Full Judgment Text
$~16
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Date of decision: 6 February, 2025
+ CS(COMM) 223/2022 with I.A. 5472/2022, I.A. 1793/2025
CEDAR PROPERTIES AND TRADING LLP & ORS. .....Plaintiffs
Through: Mr. H.L. Tiku, Sr. Advocate with Ms.
Arushi Singh, Ms. Manviya Arun,
Mr. Gaurav Dhingra and Mr. Hitesh
Wadhwa, Mr. Rahul Regmi
Advocates.
versus
MASKON LIFE SCIENCES PVT. LTD. & ORS. .....Defendants
Through: None.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
CS(COMM) 223/2022 & I.A.-1793/2025 (under Order XIII-A of the CPC
seeking summary judgment)
1. The present suit has been filed seeking relief of permanent injunction
restraining the defendants from infringing the trademark of the plaintiffs and
passing off their goods as those of the plaintiffs, along with other ancillary
reliefs.
LEADINGS IN THE LAINT
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2. The plaintiff no.l, Cedar Properties & Trading LLP, is a limited
liability partnership incorporated under the provisions of the Limited
Liability Partnership Act, 2008.
3. The plaintiff no.2, Martin and Harris Laboratories Limited, is a
company incorporated under the Companies Act, 1956.
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CS(COMM) 223/2022 Page 1 of 8
Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37
4. The plaintiff no.3, Martin & Harris (P) Ltd., is a company
incorporated under the Companies Act, 1913.
5. The plaintiff no.4, Walter Bushnell Private Limited, is a company
incorporated under the Companies Act, 1956.
6. The plaintiff no.1 is engaged in the business of medicinal and
pharmaceutical products for the past several decades. The plaintiff no.2 has
been manufacturing and selling various pharmaceutical products, one of
them being under the trademark "DROTIN" under license from Plaintiff
no.1. The plaintiff no.3 is engaged in inter alia buying and selling the
pharmaceutical goods, manufactured by the plaintiff no.2, including
"DROTIN". The plaintiff no.4 is engaged in inter alia the marketing of the
pharmaceutical products including the products under the trademark
"DROTIN".
7. In the year 1997, the plaintiff no.4 coined and adopted the trademark
"DROTIN" in respect of pharmaceutical products. The plaintiff no.4
registered the aforesaid mark in class 5 through trademark application
no.732349. The aforesaid trade mark registration in favour of the plaintiffs is
valid and subsisting. The plaintiffs have also filed the legal proceedings
certificates with respect to the aforesaid trademark registration as document
no.3 filed along with the plaint.
8. The plaintiff no.1 acquired all common law and statutory rights,
interests and title in the trademark "DROTIN" from the plaintiff no.4 and
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other trademarks by a Deed of Assignment dated 30 March, 2017. An
appropriate request for the recordal of the name of the plaintiff No.1 as the
subsequent proprietor of the trademark "DROTIN" in form TM-P was filed
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CS(COMM) 223/2022 Page 2 of 8
Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37
before the Registrar of Trade Marks, and the same has been allowed. The
plaintiffs have filed the aforesaid assignment deeds as document no.5 filed
along with the plaint.
9. The products of the plaintiffs under the trademark "DROTIN" were
first introduced in the Indian market in June, 1997 in the form of tablets
which are recommended in cases of abdominal pain associated with Irritable
Bowel Syndrome (IBS). The plaintiff no.2 also obtained a drug license for
the manufacture of pharmaceutical products under the Trade Mark
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"DROTIN" dated 2 April, 1997.
10. The plaintiffs have acquired enormous goodwill and reputation in
relation to its products sold under the "DROTIN" mark and is a well-known
name among its consumers. The net sales of the plaintiffs’ products sold
under the aforesaid mark for the period of April 2021 – March 2022
amounts to Rs. 94,89,03,652 crores and these figures have been
substantiated by the plaintiffs with chartered accountant certificates, which
have been filed as document no.11 filed along with the plaint.
11. The defendant no.1, Maskon Life Sciences Pvt. Ltd., is a company
incorporated under The Companies Act, 1956, and is engaged in the
business of manufacturing medicinal and pharmaceutical preparations.
