Delhi District Court
Abbott Helthcare Private Limited vs Sgs Pharmaceutical Pvt Ltd on 3 June, 2025
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IN THE COURT OF SH. VIDYA PRAKASH
DISTRICT JUDGE (COMMERCIAL COURT)-02
NEW DELHI DISTRICT, PATIALA HOUSE COURTS
NEW DELHI
CNR NO.: DLND01-010499-2018
CS (COMM.)/59/2023
[OLD NOS.:- TM /135/2018,
CS (COMM.)/309/2019 & TM/157/2021]
IN THE MATTER OF:
ABBOTT HELTHCARE PRIVATE LIMITED
3, Corporate Park
Sion-Trombay Road, Chembur
Mumbai-400071.
Also at -
708, Ansal Bhawan
Kasturba Gandhi Marg,
New Delhi- 110001
... PLAINTIFF
VERSUS
SGS Pharmaceutical Pvt. Ltd.
E-13/1, Kavi Nagar
Industrial Area, Sector-17
Near Diamond Flyover
Ghaziabad, Uttar Pradesh- 201002
... DEFENDANT
Date of Institution : 10-09-2018
Date of reserving Judgment : 03-06-2025
Date of pronouncing Judgment : 03-06-2025
JUDGMENT
1. Vide this judgment, I shall decide the present suit for
permanent injunction, infringement of trademark,
copyright, passing off, damages, rendition of accounts,
etc., filed by plaintiff against the defendant.
CS (COMM.)/59/2023 Page 1 of 66
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2. At the outset, it must be mentioned that initially, the
present suit was filed as a non-commercial suit before the
Court of Ld. Additional District Judge, Patiala House
Courts, New Delhi and during the course of trial, it was
received by this Court by way of transfer, on 20-10-2022,
in view of Order No.17016-17031/Judl./ NDD/ PHC/2022
dated 05-7-2022 of the then Ld. Principal District &
Sessions Judge, New Delhi District, PHC and
consequent upon the directions of Hon’ble Delhi High
Court in the case titled as ‘Vishal Pipes Limited v. Bhavya
Pipe Industry’ FAO-IPD No.1/2022 & CM APPLs No.
12-14/2022 dated 03-6-2022.
BRIEF FACTS OF THE CASE:
3. The case of the plaintiff, as set out in the plaint, is as
under:-
3.1 The plaintiff, which is claimed to be a company duly
incorporated under the Indian Companies Act, 1956,
got instituted the present suit through its Manager
(Legal)/ Authorized Representative namely
Ms. Tejal Mundkur, who has been duly authorized
by the plaintiff company to sign, verify, institute and
pursue the present suit, by virtue of Power of
Attorney.
3.2 It is averred that the plaintiff is a wholly owned
subsidiary of Abbott Laboratories, Chicago, USA
which was founded in the year 1888 by a young
Chicago physician, Dr. Wallace Calvin Abbott.
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Abbott Laboratories is a global, diversified health
care company devoted to the discovery,
development, manufacture and marketing of
pharmaceutical, diagnostic, nutritional and hospital
products. It is further averred that ‘Abbott India
Limited’ having its registered office at 3-4,
Corporate Park Sion Trombay Road, Chembur,
Mumbai, is an affiliate of the plaintiff.
3.3 Thus, it is averred that the plaintiff is a wholly
owned subsidiary of Abbott Laboratories and deals
in manufacture and marketing of pharmaceutical,
diagnostic, nutritional and hospital products
[hereinafter referred to as the ‘said goods and
business’] in India and the plaintiff on its own and
through its affiliates in India, is dedicated to
providing quality healthcare and pharmaceutical
products to its valued customers. The plaintiff
together with its affiliates, is one of the most reputed
and largest pharmaceutical companies carrying on
business in India.
3.4 It is averred that the plaintiff has over 8000
employees with a network of 30 distribution points,
which cater to 5,500 stockists, who in turn, supplies
its products to 4-5 lakhs retailers in India.
3.5 The products manufactured and marketed by the
plaintiff are sold under their well-known and famous
trademarks and/or brand names,which includes
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Avomine, Flagyl, Sorbitrate, Tenormin, Digene,
Cremaffin, Thyronorm, etc.
3.6 It is claimed that the plaintiff’s products encompass
a wide and diverse range and are known for their
efficacy, reliability and excellence of quality. The
plaintiff and its affiliates maintain state of the art
research and development facilities for developing
new products and upgrading their present range of
products. All such products are subject to stringent
quality testing to ensure safety and efficacy of these
goods.
3.7 Further, the plaintiff through its predecessor-in-title,
is claimed to be owner and registered proprietor of
the trade mark ‘ESGIPYRIN’ [hereinafter referred
to as the ‘said trade mark’] vide No.293710 in class
5 in respect of the said medicinal and
pharmaceutical preparation as on 22nd January 1974.
The same is stated to be renewed from time to time
and subsisting and is in full legal force; conferring
upon the plaintiff the right to its exclusive use and to
restrain use of any identical or deceptively similar
mark by unauthorized persons.
3.8 It is stated that said trademark ‘ESGIPYRIN’ is a
coined/invented word, having no dictionary meaning
and is not derived from the principal ingredient/
formulation of the drug.The said trademark
‘ESGIPYRIN’ is being used by the plaintiff in
relation with ‘Diclofenac sodium and paracetamol
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preparations’. Thus, the mark has the highest degree
of distinctiveness, connoting the plaintiff’s goods
exclusively.
3.9 It is stated that the said trademark ‘ESGIPYRIN’
was adopted, coined and registered with the trade
mark registry by Suhrid Geigy Limited (hereinafter
“SGL”) in the year 1974. The name of Suhrid Geigy
Limited was changed to S.G Chemicals and
Pharmaceuticals Limited. The new name S.G
Chemicals and Pharmaceuticals Limited (hereinafter
“SGCPL”) was brought on record in the Registry
records, vide request dated December 24, 1979.
Eventually, SGCPL merged with Ambalal Sarabhai
Enterprises Limited (hereinafter “ASE”), on 27 th
March 1981. ASE was brought on record as the
subsequent proprietor in the Trade Marks Register.
Subsequently, Nicholas Piramal India Limited
formed a Joint Venture with ASE called Compact
Pharma Private Limited, which operated through its
division named “Sarabhai Piramal Pharmaceutical”,
which later on changed its name to Compact Pharma
Limited on October 01, 1997 (hereinafter “JV
Company”). By virtue of an Assignment Agreement
dated 3rdOctober, 1997, ASE assigned the said
trademark ‘ESGIPYRIN’ to the JV Company. The
aforesaid Assignment Agreement contained a
typographical error in the name of the assignee
appearing in said Deed of Assignment ( appearing as
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Compact Pharma Private Limited in place of
Compact Pharma Limited), due to lack of
communication from Registrar of Companies, which
issued the name change certificate]. Subsequently,
the JV Company changed its name to Sarabhai
Piramal Pharmaceuticals Limited on December 4,
1997, and further changed its name to Sarabhai
Piramal Pharmaceuticals Private Limited on May
24, 2001. The name of the assignee was brought on
record as the subsequent proprietor.
Further vide order dated 27th day of April, 2004 of
the Court, the JV Company Sarabhai Piramal
Pharmaceuticals Private Limited was merged with
Nicholas Piramal India Limited and thereby
Nicholas Piramal India Limited became the
registered proprietor of the said Trademark. Further,
with effect from 13th May 2008, the name of
Nicholas Piramal India Limited was changed to
Piramal Healthcare Limited (Now known as Piramal
Enterprises Limited).
3.10 It is stated that by virtue of further Assignment
Agreement dated September 08, 2010, Piramal
Healthcare Limited assigned the said Trademark –
‘ESGIPYRIN’ to the plaintiff. The plaintiff, has
vide application dated February 21, 2011, sought to
bring on record the plaintiff’s name as a subsequent
proprietor of the Trade Mark ‘ESGIPYRIN’ with
the trademark Registry.
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3.11 Thus, it is claimed that the plaintiff and its
predecessors-in-title have been openly,
continuously, extensively and exclusively using the
said Trade Mark ‘ESGIPYRIN’ in respect of their
goods since more than the last four decades, and it
has, thus, become a well-known mark.
3.12 It is also averred that in addition to using a
distinctive trademark, the plaintiff uses a unique
blister packaging for its Tartrazine (yellow) tablets
under the said mark. The plaintiff uses a unique
yellow strip packaging in the front and the said
trademark ‘ESGIPYRIN’ is prominently displayed
in silver font in a black box on the backside. The
photographs of strip/ packaging/ trade dress/ colour
scheme, as depicted in plaint, are reproduced here as
under:-
[hereinafter referred to as ‘the said packaging/ trade
dress/ colour scheme’]
3.13 It is stated that in addition thereto, the plaintiff’s
product strips under the Trade Mark ‘ESGIPYRIN’
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are sold in a box packaging in colours white and
orange bearing a unique design (being outline of
men in different postures). Thus, the distinctive
packaging and strip described above constitute
original artistic work of the plaintiff within the
meaning of S.2(c) of the Copyright Act, 1957, of
which the plaintiff owns the copyright.
3.14 It is stated that the plaintiff has tremendous sales
running into several millions of rupees for products
sold under the said trademark throughout India. The
details of year-wise sales since 2006-2007 till 2018
are provided in Para no.9 of the plaint, wherein it is
shown that the said plaintiff had sales worth
Rs.1635.13 for the year 2006-2007, which increased
to Rs.1,68,08,730.32Paise. It is also claimed that the
plaintiff has been continuously promoting the said
business & goods under the said trademark and has
incurred substantial expenses towards promotion
thereof. It is stated that due to plaintiff’s efforts and
investment in promoting the brand ‘ESGIPYRIN’
and by virtue of its extensive use, the trade and
public identify ‘ESGIPYRIN’ and its unique
packaging with the plaintiff and no one else.
Consequently, the plaintiff has earned substantial
goodwill and reputation in the ‘ESGIPYRIN’ trade
mark and its packaging, which acts as a unique
identifier of its products. Therefore, it is stated that
said trademark is to be considered as ‘well-known’
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trademark within the meaning of Section 2 (1) (zg)
and Section 11 of the Indian Trade Marks Act, 1999.
3.15 Hence, it is stated that on account of its good quality
and standards of manufacturing and untiring efforts
in advertising and marketing, the goods of the
plaintiff under the said trade mark have acquired
enviable reputation and goodwill in business
community and public in general and in view of the
plaintiff’ proprietary rights both under statutory and
common law in its said trademark and their goodwill
& reputation, the plaintiff has the exclusive right to
the use thereof and nobody can be permitted to use
the same or any other deceptively similar trade
mark/ packaging /trade dress in any manner
whatsoever in relation to any specification of goods
without the leave and license of the plaintiff.
