Lilly Icos Llc. vs Ajanta Pharma Limited
2015 Latest Caselaw 5796 Del

*              IN THE HIGH COURT OF DELHI AT NEW DELHI

+                         Ex.P. No. 81/2005
%                                                    11th August, 2015

LILLY ICOS LLC.                                      ..... Decree Holder

                          Through:       Mr. Chander M. Lall, Ms. Nancy Ray
                                         and Mr. Anuj Nain, Advs.

                          versus



AJANTA PHARMA LIMITED                                      ..... Judgment
Debtor

                          Through:       Mr. Rajiv Nayar, Sr. Adv. with Mr.
                                         Yogender Nath Bhardwaj, Adv.

CORAM:
HON'BLE MR. JUSTICE VALMIKI J.MEHTA

To be referred to the Reporter or not?


VALMIKI J. MEHTA, J (ORAL)

1.

This execution petition has been filed by the decree holder

alleging violation by the judgment debtor of the Order and decree of this

Court dated 22.5.2004. The decree is a consent decree. The suit being

CS(OS) No. 159/2004 which was decreed pertained to disputes between the

parties on account of the cause of action pleaded by the decree

holder/plaintiff of the judgment debtor/defendant using the trade mark

"CIALIS" or any other mark deceptively similar to "CIALIS" such as

"INDIAN CIALIS", " GENERIC CIALIS" or "APCALIS". Decree

holder/plaintiff inter alia had sought restraint against the use or depiction on

the packages of the defendant/judgment debtor, a "SWIRL" of the decree

holder/plaintiff which is referred to as a "CIALIS SWIRL". There was also

the cause of action and relief as claimed by the decree holder/plaintiff with

respect to an almond shaped light yellow colour tablet sold by the decree

holder/plaintiff under the trade mark "CIALIS" and same type of the tablet

being used by the judgment debtor/defendant.

2. With respect to the disputes by the consent Order and decree

dated 22.5.2004, basically the following three agreements/directions were

agreed/enforced:-

(i) The judgment debtor/defendant if it uses the trade mark "APCALIS",

the same will be used along with the suffix SX i.e any of the product which

is to be sold by the judgment debtor/defendant will be sold as "APCALIS-

SX" and not without the suffix SX.

(ii) The judgment debtor/defendant will not use the almond shaped light

yellow colour tablet which the decree holder/plaintiff was using for sale of

its tablets under the trade mark "CIALIS", and that the judgment

debtor/defendant will change its tablets from almond shape of light yellow

colour to oval shape of cream colour.

(iii) The judgment debtor/defendant will not use the depiction "CIALIS

SWIRL" of the decree holder/plaintiff.

3. In addition to the aforesaid three consent terms, there are

observations which are recorded in the consent Order dated 22.5.2004 that

the judgment debtor/defendant will not permit anyone else to use "CIALIS",

"INDIAN CIALIS" and/or " GENERIC CIALIS".

4. Taking the last aspect first of the judgment debtor/defendant not

permitting anyone else to use CIALIS, INDIAN CIALIS and/or GENERIC

CIALIS whether in advertisement or publicity materials etc, the statement of

the judgment debtor/defendant as recorded in the Order dated 22.5.2004

would and can only be with respect to persons who are under the control of

the judgment debtor/defendant. Such persons under the control of the

judgment debtor/defendant would include agents or servants of the judgment

debtor/defendant. The effective direction would therefore in terms of the

Order dated 22.5.2004 would be that the judgment debtor/defendant must at

least write to its agents or servants that they shall not correlate products of

the judgment debtor/defendant with "CIALIS, INDIAN CIALIS and/or

GENERIC CIALIS", that the mark APCALIS will be used with the suffix

'SX', and, that the judgment debtor/defendant cannot use CIALIS SWIRL of

the decree holder/plaintiff.

5. The valid grievance of the decree holder/plaintiff is that there

are various websites which may not be owned or controlled by the judgment

debtor/defendant if the case of the judgment debtor/defendant is accepted,

these websites, some of which have been referred to in the execution petition

and the subsequent affidavits and documents filed, are not only using the

"CIALIS SWIRL" with respect to product "APCALIS" that too without the

suffix 'SX', but also that the product of the judgment debtor/defendant is

being called as similar to CIALIS, INDIAN CIALIS and/or GENERIC

CIALIS.

