Delhi District Court
Abbott Helthcare Private Limited vs Sgs Pharmaceutical Pvt Ltd on 3 June, 2025
-1-
IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02
NEW DELHI DISTRICT, PATIALA HOUSE COURTS
NEW DELHI
CNR NO.: DLND01-010499-2018
CS (COMM.)/59/2023
[OLD NOS.:- TM /135/2018,
CS (COMM.)/309/2019 & TM/157/2021]
IN THE MATTER OF:
ABBOTT HELTHCARE PRIVATE LIMITED
3, Corporate Park
Sion-Trombay Road, Chembur
Mumbai-400071.
Also at -
708, Ansal Bhawan
Kasturba Gandhi Marg,
New Delhi- 110001
... PLAINTIFF
VERSUS
SGS Pharmaceutical Pvt. Ltd.
E-13/1, Kavi Nagar
Industrial Area, Sector-17
Near Diamond Flyover
Ghaziabad, Uttar Pradesh- 201002
... DEFENDANT
Date of Institution : 10-09-2018
Date of reserving Judgment : 03-06-2025
Date of pronouncing Judgment : 03-06-2025
JUDGMENT
1. Vide this judgment, I shall decide the present suit for permanent injunction, infringement of trademark, copyright, passing off, damages, rendition of accounts, etc., filed by plaintiff against the defendant.
CS (COMM.)/59/2023 Page 1 of 66 -2-2. At the outset, it must be mentioned that initially, the present suit was filed as a non-commercial suit before the Court of Ld. Additional District Judge, Patiala House Courts, New Delhi and during the course of trial, it was received by this Court by way of transfer, on 20-10-2022, in view of Order No.17016-17031/Judl./ NDD/ PHC/2022 dated 05-7-2022 of the then Ld. Principal District & Sessions Judge, New Delhi District, PHC and consequent upon the directions of Hon'ble Delhi High Court in the case titled as 'Vishal Pipes Limited v. Bhavya Pipe Industry' FAO-IPD No.1/2022 & CM APPLs No. 12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is as under:-
3.1 The plaintiff, which is claimed to be a company duly incorporated under the Indian Companies Act, 1956, got instituted the present suit through its Manager (Legal)/ Authorized Representative namely Ms. Tejal Mundkur, who has been duly authorized by the plaintiff company to sign, verify, institute and pursue the present suit, by virtue of Power of Attorney.
3.2 It is averred that the plaintiff is a wholly owned subsidiary of Abbott Laboratories, Chicago, USA which was founded in the year 1888 by a young Chicago physician, Dr. Wallace Calvin Abbott.
CS (COMM.)/59/2023 Page 2 of 66 -3-Abbott Laboratories is a global, diversified health care company devoted to the discovery, development, manufacture and marketing of pharmaceutical, diagnostic, nutritional and hospital products. It is further averred that 'Abbott India Limited' having its registered office at 3-4, Corporate Park Sion Trombay Road, Chembur, Mumbai, is an affiliate of the plaintiff.
3.3 Thus, it is averred that the plaintiff is a wholly owned subsidiary of Abbott Laboratories and deals in manufacture and marketing of pharmaceutical, diagnostic, nutritional and hospital products [hereinafter referred to as the 'said goods and business'] in India and the plaintiff on its own and through its affiliates in India, is dedicated to providing quality healthcare and pharmaceutical products to its valued customers. The plaintiff together with its affiliates, is one of the most reputed and largest pharmaceutical companies carrying on business in India.
3.4 It is averred that the plaintiff has over 8000 employees with a network of 30 distribution points, which cater to 5,500 stockists, who in turn, supplies its products to 4-5 lakhs retailers in India.
3.5 The products manufactured and marketed by the plaintiff are sold under their well-known and famous trademarks and/or brand names,which includes CS (COMM.)/59/2023 Page 3 of 66 -4- Avomine, Flagyl, Sorbitrate, Tenormin, Digene, Cremaffin, Thyronorm, etc. 3.6 It is claimed that the plaintiff's products encompass a wide and diverse range and are known for their efficacy, reliability and excellence of quality. The plaintiff and its affiliates maintain state of the art research and development facilities for developing new products and upgrading their present range of products. All such products are subject to stringent quality testing to ensure safety and efficacy of these goods.
3.7 Further, the plaintiff through its predecessor-in-title, is claimed to be owner and registered proprietor of the trade mark 'ESGIPYRIN' [hereinafter referred to as the 'said trade mark'] vide No.293710 in class 5 in respect of the said medicinal and pharmaceutical preparation as on 22nd January 1974. The same is stated to be renewed from time to time and subsisting and is in full legal force; conferring upon the plaintiff the right to its exclusive use and to restrain use of any identical or deceptively similar mark by unauthorized persons.
3.8 It is stated that said trademark 'ESGIPYRIN' is a coined/invented word, having no dictionary meaning and is not derived from the principal ingredient/ formulation of the drug.The said trademark 'ESGIPYRIN' is being used by the plaintiff in relation with 'Diclofenac sodium and paracetamol CS (COMM.)/59/2023 Page 4 of 66 -5- preparations'. Thus, the mark has the highest degree of distinctiveness, connoting the plaintiff's goods exclusively.
3.9 It is stated that the said trademark 'ESGIPYRIN' was adopted, coined and registered with the trade mark registry by Suhrid Geigy Limited (hereinafter "SGL") in the year 1974. The name of Suhrid Geigy Limited was changed to S.G Chemicals and Pharmaceuticals Limited. The new name S.G Chemicals and Pharmaceuticals Limited (hereinafter "SGCPL") was brought on record in the Registry records, vide request dated December 24, 1979. Eventually, SGCPL merged with Ambalal Sarabhai Enterprises Limited (hereinafter "ASE"), on 27 th March 1981. ASE was brought on record as the subsequent proprietor in the Trade Marks Register. Subsequently, Nicholas Piramal India Limited formed a Joint Venture with ASE called Compact Pharma Private Limited, which operated through its division named "Sarabhai Piramal Pharmaceutical", which later on changed its name to Compact Pharma Limited on October 01, 1997 (hereinafter "JV Company"). By virtue of an Assignment Agreement dated 3rdOctober, 1997, ASE assigned the said trademark 'ESGIPYRIN' to the JV Company. The aforesaid Assignment Agreement contained a typographical error in the name of the assignee appearing in said Deed of Assignment ( appearing as CS (COMM.)/59/2023 Page 5 of 66 -6- Compact Pharma Private Limited in place of Compact Pharma Limited), due to lack of communication from Registrar of Companies, which issued the name change certificate]. Subsequently, the JV Company changed its name to Sarabhai Piramal Pharmaceuticals Limited on December 4, 1997, and further changed its name to Sarabhai Piramal Pharmaceuticals Private Limited on May 24, 2001. The name of the assignee was brought on record as the subsequent proprietor.
Further vide order dated 27th day of April, 2004 of the Court, the JV Company Sarabhai Piramal Pharmaceuticals Private Limited was merged with Nicholas Piramal India Limited and thereby Nicholas Piramal India Limited became the registered proprietor of the said Trademark. Further, with effect from 13th May 2008, the name of Nicholas Piramal India Limited was changed to Piramal Healthcare Limited (Now known as Piramal Enterprises Limited).
3.10 It is stated that by virtue of further Assignment Agreement dated September 08, 2010, Piramal Healthcare Limited assigned the said Trademark - 'ESGIPYRIN' to the plaintiff. The plaintiff, has vide application dated February 21, 2011, sought to bring on record the plaintiff's name as a subsequent proprietor of the Trade Mark 'ESGIPYRIN' with the trademark Registry.
CS (COMM.)/59/2023 Page 6 of 66 -7-3.11 Thus, it is claimed that the plaintiff and its predecessors-in-title have been openly, continuously, extensively and exclusively using the said Trade Mark 'ESGIPYRIN' in respect of their goods since more than the last four decades, and it has, thus, become a well-known mark.
3.12 It is also averred that in addition to using a distinctive trademark, the plaintiff uses a unique blister packaging for its Tartrazine (yellow) tablets under the said mark. The plaintiff uses a unique yellow strip packaging in the front and the said trademark 'ESGIPYRIN' is prominently displayed in silver font in a black box on the backside. The photographs of strip/ packaging/ trade dress/ colour scheme, as depicted in plaint, are reproduced here as under:-
[hereinafter referred to as 'the said packaging/ trade dress/ colour scheme'] 3.13 It is stated that in addition thereto, the plaintiff's product strips under the Trade Mark 'ESGIPYRIN' CS (COMM.)/59/2023 Page 7 of 66 -8- are sold in a box packaging in colours white and orange bearing a unique design (being outline of men in different postures). Thus, the distinctive packaging and strip described above constitute original artistic work of the plaintiff within the meaning of S.2(c) of the Copyright Act, 1957, of which the plaintiff owns the copyright.
3.14 It is stated that the plaintiff has tremendous sales running into several millions of rupees for products sold under the said trademark throughout India. The details of year-wise sales since 2006-2007 till 2018 are provided in Para no.9 of the plaint, wherein it is shown that the said plaintiff had sales worth Rs.1635.13 for the year 2006-2007, which increased to Rs.1,68,08,730.32Paise. It is also claimed that the plaintiff has been continuously promoting the said business & goods under the said trademark and has incurred substantial expenses towards promotion thereof. It is stated that due to plaintiff's efforts and investment in promoting the brand 'ESGIPYRIN' and by virtue of its extensive use, the trade and public identify 'ESGIPYRIN' and its unique packaging with the plaintiff and no one else.
Consequently, the plaintiff has earned substantial goodwill and reputation in the 'ESGIPYRIN' trade mark and its packaging, which acts as a unique identifier of its products. Therefore, it is stated that said trademark is to be considered as 'well-known' CS (COMM.)/59/2023 Page 8 of 66 -9- trademark within the meaning of Section 2 (1) (zg) and Section 11 of the Indian Trade Marks Act, 1999.
3.15 Hence, it is stated that on account of its good quality and standards of manufacturing and untiring efforts in advertising and marketing, the goods of the plaintiff under the said trade mark have acquired enviable reputation and goodwill in business community and public in general and in view of the plaintiff' proprietary rights both under statutory and common law in its said trademark and their goodwill & reputation, the plaintiff has the exclusive right to the use thereof and nobody can be permitted to use the same or any other deceptively similar trade mark/ packaging /trade dress in any manner whatsoever in relation to any specification of goods without the leave and license of the plaintiff.
