Delhi High Court

Ranbaxy Laboratories Limited vs M/S Intas Pharmaceuticals Ltd. & ... on 23 August, 2011
Author: Vinay Kumar Jain THE HIGH COURT OF DELHI AT NEW DELHI % Judgment Reserved on: 9th August, 2011 Judgment Pronounced on: 23rd August, 2011 + IA No. 10148/2009 (u/O 39 R 1&2 CPC) in CS(OS) 1457/2009 Ranbaxy Laboratories Limited ..... Plaintiff Through: Mr. Rajiv Nayyar, Sr. Advocate with Mr. N.Singh, Advocate versus M/s Intas Pharmaceuticals Ltd. & Ors. ..... Defendant Through: Mr. Sudhir Chandra, Sr. Advocate with Ms. Megha Mehta Agrawal, Advocate for D-1 CORAM:HON'BLE MR JUSTICE V.K. JAIN 1. Whether Reporters of local papers may be allowed to see the judgment? Yes. 2. To be referred to the Reporter or not? Yes. 3. Whether the judgment should be reported Yes. in Digest? V.K. JAIN, J 1. The plaintiff is a large pharmaceutical company manufacturing and marketing a number of medicinal products including a drug for urinary tract infection, which it is selling under the registered trademark NIFTRAN. The word NIFTRAN is alleged to be a coined, unique and an invented word. The compound used in the drug NIFTRAN CS(OS)No. No.1457/2009 Page 1 of 26 is Nitrofurantoin. The plaintiff had a sale of Rs.30.4 million, Rs.42.9 million and Rs.11.47 million in the year 2007, 2008 and first quarter of the year 2009 respectively from NIFTRAN alone. It claims to have incurred approximate expenses of Rs.5.6 million, Rs.5.2 million and Rs.2.7 million respectively during the aforesaid period. The defendant No.1 is manufacturing and marketing a drug under the trademark NIFTAS which is alleged to be similar/identical with the trademark NIFTRAN of the plaintiff. NIFTAS also is prescribed in the

treatment of urinary tract infection. The case of the plaintiff is that the trademark NIFTAS has been adopted by the defendant with the intention of encashing upon the goodwill and reputation in the trademark NIFTRON and is bound to cause confusion and deception amongst the purchasing public in the trade, which would be induced into believing that the products being sold by the defendant also originates from the plaintiff company. IA No. 10148/2009 has been filed by the plaintiff seeking interim injunction against use of the mark NIFTAS by defendants during pendency of the suit. 2. Defendant No. 1 has contested the suit and has CS(OS)No. No.1457/2009 Page 2 of 26 claimed that the trademarks NIFTRAN and NIFTAS are based on the drug NITROFURANTOIN, the words NIFTRAN and NIFTAS representing the molecule or drug represented by the names and no one can claim a monopoly over these names. It is also alleged that suffix in the marks NIFTRAN and NIFTAS are altogether different phonetically as well as visually and represent the names of the manufacturing companies, i.e. "RANBAXY" AND "INTAS" respectively. It is claimed that the adoption of the mark "INTAS" is in line with defendants policy to use the word "TAS" as a suffix in most of its products. It is also claimed that the suit suffers from the vice of delay, laches and estoppels since the plaintiff became aware of defendants product in April, 2009. It is claimed that the defendant applied for registration of the trademark NIFTAS in March, 2008 and launched the drug in the marked on 23 rd January, 2009. The defendant has also pointed out that the product of the plaintiff is a hard gelatin capsule, whereas the product of the defendant is a sustained release tablet; the product of the plaintiff is packed in a plastic bottle containing 20 capsules, whereas the product of the defendant is sold in aluminum foil. It is also alleged that since it is launched in CS(OS)No. No.1457/2009 Page 3 of 26 January, 2009, NIFTAS had a sale of Rs 70.18 lakh till the date written statement was filed on 20th November, 2008 3. It is an admitted case that the trademark NIFTRAN of the plaintiff as well as NIFTAS of defendant No. 1 are their respective registered trademarks. Defendant No.1 applied for registration of the trademark NIFTAS claiming user since February 29, 2008 based upon the preparatory steps undertaken by it towards creation of NIFTAS logos and artwork. Defendant No.1 has placed on record the copy of the invoice dated 29.02.2008 whereby it paid design charges for the logo design NIFTAS to ONE Advertising and Communication Services Limited. The application of defendant No.1 was advertised in trademark Journal No.1414 dated 16.04.2009, to which no objection was filed. The registration was accordingly granted to defendant No.1 on 03.05.2010 with effect from 10.03.2008. 4. Section 28(3) of the Trade Marks Act, 1999 to the extent it is relevant provides that where two or more persons are registered proprietors of trademarks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trademarks shall not (except so far as their respective rights are subject to any conditions CS(OS)No. No.1457/2009 Page 4 of 26 or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trademarks. 5. Thus, no infringement on the part of defendant No.1 is made out on account of use of the trade mark NIFTAS by it and the case of the plaintiff is based on passing off alone. In a case of infringement, if it is found that the defendant has adopted the essential features of the registered trade mark of the plaintiff, he would be liable even if he is able to establish that on account of packaging, get up and other writings on his goods or on the container in which the goods are sold by him, it is possible to clearly distinguish his goods from the goods of the plaintiff. On the other hand in a case of passing off if it is shown that on account of these factors it is very much possible for the purchaser to identify the origin of the goods and thereby distinguish the goods of the defendant from the goods of the plaintiff, the defendant may not be held liable.

