Delhi High Court
Sun Pharmaceutical Industries Ltd vs Dwd Pharmaceuticals Ltd on 22 November, 2022
Author: Navin Chawla
Bench: Navin Chawla
Neutral Citation Number: 2022/DHC/005037
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 01.11.2022
Date of decision: 22.11.2022
+ CS(COMM) 328/2022
SUN PHARMACEUTICAL INDUSTRIES LTD ..... Plaintiff
Through: Mr.Sachin Gupta, Ms.Swati
Meena and Mr.Yashi Agrawal,
Advocates
versus
DWD PHARMACEUTICALS LTD ..... Defendant
Through: Mr.Darpan Wadhwa, Sr. Adv. with
Mr.Karan Bajaj, Mr.RupinBahl
and Ms.Neelakshi, Advocates
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
I.A.14992/2022
1. This application has been filed by the plaintiff praying that the
additional documents filed by it on 09.09.2022 be taken on record.
2. The plaintiff asserts that the additional documents are being filed
to show that the word 'ZEST' is common to trade and that the filing of
these documents has been necessitated due to the stand taken by the
defendant in its written statement.
3. For reasons stated in the application, and as the suit is at an initial
stage, the application is allowed, and the additional documents are taken
on record.
4. This order shall, however, not be read as accepting the
admissibility or effect of these documents, and shall be without prejudice
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to the rights and contentions of the defendant. The defendant shall also be
entitled to file further rebuttal documents thereto, within a period of four
weeks from the date of this judgment.
I.A. 7825/2022 and I.A. 9523/2022
5. I.A. No. 7825 of 2022 has been filed by the plaintiff praying for
the grant of an ad-interim injunction restraining the defendant from
manufacturing, selling, offering for sale, advertising, directly or
indirectly dealing in medicinal preparations under the mark 'FOLZEST'
or any other trademark which is deceptively similar to the plaintiff's
trademark 'FORZEST'.
6. This Court, vide order dated 19.05.2022, was pleased to pass ad-
interim ex-parte order restraining the defendant from using the mark
'FOLZEST' or any other trademark which is deceptively similar to the
plaintiff's trade mark 'FORZEST'.
7. I.A. No. 9523 of 2022 was thereafter filed by the defendant under
Order XXXIX Rule 4 read with Section 151 of the Code of Civil
Procedure, 1908 (in short, the 'CPC') praying for setting aside the order
of this Court dated 19.05.2022.
FACTUAL BACKGROUND
8. The plaintiff has filed the above suit inter alia contending that the
plaintiff's predecessor-in-interest, namely, 'Ranbaxy Laboratories Ltd.',
coined and adopted the trade mark 'FORZEST' in the year 2003 and has
been using the same since then. The said mark is also registered vide
application no. 1171650 dated 04.02.2003 in Class 05 for
„pharmaceutical and medicinal preparations for human and veterinary
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use'. The plaintiff has been recorded as the subsequent proprietor of the
said trade mark with the Trade Mark Registry.
9. The plaintiff further asserts in the plaint that it was only in the first
week of May, 2022, that the plaintiff came across the defendant's
application seeking registration of the impugned mark 'FOLZEST'
under application no. 4624943 dated 25.08.2020 on a „proposed to be
used‟ basis in Class 05; and the same was immediately opposed by the
plaintiff on 04.05.2022.
10. The plaintiff further asserts that the plaintiff's mark 'FORZEST'
was cited in the Examination Report against the trade mark application of
the defendant, and the defendant vide reply dated 27.10.2020 stated that
the cited mark, that is, 'FORZEST', is different, phonetically as also
visually, from the defendant's mark. It was further contended that the
defendant is the registered proprietor of various 'ZEST' trade marks. The
trade mark application of the defendant was thereafter advertised on
31.01.2022 and is pending consideration before the Trade Marks
Registry.
11. The plaintiff asserts that the adoption of a similar mark to that of
the plaintiff by the defendant amounts to infringement of the plaintiff's
trade mark as also passing off and unfair competition.
12. As noted hereinabove, based on the assertions of the plaintiff and
the documents filed with the plaint, this Court on 19.05.2022 passed an
ad-interim ex-parte order of injunction against the defendant restraining
the defendant from selling its medicinal preparations under the impugned
mark 'FOLZEST'.
