Delhi High Court - Orders
Sun Pharma Laboratories Limited vs Avighna Medicare Private Limited & Ors on 23 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~14
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 904/2022
SUN PHARMA LABORATORIES LIMITED ..... Plaintiff
Through: Mr. Kapil Wadhwa, Ms. Surya
Rajappan and Ms. Tejasvini Puri,
Advocates.
versus
AVIGHNA MEDICARE PRIVATE LIMITED & ORS.
..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 23.12.2022 [This matter is listed before this Court upon directions of Hon'ble the Judge In-charge (Original Side) as the concerned Roster Bench is not holding court today] I.A. 22246/2022 (seeking exemption from filing certified/ original and/or clean/ typed/ translated/ legible copies with proper margin of documents)
1. Exemption is granted, subject to all just exceptions.
2. The Petitioner shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
3. Accordingly, the application stands disposed of.
I.A. 22245/2022 (seeking leave to file additional documents) Signature Not Verified Digitally Signed CS(COMM) 904/2022 Page 1 of 7 By:SAPNA SETHI Signing Date:24.12.2022 15:50:53
4. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
5. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
6. Accordingly, the application stands disposed of.
I.A. 22244/2022 (seeking exemption from advance service)
7. For the grounds and reasons stated therein, the application is allowed and disposed of.
I.A. 22243/2022 (seeking exemption from initiating pre-institution mediation)
8. Having regard to the facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd.,1 exemption from attempting pre- institution mediation is allowed.
9. Accordingly, the application stands disposed of.
I.A. 22241/2022 (seeking extension of time for filing court fees)
10. For the grounds and reasons stated therein, the application is allowed. Plaintiff is granted two weeks' time to file court fees.
11. The application is disposed of.
I.A. 22242/2022 (seeking leave to serve interrogatories upon the defendants) 1 DHC Neutral Citation: 2022/DHC/004454.
Signature Not Verified Digitally Signed CS(COMM) 904/2022 Page 2 of 7 By:SAPNA SETHI Signing Date:24.12.2022 15:50:5312. Issue notice to the Defendants, upon filing of process fee, by all permissible modes, returnable on the next date of hearing.
13. List before the Roster Bench on 29th May, 2023.
CS(COMM) 904/2022
14. Let the plaint be registered as a suit.
15. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the date of receipt of summons. Along with the written statement, the Defendant 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.
16. Liberty is given to the Plaintiff to file a replication within 15 days of the receipt of the written statement. Along with the replication, if any, filed by the Plaintiffs, 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.
17. List before the Joint Registrar for marking of exhibits on 6th March, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
Signature Not Verified Digitally Signed CS(COMM) 904/2022 Page 3 of 7 By:SAPNA SETHI Signing Date:24.12.2022 15:50:5318. List before the Roster Bench for framing of issues thereafter on 29th May, 2023.
I.A. 22240/2022 (under Order XXXIX Rules 1 & 2 read with Section 151 of the Code of Civil Procedure, 1908)
19. The Plaintiff states that it is a prior adopter, user, owner and registered proprietor of two word-marks - "DUZELA" and "ATTENTROL" for medicinal and pharmaceutical preparations falling under Class 5 under TM Application No. 1319844 registered since 09th November 2004, and TM Application No. 13168368, registered since 01st November 2004, respectively. It is contended that continuous use of the afore-said marks since 2004, has garnered substantial goodwill, reputation and association exclusively with the Plaintiff, both within the trade as well as in public.
20. It is also contended that Defendants have recently started using the impugned marks "DOSELA" and "ATENTRUE", in respect of medicinal and pharmaceutical products, which are stated to be deceptively similar to the Plaintiff's registered marks. Defendant No. 1 is stated to be the marketer of both products; Defendants No. 2 and 3 the manufacturer of "DOSELA"; and Defendants No. 2 and 4 are stated to be the manufacturer of "ATENTRUE".
21. Defendant No. 1 has applied for registration of the impugned mark "DOSELA" in November 2021, and for the impugned mark "ATENTRUE" in January, 2022, both in Class 5 on a 'proposed to be used' basis. The said applications have been opposed by the Plaintiff, Defendant No. 1 has filed its counter statement thereto, and the same is stated to be pending.
