Sun Pharma Laboratories Limited vs. Avighna Medicare Private Limited & Ors.

$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 904/2022, I.A. 22240/2022, I.A. 22242/2022, I.A.
1930/2023 & I.A. 11220/2023

SUN PHARMA LABORATORIES LIMITED ..... Plaintiff
Through: Ms.Surya Rajappan and Mr.
Kapil Wadhwa, Advs.

versus

AVIGHNA MEDICARE PRIVATE LIMITED & ORS.
..... Defendants
Through: Ms. Archana Sahadeva, Ms.
Anjuri Saxena and Mr. Siddharth Raj
Choudhary, Advs. for D-1
Ms. Ayushi Upadhyay, Adv. for D-2

CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
O R D E R
% 03.07.2023

I.A. 11220/2023 ( under Order I Rule 10(2) read with Section 151 of
the CPC)

1. Ms. Surya Rajappan, learned Counsel for the plaintiff, by this
application, seeks permission to delete Defendant 2, in view of an
affidavit filed by the defendant.

2. Learned Counsel for the defendant has no objection.
Accordingly, Defendant 2 stands deleted from the arrays of parties.

3. The application stands allowed accordingly.

Signature Not Verified
CS(COMM) 904/2022 Page 1 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22

CS(COMM) 904/2022

4. The disputes between the parties stand amicably resolved under
the aegis of the Delhi High Court Mediation and Conciliation Centre
and settlement agreement dated 26 May 2023 is on record.

5. The terms of settlement read thus:

“a) That a Decree of permanent injunction be granted in favour
of the Plaintiff under Paragraphs (A) & (B) of the Prayer clause in
the Plaint restraining Defendant No. 1, its business associates,
partners/promoters, directors, proprietors, officers, subsidiaries,
affiliates, franchisees, manufacturers, family members, servants,
agents, dealers, distributors, stockists, licensee and/or anyone
acting for and on its behalf from selling, offering to sell,
manufacturing, advertising, promoting or in any other manner
using the Impugned Marks “DOSELA” and "ATENTRUE" and/or
any other mark identical or deceptively similar to the Plaintiffs
registered trademarks "DUZELA" or “ATTENTROL” with respect
to goods falling under Class 5 and/or any cognate and allied goods
either as a trademark or part of a trademark, sub-brand, trade name,
or part of a trade name, corporate name, email, domain name or
part of a domain name, or in any other manner, so as to result in
Infringement and/or Passing Off and/or Unfair Competition except
as permitted under the present settlement agreement;

b) That the Defendant No. 1 acknowledges the Plaintiff’s
exclusive rights in the trademarks "DUZELA" and
"ATTENTROL" for which the Plaintiff holds trademark
registrations and which have acquired tremendous goodwill and
reputation and associated exclusively with the Plaintiff, both within
the trade as well as in public and are well-known, and undertakes
not to challenge the Plaintiff’s registrations or any future
applications for the said trademarks in any class, at any time in the
future;

c) That the Defendant No. 1 undertakes to forthwith cease
further manufacturing and use of the Impugned Mark "DOSELA"
and to destroy all infringing products/material bearing the
Impugned Mark “DOSELA” and/or any deceptively similar mark
to that of the Plaintiffs well known "DUZELA" trademarks,
including tablet strips, labels, cartons, packaging material, name
Signature Not Verified
CS(COMM) 904/2022 Page 2 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22

plates, publicity material like pamphlets, fliers, hoardings, sign
boards, stationary, etc., in the presence of the Plaintiff’s
representative, within fourteen (14) days of signing of the present
settlement agreement. Accordingly, Defendant No. 1 undertakes to
furnish a duly signed compliance letter on its letterhead to the
Plaintiff containing the details of the destroyed goods within seven
(7) days from the date of such destruction,

d) That the Defendant No. 1 further undertakes to immediately
cease further manufacturing and use of the Impugned Mark
"ATENTRUE" but is granted the limited permission to exhaust the
current stock of "ATENTRUE" already manufactured and lying
with Defendant No. 1 within a period of three (3) months from
signing of the present agreement. Details of the current stock of
"ATENTRUE" are provided in the table (hereinafter ''Table 1")
below;

Signature Not Verified
CS(COMM) 904/2022 Page 3 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22

and/or marketing of its products under the Impugned Marks
"DOSELA" and/or "ATENTRUE" or any other product. Defendant
No. 1 categorically states that it has no connection whatsoever with
Defendant No. 2 and an appropriate affidavit stating the same has
been furnished to the counsel for the Plaintiff for taking
appropriate steps. A copy of the said Affidavit issued by Defendant
No. 1 is annexed as " ANNEXURE - E " to the present agreement.
That based on the said assertion by the Defendant No. 1, the
Plaintiff shall move an appropriate application for deletion of
Defendant No. 2 from the array of the parties.

