Glaxo Group Limited v. Manish Modi & ANR.

$~22 * IN THE HIGH COURT OF DELHI AT NEW DELHI + CS(COMM) 621/2022, I.A. 14546/2022, I.A. 14549/2022, I.A. 14552/2022, I.A. 22348/2022, I.A. 765/2023 & I.A. 10224/2023 GLAXO GROUP LIMITED .....Plaintiff Through:

Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Jaskaran Singh and Mr. Ritesh Kumar, Advs.

M: 9811600017 Email: scip@sc_ip.in versus MANISH MODI & ANR.

.....Defendants Through:

Ms. Neha Singh, Mr. Rahul, Mr. N.K.

Chaturvedi, Mr. Saurabh Singh and Mr. Sukhendra, Advs.

M: 9625699912

CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA

O R D E R

% 06.09.2024 1.

The present case has been filed seeking permanent injunction against the defendants and its related parties from using the infringing mark 'BETASOL' on the ground that it infringes the plaintiff's registered mark, i.e., 'BETNESOL'.

2.

As per the case canvassed by the plaintiff in the present case, the plaintiff's tablets under the plaintiff's 'BETNESOL' tablet strip packaging, are sold in silver coloured aluminium strip packaging, contained in an outer packaging, as follows:

CS(COMM) 621/2022 Page 1 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

3.

The defendants are engaged in the business of manufacture and sale of pharmaceutical and medicinal products, including, most prominently, tablets bearing the mark 'BETASOL'. The defendants' tablets bearing the defendants' 'BETASOL' mark contain the active ingredient, Betamethasone Sodium Phosphate.

CS(COMM) 621/2022 Page 2 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

4.

The defendants' tablets bearing the defendants' 'BETASOL' mark are sold in a silver coloured aluminium strip packaging, with red lettering. The packaging of the defendants, as shown in the plaint, is reproduced as under: CS(COMM) 621/2022 Page 3 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

5.

The plaintiff is the proprietor of a valid and subsisting registration, namely, registration no. 200822, for the mark 'BETNESOL' covering "pharmaceutical, veterinary and sanitary substances" in Class 5. The said registration is dated 21st February, 1961, and has been renewed till 21st February, 2030. The plaintiff became the subsequent proprietor of registration no. 200822, owing to an assignment from Glaxo Laboratories Limited in 1981.

6.

The said suit has been filed since the defendants were found to be using the mark 'BETASOL', which is deceptively similar to the plaintiff's 'BETNESOL' mark.

7.

Side by side comparison of the rival tablet strip packaging, as given in the plaint, is shown as under:

8.

This court notes the submission on behalf of the plaintiff that the plaintiff first conceived its mark 'BETNESOL', in the early 1960's. Around the same time, the plaintiff began using the said marks on and in relation to CS(COMM) 621/2022 Page 4 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

medicinal and pharmaceutical preparations, including, but not limited to tablets, used to treat a wide variety of diseases, including allergies, arthritis, and inflammatory disorders.

9.

This Court had recorded on the last date of hearing that the defendants are ready to give up the mark 'BETASOL'. It is further submitted that after the injunction order dated 07th September, 2022, the use of the mark 'BETASOL' has been stopped by the defendant.

10.

Pursuant to the last order, an affidavit of undertaking has been filed on behalf of the defendants, which reads as under: CS(COMM) 621/2022 Page 5 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

11.

Learned counsel appearing for the defendant submits that the affidavit of undertaking filed on behalf of defendant no.1 shall be binding on defendant no.2 also. The said statement is noted and taken on record. 12.

Learned counsel appearing for the defendants further submits that the CS(COMM) 621/2022 Page 6 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

defendants shall not use the mark 'BETASOL' as well as the trade dress and packaging, which is deceptively similar to the plaintiff's trademark 'BETNESOL' or their trade dress/packaging.

13.

The aforesaid undertaking on behalf of both the defendants is taken on record. The defendants are held bound by their undertaking given before this Court.

14.

This Court notes that at the time of issuing summons, a local commissioner had been appointed, who has duly filed his report. As per the report of the local commissioner, the following products were confiscated during the course of execution of the local commission: CS(COMM) 621/2022 Page 7 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

15.

Considering the aforesaid, this Court is of the view that the plaintiff is entitled for damages.

16.

Considering the documents on record and the submissions made before this Court, this Court is of the view that ends of justice shall be met if cost/damages of ₹4 lacs is paid by the defendants, to the plaintiff. 17.

At this stage, learned counsel appearing for the plaintiff submits that the cost/damages payable to the plaintiff be paid through the counsel for the plaintiff.

18.

Learned counsel appearing for the defendant on the other hand submits that some time may be granted to give the said amount of ₹4 lacs to the plaintiff.

19.

Accordingly, it is directed as follows:

19.1 The suit is decreed in favour of the plaintiff in terms of prayer Clause paragraph 67 (a) to (d) of the plaint.

19.2 Cost/damages of ₹4 lacs shall be paid by the defendants to the plaintiff, through the plaintiff's counsel, i.e., Sujata Chaudhri IP Attorneys, within a period of ten weeks.

19.3 The seized goods, as detailed in the Local Commissioner's report, shall be destroyed by the defendants, in the presence of the plaintiff's representatives.

20.

Decree sheet, accordingly, be drawn up.

21.

The suit, along with the pending applications, is disposed of. MINI PUSHKARNA, J SEPTEMBER 6, 2024/kr CS(COMM) 621/2022 Page 8 of 8 The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.