Glaxo Group v. Manoj Kumar Jain

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Page 1 Wednesday, June 19, 2024

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2023 SCC OnLine Del 5525
In the High Court of Delhi at New Delhi

(BEFORE PRATHIBA M. SINGH, J.)
Glaxo Group Limited and Another … Plaintiffs;

Versus
Manoj Kumar Jain and Others … Defendants.
CS(COMM) 377/2023 and I.A. 16618/2023
Decided on September 5, 2023
Advocates who appeared in this case:
Mr. Urfee Roomi, Ms. Janaki Arun and Ms. Anuja Chaudhury, Advs.
(M : 9818098835)
Mr. Manoj Kumar Jain, Defendant No. 1 in person. (M : 9840130029)
The Judgment of the Court was delivered by
PRATHIBA M. SINGH, J.:— This hearing has been done through
hybrid mode.
I.A.16618/2023 (u/O XXIII Rule 3 CPC) in CS(COMM) 377/2023
2. The present suit has been filed by the Plaintiff No. 1-Glaxo Group
Limited and Plaintiff No. 2-GlaxoSmithKline Pharmaceuticals Limited
(hereinafter, ‘the Plaintiffs') against Defendant No. 3-Macro
Pharmaceuticals and its two partners Defendant No. 1-Mr. Manoj Kumar
Jain and Defendant No. 2-Mr. Vipin Kumar Jain. The suit has been filed
seeking protection of the following trademarks of the Plaintiffs
(hereinafter, ‘the Plaintiffs' marks’).
i. ZINETAC
ii. BETNESOL
iii. COBADEX and COBADEX formative marks, including COBADEX
CZS
iv. PHEXIN
v. FEFOL and FEFOL formative marks, incl. FEFOL-Z
vi. ELTROXIN.
3. The Plaintiffs' grievance was that the Defendants were using the
marks ZINEMAC, BETLONE, COBAMAC, PHEXIMAC, FERIFOL and EL
THROXY along with packaging, which according to the Plaintiffs,
constituted infringement of their registered trademarks as also passing
off.
4. Vide order dated 31st May, 2023, this Court granted an ex-parte
injunction restraining the Defendants in the following terms.
“18. The Court has considered the afore-noted submissions. The
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comparison drawn by the Plaintiffs between their marks and the

