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Sun Pharmaceutical Industries Limited v/s Systopic Laboratories Limited


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

Company & Directors' Information:- J F LABORATORIES LIMITED [Under Liquidation] CIN = U24232MH1988PTC049457

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

Company & Directors' Information:- R R G LABORATORIES LIMITED [Strike Off] CIN = U24230DL1984PLC018691

Company & Directors' Information:- SYSTOPIC LABORATORIES PRIVATE LIMITED [Active] CIN = U85110DL1982PTC014342

Company & Directors' Information:- S R LABORATORIES PRIVATE LIMITED [Active] CIN = U24232TG2005PTC047885

Company & Directors' Information:- M S LABORATORIES LIMITED [Strike Off] CIN = U24100DL1993PLC051613

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

Company & Directors' Information:- B R LABORATORIES LIMITED [Active] CIN = U23209GJ1994PLC022124

Company & Directors' Information:- B M K LABORATORIES PRIVATE LIMITED [Amalgamated] CIN = U99999MH1978PTC020294

Company & Directors' Information:- J P LABORATORIES PRIVATE LIMITED [Active] CIN = U73100PN1998PTC012528

Company & Directors' Information:- P & B LABORATORIES LIMITED [Active] CIN = U24110MH1964PLC013023

Company & Directors' Information:- D I LABORATORIES LTD [Active] CIN = U24239WB1986PLC041034

Company & Directors' Information:- M. R. LABORATORIES PRIVATE LIMITED [Active] CIN = U24239TG2006PTC051263

Company & Directors' Information:- N B LABORATORIES PRIVATE LIMITED [Active] CIN = U24295MH1998PTC117004

Company & Directors' Information:- SUN LABORATORIES PRIVATE LIMITED [Active] CIN = U24231UP1988PTC009776

Company & Directors' Information:- SUN PVT LTD [Active] CIN = U24246RJ1984PTC003093

Company & Directors' Information:- G SUN INDIA PRIVATE LIMITED [Strike Off] CIN = U74899DL1995PTC071425

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

Company & Directors' Information:- A N LABORATORIES PRIVATE LIMITED [Active] CIN = U85191MH2011PTC223368

Company & Directors' Information:- P C LABORATORIES PRIVATE LIMITED [Active] CIN = U24231BR1972PTC000950

Company & Directors' Information:- P C LABORATORIES PRIVATE LIMITED [Not available for efiling] CIN = U24231BR1973PTC000930

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

Company & Directors' Information:- U. D. LABORATORIES PRIVATE LIMITED [Active] CIN = U85100WB2007PTC115385

Company & Directors' Information:- J B LABORATORIES PVT LTD [Active] CIN = U24232PB1993PTC013762

Company & Directors' Information:- G S LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24231UP1999PTC024990

Company & Directors' Information:- M B LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24231DL1999PTC098347

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:- B L B LABORATORIES PVT LTD [Strike Off] CIN = U74999MH1986PTC038541

Company & Directors' Information:- A AND N LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24239TG1985PTC005901

Company & Directors' Information:- J. M .LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U85110DL1994PTC061158

Company & Directors' Information:- SYSTOPIC INDIA PRIVATE LIMITED [Strike Off] CIN = U74900DL1996PTC083670

Company & Directors' Information:- SUN LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24114MH1997PTC111798

Company & Directors' Information:- B M K LABORATORIES PRIVATE LIMITED [Amalgamated] CIN = U36912MH2011PTC220030

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

Company & Directors' Information:- SUN LABORATORIES PVT LTD [Strike Off] CIN = U24234OR1986PTC001710

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

Company & Directors' Information:- A H LABORATORIES P LTD [Strike Off] CIN = U24232PB1990PTC010830

Company & Directors' Information:- A P LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24233UP1974PTC003855

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

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

Company & Directors' Information:- D S LABORATORIES PRIVATE LIMITED [Active] CIN = U85100WB2013PTC192872

Company & Directors' Information:- P K LABORATORIES PRIVATE LIMITED [Active] CIN = U24239DL2004PTC127774

Company & Directors' Information:- V B LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24232GJ2013PTC077087

Company & Directors' Information:- K SUN LABORATORIES PRIVATE LIMITED [Active] CIN = U74999PN2021PTC204996

Company & Directors' Information:- A AND V LABORATORIES LIMITED [Strike Off] CIN = U24232DL1995PLC065731

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

Company & Directors' Information:- SUN INDIA CORPORATION PRIVATE LIMITED [Strike Off] CIN = U65991TN1943PTC000994

Company & Directors' Information:- B. S. LABORATORIES PRIVATE LIMITED [Strike Off] CIN = U24232UP1995PTC019060

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

    CS(COMM). No. 442 of 2018 & IA. No. 15114 of 2018

    Decided On, 01 November 2018

    At, High Court of Delhi

    By, THE HONOURABLE MR. JUSTICE RAJIV SAHAI ENDLAW

    For the Plaintiff: Hemant Singh, Vaseem Shuaib Ahmed, Advocates. For the Defendant: Aasish Somasi, Imon Roy, Advocates.



Judgment Text


1. This order is in continuation of the earlier order dated 22nd October, 2018.

2. The Counsel for the plaintiff states that the plaintiff will be prejudiced by disposal of the suit in the manner suggested on 22 nd October, 2018 and desires to keep the suit adjourned sine die.

3. The plaintiff has also filed IA No. 15114/2018 under Order 14 Rule 5 of the Code of Civil Procedure, 1908 (CPC) which has come up today for the first time.

