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Glaxo Group Limited vs Zenlabs Ethica Limited on 3 June, 2022

Author: Jyoti Singh

Bench: Jyoti Singh

                          $~15
                          *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +     CS(COMM) 422/2022
                                GLAXO GROUP LIMITED                       ..... Plaintiff
                                             Through: Mr. Urfee Roomi, Mr. Parth and
                                             Mr. Vishesh Kumar, Advocates.

                                                    versus

                                ZENLABS ETHICA LIMITED                                 ..... Defendant
                                             Through: None.

                                CORAM:
                                HON'BLE MS. JUSTICE JYOTI SINGH
                                                    ORDER

% 03.06.2022 I.A. 9565/2022 (seeking leave to file additional documents, by Plaintiff)

1. Present application has been preferred on behalf of the Plaintiff seeking leave to file additional documents under Order 11 Rule 1(4) CPC.

2. 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, 2015.

3. Application is allowed and disposed of.

I.A. 9566/2022 (exemption, by Plaintiff)

4. Subject to the Plaintiff filing originals, clearer and translated copies and documents with proper margins, which it may seek to place reliance on, within four weeks from today, exemption is granted.

5. Application is allowed and disposed of.

I.A. 9567/2022 (seeking recall of infringing products, by Plaintiff)

6. Issue notice to the Defendant, through all prescribed modes, returnable on 07.10.2022.

I.A. 9568/2022 (Section 12(A) of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)

7. For the reasons stated in the application, the requirement of pre- institution mediation is dispensed with.

8. Application is allowed and disposed of.

I.A. 9569/2022 (exemption from advance notice to Defendant, by Plaintiff)

9. Since there is an urgency in the matter and the matter is being heard today, Plaintiff is exempted from serving advance notice on Defendant.

10. For the reasons stated in the application, the same is allowed and disposed of.

CS(COMM) 422/2022

11. Let plaint be registered as a suit.

12. Upon filing of process fee, issue summons to the Defendant, through all permissible modes, returnable before the learned Joint Registrar on 08.08.2022. Summons shall state that the written statement shall be filed by the Defendant within 30 days from the receipt of summons. Along with the written statement, Defendant shall also file an affidavit of admission/denial of the documents of the Plaintiff.

13. Replication be filed by the Plaintiff within 15 days of the receipt of the written statement. Along with the replication, an affidavit of admission/denial of documents filed by the Defendant, shall be filed by the Plaintiff.

14. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.

15. List before the Court on 07.10.2022.

I.A. 9564/2022 (under Order 39 Rules 1 and 2 CPC, by Plaintiff)

16. Present application has been preferred by the Plaintiff under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure 1908 for grant of an ex-parte ad-interim injunction.

17. Issue notice to the Defendant through all prescribed modes, returnable on 07.10.2022.

18. It is averred that Plaintiff Company was incorporated in 1715 and is among the largest and fastest growing pharmaceuticals and consumer healthcare product Companies in the world with a corporate vision of research, discovery, development and creation of effective consumer and healthcare products in compliance with stringent quality control standards.

19. It is further averred that Plaintiff's Indian Subsidiary, Glaxo Laboratories (India) is one of the market leaders in many therapeutic areas and in preventive healthcare in India. It is further averred that since the early 1960s, Plaintiff is selling medicinal and pharmaceutical preparations, including tablets and injections, bearing one or more of Plaintiff's BETNESOL Marks in India. These medicinal and pharmaceutical products are used to treat a wide variety of diseases, including, but not limited to, allergies and inflammatory disorders. The pharmaceutical preparations, including tablets, oral drops and injections, bearing Plaintiff's BETNESOL Marks are sold through a network of distributors and stockists throughout India as well as through online pharmacies. Owing to long and continuous use of Plaintiff's BETNESOL Marks, consumers in India associate the marks solely and exclusively with the Plaintiff and no one else.

20. It is further averred that since the early 1960s, Plaintiff has sold and continues to sell, medicinal and pharmaceutical preparations, including skin Signature Not Verified Digitally Signed CS(COMM) 422/2022 Page 3 of 7 By:KAMAL KUMAR Signing Date:07.06.2022 13:34:30 creams, ointments. and lotions, bearing one or more of Plaintiff's BETNOVATE Marks in India.

21. It is further averred that within a few years of being introduced in the Indian market, medicinal and pharmaceutical preparations, bearing Plaintiff's Marks were an enormous success. The financial success owing to sale of medicinal and pharmaceutical preparations, including tablets and injections, bearing Plaintiff's Marks, during the period 2011-21 is apparent from Plaintiff's sales figures which are mentioned in the Plaint. Plaintiff spends money annually on marketing its tablets and injections bearing Plaintiff's Marks in India and the marketing spend during the period 2010- 2020 is mentioned in the plaint.

22. It is further averred that Plaintiff is the proprietor of a valid and subsisting registration for the marks BETNESOL and BETNOVATE respectively in Class 5.

