Glaxo Group Limited and Anr. v. Manoj Kumar Jain and Ors.

6. After filing of the present suit, the matter has been resolved amicably between the parties. An application under Order XXIII Rule 3 CPC has been filed setting out the terms and conditions of the settlement, which has been arrived at. As per the settlement application, the terms of settlement are contained in paragraph 2(a) to 2(o) of the application.

7. In the present suit for permanent injunction, the Plaintiffs also seek an order declaring the Plaintiffs’ marks as “well-known” marks under Section 2(zg) of the Trade Marks Act, 1999.

8. Ld. Counsel for the Plaintiffs Mr. Urfee Roomi submits that the Plaintiffs are entitled to declaration of three marks ZINETAC, BETNESOL, COBADEX as well-known marks. In support of this submission, ld. Counsel for the Plaintiffs has taken pains to point that each of the factors under Section 11(6) of the Trade Marks Act, 1999 are satisfied in the present case.

9. The Court has perused the record. Insofar as the mark ‘ZINETAC’ and ‘COBADEX’ are concerned, for the time being ld. Counsel for the Plaintiffs does not press the prayer for a well-known declaration. The same is left open for being sought in some other proceedings.

10. The Plaintiffs also pray for declaration of ‘BETNESOL’ as a wellknown mark owing to long and extensive use of the mark. Photographs of Plaintiffs’ product ‘BETNESOL’ are as follows:

11. The Plaintiffs claim that the mark ‘BETNESOL’ was first conceived in the early 1960s, and since then the goods bearing the mark have been available in India. As an anti-inflammatory steroid or a ‘corticosteroid’, the Plaintiffs’ product has been made available as far back as 1962. Copies of the articles from the British Medical Journal have been placed on record to demonstrate the long use. Further, advertisements have been placed on record to also demonstrate the use of the Plaintiffs’ products in India as well.

12. Market reports published by agencies have been placed on record to demonstrate the extensive coverage received by the products under the mark ‘BETNESOL’. For example, in a report titled ‘The Indian Pharmaceutical Industry: Collaboration for Growth’ (KPMG, 2006) for the year 2004, the brand name ‘BETNESOL’ was acknowledged as one of the top ten branded drugs for that year.

13. Newspaper clippings have also been placed on record the extensive coverage received by the said product. For example, in 2020, it was reported by Hindustan Times in an article titled ‘Birds falling prey to dehydration, fatigue’ that the Plaintiffs’ product was used as a form of treatment for birds that have been admitted with complaints of dehydration. Further, journal articles have been placed on record to showcase the wide adoption and repute of the Plaintiffs’ product among the medical community in India. Further, sales figures have also been placed on record to demonstrate extensive sales of the Plaintiffs’ pharmaceutical preparations bearing the mark ‘BETNESOL’.

14. It has been also averred that the pharmaceutical preparations bearing the Plaintiffs’ mark ‘BETNESOL’ are sold through a network of distributors and stockists throughout India as well as through online pharmacies.

15. The Plaintiffs have also placed on record instances of successful enforcement actions with respect to the mark ‘BETNESOL’. Recently this Court in Glaxo Group Ltd. v. Zenlabs Ethica Ltd. [Order dated 3rd June 2022, CS(COMM) 422/2023] granted an ex-parte injunction for protecting the mark ‘BETNESOL’. The relevant portion of the said order is as follows: ““27. It is further averred that Plaintiff’s and Defendant’s Marks starts with the letter combination “BETNE”. Defendant has merely replaced the letter “S” with the letter “C” in Plaintiff’s BETNESOL Marks to form Defendant’s BETNECOL mark. Further, as regards Defendant’s BETNEVIN and BETNEZEN marks, Defendant has merely replaced the letter combinations “SOL” and “OVATE” in Plaintiff’s BETNESOL Marks and Plaintiff’s BETNOVATE Marks with the letter combination “VIN” and “ZEN” to form the Defendant’s BETNEVIN and BETNEZEN marks. These minor changes do not differentiate Defendant’s Marks from the Plaintiff’s Marks. Thus, the rival marks, when looked at in their entirety, are similar in appearance, sound, and structure. Moreover, just like the Plaintiff, Defendant’s goods are tablets and injections. The rival tablets, oral drops and injections are sold through identical trade channels to the same consumers. Further, chances of consumer confusion are enhanced by the fact that the rival products have identical therapeutic indications and active ingredients. …. …

28. Having heard learned counsel for the Plaintiff, this Court is of the view that Plaintiff has made out a prima facie case for grant of an ex parte ad interim injunction. Balance of convenience lies in favour of the Plaintiff and it is likely to suffer irreparable harm in case the injunction, as prayed for, is not granted.

29. Accordingly, Defendant, any other individuals, officers, managers, shareholders, directors, employees, agents, dealers, licensees, companies and retailers, stockists, chemists or any persons/entities that are related or affiliated to the Defendant, as the case may be, and all others, acting for and on behalf of the Defendant, are restrained from manufacturing, offering for sale, selling, displaying, advertising, marketing, whether directly or indirectly and whether on the Internet or otherwise, tablets, oral drops, injections and any other medicinal or pharmaceutical products bearing Defendant’s Marks and marks that incorporate BETNECOL, BETNEZEN and/or BETNEVIN marks, or any other mark that is identical/deceptively similar to Plaintiff’s Marks ….”

