Madras High Court
Sun Pharmaceutical Industries ... vs M/S. Lumen Life Sciences on 28 April, 2021
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 28.04.2021
CORAM
THE HONOURABLE DR. JUSTICE G.JAYACHANDRAN
C.S.No. 110 of 2021
and
O.A.Nos. 169 and 170 of 2021
and
A.No.1135 of 2021
Sun Pharmaceutical Industries Limited,
CD Plot No.3, Door No.8,
Old Tower Block Street,
Nandhanam Extension,
Chennai – 600 035 .. Plaintiff
..vs..
1. M/s. Lumen Life Sciences,
No.2, Second Floor, First Cross Street,
Second Avenue, Ashok Nagar,
Chennai – 600 083.
2. M/s. Navkar Life Sciences,
Plot No.76, Lodhi Majra,
Industrial Area, Baddi,
Dist Solan, Himachal Pradesh. ...Defendants
Prayer:Civil Suit filed under Order IV Rule I of O.S. Rules and Order
VII Rule I of CPC read with Sections 27, 28, 29, 134 and 135 of the
Trade Marks Act 1999, praying for the following:
a) A permanent injunction restraining the Defendants, their
men, servants, agents distributors, stockists, retailers, legal
representatives, job-workers, manufacturers, packers, export/ import
agents or any other person claiming under them from in any manner
infringing the Plaintiff's registered trademarks VOLINI and/ or VOLINI
https://www.mhc.tn.gov.in/judis/
2
ACTIV through the use of VOLINAC and /or VOLINAC ACYTIV or
any other mark or marks that are in anyway identical with and / or
deceptively similar to the Plaintiff's said registered trademarks, either by
manufacturing or selling or exporting or importing or offering for sale or
stocking or importing or exporting or advertising either online or offline,
or in any other manner whatsoever.
b) A permanent injunction restraining the Defendants, their,
men servants, agents, distributors, stockists, retailers, legal
representatives, job – workers, manufacturers, packers export/import
agents or any other person claiming under them from in any manner
manufacturing, selling, offering for sale, stocking, importing, exporting
advertising, either online or offline, or in any manner directly or
indirectly dealing in any products under the trademarks VOLINAC and/
or VOLINAC ACTIV or any other trademark that is identical with and/
or deceptively similar to the Plaintiff's prior adopted trademarks VOLINI
and/ or VOLINI ACTIV so as to pass off the Defendants products as and
for the products of the plaintiff.
c) Directing the Defendants to render a true and faithful
accounts of the profits earned by them through the sale or advertisement
of products under the impugned marks VOLINAC and/or VOLINAC
ACTIV and direct payment of such profits to the Plaintiff for the acts of
infringement and passing off committed by the Defendants;
d) Directing the Defendants to surrender to the Plaintiff the
entire stock of labels, containers, boxes, canisters, packaging materials
printed materials, promotional materials, stationery, including dyes,
blocks, screen prints and other materials bearing the impugned marks
VOLINAC and/or VOLINAC ACTIV or any other mark(s) that are in
any manner similar to the Plaintiff's trademarks VOLINAC and/or
VOLINAC ACTIV for destruction;
e) Directing the Defendants to pay to the Plaintiff the cost of
the suit;
For Plaintiff : Mr.S.Diwakar
For Defendants: Mr.D.Sreenivasan for D1 and D2
https://www.mhc.tn.gov.in/judis/
3
JUDGMENT
Heard the learned counsel for the plaintiff and the defendants.
2. The suit is filed for permanent injunction against the
defendants for act of infringement of the trade mark “Volini” and
“Volini Activ” and passing off. After grant of exparte interim injunction
by this Court, on 23.03.2021, an Advocate Commissioner was appointed
to inspect the premises of the defendants. It appears that around 26,692
individual units of the defendant's products marketed under the mark
“Volinac Activ” was recovered from the premises of the defendants and
the Advocate Commissioner kept the recovered infringed material in the
premises of the plaintiff under lock and key. The key was with the
custody of the Advocate Commissioner.
3. In the above said circumstances, compromise have been
arrived by both parties and joint compromise memo dated 26.04.2021
also filed by both parties before this Court. As per the compromise
memo, the defendants have agreed to change the name of their product
from “Volinac Activ” to “Diclolum” for which the plaintiff has no
objection. As a consequence, the defendants have also agreed to
https://www.mhc.tn.gov.in/judis/
DR.G.JAYACHANDRAN,J.
Vri
withdraw the pending application for registration of the trademark
“Volinac Activ”. It is also agreed by the defendants to hand over the
products seized by the Advocate Commissioner to the plaintiff for the
purpose of destruction. The plaintiff has agreed to give up the other
reliefs except the relief sought for permanent injunction against the
defendant regarding the infringement of the trademark and passing off.
4.In the light of the above terms of memo of compromise, suit
is partly allowed. The relief sought under the prayer (a) and (b) is
granted. The relief sought under the prayer (c), (d) and (e) is dismissed
as not pressed. The terms of memo of compromise shall form part of the
decree. No order as to cost. The connected applications are closed.
28.04.2021
vri
C.S.No. 110 of 2021 and
O.A.Nos. 169 & 170 of 2021
and A.No.1135 of 2021
https://www.mhc.tn.gov.in/judis/
28.04.2021
https://www.mhc.tn.gov.in/judis/