4. The Counsel for the defendant states that a reply be permitted to be filed thereto.

5. Considering the nature of the application, reply is not deemed necessary and the Counsels have been heard.

6. Issues in this suit were framed on 2nd April, 2008 and vide subsequent order dated 22nd December, 2014, on the defendant filing an application for stay of the proceedings in the present suit on the ground of a rectification petition filed by the plaintiff for cancellation of the defendant’s mark and which was pending before the Intellectual Property Appellate Board (IPAB), the proceedings in the suit with respect to claim for infringement of trade mark were stayed and the proceedings with respect to passing off ordered to continue. However, vide subsequent order dated 21st April, 2017, the proceedings qua passing off also were stayed and the following additional issue framed:

“Whether the use of trade mark “ORVAS” by the defendant amounts to infringement of the plaintiff’s registered trade mark “STORVAS”? —OPP”

7. The plaintiff now seeks framing of yet another issue as under:

“Whether the registration of the trade mark ‘ORVAS’ in the name of the defendant under trade mark registration No. 1328403 is invalid, and liable to be cancelled?” —OPP

8. It is pleaded in the application that in terms of dicta of the Supreme Court in Patel Field Marshal Agencies v. P.M. Diesels Limited, (2018) 2 SCC 112, pronounced on 29th November, 2017, the framing of the said issue is essential.

9. The Counsel for the plaintiff has also argued that the plaintiff, at the time of institution of this suit was not aware of the registration of the trade mark of the defendant and learnt of the same for the first time from the written statement of the defendant and has in the replication inter alia pleaded as under:

“The Plaintiff further submits that the Defendant as on the date of its application for registration of trademark "ORVAS" was very much aware that its alleged mark "ORVAS" as usual being phonetically and usually similar to not only being similar to Plaintiff's well-known mark "STORVAS", is also incapable of registration, as it falls under absolute grounds for refusal of registration enumerated under Section 9 of the Trade Marks Act, 1999, being non-distinctive, descriptive or generic.”

with respect to the invalidity of the mark of the defendant and thus an issue qua invalidity is required to be framed.

10. The Counsel for the defendant has argued, firstly, that the plaintiff in the aforesaid paragraph having claimed similarity in its mark and in the mark of the defendant and having also pleaded that the mark of the defendant is non-distinctive, descriptive or generic, it would follow that the mark of the plaintiff also is non-distinctive, descriptive or generic and once it is so, the registration in favour of the plaintiff also is bad and no question of framing any issue qua the plea of invalidity is made out. It is also argued that as per Patel Field Marshal Agencies (supra), the Court has to return a prima facie finding with respect to the plea of invalidity of registration.

11. The Counsel for the plaintiff has contended that the plaintiff, in the paragraph reproduced above has pleaded that the defendant was not entitled to registration of its mark for the reason of the mark of the defendant, of which registration was sought, being similar to the previously registered mark of the plaintiff. Attention in this regard is invited to Section 9(2)(a) and Section 11(1)(a) of the Trade Marks Act, 1999. It is also argued that the Division Bench of this Court in BhagwanDass Khanna Jewellers Pvt. Ltd. v. Bhagwan Das Khanna Jewellers, 238 (2017) DLT 620 (DB), has held that when the Court frames an issue with regard to the invalidity of the mark, it can be presumed that the Court was satisfied that the plea regarding such invalidity was prima facie tenable. It is thus argued that the Court is not required to return any prima facie finding. Attention is also invited to my judgment in Abbott Healthcare Pvt. Ltd. v. Raj Kumar Prasad, 249 (2018) DLT 220 and it is argued that even if the replication is not very happily worded, the issue still have to be framed.

12. I have considered the rival contentions.

13. Though I have also in Abbott Healthcare Pvt. Ltd. while analysing Patel Field Marshal Agencies (supra) have held that the prima facie finding of the plea of invalidity has to be returned but while framing additional issue therein, it has only been reasoned that the plea of invalidity was a material plea so as to invite an issue thereon and have not returned any prima facie finding. I have even otherwise also in the said judgment discussed in detail the pleas on which issues are to be framed and on a reading thereof with BhagwanDass Khanna Jewellers Pvt. Ltd. (supra), though of a date prior to Patel Field Marshal Agencies (supra), I am of the opinion that the very framing of an issue, which can be framed only on a material plea, is a finding of prima facie merit in the plea of invalidity.

14. As far as the other aspect is concerned, though undoubtedly on the first reading of the paragraph of the replication produced hereinabove, it does appear that the contention of the Counsel for the defendant is correct but if one were to read the aforesaid paragraph minutely, what the plaintiff is also found to be pleading therein is, that owing to the awareness by the defendant of the previously registered trade mark of the plaintiff, the registration of the mark of the defendant is invalid. I may state that else the plaintiff in the plaint has made detailed averments with respect to the similarity between the two marks.

15. Even otherwise, it is the defendant who sought the orders aforesaid of stay of proceedings during the pendency of the rectification petition; the need for framing the additional issue has arisen owing to the subsequent dicta of the

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Supreme Court in Patel Field Marshal Agencies (supra). For the reasons given in Abbott Healthcare Pvt. Ltd. (supra), issues can be so permitted to be amended. 16. The application is thus allowed and disposed of. 17. The following additional issue is framed in the suit: “Whether the registration of the trade mark “ORVAS” in the name of the defendant under trade mark registration No. 1328403 is invalid, and liable to be cancelled? —OPP” 18. The proceedings in the suit to remain stayed in terms of the earlier order. 19. The proceedings are adjourned sine die with liberty to the parties to apply for revival as and when need arises. Application allowed.
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