Sanofi S A & ORS. v. Glensmith Labs Pvt Ltd & ANR.

$~10 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 342/2023 & I.As. 10171/2023, 22407/2023, 22484/2023 SANOFI S A & ORS.

..... Plaintiffs Through:

Mr. Peeyoosh Kalra, Ms. V. Mohini and Ms. Pragati Agrawal, Advocates.

versus GLENSMITH LABS PVT LTD & ANR.

..... Defendants Through:

Mr. Mohan Vidhani, Mr. Summit Aggarwal, Mr. Prakhar Singh and Ms.

Neha Vidhani, Advocates.

CORAM:

HON'BLE MR. JUSTICE SANJEEV NARULA

O R D E R

% 20.03.2024 1.

The order dated 29th January, 2024 records the events that transpired during the pendency of the suit, to the following effect: "I.A. 10171/2023(u/O XXXIX Rules 1 and 2 of CPC) 1.

The present suit pertains to Plaintiffs No. 1 and 2's registered trademarks "ENTEROGERMINIA" and trade dress/ label/ packaging "

". They have approached this Court alleging that Defendants' impugned marks "BACTOGERMINA" " and "

and trade dress/ label/ packaging "

" amounts to infringement of Plaintiffs' mark and trade dress. 2.

Pending final adjudication, Defendants have now, without prejudice to their rights and contentions, agreed to use a different The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

packaging. Copy of the said label has been handed over across the board, and is taken on record.

3.

Mr. Mohan Vidhani, counsel for Defendant No. 1, states that during the pendency of the suit, they would be using the afore-said label and in case they would like change the same, they shall seek Court's prior approval.

4.

In light of the above statement, Mr. Peeyoosh Kalra, counsel for Plaintiffs, states that the application can be disposed of and the parties can then be put to trial.

5.

Mr. Vidhani's statement is taken on record and shall bind Defendant No. 1. Accordingly, the application is disposed of." 2.

Today, Mr. Mohan Vidhani, counsel for Defendants, on instructions, states that as the Defendants have already adopted a new packaging (as recorded in the afore-noted order), they no longer wish to continue the use of the packaging impugned in the present suit. He submits that henceforth, Defendants shall be using the new packaging for their product "BACTOGERMINA", which is extracted hereinbelow for the sake of clarity:

3.

Mr. Vidhani further states that in the event the Defendants were to The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

change the label/ packaging of their product sold under the trademark "BACTOGERMINA" in future, the same shall not be deceptively similar to the Plaintiff's registered trademark or trade dress. 4.

In light of the above development, Mr. Peeyoosh Kalra, counsel for Plaintiffs, on instructions, submits that the suit may be disposed of binding the Defendants' to the undertaking noted above. At the same time, he clarifies that the Plaintiffs' assent to the disposal of suit on Defendants' undertaking is based on the peculiar facts and circumstances of the present case. Mr. Kalra states that this must not be construed as waiver by the Plaintiffs of their right to seek action against any third-party who may be using a trademark that is phonetically similar to the Plaintiff's trademark "ENTEROGERMINIA".

5.

In view of the above, taking the afore-noted statement of Mr. Vidhani on record and binding the Defendants to the same, the present suit is decreed in favour of the Plaintiff in the said terms. 6.

Decree sheet be drawn up.

SANJEEV NARULA, J MARCH 20, 2024 as The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.