16. This Court has, in Levi Strauss and Co. v. Interior Online Services Pvt. Ltd. [CS (COMM) 657/2021, decision dated 24th March 2022], after perusing the extent of reputation in the mark, granted a ‘well-known’ status under Section 2(zg) and Section 11(6) of the Trade Mark Act, 1999 to the Plaintiff’s ‘Arcuate Stitching Mark’. The Court observed as follows:

19. It is important to note that the trade mark in question i.e., the ‘Arcuate Stitching Design’ mark has been used on jeans, pants, and trousers of the Plaintiff since the first pair of jeans were created by it in the year 1873 and it serves as a unique identifier in respect of the goods of the Plaintiff. The first trade mark registration for the ‘Arcuate Stitching Design’ mark dates back to 1943, granted in the US. Since then, the mark has been registered as a trade mark by the Plaintiffs in numerous countries, as is evident from the documents placed on record. …

20. This Court is of the opinion that the ‘Arcuate Stitching Design’ mark has become `well known’ to the public which uses garments carrying the said mark, that the use of the ‘Arcuate Stitching Design’ mark in relation to other goods or services would likely be taken as indicating a connection between those goods and the Plaintiff. The mark of the Plaintiff is thus an extremely distinctive mark which has acquired secondary meaning due to extensive use spanning over one and a half century.”

17. In addition, reliance is also placed upon Hermes International v. Crimzon Fashion Accessories Pvt. Ltd. [2023 SCC OnLine 883], wherein the factors outlined by the ld. Single Judge under Section 11(6) of the Trade Marks Act, 1999, which would be relevant for declaring the mark as wellknown, are as follows: “(i) The knowledge or recognition of that trade mark in the relevant section of the public, including knowledge in India obtained as a result of promotion of the trade mark.

(ii) The duration, extent and geographical area of any use of that trade mark.

(iii) The duration, extent and geographical area of any promotion of the trade mark, including advertising or publicity and presentation, at fairs or exhibition of the goods or services to which the trade mark applies.

(iv) The duration and geographical area of any registration of, or any application for registration of that trade mark under the Trade Marks Act to the extent that they reflect the use or recognition of the trade mark.

(v) The record of successful enforcement of the rights in that trade mark, in particular the extent to which the trade mark has been recognised as a well known trade mark by any court or Registrar under that record.”

18. The Court has perused the evidence on record. Insofar as BETNESOL is concerned, the following is the evidence relied upon by the Plaintiffs.

(i) The extensive use of the mark since 1960s and parallel publicity given by the Plaintiffs in India since 1960s.

(ii) The extensive use of the mark BETNESOL for tablets as also other ophthalmic and pharmaceutical preparations. Betamethasone Sodium Phosphate formulation for the product ‘BETNESOL’ has achieved high turnover since the last several years. The sales figures for the said mark from 2017 onwards is set out below, both by monetary value and in volumes. Year Monetary Value (in Rs. crore) Volume (in crore) 2017 111.[6] crores 22.13 crore 2018 111.[4] crores 18.57 crore 2019 128.[8] crores 20.23 crore 2020 129.[7] crores 19.03 crore 2021 147.[2] crores 18.59 crore 2022 (YTD) 106.[3] crores 12.58 crore

19. Some of the press clippings and publicity material as also the front surveys conducted show that BETNESOL has been declared as one of the top 10 pharmaceutical brands in India by survey conducted by the Indian Pharmaceutical Industry.

20. The material would also reveal that the Plaintiffs have used the mark BETNESOL extensively in India for the last more than five decades. The product is also sold as part of various health programmes, which was conducted by the State and Central Government.

21. Today, the Defendants- Mr. Manoj Kumar Jain and Vipin Kumar Jain, have joined the proceedings virtually and have acknowledged the Plaintiffs’ rights in the Plaintiffs’ marks as also the trade dress and packaging of the Plaintiffs. The Defendants have also agreed to represent and undertake that they have ceased use of the Plaintiffs’ marks or any other similar marks as also infringing trade dress and packaging.

22. The Defendants have also submitted that they have destroyed all the existing inventory at their own costs, and they have taken down the epharmacy business listing website. Various assurances of the Defendants are recorded in the application.

23. The Defendants have also paid Rs.1,50,000/- to the Plaintiffs for reimbursement of partial costs incurred by the Plaintiffs. The settlement application has been signed by both the Defendants as also the Plaintiffs. The application also contains the attachments of all the impugned products in the present case. The same assertion is supported by the parties.

24. Copies of Aadhaar cards of both Defendant Nos.[1] & 2 have been handed over to the Court Master. Mr. Manoj Kumar Jain, who has joined the proceedings virtually, has confirmed the fact that the settlement has been arrived at.

25. The Court has perused the settlement. The terms are lawful and there is no impediment in recording the same. The suit is, accordingly, decreed in terms of paragraph 2(a) to 2(o) of the application under Order XXIII Rule 3 CPC.

26. It is directed that all the parties, and anyone else acting on and for their behalf, shall be bound by the settlement terms. Declaration as well-known mark:

27. On the strength of averments in the plaint, and the documents placed on record, and the reputation in the mark ‘BETNESOL’ as gleaned from the record, it is clear that the Plaintiffs’ mark ‘BETNESOL’ has acquired a ‘well-known’ status. Considering the use of the mark since 1960s in the pharmaceutical sector, and the factors outlined in paragraph 15 above, the mark ‘BETNESOL’ has achieved the status of a ‘well-known mark’. Accordingly, a decree of declaration declaring the mark ‘BETNESOL’ as a ‘well-known’ mark in respect of pharmaceutical and medicinal items as also cognate and allied products is granted.

28. The suit is decreed in the above terms. Decree sheet be drawn up accordingly.

29. The next date of hearing i.e., 2nd November, 2023 stands cancelled.

PRATHIBA M. SINGH JUDGE SEPTEMBER 5, 2023/dk/dn