3.16 It is alleged that on coming to know about defendant's infringing products under the trademark SGS PYRIN in the 2nd week of August, 2018, the plaintiff through its representative made extensive inquiries in the market to ascertain the identity of the person(s) who were manufacturing and marketing the identical impugned products. Then, it is revealed that the defendant is a pharmaceutical company trading as SGS PHARMACEUTICAL PVT. LTD, has been manufacturing, marketing, distributing and selling the products with the drug compound containing the same active ingredient CS (COMM.)/59/2023 Page 9 of 66 -10- used by the Plaintiff of "Paracetamol and Diclofenac Sodium Tablets" [hereinafter referred to as 'the said impugned goods and business']. It is further alleged that the products of the defendant are sold in yellow colour strip that is visually identical to strip packaging of the plaintiff's 'ESGIPYRIN' and which is deceptively similar to the plaintiff's registered trade mark 'ESGIPYRIN' thereby resulting into the acts of infringement and passing off. The photographs of impugned packaging/ strip is reproduced hereunder:-
ESGIPYRIN SGS PYRIN [hereinafter referred to as 'the said impugned packaging/ trade dress/ colour scheme'] CS (COMM.)/59/2023 Page 10 of 66 -11- 3.17 It is further stated that the defendant is engaged in unauthorized manufacturing and marketing of tablets bearing the impugned trademark SGS PYRIN with similar strip packaging [ hereinafter referred to as 'said impugned drugs'] as that of the plaintiff's products sold under the mark 'ESGIPYRIN' [hereinafter referred to as 'the said drugs']. Further, the said impugned drugs are sold in yellow colour strip identical to the distinctive yellow colour strip of the plaintiff's products. The plaintiff claims that the said impugned drugs is identical with the drug compound containing the same active ingredient used by the plaintiff of "Paracetamol and Diclofenac Sodium Tablets" as that contained in the said drugs of the plaintiff. It is averred that Diclofenac is non-steroidal anti-inflammatory drugs (NSAID) used to relieve pain and reduce inflammation.
3.18 It is further averred that the said impugned trademark SGS PYRIN of defendant is deceptively similar to plaintiff's well known registered mark 'ESGIPYRIN' while emphasizing that the defendant has intentionally manipulated some letters in the plaintiff's mark 'ESGIPYRIN' to create deceptively similar mark SGS PYRIN. In order to create confusion in the minds of traders and people; they have further copied the blister packing style along with the colour and size of the tablet, which is of the CS (COMM.)/59/2023 Page 11 of 66 -12- same color and size as the plaintiff's product.
3.19 It is also stated that the plaintiff's drug 'ESGIPYRIN' is commonly known as "Peeli Goli"
in Hindi (meaning "yellow tablet") by uneducated/ unaware masses consuming or referring to this product. The defendant, by way of their imitation of yellow blister strip and tablet of identical colour, shape and size,is encashing on the reputation and goodwill earned by ESGIPYRIN products. Such masses referring a product, thus, identify the product by its colour, size and blister packing rather than names of manufacturer/distributor mentioned on the blister strips. It is also a well-known practice of chemists and retailers to sell parts of strips (say, half or one fifth of a strip of ten tablets). A consumer purchasing a part of a strip, is even more likely to identify a medicine by the shape, colour scheme and get up of a tablet. The use of an identical packaging, colour scheme and get up in respect of products bearing the deceptively similar mark 'SGS PYRIN', colour combination/ packaging / get up by the defendant, itself establishes its malafide intention to ride piggy back on the goodwill and reputation earned by the plaintiff for its product bearing the registered mark ESGIPYRIN.
3.20 Hence, it is alleged that the defendant has dishonestly and malafidely adopted the impugned Trade Mark/ trade dress/ blister packaging in yellow CS (COMM.)/59/2023 Page 12 of 66 -13- colour 'SGS PYRIN' which is identical and /or deceptively and confusingly similar to plaintiff's trade mark/ trade dress/ blister packaging in yellow colour 'ESGIPYRIN', thereby causing confusion and deception amongst the unwary purchasing public and traders by making them believe that the origin of those goods is that of the plaintiff. It has been averred that by doing so, the defendant is not only damaging the reputation and goodwill of the plaintiff by passing off its substandard products as that of the plaintiff, but is also causing financial loss to the plaintiff by reaping unfair advantage of the repute and distinctive character of the said trademark/ trade dress of the plaintiff.
4. On these grounds, the plaintiff has filed the present suit against the defendant praying therein, inter alia, that decree of permanent injunction may be passed restraining the defendant and all others acting for and on their behalf from using the impugned Trade Mark/ trade dress/ colour scheme 'SGS PYRIN' or any other trade mark/ trade dress/ colour scheme, which may be identical and /or deceptively and confusingly similar to plaintiff's trade mark/ trade dress/ colour scheme 'ESGIPYRIN' in relation to similar goods, thereby infringing plaintiff's registered trademark, copyright and passing off their products as that of the plaintiff.
5. The suit was accompanied with applications - one under Order XXXIX Rules 1 & 2 CPC and another under Order XXVI Rule 9 CPC seeking an ex parte ad interim injunction CS (COMM.)/59/2023 Page 13 of 66 -14- and ex parte order for appointment of local commissioner to visit and search the premises of the defendant. After hearing counsel of the plaintiff, the said applications were allowed, vide common order dated 11-09-2019 passed by Ld. ADJ-05/PHC/New Delhi, thereby granting an ex parte ad interim injunction in favour of the plaintiff and against the defendant and a Local Commissioner was also appointed to visit and search the premises of the defendant with certain conditions as mentioned therein.
6. Pertinently, in pursuant to relevant order, Ld. Local Commissioner, so appointed by the Court, executed the commission and filed detailed report on record, according to which, the impugned goods bearing the impugned trade mark were found from the premises of the defendant, which were seized and handed over to the defendant on superdarinama.
7. After being served with the summons of the suit and notice of accompanying applications in terms of relevant order, the defendant company put its appearance through counsel namely Sh. Kundan Roy, Advocate.
8. It may be noted that on account of outbreak of Covid-19, the matter got adjourned en bloc in view of direction of Hon'ble Delhi High Court and the then Ld. Principal District & Sessions Judge, New Delhi District, Patiala House Courts, New Delhi and subsequently, was taken up through virtual mode and/or hybrid mode till restoration of normalcy.
9. At this juncture, it may also be noted that the present case CS (COMM.)/59/2023 Page 14 of 66 -15- was received by this Court on 20-10-2022, as already noted above in Para no.2, and an application under Order VI Rule 17 CPC was moved on behalf of the plaintiff seeking amendment of the suit, thereby enhancing specified value to be above Rs.3 lacs, so as to bring the present suit within the ambit of the Commercial Courts Act, 2015, in view of the directions of Hon'ble Delhi High Court in case of Vishal Pipes Limited (supra), which was allowed vide order dated 13-01-2023, passed by Ld. Predecessor of this Court, thereby directing the defendant to file written statement to the amended plaint within 30 days from the date of said order. The amended written statement filed by the defendant to the amended plaint was directed to be taken on record, after condoning delay subject to cost of ₹5000/-, vide order dated 13-07-2023 passed by Ld. Predecessor of this Court.
10. In its written statement, the defendant has taken various preliminary objections by way of preliminary submission, inter alia, that:-
10.1 The present suit for permanent injunction is nothing but an attempt by the plaintiff to completely wreck the business of the defendant.
10.2 There is neither any infringement, nor passing off by the defendant of the product or trademark of the plaintiff "ESGIPYRIN" as has been stated by the plaintiff. The defendant has denied allegation of reproduction or any type of similarity or deception or causing confusion in the trademark, color CS (COMM.)/59/2023 Page 15 of 66 -16- scheme, get-up, arrangement of words etc. 10.3 No ground whatsoever exists for this Court to indulge itself what to say of granting the reliefs as prayed in the suit, since the defendant's trademark "SGS PYRIN" is designed in a completely different and distinctive manner as compared to the plaintiff's trademark "ESGIPYRIN" either structurally, visually or phonetically, hence the suit is liable to be dismissed out rightly.
11. Under the heading 'Brief Facts', the defendant has stated as under:-
11.1 The defendant is a company incorporated under the Companies Act and having its registered office at Bhagirath Place, New Delhi-110006 and right from its incorporation, it is engaged in the business of manufacturing, marketing and trading of "Pharmaceutical, Medicinal and Veterinary preparations & Substances in different forms such as Tablets, Capsules, Ointments, Syrups, Skin Creams etc." and is known for its quality in its field.
11.2 The director of the defendant company, Mr. Vipin Gupta has been duly authorized by it, vide Board Resolution dated 31/01/2019 to sign and verify the reply, to file documents, to sign vakalatnama, to depose before the Court and to do all such other act(s) as may be necessary in the present suit.
11.3 The defendant had been manufacturing and CS (COMM.)/59/2023 Page 16 of 66 -17- marketing its goods/products under trademark "SGS PYRIN", which is stated to be self coined, new, distinctive in nature as well as in character, in good faith and without any malafide intention and further without intention of infringement of any pre-existing trade mark or passing off their goods as that of plaintiff or of any manufacturer in the field of pharmaceutical or medical filed.
11.4 The products of the defendant are prima facie distinctive and highly exclusive owned by it. The defendant has claimed to be one of the leading pharmaceutical and medical products manufacturing and supply company, which has acclaimed the reputation among the pharmaceutical market and is widely known for its superior quality product and fair dealing.
11.5 It is stated that the defendant company has got the license bearing No.20 of 2001 to start production and sale of its products under trademark "SGS PYRIN" from Uttar Pradesh Drug Licensing-cum-
Controlling Authority and since then the defendant company is marketing and trading its goods/products in the market continuously and in this way, it has acquired tremendous goodwill and reputation in the commercial market.
11.6 The defendant's trademark "SGS PYRIN" belongs to the category of well-known, well-reputed and famous trademark. It is instantly identifiable and CS (COMM.)/59/2023 Page 17 of 66 -18- recognizable by both the members of trade and public as being exclusively associated with the goods and business of the defendant. The trademark and trade name "SGS PYRIN" acts as a course identifier in as much as it stands for the high standards and superior quality of goods/products manufactured by the defendant and sold over the whole of India or elsewhere.
