Full Text
HIGH COURT OF DELHI
Date of Decision: 16th August, 2023.
C.O. (COMM.IPD-TM) 79/2022 M/S VEST PHARMA PVT LTD ..... Petitioner
Through: Mr. Umesh Mishra, Advocate.
(M. 9868401295)
Through: Mr. Amit Jain, Mr. Nakul Mehta and Ms. Ishita Suri, Advocates.
(M. 9818558690)
JUDGMENT
9 AND + C.O. (COMM.IPD-TM) 554/2022 VETS FARMA LTD...... Petitioner Through: Mr. Amit Jain, Mr. Nakul Mehta and Ms. Ishita Suri, Advocates. (M.
9818558690)
VERSUS
VEST PHARMA PVT. LTD. AND ANR...... Respondents Through: Mr. Umesh Mishra, Advocate for R-1 (M. 9868401295) CORAM: JUSTICE PRATHIBA M. SINGH Prathiba M. Singh (Oral)
1. This hearing has been done through hybrid mode.
2. The present two cancellation petitions seeking cancellation of the following two trademarks: Petition No. Mark Application No. Class C.O. (COMM.IPD-TM) 79/2022 CALPHO – Registered in favour of Respondent M/s Vets Farma Ltd 1212278 31 554/2022 CALFOS AD[3] PLUS - Regd. in favour of Petitioner M/s.Vest Pharma Pvt Ltd 1399331 05
3. These two petitions before the Court, C.O. (COMM.IPD-TM) 79/2022 and C.O. (COMM.IPD-TM) 554/2022 were initially filed before the IPAB in 2013 and 2012 respectively. They have been transferred to this Court upon the enactment of Tribunal Reforms Act, 2021. A tabular representation of the Petitioner and Respondent in both the Petitions is set out below: Petition No. Petitioner Respondent 79/2022 M/s Vest Pharma Pvt Ltd M/s Vets Farma Ltd 554/2022 M/s Vets Farma Ltd M/s Vest Pharma Pvt Ltd For the sake of clarity and consistency, M/s. Vest Pharma Pvt Ltd is referred to as `Petitioner’ and M/s. Vets Farma Ltd is referred to as `Respondent’.
4. From the above table, it is clear that the two petitions are cross petitions which were filed by the parties. Disputes had arisen between the parties resulting in filing of civil and criminal proceedings. The promoters of the Respondent were convicted by the Court of the Chief Judicial Magistrate, Jalandhar vide order dated 4th December, 2010 and the said conviction was upheld by the Additional Sessions Judge, Jalandhar vide order dated 12th September, 2012 in Criminal Appeal No. CRA/020000/2011 titled Vets Farma Private. Limited & Ors. v. State of Punjab & Ors.
5. Civil litigation also ensued between the parties and in CS 17/2010 titled Vest Pharma Pvt Limited v. M/S Vets Farm Ltd, final judgement was passed by the Additional District Judge, Jalandhar, dated 23rd March, 2011. By the said order, the Respondent has been injuncted in the following terms:
6. The said decree/order was upheld by the Punjab & Haryana High Court vide decision dated 17th August, 2022 passed in RFA 4412/2011 titled M/ s Vets Farma Ltd. v. Vest Pharma Pvt. Ltd. The Punjab & Haryana High Court has also upheld the assignment of the trade marks in favour of the Petitioner and observed as under:
7. An SLP was also preferred before the Supreme Court by the Respondent bearing SLP (C) Diary No. 41108/2022 titled M/s Vets Farma Ltd v. M/s Vest Pharma Pvt. Ltd. against the said order of the Punjab and Haryana High Court, which was dismissed as withdrawn on 27th February, 2023 in the following terms: “Learned counsel for the petitioner contends that there is an apparent error on the face of the record in the impugned order as it proceeds on the basis that the Trademark Act, 1999 had come into force but the fact is that the said Act comes in force only on 15.09.2003 while the transaction in question was also not of 1999 but 2000. He further rests his case on Section 124 of the Act. We consider appropriate to permit the petitioner to withdraw the petition and file a review application before the Learned judge of the High Court with liberty to approach this Court in case of an adverse order. The special leave petition is dismissed as withdrawn in terms aforesaid. Pending applications stand disposed of.”
