Glaxosmithkline Pharmaceuticals Ltd. v. Horizon Bioceuticals Pvt. Ltd & ANR.

$~15 to 17 * IN THE HIGH COURT OF DELHI AT NEW DELHI + C.O. (COMM.IPD-TM) 6/2023 GLAXOSMITHKLINE PHARMACEUTICALS LTD. .....Petitioner Through:

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

versus HORIZON BIOCEUTICALS PVT. LTD & ANR. .....Respondents Through:

Mr. Vikas Khera, Ms. Sneha Sethia, Mr. Rohit and Mr. Yash Sharma, Advs.

+ CS(COMM) 8/2023 & I.A. 31403/2024 GLAXOSMITHKLINE PHARMACEUTICALS LTD. .....Plaintiff Through:

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

versus HORIZON BIOCEUTICALS PVT. LTD & ANR. .....Defendants Through:

Mr. Vikas Khera, Ms. Sneha Sethia, Mr. Rohit and Mr. Yash Sharma, Advs.

+ C.O. (COMM.IPD-TM) 5/2025 HORIZON BIOCEUTICALS PVT. LTD. .....Petitioner Through:

Through:

Mr. Vikas Khera, Ms.

Sneha Sethia, Mr. Rohit and Mr. Yash Sharma, Advs.

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

versus GLAXOSMITHKLINE PHARMACEUTICALS LIMITED & ANR .....Respondents Through:

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

CORAM:

HON'BLE MS. JUSTICE MINI PUSHKARNA % 03.02.2025

O R D E R

1.

Learned counsel appearing for the parties submit that the parties are ad idem that the matters can be disposed of, in terms of the statements made by the respective counsels, on the basis of instructions received from their respective clients.

2.

Learned counsel appearing for Horizon Bioceuticals Pvt. Ltd. submits that his client is ready to give up the use of the mark 'COMODEX', without prejudice, provided that GlaxoSmithKline Pharmaceuticals Limited, gives up its claim for costs and damages.

3.

Learned counsel appearing for GlaxoSmithKline Pharmaceuticals Limited, upon instructions, submits that his client is satisfied with the statement made by Horizon Bioceuticals Pvt. Ltd. Thus, he submits that GlaxoSmithKline Pharmaceuticals Limited shall give up its claim for costs and damages.

4.

He further submits that GlaxoSmithKline Pharmaceuticals Limited shall also not press the contempt application i.e., I.A. No. 31403/2024, against Horizon Bioceuticals Pvt. Ltd.

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

5.

Accordingly, with the consent of the parties, following directions are issued:

i.

A. C.O. (COMM IPD-TM) 6/2023, petition under Section 57 of the Trade Marks Act, 1999, has been filed for cancellation of the registration no. 4366566 for the trade mark 'COMODEX' in Class 5 in the name of Horizon Bioceuticals Pvt. Ltd.

B. In view of the statement made by the learned counsel appearing for Horizon Bioceuticals Pvt. Ltd., the trade mark 'COMODEX' in Class 5 in the name of Horizon Bioceuticals Pvt. Ltd. with registration no. 4366566, is hereby cancelled.

C. The Trade Mark Registry is directed to carry out the requisite rectification in its register to show registration no. 4366566 for the trade mark 'COMODEX', as cancelled.

ii.

A. C.O. (COMM IPD-TM) 5/2025 is dismissed as withdrawn in terms of the statement made by learned counsel appearing for Horizon Bioceuticals Pvt. Ltd. B. The Trade Mark Registry, is directed to reflect the status of registration no. 185987 in Class 5 in the name of GlaxoSmithKline Pharmaceuticals Limited, correctly, as registered, in view of the dismissal of the rectification petition filed by Horizon Bioceuticals Pvt. Ltd. iii.

A. CS (COMM) 8/2023 is decreed in favour of the plaintiff i.e., GlaxoSmithKline Pharmaceuticals Limited The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.

and against the defendants thereby restraining the defendants from using in any form, the mark 'COMODEX' or any other similar mark as may be confusingly similar to the 'COBADEX' mark of the plaintiff i.e., GlaxoSmithKline Pharmaceuticals Limited, by itself or with any additive such as "plus" or "forte", in respect of pharmaceutical preparations or allied goods, or from further manufacturing any such product.

B. The Registry is directed to draw up the decree sheet in terms of the aforesaid.

C. This Court records the statement made by the learned counsel appearing for defendants in CS (COMM) 8/2023, that the defendants do not have any stock of the product with the mark "COMODEX", in their possession. iv. Contempt application, i.e., I.A. No. 31403/2024, filed by GlaxoSmithKline Pharmaceuticals Limited, is dismissed, as not pressed.

6.

These directions have been passed without prejudice to the rights and contentions of the parties, in other proceedings, which do not form subject matter of the present proceedings.

7.

With the aforesaid directions, the present petitions and the suit, along with pending applications, are accordingly, disposed of. MINI PUSHKARNA, J FEBRUARY 3, 2025/p The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above.