11.7 It is stated that the subject trademark of the defendant i.e. "SGS PYRIN" is self coined, new, distinctive in nature as well as in character; it is reiterated that there has been no misrepresentation/imitation by defendant in using the trademark is question as the trademark in question is arbitrary and inherently distinct trademark/logo/device. The defendant has adopted and taken the mark "SGS PYRIN" as a whole with device/label; so the usage word like "SGS" or "PYRIN" does not give any right to the plaintiff to prevent third parties from using any mark that include the said word like the mark "SGS PYRIN". The plaintiff has conveniently overlooked the cardinal principle of trademark law that the mark must be taken as a whole for the purposes of comparison and letter-by-letter or word-by-word comparison of mark falls outside the scope and ambit of the Trademark law.
11.8 The degree of distinction between the rival products, CS (COMM.)/59/2023 Page 18 of 66 -19- its composition, marks, get up, lay out and arrangement of features clearly shows that there is no similarity between the goods of the defendant to the goods of the plaintiff.
12. Likewise, by way of 'Para-Wise Reply On Merits', while denying and controverting the averments made in the corresponding paras of the plaint, the defendant has stated, inter alia, that:-
12.1 The defendant is true and bonafide owner of the trademark "SGS PYRIN", which was created and adopted in uniquely and in stylized form including its color combination, get up, writing pattern etc., which are purportedly totally different from the plaintiff's mark "ESGIPYRIN"; and hence, there is no scope for confusion or deception, visually or phonetically, and will not cause or lead to any deception or confusion in the mind of the user public.
12.2 The defendant's trademark i.e. "SGS PYRIN" is designed in a completely different and distinctive manner as compared to the plaintiff's mark "ESGIPYRIN" and there is no resemblance between the word/logos of the defendant's mark and the plaintiff's trademark as alleged in the present suit for permanent injunction. Thus, it is stated that said impugned mark is distinctive in nature as well as in character and is neither identical, nor similar or deceptively similar to the plaintiff's mark CS (COMM.)/59/2023 Page 19 of 66 -20- "ESGIPYRIN" or any trade mark/s and thus, the defendant is entitled to use it without any hindrance and is entitled to protection in any court of Law.
12.3 There is no dishonest adoption of any kind of any trademark or any artwork by the defendant of any one including the plaintiff. The impugned mark is combination of two words i.e. "SGS" and "PYRIN"
and the prefix word i.e. "SGS" taken from the corporate name of the defendant company.
12.4 It is further stated that there are so many trademarks registered with the Registrar of trademark prior and after to the plaintiff mark "ESGIPYRIN" with the prefix word "ESGI" as well as suffix word "PYRIN" and they didn't raise any objection against the plaintiff and/or the plaintiff also didn't raise any objection to them. The details of registered trademark(s) and/or pending trademark(s) with the Registrar of Trademarks Records in the same Class 05 is mark "ESGIRAN", vide Trademark Application No. 346783; mark "ESGIFEN", vide Trademark Application No. 380366; mark "ESGIPYRIN-N", vide Trademark Application No. 925321; mark "ESGIC", vide Trademark Application No. 1069190; mark "OXYPYRIN", vide Trademark Application No. 380382; mark "CEFTUM", vide Application No. 455064; mark "H-PYRINE", vide Trademark Application No. 417359; mark "APYRIN", vide Trademark CS (COMM.)/59/2023 Page 20 of 66 -21- Application No. 510507; mark "NOPYRIN", vide Trademark Application No. 1004670; mark "MEPYRIN", vide Trademark Application No. 1104283; mark "PYRIN", vide Trademark Application No. 1128780; mark "EASIPYRIN", vide Trademark Application No. 1571504; mark "EAZYPYRINE", vide Trademark Application No. 1766666.
12.5 It is stated that the defendant is a licensed pharmaceutical company and is in the business for more than seventeen (17) years and its reputation in the market is well known and it is a renowned company. It is stated that the subject trade mark "SGS PYRIN" is a novel trademark, specially created by the defendant with distinguishing features and is capable of distinguishing it's goods and services to all the goods and services of any other person/s, hence, completely new with distinctive characters and inherently capable of distinguishing in character for the goods in it's Class. It is further stated that since creation and adoption of aforesaid mark by the defendant, it has put lots of efforts to establishing its brand in commercial market through invested huge amount of money, time, labour, marketing, publishing etc. and when the public purchase the goods of the defendant from the market, they easily understand that the said products are from the defendant, because today's people are very intelligent and aware, and the reason for CS (COMM.)/59/2023 Page 21 of 66 -22- differentiate between both the trademarks is that both trademarks are phonetically different from each other. The defendant's said trademark on account of its continuous and voluminous use since over two decades, has acquired factual distinctiveness and secondary significance meaning/denoting the goods and business of the defendant and defendant's business alone and thus, the defendant's has a good reach to the members of the trade and public.
12.6 It is stated that the plaintiff did not provide, even a shred of evidence or factual data of any kind in support of its case and thus, it has miserably failed to establish, either by way of averments or evidence, that their mark is well-known in accordance with the statutory definition. It is further submitted that the defendant has been using the mark since 2001 and marketing and trading the pharmaceutical goods/products in the market continuously and in this way, it has acquired tremendous goodwill and reputation in the commercial market. It is further stated that the defendant has a presence in whole of India. In fact, it is the defendant's mark which is famous and well-known and should be given due recognition; hence, the plaintiff's allegation that the use of the impugned mark SGS PYRING by the defendant, is violation of plaintiff's statutory and common law right, is completely false and wrong interpretation of law.
CS (COMM.)/59/2023 Page 22 of 66 -23-12.7 Thus, it is claimed that the said impugned mark of the defendant "SGS PYRIN" is structurally, visually and phonetically different to the mark of the plaintiff, hence, the plaintiff has no right to restrain the defendant from using the impugned trademark or to oppose for restraining it from using the impugned mark in any Court.
13. Plaintiff filed amended replication, thereby denying and controverting the averments made in the amended written statement, while affirming and reiterating the averments made in the amended plaint.
ISSUES
14. From pleadings of the parties, the following issues were framed, vide order dated 11-12-2023, passed by Ld. Predecessor of this Court:-
14.1 Whether plaintiff is entitled for decree of permanent injunction for restraining defendant from manufacturing, trading, selling and offering for sale, advertising, directly or indirectly, medicinal and pharmaceutical preparations under the impugned trade mark/ label 'ESGIPYRIN', as prayed for? OPP.
14.2 Whether the defendant is guilty of passing off plaintiff's trade mark// label 'ESGIPYRIN', as prayed for? OPP.
14.3 Whether the defendant is guilty of infringing copy right of plaintiff in trade mark/ label 'ESGIPYRIN', CS (COMM.)/59/2023 Page 23 of 66 -24- as prayed for? OPP.
14.4 Whether the plaintiff is entitled to decree of delivery up of impugned goods, dies, blocks, labels and any other printed matter bearing the impugned mark and/or the impugned packaging containing the mark SGS PYRIN? OPP.
14.5 Whether the plaintiff is entitled to rendition of accounts of profits earned by defendant by their impugned illegal trade activities, as prayed for? If so, for what amount? OPP.
14.6 Relief.
PLAINTIFF'S EVIDENCE
15. In support of its case, the plaintiff company has examined only one witness i.e. its constituted attorney namely Ms. Tejal Mundkur as PW1. She led examination-in-chief by way of affidavit [Ex.PW1/A] and deposed in terms of the facts of the plaint and has relied upon the following documents:-
Srl. Document/Particulars Exhibit(s) No.
1. Copy of Power of attorney dated Ex.PW1/1 05.01.2024.
2. Copy of Certificate issued by Ex.PW1/2 Trademark Registry (LPC).CS (COMM.)/59/2023 Page 24 of 66 -25-
Srl. Document/Particulars Exhibit(s) No.
3. Copy of amalgamation order dated Mark A 27.03.1981.
4. Copy of Deed of Assignment dated Mark B 03.10.1997.
5. Order dated 27.04.2004. Mark C
6. Copy of Certificate of change of Mark D name of Nicholas Piramal India Limited to Piramal Healthcare Limited.
7. Copy of Deed of Assignment dated Mark E 08.09.2010.
8. Copy of Certificate dated Ex.PW1/8 16.03.2012.
9. Certificate of an independent Ex.PW1/9 Chartered Accountants firm.
10. Copies of sales invoices. Ex.PW1/10 (Colly)
11. Copies of promotional material Ex.PW1/11 including brochure pertaining to the (Copy) said ESGIPYRIN mark of the plaintiff.
12. Copy of the competing photographs Mark F of the packaging of the plaintiff.
CS (COMM.)/59/2023 Page 25 of 66 -26-Srl. Document/Particulars Exhibit(s) No.
13. Internet Extracts showing of Ex.PW1/13 defendant's business activity.
14. Affidavit under Section 65B of Ex.PW1/14 Indian Evidence Act.
15. Internet downloads showing Ex.PW1/15 various brands in relation to medicines containing 'Diclofenac sodium and paracetamol'.
16. Copy of order dated 01.08.2014 of Mark G High Court of Delhi.
17. Report of Local Commissioner. Ex.PW1/17
18. Copies of orders of Hon'ble Delhi Mark H High Court against third parties. (Colly)
19. Copies of orders of Hon'ble Delhi Mark J High Court against third parties. (Colly)
20. Copy of Notice of Trademark Ex.PW1/20 Caution for the plaintiff's mark.
16. It may be noted here that since originals of the documents, mentioned as Ex.PW1/3, Ex.PW1/4, Ex.PW1/5, Ex.PW1/6, Ex.PW1/7, Ex.PW1/12, Ex.PW1/16, Ex.PW1/18 and Ex.PW1/19 in Ex. PW1/A, were not produced, they were de-exhibited and consequently, were marked as Marks A, B, C, D, E, F, G, H and J respectively, CS (COMM.)/59/2023 Page 26 of 66 -27- while recording examination-in-chief of the witness of plaintiff.
