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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 593/2024 & I.A. 33864/2024
th
Date of Decision: 29 October, 2024
GLAXO GROUP LIMITED & ANR .....Plaintiffs
Through: Mr. Urfee Roomi, Ms. Janaki Arun,
Mr. Jaskaran Singh, Mr. Ayush Dixit,
Ms. Anuja Chaudhry, Advocates
versus
IVA HEALTHCARE PRIVATE LIMITED .....Defendant
Through: Ms. Nancy Thapar, Mr. Sudhanshu
Sikka, Advocates (M:9873434944)
CORAM:
HON'BLE MS. JUSTICE MINI PUSHKARNA
MINI PUSHKARNA, J (ORAL)
1. The present suit has been filed
seeking relief against the defendant‟s
mark in
unauthorised adoption and use of the defendant‟s ZENTOVATE
relation to pharmaceutical skin creams, on the grounds of trademark
infringement, passing off and acts of unfair competition. It is the case of the
plaintiffs
that the defendant‟s ZENTOVATE mark is deceptively similar to
the plaintiffs‟ marks, particularly the plaintiffs‟ BETNOVATE marks.
2. The plaintiffs are an International Global Health Care company
involved in researching and developing a broad range of pharmaceuticals,
medicines and vaccines. The plaintiffs have used numerous marks in relation
to their pharmaceutical and medicinal preparations. Among these marks are
BETNOVATE and TENOVATE.
3. Apart from using the BETNOVATE mark simpliciter, the plaintiffs
also use marks which incorporate the BETNOVATE marks, which include,
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CS(COMM) 593/2024 Page 1 of 6
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:07.11.2024
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marks such as BETNOVATE-N, BETNOVATE-S and BETNOVATE-GM.
Further, the plaintiffs also use
marks which incorporate the plaintiffs‟
TENOVATE mark, such as TENOVATE-GN, TENOVATE-M and
TENOVATE-NM.
4. The plaintiffs have huge sales turnover running into more than INR
2,00,000 crores annually. The plaintiffs spend significant sums of money
annually on marketing their pharmaceutical products and vaccines and
plaintiffs have also marketed their pharmaceutical products through various
media around the world, including, India.
5. The plaintiffs coined the term BETNOVATE for use as a trademark
in respect of their pharmaceutical products since as early as 1963. On a
global basis, including, in India, the plaintiffs have used and continue to use,
the BETNOVATE marks as trademarks, continuously and extensively in
relation to skin creams, ointments and lotions, for more than 60 years.
6. The plaintiffs have obtained nearly 150 registrations for, and filed
applications to register, the plaintiffs BETNOVATE marks in numerous
‟
countries and jurisdictions around the world. Thus, as per the plaintiffs,
owing to extensive and continuous use of the BETNOVATE marks, the
pharmaceutical preparations sold under the BETNOVATE marks
plaintiffs‟
have come to be associated solely and exclusively with the plaintiffs.
7. Defendant is engaged in manufacturing, marketing and sale of
pharmaceutical and medicinal products, including skin creams, under the
de
fendant‟s ZENTOVATE mark.
8. The defendant filed Trade Mark Application no. 4823491 for
registration of its ZENTOVATE mark covering “medicinal and
05. The plaintiffs filed notice of
pharmaceutical preparations” in Class
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:07.11.2024
10:10:33
opposition against the said application. Since, the defendant did not file a
counter statement within time, the Trade Marks Registry vide order dated
rd
03
July, 2024 deemed the defendant‟s application for its ZENTOVATE
mark, as abandoned in accordance with Section 21(2) of the Trade Marks
Act, 1999.
nd
9. This Court vide order dated 22 July, 2024 passed an ex-parte
injunction against the defendant, restraining it from manufacturing the
medicinal or pharmaceutical product bearing the defendant‟s ZENTOVATE
marks. However, this Court allowed sale of the existing stock of the
defendant.
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10. Subsequently, vide order dated 08 August, 2024, the injunction order
nd
dated 22 July, 2024 was modified to the extent that the defendant was
restrained from further sale, display, advertising, marketing of the
defenda
nt‟s ZENTOVATE mark, or any other mark that is identical or
deceptively similar to the plaintiffs mark BETNOVATE.
‟
11. As per directions of this Court, the defendant has filed its stock
statement.
12. On pointed query by this Court as to whether the defendant is ready to
change its mark, learned counsel appearing for the defendant submitted that
the defendant is ready to change its mark. Hence, with the consent of the
parties, the matter has been taken up for final disposal.
