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Mankind Pharma Ltd vs Bj Lifesciences & Anr on 2 May, 2022

Author: Jyoti Singh

Bench: Jyoti Singh

                          $~21
                          *    IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +     CS(COMM) 278/2022
                                MANKIND PHARMA LTD                       ..... Plaintiff
                                            Through: Mr. Amit Sibal, Senior Advocate with
                                            Mr. Hemant Daswani, Mr. Sarabpreet Singh,
                                            Mr. Bhawani Singh, Ms. Ayushi Banerji,
                                            Mr. Aishvary Vikram and Mr. Saksham Dhingra,
                                            Advocates.

                                                    versus

                                BJ LIFESCIENCES & ANR.                            ..... Defendants
                                                    Through:

                                CORAM:
                                HON'BLE MS. JUSTICE JYOTI SINGH
                                                    ORDER

% 02.05.2022 I.A. 6587/2022 (exemption)

1. Allowed, subject to all just exceptions.

2. Application stands disposed of.

I.A. 6588/2022 (exemption from advance service)

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

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

I.A. 6586/2022 (under Section 12A of the Commercial Courts Act, 2015 seeking exemption from pre-institution mediation)

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

6. Application is allowed and disposed of.

CS(COMM) 278/2022

7. Let plaint be registered as a suit.

8. Upon filing of process fee, issue summons to the Defendants, through all permissible modes, returnable on 29.07.2022. Summons shall st ate that the written statement shall be filed by the Defendants within 30 days from the receipt of summons. Along with the written statement, Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff.

9. 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 Defendants, shall be filed by the Plaintiff.

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

11. List before the Joint Registrar on 29.07.2022.

12. List before the Court on 31.08.2022.

I.A. 6584/2022 (under Order 39 Rules 1 and CPC)

13. 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 ex-parte ad-interim injunction.

14. Issue notice to the Defendants, through all prescribed modes, returnable on 31.08.2022.

15. It is averred that Plaintiff is the 5th largest pharmaceutical company of India. Plaintiff was incorporated as a Private Limited Company in the year 1991 and subsequently converted to a Public Limited Comp any and is involved in manufacturing and/or marketing medicinal, pharmaceutical and Signature Not Verified Digitally Signed CS(COMM) 278/2022 Page 2 of 8 By:KAMAL KUMAR Signing Date:14.06.2022 16:05:18 veterinary preparations under various well-known brand names.

16. It is averred that sometime in the year 2001-2002, Plaintiff coined and adopted the mark MANFORCE in respect of medicinal and pharmaceutical preparations, more particularly containing Sildenafil, which is used for addressing erectile dysfunction. The prefix MAN of the Plaintiff's mark MANFORCE has been adopted from the prefix of Plaintiff's trading style and 'house-mark' 'MANKIND', in order to convey the message to the consumers that the products are from the house of Plaintiff MANKIND PHARMA.

17. Plaintiff, in the plaint has stated that, inspired by the acceptance of the mark, Plaintiff extended the portfolio of the mark MANFORCE to various other medicinal and pharmaceutical products including condoms, gels . As an illustration, it is averred that "Tablet Sildenafil" is being sold by the Plaintiff under the mark MANFORCE since the year 2008 and the Plaintiff has adopted a unique artwork/getup/label/carton which consists of a combination of white and yellow with a dancing couple on the bottom right of the label. The mark MANFORCE is scripted in red colour font at the centre of the label and as mandated under the Drugs & Cosmetics Act, 1940, the active ingredient "Sildenafil Tablets IP" is written on top of the mark MANFORCE. The logo of the Plaintiff's company is displayed on the bottom left of the label. Plaintiff avers that the unique artwork/get- up/label/carton qualifies as an "original artistic work" under section 2(c) of The Copyright Act, 1957 and for its creation in the year 2008, Plaintiff had hired the services of Mr. Girish Juneja, who is the "author" of the work within the meaning of section 2(d) of the said Act and who had assigned the rights to the Plaintiff.

18. It is stated that details of the Plaintiff's business activities are available on two websites, which are registered in the name of the Plaintiff. Substantial amount of money has been invested on promotion of the product through newspapers, etc. Plaintiff has acquired statutory rights in the mark MANFORCE in respect of various goods falling in various clas ses by way of registrations which are valid and subsisting.

19. It is averred that on/about 16.04.2022, Plaintiff came across goods of the Defendants being sold under the impugned mark MENFORCE along with its impugned artwork/get-up/label/carton, which were identical to that of the Plaintiff's well-known marks and the medicinal preparation also contains the composition Sildenafil. The impugned trade mark "MENFORCE" is deceptively similar and/or identical to the registered trade mark "MANFORCE" and its adoption by the Defendants is without Plaintiff's consent, permission, authorization or licence. Plaintiff states that the goods of the Plaintiff as well as Defendants are sold across the same counters to the same class of consumers and thus there is every likelihood of confusion between the two. Defendants have cleverly replaced the alp habet "A" in the Plaintiff's mark MANFORCE with alphabet "E", resulting in visual, structural and phonetic similarity between the two marks. It is obvious that Defendants intend to encash on the goodwill and rep utation of the Plaintiff by misrepresentation and confusing the pubic into believing that the tablets are sourced from the Plaintiff.