3.16 It is alleged that on coming to know about
defendant’s infringing products under the trademark
SGS PYRIN in the 2nd week of August, 2018, the
plaintiff through its representative made extensive
inquiries in the market to ascertain the identity of
the person(s) who were manufacturing and
marketing the identical impugned products. Then, it
is revealed that the defendant is a pharmaceutical
company trading as SGS PHARMACEUTICAL
PVT. LTD, has been manufacturing, marketing,
distributing and selling the products with the drug
compound containing the same active ingredient
CS (COMM.)/59/2023 Page 9 of 66
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used by the Plaintiff of “Paracetamol and Diclofenac
Sodium Tablets” [hereinafter referred to as ‘the said
impugned goods and business’]. It is further alleged
that the products of the defendant are sold in yellow
colour strip that is visually identical to strip
packaging of the plaintiff’s ‘ESGIPYRIN’ and
which is deceptively similar to the plaintiff’s
registered trade mark ‘ESGIPYRIN’ thereby
resulting into the acts of infringement and passing
off. The photographs of impugned packaging/ strip
is reproduced hereunder:-
ESGIPYRIN SGS PYRIN
[hereinafter referred to as ‘the said impugned
packaging/ trade dress/ colour scheme’]
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3.17 It is further stated that the defendant is engaged in
unauthorized manufacturing and marketing of
tablets bearing the impugned trademark SGS
PYRIN with similar strip packaging [ hereinafter
referred to as ‘said impugned drugs’] as that of the
plaintiff’s products sold under the mark
‘ESGIPYRIN’ [hereinafter referred to as ‘the said
drugs’]. Further, the said impugned drugs are sold in
yellow colour strip identical to the distinctive yellow
colour strip of the plaintiff’s products. The plaintiff
claims that the said impugned drugs is identical with
the drug compound containing the same active
ingredient used by the plaintiff of “Paracetamol and
Diclofenac Sodium Tablets” as that contained in the
said drugs of the plaintiff. It is averred that
Diclofenac is non-steroidal anti-inflammatory drugs
(NSAID) used to relieve pain and reduce
inflammation.
3.18 It is further averred that the said impugned
trademark SGS PYRIN of defendant is deceptively
similar to plaintiff’s well known registered mark
‘ESGIPYRIN’ while emphasizing that the defendant
has intentionally manipulated some letters in the
plaintiff’s mark ‘ESGIPYRIN’ to create deceptively
similar mark SGS PYRIN. In order to create
confusion in the minds of traders and people; they
have further copied the blister packing style along
with the colour and size of the tablet, which is of the
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same color and size as the plaintiff’s product.
3.19 It is also stated that the plaintiff’s drug
‘ESGIPYRIN’ is commonly known as “Peeli Goli”
in Hindi (meaning “yellow tablet”) by uneducated/
unaware masses consuming or referring to this
product. The defendant, by way of their imitation of
yellow blister strip and tablet of identical colour,
shape and size,is encashing on the reputation and
goodwill earned by ESGIPYRIN products. Such
masses referring a product, thus, identify the product
by its colour, size and blister packing rather than
names of manufacturer/distributor mentioned on the
blister strips. It is also a well-known practice of
chemists and retailers to sell parts of strips (say, half
or one fifth of a strip of ten tablets). A consumer
purchasing a part of a strip, is even more likely to
identify a medicine by the shape, colour scheme and
get up of a tablet. The use of an identical packaging,
colour scheme and get up in respect of products
bearing the deceptively similar mark ‘SGS PYRIN’,
colour combination/ packaging / get up by the
defendant, itself establishes its malafide intention to
ride piggy back on the goodwill and reputation
earned by the plaintiff for its product bearing the
registered mark ESGIPYRIN.
3.20 Hence, it is alleged that the defendant has
dishonestly and malafidely adopted the impugned
Trade Mark/ trade dress/ blister packaging in yellow
CS (COMM.)/59/2023 Page 12 of 66
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colour ‘SGS PYRIN’ which is identical and /or
deceptively and confusingly similar to plaintiff’s
trade mark/ trade dress/ blister packaging in yellow
colour ‘ESGIPYRIN’, thereby causing confusion
and deception amongst the unwary purchasing
public and traders by making them believe that the
origin of those goods is that of the plaintiff. It has
been averred that by doing so, the defendant is not
only damaging the reputation and goodwill of the
plaintiff by passing off its substandard products as
that of the plaintiff, but is also causing financial loss
to the plaintiff by reaping unfair advantage of the
repute and distinctive character of the said
trademark/ trade dress of the plaintiff.
4. On these grounds, the plaintiff has filed the present suit
against the defendant praying therein, inter alia, that decree
of permanent injunction may be passed restraining the
defendant and all others acting for and on their behalf from
using the impugned Trade Mark/ trade dress/ colour scheme
‘SGS PYRIN’ or any other trade mark/ trade dress/ colour
scheme, which may be identical and /or deceptively and
confusingly similar to plaintiff’s trade mark/ trade dress/
colour scheme ‘ESGIPYRIN’ in relation to similar goods,
thereby infringing plaintiff’s registered trademark, copyright
and passing off their products as that of the plaintiff.
5. The suit was accompanied with applications – one under
Order XXXIX Rules 1 & 2 CPC and another under Order
XXVI Rule 9 CPC seeking an ex parte ad interim injunction
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and ex parte order for appointment of local commissioner to
visit and search the premises of the defendant. After hearing
counsel of the plaintiff, the said applications were allowed,
vide common order dated 11-09-2019 passed by Ld.
ADJ-05/PHC/New Delhi, thereby granting an ex parte ad
interim injunction in favour of the plaintiff and against the
defendant and a Local Commissioner was also appointed to
visit and search the premises of the defendant with
certain conditions as mentioned therein.
6. Pertinently, in pursuant to relevant order, Ld. Local
Commissioner, so appointed by the Court, executed the
commission and filed detailed report on record, according to
which, the impugned goods bearing the impugned trade
mark were found from the premises of the defendant, which
were seized and handed over to the defendant on
superdarinama.
7. After being served with the summons of the suit and notice
of accompanying applications in terms of relevant order, the
defendant company put its appearance through counsel
namely Sh. Kundan Roy, Advocate.
8. It may be noted that on account of outbreak of Covid-19, the
matter got adjourned en bloc in view of direction of Hon’ble
Delhi High Court and the then Ld. Principal District &
Sessions Judge, New Delhi District, Patiala House Courts,
New Delhi and subsequently, was taken up through virtual
mode and/or hybrid mode till restoration of normalcy.
9. At this juncture, it may also be noted that the present case
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was received by this Court on 20-10-2022, as already
noted above in Para no.2, and an application under
Order VI Rule 17 CPC was moved on behalf of the
plaintiff seeking amendment of the suit, thereby enhancing
specified value to be above Rs.3 lacs, so as to bring the
present suit within the ambit of the Commercial Courts
Act, 2015, in view of the directions of Hon’ble Delhi High
Court in case of Vishal Pipes Limited (supra), which was
allowed vide order dated 13-01-2023, passed by Ld.
Predecessor of this Court, thereby directing the defendant
to file written statement to the amended plaint within 30
days from the date of said order. The amended written
statement filed by the defendant to the amended plaint was
directed to be taken on record, after condoning delay
subject to cost of ₹5000/-, vide order dated 13-07-2023
passed by Ld. Predecessor of this Court.
10. In its written statement, the defendant has taken various
preliminary objections by way of preliminary submission,
inter alia, that:-
10.1 The present suit for permanent injunction is nothing
but an attempt by the plaintiff to completely wreck
the business of the defendant.
10.2 There is neither any infringement, nor passing off by
the defendant of the product or trademark of the
plaintiff “ESGIPYRIN” as has been stated by the
plaintiff. The defendant has denied allegation of
reproduction or any type of similarity or deception
or causing confusion in the trademark, color
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scheme, get-up, arrangement of words etc.10.3 No ground whatsoever exists for this Court to
indulge itself what to say of granting the reliefs as
prayed in the suit, since the defendant’s trademark
“SGS PYRIN” is designed in a completely different
and distinctive manner as compared to the plaintiff’s
trademark “ESGIPYRIN” either structurally,
visually or phonetically, hence the suit is liable to be
dismissed out rightly.
11. Under the heading ‘Brief Facts’, the defendant has stated
as under:-
11.1 The defendant is a company incorporated under the
Companies Act and having its registered office at
Bhagirath Place, New Delhi-110006 and right from
its incorporation, it is engaged in the business of
manufacturing, marketing and trading of
“Pharmaceutical, Medicinal and Veterinary
preparations & Substances in different forms such as
Tablets, Capsules, Ointments, Syrups, Skin Creams
etc.” and is known for its quality in its field.
11.2 The director of the defendant company, Mr. Vipin
Gupta has been duly authorized by it, vide Board
Resolution dated 31/01/2019 to sign and verify the
reply, to file documents, to sign vakalatnama, to
depose before the Court and to do all such other
act(s) as may be necessary in the present suit.
11.3 The defendant had been manufacturing and
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marketing its goods/products under trademark “SGS
PYRIN”, which is stated to be self coined, new,
distinctive in nature as well as in character, in good
faith and without any malafide intention and further
without intention of infringement of any pre-existing
trade mark or passing off their goods as that of
plaintiff or of any manufacturer in the field of
pharmaceutical or medical filed.
11.4 The products of the defendant are prima facie
distinctive and highly exclusive owned by it. The
defendant has claimed to be one of the leading
pharmaceutical and medical products manufacturing
and supply company, which has acclaimed the
reputation among the pharmaceutical market and is
widely known for its superior quality product and
fair dealing.
11.5 It is stated that the defendant company has got the
license bearing No.20 of 2001 to start production
and sale of its products under trademark “SGS
PYRIN” from Uttar Pradesh Drug Licensing-cum-
Controlling Authority and since then the defendant
company is marketing and trading its
goods/products in the market continuously and in
this way, it has acquired tremendous goodwill and
reputation in the commercial market.
11.6 The defendant’s trademark “SGS PYRIN” belongs
to the category of well-known, well-reputed and
famous trademark. It is instantly identifiable and
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recognizable by both the members of trade and
public as being exclusively associated with the
goods and business of the defendant. The trademark
and trade name “SGS PYRIN” acts as a course
identifier in as much as it stands for the high
standards and superior quality of goods/products
manufactured by the defendant and sold over the
whole of India or elsewhere.