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13. The defendant in its application, being I.A. No.9523 of 2022, has
asserted that the plaintiff obtained the above ad-interim ex-parte order of
injunction by concealing various material facts from this Court. It is
asserted that the defendant is a leading manufacturer and distributor of
pharmaceutical products in the domestic and international markets. It is a
registered proprietor of the trade mark 'ZEST' since the year 1983, and
has a family of registered trade marks, with 'ZEST' forming a part of
them (hereinafter referred to as 'the ZEST Family of Marks'), the details
of which are as under:-
Sr.No. Trade mark name Registration Year of
Number Registration
1 ZEST 4066398 13/06/1983
2 ZESTCAL 1220931 06/08/2003
3 ZESTVIT 1368996 05/07/2005
4 CALCIZEST 799399 21/04/1998
5 DIZEST 662839 19/04/1995
6 ENERZEST 782695 17/12/1997
7 EVERZEST 731043 21/01/1997
8 FERIZEST 1086863 13/03/2002
9 HEMOZEST 719261 11/10/1996
10 ZEST D3 4069712 28/01/2019
14. It is further asserted that the plaintiff was well-aware of not only
the registration of the mark 'ZEST' in favour of the defendant, but also
of the other marks registered and used by the defendant, inasmuch as, the
plaintiff had earlier applied for the registration of the mark 'EXEZEST',
which was opposed by the defendant way back in the year 2009, citing
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the 'ZEST' Family of Marks. The said opposition is still pending
adjudication before the Trade Marks Registry.
15. The plaintiff thereafter applied for registration of its mark
'TRIOLMEZEST', which was also opposed by the defendant on
30.12.2014 on the ground of the defendant being the registered proprietor
of the 'ZEST' Family of Marks. Even for the subject-mark, that is,
'FORZEST', when the predecessor-in-interest of the plaintiff applied for
registration, the defendant's mark 'FERIZEST' was cited as a
conflicting mark. The plaintiff has also not disclosed the reply that was
filed by the plaintiff/its predecessor-in-interest before the Trade Mark
Registry against the said Examination Report. It is the case of the
defendant that the plaintiff has intentionally not disclosed the above facts
in its plaint, and is, therefore, guilty of concealing material facts.
SUBMISSIONS ON BEHALF OF THE LEARNED SENIOR COUNSEL FOR THE
DEFENDANT:
16. Mr.Darpan Wadhwa, the learned senior counsel for the defendant,
submits that the above facts were material to be disclosed by the plaintiff
in the plaint as they would have clearly disproved the assertion of the
plaintiff that it came to know of the defendant and their use of the mark
'FOLZEST' only in the first week of May, 2022. In fact, it would also
have shown to this Court that the defendant has numerous registrations,
of which the word 'ZEST' is an important and integral part, and it is the
plaintiff, who with a mala fide intent, is trying to usurp the same. Placing
reliance on the judgments of the Supreme Court in K.D. Sharma v. Steel
Authority of India Limited and Others, (2008) 12 SCC 481; Amar
Singh v. Union of India and Others, (2011) 7 SCC 69; and Ramjas
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Foundation and Another v. Union of India and Others, (2010) 14 SCC
38, the learned senior counsel for the defendant submits that as the
plaintiff has approached this Court with unclean hands by concealing and
suppressing material facts and documents, it is not entitled to be heard on
the merits of its claim and the application filed by the plaintiff under
Order XXXIX Rules 1 and 2 of the CPC, being I.A. No. 7825 of 2022, is
liable to be dismissed in limine.
17. Placing reliance on judgments passed by this Court in Kent RO
System Ltd. and Ors. v. Gattubhai and Ors., 2022/DHC/000996,
Columbia Sportswear Company v. Harish Footwear and Anr., 2017
SCC OnLine Del 8122, Micolube India Ltd. v. Maggon Auto Centre
and Ors., 2008 SCC OnLine Del 160, and the order of this Court dated
20.10.2022 in Phonographic Performance Limited v. Azure Hospitality
Private Limited and Ors., CS(COMM) 714 of 2022, the learned senior
counsel for the defendant submits that the ad-interim ex-parte order of
injunction granted by this Court is liable to be vacated on the ground of
misrepresentation, concealment, and suppression of facts and of material
documents by the plaintiff.