12. The defendant no.2, Bharat Pharmaceuticals, is a company
incorporated in India under the Companies Act, 1956 and is the
marketing/distributing agent of the defendant no.1.
13. The defendant no.3, Binapani Nursing Home & Hospital, is engaged
in the sale of impugned products manufactured by defendant no.1.
14. In December 2021, the plaintiffs discovered the adoption and use of
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CS(COMM) 223/2022 Page 3 of 8
Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37
the trademark "DROTOWIN" in respect of medicinal preparations by the
defendants when the medicinal preparations under the impugned mark were
found and purchased by the field staff of the Plaintiffs from the defendant
no.3. As per the declarations made on the packaging of the
pharmaceutical/medicinal preparations of the defendants, the products sold
under the impugned Trade Mark "DROTOWIN" are also meant for treating
the same ailments for which the medicinal preparations produced by the
plaintiffs under the Trade Mark "DROTIN" are sold.
15. Upon further investigation, it came to the knowledge of the plaintiffs
that the defendant no.2 had filed an application before the Registrar of Trade
Marks at New Delhi seeking registration of the impugned mark
"DROTOWIN" in class 5 vide application no. 4336389 on ‘ proposed to be
used ’ basis. The plaintiff no.1 has filed a notice of opposition to the
aforesaid application and the opposition proceedings are pending before the
Registrar of Trade Marks.
16. Any use of the impugned marks by the defendants, either
independently or in a combined manner with other marks, in relation to the
impugned products is causing confusion in the minds of the consumers and
the public and amounts to infringement of the plaintiffs’ trademark as well
as passing off of the impugned products as those of the plaintiff.
ROCEEDINGS IN THE UIT
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17. On 7 April, 2022, while issuing summons in the suit, this Court
granted an ex-parte ad interim injunction in favour of the plaintiffs and
against the defendants by way of which the defendants were restrained from
using the marks "DROTOWIN"/"DROTOWIN DS".
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Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37
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18. The Joint Registrar, in his order dated 26 August, 2022 recorded that
the defendant no.1 has filed its written statement along with its affidavit of
admission/denial.
19. Thereafter, the plaintiff and the defendant no.1 engaged in settlement
talks but the same were not successful. The same was recorded in the order
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dated 9 January, 2024.
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20. The Joint Registrar recorded in the order dated 27 March, 2024 that
the defendants no.2 & 3 had been served with summons sent through speed
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post, on 13 February, 2024 and 26 February, 2024 respectively.
21. Despite service, neither the defendants no.2 and 3 entered appearance
nor did they file a written statement. Accordingly, the defendants no.2 and
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3’s right to file the written statement was closed vide order dated 3 July,
2024.
22. Since none had appeared on behalf of the defendant no.1 for past
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several dates, vide order dated 20 January, 2024, all the defendants were
proceeded against ex parte .
23. Counsel for the plaintiffs submits that this is a fit case where a
Summary Judgment in terms of Order XIII-A of the Code of Civil
Procedure, 1908 (CPC) as applicable to commercial disputes of a specified
value, read with Rule 27 of the Delhi High Court Intellectual Property
Rights Division Rules, 2022, deserves to be passed in favour of the plaintiffs
and against the defendants.
24. Since all the defendants have already been proceeded against ex parte ,
I do not find it necessary to issue fresh notices before deciding the present
application under Order XIII-A, CPC seeking summary judgment.
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Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37
A NALYSIS AND F INDINGS
25. I have heard the submissions of the counsel for the plaintiffs and
perused the material on record.
26. A bare perusal of the competing marks makes it apparent that the
defendants no.1 and 2 have slavishly copied the plaintiff’s registered and
well-reputed trademark “DROTIN” and the products of the defendants
bearing the impugned mark are being used for identical products, i.e.
pharmaceutical goods for the treatment of abdominal pain.
27. The mark used by the defendants no.1 and 2 has been formed by
taking first 4 letters "DROT" and last letters "IN" from plaintiffs’ mark and
by adding two letters "OW" after "DROT" and before "IN". The defendants
no.1 and 2 have made their mark "DROTOWIN" which is not only
structurally but also visually similar and identical to the plaintiffs’ trademark
"DROTIN" without any justification for adopting the same and such
adoption by the defendants is dishonest and mala fide and has solely been
done so as to earn easy and illegal profits by encashing upon the plaintiffs’
goodwill and reputation in their trademark "DROTIN".
