Delhi High Court
Sun Pharma Laboratories Ltd vs Lupin Ltd & Anr on 19 February, 2018

* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Reserved on : 08.02.2018
Pronounced on : 19.02.2018

+ CS(COMM) 918/2016

SUN PHARMA LABORATORIES LTD ….. Plaintiff
Through Mr.Hemant Singh, Ms.Mamta Jha and
Mr.Waseem Shuaib Ahmed, Advs.

versus

LUPIN LTD & ANR ….. Defendants
Through Mr.C.M.Lall, Sr.Adv. with Mr.Ankur
Sangal & Ms.Pragya Mishra, Advs.

CORAM:
HON’BLE MR. JUSTICE JAYANT NATH

JAYANT NATH, J.

Along with the suit, the plaintiff filed IA No. The defendants thereafter filed IA No. 20124/2014 under Order 39 Rule 4 CPC for vacation of the stay. The case of the plaintiff is that it is a wholly owned subsidiary of Sun Pharmaceutical Industries Ltd.

and in order to strengthen its organizational structure of Domestic Formulation Undertaking, Sun Pharmaceutical Industries Ltd. It is pleaded that the plaintiff has one preparation which is marketed under the trade mark TRIVOLIB which is a coined mark. The medicine is used for treatment of non-insulin diabetic patients. 1 is said to be a company which is marketing the medicines manufactured by defendant No.

It is also pointed out that defendant No. It is pleaded that the defendants‟ actions constitute infringement, passing off and unfair competition. The trade mark of the defendant TRI-VOBIT is phonetically and deceptively similar to the plaintiff‟s registered mark TRIVOLIB. Hence, the present suit.

It is pleaded that the interim order passed by this court be confirmed. The defendants have filed their respective written statements. In the written statement, it has been pleaded that defendant No.

[…]

As both the marks are registered, no suit for infringement can be filed against the defendants. It is pleaded that under Section 28 of the Trade Marks Act, the plaintiff cannot file a suit against the defendants as the trademarks of both the parties are registered. The defendant being a prior user of the mark, no suit for passing of would also lie. It has also been pointed out that the defendant had filed an application for registration of two trademarks, namely, TRI-VOBIT 1 and TRI-VOBIT 2.

The plaintiff chose to oppose registration of trade mark TRI-VOBIT 1. They never filed an opposition to TRI-VOBIT 2. Hence, they cannot now turn around and say that they have rights in the said trade mark. No evidence recognizing the plaintiff‟s mark as a well known mark has been adduced.

It is inconceivable that the mark will become well know in about three years. Only limited extent of usage has been placed on record. The search by the software of the plaintiff did throw up TRI-VOBIT 1 and hence, the objections were filed. In the very first year of its production, the plaintiff had a turnover of Rs.

I may first deal with the contention of the defendant about the effect of the registration of the trade mark TRI-VOBIT 2 of the defendants on the present suit for injunction.

Section 124 of the Trade Marks Act reads as follows:-«12

The Supreme Court in the case of Patel Field Marshal Agencies and Anr.

[…]

The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the Civil Court. « If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive».

Clearly as per the above judgment, the issues relating to the validity of a registration have to be dealt with by the Tribunal and not by the civil court. In the event, the civil court is approached and the issue of invalidity of the trade mark is raised, such a plea is not to be decided by the civil court but by the tribunal. However, the tribunal will come into seisin of the matter only if the civil court is satisfied that an issue with regard of invalidity ought to be framed in the suit. Once the issue is framed, the matter will have to go to the tribunal and the decision of the tribunal will thereafter bind the civil court.

The said trade mark got registered about 14 days after filing of the suit.

I need not further deal with this aspect as it was admitted by both sides that a suit for passing off would lie against the defendants despite registration of the trade mark TRI-VOBIT 2 provided the essential ingredients of passing off are made out

20124/2014 filed by the defendant stands dismissed.