Sun Pharma Laboratories Ltd vs Intas Pharmaceuticals Limited

Jayant Nath, J

IA. No.19122/2014

This application is filed under Order 39 Rules 1 and 2 CPC seeking an interim injunction to restrain the defendant, its directors, assignees, etc. from

manufacturing, selling, offering for sale, advertising or dealing in medicinal preparations under the impugned trade mark “DECITAS†or any other

mark which is structurally or deceptively similar to the plaintiffâ€s registered trade mark “DECITEX†registered under Class 5 or any act of

passing off of the defendantâ€​s business or goods.

The accompanying suit is filed seeking a decree of permanent injunction, an order for delivery of the infringing goods and a decree for damages and

costs.

The case of the plaintiff is that the plaintiff is a Company registered under the Companies Act, 2013 and is wholly owned subsidiary of Sun

Pharmaceutical Industries Ltd. which is ranked as one of the top five pharma companies in India which was set up in India in 1983. It is stated that

one of the preparations manufactured by the plaintiff, is under the trade mark DECITEX which is a coined mark. The said product is used for treating

cancer/chemotherapy. It is stated that the product DECITEX contains a salt/molecule Decitabine. It is further pleaded that the trade mark DECITEX

was coined by the plaintiffâ€s predecessor as trade mark in July, 2011 and enjoys inherent distinctiveness indicating trade origin and source of the

goods. The said trade mark has been used extensively and commercially by the plaintiff in the course of medicinal preparations since December, 2011.

It has acquired formidable goodwill and reputation as a badge of quality for cancer and originating from the plaintiff. The trade mark DECITEX was

registered in India under Class 5 on 15.07.2011. The name of the subsequent proprietor was also duly registered by an application dated 03.09.2013

with the Trade Mark Registry. Hence, the plaintiff has statutory rights to the exclusive use of its registered trade mark DECITEX. It is stated that the

goodwill and reputation of the trade mark DECITEX is evident from the statement of annual accounts and promotional expenditure. In 2013-14 sales

figures were Rs. 382.19 lakhs and the promotional expenses were approximately Rs. 19.11 lakhs. It is further stated that the mark DECITEX is a well

known mark as per the provisions of Section 2(1) (zg) of the Trade Mark Act.

 4. The defendant is also a Company incorporated under the Companies Act, 2013 and is engaged in the business of manufacturing and marketing

pharmaceutical preparations. It is stated that in the second week of September 2014, the plaintiff through its field force came across defendantâ€s

product under the impugned trade mark DECITAS which is deceptively similar to the plaintiffâ€s trade mark DECITEX. Further the defendantâ€s

drug is used for treatment of the same ailment, namely, cancer.

It is stated that the plaintiff conducted a search of the defendantâ€s impugned trade mark with the Trade Mark Registry and found that an

application for the mark DECITAS dated 19.04.2014 was applied by the defendant as “proposed to be usedâ€. This application has yet to be

advertised. It is vehemently stated that the defendantâ€s trade mark DECITAS is visually, structurally, phonetically and deceptively similar to the

plaintiffâ€​s trade mark DECITEX.

It is stated that the defendant has malafidely adopted the trade mark DECITAS in April 2014 for the sale of its product which amounts to unfair

trade practice and unfair competition. It is pleaded that the conduct of the defendant is unethical, unfair, lacks bona fide and is unlawful.

The defendant has filed its written statement and the reply to the interim application. It has been pleaded in the written statement:-

(i) That DECITAS and DECITEX are both based on the drug/molecule Decitabine. The prefix “DECI†in the trade name of the plaintiff and

defendant represents the molecule or the active ingredient present in the drugs manufactured by both the parties. It is stated that no one can claim

monopoly over a name or short name of a molecule/active ingredient of the drug. The plaintiffâ€s DECITEX is not a coined word and is merely based

on active ingredient Decitabine.

(ii) It is further stated that the name of the molecule Decitabine is publici juris and is common to trade. No person can claim monopoly of the name.

(iii) It is further pleaded that suffix of both the competing marks DECITAS and DECITEX i.e. “TASâ€​ and “TEXâ€​ are totally phonetically and

visually different. In fact, it is stated that in the adoption of the trade mark DECITAS, the prefix “DECI†indicates the molecule decitabine and

the suffix “TAS†represents the name of the Company that manufacture the drug i.e. “INTAS†respectively. It is pleaded that it is common

methodology in pharma industry to name medicines/products/trade marks by using a combination of an abbreviation of the molecule with the

corporate/company name. Some of the registered trademarks of the defendant company are AMTAS, CEFDITAS, CEFTAS, etc. It is reiterated that

“TASâ€​ suffix is used by the defendant in most of its products.

