Delhi High Court - Orders
Dwd Pharmaceuticals Limited vs Sun Pharmaceutical Industries Limited on 4 May, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~30
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 175/2023
DWD PHARMACEUTICALS LIMITED ..... Plaintiff
Through: Mr. Karan Bajaj and Mr. Rupin Bahl,
Advocates.
versus
SUN PHARMACEUTICAL INDUSTRIES LIMITED ..... Defendant
Through: Mr. Sachin Gupta, Mr. Rohit Pradhan,
Mr. Yashi Agrawal and Mr. Manan
Mandal, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 04.05.2023 I.A. No. 8704/2023 (on behalf of Defendant under Section 124 and 125 of the Trade Marks Act, 1999 [hereinafter "the Act"] r/w Section 151 of the Code of Civil Procedure, 1908 [hereinafter "CPC"] seeking permission to file cancellation petition against marks "ZEST" and "FERIZEST")
1. Applicant/ Defendant seeks permission to file cancellation petition against Plaintiff's trademark 'ZEST' and 'FERIZEST' registered as Trade Mark Nos. 406639 and 1086863, respectively both under Class-05.
2. Mr. Karan Bajaj, counsel for non-Applicant/ Plaintiff, at the outset, raises an objection qua maintainability of the present application. He asserts that the relief sought in the present application, has already been considered and declined by this Court qua the mark 'ZEST'. In this regard, he draws the Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:04.05.2023 20:30:06 attention of the Court to judgment dated 22nd November, 2022 passed in I.A. No. 14991/2022 in CS(COMM) 328/2022,1 relevant portion whereof reads as under:
"55. I may herein note that the trade mark 'ZEST' of the defendant has been registered since the year 1983. It is further the assertion of the defendant, which has also not been denied by the plaintiff, that this mark was cited by the defendant in opposition to the applications filed by the plaintiff seeking the registration of its marks 'EXEZEST' and 'TRIOLMEZEST'. The plaintiff, at that stage, did not choose to challenge the registration granted in favour of the defendant for the mark 'ZEST'. At least, this has not been pleaded by the plaintiff in the Suit or in this application. There was, therefore, clearly a case of acquiescence in such registration.
56. In fact, the plaintiff has itself sought and obtained registrations and relied upon a mark of which the word 'ZEST' forms a part. Having itself applied for and obtained registration in a 'ZEST' formative trade mark, it does not lie in the mouth of the plaintiff to state that the word 'ZEST' is a publici juris expression or is otherwise generic. Reference in this regard may be made to the judgments of this Court in Automatic Electric Limited v. R.K. Dhawan and Ors., 1999 SCC OnLine Del 27; and in Anchor Health and Beauty Care Pvt. Ltd. v. Procter & Gamble Manufacturing (Tianjin) Co. Ltd. & Ors., 2014 SCC OnLine Del 2968.
57. In view of the above, I find no merit in the present application. The same is dismissed."
[Bold in original]
3. In light of the afore-said, the relief sought in the present application, seeking permission to apply for cancellation for the mark 'ZEST' is rejected. Mr. Sachin Gupta, counsel for Applicant, has submitted that the aforenoted judgment is pending in appeal before the Division Bench of this Court (in FAO(OS) (COMM) 310/2022).
4. In view of the fore-going, notice is issued in the instant application qua the mark 'FERIZEST' only. Mr. Karan Bajaj, Advocate, accepts notice 1 Titled - 'Sun Pharmaceutical Industries Ltd v. DWD Pharmaceuticals Ltd'. DHC Neutral Citation:
2022/DHC/005037.Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:04.05.2023 20:30:06
on behalf of non-Applicant/ Plaintiff.
5. Reply be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
6. Re-notify on the date already fixed i.e., 21st July, 2023.
I.A. No. 8697/2023 (on behalf of Defendant under Order XI Rule 4 & 12 r/w Section 151 of CPC seeking interrogatories and discovery and production of documents)
7. Issue notice. Mr. Karan Bajaj, Advocate, accepts notice on behalf of non-Applicant/ Plaintiff.
8. Reply be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
9. Re-notify on the date already fixed i.e., 21st July, 2023.
SANJEEV NARULA, J MAY 4, 2023 as Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:04.05.2023 20:30:06