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Delhi High Court

Sun Pharma Laboratories Ltd vs Intas Pharmaceuticals Limited & Anr. on 22 November, 2022

Author: Navin Chawla

Bench: Navin Chawla

                                       Neutral Citation Number: 2022/DHC/005142




                 $~20
                 *       IN THE HIGH COURT OF DELHI AT NEW DELHI
                                                      Date of decision: 22nd November, 2022

                 +       CS(COMM) 688/2022
                         SUN PHARMA LABORATORIES LTD            ..... Plaintiff
                                       Through: Mr.Sachin   Gupta,       Ms.Swati
                                                Meena,     Ms.Jasleen        Kaur,
                                                Ms.Yashi Aggarrwal, Advs.
                                       versus

                         INTAS PHARMACEUTICALS LIMITED & ANR.
                                                                ..... Defendants
                                     Through: Ms.Bitika Sharma, Mr.Lakshay
                                              Kaushik, Ms.Vrinda Pathak, Advs.

                         CORAM:
                         HON'BLE MR. JUSTICE NAVIN CHAWLA

                         NAVIN CHAWLA, J. (ORAL)

I.A. 19408/2022 (U/s 5 of the Limitation Act, 1963 read with Section 151 of the Code of Civil Procedure, 1908)

1. By this application the defendant no.1/applicant prays for condonation of 21 days' delay in the filing of the written statement. It is stated that the delay has occasioned in the filing of the written statement as the parties were trying to explore the possibility of arriving at an amicable settlement before the Delhi High Court Mediation and Conciliation Centre (in short, 'the Mediation Centre'), the attempt of which failed only on 18.11.2022.

2. Issue notice.

Neutral Citation Number: 2022/DHC/005142

3. Notice is accepted by Mr.Sachin Gupta, the learned counsel on behalf of the plaintiff/non-applicant. He submits that he has no objection to the delay being condoned; however, the same should be occasioned with cost.

4. In my opinion, as the parties were exploring the possibility of arriving at an amicable settlement before the Mediation Centre and such attempt failed only on 18.11.2022, there is no intentional delay on part of the defendant no.1/applicant; the same deserves to be condoned.

5. Accordingly, the application is allowed. The written statement is taken on record.

CS(COMM) 688/2022

6. The plaintiff shall file replication within a period of three weeks from today.

7. List before the learned Joint Registrar (Judicial) on 17th March, 2023 for further proceedings.

I.A.16287/2022 (U/Or. XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908)

8. By way of the present application, the plaintiff prays for the following relief:

"It is, therefore, most respectfully prayed that this Hon'ble Court may be pleased to grant an interim injunction restraining the Defendants, their Directors, their assignees in business, licensees, franchisee, distributors, dealers, stockists, retailers, chemists, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal & pharmaceutical preparations under Signature Not Verified Digitally Signed By:RENUKA NEGI Signing Date:28.11.2022 17:11:34 CS(COMM) 688/2022 Page 2 of 8 Neutral Citation Number: 2022/DHC/005142 the impugned marks SITARA-D/ SITARE or any other trade mark as may be deceptively similar to the Plaintiffs registered trade mark SETARET amounting to infringement of the Plaintiffs registration under no. 807552, and Plaintiff's unregistered trade mark SITARED".

FACTUAL BACKGROUND

9. It is the case of the plaintiff that Sun Pharmaceutical Limited (the plaintiff's parent-company) had applied for and obtained registration for the trade mark 'SETARET' under application no. 807552 dated 24.06.1998 in Class 05, on a 'proposed to be used' basis. The said mark has been assigned to the plaintiff vide Assignment Deed dated 05.07.2022. However, admittedly, the said mark has been used neither by the plaintiff nor its predecessor-in-interest.

10. On 16.03.2022, the plaintiff applied for the registration of its trade mark 'SITARED' under application no. 5373561 in Class 05, again on a 'proposed to be used' basis. The said application is still pending consideration before the Registrar of Trade Marks.

11. It is claimed that the plaintiff launched its medicinal goods 'SITARED' on 29.06.2022, after the expiry of the patent protection granted to the anti-diabetic drug 'Sitagliptin' (though in the 'List of Dates and Events and Synopsis' filed with the plaint, it is mentioned that the said product was launched in July, 2022). The said medicinal goods is used to lower blood sugar in patients with high-blood sugar levels and is a Schedule-G prescription drug. The plaintiff asserts that it has been using the mark 'SITARED' along with other combinations including 'SITARED-M' and 'SITARED-XR'.

Neutral Citation Number: 2022/DHC/005142

12. The plaintiff alleges that it came across the defendants' medicinal goods under the impugned mark 'SITARA-D' being sold in the markets of Delhi sometime in the first week of September, 2022. The plaintiff claims that the adoption of the mark 'SITARA-D', of the defendants is similar to the registered trade mark of the plaintiff being 'SETARET'. The defendants' are, therefore, guilty of infringement and passing off and, are liable to be restrained from using the mark 'SITARA-D' for their medicinal goods.

SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE PLAINTIFF

13. The learned counsel for the plaintiff submits that the plaintiff is not only the prior adopter of its mark but is also the registered proprietor thereof. He further submits that the test of deception in a pharmaceutical product is more stringent, and any possibility of confusion is to be avoided as it can lead to disastrous consequences. In support of this assertion, he places reliance on the judgment of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73. SUBMISSIONS ON BEHALF OF THE LEARNED COUNSEL FOR THE DEFENDANTS

14. On the other hand, the learned counsel for the defendants submits that, admittedly, the registered mark of the plaintiff, that is, 'SETARET' has not been used by the plaintiff or its predecessor-in-interest since its registration. The said mark is, therefore, liable to be removed from the Signature Not Verified Digitally Signed By:RENUKA NEGI Signing Date:28.11.2022 17:11:34 CS(COMM) 688/2022 Page 4 of 8 Neutral Citation Number: 2022/DHC/005142 Register of the Trade Mark. In any case, no relief can be prayed for on the basis of said registration.

