Full Judgment Text
$~17.
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ Date of Decision: 04.10.2021
% FAO (COMM) 144/2021 and C.M. Nos.55627/2019 & 55628/2019
VIKAS GUPTA & ANR ..... Appellants
Through: Mr. Sachin Gupta, Ms. Jasleen Kaur,
Mr. Pratyush Rao & Ms. Snehal
Singh, Advocates.
versus
M/S SAHNI COSMETICS ..... Respondent
Through: Mr. M.K. Miglani & Mr. Anubhav
Chhabra, Advocates.
CORAM:
HON'BLE MR. JUSTICE VIPIN SANGHI
HON'BLE MR. JUSTICE JASMEET SINGH
VIPIN SANGHI, J. (ORAL)
1. The present appeal is directed against the order dated 01.11.2019
passed by the learned ADJ-01, Central Delhi District, Tis Hazari Courts,
Delhi in C.S. No.1833/2019 (Old No. T.M. No.135/2019).
2. By the impugned order, the learned Judge has dismissed the
plaintiffs’/ appellants’ application under Order XXXIX Rules 1 & 2 CPC
and allowed the respondent’s/ defendant’s application under Order XXXIX
Rule 4 CPC, vacating the injunction granted in favour of the appellant/
plaintiff against the use of the mark “NEHA” in respect of Face Cream/
Cold Cream. The findings returned by the learned Judge in the impugned
order reads as follows:
“ From the arguments of both the parties and the
documents placed on record, it is reflected and not disputed by
the plaintiff that plaintiff is not having any license under Drugs
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Digitally Signed
By:BHUPINDER SINGH
ROHELLA
Signing Date:07.10.2021
18:52:22
and Cosmetics Act to manufacture any cream under brand
name HEENA. On the other hand, defendant is having a license
under Drugs and Cosmetics Act, 1940 since 1990. Plaintiff has
not filed any document contrary to the fact alleged by the
defendant.
As per trademark Act and its saving clause as well as
perusal of Section 18 of Drugs and Cosmetics Act, it is reflected
that I am of the considered opinion that if any drug or cosmetic
require the mandatory license to manufacture and it is not
obtained in due course of time, then, the mandatory
requirement of the law are not followed. The person who
himself is not violating the law in my considered opinion, is not
entitled for any discretionary relief.
In these circumstances, balance of convenience cannot
be said to be tilted in favour of the plaintiff. It is needless to say
that apart from the 3 ingredients i.e. Prime facie case, Balance
of convenience & Irrepairable loss, there are other factors of
common law jurisprudence which are also required to be seen
i.e. Just, equity and good conscience. The violator himself
cannot claim the, benefit of any legislature in his favour and
cannot be said to have good conscience if such non- compliance
are mandatory as per law.
The judgment Glaxo India Ltd (Supra) relied upon by the
defendant endorse the view as mentioned above, Ld counsel for
plaintiff has filed the judgments of higher bench in similar
cases which has been set aside, however, the order of higher
bench is a consent order. Moreso, the mandatory provision of
Section 18 of Drugs and Cosmetics Act cannot be overlooked.
Above all, defendant has shown that he is having licence
since 1990 and have been using and manufacturing cream
under the same brand name. Defendant has further alleged
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By:BHUPINDER SINGH
ROHELLA
Signing Date:07.10.2021
18:52:22
that plaintiff is well aware that defendant is into the market
since long and has been manufacturing cream. It is also
reflected that plaintiff has not started manufacturing cream
though he is having certificate in his favour. Therefore, claims
of defendant that he is into market since 1990, cannot be
overlooked.
In these circumstances, I am of the considered opinion
that Section 34 of the Act comes into picture and right of prior
use has to prevail which prime facie appear in favour of
defendant.”
3. The submission of learned counsel for the appellants is that the
learned ADJ has gravely erred in being swayed by the consideration that the
plaintiffs/ appellants did not have registration under Section 18 of the Drugs
& Cosmetics Act in respect of the product, i.e. Henna manufactured and sold
by the plaintiff under the brand name “NEHA”. Learned counsel submits
that the plaintiff was non-suited on account of it not having obtained license
which – according to learned counsel for the appellant, was not at all
required. He submits that the Trial Court has relied upon the judgment
which has been set aside by the High Court, though by consent. Once a
judgment is set aside – by whichever mode, the same could not have been
relied upon. He submits that the Calcutta High Court in Allergen Inc. Vs.
Chetana Pharmaceuticals , 2007 (34) PTC 267, held in paragraph 11, inter
alia , as follows:
“ 11. ... ... ... From the fact I find the plaintiff is a senior user as
the defendant has started using the mark in the medicinal product
in 1988 though obtained drug licence in 1985, but mere obtaining
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By:BHUPINDER SINGH
ROHELLA
Signing Date:07.10.2021
18:52:22
of drug licence is not the positive indication as user of mark of
the product without any further evidence . Actual use of the mark
with sale or before sale with advertisement and publicity is the
basis in passing off action. Passing off action in relation to the
medicinal product is viewed by the Court differently from that a
case of ordinary merchandise. Medicinal product caring the lives
of living being including human should not be allowed to be
marketed with such mark that will give rise confusion as to
identity of the goods in the mind of ordinary people. Unlike many
a commodities, all the members of the public are prospective user,
and in certain cases actual user of the medicine on inappropriate
application thereof invites life risk. It is not uncommon at all in
our country that a pharmacist in a medical shop across the
counter is likely to commit mistake with confused mark by
supplying wrong medicine as more often than not medicine is sold
without prescription of the doctor or with illegibly written
prescription. Here we are dealing with two medicinal products
used for two vital organs of human being. Two medicinal products
may be meant for two separate organs, but in my considered view
it is dangerous to keep the same and identical mark for different
products for different purposes. If for example, a doctor
prescribes medicine bearing same name for eye problem, at the
sales counter the pharmacist having been confused with the mark
is likely to supply defendants product meant for nose problem.
