GALDERMA S.A. vs. VELITE HEALTHCARE

$~
* IN THE HIGH COURT OF DELHI AT NEW DELHI

+ CS(COMM) 1618/2016

GALDERMA S.A. ..... Plaintiff
Through: Mr. Pravin Anand, Advocate
with Mr. Raunaq Kamath,
Advocate.

versus

VELITE HEALTHCARE ..... Defendant
Through: None.


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Reserved on : 20 July, 2017
st
% Date of Decision: 31 July, 2017


CORAM:
HON'BLE MR. JUSTICE MANMOHAN

J U D G M E N T

MANMOHAN, J: (Oral)

I.A. 8027/2017
1. Present application has been filed under Order VIII Rule 10
read with Order XIII-A Rules 3 and 6(1)(a) read with Section 151
CPC.

2. It is pertinent to mention that the present suit has been filed
seeking a permanent injunction restraining infringement of trade mark,
copyright, passing off etc. against the defendant. At the outset, learned
CS (COMM) 1618/2016 Page 1 of 13




counsel for plaintiff stated that he is pressing only prayers 27(a) to (c)
of the plaint. The said prayers are reproduced hereinbelow:-

“27. It is, therefore, prayed that this Hon’ble Court may
be pleased to grant:

a) An order of permanent injunction restraining the
Defendant, its proprietors, principal officers,
servants, representatives, agents, affiliates, legal
heirs, distributors and any other persons acting for
and on its behalf from manufacturing, selling,
distributing, exporting, advertising, promoting or
otherwise dealing in pharmaceutical products, in any
manner, under the impugned mark CATEVEL or
any other mark similar to the Plaintiff trade mark
CETAPHIL amounting to infringement of the
Plaintiff’s registered trade mark No.859078.

b) An order of permanent injunction restraining the
Defendant, its proprietors, principal officers,
servants, representatives, agents, affiliates, legal
heirs, distributors and any other persons acting for
and on its behalf from manufacturing, selling,
distributing, exporting, advertising, promoting or
otherwise dealing in pharmaceutical products, in any
manner, bearing the impugned trade dress or any
other trade dress which is a reproduction, whether
substantial or otherwise, of the Plaintiff’s Cetaphil
Trade Dress amounting to infringement of copyright.

c) An order of permanent injunction restraining the
Defendant its proprietors, principal officers,
servants, representatives, agents, affiliates, legal
heirs, distributors and any other persons acting for
and on its behalf from manufacturing, selling,
distributing, exporting, advertising, promoting or
otherwise dealing in pharmaceutical products, in any
CS (COMM) 1618/2016 Page 2 of 13




manner, under the impugned mark CETAVEL
and/or any other mark similar to the Plaintiff’s trade
mark CETAPHIL and also from using any trade
dress which is a reproduction of the Cetaphil Trade
Dress or doing any other act amounting to passing
off the Defendant’s products and/or business as that
of the Plaintiff.”

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3. The defendant was served with summons in the suit on 15
February, 2017 and was therefore statutorily required to file its written
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statement by 17 March, 2017 or latest by 15 June, 2017. The
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defendant was proceeded against ex-parte on 20 April, 2017. On the
said date, the Court also granted an interim injunction in the plaintiff’s
favour and restrained the defendant from using the impugned trade
mark/name CETAVEL during the pendency of the proceedings. Till
date, the defendant has neither entered appearance nor filed its written
statement.
4. The contentions and submissions advanced by learned counsel
for the plaintiff are as under:-

i. The plaintiff is the proprietor of the trade mark CETAPHIL
which was adopted in 1950 and used in relation to a therapeutic
skin care product range.


ii. The plaintiff’s trade mark CATEPHIL is a coined/invented
mark and is entitled to the highest degree of protection
conferred under law.
CS (COMM) 1618/2016 Page 3 of 13




iii. In addition to over 65 years of use internationally, the
CETAPHIL trade mark has been continuously and extensively
used in India since January 2001 when the Plaintiff launched its
CETAPHIL range of products in the Indian market.

iv. The CETAPHIL trade mark is registered in the plaintiff’s
favour in India under No. 859078 in Class 3 in relation to
perfumery products, soaps, cosmetics, non-medicated
preparations for the skin; creams and skin lotions, all for use in
the cleansing of sensitive skin, all included in Class 3. The
plaintiff has obtained registrations for the trade mark
CETAPHIL in over 100 countries worldwide.

v. The plaintiff’s CETAPHIL range of products are packaged in a
series of trade dresses which comprise a distinct layout, get up,
colour scheme and arrnagement of features closely resembling
one another (hereinafter referred to as ‘Cetaphil Trade Dress’).

