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IN THE HIGH COURT OF DELHI AT NEW DELHI

Date of Decision: 28^th March, 2022

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CS (COMM) 185/2022 & I.As. 4718-19/2022

SUN PHARMA LABORATORIES LTD

..... Plaintiff

Through:

Mr. Sachin Gupta, Mr. Pratyush Rao,

Ms. Jasleen Kaur, Ms. Snehal Singh,

Ms.

Swati

Meena,

Advocates

(M:9811180270)

versus

HETERO HEALTHCARE LTD & ANR.

..... Defendants

Through:

Mr. Ajay Sahni, Mr. Shrey Gupta,

Ms. Aastha Kakkar, Advocates

CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J. (Oral)

1.

This hearing has been done through hybrid mode.

2. The present suit is one seeking permanent injunction restraining the

Defendant from infringement of trademark, passing off, unfair competition,

rendition of accounts of profits/damages, delivery up and other reliefs. The

Plaintiff’s case is that the defendant is infringing upon its registered

trademark ‘LETROZ’ by using the mark ‘LETERO’ in respect of its

medicinal and pharmaceutical preparations.

3. Before the matter could be heard on merits, a query was put to the ld.

counsel for the Plaintiff as to how the present suit would be maintainable in

as much as for this very trademark, an earlier suit being CS (Comm.) No.

300 of 2019 titled Sun Pharma Laboratories Ltd. v. Hetero Healthcare

Ltd. & Anr., has already been filed by the Plaintiff against the same very

Defendants before the ld. ADJ-02, North West District, Rohini Courts, New

2022:DHC:1212

Delhi (hereinafter “Trial Court”), and the same is still pending.

4. Mr. Sachin Gupta, ld. counsel for the Plaintiff, submits that though

the said suit being CS (Comm.) No. 300 of 2019 was filed in 2017, more

than 5 years have passed and no orders have been passed in the interim

injunction application in the said suit. He further submits that the judicial

officers presiding over the Trial Court were being changed from time to

time. He submits that orders on the injunction application were once

reserved on 20^th October, 2018, but the same was released vide order dated

7^th January, 2019, upon the change of the Judicial Officer. The Plaintiff is

also stated to have withdrawn its injunction application before the Trial

Court and filed a fresh application, once, in 2019 due to the Defendant’s

objection that the prayer did not mention the word “passing off”.

5. Today, Mr. Gupta, ld. Counsel, submits that every sale by the

Defendants constitutes a fresh cause of action and thus, despite the pendency

of the first suit before the ld. ADJ, the present suit before this Court would

also be maintainable in view of the judgment of the Supreme Court in

Bengal Waterproof Ltd. v. Bombay Waterproof Manufacturing Company,

(1997) 1 SCC 99. Ld. Counsel refers to the cause of action in both suits and

submits that since no interim injunction has been granted in the earlier suit,

the continuous use of the infringing mark by the Defendants, constitutes a

fresh cause of action for the Plaintiff.

6. On the other hand, Mr. Ajay Sahni, ld. counsel appearing for the

Defendants, submits that the judgment of the Supreme Court in Bengal

Waterproof(supra) cannot be read in the manner it has been read by the

Plaintiff. The cause of action in both suits is identical. The earlier suit is in

fact part-heard before the District Court in the fresh injunction application,

2022:DHC:1212

as recorded in the order dated 30^th March, 2021, and filing of the present suit

in another Court is a gross abuse of process. He relies upon the following

decisions:

•Prapti Fashions Private Limited and Ors. v. Manoj Kumar

Gupta, 2013 (55) PTC 234 (Cal).

•Hari Ram v. Lichmaniya & Ors., AIR 2003 Raj. 319.

•Ranbir Singh v. Dalbir Singh & Ors., CS(OS) 802/2002,

decision dated 19^th December, 2008 (Delhi High Court).

•Vijay Kumar Gupta v. State of West Bengal [SLP (Crl.) 10951 of

2019, decided on 22nd March, 2022]

7. Heard. The Court has perused the two plaints and at the outset, notes

the following:

(i)In the first suit p