(iv) There are several other trademarks with the prefix “DECI†which disentitles the plaintiff from making out any case of infringement of the

trade mark. The abbreviation of “DECIâ€​ cannot be monopolised by the plaintiff.

I may note that when this matter came up for hearing on the first date on 30.09.2014, learned counsel for the defendant had entered appearance

and had sought time to file written statement. No interim orders were passed on that date. Subsequently, the defendant filed IA No. 4165/2016 under

Order 7 Rule 10 CPC pleading that the plaintiff has its Registered (Principal) Office in Mumbai and the suit cannot be instituted in courts within the

territory of Delhi. This application was dismissed by this court on 27.01.2017.

I have heard learned counsel for the parties.

Learned counsel for the plaintiff has reiterated that the impugned drug DECITAS is structurally and phonetically identical to the plaintiffâ€s trade

mark DECITEX. He further stresses that both the drugs are used for the treatment of the same aliment, namely, cancer/chemotherapy. He further

states that there has been no delay on the part of the plaintiff in filing the suit. The defendant entered into in the market in 2014. The drug approval of

the defendant is of 19.04.2014. The present suit was filed within three months thereafter. He further states that even if the plea of the defendant is

accepted about the salt Decitabine, the defendant are free to use the word “DECIâ€​ but need to change the suffix so that the word which is coined

is not visually and phonetically similar to that of the plaintiffâ€s. He relies upon the judgment of the Supreme Court in the case of Cadila Health Care

Ltd. vs. Cadila Pharmaceuticals Ltd. (2001) 5 SCC 73, and in the case of Neon Laboratories Ltd. v. Medical Technologies Ltd. & Ors., 2016 (2) SCC

672 and the judgment of this Court in the case of Sun Pharma Laboratories Ltd. vs. Lupin Ltd. & Anr., 2018 (74) PTC 103.

Learned senior counsel for the defendant has pleaded as follows:-

(i) He pleads that the name of the defendant Company manufacturing the drug is Intas Pharmaceuticals Ltd. “TAS†is a suffix for respective

trademarks of many products/drugs manufactured by the defendant. There are 23 registered trademarks with the said suffix “TASâ€​.

(ii) He further pleads that the plaintiff has clearly stated that they have no objection in case the prefix “DECI†is used. The explanation for using

“TASâ€​ is already stated and hence, the plaintiff cannot possibly have any objection to the use of the trade mark “DECITASâ€​.

(iii) He relies upon the judgment of the Supreme Court in the case of F. Hoffmann-La Roche and Company Ltd. vs. Geoffrey Manners and Company

Pvt. Ltd., AIR 1970 SC 2062 and the judgment of this Court in the case of Astrazeneca UK Limited and Anr. vs. Orchid Chemicals and

Pharmaceuticals Ltd., 2007(34) PTC 469 (Del).

(iv) It is further stated that the defendant launched its product in 2014. Sales figures are above Rs.5 crores. Hence, it is pleaded that this Court may

not at this stage i.e. five years after filing of the suit pass any interim injunction in favour of the plaintiff.

Learned counsel for the plaintiff in rejoinder has specifically stated that the judgments citied by the learned senior counsel for the defendant are

prior to the judgment of the Supreme Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.(supra) which is a judgment of Three-Judge

Bench which would squarely apply to the facts of the present case.

There is hardly any controversy regarding the basic facts. The plaintiff has been using the trade mark DECITEX for its medicinal preparations

used for cancer/chemotherapy since July 2011. The said trade mark was registered on 15.07.2011. The defendant launched its drug for

cancer/chemotherapy using the trade mark DECITAS in the year 2014. An application for registration of the same was filed on 19.04.2014 which

stated that the said trade mark is proposed to be used.

It is obvious that the plaintiff has statutory and common law rights in the registered trade mark DECITEX. The issue is as to whether the

impugned trade mark used by the defendant DECITAS is deceptively similar to that of the plaintiffâ€s trade mark DECITEX. In this context

reference may be had to the judgement of the Supreme Court in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.(surpa). The said

judgment pertains to medicine sold under the brand name of Falcitab sold by the respondent as compared to the medicine Falcigo used by the

appellant.

The Supreme Court formulated the test as follows:-

“16. Dealing once again with medicinal products, this Court in F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd., 1969(2)

SCC 716 had to consider whether the word “Protovit†belonging to the appellant was similar to the word “Dropovit†of the respondent. This

Court, while deciding the test to be applied, observed at page 720-21 as follows:-

The test for comparison of the two word marks were formulated by Lord Parker in Pianotist Co. Ltd.s application as follows:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be

applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding

circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the

goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is

to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public

which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case.

