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IN THE HIGH COURT OF DELHI AT NEW DELHI

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Date of Decision: 17^th June, 2022

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FAO (COMM) 94/2022

ALKEM LABORATORIES LTD

..... Appellant

Through:

Mr.

Chander

M.

Lall,

Senior

Advocate with Mr. Sagar Chandra,

Ms. Ishani Chandra, Ms. Ankita Seth,

Ms. Sanya Kapoor and Mr. Ravindra

Raturi, Advocates

versus

M/S LABORATE PHARMACEUTICALS INDIA LTD

& ANR.

..... Respondents

Through:

Mr. Sanjeev Sindhwani, Senior

Advocate with Mr. J. Sai Deepak,

Mr.Siddharth Bambha, Mr. Rachit

Shrivastav and Mr. Chirag Ahluwalia,

Advocates

CORAM:

HON'BLE MS. JUSTICE JYOTI SINGH

HON'BLE MR. JUSTICE ANOOP KUMAR MENDIRATTA

JUDGMENT

JYOTI SINGH, J. (ORAL)

CM APPL. 28374/2022 & 28375/2022 (Exemption)

Allowed, subject to all just exceptions.

Applications stand disposed of.

FAO (COMM) 94/2022 & CM APPL. 28373/2022

1.

Present appeal has been filed under Order 43 Rules 1(r) and 2 CPC

read with section 13 of the Commercial Courts Act, 2015, assailing the

orders dated 30.05.2022 and 09.06.2022, passed by the learned Trial Court

in CS(COMM) No. 394/2022. Appellant herein is the Defendant in the suit

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002356

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and Respondent No.1 is the Plaintiff. The parties are hereinafter referred to

by their litigating status in the present appeal.

2.

Respondent No.1 (hereinafter referred to as the ‘Respondent’) filed a

suitagainst the Appellant, alleging infringement of trademark and

copyright as well as passing off with respect to its registered trademark

‘LABDIC RELIEF’ and packaging thereof as well as unfair competition,

dilution, etc. in respect of product being ‘pain relieving’ tablets. Vide order

dated 30.05.2022, an ex parte ad-interim injunction was granted by the Trial

Court restraining the Appellant from manufacturing, selling or dealing in

pharmaceutical preparations under the impugned mark ‘ALDIGESIC PAIN

RELIEF’ or any other mark similar to the mark of the Respondent.

Appellant was also restrained from using its trade dress/product packaging

and the blister packaging, alleged to be similar to Respondent’s packaging

under ‘LABDIC RELIEF’.

3.

Upon being served, Appellant filed an application under Order 39

Rule 4 CPC seeking setting aside of or vacating/varying the order dated

30.05.2022. An application was also filed under section 151 CPC for

permission to sell its existing stock, amongst other reliefs.

4.

The learned Trial Court vide order 09.06.2022 declined to vacate the

interim injunction, clarifying, however, that Appellant was not restrained

from dealing in products bearing the trademark ‘ALDIGESIC’ and rejecting

the prayer for sale of the existing stock.

5.

Extensive arguments have been addressed by learned Senior Counsels

for the parties on the merits of the impugned orders. Contentions raised on

behalf of the Appellant are inter alia that: (a) the ex-parte injunction was

obtained by suppression of material facts, particularly that Appellant is

This is a digitally signed Judgement.

NEUTRAL CITATION NO: 2022/DHC/002356

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the prior registrant of its trademark ‘ALDIGESIC’ (word) as against

Respondent’s registration for ‘LABDIC RELIEF’ (word); (b) Respondent

suppressed that the Appellant has been using the trademark ‘ALDIGESIC’

since 2010 continuously and extensively; (c) packaging of Appellant’s

product, i.e., pain relieving tablets, sold under the mark ‘ALDIGESIC PAIN

RELIEF’ and that of Respondent’s product sold under the mark ‘LABDIC

RELIEF’ are palpably different and distinct with marked differences;

(d) there are stark differences between the rival cartons and blister strip

packaging; (e) Respondent cannot claim monopoly over the colour of the

packaging, especially when the ‘red’ colour is common to trade; and (f) the

word ‘RELIEF’ is generic and descriptive to pain relief tablets and common

to trade, used to describ