Courts Can Delve Into Examination Of Trademark Infringement In Execution Petitions, New Suit Not Needed: Delhi High Court

The Delhi High Court single bench of Justice Jasmeet Singh allowed an execution petition against the Defendants engaged in the infringement of the trademarks of Glaxo Group Limited, a biopharma company engaged in the production of vaccines. The High Court held that an executing court can delve into the merits of infringement to judge the violation of an original decree granting a permanent injunction to restrain the Defendants. Brief Facts: Glaxo Group Limited (“Glaxo”) filed a suit in the Delhi High Court (“High Court”) against the Defendants for seeking a permanent injunction restraining them from using its registered trademarks. Glaxo had registered trademarks for vaccines like 'Zentel', 'Otrivin' and 'Ambirix' and the Defendants were using deceptively similar words such as 'Sontel', 'Etoriwin' and 'Aribrix'. As per Glaxo, this was a tactic employed by the Defendants to misappropriate the proprietary suffix 'Rix'. The High Court passed a decree in favour of Glaxo, authorizing a compromise between Glaxo and the Defendants. As per the decree, the Defendants were directed to destroy any unfinished products or materials bearing the impugned marks. Despite the decree, the Defendants continued to infringe the trademarks of Glaxo. The Defendants were specifically accused of using the mark 'Betnevin' with similar packaging to Glaxo's trademark "Betnesol." This ongoing infringement prompted Glaxo to file an execution petition to enforce the original decree before the High Court. Contention of the Defendants: The Defendants argued that if the High Court examines whether their products infringe on Glaxo's trademark, it'll be overstepping the terms of the decree and would be delving into the matter of infringement. This falls under the purview of a new suit, which Glaxo should file instead. Reliance was placed on Snapdeal (P) Ltd. v. Godaddycom LLC [(2022) 4 HCC (Del) 335], where the Delhi High Court held that a court cannot pre-emptively issue a broad injunction without identifying specific infringing domain names. Each alleged infringement must be individually presented to the court for examination and relief. This principle underlined that an infringement suit must address specific instances of infringement rather than seeking a blanket order against potential future infringements. Observations by the High Court: The High Court held that the contentions of the Defendants were based on a case which was an 'interim order' and not an execution petition. In this case, the execution petition was based on a settlement signed by both Glaxo and the Defendants, endorsed by their respective counsels, and followed by a decree based on the settlement terms. The High Court referred to Essco Sanitations v. Mascot Industries (India) [AIR 1982 Delhi 308], where it restrained the judgment debtors from using a similar mark in an execution petition. In the case, the High Court noted that the decree, based on the compromise deed, prohibited the judgment debtors from infringing the decree-holder's trademark 'Essco' by using the mark 'Esso' or any other deceptively similar mark. The High Court also noted that the adoption of the mark 'Osso' by the judgment debtors was dishonest, as it closely resembled the decree-holder's mark 'Essco'. The judgment debtors' attempt to use a similar mark even before the decree showed dishonest intentions, further justifying the restraint order. Reliance was also placed on Chittoori Subbanna v. Kudappa Subbanna [1965 AIR 1325], where the Supreme Court held that an executing court must enforce a clear and complete decree without interpreting or going behind its terms, even if the decree seems erroneous or contrary to law. Based on these precedents, the High Court held that in an execution petition, it could determine whether the Defendant's products were similar and infringing Glaxo's trademarks. It affirmed that the executing court must enforce the decree as it stands without questioning its validity. Consequently, the High Court found that the Defendants' product and packaging were similar to and infringed upon Glaxo's trademarks. Consequently, the Defendants were restrained from using the mark 'Betnevin' and similar packaging to 'Betnesol'. The execution petition was disposed of, with liberty granted to Glaxo to revive the petition in case of further infringement. Case Title: Glaxo Group Limited and Others vs Rajiv Mukul and Anr.Citation: 2024 LiveLaw (Del) 733 Case No.: Execution Petition No. 9/2022 Advocate for the Decree Holder (Glaxo): Ms Shwetasree Majumdar, Ms Tanya Varma, Ms Shilpi Sinha and Mr Vardaan Anand Advocate for the Judgment Debtors (Defendants): Mr Sidharth Bambha and Ms Sucharu GargClick Here To Read/Download Order

Courts Can Delve Into Examination Of Trademark Infringement In Execution Petitions, New Suit Not Needed: Delhi High Court

Smita Singh

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