Item Nos.26 & 27 ORDER
SHEET IN THE HIGH COURT AT CALCUTTA Ordinary Original Civil Jurisdiction ORIGINAL SIDE G.A.No.3602 of 2015 C.S.No.143 of 2003 STADMED PVT.LTD.Versus SUN PHARMACEUTICAL INDUSTRIES LTD.-AndG.A.No.3608 of 2015 C.S.No.338 of 1994 SUN PHARMACEUTICAL INDUSTRIES LTD.Versus STADMED PVT.LTD.BEFORE: The Hon'ble JUSTICE SANJIB BANERJEE Date : 9th September, 2016.
For Sun Pharma : Mr.Tilok Bose, Sr.Adv.with Mr.Debnath Ghosh, Mr.Paritosh Sinha, Mr.Prithwiraj Sinha, Ms.Mitul Dasgupta, Ms.Sreemoyee Chatterjee, Mr.K.K.Pandey, Mr.Debayan Ghosh & Ms.Aparna Banerjee, Adversus For Stadmed : Ms.Mousumi Bhattacharya with Mr.Rupak Ghose & Mr.Symantak Banerjee, Adversus These are two completely meaningless applications in suits long pending in this Court.
C.S.No.338 of 1994 was filed by Sun Pharmaceutical Industries Ltd (Sun Pharma) for infringement of its ‘Zolam’ and ‘Alzolam’ word marks.
No effective orders are enjoyed by Sun Pharma in such suit.
C.S.No.143 of 2013 was filed by Stadmed PVT.Ltd (Stadmed).the defendant in the earlier suit, for passing-off upon mark ‘Zolam’ having been rectified against Sun Pharma.
Stadmed enjoys an order of injunction in respect of mark ‘Zolam’ from May 13, 2003.
Such order was confirmed on March 3, 2004.
In Sun Pharma’s earlier suit, Stadmed applied on or about May 4, 1995 for the stay of further proceedings in such suit, whereupon an adinterim order of stay was passed on May 4, 1995.
However, as a subsequent order of June 6, 1995 passed on Sun Pharma’s principal interlocutory application in its earlier suit reveals, the order of stay of Sun Pharma’s suit was discontinued and directions were issued for the expeditious trial thereof.
Notwithstanding such position, Sun Pharma proceeded to somehow understand that its suit was stayed and even in the year 2002 applied for the stay on its suit to be vacated.
The present applications are for recalling the order dated May 4, 1995 in Sun Pharma’s earlier suit, though it is conceded that such order did not survive after the order dated June 6, 1995 and for vacating the order dated March 3, 2004 by which the ad interim injunction obtained by Stadmed in respect of the mark ‘Zolam’ on May 13, 2003 was confirmed.
Since it is evident that the order dated May 4, 1995 stood vacated by the order dated June 6, 1995, nothing more need be said on Sun Pharma’s relevant application in such regard.
However, it does not appear from the records, that were directed to be produced and have been taken inspection of on behalf of the parties, that Stadmed’s application for stay of Sun Pharma’s suit was disposed of by any particular order.
But those were the days before computerisation and before an interlocutory application in a suit carried a number.
It would be sufficiently justified if Sun Pharma’s injunction application and Stadmed’s application for stay of the earlier suit are deemed to have been disposed of by the order dated June 6, 1995, the operative part whereof provides as follows : “Accordingly in my view, the granting of injunction at this stage restraining the respondent no.1 from using the product ‘ZOLAM’ which has been marketed by the respondent No.1 since September 1991 will not be proper in the interest of Justice.
The balance of convenience dictates that the respondent No.1 should keep accounts of all its sales of the product ‘ZOLAM’ and furnish statement of such accounts each and every month to the petitioner.
The hearing of the suit is expedited, written statement to be filed by 1st July 1995.
Cross orders of discovery by 17th July, 1995.
Inspection forthwith and the suit will appear in the appropriate prospective list by 1st August, 1995.
Parties will be at liberty to mention for early hearing of the suit.
The application is accordingly disposed of.” As for Stadmed’s later suit, an initial order was passed on May 13, 2003 restraining Sun Pharma from passing-off their goods by using the word mark ‘Zolam’.
Such order was ultimately confirmed on March 3, 2004.
The grounds urged by Sun Pharma for seeking such order continuing for more than a decade to be vacated by an application filed late in 2015 are that the basis for passing the order no longer exists and subsequent events have overtaken the order.
There have been many errors committed, not the least by the parties, in couRs.of the matters pertaining to this suit and related thereto and a brief recount is called for.
Stadmed complained that Sun Pharma’s word marks ‘Zolam’ and ‘Alzolam’ were liable to be struck off the register and applied for rectification before the Registrar.