h) That the Defendant No. 1 further states that the documents
filed by the Plaintiff along with the present suit to identify and
implead Defendant No. 2 as a manufacturer of the impugned
products are third-party online listings of the products under the
Impugned Marks "DOSELA" and "ATENTRUE". The online
listing of the impugned product "DOSELA" is available at
https://www.1mg.com/drugs/dosela-400mg-tablet-773124 and of
the impugned product "ATENTRUE" is available at
https:/www.1mg.com/drugs/atentrue-50mg-tablet-773612. To the
best of Defendant No. 1's knowledge and as per records maintained
by the company, Defendant No. 1 states that the said listings which
offer for sale the impugned products under the Impugned Marks
"DOSELA" and "ATENTRUE" incorrectly state that Defendant
No. 2, i.e., "Truecure Healthcare Private Limited", is the
manufacturer/marketer of the said products.;

i) That the Defendant No. 1 undertakes to withdraw its Trade
Mark applications for the Impugned Marks being Application No.
5224103 for "DOSELA" in Class 05 with application date
26.11.2021 and Application No. 5300675 for "ATENTRUE in
Class 05 with application date 27.01.2022 and any other such
trademark applications filed by it for the Impugned Marks
"DOSELA"/ "ATENTRUE" and furnish proof of filing of such
withdrawal applications before the Trade Marks Registry to the
Plaintiff within fifteen (15) days of signing of the present
agreement. Defendant No. 1 further undertakes that it shall not file
any applications for the Impugned Marks
"DOSELA"/"ATENTRUE" and /or any other trade mark which is
identical with or deceptively similar to the Plaintiff’s well-known
"DUZELA" or "ATTENTROL" trademarks before the Trade
Marks Registry;

j) That the Defendant No. 1 further undertakes to issue an
appropriate letter within three (3) days of signing of the present
settlement agreement to the third party online pharmacies specified
in "ANNEXURE - F " to the present settlement agreement
Signature Not Verified
CS(COMM) 904/2022 Page 4 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22

whereon the products under the Impugned Mark "DOSELA" is
listed to immediately takedown all relevant listings of the
impugned products. Defendant No. 1 further undertakes to furnish
a copy of the said letter to the Plaintiff within five (5) days of its
issuance to the online pharmacies;

k) With respect to the Impugned Mark "ATENTRUE", post
the expiry of the 3-month period as envisaged in Clause (d) herein
above, the counsels for the Plaintiff shall, within three (3) days of
expiry of the said 3 months period, furnish to Defendant No. 1 in
writing, a list of additional third-party online pharmacies along
with the specific URLs, if any, apart from those listed in
" ANNEXURE - G " to the present settlement agreement, whereon
the products under the Impugned Mark "ATENTRUE" are listed.
Upon receipt thereof. Defendant No. I shall within three (3) days of
receipt, issue an appropriate letter to the third party online
pharmacies to immediately takedown all relevant listings of the
impugned products under the mark "ATENTRUE". In the event
that no list of additional online pharmacies is provided by the
Plaintiff’s counsel to Defendant No. 1 within the stipulated time of
three (3) days. Defendant No. 1 shall issue the aforesaid letter to
the third-party online pharmacies listed in Annexure-G only.
Defendant No. 1 further undertakes to furnish a copy of the said
letter and emails to the Plaintiff within five (5) days of its issuance
to the online pharmacies.

1) 'That a Decree of permanent injunction be granted in favour
of the Plaintiff under Paragraphs (A) & (B) of the Prayer clause in
the Plaint restraining Defendants No. 3 & 4, their business
associates, partners/promoters, directors, proprietors, officers,
subsidiaries, affiliates, franchisees, manufacturers, family
members, servants, agents, dealers, distributors, stockists, licensee
and/or anyone acting for and on their behalf from selling, offering
to sell, manufacturing, advertising, promoting or in any other
manner using the Impugned Marks "DOSELA" and "ATENTRUE"
and/or any other mark identical or deceptively similar to the
Plaintiff’s registered trademarks "DUZELA" or "ATTENTROL"
with respect to goods falling under Class 5 and/or any cognate and
allied goods either as a trademark or part of a trademark, sub-
brand, trade name, or part of a trade name, corporate name, email,
domain name or part of a domain name, or in any other manner, so
as to result in Infringement and/or Passing Off and/or Unfair
Competition;

m) That the Defendants No. 3 & 4 acknowledge the Plaintiff’s
exclusive rights in the trademarks "DUZELA" and
"ATTENTROL" for which the Plaintiff holds trademark
Signature Not Verified
CS(COMM) 904/2022 Page 5 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22

registrations and which have acquired tremendous goodwill and
reputation and associated exclusively with the Plaintiff, both within
the trade as well as in public and are well-known, and undertake
not to challenge the Plaintiff s registrations or any future
applications for the said trademarks in any class, at any time in the
future;

