Delhi High Court

Lilly Icos Llc. vs Richie Laboratories Ltd. on 21 August, 2009

Author: Aruna Suresh

*             HIGH COURT OF DELHI AT NEW DELHI

+                         CS (OS) No.392/2005

                           Date of decision : August 21, 2009

LILLY ICOS LLC.                           ..... PLAINTIFF
                     Through : Mr. C.M.Lall Advocate with
                               Ms. Shikha Advocate.

                             Versus

RICHIE LABORATORIES LTD.     ..... DEFENDANT
             Through : Nemo.

%
       CORAM:
       HON'BLE MS. JUSTICE ARUNA SURESH

     (1) Whether reporters of local paper may be
         allowed to see the judgment?

     (2) To be referred to the reporter or not?              Yes

     (3) Whether the judgment should be reported
         in the Digest ?                                    Yes

                         JUDGMENT

ARUNA SURESH, J.

1. Plaintiff is a corporation organized and existing

under the laws of the State of Indiana, USA with its

principal place of business at Lilly Corporate Center,

Indianapolis, Indiana, USA. Plaintiff is a technical

collaboration between Eli Lilly and Company, USA

and ICOS Corporation and is the owner of trademark

„CIALIS‟ in India as well as world-wide. Their

products are sold in Europe and North America by

the plaintiff itself and the rest of the world through

its member Lilly.

2. In brief the case of the plaintiff is that in September,

1998, Lilly and ICOS formed the plaintiff company

for the purpose of developing, manufacturing,

promoting and selling pharmaceutical preparations

for the treatment of male erectile dysfunction. The

active ingredient in those preparations is Tadalafil

which has been patented in numerous countries

worldwide by the plaintiff and its members. Plaintiff

filed an application in the United States on June 17,

1999 to register „CIALIS‟ trademark which is a

fanciful and coined word that was created by the

plaintiff having no descriptive meaning. The mark

including its „....ALIS‟ ending is inherently distinctive

both to the trade and the consuming public. The

trademark „CIALIS‟ was made public by the plaintiff

in July, 2001. The tablet sold under the trade mark

„CIALIS‟ was given a unique and unusual shape and

colour as it was of a unique light yellow colour and

is shaped in an unusual and distinctive almond

shape. On the tablet is inscribed the plaintiff‟s trade

mark C-20 in unique and distinctive script. The

plaintiff was issued exclusive marketing rights in

relation to Tadalafil under patent laws in India. The

drug is widely in circulation and is being used for

treatment for erectile dysfunction under the trade

mark „CIALIS‟ and the „Cialis Tablet Trade Dress‟

around the world. Plaintiff has also applied for

registration of the trade mark „CIALIS‟ in India and

the said application was advertised in the Trade

Marks Journal No.1300 dated 1st August, 2003.

3. From search on the internet, plaintiff learnt that

defendant is advertising on its website

www.richielabs.com a Tadalafil tablet under the

brand name TADARICH using a pill shape which is

identical to the Cialis Tablet Trade Dress. The

defendant used the numerals 20 written in a

stylized form in place of the trade mark „C-20‟ of the

plaintiff. Plaintiff also found on the website that the

defendant was using the brand name RICHCALIS

which is deceptively and confusingly similar to

plaintiff‟s trade mark „CIALIS‟ which is cleverly

designed to represent that it is a richer form of

„CIALIS‟ or is „CIALIS‟ by Richie Laboratories Ltd.

(the defendant) with an intention to usurp the

plaintiff‟s trade mark „CIALIS‟. The defendant has

chosen the name in an effort to ride upon the

goodwill and reputation of the plaintiff amongst the

purchaser of the said medicine with the entire effort

to represent to the members of the trade and public

that its product is the plaintiff‟s product and

accordingly to pass off its goods as and for the

goods of the plaintiff. This has caused irreparable

harm and injury to the plaintiff being the

manufacturer and merchant of high quality goods.

This drug is schedule „H‟ goods to be sold only on

medical prescriptions. The use of the word

„....ALIS‟ by the defendant have significantly injured

the Plaintiff‟s interest, have caused or likely to

cause public confusion as to the source,

sponsorship or affiliation of its product and have

damaged and threatened to further damage the

plaintiff‟s significant and valuable goodwill in the

„Cialis Tablet Trade Dress‟ and „CIALIS‟ mark and

have injured and threatened to further injure the

Plaintiff‟s right to use its „CIALIS‟ mark and „Cialis

Tablet Trade Dress‟ as the exclusive indicia or origin

of the Plaintiff‟s erectile dysfunction product

containing Tadalafil and have diluted and

threatened to further diminish the distinctive quality

of the well known „CIALIS‟ trade mark and the „Cialis

Tablet Trade Dress‟.

4. Plaintiff has invoked the jurisdiction of this court

contending that the offending trade marks are

being advertised by the defendant through their

website which can be accessed in Delhi within the

jurisdiction of this court and the defendant sells its

products with the offending tablet shape all over

the world, including India and in Delhi, upon orders

being placed through their website. Hence, the suit

for permanent injunction and also for rendition of

accounts for the profits made by the defendant.

5. Summons for settlement of issues as well as notice

of the application under Order 39 Rule 1 and 2 CPC

for interim injunction were issued to the defendant

but the defendant purportedly refused to accept the

notice. Hence, vide order dated 22nd August, 2005 it

was proceeded ex-parte.

6. Plaintiff has filed affidavit of Douglas K. Norman, its

constituted Attorney, in evidence. Mr. Douglas in

his affidavit has confirmed the averments made in

the Plaint. During the pendency of the case

application of the plaintiff seeking registration of

the trade mark „CIALIS‟ and „C-20‟ was allowed by

the concerned department and registration

certificate were accordingly issued in favour of the

plaintiff.