17. It may be noted that after recording examination-in-chief of PW1, while exercising the power conferred under Order XVA Rule 6(o) and (p) CPC, the Court had directed that the evidence shall be recorded by Ld. Local Commissioner, appointed by this Court on commission basis, vide order dated 04-03-2024. Accordingly, both the parties were directed to lead their respective evidence before Ld. Local Commissioner, in terms of the timeline/ scheduled framed therein. In pursuant thereto, both the parties led their respective evidence before Ld. Local Commissioner.
18. It may also be noted that in the meanwhile, on request made on behalf of both the sides, the matter was referred to Delhi Mediation Centre, PHC, New Delhi for exploring possibility of settlement between the parties, however, it was reported that the matter could not be settled between the parties and hence, it was sent back, as per proceedings dated 08-04-2024 of said Delhi Mediation Centre.
19. PW-1 has been cross-examined at length.
The relevant portion of her testimony shall be discussed and referred hereinafter while giving issue-wise findings hereunder.
20. PE was closed on 01-07-2024.
CS (COMM.)/59/2023 Page 27 of 66 -28-DEFENDANT'S EVIDENCE
21. The defendant's evidence was led, during which, the defendant has examined Sh. Nimish Gupta, as DW1. He also led his examination-in-chief by way of affidavit (Ex.DW1/A) and deposed in terms of the averments made in the written statement. He relied upon the following two documents:-
Srl. Document/Particulars Exhibit(s) No.
1. Certified True Copy of Board Ex.DW1/1 Resolution dated 31.01.2019
2. Copy of Drug Licence bearing Ex.DW1/2 No.20/2001
22. It may be noted that Ld. Counsel of plaintiff objected to the proving of aforesaid documents by DW1, while stating that copy of Board Resolution has been self certified by the witness and there was no proof that any such Board Resolution was issued in his favour, as also on the ground that it does not bear any stamp of the defendant company. As regards copy of drug licence, Ld. Counsel of plaintiff objected to it on the ground of mode of proof, as also on the ground that drug license no.20/2001 mentioned in paragraph 6, does not find mention in the photocopy of said document.
23. DW1 has been cross-examined at length. The relevant portion of his testimony shall be discussed and referred hereinafter while giving issue-wise findings CS (COMM.)/59/2023 Page 28 of 66 -29- hereunder.
24. Thereafter, DE was closed on 29-7-2024.
25. I have already heard Ld. Counsels for the parties. I have also gone through the material available on record, including the written submissions filed by both the sides and the authorities cited at the Bar.
ISSUE-WISE FINDINGS:
26. My issue-wise findings are as under:-
ISSUE NOS.1, 2 & 327. Firstly, I shall take up the issue nos.1, 2 and 3, as they are interconnected with each other and can be decided together. Same are reproduced here as under: -
Issue no. (i) - Whether plaintiff is entitled for decree of permanent injunction for restraining defendant from manufacturing, trading, selling and offering for sale, advertising, directly or indirectly, medicinal and pharmaceutical preparations under the impugned trade mark/ label 'ESGIPYRIN', as prayed for? OPP. Issue no. (ii) - Whether the defendant is guilty of passing off plaintiff's trade mark// label 'ESGIPYRIN', as prayed for? OPP.
Issue no. (iii) - Whether the defendant is guilty of infringing copy right of plaintiff in trade mark/ label 'ESGIPYRIN', as prayed for? OPP.
21. The onus to prove the aforesaid issues was placed upon the plaintiff. As already noted above, in order to prove its case, the plaintiff has examined sole witness as PW1, who has deposed on the identical lines of the plaint, by way of her affidavit in evidence (Ex.PW1/A).CS (COMM.)/59/2023 Page 29 of 66 -30-
PLAINTIFF'S ARGUMENTS:
22. After referring to the pleadings of the parties, evidence, oral as well as documentary, led by both the sides and the documents proved during the course of trial, Ld. Counsel of plaintiff advanced the following arguments:-
22.1 The plaintiff through its predecessors-in-titles, has coined, adopted and has been openly, commercially, continuously and without interruption of others, using the said trade mark since 1974 and thus, the plaintiff is prior adopter and user of the said trade mark.
22.2 The said trade mark 'ESGIPYRIN' is registered vide No.293710 in class 5 in respect of the medicinal and pharmaceutical preparation as of 22nd January 1974 and by virtue of further Assignment Agreement dated September 08, 2010, Piramal Healthcare Limited had assigned the said Trademark - 'ESGIPYRIN' to the plaintiff.
22.3 The art works involved in the trademark/ trade dress is original artistic works and the plaintiff holds copyright therein.
22.4 The plaintiff spends huge amount of money in advertising and promotion of its products and said mark enjoys a huge goodwill and reputation in business community and public in general in India and across the world.CS (COMM.)/59/2023 Page 30 of 66 -31-
22.5 Ld. Local Commissioner, while executing the commission in terms of the orders passed by this Court, had found certain infringed goods from the premises of the defendant, which establishes that the defendant was involved in the illegal activities.
22.6 Local Commissioner's Report can be read in evidence in terms of Order XXVI Rule 10(2) CPC and for this purpose, he also relied upon judgment of our own Hon'ble High Court in case titled as "M L Brother LLP v. Mahesh Kumar Bhrualal Tanna" [CS (COMM) 126/2022, decided on 12th May, 2022].
22.7 The plaintiff's product 'ESGIPYRIN' is commonly known as "Peeli Goli" in Hindi (meaning "yellow tablet") by uneducated/ unaware masses consuming or referring to this product. The defendant, by way of their imitation of yellow blister strips and tablets of identical colour, shape and size, is encashing upon the reputation and goodwill earned by ESGIPYRIN product. The use of an identical packaging, colour scheme and get up in respect of products bearing the deceptively similar mark SGS PYRIN by the defendant itself establishes their malafide intention to ride piggy back on the goodwill and reputation earned by the plaintiff on its product bearing the registered mark ESGIPYRIN and therefore, he urged that the suit may be decreed in favour of the plaintiff and CS (COMM.)/59/2023 Page 31 of 66 -32- against the defendant, thereby restraining the defendant and all others acting for and on their behalf from using said impugned trademark/ label.
22.8 Despite cross-examination at length, the defendant could not impeach the testimony of PW-1 and therefore, the plaintiff company is entitled to the decree, as prayed for.
22.9 As regards defence of the defendant, it is vehemently argued that the defendant has failed to prove that DW1 was duly authorized by way of a validly executed Power of Attorney, and the Board Resolution dated 31.01.2019 (Ex.DW1/1) does not bear stamp of the defendant company and has been self certified by the witness himself and there is no proof that any such Board Resolution was ever passed in his favour. While referring to the relevant portion of cross-examination of DW1, it is pointed out that the said Board Resolution was passed in Board Meeting held on 31-01-2019, whereas, the DW1 has certified the same as on 17.01.2019.
22.10 It is vehemently argued that the defendant is habitual infringer, as several cases have been instituted against it, which is evident from Ex.DW1/P1 (Colly.). While referring to the copy of order dated 03-05-2021, passed by Hon'ble Delhi High Court in case titled 'Alkem Laboratories Ltd.CS (COMM.)/59/2023 Page 32 of 66 -33-
v. SGS Pharmaceutical Pvt. Ltd' bearing CS (COMM.) /213/2021, which is part of Ex.DW1/P1 (Colly.), Ld. Counsel of plaintiff has argued that in the cited case, which was filed against the defendant herein, it has been observed by Hon'ble High Court that a compromise had been arrived at between the parties, whereby, the defendant therein has acknowledged and undertaken that they will not use the impugned trade mark DICLOMOLEC-C or any variation thereof which is identical or deceptively similar to the plaintiff's registered trade mark DICLOMOL, so as to amount to infringement of the plaintiff's registered trade mark, and passing off. In view thereof, Hon'ble Delhi High Court disposed off the above suit in terms of said compromise.
22.11 Likewise, in the other order dated 03-05-2021, in case titled as Alkem Laboratories Ltd. v. SGS Pharmaceutical Pvt. Ltd., bearing CS (COMM.)/213/2012, while dealing with an application under Order XXXIX Rules 1 & 2 CPC, the Hon'ble Delhi High Court passed an ad-interim injunction in favour of plaintiff and against the defendant herein, thereby restraining it from using the impugned trade mark/ blister strip SAMU or any other mark that is identical or deceptively similar to the trade mark blister strip of the plaintiff SUMO till further orders.
CS (COMM.)/59/2023 Page 33 of 66 -34-22.12 Thus, it is vehemently argued that the defendant is in the habit of copying well-established trade mark/ blister strip of other parties in order to take undue advantage of their established good will and reputation.
22.13 It is further argued that the impugned trade mark/ blister strip SGS PYRING is identical and/or phonetically, visually, confusingly and deceptively similar to the well established and registered trade mark ESGIPYRIN in all material particulars, such as, layout design, colour scheme, get up and lettering style etc., and therefore, the defendant may be restrained from using said impugned trade mark/ blister strip in respect of the impugned drugs.
23. In support of his contentions, Ld. Counsel of plaintiff also relied upon the following judgments:-
23.1 'Durgadutta v. Navratana', reported as AIR 1965 SC 980;
23.2 'Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.', reported as AIR 2001 SC 1952;
23.3 'Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co. & Ors.' reported as (1989) ILR 1 Delhi 115;
23.4 'Himalaya Wellness Company & Ors. v. Abony Healthcare Limited & Ors.' reported as MANU/DE/7129/2023;CS (COMM.)/59/2023 Page 34 of 66 -35-
23.5 'Midas Hygiene Industries (P)Ltd. & Anr. v. Sudhir Bhatia & Ors.' reported as (2004) 3 SCC 90;
23.6 'Colgate Palmolive Company & Ors. v. Anchor Health and Beauty Care Pvt. Ltd.' reported MANU/DE/1000/2003;
23.7 'G. D. Pharmaceuticals Pvt. Ltd. v. M/s Cento Products (India)' decided on 07-08-2024 having neutral citation 2024:DHC: 6224;
23.8 'Deere & Company & Anr. v. Mr. Malkit Singh & Ors.' decided on 23-04-2018, having neutral citation: 2008:DHC: 2637;
23.9 'Deere & Company & Anr. v. S. Harcharan Singh & Anr.' decided on 05-03-2015, having neutral citation: 2015: DHC: 2239;
23.10 'Laxmikant Patel v. Chetanbhat Shah', reported as AIR 2002 SC 275;
23.11 'B. K. Engineering Co. v. Ubhi Enterprises & Ors.' reported as AIR1985 Delhi2010;
23.12 Abbott Healthcare Pvt. Ltd. v. M/s Fizark Healthcare & Anr.' decided on 28-02-2017;
23.13 'Abbott Healthcare Pvt. Ltd. v. Uniplus Biotech Pvt. Ltd. & Ors.' bearing CS (OS) 3632/2014, decided on 25-10-2017;
23.14 'Corn Products Refining Co. v. Shangrila Food Products Ltd.' reported as MANU/SC/0115/1959;
and 23.15 'Glaxosmithkline Pharmaceuticals Ltd. v. Horizon CS (COMM.)/59/2023 Page 35 of 66 -36- Bioceuticals Pvt. Ltd. & Ors.' reported as MANU/DE/2320/2023.
