ORDER : IA No. 8422/2015 (Exemption) Exemption allowed subject to just exceptions. Application stands disposed of. Caveat No. 406/2015 Since the defendant has entered appearance, caveat stands discharged. CS (OS) No. 1120/2015 1. Plaint be registered as Suit. 2. Issue summons and notice. 3. Learned counsel appearing for the defendants accepts summons and notice. 4. Written statement be filed within the stipulated period. IA No. 8421/2015 (under Order 26, Rule 9 CPC) & IA No. 8420/2015 (under Order 39, Rule 1 and 2 CPC) 5. Issue notice. Learned counsel for the defendant accepts notice. 6. Reply be filed within 10 days from today. 7. IA No. 8420/2015 is an application for ex parte ad interim injunction. 8. The accompanying suit is filed seeking a decree of permanent injunction to restrain the defendant, etc. from manufacturing, selling, offering for sale, etc the drug/pharmaceutical preparation ranibizumab under the trade mark LUMINA or any other mark that may be deceptively similar to the plaintiffs trade mark LUMINOUS amounting to passing off or unfair competition. Other connected reliefs are also sought. 9. As per the plaint, it is stated that plaintiff No. 1 is a pioneer in the field of retinal disease and research and development. The plaintiffs are said to be engaged in the business of manufacturing and sale of ranibizumab internationally including in India. It is further stated that plaintiff No. 1 is engaged in rendering medical services in relation to ranibizumab comprising clinical data and scientific research conducted by it which is identified and distinguished by the brand LUMINOUS. It is stated that in order to analyse, evaluate and benchmark the treatment, efficacy and safety of ranibizumab, plaintiff No. 1 initiated LUMINOUS clinical research study in the year 2011. The said study was aimed to conduct analysis or retrospective safety data and prospective observational worldwide multinational study in relation to ranibizumab. Hence it is stated that since 2011 plaintiff No. 1 has been engaged in the business of rendering medical services comprising medical studies, clinical data and scientific research in relation to ranibizumab distinguished and identified under distinctive trade mark LUMINOUS. It is urged that the total budget for LUMINOUS study earmarked by plaintiff No. 1 is USD 46 Million out of which USD 18 Million has already been spent in 2014. 10. It is urged that the total budget for LUMINOUS study earmarked by plaintiff No. 1 is USD 46 Million out of which USD 18 Million has already been spent in 2014. 10. It is urged that use of LUMINOUS by the plaintiffs constitutes trade mark in relation to medical services and ranibizumab. Though it is urged that the plaintiffs sell ranibizumab under the trade marks Lucentis and Accentrix, both drugs are associated with Luminous study. Luminous is also said to be used in relation to medical studies and research pertaining to ranibizumab on the promotional materials of Lucentis and Accentrix. Hence, it is urged that the trade mark LUMINOUS acquired formidable goodwill and reputation which the plaintiff is entitled to protect in law against misappropriation and misuse. Reliance is also placed on trade mark registrations applied for and granted for LUMINOUS in several countries details which are given in para 18 of the plaint. It is stated that the defendant is a company incorporated in India and the defendant is engaged in the business of manufacturing and selling of pharmaceutical products. In December 2014 the plaintiffs and the defendant participated in a pharmaceutical conference conducted by Vitro Retinal Society of India (VRSI) wherein the plaintiffs' trade mark LUMINOUS was exhibited as used in relation to medical studies pertaining to ranibizumab sold under the trade mark Lucentis. The defendant also participated Lithe said conference and exhibited its proposed launch of ranibizumab under the trade mark RAZUMAB. It is stated that the defendant also applied for registration of trade mark RAZUMAB on 04.11.2014 in class 5 for medicinal and pharmaceutical preparations. Subsequently, it is stated that in February 2015, the plaintiffs were shocked to witness that in a conference organised by All India Ophthalmological Society the defendant has now exhibited the proposed launch of the ranibizumab under the trade mark LUMINA. It is stated that the trade mark LUMINA is conceptually, structurally, phonetically and visually deceptively similar to the trade mark LUMINOUS. It is urged that such intended adoption and proposed use of the trade mark LUMINA is likely to lead to confusion or deception and that the defendant proposes to use the trade mark LUMINA for the drug ranibizumab. It is further pointed out that plaintiff No. 1 has applied for registration of the trade mark LUMINOUS in India on 16.04.2015 under multi class application under classes 41 and 44. 