High Court of DelhiCS(COMM)/395/2024

Abbott Gmbh And & ORS. v. Elder Prroject Limited

2024-11-27Hon'Ble Ms. Justice Mini Pushkarna13 pages

$~45 *

IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS(COMM) 395/2024, I.A. 11099/2024, I.A. 11100/2024, I.A. 11101/2024, I.A. 11102/2024, I.A. 39215/2024 & I.A. 44711/2024 ABBOTT GMBH AND & ORS.

.....Plaintiffs Through:

Mr.

Anirudh Bakhru, Mr.

Shakti Priyan Nair, Mr. Parth Bajaj, Ms.

Vijay Laxmi Rathi, Advocates (M:9711721913) versus ELDER PRROJECT LIMITED .....Defendant Through:

Mr.

Kaveesh Nair, Ms.

Mahima Mukherjee, Ms. Vidula Mehrotra, Mr.

Utsav Saxena,, Ms. Rachael Tuli, Advocates for D-1 (M:9711224074) Mr.

Chirag Madan, Mr.

Rahul Agarwal, Mr. Ronit Bose, Advocates for D-2 along with Mr. Ankit Jain, DGM Procurement of D-2 in person (M:9999276327)

CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA

O R D E R

% 27.11.2024 1.

The present suit has been filed seeking permanent injunction restraining the defendants in relation to the plaintiff's trademark 'THYRONORM', registered design 'THYRONORM cap design-Fliptop Cap' and the trade dress Pink and White. It is the case of the plaintiffs that the defendants' infringing mark and trade dress, i.e., THYROXIUM has the cap color of Pink and White, which makes the mark/trade dress, deceptively similar to that of the plaintiffs.

It is to be noted that when the matter was listed for the first time on The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

15th May, 2024, learned counsel for the defendants on advance notice had made a categorical statement that defendants shall stop the manufacture and marketing of the pharmaceutical products in trade dress/packaging, impugned by the plaintiffs. The statement of the defendants, as recorded in the order dated 15th May, 2024, reads as under: "1. At the outset, counsel for the defendant appears on advance notice and states that he has instructions that the defendant shall stop the manufacture and marketing of the pharmaceutical products in trade dress/packaging, impugned by the plaintiff. The said assertion is made by the counsel for the defendant without prejudice to rights and contentions.

xxx xxx xxx"

This Court notes that when the matter was listed for hearing on 11th September, 2024, learned counsel appearing of the defendants again reiterated the undertaking before the Court that the defendants had already stopped manufacturing, marketing and sale of the product under the impugned trade dress.

Subsequently, learned counsel for the plaintiffs brought to the notice of this Court that the listings of the impugned products of defendant no.2, are still available, on third party websites. Thus, this Court notes the submission of learned counsel appearing for the defendants that letters have already been written by the defendants to the various E-commerce websites to bring down the impugned listings. However, as per learned counsel for the plaintiffs, the listings of the products of the defendants are still visible on E-commerce websites.

Today, defendant nos. 1 and 2 are present before this Court, pursuant to the directions issued by this Court.

Defendant nos. 1 and 2 undertake before this Court that they have The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

already stopped the marketing of their product under the impugned trade dress.

The defendants have handed over to this Court photographs showing the new trade dress, having been adopted by the defendants. 8.

The images of the new trade dress, having been adopted by the defendants, are attached as Annexure-A to the present order. 9.

Learned counsel for the plaintiffs expresses satisfaction that the new trade dress adopted by the defendants, is not similar or deceptively similar to the trade dress/registered design of the plaintiff, which is the subject matter of the present suit.

10.

Defendant nos. 1 and 2 submit that the products with the infringing trade dress have already been recalled from their stockiest. A list of stockiest has been given by defendants who are present in person. The list of the stockiest of the defendants is annexed as Annexure-B, to the present order. 11.

The defendants, who are present before this Court, undertake and submit in categorical terms that all the products of the defendants with the impugned trade dress, are no longer with the stockiest and that the same have been returned to the defendants. The aforesaid statement made by the defendants, is taken note of, and the defendants are held bound by the same. 12.

The defendants who are present in Court submit that all the Pink color caps of all the returned products, have been destroyed. 13.

Learned counsel for the plaintiffs submits that in view of the aforesaid undertaking given by the defendants, the suit can be decreed in favour of the plaintiffs, and the plaintiffs shall give up their prayer towards Costs and Damages.

14.

Accordingly, the following directions are issued: The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

The suit is decreed in favour of the plaintiffs and against the defendants in terms of Paragraph-51 (i) to (iii) of the plaint. II.

The following listings, as occurring in the E-commerce website, are directed to be taken down immediately:

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

15.

In view of the fact that the parties have arrived at a settlement, Registry of this Court is directed to issue a certificate for refund of 50% of the Court fees to the plaintiffs through counsel, i.e., RNA IP Attorneys. 16.

Let decree sheet be drawn up.

17.

The present suit, along with the pending applications, stands disposed of.

MINI PUSHKARNA, J NOVEMBER 27, 2024/au The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

ANNEXURE-A The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

ANNEXURE-B The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.