Delhi High Court
Sun Pharma Laboratories Ltd vs Cian Healthcare Ltd on 1 May, 2023
2023:DHC:3080
$~19
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : 1st May, 2023
+ CS(COMM) 542/2022 & I.A. 12547/2022 (O-XXXIX R-1 & 2 of
CPC), I.A. 12548/2022 (O-XXVI R-9 of CPC)
SUN PHARMA LABORATORIES LTD ..... Plaintiff
Through: Mr. Sachin Gupta and Ms. Yashi
Agrawal, Advocates.
versus
CIAN HEALTHCARE LTD ..... Defendant
Through: None.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present suit has been filed seeking the relief of permanent
injunction restraining the defendant from the infringement of the trademark
of the plaintiff, passing off their goods as those of the plaintiff and other
ancillary reliefs.
FACTUAL MATRIX
2. The case set up in the plaint is as under:
2.1. The plaintiff company is a wholly owned subsidiary of Sun Pharma
Industries Ltd. and is engaged in the business of marketing drugs and
pharmaceutical combinations in over 150 countries with 45 manufacturing
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
CS(COMM) 542/2022 Page 1 of 711:46:29
Signing Date:08.05.2023
2023:DHC:3080
sites in various countries.
2.2. The plaintiff is the registered proprietor of the trademark "Maxgalin"
bearing No. 1402291 since 29th November, 2005 and various other marks,
details of which are provided in paragraph 9 of the plaint.
2.3. The "Maxgalin" mark is used by the plaintiff for its medicine used to
relieve neuropathic pain. The said drug is sold in the form of tablets and is a
Schedule H drug.
2.4. The trademark "Maxgalin" has also acquired goodwill and reputation
due to its extensive and continuous use since 2005 and has therefore attained
the status of a well-known trademark within the meaning of Section 2(1)(zg)
of the Trade Marks Act, 1999.
2.5. The sales turnover of the plaintiff from the year 2012-2013 to the
year 2020-2021, for the pharmaceutical preparation sold under the mark
"Maxgalin," is Rs.383,28,66,000/-. In the year 2020-2021 alone, the sales
turnover of the plaintiff in relation to the aforesaid mark was
Rs.52,32,23,000/-.
2.6. The defendant is a registered company operating out of Pune and
engaged in the business of selling medicines.
2.7. In June, 2022, the plaintiff came across the defendant selling a drug
under the impugned mark "MGalin" on various platforms, being
"https://www.medplusmart.com/product/mgalin-nt-tab_mgal0001,"
"https://www.1mg.com/drugs/mgalin-750mcg-75mg-capsule-394027" and
"https://pharmeasy.in/online-medicine-order/mgalin-75mg-cap-6102".
2.8. Accordingly, the plaintiff has filed the present suit.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
CS(COMM) 542/2022 Page 2 of 711:46:29
Signing Date:08.05.2023
2023:DHC:3080
PROCEEDINGS IN THE SUIT
3. Summons in the were issued on 18th August, 2022. Subsequently,
affidavit of service dated 2nd September, 2022 was filed on behalf of the
plaintiff, wherein it was stated that summons along with the suit papers were
dispatched to the defendant through courier. The postal vouchers along with
the tracking report have been placed on record. Defendant was additionally
served through e-mail dated 31st August, 2022.
4. However, despite service, none appeared on behalf of the defendant
on 28th September, 2022. Consequently, the defendant was proceeded
against ex parte and an interim injunction was passed by the Court,
restraining the defendant from, inter alia, dealing with pharmaceutical
preparations under the impugned mark "McGalin" or any other mark either
identical or deceptively similar to the registered trademark of the plaintiff.
5. Written submissions have been filed on behalf of the plaintiff in the
suit.
SUBMISSIONS ON BEHALF OF THE PLAINTIFF
6. The following submissions have been made on behalf of the plaintiff:
6.1. The impugned mark "MGalin" is deceptively similar to the mark of
the plaintiff, "Maxgalin".
6.2. In the cancellation petition, being C.O. (COMM. IPD-TM) 723/2022,
the plaintiff has made out a case for removal of the registration granted in
favour of the defendant for the mark "MGalin" and therefore, a decree of
permanent injunction should follow in the present suit.
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
CS(COMM) 542/2022 Page 3 of 711:46:29
Signing Date:08.05.2023
2023:DHC:3080
6.3. The plaintiff is the prior user of the mark "Maxgalin". The defendant
has failed to provide any evidence to support the claim that the defendant
has been using the impugned mark "MGalin" bearing Registration No.
3956223 since 2003.
6.4. The defendant has obtained registration of the impugned mark on the
basis of a false statement in their trademark application regarding their user
of the mark since 7th January, 2003. The said date is the date of
incorporation of the defendant and not the date of user of the mark in
question.