11.7 It is stated that the subject trademark of the
defendant i.e. “SGS PYRIN” is self coined, new,
distinctive in nature as well as in character; it is
reiterated that there has been no
misrepresentation/imitation by defendant in using
the trademark is question as the trademark in
question is arbitrary and inherently distinct
trademark/logo/device. The defendant has adopted
and taken the mark “SGS PYRIN” as a whole with
device/label; so the usage word like “SGS” or
“PYRIN” does not give any right to the plaintiff to
prevent third parties from using any mark that
include the said word like the mark “SGS PYRIN”.
The plaintiff has conveniently overlooked the
cardinal principle of trademark law that the mark
must be taken as a whole for the purposes of
comparison and letter-by-letter or word-by-word
comparison of mark falls outside the scope and
ambit of the Trademark law.
11.8 The degree of distinction between the rival products,
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its composition, marks, get up, lay out and
arrangement of features clearly shows that there is
no similarity between the goods of the defendant to
the goods of the plaintiff.
12. Likewise, by way of ‘Para-Wise Reply On Merits’, while
denying and controverting the averments made in the
corresponding paras of the plaint, the defendant has stated,
inter alia, that:-
12.1 The defendant is true and bonafide owner of the
trademark “SGS PYRIN”, which was created and
adopted in uniquely and in stylized form including
its color combination, get up, writing pattern etc.,
which are purportedly totally different from the
plaintiff’s mark “ESGIPYRIN”; and hence, there is
no scope for confusion or deception, visually or
phonetically, and will not cause or lead to any
deception or confusion in the mind of the user
public.
12.2 The defendant’s trademark i.e. “SGS PYRIN” is
designed in a completely different and distinctive
manner as compared to the plaintiff’s mark
“ESGIPYRIN” and there is no resemblance between
the word/logos of the defendant’s mark and the
plaintiff’s trademark as alleged in the present suit for
permanent injunction. Thus, it is stated that said
impugned mark is distinctive in nature as well as in
character and is neither identical, nor similar or
deceptively similar to the plaintiff’s mark
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“ESGIPYRIN” or any trade mark/s and thus, the
defendant is entitled to use it without any hindrance
and is entitled to protection in any court of Law.
12.3 There is no dishonest adoption of any kind of any
trademark or any artwork by the defendant of any
one including the plaintiff. The impugned mark is
combination of two words i.e. “SGS” and “PYRIN”
and the prefix word i.e. “SGS” taken from the
corporate name of the defendant company.
12.4 It is further stated that there are so many trademarks
registered with the Registrar of trademark prior and
after to the plaintiff mark “ESGIPYRIN” with the
prefix word “ESGI” as well as suffix word “PYRIN”
and they didn’t raise any objection against the
plaintiff and/or the plaintiff also didn’t raise any
objection to them. The details of registered
trademark(s) and/or pending trademark(s) with the
Registrar of Trademarks Records in the same Class
05 is mark “ESGIRAN”, vide Trademark
Application No. 346783; mark “ESGIFEN”, vide
Trademark Application No. 380366; mark
“ESGIPYRIN-N”, vide Trademark Application No.
925321; mark “ESGIC”, vide Trademark
Application No. 1069190; mark “OXYPYRIN”,
vide Trademark Application No. 380382; mark
“CEFTUM”, vide Application No. 455064; mark
“H-PYRINE”, vide Trademark Application No.
417359; mark “APYRIN”, vide Trademark
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Application No. 510507; mark “NOPYRIN”, vide
Trademark Application No. 1004670; mark
“MEPYRIN”, vide Trademark Application No.
1104283; mark “PYRIN”, vide Trademark
Application No. 1128780; mark “EASIPYRIN”,
vide Trademark Application No. 1571504; mark
“EAZYPYRINE”, vide Trademark Application No.
1766666.
12.5 It is stated that the defendant is a licensed
pharmaceutical company and is in the business for
more than seventeen (17) years and its reputation in
the market is well known and it is a renowned
company. It is stated that the subject trade mark
“SGS PYRIN” is a novel trademark, specially
created by the defendant with distinguishing features
and is capable of distinguishing it’s goods and
services to all the goods and services of any other
person/s, hence, completely new with distinctive
characters and inherently capable of distinguishing
in character for the goods in it’s Class. It is further
stated that since creation and adoption of aforesaid
mark by the defendant, it has put lots of efforts to
establishing its brand in commercial market through
invested huge amount of money, time, labour,
marketing, publishing etc. and when the public
purchase the goods of the defendant from the
market, they easily understand that the said products
are from the defendant, because today’s people are
very intelligent and aware, and the reason for
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differentiate between both the trademarks is that
both trademarks are phonetically different from each
other. The defendant’s said trademark on account of
its continuous and voluminous use since over two
decades, has acquired factual distinctiveness and
secondary significance meaning/denoting the goods
and business of the defendant and defendant’s
business alone and thus, the defendant’s has a good
reach to the members of the trade and public.
12.6 It is stated that the plaintiff did not provide, even a
shred of evidence or factual data of any kind in
support of its case and thus, it has miserably failed
to establish, either by way of averments or evidence,
that their mark is well-known in accordance with the
statutory definition. It is further submitted that the
defendant has been using the mark since 2001 and
marketing and trading the pharmaceutical
goods/products in the market continuously and in
this way, it has acquired tremendous goodwill and
reputation in the commercial market. It is further
stated that the defendant has a presence in whole of
India. In fact, it is the defendant’s mark which is
famous and well-known and should be given due
recognition; hence, the plaintiff’s allegation that the
use of the impugned mark SGS PYRING by the
defendant, is violation of plaintiff’s statutory and
common law right, is completely false and wrong
interpretation of law.
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12.7 Thus, it is claimed that the said impugned mark of
the defendant “SGS PYRIN” is structurally, visually
and phonetically different to the mark of the
plaintiff, hence, the plaintiff has no right to restrain
the defendant from using the impugned trademark or
to oppose for restraining it from using the impugned
mark in any Court.
13. Plaintiff filed amended replication, thereby denying and
controverting the averments made in the amended written
statement, while affirming and reiterating the averments
made in the amended plaint.
ISSUES
14. From pleadings of the parties, the following issues were
framed, vide order dated 11-12-2023, passed by Ld.
Predecessor of this Court:-
14.1 Whether plaintiff is entitled for decree of permanent
injunction for restraining defendant from
manufacturing, trading, selling and offering for sale,
advertising, directly or indirectly, medicinal and
pharmaceutical preparations under the impugned
trade mark/ label ‘ESGIPYRIN’, as prayed for? OPP.
14.2 Whether the defendant is guilty of passing off
plaintiff’s trade mark// label ‘ESGIPYRIN’, as
prayed for? OPP.
14.3 Whether the defendant is guilty of infringing copy
right of plaintiff in trade mark/ label ‘ESGIPYRIN’,
CS (COMM.)/59/2023 Page 23 of 66
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as prayed for? OPP.
14.4 Whether the plaintiff is entitled to decree of delivery
up of impugned goods, dies, blocks, labels and any
other printed matter bearing the impugned mark
and/or the impugned packaging containing the mark
SGS PYRIN? OPP.
14.5 Whether the plaintiff is entitled to rendition of
accounts of profits earned by defendant by their
impugned illegal trade activities, as prayed for? If
so, for what amount? OPP.
14.6 Relief.
PLAINTIFF’S EVIDENCE
15. In support of its case, the plaintiff company has examined
only one witness i.e. its constituted attorney namely
Ms. Tejal Mundkur as PW1. She led examination-in-chief
by way of affidavit [Ex.PW1/A] and deposed in terms of
the facts of the plaint and has relied upon the following
documents:-
Srl. Document/Particulars Exhibit(s)
No.
1. Copy of Power of attorney dated Ex.PW1/1
05.01.2024.
2. Copy of Certificate issued by Ex.PW1/2
Trademark Registry (LPC).
CS (COMM.)/59/2023 Page 24 of 66
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Srl. Document/Particulars Exhibit(s)
No.
3. Copy of amalgamation order dated Mark A
27.03.1981.
4. Copy of Deed of Assignment dated Mark B
03.10.1997.
5. Order dated 27.04.2004. Mark C
6. Copy of Certificate of change of Mark D
name of Nicholas Piramal India
Limited to Piramal Healthcare
Limited.
7. Copy of Deed of Assignment dated Mark E
08.09.2010.
8. Copy of Certificate dated Ex.PW1/8
16.03.2012.
9. Certificate of an independent Ex.PW1/9
Chartered Accountants firm.
10. Copies of sales invoices. Ex.PW1/10
(Colly)
11. Copies of promotional material Ex.PW1/11
including brochure pertaining to the (Copy)
said ESGIPYRIN mark of the
plaintiff.
12. Copy of the competing photographs Mark F
of the packaging of the plaintiff.
CS (COMM.)/59/2023 Page 25 of 66
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Srl. Document/Particulars Exhibit(s)
No.
13. Internet Extracts showing of Ex.PW1/13
defendant’s business activity.
14. Affidavit under Section 65B of Ex.PW1/14
Indian Evidence Act.
15. Internet downloads showing Ex.PW1/15
various brands in relation to
medicines containing ‘Diclofenac
sodium and paracetamol’.
16. Copy of order dated 01.08.2014 of Mark G
High Court of Delhi.
17. Report of Local Commissioner. Ex.PW1/17
18. Copies of orders of Hon’ble Delhi Mark H
High Court against third parties. (Colly)
19. Copies of orders of Hon’ble Delhi Mark J
High Court against third parties. (Colly)
20. Copy of Notice of Trademark Ex.PW1/20
Caution for the plaintiff’s mark.
16. It may be noted here that since originals of the documents,
mentioned as Ex.PW1/3, Ex.PW1/4, Ex.PW1/5,
Ex.PW1/6, Ex.PW1/7, Ex.PW1/12, Ex.PW1/16,
Ex.PW1/18 and Ex.PW1/19 in Ex. PW1/A, were not
produced, they were de-exhibited and consequently, were
marked as Marks A, B, C, D, E, F, G, H and J respectively,
CS (COMM.)/59/2023 Page 26 of 66
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while recording examination-in-chief of the witness of
plaintiff.
17. It may be noted that after recording examination-in-chief
of PW1, while exercising the power conferred under Order
XVA Rule 6(o) and (p) CPC, the Court had directed that
the evidence shall be recorded by Ld. Local
Commissioner, appointed by this Court on commission
basis, vide order dated 04-03-2024. Accordingly, both the
parties were directed to lead their respective evidence
before Ld. Local Commissioner, in terms of the timeline/
scheduled framed therein. In pursuant thereto,
both the parties led their respective evidence before
Ld. Local Commissioner.
