Bombay High Court
Laboratoires Griffon Private Limited vs Auspharma Private Limited on 9 June, 2023
Author: R.I. Chagla
Bench: R.I. Chagla
910.IAL.15274.23 in COMIPL.15178.23.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION (L) NO. 15274 OF 2023
IN
COMMERCIAL IP SUIT (L) NO. 15178 OF 2023
Laboratoires Griffon Private Limited &Anr. .... Applicants/ Org.
Plaintiffs.
Vs.
Auspharma Private Limited & Anr. .... Respondents/ Org.
Defendants.
Mr. Amit Jamsandekar a/w Ms. Archita A. Gharat and Kiran Mehta i/b
Kiran J. Mehta for the Applicants/Plaintiffs.
CORAM : R.I. CHAGLA, J.
DATED : 9th JUNE, 2023.
ORDER :
1 The present Suit is in respect of causes of action of infringement and passing off. The subject matter of the present Suit are the marks:
'GLIMET' and 'GLIMED' The Applicant No.1/Plaintiff No.1is the registered proprietor of the trademark 'GLIMET & GLIMET DS'. The Applicants (hereinafter referred to as Plaintiffs) are impugning the use of the marks 'GLIMED M1, AQURIS Waghmare 1/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc GLIMED 1 and variants thereof, by the Respondents (hereinafter referred to as 'Defendants'). Both the marks are used in respect of pharmaceutical products falling in class 05. Mr. Jamsandekar submitted that it is important to note at this stage that the rival products contain different drugs and composition and is meant for same ailments. The product of the Plaintiffs bearing the mark 'GLIMET' contains Glipizide & Metformin Hydrochloride and the product of the Defendants bearing the impugned mark 'GLIMED M1'contains Glimepride and Metformin Hydrochloride. Mr. Jamsandekar invited my attention to the statements made by the Plaintiffs to this effect at paragraph 21 & 34 of the Plaint. I have perused the EXHIBIT P-2 which is a photograph of Defendant's products which clearly supports the Plaintiff's statements made by the Plaintiffs.
2 Mr. Jamsandekar submitted that in view of the statements made by the Plaintiffs in paragraph 34 of the Plaint, the Plaintiffs be allowed to make an application without notice to the Defendants. I am satisfied with the statements made by the Plaintiffs in paragraph34 and the same are justified particularly in view of the fact that the products which are subject matter of the present Suit are pharmaceutical products containing totally different drugs. Therefore, I have allowed the Plaintiffs to make anexparte application against the Defendants. Waghmare 2/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc 3 Mr. Jamsandekar relies upon the certified copies of entries of the trademark Register in respect of registrations of the marks 'GLIMET'&'GLIMET DS' bearing registration nos. 579544 & 2676118 respectively. Both the marks are registered in class 05 in respect of pharmaceutical goods. He also relied upon the registration certificate of the mark 'GLIMET'.
4 The documents being Exhibit A-1, A-2 & B to the plaint shows that Plaintiff No.1 is the registered proprietor of the mark 'GLIMET' with effect from 20.08.1992 and GLIMET DS with effect from 11.02.2014. The mark 'GLIMET' is registered as a distinctive mark in part 'A' of the Register of Trademarks under the provisions of Trade Marks Act, 1958. The registration certificate and certified entry of the Register in respect of the registrations of both the marks shows that the registrations of the said trademarksare valid, subsisting and in force in the name of Plaintiff No.1. 5 It was also submitted that the Plaintiff No. 1 has given non- exclusive license to use the mark 'GLIMET' and/or its variant to Plaintiff No.2 in the year 1999 & 2007 and have also filed necessary applications for registration of the name of Plaintiff No.2. Plaintiff No. 2 is the sister concern/group company of Plaintiff No. 1. The relevant documents of license agreement and the application for recording the license in the Waghmare 3/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc Trade Mark Registry are produced at EXHIBIT C-1 & C-2 and D-1 & D-2 (page 85 to 100 to the Plaint).
