Smt. Raj Rani Aggarwal Trading As ... vs M/S Parul Homoeo Laboratory & Anr.
2011 Latest Caselaw 3093 Del

*               HIGH COURT OF DELHI : NEW DELHI

                        Judgment pronounced on: 4th July, 2011

+            IA Nos. 1592/2009, 5967/2009, 5968/2009 & 9518/2009
             in CS (OS) No. 239/2009

Smt. Raj Rani Aggarwal Trading as M/s Bios Laboratory ... Plaintiff
                    Through: Mr. S.K. Bansal, Adv. with Mr Vikas
                               Khera, Adv.

                                    Versus

M/s Parul Homoeo Laboratory & Anr.                  ... Defendants
                   Through: Mr. Sanjeev Singh, Adv.

Coram:
HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may
   be allowed to see the judgment?

2. To be referred to Reporter or not?

3. Whether the judgment should be reported
   in the Digest?

MANMOHAN SINGH, J.

1. By this order, I shall dispose of the following applications

filed by the parties:

       a)    IA No.1592/2009 under Order XXXIX Rules 1 & 2

             of the Code of Civil Procedure, 1908 (hereinafter

             referred to as the CPC) filed by the plaintiff.

       b)    IA No.5967/2009 under Order XXXIX Rules 1 & 2

             CPC filed by the defendant No.1.


        c)    IA No.5968/2009 under Order XXXIX Rule 4 CPC

             filed by defendant No.1.

       d)    IA No.9518/2009 under Section 151 CPC filed by

             the defendant No.1.

2. In view of the fact that the defendant No.1 has already filed

the documents, as prayed, the application, being IA No.9518/2009, is

allowed.

3. The plaintiff has filed the suit under Sections 134 & 135 read

with Section 27(2) of the Trade Marks Act, 1999 as well as under

Section 51 of the Copyright Act, 1957 for permanent injunction

restraining passing off, infringement of copyright, rendition of accounts,

damages and delivery up against the defendants, namely, M/s Parul

Homoeo Laboratory and M/s New Delhi Homoeo Pharmacy.

3. The brief facts are that the plaintiff Smt. Raj Rani Aggarwal,

the sole proprietor of M/s Bios Laboratory, is engaged in the business of

manufacturing and marketing of medicinal and pharmaceutical

prepartions under the trade mark HEIGHTEX LABEL from the year

1992. The plaintiff filed an application for registration of the trade mark

bearing No.744887 as on 22.10.1996 in class 5 which is still pending for

registration. It is also stated in the plaint that the trade mark HEIGHTEX

LABEL which plaintiff is using on its products is original artistic work

within the meaning of Section 2 (c) of the Copyright Act, 1957 and the

plaintiff is the owner of the same. The said copyright is duly registered

bearing No.A-76798/2006 in its favour. The said product is sold in a

distinctive packing having a unique and distinctive colour scheme,

design, get up and layout. The said packing consists of red, blue and

yellow colour represented in a special and particular manner. The

plaintiff has widely advertised the label/trade mark HEIGHTEX LABEL

through different medias and the said trade mark/label is a well known

trade mark within the meaning of Section 2(1)(zg) of the Trade Marks

Act, 1999.

4. The allegations made by the plaintiff against the defendant

No.1 are that defendant No.1 is also engaged in the business of

manufacturing and marketing the pharmaceutical and medicinal

preparations. The defendant No.1 is at Kanpur and the defendant No.2 is

the dealer/agent of defendant No.1 who is acting in connivance with the

defendant No.1 and selling the infringing goods bearing the similar trade

mark/label HEIGHTEX LABEL in order to trade upon the tremendous

goodwill and reputation of the plaintiff. The trade mark/label used by the

defendants is identical to the trade mark/label of the plaintiff and the

defendants were aware about the reputation of the plaintiff's trade mark

from the very beginning. Therefore, the plaintiff has established a case

against the defendants for infringing of copyright and passing off their

goods as that of the plaintiff.

5. The plaintiff has stated that cause of action of this case arose

on 17.12.2008 when the IPAB stayed the registration of the impugned

trade mark of the defendants. It further arose in the first week of

January, 2009 when the plaintiff for the first time laid hands on the goods

of the defendants and it continued from day to day till the filing of the

present suit.

6. Both the defendants have filed separate written statements.

The defendant No.2 has filed the written statement stating that the

defendant No.2 is an independent homeopathic medicines retail shop and

has nothing to do with the business of defendant No.1. The defendant

No.2 is just a stranger and is not an agent of the defendant No.1 and was

not even aware about the subject matter of the dispute prior to receiving

the documents in the present suit.

7. On the other hand, the defendant No.1 has filed the written

statement as well as the counter claim against the plaintiff for permanent

injunction restraining the plaintiff from using the said trade mark

HEIGHTEX. The defendant No.1 has also filed an appliation under

Order 39 Rule 4 CPC as well as an application for injunction under Order

39 Rules 1 and 2 CPC restraining the plaintiff from using the trade mark

in question.

8. The main case of the defendant No.1 is that the suit filed by

the plaintiff is false and frivolous as the said trade mark HEIGHTEX

belongs to defendant No.1 which is being used since 1994 continuously,

regularly and extensively. The defendant No.1 has also obtained drug

licence, sales tax registration and all requisite licences from the

government authorities to run the said business. It is also stated by the

defendant No.1 that the suit filed by the plaintiff is totally misconceived

and the plaintiff has concealed various material facts from this Court.

