IN THE HIGH COURT OF DELHI AT NEW DELHI

(Civil Commercial Jurisdiction)

CS (COMM.) No. 828 / 2023

IN THE MATTER OF:

M/s Gufic Biosciences Limited ...Plaintiff

Vs

M/s Apex Laboratories Pvt. Ltd. …Defendant

CASE LAWS INDEX

Sr. Case Name Court Citation Held Relevan Page

No. t Para No.
No.

Descriptive Fair Use

1. Renaissance SC (2022) 5 ….64. The perusal of Section 30(1) Para 64 13 -

Hotel vs B SCC 1 of the said Act would reveal that for 52
Vijaya Sai availing the benefit of Section 30 of
the said Act, it is required that the
twin conditions i.e., the use of the
impugned trade mark being in
accordance with the honest practices
in industrial or commercial matters,
and that such a use is not such as to
take unfair advantage of or be
detrimental to the distinctive
character or repute of the trade mark,
are required to be fulfilled............

…...to get the benefits of subsection

(1) of Section 30 of the said act, both
the conditions had to be fulfilled.
Unless it is established that such a
use is in accordance with the honest
practices in industrial or commercial
 to the distinctive character or repute
of the trademark, one could not get
the benefit of Section 30(1) of the
said Act.

2. Ramdev vs SC (2006) 8 A trademark cannot have two origins Para 52 53 -

Arvindbhai SCC 726 and thus a trader who does not have and 67 99
Rambhai a trademark is not authorized and if a
Patel defense of the right to use is to be set
up the onus is on the one who is
contending that right.

Moreover, the non-obstinate clause

in Sec 30 cannot be used other than
the way the legislature intended it to,
and the provisions of food and
adulteration act and other acts cannot
confer a right on someone to infringe
the trademark right

Drug License to manufacture does not give him a right to infringe the registered trademark of
the plaintiff

3. Lancome Del HC CS (OS) 17. One defence put forth by the Para 17 100 -
Perfums Et 474 /2009 defendant in this case was that he 104
Beaute and had a valid drug licence which has
CIE vs Navin been issued to him by Drugs Control
and Ors. Department, Government of Delhi.
However, as rightly pointed out by
learned counsel for the plaintiff that
this licence only entitles the
defendant to manufacture the drug; it
does not in any manner permit the
defendant to infringe upon the
trademark of the plaintiff. A Bench
of this Court in
MANU/DE/0313/2001: 2001 PTC
328 (Del) Playboy Enterprises, Inc.
Vs. Bharat Malik and Anr. in this
context had noted the defence raised
by the defendant that his registration
 under the Press and Registration
Books Act, 1867 (PRB Act)
protected him was an argument
which was repelled. It was held that
the provisions of the PRB Act call
for an independent action and have
no relevance or effect and cannot
override or over-step the provisions
of Trade Mark and Merchandise Act.
The ratio of this judgment applies
with the full force in this case. At the
cost of repetition, this license would
at best permit the defendant to
manufacture the drug; it did not give
him a right to infringe the registered
trademark of the plaintiff.

4. Playboy Del HC MANU/ Merely registering under Press and Para 15 105 –
Enterprises DE/ Registration of Books Act 1867 does 120
Vs Bharat 0313/200 not give any right to them to infringe
Malik and 1 the trademark rights and that PRB
Ors Act cannot override the effect of
trademark and merchandise act since
the purpose of PRB Act was not to
govern disputes in regard to names,
titles and trademarks. PRB Act
cannot take precedence over Trade
and Merchandise Act.

Interim Injunction

5. Midas SC (2004) 3 It was observed that in cases of Paras 5,

Hygiene SCC 90 infringement either of trade mark or 7
Industries P. of copyright, normally an injunction
Ltd. and Anr. must follow. Mere delay in bringing
Vs. Sudhir action is not sufficient to defeat grant
Bhatia and of injunction in such cases. The grant
Ors. of injunction also becomes necessary
if it prima facie appears that the
adoption of the mark was itself
dishonest.
6. Disruptive SC 2022 It has been observed just because Para 9,
Health SCC some portion of the mark may have 10, 12
Solutions OnLine some reference or indication as to
Private Del 2002 the products or services intended for,
Limited vs the same may not be liable to be
Registrar of rejected straightaway. In such a case,
Trade Marks the merits of the marks would have
to be considered along with the
extent of usage. Other registrations
of the applicant would also have a
bearing on the capability of the mark
obtaining registration. The owner of
a mark is always entitled to expand
the goods and services, as a natural
consequence in expansion of
business.

7. Zydus Del HC 2023 It was held that the defendants as Paras

Wellness SCC well as all others acting on their 32, 38,
Products OnLine behalf shall stand restrained from 39, 54,
Limited vs Del 3785 using the marks “Gluco-C” or 77, 156,
Cipla Health “Gluco-D” either by themselves or 203, 204
Ltd. and Ors. as part of the marks “Prolyte Gluco-
C ++” or “Prolyte Gluco-D ++” or as
part of any other mark which would
be deceptively similar to the
plaintiff's registered marks
“GLUCON-C” or “GLUCON-D”
respectively, in respect of any
product which is identical or allied to
the products in respect of which the
plaintiff uses the registered
trademarks “GLUCON-C” and
“GLUCON-D” respectively.

8. Marico Del HC 2010 It was stated that when two identical Paras
Limited vs SCC trademarks are used by two parties in 15, 18,
Agro Tech OnLine the market, or that a use of a 40
Foods Del 3806 descriptive word by a defendant can
Limited be confused with the trade mark of a
plaintiff, then a Court is always
 entitled to ensure that such
distinction is brought or conditions
are imposed qua the two identical or
deceptively similar trade marks by
imposing such conditions of use on
both or either of the parties so that a
third vital/important stake holder in
these Intellectual Property Rights
(IPR) disputes viz. the public, is not
in any manner deceived/confused
and whose rights are not
prejudicially affected.

9. Heinz Italia SC (2007) 6 It was stated that “the packaging of Paras 3,

& Anr. v. SCC Glucose-D and Glucon-D is so 4, 8, 9,
Dabur India similar that it can easily confuse a 15, 16,
Ltd. purchaser. We also feel that mere 18
fact that the respondents have time
and again made small changes in
their packaging is an attempt to
continue to mislead the purchaser
and to make it more difficult for the
appellants to protect their mark,
which the record shows has acquired
an enviable reputation in the market
which is sought to be exploited by
the respondent” and interim
injunction was allowed.