vi. The Cetaphil Trade Dress constitutes an original artistic work
within the meaning of Section 2(c) of the Copyright Act, 1957
and any unauthorized reproduction thereof amounts to
infringement of the copyright vested with the plaintiff therein.


vii. The plaintiff’s CETAPHIL range has generated tremendous
revenues sales, details of which are as under:-


CS (COMM) 1618/2016 Page 4 of 13




A) Plaintiff’s worldwide sales figures for CETAPHIL

B) Plaintiff’s India specific sales figures for CETAPHIL

CS (COMM) 1618/2016 Page 5 of 13




viii. The details of the plaintiff’s worldwide advertising and
promotional expenses in relation to its products sold under the
CETAPHIL brand are as under:-

ix. The defendant, Velite Healthcare is a proprietary concern which
is engaged in the sale of skin care products under the impugned
mark CETAVEL .

x. The defendant had applied for registration of the impugned
CETAVEL mark under No. 2995709 in Class 3 which was
objected to by the Registrar of Trade Marks owing to its
identity/similarity to the plaintiff’s trade mark registration No.
859078 for CETAPHIL in Class 3.


xi. The defendant’s impugned product is being sold in an identical
bottle bearing a trade dress comprising a virtually identical get
up, lay out, colour scheme and arrangement of features as the
plaintiff’s Cetaphil Trade Dress. The defendant has even
adopted a device which is deceptively similar to the plaintiff’s
Ellipses Device which forms one of the most distinctive features
of the Cetaphil Trade Dress. A comparison of the defendant’s
CS (COMM) 1618/2016 Page 6 of 13




impugned trade dress and the plaintiff’s Cetaphil Trade Dress is
provided below:-

xii. The defendant’s impugned CETAVEL trade dress is a blatant
imitation and substantial reproduction of the plaintiff’s
CETAPHIL trade dress amounting to an infringement of the
plaintiff’s copyright therein. Further the defendant’s impugned
mark CETAVEL is phonetically identical and visually and
structurally similar to the plaintiff’s well known trade mark
CETAPHIL . The impugned trade mark/dress CETAVEL is
being used by the defendant in relation to identical goods as
those of the plaintiff, i.e. skin care lotion. The plaintiff is the
proprietor of the trade mark CETAPHIL and the Cetaphil
Trade Dress and the defendant’s use of a virtually identical
mark coupled with a deceptively similar trade dress in relation
to identical products clearly amounts to infringement of the
CS (COMM) 1618/2016 Page 7 of 13




plaintiff’s statutory rights in the CETAPHIL trade mark and
trade dress as well as passing off their products and business as
those of the plaintiff.

xiii. The defendants failure to file its written statement till date
demonstrates their lack of justification or defence of their
infringing activities involving the plaintiff’s trade mark and
trade dress.


5. This Court while dealing with a similar application under Order
VIII Rule 10 CPC in CS(OS) 873/2015 Samsung Electronics
Company Limited & Anr. Vs. Mohammed Zaheeer Trading As M/s.
Gujarat Mobiles & Ors. has culled out the relevant law as under:-
“10. The Supreme Court in C.N. Ramappa Gowda Vs. C.C.
Chandregowda, (2012) 5 SCC 265 has interpreted the Order
VIII Rule 10 CPC as under:-
"25. We find sufficient assistance from the apt
observations of this Court extracted hereinabove which
has held that the effect [Ed.: It would seem that it is
the purpose of the procedure contemplated under Order
8 Rule 10 CPC upon non-filing of the written statement
to expedite the trial and not penalise the defendant.] of
non-filing of the written statement and proceeding to try
the suit is clearly to expedite the disposal of the suit and
is not penal in nature wherein the defendant has to be
penalised for non-filing of the written statement by
trying the suit in a mechanical manner by passing a
decree. We wish to reiterate that in a case where written
statement has not been filed, the court should be a little
more cautious in proceeding under Order 8 Rule 10
CPC and before passing a judgment, it must ensure that
even if the facts set out in the plaint are treated to have
CS (COMM) 1618/2016 Page 8 of 13




been admitted, a judgment and decree could not
possibly be passed without requiring him to prove the
facts pleaded in the plaint.

