Delhi High Court - Orders
Alkem Laboratories Ltd vs Scott Edil Pharmacia Ltd & Anr on 25 May, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~32
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 345/2023
ALKEM LABORATORIES LTD ..... Plaintiff
Through: Mr. Jayant K. Mehta, Senior
Advocate with Ms. Ishani Chandra,
Ms. Mehek Dua and Ms. K. Natasha,
Advocates.
versus
SCOTT EDIL PHARMACIA LTD & ANR. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 25.05.2023 I.A. 10245/2023 (under Order XI Rule 1(4) (as amended by the Commercial Courts Act, 2015) r/w Section 151 of the Code of Civil Procedure, 1908 ['CPC'] seeking leave to file additional documents)
1. This is an application seeking leave to file additional documents under the Commercial Courts Act, 2015.
2. Plaintiff, if they wish to file additional documents at a later stage, shall do so strictly as per the provisions of the said Act.
3. Disposed of.
I.A. 10246/2023(under Section 151 of CPC seeking exemption)
4. Exemption is granted, subject to all just exceptions.
5. Plaintiff shall file legible and clearer copies of exempted documents, CS(COMM) 345/2023 Page 1 of 6 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 25/09/2023 at 06:29:10 compliant with practice rules, before the next date of hearing.
6. Disposed of.
I.A. 10247/2023 (under Section 151 of CPC seeking exemption from pre- institution mediation)
7. Having regard to the facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd.,1 exemption from attempting pre- institution mediation is allowed.
8. Disposed of.
CS(COMM) 345/2023
9. Let the plaint be registered as a suit.
10. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement(s) shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
11. Liberty is given to the Plaintiff to file replication(s) within 15 days of the receipt of the written statement(s). Along with the replication(s), if any, filed by the Plaintiff, affidavit(s) of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication(s) shall not be taken on record. If any of the parties wish to seek inspection of any documents, the same shall be sought and given within the timelines.
1DHC Neutral Citation: 2022/DHC/004454.
CS(COMM) 345/2023 Page 2 of 6This 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 25/09/2023 at 06:29:10
12. List before the Joint Registrar for marking of exhibits on 29th August, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
13. List before Court for framing of issues thereafter.
I.A. 10244/2023(under Order XXXIX Rules 1 and 2 of CPC)
14. The present suit pertains to Plaintiff's rights in the mark "SUMO" in relation to medicinal/ pharmaceutical preparations and products, and seeks permanent injunction restraining infringement of Plaintiff's trademark, copyright as also passing off, among other reliefs.
15. Mr. Jayant K. Mehta, Senior Counsel for the Plaintiff, has set up the Plaintiff's case as under:
15.1. Plaintiff is a company engaged in the development, manufacturing and sale of various kinds of medicinal and pharmaceutical preparations, which are sold under the trademark "SUMO" and formatives thereof, since 1999. Particulars of registration of various "SUMO" marks in various classes such as Class 5 and 29, are provided at paragraph 10 of the plaint [hereinafter collectively "SUMO family of marks"].
15.2. Plaintiff has garnered substantial goodwill and reputation in the market on account of promotion and continuous use of the 'SUMO'/ 'SUMO family of marks'. The details of the annual sales figures and promotional expenses are provided at paragraph 12 in the plaint. 15.3. In July, 2021, Plaintiff came across a product, "ZUMO Nimesulide and Paracetamol" tablets [hereinafter "impugned product"] being sold by Defendants, bearing the mark "ZUMO" [hereinafter "impugned mark"] which is nearly identical/ deceptively similar to Plaintiff's mark "SUMO".CS(COMM) 345/2023 Page 3 of 6
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 25/09/2023 at 06:29:11 Further, the trade dress of impugned product substantially reproduces the unique and distinctive artistic work on the blister strip of Plaintiff's said product which is evident from the colour scheme, layout, arrangement of features, blister strip packaging etc. Both the medicines, sold by Plaintiff and Defendants, contain the same ingredients i.e., Nimesulide and Paracetamol, and are prescribed as painkillers to patients. 15.4. Defendant No. 1, Scott Edil Pharmacia Ltd. is the manufacturer and marketer of the impugned products and Defendant No. 2, Scott-Edil Advance Research Laboratories, is involved in the research and manufacture of the said products in collusion with Defendant No. 1. 15.5. Defendant No. 1 has filed two applications for registration of the impugned mark in class 5,2 claiming user since 27th August, 2008, which have been opposed by Plaintiff before the Trademarks Registry. In the counter statement to the opposition, Defendant No. 1 has not substantiated the aforenoted user claim.
