Delhi High Court - Orders
Mankind Pharma Limited vs Pranjali Swapnil Pimprikar Trading As ... on 23 August, 2024
$~23
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 709/2024
MANKIND PHARMA LIMITED .....Plaintiff
Through: Mr. Gopal Jain, Sr. Advocate with
Mr. Ankur Sangal, Mr. Ankit
Arvind, Mr. Shashwat Rakshit and
Ms. Nidhi Pathak, Advs
Versus
PRANJALI SWAPNIL PIMPRIKAR TRADING
AS A2 LIFESCIENCES & ANR. .....Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE SAURABH BANERJEE
ORDER
% 23.08.2024 I.A. 37187/2024-(Section 12A CCA, 2015)
1. The plaintiff vide the present application, is seeking exemption from instituting pre-litigation mediation.
2. Considering the averments made therein and as the plaintiff is seeking an urgent ad-interim relief and in view of the orders passed in Yamini Manohar v. T.K.D. Krithi 2024 (5) SCC 815 and Chandra Kishore Chaurasia vs. R. A. Perfumery Works Private Limited 2022:DHC:4454-DB, the plaintiff is exempted from instituting pre- litigation mediation.
3. Accordingly, the present application is allowed and disposed of. I.A. 37191/2024- (Exemption from Advance Service)
4. The plaintiff vide the present is seeking exemption from advance CS(COMM) 709/2024 Page 1 of 14 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 20/09/2024 at 20:44:12 service on the defendants.
5. Learned counsel for the plaintiff submits that considering the position involved, particularly since appointment of Local Commissioner(s) for search and seizure at the premises of defendants is being sought, there is a likelihood that the apprehensions of the plaintiff will become a reality in case advance service is affected and therefore, an exemption from effecting advance service is necessary.
6. Therefore, for the reasons stated in the application as also taking into account the aforesaid factors and in the interest of justice, the plaintiff is granted exemption from effecting advance service upon the defendants.
7. Accordingly, the present application is allowed and disposed of. I.A. 37190/2024 (for exemption)
8. The plaintiff vide the present application, is seeking exemption from filing original/ certified, typed, translated and fair copies of the documents.
9. Exemption as sought by the plaintiff is granted, subject to all just exceptions.
10. The applicant shall file legible, clear, and original copies of the documents on which the applicant may seek to place reliance upon within four weeks from today.
11. Accordingly, the application is allowed and disposed of. I.A. 37188/2024-Addl.doc.
12. The plaintiff vide the present application under Order 11 Rule 1(4) of the Code of Civil Procedure, 1908 as applicable to commercial suits under the Commercial Courts Act, 2015 is seeking to place on record additional documents within a period of four weeks.
CS(COMM) 709/2024 Page 2 of 14This 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 20/09/2024 at 20:44:12
13. The plaintiff will be at liberty to file additional documents within a period of four weeks as also, albeit, strictly as per the provisions of the Commercial Courts Act, 2015 and the DHC (Original Side) Rules, 2018.
14. Accordingly, the present application is allowed and disposed of. I.A. 37189/2024-U/S 149 CPC
15. The plaintiff vide the present application, is seeking time of three weeks for filing the deficient court fee.
16. For the reasons stated in the present application, the plaintiff is granted one week for filing the deficient court fee.
17. The Registry is directed to list the matter before the Court, if the deficient court fee is not filed within the stipulated period as aforesaid.
18. Accordingly, the present application is allowed and disposed of. CS(COMM) 709/2024
19. The plaintiff has instituted the present suit, seeking a decree of permanent injunction for infringement of trademarks/ copyrights, passing off, unfair trade practices, rendition of accounts and damages against the defendants.
20. Let the plaint be registered as a suit.
21. Upon filing of the process fee, issue summons of the suit to the defendants through all permissible modes returnable before the Joint Registrar on 25.11.2024.
22. The summons shall state that the written statement(s) be filed by the defendants within a period of thirty days from the date of the receipt of the summons. Written statement(s) be filed by the defendants along with affidavit(s) of admission/ denial of documents of the plaintiff, without which the written statement(s) shall not be taken on record.