22. It is further contended that the Defendants, being in the same trade, Signature Not Verified Digitally Signed CS(COMM) 904/2022 Page 4 of 7 By:SAPNA SETHI Signing Date:24.12.2022 15:50:53 have deliberately, fraudulently, and with complete knowledge of the Plaintiff's rights and registrations in "DUZELA" and "ATTENTROL", adopted deceptively similar impugned marks, despite being put to knowledge of Plaintiff's right in the aforenoted marks by way of the aforenoted opposition. Plaintiff states that the adoption and use is without authority, and is an infringement Section 29 of the Trademarks Act, 1999.
23. Court has considered the above facts. A comparison between the marks of the Plaintiff and Defendants is as follows:
MARK PLAINTIFF'S - "DUZELA" DEFENDANTS' - "DOSELA"
Products Duzela 20 Dosela 400 MG
Duzela 30
Duzela 40
Duzela 60
Duzela M 20
Duzela M 30
Dosage/ form Capsule Tablet
Proprietor Plaintiff Defendant No. 1
Salt Duloxetine Hydrochloride Doxofylline
Ailment Used in the treatment of depression, Used for the treatment of
anxiety disorder, diabetic nerve bronchial asthma and chronic
pain, fibromyalgia, neuropathic obstructive pulmonary disease
pain, and stress urinary (COPD).
incontinence.
MARK PLAINTIFF'S - "ATTENTROL" DEFENDANTS' - "ATENTRUE"
Products Attentrol 10 Atentrue 50 MG
Attentrol 18
Attentrol 25
Dosage/ form Capsule Tablet
Proprietor Plaintiff Defendant No. 1
Salt Atomoxetine Atenolol
Ailment Used in the treatment of attention Used to treat high blood
deficit hyperactivity disorder and pressure and relieve chest pain
helps to improve attention span, and regularise heartbeats.
concentration and reduces
impulsive behaviour.
24. Having regard to the above, a similarity between the marks "DUZELA" and "DOSELA", is quite apparent. The two marks are Signature Not Verified Digitally Signed CS(COMM) 904/2022 Page 5 of 7 By:SAPNA SETHI Signing Date:24.12.2022 15:50:53 phonetically, structurally and instinctively similar. Only one letter is different, which can lead to confusion between consumer and pharmacist alike. In this regard, the Court finds prima facie case in favour of the Plaintiff to that extent, and in case no ex-parte ad-interim injunction is granted Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiffs and against the Defendant.
25. With regard to the marks "ATTENTROL" and "ATENTRUE", the Court is unable to appreciate the case sought to be made out. It is noted that the latter is formed from the salt Atenolol, from which the prefix "aten-" has been derived. The plaint itself mentions that Defendants have registered many marks with the suffix "-true". Moreover, what sways the Court is the Plaintiff's submission in para 38 of the plaint, where it is categorically stated that it has no objection to Defendant using the suffix "-true" in the impugned mark. Thus, the Defendants' mark "ATENTRUE", being a combination of first four letters from the salt, and its family of suffix "-true", results in the impugned mark "ATENTRUE", and it cannot be prima facie said that the adoption is dishonest.
26. Accordingly, the Court does not find a prima facie case to grant an ex- parte, ad-interim injunction for this mark.
27. In view of the foregoing, till the next date of hearing, Defendants, their business associates, partners/promoters, directors, proprietors, officers, subsidiaries, affiliates, franchisees, manufacturers, family members, servants, agents, dealers, distributors, stockists, licensee and/or anyone acting for and on their behalf are restrained from selling, offering to sell, manufacturing, advertising, promoting or in any other manner using the Impugned Marks "DOSELA" and/or any other mark identical or deceptively Signature Not Verified Digitally Signed CS(COMM) 904/2022 Page 6 of 7 By:SAPNA SETHI Signing Date:24.12.2022 15:50:53 similar to the Plaintiff's registered trademark "DUZELA" with respect to goods falling under Class 5 and/or any cognate and allied goods either as a trademark or part of a trademark, sub-brand, trade name, or part of a trade name, corporate name, email, domain name or part of a domain name, or in any other manner resulting in infringement of the Plaintiff's registered trademark "DUZELA".
28. The Defendants are directed to file an affidavit disclosing the list of products manufactured under the impugned name "DOSELA", within a period of four weeks from today.
29. List before the Roster Bench on 29th May, 2023.
SANJEEV NARULA, J DECEMBER 23, 2022 nk Signature Not Verified Digitally Signed CS(COMM) 904/2022 Page 7 of 7 By:SAPNA SETHI Signing Date:24.12.2022 15:50:53