6. Learned counsel for the judgment debtor/defendant however

contends that the judgment debtor/defendant has never at any point of time

asked the owners of these websites or any other persons to sell the products

of the judgment debtor/defendant by depicting the products as "APCALIS"

without the suffix SX or containing the "CIALIS SWIRL" or making

comparison of the product of the judgment debtor/defendant with the marks

CIALIS, INDIAN CIALIS and/or GENERIC CIALIS.

7. In order to resolve the disputes, so far as this issue of violation

of the consent Order and decree dated 22.5.2004 is concerned, it will suffice

if the judgment debtor/defendant will write to its agents or any person to

whom the judgment debtor/defendant is selling its products i.e such agents

or persons who are under the direct control of the judgment

debtor/defendant, that the products which are being sold by the judgment

debtor/defendant should not be depicted as would cause the products to be

shown only as "APCALIS" without the suffix SX or having a "CIALIS

SWIRL" or are equated to CIALIS, INDIAN CIALIS and/or GENERIC

CIALIS. I may note that it is the contention of the judgment

debtor/defendant that it has no control over any of the websites on which its

products are sold and the products which are sold by the judgment debtor do

contain the suffix SX after the mark "APCALIS". Counsel for the judgment

debtor/defendant also states that in no products which are manufactured and

supplied by the judgment debtor/defendant the "CIALIS SWIRL" is being

used and if the "CIALIS SWIRL" or the trade mark "APCALIS" without the

suffix SX or calling the product of the judgment debtor/defendant as CIALIS

etc is being used by certain websites, the judgment debtor/defendant would

have no objection if the decree holder/plaintiff sues such persons to ensure

true and complete compliance of the consent Order and decree dated

22.5.2004. Accordingly, this issue is disposed of with the direction that in

case the decree holder/plaintiff brings to the notice of the judgment

debtor/defendant that if certain websites are selling the products of the

judgment debtor/defendant in violation of the consent decree dated

22.5.2004, and if such websites have direct nexus/link with the judgment

debtor/defendant whereby the judgment debtor/defendant is directly

supplying its products to the customers of these websites, then the judgment

debtor/defendant will give the addresses of the person/or persons who are

running such websites so that the decree holder/plaintiff can cause

compliance of the consent decree dated 22.5.2004.

8. In case, the decree holder/plaintiff feels that consent decree

dated 22.5.2004 is violated by persons who are not under the direct control

of the judgment debtor/defendant, the decree holder/plaintiff can always file

appropriate independent execution proceedings alleging violation with

respect to the consent decree dated 22.5.2004 by such persons.

9. So far as the aspect of the judgment debtor/defendant not being

entitled to sell its products with almond shape with light yellow colour is

concerned, though there are disputes which are raised in view of the affidavit

dated 24.3.2009 filed on behalf of the decree holder/plaintiff (and assuming

that the subsequent violation of 2009 can be taken as a basis for execution of

a petition filed in 2005) because the judgment debtor/defendant has denied

the claim made in the affidavit dated 24.3.2009 of Mr. Douglas K. Norman,

by its reply affidavit dated 3.2.2010 of Sh. Nikhil Bhatt, this issue is agreed

to be disposed of with the consent order that the judgment debtor/defendant

will in no case or circumstance will ever in future use the almond shaped

tablet with light yellow colour and will use an oval shaped tablet with cream

colour as per the defendant's/judgment debtor's consent recorded in the

Order dated 22.5.2004.

10. That takes us to the final aspect as to the use of "CIALIS

SWIRL" which is prohibited in terms of the consent Order and decree dated

22.5.2004. This aspect also will stand disposed of by giving directions which

have already been given above with respect to the agents and servants who

are under the direct control of the judgment debtor/defendant. The

directions therefore issued on the first aspect discussed above, will mutatis

mutandis apply with respect to "CIALIS SWIRL" of the decree

holder/plaintiff.

11. No other issue is pressed or arises before this Court.

12. The execution petition is accordingly disposed of in terms of

the observations and directions contained hereinabove.

AUGUST 11, 2015                                  VALMIKI J. MEHTA, J.
ib