18. It may also be noted that in the meanwhile, on request
made on behalf of both the sides, the matter was
referred to Delhi Mediation Centre, PHC, New Delhi for
exploring possibility of settlement between the parties,
however, it was reported that the matter could not be
settled between the parties and hence, it was sent back,
as per proceedings dated 08-04-2024 of said
Delhi Mediation Centre.
19. PW-1 has been cross-examined at length.
The relevant portion of her testimony shall be discussed
and referred hereinafter while giving issue-wise findings
hereunder.
20. PE was closed on 01-07-2024.
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DEFENDANT’S EVIDENCE
21. The defendant’s evidence was led, during which, the
defendant has examined Sh. Nimish Gupta, as DW1. He
also led his examination-in-chief by way of
affidavit (Ex.DW1/A) and deposed in terms of the
averments made in the written statement. He relied upon
the following two documents:-
Srl. Document/Particulars Exhibit(s)
No.
1. Certified True Copy of Board Ex.DW1/1
Resolution dated 31.01.2019
2. Copy of Drug Licence bearing Ex.DW1/2
No.20/2001
22. It may be noted that Ld. Counsel of plaintiff objected to
the proving of aforesaid documents by DW1, while stating
that copy of Board Resolution has been self certified by
the witness and there was no proof that any such Board
Resolution was issued in his favour, as also on the ground
that it does not bear any stamp of the defendant company.
As regards copy of drug licence, Ld. Counsel of plaintiff
objected to it on the ground of mode of proof, as also on
the ground that drug license no.20/2001 mentioned in
paragraph 6, does not find mention in the photocopy of
said document.
23. DW1 has been cross-examined at length. The relevant
portion of his testimony shall be discussed and
referred hereinafter while giving issue-wise findings
CS (COMM.)/59/2023 Page 28 of 66
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hereunder.
24. Thereafter, DE was closed on 29-7-2024.
25. I have already heard Ld. Counsels for the parties. I have
also gone through the material available on record,
including the written submissions filed by both the sides
and the authorities cited at the Bar.
ISSUE-WISE FINDINGS:
26. My issue-wise findings are as under:-
ISSUE NOS.1, 2 & 3
27. Firstly, I shall take up the issue nos.1, 2 and 3, as they are
interconnected with each other and can be decided
together. Same are reproduced here as under: –
Issue no. (i) – Whether plaintiff is entitled for decree
of permanent injunction for restraining defendant
from manufacturing, trading, selling and offering for
sale, advertising, directly or indirectly, medicinal
and pharmaceutical preparations under the impugned
trade mark/ label ‘ESGIPYRIN’, as prayed for? OPP.
Issue no. (ii) – Whether the defendant is guilty of
passing off plaintiff’s trade mark// label
‘ESGIPYRIN’, as prayed for? OPP.
Issue no. (iii) – Whether the defendant is guilty of
infringing copy right of plaintiff in trade mark/ label
‘ESGIPYRIN’, as prayed for? OPP.
21. The onus to prove the aforesaid issues was placed upon the
plaintiff. As already noted above, in order to prove its case,
the plaintiff has examined sole witness as PW1, who has
deposed on the identical lines of the plaint, by way of her
affidavit in evidence (Ex.PW1/A).
CS (COMM.)/59/2023 Page 29 of 66
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PLAINTIFF’S ARGUMENTS:
22. After referring to the pleadings of the parties, evidence,
oral as well as documentary, led by both the sides and the
documents proved during the course of trial, Ld. Counsel
of plaintiff advanced the following arguments:-
22.1 The plaintiff through its predecessors-in-titles,
has coined, adopted and has been openly,
commercially, continuously and without
interruption of others, using the said trade mark
since 1974 and thus, the plaintiff is prior
adopter and user of the said trade mark.
22.2 The said trade mark ‘ESGIPYRIN’ is registered
vide No.293710 in class 5 in respect of the
medicinal and pharmaceutical preparation as of
22nd January 1974 and by virtue of further
Assignment Agreement dated September 08,
2010, Piramal Healthcare Limited had assigned
the said Trademark – ‘ESGIPYRIN’ to the
plaintiff.
22.3 The art works involved in the trademark/ trade
dress is original artistic works and the plaintiff
holds copyright therein.
22.4 The plaintiff spends huge amount of money in
advertising and promotion of its products and
said mark enjoys a huge goodwill and
reputation in business community and public in
general in India and across the world.
CS (COMM.)/59/2023 Page 30 of 66
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22.5 Ld. Local Commissioner, while executing the
commission in terms of the orders passed by this
Court, had found certain infringed goods from the
premises of the defendant, which establishes that
the defendant was involved in the illegal activities.
22.6 Local Commissioner’s Report can be read in
evidence in terms of Order XXVI Rule 10(2) CPC
and for this purpose, he also relied upon
judgment of our own Hon’ble High Court in case
titled as “M L Brother LLP v. Mahesh Kumar
Bhrualal Tanna” [CS (COMM) 126/2022, decided
on 12th May, 2022].
22.7 The plaintiff’s product ‘ESGIPYRIN’ is commonly
known as “Peeli Goli” in Hindi (meaning “yellow
tablet”) by uneducated/ unaware masses consuming
or referring to this product. The defendant, by way
of their imitation of yellow blister strips and tablets
of identical colour, shape and size, is encashing
upon the reputation and goodwill earned by
ESGIPYRIN product. The use of an identical
packaging, colour scheme and get up in respect of
products bearing the deceptively similar mark SGS
PYRIN by the defendant itself establishes their
malafide intention to ride piggy back on the
goodwill and reputation earned by the plaintiff on
its product bearing the registered mark
ESGIPYRIN and therefore, he urged that the suit
may be decreed in favour of the plaintiff and
CS (COMM.)/59/2023 Page 31 of 66
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against the defendant, thereby restraining the
defendant and all others acting for and on their
behalf from using said impugned trademark/ label.
22.8 Despite cross-examination at length, the
defendant could not impeach the testimony of
PW-1 and therefore, the plaintiff company is
entitled to the decree, as prayed for.
22.9 As regards defence of the defendant, it is
vehemently argued that the defendant has failed
to prove that DW1 was duly authorized by way
of a validly executed Power of Attorney, and
the Board Resolution dated 31.01.2019
(Ex.DW1/1) does not bear stamp of the
defendant company and has been self certified
by the witness himself and there is no proof that
any such Board Resolution was ever passed in
his favour. While referring to the relevant
portion of cross-examination of DW1, it is
pointed out that the said Board Resolution was
passed in Board Meeting held on 31-01-2019,
whereas, the DW1 has certified the same as on
17.01.2019.
22.10 It is vehemently argued that the defendant is
habitual infringer, as several cases have been
instituted against it, which is evident from
Ex.DW1/P1 (Colly.). While referring to the copy of
order dated 03-05-2021, passed by Hon’ble Delhi
High Court in case titled ‘Alkem Laboratories Ltd.
CS (COMM.)/59/2023 Page 32 of 66
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v. SGS Pharmaceutical Pvt. Ltd’ bearing CS
(COMM.) /213/2021, which is part of Ex.DW1/P1
(Colly.), Ld. Counsel of plaintiff has argued that in
the cited case, which was filed against the
defendant herein, it has been observed by Hon’ble
High Court that a compromise had been arrived at
between the parties, whereby, the defendant therein
has acknowledged and undertaken that they will
not use the impugned trade mark
DICLOMOLEC-C or any variation thereof which
is identical or deceptively similar to the plaintiff’s
registered trade mark DICLOMOL, so as to amount
to infringement of the plaintiff’s registered trade
mark, and passing off. In view thereof, Hon’ble
Delhi High Court disposed off the above suit in
terms of said compromise.
22.11 Likewise, in the other order dated 03-05-2021, in
case titled as Alkem Laboratories Ltd. v. SGS
Pharmaceutical Pvt. Ltd., bearing CS
(COMM.)/213/2012, while dealing with an
application under Order XXXIX Rules 1 & 2 CPC,
the Hon’ble Delhi High Court passed an ad-interim
injunction in favour of plaintiff and against the
defendant herein, thereby restraining it from using
the impugned trade mark/ blister strip SAMU or
any other mark that is identical or deceptively
similar to the trade mark blister strip of the plaintiff
SUMO till further orders.
CS (COMM.)/59/2023 Page 33 of 66
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22.12 Thus, it is vehemently argued that the defendant is
in the habit of copying well-established trade mark/
blister strip of other parties in order to take undue
advantage of their established good will and
reputation.
22.13 It is further argued that the impugned trade mark/
blister strip SGS PYRING is identical and/or
phonetically, visually, confusingly and deceptively
similar to the well established and registered trade
mark ESGIPYRIN in all material particulars, such
as, layout design, colour scheme, get up and
lettering style etc., and therefore, the
defendant may be restrained from using said
impugned trade mark/ blister strip in respect of the
impugned drugs.
23. In support of his contentions, Ld. Counsel of plaintiff also
relied upon the following judgments:-
23.1 ‘Durgadutta v. Navratana’, reported as AIR 1965
SC 980;
23.2 ‘Cadila Health Care Ltd. v. Cadila Pharmaceuticals
Ltd.‘, reported as AIR 2001 SC 1952;
23.3 ‘Hindustan Pencils Pvt. Ltd. v. India Stationery
Products Co. & Ors.‘ reported as (1989) ILR 1
Delhi 115;
23.4 ‘Himalaya Wellness Company & Ors. v. Abony
Healthcare Limited & Ors.‘ reported as
MANU/DE/7129/2023;
CS (COMM.)/59/2023 Page 34 of 66
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23.5 ‘Midas Hygiene Industries (P)Ltd. & Anr. v. Sudhir
Bhatia & Ors.‘ reported as (2004) 3 SCC 90;
23.6 ‘Colgate Palmolive Company & Ors. v. Anchor
Health and Beauty Care Pvt. Ltd.‘ reported
MANU/DE/1000/2003;
23.7 ‘G. D. Pharmaceuticals Pvt. Ltd. v. M/s Cento
Products (India)’ decided on 07-08-2024 having
neutral citation 2024:DHC: 6224;
23.8 ‘Deere & Company & Anr. v. Mr. Malkit Singh &
Ors.‘ decided on 23-04-2018, having neutral
citation: 2008:DHC: 2637;
23.9 ‘Deere & Company & Anr. v. S. Harcharan Singh
& Anr.‘ decided on 05-03-2015, having neutral
citation: 2015: DHC: 2239;
23.10 ‘Laxmikant Patel v. Chetanbhat Shah‘, reported as
AIR 2002 SC 275;
23.11 ‘B. K. Engineering Co. v. Ubhi Enterprises & Ors.’
reported as AIR1985 Delhi2010;
23.12 Abbott Healthcare Pvt. Ltd. v. M/s Fizark
Healthcare & Anr.’ decided on 28-02-2017;
23.13 ‘Abbott Healthcare Pvt. Ltd. v. Uniplus Biotech
Pvt. Ltd. & Ors.‘ bearing CS (OS) 3632/2014,
decided on 25-10-2017;
23.14 ‘Corn Products Refining Co. v. Shangrila Food
Products Ltd.‘ reported as MANU/SC/0115/1959;
and
23.15 ‘Glaxosmithkline Pharmaceuticals Ltd. v. Horizon
CS (COMM.)/59/2023 Page 35 of 66
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Bioceuticals Pvt. Ltd. & Ors.‘ reported as
MANU/DE/2320/2023.
