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Cadila Healthcare Ltd., Ahmedabad & Another v/s Sun Pharmaceutical Industries Limited


Company & Directors' Information:- SUN PHARMACEUTICAL INDUSTRIES LIMITED [Active] CIN = L24230GJ1993PLC019050

Company & Directors' Information:- CADILA HEALTHCARE LIMITED [Active] CIN = L24230GJ1995PLC025878

Company & Directors' Information:- R G S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110PB2004PTC047381

Company & Directors' Information:- R G S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110CH2004PTC027689

Company & Directors' Information:- P. H. HEALTHCARE PRIVATE LIMITED [Active] CIN = U33110MH2010PTC208651

Company & Directors' Information:- B G P HEALTHCARE PRIVATE LIMITED [Active] CIN = U24232GJ2007PTC050417

Company & Directors' Information:- D R HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110GJ2006PTC048008

Company & Directors' Information:- SUN INDUSTRIES LIMITED. [Active] CIN = U51909DL1991PLC045798

Company & Directors' Information:- M J HEALTHCARE PRIVATE LIMITED [Active] CIN = U93090PN2008PTC132455

Company & Directors' Information:- S J HEALTHCARE PRIVATE LIMITED [Active] CIN = U85190MH2005PTC153435

Company & Directors' Information:- G J HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110PB1998PTC021049

Company & Directors' Information:- I M HEALTHCARE PRIVATE LIMITED [Active] CIN = U24232CH2010PTC032454

Company & Directors' Information:- A S PHARMACEUTICAL (INDIA) PRIVATE LIMITED [Active] CIN = U24230TN2010PTC076676

Company & Directors' Information:- K G HEALTHCARE LIMITED [Active] CIN = U85110TZ1995PLC006402

Company & Directors' Information:- AHMEDABAD HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110GJ1998PTC034626

Company & Directors' Information:- C S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110GJ2012PTC070018

Company & Directors' Information:- M M HEALTHCARE LIMITED [Active] CIN = U74899DL1988PLC034339

Company & Directors' Information:- A L B HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85110UP2002PTC026786

Company & Directors' Information:- S B M HEALTHCARE (INDIA) PRIVATE LIMITED [Active] CIN = U33112DL2005PTC140703

Company & Directors' Information:- S A HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85100OR2014PTC018365

Company & Directors' Information:- AND HEALTHCARE LIMITED [Active] CIN = U51909PB2017PLC046446

Company & Directors' Information:- D. S. HEALTHCARE PRIVATE LIMITED [Active] CIN = U24232WB2007PTC115617

Company & Directors' Information:- B N HEALTHCARE PRIVATE LIMITED [Active] CIN = U15412AS2000PTC006258

Company & Directors' Information:- P AND B HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U24230GJ2013PTC075056

Company & Directors' Information:- M M D HEALTHCARE LIMITED [Active] CIN = U65921CH1996PLC017595

Company & Directors' Information:- S. B. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U24231UP1994PTC017328

Company & Directors' Information:- A AND R HEALTHCARE PRIVATE LIMITED [Active] CIN = U24239DL1999PTC102404

Company & Directors' Information:- K. N. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85320RJ2018PTC061003

Company & Directors' Information:- R F B HEALTHCARE PRIVATE LIMITED [Active] CIN = U85190DL2021PTC384643

Company & Directors' Information:- M S HEALTHCARE PRIVATE LIMITED [Active] CIN = U24239MH2001PTC130893

Company & Directors' Information:- P R A B PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U33111UP2013PTC054705

Company & Directors' Information:- G A S HEALTHCARE PRIVATE LIMITED [Active] CIN = U74999BR2018PTC038700

Company & Directors' Information:- L. J. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100HR2019PTC078493

Company & Directors' Information:- J. R. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85191UP2013PTC054982

Company & Directors' Information:- M A P H HEALTHCARE PRIVATE LIMITED [Under Process of Striking Off] CIN = U85100WB2010PTC144870

Company & Directors' Information:- N. C. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85191DL2007PTC164437

Company & Directors' Information:- N Y HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230GJ2010PTC063348

Company & Directors' Information:- H 4 HEALTHCARE PRIVATE LIMITED [Active] CIN = U15100MH2021PTC353283