It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. the House of Lords was considering the resemblance between

the two words ""Aristoc†and “Rystaâ€. The view taken was that considering the way the words were pronounced in English, the one was likely

to be mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Lukmoore in the Court of Appeal, which passage, he

said, he completely accepted as the correct exposition of the law:

The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of

Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will

neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be

deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by

syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect

recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also

of the shop assistant ministering to that persons wants.

It is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word

differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the

totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the

existing trade mark. Thus in Lavroma case Lord Johnston said:

we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken

from the general and even casual point of view of a customer walking into a shop.

On the facts of that case this Court came to the conclusion that taking into account all circumstances the words Protovit and Dropovit were so

dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view.

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With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words

are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdharas case (supra) where

the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharmas case (supra), it was observed that:

In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity

between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is

an imitation, no further evidence is required to establish that the plaintiffs rights are violated.

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In the case of R.J. Strasenburgh Co. Vs. Kenwood Laboratories, Inc. reported in 106 USPQ 379, as noted in the decision of Morgenstern

Chemical Companyâ€​s case (supra), it had been held that:

Physicians are not immune from confusion or mistake. Furthermore it is common knowledge that many prescriptions are telephoned to the

pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or

mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced.

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As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion

which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our

country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict

measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken.â€​

In Neon Laboratories Limited vs.Medical Technologies Limited and Others (supra) the Supreme Court was dealing with a trademark used by the

plaintiff PROFOL. In contrast, the defendant was using the trademark ROFOL. In those facts the Supreme Court held as follows:-

“3. It has been pleaded that the predecessor-in-title of respondent-Plaintiff 1 had coined and invented the trade mark Profol in April 1998 and not

applied for registration of the said trade mark on 24-5-1998 in Class V. However, it seems to us that this claim may not find acceptance inasmuch as

Profol is almost an anagram of and is phonetically almost indistinguishable from the molecular compound, namely, “Propofolâ€. In our opinion, to

claim exclusivity of the user, the trade mark should normally partake of a new creation, or if an existing word, it should not bear descriptive

characteristics so far as the product is concerned, nor should it be of an extolment or laudation. It would be surprising if exclusivity is given to marks

such as “bestsoapâ€, etc. Having said this, we must accept the reality that in the pharmaceutical industry it is commonplace that trade marks

reproduce and resonate the constituent composition. While this aspect and feature may be a good ground for declining registration of the trade mark, it

may nevertheless remain a favourable determinant in a passing off action. So far as the subject trade marks are concerned, not only do their names

constitute part of the generic drug “Propofolâ€, but they are also so similar that even the medical practitioner/anaesthesiologist concerned could fail

to discern the difference between them.â€​

The Supreme Court refused to interfere in the impugned order whereby the injunction had been granted in favour of the plaintiff/respondent.

Similarly, the learned Single Judge of this court in Stiefel Laboratories, Inc. & Anr. vs. Ajanta Pharma Ltd., 2014 (59) PTC 24 (Del.) held as

follows:-

“29. In the case of Indian Hotels Company Limited versus Ashwajeet Garg & Others (CS (OS) 394 of 2012 Order dated 01.05.2014), I had the

occasion of considering various judicial pronouncements and culling out the following legal principles for determining the deceptive similarity of marks:

i. Action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark. Kaviraj Pandit Durga Dutt Sharma v.

Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980

ii. Registration of trademark gives the proprietor the exclusive right to the use of the trademark in connection with the goods in respect of which it is

registered. American Home Products v. Mac Laboratories: AIR 1986 SC 137

iii. If the essential features of the trademark of the Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and other writing or

marks on the goods or on the packets shows marked differences, or indicate clearly a trade origin different from that of the registered proprietor of

the mark would be immaterial. American Home Products v. Mac Laboratories : AIR 1986 SC 137

iv. Mere delay in filing of a suit for infringement is not fatal. Tata Oil Mills Co. Ltd. v. Wipro Ltd.: AIR 1986 Delhi 345, Midas Hygiene v. Sudhir

Bhatia and Ors. : 2004(28) PTC 121 (SC)

v. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. Encore Electronics Ltd.

v. Anchor Electronics and Electricals Pvt. Ltd. : 2007(35) PTC 714.

vi. The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and the similarity of

pronunciation if the rival marks are used K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. and Anr.: AIR 1970 SC 146

vii. Resemblance between the two marks must be considered with reference to the ear as well as the eye. K.R. Chinna Krishna Chettiar v. Sri.