The application pertaining to ‘Zolam’ was made at a time subsequent to the institution of Sun Pharma’s suit for infringement in this Court.
By virtue of Section 107 of the Trade and Merchandise Marks Act, 1958 that was applicable at that stage, the application for rectification of the mark could not have been carried to the Registrar.
However, the Registrar was constrained to consider such application by virtue of an order dated August 19, 2002 which was obtained at the instance of Sun Pharma.
The two principal prayers in G.A.No.2676 of 2002 filed by Sun Pharma on which the order dated August 19, 2002 was passed were as follows : “(a) That the order of stay in Suit No.338 of 1994 passed by the Hon’ble Mr.Justice Shyamal Kumar Sen on 4th May, 1995 be vacated; “(b) Registrar of Trade Marks Bombay be directed to dispose of the two rectification applications filed by the defendant- respondent No.1 herein in respect of the trade marks ZOLAM and ALZOLAM forthwith:” Pursuant to such erroneous command of this Court which did not notice Section 107 of the old Act while passing the order dated August 19, 2002, the Registry decided the application for rectification pertaining to ‘Zolam’ and removed such mark from the register.
Sun Pharma challenged such order before the Intellectual Property Appellate Board and on August 4, 2006, such Board held that the Registrar had “no right to entertain the application for rectification under Section 107 of the Act when a suit is pending before the High Court.” Stadmed sought to challenge such order of August 4, 2006 before this Court by way of a petition under Article 226 of the Constitution that was rejected on the ground of territorial jurisdiction by an order dated June 6, 2012.
An appeal from such order failed in this Court and the resultant special leave petition was also not entertained by the Supreme Court.
At the time that the order of injunction was obtained by Stadmed in its passing-off action, Sun Pharma had been denuded of its rights as the registered proprietor of word mark ‘Zolam’.
Sun Pharma now contends that since the situation has completely changed, the order of injunction can no longer be maintained.
For a start, Stadmed’s later suit is not founded merely on Sun Pharma’s registration in respect of ‘Zolam’ being wiped out.
The cause of action in the suit is on account of prior adoption and use of mark ‘Zolam’ from 1990–1991, the perceived subsequent adoption in 1993 of mark ‘Zolam’ by the predecessor-in-interest of Sun Pharma and the non-user of mark ‘Zolam’ by the original registered owner or the subsequent assignee.
It is also relevant to notice that on the grounds that Stadmed had made out in their plaint, it was possible to obtain an order on merits restraining Sun Pharma from using the mark ‘Zolam’ and the fact that Sun Pharma has since had its registration in respect of ‘Zolam’ reinstated is of no relevance.
In any event, since Sun Pharma’s ownership of registered mark ‘Zolam’ was restored in or about 2006, there is no justification for having suffered the injunction for a period of nine years prior to applying late in 2015 for vacating the order of March 3, 2004.
Another ground cited by Sun Pharma is that it is entitled to the benefit under Section 55 of the Trade Marks Act, 1999 since it has applied for ‘Zolam’ and ‘Alzolam’ to be recognised as associate marks.
However, till such time that such application is allowed, it cannot be said that any right as claimed under Section 55(1) of the said Act has accrued in favour of Sun Pharma.
Stadmed submits that since its application for rectification of the register in respect of the mark ‘Zolam’ was ultimately rejected on the ground of jurisdiction and not on merits, it has subsequently applied for rectification of the register in such regard and the same is pending before the IPAB.
Stadmed has also applied for registration of mark ‘Zolam’ in its favour.
The object of the present exercise by Sun Pharma appears to be to touch base here before heading to another station to try and have an order subsisting against it for more than a decade vacated.
The simple fact is that in Sun Pharma not having preferred an appeal from the orders dated June 6, 1995 and March 3, 2004 in the two suits, it is highly unlikely that such orders will now be touched unless overwhelming subsequent events are cited.
No subsequent event of any relevance has been cited in couRs.of these applications for the subsisting orders to be disturbed.
As a consequence, G.A.No.3608 of 2015 in the earlier suit and G.A.No.3602 of 2015 in the later suit are dismissed.
Since there is no impediment to the two suits proceeding to trial, it is desirable that the trial be expedited.
Written statements are permitted to be filed, if not filed earlier, in either suit by November 4, 2016.
Documents should be discovered by November 30, 2016 and inspection completed forthwith thereupon so that both the suits are made ready for hearing in all respects for them to be placed before the appropriate Bench in the new year for analogous hearing.
For this frivolous and completely avoidable endeavour on its part, Sun Pharma shall pay costs assessed at 3,000 GM to Stadmed and 2,000 GM to the West Bengal State Legal Services Authority.
Urgent certified website copies of this order, if applied for, be supplied to the parties subject to compliance with all requisite formalities.
(SANJIB BANERJEE, J.) K.