The main legal point established is the application of 'split trial' in intellectual property cases, as well as the consideration of provisions under Section 106 of the Act and Section 135 of the Trade Marks Act, 1999, in assessing damages and rendition of accounts.

Jayant Nath, J.

Ia No. 5337/2019 (for condonation of delay in filing the accompanying appeal)

For the reasons stated in the application, the delay in filing the accompanying appeal is condoned. The application stands disposed of.

O.A. No. 37/2019

This appeal is filed seeking to impugn the order dated 13.02.2019 by which order the learned Joint Registrar has allowed the application filed by the plaintiff being IA No. 5444/2018 (wrongly noted as IA No. 5442/2018 in the impugned order) under Order 11 CPC seeking discovery and production of documents.

2. The case of the plaintiff is that the plaintiff is engaged in the business of manufacturing, marketing and selling, etc, pharmaceutical products. The plaintiff has a trade mark OMEZ. The grievance of the plaintiff is that the defendant is using deceptively similar carton and strip packaging bearing the mark OMECAP. It is stated that the mark OMEZ and its distinctive packaging is well known among the relevant class of customers, doctors and other healthcare professionals. It is pleaded that copying the said packaging by the defendant is an attempt to pass off OMECAP product as that of the plaintiff's OMEZ. On 22.08.2017, this court passed an ex-parte injunction stating that a prima facie case is made out and restrained the defendant from selling or offering for sale, etc. pharmaceutical preparations under the mark OMEZ having identical/similar trade dress or packaging as that of the plaintiff's OMEZ product.

3. On 12.02.2018 with the consent of the learned counsel for the parties, the above interim order was confirmed.

4. Learned counsel for the defendant states that even prior to filing of the suit the defendant had changed the trade dress/packaging and are not using the impugned trade dress/packaging.

5. Learned counsel for the plaintiff however states that the defendant is a well known company and would be liable to pay damages in view of the fact that they knowingly passed off their product as that of the plaintiff.

6. In these circumstances, the plaintiff has filed the stated application under Order 11 CPC which essentially seeks details of the sale made by the defendant by trying to pass off its product in the impugned packaging

7. Learned counsel for the defendant/appellant has however stated that the impugned order is erroneous. He relies upon a judgment of a Coordinate Bench of this court in Titan Industries vs. Nitin P. Jain & Ors., (2006) 126 DLT 132 to contend that normally in a matter like the present case, there would a spilt trial and first, this court should hear the matter only pertaining as to whether there has been a case of passing off the product by the defendant. It is only after recording such a finding this court would proceed to assess the damages/issue of rendition of accounts. He submits that presently, there has been no finding recorded by this court that the defendant is guilty of passing off its product as that of the plaintiff.

8. The Coordinate Bench of this court in Titan Industries vs. Nitin P. Jain & Ors., (supra) held as follows:-

"14. The court also noted that with a view to savings of cost, the practice has developed, in particular in intellectual property cases, when it is practicable, to have a "split trial". The action is divided into two stages. The first stage is the trial at which the issue is limited to that of liability, i.e. whether the plaintiff's rights have been infringed. The second stage, which is contingent upon liability being established at the first stage, is concerned with the question of assessment of damages and calculation of profits. In this way, the costs of exploring the issue of damages and profits is put off until it is clear that the defendant is liable and the issue really arises and requires determination. As a concomitant with this practice, there has likewise developed the practice of limiting discovery at the first stage to documents relevant to the issue of liability and excluding documents relevant only to the s