Delhi High Court - Orders
Alkem Laboratories Ltd vs Ms Volant Pharmaceuticals & Ors on 20 December, 2023
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~47
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 915/2023, I.As. 25717/2023, 25718/2023, 25719/2023
& 25720/2023
ALKEM LABORATORIES LTD. ...... Plaintiff
Through: Mr. Sagar Chandra, Ms. Ishani
Chandra, Ms. Srijan Uppal, Mr.
Abhishek Bhati, Mr. Sanket Singh
Sengar, Advs. (M. 9873559827)
versus
MS VOLANT PHARMACEUTICALS & ORS ..... Defendants
Through: None.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 20.12.2023
1. This hearing has been done through hybrid mode.
I.A. 25718/2023 (for additional documents)
2. This is an application filed by the Plaintiffs seeking leave to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act'). The Plaintiff, if it wishes to file additional documents at a later stage, shall do so strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
3. The application is disposed of.
I.A. 25719/2023 (for exemption)
4. This is an application seeking exemption from filing originals/certified/cleared/typed or translated copies of documents, proper margins, electronic documents, etc. Original documents shall be produced/filed CS(COMM) 915/2023 Page 1 of 10 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 21/12/2023 at 23:32:07 at the time of Admission/Denial, if sought, strictly as per the provisions of the Commercial Courts Act and the DHC (Original Side) Rules, 2018.
5. Exemption is allowed, subject to all just exceptions. Accordingly, application is disposed of.
I.A. 25720/2023 (u/S 12A)
6. This is an application filed by the Plaintiffs seeking exemption instituting pre-litigation mediation under Section 12A of the Commercial Courts Act.
7. Considering the facts and circumstances of the case, which shows that the Defendants are repeated infringers, the Court is satisfied that in terms of the judgment of the Hon'ble Supreme Court in Yamini Manohar v. T.K.D Keerthi, (2023 LiveLaw (SC) 906), that the present suit contemplates urgent interim relief.
8. Accordingly, the exemption is allowed and application is disposed of. CS(COMM) 915/2023
9. Let the plaint be registered as a suit.
10. Issue summons to the Defendants through all modes upon filing of Process Fee.
11. The summons to the Defendants shall indicate that the written statement to the plaint shall be positively filed within 30 days from 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 the receipt of the written statement(s). Along with the replication, if any, filed by CS(COMM) 915/2023 Page 2 of 10 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 21/12/2023 at 23:32:07 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 15th February, 2024. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.
14. List before Court on 10th May, 2024 before the Roster Bench. I.A.25717/2023 (u/O XXXIX Rule 1 and 2 CPC)
15. Issue notice.
16. The matter has been received on transfer in typed supplementary list owing to non-availability of the Coordinate Bench.
17. The Plaintiff - Alkem Laboratories Ltd. has filed the present suit against Defendant No.1 - M/s. Volant Pharmaceuticals Partnership Firm its partners i.e. Defendant No.2 - Ms. Vaishaliben Vipulbhai Patel and Defendant No.3 Mr. Vipulbhai R. Patel as also its manufacturers and distributors i.e. Defendant No.4 - M/s. Plethico Laboratories Pvt. Ltd, Defendant No.5 - M/s. Makin Laboratories Pvt. Ltd. and Defendant No.6 - M/s. Shree Hari Pharma Distributors seeking enforcement and protection of its mark 'A TO Z' used in respect of pharmaceutical and nutraceuticals preparations.
18. The case of the Plaintiff is that it was established in the year 1973 and is one of the leading pharmaceutical companies in India with a global presence. It manufactures a large range of pharmaceutical and nutraceutical products in various segments. It is stated that the Plaintiff has a portfolio of over 800+ CS(COMM) 915/2023 Page 3 of 10 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 21/12/2023 at 23:32:07 brands, covering all major therapeutic segments with 6 of the brands featuring among the top 100 pharmaceutical brands in India. It is also stated that the Plaintiff employs more than 500 scientists who work across 6 globally located R&D Facilities. It is also averred that the Plaintiff has been in the business of Pharmaceuticals for almost 5 decades and is known for the quality of its goods. One of Plaintiff's range of pharmaceutical preparations are sold under the brand 'A TO Z' which was adopted in 1997 along with a distinctive logo which is set out below:
19. The mark is used by the Plaintiff is in respect of multi-vitamin health supplements in tablets, capsules and in syrup form. The 'A TO Z' family of marks has been used by the Plaintiff in different variant forms and with various suffixes, some of which are as under:
CS(COMM) 915/2023 Page 4 of 10This 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 21/12/2023 at 23:32:07
20. The Plaintiff is the registered proprietor of the mark 'A TO Z', both as a device mark and in word form. The details of the registrations are set out in paragraph 9 of the plaint. The earliest registration of the mark 'A TO Z' dates back to 2007.