18. The learned senior counsel for the defendant further submits that
even otherwise, the plaintiff is not entitled to the relief as prayed for in its
application for an ad-interim injunction, inasmuch as, the mark of the
plaintiff, that is, 'FORZEST', is descriptive in nature. He submits that it
is the own assertion of the plaintiff that it is using the impugned mark
'FORZEST' for medicinal preparation that is used for treating erectile
dysfunction in men. The plaintiff, in its replication and in the application
under Sections 124 and 125 of the Trade Marks Act, 1999 (hereinafter
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referred to as the 'Act'), being I.A. No.14991 of 2022, has further
asserted that the word 'ZEST' has a dictionary meaning, that is, 'feeling
of enjoyment, excitement and enthusiasm'. He submits that, in fact, the
plaintiff has further asserted that the mark 'ZEST' is itself publici juris
and is incapable of being monopolized by anyone. Therefore, the
impugned mark, being a combination of the words 'FOR' and 'ZEST',
is clearly descriptive of the pharmaceutical goods of the plaintiff, and no
exclusivity can be claimed by the plaintiff in such a mark.
SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE
PLAINTIFF:
19. On the other hand, Mr.Sachin Gupta, the learned counsel for the
plaintiff, though was not available at the time of oral submissions, by
way of written submissions, has asserted that the marks of the plaintiff
and the defendant are deceptively similar and, therefore, the plaintiff is
entitled to the ad-interim protection as had been granted by this Court
vide order dated 19.05.2022.
20. He submits that the present suit/applications relate to
pharmaceutical goods, wherein the threshold of confusion is low, the test
of deceptive similarity is stringent, with public interest being paramount.
The use of the medicinal preparations of the plaintiff and the defendant is
different, with the medicinal preparation of the plaintiff targeting erectile
dysfunction in men, while the medicinal preparation of the defendant is a
multivitamin for pregnant women for lowering the risk of pre-term births.
Thus, any confusion between the two marks can lead to wrongful
consumption of the pharmaceutical goods by an unwary consumer, which
in turn will lead to disastrous consequences. He submits that the
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defendant has, therefore, rightly been injuncted by this Court from selling
its pharmaceutical goods under the mark 'FOLZEST'. In support, he
places reliance on the judgment of the Supreme Court in Cadila Health
Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73; the
judgment of this Court in Novartis AG v. Crest Pharma Pvt. Ltd. and
Anr.,2009 SCC OnLine Del 4390; and the judgment of the High Court of
Bombay in Charak Pharma Pvt. Ltd. v. Glenmark Pharmaceuticals
Ltd., 2014 SCC OnLine Bom 98.
21. He further submits that the mark of the plaintiff is arbitrary and not
derived from the salt 'TADALFIL' and is, therefore, entitled to
protection.
22. He submits that the defendant cannot rely upon the registrations
obtained by it in the 'ZEST' Family of Marks, inasmuch as, the
argument of 'family of marks' is available only to a plaintiff and not to a
defendant. In this regard, he places reliance on the celebrated text of
„McCarthy on Trademarks and Unfair Competition', 2007
Thomson/West, Rel. 41, 3/3007.
23. He further submits that not only the plaintiff has other registrations
with the mark 'ZEST', but there are also third parties co-existing in the
market using different trade marks with the word 'ZEST' as either a
prefix or a suffix, therefore, the defendant cannot claim any exclusivity
over the word 'ZEST'. 'ZEST', even otherwise, is a common dictionary
word over which no one person can claim exclusivity.
24. Answering the allegations of concealment and misstatement, he
submits that the plaintiff in paragraph no.21 of the plaint had disclosed
that the defendant has, in response to the Examination Report on its
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application seeking registration of the mark 'FOLZEST', relied upon the
'ZEST' Family of Marks. He submits that the Examination Report for
the application of the predecessor-in-interest of the plaintiff seeking
registration of the subject-mark 'FORZEST', wherein the mark of the
defendant, that is, 'FERIZEST', was cited as a prior mark, was not
stated in the plaint as it was not deemed relevant. He submits that the
reply submitted by the predecessor-in-interest of the plaintiff to the
Examination Report is also not relevant as once the registration of a trade
mark is granted, no reliance can be placed on such correspondence. In
this regard, he places reliance on the judgment of this Court in Teleecare
Network India Pvt. Ltd. v. Asus Technology Pvt. Ltd. and Ors., 2019
SCC OnLine Del 8739.
ANALYSIS AND FINDINGS:
25. I have considered the submissions made by the learned counsels
for the parties.
26. At the outset, I would first reproduce herein below paragraph no.21
of the plaint, which, in the submission of learned counsel for the plaintiff,
answers the allegations of the defendant of concealment and
misstatement:-
"21. The Defendant has filed an application for
registration of the impugned mark FOLZEST
under no. 4624943 dated 25.08.2020, on proposed
to be used basis, in class 5 for goods, namely,
"pharmaceuticals, medical and veterinary
preparations; ...". It is pertinent to note that the
Plaintiff‟s trade mark FORZEST was cited in the
examination report. The Defendant in its reply
dated 27.10.2020 stated that the cited mark is
absolutely different both phonetically & visually
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from their mark. The Defendant further contended
that they are the registered proprietors of various
ZEST trade marks.
