Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Date of decision: 27 August, 2024
+ CS(COMM) 606/2024 & I.A. 34122/2024, I.A. 37430/2024
ABBOTT GMBH & ANR. .....Plaintiffs
Through: Mr. Anirudh Bakhru, Ms. Gunjan
Paharia, Mr. Naqeeb Nawab, Ms.
Sejal Tayal, Ms. Apurva Bhutani, Mr.
Ashutosh Ranga, Ms. Vijay Laxmi
Rathi, Advocates (M:9999471233)
Email:info@zeusip.com
versus
MANKIND PHARMA LIMITED & ANR. .....Defendants
Through: Mr. Rajiv Nayar, Sr. Adv. with Mr.
Hemant Daswani, Ms. Saumya
Bajpai, Ms. Pranjal, Mr. Kunal
Prakash, Advocates (M:9810556744)
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)
1. The present suit has been filed for permanent injunction restraining
infringement of trademarks and passing off, dilution, tarnishment, unfair
competition, delivery up, damages and rendition of accounts.
2. The present suit essentially relates to defendant no.1‟s adoption and
Signature Not Verified
CS(COMM) 606/2024 Page 1 of 6
Digitally Signed
By:AMAN UNIYAL
Signing Date:02.09.2024
11:55:05
offending use of the trade dress “
” for its product,
being tablets containing the ingredients “thyroxine sodium” under the mark
“THYRONEED”, used for the purpose of selling hypothyroidism tablet,
which are identical and/or deceptively similar to the plaintiff‟s prior
THYRONORM products, bearing the distinctive pink and white colour
combination, and pink and white bottle “
”.Thus, the
present suit has been filed on the ground that the use of the impugned trade
dress by the defendant no.1, amounts to infringement and passing
off/violation of plaintiff‟s statutory and common law rights in their prior,
registered and famous pink and white colour combination, and pink and
white colour bottle for its THYRONORM products.
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3. When the matter was listed for hearing on 24 July, 2024, learned
counsel for the defendants, who appeared on advance notice made a
categorical statement that defendants have already stopped the use of the
impugned trade dress and have adopted a new trade dress, which is totally
distinct and different from the trade dress of the plaintiffs, and is blue and
white in color. The new trade dress, as adopted by the defendants, is
reproduced as under:
Signature Not Verified
CS(COMM) 606/2024 Page 2 of 6
Digitally Signed
By:AMAN UNIYAL
Signing Date:02.09.2024
11:55:05
4. Subsequently, in terms of the order passed by this Court, two
affidavits have been filed on behalf of the defendants, wherein, it is stated
that the defendants have existing stock of 24,777 bottles, with pink and
white color combination.
5. An affidavit of compliance has been filed on behalf of the defendants,
wherein, the defendants have made a categorical statement, which is as
follows:
“xxx xxx xxx
2) That pursuant to the directions of this Hon‟ble Court, passed in the
order dated July 24, 2024, I filed an affidavit dated July 26, 2024, on
behalf of the Defendant No. 1, disclosing the statement of existing
stock of the bottles of hypothyroidism tablets packaged under the pink
and white trade dress (“Impugned Trade Dress”) and sold under the
mark „Thyroneed‟. I reproduce below the table (hereinafter referred
as Table A) that formed a part of the said affidavit:
Signature Not Verified
CS(COMM) 606/2024 Page 3 of 6
Digitally Signed
By:AMAN UNIYAL
Signing Date:02.09.2024
11:55:05
3) On noticing that the contents of table required more clarification,
therefore, on July 30, 2024, I voluntarily filed a further affidavit dated
July 30, 2024 to bring to the notice of the Hon‟ble Court, a more
detailed statement with respect to the stock of goods under the
Impugned Trade Dress. Contents of the table (hereinafter referred as
Table B) of the said affidavit are repeated herein. It is pertinent to
mention, that in the present affidavit while reproducing Table B, I
have added a further column which is serial number and corrected
certain clerical errors in the expiry month/year. It is pertinent to
mention here that the quantity of the old stock remains the same.
xxx xxx xxx
4) The existing stock of goods is available under 5 batch series namely
W7 AL, W8AL, W9AL, X0AL and X1AL. Table A provided a summary
report of the existing stock. Whereas Table B is more detailed and
provided further information regarding manufacturing and expiry
dates, along with the quantity of the bottles available of individual
batches in the series.
xxx xxx xxx
7) The total quantities of the existing stock under the Impugned Trade
Dress have been correctly stated in both the affidavits as 24,777
bottles.
