Delhi High Court
Macleods Pharmaceuticals ... vs Nava Healthcare Pvt. Ltd. & Ors. on 13 April, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 13th April, 2022
+ CS(COMM) 465/2021 & I.As. 14615/2021, 16009/2021, 5099/2022
MACLEODS PHARMACEUTICALS LIMITED ..... Plaintiff
Through: Ms. Archana Sahadeva & Ms. Pragati
Aggarwal, Advocates
(M:9818758576)
versus
NAVA HEALTHCARE PVT. LTD. & ORS. ..... Defendants
Through: Mr. Navin Kumar, Mr. Rajesh Kumar
Chaurasia, Mr. Bhavik Patel,
Advocates for D-1 (M:9212031425)
Mr. Sachin Gupta, Mr. Pratyush Rao,
Ms. Jasleen Kaur, Mr. Snehal Singh,
Ms. Swati Meena, Advocates for D-2
(M:9811180270)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff seeking permanent
injunction restraining the Defendants from use of the mark 'Blofin-D3 Max'
along with the trade dress and packaging, stated to be identical to the
Plaintiff's trademark 'Bio-D3', 'Bio-D3 Max' 'Bio-D3 Fem'/ trade
dress/layout/packaging/copyright/etc., as also for reliefs for passing off,
unfair competition, misrepresentation, dilution, damages, rendition of
accounts, etc. The said marks are used by the Plaintiff for multivitamin and
calcium pharmaceutical preparations. The Plaintiff is the registered
CS(COMM) 465/2021 Page 1 of 11
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Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
proprietor of the said marks which have been in existence since 1998, with
'BIO D3 MAX' being registered in 2009. The Plaintiff has also adopted a
unique colour combination and design incorporating vaarious distinguishing
features on the trade dress, such as a pictorial representation of a spinal cord
and a leaf, combined together in the form of a butterfly. The annual turnover
of the Plaintiff is stated to be around Rs.160 crores each, in 2019-20 and
2020-21.
3. The case of the Plaintiff is that the Defendants are using the mark
'Blofin-D3 Max' in similar packaging for identical pharmaceutical
preparations consisting of the same active ingredient: `Calcitriol, Omega-3
Fatty Acids, Eicosapentaenoic Acid, Docosahexaenoic Acid,
Methylcobalamin, Boron & Calcium Carbonate.' The Plaintiff has filed the
present suit seeking permanent injunction and damages. Vide order passed
on 22nd September, 2021, the Court came to the conclusion that the
Defendants' mark and trade dress are similar to the Plaintiff's however, the
Plaintiff's prior user of the said mark ought to be established. Accordingly,
notice was issued. Thereafter, an interim order was passed on 10th
November, 2021, as clarified by order dated 24th November, 2021, where
the Defendants had given an undertaking and the said undertaking was
recorded by the Court in the following terms:
"1. Ms. Sahadev, learned Counsel for the
plaintiff, submits that her client is satisfied with
the proposal, in the affidavit dated 2nd
November, 2021, filed by Defendant No. 1, in
which Defendant No. 1 has undertaken not to
continue to use the alleged infringing marks
and representations and to change its
trademarks as proposed in Para 3 thereof,
CS(COMM) 465/2021 Page 2 of 11
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
which reads thus:
3. That Defendant No. 1 has proposed to
change the name of its trade mark "Blofin-D3
Max" to "Blofin-Plus" in a completely
different style, design and getup from that of
Plaintiff the same is as under:-
CS(COMM) 465/2021 Page 3 of 11
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
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CS(COMM) 465/2021 Page 4 of 11
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
2. In view thereof, she submits that the present
application may be disposed of with a direction
to the respondent to abide by its undertaking in
Para 3 of the affidavit and by restraining the
defendant from using the marks impugned in
the plaint.
3. Accordingly, lA 12337/2021, is disposed of
by binding down Defendant 1, to the
undertaking and assurance contained in Para 3
of its affidavit dated 2nd November, 2021, as
reproduced hereinabove. Defendant No. 1 shall
stand restrained, during the pendency of the
suit, from using the marks impugned in the suit
and alleged by the Plaintiff, from infringing the
plaintiffs' registered trademarks.
4. Defendant 2 has filed an affidavit, asserting
that it has nothing to do with the use of the
and that, in fact, Defendant No. 1 is using the
name of Defendant 2 on its product without due
authority.
5. He submits that in this regard. Defendant 2
is already before this Court, against Defendant
No. 1 in CS (COMM) 531/2021, in which this
Court has protected Defendant No. 2 against
use, by Defendant No. 1, of its name and mark.
As such, he submits that, his client is not a
necessary party in these proceedings, and that,
therefore, no order of injunction should operate
against his client. He further submits that, for
this purpose, the affidavit filed by his client
may be treated as an
application for deletion of his client from the
array of parties.
6. The prayer for deletion is opposed by the
plaintiff as well as by Defendant No. 1.