The Defendant‟s impugned application was
advertised on 31.01.2022 and the same has been
opposed by the Plaintiff on 04.05.2022. The said
opposition proceedings are currently pending. It
may be noted that the Defendant‟s impugned mark
is also opposed by a third party, namely
Shailendra Paltan Jaiswal on the basis of his
alleged trade mark Ezzal‟s Folgest, which has
also been opposed by the Plaintiff on
29.03.2022."
(Emphasis supplied)
27. I am unable to appreciate how the above averment in the plaint can
sufficiently answer the allegations of concealment and misstatement
made against the plaintiff by the defendant. As noted hereinabove, the
defendant has contended that the plaintiff had earlier sought registration
of its mark 'EXEZEST', which was opposed by the defendant in the year
2009 citing its 'ZEST' Family of Marks. The plaintiff then sought the
registration of its mark 'TRIOLMEZEST', which was again opposed by
the defendant in the year 2014 on the aforementioned ground. In fact,
even in the application filed by the predecessor-in-interest of the plaintiff
seeking registration of the subject-mark 'FORZEST', the mark of the
defendant- 'FERIZEST' was cited in the Examination Report. These
facts were important and material to be disclosed upfront in the plaint.
They would certainly have had a bearing on this Court while considering
the relief of an ad-interim ex-parte injunction in favour of the plaintiff.
The above facts would have put the Court to caution that the defendant
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has a 'family of marks' with the word 'ZEST' being a predominant part
thereof and that the defendant has been challenging the attempts of the
plaintiff to get a mark registered with the word 'ZEST' forming a part
thereof.
28. The plaintiff has also not filed the response given by the
plaintiff/its predecessor-in-interest to the Examination Report for the
subject-mark 'FORZEST'. The same would also have a bearing while
determining, at least at an ex-parte stage, whether the plaintiff was
entitled to any relief of interim injunction or not. The plea that the mark
'FERIZEST' is not in use has been contended only now by the plaintiff
and is, in any case, not relevant. Clearly, the plaintiff, with a mala fide
intent, sought to mislead this Court by concealing material facts from this
Court.
29. In S.K. Sachdeva & Anr. v. Shri Educare Ltd. & Anr., 2016 SCC
OnLine Del 6708, a Division Bench of this Court held as under:-
"16. The stand taken by the respondents by its
letter dated 08.06.2012 was that the word „SHRI
RAM‟ represented a popular figure and deity in
Hinduism and no one proprietor could claim
exclusive rights on the mark „SHRI RAM‟. It was
further categorically admitted that several „SHRI
RAM‟ formulative marks were co-existing on the
register of trademarks in respect of the same
services i.e. of schools. This fact was conveniently
omitted by the respondents from the plaint. It is
not possible to believe that the respondents were
not aware of the stand taken on 08.06.2012
inasmuch as the respondents only a few days prior
to the filing of the suit on 24.04.2014 had written
the letter dated 15.04.2014 to the Trademark
Registry withdrawing the earlier stand taken by
letter dated 08.06.2012. There is no
basis/rationale given by the respondents for
withdrawal of the said admissions made by the
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said letter dated 08.06.2012. The admissions
made by letter dated 08.06.2012 have a material
bearing on the stand of the appellants in the
subject suit. The fact that the respondents did not
mention about the letter dated 08.06.2012 in the
plaint, in our view, amounts to a clear case of
misrepresentation and concealment of material
facts that have a bearing on the very case set up
by the respondents in the plaint.
17. The learned Single Judge while considering
the withdrawal letter dated 15.04.2014 has erred
in not appreciating that the same was
concealment of a material fact having bearing on
the case of the respondent/plaintiff. The mere fact
that the appellants themselves have applied for
registration of its trademark does not, in any
manner, help the case of the respondents. What is
material is the stand taken by the respondents in
the plaint and in other proceedings and not the
conduct of the appellants/defendants. A party who
approaches the Court for grant of a discretionary
relief has to approach the Court with clean hands.
The respondents clearly did not do so.
18. We are of the view that the interim
injunction is liable to be vacated in view of
various factors. First of all, the respondents
themselves have taken a categorical stand that the
word „SHRI RAM‟ is the name of a popular figure
and deity in Hinduism and no one proprietor can
claim exclusive rights on the mark „SHRI RAM‟.
