Delhi High Court - Orders
Cipla Health Limited vs Glister Pharmaceuticals & Anr on 27 May, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~27
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 441/2024
CIPLA HEALTH LIMITED ..... Plaintiff
Through: Ms. Archana Sahadeva and Mr.
Harshit Bhoi, Advocates.
versus
GLISTER PHARMACEUTICALS & ANR. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 27.05.2024 I.A. 30460/2024 (seeking exemption)
1. Exemption is granted, subject to all just exceptions.
2. Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
3. Disposed of.
I.A. 30461/2024 (seeking exemption from instituting pre-litigation mediation)
4. As the present suit contemplates urgent interim relief, in light of the judgment of Supreme Court in Yamini Manohar v. T.K.D. Krithi,1 exemption from attempting pre-institution mediation is granted.
5. Disposed of.
CS(COMM) 441/2024 Page 1 of 8This 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 28/05/2024 at 23:37:08 CS(COMM) 441/2024
6. Let the plaint be registered as a suit.
7. 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(s), the Defendants shall also file affidavit(s) of admission/denial of the documents of the Plaintiff, without which the written statement(s) shall not be taken on record.
8. 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.
9. List before the Joint Registrar for marking of exhibits on 27th August, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
10. List before Court for framing of issues thereafter. I.A. 30459/2024 (under Order XXXIX Rules 1 and 2 read with Section 151 of CPC)
11. Plaintiff has filed the present suit to restrain the Defendants from infringing and passing off their trademark "OMNIGEL", associated trade dress " "2 and copyright thereof.
12023 SCC OnLine SC 1382.
2"Plaintiff's trademark/trade dress"CS(COMM) 441/2024 Page 2 of 8
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 28/05/2024 at 23:37:08
12. Ms. Archana Sahadeva, counsel for the Plaintiff, submits the following facts and contentions for seeking ex parte ad interim injunction against Defendant Nos. 1 and 2:
12.1 The Plaintiff, Cipla Health Limited, part of the Cipla Group has undertaken the consumer healthcare business of Cipla Limited since 2015.
Plaintiff's products range from pharmaceuticals, healthcare products, over- the-counter products, nutraceuticals etc. Plaintiff also maintains and operates the website https://www.omnigel.com/ which provides information on the products marketed under the Plaintiff's trademark. 12.2. Plaintiff's predecessor, Cipla Limited, first conceived, adopted and registered the device mark "OMNI"/ " ", in Class 5, with use from the year 1937. Thereafter, Cipla Limited adopted the trademark "OMNIGEL" in the year 2000, and started the use of the distinctive trade dress/packaging " ", for its topical analgesics, containing the active pharmaceutical ingredient Diclofenac. They have also applied for registration of the mark "OMNIGEL", under application nos. 988068 and 5392708, which are presently pending registration. The application no. 988068 is deemed to have been abandoned owing to non- appearance of registrant for hearing dated 21st January, 2020. Nevertheless, the said order has been subsequently challenged by the Plaintiff. 12.3. The trade dress/packaging of the Plaintiff's product has various distinguishing features such as the red, white, blue colour combination, CS(COMM) 441/2024 Page 3 of 8 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 28/05/2024 at 23:37:09 unique 'Running Men' motif and the wordings "For Fast Relief From Pain, Sprain and Strain" etc. The entire trade dress/packaging/label/colour scheme etc. is protected as an artistic work under Section 2(c) of the Copyright Act, 1957.
12.4. The Plaintiff is the sole and exclusive proprietor of the said trademark and trade dress, having acquired the same under a Trade Mark Assignment Deed dated 8th March, 2023, whereby the Plaintiff's predecessor, Cipla Limited has assigned and transferred all rights, title, interest and goodwill, inter alia in the trademark "OMNIGEL" and the trade dress " " in favour of the Plaintiff, with effect from 31st August, 2022.
12.5. Even though as on date, there is no statutory registration for the trademark "OMNIGEL", nonetheless, owing to the long, continuous and uninterrupted use of the mark "OMNI"/ "OMNIGEL" and its variants, the said mark is solely and exclusively associated with Plaintiff. The Plaintiff asserts common law rights in the said mark, owing to the reputation and goodwill in its trademarks, which is evidenced from the annual turnover of the Plaintiff for several years, as delineated in Paragraph No. 21 of the instant application.
12.6. The Plaintiff has spent considerable amounts of money towards promotion and marketing of its trademark. They also maintain and operate social media accounts on Facebook, Instagram and YouTube for promotion of its brand and products.
