Delhi High Court: In an application filed under Order 39 Rules 1 and 2 of the Civil Procedure Code, 1908 (‘CPC’), Prathiba M. Singh, J., applied the test of triple identity and opined that in the present case, the defendant had made out a prima facie case for the grant of an injunction and accordingly restrained the defendant, till the next date of hearing, from manufacturing, selling, offering for sale or using in any manner including on the internet, the mark “GSK” in respect of eyewear, optical wear or any other lenses or any other cognate and allied products.
Background
In the instant case, the plaintiff, SmithKline Beecham Limited, was a U.K. based company, which was a part of the G.S.K Group of companies. GSK plc was the ultimate parent company of the G.S.K group, and the plaintiff’s parent company. The ‘GSK’ mark was adopted in 2000 and was a short form of ‘Glaxo SmithKline’.
GSK’s global presence extended to more than 150 countries, where it operated commercial activities. The plaintiff submitted that they were incorporated in 1924, and GSK had been present in India for over 90 years. As a market leader in pharmaceutical and vaccines sector, the plaintiff had reported turnover of approximately Rs. 3,200 crores, in March 2022. The plaintiff had also earned the distinction of being second ranked multi-national pharmaceutical company and the fifth largest pharmaceutical company in terms of volume sales in India.
The mark ‘GSK’ had been used in following forms:
The ‘GSK’ marks were also used as a part of corporate name and the house mark of the plaintiff and its group companies. The domain name GSK.COM was registered in 1998 and various sub-domains were also being used. Further, plaintiff’s pharmaceutical products were promoted under the mark ‘GSK’, and various medicinal preparations were sold and advertised on the plaintiff’s website.
The defendant, Maxivision Eye Hospitals Private Limited, started using the mark ‘GSK’ though in a different writing style but in orange colour. The defendant had filed trade mark application for the ‘GSK’ mark i.e., 
.
The plaintiff issued a legal notice dated 11-07-2023, wherein the defendant was called to settle the matter amicably, and again the reminder was sent on 24-07-2023. However, no response was received from the defendant. Thereafter, the plaintiff conducted an investigation and found that the defendant used the ‘GSK’ mark on eyewear, specifically on the lenses.
Thus, the plaintiff filed the present application.
Analysis, Law, and Decision
The Court opined that considering that the plaintiff operated in pharmaceutical and medical sector and was registered under numerous classes for the ‘GSK’ mark. The use of an identical mark, especially in an identical colour combination was clearly dishonest and mala fide.
Considering that the mark, trade channels and the customer segments, all were identical, the Court applied the test of triple identity and opined that in the present case, the plaintiff has made out a prima facie case for an ad interim injunction. The Court opined that the balance of convenience lied in the plaintiff’s flavour and if the injunction was not granted to the plaintiff, an irreparable harm would be caused to the plaintiff.
Thus, the Court restrained the defendant, till the next date of hearing, from manufacturing, selling, offering for sale or using in any manner including on the internet, the mark ‘GSK’ in respect of eyewear, optical wear or any other lenses or any other cognate and allied products. The Court stated that the references to the mark ‘GSK’ should be taken down immediately within four weeks by the defendants including the online references and if there was any existing stock consisting ‘GSK’ mark, the defendant was permitted to the Court for exhausting the existing stock.
The matter would next be listed before the Court on 21-03-2024.
[SmithKline Beecham Ltd. v. Maxivision Eye Hospitals Pvt. Ltd., 2023 SCC OnLine Del 6915, Order dated 20-10-2023]
Advocates who appeared in this case :
For the Plaintiff: Urfee Roomi, Janaki Arun, Anubhav Chhabra, Anuja Chaudhury, Advocates;