Impugned Marks, at paragraph 17 of the application, is outlined in
the table below:
S. NO. DEFENDANTS' PLAINTIFF'S CHANGES
MARKS MARKS MADE BY THE
DEFENDANTS
1. ZINEMAC ZINETAC The Defendants
have merely
replaced the
letter T in the
Plaintiffs
ZINETAC mark
with the letter
M to arrive at
the Defendants’
ZINEMAC mark.
2. BETLONE BETNESOL Both the marks
start with letter
combination the
BET and
contains the
letter
combination
NE, and the
letters O and L.
The Defendants
have merely
rearranged the
letter-
combination NE
and removed
the letter S
from the
Plaintiffs
BETNESOL
mark to form
the BETLONE
mark.
3. COBAMAC COBADEX The Defendants
have merely
replaced the
letter
combination
DEX in the
-----------------------------------------------------------------------------------------------------------------------------------------------------------
Plaintiff's
COBADEX mark
with the letters
MAC to arrive at
the Defendants’
COBAMAC
mark.
4. ELTHROXY ELTROXIN Both trade
marks start
with the letter
combination
ELT and contain
the letter
combination
ROX. The
Defendants
have merely
added the letter
H and replaced
the letter
combination IN
with the letter Y
in the Plaintiff s
ELTROXIN mark
to arrive at the
to arrive at the
Defendants'
ELTHROXY
mark.
5. FERIFOL-Z FEFOL-Z The Defendants'
FEFOL FERIFOL mark
incorporates the
Plaintiff's FEFOL
mark in its
entirety, with
the exception of
adding the
letters RI in the
middle.
6. PHEXIMAC PHEXIN The Defendants
have merely
replaced the
letter N with
the letter
-----------------------------------------------------------------------------------------------------------------------------------------------------------
combination
MAC In the
Plaintiffs
PHEXIN mark to
arrive at the
Defendants’
PHEXIMAC
mark.
19…20…
21. Accordingly, till the next date of hearing, the Defendants
and/or anybody acting on their behalf are restrained from
manufacturing, offering for sale, selling, displaying, advertising,
marketing, directly or indirectly, any pharmaceutical products
bearing the Impugned Marks (except “BETLONE”) or any other mark
which is identical/deceptively similar to Plaintiffs' Marks.”
5. The Court held that the Defendants' Marks - “ZINEMAC,”
“COBAMAC,” “ELTHROXY,” “FERIFOL-Z,” and “PHEXIMAC” were
deceptively similar to the Plaintiffs' marks due to their phonetic and
structural resemblance. These impugned marks were used for medicinal
preparations with the same therapeutic purposes, containing identical
active ingredients and marketed through the same distribution
channels, which suggested that Defendants’ intended to exploit the
Plaintiffs' reputation and deceive the public into buying their products.
6. After filing of the present suit, the matter has been resolved
amicably between the parties. An application under Order XXIII Rule 3
CPC has been filed setting out the terms and conditions of the
settlement, which has been arrived at. As per the settlement
application, the terms of settlement are contained in paragraph 2(a) to
2(o) of the application.
7. In the present suit for permanent injunction, the Plaintiffs also
seek an order declaring the Plaintiffs' marks as “well-known” marks
under Section 2(zg) of the Trade Marks Act, 1999.
8. Ld. Counsel for the Plaintiffs Mr. Urfee Roomi submits that the
Plaintiffs are entitled to declaration of three marks ZINETAC,
BETNESOL, COBADEX as well-known marks. In support of this
submission, ld. Counsel for the Plaintiffs has taken pains to point that
each of the factors under Section 11(6) of the Trade Marks Act, 1999
are satisfied in the present case.
9. The Court has perused the record. Insofar as the mark ‘ZINETAC’
and ‘COBADEX’ are concerned, for the time being ld. Counsel for the
Plaintiffs does not press the prayer for a well-known declaration. The
same is left open for being sought in some other proceedings.
10. The Plaintiffs also pray for declaration of ‘BETNESOL’ as a well-
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known mark owing to long and extensive use of the mark. Photographs
of Plaintiffs' product ‘BETNESOL’ are as follows:
11. The Plaintiffs claim that the mark ‘BETNESOL’ was first conceived
in the early 1960s, and since then the goods bearing the mark have
been available in India. As an anti-inflammatory steroid or a
‘corticosteroid’, the Plaintiffs' product has been made available as far
back as 1962. Copies of the articles from the British Medical Journal
have been placed on record to demonstrate the long use. Further,
advertisements have been placed on record to also demonstrate the use
of the Plaintiffs' products in India as well.
12. Market reports published by agencies have been placed on
record to demonstrate the extensive coverage received by the products
under the mark ‘BETNESOL’. For example, in a report titled ‘The Indian
Pharmaceutical Industry : Collaboration for Growth’ (KPMG, 2006) for
the year 2004, the brand name ‘BETNESOL’ was acknowledged as one
of the top ten branded drugs for that year.
13. Newspaper clippings have also been placed on record the
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extensive coverage received by the said product. For example, in 2020,

it was reported by Hindustan Times in an article titled ‘Birds falling prey
to dehydration, fatigue’ that the Plaintiffs' product was used as a form
of treatment for birds that have been admitted with complaints of
dehydration. Further, journal articles have been placed on record to
showcase the wide adoption and repute of the Plaintiffs' product among
the medical community in India. Further, sales figures have also been
placed on record to demonstrate extensive sales of the Plaintiffs'
pharmaceutical preparations bearing the mark ‘BETNESOL’.
14. It has been also averred that the pharmaceutical preparations
bearing the Plaintiffs' mark ‘BETNESOL’ are sold through a network of
distributors and stockists throughout India as well as through online
pharmacies.
15. The Plaintiffs have also placed on record instances of successful
enforcement actions with respect to the mark ‘BETNESOL’. Recently this
Court in Glaxo Group Ltd. v. Zenlabs Ethica Ltd. [Order dated 3rd June
2022, CS(COMM) 422/2023] granted an ex-parte injunction for
protecting the mark ‘BETNESOL’. The relevant portion of the said order
is as follows:
““27. It is further averred that Plaintiff's and Defendant's Marks
starts with the letter combination “BETNE”. Defendant has merely
replaced the letter “S” with the letter “C” in Plaintiff's BETNESOL
Marks to form Defendant's BETNECOL mark. Further, as regards
Defendant's BETNEVIN and BETNEZEN marks, Defendant has merely
replaced the letter combinations “SOL” and “OVATE” in Plaintiff's
BETNESOL Marks and Plaintiff's BETNOVATE Marks with the letter
combination “VIN” and “ZEN” to form the Defendant's BETNEVIN and
BETNEZEN marks. These minor changes do not differentiate
Defendant's Marks from the Plaintiff's Marks. Thus, the rival marks,
when looked at in their entirety, are similar in appearance,
sound, and structure. Moreover, just like the Plaintiff,
Defendant's goods are tablets and injections. The rival tablets,
oral drops and injections are sold through identical trade
channels to the same consumers. Further, chances of
consumer confusion are enhanced by the fact that the rival
products have identical therapeutic indications and active
ingredients. ….
…
28. Having heard learned counsel for the Plaintiff, this Court
is of the view that Plaintiff has made out a prima facie case for
grant of an ex parte ad interim injunction. Balance of
convenience lies in favour of the Plaintiff and it is likely to
suffer irreparable harm in case the injunction, as prayed for, is
not granted.
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29. Accordingly, Defendant, any other individuals, officers,