15. She submits that the defendants would be the prior user of the said mark inasmuch as the drug approval for the medicine bearing the said mark was granted to the defendants on 04.02.2022, that is, prior to the use of the mark by the plaintiff.

16. As far as the claim of passing off is concerned, she submits that the two marks are entirely different. She submits that both the medicinal goods, that is, of the plaintiff and of the defendants, contain the anti- diabetic drug 'Sitagliptin'. The first part of the drug, that is, 'Sita' used both in the marks of the plaintiff and the defendants are, therefore, derived from the name of the drug itself. The plaintiff uses the suffix '-D' in its mark because the defendants' product also has the drug 'Dapagliflozin'. She submits that the mark of the defendants is based on the composition of its drug. She submits that there is no possibility of any confusion being caused by the use of said mark by the defendants.

17. She further submits that the packaging of the medicinal goods of the plaintiff and the defendants are entirely different and, therefore, even with this added material, there is no possibility of any confusion being caused.

ANALYSIS AND FINDINGS

18. I have considered the submissions made by the learned counsels of the parties.

19. The plaintiff, though in the plaint has asserted that it launched its product in July 2022, has filed an invoice which is dated 29.06.2022 for the medicinal goods bearing the mark 'SITARED'. On the other hand, Signature Not Verified Digitally Signed By:RENUKA NEGI Signing Date:28.11.2022 17:11:34 CS(COMM) 688/2022 Page 5 of 8 Neutral Citation Number: 2022/DHC/005142 the defendants' first invoice is dated 06.07.2022 for its medicinal goods bearing the mark 'SITARA' and is dated 20.07.2022 for its medicinal goods bearing the impugned mark 'SITARA-D'. Therefore, the parties appear to have almost simultaneously and concurrently launched their respective medicinal goods. The defendants have also placed on record an Approval Letter dated 04.02.2022 issued by the Department of Health and Family Welfare, Government of Sikkim, granting its approval to the manufacture of the drugs, including in the various 'SITARA' formative marks, in favour of the defendants.

20. Admittedly, the medicinal goods of both the plaintiff and the defendants contain the drug 'Sitagliptin' and therefore, the initial part of their mark, that is, 'Sita' is based on this drug. The use of suffix '-D' is also explained by the defendant no.1 on account of the medicinal goods of the defendant containing the ingredient 'Dapagliflozin'. As held by the Division Bench of this Court in Sun Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd. & Anr., 2022 SCC OnLine Del 2580, no party can monopolize the use of the part of the name of a salt/ingredient of the drug.

21. On the question of deceptive similarity of the two marks in question, in my prima facie opinion, the two marks do not appear to be phonetically or visually similar to each other. In fact, as far as the use of the mark 'SITARA' by the defendants is concerned, admittedly the plaintiff has made no claim against the same in the plaint. The same therefore, in fact, need not detain this Court any further.

Neutral Citation Number: 2022/DHC/005142

22. Compared as a whole, prima facie, the impugned marks 'SITARED' and 'SITARA-D', therefore, cannot be held to be deceptively similar to each other, either phonetically or visually.

23. The packaging of the two products is also different, and is reproduced herein below:

Plaintiff's Packaging Defendants' Packaging

24. I am cognizant of the word of caution issued by the Supreme Court in Cadila Health Care Ltd. (supra). In my opinion, as the two marks in question are not phonetically or visually similar; the subject-marks are based on their active ingredients, which is generic and cannot be appropriated by any party; the packing of the medicines is different, prima facie, a case of passing off is not made out by the plaintiff.

25. As far as the mark 'SITARE' of the defendants is concerned, admittedly the defendants have not launched its medicinal goods bearing the said mark. This again need not, therefore, detain this Court any further, except directing the defendants that in case the defendants wish Signature Not Verified Digitally Signed By:RENUKA NEGI Signing Date:28.11.2022 17:11:34 CS(COMM) 688/2022 Page 7 of 8 Neutral Citation Number: 2022/DHC/005142 to launch their product with the said mark, they shall seek prior approval from this Court.

26. As far as the mark 'SETARET' of the plaintiff is concerned, admittedly, the same has not been used by the plaintiff or its predecessor- in-interest till date in spite of its registration. However, the plaintiff maintains that the said registration of the said mark would still entitle the plaintiff to seek relief against the infringement thereof. I am unable to agree with the learned counsel for the plaintiff. The plaintiff, having not used the mark in spite of its registration and though such registration was applied for more than twenty-four years ago, on 24.06.1998, cannot claim an ad-interim order of injunction based only on such registration. RELIEF

27. In view of the above, the present application, so far as it prays for an ad-interim order of injunction against the use of the mark 'SITARA- D' by the defendants, is dismissed.

28. It is clarified that the above observations are merely prima facie in nature and shall not bind or influence the Court at the final adjudication of the Suit.

29. The application is disposed of in the above terms.

NAVIN CHAWLA, J NOVEMBER 22, 2022/Arya/AB Signature Not Verified Digitally Signed By:RENUKA NEGI Signing Date:28.11.2022 17:11:34 CS(COMM) 688/2022 Page 8 of 8