Concealment of material facts can lead to the grant of an ad-interim injunction and dismissal of applications for cancellation of trademark registration.

JUDGMENT

I.A.14992/2022

1. This application has been filed by the plaintiff praying that the additional documents filed by it on 09.09.2022 be taken on record.

2. The plaintiff asserts that the additional documents are being filed to show that the word 'ZEST' is common to trade and that the filing of these documents has been necessitated due to the stand taken by the defendant in its written statement.

3. For reasons stated in the application, and as the suit is at an initial stage, the application is allowed, and the additional documents are taken on record.

4. This order shall, however, not be read as accepting the admissibility or effect of these documents, and shall be without prejudice to the rights and contentions of the defendant. The defendant shall also be entitled to file further rebuttal documents thereto, within a period of four weeks from the date of this judgment.

I.A. 7825/2022 and I.A. 9523/2022

5. I.A. No. 7825 of 2022 has been filed by the plaintiff praying for the grant of an ad-interim injunction restraining the defendant from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal preparations under the mark 'FOLZEST' or any other trademark which is deceptively similar to the plaintiff's trademark 'FORZEST'.

6. This Court, vide order dated 19.05.2022, was pleased to pass ad-interim ex-parte order restraining the defendant from using the mark 'FOLZEST' or any other trademark which is deceptively similar to the plaintiff's trade mark 'FORZEST'.

7. I.A. No. 9523 of 2022 was thereafter filed by the defendant under Order XXXIX Rule 4 read with Section 151 of the Code of Civil Procedure, 1908 (in short, the 'CPC') praying for setting aside the order of this Court dated 19.05.2022.

FACTUAL BACKGROUND

8. The plaintiff has filed the above suit inter alia contending that the plaintiff's predecessor-in-interest, namely, 'Ranbaxy Laboratories Ltd.', coined and adopted the trade mark 'FORZEST' in the year 2003 and has been using the same since then. The said mark is also registered vide application no. 1171650 dated 04.02.2003 in Class 05 for 'pharmaceutical and medicinal preparations for human and veterinary use'. The plaintiff has been recorded as the subsequent proprietor of the said trade mark with the Trade Mark Registry.

9. The plaintiff further asserts in the plaint that it was only in the first week of May, 2022, that the plaintiff came across the defendant's application seeking registration of the impugned mark 'FOLZEST' under application no. 4624943 dated 25.08.2020 on a 'proposed to be used' basis in Class 05; and the same was immediately opposed by the plaintiff on 04.05.2022.

10. The plaintiff further asserts that the plaintiff's mark 'FORZEST' was cited in the Examination Report against the trade mark application of the defendant, and the defendant vide reply dated 27.10.2020 stated that the cited mark, that is, 'FORZEST', is different, phonetically as also visually, from the defendant's mark. It was further contended that the defendant is the registered proprietor of various 'ZEST' trade marks. The trade mark application of the defendant was thereafter advertised on 31.01.2022 and is pending consideration before the Trade Marks Registry.

11. The plaintiff asserts that the adoption of a similar mark to that of the plaintiff by the defendant amounts to infringement of the plaintiff's trade mark as also passing off and unfair competition.

12. As noted hereinabove, based on the assertions of the plaintiff and the documents filed with the plaint, this Court on 19.05.2022 passed an ad-interim ex-parte order of injunction against the defendant restraining the defendant from selling its medicinal preparations under the impugned mark 'FOLZEST'.

13. The defendant in its application, being I.A. No.9523 of 2022, has asserted that the plaintiff obtained the above ad-interim ex-parte order of injunction by concealing various material facts from this Court. It is asserted that