managers, shareholders, directors, employees, agents, dealers,
licensees, companies and retailers, stockists, chemists or any
persons/entities that are related or affiliated to the Defendant, as the
case may be, and all others, acting for and on behalf of the
Defendant, are restrained from manufacturing, offering for
sale, selling, displaying, advertising, marketing, whether
directly or indirectly and whether on the Internet or
otherwise, tablets, oral drops, injections and any other
medicinal or pharmaceutical products bearing Defendant's
Marks and marks that incorporate BETNECOL, BETNEZEN
and/or BETNEVIN marks, or any other mark that is
identical/deceptively similar to Plaintiff's Marks
….”
16. This Court has, in Levi Strauss and Co. v. Interior Online
Services Pvt. Ltd. [CS (COMM) 657/2021, decision dated 24th March
2022], after perusing the extent of reputation in the mark, granted a
‘well-known’ status under Section 2(zg) and Section 11(6) of the Trade
Mark Act, 1999 to the Plaintiff's ‘Arcuate Stitching Mark’. The Court
observed as follows:
“16. In Lois Sportswear, USA, Inc. v. Levi Strauss & Co., 631 F.
Supp. 735 (S.D.N.Y. 1985), the US District Court for the Southern
District of New York, while considering this very ‘Arcuate Stitching
Design’ mark, held as under:
“Based on the above analysis, Levi's arcuate mark is a strong
mark that qualifies for a high degree of protection. In addition to its
status as an incontestable registered mark, the Levi's arcuate mark
is a fanciful design which has no function other than as a source
indicator. Furthermore, assuming Levi needed to establish secondary
meaning, Levi has presented evidence of widespread advertising and
promotion of Levi's jeans featuring the Levi's arcuate mark,
continuous use of the mark for more than a century, and sales of
more than 800 million pair of jeans bearing the Levi's mark since
1971. Evidence of sales success, advertising expenditures, and
length and exclusivity of use are factors relevant to a determination
of the strength of a mark.
Xxx
In the present case, the Levi acurate mark is not merely a
fragment of a larger mark including the Levi name but instead
has an independent degree of recognition and connection with
Levi Strauss, unlike, for example, the McGregor-Drizzle mark
in McGregor-Doniger, supra.”
….
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19. It is important to note that the trade mark in question i.e., the
‘Arcuate Stitching Design’ mark has been used on jeans, pants, and
trousers of the Plaintiff since the first pair of jeans were created by it
in the year 1873 and it serves as a unique identifier in respect of
the goods of the Plaintiff. The first trade mark registration for the
‘Arcuate Stitching Design’ mark dates back to 1943, granted in the
US. Since then, the mark has been registered as a trade mark by the
Plaintiffs in numerous countries, as is evident from the documents
placed on record.
…
20. This Court is of the opinion that the ‘Arcuate Stitching
Design’ mark has become ‘well known’ to the public which
uses garments carrying the said mark, that the use of the
‘Arcuate Stitching Design’ mark in relation to other goods or
services would likely be taken as indicating a connection
between those goods and the Plaintiff. The mark of the
Plaintiff is thus an extremely distinctive mark which has
acquired secondary meaning due to extensive use spanning
over one and a half century.”
17. In addition, reliance is also placed upon Hermes International v.
Crimzon Fashion Accessories Pvt. Ltd. [2023 SCC OnLine Del 883],
wherein the factors outlined by the ld. Single Judge under Section 11
(6) of the Trade Marks Act, 1999, which would be relevant for declaring
the mark as well-known, are as follows:
“(i) The knowledge or recognition of that trade mark in the relevant
section of the public, including knowledge in India obtained as a
result of promotion of the trade mark.
(ii) The duration, extent and geographical area of any use of that
trade mark.
(iii) The duration, extent and geographical area of any promotion of
the trade mark, including advertising or publicity and
presentation, at fairs or exhibition of the goods or services to
which the trade mark applies.
(iv) The duration and geographical area of any registration of, or any
application for registration of that trade mark under the Trade
Marks Act to the extent that they reflect the use or recognition of
the trade mark.
(v) The record of successful enforcement of the rights in that trade