Secondly, their stand that the mark „SHRI RAM‟ is
common to trade and several „SHRI RAM‟
formulative marks are peacefully co-existing on
the register of trademark. Thirdly, the appellants
have prima facie shown that there were several
schools in existence using the name „SHRI RAM‟
in existence even prior to the adoption of the mark
by the respondents. Fourthly, the respondents are
guilty of concealment and misrepresentation and,
lastly, discretion should not be exercised in
favour, of a person who approaches the court with
unclean hands."
(Emphasis supplied)
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30. In Mankind Pharma Ltd. v. Chandra Mani Tiwari & Anr., 2018
SCC OnLine Del 9678, this Court held as under:
"9. Having pondered over the respective
pleadings and contentions, I am unable to find the
plaintiff entitled to any interim relief. The reasons
thereof are given herein below:
xxxxx
C. The aforesaid stand of the plaintiff before the
Registrar of Trade Marks, was/is relevant for the
purpose of grant of interim injunction. Though the
senior counsel for the plaintiff contended that
what is stated by the advocates for the plaintiff in
the aforesaid communications is a submission of
law made in the context and the plaintiff cannot be
bound thereby, but it cannot be said that the said
contention makes the fact aforesaid „not relevant‟.
The fact, that the plaintiff took a stand, not so long
back, that (i) „ATORVAKIND‟ is different from
„ATORKIND‟ and that (ii) „STARKIND‟ is
different from „KINDERPLEX‟, „KINDERBON‟,
„KINDERCAL‟, „KINDIGEST‟, „STAR-VIT‟,
„STAR‟, „STARNET‟, „STARCET‟,
„KINDHEALTH‟, „KIND-PLUS‟, „KINDCAL‟,
„KINDMAX‟ and „KINDFLOX-OZ‟, certainly has
a weightage for purposes of interim injunction,
specially ex-parte. The plaintiff, while
approaching this Court for ex parte relief against
the defendants, concealed the said relevant fact
from this Court and called upon the Court to,
without the said fact being before the Court, grant
injunction against the defendant. Such conduct of
the plaintiff disentitles the plaintiff to the equitable
relief, at least at this stage. I must however state
that thought has indeed crossed my mind, whether
in defence to a claim for infringement, which is a
statutory right of a registered proprietor of a
trade mark, the plea of estoppel, which is not
available against statute, is at all available to the
defendants."
31. In Poly Medicure Limited v. Polybond India Pvt. Ltd., 2019 SCC
OnLine Del 11967, this Court reiterated that the stand of the plaintiff in
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its reply to the Examination Report, at least at the stage of consideration
of the relief of ad-interim injunction, is relevant, and the plaintiff, when
approaching the Court, has to make a clean breast of the state of affairs
and ought to have informed the Court so on the very first date when the
suit comes up before this Court alongwith the application for interim
relief, including ex-parte relief against the defendant, to enable the Court
to consider the grant/non-grant of ex-parte relief, in the light of all facts.
32. The reply given by the predecessor-in-interest of the plaintiff to the
Examination Report was, therefore, a material document and though may
or may not act as an estoppel, would certainly be relevant to be
considered while determining the prayer of the plaintiff for grant of an
ad-interim ex-parte relief based on the registration granted. In the case of
Teleecare Network India Pvt. Ltd. (supra), there was no concealment of
material facts, therefore, the judgment is of no assistance to the plaintiff.
33. The grant of an ad-interim injunction is a discretionary relief. In
K.D. Sharma (supra), the Supreme Court emphasized the necessity of
the petitioner (herein, the plaintiff) approaching the Court with clean
hands, putting forward all the facts before the Court, without concealing
or suppressing anything. It was further emphasized that if there is no
candid disclosure of relevant and material facts, the petition (herein, the
application) may be dismissed at the threshold, without considering the
merits of the claim. The said principle was reiterated by the Supreme
Court in Ramjas Foundation (supra) and Amar Singh (supra). In fact,
such concealment is sufficient to vacate the ad-interim ex-parte order of
injunction granted in favour of the plaintiff. Reference in this regard may
be made to the judgments of this Court in Kent RO System (supra),
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Columbia Sportswear Company (supra), Micolube India Ltd. (supra)
and the order of this Court dated 20.10.2022 in Phonographic
Performance Limited (supra).
34. I also find merit in the submission of the learned senior counsel for
the defendant that the mark of the plaintiff is descriptive in nature. The
plaintiff has itself stated in its application under Sections 124 and 125 of
the Act, being I.A. No. 14991 of 2022, that the word 'ZEST' has a
dictionary meaning, that is, 'feeling of enjoyment, excitement and
enthusiasm'. The medicinal preparation of the plaintiff is intended for
treating erectile dysfunction in men. Therefore, clearly, the mark is
descriptive to its product, being a combination of the words 'FOR' and
'ZEST'. The plaintiff has further asserted in its replication, as also in I.A.
