Full Judgment Text
Neutral Citation Number: 2022/DHC/004811
$~15
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 10.11.2022
+ FAO-IPD 48/2021 & CM APPL. 41667/2019
INDIANA OPHTHALMICS ..... APPELLANT
Through: Mr.Mohan Vidhani, Ms.Elisha
Sinha, Mr.Prakhar Singh, Advs.
versus
SAPIENT LABORATORIES (P) LTD ..... RESPONDENT
Through: Mr.Ashok Mittal, Mr.V.K.Puri,
Mr.Varshesh Khurana, Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
NAVIN CHAWLA, J. (Oral)
1. This appeal has been filed by the appellant challenging
the order dated 13.08.2019 passed by the learned Additional
District Judge- -02, South West District, Dwarka Courts
(hereinafter referred to as the ‘Trial Court’), in suit filed by the
respondent being TM No.8/2019 and the counter claim of the
appellant being CC No.21/2019, disposing the application filed
by the respondent under Order XXXIX Rules 1 and 2 of the
Code of Civil Procedure, 1908 (in short ‘CPC’) and application
filed by the appellant under Order XXXIX Rule 4 of the CPC;
and application under XXXIX Rules 1 and 2 of the CPC filed
by the appellant in its counter claim, while directing the parties
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to file an affidavit disclosing the exact stock and valuation of
the product packaging with their respective marks
HYLUFRESH and HYLOFRESH within a period of four
weeks.
BRIEF FACTS:
2. The respondent had filed the above suit claiming itself to
be the registered proprietor of the marks HYLUFRESH used
for manufacturing and selling of eye drops. The respondent is
aggrieved of the adoption of the trade mark HYLOFRESH by
the appellant herein for the identical product, that is, eye drops.
3. An ex parte ad interim order of injunction was passed in
favour of the respondent by the learned Trial Court on
28.05.2019. The appellant filed an application under Order
XXXIX Rule 4 of the CPC seeking vacation of this order. The
appellant also filed a counter claim along with an application
Order XXXIX Rule 1 and 2 of the CPC, claiming itself to the
prior user, and praying for an interim injunction against the
respondent from using the mark HYLUFRESH.
4. The learned Trial Court has disposed of the above
applications by way of the impugned order.
SUBMISSIONS OF THE APPELLANT:
5. The appellant has challenged the impugned order to the
limited extent that the application of the appellant under Order
XXXIX Rules 1 and 2 of the CPC has not been allowed and the
respondent has not been restrained from using the mark
HYLUFRESH for its product that is, eye drops.
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6. The learned counsel for the appellant submits that the
learned Trial Court, having found the marks of the appellant
and the respondent to be deceptively similar to each other and
being used for the same pharmaceutical product, that is eye
drops, as also that the appellant was the prior user of its mark,
applying the test of triple identity, an ad interim injunction in
favour of the appellant and against the respondent should have
been granted.
7. He submits that there are contradictory findings of the
learned Trial Court, inasmuch as, while the learned Trial Court
accepts the claim of the appellant being the prior user of the
mark for purposes of vacating the ad-interim injunction against
the appellant, holds that the same shall have to be proved for
denying the ad-interim injunction in favour of the appellant and
against the respondent. In this regard, he draws my reference to
the observations of the learned Trial Court in paragraphs 95 and
96 of the impugned order, reproduced hereinunder:
“95. The suit of the plaintiff is based on a
registered trade mark HYLUFRESH and
whereas, the counter claim of the
defendant/counter claimant is on the basis of
an unregistered trade mark. The
defendant/counter claimant has sought inter
alia relief of passing off against the plaintiff.
In passing off, the first and foremost issue that
deserves adjudication is the question of prior
use and thereafter, reputation and goodwill. I
am of the considered view that a prima facie
proof of validity of a trade mark is different
from prima facie proof of infringement. It is
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observed that the defendant/counter claimant
not only in its written statement, counter claim
has averred but also has placed on record list
of documents and documents to substantiate its
defence and counter claim of prior use. This
court on 28.05.2019 passed an. ex pane ad-
interim order against the defendant/counter
claimant restraining the defendant from using
the trade mark HYLUFRESH (sic).
Subsequently, on the appearance of
defendant/counter claimant, the defence urged
by the defendant/counter claimant of prior
usage of the impugned trade mark to that of
the plaintiff's trade mark, I deem appropriate
to vacate the order dated 28.05.2019, as the
defendant cannot be restrained from using the
impugned trade mark i.e. HYLOFRESH, being
a prior user to that of the plaintiff's trade
mark.
96. With regard; to the application moved
by the defendant/counter claimant under
Order XXXIX Rule 1&2 CPC enjoining the
plaintiff from using the trade mark
HYLUFRESH, I am not inclined to pass any
order granting interim protection, as the
defendant/counter claimant has yet to lead
evidence to prove its case of prior use and
withstand the rigors of trial.”
(Emphasis supplied)
8. On a query being put to the learned counsel for the
appellant that as the learned Trial Court in the impugned order
has also found the marks of the appellant and the respondent
being based on the non-proprietary name of the drug- Sodium
Hyaluronate, whether the appellant can seek any exclusive right
to use part of such non-proprietary name; the learned counsel
for the appellant, placing reliance on the judgment of the
Supreme Court in Neon Laboratories Ltd. vs. Medical
Technologies Ltd. & Ors ., (2016) 2 SCC 672, and of this Court
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in The Himalaya Drug Company vs. S.B.L. Limited, 2012
SCC OnLine Del 5701 and Alkem Laboratories Ltd. vs.
Dr.Reddys Laboratories Ltd. & Ors ., CS(COMM) 506/2021 ,
submits that an action of passing off is still maintainable, and an
order of injunction shall follow for the prior user of the mark.