Company & Directors' Information:- D. B. HEALTHCARE PRIVATE LIMITED [Active] CIN = U33205MH2014PTC253439

Company & Directors' Information:- K S V HEALTHCARE PRIVATE LIMITED [Active] CIN = U85195HR2011PTC043767

Company & Directors' Information:- C M C PHARMACEUTICAL PVT LTD [Strike Off] CIN = U24231WB1985PTC039722

Company & Directors' Information:- M S C PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U24230MH2003PTC143605

Company & Directors' Information:- N M HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110MH2000PTC125392

Company & Directors' Information:- T K HEALTHCARE (INDIA ) PRIVATE LIMITED [Strike Off] CIN = U85190MH2003PTC139346

Company & Directors' Information:- A R HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110CH2013PTC034820

Company & Directors' Information:- I P HEALTHCARE PRIVATE LIMITED [Active] CIN = U24239DL2003PTC121211

Company & Directors' Information:- A 2 Z HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100DL2010PTC208860

Company & Directors' Information:- K. D. HEALTHCARE INDIA PRIVATE LIMITED [Strike Off] CIN = U85100DL2015PTC281658

Company & Directors' Information:- A P HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230MH1999PTC122520

Company & Directors' Information:- B P L PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U24239MH1978PTC020449

Company & Directors' Information:- K Y O S HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U51397HP2010PTC031280

Company & Directors' Information:- R. N. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U74999DL2017PTC314515

Company & Directors' Information:- D. R. Y. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U52599DL2018PTC329353

Company & Directors' Information:- Z F HEALTHCARE PVT. LTD. [Active] CIN = U29295MH2006PTC164255

Company & Directors' Information:- K. B. B. K. HEALTHCARE PRIVATE LIMITED [Active] CIN = U85110RJ2013PTC041465

Company & Directors' Information:- T.H.E. HEALTHCARE COMPANY PRIVATE LIMITED [Strike Off] CIN = U33111MH2012PTC229451

Company & Directors' Information:- J S B HEALTHCARE PRIVATE LIMITED [Active] CIN = U74120MH2013PTC248848

Company & Directors' Information:- J S D HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U74120UP2011PTC046578

Company & Directors' Information:- S V T HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85100TZ2009PTC015287

Company & Directors' Information:- B K D PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U52100WB2014PTC200227

Company & Directors' Information:- A N S HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100HP2011PTC031745

Company & Directors' Information:- J M HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230CH2007PTC030943

Company & Directors' Information:- P R HEALTHCARE PRIVATE LIMITED. [Strike Off] CIN = U24231DL2003PTC120123

Company & Directors' Information:- R S M HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U24232DL2005PTC136255

Company & Directors' Information:- M H HEALTHCARE PRIVATE LIMITED [Active] CIN = U74999DL2016PTC289311

Company & Directors' Information:- N T HEALTHCARE PRIVATE LIMITED [Active] CIN = U85100DL2012PTC241304

Company & Directors' Information:- R A HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85190DL2009PTC188221

Company & Directors' Information:- G & G HEALTHCARE PRIVATE LIMITED [Active] CIN = U51397HR2015PTC057293

Company & Directors' Information:- P D HEALTHCARE PRIVATE LIMITED [Active] CIN = U24230GJ2004PTC045131

Company & Directors' Information:- L. V. G. HEALTHCARE PRIVATE LIMITED [Active] CIN = U24233GJ2006PTC047749

Company & Directors' Information:- S H G HEALTHCARE PVT LTD [Strike Off] CIN = U85110WB1989PTC047231

Company & Directors' Information:- SUN HEALTHCARE PRIVATE LIMITED [Strike Off] CIN = U85190MH1989PTC052931

Company & Directors' Information:- G B PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U85121HR2006PTC036295

Company & Directors' Information:- SUN INDUSTRIES LIMITED [Dissolved] CIN = U99999MH1947PTC005559

    O.S.A.No. 197 of 2016

    Decided On, 21 October 2016

    At, High Court of Judicature at Madras

    By, THE HONOURABLE MR. JUSTICE A. SELVAM & THE HONOURABLE MR. JUSTICE P. KALAIYARASAN

    For the Appellant: Gladys Daniel, Advocate. For the Respondents: Sathish Parasaran for M/s. Arun C. Mohan, Vasundhara Arun, Brinda Mohan, Advocates.



