Delhi High Court - Orders
Glenmark Pharmaceuticals Limited vs Sanjeevni Medicos And Ors on 20 January, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~27
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 38/2023
GLENMARK PHARMACEUTICALS LIMITED ..... Plaintiff
Through: Mr. Ranjan Narula and Mr. Shashi P.
Ojha, Advocates.
versus
SANJEEVNI MEDICOS AND ORS. ..... Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 20.01.2023 I.A. 1176/2023 (under Order XI Rule 1(4) of the Code of Civil Procedure, 1908 ["CPC"] as amended by the Commercial Courts Act, 2015 ["Commercial Courts Act"] seeking leave to file additional documents)
1. This is an application seeking leave to file additional documents under the Commercial Courts Act.
2. Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per provisions of the Act.
3. Accordingly, the application stands disposed of.
I.A. 1177/2023 (under Sec. 151 of CPC seeking exemption from filing original/ true typed/ certified copies and vernacular copy of dim documents)
4. Exemption is granted, subject to all just exceptions.
5. Plaintiff shall file legible and clearer copies of exempted documents, compliant with practice rules, before the next date of hearing.
Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 1 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:446. Accordingly, the application stands disposed of.
I.A. 1178/2023 (under Sec. 12(A) of the Commercial Courts Act on behalf of Plaintiff)
7. Having regard to facts of the present case and in light of the judgement of Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Private Ltd.,1 exemption from attempting pre- institution mediation is allowed.
8. Accordingly, the application stands disposed of.
I.A. 1179/2023 (under Order XI Rule 2 of the Commercial Courts, Commercial Division and Commercial Appellate Division Of High Courts Act, 2015 seeking Interrogatories contained in Form-2 Appendix-C of CPC)
9. Issue notice to Defendants, by all permissible modes, upon filing of process fee, returnable on 06th July, 2023.
CS(COMM) 38/2023
10. Let the plaint be registered as a suit.
11. Upon filing of process fee, issue summons to the Defendants by all permissible modes. Summons shall state that the written statement shall be filed by the Defendants within 30 days from the date of receipt of summons. Along with the written statement, the Defendants shall also file an affidavit of admission/denial of the documents of the Plaintiff, without which the written statement shall not be taken on record.
12. Liberty is given to the Plaintiff to file a replication within 15 days of 1 Neutral citation: 2022/DHC/004454.
Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 2 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:44the receipt of the written statement. Along with the replication, if any, filed by the Plaintiff, an affidavit of admission/denial of documents of the Defendants, be filed by the Plaintiff, without which the replication 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.
13. List before the Joint Registrar for marking of exhibits on 16th March, 2023. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
14. List before Court on 06th July, 2023 for framing of issues.
I.A. 1175/2023 (under Order XXXIX Rules 1 & 2 read with Section 151 of CPC seeking ex-parte interim injunction)
15. The Plaintiff has filed the present suit, inter alia, seeking permanent injunction restraining infringement of its registered trademarks, passing off, unfair competition, damages, delivery up, among other ancillary reliefs.
16. The case as set out in the Plaint is as follows: Plaintiff - 'Glenmark Pharmaceuticals Ltd.' is engaged in business of manufacturing, marketing, distributing, and exporting pharmaceutical and dermatological products across the world. It is India's largest pharmaceutical company, which started its operation the year-1977 and since then, has several manufacturing facilities and R&D centers in India as well as presence in several countries. Plaintiff adopted and coined the trade mark 'TELMA' - a medicinal preparation containing 'Telmisartan' used for treatment of blood pressure, which has been manufactured and marked since November 2002. In the year-2006, 'TELMA-AM', a combination of 'Telmisartan and Amlodipine' Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 3 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:44 for treatment of hypertension, was introduced. These products are well- known amongst the relevant class of customers and also healthcare professionals due to their extensive use, widespread availability, and promotion.
17. Plaintiff is the registered proprietor of the trademark 'TELMA' and its variants in several countries under various classes. Trademark registrations in India are given in para No. 10 of the Plaint and details of the sales figures of Plaintiff are culled out in para No. 12 of the Plaint.