No.14991 of 2022, that the word 'ZEST' is publici juris, and no person
can claim exclusivity over the same. On this assertion itself, the claim of
exclusivity of the plaintiff on its mark relying on the registration thereof
should ideally fail. The descriptive nature of the mark need not only be
because of its adoption from the name of its ingredient but may even be
because of its inherent nature and use.
35. Having considered the above, and inspite of the above, in the
present case, prima facie, the mark of the plaintiff, that is 'FORZEST',
is deceptively similar to the mark of the defendant, that is 'FOLZEST';
with the only difference being in the alphabet 'R' being replaced in the
mark of the defendant by the alphabet 'L'. In considering the relief
prayed for by the plaintiff, it is also important to note that the medicine of
the plaintiff is for treating erectile dysfunction in men, while the
medicinal preparation of the defendant is a multivitamin for pregnant
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women for lowering the risk of pre-term births. In Cadila Health Care
Ltd. (supra), the Supreme Court held as under:-
"32. Public interest would support lesser degree
of proof showing confusing similarity in the case
of trade mark in respect of medicinal products as
against other non-medicinal products. Drugs are
poisons, not sweets. Confusion between medicinal
products may, therefore, be life threatening, not
merely inconvenient. Noting the frailty of human
nature and the pressures placed by society on
doctors, there should be as many clear indicators
as possible to distinguish two medicinal products
from each other. It is not uncommon that in
hospitals, drugs can be requested verbally and/or
under critical/pressure situations. Many patients
may be elderly, infirm or illiterate. They may not
be in a position to differentiate between the
medicine prescribed and bought which is
ultimately handed over to them. This view finds
support from McCarthy on Trade Marks, 3rd
Edn., para 23.12 of which reads as under:
"The tests of confusing similarity are
modified when the goods involved are
medicinal products. Confusion of source or
product between medicinal products may
produce physically harmful results to
purchasers and greater protection is
required than in the ordinary case. If the
goods involved are medicinal products each
with different effects and designed for even
subtly different uses, confusion among the
products caused by similar marks could
have disastrous effects. For these reasons, it
is proper to require a lesser quantum of
proof of confusing similarity for drugs and
medicinal preparations. The same standard
has been applied to medical products such
as surgical sutures and clavicle splints."
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33. .... However, the appellants are right in
contending that where medicinal products are
involved, the test to be applied for adjudging the
violation of trade mark law may not be on a par
with cases involving non-medicinal products. A
stricter approach should be adopted while
applying the test to judge the possibility of
confusion of one medicinal product for another by
the consumer. While confusion in the case of non-
medicinal products may only cause economic loss
to the plaintiff, confusion between the two
medicinal products may have disastrous effects on
health and in some cases life itself. Stringent
measures should be adopted specially where
medicines are the medicines of last resort as any
confusion in such medicines may be fatal or could
have disastrous effects. The confusion as to the
identity of the product itself could have dire effects
on the public health."
36. In Novartis AG (supra), this Court reiterated the above principles
as under:-
"21. I do not accept the submission of the learned
counsel for the defendant as I feel that it is more
dangerous if the pharmaceuticals products
bearing the same mark is used for different
purposes for the same ailment or even otherwise. I
also do not accept the contention of the
defendant's counsel that there would be no
confusion if the product contain different
ingredients/different salt. In my opinion, it is more
dangerous and harmful in the trade if the same
trade mark is used for different ailments...."
37. In a medicinal good, the right of not only the private litigants but
also public interest has to be kept in mind, and, in fact, be given
prominence. Even a remote chance of deception or confusion arising
because of similarity in the marks is to be avoided and prevented, as it
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may led to disastrous consequences for unwary consumers. Therefore, in
spite of the concealment and misstatement of the plaintiff, the plaintiff
shall be entitled to an ad-interim relief if the marks of the medicinal
goods are deceptively similar to each other.
