in terms of the judgment of the Hon'ble Supreme Court in Yamini Manohar v. T.K.D Keerthi, SLP(C) (2023 LiveLaw (SC) 906) the exemption under Section 12A is granted to the Plaintiff.
9. Accordingly, the application is allowed.
CS (COMM) 863/2023
10. Let the plaint be registered as a suit.
11. Issue summons to the Defendants through all modes upon filing of Process Fee.
12. The summons to the Defendants shall indicate that the 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.
13. Liberty is given to the Plaintiff to file a replication within 15 days of CS(COMM) 863/2023 Page 2 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:48 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.
14. List before the Joint Registrar for marking of exhibits on 22nd January, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
15. List before Court on 8th April, 2023.
I.A. 24144//2023 (u/O XXXIX Rules 1 & 2 CPC)
16. Issue notice.
17. The Plaintiff - Alkem Laboratories Ltd. has filed the present suit against Medox Lifesciences and its partners i.e., Defendant No. 2 - Tarun Pal Singh Jaggi & Defendant No. 3- Ravinder Pal Singh Jaggi as also its manufacturer Defendant No. 4- Shivaay Nutraceuticals seeking enforcement and protection of its mark 'A TO Z' used in respect of pharmaceutical and nutraceuticals preparations.
18. The case of the Plaintiff is that it was established in the year 1973 and is one of the leading pharmaceutical companies in India with a global presence. It manufactures a large range of pharmaceutical and nutraceutical products in various segments. It is stated that the Plaintiff has a portfolio of over 800+ brands, covering all major therapeutic segments with 6 of the brands featuring among the top 100 pharmaceutical brands in India. It is also stated that the Plaintiff employs more than 500 scientists who work across 6 globally located R&D Facilities. It is also averred that the Plaintiff has been in the business of Pharmaceuticals for almost 5 decades and is known for the CS(COMM) 863/2023 Page 3 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:48 quality of its goods. One of Plaintiff's range of pharmaceutical preparations are sold under the brand 'A TO Z' which was adopted in 1997 along with a distinctive logo which is set out below:
19. The mark is used by the Plaintiff in respect of multi-vitamin health supplements in tablets, capsules and in syrup form. The 'A TO Z' family of marks has been used by the Plaintiff in different variant forms and with various suffixes, some of which are as under:
20. The Plaintiff is the registered proprietor of the mark 'A TO Z', both as a device mark and in word form. The details of the registrations are set out in paragraph 9 of the plaint. The earliest registration of the mark 'A TO Z' dates back to 2007.
21. The sales of the Plaintiff of the 'A TO Z' branded products is to the tune of Rs.326 crores in the year 2022-23 and almost 10% of the same to the CS(COMM) 863/2023 Page 4 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49 tune of Rs.34 crores is being spent on sales and advertisements as promotional expenses.
22. 'A TO Z' nutritional supplement tablets are stated to be extremely popular health supplements and the Defendants have copied the mark 'A TO Z' for identical products. The Plaintiff, issued a legal notice to the Defendants on 8th December, 2022, to cease and desist use of the identical mark for pharmaceutical preparations. In response to the said notice, the Defendant No.1, on 16th December, 2022, gave an assurance as under:
"10. Further, in order to taking a consideration of above mentioned facts and remove the ambiguity and misunderstanding between our client and Alekm and subject to refraining any legal action against our client or stockiest, broker, trader and all intermediaries, our client will remove to use the name "A to Z" with-in 3 months from the products which was displayed due to use by public domain as information and knowledge about multi vitamin purpose only and cease to use logo or mark "A to Z"."
23. As per the above reply, the Defendant assured that it would cease use of the mark/name A TO Z within three months. It is submitted by Mr. Sagar Chandra, ld. Counsel appearing for the Plaintiff that despite giving the above assurance, the Defendants have now adopted the mark 'A 2 Z' and is trying to continue encashing on the reputation of the Plaintiff's mark.
24. Heard counsel for the Plaintiff. A comparison of two products' labels and packaging are set out below:
CS(COMM) 863/2023 Page 5 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49
25. The mark 'A TO Z' being the registered trademark of the Plaintiff, having been in use for more than 25 years, the same is entitled to protection. Moreover, the Defendants having also given assurance to change the mark has made minimal change and has, in fact, continued to adapt a phonetically identical mark i.e., 'A 2 Z'.