6 Mr. Jamsandekar submitted that the Plaintiffs have been openly, continuously, extensively and uninterruptedly using the 'GLIMET/ GLIMET DS' trademarks since 1999 in relation to its medicinal and pharmaceutical goods. The statutory rights in the mark are acquired by the Plaintiff since the year 1992 i.e. from the date of application. The Plaintiffs have used the said 'GLIMET' marks extensively and have promoted the goods bearing the same. The extensive use of the marks and promotion of goods bearing the same by the Plaintiffs had generated tremendous goodwill and reputation in the marks which is owned by the Plaintiffs. In support of the Plaintiffs' statements that marks are used extensively, continuously and exclusively by the Plaintiffs and that the Plaintiffs have generated goodwill and reputation in the marks the Plaintiffs have produced Statement of annual Sales figures dated 22.07.2022 and 21.07.2022 for 'GLIMET' and its variant, further copies of few sales invoices evidencing sales of the products bearing the trademark 'GLIMET' and its variant, copies of the promotional material bearing the trade mark GLIMET and its variant as EXHIBIT E-1 & E-2, F-1 to F-25, G-1 & G-5 respectively (page 101 to 133) to the Plaint. The Plaintiffs have also produced photocopies of the carton/ packaging of the Plaintiffs' Waghmare 4/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc products at EXHIBIT H-1 to H-4, page 134 to 137of the Plaint. I have perused all these documents, prima facie, it establishes that the Plaintiffs have used the marks 'GLIMET' and 'GLIMET DS' for a long time and has generated goodwill and reputation in the same.
7 On the basis of documents annexed to the Plaint, it is submitted by the Plaintiffs that being the registered proprietor of the trademarks 'GLIMET & GLIMET DS' and on account of continuous use coupled with wide publicity of the said trademarks, the valuable statutory and common law rights in the said trademarks vest in the Plaintiffs and have thus the sole exclusive right to use the said trade marks in respect of the goods covered under the said registration. The Plaintiffs have sold and continue to sell its products under the 'GLIMET' trademarks on an extensive scale throughout India.
8 The Plaintiffs have been vigilantly protecting its 'GLIMET' trademarks from unscrupulous manufacturers copying Plaintiffs' well- reputed and well-known marks by filing civil suits for infringement and passing off. Copies of few orders are annexed at EXHIBIT I-1 to I-6, (page 136- 178) to the Plaint.
9 It is stated by the Plaintiffs in paragraphs 14 to 20 of the Plaint that the Plaintiffs came to know about the use of the impugned Waghmare 5/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc marks by the Defendants in the 1 st week of April, 2022. The Plaintiffs stated that the Plaintiffs investigated the matter and the details of the facts revealed in the investigation are stated by the Plaintiffs in the above mentioned paragraphs of the Plaint. The 1st Defendant has made applications for registration of the mark variants of impugned marks in the year 2021 on proposed to be used basis. Amongst the applications filed, the said applications which proceeded and published in the Trademarks Journal 2030 dated 13.12.2021, have been opposed by the Plaintiffs.
10 It is stated by the Plaintiff that in the trademark opposition proceedings before the Trademark Registry, the 1 st Defendant has filed an affidavit of evidence under Rule 46 in support of its application wherein it has relied upon copies of few purported invoices dated 30.06.2023, 04.02.2022 and 25.02.2022 raised by 2nd Defendant on 1st Defendant in respect of GLIMED 1, GLIMED 2, GLIMED M1 and GLIMED M2. The Plaintiffs have stated that some of the aforesaid invoices does not even bear the drug license number of the consignee and appear to be forged, fabricated, manufactured and concocted. It is submitted that Defendant No. 1 despite making applications for registration of trademarks AQURIS GLIMED and variants is in fact using 'GLIMED' variants. It is further submitted that the 1st Defendant in none of the opposition proceedings Waghmare 6/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc disclosed the fact that it has applied for registration of the trademarks GLIMED and its variants.
11 However, Plaintiff when conducted public search on the records of the Trademark Register to ascertain whether Defendants have applied for registration of the trademark GLIMED was shocked and surprised to find applications for GLIMED and its variants, applied by 1 st Defendant in the year 2021 as more particularly stated in paragraph 17 of the Plaint.
