Delhi High Court: In a suit filed for permanent injunction restraining infringement of registered trade mark, passing off, dilution, unfair competition for rendition of accounts/damages, delivery up, etc., Mini Pushkarna, J., till the next date of hearing, restrained the defendants or any other acting on its behalf from selling, offering for sale, advertising, directly or indirectly dealing in medicinal and pharmaceutical preparations under the impugned mark ‘NOVITAS’ or any other trade mark/trade name similar to the plaintiffs’ trade mark(s) ‘NOVARTIS’, amounting to infringement of registered trade mark, passing off, dilution and unfair competition.
Background
It was submitted that Plaintiff 1 was one of the leading pharmaceutical companies in the world carrying on business of manufacturing, marketing, research and development of high-quality pharmaceutical preparations and services in relation thereto. It was submitted that Plaintiff 1 had acquired a worldwide reputation for safe and high-quality pharmaceutical products and services.
The products emanating from Plaintiff 1 were sold and marketed by Plaintiff 2 and other group companies like Novartis India Limited in India under their well-known trade mark/trade name/house mark/company name ‘NOVARTIS’. It was submitted that the plaintiffs adopted the fanciful trade mark/trade name/ house mark/ company name/ domain name ‘NOVARTIS’ and its logo as early as in the year 1996 and have continuously and extensively been using the trade mark since then, internationally and in India.
As a consequence of high standard of quality of the medicines and allied products and extensive use of the trade mark/trade name/house mark/ company name NOVARTIS, the same had gained enviable and widespread reputation and goodwill in the market. It was submitted that trade mark/trade name/house mark/company name ‘NOVARTIS’ connotes and denotes the trade origin and the source of goods as originating from the plaintiffs and none else, the world over, including, India. Thus, the trade mark ‘NOVARTIS’, was the key and distinguishing feature of the trade name/house mark/company name of Novartis Group Companies.
It was submitted that the defendants were engaged in the business of manufacturing and selling pharmaceuticals and veterinary preparations to which the plaintiffs had no objection. However, the grievance of the plaintiffs was that the defendants had adopted the mark ‘NOVITAS’ as part of their trade name/corporate name which was almost visually and phonetically identical to the plaintiffs’ prior adopted, prior registered and well-known trade mark and trade name ‘NOVARTIS’.
Apart from their trade name, the defendants were also using the almost identical impugned mark as part of their domain name. Such adoption of the almost identical impugned mark by the defendants was without any justification and ex-facie dishonest.
The plaintiffs submitted that the that the defendants were guilty of violating plaintiff’s statutory right of exclusive use of the trade mark NOVARTIS and committing infringement thereof. It was submitted that India being a multilingual country with varied accents accorded to each region, confusion and deception amongst the members of public might arise on account of close phonetic identity between the competing marks and slurring of the impugned mark ‘NOVITAS’ as plaintiffs’ trade mark ‘NOVARTIS’.
Analysis, Law, and Decision
The Court noted that plaintiff’s submission that there was no ‘due cause’ or any justifiable reasons for the defendants to adopt a trade mark which was almost identical to plaintiffs’ well-known trade mark NOVARTIS. The confusingly similar trade mark in the field of pharmaceuticals, create greater injury as compared to products and services in other fields. Hence, it was submitted that there was great urgency for issuance of ad-interim injunction order restraining the defendants from continuing with the infringing use of the impugned mark.
Thus, the Court stated that the plaintiffs had demonstrated a prima facie case for grant of injunction and in case no ex-parte ad-interim injunction was granted, the plaintiffs would suffer an irreparable loss. Further, the balance of convenience also lies in favour of the plaintiffs and against the defendants.
Accordingly, till the next date of hearing, the Court restrained the defendants, its directors, assignees in business, its associates, affiliates, franchisees, licensees, distributors, dealers, stockists, retailers, and agents from selling, offering for sale, advertising, directly or indirectly dealing in medicinal and pharmaceutical preparations under the impugned mark ‘NOVITAS’ or any other trade mark/trade name as might be phonetically, visually and structurally deceptively similar to the plaintiffs’ trade mark(s) ‘NOVARTIS’, amounting to infringement of registered trade mark, passing off, dilution and unfair competition.
The Court clarified that the defendants were at liberty to carry on their business by adopting any other mark, which was not identical or deceptively similar to the mark of the plaintiffs.
The matter would next be listed on 14-07-2025.
[Novartis AG v. Novitas Lifesciences, CS(COMM) 97 of 2025, decided on 03-02-2025]
Advocates who appeared in this case :
For the Plaintiffs: Mamta Jha, Abhijeet Rastogi, Anjeeta Rani, Diksha, Advocates.