20. It is stated that owing to the huge turnover, extensive sales throughout the country and widespread advertisement, the mark of the Plaintiff MANFORCE easily qualifies as a well-known trademark under Section 2(1)(zg) of The Trade Marks Act, 1999. By virtue of long, extensive and Signature Not Verified Digitally Signed CS(COMM) 278/2022 Page 4 of 8 By:KAMAL KUMAR Signing Date:14.06.2022 16:05:18 continuous use, Plaintiff has also acquired common law rights in the mark besides statutory rights by virtue of registration. The impugned action of the Defendants amounts to infringement and passing off. For ready reference, a comparative, as brought out in the plaint, is scanned and placed below:

Plaintiff's Product Defendants' Product

21. Having heard learned Senior Counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of 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 p rayed for, is not granted.

22. Accordingly, Defendants, by themselves or through their dealers, distributors, stockiest, agents, associates, employees, servants, and/or assignees are restrained from trading and/or selling and/or dealing and/or advertising including advertising and selling on internet medicinal and pharmaceutical preparations under the impugned trademark MENFORCE amounting to infringement of Plaintiff's mark MANFORCE.

23. Defendants are further restrained from manufacturing, marketing and/or selling medicinal and/or pharmaceutical preparations under the mark MENFORCE in an artwork/get-up/label/carton which is identical and/or Signature Not Verified Digitally Signed CS(COMM) 278/2022 Page 5 of 8 By:KAMAL KUMAR Signing Date:14.06.2022 16:05:18 substantially similar to the Plaintiff's artwork/get-up/label/carton under the trade mark MANFORCE amounting to infringement of Plaintiff's copyrights thereon.

24. Plaintiff shall comply with the provisions of Order 39 Rule 3 CPC within five days from the date of execution of the Commission. I.A. 6585/2022 (under Order 26 Rule 9 CPC)

25. Present application has been preferred by the Plaintiff under Order 26 Rule 9 CPC, seeking appointment of Local Commissioners.

26. Upon hearing, the application is allowed.

27. Accordingly, Mr. Naman Tandon, Advocate (Mobile No. 9811289656), Mr. Deepankar Mishra, Advocate (Mobile No. 9716746496) and Mr. Sanjay Singh, Advocate (Mobile No. 9958118327) are appointed as Local Commissioners.

(a) Mr. Naman Tandon, Advocate shall visit Defendant No.1's premises at the following address:-

BJ Lifesciences of Chandi Chowk Tilla, Post, Devalchoud, Haldwani, Nanital 263139, Uttrakhand.

(b) Mr. Deepankar Mishra, Advocate shall visit Defendant No.1's premises at the following address:-

BJ Lifesciences of H. No. P-70, Saraswati Society Near Vivekanand Park, Awas Vikas Rudrapur, U.S. Nagar 263153, Uttrakhand.

(c) Mr. Sanjay Singh, Advocate shall visit Defendant No.2's premises at the following address:-

Savya Pharmaceuticals of Plot No.5A-4, Sector 9, I.I.E. Pantnagar, U.S. Nagar 263153, Uttrakhand.

28. Local Commissioners shall visit the aforesaid premises, search and take into custody the infringing goods, packaging materials, publicity materials, labels, cartons, dyes, blocks, moulds and other materials under the impugned trademark MENFORCE and/or the impugned artwork etc. which is identical and/or similar to the mark MANFORCE, in relation to medicinal and pharmaceutical preparations.

29. Local Commissioners shall be authorized to inspect and take cop ies of the books of accounts, cash books, stock register, ledgers etc. p ertaining to the goods under the impugned trademark. Local Commissioners shall prepare an inventory of the goods so seized.

30. Local Commissioners shall seize the infringing goods and hand over the same to the Defendants on superdari, upon the Defendants furnishing an undertaking that they shall produce the goods, so seized, before the Court, as and when further directions are issued in this regard.

31. Local Commissioners along with the Representative(s) of the Plaintiff and/or its counsel shall be permitted to enter the premises of the Defendants, as aforementioned.

32. Local Commissioners shall be permitted to take photographs/videos of the execution of the Commission. They shall also be entitled to seek police assistance or protection of the Local Police Station(s), if so required, for the purpose of execution of the order of this Court. The SHOs of the concerned Police Station(s) are directed to provide necessary assistance to the Local Commissioners, if sought for.

33. In case the premises as aforementioned are found locked, the Local Commissioners are at liberty to break open the locks.

34. Plaintiff shall serve a copy of this order upon the Defendants along Signature Not Verified Digitally Signed CS(COMM) 278/2022 Page 7 of 8 By:KAMAL KUMAR Signing Date:14.06.2022 16:05:18 with paper book of the suit at the time of execution of the proceedings.

35. Fee of the Local Commissioners is fixed as Rs.1,50,000/- each, in addition to travel, boarding and lodging expenses as well as other miscellaneous out-of-pocket expenses for the execution of the Commission. Fee of the Local Commissioners shall be paid in advance by the Plaintiff.

36. Report of the Local Commissioners shall be filed within two weeks of the execution of the Commission.

37. Plaintiff shall inform the Registry about the execution of the proceedings by the Local Commissioners and only thereafter Registry shall issue summons of the suit to Defendants.

38. This order shall not be uploaded on the website of this Court till execution of the Commission by the Local Commissioners.

39. Application is disposed of.

40. Copy of this order be given to learned counsel for the Plaintiff dasti under the signatures of the Court Master.

JYOTI SINGH, J MAY 02, 2022/st Signature Not Verified Digitally Signed CS(COMM) 278/2022 Page 8 of 8 By:KAMAL KUMAR Signing Date:14.06.2022 16:05:18