Bombay High Court
Abbott Healthcare Pvt. Ltd vs Novartis Healthcare Pvt. Ltd. And Anr on 5 February, 2020
Author: S.C. Gupte
Bench: S.C. Gupte
sat comipl 1310-2019.doc
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
INTERIM APPLICATION NO. 1 OF 2020
IN
COMMERCIAL IP SUIT (L) NO. 1310 OF 2019
Eris Lifesciences Ltd. ...Applicant
In the matter between :
Abbott Healthcare Pvt.Ltd. ...Plaintiff
vs.
Novartis Healthcare Pvt.Ltd. & Anr. ...Defendants
Mr.Cyrus Ardeshir with Rahul Dwarkadas, Joran Diwan and Juhi Bahirwani
I/b. Veritas Legal for Plaintiff.
Mr.Nishad Nadkarni and Udita Kanwar I/b. Khaitan & Co. for Defendant
No.1.
Dr.Veerendra Tulzapurkar, Senior Advocate with Amit Jamsandekar and
Alka Parelkar I/b. V.A. Associates for Defendant No.2/Applicant in IA
1.2020.
CORAM : S.C. GUPTE, J.
DATE : 5 FEBRUARY 2020 P.C. :
This commercial IP suit seeks modification of an earlier order passed in the commercial suit. The suit has been based on an agreement between the Plaintiff and Defendant No.1, termed as "co-marketing agreement", under which Defendant No.1 had appointed the Plaintiff as a co-marketer for marketing of its product, Vildagliptin, with or without combination of Metformin, under the trademarks ZOMELIS and ZOMELIS Met. The agreement admittedly came to an end. The controversy in the suit concerns residual co-marketed products lying with the Plaintiff and particularly, whether and to what extent the Plaintiff should have an 1/3 ::: Uploaded on - 11/02/2020 ::: Downloaded on - 07/06/2020 15:40:25 ::: sat comipl 1310-2019.doc opportunity to dispose of these products lying in its stocks.
2 On 9/10 December 2019, the original interim application of the Plaintiff was heard and disposed of by this court essentially by consent of parties. The order inter alia provided for the Plaintiff to dispose of the residual products within a reasonable time frame. Liberty was, however, given to Defendant No.2, who is the subsequent proprietor of the trademarks ZOMELIS and ZOMELIS Met by virtue of an assignment by the parent company of Defendant No.1, to apply for modification of the order, if the Plaintiff were to continue to sell the residual products even after such reasonable time. Defendant No.1 has now come up with the present interim application alleging that the Plaintiff continues to sell the residual products despite passage of reasonable time.
3 In the premises, it is now for this court to decide what should be the reasonable time frame for disposal of the products. Originally, as indicated in the plaint (para 5.9), as of the date of the plaint, there were stocks in the Plaintiff's warehouse of the subject goods worth about Rs.12.66 crores. The plaint is of 6 December 2019. About two months have since passed, during which the Plaintiff had time to dispose of the residual stock. When the order of 9/10 December 2019 was passed, it was broadly anticipated that within a few months, all residual stock would be disposed of by the Plaintiff. Any continued sale of residual stock by the Plaintiff would result into grave prejudice to Defendant No.2, who was the subsequent proprietor the trademarks ZOMELIS and ZOMELIS Met. The market would then have goods under the trademarks ZOMELIS and ZOMELIS Met from two different sources, that is to say, from the registered proprietor of the trademarks ZOMELIS and ZOMELIS Met, i.e. Defendant 2/3 ::: Uploaded on - 11/02/2020 ::: Downloaded on - 07/06/2020 15:40:25 ::: sat comipl 1310-2019.doc No.2, and also from the Plaintiff - a situation which is, by its very nature, untenable. No reasonable time frame could, in the premises, exceed a few months, say, about four to five months.
4 In the peculiar facts of the case, after hearing the parties, this court is of the view that it would be reasonable to allow the Plaintiff to dispose of residual stock of the subject goods till 30 April 2020; that should be an adequate time frame for disposal of the goods. It would indeed be 'reasonable' within the meaning of the original order passed on 9/10 December 2019.
5 It is ordered accordingly and the interim application is disposed of. It is made clear that the Plaintiff cannot sell any goods under the trademarks ZOMELIS and ZOMELIS Met after 30 April 2020.
(S.C. GUPTE, J.) 3/3 ::: Uploaded on - 11/02/2020 ::: Downloaded on - 07/06/2020 15:40:25 :::