Bombay High Court

Ajanta Pharma Limited vs Suyaash Pharmaceuticals And Anr on 8 August, 2024

Author: R. I. Chagla

Bench: R. I. Chagla

                                                      11-IA(L)24633.24 in COMIP(L) 24567.24.doc


                    Kavita S.J.

                                 IN THE HIGH COURT OF JUDICATURE AT BOMBAY
                                     ORDINARY ORIGINAL CIVIL JURISDICTION
                                          IN IT'S COMMERCIAL DIVISION

                                    INTERIM APPLICATION (L) NO. 24633 OF 2024
                                                      IN
                                    COMMERCIAL IPR SUIT (L) NO. 24567 OF 2024


                    Ajanta Pharma Limited                                 ]...Plaintiff

                            Versus

                    Suyaash Pharmaceuticals & Anr.,                       ]...Defendants

                                                      --------

                    Mr. Ashutosh Kane and Ms. Vedangi Soman, Advocates instructed by W.
                    S. Kane & Co., Advocates for the Plaintiff.
                                                    -----------

                                                            CORAM : R. I. CHAGLA, J.

                                                            DATED : 8th AUGUST, 2024.
                    ORDER:

1. Mr. Ashutosh Kane, the learned Counsel for the Applicant/

KAVITA Plaintiff, moves for ex-parte ad-interim relief without notice to the SUSHIL JADHAV

Defendants. Considering the averments in the Plaint and particularly in

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

paragraph 22 thereof, I am satisfied that sufficient grounds have been

made out for consideration of the prayer for ex-parte ad-interim relief.

2. It is stated in paragraphs 1 and 3 of the plaint that the Plaintiff is

a company incorporated under the Companies Act, 1956 and carries on

an old, established and reputed business as a manufacturer, marketer,

seller, exporter and/or trader inter-alia of pharmaceutical and medicinal

preparations. It is stated that the Plaintiff is an ISO certified

pharmaceutical company manufacturing a number of over the counter

and ethical formulations and products and is marketing the same in

India as also in more than 30 other countries across the globe.

3. It is stated in paragraph 7 of the plaint that in or about 2013, the

Plaintiff honestly, independently and bonafidely adopted the trade mark

OPTIDEW upon and in relation to its medicinal and pharmaceutical

preparation to treat dry eyes. Specimen packaging of the Plaintiff's said

goods bearing the said trade mark is annexed to the plaint at Exhibit A.

It is stated that on 17th December, 2013, the Plaintiff applied for and

eventually obtained registration of the trade mark OPTIDEW under the

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

Trade Marks Act, 1999 under Registration No. 2644166 in Class 05 in

respect of medicinal and pharmaceutical preparations. Copies of the

certificate of registration and latest renewal certificate of the said trade

mark are annexed to the Plaint at Exhibits "B-1" and "B-2".

4. It is stated in paragraph 8 of the Plaint that since the year 2018,

the Plaintiff has been widely and continuously manufacturing,

marketing and selling medicinal and pharmaceutical preparations

containing the drug Sodium Hyaluronate in the form of drops bearing

the said trade mark. It is stated that during all these years, the Plaintiff

has effected large and ready sales of its said goods bearing the said trade

mark. It is stated that the Plaintiff has also taken efforts to popularize

the said goods bearing the said trade mark and has expended substantial

sums of money and efforts on sales promotion of the said goods bearing

the said trade mark. A statement of annual sales and expenses incurred

towards sales promotional activities of the said goods bearing the said

trade mark is reproduced in the same paragraph. Copy of the certificate

of the Plaintiff's Chartered Accountant certifying the correctness of the

Plaintiff's annual sales is annexed to the Plaint at Exhibit "C". Copies of

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the Plaintiff's invoices in respect of sales of its said goods under the said

trade mark are annexed to the Plaint at Exhibits "D-1" to "D-14". Copy

of specimen of the Plaintiff's advertisement/ promotional material

bearing the said trade mark is annexed to the Plaint at Exhibit "E".

5. It is stated in paragraph 12 of the Plaint that in or about the

second week of June, 2024, the Plaintiff came to learn that Defendant

No. 2 has secured registration of the trade mark "OPTIVIEW" in Class 05

under Registration No. 3895360 dated 23rd July, 2018 on a proposed to

be used basis. It is stated that on or about 19 th June, 2024, being

aggrieved by the 2nd Defendant's aforesaid registered trade mark, the

Plaintiff, filed an application for Rectification under No. 282921 with

the Registrar of Trade Marks, seeking cancellation of the registration of

Defendant No. 2's aforesaid registered Trade Mark No. 3895360 in Class

05. A copy of the aforesaid Rectification Application is annexed to the

Plaint at Exhibit "F".

