IA No. 5337/2019 (for condonation of delay in filing the accompanying appeal)
For the reasons stated in the application, the delay in filing the accompanying appeal is condoned.
The application stands disposed of.
O.A. No. 37/2019
1. This appeal is filed seeking to impugn the order dated 13.02.2019 by which order the learned Joint Registrar has allowed the application filed by the plaintiff being IA No. 5444/2018 (wrongly noted as IA No. 5442/2018 in the impugned order) under Order 11 CPC seeking discovery and production of documents.
2. The case of the plaintiff is that the plaintiff is engaged in the business of manufacturing, marketing and selling, etc, pharmaceutical products. The plaintiff has a trade mark OMEZ. The grievance of the plaintiff is that the defendant is using deceptively similar carton and strip packaging bearing the mark OMECAP. It is stated that the mark OMEZ and its distinctive packaging is well known among the relevant class of customers, doctors and other healthcare professionals. It is pleaded that copying the said packaging by the defendant is an attempt to pass off OMECAP product as that of the plaintiff’s OMEZ. On 22.08.2017, this court passed an ex parte injunction stating that a prima facie case is made out and restrained the defendant from selling or offering for sale, etc. pharmaceutical preparations under the mark OMEZ having identical/similar trade dress or packaging as that of the plaintiff’s OMEZ product.
3. On 12.02.2018 with the consent of the learned counsel for the parties, the above interim order was confirmed.
4. Learned counsel for the defendant states that even prior to filing of the suit the defendant had changed the trade dress/packaging and are not using the impugned trade dress/packaging.
5. Learned counsel for the plaintiff however states that the defendant is a well known company and would be liable to pay damages in view of the fact that they knowingly passed off their product as that of the plaintiff.
6. In these circumstances, the plaintiff has filed the stated application under Order 11 CPC which essentially seeks details of the sale made by the defendant by trying to pass off its product in the impugned packaging
7. Learned counsel for the defendant/appellant has however stated that the impugned order is erroneous. He relies upon a judgment of a Coordinate Bench of this court in Titan Industries vs. Nitin P. Jain & Ors., 126(2006)DLT 132 to contend that normally in a matter like the present case, there would a spilt trial and first, this court should hear the matter only pertaining as to whether there has been a case of passing off the product by the defendant. It is only after recording such a finding this court would proceed to assess the damages/issue of rendition of accounts. He submits that presently, there has been no finding recorded by this court that the defendant is guilty of passing off its product as that of the plaintiff.
8. The Coordinate Bench of this court in Titan Industries vs. Nitin P. Jain & Ors., (supra) held as follows:-
“14. The court also noted that with a view to savings of cost, the practice has developed, in particular in intellectual property cases, when it is practicable, to have a "split trial". The action is divided into two stages. The first stage is the trial at which the issue is limited to that of liability, i.e. whether the plaintiff's rights have been infringed. The second stage, which is contingent upon liability being established at the first stage, is concerned with the question of assessment of damages and calculation of profits. In this way, the costs of exploring the issue of damages and profits is put off until it is clear that the defendant is liable and the issue really arises and requires determination. As a concomitant with this practice, there has likewise developed the practice of limiting discovery at the first stage to documents relevant to the issue of liability and excluding documents relevant only to the second stage. In this way the burden of discovery at the first stage is reduced, and the invasion of confidence necessarily involved in discovery is postponed and if liability is not established, entirely obviated: [see also Baldock v.Addison  1 W.L.R.158.]
15. Learned counsel for the defendants tried to urge that there is no practice of 'split trial' in this country and, therefore, the aforesaid provision is not applicable. This submission of learned counsel is reflective of ignorance on this part. The system of 'split trial' prevails in all those cases where relief of rendition of accounts or damages/mesne profits is made. In the first stage the court holds inquiry as to whether the right of the plaintiff is infringed or not and once it is so held, a preliminary decree for rendition of accounts is passed and at the second stage the evidence is led on the question of assessment of damages.
17. The aforesaid principles laid down by the English Courts on the claims for damages and/or account of profits are based on common law principle applicable in torts. Section 106 of the Act and its equivalent provision contained in Section 135 of the Trade Marks Act, 1999, are nothing but the legislative mandate to the aforesaid common law principles. Therefore, once this provisions states that the plaintiff can claim relief either for damages or relief for account of profits, reading the aforesaid principles into this provision it is also to be held that both the reliefs can be claimed in the alternative with right to the plaintiff to make an informed election between damages and profits in the course of trial in the light of information revealed on discovery and the evidence at the trial.”
9. I am not inclined to accept the contention of the learned counsel for the appellant. Firstly, this court has already recorded a prima facie finding that the impugned packaging was done by the defendant only for the purpose of trying to pass off its products as that of the plaintiff.
10. Apart from the above, in 2018, the Delhi High Court (Original Sides) Rules 2018 came into force. Admittedly, there is no procedure prescribed for spilt trial.
11. I may also note that in this case, the plaintiff has only sought a decree of damages of Rs. 1 crore. It has not sought rendition of accounts. Hence, it is not a case where a preliminary decree for rendition of accounts would be passed by the court under Order 20 Rule 16 CPC and it would be followed by appropriate directions for rendition of accounts.
12. In my opinion, for assessment of damages, the interrogatories that have been passed on to the defendant are in order and cannot be said to be faulted.
13. However, a perusal of the interrogatories would show that in para 6, the plaintiff seeks information on two aspects i.e. price quoted to the stockists an
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d manufacturing cost of the product under the impugned packaging. Similar, interrogatory No. 7 seeks information on profit margin of the products sold under the impugned packaging. In my opinion, these two aspects, namely, manufacturing cost of the product and the profit margin of the product are purely subjective. These can vary based on various circumstances. The defendant may for the purpose of assessing the cost of manufacturing and profit margin include in the manufacturing cost various aspects on which the plaintiff may not agree. It would be appropriate that these questions are deleted from the interrogatories. The appellant would comply with the balance interrogatories in terms of the order of the learned Joint Registrar. 14. The appeal stands disposed of.