38. The plaintiff, apart from relying upon the registration of its trade
mark 'FORZEST' under the application no. 1171650 dated 04.02.2003
in Class 05, has also contended that the said mark has been used since the
year 2003. The plaintiff has given the figures of sales for the medicinal
product sold under the said mark for the financial years 2004-05 to 2020-
21, asserting that such sales have grown from Rs.95.31 Lakh (Rupees
Ninety-Five Lakh Thirty-One Thousand only) in the financial year 2004-
05 to Rs.187.53 Lakh (Rupees One Hundred Eighty-Seven Lakh Thirty-
Three Thousand only) in the financial year 2020-21. The plaintiff has
further asserted that the defendant applied for the registration of its mark
'FOLZEST' under application no. 4624943 dated 25.08.2020 claiming
the same is still „proposed to be used‟ in Class 05. The plaintiff submits
that it is only in the second week of May, 2022 that the plaintiff came
across the defendant's products being sold online on various e-
pharmacies/interactive websites.
39. In the written statement, the defendant does not deny the above
assertions of the plaintiff but merely relies upon its earlier registered
marks having 'ZEST' as a predominant feature. Pertinently, the
defendant has not filed any counter-claim against the plaintiff. In
McCarthy on Trademarks and Unfair Competition (supra), the
celebrated author explains that a trade mark owner may use a plurality of
marks with a common prefix, suffix or syllable. It has the opportunity to
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establish that it has a 'family of marks' and may rely upon the same for
contending that the defendant's mark, which incorporates the 'family of
marks', is deceptively similar to that of the plaintiff's. However, the text
very explicitly states that the doctrine of 'family of marks' is an argument
available only to a plaintiff asserting its rights, not to a defendant to
prove its defence against a plaintiff's intervening rights.
40. In my opinion, the above text is based on the principal that where
the plaintiff has, in spite of the defendant having a 'family of marks‟,
established goodwill in a mark that may even be forming a part of the
„family of the marks‟ of the defendant, the defendant cannot later adopt a
mark deceptively similar to the that of the plaintiff, relying upon its
„family of marks‟.
41. In the present case, the defendant has asserted that it is selling
more than sixty-five different products. Out of these, eighteen are
claimed to have 'ZEST' as a predominant feature of the mark/name of
the medicinal goods. Certain pending applications also bearing 'ZEST'
as a predominant part of the mark are stated in the written statement filed
by the defendant. The defendant, however, by that assertion alone cannot
claim a right to adopt a deceptively similar mark to that of the plaintiff,
especially where the mark of the plaintiff has been in long use. The
defendant would have to prove exclusivity over the mark 'ZEST' in all
its variants to succeed in its defence.
42. The fact remains that the plaintiff has been using the mark
'FORZEST' since the year 2003, while the defendant has not even stated
the date of launch of its medicinal good under the impugned mark
'FOLZEST' and, therefore, the assertion of the plaintiff that it is only in
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the first week of May, 2022 that it came across the medicine of the
defendant with the impugned mark, remains unrebutted, at least, at this
stage. I may herein note that the Local Commissioner appointed by this
Court vide order dated 19.05.2022, had seized certain data, which shows
the medicine under the mark 'FOLZEST' being marketed by the
defendant from sometime in June, 2021, however, even that would make
the defendant a subsequent user and adopter of the said mark. A right of a
prior user of the mark shall always prevail. [Ref: Neon Laboratories Ltd
v. Medical Technologies Ltd., (2016) 2 SCC 672]
43. The defendant has also contended that there is no possibility of
confusion being caused on account of the packaging of the two medicinal
products being different. The same assertion, however, again does not
impress me. The medicines are sold by their trade mark/trade name
which, in the present case, I have found prima facie to be deceptively
similar to each other. For an unwary consumer with average intelligence
and imperfect recollection, the differences that are sought to be
highlighted by the defendant in its application under Order XXXIX Rule
4 read with Section 151 of the CPC cannot nullify the possibility of
confusion.
44. Applying the above principles to the facts of the present case, the
following factors would still persuade me to grant an ad-interim
injunction in favour of the plaintiff and against the defendant:
(a) The plaintiff, through its predecessor-in-interest, has
been the registered proprietor of the mark 'FORZEST'
since the year 2003. Though such registration is suspect, at
least at this stage, it is worthy of weight;
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(b) The said mark has been used by the plaintiff/its
predecessor-in-interest since the year 2003 and has
substantial sales;
(c) Though the defendant has a 'ZEST' Family of Marks, it
has started the use of the impugned mark 'FOLZEST' in
June, 2021/May, 2022 only;
(d) The use of the medicine of the plaintiff and the defendant
are different;
(e) Whether the defendant can claim exclusivity to all marks
containing the word 'ZEST', can be determined only on the
parties leading evidence; and,
(f) The two marks are deceptively similar and any confusion
in the same can lead to disastrous consequences.