6. It is stated in paragraph 13 of the Plaint that subsequent to the

filing of the above rectification application, the Plaintiff conducted a

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market survey in July 2024 to ascertain whether Defendant No. 2 is also

using the impugned trade mark in the market. It is stated that at the

said time the Plaintiff learnt that Defendant No. 2 is marketing and

selling and Defendant No. 1 is manufacturing the impugned goods

under the impugned trade mark "OPTIVIEW". It is stated that the

Plaintiff further learnt that the impugned goods are used for the same/

similar treatment as that for which the Plaintiff's said goods under the

said trade mark are used. Specimen of the Defendants' packaging

bearing the impugned trade mark "OPTIVIEW" is annexed to the Plaint

at Exhibit "G". Mr. Kane, on behalf of the Plaintiff, submits that the

Defendants' impugned goods bearing the impugned trade mark are

available in Mumbai. Therefore, the entire cause of action has arisen in

Mumbai. In support of this submission, he has drawn my attention to

the invoice dated 22nd July 2024 which is annexed at Exhibit "H" to the

Plaint. It is therefore submitted that this Court has jurisdiction to

entertain the present suit for infringement of registered trade mark as

also for passing off.

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7. It is stated in paragraph 14 of the Plaint that the Defendants'

impugned trade mark "OPTIVIEW" is phonetically, structurally and

aurally almost identical with and/or closely and deceptively similar to

the Plaintiff's aforesaid registered trade mark OPTIDEW bearing

Registration No. 2644166 in Class 05. It is stated that the Defendants

have merely replaced the alphabet "D" from the Plaintiff's said trade

mark OPTIDEW with the alphabets "V" and "I" to arrive at the impugned

trade mark OPTIVIEW. It is also stated that the said change is

inconsequential and not such as would enable the buyers to distinguish

the Defendants' impugned trade mark from the Plaintiff's said trade

mark. It is stated that confusion and deception between the rival

pharmaceutical and medical preparations bearing the rival trade marks

is inevitable. It is further stated that the members of the relevant trade

and the public are going to be misled into believing that the impugned

goods bearing the impugned trade mark OPTIVIEW are the Plaintiff's

goods bearing the trade mark OPTIDEW. It is stated that the goods in

respect of which the impugned trade mark is being used by the

Defendants are identical with/ similar to the goods in respect of which

the Plaintiff has been using the said trade mark and/or in respect of

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

which the Plaintiff has secured registration of its said trade mark. It is

also stated that the use of the Defendants' impugned trade mark in

respect of the impugned goods is therefore bound to cause confusion

and deception amongst the consumers, trade and persons involved in

the same or similar business or profession as to the origin of the

impugned goods. It is further stated that even though the rival goods are

prescription drugs, judicial notice has been taken of the fact that the

doctor's prescription has lost its importance and even prescription drugs

are sold over the counter. It is also stated that as the rival trade marks

are structurally, aurally and phonetically almost identical/ closely and

deceptively similar, there is bound to be confusion and deception when

the chemists, patients or hospitals place orders for the Plaintiff's well-

known medicinal preparation sold under the said trade mark, over

telephone.

8. It is submitted in paragraph 15 of the Plaint that the registration

of the impugned trade mark bearing No. 3895360 in Class 05 by

Defendant No. 2, is ex-facie illegal, fraudulent and such as would shock

the conscience of the Court. It is submitted that as on the date when

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

Defendant No. 2 applied for registration of the impugned trade mark

OPTIVIEW, the Plaintiff's said trade mark OPTIDEW was not only in use

but was also on the Register of Trade Marks. It is therefore submitted on

behalf of the Plaintiff that Defendant No. 2, before adopting the

impugned trade mark, was aware of and/or ought to have been aware

the Plaintiff's said trade mark and the medicinal and pharmaceutical

preparations sold thereunder. It is further submitted that Defendant No.

2 must have and/or ought to have conducted a search of the records of

the Trade Marks Registry before adopting the impugned trade mark and

upon doing so, Defendant No. 2 would have come across the Plaintiff's

registered trade mark. In support of this submission, Mr. Kane relies

upon a judgment of the Division Bench of this Court in the case of Bal

Pharma Ltd v/s Centaur Laboratories Pvt. Ltd reported in 2002 (24) PTC

226 (Bom) (DB). It is submitted on behalf of the Plaintiff that Defendant

No. 2 has knowingly, deliberately and dishonestly adopted the

impugned trade mark and was and is not entitled to the registration of

the impugned trade mark, especially on the grounds of rectification

contained in the application being Exhibit "F" to the Plaint. It is

submitted that the registration of the impugned trade mark is therefore

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

liable and ought to be cancelled in pursuance of the Plaintiff's aforesaid

application for rectification thereof. It is further submitted that this

Court has the power to consider the challenge to the validity of

registration of Defendant No. 2's impugned trade mark at the

interlocutory stage by way of prima facie finding on such issue and in

the facts and circumstances of the present case, this Court can and

should go behind the registration of Defendant No. 2's impugned trade

mark at the interlocutory stage and upon doing so, this Court would find

that ex-facie, the registration of Defendant No. 2's impugned trade mark

is illegal, fraudulent and such as would shock the conscience of this

Court. In support of the aforesaid submissions, Mr. Kane has relied upon

the judgment of the Full Bench of this Court in Lupin Ltd vs Johnson

and Johnson reported in 2015 (1) Mh. L.J. 501.