DEFENDANT'S ARGUMENTS:
24. While repelling the aforesaid arguments advanced on behalf of the plaintiff and after referring to the evidence available on record, Ld. Counsel of defendant advanced the following arguments:-
24.1 The defendant company has got the license bearing no. 20 of 2001 [Ex.DW1/2] to start production and sale of its product under trademark "SGS PYRIN" from Uttar Pradesh Drug Licensing-cum-Controlling Authority and since then the defendant company is marketing and trading its goods/products in the market under trademark "SGS PYRIN".
24.2 The impugned mark "SGS PYRIN" is a combination of two words i.e. "SGS" and "PYRIN" and prefix word "SGS" is taken from the corporate name of the defendant company i.e. SGS PHARMACEUTICAL LTD.; so the usage word like "SGS" or "PYRIN" does not give any right to the plaintiff to prevent third parties from using any marks that include the said word like the mark "SGS PYRIN"
24.3 The impugned goods/products are in oval shape, whereas, the said goods/products of the plaintiff are in round shape. As regards colour scheme, CS (COMM.)/59/2023 Page 36 of 66 -37- the colour of strip packaging of defendant's product under mark "SGS PYRIN" is in sunset yellow & quinoline yellow. The composition of the impugned drug "SGS PYRIN" is Paracetamol 500 mg, and Diclofenac Sodium 50mg.
24.4 The goods of the plaintiff and the defendant comes under the category of Schedule 'H' drug as mentioned in Drug & Cosmetics Rules, 1955 and hence, same can only be sold on prescription of a Doctor, and also mentioned on each and every packet, hence, there is no likelihood of confusion amongst users, who are mostly educated persons of the society, and thus, no case is made out for passing off the plaintiff's trademark by the defendant.
24.5 The impugned mark i.e. "SGS PYRING" is specially created and adopted by the defendant in stylized form, which is completely different either visually, structurally or phonetically to the plaintiff's mark "ESGIPYRIN" and thus, there is no similarity between the competing marks and both marks are easily distinguishable.
24.6 There are so many trademarks, such as
"ESGIRAN "ESGIFEN" "ESGIPYRIN-N"
"ESGIC" "OXYPYRIN", registered with the
Registrar of Trademark prior to and after the plaintiff's mark "ESGIPYRIN" with the prefix word "ESGI" as well as suffix word "PYRIN"CS (COMM.)/59/2023 Page 37 of 66 -38-
and yet the plaintiff didn't raise any objection against them, nor the third parties raise any objection against the plaintiff.
24.7 The word "PYRIN" is a common word, which is used in pharmaceutical field, so usage or registration of word like 'PYRIN' does not give any right to the plaintiff to prevent third parties from using any marks that include the said word like the mark SGS PYRIN.
24.8 In view of above, it is contended that the impugned mark of the defendant i.e. "SGS PYRIN" is structurally, visually and phonetically different from the mark of the plaintiff, hence, the plaintiff has no right to restrain the defendant from using the impugned trademark.
25. In support of his aforesaid submissions, Ld. Counsel of defendant has relied upon the following judgments:-
25.1 "Macleods Pharmaceuticals Ltd. v. Swisskem Healthcare And Anr." reported as MANU/MH/1771/2019, decided on 02-07-2019;
and 25.2 "Sun Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd. & Ors." reported as MANU/DE/3092/2022;
CS (COMM.)/59/2023 Page 38 of 66 -39-ANALYSIS & FINDINGS
26. Before dealing with rival submissions made on behalf of both the sides, lets examine law on the subject. Hon'ble Supreme Court in case titled as "Renaissance Hotel Holdings Inc. v. B. Vijaya Sai & Ors" , reported as MANU/SC/0066/2022, has laid down law with respect to infringement of trade mark, to quote:-
43. The legislative scheme is clear that when the mark of the defendant is identical with the registered trade mark of the plaintiff and the goods or services covered are similar to the ones covered by such registered trade mark, it may be necessary to prove that it is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark. Similarly, when the trade mark of the plaintiff is similar to the registered trade mark of the defendant and the goods or services covered by such registered trade mark are identical or similar to the goods or services covered by such registered trade mark, it may again be necessary to establish that it is likely to cause confusion on the part of the public However, when the trade mark of the defendant is identical with the registered trade mark of the plaintiff and that the goods or services of the defendant are identical with the goods or services covered by registered trade mark, the Court shall presume that is likely to cause confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the distinction between the causes of action and right to relief in suits for passing off and for infringement of registered trade mark. It has been held that the essentials of a passing off action with those in respect of an action complaining of an infringement of a registered trade-mark, cannot be equated. It has been held that though an action for passing off is a Common Law remedy being an action for deceit, that is, a passing off by a person of his own goods as those of another; the action for infringement is a statutory right conferred on the registered proprietor of registered trade mark for the vindication of the exclusive rights to the use of the trade mark in relation to those goods. The use by the defendant of the trademark of the plaintiff is a sine qua non in the case of an action for infringement. It has further been held that if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact CS (COMM.)/59/2023 Page 39 of 66 -40- that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark, would be immaterial in case of infringement of the trade mark, whereas in the case of a passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.
47. It could thus be seen that this Court again reiterated that the question to be asked in an infringement action is as to whether the defendant is using a mark which is same as, or which, is a colourable imitation of the plaintiff's registered trade mark. It has further been held that though the get up of the defendant's goods may be so different from the plaintiff's goods and the prices may also be so different that there would be no probability of deception of the public, nevertheless even in such cases, i.e. in an infringement action, an injunction would be issued as soon as it is proved that defendant is improperly using the Plaintiff's mark. It has been reiterated that no case of actual deception nor any actual damage needs to be proved in such cases This Court has further held that though two actions are closely similar in some respects, in an action for infringement, where the defendant's trade mark is identical with the Plaintiff's trade mark, the Court will not enquire whether the infringement in such as is likely to deceive or cause confusion.
28. Further, our own Hon'ble High Court in the case titled as 'Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries Ltd'. 2003 (27) PTC 63 (Del) has laid down the principle as to how infringement of trade mark is to be seen, to quote:-
12. It is well settled that in an action for alleged infringement of a registered trade mark, if the impugned marked used by the defendant is identical with the registered trade mark of the plaintiffs, no further questions have been to be addressed and it has to be held that there is indeed an infringement. If the mark is not identical, the matter has to be further considered and it has to be seen whether the mark of the defendant is deceptively similar to that of the plaintiff. Deceptive similarity means that the mark is likely to deceive or cause confusion in relation to goods in respect of which the plaintiff got its mark CS (COMM.)/59/2023 Page 40 of 66 -41- registered. For the purpose of this comparison, the two marks have to be compared, not by placing them side by side, but by asking the question whether having due regard to relevant surrounding circumstances, defendant's mark is similar to that of the plaintiffs, as would be remembered by persons possessed of an average memory with its usual imperfections. On the touchstone of this query, it is to be determined whether the mark of the defendant is likely to deceive or cause confusion. The sequetur to the aforesaid preposition of law, is that, in an action of infringement, for the success by the plaintiff, he need not prove that the whole of his registered trade mark has been copied, but he can also succeed, if, he shows that the mark used by the defendant is similar to the mark of the plaintiff, as it would be numbered by persons possessed of an average memory with its usual imperfection or with its usual imperfection or that its essential particulars or the distinguishing or essential feature has been copied (ILR 197 (II) Delhi 225 Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya Para-7).
29. In view of above legal position, lets examine the facts of the present case.
30. In the case in hand, the plaintiff has relied upon and has filed copy of Legal Proceeding Certificate pertaining to its registered trademark 'ESGIPYRIN', which is duly proved by PW-1 as Ex.PW1/2, according to which, it is shown that said trademark is registered as a 'word' mark in class 5, vide No.293710 in plaintiff's name. PW-1 has also referred to copy of Assignment Deed dated September 8, 2010 as Mark E, whereby the 'Piramal Healthcare Limited' had assigned the said trademark to the plaintiff.
Although, said document was marked during the testimony of PW1 for want of its original being produced by the witness, nevertheless, the defendant did not put any question disputing genuineness and authenticity of the said document, during cross-examination of said witness. Same reasoning equally applies to other documents i.e. Copy of CS (COMM.)/59/2023 Page 41 of 66 -42- amalgamation order dated 27-03-1981 (Mark A), Copy of Assignment Deed dated 03-10-1997 (Mark B) and Copy of Certificate regarding Change of name of Nicholas Piramal (India) Ltd. to Piramal Healthcare Ltd. (Mark D). Thus, this Court is of the considered view that said documents having remained unchallenged and uncontroverted from the side of the defendant, can be looked into by the Court, it being relevant for the effective and proper adjudication of the subject matter of the present case. Further, during the course of final arguments, counsel of plaintiff has stated that the registration of said trademark stands renewed and is valid till date. According to above-mentioned documents, it is duly shown that said trademark 'ESGIPYRIN' is registered in favour of the plaintiff and/or its predecessors since 1974.
31. Thus, it is duly established on record that the said trade-
mark ESGIPYRIN is registered under the provisions of Trade Mark Act, 1999, which is stated to be valid and subsisting as on date in favour of the plaintiff in class 5.