11. It is further pointed out that plaintiff No. 1 has applied for registration of the trade mark LUMINOUS in India on 16.04.2015 under multi class application under classes 41 and 44. 11. Hence the plaintiffs are said to have issued a legal notice dated 28.03.2015 to the defendant. A reply was received on 15.04.2015 by which the defendant refused to fulfil the requirements called out by the plaintiffs. Thereafter, the defendant on 21.04.2015 instituted a suit being CS(OS) 1075/2015 before this court on the ground that the legal notice issued by the plaintiffs constitutes groundless threats under Section 142 of the Trade Marks Act, 1999 and the same should be injuncted. It is urged that Section 142 does not apply to passing off claims. The said matter which came up for hearing before the Bench of Indermeet Kaur, J. now stands adjourned to 07.09.2015. Hence, based on the above an ad interim injunction is sought. 12. Learned senior counsel appearing for the plaintiffs has reiterated the above contentions. He has pointed out that the user of the plaintiff in other countries has commenced in July 2010, and it is being used since then. He has pointed out that the user in India is since 01.12.2012. It is further pointed that the defendant has yet not commenced user of the drug. For this reliance is placed on the plaint of CS(OS) 1075/2015 filed by the defendant wherein para 32 it has been urged that the defendant (plaintiff in that suit) is launching its product under the mark LUMINA throughout India including Delhi and has already obtained requisite regulatory approvals in Delhi. Based on this, it is urged that the balance of convenience is in favour of the plaintiffs and the defendant having not started the drug should be restrained from using the mark LUMINA for the said drug as sought for. 13. Learned senior counsel appearing for the plaintiffs has relied upon the judgments in the cases of B.K. Engineering Company, Delhi v. UBHI Enterprises (Regd.) Ludhiana and Another, AIR 1985 Delhi 210, Arjies Aluminium Udyog v. Sudhir Batra, 1997 PTC (7) (DB) and Wander Ltd. & Anr. v. Antox India Pvt. Ltd. 1990 (Supp) SCC 727. 14. 13. Learned senior counsel appearing for the plaintiffs has relied upon the judgments in the cases of B.K. Engineering Company, Delhi v. UBHI Enterprises (Regd.) Ludhiana and Another, AIR 1985 Delhi 210, Arjies Aluminium Udyog v. Sudhir Batra, 1997 PTC (7) (DB) and Wander Ltd. & Anr. v. Antox India Pvt. Ltd. 1990 (Supp) SCC 727. 14. The learned senior counsel appearing for the defendant has made the following submissions: (i) He strongly urges that to avoid contrary orders, it is imperative that the present suit be clubbed with CS(OS) 1075/2015 filed by the defendant under Section 142 of the Trade Mark Act. It is further urged that Section 142 of the Trade Marks Act would be applicable even to a case of passing off and this has been held by the Calcutta High Court in the case of Dolphin Laboratories Pvt. Ltd. v. Kaptab Pharmaceuticals, AIR 1981 Cal. 76 and by the Delhi High Court in the case of Manoj Kumar Maheshwari v. Tips and Toes Cosmetics Pvt. Ltd. 2007 (34) PTC 121 (Del.) and in South African Breweries International (Finance) B. V. and Anr. v. Mohan Goldwater Breweries Ltd. & Anr. (2011) 184 DLT 252. It is stated that either this matter should be transferred to be heard by the other court hearing CS(OS) 1075/2015 or that matter may be clubbed with the present matter and heard by this court. (ii) It is secondly urged that there is no commercial user ongoing by the plaintiffs. The user of the trade mark LUMINOUS is only for the research work, research studies and such kind of work and has no commercial user. Unless a commercial user is proved, it is stated that no protection can be sought for or granted to the plaintiffs. Reliance is placed on the judgments in the cases of Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 , Yonex Kabushiki Kaisha v. Phillips International & Anr. 2007 (35) PTC 345 (Del.) and Kamat Hotels (India) Ltd. v. Royal Orchid Hotels Limited & Anr. 2011 (47) PTC 111 (Bom.). Hence, it is urged that the prior user by the plaintiffs is not in the course of trade. (iii) It is thirdly urged that the conduct of the plaintiffs speaks for itself. There has been much delay in moving the present suit and application. 