Delhi High Court Upholds Settlement Decree: ‘BETNEVIN’ Mark Infringes Glaxo’s ‘BETNESOL’

Introduction:

Glaxo Group Limited and others filed an infringement suit against Mr. Rajiv Mukul and another, seeking a permanent injunction to restrain the defendants from infringing on Glaxo’s registered trademarks. The trademarks in question included prominent names such as ZENTEL, OTRIVIN, AMBIRIX, BOOSTRIX, POLIORIX, GRETORIX, PRIORIX, ROTARIX, TOCTINO, and ZUCOX. The lawsuit was decreed in favor of Glaxo based on a joint compromise application signed by both parties and their counsels.[1]

About the case:

The execution petition sought the enforcement of a decree dated December 1, 2017, issued by the Delhi High Court in the case CS (COMM) 1620/2016. The original suit, brought by the decree-holders, was decreed in alignment with paragraph 56(a) and (b) of the plaint and a joint compromise application. The decree-holders had initially filed the suit seeking an injunction against the judgment-debtors, alleging trademark infringement in terms of paragraph 43 of the plaint. Following the compromise agreement, the suit was decreed, and the present execution petition has been filed to enforce this decree. The decree-holders assert that the judgment-debtors are continuing to infringe upon their trademark by using the mark ‘BETNEVIN’ and employing packaging similar to that of the decree-holders’ trademark ‘BETNESOL’. This petition aims to ensure compliance with the Court’s decree and protect the decree-holders’ intellectual property rights.

The Court passed a decree on December 1, 2017, in line with the terms outlined in the joint compromise application and the plaint. The decree restrained Mr. Mukul from misappropriating or infringing any of Glaxo’s registered trademarks. Glaxo discovered that Mr. Mukul was using the mark ‘BETNEVIN’ with packaging similar to their trademark ‘BETNESOL’. This prompted Glaxo to file an execution petition before the Delhi High Court to enforce the decree, asserting that the judgment-debtors continued to infringe on their trademarks despite the settlement.

Ms. Garg, the learned counsel representing the judgment-debtors, argued that the role of the Executing Court is limited to enforcing the decree without delving into the substantive matters that were adjudicated during the original suit. She contended that when an Executing Court assesses whether the judgment-debtors’ product infringes on the decree-holders’ trademark, it essentially re-evaluates the issue of infringement. This, according to Ms. Garg, goes beyond the terms of the decree and steps into the territory of a new determination of facts.

Ms. Garg maintained that the Executing Court is bound by the decree and cannot re-examine the issues already decided or those that require fresh adjudication. She argued that if there is a question of ongoing or new infringement by the judgment-debtors, the decree-holders should initiate a fresh suit rather than seek enforcement through the existing decree. This would ensure that the Executing Court does not exceed its jurisdiction by making findings on infringement, which she believes is outside the scope of its mandate.

Counsel for Mr. Mukul contended that the Executing Court was overstepping its bounds by deciding on the issue of infringement, which should necessitate a fresh suit. They referenced the case Snapdeal (P) Ltd. v. Godaddycom LLC (2022) 4 HCC (Del) 335, asserting that a decision on infringement in an execution petition was improper as per the cited interim order.

Court’s Observations:

The Court noted that the Snapdeal case was an interim order and did not apply to execution petitions. It further emphasized that the present execution petition stemmed from a decree resulting from a settlement agreement duly signed by both parties and their respective counsels. Citing precedents from the Coordinate Bench and the Hon’ble Supreme Court, the Court affirmed that it is within the Court’s jurisdiction to determine if the judgment-debtors’ products are similar and infringing the trademarks of the decree-holders during an execution petition. The Supreme Court had previously ruled that an Executing Court must give effect to the decree, even if certain terms or directions within the decree might contradict the law.

Given these considerations, the Court found that the judgment-debtors’ product ‘BETNEVIN’ and its packaging were indeed similar to and infringing upon Glaxo’s product ‘BETNESOL’. The Court ordered the execution of the decree dated December 1, 2017, restraining Mr. Mukul from using the mark ‘BETNEVIN’ and from employing any product packaging similar to ‘BETNESOL’.

Conclusion:

The Delhi High Court’s decision underscores the importance of enforcing trademark rights and the execution of legal decrees resulting from settlement agreements. It also highlights the Court’s ability to make determinations regarding infringement within the scope of execution petitions, thereby ensuring that the decree is upheld and enforced effectively.

[1] Glaxo Group Limited & Others v. Mr. Rajiv Mukul & Another