9. It is stated in paragraph 22 of the Plaint that if the Defendants get

notice of the Plaintiff's application for ad-interim reliefs, the Defendants

are likely to remove the existing stock of the impugned goods

manufactured and packed by the Defendants under the impugned trade

mark from their factory, premises, go-down(s), offices and/or shops and

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

are likely to dump the impugned goods in the market and flood the

market with their impugned goods bearing the impugned trade mark,

particularly, in the established markets of the Plaintiff. It is stated that

this would result in prejudicially affecting the Plaintiff's market

reputation and goodwill. It is also stated that alternately, the Defendants

may destroy the impugned goods and/or packing material and/or other

things bearing their impugned trade mark. It is stated that the

Defendants are also likely to alter, amend or destroy their books of

accounts and records showing manufacture, stock and sale of goods

bearing the impugned trade mark.

10. Having considered the submissions of the learned Counsel for the

Applicant /Plaintiff, and after perusing the averments in the Plaint and

the documents annexed thereto, in my view, a prima facie case is made

out for grant of ex-parte ad-interim reliefs as sought for in the Interim

Application. The Defendants are using the impugned trade mark in

relation to the same/ similar goods as those in respect of which the

Plaintiff has secured the registration of its trade mark OPTIDEW and in

respect of which the Plaintiff is said to have been using the said trade

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

mark. The impugned trade mark OPTIVIEW prima facie appears to be

phonetically, structurally, closely and deceptively similar to the

Plaintiff's registered trade mark OPTIDEW and the use of the impugned

trade mark by the Defendants in relation to the impugned goods is likely

to cause confusion and deception on the part of the public. I am of the

prima facie view that the Defendants' use of the impugned trade mark in

respect of medicinal and pharmaceutical preparations would amount to

passing off. Further, considering the fact that the Plaintiff's registered

trade mark OPTIDEW was on the Register of Trade Marks since 2013,

Defendant No.2 should have been aware of the Plaintiff's said registered

trade mark prior to making the application for registration of the

impugned trade mark OPTIVIEW. I am of the prima facie view that

therefore, the registration obtained by Defendant No.2 for the impugned

trade mark OPTIVIEW for the same/ similar goods and in the same Class

i.e., Class 05 in 2018, is ex-facie illegal and fraudulent and may be

cancelled. Therefore, prima facie, the Defendants' use of the impugned

trade mark OPTIVIEW in respect of medical and pharmaceutical

preparations would also amount to infringement of the Plaintiff's

registered trade mark OPTIDEW.

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

11. In the circumstances. I am satisfied that a strong prima facie case

is made out for grant of ad-interim reliefs. I am further satisfied that

giving notice to the Defendants would be counterproductive and would

defeat the very object in the ad-interim reliefs sought. The balance of

convenience tilts in favour of the Plaintiff. The Plaintiff will also suffer

irreparable loss, if the ad-interim reliefs are refused.

12. Hence the following order:-

(i) Ex-parte ad-interim reliefs in terms of prayer clauses (a) and

(b) are granted, which read thus:

(a) that pending the hearing and final disposal of the suit, the

Defendants by themselves, their proprietor, partners, directors,

servants, employees, agents, stockists, dealers, distributors and

all persons claiming through them be restrained by a

temporary order and injunction of this Hon'ble Court from

infringing the Plaintiff's registered trade mark "OPTIDEW"

bearing Registration No. 2644166 in Class 05 by the use of the

impugned trade mark "OPTIVIEW" and/or any other trade

mark containing the word "OPTIVIEW" or any other word

11-IA(L)24633.24 in COMIP(L) 24567.24.doc

deceptively similar thereto and/or any other trade mark

identical with or deceptively similar to the Plaintiff's said

registered trade mark "OPTIDEW" in respect of the goods

covered by the Plaintiff's aforesaid registration and/or similar

goods or in any other manner whatsoever;

(b)that pending the hearing and final disposal of the suit, the

Defendants by themselves, their proprietor, partners, directors,

servants, employees, agents, stockists, dealers, distributors and