As observed by the Supreme Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952, in a case of passing off what has to be seen is the similarity between CS(OS)No. No.1457/2009 Page 5 of 26 the competing marks and whether there was likelihood of causing confusion. It is an undisputed proposition of law that actual confusion/deception is not required in a case of passing off and what has to be seen is whether there is a likelihood of confusion and deception on account of similarity of the two marks. 6. As observed by Supreme Court in Wander Limited versus Antox India Private Limited 1990(Suppl.)SCC 727, in a passing off action, the right of the plaintiff is against the against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business. The action is regarded as an action for deceit. The tort of passing-off involves a misrepresentation made by a trader to his prospective customers calculated to injure, as a reasonably forseeable consequence, the business or goodwill of another which actually or probably, causes damages to the business or good of the other trader. CS(OS)No. No.1457/2009 Page 6 of 26 7. In Cadila Health Care Ltd. (supra), Supreme Court was of the view that public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. There should be as many clear indicators as possible to distinguish to medicinal products from each other. It was noted that in our country, it was not uncommon that in hospital, drugs can be requested verbally and/or under critical/pressure situations and many patients may be elderly, infirm or illiterate, may not be in a position to distinguish between the medicine prescribed and bought and is ultimately handed over to them. In this context, the Court referred to McCarthy on Trade Marks, 3rd Edition, para 23.12 wherein it was noted that confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. It was further noted that if the goods are designed even for subtly different uses, confusion amongst the products caused by similar marks could have disastrous effects. Taking note of the fact that in our country, there is no single common language, a large percentage of CS(OS)No. No.1457/2009 Page 7 of 26 population is illiterate and a small fraction of people know English, the Court was of the view that in our context, to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiff's goods seems to overlooking the ground realities in India. It was also observed that while examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trademark is written and to whom different words with slight difference in spellings may sound phonetically the same. Noticing that Schedule "H" drugs are to be sold by the chemist only on the prescription of the Doctor but Schedule "L" drugs are not sold across the counter but are sold only to the hospitals and clinics, Supreme Court observed that it was not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trademarks are deceptively similar. 8. A comparison of the product of defendant No.1 with the product of the plaintiff would show the following major dissimilarities:-

CS(OS)No. No.1457/2009 Page 8 of 26 (a) The product of the plaintiff is sold in plastic bottle whereas the product of the defendant is sold in Alu- Alu strips (blister packaging). (b) The product of the plaintiff is sold in capsule form whereas the product of defendant No.1 is sold in tablet form. (c) The product of the plaintiff is a conventional product whereas that of defendant No.1 is a sustained release product. (d) The price of the bottle of the plaintiff is Rs.190/- whereas the price of the strip of defendant No.1 is Rs.90/-. 9. It is an admitted fact that NIFTAS as well as NIFTRAN are meant for curing urinary tract infection and are scheduled H drugs only which can be sold only on prescription of a doctor. It can hardly be disputed that despite legal requirement of selling schedule H drugs only against prescriptions by a doctor, this rule in our country is observed more in breach and such drugs are freely available across the counter, even without product of a medical prescription. Even a person assuming he is a man not very much conversant with English language, possesses average CS(OS)No. No.1457/2009 Page 9 of 26 intelligence and has imperfect recollection, approaches a chemist for purchase of NIFTRAN (drug o f the plaintiff), he may either handover the medical prescription to the chemist or he may orally give the name of the medicine required by him. If the customer gives a prescription of NIFTRAN to the chemist, it is extremely unlikely that he would sell NIFTAS to him, instead of NIFTRAN. Such an act on the part of the chemist would amount to cheating the customer and in the ordinary course, a chemist is not likely to indulge into