26. The Defendants' adoption of the mark 'A2Z' is not merely violative of the Plaintiff's rights but is likely to cause confusion amongst not only the consumers but as also with the doctors and chemists. The Defendants' CS(COMM) 863/2023 Page 6 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49 product with 'A2Z' mark may, in fact, be dispensed by any chemist in place of the Plaintiff's product 'A TO Z' owing to near identity in the marks. Especially in pharmaceutical preparations, such confusion is to be avoided. The test and the threshold in such products are much higher as held in the decision of Cadila Healthcare vs. Cadila Pharma, (2001) 5 SCC 73. In the said case, the Supreme Court specifically observed that strict measures need to be taken to ensure that similarity of marks of medicines is avoided, particularly due to the varying medical infrastructure in the country. The relevant extract of the said judgement is set out below:
"34. As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken."
27. Further, in Cadila Healthcare (supra),it was held that, confusion in the case of drugs could even be dangerous to the customers and patients. In the said case, the Supreme Court also held as under:
38. Trade mark is essentially adopted to advertise one's product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it CS(COMM) 863/2023 Page 7 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49 is said that in a passing off action, the plaintiff's right is "against the conduct of the defendant which leads to or is intended or calculated to lead to deception.
Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business. The action is regarded as an action for deceit." (See Wander Ltd. Vs. Antox India Pvt Ltd., 1990 Suppl. SCC 727.
39. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under:
"The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products CS(COMM) 863/2023 Page 8 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49 caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."
28. A Coordinate Bench of this Court, in FDC Limited v. Nilrise Pharmaceuticals Pvt. Ltd., 2022:DHC:3839, has also referred to the said decision in Cadila Healthcare (Supra) and observed that the tests to be applied for medicinal products need to be far stricter due to the possibility of confusion resulting in public injury. The relevant extracts of the said decision are extracted as under:
41. The submission of the learned counsel for the defendant that they be permitted to use the impugned mark as they are using the prefix "ZOY" also with respect to their other medicinal preparations, also cannot be accepted. Each mark of the defendant has to be tested on its own standing. Merely because the defendant uses the prefix "ZOY" for its other medicinal preparations, it cannot be allowed to use the impugned mark even though the same is found to be deceptively similar to an already registered mark with prior use.
42. Since the products in question are medicinal products, in my opinion, the test to be applied needs to be far stricter than the one applied to other goods, as any confusion would result in public injury.
29. In the present case, the product names are almost identical and the products are identical. Further, the phonetic similarity of the two product names is uncanny, considering the fact that the Plaintiff's mark has been in use for more than 25 years now, and has built a substantial reputation. The Defendants' use of a similar name/ mark not only raises concerns about CS(COMM) 863/2023 Page 9 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49 potential confusion but also suggests an attempt to free ride on the Plaintiff's established reputation.
30. Under such circumstances, the Plaintiff has made out a prima facie case in its favour for grant of an ex parte ad interim interim injunction, as there is a complete possibility of the Defendants' products being mistaken as pass of as that of Plaintiff's products. Considering the products in question are pharmaceutical and nutraceutical products, the balance of convenience is also clearly in favour of the Plaintiff. Further, irreparable injury shall be caused not just to the Plaintiff, but maybe caused to the public at large as well, in case products with a deceptively similar mark as that of the Plaintiff are allowed to continue in the market.
31. Accordingly, till the next date of hearing, the Defendants and anyone else acting on their behalf shall stand restrained from using the impugned marks 'A TO Z' or 'A 2 Z' or any other mark, which is identical and confusingly similar to the Plaintiff's mark A TO Z as also the accompanying device in respect of pharmaceutical, nutraceutical, medicinal supplements or any other allied or cognate goods or services. The Defendants shall also stand restrained from using the identical or imitative colour combination and packaging as the Plaintiff's 'A to Z' product packaging and colour combination.
32. Compliance of order XXXIX Rule 3 CPC be done within one week.
33. Reply to this application be filed within four weeks of service of the present order and the complete paper books.
34. List before the Joint Registrar on 22nd January, 2024.
CS(COMM) 863/2023 Page 10 of 11This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49
35. List before Court on 8th April, 2024.
PRATHIBA M. SINGH, J.
DECEMBER 04, 2023/dk/bh CS(COMM) 863/2023 Page 11 of 11 This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/12/2023 at 00:34:49