SANOFI INDIA LIMITED  Vs RIDLEY LIFE SCIENCE PRIVATE LIMITED -Judgment by Delhi High Court

$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 20th April, 2022
+ CS (COMM) 245/2021 & I.A. 2195/2022
SANOFI INDIA LIMITED ….. Plaintiff
Through: Mr. Peeyoosh Kalra, Ms. V. Mohini,
Mr. Udayvir Rana & Mr. Garvil Singh, Advocates. (M:9910657461)
versus

RIDLEY LIFE SCIENCE PRIVATE LIMITED ….. Defendant
Through: Mr. Tushar Rao, Sr. Advocate with Mr. Sumit Rajput, Ms. Vaishali Tanwar & Mr. Sharavena Raghul, Advocates. (M:9999333350) along with Mr. Rakesh Bansal, Mr. Rajesh Bansal (Directors) & Mr. Ram Kumar Gautam, Factor Manager.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
I.A. 2195/2022(u/O XXXIX Rule 2A CPC)
2. The present application has been moved by the Plaintiff on the ground that the injuncted products �CONCIFLAM� and �CORIFLAM�, are being sold by the Defendant, despite the injunction order passed on 31st May, 2021.
3. On the last date of hearing i.e., 1st April, 2022, this Court had directed that the Directors of the Defendant-Company Mr. Rajesh Bansal and Rakesh Bansal, as also Mr. Ram Kumar Gautam, shall remain present in Court. The said order reads as under:
�2. This is an application filed on behalf of the Plaintiff under Order XXXIX Rule 2A CPC. The grievance of the Plaintiff is that the Defendants are continuously violating the order dated 31st May, 2021 passed by this Court. By the said order, the Defendants were injuncted from using the mark �CONCIFLAM� and �CORIFLAM� and/or any other mark identical to or deceptively similar to the Plaintiff�s registered trademark �COMBIFLAM�.
3. Mr. Kalra, ld. Counsel for the Plaintiff submits that there are eleven orders which have been passed against this very Defendant- Ridley Life Science Pvt. Ltd., which is a habitual infringer of well-known marks relating to pharmaceutical preparations.
4. Keeping in mind the conduct of the Defendant-Company, the various orders which have been repeatedly passed against the Defendant-Company, as also the complete lack of deference shown by the Defendant-Company to the orders passed by this Court, it is directed that the Directors of the Defendant Company- Mr. Rajesh Bansal and Rakesh Bansal, as also the Factory Manager- Mr. Ram Kumar Gautam, shall remain present in Court, on the next date.
5. The Defendant shall place an affidavit on record, giving the complete sales figures and quantities, including the Batch No. of the products, which sold by the Defendant-Company of products under the impugned marks �CONCIFLAM� and �CORIFLAM� since adoption, within two weeks.�

4. Pursuant to the above order, an affidavit dated 16th April, 2022 has been filed by Mr. Ram Kumar Gautam, Director of the Defendant-Company, giving details as to the manufacturing and sales. According to the data given by the Defendant, the last manufacturing of the products under the mark �CONCIFLAM� is claimed to be in June, 2018 and that of �CORIFLAM� is claimed to be in June, 2021. The total sales are to the tune of approximately Rs.40 lakhs and Rs.46 lakhs respectively. Reliance is also placed upon the reply to the present application to submit that the online sales are not being conducted with the consent of the Defendant. In fact, emails and letters have been addressed to all the online platforms, asking them to take down the concerned listings.
5. Mr. Tushar Rao, ld. Senior Counsel appearing for the Defendant submits that the data in respect of manufacturing and sales would show that the Defendant has not committed contempt and has, in fact, abided by the injunction order dated 31st May, 2021. Neither of the infringing products have been manufactured after the said injunction order was served upon the Defendant. Thus, he submits that though the order was of May, 2021, no products have been manufactured under the marks �CONCIFLAM� and �CORIFLAM�, after June, 2021.
6. On the other hand, Mr. Kalra, ld. Counsel for the Plaintiff brings to the notice of this Court, various orders passed against this very Defendant i.e., Ridley Life Science Private Limited, wherein the Defendant has been found to be repeatedly violating and infringing the rights in several trademarks relating to pharmaceutical preparations. Specific emphasis is also laid on the fact that in the said previous suits, stringent orders have been passed against the Defendant in view of the habitual manner in which the Defendant continues to violate and use identical and deceptively similar trademarks of existing products. He submits that strict action deserves to be taken against the Defendant.
7. Heard ld. Counsels for the parties. The present case relates to the pharmaceutical preparation containing �ibuprufen� and �paracetamol�. The Plaintiff claims rights in the mark �COMBIFLAM�, which is one of the leading pain killer medicines available in the market. The Plaintiff is the proprietor of the mark �COMBIFLAM�, registered in favour of the Plaintiff both as a word mark and as a label mark, since 22nd August, 1984, vide Registration No.426051 in Class 5 for �medicinal and pharmaceutical preparations�. It was adopted in the year 1984 and has since then been used extensively in India. The mark is currently valid and renewed up to August 22, 2025. Plaintiff has also secured registration for the trademarks �COMBIFLAM VET�, �� and �COMBIFLAM, PAIN GONE, ZINDAGI (LIFE) ON� under Registration Nos. 2747470, 3320487 and 3559775 in Class 5.
8. Upon acquiring knowledge of the use of the marks �CONCIFLAM� and �CORIFLAM� in February, 2021, by the Defendants, the Plaintiff filed the present suit seeking permanent injunction against the infringement of its trademark, passing off, unfair competition, rendition of accounts, damages and delivery up. Vide order dated 31st May, 2021, the Court had granted an ex parte ad-interim injunction, in the following terms:
�2. The case of the plaintiff is that the plaintiff applied for registration of the mark �COMBIFLAM� in Class 5 on 22.08.1984. The said mark was duly registered and is currently valid upto 22.08.2025.
3. In 2009, the plaintiff also launched its product COMBIFLAM Cream. In 2013, the plaintiff launched its product COMBIFLAM PLUS tablets, a formulation of paracetamol and caffeine. In 2014, the plaintiff applied for registration of �COMBIFLAM VET� in Class 5 for veterinary preparations and substances in India. In 2016, the plaintiff applied for registration of the mark in Class 5 for pharmaceutical preparations; pain relief product in India.
4. It is stated that the sales figures of the plaintiff�s products/services sold under the mark �COMBIFLAM� in India are INR 1,918.90 million.
5. In February, 2021, the representatives of the plaintiff came across products under the mark �CONCIFLAM� in respect of identical pharmaceutical medicines on the website of the defendant at �www.rlspl.com�. The products of the plaintiff and the defendant are identical.
6. The plaintiff has made out a prima facie case. The defendant is restrained from manufacturing, selling, advertising directly or indirectly or through its promoters, directors, employees etc. any goods under the marks �CONCIFLAM� and �CORIFLAM� or any other mark, which is identically or deceptively similar to the plaintiff�s registered trademark COMBIFLAM, COMBIFLAM VET, and COMBIFLAM, PAIN GONE, ZINDAGI (LIFE) ON in any manner whatsoever till further orders.�

9. The above order was communicated to the Defendant in compliance of Order XXXIX Rule 3 CPC by the Plaintiff. Notices have also been issued in June, 2021 by the Registry of the High Court. Compliance affidavit dated 4th June, 2021 has also been filed by the Plaintiff which shows that the Defendant was duly intimated of the said order. Thus, the Defendants ought to have stopped the manufacture and sale of the impugned products, immediately upon service of the order dated 31st May, 2021.
10. Thereafter, the matter proceeded to mediation. However, there was no settlement of the disputes. The Plaintiff then moved the present application under Order XXXIX Rule 2A seeking necessary action in respect of breach of injunction by the Defendant.
11. A perusal of the record, in this case, shows a rather disturbing feature of the Defendant�s conduct. There are multiple suits which have been filed by various Plaintiffs alleging violation of their rights in their trademarks, that too in respect of �medicinal and pharmaceutical preparations�. A summary of the said suits is set out below:
i. CS(COMM) 152/2020 titled Usv Private Limited v. Ridley Life Science Private Ltd.

