JUDGEMENT
Rajiv Sahai Endlaw, J. -
(1.)The plaintiff has sued for permanent injunction restraining the defendant from passing off its medicinal preparation as that of the plaintiff by use of the plaintiff's trade mark "MEX"/trade dress/packaging or any deceptive variations thereof, whether as a trade mark, service mark, trade name, trading style etc. and from infringing the copyright of the plaintiff and for ancillary reliefs.
(2.)The suit came up first before this Court on 23rd December, 2016 and thereafter on 12th January, 2017. Summons of the suit and notice of the application for interim relief were ordered to be issued to the defendant vide order dated 16th January, 2017. No ex-parte relief was granted to the plaintiff. Pleadings have been completed and the suit came up last before this Court on 20th November, 2018 for consideration of the application for interim relief and for framing of issues, if any. The counsels for the parties were heard on 20th November, 2018 on the application for interim relief and on request of the counsel for the plaintiff in rejoinder to adjourn the hearing to enable him to cite case law, the hearing was adjourned to today. The counsels have been further heard today. At the close of the hearing, considering the extensive hearing held and the nature of the dispute and which qualifies as a commercial dispute, it appeared that no evidence/trial is required and on the basis of the arguments heard, the suit itself, insofar as for the relief of permanent injunction, can be disposed of, with the need to enquire into the relief, if any required to be granted for damages, accounts etc., being considered, after the relief of injunction is adjudicated. It was so indicated to the counsels. Attention of the counsels is drawn to Staar Surgical Company Vs. Polymer Technologies International,2016 SCCOnLine(Del) 4813, The Financial Times Ltd. Vs. The Times Publishing House Ltd., 2016 234 DLT 305 and Jaideep Mohan Vs. Hub International Industries, 2018 249 DLT 572 where it has been held that in most of such suits, trial/recording of evidence serves no purpose, with self-serving witnesses being examined by the respective parties and ultimately it falling upon the Court to compare the two marks. The counsels fairly agreed.
(3.)The undisputed position is:
(i) that the plaintiff is selling Gliclazide and Metformin Hydrochloride Extended Release Tablets under the name and style of "DIAMICRON XR MEX 500";
(ii) that the defendant is selling Gliclazide Modified Release & Metformin Hydrochloride Extended Release Tablets under the name and style of "DIABEND-MEX 60";
(iii) that both medicines are for the treatment of diabetes;
(iv) that the plaintiff is the prior adopter of "MEX", having commenced using the same in April, 2011 with the defendant having commenced using the same in April, 2015;
(v) that in the suit as originally filed, the plaintiff had also sought to restrain the defendant from infringing the copyright of the plaintiff in the trade dress as under:
vi) It was the case of the plaintiff that the trade dress as under of the defendant infringed the trade dress of the plaintiff by adopting the red and blue colours:
(vii) that the defendant has since changed its trade dress to as under:
and the plaintiff is satisfied therewith and the counsel for the defendant states that the defendant will not revert to the trade dress as shown above and to which objection was taken by the plaintiff and the counsel for the defendant has stated that the defendant be bound by the said statement;
(viii) that thus the relief claimed qua trade dress is not to be adjudicated and has not been argued and the counsel for the plaintiff has only objected to the defendant adopting pink and white colours as on the tablets of the plaintiff;
(ix) that the defendant was earlier selling the same formulation under the name "SECREMET" and thereafter under the name "DIABEND" and "DIABEND-MR"; and,
(x) that the registered trade mark of the plaintiff is "DIAMICRON" and the registered trade mark of the defendant is "DIABEND".
Click here to view full judgement.
Copyright © Regent Computronics Pvt.Ltd.