The knowledge of filing of the present suit by the plaintiff is also denied

by the defendant No.1 on the ground that in September 2003, the

defendant No.1 received information from its dealer that the plaintiff is

involved in the marketing of inferior quality homeopathic medicines

beairng identical trade mark/lable HEIGHTEX and immediately

defendant No.1 served a legal notice dated 26.09.2003 calling upon the

plaintif to desist forthwith using the said trade mark. The said notice was

replied by the plaintiff through its counsel wherein the plaintiff claimed to

be prior user of the trade mark/label HEIGHTEX. After receiving the

notice dated 26.09.2003, the plaintiff filed rectification petition of the

registered trade mark of the defendant No.1 which was dismissed vide

order dated 05.11.2004 being pre-mature petition. Thereafter, the trade

mark of the defendant No.1 was registered bearing No.812628 and the

plaintiff filed the rectification petition again on the similar grounds. Not

only that, the plaintiff also filed a caveat petition before this Court and

obtained an ex-parte order in the month of December, 2008 and the

caveat petition was knowingly concealed by the plaintiff from this Court

in order to obtain inequitable relief.

9. According to the defendant No.1, the defendnt No.1 is the

prior adopter and user of the said trade mark. The plaintiff on the other

hand has no goodwill and reputation and in fact has never used the said

lable in respect of the goods as claimed by the plaintiff. Since the

plaintiff has approached this Court suppressing the material vital facts

with a view to override and to obtain undue advantage by seeking the

interim order against the defendant No.1, the suit is, therefore, bad and is

not maintainable.

10. The contention of the defendnat No.1 is that it has been done

by the plaintiff willfully just to obtain the ad-interim order. Otherwise,

the plaintiff in the cause of action ought not to have made an incorrect

statement about its knowledge about the year 2008 when there was a

legal notice and litigation pending between the parties in the year 2003-

2004. It is also contended by the defendant No.1 that the claim of the

plaintiff is totally false and frivolous as the plaintiff has never used the

trade mark in the year 1992 or 1999 as alleged as no drugs licence has

been obtained by the plaintiff for manufacturing of drugs/medicines

bearing the trade mark HEIGHTEX LABEL and without drug licence no

medicine can be manufactured.

11. As regard the copyright and registration, it is stated by the

defendant No.1 that the rectification proceedings are being initiated and

same registration is to be rectified. The learned counsel for the defendant

No.1 has also referred to the order passed in the appeal filed by the

defendant No.1 beween the parties passed by the Division Bench in FAO

(OS) No.379/2009 which was filed against the ex-parte order dated

04.02.2009 and the ex-parte order was vacated by the Division Bench of

this Court.

12. It is a matter of fact that when the pending applications were

listed from time to time, both the parties had made an oral statement

before the Court that they have mutually settled all their disputes. Even a

copy of draft application was handed over to the Court which indicates

that the parties had intention to enter into an agreement of co-existence in

relation to the impugned trade mark. But, it is not understood why the

said application was not filed by the parties despite of taking many

adjournments from the Court in this regard.

13. After having considered the pleadings on merit, coupled with

documents placed on record by the parties, I am not inclined to pass

interim order either in favour of the plaintiff or the defendants because of

the reason that it appears from the documents that the said trade mark

HEIGHTEX LABEL is being claimed to have been used for more than

17 years. The defendant had issued a legal notice on 26.09.2003, the

parties have had various litigations prior to the filing of the present suit in

paragraph of cause of action. The full details of the said litigations have

not been disclosed by the plaintiff. Even in paragraph of cause of action,

the plaintiff has failed to disclose having received the legal notice

received by her in the year 2003. The plaintiff has also not disclosed as

to whether she had obtained any licence issued in her favour for the year

1992, 1993 and 1994. Therefore, this Court finds that at this stage, there

is a force in the submission of the defendant No.1 that the plaintiff had

not obtained the drug licence in the year 1992 or 1994 as the

pharmaceutical goods cannot be sold without obtaining the drug licence

from the authority. Since both the parties are claiming prior user against

each other and the defendant No.1's counter claim against the plaintiff is

also pending, it is not appropriate at this stage to pass an interim order

sought by the plaintiff against the defendant No.1 or by the defendants.

Even the defendant No.1 is also able to prove his clear case of prior user

claimed by way of documents produced. Unless the pleas raised by the

parties are tested in trial, this Court is not inclined to issue any interim

order in favour of either party due to peculiar circumstances. Thus, all

the applications are disposed of without any interim orders.

CS (OS) No. 239/2009

The parties have already filed the original documents.

Issues in the matter were framed on 03.12.2009 and the time was

granted to the parties to file list of witnesses and direction was also

issued to produce the evidence by way of affidavits. The plaintiff

has already filed two affidavits in this regard along with the list of

witnesses. Despite the said direction, the parties were trying to

resolve the matter since 03.012.2009 as appears from the orders

sheet. In fact, both the parties have prolonged the matter for one and

half years without any progress. Since now they are not inclined to

resolve their disputes, therefore, the matter must be sent for trial.

List the matter before the Joint Registrar on 12th October, 2011 for

fixing the date of cross-examination of the plaintiff's witnesses.

MANMOHAN SINGH, J.

JULY 04, 2011 jk