In this case, the Decree Holders, originally the Plaintiffs, Glaxo Group Limited and others (“Glaxo”) filed a petition seeking execution of the decree dated 01.12.2017 passed by the Delhi High Court.
Glaxo had filed an infringement suit, CS (COMM) 1620/2016 against the Judgment Debtors, originally the Defendants, Mr. Rajiv Mukul and another (“Mr. Mukul”) seeking a permanent injunction. The suit was decreed in Glaxo’s favour in terms of a joint compromise application and the terms in the plaint. Mr. Mukul was restrained from infringing or misappropriating Glaxo’s registered trademarks such as ZENTEL, OTRIVIN, AMBIRIX, BOOSTRIX, POLIORIX, GRETORIX, PRIORIX, ROTARIX, TOCTINO, ZUCOX, or any other trademarks which amounts to infringement or passing off its goods as those of Glaxo’s goods.
Glaxo discovered Mr. Mukul’s use of the mark, ‘BETNEVIN’ with similar packaging to its trademark, ‘BETNESOL’ prompting Glaxo to seek execution of the decree. Counsel for Mr. Mukul argued that the Executing Court is going beyond the terms of the decree to decide the infringement between the products and that a fresh suit should be filed, citing the case of Snapdeal (P) Ltd. v. Godaddycom LLC, (2022) 4 HCC (Del) 335. However, the Court noted that the cited case was an interim order and not an execution petition.
The Court observed that in the present case, the execution petition was based on a decree resulting from a settlement between the parties. Relying on precedent, the Court upheld that, it could determine infringement in an execution petition to enforce the decree of injunction.
In view of the above-mentioned circumstances, Mr. Mukul was restrained from using the mark ‘BETNEVIN’ and the product and packaging similar to ‘BETNESOL’.
Relevant Paragraphs:
“15. The view of the Coordinate Bench of this Court as well as the Hon’ble
Supreme Court is that the Court in an execution petition can arrive at a
finding that the products of the judgment-debtors are similar and infringing
the trademark of the decree-holders, in order to execute the decree of
injunction, can pass orders subsequently. The Hon’ble Supreme Court has
also held that it is immaterial if the term or directions in a decree is contrary
to law. The Executing Court cannot go behind the same, and has to give
effect to the decree.
16. For the said reasons, the decree dated 01.12.2017 is required to be
executed. I am also of the view that the product and packaging of the
judgment-debtors is similar to and infringing the product and packaging of
the decree-holders. For the said reasons, the judgment-debtors are restrained
from using the mark ‘BETNEVIN’ and the product and packaging similar to
‘BETNESOL’.”
Citation: Glaxo Group Limited And Others vs Rajiv Mukul and Anr, High Court of Delhi, 8th May, 2024, [EX.P. 9/2022].
Authored by Ms. Benita Alphonsa Basil, Trademark Team, BananaIP Counsels.
Reviewed and confirmed by Ms. Ilana Baruah, Consulting and Strategy Team, BananaIP Counsels.
Disclaimer
The case note/s in this blog post have been written by IP Attorneys at BananaIP Counsels based on their review and understanding of the Judgments. It may be noted that other IP attorneys and experts in the field may have different opinions about the cases or arrive at different conclusions therefrom. It is advisable to read the Judgments before making any decisions based on the case notes.
If you have any questions, or if you wish to speak with a Trademark Attorney, please reach us at: [email protected] or 91-80-26860414/24/34.