7. After arguments were concluded, my learned

predecessor of this court reserved the case for final

order. However the matter was again listed on 26th

September, 2006 as the court was of the opinion

that the jurisdiction of this court to entertain the

present suit was doubtful. The court also found that

the plaintiff has claimed damages and

compensation asserting that at the time of rendition

of accounts they expect that they shall be entitled

to an amount in excess of Rs. One crore. For the

purpose of jurisdiction the suit is valued at

Rs.1,00,00,050/-, and for the purpose of court fees

it is valued at Rs.20,00,210/- and a total court fees

of Rs.22,073/- is affixed on the plaint which also

needed consideration.

8. Since the question of jurisdiction has arisen in this

court I shall first consider whether this court has

territorial jurisdiction to entertain the present suit.

The relevant para in the plaint relating to the

jurisdiction of this court reads as under:-

"44. The offending trade marks are advertised by the Defendant through their website, which can be accessed in Delhi, within the jurisdiction of this Hon‟ble Court. The Defendant sells its products with the offending tablet shape all over the world, including India and in Delhi, upon orders being placed through their website. By virtue of the aforesaid this Hon‟ble Court has the territorial jurisdiction to try and entertain the present suit."

9. Therefore, according to the plaintiff, since the

offending trade marks were advertised by the

Defendant through their website which can be

accessed in Delhi, this court has the jurisdiction to

entertain this suit. It is also averred that the

Defendant sells its product with the offending tablet

shape in Delhi as well upon orders being placed

through their website.

10. The advertisement of the defendant has been

exhibited in evidence as Ex.PW-1/1. Perusal of this

document indicates that this is an information

issued in 'Express Pharma Pulse for the

Pharmaceutical Industry' issued on 1st April, 2004

regarding manufacturing of Tadarich (tadalafil, a

generic name approved by USFDA) in Chennai.

Rather this only imparts information regarding

nature of drug and the purpose for which it can be

used. This also provides information regarding the

company itself but nothing beyond that. This

information was not obtained by the plaintiff from

the website of the defendant www.richielabs.com.

This information has been collected from search

engine www.google.com and was available on

www.expresspharmapulse.com/20040401/corporate

04.shtml. Infact the website of the defendant is not

accessible in Delhi as it does not open in the

internet on efforts being made.

11. The mere fact that a website is accessible in a

particular place may not itself be sufficient for the

courts of that place to exercise personal jurisdiction

over the owners of the website. However, where

the website is not merely passive but is interactive

permitting the users not only to have access to the

contents thereof but, also subscribe to the services

provided by the owners/operators, may in certain

circumstances create jurisdiction in the court of that

place where the website is accessible. Where the

website is interactive, the level of interactivity

becomes relevant and in cases of limited

interactivity such interactivity may not be sufficient

for a court to exercise jurisdiction.

12. By virtue of Section 20 of the Civil Procedure Code,

the plaintiff has a right to file the suit against the

defendant at the place where the cause of action

wholly or in part arises. Mere passive posting of a

website does not give jurisdiction to the court within

whose jurisdiction the plaintiff has filed the suit as it

does not give rise to any cause of action for the

plaintiff to file a suit within the jurisdiction of that

court. Plaintiff has to show something more to

indicate as to what cause of action took place in

substantial manner so as to invoke the jurisdiction

of that particular court.

13. In „India TV, Independent News Service Pvt.

Ltd. vs. India Broadcast Live LLC & Ors. 145

(2007) DLT 521', this court observed:-

"45. ...... there is no „long arm‟ statute as such which deals with jurisdiction as regards non- resident defendants. Thus, it would have to be seen whether the defendant‟s activities have a sufficient connection with the forum state (India); whether the cause of action arises out of the defendant‟s activities within the forum and whether the exercise of jurisdiction would be reasonable.

46. I am in agreement with the proposition that the mere fact that a website is accessible in a particular place may not itself

be sufficient for the Courts of that place to exercise personal jurisdiction over the owners of the website. However, where the website is not merely „passive‟ but is interactive permitting the browsers to not only access the contents thereof but also subscribe to the services provided by the owners/operators, the position would be different........ even where a website is interactive, the level of interactivity would be relevant and limited interactivity may also not be sufficient for a Court to exercise jurisdiction.........."

14. In 'Cybersell Inc. vs. Cybersell Inc. & Ors.'

(Case No.96-17087 D.C. NO.CV-96-0089-EHC)

as referred to in the abovesaid judgment, the US

Court of Appeals for the 9th Circuit observed that a

three-part test is used to determine whether

personal jurisdiction can be exercised by the District

Court. Those three tests are:-

"(1) The non-resident defendant must do some act or consummate some transaction with the forum or perform some act by which he purposefully avails himself of the privilege of conducting activities in the forum, thereby invoking the

benefits and protections,

(2) The claim must be one which arises out of or results from the defendant‟s forum-

                      related activities, and

                      (3) exercise   of    jurisdiction
                      must be reasonable."

15.    In       the      present      case,       the        website

       www.expresspharmapulse.com              containing          the

information of the defendant company and also

information regarding the drug Tadarich is passive

in nature. It has no section for subscription to its

services and the options which could be exercised

by subscriber. This information in no manner can

be said to be inviting any subscription from anyone

including the consumers.

16. It is pertinent to mention here that the defendant

company has dis-continued with its product

„Tadarich‟ and instead they are manufacturing drug

Tadalafil in the brand name of Tadasip which does

not include the alleged trade mark „CIALIS‟ owned

by the plaintiff.

17. The plaintiff has not adduced any evidence on

record to indicate that the defendant has been

marketing its product „Tadarich‟ in Delhi so as to

invoke the jurisdiction of this court.

18. As discussed above, the website proved on the

record does not indicate that the defendant invited