mark, in particular the extent to which the trade mark has been
recognised as a well known trade mark by any court or Registrar
under that record.”
18. The Court has perused the evidence on record. Insofar as
BETNESOL is concerned, the following is the evidence relied upon by
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the Plaintiffs.
(i) The extensive use of the mark since 1960s and parallel publicity
given by the Plaintiffs in India since 1960s.
(ii) The extensive use of the mark BETNESOL for tablets as also other
ophthalmic and pharmaceutical preparations. Betamethasone
Sodium Phosphate formulation for the product ‘BETNESOL’ has
achieved high turnover since the last several years. The sales
figures for the said mark from 2017 onwards is set out below,
both by monetary value and in volumes.
Year Monetary Value (in Volume (in crore)
Rs. crore)
2017 111.6 crores 22.13 crore
2018 111.4 crores 18.57 crore
2019 128.8 crores 20.23 crore
2020 129.7 crores 19.03 crore
2021 147.2 crores 18.59 crore
2022 (YTD) 106.3 crores 12.58 crore
19. Some of the press clippings and publicity material as also the
front surveys conducted show that BETNESOL has been declared as one
of the top 10 pharmaceutical brands in India by survey conducted by
the Indian Pharmaceutical Industry.
20. The material would also reveal that the Plaintiffs have used the
mark BETNESOL extensively in India for the last more than five
decades. The product is also sold as part of various health programmes,
which was conducted by the State and Central Government.
21. Today, the Defendants-Mr. Manoj Kumar Jain and Vipin Kumar
Jain, have joined the proceedings virtually and have acknowledged the
Plaintiffs' rights in the Plaintiffs' marks as also the trade dress and
packaging of the Plaintiffs. The Defendants have also agreed to
represent and undertake that they have ceased use of the Plaintiffs'
marks or any other similar marks as also infringing trade dress and
packaging.
22. The Defendants have also submitted that they have destroyed all
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the existing inventory at their own costs, and they have taken down the
e-pharmacy business listing website. Various assurances of the
Defendants are recorded in the application.
23. The Defendants have also paid Rs. 1,50,000/- to the Plaintiffs for
reimbursement of partial costs incurred by the Plaintiffs. The settlement
application has been signed by both the Defendants as also the
Plaintiffs. The application also contains the attachments of all the
impugned products in the present case. The same assertion is
supported by the parties.
24. Copies of Aadhaar cards of both Defendant Nos. 1 & 2 have been
handed over to the Court Master. Mr. Manoj Kumar Jain, who has joined
the proceedings virtually, has confirmed the fact that the settlement
has been arrived at.
25. The Court has perused the settlement. The terms are lawful and
there is no impediment in recording the same. The suit is, accordingly,
decreed in terms of paragraph 2(a) to 2(o) of the application under
Order XXIII Rule 3 CPC.
26. It is directed that all the parties, and anyone else acting on and
for their behalf, shall be bound by the settlement terms.
Declaration as well-known mark:
27. On the strength of averments in the plaint, and the documents
placed on record, and the reputation in the mark ‘BETNESOL’ as
gleaned from the record, it is clear that the Plaintiffs' mark ‘BETNESOL’
has acquired a ‘well-known’ status. Considering the use of the mark
since 1960s in the pharmaceutical sector, and the factors outlined in
paragraph 15 above, the mark ‘BETNESOL’ has achieved the status of a
‘well-known mark’. Accordingly, a decree of declaration declaring the
mark ‘BETNESOL’ as a ‘well-known’ mark in respect of pharmaceutical
and medicinal items as also cognate and allied products is granted.
28. The suit is decreed in the above terms. Decree sheet be drawn
up accordingly.
29. The next date of hearing i.e., 2nd November, 2023 stands
cancelled.
———
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SCC Online Web Edition, © 2024 EBC Publishing Pvt. Ltd.

Page 1 Wednesday, June 19, 2024

2023 SCC OnLine Del 5525

In the High Court of Delhi at New Delhi

Glaxo Group Limited and Another … Plaintiffs;

comparison drawn by the Plaintiffs between their marks and the

extensive coverage received by the said product. For example, in 2020,

29. Accordingly, Defendant, any other individuals, officers,

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