The central legal point established in the judgment is the protection of trademarks, the establishment of statutory and common law rights, and the imposition of costs for trademark infringement.

JUDGMENT

Amit Bansal, J. (Oral)

1. The present suit has been filed seeking the relief of permanent injunction restraining the defendant from infringing the trademark of the plaintiff, passing off and other ancillary reliefs.

BRIEF FACTS

2. Briefly the case set up by the plaintiff in the plaint is as under:

2.1. The plaintiff company incorporated under the law of England and Wales is a part of the GSK group of companies. The plaintiff is an international science-led global healthcare company that researches and develops a broad range of innovative speciality medicines. The plaintiff's pharmaceutical products are sold and marketed around the world, including India.

2.2. The plaintiff first adopted the "BETNESOL" mark in the early 1960s in relation to medicinal and pharmaceutical preparations, including injections, which are used to treat a wide variety of diseases such as allergies, arthritis and inflammatory disorders. The plaintiff conducts business in India through its Indian subsidiary, Glaxo Smith Kline Pharmaceuticals Limited.

2.3. The plaintiff is the registered proprietor of the mark "BETNESOL" in Class 5 in respect of `pharmaceutical, veterinary and sanitary substances'. Plaintiff became the subsequent proprietor of the aforesaid trademark owing to an assignment from Glaxo Laboratories Ltd. in 1981. The plaintiff has obtained registrations for the mark "BETNESOL" in India and several other countries.

2.4. The plaintiff has given its annual turnover in respect of sale of medicinal and pharmaceutical preparations, bearing the "BETNESOL" trademark from the years 2011 to 2021. The turnover of the plaintiff in the year 2011 was over Rs.800 crores whereas the turnover in the year 2021 was over Rs.1450 crores. The plaintiff has also provided the marketing expenses incurred by plaintiff in respect of the products bearing the "BETNESOL" trademark.

2.5. A search of the standalone word "BETNESOL" on the Google search engine leads to the plaintiff's products. The plaintiff has successfully protected its rights in its "BETNESOL" trademark before this Court. Owing to its long and continuous use all over the world the plaintiff has developed a reputation.

2.6. The defendant, Biogen Serums Private Limited is engaged in the manufacturing, marketing and sales of pharmaceutical and medicinal products, bearing the mark "BETNOL" (hereinafter `infringing mark'). The active ingredient in the "BETNOL" medicine is Betamethasone Sodium Phosphate. The defendant's injections are used for the treatment of skin allergies such as itching, swelling, redness etc. The product has been reproduced as under:

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2.7. In April, 2022, the plaintiff first learnt of the defendant's use of the "BETNOL" mark through its products listings on third party websites such as IndiaMart. The plaintiff sent a legal notice dated 28th April, 2022 to the defendant through email, which was replied by the defendant by way of an email dated 9th May, 2022 informing the plaintiff that it has withdrawn the brand "BETNOL" from the market on 1st May, 2022. Since the defendant's listings on IndiaMart remained active another notice was sent to the defendant on 12th May, 2022, which was replied to on 9th July, 2022.

2.8. In August 2022, it was revealed that the defendant adopted a new packaging for injections bearing the defendant's "BETNOL" mark in the following manner:

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2.9. Accordingly, the present suit has been filed.

PROCEEDINGS IN THE SUIT

3. This Court, vide order dated 12th October, 2022 granted an ex parte ad interim injunction in favour of the plaintiff under I.A.16550/2022, restraining the defendant from using the trademark "BETNOL". The relevant portion of the said order is as under:

"27. 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 injunction. Balance of convenience also lies in favour of the Plaintiff and in case an ex-parte injunction is not granted, Plaintiff is lik