Madras High Court
Sun Pharma Laboratories Limited vs Thulasi Pharmacies India Private ... on 9 February, 2022
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
C.S.(Comm. Div.) No.100 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Dated: 09.02.2022
Coram:
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
C.S.(Comm. Div.) No.100 of 2021 &
A.No.346 to 349 of 2022 &
O.A.Nos.750 to 753 of 2021
Sun Pharma Laboratories Limited
CD Plot No.3, Door No.8,
Old Tower Block Street,
Nandhanam Extension,
Chennai-600 035. .. Plaintiff
Vs.
1.Thulasi Pharmacies India Private Limited,
No.280, 2nd Street, Gandhipuram,
Coimbatore-641 012
and also at
79, West Venkataswamy Road, R.S.Puram,
Coimbatore-641 002.
and also at
No.14, Amman Kovil Street,
Vadapalani, Chennai-600 026.
2.Pure & Cure Healthcare Private Limited,
Plot No.26-A, 27-30, Sector-8A,
I.I.E., SIDCUL, Haridwar-249 403,
Uttarkhand. .. Defendants
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C.S.(Comm. Div.) No.100 of 2021
This Civil Suit has been filed under IV Rule 1 of Original Side Rules and
Order VII Rule 1 of CPC read with Sections 27, 28, 29, 134 and 135 of the
Trade Marks Act, 1999 praying to grant a judgment and decree on the
following terms: (a) A permanent injunction restraining the Defendants, their
men, servants, agents, distributors, stockists, retailers, subsidiaries, legal
representatives, job-workers, manufacturers, packers, export/import agents or
any other person claiming under them from in any manner infringing the
Plaintiff's registered trademark GLUCORED through the use of GLURED
and/or any other mark or marks that are in any way identical with and/or
deceptively similar to the Plaintiff's said registered trademark/s, either by
manufacturing or selling or distributing or exporting or importing or offering for
sale or stocking or importing or exporting or advertising, either online or offline,
or in any other manner whatsoever; (b) A permanent injunction restraining the
Defendants, their men, servants, agents, distributors, stockists, retailers,
subsidiaries, legal representatives, job-workers, manufacturers, packers,
export/import agents or any other person claiming under them from in any
manner manufacturing, selling, offering for sale, stocking, distributing,
importing, exporting, advertising, either online or offline, or in any manner
directly or indirectly dealing in any product under the trademark GLURED,
either by itself or as a prefix or suffix, or any other trademark that is identical
with and/or deceptively similar to the Plaintiff's prior adopted trademark
GLUCORED, so as to pass off the Defendants' products as and for the products
of the Plaintiff; (c) a permanent injunction restraining the Defendants, their
men, servants, agents, distributors, stockists, retailers, subsidiaries, legal
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C.S.(Comm. Div.) No.100 of 2021
representatives, job-workers, manufacturers, packers, export/import agents or
any other person claiming under them from in any manner infringing the
Plaintiff's registered trademark AZTOR through the use of VIZITOR and/or any
other mark or marks that are in any way identical with and/or deceptively
similar to the Plaintiff's said registered trademark, either by manufacturing or
selling or distributing or exporting or importing or offering for sale or stocking
or importing or exporting or advertising either online or offline, or in any other
manner whatsoever; (d) A permanent injunction restraining the Defendants,
their men, servants, agents, distributors, stockists, retailers, subsidiaries, legal
representatives, job-workers, manufacturers, packers, export/import agents or
any other person claiming under them from in any manner manufacturing,
selling, offering for sale, stocking, distributing, importing, exporting,
advertising, either online or offline, or in any manner directly or indirectly
dealing in any product under the trademark VIZITOR, either by itself or as a
prefix or suffix, or any other trademark that is identical with and/or deceptively
similar to the Plaintiff's prior adopted trademark AZTOR, so as to pass off the
Defendants' products as and for the products of the Plaintiff; (e) Directing the
Defendants' to render a true and faithful accounts of the profits earned by them
through the sale or advertisement of products under the impugned mark
GLURED, either by itself or as a prefix or suffix, and direct payment of such