n) That the Defendant No. 3 states that it is the contract
manufacturer of the products under the Impugned Mark
"DOSELA" for Defendant No. 1. Defendant No. 3 thus has no
right, claim or title in the Impugned Marks "DOSELA" and/or
"ATENTRUE";

o) That the Defendant No. 3 further states that it has no
manufactured stock of the products under the Impugned Mark
"DOSELA" lying with it as on date;

p) That the Defendant No. 3 undertakes to forthwith cease
manufacture and use of the products under the Impugned Mark
"DOSELA" and states that it has no infringing material bearing the
Impugned Mark "DOSELA" and/or any deceptively similar mark
to that of the Plaintiffs well-known "DUZELA" trademarks,
including labels, cartons, packaging material, name plates, etc. in
its possession;

q) That the Defendant No. 4 states that it is the contract
manufacturer of the products under the Impugned Mark
"ATENTRUE" for Defendant No. 1. Defendant No. 4 thus has no
right, claim or title in the Impugned Marks "DOSELA" and/or
"ATENTRUE";

r) That the Defendant No. 4 further states that it has no
manufactured stock of the products under the Impugned Mark
"ATENTRUE" lying with it as on date;

s) That the Defendant No. 4 further states that it is in
possession of some packaging material to the extent of 1117 (One
Thousand One Hundred and Seventeen) cartons and 1.8 kilograms
of foil bearing the Impugned Mark "ATENTRUE" as on date of
signing the present settlement agreement;

t) That the Defendant No. 4 undertakes to forthwith cease
manufacture and use of the products under the Impugned Mark
"ATENTRUE" and to destroy all infringing material bearing the
Impugned Mark "ATENTRUE" and/or any deceptively similar
mark to that of the Plaintiff’s well-known "ATTENTROL"
trademarks, including cartons and foil, as specified in clause (s)
Signature Not Verified
CS(COMM) 904/2022 Page 6 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22

hereinabove, in the presence of the Plaintiff s representative, within
seven (7) days of signing of the present settlement agreement.
Accordingly, Defendant No. 4 undertakes to provide the list of
destroyed packaging material as mentioned in Clause (s) of the
present Agreement on its letter head (duly signed), to the Plaintiff
or its Advocate within seven (7) days from the date of such
destruction;

u) That in consideration of the above acknowledgments,
statements, and undertakings by Defendants No. 1, 3 & 4, the
Plaintiff agrees to waive and forego its claims in paragraphs (C),
(D), (E) and (F) of the Prayer clause in the Plaint. This waiver shall
not, however, preclude the Plaintiff from enforcing its claim of
costs and damages m the Plaint in the event that any of the
statements made herein are found to be wrong/false or in the event
of a breach of any of the undertakings given herein by any of the
Defendants.

v) It is agreed by the Parties that the Parties shall jointly
request the Hon'ble Court to accept the aforementioned
undertakings of the Second Party and decree the suit being C.S.
(Comm.) No. 904 of 2022 in terms of the prayers set out in
Paragraph (A) & (B) of the Prayer clause of the Plaint, whilst
binding the Second Party to the undertakings given hereinabove in
the present Settlement Agreement.

w) That the contents of the present Settlement Agreement have
been read over to both the parties in their vernacular language
(Hindi) by the Mediator and both the Parties have understood and
agreed to the same.

x) The Parties agree that they have executed the present
Settlement Agreement by their free will and volition without any
force or pressure from anybody. The Parties also agree that they
have understood the contents of the present Settlement Agreement
as the same have been explained to them by the Mediator and the
respective Counsel, in the presence of each other and they have
consented to the same in its true letter and spirit, and as such they
shall not dispute the same ever in future.

y) The Parties agree that they shall abide by the terms and
conditions set out in the present Settlement Agreement and shall
not dispute the same hereinafter in the future. The Parties further
agree that the statements made by them in this Settlement
Agreement shall be taken as their respective undertakings to the
Hon'ble Court and the defaulting party shall be held liable for
contempt of court under the Contempt of Courts Act, 1971.”
Signature Not Verified
CS(COMM) 904/2022 Page 7 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22

6. The parties are represented by learned Counsel who undertake
on behalf of the respective clients to remain bound by the terms of
settlement. This Court has perused the terms of settlement and found
them to be legal and in order.


7. Accordingly, nothing survives for adjudication in the suit.

8. The suit stands disposed of in terms of the aforesaid settlement
agreement dated 26 May 2023.

9. The plaintiff shall be entitled to refund of the Court fees, if any,
deposited by it.

C.HARI SHANKAR, J
JULY 3, 2023/ ar
Signature Not Verified
CS(COMM) 904/2022 Page 8 of 8


Signed By:SUNIL
SINGH NEGI
Signing Date:04.07.2023
11:45:22