2011 (47) PTC 111 (Bom.). Hence, it is urged that the prior user by the plaintiffs is not in the course of trade. (iii) It is thirdly urged that the conduct of the plaintiffs speaks for itself. There has been much delay in moving the present suit and application. It is stated that there is no urgency in the matter and today no interim injunction should be granted. It is pointed out that even as per the plaint, the defendant has indicated knowledge about user by the defendant in February 2015. The legal notice was sent on 28.03.2015 and the plaintiffs have taken more than a month after sending of the legal notice to file the present suit. It is stated that no grounds for urgent relief are made out and no relief be granted till final adjudication of this application after hearing detailed submissions. (iv) It is fourthly submitted that the conduct of the plaintiffs disentitles any stay order. The defendant has applied for registration on 04.02.2015 of the present trade mark LUMINA and whereas user has been since 31.01.2015 and the drug was approved on 20.02.2015. It is urged that the defendant has now launched the drug. (v) It is urged that the word LUMINOUS is a generic word. There are various registrations on the record of the Registrar of Trade Mark of the Mark LUMINOUS and Marks akin to this mark. It was pointed out to the learned senior counsel for the defendant that in the plaint in CS(OS) 1075/2015 a statement is made by the defendant that the drug is yet to be launched. This question was also posed in the morning when the matter came up for hearing. The matter was passed over. Now after lunch when the matter is taken up, the learned senior counsel has stated that as per the e-mails, the defendant has dispatched the drugs with the said trade mark LUMINA. (vi) Reliance is also placed on Skyline Education Institute (India) Pvt. Ltd. v. S.L. Vaswani and Anr., (supra) and Milmet Oftho Industries & Ors. v. Allergan Inc., (supra) to contend that no interim protection ought to be granted to the plaintiff. 15. Needless to add, learned senior counsel appearing for the plaintiff has refuted the contentions of the defendant. It is stated that the user of the trade mark LUMINOUS by the plaintiffs is for commercial purposes. v. Allergan Inc., (supra) to contend that no interim protection ought to be granted to the plaintiff. 15. Needless to add, learned senior counsel appearing for the plaintiff has refuted the contentions of the defendant. It is stated that the user of the trade mark LUMINOUS by the plaintiffs is for commercial purposes. The products, research/publications, studies are all connected with ranibizumab and sale of the drug ranibizumab and it cannot be said to be a non commercial venture. It is denied that there is any delay inasmuch as the defendant has not yet launched the drug. Reliance is placed on para 32 of the plaint of CS(OS) 1075/2015 where a categorical averment is made in the suit which was listed on 22.04.2015 for the first time that the defendant is still in the process of launching its product LUMINA throughout India. It is urged that this submission of the defendant of having dispatched the goods is clearly a false statement intended to mislead the court. 16. The matter has come up today for the first time. Defendant is yet to file reply and its documents. It is appropriate that these applications are heard and disposed off after replies are on record. It is also appropriate in view of the submissions of the defendant that the matter is heard by the same Bench which is hearing CS(OS) 1075/2015. What is to be considered is whether ad interim injunction is to be granted to the plaintiff till the present application is heard and disposed after a reply is filed by the defendant. 