profits to the Plaintiff for the acts of infringement and passing off committed by
the Defendants; (f) Directing the Defendants to render a true and faithful
accounts of the profits earned by them through the sale or advertisement of
products under the impugned mark VIZITOR, either by itself or as a prefix or
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C.S.(Comm. Div.) No.100 of 2021
suffix, and direct payment of such profits to the Plaintiff for the acts of
infringement and passing off committed by the Defendants; (g) Directing the
Defendants to surrender to the Plaintiff the entire stock of labels, containers,
boxes, canisters, packaging materials, printed materials, promotional materials,
stationery, including dyes, blocks screen prints and other materials bearing the
impugned mark GLURED, either by itself or as a prefix or suffix, or any other
mark(s) that are in any manner similar to the Plaintiff's trademark
GLUCORED, for destruction; (h) Directing the Defendants to surrender to the
Plaintiff's the entire stock of labels, containers, boxes, canisters, packaging
materials, printed materials, promotional materials, stationery, including dyes,
blocks, screen prints and other materials bearing the impugned mark VIZITOR,
either by itself or as a prefix or suffix or any other mark(s) that are in any
manner similar to the Plaintiff's trademark AZTOR, for destruction and (i)
Directing the Defendants to pay the Plaintiff the costs of the suit.
For Plaintiff : Mr.S.Diwakar for
Mr.Rajesh Ramanathan
For Defendants : Mr.R.Sathish Kumar for D1
M/s.Lekha Sankar for D2
JUDGMENT
This suit is filed seeking permanent injunctions against the defendants to restrain infringement of the plaintiff's registered trademarks 'GLUCORED' and 'AZTOR' and to restrain passing off. Consequential remedies for rendition of Page No.4/7 https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.) No.100 of 2021 accounts and destruction of infringing materials are also prayed for.
2. The plaintiff and the first defendant entered into negotiations while the suit was pending and executed a memorandum of compromise dated 07.02.2022. Such memorandum of compromise has been executed by authorized representatives of the plaintiff and the first defendant and their respective counsel. By such memorandum of compromise, the first defendant has agreed not to use the infringing trademarks or any trademarks deceptively similar to that of the plaintiff. Consequently, the first defendant has agreed to a decree of permanent injunction in terms of prayers in paragraph No.34 (a) to 34 (d) of the plaint. However, the plaintiff has agreed to permit the first defendant to sell the specific unused stocks which are set out in clause 2(c) of the memorandum of compromise provided the said sale is effected within a period of three months from the date of execution of the memorandum of compromise. As part of the compromise, the plaintiff has agreed to give up the reliefs claimed in paragraph No.34(e) to (i) of the plaint.
3. As regards the second defendant, it is stated that the second defendant Page No.5/7 https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.) No.100 of 2021 undertakes the manufacturing of products for several companies, including the first defendant, as per instructions. Consequently, the second defendant agrees to be bound by the decree by this Court if limited to the infringing products and materials. It is also pointed out that unused packaging material is stored at the premises of the second defendant. The first and second defendants undertake that such packaging materials would be destroyed. The said statement is recorded. Accordingly, there is no impediment for the disposal of the suit in terms of the memorandum of compromise.
4. Therefore, C.S.(Comm. Div.) No.100 of 2021 is decreed in terms of the memorandum of compromise dated 07.02.2022. The said memorandum of compromise shall form an integral part of the decree and shall also be binding on the second defendant. Consequently, connected applications are closed. There shall be no order as to costs.
09.02.2022 Index : Yes/No Internet: Yes/No kal SENTHILKUMAR RAMAMOORTHY, J Page No.6/7 https://www.mhc.tn.gov.in/judis C.S.(Comm. Div.) No.100 of 2021 kal C.S.(Comm. Div.) No.100 of 2021 & A.No.346 to 349 of 2022 & O.A.Nos.750 to 753 of 2021 09.02.2022 Page No.7/7 https://www.mhc.tn.gov.in/judis