26. It is only when the court for recorded reasons is fully
satisfied that there is no fact which needs to be proved
at the instance of the plaintiff in view of the deemed
admission by the defendant, the court can conveniently
pass a judgment and decree against the defendant who
has not filed the written statement. But, if the plaint itself
indicates that there are disputed questions of fact
involved in the case arising from the plaint itself giving
rise to two versions, it would not be safe for the court to
record an ex parte judgment without directing the
plaintiff to prove the facts so as to settle the factual
controversy. In that event, the ex parte judgment
although may appear to have decided the suit
expeditiously, it ultimately gives rise to several layers of
appeal after appeal which ultimately compounds the
delay in finally disposing of the suit giving rise to
multiplicity of proceedings which hardly promotes the
cause of speedy trial."

11. A Coordinate Bench of this Court in Nirog Pharma
Pvt. Ltd. Vs. Umesh Gupta and Ors., 235 (2016) DLT 354
has held as under:-

xxxx xxxx xxxx xxxx

CS (COMM) 1618/2016 Page 9 of 13




28. The present suit is also a commercial suit within
the definition of the Commercial Courts, Commercial
Division and Commercial Appellate Division of High
Courts Act, 2015 and it was the clear intention of the
legislature that such cases should be decided
expeditiously and should not be allowed to linger on.
Accordingly, if the defendant fails to persue his case or
does so in a lackadaisical manner by not filing his
written statement, the courts should invoke the
provisions of Order VIII Rule 10 to decree such cases."

12. Another Coordinate Bench of this Court in Satya
Infrastructure Ltd. and Ors. Vs. Satya Infra & Estates Pvt.
Ltd., 2013 III AD (Delhi) 176 has held as under:-

6. This Court is further of the view that the plaintiff is entitled to a
decree under Order XIII-A of the Commercial Courts, Commercial
Division and Commercial Appellate Division of the High Courts Act,
2015 as the said provision empowers this Court to pass a summary
judgment, without recording evidence, if it appears that the defendant
has no real prospect of defending the claim.
CS (COMM) 1618/2016 Page 10 of 13




7. This Court also finds that the plaintiff has filed pictures of third
party skin care products to demonstrate how their packaging, get up,
layout colour scheme etc. is distinct from the Cetaphil Trade Dress.
One such picture is as under:-



8. This Court is of the opinion that in the present case the
defendant has slavishly imitated the plaintiff’s trade dress which
demonstrates its malafides. This Court in William Grant & Sons Ltd.
Vs. Mcdowell & Company Ltd. 55(1994) DLT 80 , while considering
the similarity between the trade dress of the products of the contesting
parties in contrast to those of third parties, has held as under:-
“Despite looking at the labels which are to be found in Michael
Jackson’s book “Malt Whisky Companions”, reprinted in 1992,
I have not been able to locate any single label, for Single Malt
Whisky, which has got the same feature of shape, colour,
composition and articles which combine to make up the whole
CS (COMM) 1618/2016 Page 11 of 13




of the label, namely, scrolls/ribbons, stage, thistles, in any other
label of Malt Whisky. Yet the defendant has taken all the
aforesaid features of the label of the plaintiff, namely, the
features of shape (the label is not in straight line, but has got
various curves and projections), colour and articles like the
“Sambhar” with antlers, scrolls on top and bottom of the label,
thistles, the coloring of the stage comprising of golden, brown
and black. All this that the defendant has taken, makes one
think that the defendant has not done this accidentally, or
unknowingly. The same is deliberate. What is deliberate
copying, cannot, but be dishonest with intention of bringing
forth similarities between the plaintiff’s Glenfiddich Single Malt
Whisky and the Single Malt Whisky of the defendant. In my
view, Mr. Sen is right when he refers to and relies upon what is
stated by Justice Kekewich in XXII RPC 273 at page 276,
“Where you see dishonestly, then even though the similarity
were less than it is here, you ought, I think, to pay great
attention to the items of similarity, and less to the items of
dissimilarity”. The Defendant appears to have been conscious
of the repute of Glenfiddich as the largest selling Single Malt
Whisky in the world (as asserted by Michael Jackson in “Malt
Whisky Companions), so adopted label of the largest selling
Single Malt Whisky.”

(emphasis supplied)

9. Considering the fact that the plaintiff is the prior and registered
user and going through the legal position as enunciated by the cases
cited above, this Court is of the opinion that the defendant has no
justification for the adoption and use of virtually identical trade mark
as well as trade dress as that of the plaintiff in relation to identical
products. In any event, the defendant has not even placed a written
defence on record.

CS (COMM) 1618/2016 Page 12 of 13




10. Accordingly, the present application is allowed and the suit is
decreed against the defendant in accordance with prayers 27 (a) to (c)
of the plaint along with the actual costs. Registry is directed to
prepare a decree sheet accordingly.

MANMOHAN, J
JULY 31, 2017
rn/js
CS (COMM) 1618/2016 Page 13 of 13