Sworn undertakings can sustain a decree on admission under Order XII Rule 6 CPC.

Novartis AG and its Indian subsidiary sued Novosys Life Sciences Private Limited for infringement, passing off, dilution and unfair competition based on the defendant’s use of “NOVOSYS” for pharmaceutical products, and sought injunctions, withdrawal or cancellation of trade mark applications and registrations, and other relief

In the connected rectification petitions, the plaintiffs challenged the defendant’s registrations for “NOVOSYS” in Classes 35 and 5

The defendant undertook by affidavit to cease use of “NOVOSYS”, change its corporate name, remove its domain name, and take steps to withdraw or cancel its relevant trade mark applications and registrations; it initially sought eight months to exhaust existing stock

The plaintiffs ultimately did not press their claim for damages, but objected to the proposed stock-exhaustion period

1. Whether the defendant’s affidavits and undertakings constituted admissions sufficient to decree the suit, in whole or in part, under Order XII Rule 6 CPC

2. Whether the defendant should be permitted to exhaust existing pharmaceutical stock and, if so, within what period

3. Whether the connected rectification petitions required separate adjudication after directions had been issued for removal of the challenged registrations and applications

Order XII Rule 6 CPC permits judgment on clear admissions to secure relief to the extent admitted; an undertaking given to the court and acted upon by it binds the undertaking party, and breach may be treated as breach of an injunction (Noorali Babul Thanewala v. K.M.M. Shetty)

A consent or compromise decree is a decree to which the court adds its mandate (Rama Narang v. Ramesh Narang)

Order XXIII Rule 3 CPC was also considered in assessing whether the defendant’s sworn undertakings substantially resolved the dispute, notwithstanding the absence of a written compromise

In pharmaceutical trade mark disputes, a stricter standard applies when assessing the risk of confusion because confusion between medicines may endanger life (Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.)

The Court also relied on its approach in GlaxoSmithKline Pharmaceuticals Ltd. v. Akums Drugs and Pharmaceuticals Ltd., where a suit and connected cancellation proceedings were addressed on the basis of undertakings to cease use and remove registrations

The defendant’s affidavits gave clear undertakings to cease use of “NOVOSYS”, change its corporate name, deactivate its domain name, and pursue withdrawal or cancellation of its trade mark applications and registrations. The Court held that these undertakings substantially answered the suit’s principal injunction and corrective reliefs and constituted admissions supporting a decree under Order XII Rule 6 CPC; it therefore did not decide whether the competing marks were deceptively similar or whether infringement or passing off had occurred

Given the pharmaceutical context and the need to avoid continued circulation of products under the impugned mark, the Court rejected the requested eight-month period and allowed three months from the date of judgment to exhaust existing stock

Since the challenged registrations and applications were already covered by the defendant’s undertakings and the Court’s directions in the suit, the rectification petitions required no separate merits determination

The Registrar of Trade Marks was directed to cancel registrations nos. 4279944, 4279942 and 5760118, and to treat applications nos. 6775168 and 6775169 as withdrawn, in accordance with law

The plaintiffs were granted liberty to approach relevant intermediaries regarding third-party product listings

The connected rectification petitions and pending applications were disposed of