27. PW1, in her cross-examination, has stated that Fresh Power of Attorney dated 05.01.2024 (Ex.PW-1/1), as referred to in Para-2 of her affidavit (Ex.PW-1/A), is placed between pages 17 & 19 and is mentioned as renewed Power of Attorney in the relevant Index dated 19.02.2024 at serial No.2 thereof and apart from that, at the time of institution of the present suit, Power of Attorney dated 20.01.2016 had also been filed, which is between pages 179 to 181 and is mentioned at serial No.21 CS (COMM.)/59/2023 Page 42 of 66 -43- of the list of documents dated 05.09.2019 filed by the plaintiff. She stated that she had also brought with her on the date of her cross-examination, three original Powers of Attorney, one dated 24.01.2018, the second dated 24.07.2021 and the third dated 05.01.2024, which are original of the aforesaid Ex.PW-1/1.Copies of the said attorneys dated 24.01.2018 and other dated 24.07.2021 were also supplied to Ld. Counsel of the defendant and their photocopies were collectively marked as Ex.PW-1/1A (Colly.). She further stated that the Power of Attorney dated 20.01.2016, which had been filed and which is between pages 179 to 181 and is mentioned at serial No.21 of the list of documents dated 05.09.2019 filed by the Plaintiff, had been executed by Mr. Durgesh Paliwal, Company Secretary, which is Ex.PW-1/1B (Pages 179-181). Mr. Durgesh Paliwal, Company Secretary was authorized to execute the said Power of Attorney (Ex.PW-1/1B). She had brought with her extracts of the Board Resolutions dated 24.01.2018 and 05.01.2024 duly certified by the Company Secretary and copies thereof were collectively marked as Ex.PW-1/1C.(Their copies were also duly supplied to the defendant side). She testified that she could bring copies of the Board Resolutions dated 15.01.2016 and 20.07.2021.
28. In response to the question as to whether, she could bring the original Minutes Book containing all the four aforesaid Resolutions (which was objected to by Ld. Counsel for the plaintiff on the ground that the question was not relevant to CS (COMM.)/59/2023 Page 43 of 66 -44- the present dispute and no such issue was framed with regard thereto in the absence of any pleading of the defendant in this regard), PW1 stated that she could not bring the original Minutes Book.
29. In response to question put to her during her cross-
examination as to how the plaintiff company invented the Trademark "ESGIPYRIN", she stated that "ESGIPYRIN" was invented by the plaintiff company's predecessor in title and the first Proprietor thereof, M/s Suhrid Geigy Limited and "ESGIPYRIN" is a completely coined word, which has no relation to the active ingredients " Diclofenac Sodium and Paracetamol Preparations". In response to further question put to PW1 during cross-examination as to how did the mark "ESGIPYRIN" come to the plaintiff company, she stated that it came to the plaintiff company by virtue of Ex.PW1/3 to Ex.PW1/8 [It should be Mark A, B, C, D, E and Ex.PW1/8]. She stated that there is an overall similarity between "ESGIPYRIN", which is the Trademark of the plaintiff and the product 'SGS PYRIN' of the defendant and this has been clearly mentioned in the affidavit. "ESGIPYRIN" and 'SGS PYRIN' have the same use and also their active ingredients are also the same. Also their packaging, designs, colours, sizes and shape, are identical.
30. Further cross-examination of PW1 was deferred and it was resumed on 01-07-2024, on which date, she stated that she had brought with her certified true copies of the Board Resolutions dated 15-01-2016 and 20-07-2021, certified by CS (COMM.)/59/2023 Page 44 of 66 -45- Mr. Durgesh Paliwal, Company Secretary, ACS 13334 of the plaintiff company and copies thereof were proved as Ex.PW1/X1 & Ex.PW1/X2 respectively. However, she could not remember the names of the directors who had attended the Board Meetings on the said dates, when the said resolutions were passed. No further question was asked from her by the defendant with regard to said Board Resolutions and thus, the defendant could not create any doubt or suspicion with regard to their authenticity and genuineness.
31. Thus, it is established on record that PW1 was competent and duly authorized by the plaintiff company to represent it in the present case and hence, there is no doubt regarding her competence to depose in this matter. It is also established on record that the said mark was previously registered in favour of predecessors in interest of the plaintiff, who further assigned the trade mark to the plaintiff, as has been established from relevant documents i.e. Marks A, B, C, D, E and Ex.PW1/8, which are copies of amalgamation order dated 27-03-1981; Deed Of Assignment dated 03-10-1997 between Ambala Sarabhai Enterprises Ltd. and Sarabhai Piramal Pharmaceuticals; Order dated 27-04-2004 passed by Hon'ble Bombay High Court for amalgamation of Sarabhai Piramal Pharmaceuticals with Nicholas Piramal India Ltd.; Certificate of change of name of Nicholas Piramal (India) Ltd. to Piramal Healthcare Ltd.; Deed of Assignment dated 08-09-2010 between the plaintiff and Piramal Healthcare CS (COMM.)/59/2023 Page 45 of 66 -46- Ltd; and Certificate of IMS, Health Information & Consultant Service India Pvt. Ltd. showing the plaintiff as the lawful owner of the product bearing mark ESGIPYRING, respectively.
32. During cross-examination of DW1, after seeing the written statement filed by defendant, DW1 deposed that it was signed by his father namely Mr. Vipin Gupta and the verification clause of the said written statement mentions that his father had signed the same as Authorized Representative of the defendant company. However, he testified that there is no separate authorization in favour of his father, as may be placed on record. However, DW1 claimed that his father had signed the written statement being Director of the defendant company and therefore, he was an Authorized Representative also.
33. However, it may be noted here that no such Board Resolution even in favour of his father namely Mr. Vipin Gupta, has been placed on record, what to say of being proved during trial. In response to the question put to DW1 that no such Board Resolution in favour of Sh. Vipin Gupta has been placed on record, he stated that it was prepared, but he did not know whether it has been placed in the file or not.
34. The DW1 was shown Board Resolution placed at page no.38 along with the list of documents dated 16.03.2023 of the defendant and asked to tell in whose name the said resolution was passed, thereafter, he stated that it was passed in his name/favour. The said Board Resolution was, CS (COMM.)/59/2023 Page 46 of 66 -47- thereafter,marked as Mark-A for the purpose of identification by Ld. LC.
35. In response to further question put to DW1 during cross-
examination, he stated that Mr. Vipin Gupta has no role to play in the defendant company and no document authorizing him, has been filed.
36. During his further cross-examination, the attention of DW1 was drawn towards Board Resolution identified as Ex.DW-1/1, according to which, the Board meeting was held on 31.01.2019, whereas, DW1 had certified the same on 17.01.2019 and then, he was asked as to which of the dates is correct, to which, he stated that there is some clerical error and which date out of the two is correct, can be verified from the office record.
37. During his further cross-examination dated 29.07.2024, DW1 stated that his affidavit in evidence (Ex.DW-1/A) was drafted by his lawyer and after drafting thereof, he did not go through its contents (emphasis provided), however, he admitted his signatures at points A & 'B' on the last page thereof.
38. DW1 was asked to go through paragraph no.7 of his affidavit (Ex.DW-1/A) and thereafter, he was asked to provide the composition of the product 'SGS PYRIN' of the defendant, to which, he gave evasive answer and stated that he did not know about the said composition, but it is reflected in Ex.DW-1/4, which is shown to be CS (COMM.)/59/2023 Page 47 of 66 -48- "Paracetamol (325mg) & Diclofenac Sodium (50mg) Tablets IP".
39. In response to the suggestion put to DW1 that his deposition in Para no. 7 of the affidavit (Ex.DW-1/A), is false, he again gave evasive answer and stated that unless he knew the composition of the plaintiff's product i.e. ESGIPYRIN, he would not be able to comment on its composition.
40. In response to another suggestion that he was neither competent to depose on behalf of defendant, nor he was aware of the facts of this case, DW1 again gave evasive answer and stated that he did not know what reply to give.
41. Thus, it is quite evident from above discussion that the defendant company has failed to establish that DW1 Mr. Nimish Gupta was duly authorized by it to depose as a witness on its behalf. As already noted above, DW1 not only failed to produce Minutes Book, if any, containing the so called Board Resolution dated 31-01-2019, whereby, it had allegedly empowered DW1 to appear as a witness on its behalf, but also failed to prove that he was otherwise competent witness to depose on behalf of the defendant company, being not familiar with the facts of the present case. As a matter of record, DW1 could not even disclose as to whether or not any Board Resolution was passed in favour of Mr. Vipin Gupta, who is his father, by the defendant company and whether or not such Board Resolution was filed along with written statement in this matter.It is relevant to note that the written statement filed CS (COMM.)/59/2023 Page 48 of 66 -49- by defendant is claimed to be signed by said Mr. Vipin Gupta, as director/ authorized representative of the defendant company. Indisputably, the defendant company has not filed any Board Resolution passed by it, thereby authorizing said Mr. Vipin Gupta to sign, verify, or to file the written statement on its behalf. So much so, there is nothing on record to show that Mr. Vipin Gupta is in fact director/principal officer of the defendant company within the meaning of Order XXIX CPC. That being so, this Court finds considerable force in the argument advanced on behalf of plaintiff that for want of any proper authorization in favour of Mr. Vipin Gupta, being placed on record, it cannot be said that the written statement has been signed by the competent person. Hence, such written statement, for want of proper authorization, is no proper written statement in the eyes of law.
42. Further, even copy of extracts of so called Board Resolution dated 31-01-2019 (Ex.DW1/1) is shown to be self certified by DW1 himself and that too on 17-01-2019. It is not understandable as to when Board Resolution was passed on 31-01-2019, then how DW1 could self certify the extracts thereof on 17-01-2019, which is prior in time to the passing of so called Board Resolution. Moreover, the Board Resolution (Ex.DW1/1) neither bears any stamp, nor common seal of the defendant company. All these circumstances create ample doubt on the authenticity and genuineness of Ex.DW1/1, as also the factum of any such Board Resolution being ever passed by the defendant CS (COMM.)/59/2023 Page 49 of 66 -50- company in favour of DW1. For all these reasons, the entire testimony of DW1 namely Mr. Nimish Gupta, needs to be discarded. Once the testimony of DW1 is excluded from consideration, there is virtually no evidence led from the side of the defendant company during trial.
