Multani Pharmaceuticals Ltd. vs. S.A. Herbal Bioactives

Case Title:Multani Pharmaceuticals Ltd. vs. S.A. Herbal Bioactives LLP & Ors.

Date of Order:14th February 2025

Case No.: CS(COMM) 740/2024 

Neutral Citation:2025:DHC:1021

Name of Court:High Court of Delhi at New Delhi

Name of Judge:Hon’ble Mr. Justice Amit Bansal

Facts:

The plaintiff, Multani Pharmaceuticals Ltd., is engaged in the manufacture and distribution of Ayurvedic, Unani, and Herbal medicines. It has been selling products under the brand name "MULTANI" and has used the trademark "KUKA" since 1938, particularly for Ayurvedic cough syrups and tablets. The plaintiff has secured multiple registrations for the "KUKA" trademark in India and other jurisdictions.

In July 2024, the plaintiff discovered a cough syrup branded as "KYKA" being sold in Moldova and Russia by the defendants, S.A. Herbal Bioactives LLP. The plaintiff claimed that the defendants were counterfeiting its "KUKA" syrup, using a deceptively similar mark, and distributing it through the same distributor that had been marketing "KUKA" since 2012.

Aggrieved by this, the plaintiff filed a suit seeking a permanent injunction to restrain the defendants from using the "KYKA" mark or any other mark deceptively similar to "KUKA," along with claims of trademark infringement, copyright infringement, and passing off.

Issues:

Whether the defendants' use of the mark "KYKA" constituted trademark infringement and passing off of the plaintiff’s "KUKA" trademark?Whether the plaintiff was entitled to a permanent injunction against the defendants?Whether the "KUKA" trademark qualified to be declared as a "well-known trademark" under the Trade Marks Act, 1999?

Reasoning and Analysis of Judge:

The court initially granted an ex-parte ad interim injunction on 30th August 2024, restraining the defendants from using the infringing mark "KYKA" or any material deceptively similar to the plaintiff’s registered trademarks. 

In considering the plaintiff’s request for declaring "KUKA" as a well-known trademark, the court referred to Sections 11(6) and 11(7) of the Trade Marks Act, 1999. It analyzed the plaintiff’s extensive sales, promotional efforts, and enforcement actions to establish its brand recognition. The court found that "KUKA" had acquired significant goodwill and reputation through its long-standing use, widespread distribution, and legal enforcement efforts. The evidence presented, including advertisements, sales figures, and international trade documents, supported the plaintiff’s claim.

Decision of Judge:

The court decreed the suit in favor of the plaintiff based on the settlement agreement. The defendants handed over a demand draft of ₹6,50,000 to the plaintiff’s counsel in court. Furthermore, the court recognized "KUKA" as a well-known trademark under Section 2(1)(zg) of the Trade Marks Act, 1999, granting a declaration in favor of the plaintiff. The decree sheet was ordered to be drawn, and all pending applications were disposed of.