Judgment Text

(Prayer: Original Side Appeal preferred under Clause 15 of Letters Patent read with Order XXXVI Rule 1 of Original Side Rules against the order of this Court dated 03-06-2016 made in C.S.No.985 of 2009.)

A. Selvam, J.

1. This Original Side Appeal has been directed against the judgment and decree dated 03-06-2016 passed in C.S.No.985 of 2009 by the learned Single Judge of this Court.

2. The respondents herein, as plaintiffs, have instituted C.S.No.985 of 2009 on the file of this Court praying to grant the reliefs of perpetual injunctions, liquidated damages, delivery-up for destruction of all preparations, dies, blocks, labels etc., and also for passing the preliminary decree for rendition of accounts wherein the present appellants have been shown as defendants.

3. It is averred in the plaint that the plaintiff is carrying on business as manufacturer of medicinal preparation for human consumption. The plaintiff is an International Specialty Pharma Company with presence in over 30 markets. The plaintiff is involved in making active pharmaceutical ingredients and in branded markets many of plaintiff's products are prescribed in chronic therapy areas like Cardiology, Psychiatry, Neurology, Gastroenterology, Diabetology, Respiratory etc. The plaintiff is an established and well-known pharmaceutical company in India, which markets drugs and formulation in India since 1983 and subsequently, listed in the main stock exchanges in the year 1994. The plaintiff has been enjoying a high reputation for its medicinal preparations because of its excellent quality and efficiency. During October 2000, the plaintiff has applied to the Drug Controller for permission to manufacture VENLAFAXINE -Extended Release (XR) Capsule for treatment of Major Depression Disorders under the trademark VENIZ. On 21-10-2000, the Drug Control Administration granted permission to the plaintiff for manufacturing VENIZ capsules. After receiving the said licence from the Drug Control Administration, the plaintiff commenced manufacture of medicinal and pharmaceutical preparations under the trademark VENIZ XR. The plaintiff is a registered proprietor of the trademark VENIX XR under No.949364 dated 22-08-2000. The plaintiff has spent a huge amount for popularizing the said preparation under the trademark VENIZ through advertisements and also by various methods. During August 2009, the plaintiff has come to know that the defendants have started a preparation bearing the mark VENZ-OD in which OD is common to trade and it means 'once a day' and the word VENZ forms the mark thereof. The defendants have made slavish imitation of the plaintiff's registered trademark VENIZ. The trademarks VENIZ and VENZ are phonetically, visually and structurally similar. The defendants have infringed the trademark of the plaintiff and thereby, earned huge amounts. Under the said circumstances, the present suit has been instituted for the reliefs sought therein.

4. In the written statement filed on the side of the defendants, most of the averments made in the plaint are specifically denied. In Paragraph No.34, it is averred as follows:

'The Defendant submits that the Defendant No.1 has obtained permission from the Government of India,Central Drugs Standard Control Organization, Directorate General of Health Services to manufacture VENZ-OD on 20-07-2009. The Defendant No.1 has by now incurred an expense of about Rs.40,00 lacs on the development, clinical trials and studies of the Active Pharmaceutical Ingredient (API) as well as finished formulation and Rs.42.00 lacs (approximately) for the purpose of launch of VENZ-OD. The aggregate sales of VENZ-OD have been about Rs.82.00 lacs, from the period 03-08-2009 to 31-10-2009.'

Further, it is averred in the written statement that the defendants have stopped the manufacture of VENZ-OD and there is no merit in the suit and the same deserves to be dismissed.

5. On the basis of the rival pleadings raised on either side, the learned Single Judge has framed necessary issues and after analyzing both the oral and documentary evidence has granted reliefs of perpetual injunctions, rendition of accounts and also liquidated damages to the tune of Rs.3 lakhs by way of passing the impugned judgment and the same is being challenged in the present Original Side Appeal.

6. The learned counsel appearing for the appellants/defendants has laconically contended that as per evidence given by P.W.1, there is no cause of action for instituting the present suit and as per Section 135 of the Trade Marks Act, 1999, the plaintiff is not entitled to get both the reliefs of rendition of accounts as well as liquidated damages and even though on the side of the plaintiff, the relief of rendition of accounts has not been pressed, the learned Single Judge has erroneously granted the said two reliefs and therefore, the judgment and decree passed by the learned Single Judge are liable to be set aside.