CS(COMM) 709/2024 Page 3 of 14This 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 20/09/2024 at 20:44:12
23. Replication(s) thereto, if any, be filed by the plaintiff within a period of fifteen days from the date of receipt of written statement(s). The said replication, if any, shall be accompanied by with affidavit(s) of admission/ denial of documents filed by the defendants, without which the replication(s) shall not be taken on record within the aforesaid period of fifteen days.
24. If any of the parties wish to seek inspection of any document(s), the same shall be sought and given within the requisite timelines.
25. List before the Joint Registrar for completion of pleadings on 25.11.2024. It is made clear that if any party unjustifiably denies any document(s), then it would be liable to be burdened with costs.
26. List before the Court on 16.01.2025.
I.A. 37185/2024 (Order XXXIX rule 1 & 2 CPC, 1908: Stay)
27. The plaintiff, vide the present application is seeking to restrain the defendants and all those acting on their behalf from infringing upon the trademarks namely 'HEALTH OK' and trade dress registered in the plaintiff's name.
28. As per plaint, the plaintiff is a Public Listed Company registered and incorporated under the Companies Act, 1956, engaged in the manufacture and supply of medicinal, pharmaceutical and consumer healthcare products across India and globally. The plaintiff adopted the trademark 'HEALTH OK' for the first time in 2008 for medical and surgical goods under Class 10. The plaintiff further expanded its business CS(COMM) 709/2024 Page 4 of 14 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 20/09/2024 at 20:44:13 under the trademark 'HEALTH OK' in the year 2013 for manufacture and sale of multivitamin tablets for boosting immunity of the human body and maintaining optimal health.
29. Learned senior counsel for plaintiff submits that the plaintiff has acquired significant goodwill and recognition in the market qua the registered trademark 'HEALTH OK' and trade dress . Further, in order to strengthen the same, acquired registrations of certain trademarks and trade dresses under the relevant classes. The details of some of the trade dress and trademark registrations obtained by the plaintiff are as under:
Trade Mark Reg. No. Class Date of
Reg.
MANKIND'S HEALTH OK 2468867 3 30/01/2013
Health OK 2263313 5 09/01/2012
Mankind's Health OK 2749602 5 25/04/2016
3243052 5 30/01/2013
MANKIND'S HEALTH OK 2468869 10 30/01/2013
MANKIND'S HEALTH OK 2468873 32 30/01/2013
MANKIND'S HEALTH OK 2468874 35 30/01/2013
MANKIND'S HEALTH OK 2468875 44 30/01/2013
30. Learned senior counsel then submits that at the time of inception of its product under the said trademark 'HEALTH OK', it adopted an CS(COMM) 709/2024 Page 5 of 14 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 20/09/2024 at 20:44:13 original and distinctive trade dress having combination of silver and blue- green-light, green streaks design along with other distinctive devices in the year 2013 as under:
31. Learned senior counsel then submits that subsequently in the year 2015, the plaintiff introduced syrup under the plaintiff's trademark with an identical trade dress for boosting immunity in the body and as a supplement to prevent and treat vitamin deficiencies. A pictorial representation of the plaintiff's product is reproduced hereinbelow:
32. Learned senior counsel also submits that ever since its inception, the plaintiff has spent tremendous time, effort, and resources for promoting and marketing its registered marks 'HEALTH OK' via endorsements, campaigns and different forms of media.
33. Learned senior counsel also submits that the goodwill and reputation of the plaintiff's mark can be further ascertained from the annual sales figures recorded against the plaintiff's product "MANKIND'S HEALTH OK SYRUP" under the plaintiff's trade dress. The plaintiff has clubbed a sales turnover of Rs.15.40 Crores for the CS(COMM) 709/2024 Page 6 of 14 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 20/09/2024 at 20:44:13 financial year 2021-2022, Rs.13.28 Crores for the financial year 2022- 2023, Rs.12.24 Crores for the financial year 2023-2024. Further, the promotional figures of the products bearing the mark 'HEALTH OK' indicates that the plaintiff spent Rs.25.67 Crores in the financial year 2021-2022, Rs.22.95 Crores in the financial year 2022-2023 and Rs.19.41 Crores in the financial year 2023-2024 for promoting the products containing the said marks.
