Full Text
HIGH COURT OF DELHI
Date of Decision: 12.04.2022
DR REDDYS LABORATORIES LIMITED ..... Petitioner
Through: Mr Ranjan Narula, Advocate.
Through: Mr R.K. Jain and Mr Devansh Jain, Advocates for R-2.
JUDGMENT
1. The petitioner has filed the present petition under Section 34 of the Arbitration and Conciliation Act, 1996 (hereinafter ‘the A&C Act’) impugning an arbitral award dated 23.07.2021 (hereinafter ‘the impugned award’) delivered by the Arbitral Tribunal comprising of a learned Sole Arbitrator.
2. In the year 2004, the petitioner adopted and coined the Trademark ‘2DEGE’.
3. On 23.08.2004, the petitioner entered into a Memorandum of Understanding (hereafter ‘MoU’) with the Defence Research and Development Organisation, Ministry of Defence, Government of India 2022:DHC:1438 (hereafter ‘DRDO’) for “Technology Transfer Agreement for 2- DEOXY-D-GLUCOSE (2-DG)”. In terms of the said MoU, DRDO granted a non-exclusive revocable license to the petitioner to utilize the “Technology” developed by it for manufacturing and selling the said product in India and abroad. It is averred in the petition that the petitioner, working in collaboration with the DRDO, developed the first Indian origin anti-covid medicine under the brand ‘D2G’.
4. Thereafter, on 18.11.2004, the petitioner applied for registration of the Trademark ‘2DEGE’ in Class 5 (Medicinal and Pharmaceutical Preparations and Substances) under the number 132097[1] and the same was duly registered. Further, on 03.02.2015, the petitioner procured another registration of the mark ‘2DEGE’ in Class 5 (Medicinal and Pharmaceutical Preparations and Substances) under the number 2897647.
5. On 01.05.2021, the license for manufacturing of ‘2DG’ medicines was granted to the petitioner.
6. On 08.05.2021, respondent no.1 obtained the registration of ‘http://www.2dg.in’ (hereafter ‘the impugned domain name’).
7. On 16.05.2021, the petitioner applied for registration of the mark ‘2DG’ in Class 5 under the number 4974704. Subsequently, the device mark applications for registration of the mark ‘2DG’ were also filed by the petitioner.
8. It is averred in the petition that in the first week of June, 2021, the petitioner came across the impugned domain name of the respondent.
9. Admittedly, disputes arose between the parties with respect to the impugned domain name. In view of the disputes, the petitioner filed a complaint with National Internet Exchange of India (hereafter ‘respondent no. 2’) and requested that an Administrative Panel be appointed and the impugned domain name be transferred to it in accordance with the.IN Domain Name Dispute Resolution Policy Rules of Procedure (hereafter ‘INDRP’).
10. Pursuant to the petitioner’s request, an Arbitral Tribunal was constituted. Respondent no. 1 did not participate in the proceedings before the Arbitral Tribunal and was not represented before the Arbitral Tribunal. The arbitral proceedings culminated in the Arbitral Tribunal rendering the impugned award ex parte.
11. By the impugned award, the Arbitral Tribunal rejected the claim of the petitioner and declined its claim for transfer of the impugned domain name, in its favour. The Arbitral Tribunal held that the petitioner had two types of trademarks mentioned in the complaint and annexures and thus, it could not restrain respondent no.1 from using ‘2DG’ as a domain name. The Arbitral Tribunal held that the petitioner was the owner of the Trademark ‘2DEGE’ and considering that the domains were being used by internet users, who were not illiterate, the two Trademarks, that are, ‘2DG’ and ‘2DEGE’ could easily be differentiated.
12. Aggrieved by the impugned award, the petitioner has filed the present petition. Reasons and Conclusion
13. At the outset, it is relevant to refer to refer to Sections 4 and Section 6 of the INDRP. The same are set out below: -
14. In terms of Section 4 of the INDRP, the petitioner was entitled to raise a dispute on the ground that the impugned domain name, registered in favour of respondent no.1, was in conflict with its legitimate rights and interests. The petitioner had founded its complaint on the basis that the impugned domain name was identical and/or confusingly similar to its Trademark and respondent no.1 had no legitimate interest in respect of the impugned domain name, in terms of Section 6 of the INDRP.
15. However, respondent no.1 had not participated in the arbitral proceedings. He had not produced any material to show any legitimate interest in the impugned domain name. There was also no material on record to suggest that respondent no.1 was carrying on any legitimate business connected with the impugned domain name.
16. In view of the above, the limited scope of controversy required to be addressed by the Arbitral Tribunal was whether the impugned domain name was deceptively similar to the petitioner’s Trademark.
17. The petitioner is a well-known pharmaceutical company. The petitioner had asserted that it was using the Trademark ‘2DG’. The petitioner had established that it had applied for registration of the Trademark ‘2DG’ and was also using the said trademark in connection with one of its formulations. The details of the Trademarks in respect of which the petitioner had made applications to the Registrar of Trademarks, is as under: - S.No. Trademark Date Appl.No. Status
1. 2 DG 16/05/2021 4974704 Pending
2. 2-DG 31/05/2021 4989518 Pending
3. 03/06/2021 4993172 Pending
4. 03/06/2021 4993173 Pending
18. An image of the packing of a formulation depicting the mark ‘O2DG’ is set out below:
19. In view of the above, it was clear that there could be no doubt that the petitioner was using the Trademark ‘2DG’ and had applied for its registration.
20. In view of the above, there can be no dispute that the impugned domain name is similar to the Trademark used by the petitioner in connection with the formulation ‘2-Deoxy-D-Glucose’.
21. The petitioner was also using its Trademark ‘2DEGE’ and as noted by the Arbitral Tribunal, the petitioner had obtained the registration of that mark. However, the use of the said trademark does not in any manner lead to the conclusion that the petitioner was not using the Trademark ‘2DG’ or was not a proprietor of the said trademark.
22. A plain reading of the impugned award indicates that the Arbitral Tribunal had confined its examination to the similarity between the impugned domain name and the petitioner’s registered Trademark ‘2DEGE’. It appears that the Arbitral Tribunal had questioned the requirement of the petitioner to use the Trademark ‘2DG’. The impugned award proceeds on the Arbitral Tribunal’s assumption that it was not necessary for the petitioner to use the Trademark ‘2DG’. This is apparent from a plain reading of paragraphs 22 and 23 of the impugned award. The said paragraphs are relevant and set out below: -