DEFENDANT’S ARGUMENTS:
24. While repelling the aforesaid arguments advanced on
behalf of the plaintiff and after referring to the evidence
available on record, Ld. Counsel of defendant advanced
the following arguments:-
24.1 The defendant company has got the license
bearing no. 20 of 2001 [Ex.DW1/2] to start
production and sale of its product under
trademark “SGS PYRIN” from Uttar Pradesh
Drug Licensing-cum-Controlling Authority and
since then the defendant company is marketing
and trading its goods/products in the market
under trademark “SGS PYRIN”.
24.2 The impugned mark “SGS PYRIN” is a
combination of two words i.e. “SGS” and
“PYRIN” and prefix word “SGS” is taken from
the corporate name of the defendant company i.e.
SGS PHARMACEUTICAL LTD.; so the usage
word like “SGS” or “PYRIN” does not give any
right to the plaintiff to prevent third parties from
using any marks that include the said word like
the mark “SGS PYRIN”
24.3 The impugned goods/products are in oval shape,
whereas, the said goods/products of the plaintiff
are in round shape. As regards colour scheme,
CS (COMM.)/59/2023 Page 36 of 66
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the colour of strip packaging of defendant’s
product under mark “SGS PYRIN” is in sunset
yellow & quinoline yellow. The composition of
the impugned drug “SGS PYRIN” is Paracetamol
500 mg, and Diclofenac Sodium 50mg.
24.4 The goods of the plaintiff and the defendant
comes under the category of Schedule ‘H’ drug as
mentioned in Drug & Cosmetics Rules, 1955 and
hence, same can only be sold on prescription of a
Doctor, and also mentioned on each and every
packet, hence, there is no likelihood of confusion
amongst users, who are mostly educated persons
of the society, and thus, no case is made out for
passing off the plaintiff’s trademark by the
defendant.
24.5 The impugned mark i.e. “SGS PYRING” is
specially created and adopted by the defendant in
stylized form, which is completely different
either visually, structurally or phonetically to the
plaintiff’s mark “ESGIPYRIN” and thus, there is
no similarity between the competing marks and
both marks are easily distinguishable.
24.6 There are so many trademarks, such as
"ESGIRAN "ESGIFEN" "ESGIPYRIN-N"
"ESGIC" "OXYPYRIN", registered with the
Registrar of Trademark prior to and after the
plaintiff’s mark “ESGIPYRIN” with the prefix
word “ESGI” as well as suffix word “PYRIN”
CS (COMM.)/59/2023 Page 37 of 66
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and yet the plaintiff didn’t raise any objection
against them, nor the third parties raise any
objection against the plaintiff.
24.7 The word “PYRIN” is a common word, which is
used in pharmaceutical field, so usage or
registration of word like ‘PYRIN’ does not give
any right to the plaintiff to prevent third parties
from using any marks that include the said word
like the mark SGS PYRIN.
24.8 In view of above, it is contended that the
impugned mark of the defendant i.e. “SGS
PYRIN” is structurally, visually and phonetically
different from the mark of the plaintiff,
hence, the plaintiff has no right to restrain
the defendant from using the impugned
trademark.
25. In support of his aforesaid submissions, Ld. Counsel of
defendant has relied upon the following judgments:-
25.1 “Macleods Pharmaceuticals Ltd. v. Swisskem
Healthcare And Anr.” reported as
MANU/MH/1771/2019, decided on 02-07-2019;
and
25.2 “Sun Pharmaceutical Laboratories Ltd. v. Hetero
Healthcare Ltd. & Ors.” reported as
MANU/DE/3092/2022;
CS (COMM.)/59/2023 Page 38 of 66
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ANALYSIS & FINDINGS
26. Before dealing with rival submissions made on behalf of
both the sides, lets examine law on the subject. Hon’ble
Supreme Court in case titled as “Renaissance Hotel
Holdings Inc. v. B. Vijaya Sai & Ors” , reported as
MANU/SC/0066/2022, has laid down law with respect to
infringement of trade mark, to quote:-
43. The legislative scheme is clear that when the mark of
the defendant is identical with the registered trade mark of
the plaintiff and the goods or services covered are similar
to the ones covered by such registered trade mark, it may
be necessary to prove that it is likely to cause confusion on
the part of the public, or which is likely to have an
association with the registered trade mark. Similarly, when
the trade mark of the plaintiff is similar to the registered
trade mark of the defendant and the goods or services
covered by such registered trade mark are identical or
similar to the goods or services covered by such registered
trade mark, it may again be necessary to establish that it is
likely to cause confusion on the part of the public
However, when the trade mark of the defendant is
identical with the registered trade mark of the plaintiff and
that the goods or services of the defendant are identical
with the goods or services covered by registered trade
mark, the Court shall presume that is likely to cause
confusion on the part of the public.
45. It could thus be seen that this Court has pointed out the
distinction between the causes of action and right to relief
in suits for passing off and for infringement of registered
trade mark. It has been held that the essentials of a passing
off action with those in respect of an action complaining
of an infringement of a registered trade-mark, cannot be
equated. It has been held that though an action for passing
off is a Common Law remedy being an action for deceit,
that is, a passing off by a person of his own goods as those
of another; the action for infringement is a statutory right
conferred on the registered proprietor of registered trade
mark for the vindication of the exclusive rights to the use
of the trade mark in relation to those goods. The use by the
defendant of the trademark of the plaintiff is a sine qua
non in the case of an action for infringement. It has further
been held that if the essential features of the trade mark of
the plaintiff have been adopted by the defendant, the fact
CS (COMM.)/59/2023 Page 39 of 66
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that the get-up, packing and other writing or marks on the
goods or on the packets in which he offers his goods for
sale show marked differences, or indicate clearly a trade
origin different from that of the registered proprietor of the
mark, would be immaterial in case of infringement of the
trade mark, whereas in the case of a passing off, the
defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from
those of the plaintiff.
47. It could thus be seen that this Court again reiterated
that the question to be asked in an infringement action is
as to whether the defendant is using a mark which is same
as, or which, is a colourable imitation of the plaintiff’s
registered trade mark. It has further been held that though
the get up of the defendant’s goods may be so different
from the plaintiff’s goods and the prices may also be so
different that there would be no probability of deception of
the public, nevertheless even in such cases, i.e. in an
infringement action, an injunction would be issued as soon
as it is proved that defendant is improperly using the
Plaintiff’s mark. It has been reiterated that no case of
actual deception nor any actual damage needs to be proved
in such cases This Court has further held that though two
actions are closely similar in some respects, in an action
for infringement, where the defendant’s trade mark is
identical with the Plaintiff’s trade mark, the Court will not
enquire whether the infringement in such as is likely to
deceive or cause confusion.
28. Further, our own Hon’ble High Court in the case titled as
‘Shaw Wallace & Co. Ltd. & Anr. v. Superior Industries
Ltd‘. 2003 (27) PTC 63 (Del) has laid down the principle
as to how infringement of trade mark is to be seen,
to quote:-
12. It is well settled that in an action for alleged
infringement of a registered trade mark, if the impugned
marked used by the defendant is identical with the
registered trade mark of the plaintiffs, no further questions
have been to be addressed and it has to be held that there
is indeed an infringement. If the mark is not identical, the
matter has to be further considered and it has to be seen
whether the mark of the defendant is deceptively similar to
that of the plaintiff. Deceptive similarity means that the
mark is likely to deceive or cause confusion in relation to
goods in respect of which the plaintiff got its mark
CS (COMM.)/59/2023 Page 40 of 66
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registered. For the purpose of this comparison, the two
marks have to be compared, not by placing them side by
side, but by asking the question whether having due regard
to relevant surrounding circumstances, defendant’s mark is
similar to that of the plaintiffs, as would be remembered
by persons possessed of an average memory with its usual
imperfections. On the touchstone of this query, it is to be
determined whether the mark of the defendant is likely to
deceive or cause confusion. The sequetur to the aforesaid
preposition of law, is that, in an action of infringement, for
the success by the plaintiff, he need not prove that the
whole of his registered trade mark has been copied, but he
can also succeed, if, he shows that the mark used by the
defendant is similar to the mark of the plaintiff, as it would
be numbered by persons possessed of an average memory
with its usual imperfection or with its usual imperfection
or that its essential particulars or the distinguishing or
essential feature has been copied (ILR 197 (II) Delhi 225
Jagan Nath Prem Nath v. Bhartiya Dhoop Karvalaya
Para-7).
29. In view of above legal position, lets examine the facts of
the present case.
30. In the case in hand, the plaintiff has relied upon and has
filed copy of Legal Proceeding Certificate pertaining to its
registered trademark ‘ESGIPYRIN’, which is duly proved
by PW-1 as Ex.PW1/2, according to which, it is shown
that said trademark is registered as a ‘word’ mark in class
5, vide No.293710 in plaintiff’s name. PW-1 has also
referred to copy of Assignment Deed dated September 8,
2010 as Mark E, whereby the ‘Piramal Healthcare
Limited’ had assigned the said trademark to the plaintiff.
Although, said document was marked during the testimony
of PW1 for want of its original being produced by the
witness, nevertheless, the defendant did not put any
question disputing genuineness and authenticity of the said
document, during cross-examination of said witness. Same
reasoning equally applies to other documents i.e. Copy of
CS (COMM.)/59/2023 Page 41 of 66
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amalgamation order dated 27-03-1981 (Mark A), Copy of
Assignment Deed dated 03-10-1997 (Mark B) and Copy of
Certificate regarding Change of name of Nicholas Piramal
(India) Ltd. to Piramal Healthcare Ltd. (Mark D). Thus,
this Court is of the considered view that said documents
having remained unchallenged and uncontroverted from
the side of the defendant, can be looked into by the Court,
it being relevant for the effective and proper adjudication
of the subject matter of the present case. Further, during
the course of final arguments, counsel of plaintiff has
stated that the registration of said trademark stands
renewed and is valid till date. According to
above-mentioned documents, it is duly shown that said
trademark ‘ESGIPYRIN’ is registered in favour of the
plaintiff and/or its predecessors since 1974.
