Glaxo Group Limited v. Huk Natural Private Limited & Anr.

1. Allowed, subject to just exceptions.

2. The application is disposed of. IA No.8735/2019 (u/O XI R-1(4) CPC)

3. For the reasons stated, the plaintiff is permitted to file the additional documents latest with the replication, if any.

4. The application is disposed of. CS(COMM) 337/2019 & IAs No.8733/2019 (u/O XXXIX R-1&2 CPC) & 8734/2019 (u/O XXVI R-9 & u/O XXXIX R-7 CPC)

5. The plaintiff has sued the two defendants, namely Huk Natural Private Limited and Hemendra Kumar, for permanent injunction restraining infringement of Trade Mark and passing off and for ancillary reliefs. CS(COMM) 337/2019 2019:DHC:3170

6. As per the averments in the plaint and the documents filed therewith, the defendant No.2 Hemendra Kumar trading as Shivam Healthcares is the registered proprietor of the allegedly infringing mark. However, the plaintiff, in the memorandum of parties, has given a note that “The defendant No.1 is the main contesting party”.

7. While the address given in the memorandum of parties, of defendant No.1 is of Delhi, the address given of defendant No.2 is of Agra, Uttar Pradesh. It is the averment in the plaint, on the basis of the replies to the legal notice preceding the suit, that the defendant No.1 is manufacturing and selling the products under the allegedly infringing mark under authority from the defendant No.2. If the actions of the defendant No.1 are under the authority of defendant No.2, it would be the defendant No.2 who would be the main contesting party and not the defendant No.1, as stated in the memorandum of parties.

8. I have enquired from the senior counsel for the plaintiff, how, on the averments in the plaint, the defendant No.1 is stated to be the main contesting party.

9. The senior counsel for the plaintiff, under instructions, states that the said note was made as per the requirement of the Registry.

10. Even if the Registry required the plaintiff to state, which of the several defendants is the main defendant, the statement made in pursuance thereto, has to be a correct statement and the requirement cannot be fulfilled by making an incorrect statement.

11. The said requirement is perhaps in terms of the recent dicta of this Court in Bata India Limited Vs. Chawla Boot House (2019) 259 DLT 292 where it was found that despite the law laid down by the Division Bench of this Court in Micolube India Ltd. Vs. Maggon Auto Centre 2008 (38) PTC 271 (Del.), in most cases, an unknown defendant or an employee or director is impleaded as the first defendant to prevent the main defendant from detecting the matter in the Cause List, and it was held that such a practise having been held to be impermissible by the Division Bench, the same cannot be permitted to be continued and the Registry was directed to ensure strict compliance of the judgment by seeking an undertaking from the plaintiff in IPR cases where there are multiple defendants that the defendant, No.1 is arrayed as the main contesting defendant in the suit.

12. The aforesaid law was reiterated in the facts of a retailer of the main defendant being impleaded as defendant No.1 in the suit. The position here is identical. The defendant no.1, manufacturing and selling under authority of defendant no.2, is akin to a retailer. Even otherwise, once such a direction is there, the plaintiff in all suits where there are multiple defendants has to state which of the defendants is the main defendant. The said question also becomes relevant for the purposes of gauging the territorial jurisdiction of the Court.

13. In the present case, though defendant No.1 stated to be the main defendant is indeed manufacturing and selling the goods bearing the allegedly infringing mark, but as per the averments in the plaint itself, under the authority of the defendant No.2, who is the holder of registration of the allegedly infringing mark. In this circumstance, it is the proprietor of the allegedly infringing mark who would be the main defendant and the main affected party, even though getting the goods bearing the said mark manufactured and sold by / from another, by relegating such powers to the said other. It is always open to the owner / proprietor of the allegedly infringing mark to, at any point of time, withdraw the authority relegated presently to the defendant No.1 and to commence manufacturing and selling the goods under the infringing mark himself or through any other person, making the injunction against defendant no.1 infructuous / futile. The defendant No.1 herein, whoisstatedtobemanufacturingandsellingthegoods under authority of the defendant No.2,isalsoakintoaPowerofAttorneyholderofthedefendant No.2 and on the basis of principles of law under Chapter X of the Indian Contract Act, 1872 also,oncetheprincipalof thedefendant No.1is also known to the plaintiff,itis the principalandnotthePowerofAttorneyholder,who would be the main defendant.

14. Though I thought that the plaintiff had merely committed a mistake in describing the defendant No.1 as the main contesting party, but the senior counsel for the plaintiff, under instructions, insists that the defendant No.1 has been correctly shown as the main contesting party. It is argued that it is the manufacturer and seller of goods bearing the allegedly infringing mark, who would be the main contesting party, even if doing it under authority of another and which another is also the holder of the mark.

15. No merit is found in the said contention. Even otherwise, the averment of the plaintiff in paragraphs 10 & 11 of the plaint is that “the defendants are collectively engaged in the business of manufacturing, selling and/or marketing skin creams…” and “…the defendants have used the defendants‟ BETNOVATE-N mark and the defendants‟ BETNOVATE-N packaging since April, 2019”. In paragraph 12 of the plaint, besides pleading that the defendant No.1 is manufacturing, packaging, assembling and selling goods under the allegedly infringing mark, it is also pleaded that “the defendant No.2, upon information and belief, markets and sell such skin creams. The defendant No.2 also owns a registration, namely, Registration No.3904497, for the mark BETNOVATE-N covering “herbal beauty product, beauty product, cosmetic products including cream, powder” in Class 3 and has filed an application, namely, Application No.4103994, to register the mark BETNOVATE-N covering “advertising, marketing of herbal beauty product, beauty product, cosmetic products including cream, powder” in Class 35. Further, upon information and belief, one of the directors of defendant No.1, namely, Bhupendra Kumar, and the defendant No.2 are brothers”.