Ordinarily common people never verifies medicine with the
prescription or for that matter it is very difficult for the patient
party to verify whether medicine is supplied as prescribed by the
doctors. So ordinary customers always depend upon the correctly
reading ability of pharmacist. Thus one can imagine what would
happen for use of nazal drop to cure eye problem. It would not be
an imagination that one may lose eye sight altogether. In the
aforesaid visualization of the fact if the Court remains unmoved it
would be great disservice to the society, on the face of use of the
two similar marks by two manufacturers. I think it is the social
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By:BHUPINDER SINGH
ROHELLA
Signing Date:07.10.2021
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duty of the Court as well, to stop this, so I do not find any reason
to vacate interim order rather it must be confirmed so it is hereby
done. Thus the application is allowed. ” (emphasis supplied)
4. Learned counsel has also relied upon a judgment of the Bombay High
Court in 2016 SCC OnLine Bom 10818 titled Chutararam Vs. State of
Maharashtra , wherein in paragraph 12, the High Court held as follows:
“ 12. Thus, the conjoint reading of Section 138, 139, 142
and Schedule M-II, it is clear that, no licence is required to
manufacture Mehandi Cone or Mehandi Powder for sell
or for distribution . The Jt. Commissioner, Head Quarters
and Controlling Authority, has, thus issued the Circular to
that effect in the year 2010 which still holds the field,
wherein, it is stated unequivocally that no manufacturing
licence is required for the manufacturing of Mehandi
Products under the Provisions of Act of 1940. It is not the
case that prior to issuance of the said circular, there were
different provisions in the Act of 1940 and Rule of 1945
and in view of the certain amendments subsequently in the
year 2010, the Jt. Commissioner constrained to issue the
said circular dated 16.8.2010. ” (emphasis supplied)
5. Learned counsel further submits that the plaintiff holds the
registration since 2003 for the mark “NEHA” in respect of Mehndi Powder
which falls in Class-3. As opposed to that, the defendant’s applications for
registration of the same mark were either refused, withdrawn, or abandoned
right from 2006 up to 2015. He further submits that the use of the mark
claimed by the plaintiff itself dates back to the year 1992. Though the
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By:BHUPINDER SINGH
ROHELLA
Signing Date:07.10.2021
18:52:22
defendant claimed user since 1990, he did not place on record any document
in support of that claim, and the earliest invoice placed on record by the
defendant – to claim use of the mark “NEHA” in respect of the Cream,
appears to be of the year 2003.
6. Having heard learned counsel for the appellants and perused the
impugned order, we are not inclined to interfere with the impugned order,
except to direct maintenance and filing of accounts in respect of the business
carried out by the defendant.
7. We may observe that this Court had already passed an order in that
respect on 24.12.2019, which reads as follows:
“Issue notice. Notice is accepted by Mr.M.K.Miglani learned
counsel for the respondent.
List for consideration on March, 2020.
Digital copy of the Trial Court record be requisitioned.
In the meantime, respondent shall maintain and place on
record the accounts of the sales made by the respondent in
respect of the trademark 'Neha'.”
8. The reason why we are not persuaded to interfere with the impugned
order is that the defendant/ respondent has been able to, prima facie ,
establish user of the mark “NEHA” for a substantially long period of time
prior to filing of the suit. The sale invoices filed by the defendant date back
to the year 2003 – which was 15 years prior to the filing of the suit. The
defendant has also claimed that the appellants/ plaintiffs were aware of the
user of the mark “NEHA” by the defendant. This plea of the defendant has
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By:BHUPINDER SINGH
ROHELLA
Signing Date:07.10.2021
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been denied by the plaintiff. But needs to be tested, since both the parties
appear to be dealing in products i.e. HEENA and Face Cream/ Cold Cream,
the trade channels of which are the same.
9. We may observe that though there may be merit in the submission of
learned counsel for the appellants that the violation of Section 18 of the
Drugs & Cosmetics Act, may not be relevant, or that registration was not
even required in respect of Henna, we are not inclined to interfere with the
final order passed by the Trial Court – dismissing the plaintiff’s application
for injunction, and allowing the respondent/ defendant’s application under
Order XXXIX Rule 4 CPC, in view of the user of the mark “NEHA” by the
defendant for a substantially long period of time prior to filing of the suit.
The findings returned by the Trial Court, including on the aspect of violation
of Section 18 of the Drugs & Cosmetics Act by the plaintiff are only, prima-
facie , and not final.
10. With the above observations, we dispose of the present appeal while
confirming the interim direction requiring the respondent/ defendant to
maintain accounts and place the same before the Trial Court from time to
time, in terms of our order dated 24.12.2019.
11. The appeal stands disposed of in the aforesaid terms.
VIPIN SANGHI, J.
JASMEET SINGH, J.
OCTOBER 04, 2021/ B.S. Rohella
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Signature Not Verified
Digitally Signed
By:BHUPINDER SINGH
ROHELLA
Signing Date:07.10.2021
18:52:22