7. The Registry is directed to assign a separate
IA number to the affidavit dated 18th October,
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By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
2021, filed by Defendant No. 2. This affidavit
would be treated as an application for deletion
of the name of Defendant No. 2 from the array
of parties. Let a response to this affidavit/
application be filed by the plaintiff and
Defendant 1 within a period of four weeks from
today, with advance copy to learned Counsel
for Defendant No. 2, who may file rejoinder,
thereto, if any, before the next date of hearing.
8. In so far as the prayer of Ms. Sahadev, for
extending the application of the interlocutory
injunction passed today to Defendant No. 2 is
concerned, I see no legitimate objection to the
said request. The injunction against use of the
infringing trademark would apply in rem, and
would cover all entities which would include
Defendant No. 2. It is always open to
Defendant No. 2 to contend that he has nothing
to do with the alleged infringement. This
contention is not in any way affected or
prejudiced by the clarification, by this Court,
that the injunction would apply against both the
defendants.
9. As such, it is clarified that the interim
injunction as passed today, shall apply to both
the defendants in the present suit."
4. By clarification dated 24th November, 2021, the interim order was
also extended to Defendant No.3. The said order reads as under:
"1. This application merely seeks a
modification of the order dated 10th November,
2021, passed by this Court specifically with
respect to para 9 thereof in which it is clarified
that the interim injunction, passed by the Court
would apply to "both the defendants in the
present suit". The applicant points out that
there are in fact three defendants and,
therefore, seeks a modification to the extent
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
that the order of injunction would apply to all
the defendants.
2. There can be no possible objection to this
request. Accordingly, it is clarified that the
interim injunction granted on 10th November,
2021 would apply to all the defendants in the
suit."
5. The said interim order is continuing. Vide order dated 31st January,
2022, the parties were referred to mediation, however, as per the mediation
report dated 23rd March, 2022, the mediation has failed. Accordingly, the
matter has been heard by the Court today. The products of the Plaintiff and
Defendants have also been handed over in Court. The Plaintiff's and
Defendants' impugned products are as under:
6. This Court is of the clear opinion that the products are identical, the
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
trade dress, colour combination, mark and layout of the products are also
identical and they are in respect of similar pharmaceutical preparations.
7. In so far as Defendant no.1 is concerned, an affidavit dated 2nd
November, 2021, has been filed on behalf of Defendant No.1 by Mr.
Hemant Suri, Director of Defendant No.1, that the DefendantNo.1 has
changed the trademark from 'Blofin-D3 Max' to 'Blofin-Plus', in a different
artwork. The Plaintiff has no objection in respect of the new mark 'Blofin-
Plus' in the packaging artwork which is handed over to the Court.
Accordingly, the said affidavit with the artwork is taken on record. The
same is set out below:
"3. That Defendant No.1 has proposed to change
the name of its trade mark "Blofin-D3 Max" to
"Blofin-Plus" in a completely different style,
design and getup from that of Plaintiff the same is
as under:
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
"
8. Defendant No.2 - Khandelwal Laboratories Pvt. Ltd., takes a stand
that it has nothing to do with the infringing products, however, the case of
the Plaintiff is that the infringing products have been manufactured by the
Defendant No.1 in collaboration with Defendant No.2. A perusal of the
product packaging also makes this collaboration very clear, where the name
of Defendant No.2-Khandelwal Laboratories Pvt. Ltd. is reflected with
Defendant No.1.
9. Under such circumstances, Defendant No.2's plea that it is not
connected with the infringing products is rejected. Ld. Counsel for the
Defendants submit that the Defendants have stopped manufacturing the
infringing products under the impugned mark and packaging. Accordingly, a
permanent injunction is granted against the Defendants, in terms of
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:19.04.2022
05:34:15
paragraph 57 (a),(b) and(c) of the plaint.
10. In so far as Defendant No.3 is concerned, the said Defendant is the
manufacturer of the product, however, Defendant No.3 has not entered
appearance despite service. Accordingly, Defendant No.3 has been
proceeded ex parte. Considering the nature of the matter, Defendant No.3,
being the party who was manufacturing on behalf of Defendant Nos.1 and 2,
the decree in terms of paragraphs 57 (a), (b) and (c) of the plaint, is also
passed against Defendant No.3.
11. Insofar as damages/costs is concerned, litigation costs to the tune of
Rs.2 lakhs shall be paid by Defendant No.1 to the Plaintiff and Rs.1 Lakh
shall be paid by Defendant No.2 to the Plaintiff. The said amount shall be
paid within a period of eight weeks, failing which, the Plaintiff shall be is
given liberty to revive the present suit for pressing the reliefs of rendition of
accounts and profits, against the Defendants Nos.1 and 2.
12. Accordingly, the suit is decreed in the above terms. Let the decree
sheet be drawn accordingly. All the pending applications are also disposed
of.
13. The next date before the Joint Registrar being 26th May, 2022 shall
stand cancelled.
PRATHIBA M. SINGH
JUDGE
APRIL 13, 2022/aman/MS
