Bombay High Court
Alkem Laboratories Ltd vs Deepar Pharmaceuticals Pvt.Ltd on 27 June, 2023
Author: R.I. Chagla
Bench: R.I. Chagla
16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021
K.S. Jadhav
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO. 2758 OF 2021
IN
COMMERCIAL IP SUIT NO. 164 OF 2021
WITH
LEAVE PETITION NO. 19 OF 2021
Alkem Laboratories Ltd. ... Plaintiff
Versus
Deepar Pharmaceuticals Pvt. Ltd. ... Defendant
----------
Mr. Mahesh A. Mahadgut, Ms. Poonam Teddu, Mr. Kaivalya Shetye
Advocates i/b Mr. Mahesh A. Mahadgut for the Plaintiff.
None for the Defendant.
-----------
CORAM : R.I. CHAGLA, J.
DATE : 27TH JUNE, 2023.
ORDER :
1. The Leave Petition filed under Clause XIV of the Letters Patent Act and the interim application seeking interim reliefs are listed for hearing Page 1 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 ::: 16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021 today.Mr. Mahadgut, Ld. Advocate for the Plaintiff submits that the notice for today's hearing has been served upon the Defendant via speed post on 21st June 2023. Despite service, none appears for the Defendant today. My attention is also drawn to the Affidavit of Service dated 19th January, 2022 of the office of Sheriff of Mumbai proving service of writ of summons. There is no Written Statement on record.
2. Considering the pleadings in the Plaint and the Leave Petition, it is sufficiently clear that in order to avoid multiplicity of proceedings, it would be in the interest of justice that the leave petition is granted. Accordingly, Leave Petition is allowed combining the cause of action of infringement with the action of passing-off.
3. This is a suit for infringement of trademark and for passing off. It is stated that the Plaintiff has adopted Trade Mark 'RAPEED' in the year 2002 and has been using the said mark since May, 2002. The products under the Trade Mark 'RAPEED' are sold in the form of tablets and are formulated for the treatment of acid related diseases of the stomach Page 2 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 ::: 16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021 and intestine such acid reflux, peptic ulcer disease and some other stomach condition associated with excessive acid production.
4. It is stated that Plaintiff is the registered proprietor of the Trade Mark 'RAPEED' (word per se) vide No. 1120298 dated 22nd July, 2002 in Class 5. Plaintiff has also registration in word mark 'RAPEED - D' and 'RAPEED - L'. Copies of the registration and renewal certificates in respect of the Plaintiff's 'RAPEED' formative marks are at Exhibits 'A' to 'E' to the Plaint.
5. The Plaintiff has acquired reputation and goodwill in the Trade Mark 'RAPEED' which is evident from the Chartered Accountant certificate at Exhibit F to the Plaint. A statement duly certified by the Plaintiff's Chartered Accountant demonstrating sales promotional expenditure incurred by the Plaintiff in respect of its products is at Exhibit G to the Plaint. It is stated that Approximately 0.33% of such expenses are attributed to the products bearing 'RAPEED' family of marks. Product packs of RAPEED Family of marks are at Exhibit H-1 to Page 3 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 ::: 16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021 H-3 to the Plaint. Promotional material in respect of the Plaintiff's product 'RAPEED' is at Exhibit I to the Plaint.
6. It is stated that in May 2020, the Plaintiff came across a similar medicinal preparation sold under the impugned mark 'RAPID'. Product pack of impugned product 'RAPID' is at 'Exhibit - J' to the Plaint.
7. Mr. Mahadgut submits that the Defendant had vide Application No. 3431317 dated 8th December, 2016 applied for registration of the Trade Mark 'DEEPAR'S RAPID' on proposed to be used basis. Plaintiff had opposed registration by filing Notice of Opposition. The Defendant did not file any response to the opposition. The application came to be abandoned for want of prosecution vide Order dated 22nd January, 2020 passed by the Registrar of Trade Marks which is at 'Exhibit - K' to the Plaint.
