Neutral Citation Number : 2023/DHC/001235

CS(COMM) 86/2023

Page 1 of 26

$~28

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IN THE HIGH COURT OF DELHI AT NEW DELHI

+

CS(COMM) 86/2023 & I.A. 3130/2023, I.A. 3131/2023, I.A.

3132/2023, I.A. 3133/2023

NOVARTIS AG & ANR.

..... Plaintiffs

Through:

Ms. Mamta Rani Jha, Mr.

Abhijeet Rastogi, Ms. Mamta Bhadu and

Mr. Abhay Tandon, Advs.

versus

NOVAEGIS (INDIA) PRIVATE LIMITED ..... Defendant

Through:

Mr. Jayant Kumar, Adv.

CORAM:

HON'BLE MR. JUSTICE C.HARI SHANKAR

O R D E R

%

20.02.2023

I.A. 3132/2023 (underSection 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

12022 SCC OnLine Del 3529

Digitally Signed By:SUNIL

SINGH NEGI

Signing Date:21.02.2023

19:46:10

Signature Not Verified

Neutral Citation Number : 2023/DHC/001235

CS(COMM) 86/2023

Page 2 of 26

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 7^th 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

theirhousemark/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

^{hasbecome 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

Digitally Signed By:SUNIL

SINGH NEGI

Signing Date:21.02.2023

19:46:10

Signature Not Verified

Neutral Citation Number : 2023/DHC/001235

CS(COMM) 86/2023

Page 3 of 26

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 28^th February

1996 and 28^th 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 28^th 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 NOVARTIShas 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