Sun Pharmaceutical Industries Limited vs Systopic Laboratories Limited

This order is in continuation of the earlier order dated 22nd October, 2018.

The counsel for the plaintiff states that the plaintiff will be prejudiced by disposal of the suit in the manner suggested on 22nd October, 2018 and

desires to keep the suit adjourned sine die.

The plaintiff has also filed IA No.15114/2018 under Order XIV Rule 5 of the Code of Civil Procedure, 1908 (CPC) which has come up today for

the first time.

The counsel for the defendant states that a reply be permitted to be filed thereto.

Considering the nature of the application, reply is not deemed necessary and the counsels have been heard.

Issues in this suit were framed on 2nd April, 2008 and vide subsequent order dated 22nd December, 2014, on the defendant filing an application for

stay of the proceedings in the present suit on the ground of a rectification petition filed by the plaintiff for cancellation of the defendantâ€s mark and

which was pending before the Intellectual Property Appellate Board (IPAB), the proceedings in the suit with respect to claim for infringement of

trade mark were stayed and the proceedings with respect to passing off ordered to continue. However, vide subsequent order dated 21st April, 2017,

the proceedings qua passing off also were stayed and the following additional issue framed:

“Whether the use of trade mark “ORVAS†by the defendant amounts to infringement of the plaintiffâ€s registered trade mark

“STORVASâ€​? OPPâ€​

The plaintiff now seeks framing of yet another issue as under:

“Whether the registration of the trade mark “ORVAS†in the name of the defendant under trade mark registration No.1328403 is invalid, and

liable to be cancelled? OPPâ€​

It is pleaded in the application that in terms of dicta of the Supreme Court in Patel Field Marshal Agencies Vs. P.M. Diesels Limited (2018) 2 SCC

112 pronounced on 29th November, 2017, the framing of the said issue is essential.

The counsel for the plaintiff has also argued that the plaintiff, at the time of institution of this suit was not aware of the registration of the trade mark

of the defendant and learnt of the same for the first time from the written statement of the defendant and has in the replication inter alia pleaded as

under:

“The Plaintiff further submits that the Defendant as on the date of its application for registration of trademark “ORVAS†was very much

aware that its alleged mark “ORVAS†as usual being phonetically and usually similar to not only being similar to Plaintiff’s well-known mark

“STORVASâ€, is also incapable of registration, as it falls under absolute grounds for refusal of registration enumerated under Section 9 of the

Trade Marks Act, 1999, being non-distinctive, descriptive or generic.â€​

with respect to the invalidity of the mark of the defendant and thus an issue qua invalidity is required to be framed.

The counsel for the defendant has argued, firstly, that the plaintiff in the aforesaid paragraph having claimed similarity in its mark and in the mark

of the defendant and having also pleaded that the mark of the defendant is non-distinctive, descriptive or generic, it would follow that the mark of the

plaintiff also is non-distinctive, descriptive or generic and once it is so, the registration in favour of the plaintiff also is bad and no question of framing

any issue qua the plea of invalidity is made out. It is also argued that as per Patel Field Marshal Agencies supra, the Court has to return a prima facie

finding with respect to the plea of invalidity of registration.

The counsel for the plaintiff has contended that the plaintiff, in the paragraph reproduced above has pleaded that the defendant was not entitled to

registration of its mark for the reason of the mark of the defendant, of which registration was sought, being similar to the previously registered mark of

the plaintiff. Attention in this regard is invited to Section 9(2)(a) and Section 11(1)(a) of the Trade Marks Act, 1999. It is also argued that the Division

Bench of this Court in Bhagwan Dass Khanna Jewellers Pvt. Ltd. Vs. Bhagwan Das Khanna Jewellers (2017) 238 DLT 620 has held that when the

Court frames an issue with regard to the invalidity of the mark, it can be presumed that the Court was satisfied that the plea regarding such invalidity

was prima facie tenable. It is thus argued that the Court is not required to return any prima facie finding. Attention is also invited to my judgment in

Abbott Healthcare Pvt. Ltd. Vs. Raj Kumar Prasad (2018) 249 DLT 220 and it is argued that even if the replication is not very happily worded, the

issue still have to be framed.

I have considered the rival contentions.

Though I have also in Abbott Healthcare Pvt. Ltd. while analyzing Patel Field Marshal Agencies supra have held that the prima facie finding of

the plea of invalidity has to be returned but while framing additional issue therein, it has only been reasoned that the plea of invalidity was a material

plea so as to invite an issue thereon and have not returned any prima facie finding. I have even otherwise also in the said judgment discussed in detail

the pleas on which issues are to be framed and on a reading thereof with Bhagwan Dass Khanna Jewellers Pvt. Ltd. supra, though of a date prior to

Patel Field Marshal Agencies supra, I am of the opinion that the very framing of an issue, which can be framed only on a material plea, is a finding of

prima facie merit in the plea of invalidity.

As far as the other aspect is concerned, though undoubtedly on the first reading of the paragraph of the replication produced hereinabove, it does

appear that the contention of the counsel for the defendant is correct but if one were to read the aforesaid paragraph minutely, what the plaintiff is

also found to be pleading therein is, that owing to the awareness by the defendant of the previously registered trade mark of the plaintiff, the

registration of the mark of the defendant is invalid. I may state that else the plaintiff in the plaint has made detailed averments with respect to the

similarity between the two marks.

Even otherwise, it is the defendant who sought the orders aforesaid of stay of proceedings during the pendency of the rectification petition; the

need for framing the additional issue has arisen owing to the subsequent dicta of the Supreme Court in Patel Field Marshal Agencies supra. For the

reasons given in Abbott Healthcare Pvt. Ltd. supra, issues can be so permitted to be amended.

The application is thus allowed and disposed of.

The following additional issue is framed in the suit:

“Whether the registration of the trade mark “ORVAS†in the name of the defendant under trade mark registration No.1328403 is invalid, and

liable to be cancelled? OPPâ€​

The proceedings in the suit to remain stayed in terms of the earlier order.

The proceedings are adjourned sine die with liberty to the parties to apply for revival as and when need arises.