such an illegal act. Of course, if he does not have NIFTRAN with him, he may offer NIFTAS or any other substitute of NIFTRAN to the customer but in that case, he would tell the customer that he does not have NIFTRAN and was offering a substitute of NIFTRAN to him, the basic compound of both the drugs being one and the same. Moreover, in case the customer has earlier purchased NIFTRAN , he is not likely to accept NIFTRAN from the chemist even if he does not know English language since, the difference between the packaging of NIFTAS and NIFTRAN coupled with the fact that NIFTRAN is sold as capsule whereas NIFTAS is sold as a tablet by itself would make him aware that the drug being sought to be sold to CS(OS)No. No.1457/2009 Page 10 of 26 him by the chemist was not the drug which he intends to purchase. If, however, the customer is not carrying a medical prescription, and orally tells chemist that he wants to purchase NIFTRAN there is very little likelihood of the chemist misunderstanding the name of the drug and mistaking NIFTRAN as NIFTAS. If the chemist has NIFTRAN as well as NIFTAS with him, he would have no reason to pass on NIFTAS as NIFTRAN to the customer. If he does not have NIFTRAN in his stock, he is likely to ask the customer whether a substitute of the drug would be acceptable to him, instead of passing off NIFTAS as NIFTRAN, without disclosing it to the customer. If the customer agrees, he may sell not only INTAS, but any other substitute as well, depending upon what is available with him, and in which drug he is getting a higher commission. But, then, there is not passing off, as the customer knows that he is not buying NIFTRAN, but, is buying a substitute. If the customer is well conversant with English language, it is not at all possible for the chemist to pass off NIFTAS to him as NIFTRAN, since the vital difference between NIFTRAN and NIFTAS cannot be missed by him, even if he has not purchased the drug in the past. CS(OS)No. No.1457/2009 Page 11 of 26

10. If the drug is ordered by a hospital, there is no reasonable l ikelihood of NIFTAS being passed off as NIFTRAN since the nurses and doctors in the hospital are always in a position to distinguish the drug not only on account of difference in the name, but also on account of packaging, price of the drugs and the form in which they are sold. If the medicine is ordered by a hospital to a chemist on telephone, even then, considering the phonetically dissimilarity between the two marks, the chemist is not likely to misunderstand NIFTRAN as NIFTAS and in any case, when the drug is received by the hospital, it is not likely to accept NIFTAS in case it has ordered for supply of NIFTRAN. 11. Yet another possibility, though rather is that the patient is not at all conversant with English language, does not visit the doctor and is prescribed medicine on telephone, or he visits the doctor, but is not given a written prescription, and he goes to the chemist to buy the medicine. In my view, even to such a customer, the chemist is not likely to pass of NIFTAS as NIFTRAN, since it would amount to heating him. In any case, if the chemist is to cheat him by passing of a substitute of NIFTRAN , he is CS(OS)No. No.1457/2009 Page 12 of 26 likely to sell him a cheap substitute rather than the product of a large and reputed company like defendant No. 1, since he is likely to make higher profit on sale of a cheap substitute; and English being an alien language to the customer, he just cannot make out what is being sold to him. To my mind, there is very little likelihood of the customer himself pronouncing NIFTAS as NIFTRAN, to the chemist. In fact, considering the nature of the medicine and the ailment for which it is prescribed, there is very little chance of the medicine being advised, without the patient visiting the doctor, and in that case, he will get a written prescription, which he will take to the chemist. A doctor may possibly advise this medicine, on telephone, to a well- educated patient, but he will not do it to a person, who is not proficient in English and cannot write down the medicine, when advised on telephone. If the patient is well- educated, there is no reasonable possibility of his mistaking NIFTRAN as NIFTAS. Such a patient will not only note down the spelling, but would also compare it with the product sold to him. 12. The mark NIFTAS and NIFTRAN, in my view, cannot be said to be phonetically or visually similar. The CS(OS)No. No.1457/2009 Page 13 of 26 only similarity in the two marks is use of the letters "NIFT" which are common to both of them, but the pronunciation of NIFTAS is altogether different from that of NIFTRAN. Visually also, NIFTAS and NIFTRAN cannot be said to be similar marks. 