Delhi High Court: In a suit filed by Glaxo Group Limited (plaintiff), seeking the relief of permanent injunction restraining the defendant from infringing the trademark of the plaintiff, passing off, and other ancillary reliefs, Amit Bansal, J., granted permanent injunction as the defendant does not have any real prospect of successfully defending the claims in the present suit.
The plaintiff company incorporated under the law of England and Wales is a part of the GSK group of companies, is an international science-led global healthcare company that researches and develops a broad range of innovative specialty medicines being sold and marketed around the world, including India through its Indian subsidiary, Glaxo Smith Kline Pharmaceuticals Limited. The plaintiff first adopted the “BETNESOL” mark in the early 1960s in relation to medicinal and pharmaceutical preparations, including injections, which are used to treat a wide variety of diseases such as allergies, arthritis and inflammatory disorders.
The defendant, Biogen Serums Private Limited, is engaged in the manufacturing, marketing, and sales of pharmaceutical and medicinal products, bearing the mark “BETNOL” (hereinafter ‘infringing mark’). The active ingredient in the “BETNOL” medicine is Betamethasone Sodium Phosphate. The defendant’s injections are used for the treatment of skin allergies such as itching, swelling, redness, etc.
In April 2022, the plaintiff first learned of the defendant’s use of the “BETNOL” mark through its products listings on third-party websites such as IndiaMart. The plaintiff sent a legal notice dated 28-04-2022 to the defendant through email, which was replied by the defendant informing that it has withdrawn the brand “BETNOL” from the market. However, In August 2022, the defendant adopted new packaging for injections bearing the defendant’s “BETNOL” mark.
The Court granted an ex parte ad interim injunction in favour of the plaintiff restraining the defendant from using the trademark ‘BETNOL’.
The Court noted that the plaintiff has been able to prove that it is the registered proprietor of the “BETNESOL” mark in Class 5 and the said registration is valid and subsisting. The plaintiff has also been able to show its goodwill and reputation in respect of the “BETNESOL” mark. Further, the plaintiff has placed on record various orders passed by this Court against the infringers using a mark like the plaintiff’s mark. Plaintiff has established statutory as well as common law rights on account of long usage of the “BETNESOL” mark.
The conflicting marks and their packaging are as follows:
Plaintiff Mark
Defendant Mark
Defendant Mark (New Packaging)
The Court opined that the mark of the defendant is deceptively like the plaintiff’s “BETNESOL” mark. The comparison shows that both the marks start with the letter combination “BETN” and end with the letter combination “OL”. The defendant has merely removed the letters “E” and “S” in the plaintiff’s “BETNESOL” marks in respect of the same products i.e., injections i.e., medicinal and pharmaceutical preparation.
The Court concluded that the act of the defendant amounts not only to infringement of the trademark of the plaintiff but also to passing off the goods of the defendant as that of the plaintiff. The defendant has not only taken unfair advantage of the reputation and goodwill of the plaintiff’s mark but also deceived unwary consumers of its association with the plaintiff.
Thus, the Court held that the various registrations and the long usage of the trademark “BETNESOL” by the plaintiff, as also the goodwill vesting in the “BETNESOL” trademark, entitles the plaintiff to grant of permanent injunction. The Court further directed the defendant to pay costs of Rs. 5,00,000/- to the plaintiff.
[Glaxo Group Limited v Biogen Serums Private Limited, 2023 SCC OnLine Del 2798, decided on 10-05-2023]
Advocates who appeared in this case :
Mr. Urfee Roomi, Ms. Janaki Arun, Mr. Alvin Antony and Mr. Anubhav Chhabra, Advocates for the Plaintiff.