Full Text
HIGH COURT OF DELHI
Date of Decision: 2nd August, 2023
SUN PARMA LABORATORIES LTD. ..... Plaintiff
Through: Mr. Hemant Singh, Mr. Waseem Shuaib Ahmed, Mr. Sambhav Jain, Mr. Anuraj Tirthankar, Advs. (M:
9560190709)
Through: Mr. Prithvi Singh and Ms. P. Lalita Sowmya Priya, Advocates for the
Defendant No. 1. (M: 8826384092)
Mr. Saurabh Kansal, Ms. Ashu Chaudhary, Mr. Shaurya Sharma and
Mr. Divyam Aggarwal, Advocates for D-2.
JUDGMENT
1. This hearing has been done through hybrid mode.
2. The present suit has been filed by the Plaintiff - Sun Pharma Laboratories Ltd. seeking protection of its trademark ‘OXIPLAT’, which is used by the Plaintiff for marketing pharmaceutical preparations comprising Oxaliplatin. The case of the Plaintiff is that it is a wholly owned subsidiary of Sun Pharmaceutical Industries Limited, which is one of the top five pharma companies of India and was set up in the year 1983. The Plaintiff is a spin off of the parent company, which is stated to have been set up as a domestic formulation division of the parent company.
3. The mark ‘OXIPLAT’ was coined by the Plaintiff in April, 2001 and has been used for medicinal preparations consisting of Oxaliplatin, which is used in treatment of cancer of colon and rectum. The said drug is said to work by stopping or slowing down the growth of cancer cells. The mark ‘OXIPLAT’ of the Plaintiff is registered and the details of the registration are set out herein below: TRADE MARK CLASS REGISTRATION NO. & DATE Goods OXIPLAT 5 1003586 dated 16th April, 2001 Medicinal and Pharmaceutical Preparations and substances included in class 5
4. The sales of the Plaintiff for medicinal formulations using the mark ‘OXIPLAT’ have been substantial and at the time of filing of the suit, the sales turnover was aggregating to approximately Rs. 26.[5] crore. Substantive investment has also been made in the form of advertising and promotional expenses for the mark ‘OXIPLAT’, of approximately Rs.20 lakhs for the financial year 2013-14 and aggregating to approximately Rs. 1.[3] crore.
5. The Plaintiff acquired knowledge of the Defendants’ mark ‘SOXPLAT’ in the first week of October, 2014, through field force/market analysis, and also found that the trademark of the Defendants for the mark ‘SOXPLAT’ bearing no.1550804 dated 18th April, 2007. The same was filed by the Defendants on a proposed to be used basis and was granted registration. The present suit then came to be filed by the Plaintiff seeking permanent injunction of the mark ‘SOXPLAT’.
6. Vide order dated 7th February, 2017, summons were issued in the suit and thereafter, the interim application was rejected by the Court. The same was also appealed to the ld. Division Bench, which was also rejected. The observations of the ld. Division Bench are set out below:
7. The suit has thereafter remained pending. In the meantime, the Plaintiff sought cancellation of the Defendants’ mark and the Defendants sought cancellation of the Plaintiff’s registered trademark. The IPAB vide common order dated 18th June, 2020 in Sun Pharma Laboratories Limited and Ors. v. Agila Specialties Private Limited and Ors. MANU/IC/0014/2020, cancelled the Defendants’ trademark bearing no.1550804 and has dismissed the cancellation petition filed by the Defendants. Thus, as on date, the Defendants are no longer registered for the mark ‘SOXPLAT’ and the registration in favour of the Plaintiff has been confirmed/upheld by the IPAB. The relevant extracts of the said judgement are extracted as under:
8. It is in this context that the Plaintiff has filed an application seeking summary judgement, under Order XIII-A Rule 3 CPC. The contention of Mr. Hemant Singh, ld. Counsel for the Plaintiff is that the findings of the IPAB would operate as res-judicata between the same parties. Since the said judgment of the IPAB has not been challenged by the Defendants, the Defendants can no longer use the mark ‘SOXPLAT’.
9. On behalf of the Defendants, Mr. Prithvi Singh, ld. Counsel submits that his client has already given up use of the mark ‘SOXPLAT’. In addition, the Defendants are willing to pay a sum of Rs. 3 lakhs as costs to the Plaintiff. Insofar as the costs are concerned, Mr. Hemant Singh, ld. Counsel submits that the actual costs incurred are to the tune of Rs.11 lakhs and following the recent decision of the Supreme Court, the decree deserves to be passed and complete costs ought to be awarded to the Plaintiff.
10. The Court has considered the matter. The present application under Order XIII-A Rule 3 CPC is one seeking summary judgment. This Court has in Rockwool International A/S & Anr. v. Thermocare Rockwool (India) Pvt. Ltd., 2018:DHC:6774, considered the necessary conditions for passing summary judgement. The kind of cases that can be decided in a summary manner have to be those cases where a party has no real prospect of succeeding in the claim. A perusal of Order XIII A Rule 3 as amended by the Commercial Courts Act, 2005 reads as under: “Order XIII-A Summary Judgment 1………2………
3. Grounds for summary judgment. – The Court may give a summary judgment against a plaintiff or defendant on a claim if it considers that – (a) the plaintiff has not real prospect of succeeding on the claim or the defendant has no real prospect of successfully defending the claim, as the case may be; and (b) there is no other compelling reason why the claim should not be disposed of before recording of oral evidence.”
