JUDGMENT :

Prathiba M. Singh, J.

1. The present suit for permanent injunction was filed by the Plaintiff No.1 - Curewell Drugs and Pharmaceuticals Private Limited and Plaintiff No.2 - Horizon Bioceuticals Pvt. Ltd. seeking protection of the trademark and packaging in relation to their product ‘BEVITAL’ which is a multivitamin supplement. The Defendant - Ridley Life Science Private Limited had adopted an identical mark with identical packaging. This Court on 14th August, 2018 had granted an interim injunction. A Local Commissioner was also appointed to prepare an inventory of the infringing products. Defendant No.1 had initially entered appearance and on 20th November, 2018 had placed on record a new carton, which it intended to adopt. The carton was acceptable to the Plaintiffs and after taking the new carton and packaging on record, a decree of permanent injunction was passed in terms of paragraph 28 (i) to (v) of the plaint vide order dated 20th November 2018.

2. The sales of the Defendant no.1 were not on record and an affidavit was called from Defendant No.1 in respect of the following facts:-

“2. An affidavit shall be filed of the Managing Director of the Defendant No.1 placing on record the following information:-

(a) The date from which the Defendants' 'Bevital' product consisting of B-Complex Forte with Lysine was approved by the Drug Controller General of India (DCGI) or any other State FDA.

(b) The specific sales of 'Bevital' since the date of approval/production of the formulation.

(c) Total sales of 'Bevital' (B-Complex Forte with Lysine) on an annual basis.”

3. Defendant No.1 has now placed on record an affidavit of its Managing Director stating that the approval for the product was given by the State FDA on 4th August, 2017 and Defendant No.1 commenced manufacturing of the product from 31st January, 2018. The affidavit also states that out of the total 2020 boxes that were manufactured, only 1385 boxes were finally sold. This position is disputed by the ld. counsel for the Plaintiffs. Ld. Counsel for the Plaintiffs submit that Defendant No.1 being a habitual violator of various trademarks as observed in the order dated 3rd October, 2018 by a Ld. Single Judge of this Court in CS (COMM) 726/2018, punitive damages ought to be imposed.

4. Considering the facts in the present case and the further undertaking given by Defendant No.1 at the initial stage of the suit itself, insofar as damages and costs, is concerned, it is directed that the Defendant No.1 shall pay to the Plaintiffs a sum of Rs. 2,00,000/- within three weeks from today. The Plaintiffs shall be, in addition, entitled to refund of the court fee to the extent of 50% under Section 16A of the Court Fee Act. If the Defendant No.1 is found to be in violation of any of the Plaintiffs’ trademarks in future, Defendant No.1 would, without disputing the liability, be liable to pay a sum of Rs.10,00,000/- to the Plaintiffs. Such an order is being passed in the unique facts and circumstances of this case as the Defendant No.1 has not only been found to be violating the trademarks of third parties but this is the second occasion where the Plaintiffs have had a grievance against the Defendant’s adoption of an identical mark. The suit is, accordingly, decreed in the above terms against Defendant No.1 - Ridley Life Science Private Limited.

5. In addition to the disputes between the Plaintiffs and the Defendants no.1, this Court had also taken notice of the fact that in the present case, the Drug Authorities had approved the Defendant’s mark ‘BEVITAL” though it was identical to the Plaintiff’s pre-existing mark ‘BEVITAL”, both for multi-vitamin supplements. The competing product labels are set out below:

Plaintiff's Packaging

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Defendant's packaging

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6. In order dated 14th August, 2018, this Court had observed as under:-

“14. The present case raises a very important issue as to the role of Drug Controller General of India (hereinafter, “DCGI”) and the state FDAs in approving a d