In this suit, the main grievance of the Plaintiff was relating to the manner in which the words �Multi Vitamin Infusion (MVI)� were reflected on the label of the Defendant�s product �MULTIRID�, which was deceptively similar to the multivitamin infusion product of the Plaintiff. The order dated 3rd June, 2020 in the said suit, records as under:
�8. Learned counsel for the plaintiff draws my attention to the earlier orders passed by this Court which recognized the defendant as an inveterate infringer and a habitual offender in this regard. She submits that the defendant is in the habit of infringing trademarks of well-known pharmaceutical companies, to market spurious drugs, when the matter reaches the court, agreeing to withdraw the infringing trade mark. This attitude, she submits, has already invited penal costs from this Court. Accordingly, she submits that even if the defendant is willing to rectify the infringing labels, the court should visit the defendant with penal costs in order to prevent such infringement, and unnecessary litigation in future.
9. This aspect would be considered on the next date of hearing.�

ii. CS(COMM) 722/2019 titled M/s Zydus Healthcare Ltd. v. M/s Ridley Life Science Pvt. Ltd. & Ors.

This suit relates to the Plaintiff�s pharmaceutical product �SKINLITE� and the Defendant�s product which was being sold under a deceptively similar mark �SKINLIFE� as also an identical trade dress/get up. Vide order dated 23rd December, 2019, an interim injunction was granted in favour of the Plaintiff.

iii. CS(COMM) 1295/2018 titled Ridley Life Science Pvt. Ltd. V. Parksons Pharmaceutical Pvt. Ltd.

In this suit, the Plaintiff claimed rights in the mark �RIDFLOX-D� and �RICIP-D� and alleged infringement by the Defendants, who had adopted the marks �RCIP-D� and �RFLOX-D� with respect to the same medicinal preparation. While observing that the Plaintiff had misrepresented facts, the ld. Single Judge imposed costs of Rs.1,00,000/- on the Plaintiff, and observed as under:
�14. I may in this regard also point out that in a number of cases coming before this Court against the plaintiff no.1, the plaintiff no.1 has been found to be infringing the marks of others and to avoid payment of damages, making a statement at an initial stage of the suit only, to suffer an injunction. The counsel for the plaintiffs also agrees that observations in this respect have been made in judgements/orders in other suits, not only by the undersigned but also by another Bench.�

iv. CS(COMM) 726/2018 titled Macleods Pharmaceuticals Limited v. Ridley Life Science Pvt. Ltd.

This suit was filed by the Plaintiff seeking a permanent injunction restraining the infringement of the mark �PANDERM� and �PANDERM+� by adopting the marks �PANTADERM� and �PANTADERM+� in relation to the same medicinal preparation. In this case, the ld. Single judge observed that the Defendant is in the practice of indulging in infringement of trademarks and whenever infringement is established, the Defendant appears before the Court and suffers an injunction without becoming liable to pay damages. In the said suit also, show cause notice was issued to these very Directors of the Defendant-Company and a Local Commissioner was also appointed. In response to the said show cause as to why criminal contempt should not be initiated against the Defendants, the Court took a lenient view but also imposed heavy costs and made the following observations, vide order dated 3rd October, 2018:
�After some arguments, it transpires that the defendant is a habitual offender/rank infringer, who agrees to a decree for injunction being passed whenever a suit is filed against it. However, after the disposal of the said suit, the defendant starts passing off and infringing a third party�s product.
Since the defendant is a habitual infringer with regard to medicinal products which can cause serious harm to public at large, this Court wanted to exercise its powers under Order XXXIX Rule 2A CPC.
However, learned counsel for the defendant prays for a lenient view and undertakes that the defendant shall pay Rs.15 lakhs by way of a demand draft in favour of Lok Nayak Hospital within a period of two weeks. He states that he has no objection if the present suit is decreed in accordance with paras 68(a) &(b) of the prayer clause. The counsel for the defendant also undertakes to file an affidavit of all the Directors of the defendant as well as shareholders to the effect that they will not violate, directly or indirectly, the intellectual property right of any third party within a period of two weeks. He states that in the event the defendant is found to violate or infringe the intellectual property rights of any third party in future, the defendant shall have no objection if costs/damages in excess of crores of rupees is levied upon it.
The undertakings/statements given by the learned counsel for the defendant are accepted and the defendant is held bound by the aforesaid statements/undertakings. In addition, the Drug Controller is directed to depute one of its Inspectors to visit the factory premises of the defendant once a month for a year to ensure that pharmaceutical products are manufactured in accordance with the licence and intellectual property rights of third parties are not violated/breached.�

A perusal of the above order shows that the Defendants ought to have filed an affidavit that they would not directly or indirectly violate the intellectual property rights of any third party. This Court is not clear as to whether such affidavit was filed in the said suit, or not. Registry to place a report in this regard.
v. CS (COMM) 1071/2018 titled Curewell Drugs & Pharmaceuticals Pvt. Ltd. & Anr. v. Ridley Life Science Private Limited & Anr.

This suit was filed by the Plaintiff seeking protection of the trademark and packaging in relation to their product �REVITAL� which is a multivitamin supplement. The Defendant had adopted an identical mark in an identical packaging. Vide order dated 6th February, 2019, this Court had observed as under:
�4. Considering the facts in the present case and the further undertaking given by Defendant No.1 at the initial stage of the suit itself, insofar as damages and costs, is concerned, it is directed that the Defendant No.1 shall pay to the Plaintiffs a sum of Rs. 2,00,000/- within three weeks from today. The Plaintiffs shall be, in addition, entitled to refund of the court fee to the extent of 50% under Section 16A of the Court Fee Act. If the Defendant No.1 is found to be in violation of any of the Plaintiffs� trademarks in future, Defendant No.1 would, without disputing the liability, be liable to pay a sum of Rs.10,00,000/- to the Plaintiffs. Such an order is being passed in the unique facts and circumstances of this case as the Defendant No.1 has not only been found to be violating the trademarks of third parties but this is the second occasion where the Plaintiffs have had a grievance against the Defendant�s adoption of an identical mark. The suit is, accordingly, decreed
in the above terms against Defendant No.1 – Ridley Life Science Private Limited.

XXX XXX XXX

11. The issue of pharmaceutical preparations and medicines being sold under identical brand names has been a concern in a large number of disputes. The said issue is not just one which concerns statutory rights or trademark rights of a particular IP owner, but has a larger impact on the health of the patients. Stringent quality control mechanisms ought to be put in place and implemented in the manufacture and sale of medicines. If medicines are allowed to be sold with identical brand names and that too in identical packaging, it is not just violative of the rights of IP owners but dangerous for consuming patients.�

While decreeing the suit against the Defendant, this Court had issued the following directions to the Drug Controller General of India (hereinafter �DCGI�):
�14. Apart from the draft Rules, the following directions are issued for consideration by the authorities in order to regulate and better supervise the quality of medicines being manufactured and sold.
i) Creation of a secured platform, to be under the supervision of the DCGI, which is accessible to all State FDAs, both for access of data and for uploading of data;
ii) Creation of a `master electronic database� of all the approved brand names for manufacture and sale of drugs issued both by the DCGI and the State FDAs and making the same available to all state FDAs and Drug controllers through a secured platform. The list to be maintained and made available both brand wise and manufacturer wise, on the secured platform;
iii) List of registered trade marks under Class 5 for pharmaceutical and medicinal preparations be obtained from the Controller General of Patents, Trade marks and designs and be made available to the approving authorities at the Central level and State level. The said list ought to be updated bi-annually i.e., on 1st January and 1st July every calendar year;
iv) Access to the data be given to Drug Inspectors/Drug Controllers across the country;
v) Drug Inspectors/Drug Controllers to conduct regular and periodic inspections as per the Act and the Rules to ensure that the drugs that are being manufactured in a particular unit are duly licensed for. The reports of the said inspections to be submitted through the secured platform;
vi) Periodic and regular reports of drug inspectors should be compulsorily submitted to the respective licensing authorities on the secured platform and a mechanism be set up for review of the said reports at the State level;
vii) Periodic meetings ought to be held at the central level, to review the status of manufacture and sale of drugs across the country, under the aegis of the DCGI;
viii) Strict action in accordance with law ought to be taken against those manufacturers who manufacture drugs without licences, who indulge in adulteration or contamination of drugs etc. A periodic report as to the number of actions taken, ought to be uploaded on the secured platform of the DCGI.
15. It is clarified that the above directions are not exhaustive in nature.

