LABORATORIES GRIFFON PVT. LTD. Vs. ADWIN PHARMA AND

JUDGEMENT

(1.) FACTUAL MATRIX : This is an action for infringement of trade mark, copyright and passing-off. The Interim Application seeks to restrain the Respondent from using the trade mark "ELGIMET", "ELGIMET-SR 1/500" and "ELGIMET-SR 2/500" or any other identical or deceptively similar mark as that of the Plaintiff's trade mark "GLIMET" and "GLIMET DS" and from passing off the Defendant's product as that of the Plaintiff. By order of 4/9/2024, an ex-parte ad-interim relief was granted in respect of infringement of trade mark and Court Receiver came to be appointed. Upon service, the Defendants caused appearance. The submission of learned counsel appearing for Defendant No. 1- manufacturer is that Defendant No. 1 intends to settle the dispute amicably with the Plaintiff and hence, no submissions are advanced to oppose the interim relief. Learned counsel appearing for Defendant No. 2 submits that Written Statement has been filed and the same may be treated as Affidavit-in-reply.

(2.) The Plaintiffs came with the case of the 1st Plaintiff being incorporated in the year 1947 for carrying on business of manufacturing and marketing of medicinal preparation. The 2nd Plaintiff is the licensee of the trade mark of the 1st Plaintiff. The application and registration of the trade mark "GLIMET" was filed in the year 1992 under Part A of the Trade and Merchandise Marks Act, 1958 in respect of its medicinal preparations, which were used for treatment of diabetes. The registration of its variant "GLIMET DS" is of the year 1999. Over the years, the name of the 1st Plaintiff kept changing and presently its name has been brought on record as registered proprietor of the trade marks. In order to demonstrate the reputation and goodwill, the sales figure is set out which shows that from 1/4/2017 to 31/3/2023, the sales turnover in respect of the drugs marketed under "GLIMET" and "GLIMET DS" was Rs.1,95,73,672.00 and of Plaintiff No 2 for the period 2013-2014 is Rs.22,51,59,330.00. The Plaint also sets out the invoices showing the sales of the product by the Plaintiffs using the trade marks "GLIMET" and "GLIMET DS".

(3.) It is submitted that in the second week of June, 2024, the Plaintiff came across the Defendant's product bearing the impugned mark ELGIMET-SR 1/500 and ELGIMET-SR 2/500 on e-commerce website. A decoy purchase was made and the impugned products showed the name of 2nd Defendant as marketer of the product bearing the impugned mark. The Plaintiffs conducted a search in the Trade Marks Registry and found that Defendant No. 2 had applied for registration of the impugned mark "ELGIMET" in class 5 on 23/8/2023, on proposed to be used basis, which application is stated not to be not yet advertised in the Trade Marks Journal.