Delhi High Court - Orders
Alkem Laboratories Ltd vs Dr Best Pharmaceuticals Pvt Ltd & Ors on 9 December, 2021
Author: C.Hari Shankar
Bench: C.Hari Shankar
$~18
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 633/2021
ALKEM LABORATORIES LTD ..... Plaintiff
Through: Mr. Sandeep Sethi, Sr.
Advocate with Mr. Sagar Chandra, Ms.
Ishani Chandra, Ms. Shubhie Wahi and Ms.
Sanya Kapoor, Advs.
versus
DR BEST PHARMACEUTICALS
PVT LTD & ORS. ..... Defendants
Through: None
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
ORDER
% 09.12.2021 I.A. 16231/2021 (Section 12A of the Commercial Courts Act, 2015)
1. For the reasons stated in the application, the requirement of pre- litigation mediation is dispensed with.
2. The application is allowed.
I.A. 16230/20213. Subject to the plaintiff filing legible copies of any illegible and dim documents on which it may seek to place reliance within a period of four weeks from today, exemption is granted for the present.
4. The application is disposed of.
Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 1 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46I.A. 16229/2021 (Order XI Rule 1(4) of CPC, 1908)
5. Subject to the right of the defendants to admit or deny the same, the plaintiff is permitted to file additional documents within a period of four weeks from today.
6. The application is disposed of accordingly.
CS(COMM) 633/2021 & I.A. 16228/2021 (Order XXXIX Rules 1 and 2 of CPC, 1908)
7. The plaintiff alleges infringement and passing off by the defendants of the registered trademark of the plaintiff as well as of the defendants' goods as associated with the plaintiff.
8. The plaintiff asserts, in the plaint, that it manufactures pantaprazole, in various formulations, under the trademark "PAN", such as PAN-40, PAN-20, PAN 20 MD, PAN-IT, PAN-L, PAN IV, PAN MPS etc. These marks have been referred to, in the plaint, as the "PAN Family of Marks". The plaintiff has various registrations for the "PAN Family of Marks" in Class 5 of the Schedule to the Trade Marks Rules, 2017. A list of the registrations has been provided in para 8 of the plaint thus:
S. Trade Mark Date of Class and Status Disclaimer/ No and Application Specification Condition/ Application and User of Goods and Association No. Detail Services
1. PAN-40 Date of [Class:5] Registered Registration 899035 Application: Medicinal And and Valid of this 20/01/2000 Pharmaceutical upto Trade Mark Preparations 20/01/2030 shall give User Details: And no right to Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 2 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46 Proposed to Substances the be used exclusive use of the numeral-40
2. PAN-40 Date of [Class:5] Registered Registration Application: "Medicinal and Valid of this 23/10/2000 Pharmaceutical upto Trade Mark And Ayurvedic 23/10/2030 shall give User Detail: Preparations no right to 965862 04/10/2000 And the Substances." exclusive use of the numeral-40 Associated Trade Marks:
899035, 899036
3. PAN-20 Date of [Class:5] Registered 899036 Application: Medicinal And and Valid 20/01/2000 Pharmaceutical upto Preparations 20/01/2030 User Detail: And Proposed to Substances be used
4. PAN-20 MD Date of [Class:5] Registered 1919795 Application: "Medicinal and Valid 09/02/2010 Pharmaceutical upto And Ayurvedic 09/02/2030 User Detail: Preparations Proposed to And be used Substances."
5. PAN-IT Date of [Class:5] Registered 2089770 Application: "Medicinal and Valid 25/01/2011 Pharmaceutical upto And Ayurvedic 25/01/2031 User Detail: Preparations Proposed to And be used Substances."
6. PAN-L Date of [Class:5] Registered Application: "Medicinal and Valid 2202584 09/09/2011 Pharmaceutical upto And Ayurvedic 09/09/2031 User Detail: Preparations Proposed to And be used Substances."
7. PAN IV Date of [Class:5] Registered Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 3 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46 Application: "Medicinal and Valid 2229729 04/11/2011 Pharmaceutical upto And Ayurvedic 04/11/2021 User Detail: Preparations 01/08/2000 And Substances."
8. PAN MPS Date of [Class:5] Registered 3398744 Application: "Medicinal and Valid 27/10/2016 Pharmaceutical upto And Ayurvedic 27/10/2026 User Detail: Preparations 17/04/2014 And Substances, dietetic food and substances adapted for medical use, dietary supplements for humans, nutritional supplements"
9. PAN MPS-O Date of [Class:5] Registered Associated 3516373 Application: "Medicinal and Valid Trade 23/03/2017 Pharmaceutical upto Marks:
And Ayurvedic 29/03/2027 3398744 User Detail: Preparations Proposed to And be used Substances, dietetic food and substances adapted for medical use, dietary supplements for humans, nutritional supplements, nutraceutical preparations for therapeutic or medical purposes, nutraceuticals for use as dietary supplements"Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 4 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46
10. ITOPAN Date of [Class:5] Registered Application: "Medicinal and Valid 1399394 16/11/2005 Pharmaceutical upto And Ayurvedic 16/11/2025 User Detail: Preparations Proposed to And be used Substances included in Class 5"
11. DOLTAPAN Date of [Class:5] Registered Application: "Medicinal and Valid 2193994 23/01/2011 Pharmaceutical upto And Ayurvedic 23/08/2031 User Detail: Preparations Proposed to And be used Substances."
