Sun Pharmaceuticals Industries vs. DWD Pharmaceuticals

Introduction

The trade mark “FORZEST” was created and adopted by the plaintiff’s predecessor-in-interest, “Ranbaxy Laboratories Ltd.” in 2003. It was registered in Class 5 for “pharmaceutical and medicinal preparations for human and veterinary use.” The Trade Mark Registry identified the plaintiff as the later owner of the aforementioned trademark. The plaintiff claimed that the defendant’s application for registration of the mark “FOLZEST” on a “planned to be used” basis in Class 5 was not discovered by the plaintiff until 2022, at which point the plaintiff allegedly objected right away.

Sun Pharmacetuticals industries vs DWD Pharmaceuticals

Additionally, the defendant claimed in the reply that the mark “FORZEST” was phonetically and visually distinct from the defendant’s mark when the plaintiff’s mark “FORZEST” was cited in the Examination Report against the defendant’s trade mark application. Additionally, the defendants claimed that they had been the registered owners of numerous “ZEST” trade marks since 1983. The Trade Marks Registry was still debating the defendant’s trademark application. The plaintiff claimed that the defendant’s use of a mark that was confusingly similar to the plaintiff’s as well as passing off and unfair competition constituted trademark infringement.

As a result, on May 19, 2022, this Court issued an ad-interim ex-parte order of injunction, prohibiting the defendant from marketing its pharmaceutical preparations using the disputed mark “FOLZEST,” based on the plaintiff’s claims and the supporting documentation. Thereafter, the defendant claimed that the plaintiff hid some important facts from this Court in order to get an ad-interim ex-parte order of injunction.

Since the plaintiff had previously applied for the registration of the mark “EXEZEST,” which the defendant had opposed back in 2009, the defendant claimed that the plaintiff was well-aware of not only the registration of the mark “ZEST” in the defendant’s favour, but also of the other marks registered and used by the defendant. Moreover, the plaintiff thereafter applied for registration of its mark ‘TRIOLMEZEST’, which was also opposed by the defendant in 2014 on the ground that the defendant was the registered proprietor of the ‘ZEST’ ‘family of marks’.

Contentions of Plaintiff

The plaintiff’s attorney claimed that although the marks of the plaintiff and the defendant appeared to be confusingly similar, they used different medicinal preparations because the plaintiff’s medication targeted male erectile dysfunction while the defendant’s medication was a pregnancy multivitamin designed to reduce the risk of preterm births. Hence, any mix-up between the two marks could result in improper consumption. According to the argument, the defendant could not assert any exclusivity over the word “ZEST” because third parties on the market also use it.

Contentions of Defendant

The defendant’s attorney argued that the plaintiff should have disclosed the facts because they would have refuted the plaintiff’s claim that it learned of the defendant and their use of the mark “FOLZEST” only in 2022 and would have revealed that the defendant had numerous registrations containing the word “ZEST.” Hence, the attorney argued that the ad-interim ex-parte Order of injunction issued by this Court should be overturned due to the plaintiff’s misrepresentation, suppression, and concealing of relevant facts and documents.

Decision

The Court held that the crucial and material information that the plaintiff had withheld should have been disclosed in the plaint itself because doing so would have undoubtedly affected the Court’s decision to grant the plaintiff an ad-interim ex-parte injunction. The court determined that the plaintiff intentionally tried to deceive this court by withholding crucial information. The plaintiff’s medicine was for treating erectile dysfunction in men, whereas the defendant’s medicine was a multivitamin for pregnant women to reduce the risk of preterm births, the court noted that the plaintiff’s mark, “FORZEST,” was initially deceptively similar to the defendant’s mark, “FOLZEST.” It was also significant to note that the plaintiff’s medicine was for treating erectile dysfunction in men. In relation to this, the Court relied on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 and Novartis AG v. Crest Pharma Pvt. Ltd., 2009 SCC OnLine Del 4390 and held that “in a medicinal good, the right of not only the private litigants but also public interest has to be kept in mind, and, in fact, be given prominence. Even a remote chance of deception or confusion arising because of similarity in the marks was to be avoided and prevented, as it may lead to disastrous consequences for unwary consumers. Therefore, despite the concealment and misstatement of the plaintiff, the plaintiff shall be entitled to an ad-interim relief if the marks of the medicinal goods are deceptively similar to each other.”

Conclusion

According to the court, the plaintiff would still be eligible to receive an ad-interim injunction against the defendant provided the following conditions were met. The following facts are relevant:

  1. The plaintiff, through its predecessor-in-interest, had been the registered owner of the mark “FORZEST” since the year 2003;
  2. The plaintiff/its predecessor-in-interest had used the said mark since the year 2003 and had substantial sales;
  3. Although the defendant had a “ZEST” Family of Marks, it had only begun using the impugned mark “FOLZEST” in June 2021/May 2022;
  4. The plaintiff and defendant used different medications;
  5. Two marks are deceptively similar and any confusion in the same can lead to disastrous consequences.

Thus, the Court held that an ad-interim ex-parte order of injunction stands confirmed during the pendency of the present suit. The matter was listed next for 19-01-2023.

Author: Tanya Saraswat, in case of any queries please contact/write back to us via email to chhavi@khuranaandkhurana.com or at  Khurana & Khurana, Advocates and IP Attorney.

References

  • Express News Service, Delhi HC slaps rs 10 lakh cost on sun pharma for concealment of facts in trademark infringement case The Indian Express (2022), https://indianexpress.com/article/cities/delhi/delhi-hc-slaps-rs-10-lakh-cost-on-sun-pharma-concealment-of-facts-trademark-infringement-case-8286705/ (last visited Feb 28, 2023).
  • Gireesh Babu, Delhi HC issues favourable order to sun pharma in forzest case; imposes Rs. 10 lakh fine for concealing material facts Pharmabiz (2022), http://www.pharmabiz.com/NewsDetails.aspx?aid=154706&sid=1 (last visited Feb 28, 2023).

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