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Dr. Reddys Laboratories Limited vs Rikon Pharmaceuticals Pvt. Ltd on 22 July, 2022

Author: Prathiba M. Singh

Bench: Prathiba M. Singh

                          $~9
                          *     IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +          CS(COMM) 495/2022 & I.As. 11373-76/2022
                                DR. REDDYS LABORATORIES LIMITED           ..... Plaintiff
                                             Through: Mr. Ranjan Narula, Advocate.
                                             versus

                                RIKON PHARMACEUTICALS PVT. LTD.                      ..... Defendant
                                             Through: None.
                                CORAM:
                                JUSTICE PRATHIBA M. SINGH
                                                  ORDER

% 22.07.2022 I.A. 11374/2022 (for exemption)

1. This is an application filed on behalf of the plaintiff for exemption from filing clear copies of the documents.

2. Allowed, subject to all just exceptions.

3. I.A.11374/2022 is disposed of.

I.A. 11375/2022 (for additional documents)

4. This is an application filed on behalf of the plaintiff seeking leave of 30 days to file additional documents under the Commercial Courts, Commercial Division and Commercial Appellate Division of High Courts Act, 2015 (hereinafter, 'Commercial Courts Act').

5. 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.

6. I.A. 11375/2022 is disposed of.

I.A. 11376/2022 (u/S 12A)

7. This is an application filed on behalf of the plaintiff seeking exemption from instituting pre-litigation mediation u/s 12A of the Commercial Courts Act.

8. In view of the orders passed in CS (COMM) 132/2022 titled Upgrad Education v. Intellipaat Software, I.A.11376/2022 is allowed and disposed of.

CS(COMM) 495/2022

9. Let the plaint be registered as a suit.

10. Issue summons to the Defendant through all modes upon filing of Process Fee.

11. The summons to the Defendant shall indicate that a written statement to the plaint shall be positively filed within 30 days from date of receipt of summons. Along with the written statement, the Defendant 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 the Plaintiff, an affidavit of admission/denial of documents of the Defendant, 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 ld. Joint Registrar for marking of exhibits on 14th September, 2022. It is made clear that any party unjustifiably denying documents would be liable to be burdened with costs.

14. List before Court on 27th October, 2022.

I.A. 11373/2022 (u/O XXXIX Rule 1 and 2 CPC)

15. The present suit has been filed seeking permanent injunction restraining violation, infringement of the trademark, passing off and other reliefs in respect of the mark 'NISE' which is a registered trademark of the Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 495/2022 Page 2 of 6 Signing Date:25.07.2022 18:21:50 Plaintiff - Dr. Reddy's Laboratories Ltd. The said mark was adopted and coined by the plaintiff in 1995. It is a registered trademark since 26th May 1998 in Class 5 and is used in respect of nimesulide based preparations. The sales of the Plaintiff have been set out. The sales of the Plaintiff for the year 2018-2019 was approximately Rs. 71 crores.

16. The grievance of the Plaintiff is that the Defendant - Rikon Pharmaceuticals Pvt. Ltd. has deliberately adopted an identical mark 'NISE- P' for similar paracetamol preparations i.e. analgesic and antipyretic suspension to cause confusion among members of trade.

17. Mr. Narula ld. Counsel appearing on behalf of the Plaintiff submits that the Defendant has registration for the mark 'RIKONISE' but chooses to use the same in a complete mala fide manner with the letters 'RIKO' in a very small font and giving undue prominence to the 'NISE-P'. Reliance is place upon the registrations status of the Defendant's mark which shows that the user claim is of 26th October 2013 for 'RIKONISE'. It is his submission that considering that these are pharmaceutical preparations and the Plaintiff's product is a very well-known product, an injunction ought to be granted.

18. The Court has perused the product packagings and the registrations of the Plaintiff and the Defendant. A perusal of the same show that the Plaintiff has various marks registered with the prominent features as 'NISE (LABEL)', 'NISE', 'NISE KID TABLETS', 'NISE TABLETS', 'NISE DROPS' and 'NISE SUSPENSION'.

19. The range of the products of the Plaintiff are sold extensively. The Defendant's product 'NISE-P'. The competing labels are set out below:

PLAINTIFF'S PRODUCT DEFENDANT'S PRODUCT Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 495/2022 Page 4 of 6 Signing Date:25.07.2022 18:21:50

20. Though the Defendant has a registration for the mark 'RIKONISE', however, the usage by the Defendant is Riko in a miniscule font and NISE-P in a manner which is almost identical to the manner in which the Pcompletely in a manner that can cause confusion. Moreover, these being pharmaceutical preparations, the Plaintiff is selling nimesulide based preparations under the mark 'NISE' whereas the Defendant is selling Aceclofenac & Paracetamol Suspension. An identical mark is being used for different combinations and different content though directed towards the same ailment as the Plaintiff's product. However, going by the test laid down in Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited in CA 2372/2001 by the Supreme Court, in pharmaceutical preparations, any form of confusion is to be avoided. Further, this Court is convinced that the adoption and use of the mark 'NISE-P' is not bonafide inasmuch as the Defendant's mark is registered as 'RIKONISE'.

21. Under the overall facts and circumstances, the Plaintiff has made out a prima facie case for injunction. The Defendant and all other acting for or on their behalf are restrained from manufacturing, selling, offering for sale or in similar font and colour combinations any pharmaceutical preparations under the mark NISE', 'NISE-P' or any other mark which is identically or confusingly similar with the Plaintiff's mark 'NISE'. The Defendant being the registered proprietor of the mark 'RIKONISE' is however permitted to use the said mark as is registered on the Register without breaking the parts of the mark in any manner whatsoever.

22. The pictorial depiction of the Defendant's product packagings has been placed on record. Ld. counsel for the Plaintiff to ensure that the original packagings is placed on record within two weeks.

23. Compliance of Order XXXIX Rule 3 CPC be done within one week.

24. List before the Court on 27th October, 2022.

PRATHIBA M. SINGH, J JULY 22, 2022 Rahul/KT Signature Not Verified Digitally Signed By:DEVANSHU JOSHI CS(COMM) 495/2022 Page 6 of 6 Signing Date:25.07.2022 18:21:50