11. The pre-conditions for passing of a summary judgment under Order XIII A Rule 3 CPC, as elucidated in Rockwool International (supra) are: i) that there is no real prospect of a party succeeding in a claim; ii) that no oral evidence would be required to adjudicate the matter; iii) there is a compelling reason for allowing or disallowing the claim without oral evidence.
12. A Division Bench of this Court in Bright Enterprises Private Ltd. and Ors. v. MJ Bizcraft and Ors. 2017 (69) PTC 596 (Del) has held that the procedure under Order XIII A has to be scrupulously followed. Relevant portion of the judgment reads as under: “… 20......It is true that Rule 3 of Order XIIIA CPC empowers the Court to give a summary judgment against a plaintiff or defendant on a claim if it considers that – (a) the plaintiff has no real prospect of succeeding on the claim or the defendant has no real prospect of successfully defending the claim, as the case may be; and (b) there is no other compelling reason why the claim should not be disposed of before recording of oral evidence. But, in our view, this power can only be exercised upon an application at any date only after summons have been served on the defendant and not after the Court has framed issues in the suit. In other words, Order XIIIA Rule 2 makes a clear stipulation with regard to the stage for application for summary judgment. The window for summary judgment is after the service of summons on the defendant and prior to the Court framing issues in the suit.
21. The provisions relating to summary judgment which enables courts to decide claims pertaining to commercial disputes without recording oral evidence are exceptional in nature and out of the ordinary course which a normal suit has to follow. In such an eventuality, it is essential that the stipulations are followed scrupulously otherwise it may result in gross injustice. As pointed out above, a specific period of time has been provided during which an application for summary judgment can be made. That period begins upon the service of summons on the defendant and ends upon the court framing issues in the suit. Even if we were to accept, which we do not, the argument of the respondents that the Court had suo moto powers to deliver summary judgment without there being any application, those powers also would have to be exercised during this window, that is, after service of summons on the defendant and prior to framing of issues. In addition to this, we also reiterate that, in our view, a summary judgment under Order XIIIA CPC is not permissible without there being an appropriate application for summary judgment. The contents of an application for summary judgment are also stipulated in Rule 4 of Order XIIIA. The application is required to precisely disclose all material facts and identify the point of law, if any. In the event, the applicant seeks to rely on any documentary evidence, the applicant must include such documentary evidence in its application and identify the relevant content of such documentary evidence on which the applicant relies. The application must also state the reason why there are no real prospects of succeeding or defending the claim, as the case may be.
13. Insofar as the procedural requirements for Order XIII A CPC are concerned, as laid down by a Division Bench of this Court in Bright Enterprises Private Ltd. (supra), the same have been complied with. The requisite application seeking summary judgment has been filed by the Plaintiff. Grounds have been succinctly set out therein and the Defendant has also replied to the said application for summary judgement.
14. The circumstances and facts of the case as recorded above would show that insofar as the mark ‘SOXPLAT’ is concerned, there is no longer any dispute that exists between the parties as the Defendants have already given up the mark ‘SOXPLAT’, for whatever reasons. Thus, without rendering any opinion on the similarity or otherwise of the two marks ‘OXIPLAT’ and ‘SOXPLAT’, the Defendants’ submission is recorded and the Defendants shall be bound by the said statement that they do not wish to use the mark ‘SOXPLAT’ or any other mark, which is identical and similar to the mark ‘OXIPLAT’. The suit is, thus, decreed in terms of paragraph 26(a) & (b) of the prayer clause in the plaint.
15. The Defendants have made a statement today that they do not have any stock of the goods of medicines bearing the mark ‘SOXPLAT’, which they have discontinued since November, 2022. Thus, prayer 26(c) has become infructuous.
16. Insofar as the damages and costs are concerned, in the opinion of this Court, the following factors are borne in mind.
(i) The suit has remained pending and there was no interim injunction during this entire period against the Defendants. In fact, the ld. Single Judge and the ld. Division Bench have held against the Plaintiff and not granted an interim injunction.
(ii) The IPAB has rendered its decision only as in 2020. Immediately thereafter, the Defendants have given up the mark ‘SOXPLAT’.
(iii) The mark of the Defendants also stands removed from the
17. Accordingly, in these facts and circumstances, this Court is of the opinion that the interest of the Plaintiff would be suitably served by awarding costs of Rs.[5] lakhs. The costs shall be paid within eight weeks from today.
18. Decree sheet be drawn accordingly.
19. The suit is, thus, decreed and disposed of. All pending applications are also disposed of.
PRATHIBA M. SINGH JUDGE AUGUST 2, 2023/dk/am