12.7. In and around the 2nd week of May, 2024, the Plaintiff's CS(COMM) 441/2024 Page 4 of 8 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 28/05/2024 at 23:37:09 representatives first came across the Defendants' product, bearing an identical/deceptively similar mark "OLNIGEL"3, which are being sold in a nearly identical trade dress/packaging " "4. Upon investigation into the activities of the Defendants, it was discovered that Defendant No. 1 is a pharmaceutical company involved in the manufacturing and marketing of pharmaceutical products, including but not limited to 'Doclofam Gel' range of products, bearing the impugned mark and trade dress.
12.8. Both the Plaintiff and Defendants' products are used for identical purposes and cater to an identical class of customers. Both products are over-the-counter Pain Relief ointments which can be purchased by anyone without a doctor's prescription. Moreover, the composition/formulation of the two products is nearly identical. Therefore, both medicines have the same patient base, i.e., people seeking relief from any kind of pain or injury. 12.9. Owing to the nature of the goods, nature of purchase and class of customers, the adoption of an identical trade mark/ trade dress by the Defendants is bound to create confusion and deception in the market. Defendants are attempting to systematically copy the Plaintiff's trademark and trade dress in an attempt to pass off its goods as those of the Plaintiff and ride upon the Plaintiff's hard-earned reputation and goodwill. 12.10. The present case is one of triple identity inasmuch as: a) nearly identical trade mark and trade dress: OMNIGEL v. OLNIGEL v. b) identical products: pain 3 "Impugned mark"
4"Impugned trade dress"CS(COMM) 441/2024 Page 5 of 8
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 28/05/2024 at 23:37:09 relief ointment in the form of gel v. pain relief ointment in the form of gel c) identical trade channels and identical class of consumers. Thus, the Defendants' actions amount to infringement, misrepresentation, dilution and passing off of the Plaintiff's trademark/ trade dress, copyright.
13. The Court has considered the aforenoted facts, contentions as well as the documents placed on record by the Plaintiff. A comparison between the two marks is as follows:
Plaintiff's product Defendants' product
Trademark OMNIGEL OLNIGEL
Trade Dress
Composition Diclofenac, Linseed Oil, Diclofenac Diethylamine +
Diclofenac Diethylamine, Linseed Oil + Menthol +
Menthol and Methyl Methyl Salicylate
Salicylate
Indication Fast relief from Pain, Sprain Fast relief from Pain, Sprain
and Strain and Strain
14. On a prima facie analysis of the above, both the marks "OMNIGEL" and "OLNIGEL" are almost identical, except for the letter 'M' which is replaced by 'L' in the impugned mark. Further, both the products have almost identical packaging/trade dress, including the colour scheme and tagline. It is also noticed that the motifs on both the products are nearly identical, as represented below:
CS(COMM) 441/2024 Page 6 of 8This 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 28/05/2024 at 23:37:09 Plaintiff's product Defendants' product
15. Both the motifs consist of 5 silhouettes of men in the same running posture, the same gradual progression of colour from the right to left, and deceptively similar placement of pain points indicated on the rightmost silhouette.
16. The Plaintiff is the earlier user of their trademark and trade dress, which commenced since the year 2000. Therefore, evidently the Defendant's adoption of an identical trade dress and nearly identical trademark for a competing product, is malafide, dishonest and has been done with the intent to deceive the public and ride upon the goodwill and reputation of the Plaintiff and pass off their goods as being that of the Plaintiff.
17. In light of the above, on a prima facie assessment of the facts and contentions, the Court finds that the Plaintiff has made out a prima facie case in its favour and in case no ex-parte ad-interim injunction is granted Plaintiff will suffer an irreparable loss; balance of convenience also lies in favour of the Plaintiff and against the Defendants.
18. Accordingly, till the next date of hearing, Defendants or anybody acting on their behalf are restrained from manufacturing, selling or offering for sale, advertising or promoting the impugned trademark/ trade label "OLNIGEL"/ " " or any other mark which is CS(COMM) 441/2024 Page 7 of 8 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 28/05/2024 at 23:37:09 deceptively similar to Plaintiff's trademark "OMNIGEL"/ " ", thereby amounting to infringement of the Plaintiff's copyright as well as passing off of the Plaintiff's trademark.
19. Issue notice to Defendants, by all permissible modes, upon filing of process fee, returnable on the next date of hearing. Reply, if any, be filed within a period of four weeks from today. Rejoinder thereto, if any, be filed within a period of two weeks thereafter.
20. Compliance of Order XXXIX Rule 3 of CPC be done with one week from today.
21. List before the Court on 24th October, 2024.
SANJEEV NARULA, J MAY 27, 2024 d.negi CS(COMM) 441/2024 Page 8 of 8 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 28/05/2024 at 23:37:09