vi. CS(COMM) 809/2017 titled Sun Pharmaceutical Industries Limited & Anr v. Ridley Life-Science Private Limited & Ors.

This suit was filed in relation to the infringement of the Plaintiff�s coined trade marks �REVITAL�, �VOLINI�, �VOLINI PLUS� and �PANTOCID� in various Classes. Vide order dated 24th November, 2017, the Defendant was restrained from using the impugned marks and Local Commissioner were also appointed in the suit.
vii. CS(COMM) No.364/2017 titled Feezo Chem & Anr v. Ridley life science pvt. Ltd. v. Ridley Life Sciences Private Limited

This suit relates to the mark �RID FIT� and the packaging used therefor. As recorded in the order dated 30th May, 2017, permanent injunction was granted restraining the Defendant from using the impugned mark.

viii. CS(COMM) 1450/2016 titled Torque Pharmaceuticals Private Limited v. Ridley Life Sciences Private Limited & Anr.

This suit was filed by the Plaintiff seeking permanent injunction restraining the Defendant from infringing the trademarks �MEDISALIC�, �NO SCARS�, and �FUNGNIL-B� of the Plaintiff, by adopting the trademarks �MADISELIC�, �MONOSELIC�, �NO DAAG�, and �FUNGKILL-B�. Vide order dated 25th October, 2016, an interim injunction was granted in favour of the Plaintiff and the Defendant was restrained from using the impugned marks.
ix. CS(OS) 3027/2015 titled M/s Leeford Healthcare Limited v. M/s Ridley Life Sciences Private Limited & Anr.

This suit was filed by the Plaintiff seeking, inter alia, permanent injunction restraining the Defendant from infringing the trademark �EARWEL� of the Plaintiff used in respect of their pharmaceutical preparation, by adopting the mark �EARWELL�, as also the trade dress thereof. Vide order dated 6th October, 2015, an interim injunction was granted in the suit and the Defendant was restrained from using the impugned mark.
x. CS COMM 4/2015 titled Curewell Drugs & Pharmaceuticals pvt ltd & Anr. v. Ridley Life Sciences Pvt. Ltd.

This suit was filed by the Plaintiff seeking, inter alia, permanent injunction restraining the Defendant from infringing the trademark �COMON� of the Plaintiff used in respect of their pharmaceutical preparation, by adopting the mark �COMMON�. Vide order dated 30th November, 2015, an interim injunction was granted in the suit and the Defendant was restrained from using the impugned mark.

xi. CS COMM 959/2013 titled Dr. Reddy�s Laboratories Ltd. & Anr. v. Ridley Life Sciences Pvt. Ltd.