13. In an affidavit filed on 03rd August, 2011, defendant No. 1 has claimed that there are many drugs in the market other than NIFTRAN and NIFTAS, which have NIF as prefix or suffix. These drugs include NIFTY manufactured by Wanbury and NIFUTIN by IPCA Labs. There is no evidence of the plaintiff having sought any injunction against use of the trademarks NIFUTIN by IPCA Labs and NIFTY by Wanbury. As noted earlier, defendant No. 1 applied for registration of the trademark NIFTAS, claiming user since 10th March, 2008 and the proposed trademark was advertised in Trade Mark Journal on 16th April, 2009. Admittedly, no objection was filed by the plaintiff against the registration of the trademark NIFTAS in favour of the plaintiff. There is no explanation from the plaintiff for not opposing the registration of the mark NIFTAS in respect of the same drug which it had been selling under the trade name NIFTRAN. The inaction on the CS(OS)No. No.1457/2009 Page 14 of 26 part of the plaintiff gives rise to the inference that it was not really bothered about use of the trademark NIFTAS by defendant No. 1, NIFTY by Wanbury and NIFUTIN by IPCA Labs. It would be appropriate to note here that NIFTY was launched in October, 2008, whereas NIFUTIN was launched in August, 2010. 14. The case of defendant No. 1 is that the drug NIFTAS was launched by it in January, 2009 and, therefore, having been filed in August, 2009, the suit suffers from laches, delay and estoppel on the part of the plaintiff, which is fatal to grant of interlocutory injunction. In support of his contention in this regard,

the learned counsel for the defendant No. 1 has relied B.L. And Co. And Others vs Pfizer Products Incl. 2001 PTC 797 (DEL) (DB), where a Division Bench of this Court quoted the following extract from THE LAW OF PASSING OFF by Christopher Wadlow: "Delay in applying for interlocutory reliefs is a very serious matter. As a rule of thumb, delay of up to about a month, or perhaps six weeks, generally has no adverse effect on an inter partes application and delay of up to twice that period need not be fatal if it can be explained and the plaintiff's case is otherwise strong. On an ex parte CS(OS)No. No.1457/2009 Page 15 of 26 application even delay of a few days can be critical. Unjustified delay of more than a few months is almost always fatal to the plaintiff's case, even though delay of this order has no effect on the plaintiff's rights at trial. Unlike many of the issues which can arise on motion, the existence of delay does not normally admit or much argument. Delay, if present, is therefore a short, safe and simple basis for refusing relief. This means that applications for interlocutory injunctions in which there is significant delay are unlikely even to get as far as a hearing, and those that do are quite likely to be refused without going into the merits or the balance of convenience."

15. He has also relied upon Power Control Appliances vs Sumeet Machines Pvt. Ltd 1995 PTC 165, wherein Supreme Court extracted the following observations made in the case of K.E. Mohammed Aboobacker v. Nanikram Maherchand and another 1957 (II) Madras Law Journal 573: "It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark." CS(OS)No. No.1457/2009 Page 16 of 26 The legal notice to defendant No. 1 is alleged to have been given by the plaintiff for the first time on 20th April, 2009 though the case of the defendant No. 1 is that the notice received by it for the first time was of 26th May, 2009. The plaint does not disclose the exact date when the plaintiff came to know about launch of the drug NIFTAS by the defendant, though it has been alleged in para 23 of the plaint that the cause of action first arose in April, 209 when the plaintiff learnt about the offending activities of the defendant. Assuming that the plaintiff came to know of the launch of this drug only in April, 2009, though the case of defendant No. 1 is that being a large company and having a large market force, the plaintiff must have become aware of launch of NIFTAS as soon as it was introduced in the market in January, 2009, there is delay of more than three months in filing the present suit; the same having been filed only on 10th August, 2009. There is no explanation from the plaintiff as to why it did not come to the Court for grant of injunction soon after sending the notice dated 20 April, 2009 to defendant No. 1. This delay, coupled with the other facts and circumstances of the case, including the material CS(OS)No. No.1457/2009 Page 17 of 26 difference in the packaging, price and form of the drug and the phonetic dissimilarity between the mark NIFTAS and NIFTRAN, in my view, is sufficient to deny ad interim injunction to the plaintiff. 