6.5. By adopting the mark "MGalin," defendant is taking unfair advantage
of the goodwill and reputation of the plaintiff's trademark, which has
attained the status of a well-known trademark within the meaning of Section
2(1)(zg) of the Trade Marks Act, 1999.
ANALYSIS AND FINDINGS
7. I have heard the counsel for the plaintiff and examined the record of
the case.
8. At the outset, it may be relevant to note that the defendant failed to
enter appearance in the suit despite service. Affidavit of service on behalf
the plaintiff has been filed in this regard. On 14th September, 2022, the
plaintiff was also directed to serve a copy of the order passed by the Court
on the defendant. In addition to successfully serving a copy of the order
dated 14th September, 2022 on the defendant through e-mail, the plaintiff
also dispatched the order through courier and speed post, which were
returned with the note "refused". Further, no steps have been taken by the
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
CS(COMM) 542/2022 Page 4 of 711:46:29
Signing Date:08.05.2023
2023:DHC:3080
defendant to contest the suit, despite having suffered an ad interim
injunction order. Therefore, it is clear that the defendant has no case to put
forth on merits.
9. In terms of Rule 4 of Chapter VII of the Delhi High Court (Original
Side) Rules, 2018, since the defendant has failed to file the affidavit of
admission/denial of documents filed by the plaintiff, the documents filed by
the plaintiff shall be deemed to be admitted.
10. A comparison of the competing marks would show that mark
"MGalin" of the defendant is visually, phonetically and structurally similar
to the mark "Maxgalin" of the plaintiff. The defendant has merely deleted
the alphabets "AX" from the mark of the plaintiff.
11. The plaintiff has also submitted that even though the composition of
the drugs being sold under the competing marks is different, they are used
for the treatment of the same type of ailment. In cases of pharmaceutical
preparations/products, the threshold for proving confusion in the market is
low. Reference in this may be made to paragraph 25 of the judgment in
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 SCC
OnLine SC 578, which is set out below:
"25. The drugs have a marked difference in the compositions with
completely different side effects, the test should be applied strictly
as the possibility of harm resulting from any kind of confusion by
the consumer can have unpleasant if not disastrous results. The
courts need to be particularly vigilant where the defendant's
drug, of which passing-off is alleged, is meant for curing the
same ailment as the plaintiff's medicine but the compositions are
different. The confusion is more likely in such cases and the
incorrect intake of medicine may even result in loss of life or
other serious health problems. ..."
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
CS(COMM) 542/2022 Page 5 of 711:46:29
Signing Date:08.05.2023
2023:DHC:3080
12. Even though the defendant claimed user since 2003 in its registration
application for the impugned mark, no pleadings or evidence has been put
forth on behalf of the defendant to show proof of user since 2003. Further,
the registration for the impugned mark was sought only on 26th September
2018. On the other hand, the plaintiff has filed the legal proceedings
certificate in respect of the "Maxgalin" mark to show that it is the registered
user of the mark in class 5 since 29th November, 2005. Invoices as well as a
certificate of the Chartered Accountant of the plaintiff dating back to 2007,
showing sale under the "Maxgalin" mark, have also been filed on behalf of
the plaintiff.
13. From a perusal of the material on record, it is clear that the defendant
has made a dishonest attempt to ride on the goodwill and reputation of the
plaintiff. This is further evidenced from the prominent use of the mark
"MGalin" on third-party websites
"https://www.medplusmart.com/product/mgalin-nt-tab_mgal0001,"
"https://www.1mg.com/drugs/mgalin-750mcg-75mg-capsule-394027" and
"https://pharmeasy.in/online-medicine-order/mgalin-75mg-cap-6102" where
the defendant is selling the medicine under the impugned mark.
14. Vide a separate judgment passed today, I have allowed the petition,
being C.O. (COMM.IPD-TM) 723/2022, filed on behalf of the plaintiff
herein and ordered cancellation of the registration of the impugned mark
granted in favour of the defendant.
15. By adopting the mark "MGalin," the defendant is violating the
statutory as well as common law rights of the plaintiff. There is a likelihood
of confusion in the market on account of deceptive similarity of the
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
CS(COMM) 542/2022 Page 6 of 711:46:29
Signing Date:08.05.2023
2023:DHC:3080
trademark of the defendant with that of the plaintiff.
16. Accordingly, a decree of permanent injunction is passed in favour of
the plaintiff and against the defendant in terms of prayer clauses 29(a) and
29(b).
17. At this stage, counsel for the plaintiff does not press for the reliefs
contemplated in prayer clause 29(c) and 29(d).
18. The defendant is additionally burdened with costs of Rs.3,00,000/- to
be paid to the plaintiff.
19. Decree sheet be drawn up.
20. All pending applications stand disposed of.
AMIT BANSAL, J.
MAY 1, 2023
at
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
CS(COMM) 542/2022 Page 7 of 711:46:29
Signing Date:08.05.2023
