Full Text
HIGH COURT OF DELHI
Date of Decision: 20th October, 2022 C.O. (COMM.IPD-TM) 755/2022
GLAXOSMITHKLINE
PHARMACEUTICALS LTD. ..... Petitioner
Through: Mr. Dushyant Mahant, Mr. Urfee Roomi, Ms. Janaki Arun and Mr. Alvin Antony, Advocates.
Through: Mr. Bhavya Goyal, Advocate for R-1.
Mr. Apoorv Kurup, Central Government Standing
Counsel with Mr. Devvrat Yadav, Government Pleader and Ms. Alina, Advocate for R-2.
GLAXOSMITHKLINE PHARMACEUTICALS LTD. ..... Plaintiff
Through: Mr. Dushyant Mahant, Mr. Urfee Roomi, Ms. Janaki Arun and Mr. Alvin Antony, Advocates.
Through: Mr. J. Sai Deepak, Mr. Bhavya Goyal and Mr. Avinash Sharma, Advocates.
JUDGMENT
CPC, by Plaintiffs), 16623/2022 (under Section 151 CPC for recall of infringing products, by Plaintiffs) and 16624/2022 (under Section 12A
Commercial Courts, Commercial Division and Commercial Appellate
Division of High Courts Act, 2015, by Plaintiffs)
1. On 12.10.2022, learned counsel for the Defendants, on instructions, had stated that no further manufacturing will be undertaken by the Defendants under the impugned trademark, till the next date of hearing. Learned counsel had sought time to take instructions with respect to disposal of the existing stock.
2. Today the Court is informed that Defendants have given three options to the Plaintiff in furtherance of settling the disputes between the parties and with a view to put quietus to the litigation. Learned counsel for the Plaintiff submits that Plaintiff is agreeable to one of the three options offered by the Defendants and the suit may be disposed of in the said terms.
3. Having heard learned counsels for the parties, the suit is disposed of on the following terms, agreed between the parties: (a.) Defendants shall clear the existing stock within a limited period of 90 days, as the matter pertains to essential life-saving drugs. At the end of 90 days Defendants will furnish to the Plaintiff an inventory of the outstanding stock. Defendants undertake that after expiry of 90 days period no further stock under the impugned mark will be sold by the Defendants and remaining stock, if any, will be destroyed by the Defendants in presence of the Authorised Representative(s) of the Plaintiff at the premise, date and time indicated by the Defendants to the Plaintiff’s Authorised Representative(s). (b.) Defendant No. 1 undertakes that in terms of the relief claimed by the Plaintiff in para 62(g) of the plaint, it shall withdraw the trademark applications no. 4990475, 5048966, 5048967, 5142770, 5142771, 5142772, 5142773 and 5245911 and shall also take requisite steps for cancellation of the trademark registration no. 5054226, within a period of 4 weeks from today.
4. Needless to state that upon Defendant No. 1 filing withdrawal application(s), Registrar of Trade Marks shall take further action, in accordance with law, as expeditiously as possible. Copies of the withdrawal application(s) shall be furnished to the Plaintiff.
5. At this stage, learned counsel for the Plaintiff submits that Plaintiff has also sought a declaration in the present suit for declaring the trademark ZINETAC as a well-known trademark, however, since the suit is being decreed based on a settlement between the parties, the relief claimed in para 62(h) of the plaint be left open to be raised in appropriate proceedings.
6. Accordingly, the Suit stands decreed in view of the aforementioned terms of settlement between the parties, which shall form a part of the decree and bind the parties thereto.
7. Plaintiff is entitled to refund of the Court Fees deposited by it, in accordance with provisions of Section 16 of the Court Fees Act, 1870 read with Section 89 CPC, 1908.
8. Registry is directed to draw up the Decree sheet.
9. Suit is accordingly disposed of along with pending applications, granting liberty to the Plaintiff to claim the relief of declaration of the trademark ZINETAC as a well-known trademark in appropriate proceedings. C.O. (COMM.IPD-TM) 755/2022
10. Present petition has been filed by the Petitioner seeking cancellation of impugned registration no. 5054226 and for rectification of the Register of Trade Marks, subsequent thereto.
11. In view of the undertaking given by Respondent No. 1 in CS(COMM) 705/2022, as aforementioned, Respondent No. 1 shall take requisite steps towards cancellation of the registration and thus no further orders are required to be passed in the present petition.
12. Let steps be taken by Respondent No. 1 in terms of the undertaking within a period of 4 weeks from today with advance intimation to the Petitioner.
13. Petition is allowed and stands disposed of in the aforesaid terms.
JYOTI SINGH, J OCTOBER 20, 2022