This suit was filed by the Plaintiff seeking, inter alia, permanent injunction restraining the Defendant from infringing the trademark �NISE� of the Plaintiff used in respect of their pharmaceutical preparation, by adopting the mark �NICE�. Vide order dated 20th May, 2013, an interim injunction was granted in the suit and the Defendant was restrained from using the impugned mark.
12. A perusal of all the above orders shows that the Defendants have repeatedly indulged in infringing and copying established trademarks used in respect of medicinal preparations. The Defendants have repeatedly been found to violate the rights of various intellectual property owners and repeated costs have also been imposed upon the Defendants.
13. As recorded above, in CS(COMM) 726/2018 titled Macleods Pharmaceuticals Limited v. Ridley Life Science Pvt. Ltd., a show cause notice was issued upon the Directors of the Defendant as to why criminal contempt ought not be initiated against them. Vide order dated 3rd October, 2018 in the said suit, the Court has clearly come to the conclusion that if the Defendants are found to be violating the intellectual property rights of any third party, damages in excess of a crore of rupees would be liable to be levied. The present suit is yet another manifestation of the Defendants� complete lack of any scruples while adopting marks and names identical or similar to established brand names/marks, for their own products.
14. The turnover of the Defendants in the last 2-3 years is admittedly over Rs.100 crores. Today, a complete list of medicinal products manufactured and sold by the Defendants has also been handed over to the Court. As per the Plaintiff, a perusal of the same shows various established brands/marks used in respect of pharmaceutical products and widely available in the market, having been copied.
15. Mr. Tushar Rao, ld. Senior Counsel submits that he would like to respond to the list of products placed before the Court by the Plaintiff and file an updated list of products manufactured by the Defendants, along with an affidavit of the Defendants, as to the actual sales of each of the products.
16. In the background recorded above, the Defendants do not deserve any sympathy. The observations in the orders extracted above show that the Defendants are liable for extremely strict action and heavy monetary cost. Before proceeding further, in the facts and circumstances of the present case, the following directions are issued:
(i) Further time is granted to the Defendants, upon request, to file an affidavit giving a complete list, both in electronic and physical form, of all the pharmaceutical preparations which are being manufactured by them, along with the total value of the sales of each of the products, for the last five years.
(ii) The said affidavit along with complete list shall be served upon the ld. Counsel for the Plaintiff, within two weeks. Upon receipt of the same, the Plaintiff is permitted to file a list in response, bringing to the notice of the Court, if any of the marks or brands used by the Defendants are similar to the products which are already available in the market.
17. On the next date, this Court would consider the said affidavit and pass appropriate orders.
18. In the meantime, pursuant to the order dated 3rd October, 2018 in CS(COMM) 726/2018 titled Macleods Pharmaceuticals Limited v. Ridley Life Science Pvt. Ltd., the Defendants shall deposit a sum of Rs.1 crore with the worthy Registrar General of this Court, at least one week before the next date. It is made clear that this Court is resorting to this extreme step of directing the Defendant to deposit this amount, owing to the consistent action of the Defendant in infringing various marks and brand names, particularly in relation to pharmaceutical and medicinal preparations. As observed by the Supreme Court in Cadila Healthcare Ltd. v. Cadila Pharmaceutical Ltd. [2001 (5) SCC 73], the test of deceptive similarity is of a higher standard in case of pharmaceutical products and a lower threshold for confusion has to be maintained in such cases. Thus, consumers, patients and chemists cannot be allowed to be duped by the Defendant in this manner.
19. All the three Directors of the Defendant Company- Mr. Rajesh Bansal and Rakesh Bansal, as also, Mr. Ram Kumar Gautam, shall also remain present in Court, on the next date.
20. On an earlier occasion, vide orders dated 14th August, 2018 and 6th February, 2019 in CS (COMM) 1071/2018 titled Curewell Drugs & Pharmaceuticals Pvt. Ltd. & Anr. v. Ridley Life Science Private Limited & Anr., as extracted above, this Court has directed the DCGI to conduct an inspection of the Defendants� products, in view of the various brand names/marks adopted by the Defendants. However, it is unclear whether the DCGI had taken any action pursuant to the said orders.
21. Accordingly, issue notice to the DCGI through Mr. Kirtiman Singh, ld. CGSC, to place on record an affidavit as to what steps have been taken pursuant to the orders passed by this Court in CS(COMM) 1071/2018. Let the said affidavit be filed at least one week before the next date. Copy of this order be served upon Mr. Kirtiman Singh, ld. CGSC, by ld. Counsel for the Plaintiff.
22. List on 26th May, 2022. The amount of Rs. 1 crore, if deposited by the Defendant shall be retained in a fixed deposit on auto-renewal mode, in the account of the ld. Registrar General.
23. This shall be treated as a part-heard matter.

PRATHIBA M. SINGH
JUDGE
APRIL 20, 2022
dj/ad

CS (COMM) 245/2021 Page 1 of 1