45. In view of the above, the ad-interim ex-parte order of injunction
dated 19.05.2022 shall stand confirmed during the pendency of the
present Suit. I.A. No.7825 of 2022 of the plaintiff filed under Order
XXXIX Rules 1 and 2 read with Section 151 of the CPC is allowed;
while I.A. No.9523 of 2022 filed by the defendant under Order XXXIX
Rule 4 read with Section 151 of the CPC is dismissed.
46. It is clarified that the above are only prima facie findings of this
Court, which shall not bind or influence this Court while considering the
merits of the suit after evidence has been led by the parties.
47. At the same time, the plaintiff cannot be allowed to escape the
consequences of having concealed material facts from this Court to
obtain an ex-parte order of injunction. Whether with the disclosure of the
above-mentioned material facts, the Court would have still granted the
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ad-interim ex-parte order of injunction or not, is not relevant and cannot
absolve the plaintiff from the consequences of not making such
disclosure of material facts. Such a practice not only has to be deprecated
but must also be penalised. The plaintiff, therefore, is saddled with costs
of Rs.10 Lakh (Rupees Ten Lakh only) to be deposited with the Delhi
High Court Legal Services Committee within a period of two weeks from
the date of the judgment.
48. The applications are disposed of in the above terms.
I.A. 13279/2022 (U/s 124(1)(b)(ii) read with Section 125 of the Trade
Marks Act, 1999 read with Section 151 of the Code of Civil
Procedure, 1908)
49. This application has been filed by the defendant seeking
permission of this Court to file a cancellation petition qua the plaintiff's
trade mark 'FORZEST' bearing application no.1171650 in Class 05.
50. I have already considered hereinabove the submissions of the
learned senior counsel for the defendant in support of this application,
and I find prima facie merit in the challenge, also on the ground that the
defendant has prior registrations in the 'ZEST' Family of Marks, the
details whereof have been given by the defendant in the application. The
defendant has also contended that it is the prior adopter of these marks.
51. Accordingly, an issue on validity of the registration granted in
favour of its mark 'FORZEST' in Class 05 vide application no.1171650
is raised and is framed as under:-
(i) Whether the registration of the mark 'FORZEST' in Class 05 granted
in favour of the plaintiff under application no. 1171650 is liable to be
cancelled? OPD
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52. The further proceedings in the present suit are adjourned for a
period of three months to enable the defendant to apply for
rectification/cancellation of the registration of the trade mark
'FORZEST' bearing registration no.1171650 in Class 05 of the plaintiff.
I.A. 14991/2022 (U/s 124 and 125 of the Trade Marks Act, 1999 read
with Section 151 of the Code of Civil Procedure, 1908)
53. This is an application filed by the plaintiff seeking permission of
this Court to file a cancellation petition qua the defendant's trade mark
'ZEST', registered under application no. 4066398 in Class 05.
54. As noted hereinabove, it is the contention of the plaintiff that the
mark 'ZEST' is being used by various third parties, either as a suffix or a
prefix, and is publici juris. It also has a dictionary meaning and,
therefore, cannot be monopolized by any party.
55. I may herein note that the trade mark 'ZEST' of the defendant has
been registered since the year 1983. It is further the assertion of the
defendant, which has also not been denied by the plaintiff, that this mark
was cited by the defendant in opposition to the applications filed by the
plaintiff seeking the registration of its marks 'EXEZEST' and
'TRIOLMEZEST'. The plaintiff, at that stage, did not choose to
challenge the registration granted in favour of the defendant for the mark
'ZEST'. At least, this has not been pleaded by the plaintiff in the Suit or
in this application. There was, therefore, clearly a case of acquiescence in
such registration.
56. In fact, the plaintiff has itself sought and obtained registrations and
relied upon a mark of which the word 'ZEST' forms a part. Having itself
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applied for and obtained registration in a 'ZEST' formative trade mark, it
does not lie in the mouth of the plaintiff to state that the word 'ZEST' is
a publici juris expression or is otherwise generic. Reference in this regard
may be made to the judgments of this Court in Automatic Electric
Limited v. R.K. Dhawan and Ors., 1999 SCC OnLine Del 27; and in
Anchor Health and Beauty Care Pvt. Ltd. v. Procter & Gamble
Manufacturing (Tianjin) Co. Ltd. &Ors., 2014 SCC OnLine Del 2968.
57. In view of the above, I find no merit in the present application. The
same is dismissed.
CS(COMM) 328/2022
58. List before the learned Joint Registrar (Judicial) for further
proceedings on 19th January, 2023.
NAVIN CHAWLA, J.
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