Full Judgment Text
$~15
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of decision: 5 July, 2018
+ CS(COMM) 93/2018 & I.A. 17848/2014 (Stay), I.A. 8333/2015 (u/o
XXXIX Rule 4)
M/S SBS BIOTECH(UNIT II) & ORS
..... Plaintiff
Through: Mr. Sanjeev Singh, Mr. D.K. Yadav
Ms. Kamla, Advocates (M-
9650508945).
versus
M/S SAMPHIRE FOOD & PHARMA (P) LTD & ANR
..... Defendant
Through: Mr. Nikhilesh Kumar, Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. The Plaintiff has filed the present suit for permanent injunction
restraining infringement, passing off, and rendition of accounts. The product
in question is oil which is sold under the trademark/labels/packaging- “DR.
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ORTHO” . The Plaintiff claims to have adopted the same on 8 April, 2011
and has been continuously using it since then. The Plaintiff came to know
that the Defendant has adopted the trademark “ORTHO PREMIUM” in a
deceptively similar packaging/label. Accordingly, the Plaintiff has filed the
present suit.
2. The competing labels are set out below:
CS(COMM) 93/2018 Page 1 of 6
3. The Plaintiff also claims that the Defendant is copying the bottle
design of the Plaintiff’s bottle. The competing bottles are also set out herein
below:
CS(COMM) 93/2018 Page 2 of 6
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4. This court on 15 September, 2014 had granted an ex-parte order of
injunction in the following terms:
CS(OS) No.2807/2014 & I.A. No.17848/2014 (u/o
XXXIX R.1 & 2 CPC)
Let the plaint be registered as a suit.
Issue summons in the suit and notice in the
interim application, to the defendants, on filing of
process fee and Regd. A.D. Covers within three days,
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returnable on 29 October, 2014.
The plaintiff has filed the suit for permanent
injunction restraining infringement, passing off,
rendition of accounts etc.
Learned counsel for the plaintiffs is pressing for
ex-parte ad-interim order. I have heard counsel for the
plaintiffs who has referred to various paras of the
plaint and documents placed on record.
At the outset, the learned Counsel for the
plaintiffs states that the plaintiffs are not pressing the
interim order with regard to word ORTHO. However,
he states that the defendants have copied the
packaging/wrapper/trade dress as well as the design of
the bottle which is registered in favour of the plaintiffs
bearing No.237224. The contention of the learned
counsel for the plaintiffs is that the plaintiffs' goods are
available throughout the country and sales of the
plaintiffs are increasing day by day. The said set up,
lay out and packaging was adopted by the plaintiffs in
the year 2011 and within a short span of time, the
plaintiffs have achieved today an annual sale of more
than Rs.300 crores. The plaintiffs have been
advertising their products through various media and
modes including television and newspaper etc. The
plaintiffs' design is new and original and it has
acquired tremendous goodwill and reputation in the
global market. Even the turnover of the plaintiff firm
for the years 2009-2010 to 2013-2014 has been given
in para 18 of the plaint. With regard to advertising of
CS(COMM) 93/2018 Page 3 of 6
the said brand name ORTHO along with the trade
dress, literatures as design in question in newspapers,
the advertisement expenses have been given in para 19
of the plaint which contains the expenses for the years
2009-2010 to 2013-2014. Counsel for the plaintiffs
states that the defendants could not have designed the
packaging material as well as bottle unless they have
seen the design and bottle of the plaintiffs.
In para 27 of the plaint, it is mentioned by the
plaintiff that the essential features of the outer
packaging and side views of the label are deceptively
similar. The point of similarity between front, back and
side views are mentioned in the said para which also
contains the details of the point of similarities between
the perspective and back views and inner
packaging/label of the products in question.
In view of the material placed on record, it
appears that the plaintiffs have made a strong prima
facie case for grant of ex-parte ad-interim injunction
against the defendants. Hence, the defendants are
restrained from selling, marketing, offering for sale,
advertising and selling pharmaceutical and
preparations including ayurvedic, homeopathic and
unani medicines and preparations i.e. pain killer
massage oil and capsules and all allied and cognate
goods with the similar packaging/wrapper/trade dress
of ORTHO label which are available at pages 4, 5 and
6 of the list of documents filed by the plaintiffs.
Compliance of Order XXXIX Rule 3 CPC be
made within two weeks.”
5. A Local Commissioner was appointed to make an inventory of the
infringing products and as per the Local Commissioner’s report 2425 bottles
of oil were found and were inventorised.
6. The Defendant no.1 is a proprietary concern of Defendant no.2. In the
written statement it was claimed that the Defendant started manufacturing
CS(COMM) 93/2018 Page 4 of 6
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and selling the products under the brand name ORTHO since 3 April,
2008. Hence, the Defendant claimed to be a prior user of the brand ORTHO.
It was also pleaded in the written statement that the word ORTHO is
generic.
7. The Defendant has also filed an application under Order XXXIX Rule
4 seeking vacation of the injunction order.
8. A perusal of the documents filed on record by the Defendant shows
that the Defendant has not filed any advertisement or any other independent
evidence to show adoption and use of the infringing labels/packaging prior
to the Plaintiff i.e. since 2008. However, the Defendant has placed on record
documents to show the adoption of the trademark ORTHO since 2008.
These documents, however, do not depict the packaging and the labels.
Further, none of the documents also depict the design of the bottle which
was being used by the Defendant. The invoices which have been placed on
record by the Defendant also mention the product as `ORTHO Oil'.
9. The counsel for the Plaintiff submits that he does not claim exclusive
right in the word ‘ORTHO’. However, his objection is to the
packaging/labels and the design of the bottle being used by the Defendant.
10. Since there is no evidence on record to show that the Defendant has in
fact been using the infringing labels/packaging/bottles since 2008, or any
time prior to the Plaintiff’s adoption and use thereof, the defence of prior
user qua the labels/packaging/bottles is not made out by the Defendant.
11. The counsel for the Defendant submits that his client is willing to
change the labels/packaging and design of the bottles and that the injunction
may be confirmed. Under these circumstances, the suit is decreed in terms of
para 39 (A) and (B) of the plaint. The Defendant shall ensure that any new
CS(COMM) 93/2018 Page 5 of 6
packaging/label are not similar to that of the Plaintiff's. The Defendant shall
also ensure that the shape of the bottle is also not a colourable imitation or
reproduction of the Plaintiff's bottle shape.
12. Insofar as the products seized by the Local Commissioner are
concerned, the Defendants undertake to destroy the same in the presence of
the Plaintiff’s representative. The parties shall mutually fix a date for the
said purpose. The Plaintiff does not press the relief of rendition of
accounts/damages.
13. The suit is decreed in terms of Paragraph 39 (A) and (B) of the plaint.
Decree sheet be drawn accordingly. All the pending applications are
disposed of.
PRATHIBA M. SINGH
JUDGE
JULY 05, 2018
Rahul
CS(COMM) 93/2018 Page 6 of 6