Delhi High Court Rejects Interlocutory Injunction Claim Filed By Sun Pharma Accusing Trademark Infringement

Sun Pharma Laboratories Limited, the plaintiff in this case, a well-known pharmaceutical company in India, the fourth largest Generic Pharmaceutical Company in the world, with a global turnover of ? 33,139 crores, brings a trademark infringement claim over pantoprazole, a well-known anti-acidity drug, under the brand name PANTOCID, in various variants, stand-alone as well as in combination with other medications.

The plaintiff claims that the trademark PANTOCID was coined by the plaintiff's predecessor in 1998 and has been used since 1999.?

The trademark infringement accusation was brought before the Delhi High Court against Finecure Pharmaceutical Ltd. for its product PANTOPACID, also containing pantoprazole, which the plaintiff got to know about in April 2023.

The plaintiff alleges that the defendants' mark PANTOPACID is merely a convenient corruption of the plaintiff's mark PANTOCID and is deceptively similar to it, the only difference being the intervening "PA" between "PANTO" and "CID". The defendants, it is alleged, have created a deliberately confusing mark for their product so that an unwary customer would end up mistaking the defendants' product for the plaintiff's. The mark PANTOPACID is alleged to be visually, phonetically and structurally similar to PANTOCID. Thus, alleges the plaintiff, the defendants have, by use of the mark PANTOPACID, infringed the plaintiff's registered PANTOCID mark.

The defendants' argued that the prefix "PANTO" is common to the trade is, it is submitted, misguided, as such a plea cannot be raised merely by referring to various registered marks which start with "PANTO". Besides, the plaintiff could not be expected to pursue every infringer.

The question arises here if the trademark infringement, as it is claimed, has occurred or not.

Justice C Hari Shankar said that in?prima facie?view, be little doubt about the fact that PANTOPACID infringes PANTOCID within the meaning of Section 29(2)(b) of the Trade Marks Act (Section explaining the concept of infringement).

There is a marked phonetic similarity between PANTOPACID and PANTOCID. A confusingly or deceptively similar to an existing registered trademark continues to be so merely because the marks are used for prescription drugs. To err is human, and the dispensing chemist, if not the prescribing doctor, is as apt to err as the rest of us, even if to a lesser degree.

According to Mr Sai Deepak, Counsel for Sun Pharma, the fact that "PANTO" is the prefix, or first half, of PANTOCID impairs the plaintiff's entitlement to allege exclusivity regarding "PANTO" in two ways. First, the prefix "PANTO" cannot serve as the foundation for a valid claim to exclusivity because it has not been registered as a separate trademark in the plaintiff's favour. The second is that "PANTO" is a widely used prefix in the industry.

As a result, PANTOCID and PANTOPACID appear to infringe on PANTOCID's rights due to their structure, pronunciation, and visual appearance similarity.

The main concern of the whole matter is whether the plaintiff is entitled to any relief against the defendants.?

The plaintiff, despite having a solid reason supporting the infringement claim, the fact of being aware of the use by the defendants of the impugned PANTOPACID mark since 2009, taken no steps till 2023 to injunct such use, during which time the defendants have also grown into a formidable market player, the balance of convenience would, in my opinion, clearly not justify bringing the use, by the defendants, of the PANTOPACID mark to a complete halt, at this late stage.

?The plaintiff has not succeeded in establishing its entitlement to relief against the infringement, by the defendants, of the plaintiff's PANTOCID mark, by use of the mark PANTOPACID.?

However, the defendants are required to keep a separate record of their profits and returns from using the mark PANTOPACID. They must also include the sums they have made since the mark's creation by using it on an affidavit. The defendants must submit periodic statements, on affidavit, detailing their returns from sales of goods bearing the contested PANTOPACID mark or any of its variations every three months.

Case: Sun Pharma Laboratories Ltd. vs Finecure Pharmaceutical Ltd. & Ors?

Pronounced on 16th August 2023