Triputi Pharma & Anr. vs Lincoln Pharmaceuticals Ltd & Ors
2014 Latest Caselaw 5262 Del

*      IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                Order delivered on: 27th October, 2014

+                       CS (OS) No.2028/2013
       TRIPUTI PHARMA & ANR.                            ..... Plaintiffs
                         Through           Mr. Sumit Rajput, Adv.

                        versus

       LINCOLN PHARMACEUTICALS LTD & ORS       ....Defendants
                   Through Mr. Tarun Verma, Adv. for D-1 & 2.

       CORAM:
       HON'BLE MR. JUSTICE MANMOHAN SINGH

MANMOHAN SINGH, J.

1. The plaintiffs have filed a suit for permanent injunction restraining infringement of copyright, passing off, dilution, unfair competition, for rendition of accounts of profits/damages and delivery up etc against the defendants.

2. The suit as well as the application under Order 39 Rules 1 and 2 CPC were listed before Court on 23rd October, 2013 when an ex- parte order was passed restraining the defendants, their assignees, representatives, servants, sister concerns etc. from using the trademark BODYVITAL or any other trademark similar to BODYRICH including the packaging, colour combination and layout of the plaintiffs.

3. Despite service of summons, no one appeared on behalf of the defendants and consequently the defendants were proceeded ex-parte vide order dated 17th February, 2014.

4. Thereafter, the matter was listed for ex-parte evidence of the plaintiff. On 26th September, 2014 the counsel for the defendant Nos. 1 and 2 appeared and averred that the defendants were ready for settlement and the matter was listed for final instructions.

5. Ex-parte evidence in the matter was adduced. The defendants did not file any application to set-aside the ex-parte proceedings. The plaintiffs' witness was not cross examined by the defendants' counsel. The evidence of the plaintiff has gone unrebutted.

6. On merit, the case of the plaintiffs is that plaintiff No.1 is a proprietorship concern and is one of the leading traders of a large range of pharmaceuticals, toiletries, medicinal preparations and has been carrying on its trading activities since the year 2002.

7. The plaintiff No. 2 is amongst one of the largest and also highly reputed pharmaceutical companies in India which markets drugs and formulations thereof in India under its extensive range of well known and distinctive trademarks/ brands since last several years.

Though the plaintiff No.2 Company was incorporated in the year 2008, but the predecessors of the plaintiffs have been using various trademarks from several years.

8. The plaintiffs have become one of the leaders in the Healthcare industry and Quality Pharma Trader of the country with global vision and are involved in the marketing and trading of specialty pharmaceuticals and active pharmaceutical ingredients having consolidated annual turnover of over Rs. 16 crores.

9. The plaintiffs are known in India for specialty medicines covering almost all ailments like Anti-Retroviral, Anti-Asthmatics, Antibiotics, Anti-fungal, Anti-Allergic, Cough and Cold Preparations, Antioxidants, Herbal Preparation etc.

10. The plaintiffs trade and sell more than 90 varieties of herbal ayurvedic medicines apart from multi-vitamin and multi-minerals softgels products. The plaintiffs are together trading and marketing approximately 350 products out of which many products are extensively advertised all over India.

11. The plaintiffs have expanded into a variety of goods and business over past several years such as cosmetics, multi-vitamins products etc. Since expansion, the goods of the plaintiffs are marketed under its house mark M/s Antex Pharma Pvt. Ltd. as well as under several trademarks such as BIODRYL, NEUROVIT, FLUZOL, BODYPLUS, BIODEX, LIVON-DS, PROTITONE etc.

12. It is alleged that the trademark/name BODYRICH along with its distinctive packaging has been used by the plaintiffs and their predecessor i.e. defendant No.1 in interest since its inception i.e. 2008. The trademark/name BODYRICH along with its distinctive packaging exclusively belonged to the predecessor of the plaintiffs i.e. defendant No.1.

13. It is further alleged that the predecessor of the plaintiffs i.e. defendant No.1 applied for the registration of trademark BODYRICH vide application No. 2214393 in class 05 claiming the user since 2008 which is still pending. During the year 2008 due to financial

problems which were suffered by the defendant No.1, the plaintiff No.1 who was a distributor of the defendant No.1 for this particular product BODYRICH agreed to purchase the mark/name/packaging for valuable consideration.

14. It is also alleged that the Deed of Assignment with goodwill was entered on 30th September, 2011 and by this agreement the defendant No.1 agreed to assign the trademark/packaging; all the trademark applications, all the products and packaging thereof lying in possession with the assignor pertaining to this brand BODYRICH along with its packaging to the plaintiff No.1 for the consideration amount of Rs. 45,00,000/- out of which on the request of the defendant No.1 and to save the tax liability the amount of Rs.5,00,000 was mentioned on the Deed of Assignment and the same was given through the post dated cheque dated 20th October, 2011 and the rest of the amount of Rs.40,00,000/- was handed over to the defendant No.1 company in cash.