8) I further state that the last batch of goods under the Impugned
Trade Dress was manufactured by the Defendant No. 1 in May 2024,
which was well before the present suit was filed by the Plaintiff. I state
that the blue and white getup (new getup) was adopted by the
Defendant No. 1 in June 2024. Copies of sample invoices evidencing
transfer/ sale of goods under the new getup are collectively filed as
Document A.
9) Lastly, I state that the Defendant No. 1 has already stopped
manufacturing goods under the Impugned Trade Dress and it shall not
manufacture any new goods under the impugned trade dress in future.
I therefore pray before this Hon‟ble Court to grant 6 months‟ time to
my company to dispose of the goods under the impugned trade dress.
xxx xxx xxx”
6. Perusal of the aforesaid affidavit, categorically shows that the
defendants have made an unequivocal statement that last batch of goods
under the impugned trade dress were manufactured by defendant no.1 in
May, 2024, before the present suit was filed by the plaintiffs. The aforesaid
Signature Not Verified
CS(COMM) 606/2024 Page 4 of 6
Digitally Signed
By:AMAN UNIYAL
Signing Date:02.09.2024
11:55:05
affidavit also brings to the fore that blue and white getup has been adopted
by defendant no.1 in June 2024. It is also categorically stated in the affidavit
that defendant no.1 has already stopped manufacturing goods under the
impugned trade dress, and it shall not manufacture any new goods under the
impugned trade dress in future.
7. Considering the aforesaid affidavit on behalf of the defendants, this
Court is of the view that the present suit can be decreed in favour of the
plaintiffs, and against the defendants.
8. During the course of hearing, this Court had specifically put to the
learned Senior Counsel for the defendants that the existing stock of 24,777
bottles, which has been mentioned in the affidavit of the defendants, shall be
exhausted within a period of three months. Further, in case any further stock
is left after three months, the same shall be withdrawn from the market.
9. However, learned Senior Counsel for the defendants, submits that
once a stock is sold to the stockist, it further goes on to retailers from the
stockist, and therefore, things are beyond the control of defendants.
Therefore, it would be practically impossible for the defendants to withdraw
the bottle of impugned trade dress, after they have already been released in
the market.
10. Considering the submissions made by learned counsel for the
defendants and also considering the concerns raised by learned counsel for
the plaintiffs, this Court directs that defendants shall not release any further
new stock of its product under the impugned trade dress of pink and white
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cap from today, i.e., 27 August, 2024, onwards.
11. The stock which has already been released by the defendants with the
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impugned trade dress till today, i.e., 27 August, 2024, shall be allowed to
be exhausted.
Signature Not Verified
CS(COMM) 606/2024 Page 5 of 6
Digitally Signed
By:AMAN UNIYAL
Signing Date:02.09.2024
11:55:05
12. All the existing stock of the bottles in the impugned trade dress of
pink and white cap, which is lying with the defendants, shall be changed to
the new trade dress of blue cap by the defendants. After changing the cap to
blue color, as noted above, the defendants shall sell it in the market.
13. Learned counsel for the plaintiffs submits that in view of the
undertaking given by the defendants of adopting a new trade dress with cap
of the bottle being blue in color, and decree being passed, the plaintiffs are
not pressing the prayer for rendition of accounts and also giving up other
prayers, except prayer „a‟ and „b‟ of the prayer clause, in the plaint.
14. Accordingly, the present suit is decreed in favour of the plaintiffs and
against the defendants in terms of prayer „a‟ and „b‟ of the prayer clause in
the plaint.
15. Let decree sheet be drawn up.
16. In view of the fact that the present matter is being disposed of upon
the undertaking of the defendants, and suit is at a nascent stage, it is directed
that Registry shall issue a certificate for refund of full court fees to the
plaintiffs.
17. The suit, along with pending applications, stands disposed of.
MINI PUSHKARNA, J
AUGUST 27, 2024
au
Signature Not Verified
CS(COMM) 606/2024 Page 6 of 6
Digitally Signed
By:AMAN UNIYAL
Signing Date:02.09.2024
11:55:05