18. Mr. Ranjan Narula, counsel for Plaintiff, submits that in and around September 2022, Plaintiff received reports of counterfeit 'TELMA' and 'TELMA-AM' products being sold in Delhi and elsewhere. On receiving the above information and to ascertain the identity of person(s) and the extent of their involvment in manufacturing, selling and marketing of counterfeit products using Plaintiff's 'TELMA' mark, Plaintiff carried out extensive survey and purchased products from different outlets. Upon analysis of random purchases made, it was revealed that Defendants No. 1 and 2, who are pharmacists, were engaging in stocking and supplying of counterfeit Telmisartan 40 mg and Amlodipine 5mg tablets under the marks 'TELMA'/ 'TELMA-AM', without authorization and approval of Plaintiff. The said Defendants have copied Plaintiff's marks and also trade dress/ get-up of 'TELMA' and 'TELMA-AM'. Defendants, being fully aware of Plaintiff's marks have indulged in illegal activities of manufacturing, marketing, stocking and selling such counterfeit/spurious products with the sole intention to pass off as those of Plaintiff's products.
Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 4 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:4419. A comparison of Plaintiff's product belonging to infringing batch no. 18210538, with that of Defendants' infringing products, is depicted below:
PLAINTIFF'S PRODUCTS DEFENDANT NO. 1'S PRODUCT DEFENDANT NO. 2'S PRODUCT
20. The products 'TELMA' and 'TELMA-AM' sold by Defendants and Plaintiff, are identical in appearance, without any noticeable differences. However, Plaintiff's Quality Assessment Team, upon analysis, pointed out several physical and chemical parameters in the infringing batch - 18210538, which prove Defendants' products to be counterfeit/ spurious. The difference in chemical composition of each of the two Defendants, is set out below:
PARAMETERS SPECIFICATION PLAINTIFF'S DEFENDANT NO.
LIMIT PRODUCT 1'S PRODUCT
Average weight of 380 mg ± 3 % 381.0 mg 412.066 mg
Between 368.6 mg
Signature Not Verified
Digitally Signed CS(COMM) 38/2023 Page 5 of 10
By:SAPNA SETHI
Signing Date:21.01.2023
18:08:44
tablets and 391.4 mg
Assay NLT 90.0 % and NMT 105.3% 115.30%
Telmisartan IP 110% of the labelled
(40 mg/ Tablet) amount
NLT 90.0 % and NMT 100.0 % 114.60 %
110% of the labelled
Amlodipine IP amount
(5mg /tablet)
Dissolution Not less than 85% of 103%, 104%, 7%, 8% 8%, 8%
the labelled amount of 109%, 107%,
Telmisartan IP
drug is dissolved in 20 102%, 104%
minutes.
Amlodipine IP Not less than 85% of 98%, 95%, 99%, 110%, 99%, 109%,
the labelled amount of 96%, 97%, 96% 117%
drug is dissolved in 20
minutes.
PARAMETERS SPECIFICATION PLAINTIFF'S DEFENDANT NO.
LIMIT PRODUCT 2'S PRODUCT
Average weight of 380 mg ± 3 % 381.0 mg 404.964 mg
Between 368.6 mg
tablets
and 391.4 mg
Assay NLT 90.0 % and NMT 100.0 % 83.40%
Amlodipine IP 110% of the labelled
(5mg /tablet) amount
Dissolution Not less than 85% of 103%, 104%, 8% 8%, 8%, 7%
Telmisartan IP the labelled amount of 109%, 107%,
drug is dissolved m 20 102%, 104%
minutes.
Amlodipine IP Not less than 85% of 98%, 95%, 99%, 65%, 66%, 71 %,
the labelled amount of 96%, 97%, 96% 60%
drug is dissolved in 20
minutes.
21. Considering the gravity of Plaintiff's allegations, the Court has given its anxious consideration to submissions made by Mr. Narula. Considering the overall remarkable similarity between Plaintiff's genuine and Defendants' alleged spurious/counterfeit products, even astute consumers are likely to be deceived, let alone persons with average intelligence and Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 6 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:44 imperfect recollection. Defendants have copied the trademark, trade dress and get-up - including strip packaging of 'TELMA' and 'TELMA-AM' - in order to defraud innocent consumers. Mr. Narula points out that Plaintiff has already submitted a complaint with the Deputy Commissioner of Police, South West, New Delhi and Joint Commissioner Police (Crime), New Delhi, and Drug Inspector, South West, New Delhi, to carry out search and seizure at Defendant's premises to curb circulation of counterfeit medicines, however, no response has been received nor any action taken on the same.
