M/s. Laborate Pharmaceuticals India Ltd. (Laborate) filed a suit for trademark & copyright infringement as well as passing off in relation to its registered trademark “LABDIC RELIEF” against Alkem Laboratories Ltd. (Alkem) The Trial Court granted an ex-parte ad interim injunction was passed against Alkem and restrained it from using the mark “ALDIGESIC PAIN RELIEF” as well as from using trade dress/ product packaging and the blister packaging or any other deceptively similar trademark to “LABDIC RELIEF”.
Upon the said impugned order, an Application was filed by Alkem for vacation of the said order but the same was also dismissed by the Trial Court and Alkem’s prayer for selling the existing stocks was also rejected.
Subsequently, Alkem filed an Appeal against the above orders passed by the Trial Court was filed before the Division Bench of Delhi High Court.
In the said Appeal, Alkem contended that Laborate managed to get the ex-parte injunction by supressing the fact that Alkem was prior registrant of the mark “ALDIGESIC” and has been using the same since 2010. Alkem further contended that the cartons and blister strip packaging of both the parties were dissimilar and use of the colour “red” cannot be monopolised by Laborate as the same was common in trade.
Furthermore, Alkem added that the use of generic term “Relief” by Laborate was also contented as a descriptive term could not infer exclusive right over Laborate.
In response, Laborate argued that it is a registered owner of the said mark “LABDIC RELIEF” and had been using the same since 2001 and also possess copyright over the trade dress/ packaging of the said product. Furthermore, the use of deceptively similar trade dress/ product packaging by Alkem was undertook with a sole purpose to deceive the public at large and to encash the goodwill and reputation of Laborate.
The Hon’ble High Court observed that since the Injunction application was still pending before the Trial Court, therefore, it would not be in a position to enter into the merits of the case and directed the Trial Court to consider the same on the next date of hearing.
Hence the Hon’ble Court observed that it is only required to consider whether Alkem should be allowed to sell the existing stock of medicine worth Rs. 90,00,000/-. Accordingly, the Hon’ble Court noticed that the Trial Court was not justified in declining the relief of sale of stock of the subject product, therefore, the Delhi High Court allowed Alkem to sell off the said remaining stock as the subject product was a pain reliever “Schedule H” and there was no dispute regarding the quality of the product.
The Hon’ble Court further directed Alkem to file an affidavit detailing the existing stock alongwith the total valuation of the said stock and to take an undertaking as to only sell the existing stock. The Court also directed Alkem to file the entire account of sales of the existing stock sold from various locations, with dates of such sales.