15.6. Plaintiff issued legal notices on 22nd July, 2021 and 20th August, 2021 to Defendants calling upon them to cease-and-desist their operations under the impugned mark/ product, however, no response was received. Subsequently, a rectification was filed by Defendant No. 1 against the Plaintiff's mark "SUMO" bearing no. 816751 in Class 5, to which Plaintiff filed a counter statement. Thereafter, as Plaintiff did not come across products under the impugned mark in the market, it was presumed that Defendants had discontinued use thereof. However, recently in March 2023, Plaintiff noticed that the impugned products were available in the market, 2 Trademark applications No. 1806183 and 1897340 on 14th April, 2009 and 17th December, 2009, respectively.
CS(COMM) 345/2023 Page 4 of 6This 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 25/09/2023 at 06:29:11 which prompted the filing of the present suit.
15.7. Reliance is placed upon the judgment of the Supreme Court in Cadila Healthcare v. Cadila Pharmaceuticals3, to substantiate the assertion of deceptive similarity between the competing marks.
16. The Court has considered the aforenoted contentions. Defendants' "ZUMO" mark is structurally and phonetically similar to Plaintiff's registered "SUMO" mark. Merely the letter "S" has been replaced to the letter "Z" in "ZUMO", which is deceptively and confusingly similar to the Plaintiff's mark and thus, amounts to infringement. On a comparison of the packaging, it appears that Defendants have also imitated the distinctive features of Plaintiff's trade dress in the impugned products. On the back side of the blister strip of the impugned product, the stylised red rectangular strip contains a trapezoidal shaped figure as well as the word "ZUMO", as is also on the Plaintiff's product. The phrase, "Nimesulide and Paracetamol Tablets" is also positioned above the said strip, in the same manner as Plaintiff's product. Moreover, both products have the same golden-coloured rectangular blister strip. Further, the fact that both products comprise of the same ingredient catalyses the likelihood of confusion and is detrimental to Plaintiff's reputation and goodwill, in relation to the said SUMO family of marks.
17. In view of the foregoing, the Court is satisfied that Plaintiff has made out a prima facie case in their favour and in case an ex-parte ad-interim injunction is not granted, Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of Plaintiff and against the Defendants.
18. Till the next date of hearing, Defendants and anyone acting on their CS(COMM) 345/2023 Page 5 of 6 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 25/09/2023 at 06:29:11 behalf, are restrained from using the mark "ZUMO" or any other identical/ deceptively mark and the afore-noted impugned packaging/ trade dress or other mark/ trade dress, which is deceptively or confusingly similar to Plaintiff's 'SUMO' trademark and packaging/ trade dress of their product. It is however clarified that the injunction shall not apply to the impugned products, which have been manufactured and sold as on the date of passing of this order.
19. On receipt of a copy of this order, Defendants shall, within a period of one week from today, file an affidavit setting out the batch number and other relevant details of the products manufactured and sold under the impugned 'ZUMO' mark and impugned packaging.
20. Compliance of Order XXXIX Rule 3 of CPC be done with one week from today.
21. List before the Court on 19th October, 2023.
SANJEEV NARULA, J MAY 25, 2023 d.negi 3 AIR 2001 SC 1952.
CS(COMM) 345/2023 Page 6 of 6This 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 25/09/2023 at 06:29:11