21. The sales of the Plaintiff of the 'A TO Z' branded products is to the tune of Rs.326 crores in the year 2022-23 and almost 10% of the same to the tune of Rs.34 crores is being spent on sales and advertisements as promotional expenses.
22. The grievance in the present suit is that the Defendants have adopted the mark 'A vol Z' in an almost identical fashion with the same colour combination and for the same formulation.
23. Mr. Sagar Chandra, ld. Counsel for the Plaintiff has handed over to the Court the physical products and submits that in the manner in which 'A vol Z' is used on the packaging itself proves that the entire emphasis is on 'A' and 'Z' in a manner so as to cause deception. The comparative chart of the two products is set out below:
CS(COMM) 915/2023 Page 5 of 10This 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 21/12/2023 at 23:32:07 CS(COMM) 915/2023 Page 6 of 10 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 21/12/2023 at 23:32:07
24. The Plaintiff has issued a legal notice to the Defendants on 10th August, 2023. In response thereto, the Defendants did not comply with the requisitions which were sought.
25. The Court has perused the comparative packaging. A perusal of the same would show that the addition of `vol' may be from the trade name of the Defendant No.1 namely, M/s Volant Pharmaceuticals but the intention to cause deception is evident from the comparative names and packaging of the two products. The difference is almost miniscule and is not discernible at all.
26. The Defendants' adoption of the mark 'A vol Z' is not merely violative of the Plaintiff's rights but is likely to cause confusion amongst not only the consumers but as also with the doctors and chemists. Further, in the foil packaging which is the manner in which the patient would be seeing the medicine without the outer carton, the term 'vol' is smaller in size than 'A' and 'Z'. The shaded manner in which the black printing is put on the packaging is also quite deceptive in nature. Thus, for any unwary patients, the Defendants' product would be clearly deceiving.
27. Especially in pharmaceutical preparations, such confusion is to be avoided. The test and the threshold in such products are much higher as held in the decision of Cadila Healthcare vs. Cadila Pharma, (2001) 5 SCC 73. In the said case, the Hon'ble Supreme Court specifically observed that strict measures need to be taken to ensure that similarity of marks of medicines is avoided, particularly due to the varying medical infrastructure in the country. The relevant extract of the said judgement is set out below:
CS(COMM) 915/2023 Page 7 of 10This 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 21/12/2023 at 23:32:07 "34. As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken."
28. Further, in Cadila Healthcare (supra), it was held that, confusion in the case of drugs could even be dangerous to the customers and patients. In the said case, the Hon'ble Supreme Court also held as under:
38. Trade mark is essentially adopted to advertise one's product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiff's right is "against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business.
The action is regarded as an action for deceit." (See Wander Ltd. Vs. Antox India Pvt Ltd., 1990 Suppl. SCC 727.
39. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-
CS(COMM) 915/2023 Page 8 of 10This 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 21/12/2023 at 23:32:08 medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under:
"The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."
29. Under such circumstances, the Plaintiff has made out a prima facie case in its favour for grant of an ex parte ad interim injunction, as there is a complete possibility of the Defendants' products being mistaken as that of Plaintiff. Considering the products in question are pharmaceutical and nutraceutical products, the balance of convenience is also clearly in favour of CS(COMM) 915/2023 Page 9 of 10 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 21/12/2023 at 23:32:08 the Plaintiff. Further, irreparable injury shall be caused not just to the Plaintiff, but to the public at large as well, in case products with a deceptively similar mark as that of the Plaintiff are allowed to continue in the market.
30. Accordingly, till the next date of hearing, the Defendants and everyone acting on their behalf shall stand restrained from using the impugned marks 'A Vol Z'/ and impugned trade dress i.e. the red coloured strip and get up or any other mark, which is identical or deceptively similar to the Plaintiff's mark 'A TO Z' as also the accompanying packaging thereof, in respect of pharmaceutical, nutraceutical, medicinal supplements or any other allied or cognate goods or services.
31. The Defendants shall also stand restrained from using any identical or imitative colour combination and packaging as that of the Plaintiff's 'A to Z' product.
32. Compliance of order XXXIX Rule 3 CPC be done within one week.
33. Reply to this application be filed within four weeks of service of the present order and the complete paper books.
34. List before the Joint Registrar on 15th February, 2024.
35. List before the Roster Bench on 10th May, 2024.
PRATHIBA M. SINGH, J.
DECEMBER 20, 2023 Rahul/kt CS(COMM) 915/2023 Page 10 of 10 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 21/12/2023 at 23:32:08