31. Thus, it is duly established on record that the said trade-
mark ESGIPYRIN is registered under the provisions of
Trade Mark Act, 1999, which is stated to be valid and
subsisting as on date in favour of the plaintiff in class 5.
27. PW1, in her cross-examination, has stated that Fresh
Power of Attorney dated 05.01.2024 (Ex.PW-1/1), as
referred to in Para-2 of her affidavit (Ex.PW-1/A), is
placed between pages 17 & 19 and is mentioned as
renewed Power of Attorney in the relevant Index dated
19.02.2024 at serial No.2 thereof and apart from that, at
the time of institution of the present suit, Power of
Attorney dated 20.01.2016 had also been filed, which is
between pages 179 to 181 and is mentioned at serial No.21
CS (COMM.)/59/2023 Page 42 of 66
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of the list of documents dated 05.09.2019 filed by the
plaintiff. She stated that she had also brought with her on
the date of her cross-examination, three original Powers of
Attorney, one dated 24.01.2018, the second dated
24.07.2021 and the third dated 05.01.2024, which are
original of the aforesaid Ex.PW-1/1.Copies of the said
attorneys dated 24.01.2018 and other dated 24.07.2021
were also supplied to Ld. Counsel of the defendant and
their photocopies were collectively marked as
Ex.PW-1/1A (Colly.). She further stated that the Power of
Attorney dated 20.01.2016, which had been filed and
which is between pages 179 to 181 and is mentioned at
serial No.21 of the list of documents dated 05.09.2019
filed by the Plaintiff, had been executed by Mr. Durgesh
Paliwal, Company Secretary, which is Ex.PW-1/1B (Pages
179-181). Mr. Durgesh Paliwal, Company Secretary was
authorized to execute the said Power of Attorney
(Ex.PW-1/1B). She had brought with her extracts of the
Board Resolutions dated 24.01.2018 and 05.01.2024 duly
certified by the Company Secretary and copies thereof
were collectively marked as Ex.PW-1/1C.(Their copies
were also duly supplied to the defendant side). She
testified that she could bring copies of the Board
Resolutions dated 15.01.2016 and 20.07.2021.
28. In response to the question as to whether, she could bring
the original Minutes Book containing all the four aforesaid
Resolutions (which was objected to by Ld. Counsel for the
plaintiff on the ground that the question was not relevant to
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the present dispute and no such issue was framed with
regard thereto in the absence of any pleading of the
defendant in this regard), PW1 stated that she could not
bring the original Minutes Book.
29. In response to question put to her during her cross-
examination as to how the plaintiff company invented the
Trademark “ESGIPYRIN”, she stated that “ESGIPYRIN”
was invented by the plaintiff company’s predecessor in title
and the first Proprietor thereof, M/s Suhrid Geigy Limited
and “ESGIPYRIN” is a completely coined word, which
has no relation to the active ingredients ” Diclofenac
Sodium and Paracetamol Preparations”. In response to
further question put to PW1 during cross-examination as to
how did the mark “ESGIPYRIN” come to the plaintiff
company, she stated that it came to the plaintiff company
by virtue of Ex.PW1/3 to Ex.PW1/8 [It should be Mark A,
B, C, D, E and Ex.PW1/8]. She stated that there is an
overall similarity between “ESGIPYRIN”, which is the
Trademark of the plaintiff and the product ‘SGS PYRIN’ of
the defendant and this has been clearly mentioned in the
affidavit. “ESGIPYRIN” and ‘SGS PYRIN’ have the same
use and also their active ingredients are also the same.
Also their packaging, designs, colours, sizes and shape, are
identical.
30. Further cross-examination of PW1 was deferred and it was
resumed on 01-07-2024, on which date, she stated that she
had brought with her certified true copies of the Board
Resolutions dated 15-01-2016 and 20-07-2021, certified by
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Mr. Durgesh Paliwal, Company Secretary, ACS 13334 of
the plaintiff company and copies thereof were proved as
Ex.PW1/X1 & Ex.PW1/X2 respectively. However, she
could not remember the names of the directors who had
attended the Board Meetings on the said dates, when the
said resolutions were passed. No further question was
asked from her by the defendant with regard to said Board
Resolutions and thus, the defendant could not create any
doubt or suspicion with regard to their authenticity and
genuineness.
31. Thus, it is established on record that PW1 was competent
and duly authorized by the plaintiff company to represent
it in the present case and hence, there is no doubt regarding
her competence to depose in this matter. It is also
established on record that the said mark was previously
registered in favour of predecessors in interest of the
plaintiff, who further assigned the trade mark to the
plaintiff, as has been established from relevant documents
i.e. Marks A, B, C, D, E and Ex.PW1/8, which are copies
of amalgamation order dated 27-03-1981; Deed Of
Assignment dated 03-10-1997 between Ambala Sarabhai
Enterprises Ltd. and Sarabhai Piramal Pharmaceuticals;
Order dated 27-04-2004 passed by Hon’ble Bombay High
Court for amalgamation of Sarabhai Piramal
Pharmaceuticals with Nicholas Piramal India Ltd.;
Certificate of change of name of Nicholas Piramal (India)
Ltd. to Piramal Healthcare Ltd.; Deed of Assignment dated
08-09-2010 between the plaintiff and Piramal Healthcare
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Ltd; and Certificate of IMS, Health Information &
Consultant Service India Pvt. Ltd. showing the plaintiff as
the lawful owner of the product bearing mark
ESGIPYRING, respectively.
32. During cross-examination of DW1, after seeing the written
statement filed by defendant, DW1 deposed that it was
signed by his father namely Mr. Vipin Gupta and the
verification clause of the said written statement mentions
that his father had signed the same as Authorized
Representative of the defendant company. However, he
testified that there is no separate authorization in favour of
his father, as may be placed on record. However, DW1
claimed that his father had signed the written statement
being Director of the defendant company and therefore, he
was an Authorized Representative also.
33. However, it may be noted here that no such Board
Resolution even in favour of his father namely Mr. Vipin
Gupta, has been placed on record, what to say of being
proved during trial. In response to the question put to DW1
that no such Board Resolution in favour of Sh. Vipin
Gupta has been placed on record, he stated that it was
prepared, but he did not know whether it has been placed
in the file or not.
34. The DW1 was shown Board Resolution placed at page
no.38 along with the list of documents dated 16.03.2023 of
the defendant and asked to tell in whose name the said
resolution was passed, thereafter, he stated that it was
passed in his name/favour. The said Board Resolution was,
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thereafter,marked as Mark-A for the purpose of
identification by Ld. LC.
35. In response to further question put to DW1 during cross-
examination, he stated that Mr. Vipin Gupta has no role to
play in the defendant company and no document
authorizing him, has been filed.
36. During his further cross-examination, the attention of
DW1 was drawn towards Board Resolution identified as
Ex.DW-1/1, according to which, the Board meeting was
held on 31.01.2019, whereas, DW1 had certified the same
on 17.01.2019 and then, he was asked as to which of the
dates is correct, to which, he stated that there is some
clerical error and which date out of the two is correct, can
be verified from the office record.
37. During his further cross-examination dated 29.07.2024,
DW1 stated that his affidavit in evidence (Ex.DW-1/A)
was drafted by his lawyer and after drafting thereof, he did
not go through its contents (emphasis provided), however,
he admitted his signatures at points A & ‘B’ on the last
page thereof.
38. DW1 was asked to go through paragraph no.7 of his
affidavit (Ex.DW-1/A) and thereafter, he was asked to
provide the composition of the product ‘SGS PYRIN’ of
the defendant, to which, he gave evasive answer and stated
that he did not know about the said composition, but it is
reflected in Ex.DW-1/4, which is shown to be
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“Paracetamol (325mg) & Diclofenac Sodium (50mg)
Tablets IP”.
39. In response to the suggestion put to DW1 that his
deposition in Para no. 7 of the affidavit (Ex.DW-1/A), is
false, he again gave evasive answer and stated that unless
he knew the composition of the plaintiff’s product i.e.
ESGIPYRIN, he would not be able to comment on its
composition.
40. In response to another suggestion that he was neither
competent to depose on behalf of defendant, nor he was
aware of the facts of this case, DW1 again gave evasive
answer and stated that he did not know what reply to give.
41. Thus, it is quite evident from above discussion that the
defendant company has failed to establish that DW1 Mr.
Nimish Gupta was duly authorized by it to depose as a
witness on its behalf. As already noted above, DW1 not
only failed to produce Minutes Book, if any, containing the
so called Board Resolution dated 31-01-2019, whereby, it
had allegedly empowered DW1 to appear as a witness on
its behalf, but also failed to prove that he was otherwise
competent witness to depose on behalf of the defendant
company, being not familiar with the facts of the present
case. As a matter of record, DW1 could not even disclose
as to whether or not any Board Resolution was passed in
favour of Mr. Vipin Gupta, who is his father, by the
defendant company and whether or not such Board
Resolution was filed along with written statement in this
matter.It is relevant to note that the written statement filed
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by defendant is claimed to be signed by said Mr. Vipin
Gupta, as director/ authorized representative of the
defendant company. Indisputably, the defendant company
has not filed any Board Resolution passed by it, thereby
authorizing said Mr. Vipin Gupta to sign, verify, or to file
the written statement on its behalf. So much so, there is
nothing on record to show that Mr. Vipin Gupta is in fact
director/principal officer of the defendant company within
the meaning of Order XXIX CPC. That being so, this
Court finds considerable force in the argument advanced
on behalf of plaintiff that for want of any proper
authorization in favour of Mr. Vipin Gupta, being placed
on record, it cannot be said that the written statement has
been signed by the competent person. Hence, such written
statement, for want of proper authorization, is no proper
written statement in the eyes of law.
42. Further, even copy of extracts of so called Board
Resolution dated 31-01-2019 (Ex.DW1/1) is shown to be
self certified by DW1 himself and that too on 17-01-2019.
It is not understandable as to when Board Resolution was
passed on 31-01-2019, then how DW1 could self certify
the extracts thereof on 17-01-2019, which is prior in time
to the passing of so called Board Resolution. Moreover,
the Board Resolution (Ex.DW1/1) neither bears any stamp,
nor common seal of the defendant company. All these
circumstances create ample doubt on the authenticity and
genuineness of Ex.DW1/1, as also the factum of any such
Board Resolution being ever passed by the defendant
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company in favour of DW1. For all these reasons, the
entire testimony of DW1 namely Mr. Nimish Gupta, needs
to be discarded. Once the testimony of DW1 is excluded
from consideration, there is virtually no evidence led from
the side of the defendant company during trial.