8. Mr. Mahadgut submits that upon service, the Defendant had approached the Plaintiff to settle the matter and had also agreed to execute consent terms. My attention is drawn to email correspondence exchanged between the Advocate for Defendant and the Plaintiff. There Page 4 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 ::: 16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021 is also a letter dated 14/07/2021 addressed by M.B. Jain and Partners to the Advocate for the Plaintiff. However, no one has entered appearance. Mr. Mahadgut submits that it is under these circumstances, the Plaintiff is compelled to renew its application for ad - interim reliefs.
9. I have heard the submissions and perused the record. Prima facie, the Plaintiff has secured statutory rights in the 'RAPEED' Family of trade marks and the material annexed to the Plaint shows that the same has acquired immense goodwill and reputation. There is no manner of doubt that the impugned mark 'RAPID' is virtually identical to the Plaintiff's mark 'RAPEED' phonetically so also structurally and visually. The Defendant has insignificantly added its trading style besides the impugned mark while giving all the prominence to the word 'RAPID'. Such trivial addition makes no difference to the overall similarity between the rival marks.
10. In the circumstances, an overwhelming prima facie case for infringement of trade mark so also passing off is made out by the Plaintiff. The Plaintiff has established sufficient reputation and goodwill Page 5 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 ::: 16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021 in its mark to maintain a passing off action. The adoption of the impugned mark by the Defendant is obviously fraudulent. Despite service, the Defendant has not filed any reply. The balance of convenience also lies in favour of the Plaintiff and unless the reliefs as prayed for are granted, the Plaintiff will suffer irreparable loss, harm and injury. It is settled law that in matters involving pharmaceutical and medicinal preparations, it is not only in the interest of the Plaintiff but also that of the general public that prompt injunction order be granted. There shall accordingly be an ad-interim order in terms of prayer clauses
(a) and (b) of the Interim Application, which read as follows:
(a) that pending the hearing and final disposal of the Suit, the Defendant by itself, its directors, servants, dealers, franchisees, distributors, stockiest, licensees, agents, sister concerns, wholesalers, retailers, representatives, affiliates, associates and/or assigns and all persons acting for and on its behalf be restrained by a temporary order and injunction of this Hon'ble Court from in any manner manufacturing, selling, offering for sale, stocking, soliciting, exporting, displaying, advertising, marketing, promoting and/or in any manner using directly or indirectly in relation to Page 6 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 ::: 16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021 any medicinal and pharmaceutical preparation and substances and/or such allied and cognate goods, the impugned Trade Mark 'RAPID' or any other Trade Mark containing the word 'RAPID' or being a mark deceptively similar to the Plaintiff's Trade Mark 'RAPEED' and the 'RAPEED' series of marks so as to infringe the Plaintiff's registered Trade Mark bearing Nos. 1120298, 1389599, and 2210271 or in any other manner whatsoever;
(b) that pending the hearing and final disposal of the Suit, the Defendant by itself, its directors, servants, dealers, franchisees, distributors, stockiest, licensees, agents, sister concerns, wholesalers, retailers, representatives, affiliates, associates and/or assigns and all persons acting for and on its behalf be restrained by a temporary order and injunction of this Hon'ble Court from in any manner manufacturing, selling, offering for sale, stocking, soliciting, exporting, displaying, advertising, marketing, promoting and/or in any manner using directly or indirectly in relation to any medicinal and pharmaceutical preparation and substances and/or such allied and cognate goods, the impugned Trade Mark Page 7 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 ::: 16-IA 2758.2021 in COMIP 164.2021 with LPETN 19.2021 'RAPID' or any other Trade Mark containing the word 'RAPID' or being a mark deceptively similar to the Plaintiff's Trade Mark 'RAPEED' and the 'RAPEED' series of marks so as to pass off or enable others to pass off the Defendant's goods as and for the Plaintiff's well known goods or in any other manner whatsoever;
11. The order passed today shall continue to operate until further orders.
12. List the application for hearing on 24th July, 2023.
[R.I. CHAGLA, J.] Page 8 of 8 ::: Uploaded on - 30/06/2023 ::: Downloaded on - 01/07/2023 05:03:46 :::