43. Apart from above, in response to further question put to DW1 during his further cross-examination that he had not filed any document such as manufacturing record, sales invoices, promotion material, to support his claim made in paragraph 6 of affidavit [Ex.DW1/A], he stated that he had already filed product permission, which according to him, was the manufacturing record. He did not know whether sales invoices have been filed or not in the present case and whatever documents had been asked for by his lawyer, the same had been provided to him. He stated that the defendant did not have any promotion material. In response to another question, he stated that no supporting document had been filed in support of paragraph 8 of his affidavit [Ex.DW1/A], however, he stated that documents for the first batch which they manufactured, can be provided. In response to further question as to whether he was currently manufacturing SGS PYRIN, he answered in negative. However, he stated that he did not remember since when they stopped manufacturing SGS PYRIN but he stated that the last date of its manufacturing, can be provided.
44. In response to further question as to whether he placed anything on record in support of paragraph 9 of his CS (COMM.)/59/2023 Page 50 of 66 -51- affidavit [Ex.DW1/A], as also whether he had placed on record any other product manufactured by the defendant with the prefix SGS, he replied in negative, however, he claimed that they can provide the same. In response to further question, he denied that Trade Marks SGS PYRIN and ESGIPYRIN are phonetically similar.
45. In response to further question as to how and why did the defendant adopt the word PYRIN in its Trade Mark SGS PYRIN, he stated that PYRIN comes from the word PYRIETIC which means pain and their product SGS PYRIN is a pain killer. In response to further question put to DW1 during his further cross-examination that his explanation for adoption of the mark SGS PYRIN, is an afterthought, he stated that he did not know how to answer this question. However, it may be mentioned here that the defendant never raised this plea/defence in its written statement available on record.
46. In response to further question, he stated that he was not part of the defendant company in 2001, when this Trade Mark SGS PYRIN was adopted.
47. During his further cross-examination, DW1 was shown paragraph 13 of his affidavit [Ex.DW1/A] and asked that out of three primary colours i.e. Blue, Red and Yellow, why did the defendant choose the yellow colour for his strip packaging, he gave evasive answer while stating that there is no specific reason for choosing the yellow colour.
48. DW1 was also shown paragraph 24 of his affidavit CS (COMM.)/59/2023 Page 51 of 66 -52- Ex.DW-1/A and asked whether he had checked the status of the registration/application listed in the said para, he stated that he had not checked the same personally, but would have been checked by his lawyer.
49. In reply to further question put to DW1 during his cross-
examination, that he had not produced even a single medicine using the word PYRIN either as suffix or as prefix and therefore, his claim that PYRIN is a common word, is false, he stated that if a search is made on google in respect of the names of medicines mentioned in paragraph 24 of his affidavit (Ex.DW1/A), it would be clear that PYRIN is a commonly used suffix. He denied the suggestion that the defendant has copied the Trade Mark of the plaintiff and has also copied yellow strip of the plaintiff.
50. Further, as already noted above, the Local Commissioner had also found infringed goods bearing impugned trademark from the premises of the defendant at the time of execution of commission. As per Inventory of Goods Seized, which is part of report of Ld. Local Commissioner, 1270 empty box/ duplex box and duplex box containing 190 tablets, were recovered from the premises of defendant and were handed over to officials of the defendant on superdarinama. The defendant, throughout the trial, did not dispute the said report of Ld. Local Commissioner by not filing any objection against the said report and thus, the report of Ld. Local Commissioner remained uncontroverted and unchallenged from the side of the CS (COMM.)/59/2023 Page 52 of 66 -53- defendant. Moreover, it is trite law that report of local commissioner can be read in evidence in terms of Order XXVI Rule 10(2) CPC, as held by our own Hon'ble High Court in the cited case of M. L. Brother LLP (supra).
51. It is relevant to note that the composition of the drugs of the plaintiff bearing its trade mark ESGIPYRIN, is being used in relation with 'Diclofenac Sodium and Paracetamol preparations' and DW1 has also admitted in his cross- examination dated 29-07-2024 that the impugned drugs bearing the impugned mark SGS PYRIN contained composition of 'Paracetamol (325 mg) and Diclofenac Sodium (50 mg)', which would show that even the composition of the said drugs bearing the trade mark of plaintiff and the impugned mark of the defendant, is also similar. Pertinently, DW1 has claimed that the term 'PYRIN' comes from the word 'PYRIETIC', which means pain and the goods of the defendant bearing mark SGS PYRIN is a pain killer, however, no cogent or positive evidence to establish this fact, has been led from the side of the defendant during trial.
52. Although, the defendant claimed in the written statement that it has been using the impugned mark SGS PYRIN for the last about 17 years and it carries a very good reputation in the market, however, no iota of evidence is available on record from the side of the defendant, to substantiate the said claim. It is important to note that the defendant has not filed any document showing its year-wise sales since commencement of the impugned goods bearing the CS (COMM.)/59/2023 Page 53 of 66 -54- impugned trade mark till the date of filing of its written statement. Thus, the defendant has failed to establish that it carries reputation and/or goodwill in respect of the impugned goods bearing the impugned mark. In this regard, it is also useful to mention here that DW1 claimed that the impugned mark SGS PYRIN was adopted by defendant in the year 2001, but fairly conceded that he was not even part of the defendant company at that time. So much so, he could not even offer any explanation for adoption of the impugned mark SGS PYRIN by the defendant.
53. Further, the defendant alleged in the written statement that so many other firms/ entities have also been using the impugned mark either by way of prefix or by way of suffix, however, the defendant has failed to lead any evidence in this regard and thus, such plea remained unproved during trial.
54. The Court finds considerable force in the arguments advanced on behalf of plaintiff that the mala fide intention of defendant to do piggy ride on the shoulder of the plaintiff company, is quite evident from the fact that the defendant has intentionally and deliberately chose the yellow colour for their strip packaging, which is exactly the same colour which was already being used by the plaintiff for their strip packaging in respect of the same drug. As already noted above, DW1 could not provide any specific reason for choosing the Yellow colour out of three primary colours i.e. Blue, Red and Yellow.
CS (COMM.)/59/2023 Page 54 of 66 -55-55. Apart from that, the defendant has not led any piece of evidence showing that it has been using the mark having 'SGS' either as prefix or suffix, in respect of other drugs being manufactured by them. Same would nullify their defence taken in written statement that the impugned mark SGS PYRIN is a combination of two words i.e. "SGS" and "PYRIN", out of which the word "SGS" is taken from its corporate name i.e. SGS Pharmaceuticals Ltd. The defendant has also failed to establish during trial the word 'PYRIN' is a common word being used in pharmaceutical field or for that reason its usage or registration does not give any right to the plaintiff to prevent third party from using any mark, which includes the word 'PYRIN'.
56. Both the cited decisions relied on behalf of defendant, are entirely distinguishable from the facts and circumstances of the present case, in view of the reasons already mentioned hereinabove and thus, same are of no help to the case of the defendant.
57. In the cited case of M/s Fizark Healthcare & Anr (supra), which was filed by the plaintiff herein, Hon'ble Delhi High Court partly decreed the suit in favour of plaintiff and against the defendant. In the cited case, the defendant was using the impugned trade mark/ trade dress/ colour scheme (yellow) ESGIPYRING, which was claimed to be identical and deceptively similar to trade mark/ trade dress/ colour scheme of EASIPYRIN of the plaintiff therein. The CS (COMM.)/59/2023 Page 55 of 66 -56- relevant portion of the said judgment is extracted here as under:-
"xxxx
8. A comparison of the plaintiffs registered trademark with the defendants' mark itself is sufficient to record satisfaction that the plaintiff's grievances are genuine and well founded. Both the marks are phonetically similar in relation to identical medicinal preparations. Since the plaintiff's trademark has been in prior use, the defendants having not entered appearance so as to plead that it has any registration with regard to mark under which it is selling its products or to raise any other valid defences available in law, the use of the impugned mark by the defendants, in the given facts and circumstances, must be held to be infringing the trademark of the plaintiff's use with regard to similar goods.The stark similarity of the packaging and trade dress is also proved by the plaintiff's evidence to which there has been no contest whatsoever. xxxx
10. xxx
(c) in packaging or using trade dress which is deceptive imitation or substantive reproduction of that of the plaintiff's product.
xxxx"
58. Now reverting back to the facts of the present case.
As already mentioned hereinbefore, the plaintiff has duly established that the products of the defendant are sold in yellow colour strip that is visually identical to strip packaging of the plaintiff's 'ESGIPYRIN' and which is deceptively similar to the plaintiff's registered trade mark 'ESGIPYRIN' thereby resulting into the acts of infringement and passing off. For this purpose, it would be necessary to reproduce the photographs of impugned packaging/ strip vis-a-vis the packaging/ strip of the plaintiff. Same is shown here as under:-
CS (COMM.)/59/2023 Page 56 of 66 -57-ESGIPYRIN SGS PYRIN
59. Thus, it is quite evident from above that there is stark similarity of the packaging and trade dress of the impugned goods bearing the impugned mark SGS PYRIN, which is deceptively imitation and/or substantive reproduction of the packaging and trade dress of the plaintiff.
60. Thus, in totality of the facts and circumstances of the case, the Court is of the view that the plaintiff has succeeded in proving that the defendant was manufacturing, stocking, distributing and selling goods bearing falsified trademark / trade dress / colour scheme SGS PYRIN which are deceptively and confusingly similar to the plaintiff's CS (COMM.)/59/2023 Page 57 of 66 -58- registered trade mark / trade dress/ colour scheme 'ESGIPYRIN' and therefore, trademark and copyright of plaintiff company are required to be protected. Accordingly, the plaintiff is held entitled to decree of permanent injunction, whereby the defendant is liable be restrained from using trade mark/ trade dress/ colour scheme SGS PYRIN or any other trade mark/ trade dress/ colour scheme which may be identical with and/ or deceptively similar to the plaintiff's said trade mark /trade dress / colour scheme 'ESGIPYRIN' in relation to similar goods, thereby infringing plaintiff's registered trademark, copyright and passing off its products as that of the plaintiff. Accordingly, all these three issues are decided in these terms.
ISSUE NO.4
32. Now, I shall take up the issue no. 4 regarding delivery up, which is reproduced here as under: -
Issue no.(iv) - The onus to prove the aforesaid issues was placed upon the plaintiff. As already noted above, in order to prove its case, the plaintiff has examined sole witness as PW1, who has deposed on the identical lines of the plaint, by way of her affidavit in evidence (Ex.PW1/A).