16. Another reason which persuades me to deny injunction to the plaintiff is that more than two years have already passed since this suit was instituted. In the facts and circumstances of this case, the Court did not deem it appropriate to grant any ex parte injunction to the plaintiff. The sale of NIFTAS by defendant No. 1 which was Rs 70.18 lakh when the written statement was filed, had increased to Rs 6.86 crore on 03rd August, 2011, as is stated in the affidavit of Mr C.K. Yagnik (Head Legal of defendant No.1- company). In the facts and circumstances of this case, it would not be appropriate to grant injunction against use of the trademark NIFTAS at this stage, particularly when the learned senior counsel appearing for defendant No. 1 fairly stated, during the course of arguments, that defendant No. 1 was ready to keep accounts of the

sales made and profit earned by defendant No. 1 from the manufacture and sale of the drug NIFTAS and was also willing for a fast-track trial of the case by appointing a Local Commissioner at the cost CS(OS)No. No.1457/2009 Page 18 of 26 of defendant No. 1, to record evidence of the parties in a time-bound manner. 17. The learned counsel for the plaintiff has relied upon Wyeth Holdings Corp vs Sun Pharmaceuticals 2004 (28) PTC Page 423( Bom). In that case the plaintiff was using the mark PACITANE, whereas the defendant was using the mark PARKITANE. Both the products were medicinal preparation for treatment of Parkinsons disease. Noticing that in the two marks, one has the prefix PAC, whereas the other had the prefix PARK, suffix being the same in both the cases, the Court was of the view that the mark PARKITANE was deceptively similar to the mark PACITANE. A perusal of the judgment does not indicate that the trademark being used by the defendant in that case was a registered trademark. Moreover, the mark PACITANE definitely appears to be phonetically similar to the PARKITANE. This judgment, therefore, is of no help to the plaintiff. 18. The learned counsel for the plaintiff has also relied upon the decision of this Court in the case of Wyeth Holdings in support of his contention that mere delay to initiate legal proceedings would not disentitle the plaintiff to the interim injunction. A perusal of the judgment would CS(OS)No. No.1457/2009 Page 19 of 26 show that the plea taken in the case of Wyeth was of infringement of the trademark, whereas the case of the plaintiff before this Court is essentially based on passing off, since the trademarks of both the parties are registered trademarks. Moreover, in the case of Wyeth, though the defendant had applied for registration of their trademark, it could not have been in the knowledge of the plaintiff since it was not published. However, in the case before this Court not only the mark of the defendant No. 1 was duly published in Trademark Journal and even the drug was introduced in the market in January, 2009, but, the suit came to be filed only in August, 2009. 19. In his compilation, the learned counsel for the plaintiff has also referred to Novartis AG vs CREST Pharma Pvt Ltd & Ors, 2009 (41) PTC Page 57, Corn Product Refining Co vs Shangrila Foods Products Ltd, AIR 1960 SC Page 142, Wyeth Holdings Corp vs Sun Pharmaceuticals, 2004 (28) PTC Page 423( Bom), Pfizer Pharmaceuticals vs Intas Pharmaceuticals, 110 (2004) DLT Page 732, Anglo French Drugs Co vs MS Belco Pharma, AIR 1984 P & H 430, Ranbaxy Labs Ltd vs Dua Pharmaceuticals, 1988 PTC 273, Alcon Lab (I) Pvt Ltd vs CS(OS)No. No.1457/2009 Page 20 of 26 Ajanta Pharma Ltd, 2009 (39) PTC 489 (Bom), Strassenburg Pharmaceuticals Ltd vs Himalaya Drug Co & Ors, 2002 (24) PTC 441 (Cal), Indian Shaving Products Ltd vs Gift Pack & Ors, 1998 PTC (18) Pg 698, Wyeth Holdings Corp & Ors vs Burnet Pharmaceuticals, 2008 (36) PTC 478(Bom), Midas Hygiene Ind Pvt Ltd vs Sudhir Bhatia & Ors, 2004 (28) PTC 121 SC, Swarn Singh vs M/s Usha Industries, 1986 PTC 287 (Del), Century Traders vs Roshan Lal Duggal & Co, AIR 1978 Del 250, Consolidated Food Corp vs Brandon & Co, AIR 1965 BOM 35, Amritdhara Pharmacy vs Satydeo Gupta, PTC ( Supp) (2) Page 1 (SC). 20. In the case of Novartis AG (supra), the trademark of the plaintiff was SECEF, whereas the mark of the defendant was CECEF and the two marks found to be deceptively similar, particularly on account of phonetic similarity. In the case of Corn Products (supra), the plaintiff s mark was GLUCOVITA, whereas the mark of the defendant was GLUVITA and there was strong phonetic similarity in the two marks. Moreover, in that case, the defendant had applied for registration of the mark GLUVITA, whereas in the case before this Court, the defendant No. 1 CS(OS)No. No.1457/2009 Page 21 of 26 has not only been granted registration of the mark NIFTAS, it has actually been using the same. In the case of Pfizer Pharmaceuticals (supra), plaintiffs mark was LIPITOR, whereas the defendants mark was LIPICOR and the two marks were phonetically similar. In the case of Anglo French Drugs Co (supra), the mark of the

