JUDGMENT

C. Hari Shankar, J.

I.A.351/2023 (under Order XXXIX Rules 1 and 2 of the CPC)

The lis

1. COBADEX is registered, under the Trade Marks Act, 1999, as a word mark in favour of the plaintiff in Class 5, for pharmaceutical goods, with effect from 18th July 1958. The plaintiff alleges that the defendant is using the mark COMODEX which infringes the plaintiff's registered COBADEX mark. The fact that the defendant uses the tag-on 'PLUS', with COMODEX, according to the plaintiff, makes no difference. The infringement remains.

2. The plaintiff alleges that the infringement is compounded by the use, by the defendant, of a trade dress which is identical to the trade dress of the plaintiff. These are the rival trade dresses, as provided with the plaint:

I will be referring, in this order, to these packs as 'Pack 1' of the plaintiff and the defendant respectively.

Rival Submissions

3. Submissions of Mr. Dushyant Mahant:

3.1. Mr. Dushyant Mahant, learned Counsel for the plaintiff submits that the trade dress, as well as the brand name, of the defendants' product are so deceptively similar to those of the plaintiff that they disclose a clear case of bad faith adoption, both structural as well as phonetic.

3.2. The plaintiff is, therefore, according to Mr. Mahant, entitled to an injunction against the defendant using the impugned COMODEX mark or the afore-represented Pack 1 trade dress. Res, as Mr. Mahant would submit, ipsa loquitur.

4. Submissions of Mr. Vikas Khera, by way of reply

4.1. Appearing for the defendants, Mr. Vikas Khera, learned Counsel, submits that the COMODEX PLUS Pack 1, which, according to the plaintiff, adopts a trade dress which is deceptively similar to that of the plaintiff, has been discontinued and is no longer been used by his client. Nor, he submits, would his client use the said packaging during the course of the present proceedings. As such, Mr. Khera submits that the grievance of the plaintiff with respect to Pack 1 does not survive for consideration, at least at the Order XXXIX stage.

4.2. Mr. Khera has also advanced certain further submissions with respect to the manner in which Pack 1 came to be adopted and used by the defendant. He also submits, among other things, that the plaintiff has not placed, on record, any credible material to indicate that, in 2018, when the defendant did start using Pack 1, the plaintiff's product was being sold in the market in the plaintiff's Pack 1. Though Mr. Mahant seeks to contend that, in fact, even in proceedings initiated by the defendant, against the plaintiff under Section 57 of the Trade Marks Act before the Registrar of Trade Marks, the defendant has relied on Pack 1, nonetheless, as Mr. Khera has submitted that the defendants are neither packaging their product in Pack 1 at present nor intend to do so in future, I do not deem it necessary to examine the plaintiff's contention that Pack 1 adopts a trade dress which was deceptively similar to that of the plaintiff. Order XXXIX of the CPC concerns itself with the future, not the past.

4.3. The plea of trade dress similarity, as urged by Mr Mahant, therefore, stands disposed of accordingly.

4.4. The only issue that survives for consideration is, therefore, whether the plaintiff is entitled to an injunction against the use, by the defendants, of the COMODEX mark, with or without the suffix PLUS.

4.5. Mr. Khera submits that, in phar maceutical preparations, 'DEX', as a suffix, is publici juris. He has invited my attention to advertisements and other material which indicate the use of the marks Convidex Forte, Cozodex, Cooldex, Kofadex, Kofradex, Cefodex, Celodex, Curadex, Chloridex, Caredex, Cresadex, Casodex, Cyclodex, Cuf Dex and Clobidex, among others, to indicate that 'DEX' is a common suffix figuring in the name of several pharmaceutical preparations. He has also referred to trademarks registered in respect of pharmaceutical preparations which contain 'DEX' as a suf