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% 20.02.2023 I.A. 3132/2023 (under Section 12A of the Commercial Courts Act, 2015)

1. In view of the judgment of the Division Bench of this Court in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd1, exemption is granted from the requirement of pre-institution mediation under Section 12A of the Commercial Courts Act, 2015.

2. The application stands allowed accordingly.

I.A. 3131/2023 (under Order XI Rule 1(4) CPC)

3. This application seeks permission to file additional documents.

4. The plaintiffs are permitted to place additional documents on

1 2022 SCC OnLine Del 3529

record in accordance with Order XI Rule 1(4) of the Code of Civil Procedure, 1908 (CPC) as amended by the Commercial Courts Act within 30 days from today.

5. The application stands disposed of accordingly.

I.A. 3133/2023 (exemption from advance service)

6. As Mr. Jayant Kumar has entered appearance, this application is rendered infructuous and is disposed of as such.

CS (COMM) 86/2023

7. Plaintiff 2 is the licensee of Plaintiff 1, under a trade mark license agreement dated 7th October 2005. Plaintiffs 1 and 2 would, therefore, be collectively referred to as “the plaintiffs”.

8. The plaintiffs claimed to have adopted the name NOVARTISas their housemark/company name/ trade name in 1996. The mark, distinctively depicted as has, since then, been , continuously and uninterruptedly used by the plaintiffs both nationally as well as internationally.

9. Ms. Mamta Rani Jha, learend Counsel for the plaintiffs, asserts that the mark has become a source identifier of the plaintiffs by dint of uninterrupted use. It is emphasised that the mark figures not only on the medicines manfactured by the plaintiff, as representing the name of the manufacturer, but also on the buildings, offices, packaging products, promotional materials, stationery and other goods and services belonging to the plantiffs or in which the plaintiffs are engaged. „NOVARTIS‟, it is further submitted, also constitutes part of several registered domain names of the plaintiffs‟, a list of which is provided in para 12 of the plaint.

10. The plaintiff possesses Indian Registration no. 700020 in Class 5 and IRDI Registration No. 3050272 in Classes 01, 03, 05, 09, 10, 16, 29, 30, 31, 32, 35, 40, 41, 42 and 44 with effect from 28th February 1996 and 28th April 2015 respectively, for the word mark „NOVARTIS‟. The plaint asserts that these registrations are valid and subsisting.

11. The earliest registration possessed by the plaintiffs in class 5, therefore, dates back to 28th February 1996 and is, therefore, almost of three decades‟ vintage as on date.

12. In order to underscore its repute in the market, the plaint provides details of the annual sales figures of Plaintiff 2, from the years 2007-08 till 2021-22. In the year 2021-22, the sales turnover of Plaintiff 2 was in the region of ₹ 375.4 crores. The plaint further asserts that the mark NOVARTIS has been recognised as a well-

known trade mark in several WIPO, UDRP and INDRP decisions.

13. The plaintiff is aggrieved by the use, by the defendant, of the mark for which the defendant has sought registration under class 35 which deals with “retailing, wholesaling, import and export of pharmaceuticals, advertising, business management, business administration, office functions”. It is not in dispute that the plaintiffs and defendant use the disputed marks on the packets and strips on which they sell their pharmaceutical products. The marks of the plaintiffs and the defendant are as under:

Plaintiff‟s mark Defendant‟s mark

14. The plaint alleges that the mark of the defendant is deceptively similar to the mark of the plaintiff and that, even otherwise, the defendant‟s mark is also phonetically similar to the plaintiffs‟ registered word mark. Inasmuch as the two marks are used in respect of same product, and, therefore, cater to the same customer/clientele, the plaint asserts that the defendant has, by using the impugned mark, infringed the plaintiffs‟

mark and is also p