plaintiff was BEPLEX, whereas the mark of the defendant was BELPLEX, again a case of phonetic similarity. Similar was the position in the case of Ranbaxy (supra), where the mark of the plaintiff was CALMPOSE whereas the mark of the defendant was CALMPROSE. The case of Alcon Lab (I) Pvt Ltd (supra) was the case of infringement. The case of Strassenburg Pharmaceuticals (supra) was a case of infringement as well as passing off and the plaintiff was using the mark EFACID, whereas the defendant was using EFCID-CA. Unlike the case before this Court, the trademark of the defendant was not a registered trademark. In the case of Indian Shaving Products Ltd (supra), the plaintiff was using the trademark DURACELL ULTRA, whereas the defendant was using the mark ULTRA, thereby borrowing whole of the 2nd word used by the plaintiff as its trademark. In the case of Wyeth (supra), the plaintiff s mark FOLVITE, whereas the CS(OS)No. No.1457/2009 Page 22 of 26 defendant had applied for registration of the mark FOLV, by lifting the first four letters of the trademark of the plaintiff. The case of Midas Hygiene Ind Pvt (supra) was the case of passing off as well as of infringement. The mark of the plaintiff was LAXMAN REKHA, whereas the mark of the defendant was MAGIC LAXMAN REKHA. The mark of the defendant thus incorporated the whole of the mark of the plaintiff in that case. In the case of Swarn Singh, (supra) both the parties were using the same mark USHA though in respect of different products. In the case of Century Traders (supra), both the parties were using the mark RAJARANI with the only difference that the defendant had put a hyphen between RAJARANI. In the case of Amritdhara Pharmacy, (supra), the plaintiffs mark was AMRITDHARA, whereas the mark of the defendant was LAXMANDHARA and both the marks, therefore, were phonetically similar. None of these judgments was actually referred during arguments. In any case, I do not find any such proposition of law in any of these judgments which would persuade me to take a view favourable to the plaintiff. 21. It was also contended by the learned counsel for CS(OS)No. No.1457/2009 Page 23 of 26 the plaintiff that defendant No. 1 is also selling the same drug under another trademark. This, to my mind, would make no difference to the merits of the case since the use of the other mark was started by defendant No. 1 only after receipt of notice from the plaintiffs and appears to be a precautionary step to build an alternative mark in case the plaintiff is able to obtain an injunction against use of the mark NIFTAS. 22. For the reasons given in the preceding paras, defendant No. 1 is directed to keep complete and accurate account of the sales and profit made by it from the drug sold under the name NIFTAS . The accounts since launch of the drug till 31st March, 2011 will be filed by defendant No. 1 within two weeks, whereas the accounts for the subsequent financial year(s) would be filed within three months of the closing of the financial year. It is also directed that defendant No. 1 will not launch drug in question in packaging other than ALU-ALU (blister pack), without prior permission of the Court. No other injunction is granted to the plaintiff. The application stands disposed of in terms of this order. CS(OS)No. No.1457/2009 Page 24 of 26 CS(OS) 1457/2009 The following issues are framed on the pleadings of the parties:1. Whether this Court has territorial jurisdiction to try the present suit? OPP

2. Whether defendant No. 1 is passing off its product as that of the plaintiff by using the trademark NIFTAS? OPP 3. Whether the plaintiff is entitled to the injunction claimed by it? OPP 4. Whether the plaintiff is entitled to rendition of accounts, claimed by it? OPP 5. Whether the plaintiff is entitled to delivery up of the infringing packaging material, etc.? OPP 6. Relief. No other issue arises or is claimed Affidavit by way of evidence be filed within two weeks. Shri Brajesh Kumar, former Additional District & Sessions Judge is appointed as Local Commissioner to record the evidence of the parties. The fee of the Local Commissioner is fixed at Rs 50,000/-, which shall be paid by defendant No.1. CS(OS)No. No.1457/2009 Page 25 of 26 The parties are directed to appear before the Local Commissioner on 19 th September, 2011 for fixing the dates for cross-examination of the witnesses of the plaintiff. (V.K. JAIN) JUDGE AUGUST 23, 2011