8. In the second suit, before the ld. ADJ, Jalandhar relating to the marks ‘CALFOS AD[3] PLUS’, ‘GALFOS AD[3] PLUS’ and ‘ANIMIN’ in class 31 and ‘CALFOS AD[3] PLUS’ in class 5, in CS 56516/2013 titled Vest Pharma Pvt Limited v. M/S Vets Farma Ltd, vide order dated 24th February, 2020 the ld. ADJ, Jalandhar has finally decreed the suit in the following terms:
9. This judgment/decree has attained finality.
10. From the above background it is clear that the Respondent has been injuncted in two civil suits filed by the Petitioner. Even criminal proceedings have resulted in conviction of the Directors of the Respondent.
11. As captured above, the present two petitions relate to the trademarks CALFOS and CALFOS AD[3] PLUS. The first petition has been filed by the Petitioner- M/s M/s Vest Pharma Pvt. Ltd. seeking cancellation of trademark number 1212278. Vide judgment dated 23rd March, 2011, insofar as the use of the trademark ‘CALPHO’ is concerned, the same has already been injuncted by the Court against the Respondent. The present cancellation is based on this decision dated 24th February, 2020 which has attained finality.
12. In view of this, the Respondent cannot continue to be the registered proprietor of the mark ‘CALPHO’ in class 31. Accordingly, the Respondent’s mark CALPHO bearing no. 1212278 is directed to be removed/cancelled from the Register of Trade Marks.
13. In the second petition, the prayer of the Respondent - M/s Vets Farma Ltd. is for cancellation of the mark 139931 in class 5 registered by the Petitioner for the mark ‘CALFOS AD[3] PLUS. The status of the said mark is set out below: “As on Date: 14/08/2023 Status: Registered View TM Application TM Application No. 1399431 Class 5 Date of Application 16/11/2005 Appropriate Office DELHI State PUNJAB Country India Filing Mode Branch Office TM Applied for CALFOS AD[3] PLUS TM Category TRADE MARK Trade Mark Type DEVICE User Detail 09/04/1997 Certificate Detail Certificate No. 628162 Dated: 28/03/2007 Valid upto/ Renewed upto 16/11/2025 Proprietor name (1) VEST PHARMA PVT LTD Trading As: VEST PHARMA PVT LTD Body Incorporate Proprietor Address 605, PARK ROAD, MODEL TOWN, JALANDHAR- 144003 PB Email Id Agent name MAHTTA & CO. [252] Agent Address 43- B/3, MAHTTA HOUSE, UDHAM SINGH NAGAR, LUDHIANA – 141 001, (PUNJAB). Goods & Service Details [CLASS: 5] MEDICINAL & PHARMACEUTICALS PREPARATIONS Publication Details Published in Journal No.: 1351-0 Dated: 01/09/2006 Trade Mark Image:
14. A perusal of the above would show that the mark is registered since 16th November, 2005. Since the Respondent itself has been injuncted from using the CALFO AD[3] PLUS and the finding of the Court is in favour of the Petitioner in respect of this mark, the Respondent being an infringer against whom the injunction has been upheld till the Supreme Court, would not be entitled to maintain the present cancellation petition at this stage.
15. The above order is with one caveat. A perusal of the Supreme Court’s order dated 27th February, 2023 would show that the Respondent was permitted to file a review before the Punjab & Haryana High Court and liberty was granted to the Respondent to approach the Supreme Court in case if there was any adverse order. The said order dismissing the review petition was passed by the Punjab & Haryana High Court on 26th April, 2023. Till date, the Respondent has not filed any SLP against the said order.
16. Under these circumstances, the second cancellation petition, i.e., C.O. (COMM.IPD-TM) 554/2022 of the Respondent against the Petitioner is rejected.
17. It is made clear that the above order shall however, be subject to any order passed by the Supreme Court in the SLP, if any, which may be filed by the Respondent challenging the order dated 26th April, 2023 passed in the review petition by the Punjab & Haryana High Court.
18. Both these cancellation petitions are accordingly disposed of in the above terms. All pending applications are also disposed of.
19. The Registry is directed to supply a copy of the present order to the office of the Controller General of Patents, Designs & Trademarks of India on the e- mail- llc-ipo@gov.in for compliance of this order.
PRATHIBA M. SINGH, J. AUGUST 16, 2023/Rahul/am