34. As per the learned senior counsel for plaintiff, the defendant no.1 is a proprietorship firm engaged in the manufacturing and sale of pharmaceutical products as per the FSSAI license number found on the impugned product of the said defendant and the defendant no.2 is a third- party manufacturer of pharmaceutical products.
35. On coming to know of the defendants in the first week of August, 2024, the plaintiff has instituted the captioned suit.
36. This Court has heard the submissions advanced by the learned senior counsel for the plaintiff and perused the averments made in the pleadings as also the documents on record.
37. At the outset, given hereinbelow is the comparative table of the competing marks of the parties:
CS(COMM) 709/2024 Page 7 of 14This 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 20/09/2024 at 20:44:13
38. As apparent from the above, the defendants have adopted and are using an identically similar mark 'All OK+' as that of the registered CS(COMM) 709/2024 Page 8 of 14 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 20/09/2024 at 20:44:13 trademark 'HEALTH OK' of the plaintiff, leaving hardly any scope of difference inter se them for any common man seeing those displayed in the shelves of a chemist shop or elsewhere.
39. Additionally, the logo, the packaging and the colour combination of using green and blue colours over the silver background thereon coupled with the alignment, shape of the human figures as also the other information qua the type of acid and salt used, the manner of depiction thereof as also the 'nutritional info' thereon and the price of the product are all same as that of the plaintiff.
40. Similar is the case with respect to the shape and size of the bottle containing the impugned mark 'All OK+' of the defendants, since the same seems identically similar to the bottle containing the registered trademark 'HEALTH OK' of the plaintiff.
41. Undoubtedly, the plaintiff is not only the prior adopter and prior user but also the prior registrant of the trademark 'HEALTH OK' of the plaintiff. Therefore, since the plaintiff has obtained registration of the trademark 'HEALTH OK' in its favour, it is entitled for protection of the said registered trademark 'HEALTH OK' against anyone like the defendants.
42. Since the defendants are engagement in the same line of business and operating in the same circle of trade channels and dealing with the same set of consumers, there is all likelihood of the general public getting deceived and confused into thinking that the product of the defendants are actually coming from the house of the plaintiff or that it may have any connection with the plaintiff.
43. Under the given scenario, it cannot be said that the defendants were CS(COMM) 709/2024 Page 9 of 14 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 20/09/2024 at 20:44:13 unaware of the plaintiff and/ or its goodwill and reputation in and to the the registered trademark 'HEALTH OK'. There is, thus, a deliberate attempt of the defendants to portray that they are in more than one manner connected with and/ or have either been allowed or have obtained some sort of permission from the plaintiff.
44. It is trite and settled law that this Court ought to treat with utmost care and caution while dealing with products involving pharmaceutical preparations. Reliance is placed upon Cadila Health Care v. Cadila Pharmaceuticals Ltd AIR 2001 SC 1952, Heinz Italia & Anr. v. Dabur India Ltd. (2007) 6 SCC 1, Brihan Karan Sugar Syndicate Private Limited vs. Yashwantrao Mohite Krushna Sahakari Sakhar Karkhana (2024) 2 SCC 577 and Brittania Industries Ltd. v. ITC India Ltd. (2021) SCC OnLine Del 1489.
45. In view of the aforesaid, the balance of convenience and probabilities heavily tilt in favour of the plaintiff for grant of an ex parte ad interim injunction in its favour and against the defendants. So much so, as per the existing circumstances the plaintiff has been able to make out a prima facie case in its favour and against the defendants as well. Therefore, the defendants ought not to be allowed to continue using the trademark/ trade dress of the plaintiff to save the plaintiff from suffering irreparable harm, loss and injury.
46. Accordingly, till the next date of hearing, the defendants, and all those acting on their behalf from manufacturing, exporting, selling, offering for sale, advertising, directly or indirectly dealing in any goods and services under the trademark 'ALL OK+' and trade dress CS(COMM) 709/2024 Page 10 of 14 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 20/09/2024 at 20:44:13 , is/ are restrained from using the said trademarks namely 'HEALTH OK' and trade dress as the same is/ are identical with or confusingly/ deceptively similar to the plaintiff's registered trademarks.
47. Upon filing of the process fee, issue notice to the defendants by all permissible modes returnable before the Joint Registrar on 25.11.2024.
48. Reply, if any, be filed within a period of thirty days from the date of service. Rejoinder thereto, if any, be filed within a period of fifteen days thereafter.