7. To resile the contentions put forth on the side of the appellants/defendants, the learned counsel appearing for the respondent/plaintiff has befittingly drawn the attention of the Court to the averments made in Paragraph No.34 of the written statement and also specifically contended that only during August 2009, the plaintiff has come to know the sinister motive of the defendant and also marketing of similar mark VENZ-OD and the present suit has been instituted on the same year and therefore, for instituting the present suit, definitely cause of action has been in existence and the learned Single Judge after considering the overall evidence available on record has rightly passed the impugned judgment and decree and the same do not warrant any interference.

8. On the basis of the averments made both in the plaint as well as written statement, the Court can unflinchingly come to a conclusion that the plaintiff is a proprietor of the trademark VENIZ. The defendants have sold capsules under the name and style of VENZ-OD. In fact both are phonetically, visually and structurally similar. Further, on the side of the plaintiff, plenitude of evidence is available for the purpose of coming to a conclusion that the defendants have made a clear infringement of the trademark of the plaintiff.

9. At this juncture, the Court has to look into the evidence given by P.W.1. During the course of cross-examination, he would say that he has not known whether the defendants have changed its product's name to ZYVEN or any other name. Further, he would say that he is not certain enough as to whether the suit cause of action has extinguished since the defendants have changed its product's name.

10. In fact, this Court has perused the entire cause of action averred in the plaint wherein it has been clearly stated that the plaintiff has come to know the infringement of trademark in the year 2009. Since the present suit has been instituted in the same year, it is needless to say that the present suit is having cause of action. Therefore, the first limb of argument advanced on the side of the appellants/defendants cannot be accepted.

11. The second limb of argument put forth on the side of the appellants/defendants is based upon Section 135 of the Trade Marks Act, 1999 and the same reads as follows:

'135. Relief in suits for infringement or for passing off.

(1) The relief which a court may grant in any suit for infringement or for passing off referred to in section 134 includes injunction (subject to such terms, if any, as the court thinks fit) and at the option of the plaintiff, either damages or an account of profits, together with or without any order for the delivery-up of the infringing labels and marks for destruction or erasure.'

A mere reading of the said Section would go to show that if a suit is instituted on the basis of infringement or passing off, the Court can grant relief of injunctions with certain conditions as it thinks fit. Further, at the option of the plaintiff, the Court can grant either damages or an account of profits together with or without any order for delivery-up of the infringing labels etc.

12. To put it in short, in a suit like this, both liquidated damages as well as rendition of accounts cannot be claimed. The learned counsel appearing for the appellants/defendants has strenuously contended that the learned Single Judge has granted both the reliefs of damages as well as rendition of accounts.

13. In fact, this Court has perused the reliefs granted by the learned Single Judge and ultimately, found that the learned Single Judge has granted reliefs of perpetual injunctions, rendition of accounts and damages of Rs.3 lakhs.

14. As per Section 135 of the said Act, the plaintiff cannot claim reliefs of damages as well as rendition of accounts. Under the said circumstances, the second limb of argument advance by the learned counsel appearing for the appellants/defendants is really having subsisting force.

15. It is pointed out earlier that in the written statement at Paragraph No.34, a specific averment has been made on the side of the appellants/defendants to the effect that during the relevant period, the

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defendants have sold the infringed trademark VENZ-OD for a sum of Rs.82.00 lacs. 16. The learned Single Judge after considering the quantum of amount mentioned in Paragraph No.34, has awarded Rs.3 lakhs as liquidated damages. The said quantum has not been challenged on either side. 17. It has already been pointed out that no relief can be passed in the present suit for rendition of accounts. Further, it is seen from the records, that the plaintiff has also relinquished the relief of rendition of accounts. Under the said circumstances, the judgment and decree passed by the learned Single Judge are liable to be modified. In fine, this Original Side Appeal is allowed in part without costs. The judgment and decree dated 03-06-2016 passed in C.S.No.985 of 2009 by the learned Single Judge are modified as follows: The relief granted in respect of rendition of accounts is set aside. In respect of other reliefs, the judgment and decree passed by the learned Single Judge are confirmed.
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