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9. Sun Pharma Industries Ltd. vs Cipla Ltd. 2009 (108) DRJ 207

10. Allergan v. Chetana Pharma, 2007 (34) PTC 267 (Cal) (SJ)

11. Hindustan Pencils (P) Ltd. v. India Stationery, AIR 1990 Del 19

12. Shri Pankaj Goel v. Dabur 2008 (38) PTC 49 (Del)

16. Ld Counsel for the defendant has relied upon the following judgments:

1. Premier SPG and WVG Mills Pvt. Ltd. Vs. Football Association Premier League Ltd. & Anr, C.A.(COMM.IPD-TM) 15/2023 & I.A. 12418/2023
2. Vasundhara Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani,2022 SCC OnLine Del 3370

(v) Ld Counsel for the defendant had submitted that the registration of the trade mark MEDILICE in class 3, was in the name of the original plaintiff no. 2 Wings Biotech and there was no valid assignment of the said trade mark in favour of original plaintiff no. 1 i.e. Wings CS No.208/20 Wings Pharmaceuticals P Ltd Vs Kirit Bhadiadra Trading As Rapple Health Care Page No.23 of 43 Pharmaceuticals Private Limited (plaintiff only as per amended memo of parties). However, PW-1 has deposed that the plaintiff's trade mark application for MEDILICE under no. 2845531 was originally filed by the partnership firm i.e. M/s Wings Biotech (Ex. PW-1/14). In 2014, PW-1 joined the partnership firm (Ex. PW-1/Z), thereafter the said partnership firm underwent a change in April 2021, wherein partnership firm (M/s Wings Biotech) was converted into Wings Biotech LLP as recited in Ex. PW-1/ DX1. PW-1 has further deposed that the abovementioned registration stands assigned along with all right, title, interest & goodwill to the plaintiff (namely Wings Pharmaceutical P. Ltd.) vide assignment deed dated 25.3.2022 vide Ex. PW-1/ DX1. PW-1 has confirmed the date on which the assignment deed was signed in the presence of Notary Public. PW-1 has also claimed that all the aforementioned entities are part of the family owned group entities. Ld Counsel for the plaintiff had submitted that requisite request dated 13- 07-2022 was filed by the plaintiff before the Registrar of Trade Mark for its name to be recorded as subsequent proprietor vide Ex. PW 1/17. Ld Counsel for the defendant had submitted that the same was not valid assignment as the record of Registrar Trade Mark still mentions the said trade mark to be registered in the name of original plaintiff no. 2 M/s. Wings Biotech and not in the name of original plaintiff no. 1 (now plaintiff only as per amended memo of parties). Ld Counsel for the defendant had relied upon the judgment in the case of M/s Sambhu Nath & Brothers Vs Jai Rajendra Impex Private Ltd & Ors 2011 SCC OnLine CS No.208/20 Wings Pharmaceuticals P Ltd Vs Kirit Bhadiadra Trading As Rapple Health Care Page No.24 of 43 Cal 5457, to submit that since no steps were taken to perfect the trade mark assignment, same may dis-entitle the plaintiff from proceeding on the ground of infringement. In rebuttal, Ld Counsel for the plaintiff has relied upon the judgment of Sun Pharma Industries Ltd. vs. Cipla Ltd. 2009 (108) DRJ 207 (para 8, 11 & 23), to submit that a third party cannot challenge an assignment between the plaintiffs. He had further submitted that in terms of the said judgment, a dispute as to assignment can be raised by the assignor or by some person claiming prior assignment and not by strangers or by persons claiming adversely to the assignor. I find force in the said argument of Ld Counsel for the plaintiff. Furthermore, the said assignment in favour of plaintiff no. 1 was permitted by the Trade Mark Registry vide Ex. PW1/DX1. In view of the same and in view of the aforesaid discussion, it is held that the said assignment was validly done in favour of the plaintiff and the plaintiff is having trade mark MEDILICE since 19-11-2014 under class 3 and the said registration is valid and subsisting. Thus, as per section 28 of the Trade Marks Act, 1999, the plaintiff has the exclusive right to use the said trade mark MEDILICE in respect to its "shampoo" falling under class 3. Admittedly, the defendant is not manufacturing any product qua its purported trade mark MEDILICE registered under class 16 Ex. DW-1/9 (although registration not duly proved) pertaining to stationary etc. The claim of the defendant is that its MEDILICE Lice Killer Oil (ayurvedic) falls under class 5. Although in the written statement the defendant had not claimed itself to be the prior user under CS No.208/20 Wings Pharmaceuticals P Ltd Vs Kirit Bhadiadra Trading As Rapple Health Care Page No.25 of 43 class 3 i.e. for MEDILICE LICE KILLER for lice treatment but in its written submissions defendant has taken a plea that it is prior user in respect of the same under class 3. Ld Counsel for the defendant had relied upon judgment reported as Mittal Electronics v. Sujata Home Appliances (P) Ltd. And Ors. MANU/DE/1695/2020, to claim that competing goods are not allied and cognate. However, Ld Counsel for the plaintiff has stated that the competing goods are allied and cognate in as much as they have same purpose. Furthermore, if the plea of the defendant is accepted then it would lead to an anomaly as the infringers would start using famous marks for goods that proprietors don't use, while claiming that they are prior user. I find force in the arguments of the Ld Counsel for the plaintiff.