49. The provisions of Order XXXIX rule 3 CPC be complied within one week from the receipt of this order.
50. List before the Court on 16.01.2025.
I.A. 37186/2024(Order XXVI Rule 9 CPC, 1908: Appointment of Local Commissioner)
51. The plaintiff, vide the present application, is seeking appointment of Local Commissioner(s) to visit the premises of the defendants.
52. Learned senior counsel for the plaintiff submits that the defendants are aware of the plaintiff and their products and the infringing materials placed on record are clear evidence of the intention of the defendants to ride upon the goodwill and reputation of the plaintiff. The plaintiff believe that the infringing products are sold/ manufactured at the location set out CS(COMM) 709/2024 Page 11 of 14 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 20/09/2024 at 20:44:13 in the memo of parties annexed with the plaint and the defendants are likely to remove all physical evidence or deny their involvement in the infringing activities.
53. In view of the aforesaid as also considering the factual matrix involved, and most relevantly, in order to preserve the counterfeit and infringing materials involved, in the considered opinion of this Court, it is deemed appropriate to appoint Local Commissioners to visit the premises of the defendants.
54. Accordingly, the following are appointed as Local Commissioners with a direction to visit the premises of the defendants as specified against their names:
S. Local Commissioner Location
No.
1. Mr. Anjani Kumar Rai, Shop No.1, Third Floor
Adv. Plot No. 5/A, H.No.1-7-517
[+91-8800829883] S. No. 64, Pawade Wadi Naka
Pushpa Nagar, Nanded
Maharashtra-431 603
2. Mr. Bhanu Gulati, Adv. Akshar Molecules Inc.
[+91-8510088789] 427-A, Phase-1 HSIIDC, Barhi
Haryana-131 101
55. The Local Commissioners are to execute the commission in the premises of the defendants with the following directions:-
a) The Local Commissioner(s) be accompanied by a representative of the plaintiff and/ or its counsel, who shall be permitted to enter into the premises of the respective defendants.
b) The Local Commissioner(s) to seize, pack and seal the infringing products and handover the same on Superdari to the CS(COMM) 709/2024 Page 12 of 14 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 20/09/2024 at 20:44:13 respective defendants upon the said defendants giving an 'Undertaking' that he shall not tamper with or remove the sealed products as also shall in compliance of the orders of this Court, as and when passed, produce the sealed products under Superdari.
c) The Local Commissioner(s) is/are permitted to take photocopies and/ or screenshots of all the books of accounts including ledgers, cashbooks, bill books, purchases and sales records or any document(s) deemed necessary found in the premises of the defendants, etc. for placing the hard copies or e- copies thereof on record.
d) The Local Commissioner(s) is/are permitted to make video recording of execution of the commission at the premises of the defendants in compliance of the present order.
e) The Local Commissioner(s) is/are permitted to take the assistance of the Station House Officer [SHO] of the local Police Station within whose jurisdiction the premises of the defendants are situated. The said SHO is directed to render and provide all and every necessary assistance and protection to the Local Commissioner, if as and when sought for ensuring unhindered and effective execution of the commission at the premises of the defendants in compliance of the present order.
f) If the premises of the respective defendants are found under lock(s), the Local Commissioner is permitted to break open the said lock(s) in the presence of the SHO/ any designated police officer from the local Police Station.
56. The fee of each of the Local Commissioners is fixed at Rupees One CS(COMM) 709/2024 Page 13 of 14 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 20/09/2024 at 20:44:13 Lakh Fifty Thousand Only [Rs.1,50,000/-] in addition to all the related expenses for travel as also any other miscellaneous out of pocket expenses for the execution of the commission. All the aforesaid expenses shall be borne by the plaintiff and paid in advance to the Local Commissioner.
57. The commission be executed within a period of ten days from today, i.e. on or before 02.09.2024.
58. The report of the Local Commissioner be filed within a period of two weeks from the execution of the commission.
59. A copy of this order be provided to the Local Commissioners.
60. Accordingly, the application is allowed and disposed of.
Dasti.
SAURABH BANERJEE, J AUGUST 23, 2024/So CS(COMM) 709/2024 Page 14 of 14 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 20/09/2024 at 20:44:13