43. Apart from above, in response to further question put to
DW1 during his further cross-examination that he had not
filed any document such as manufacturing record, sales
invoices, promotion material, to support his claim made in
paragraph 6 of affidavit [Ex.DW1/A], he stated that he had
already filed product permission, which according to him,
was the manufacturing record. He did not know whether
sales invoices have been filed or not in the present case
and whatever documents had been asked for by his lawyer,
the same had been provided to him. He stated that the
defendant did not have any promotion material. In
response to another question, he stated that no supporting
document had been filed in support of paragraph 8 of his
affidavit [Ex.DW1/A], however, he stated that documents
for the first batch which they manufactured, can be
provided. In response to further question as to whether he
was currently manufacturing SGS PYRIN, he answered in
negative. However, he stated that he did not remember
since when they stopped manufacturing SGS PYRIN but
he stated that the last date of its manufacturing, can be
provided.
44. In response to further question as to whether he placed
anything on record in support of paragraph 9 of his
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affidavit [Ex.DW1/A], as also whether he had placed on
record any other product manufactured by the defendant
with the prefix SGS, he replied in negative, however, he
claimed that they can provide the same. In response to
further question, he denied that Trade Marks SGS PYRIN
and ESGIPYRIN are phonetically similar.
45. In response to further question as to how and why did the
defendant adopt the word PYRIN in its Trade Mark SGS
PYRIN, he stated that PYRIN comes from the word
PYRIETIC which means pain and their product SGS
PYRIN is a pain killer. In response to further question put
to DW1 during his further cross-examination that his
explanation for adoption of the mark SGS PYRIN, is an
afterthought, he stated that he did not know how to answer
this question. However, it may be mentioned here that the
defendant never raised this plea/defence in its written
statement available on record.
46. In response to further question, he stated that he was not
part of the defendant company in 2001, when this Trade
Mark SGS PYRIN was adopted.
47. During his further cross-examination, DW1 was shown
paragraph 13 of his affidavit [Ex.DW1/A] and asked that
out of three primary colours i.e. Blue, Red and Yellow,
why did the defendant choose the yellow colour for his
strip packaging, he gave evasive answer while stating that
there is no specific reason for choosing the yellow colour.
48. DW1 was also shown paragraph 24 of his affidavit
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Ex.DW-1/A and asked whether he had checked the status
of the registration/application listed in the said para, he
stated that he had not checked the same personally, but
would have been checked by his lawyer.
49. In reply to further question put to DW1 during his cross-
examination, that he had not produced even a single
medicine using the word PYRIN either as suffix or as
prefix and therefore, his claim that PYRIN is a common
word, is false, he stated that if a search is made on google
in respect of the names of medicines mentioned in
paragraph 24 of his affidavit (Ex.DW1/A), it would be
clear that PYRIN is a commonly used suffix. He denied
the suggestion that the defendant has copied the Trade
Mark of the plaintiff and has also copied yellow strip of
the plaintiff.
50. Further, as already noted above, the Local Commissioner
had also found infringed goods bearing impugned
trademark from the premises of the defendant at the time
of execution of commission. As per Inventory of Goods
Seized, which is part of report of Ld. Local Commissioner,
1270 empty box/ duplex box and duplex box containing
190 tablets, were recovered from the premises of defendant
and were handed over to officials of the defendant on
superdarinama. The defendant, throughout the trial, did not
dispute the said report of Ld. Local Commissioner by not
filing any objection against the said report and thus, the
report of Ld. Local Commissioner remained
uncontroverted and unchallenged from the side of the
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defendant. Moreover, it is trite law that report of local
commissioner can be read in evidence in terms of Order
XXVI Rule 10(2) CPC, as held by our own Hon’ble High
Court in the cited case of M. L. Brother LLP (supra).
51. It is relevant to note that the composition of the drugs of
the plaintiff bearing its trade mark ESGIPYRIN, is being
used in relation with ‘Diclofenac Sodium and Paracetamol
preparations’ and DW1 has also admitted in his cross-
examination dated 29-07-2024 that the impugned drugs
bearing the impugned mark SGS PYRIN contained
composition of ‘Paracetamol (325 mg) and Diclofenac
Sodium (50 mg)’, which would show that even the
composition of the said drugs bearing the trade mark of
plaintiff and the impugned mark of the defendant, is also
similar. Pertinently, DW1 has claimed that the term
‘PYRIN’ comes from the word ‘PYRIETIC’, which means
pain and the goods of the defendant bearing mark SGS
PYRIN is a pain killer, however, no cogent or positive
evidence to establish this fact, has been led from the side
of the defendant during trial.
52. Although, the defendant claimed in the written statement
that it has been using the impugned mark SGS PYRIN for
the last about 17 years and it carries a very good reputation
in the market, however, no iota of evidence is available on
record from the side of the defendant, to substantiate the
said claim. It is important to note that the defendant has
not filed any document showing its year-wise sales since
commencement of the impugned goods bearing the
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impugned trade mark till the date of filing of its written
statement. Thus, the defendant has failed to establish that it
carries reputation and/or goodwill in respect of the
impugned goods bearing the impugned mark. In this
regard, it is also useful to mention here that DW1 claimed
that the impugned mark SGS PYRIN was adopted by
defendant in the year 2001, but fairly conceded that he was
not even part of the defendant company at that time. So
much so, he could not even offer any explanation for
adoption of the impugned mark SGS PYRIN by the
defendant.
53. Further, the defendant alleged in the written statement that
so many other firms/ entities have also been using the
impugned mark either by way of prefix or by way of
suffix, however, the defendant has failed to lead any
evidence in this regard and thus, such plea remained
unproved during trial.
54. The Court finds considerable force in the arguments
advanced on behalf of plaintiff that the mala fide intention
of defendant to do piggy ride on the shoulder of the
plaintiff company, is quite evident from the fact that the
defendant has intentionally and deliberately chose the
yellow colour for their strip packaging, which is exactly
the same colour which was already being used by the
plaintiff for their strip packaging in respect of the same
drug. As already noted above, DW1 could not provide any
specific reason for choosing the Yellow colour out of three
primary colours i.e. Blue, Red and Yellow.
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55. Apart from that, the defendant has not led any piece of
evidence showing that it has been using the mark having
‘SGS’ either as prefix or suffix, in respect of other drugs
being manufactured by them. Same would nullify their
defence taken in written statement that the impugned mark
SGS PYRIN is a combination of two words i.e. “SGS” and
“PYRIN”, out of which the word “SGS” is taken from its
corporate name i.e. SGS Pharmaceuticals Ltd. The
defendant has also failed to establish during trial the word
‘PYRIN’ is a common word being used in pharmaceutical
field or for that reason its usage or registration
does not give any right to the plaintiff to prevent third
party from using any mark, which includes the
word ‘PYRIN’.
56. Both the cited decisions relied on behalf of defendant, are
entirely distinguishable from the facts and circumstances
of the present case, in view of the reasons already
mentioned hereinabove and thus, same are of no help to
the case of the defendant.
57. In the cited case of M/s Fizark Healthcare & Anr (supra),
which was filed by the plaintiff herein, Hon’ble Delhi
High Court partly decreed the suit in favour of plaintiff
and against the defendant. In the cited case, the defendant
was using the impugned trade mark/ trade dress/ colour
scheme (yellow) ESGIPYRING, which was claimed to be
identical and deceptively similar to trade mark/ trade dress/
colour scheme of EASIPYRIN of the plaintiff therein. The
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relevant portion of the said judgment is extracted here as
under:-
“xxxx
8. A comparison of the plaintiffs registered trademark
with the defendants’ mark itself is sufficient to record
satisfaction that the plaintiff’s grievances are genuine and
well founded. Both the marks are phonetically similar in
relation to identical medicinal preparations. Since the
plaintiff’s trademark has been in prior use, the defendants
having not entered appearance so as to plead that it has
any registration with regard to mark under which it is
selling its products or to raise any other valid defences
available in law, the use of the impugned mark by the
defendants, in the given facts and circumstances, must be
held to be infringing the trademark of the plaintiff’s use
with regard to similar goods.The stark similarity of the
packaging and trade dress is also proved by the plaintiff’s
evidence to which there has been no contest whatsoever.
xxxx
10. xxx
(c) in packaging or using trade dress which is deceptive
imitation or substantive reproduction of that of the
plaintiff’s product.
xxxx”
58. Now reverting back to the facts of the present case.
As already mentioned hereinbefore, the plaintiff has
duly established that the products of the defendant are
sold in yellow colour strip that is visually identical to
strip packaging of the plaintiff’s ‘ESGIPYRIN’ and
which is deceptively similar to the plaintiff’s
registered trade mark ‘ESGIPYRIN’ thereby resulting
into the acts of infringement and passing off. For
this purpose, it would be necessary to reproduce the
photographs of impugned packaging/ strip vis-a-vis the
packaging/ strip of the plaintiff. Same is shown here
as under:-
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ESGIPYRIN SGS PYRIN
59. Thus, it is quite evident from above that there is stark
similarity of the packaging and trade dress of the
impugned goods bearing the impugned mark SGS PYRIN,
which is deceptively imitation and/or substantive
reproduction of the packaging and trade dress of the
plaintiff.
60. Thus, in totality of the facts and circumstances of the case,
the Court is of the view that the plaintiff has succeeded in
proving that the defendant was manufacturing, stocking,
distributing and selling goods bearing falsified trademark /
trade dress / colour scheme SGS PYRIN which are
deceptively and confusingly similar to the plaintiff’s
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registered trade mark / trade dress/ colour scheme
‘ESGIPYRIN’ and therefore, trademark and copyright of
plaintiff company are required to be protected.
Accordingly, the plaintiff is held entitled to decree of
permanent injunction, whereby the defendant is liable be
restrained from using trade mark/ trade dress/ colour
scheme SGS PYRIN or any other trade mark/ trade dress/
colour scheme which may be identical with and/ or
deceptively similar to the plaintiff’s said trade mark /trade
dress / colour scheme ‘ESGIPYRIN’ in relation to similar
goods, thereby infringing plaintiff’s registered trademark,
copyright and passing off its products as that of the
plaintiff. Accordingly, all these three issues are decided in
these terms.