22. Considering the standing of Plaintiff and its goods in the market, as well as the foregoing averments made by Mr. Narula, the Court finds that the Plaintiff has made out a prima facie case in its favour. If Plaintiff's allegations are indeed correct, which prima facie seems to be the case, irreparable harm from the circulation of spurious goods would be caused to not only the Plaintiff, but also to the public at large. Balance of convenience also lies in favour of Plaintiff and against Defendants. Accordingly, a case for ex-parte ad interim injunction is made out.
23. While the Court is convinced that Plaintiff is entitled to injunction, however, certain observations must be recorded, particularly in light of the report of Plaintiff's Quality Assessment Team. Their examination demonstrates that products sold by Defendants No. 1 and 2 bear identical date of manufacturing, trade dress, as well as several other attributes of Plaintiff's products. In fact, impugned products are sold under tax invoices indicting identical batch number as that of Plaintiff's products. Although Mr. Narula has stressed that the Plaintiff instantly reported the matter to the Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 7 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:44 Police as well as to the Drug Controller, but considering the seriousness of the situation, that by itself, does not quell the Court's concerns. The Court is concerned that the Plaintiff has chosen to file the instant petition seeking to injunct the sale of such products after a delay of nearly three months, thereby allowing the counterfeit products, which is fast-moving pharmaceutical preparation, to be sold in the meantime. There can be no doubt that the instant lawsuit is just not about protecting trademark rights. It has a huge public interest element, and the court cannot turn a blind eye to the protection of innocent consumers from confusion, deception, and in this case, serious health repercussions from consumption of spurious goods. The source of the impugned products is claimed to be that of the Plaintiff. Thus, if the Plaintiff, by their own admission. became aware that spurious/ counterfeit products had sneaked into their supply chain, on as early as 17th October, 2022, it was expected that they would at least have issued public notices to caution its consumers against the counterfeit batch. The expectation from Plaintiff, claimed to be India's largest pharmaceutical company, was to have acted with alacrity in stopping the sale of impugned products. If not public notices, Plaintiff could have at least notified pharmacists and healthcare professionals regarding the percolation of the counterfeit batch in the market and advising them to stop the sale of the same. An injunction, at this stage, is perhaps too little, too late, when substantial damage may already have been caused by their delayed action.
24. The following directions are issued:
(i) Defendants No. 1 and 2, their partners/ proprietor, servants, employees, agents, representatives, distributors/dealers and any and Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 8 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:44 all persons acting for and on their behalf are restrained from manufacturing, marketing, stocking, supplying, selling and offering for sale, advertising, directly or indirectly, medicinal and pharmaceutical preparations under the trade mark - 'TELMA' and 'TELMA-AM' and/ or any other mark deceptively similar to above marks that are likely to cause confusion or deception amounting to infringement or passing off of Plaintiff's trademark registrations, as mentioned in para No. 10 of the Plaint.
(ii) Defendants No. 1 and 2 are directed to file an affidavit within a period of two weeks from the date of service of the notice, giving complete address and GSTIN of source of their supplier corresponding with batch numbers.
(iii) Deputy Commissioner of Police, South West, New Delhi and Joint Commissioner Police (Crime), New Delhi are directed to submit their respective status reports with respect to the criminal complaints submitted by Plaintiff's authorized representative [being IIRIS] dated 01st November, 2022 received vide Diary No. 15301 by DCP, South West, New Delhi and complaint dated 23rd November, 2022 received vide Diary No. 4494 by Joint CP (Crime), New Delhi. The status reports should also contain action taken by them from the date of receipt of the above-said complaint till service of a copy of this order.
(iv) The Drug Inspector, South West District, New Delhi is directed to submit a status report within a period of one week from the receipt of the copy of this order, providing therein the action taken on the complaint submitted by Plaintiff's authorized representative [being IIRIS] dated 15th November, 2022.Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 9 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:44
(v) Defendants No. 1 and 2 are directed to file an affidavit within one week from service of this order wherein they shall disclose complete details of the 'TELMA' and 'TELMA-AM' products sold by them under Batch No. - 18210538 as well as those available with them/ in stock.
25. Compliance of Order XXXIX Rule 3 of CPC be done with one week from today.
26. List before the Court on 06th July, 2023.
27. Registry is directed to serve a copy of this order to Deputy Commissioner of Police, South West, New Delhi and Joint Commissioner Police (Crime), New Delhi and Drug Inspector, South West District, New Delhi, for compliance.
SANJEEV NARULA, J JANUARY 20, 2023 riya Signature Not Verified Digitally Signed CS(COMM) 38/2023 Page 10 of 10 By:SAPNA SETHI Signing Date:21.01.2023 18:08:44