17. I am persuaded in the meantime to grant ad interim injunction keeping in view the fact that admittedly the user of the plaintiff of the trade mark LUMINOUS is much prior. Prima facie documents placed on record show user of plaintiff since 2010. Admittedly the defendant is claiming user since February 2015. This Court in the case of Crayons Advertising Ltd. vs. Crayon Advertising, 2014 (57) PTC 446 in para 18 held as follows:- "18. The settled legal position is that normally in order to succeed in a passing off matter what has to be established is the user of a mark "prior in point of time" than the impugned user by the respondents. This Court in the case of Century Traders v. Roshan Lal Duggar & Co. (supra) in paragraphs 14 held as follows:- "14. This Court in the case of Century Traders v. Roshan Lal Duggar & Co. (supra) in paragraphs 14 held as follows:- "14. Thus, the law is pretty well-settled that in order to succeed at this stage the appellant had to establish user of the aforesaid mark prior in point of time than the impugned user by the respondents. The registration of the said mark or similar mark prior in point of time to user by the appellant is irrelevant in an action passing off" The above observations were also approved by the Single Judge in the case of Globe Super Parts v. Blue Super Flame Industries and Anr. (1986) PTC 235 where in para 78 this Court held as follows:- "78. In connection with the concept `prior user' the counsel for the plaintiff has cited a number of cases, which deal with the rights conferred upon the first user of any mark. Amongst others, the cases cited are AIR 1978 Delhi 250 : 1950-2000 (22) PTC(Suppl)(1) 720 (Del), Century Traders v. Roshan Lal Duggar & Co. AIR 1978 Delhi 250. In that case, a Division Bench of this Court referred to ILR (1976) 1 Delhi 278:1950-2000 (23) PTC(Suppl)(2) 564 (Del), L.D. Malhotra Industries v. Ropi Industries, (1976) 1 Delhi 278. The Division Bench held that in order to succeed in a passing off matter, what has to be established, is the user of a mark, "prior in point of time" than the impugned user by the respondents. The Division Bench approved the statement in ILR (1976) 1 Delhi 278 to the effect; "a trader acquires a right of property in a distinctive mark merely by using it upon or in connection with his goods irrespective of the length of such user and the extent of his trade. The trader who adopts such a mark is entitled to protection directly, the article having assumed a vendible character is launched upon the market. The registration under the statutes does not confer any new right to the Mark, claimed or greater right than what already existed at common law and at equity without registration". The Single Judge of this Court had adopted, what is stated above, from a judgment of the Bombay High Court reported as Consolidated Foods Corporation v. Brandan & Co. Pvt. Ltd. AIR 1965 Bom. 35 . The Single Judge of this Court had adopted, what is stated above, from a judgment of the Bombay High Court reported as Consolidated Foods Corporation v. Brandan & Co. Pvt. Ltd. AIR 1965 Bom. 35 . I may, however, add that the length of the user is relevant only when it is to be seen whether secondary significance has been acquired by a common language word." 18. Further, there appears to be prima facie structural and phonetic similarity of the impugned trade mark LUMINA with that of LUMINOUS. Hence, hearing the plaintiffs have made out a prima facie case. 19. Regarding the balance of convenience, in view of categorical averment of the defendant in CS (OS) 1075/2015 that they have yet not launched their products which suit was listed on 22.04.2015, in my view the plaintiffs have made out a case whereby it can be said that the balance of convenience is in favour of the plaintiff. Any attempt by the defendant to use the impugned trade mark is bound to cause irreparable injury to the plaintiff. 20. Accordingly, I restrain the defendant, its directors, assignees, etc. from manufacturing, selling, advertising, etc. the drug, pharmaceutical preparations of ranibizumab using the trade mark LUMINA or any other mark deceptively similar to the plaintiffs trade mark LUMINOUS till further orders in this application. 21. Needless to add all observations made above are only prima facie without having an opportunity to look into the reply which is to be filed by the defendant. The observations made herein would have no bearing on the final adjudication of the present applications. 22. Subject to the orders of Hon'ble the Judge In-charge (Original Side), list this suit before the Bench hearing CS (OS) 1075/2015 on 11.5.2015.