A plaintiff lacking a mandatory license under the Drugs and Cosmetics Act is not entitled to seek equitable relief against a defendant who has established prior use of a trademark.

JUDGMENT

Vipin Sanghi, J. (Oral)--The present appeal is directed against the order dated 01.11.2019 passed by the learned ADJ-01, Central Delhi District, Tis Hazari Courts, Delhi in C.S. No.1833/2019 (Old No. T.M. No.135/2019).

2. By the impugned order, the learned Judge has dismissed the plaintiffs'/appellants' application under Order XXXIX Rules 1 & 2 CPC and allowed the respondent's/defendant's application under Order XXXIX Rule 4 CPC, vacating the injunction granted in favour of the appellant/plaintiff against the use of the mark "NEHA" in respect of Face Cream/Cold Cream. The findings returned by the learned Judge in the impugned order reads as follows:

"From the arguments of both the parties and the documents placed on record, it is reflected and not disputed by the plaintiff that plaintiff is not having any license under Drugs and Cosmetics Act to manufacture any cream under brand name HEENA. On the other hand, defendant is having a license under Drugs and Cosmetics Act, 1940 since 1990. Plaintiff has not filed any document contrary to the fact alleged by the defendant.

As per trademark Act and its saving clause as well as perusal of Section 18 of Drugs and Cosmetics Act, it is reflected that I am of the considered opinion that if any drug or cosmetic require the mandatory license to manufacture and it is not obtained in due course of time, then, the mandatory requirement of the law are not followed. The person who himself is not violating the law in my considered opinion, is not entitled for any discretionary relief.

In these circumstances, balance of convenience cannot be said to be tilted in favour of the plaintiff. It is needless to say that apart from the 3 ingredients i.e. Prime facie case, Balance of convenience & Irrepairable loss, there are other factors of common law jurisprudence which are also required to be seen i.e. Just, equity and good conscience. The violator himself cannot claim the, benefit of any legislature in his favour and cannot be said to have good conscience if such non-compliance are mandatory as per law.

The judgment Glaxo India Ltd. (Supra) relied upon by the defendant endorse the view as mentioned above, Ld counsel for plaintiff has filed the judgments of higher bench in similar cases which has been set aside, however, the order of higher bench is a consent order. Moreso, the mandatory provision of Section 18 of Drugs and Cosmetics Act cannot be overlooked.

Above all, defendant has shown that he is having licence since 1990 and have been using and manufacturing cream under the same brand name. Defendant has further alleged that plaintiff is well aware that defendant is into the market since long and has been manufacturing cream. It is also reflected that plaintiff has not started manufacturing cream though he is having certificate in his favour. Therefore, claims of defendant that he is into market since 1990, cannot be overlooked.

In these circumstances, I am of the considered opinion that Section 34 of the Act comes into picture and right of prior use has to prevail which prime facie appear in favour of defendant."

3. The submission of learned counsel for the appellants is that the learned ADJ has gravely erred in being swayed by the consideration that the plaintiffs/appellants did not have registration under Section 18 of the Drugs & Cosmetics Act in respect of the product, i.e. Henna manufactured and sold by the plaintiff under the brand name "NEHA". Learned counsel submits that the plaintiff was non-suited on account of it not having obtained license which - according to learned counsel for the appellant, was not at all required. He submits that the Trial Court has relied upon the judgment which has been set aside by the High Court, though by consent. Once a judgment is set aside - by whichever mode, the same could not have been relied upon. He submits that the Calcutta High Court in Allergen Inc. Vs. Chetana Pharmaceuticals, 2007(34) PTC 267, held in paragraph 11, inter alia, a