33. As already discussed, the infringed goods bearing falsified trademark/label/ trade dress/ colour scheme of the plaintiff company were seized by the Local Commissioner and were returned to the defendant on superdari. Therefore, the defendant is directed to delivery up all above seized infringed goods, besides all other impugned finished and CS (COMM.)/59/2023 Page 58 of 66 -59- unfinished materials bearing the impugned and violative trade mark/ label / trade dress / colour combination to the plaintiff company for the purpose of destruction and erasure. In view thereof, superdarinama is hereby cancelled. This issue stands decided accordingly.
ISSUE NO. 5.
34. Now, I shall take up the issue no. 5 regarding rendition of accounts, which is reproduced here as under: -
Issue no. (v) - Whether the plaintiff is entitled to rendition of accounts of profits earned by defendant by their impugned illegal trade activities, as prayed for? If so, for what amount? OPP.
35. The onus to prove aforesaid issue was placed upon the plaintiff. However, during the course of submission, Ld. Counsel of plaintiff, on instructions, has submitted that plaintiff is not pressing aforesaid issue regarding rendition of accounts and instead thereof, the plaintiff is pressing for award of damages.
36. In this regard, it has been submitted by Ld. Counsel of plaintiff that despite grant of ad interim injunction against the defendant company, whereby, it was restrained from manufacturing, selling, using, displaying, advertising, importing/ exporting or by any other mode dealing with the impugned trade mark/ label 'SGS PYRIN', which is identical with or deceptively similar to plaintiff's trademark in relation to their impugned drugs, it has been still indulging in the impugned activities, which is duly CS (COMM.)/59/2023 Page 59 of 66 -60- established during trial and hence, he contended that exemplary damages may be granted in favour of plaintiff and against the defendant. In support of his said submission, Ld. Counsel of the plaintiff has relied upon the following judgments:-
36.1 'Puma Se v. Ashok Kumar', having neutral citation 2023: DHC: 7696;
36.2 'Christian Louboutin v. Ashish Bansal' reported as 2018 (75) PTC 353;
36.3 'Disney Enterprises Inc. v. Rajesh Bharti & Ors. ' reported as MANU/DE/0454/2013;
36.4 'Microsoft Corporation v. Rajendra Pawan & Ors. ' reported as MANU/DE/9851/2007;
36.5 'Koninlijke Philips N. V. and Ors. v. Amazestore and Ors.' reported as 260 (2019) DLT 135; and 36.6 'Adidas AG & Ors. v. Praveen Kumar & Ors.' reported as MANU/DE/1708/2019
37. In order to appreciate the aforesaid contention raised on behalf of plaintiff, which was disputed from the side of the defendant, it would be necessary to refer to the relevant portion of cross-examination of DW1, which would throw ample light on the point in issue.
38. In response to question put to DW1 on behalf of plaintiff that is he currently manufacturing SGS PYRIN, he replied in negative by deposing that they aren't, however, he did not remember since when they stopped manufacturing SGS CS (COMM.)/59/2023 Page 60 of 66 -61- PYRIN, and testified that the last date of its manufacturing, can be provided. However, on being confronted with the box packaging (Art work) and strip packaging placed at page Nos.15 & 16 along with his said affidavit, he admitted that same were of the defendant and were accordingly exhibited as Ex.DW1/3 & Ex.DW1/4 respectively. He further admitted that strip packaging Ex.DW1/4 mentions the month and year of manufacturing as "MFG.11/2021" in the encircled portion at point "A". It is relevant to note that the present suit was filed in the year 2018 and Ld. Local Commissioner was appointed to visit and search the premises of the defendant company, vide order dated 11-09-2018, passed by Ld. Predecessor of this Court. The interim injunction order was also passed in favour of plaintiff and against the defendant on 11-09-2018.
39. Further, it may be noted that DW1 had the audacity to depose during cross-examination that he was not aware of the fact that by virtue of order dated 11.09.2018 passed by the Court, the defendant was restrained from manufacturing, selling, using, displaying, advertising, importing/exporting or by any other mode dealing with the impugned trademark label 'SGS PYRIN identical with or deceptively similar to the plaintiff's trademark in relation to their impugned drugs till next date of hearing.
He volunteered that this might be in the knowledge of his father or the legal team of the defendant company. He stated that he look after the unit of the defendant in CS (COMM.)/59/2023 Page 61 of 66 -62- Haridwar and the unit at Ghaziabad is being looked after by his father Sh. Vipin Gupta.
40. In response to the question put to him that the defendant had willfully violated the interim order dated 11.09.2018 passed in the present case by this Court, he feigned ignorance and stated that he was not aware of the said order and therefore, he could not comment thereon.
41. In response to further question that several Trade Mark infringement cases have been brought against the defendant company and is a habitual infringer, he stated that there are several cases and they won some of them and therefore, they are not habitual infringers. After having seen orders dated 29.05.2005, 03.05.2021 and 27.02.2024 passed by the Hon'ble Delhi High Court against the defendant company, he stated that the said orders were passed by the Hon'ble Delhi High Court but two of them, which are subject matters of CS(OS)201/2005 and CS (COMM)213/2021, were settled between the parties. These orders are Ex.DW1/P1 (Colly.).
42. Thus, it is established on record that despite operation of ad interim injunction against the defendant, it was still manufacturing and selling its impugned goods under the said impugned trade mark/ label SGS PYRIN, which is duly reflected from strip packaging [Ex.DW1/4] wherein, manufacturing is shown "MFG.11/2021" in the encircled portion at point "A", which is admitted by DW1. Hence, this Court finds considerable force in the arguments advanced on behalf of the plaintiff that the defendant did CS (COMM.)/59/2023 Page 62 of 66 -63- not care to abide by the interim injunction order dated 11-09-2018 (supra) and kept on indulging in manufacturing of the impugned goods bearing the impugned mark, which is shown to be in violation of said order.
43. As already noted above, the Local Commissioner, while executing the commission, found and seized infringed goods from premises of the defendant in their presence and handed over the same to them on superdari. It is evident from the said report that the defendant was manufacturing, stocking and selling/ passing off the infringed goods bearing impugned trade mark / label/ trade dress as that of the plaintiff' products, thereby causing wrongful loss to plaintiff company and would have earned illegal profit. Further, if the seized infringed goods would have gone to the hands of the consumer/ general public, the reputation/goodwill of the plaintiff company would have gone down in the eyes of consumer/ general public as infringed goods were of average quality and were not up to the quality which is claimed by the plaintiff company.
44. After referring to the judicial precedents and the law governing grant of damages in matters regarding infringement of trade mark, copy right and passing off, the Hon'ble Delhi High Court in the cited case of Koninlijke Philips (supra) has laid down the parameters for quantifying such damages. The relevant portion of the said judgment is extracted here as under:-
CS (COMM.)/59/2023 Page 63 of 66 -64-"xxxx
40. Keeping in view aforesaid, the Court is of the view that the rule of thump that could be followed while granting damages can be summerised in a chart as under:-
# Degree of mala fide conduct Proportionate award
(i) First-time innocent infringer Injunction
(ii) First-time knowing infringer Injunction + Partial Costs
(iii) Repeated knowing infringer Injunction + Costs which causes minor impact to + Partial damages the plaintiff
(iv) Repeated knowing infringer Injunction + Costs which causes major impact to + Compensatory the plaintiff damages
(v) Infringement which was Injunction + Costs deliberate and calculated + Aggravated (Gangster/ scam/ mafia) + damages wilful contempt of order (compensatory + additional damages) xxxx"
45. Keeping in view the overall facts and circumstances of the present case including the quantum of infringed goods bearing impugned trademarks / labels as found by Ld. Local Commissioner while executing the commission and the fact that despite operation of injunction order, the defendant is found to be still indulging in the impugned activities thereby manufacturing and selling impugned goods, under the impugned Trade Mark/trade dress/ colour, and in view of the law laid down by Hon'ble Delhi High Court in the above referred decision, this Court is of the opinion that case of the plaintiff falls under the fourth category i.e. Repeated knowing infringer which causes major impact to the plaintiff, and thus, this Court is of the view that the plaintiff CS (COMM.)/59/2023 Page 64 of 66 -65- is entitled to damages quantified at ₹7,50,000/- (Rupees Seven Lacs and Fifty Thousand only) to be recovered from the defendant towards costs and compensation. The issue stands decided in these terms.
RELIEF:
46. In the light of the aforesaid discussion, the Court is of the view that the plaintiff has been able to prove its case on the basis of preponderance of probability. Thus, the suit is decreed in favour of the plaintiff and against the defendant and the following reliefs are granted:-
46.1 Suit is decreed in favour of plaintiff and against the defendant qua permanent injunction thereby restraining the defendant by themselves as also through their individual proprietor/ partners, agents, representative, distributors, assigns, heirs, successors, stockists and all others acting for and on their behalf from manufacturing, trading, selling and offering for sale, advertising, directly or indirectly, medicinal and pharmaceutical preparations under the trade mark SGS PYRIN or any other word mark/ mark/ trade mark/ label/ trade dress/ colour scheme which may be identical with and/ or deceptively similar to the plaintiff's said trade mark / trade dress/ colour scheme ESGIPYRIN in relation to similar goods, thereby infringing plaintiff's registered trademark, copyright and passing off their products as that of the plaintiff.CS (COMM.)/59/2023 Page 65 of 66 -66-
46.2 Suit is also decreed in favour of plaintiff and against the defendant qua delivery up of all seized semi finished and finished articles besides all other impugned finished and unfinished materials bearing the impugned and violative trade mark/ label of plaintiff company and superdarinama is hereby cancelled.
46.3 Plaintiff is entitled to recover ₹7,50,000/- (Rupees Seven Lacs and Fifty Thousand only) from the defendant towards costs and compensation; and 46.4 Costs of the legal proceedings is also awarded in favour of the plaintiff.
47. Decree sheet be prepared accordingly.
48. File be consigned to Record Room, after due compliance.Digitally signed by VIDYA
Announced in the open court VIDYA PRAKASH PRAKASH Date:
on 3rd of June, 2025 2025.06.03
17:00:09 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02 PATIALA HOUSE COURTS, NEW DELHI CS (COMM.)/59/2023 Page 66 of 66