13. It is to be noted that the BETNOVATE mark of the plaintiffs, stands
registered by the Trade Marks Registry vide registration no. 219258 under
Class 05. The date of filing of the application by the plaintiffs for
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registration of the mark BETNOVATE is 05 December, 1963.
14. Clearly, s ZENTOVATE mark is deceptively similar to
the defendant‟
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CHAUDHARY
Signing Date:07.11.2024
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the plaintiffs mark, particularly to the plaintiffs BETNOVATE marks. The
‟ ‟
letter combination of „OVATE‟ is common to the marks of the plaintiffs and
the defendant. Except the first letter, all the letters forming part of the
plaintiffs‟ BETNOVATE mark, have been incorporated entirely and even
arranged almost identically to constitute defendant‟s ZENTOVATE mark.
By no means, such changes can be said to be sufficient to differentiate the
rival marks.
15. The significant similarities between the rival marks leave no manner
the ZENTOVATE mark, is ex facie
of doubt that the defendant‟s adoption of
dishonest and is aimed solely at creating confusion and deception in the
minds of the unwary consumers in order to invoke a sense of association
with the plaintiffs and the plaintiffs‟ BETNOVATE and TENOVATE
marks.
16. It is to be noted that the rival trademarks, when looked at in their
entireties, are nearly identical/ confusingly similar in appearance, sound and
structure. Moreover,
the defendant‟s goods are pharmaceutical and
medicinal products, as that of the plaintiffs. The rival products are sold
through identical trade channels to the same consumers. It is well settled that
a stricter approach should be adopted in judging likelihood of confusion in
cases where the rival products are medicinal and pharmaceutical products,
because such confusion may have disastrous effects on human health.
Therefore, there is no manner of doubt that the defendant‟s ZENTOVATE
mark is likely to cause confusion among the purchasing public as to the
source of the goods sold by the defendant.
17. This Court notes the submission made on behalf of the plaintiffs that
the BETNOVATE marks of the plaintiffs, has already been recognised as a
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:07.11.2024
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well-known trademark, and features in the list of well-known trademarks, as
maintained by the Trade Marks Registry. The submission made by the
plaintiffs in the plaint, with respect thereto, reads as under:
37. Clearly, the Plaintiff s Marks have come to be associated solely and
“ ’
exclusively with the Plaintiff and have developed a stellar reputation
owing to the Plaintiff s long, extensive, and continuous use of the
’
Plaintiff s Marks all over the world and this reputation has spilled over
’
into India. Not only have the Plaintiff s Marks acquired trans-border
’
reputation in India, the trade marks have also become well-known owing
to extensive and continuous use within India. In fact, the Plaintiff s
’
BETNOVATE mark has also been recognized as a well known trade mark
and features in the list of Well-Known Trade Marks as maintained by the
Registry. Relevant extracts from the website of the Registry evidencing
recognition of the Plaintiff's BETNOVATE mark as a well-known trade
mark is annexed hereto and marked as DOCUMENT-
25. ”
18. Pursuant to the directions of this Court, the defendant has filed its
stock details, showing the sale of its product with the ZENTOVATE mark.
19. Accordingly, considering the facts and circumstances of the present
case, it is apparent that the plaintiffs are entitled to a decree in their favour.
20. Considering the submissions made before this Court and considering
the documents on record, this Court is of the view that the ends of justice
- is imposed upon the defendant.
shall be met if cost of ₹ 3,00,000/
21. Accordingly, following directions are issued:
21.1 Decree is passed in favour of the plaintiffs and against the defendant
in terms of Paragraph 66 (a) to (d) of the plaint.
21.2 All the infringing material like packaging, labels, promotional and
advertising material, price tickets, stationery, brochures or any other
materials that , shall be
contains the defendant‟s ZENTOVATE mark
destroyed in presence of plaintiffs‟ representative. For this purpose, the
plaintiffs are at liberty to communicate with the defendant and visit the
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Digitally Signed By:CHARU
CHAUDHARY
Signing Date:07.11.2024
10:10:33
premises of the defendant, at a convenient time for the purposes of carrying
out the aforesaid exercise.
21.3 D - to the plaintiffs within a
efendant shall pay cost of ₹ 3,00,000/
period of six weeks, from today.
22. With the aforesaid directions, the present suit, along with pending
applications stands disposed of.
23. The next date of hearing stands cancelled.
MINI PUSHKARNA, J
OCTOBER 29, 2024
Au/c/kr
Signature Not Verified
CS(COMM) 593/2024 Page 6 of 6
Digitally Signed By:CHARU
CHAUDHARY
Signing Date:07.11.2024
10:10:33