Ambal & Co. and Anr.: AIR 1970 SC 146

viii. The rival marks have to be compared as a whole. The two competing marks must be judged both by their look and by their sound. All the

surrounding circumstances must be considered. Amritdhara Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449

ix. Where the similarity between the Plaintiffs and the Defendant's mark is so close either visually, phonetically or otherwise and the court reaches the

conclusion that there is an imitation, no further evidence is required to establish that the Plaintiffs rights are violated. Kehsav Kumar Aggarwal Versus

M/s. NUT Ltd. 2013 (199) DLT 242

x. Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. Amritdhara

Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449

xi. Broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any marked differences

in the design and get up.

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Hence, the test to see as to whether the trade mark of the defendant is deceptively similar to that of the plaintiff is as to whether the essential

features of the trade mark of the plaintiff have been adopted by the defendant. Phonetic similarity would constitute an important index. To see as to

whether a mark bears a deceptive or misleading similarity to another, the rival marks have to be compared as a whole. All the surrounding

circumstances have to be considered. Further the competing marks have to be compared keeping in mind a unwary purchaser of average intelligence

and imperfect recollection. In my opinion, the mark used by the defendant DECITAS when compared as a whole is structurally and phonetically prima

facie identical and similar to the trade mark of the plaintiff DECITEX. That apart, likelihood of confusion in this case is much more as the drugs of the

respective parties deal with the same medical problem i.e. cancer/chemotherapy. Strong measures are required to prevent confusion arising from

similarities of marks in medicines. In my opinion, there is no merit in the plea of the defendant that the mark of the defendant is not deceptively similar

to that of the plaintiff.

I may now deal with the submissions of the learned senior counsel for the defendant. It has been vehemently argued that the suffix ‘TAS’

has been taken from the name of the defendant Company i.e. Intas Pharmaceuticals Ltd. It has also been pleaded that the plaintiff has no objection to

the use of the prefix ‘DECI’ by the defendant and hence, he cannot object to the trade mark DECITAS. This plea is misplaced.

It is settled legal position that while comparing the trademarks, the trademarks have to be taken as a whole. The above proposition was noted by

the Supreme Court in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.(supra) while relying upon the earlier judgment of the

Supreme Court in the case of Corn Products Refining Co. V. Shangrila Food Products Ltd., AIR 1960 SC 14.2 The Supreme Court had approved the

following observations from the judgment of Corn Products Refining Co. V. Shangrila Food Products Ltd.(supra):-

“13. xxx

We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not

is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English

word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic

similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that

in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with

Desai, J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identical.

That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.

Hence, the attempt of the learned senior counsel for the defendant in splitting the impugned trade mark DECITAS to claim the prefix “DECIâ€

is copied from the molecule Decitabine and the word “TAS†is copied from the name of the defendant Intas Pharmaceutical ltd. is a misplaced

contention. The marks have to be compared as a whole and cannot be split up to justify the use of the impugned trade mark.

Leaned senior counsel for the defendant has also relied upon the judgment of the Supreme Court in the case of Hoffmann-La Roche and

Company Ltd. vs. Geoffrey Manners and Company Pvt. Ltd.(supra). In that case the Supreme Court was considering as to whether the mark

DROPVIT is deceptively similar to the mark PROTOVIT. The Court held as follows:-.

“13. In order to decide whether the word ""DROPOVIT"" is deceptively similar to the word ""PROTOVIT"" each of the two words must, therefore,

be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon part the first two

are consonants, the next is the same vowel 'o', the next is a consonant and the fifth is again a common vowel 'o'. The combined effect is to produce an

alliteration. The affidavits of the appellant indicate that the last three letters ""VIT"" is a well known common abbreviation used in the pharmaceutical

trade to denote Vitamin preparations. In his affidavit dated January 11, 1961 Frank Murdoch, has referred to the existence on the Register of about 57

trade marks which have the common suffix ""VIT"" indicating that the goods are vitamin preparations.

It is apparent that the terminal syllable “VIT†in the two marks is both descriptive and common to the trade. If greater regard is paid to the

uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters “D†and “Pâ€

in “DROPOVIT†and the corresponding letters “P†and “T†in “PROTOVIT†cannot possibly be slurred over in pronunciation and

the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view.

