Delhi High Court - Orders
Synopsis) Sun Pharma Laboratories Ltd vs Finecure Pharmaceuticals Ltd. & Ors on 6 December, 2023
Author: Yashwant Varma
Bench: Yashwant Varma
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ FAO(OS) (COMM) 200/2023 & CM APPL. 47338/2023
(Stay), CM APPL. 47339/2023 (Addl. Document), CM APPL.
47340/2023 (Permission to filed Longer List Of Dates &
Synopsis)
SUN PHARMA LABORATORIES LTD. ..... Appellant
Through: Mr. Akhil Sibal, Sr. Adv. with
Mr. Sachin Gupta, Ms. Asavani
Jain, Mr. Rohit Pradhan & Ms.
Ashna Narang, Advs.
versus
FINECURE PHARMACEUTICALS LTD.
& ORS. ..... Respondents
Through: Mr. J. Sai Deepak, Ms. Tanvi
Bhatnagar, Mrs. Bindra Rana,
Ms. Shilpi Sinha, Ms. Tanya
Sharma & Mr. Abhishek
Avadhani, Advs.
CORAM:
HON'BLE MR. JUSTICE YASHWANT VARMA
HON'BLE MR. JUSTICE RAVINDER DUDEJA
ORDER
% 06.12.2023
1. Notice. Since the respondents are duly represented, let a reply, if so chosen and advised, be filed within a period of three weeks from today. The appellant shall have a week thereafter to file a rejoinder affidavit. Let the appeal be called again on 19.02.2024.
2. Prima facie we find ourselves unable to sustain the impugned order and thus find that the appeal would merit further consideration bearing in mind the following facts.
This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:34:23
3. Undisputedly, and as would be manifest from the ultimate conclusions which have come to be recorded by the learned Judge and which stand reflected in paragraph 61.6 of the impugned order, the learned Judge had found that both "PANTOCID" [the mark of the appellant] and "PANTOPACID" [of the defendants] were structurally, phonetically and visually similar, and thus prima facie the defendants‟ product being infringing. This, in our considered opinion, was a matter of significance especially since the competing products were drugs. We bear in consideration the stringent standards that we adopt in such cases bearing in mind the principles laid down by the Supreme Court in Cadilla Health Care Ltd. Vs. Cadilla Pharmaceuticals Ltd. [(2001) 5 SCC 73].
4. However, the injunction ultimately appears to have been refused by the learned Judge upon considering the challenge raised to the registration obtained by the appellant and doubting the validity of an order dated 27 December 2010 passed by the Sr. Examiner which had in terms thereof disposed of certain opposition proceedings initiated by Takeda. It becomes pertinent to note that the appellant had asserted being in the market since 1998 and the aforesaid order of the Sr. Examiner had neither been questioned nor assailed by the opponent. We also bear in consideration the presumption of validity which applies by virtue of Section 31(1) of the Trade Marks Act, 1999 ["TM Act"] and thus the same being liable to be disregarded only in the face of a substantial challenge being mounted. On a prima facie evaluation, we find ourselves unconvinced that the respondent had met that test.
5. We also take note of the contention of the appellant who had This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:34:23 claimed PANTOCID to be a well-known mark as contemplated under Section 2(zg) of the TM Act, the significant sales and turnover of the appellant from the product in question as well as its export. Of equal significance were the string of injunctions granted by various courts including this High Court as detailed in Para 19 of the plaint.
6. The learned Judge while refusing to frame an injunction despite having answered the issue of infringement in favour of the appellant additionally appears to have been swayed by an asserted suppression of facts by the plaintiff-appellant as would be evident from the following findings:
"63.3 Equally untrue, prima facie, is the statement, in para 32 of the plaint, that the plaintiff came to know of the defendants‟ PANTOPACID mark in the third week of April 2023, as, in fact, the plaintiff had not only opposed the defendants‟ application for registration of PANTOPACID on 28 October 2010, but had also issued a legal notice to the defendants on 16 September 2010, calling on the defendants to withdraw their application. On this aspect being pointed out during arguments in Court on 8 May 2023, the plaintiff, in their application dated 12 May 2023, sought to contend that reference to the legal notice dated 16 September 2010 was inadvertently omitted while drafting the plaint. This assertion cannot be accepted, as the plaintiff does not omit to mention that the Defendant 3 filed an application for registration of PANTOPACID on 13 April 2009, and was claiming user of the mark from 15 June 2007. I am unable to accept that the plaintiff selectively omitted, by inadvertence, to place the legal notice on record. The opposition, by the plaintiff, to the application of the Defendant 3 for registration of the PANTOPACID mark, and the legal notice dated 16 September 2010 are pivotal, as they indicate that the suit came to be filed 13 years the arising of the cause of action in favour of the plaintiff, contrary to what para 32 of the plaint seeks to portray. It is no answer for the plaintiff to contend that, in certain other documents which have been placed on record, such as the evidentiary affidavit filed by the Defendant 3 in support of its application, there is a reference to the legal notice dated 16 September 2010 issued by the plaintiff."
7. We, however, find ourselves unable to countenance the view so expressed in this respect having regard to the stand which was taken This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:34:24 before the learned Judge and finds notice in the impugned order itself:
"3. The plaintiff claims to have come across the defendants‟ product PANTOPACID, also containing pantoprazole, in April 2023. The averment in this regard, as contained in the plaint, reads thus:
"KNOWLEDGE
21. The Plaintiff in the 3rd week of April 2023 came across the Defendant‟s medicine under the mark PANTOPACID SR being sold at Delhi and on third party e-commerce interactive websites, which is deceptively similar to the plaintiff‟s medicine under the trademark PANTOCID and PANTOCID DSR.
Elsewhere in the plaint, however, the plaintiff avers:
"It may be noted that the Defendant No. 3 has filed one application for registration of the impugned trademark on PANTOPACID (device) under application no. 1805856 dated 13.04.2009 in class 5 for goods, namely "pharmaceutical and medical preparation included in class-05", claiming use since 15.06.2007. The said application is currently opposed. The application for registration was opposed by the Plaintiff vide opposition no. 770019 dated 28.10.2010. The Defendant No.3 filed its counter-statement on 06.06.2011 claiming continuous use since their date of adoption. The plaintiff filed its affidavit in evidence on 16.01.2012 along with documentary evidence in support of opposition specifically denying the Defendants alleged claim of use and further calling upon the to prove use by way of clear documentary evidence. The Defendant failed to file any evidence. The said opposition proceedings is currently pending and in all probability will be decided in favour of the Plaintiff and against the Defendant in view of the fact that the defendant has failed to prove any use."
8. The above disclosures, in our prima facie view, would have been sufficient to answer the argument of suppression of facts. While Mr. Sai Deepak urged us to consider that even the aforesaid assertions cannot be read as meeting the allegation of a failure to disclose the contents of the notice dated 16 September 2010, on an overall consideration of the disclosures as made, we find ourselves, at this stage and on a preliminary evaluation of the questions that are raised, This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:34:24 unable to concur with the view as taken.
9. The appeal would merit further consideration.
YASHWANT VARMA, J.
RAVINDER DUDEJA, J.
DECEMBER 06, 2023/kk This is a digitally signed order.
The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 08/12/2023 at 00:34:24