Delhi High Court - Orders
Glaxo Group Limited vs Naresh Kumar Goyal, Trading As Maiden ... on 22 November, 2023
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~33 to 35
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.O. (COMM.IPD-TM) 78/2023, I.A. 6895/2023 & I.A.
14325/2023
GLAXO GROUP LIMITED ..... Petitioner
Through: Mr. Urfee Roomi, Adv. with
Mr. Anubhav Chhabra and Mr. Ayush Dixit,
Advs.
versus
NARESH KUMAR GOYAL, TRADING AS MAIDEN
PHARMACEUTICALS & ANR. ..... Respondents
Through: Mr. Inderdeep Singh and Mr.
Chander Shekhar Patney, Advs. for R-1
+ C.O. (COMM.IPD-TM) 79/2023 & I.A. 6894/2023
GLAXO GROUP LIMITED ..... Petitioner
Through: Mr. Urfee Roomi, Adv. with
Mr. Anubhav Chhabra and Mr. Ayush Dixit,
Advs.
versus
NARESH KUMAR GOYAL, TRADING AS MAIDEN
PHARMACEUTICALS & ANR. ..... Respondents
Through: Mr. Inderdeep Singh and Mr.
Chander Shekhar Patney, Advs. for R-1
+ CS(COMM) 75/2023
GLAXO GROUP LIMITED ..... Plaintiff
Through: Mr. Urfee Roomi, Adv. with
Mr. Anubhav Chhabra and Mr. Ayush Dixit,
Advs.
versus
MAIDEN PHARMACEUTICALS LIMITED ..... Defendant
Through: Mr. Inderdeep Singh and Mr.
C.O. (COMM.IPD-TM) 78/2023 and other connected matters Page 1 of 5
This is a digitally signed order.
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The Order is downloaded from the DHC Server on 24/11/2023 at 02:14:32
Chander Shekhar Patney, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 22.11.2023 C.O. (COMM.IPD-TM) 78/2023 & C.O. (COMM.IPD-TM) 79/2023
1. These are applications filed by the plaintiff for rectification of the Register of Trademarks by removal, therefrom, of the marks BETNOMAID (in C.O. (COMM.IPD-TM) 78/2023) and MEDNOVATE (in C.O. (COMM.IPD-TM) 79/2023), registered in favour of the defendant, which form subject matter of challenge in CS (Comm) 75/2023 as well.
2. Learned Counsel for the parties are ad idem that these rectification petitions were filed and listed along with the suit.
3. Section 124 of the Trade Marks Act envisages two possible scenarios, where the plaintiff files a rectification petition against the mark of the defendant.
4. If the rectification petition is pending - the provision does not say when - the suit is required to be stayed pending disposal of the rectification petition.
5. If, on the other hand, no rectification petition is pending, then the occasion for the plaintiff to file a rectification petition normally arises only if the defendant raises a defence predicated on Section C.O. (COMM.IPD-TM) 78/2023 and other connected matters Page 2 of 5 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 24/11/2023 at 02:14:32 30(2)(e) of the Trade Marks Act, meaning that the defendant pleads the registration of the impugned mark as a defence to the infringement suit. In the event of such a defence being raised by the defendant, the plaintiff, in its subsequent pleadings either by way of replication or by way of amendment of the suit, is entitled to challenge the validity of the defendant's mark. In that event, the plaintiff would have to satisfy the Court that the challenge so raised is tenable. If the Court is so satisfied, then the Court would frame an issue in that regard and adjourn the proceedings by three months in order to enable the plaintiff to file a rectification against the mark of the defendant.
6. A somewhat peculiar situation has arisen in the present case, as rectification petition was filed simultaneously with the suit. The defendant, however, proceeded to file its written statement, in which a Section 30(2)(e) defence has been raised, inasmuch as the registration of the defendant's mark has been pleaded as a defence by the defendant. The plaintiff has, in its replication, has also specifically questioned the validity of the defendant's marks. The challenge so raised has necessarily to be regarded as tenable, as this Court has already granted an interlocutory injunction in favour of the plaintiff. The tenability of the challenge, by the plaintiff, to the BETNOMAID and MEDNOVATE marks of the defendant cannot, therefore, be disputed, irrespective of the merits of the said challenge.
7. Ordinarily, therefore, the Court would have to adjourn the trial of the suit by three months in order to enable the plaintiff to file a rectification petition. In the present case, however, that exercise stands pre-empted by the plaintiff/petitioner who has filed a C.O. (COMM.IPD-TM) 78/2023 and other connected matters Page 3 of 5 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 24/11/2023 at 02:14:33 rectification petition simultaneously with the plaint.
8. Pleadings in the rectification petitions are complete.
9. Irrespective of whether the case falls within clause (i) and clause (ii) of Section 124(1) of the Trade Marks Act, the scheme of the statute is clear in requiring the rectification petitions to be decided first, before proceeding with the trial of the suit.
10. As such, let the rectification petitions be listed for hearing and disposal on 9 January 2024.
CS(COMM) 75/2023
11. In view of the aforesaid order, the Court frames the following issue:
"1. Whether the registration of the marks BETNOMAID and MEDNOVATE in favour of the defendant are valid? OPP"
12. Additionally, after perusing the record and hearing learned Counsel, the Court frames the following issues for hearing and decision in the present matter, apart from the issue already framed hereinabove:
"2. Whether the Defendant's use of the marks BETASON, BETNOMAID and MEDNOVATE, on and in relation to medicinal and pharmaceutical preparations, constitutes trade mark infringement of the Plaintiff's BETNESOL and BETNOVATE marks? OPP
3. Whether the Defendant by use of the BETASON, BETNOMAID and MEDNOVATE marks, on and in relation to medicinal and pharmaceutical preparations have engaged in C.O. (COMM.IPD-TM) 78/2023 and other connected matters Page 4 of 5 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 24/11/2023 at 02:14:33 passing-off/unfair competition? OPP
4. Whether the mark BETASON of the Defendant has been derived / Adopted from Active Pharmaceutical Ingredient (API) / Generic Medicine Name Betamethasone? OPD
5. Whether the trade marks BETASON, BETNOMAID and MEDNOVATE have been honestly adopted by the Defendant, on and in relation to medicinal and pharmaceutical preparations? OPD
6. Whether the suit of the Plaintiff is barred by delay, latches and acquiescence? OPD
7. Whether the Plaintiff had filed the present suit without any valid cause of action? OPD
8. Whether the prefixes BET/BETA/NOVATE are common to trade in relation to medicinal and pharmaceutical preparations? OPD
9. Whether the Suffix MAID had been taken from the name of Defendant Company MAIDEN? OPD
10. Whether the Plaintiff is entitled to any damages, if any? OPP
11. Reliefs"
13. Let the parties file, before the Court, joint suggested schedule for recording of evidence.
14. List on 21 February 2024.
C.HARI SHANKAR, J NOVEMBER 22, 2023 ar Click here to check corrigendum, if any C.O. (COMM.IPD-TM) 78/2023 and other connected matters Page 5 of 5 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 24/11/2023 at 02:14:33