12 The Plaintiffs state that one of the application for the registration of the trademark 'GLIMED 2' bearing no. 4968119 is refused registration vide Order dated 31.05.2022 due to similarity of the impugned mark with the marks cited in examination report issued in its respect. It is submitted that one of the trademark cited as a conflicting mark is the mark 'GLIMED' bearing no. 3363285 dated 15.09.2016 in class 05 in the name of Knoll Healthcare Pvt. Ltd., against whom Plaintiffs have obtained injunction Order dated 09.01.2023. The said Order is annexed as Exhibit I-6 to the Plaint. It is further submitted that the Defendants have recently in the year 2022 and 2023 have withdrawn application for registration of its trademark GLIMED M1, GLIMED 1 and GLIMED M2 bearing no. 4968120, 4968118 and 4968121, as more Waghmare 7/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc particularly mentioned in paragraph 18 of the Plaint. 13 The Plaintiffs state that the 1st Defendant in the opposition proceedings claimed to have used the impugned trademarks AQURIS GLIMED and its variants and relied upon purported invoices for the trademark GLIMED and its variants, despite diligent search the Plaintiffs could not find the products bearing the impugned marks in the market. Further the purported invoice dated 25.02.2022 was relied upon in the Affidavit of evidence dated 14.10.2022 and therefore Plaintiffs bonafidely believed that the Defendants have stopped using the impugned trademarks and therefore did not file Suit at that point. 14 The Plaintiffs state that recently in the 3 rd week of May, 2023 the Plaintiff's representative came across the product bearing the impugned mark GLIMED M1 being sold in Dombivali and immediately purchased the same under an invoice dated 19.05.2023 issued by Apollo Pharmacy, Tilak Nagar, Dombivali without a prescription. The product strip mentions the name of 1 st Defendant as marketer and 2 nd Defendant as manufacturer. Copy of the invoice and product strip is annexed as Exhibit P-1 & P-2 to the Plaint, page 205 & 206. Further, the representative of Plaintiffs visited the Apollo Pharmacy website www.apollopharmacy.in, accessible in Mumbai and placed an Order for Waghmare 8/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc the impugned product GLIMED M2 on 05.06.2023 and the impugned product was delivered to Plaintiff's representative in Mumbai without prescription on 05.06.2023. Copy of the invoice and courier packet is annexed as Exhibit Q-1 & Q-2 to the Plaint, page 207 to 209. 15 Prima facie the adoption of the impugned marks by the Defendants is not honest. In the circumstances, the Plaintiffs have made out a strong prima facie case and the balance of convenience is heavily in favour of the Plaintiffs and against the Defendants. There are no equities in favour of the Defendants. The Plaintiffs have been in the market since the year 1999 and the mark of the Plaintiff is registered with effect from 1992, therefore the Defendants ought to have taken precaution before adopting and using the impugned marks. The public interest also requires grant of relief to the Plaintiffs.
16 Therefore, ad interim reliefs in terms of prayer Clause (a) &
(b) of the Interim Application, which are reproduced below:
(a) that pending the hearing and final disposal of the suit, the Respondents by themselves, their partners, directors, associate/s, sister/group companies, employees, servants, agents, dealers, stockist, distributors, assignees, licensees and all those connected Waghmare 9/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc with them in their business be restrained by a temporary order and injunction of this Hon'ble Court from using, manufacturing, selling, marketing, promoting, advertising, distributing, exporting, importing, exhibiting, displaying and/or offering for sale or otherwise in shops or on their own website or any other website owned, managed and/or controlled by the Respondentsor on e-
commerce platforms/sites or websites and/or using in any manner in relation to their medicinal and pharmaceutical preparations the trademarks 'GLIMED 1, GLIMED 2, GLIMED M1, GLIMED M2, AQURIS GLIMED 1, AQURIS GLIMED 2, AQUIRIS GLIMED M1 and AQURIS GLIMED M2' or any mark deceptively similar thereto and any mark identical and/or deceptively similar to the Plaintiff No.1's trademarks GLIMET registered under No.579544 and GLIMET DS registered under No.2676118 both in class 05, so as to infringe the 1st Applicant's registered trademark numbers as above mentioned;
(b) that pending the hearing and final disposal of the suit, the Respondents by themselves, their partners, Waghmare 10/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc directors, associate/s, sister/group companies, employees, servants, agents, dealers, stockist, distributors, assignees, licensees and all those connected with them in their business be restrained by a temporary order and injunction of this Hon'ble Court from using, manufacturing, selling, marketing, promoting, advertising, distributing, exporting, importing, exhibiting, displaying and/or offering for sale or otherwise in shops or on their own website or any other website owned, managed and/or controlled by the Respondent/s or on e- commerce platforms/sites or websites and/or using in any manner in relation to their medicinal and pharmaceutical preparations the trademarks 'GLIMED 1, GLIMED 2, GLIMED M1, GLIMED M2, AQURIS GLIMED 1, AQURIS GLIMED 2, AQUIRIS GLIMED M1 and AQURIS GLIMED M2' or any mark identical and/or deceptively similar thereto being confusingly similar to the Applicant's trademarks GLIMET and/or GLIMET DS so as to pass off or enable others to pass off the Respondents goods as and for that of the Applicants; Waghmare 11/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::
910.IAL.15274.23 in COMIPL.15178.23.doc 17 Plaintiffs to comply with the provisions of Order XXXIX Rule 3 of the Code of Civil Procedure, 1908 is within a period of three weeks. 18 Liberty to Defendants to move for varying/recalling this order by giving minimum 7 working days' notice to Plaintiffs' Advocate. 19 List this Interim Application, for further reliefs on 4th July, 2023 Present order to operate till 6th July, 2023. 20 Defendants and all concerned shall act on production and service of Ordinary/digitally signed copy of this order.
(R.I. CHAGLA, J.) Waghmare 12/12 ::: Uploaded on - 13/06/2023 ::: Downloaded on - 13/06/2023 22:32:39 :::