9. The plaintiff alleges that the defendants are marketing pantoprazole and associated products under the marks "DrPAN", "DrPan-D", "DrPan DSR", "DrPan Inj" and other such marks. The plaint also underscores the manner in which the defendants are representing their marks on its packages, for which purpose, the photographs of the packages have been provided in para 25 of the plaint thus:
Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 5 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:4610. As against this, the photographs of the packages in which the plaintiff clears its products have also been presented with the documents filed with the plaint, thus:
Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 6 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:4611. The plaint acknowledges the fact that an application seeking registration of the impugned marks "DrPAN", "DrPan-D" and "DrPan DSR", has been filed by Defendant 2. Mr. Sethi has invited my attention to the online status of the said application, as available on the website of the Registrar of Trademarks, reflecting its status as on 26th October, 2021. The status of the application is shown as "opposed". The date of application is reflected as 13th March, 2016 and user has been claimed since 15th January, 2015.
12. To a query from the Bench, as to why an ex parte injunction should be granted in a case where the defendants are claiming user since 15th January, 2015, Mr. Sethi points out that, in the aforesaid application for registration of the impugned marks, the applicant is Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 7 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46 shown as "Ashwani Bhalla Single Firm". He has claimed user only as an individual and not through any corporate entity. The application, therefore, does not refer to any company or other corporate entity, as the applicant for registration of the marks. Mr. Sethi points out that on coming to know of the aforesaid fact, when the plaintiff filed its opposition in the office of the Registry, the Defendant 2 in his response dated 20th May, 2021 did not claim any association with any corporate entity and also did not mention any longevity of user. On the other hand, he submits that the products under the alleged infringing marks are shown as manufactured by Defendants 3 and 4 and marketed by Defendant 1. Mr. Sethi points out that Defendants 3 and 4 have never applied for registration of the aforesaid mark and that the link between Defendant 2 and Defendants 3 and 4 is also, therefore, seriously suspect.
13. In view thereof, Mr. Sethi also points out that in order to give an opportunity to the defendants to cease using the infringed marks, a cease and desist notice had been issued by the plaintiff to the defendants on 27th September, 2021, to which, in response dated 4th October, 2021, the defendants merely denied the allegations in the notice. They, however, continued to use the impugned marks, in violation and derogation of the right of the plaintiff, consequent to registration of the marks in the plaintiff's favour.
14. The plaint also refers to earlier orders passed by Benches of this Court, in which the plaintiff's marks have been granted protection. Some of the impugned marks in these orders are nearly identical to the Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 8 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46 marks being used by the defendants.
15. In view thereof, a prima facie case has been made out by the plaintiff. The impugned marks are, on their face, deceptively similar to that the plaintiff and an unwary customer is likely to infer an association between the marks of the defendants and the plaintiff. The manner in which the defendants represent their marks on the packages also underscore the possibility of such an association. A prima facie case of infringement as well as passing off can, therefore, be said to have been made out. The plaintiff's prayer for injunction is also supported by orders passed in similar cases, where the marks of the plaintiff have been protected by other Benches of this Court.
16. In view thereof, let the plaint be registered as a suit. Issue summons in the suit to the defendants, returnable on 24th February, 2022 before the Joint Registrar for completion of pleadings, admission and denial of documents and marking of exhibits.
17. Written statement, if any, be filed within a period of four weeks accompanied by an affidavit of admission and denial of the documents filed by the plaintiff with advance copy to learned Counsel for the plaintiff, who may file replication thereto, if any, within a period of two weeks thereof accompanied by an affidavit of admission and denial of the documents filed by the defendants.
18. Issue notice to the defendants in IA 16228/2021, returnable on 10th March, 2022.
Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 9 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:4619. The prayer clause in this application read thus:
"It is therefore respectfully prayed before this Hon'ble Court that it may be pleased to grant the following orders in favour of the Plaintiff and against the Defendants:
i. Pass an ad interim injunction, ex parte or otherwise, restraining the Defendants, their directors, executives, partners or proprietors, as the case may be, their officers, servants and agents or any other persons acting for and on their behalf from manufacturing, selling, offering for sale, exporting, advertising, marketing and/or in any manner using directly or indirectly in relation to any pharmaceutical and/or medicinal preparation and/or such allied and cognate goods under the Impugned Marks s 'DrPAN'/ 'DrPan- D'/ 'DrPan DSR' and 'DrPan Inj' and/or any other mark identical and/or deceptively similar to the Plaintiff's marks 'PAN-D' and 'PAN Family of Marks' or doing any other thing amounting to infringement of the Plaintiff's 'PAN Family of Marks' registered in Class 5, passing off, dilution and unfair competition;
ii. Any other orders as this Hon'ble Court may deem fit and proper in the facts and circumstances of the present case."
20. Response to this application, if any, be filed within a period of four weeks from today with advance copy to learned Counsel for the plaintiff, who may file rejoinder thereto, if any, within a period of two weeks thereof.
21. Till the next date of hearing, there shall be an ex parte ad interim injunction in terms of prayer (i) in this application.
22. As the present order has been passed ex parte, the plaintiff Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 10 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46 would comply with the provisions of Order XXXIX Rule 3 of the CPC within two weeks from today.
C.HARI SHANKAR, J DECEMBER 9, 2021 r.bararia Signature Not Verified Digitally Signed CS(COMM) 633/2021 Page 11 of 11 By:SUNIL SINGH NEGI Signing Date:16.12.2021 12:36:46