SUBMISSIONS OF THE RESPONDENT:
9. On the other hand, the learned counsel for the respondent
submits that the respondent is the registered proprietor of the
mark HYLUFRESH . Such registration has been granted
under application no.3303107 on 07.03.2018, with effect from
05.07.2016. The respondent has been using the said mark since
01.04.2016. He challenges the claim of the appellant of the use
of its mark HYLOFRESH since 17.12.2015 as claimed.
ANALYSIS AND FINDINGS:
10. I have considered the submissions made by the learned
counsels for the parties.
11. At the outset, it is important to note that the following
findings of the learned Trial Court are not challenged by the
appellant:-
COPY PARA 72 AND 73, PAGE 55
“72. I would like to delve into the origin of
the prefix of the plaintiff's trade mark and the
impugned trade mark for better understanding
and clarity. Sodium hyaluronate is the sodium
salt of hyaluronic acid, a glycosaminoglycan
found in various connective tissue of humans.
It is not out of place to mention herein that the
human eyes have a transparent membrane
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enclosing the vitreous humour of the eye,
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which is known as hyaloid membrane.
73. Hyaluronic acid has hyaluronate as its
base and is also called hyaluronan.
Hyaluronic acid is an anionic, non-sulfated
glycosaminoglycan distributed widely
throughout connective epithelial and neural
tissues. Hyaluronic acid is a main component
of the extra-cellular matrix, and has a key role
in tissue regeneration, inflammation response,
and angiogenesis, which are phases of skin
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wound repair. Thus, the first part of both the
trade marks in question is tracedto
'hyaluronate' or 'hyaluronic acid'.”
12. In Sun Pharmaceutical Laboratories Ltd. v. Hetero
Healthcare Ltd. & Anr., 2022 SCC OnLine Del 2580, a
Division Bench of this Court has recently held that the mark
adopted therein being derived from the International Non-
proprietary Names, prima facie , is not entitled to a protection by
way of an injunction.
13. In Neon Laboratories Ltd. (supra) , the Supreme Court
held that the claim of exclusivity of user should normally
partake of a new creation, or if it is an existing word, it should
not bear descriptive characteristics so far as the product is
concerned; at the same time, an action of passing off would still
lie. It was held that the fact that the other party commences user
of the trade mark almost simultaneously with or even shortly
after the party who complains of such user and is also the
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registered proprietor of the said mark, would be an important
consideration, and such party may not be injuncted.
14. In Himalaya Drug Company (supra), this Court
reiterated that the mere fact that the word is derived from the
name of the salt does not mean that it loses protection for all
times to come. Whether a mark is a ‘generic word’ or is ‘ publici
juris ’ is a question of fact and if the word has attained
distinctiveness as a mark of a particular party, the
distinctiveness is entitled to recognition. The above judgment
was followed in Alkem Laboratories Ltd. (supra).
15. In the present case, not only the marks of the parties are
derived from an active ingredient- Sodium Hyaluronate, but
also, the user claimed by the parties is not for a long period
prior to the filing of the suit. The appellant claims the user since
November, 2015, while the suit was filed by the respondent in
2018. On the other hand, the respondent claims the user since
April, 2016, though he has filed invoices on record since March,
2018. Whether the appellant has acquired any goodwill or
reputation in its mark, inspite of the same being based on the
active ingredient, shall have to be determined on evidence led
by the parties. The respondent is also the registered proprietor
of the mark with a user claim of 05.07.2016, while the appellant
does not hold any registration for its mark. Therefore, what
appellant claims is an order of restraint against the registered
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BATRA
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proprietor of the mark. For the same, the appellant shall also
have to show goodwill and reputation in his mark.
16. In these peculiar facts, in my opinion, the learned Trial
Court was correct in its approach to leave it for the parties to
lead evidence in support of their claim of user.
17. I find that there is also no contradiction in the findings of
the learned Trial Court, as claimed by the learned counsel for
the appellant in this regard, inasmuch as the learned Trial Court,
while rejecting the claim of the respondent for an injunction,
held that the appellant has at least prima facie been able to show
its user of the mark since 2015, that is, prior to the respondent.
This finding was necessary for declining the interim injunction
to the respondent. While, for refusing an injunction in favour of
the appellant herein, the learned Trial Court states that this user,
though prima facie evident, would need to be proved by way of
evidence. The claim of prior user would also have to be tested
against the registered proprietor of the mark. No fault can be
found with the above approach of the learned Trial Court.
18. In Wander Ltd. and Another v. Antox India P. Ltd.,
1990 (Supp) SCC 727, the Supreme Court observed that in an
appeal arising out of exercise of discretionary jurisdiction, the
appellate court would not interfere with exercise of jurisdiction
of the court of the first instance and substitute its own
discretion, except where the discretion has been shown to be
exercised arbitrarily or capriciously or perversely or where the
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court has ignored certain principles of law regulating the grant
or refusal of interlocutory injunctions. The appellate court will
not re-assess the material and seek to reach to a conclusion
different from the one reached by the court below, if the one
reached by that court was reasonably possible on the material. If
the discretion has been exercised by the learned Trial Court
reasonably and in judicial manner, the fact that the appellate
court would have taken a different view may not be justified in
interfering with the decision of the Trial Court.
19. Applying the above test to the facts of the present case, I
find no merit in the present appeal. The same is dismissed.
20. The application is disposed of as infructuous.
21. There shall be no order as to costs.
NAVIN CHAWLA, J
NOVEMBER 10, 2022
RN
Signature Not Verified
Digitally Signed By:SHALOO
BATRA
Signing Date:15.11.2022
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