GSK CONSUMER HEALTHCARE S A Vs. EG PHARMACEUTICALS

JUDGEMENT

(1.) IA No.6749/2019 (of the plaintiff u/O XXXIX R-1&2 CPC).

(2.) It is the case of the plaintiff in the plaint, that (i) the plaintiff is the registered proprietor of the trade marks "OTRIVIN", the device [1] and "OTRIVIN PERFECT NIGHT"; (ii) the product under the said trade mark were launched first in the year 1956 in Finland; (iii) the earliest launch of "OTRIVIN" product in India can be traced back to the 1980s; (iv) according to the Stockists Secondary Audit conducted by the IMS Health Information and Consulting Service India Private Limited, the product sold under the mark "OTRIVIN" was the top selling nasal decongestant in India from the year 2006 till the year 2010, with sales of Rs.21.2 crores in the year 2006 and of Rs.41 crores in the year 2010; (v) the plaintiff is also the owner of the domain names wwwotrivin.com and wwwotrivin.co.in, incorporating the trade mark "OTRIVIN"; (vi) the predecessor-in-interest of the plaintiff became aware of "BIOTRIVIN" mark filed for registration by defendant no.3, when it was advertised in Trade Mark Journal dated 1st July, 2007; (vii) the predecessor-in-interest of the plaintiff filed an opposition dated 23rd January, 2008 to the application of the defendant no.3 for registration; (viii) however vide order dated 28th February, 2018, the said opposition was dismissed as being time barred and the application of the defendant no.3 proceeded to registration on 1st March, 2018; (ix) however due to non-filing of a renewal request within the prescribed statutory time period of six months by the defendant no.3, the registration has thereafter lapsed; (x) the enquiries of the plaintiff at this time revealed that the product was not available in the retail market in pharmacies and the status remained unchanged till the filing of the present suit; (xi) however in April, 2019, the product was found on the online pharmacies wwwmedplusmart.com and wwwgenericwala.com; (xii) a test purchase made by the plaintiff on 4th April, 2019 was delivered in Delhi; and, (xiii) the members of the trade, as also the consumers will be misled by the products made available in a clandestine manner by the defendants under the mark "BIOTRIVIN" by imagining them to be of the plaintiff and purchasing them.

(3.) The suit came up before this Court first on 8th May, 2019, when though was entertained but no ex parte relief as sought granted.