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Having taken into account all circumstances of the present case we are of the opinion that the High Court and the Joint Registrar of Trade Marks

were right in holding that there was no real tangible danger of confusion if respondent's trade was allowed to continue to remain on the Register and

the application for rectification made by the appellant should be dismissed.â€​

Hence, in those facts that the Supreme Court came to a conclusion that “VIT†is well known common abbreviation used in the

pharmaceutical trade to denote vitamin preparations. There is no factual similarity with this case.

In Astrazeneca UK Limited and Anr. vs. Orchid Chemicals and Pharmaceuticals Ltd.(supra) the Division Bench of this court was dealing with a

trademark of the plaintiff MERONEM. Defendant therein was using the trademark MEROMER. In those circumstances the Division Bench held as

follows:-

“22. Consequently, the two names, namely, 'Meromer' and 'Meronem' are found to be prima facie dissimilar to each other. They are Schedule-H

drugs available only on doctor's prescription. The factum that the same are available only on doctor's prescription and not as an over the counter

medicine is also relevant and has been rightly taken note of by the learned Single Judge. In our considered opinion, where the marks are distinct and

the features are found to be dis-similar, they are not likely to create any confusion. It is also admitted by the parties that there is a difference in the

price of the two products. The very fact that the two pharmaceutical products, one of the appellants/plaintiffs and the other of the respondent/

defendant, are being sold at different prices itself ensures that there is no possibility of any deception/confusion, particularly in view of the fact that

customer who comes with the intention of purchasing the product of the appellants/plaintiffs would never settle for the product of the

respondent/defendant which is priced much lower. It is apparent that the trademarks on the two products, one of the appellants/plaintiffs and the other

of the respondent/defendant, are totally dissimilar and different.â€​

A closure look at the judgment will show that the court had come to a conclusion that taken as a whole the suffix of the two names distinguishes

and differentiates the two products. When they are taken as a whole the aforesaid two trademarks cannot said to be either phonetically or visually or

in any manner deceptively similar to each other. The Court concluded as follows:-

“19....It is true that the aforesaid words/trade names cannot be deciphered or considered separately, but must be taken as a whole. But even if

they are taken as a whole, the prefix 'Mero' used with suffix in the two competing names, distinguishes and differentiates the two products. When

they are taken as a whole, the aforesaid two trade marks cannot be said to be either phonetically or visually or in any manner deceptively similar to

each other.â€​

Hence, on the facts the court took the view that the two marks are neither visually nor phonetically similar to each other.

That apart, as rightly pointed out by the learned counsel for the plaintiff, the judgment of the Supreme Court in the case of Cadila Health Care Ltd.

vs. Cadila Pharmaceuticals Ltd. (supra) which is a later judgment of Three-Judge Bench is fully applicable to the facts of this case. Reliance of the

learned senior counsel for the defendant on the judgment of the Supreme Court in the case of Hoffmann-La Roche and Company Ltd. vs. Geoffrey

Manners and Company Pvt. Ltd.(supra) is misplaced.

It is lastly pleaded by the learned senior counsel for the defendant that the defendant had launched the drug in 2014 and the sales of the drug are

now above Rs. 5 crores a year. Hence, this court may not grant any interim injunction in favour of the plaintiff. I do not find this contention at all

persuasive. When this application for injunction came up for the first hearing, injunction was not granted as the defendant appeared on seeing the

matter on the list and sought time to file written statement. Subsequently, this application could not be heard for one reason or the other including a

couple of adjournments taken by the learned counsel for the defendant. On 10.07.2015, the defendant vehemently argued that the present suit is not

maintainable as this court lacks territorial jurisdiction. On 30.08.2016 defendant filed IA No. 4165/2016 under Order 7 Rule 10 CPC raising the same

objection about the territorial jurisdiction. This application was heard and dismissed on 27.01.2017. It is only thereafter that on the present application,

arguments were heard. In my opinion, substantial time has been spent adjudicating upon the preliminary objection raised by the defendant about the

lack of territorial jurisdiction of this court to adjudicate the present suit. The said objection was rejected. I do not see how the defendant can be

permitted to take advantage of this delay which was primarily on account of the preliminary objection raised by the defendant.

In my opinion, the plaintiff has made out a prima facie case. The plaintiff have approached the court within three months of launch of the drug by

the defendant. Balance of convenience is also in favour of the plaintiff. An injunction order is passed restraining the defendant from manufacturing,

selling, advertising or dealing in the drug/medicinal preparations using the impugned trade mark “DECITAS†or any other mark which is

deceptively similar to the plaintiffâ€​s registered trade mark

The application stands disposed of.

CS(COMM) 1206/2016

List on 7.8.2019 for framing of issues.