23. It is further averred that Plaintiff's Marks have come to be associated solely and exclusively with the Plaintiff and have developed a stellar reputation owing to Plaintiff's long, extensive and continuous use all over the world and this reputation has spilled over into India. Not only have Plaintiff's Marks acquired trans-border reputation in India, they have also become well-known owing to extensive and continuous use within India. Plaintiff's Marks qualify as 'well-known trade marks', as envisaged by Section 2(l)(zg) and Section 11(6) of the Act.

24. It is further averred that Defendant is a Company incorporated under the Companies Act, 1956 and is engaged in the manufacturing, marketing and sale of pharmaceutical and medicinal products, including, tablets and oral drops, bearing the marks BETNEZEN and BETNEZEN FORTE and Signature Not Verified Digitally Signed CS(COMM) 422/2022 Page 4 of 7 By:KAMAL KUMAR Signing Date:07.06.2022 13:34:30 injections bearing the marks BETNECOL and BETNEVIN. As per Plaintiff's information, Defendant's tablets, oral drops and injections bearing Defendant's Mark contain the active ingredient, Betamethasone and are used for the treatment of allergies and inflammatory disorders.

25. It is further averred that in November 2021, Plaintiff first learnt that Defendant is engaged in the manufacturing, marketing and sale of tablets, drops and injections bearing Defendant's Marks through its website located at www.zenlabsethica.com as well as through other online pharmacies, such as IMG, Medplusmart and Dawabazar.

26. It is further averred that immediately thereafter, Plaintiff sent a legal notice to the Defendant putting it on notice of Plaintiff's rights in Plaintiff's Marks and demanding, inter alia, that Defendant ceases any and all use of Defendant's Marks. No response has been received from the Defendant and on the contrary, Defendant continues to use Defendant's Marks on and in relation to tablets, oral drops and injections, openly and blatantly.

27. It is further averred that Plaintiff's and Defendant's Marks starts with the letter combination "BETNE". Defendant has merely replaced the letter "S" with the letter "C" in Plaintiff's BETNESOL Marks to form Defendant's BETNECOL mark. Further, as regards Defendant's BETNEVIN and BETNEZEN marks, Defendant has merely replaced the letter combinations "SOL" and "OVATE" in Plaintiff's BETNESOL Marks and Plaintiff's BETNOVATE Marks with the letter combination "VIN" and "ZEN" to form the Defendant's BETNEVIN and BETNEZEN marks. These minor changes do not differentiate Defendant's Marks from the Plaintiff's Marks. Thus, the rival marks, when looked at in their entirety, are similar in appearance, sound, and structure. Moreover, just like the Plaintiff, Defendant's goods are Signature Not Verified Digitally Signed CS(COMM) 422/2022 Page 5 of 7 By:KAMAL KUMAR Signing Date:07.06.2022 13:34:30 tablets and injections. The rival tablets, oral drops and injections are sold through identical trade channels to the same consumers. Further, chances of consumer confusion are enhanced by the fact that the rival products have identical therapeutic indications and active ingredients. In Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952 it was held that a stricter approach is required in cases of medicinal preparations and products since any confusion between the respective medicinal products is likely to have a disastrous effect on public health. Therefore, there is no doubt that Defendant's Marks are nearly identical/similar to Plaintiff's Marks and are likely to cause confusion amongst the consuming public as to the source of the goods under the Defendant's Marks.

28. Having heard learned counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of an ex parte ad-interim injunction. Balance of convenience lies in favour of the Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

29. Accordingly, Defendant, any other individuals, officers, managers, shareholders, directors, employees, agents, dealers, licensees, companies and retailers, stockists, chemists or any persons/entities that are related or affiliated to the Defendant, as the case may be, and all others, acting for and on behalf of the Defendant, are restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly and whether on the Internet or otherwise, tablets, oral drops, injections and any other medicinal or pharmaceutical products bearing Defendant's Marks and marks that incorporate BETNECOL, BETNEZEN and/or BETNEVIN marks, or any other mark that is identical/deceptively Signature Not Verified Digitally Signed CS(COMM) 422/2022 Page 6 of 7 By:KAMAL KUMAR Signing Date:07.06.2022 13:34:30 similar to Plaintiff's Marks and from doing any act that amounts to infringement of Plaintiff's registered marks, BETNESOL and BETNOV ATE, bearing Registration Nos. 200822 and 219258, till the next date of hearing.

30. Defendant, any other individuals, officers, managers, shareholders, directors, employees, agents, dealers, licensees, companies and retailers, stockists, chemists or any persons/entities that are related or affiliated to the Defendant, as the case may be, and all others, acting for and on behalf of the Defendant, are restrained from passing-off their tablets, oral drops and injections under the impugned Marks and/or any other pharmaceutical or medicinal goods as those of the Plaintiff or that may suggest a connection or association with Plaintiff's Marks.

31. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within ten days from today.

JYOTI SINGH, J JUNE 03, 2022/sn Signature Not Verified Digitally Signed CS(COMM) 422/2022 Page 7 of 7 By:KAMAL KUMAR Signing Date:07.06.2022 13:34:30