15. It is alleged that subsequent to the execution of the Deed of Assignment, the plaintiff No.1 became the exclusive owner of the brand name BODYRICH along with the packaging having exclusive rights in the trademark/name/packaging of BODYRICH and thus, no rights remain with the original assignors i.e. defendant No.1 after the said transfers.

16. One of the well known and reputed products of the plaintiffs in multi-vitamin and multi-minerals softgel segment is BODYRICH and over a period of time it has attained immense goodwill and

popularity amongst the consumers of all segments in the society which can be ascertained from the statement of annual sales of the plaintiffs from the year 2011-2012 to 2013 till September, 2013 which has been given in para 24 of the plaint. The plaintiffs' product BODYRICH is immensely popular and is available in every nook and corner of the country including the rural belts.

17. The plaintiffs have alleged that BODYRICH is a coined trademark which contains soyabean oil, hydrogenated vegetable oil, lecithin, bess wax etc. and is used for dietary supplements.

18. The plaintiff No.1 and the director of the plaintiff No.2 applied for trademark registrations of BODYRICH packaging which is pending, the details of the same have been given in para 18 of the plaint.

19. The plaintiffs have marketed and continue to market its BODYRICH under the aforesaid labels/packaging, the distinguishing features have been described in para 21 of the plaint.

20. Defendant No.1 is engaged in the business of marketing. Defendant No.2 is the Joint Managing Director of the defendant No.1. Defendant No.3 is the main manufacturer for the defendant No.1 and is manufacturing the substandard and multi-vitamin and multi-vitamin softgels and syrup etc. Defendant No. 4 and 5 are manufacturing, marketing and selling multi-vitamin softgels and multi-vitamin syrup using the label/carton/packaging which is an imitation of the plaintiff's trademark BODYRICH along with its

labels/cartons/packagings in respect of colour combination, get up and arrangement of features.

Case against the defendant as alleged by the plaintiff

21. It came to the knowledge of the plaintiffs in third week of September, 2013 when plaintiffs were invited in the Indian Pharma Expo held at Pragati Maidan, that defendant No.3 was promoting the impugned trademark BODYVITAL in the packaging which are slavish and colourable imitation of plaintiffs' BODYRICH.

22. However, the plaintiffs are aggrieved since the defendants are deliberately marketing its multi-vitamin softgels and mutli-vitamin syrup using the label/carton/packaging and trade dress which are outright and fraudulent imitation of plaintiffs' BODYRICH labels/cartons/packaging in terms of its overall colour combination, lay out, get up and arrangement of features, the details of the same are given in para 30 of the plaint.

23. It is alleged that the defendants have malafidely adopted BODYVITAL carton/packaging having a get up and layout which is colourable imitation and deceptively similar to BODYRICH packaging including get up, layout and arrangement of features thereby having an overall similarity of idea and impression between the two. The dishonesty is evident from the bare perusal of the defendant's and the plaintiffs packaging, the details of which have been given in para 32 of the plaint.

24. The following documents have been exhibited in order to prove the case of the plaintiffs:

i. Board Resolution dated 26th November, 2012, exhibited as Exhibit PW1/1

ii. CA certificate pertaining to plaintiff No.2's annual turnover, exhibited as Exhibit PW1/2

iii. Copy of Assignment Deed dated 30th September, 2011, exhibited as Exhibit PW1/3

iv. Copy of the letter issued by defendant No.1 for acceptance of the amount mentioned in the Assignment Deed, exhibited as Exhibit PW1/4

v. Copy of trading licenses, exhibited as Exhibit PW1/5(Colly)

vi. Copy of specimen sales invoices pertaining to the trademark BODYRICH, exhibited as Exhibit PW1/6(Colly)

vii. Copy of the picture of defendant No.3 selling the impugned product BODYVITAL, exhibited as Exhibit PW1/7

viii. Copy of specimen tax invoices issued by defendant No.3 in favour of the plaintiffs, exhibited as Exhibit PW1/8(Colly)

ix. Copy of all the packaging of the product BODYRICH and the impugned product BODYVITAL, exhibited as Exhibit PW1/9(Colly)

25. When the matter is listed for today, it has been stated by the learned counsel for the plaintiffs that plaintiffs have no objection if the suit is decreed without pressing for damages and costs.

26. Accordingly, the suit of the plaintiffs is decreed in terms of Para 41 (a) to (c). The other reliefs are not pressed by the plaintiff hence the same are rejected.

27. Decree be drawn accordingly.

MANMOHAN SINGH JUDGE OCTOBER 27, 2014