ISSUE NO.4
32. Now, I shall take up the issue no. 4 regarding delivery up,
which is reproduced here as under: –
Issue no.(iv) – The onus to prove the aforesaid
issues was placed upon the plaintiff. As already
noted above, in order to prove its case, the plaintiff
has examined sole witness as PW1, who has deposed
on the identical lines of the plaint, by way of her
affidavit in evidence (Ex.PW1/A).
33. As already discussed, the infringed goods bearing falsified
trademark/label/ trade dress/ colour scheme of the plaintiff
company were seized by the Local Commissioner and
were returned to the defendant on superdari. Therefore, the
defendant is directed to delivery up all above seized
infringed goods, besides all other impugned finished and
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unfinished materials bearing the impugned and violative
trade mark/ label / trade dress / colour combination to the
plaintiff company for the purpose of destruction and
erasure. In view thereof, superdarinama is hereby
cancelled. This issue stands decided accordingly.
ISSUE NO. 5.
34. Now, I shall take up the issue no. 5 regarding rendition of
accounts, which is reproduced here as under: –
Issue no. (v) – Whether the plaintiff is entitled to
rendition of accounts of profits earned by defendant
by their impugned illegal trade activities, as prayed
for? If so, for what amount? OPP.
35. The onus to prove aforesaid issue was placed upon the
plaintiff. However, during the course of submission, Ld.
Counsel of plaintiff, on instructions, has submitted that
plaintiff is not pressing aforesaid issue regarding rendition
of accounts and instead thereof, the plaintiff is pressing for
award of damages.
36. In this regard, it has been submitted by Ld. Counsel of
plaintiff that despite grant of ad interim injunction against
the defendant company, whereby, it was restrained from
manufacturing, selling, using, displaying, advertising,
importing/ exporting or by any other mode dealing with
the impugned trade mark/ label ‘SGS PYRIN’, which is
identical with or deceptively similar to plaintiff’s
trademark in relation to their impugned drugs, it has been
still indulging in the impugned activities, which is duly
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established during trial and hence, he contended that
exemplary damages may be granted in favour of plaintiff
and against the defendant. In support of his said
submission, Ld. Counsel of the plaintiff has relied upon the
following judgments:-
36.1 ‘Puma Se v. Ashok Kumar‘, having neutral citation
2023: DHC: 7696;
36.2 ‘Christian Louboutin v. Ashish Bansal‘ reported as
2018 (75) PTC 353;
36.3 ‘Disney Enterprises Inc. v. Rajesh Bharti & Ors. ‘
reported as MANU/DE/0454/2013;
36.4 ‘Microsoft Corporation v. Rajendra Pawan & Ors. ‘
reported as MANU/DE/9851/2007;
36.5 ‘Koninlijke Philips N. V. and Ors. v. Amazestore
and Ors.‘ reported as 260 (2019) DLT 135; and36.6 ‘Adidas AG & Ors. v. Praveen Kumar & Ors.’
reported as MANU/DE/1708/2019
37. In order to appreciate the aforesaid contention raised on
behalf of plaintiff, which was disputed from the side of the
defendant, it would be necessary to refer to the relevant
portion of cross-examination of DW1, which would throw
ample light on the point in issue.
38. In response to question put to DW1 on behalf of plaintiff that
is he currently manufacturing SGS PYRIN, he replied in
negative by deposing that they aren’t, however, he did not
remember since when they stopped manufacturing SGS
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PYRIN, and testified that the last date of its
manufacturing, can be provided. However, on being
confronted with the box packaging (Art work) and strip
packaging placed at page Nos.15 & 16 along with his said
affidavit, he admitted that same were of the defendant and
were accordingly exhibited as Ex.DW1/3 & Ex.DW1/4
respectively. He further admitted that strip packaging
Ex.DW1/4 mentions the month and year of manufacturing
as “MFG.11/2021” in the encircled portion at point “A”. It
is relevant to note that the present suit was filed in the year
2018 and Ld. Local Commissioner was appointed to visit
and search the premises of the defendant company, vide
order dated 11-09-2018, passed by Ld. Predecessor of
this Court. The interim injunction order was also
passed in favour of plaintiff and against the defendant
on 11-09-2018.
39. Further, it may be noted that DW1 had the audacity to
depose during cross-examination that he was not aware of
the fact that by virtue of order dated 11.09.2018 passed by
the Court, the defendant was restrained from
manufacturing, selling, using, displaying, advertising,
importing/exporting or by any other mode dealing with the
impugned trademark label ‘SGS PYRIN identical with or
deceptively similar to the plaintiff’s trademark in relation
to their impugned drugs till next date of hearing.
He volunteered that this might be in the knowledge of his
father or the legal team of the defendant company.
He stated that he look after the unit of the defendant in
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Haridwar and the unit at Ghaziabad is being looked after
by his father Sh. Vipin Gupta.
40. In response to the question put to him that the defendant
had willfully violated the interim order dated 11.09.2018
passed in the present case by this Court, he feigned
ignorance and stated that he was not aware of the said
order and therefore, he could not comment thereon.
41. In response to further question that several Trade Mark
infringement cases have been brought against the
defendant company and is a habitual infringer, he stated
that there are several cases and they won some of them and
therefore, they are not habitual infringers. After having
seen orders dated 29.05.2005, 03.05.2021 and 27.02.2024
passed by the Hon’ble Delhi High Court against the
defendant company, he stated that the said orders were
passed by the Hon’ble Delhi High Court but two of them,
which are subject matters of CS(OS)201/2005 and CS
(COMM)213/2021, were settled between the parties.
These orders are Ex.DW1/P1 (Colly.).
42. Thus, it is established on record that despite operation of
ad interim injunction against the defendant, it was still
manufacturing and selling its impugned goods under the
said impugned trade mark/ label SGS PYRIN, which is
duly reflected from strip packaging [Ex.DW1/4] wherein,
manufacturing is shown “MFG.11/2021” in the encircled
portion at point “A”, which is admitted by DW1. Hence,
this Court finds considerable force in the arguments
advanced on behalf of the plaintiff that the defendant did
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not care to abide by the interim injunction order dated
11-09-2018 (supra) and kept on indulging in
manufacturing of the impugned goods bearing the
impugned mark, which is shown to be in violation of
said order.
43. As already noted above, the Local Commissioner, while
executing the commission, found and seized infringed
goods from premises of the defendant in their presence and
handed over the same to them on superdari. It is evident
from the said report that the defendant was manufacturing,
stocking and selling/ passing off the infringed goods
bearing impugned trade mark / label/ trade dress as that of
the plaintiff’ products, thereby causing wrongful loss to
plaintiff company and would have earned illegal profit.
Further, if the seized infringed goods would have gone to
the hands of the consumer/ general public, the
reputation/goodwill of the plaintiff company would have
gone down in the eyes of consumer/ general public
as infringed goods were of average quality and were not
up to the quality which is claimed by the
plaintiff company.
44. After referring to the judicial precedents and the law
governing grant of damages in matters regarding
infringement of trade mark, copy right and passing off, the
Hon’ble Delhi High Court in the cited case of Koninlijke
Philips (supra) has laid down the parameters for
quantifying such damages. The relevant portion of the said
judgment is extracted here as under:-
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“xxxx
40. Keeping in view aforesaid, the Court is of the view
that the rule of thump that could be followed while
granting damages can be summerised in a chart as under:-
# Degree of mala fide conduct Proportionate
award
(i) First-time innocent infringer Injunction
(ii) First-time knowing infringer Injunction + Partial
Costs
(iii) Repeated knowing infringer Injunction + Costs
which causes minor impact to + Partial damages
the plaintiff
(iv) Repeated knowing infringer Injunction + Costs
which causes major impact to + Compensatory
the plaintiff damages
(v) Infringement which was Injunction + Costs
deliberate and calculated + Aggravated
(Gangster/ scam/ mafia) + damages
wilful contempt of order (compensatory +
additional
damages)xxxx”
45. Keeping in view the overall facts and circumstances of the
present case including the quantum of infringed goods
bearing impugned trademarks / labels as found by Ld. Local
Commissioner while executing the commission and the fact
that despite operation of injunction order, the defendant is
found to be still indulging in the impugned activities thereby
manufacturing and selling impugned goods, under the
impugned Trade Mark/trade dress/ colour, and in view of the
law laid down by Hon’ble Delhi High Court in the above
referred decision, this Court is of the opinion that case of the
plaintiff falls under the fourth category i.e. Repeated
knowing infringer which causes major impact to the
plaintiff, and thus, this Court is of the view that the plaintiff
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is entitled to damages quantified at ₹7,50,000/- (Rupees
Seven Lacs and Fifty Thousand only) to be recovered from
the defendant towards costs and compensation. The issue
stands decided in these terms.
RELIEF:
46. In the light of the aforesaid discussion,
the Court is of the view that the plaintiff has been able
to prove its case on the basis of preponderance of
probability. Thus, the suit is decreed in favour of the
plaintiff and against the defendant and the following
reliefs are granted:-
46.1 Suit is decreed in favour of plaintiff and against the
defendant qua permanent injunction thereby
restraining the defendant by themselves as also
through their individual proprietor/ partners, agents,
representative, distributors, assigns, heirs,
successors, stockists and all others acting for and on
their behalf from manufacturing, trading, selling and
offering for sale, advertising, directly or indirectly,
medicinal and pharmaceutical preparations under
the trade mark SGS PYRIN or any other word mark/
mark/ trade mark/ label/ trade dress/ colour scheme
which may be identical with and/ or deceptively
similar to the plaintiff’s said trade mark / trade
dress/ colour scheme ESGIPYRIN in relation to
similar goods, thereby infringing plaintiff’s
registered trademark, copyright and passing off their
products as that of the plaintiff.
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46.2 Suit is also decreed in favour of plaintiff and against
the defendant qua delivery up of all seized semi
finished and finished articles besides all other
impugned finished and unfinished materials bearing
the impugned and violative trade mark/ label of
plaintiff company and superdarinama is hereby
cancelled.
46.3 Plaintiff is entitled to recover ₹7,50,000/- (Rupees
Seven Lacs and Fifty Thousand only) from the
defendant towards costs and compensation; and
46.4 Costs of the legal proceedings is also awarded in
favour of the plaintiff.
47. Decree sheet be prepared accordingly.
48. File be consigned to Record Room, after due compliance.
Digitally signed
by VIDYA
Announced in the open court VIDYA PRAKASH
PRAKASH Date:
on 3rd of June, 2025 2025.06.03
17:00:09 +0530
(VIDYA PRAKASH)
DISTRICT JUDGE (COMMERCIAL COURT)-02
PATIALA HOUSE COURTS, NEW DELHI
CS (COMM.)/59/2023 Page 66 of 66