28. From the averments made in the plaint and the evidence on record, the
plaintiffs have been able to prove that the plaintiffs are the registered
proprietor of the mark "DROTIN" in class 5. The plaintiffs, through their
annual turnover and promotional expenses, have also been able to show their
goodwill and reputation in respect of the aforesaid trademark among the
members of the trade and public. Therefore, the defendants have taken
unfair advantage of the reputation and goodwill of the plaintiffs’ mark and
have also deceived the unwary consumers of their association with the
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CS(COMM) 223/2022 Page 6 of 8
Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37
plaintiffs by dishonestly adopting the plaintiffs’ mark without any plausible
explanation. In view of the above, the plaintiffs have also established a case
of passing off.
29. The defendant no.1 in its written statement has not set up any
substantial defence. It has been averred in the written statement that the
defendant no.1 is only a manufacturer of the products bearing the impugned
mark for the defendant no.2 and the defendant no.1 does not claim any rights
in the impugned mark.
30. Moreover, since the defendant no.1 has failed to enter appearance
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after 12 October, 2023 and the defendant no.2 has never entered
appearance despite having suffered an ad interim injunction, it is evident
that the defendants no.1 and 2 have nothing substantial to urge.
31. Therefore, I am of the opinion that no purpose would be served by
directing the plaintiffs to lead ex parte evidence by filing an affidavit of
examination in chief.
32. In Su-Kam Power Systems Ltd. v. Kunwer Sachdev , 2019 SCC
OnLine Del 10764, this Court has observed as under:
“ 90. To reiterate, the intent behind incorporating the summary judgment
procedure in the Commercial Court Act, 2015 is to ensure disposal of
commercial disputes in a time-bound manner. In fact, the applicability of
Order XIIIA, CPC to commercial disputes, demonstrates that the trial is
no longer the default procedure/norm.
91. Rule 3 of Order XIIIA, CPC, as applicable to commercial disputes,
empowers the Court to grant a summary judgement against the defendant
where the Court considers that the defendant has no real prospects of
successfully defending the claim and there is no other compelling reason
why the claim should not be disposed of before recording of oral evidence.
The expression “real” directs the Court to examine whether there is a
“realistic” as opposed to “fanciful” prospects of success. This Court is of
the view that the expression “no genuine issue requiring a trial” in
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CS(COMM) 223/2022 Page 7 of 8
Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37
Ontario Rules of Civil Procedure and “no other compelling reason…..for
trial” in Commercial Courts Act can be read mutatis mutandis.
Consequently, Order XIIIA, CPC would be attracted if the Court, while
hearing such an application, can make the necessary finding of fact, apply
the law to the facts and the same is a proportionate, more expeditious and
less expensive means of achieving a fair and just result.
92. Accordingly, unlike ordinary suits, Courts need not hold trial in
commercial suits, even if there are disputed questions of fact as held by the
Canadian Supreme Court in Robert Hryniak (supra), in the event, the
Court comes to the conclusion that the defendant lacks a real prospect of
successfully defending the claim. ”
33. The aforesaid principles are fully applicable in the facts and
circumstances of the present case. As elaborated above, the defendants no.1
and 2 have no real prospect of successfully defending the claims in the
present suit. Further, taking into account that the defendants no.1 and 2 have
not set up any substantial defence, there is no compelling reason for the
recording of oral evidence.
34. Therefore, this is a fit case where a summary judgment in terms of
Order XIII-A of the Code of Civil Procedure, 1908 can be passed in favour
of the plaintiffs and against the defendants no.1 and 2.
35. In view of the foregoing analysis, a decree of permanent injunction is
passed in favour of the plaintiffs and against the defendants no.1 and 2 in
terms of prayer clauses 37 (i) and (ii) of the plaint.
36. The counsel for the plaintiffs does not press for the remaining reliefs
prayed for in the suit.
37. Let the decree sheet be drawn up accordingly.
38. The pending application stands disposed of.
AMIT BANSAL, J
FEBRUARY 6, 2025
Signature Not Verified
CS(COMM) 223/2022 Page 8 of 8
Digitally Signed
By:DHARMENDER SINGH
Signing Date:13.02.2025
17:36:37