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2019 Supreme(Del) 1454
IN THE HIGH COURT OF DELHI
Jayant Nath, J.
Sun Pharma Laboratories Ltd. - Appellant
Vs.
Intas Pharmaceuticals Limited - Respondent
Civil Suit (Comm) No. 1206 of 2016
Decided On : 15-05-2019
Chander M Lall, Adv., Rishi Agrawala, Adv., Pranjit Bhattacharya, Adv., Nancy Roy, Adv., Rupin, Adv., Hemant Singh, Adv., Mamta Jha, Adv., Waseem Shuaib Ahmed, Adv., Saumya Gupta, Adv.
The main legal point established in the judgment is the test of deceptive similarity in trademark infringement cases, as well as the importance of timely approach to the court and the balance of convenience in granting interim injunctions.
Headnote:
DECITEX - Trademark Infringement - Trade Mark Act - Section 2(1)(zg), Order 39 Rules 1 and 2 CPC - [Summary of Acts and Sections: The court discussed the Trade Mark Act, specifically Section 2(1)(zg), and the Civil Procedure Code, Order 39 Rules 1 and 2. The court referred to the judgments of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., Neon Laboratories Ltd. v. Medical Technologies Ltd., and Sun Pharma Laboratories Ltd. vs. Lupin Ltd. & Anr. to interpret the legal provisions and their influence on the decision.]
Fact of the Case:
The plaintiff sought an interim injunction to restrain the defendant from using a trade mark deceptively similar to the plaintiff's registered trade mark DECITEX. The plaintiff alleged that the defendant's trade mark DECITAS was deceptively similar and amounted to unfair trade practice and unfair competition.
Finding of the Court:
The court found that the defendant's trade mark DECITAS was prima facie structurally and phonetically identical and similar to the plaintiff's trade mark DECITEX. The court held that the plaintiff had statutory and common law rights in the registered trade mark DECITEX and granted an interim injunction in favor of the plaintiff.
Issues: The issues included the similarity between the trade marks DECITEX and DECITAS, the alleged unfair trade practice and unfair competition by the defendant, and the territorial jurisdiction of the court.
Ratio Decidendi: The court applied the test of deceptive similarity and referred to relevant legal principles from judgments such as Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. and Neon Laboratories Limited vs. Medical Technologies Limited to determine the deceptive similarity of the trade marks. The court also considered the balance of convenience and the plaintiff's timely approach to the court.
Final Decision: The court granted an interim injunction restraining the defendant from using the trade mark DECITAS or any deceptively similar mark.
JUDGMENT :
Jayant Nath, J.
Ia. No.19122/2014
1. This application is filed under Order 39 Rules 1 and 2 CPC seeking an interim injunction to restrain the defendant, its directors, assignees, etc. from manufacturing, selling, offering for sale, advertising or dealing in medicinal preparations under the impugned trade mark "DECITAS" or any other mark which is structurally or deceptively similar to the plaintiff's registered trade mark "DECITEX" registered under Class 5 or any act of passing off of the defendant's business or goods.
2. The accompanying suit is filed seeking a decree of permanent injunction, an order for delivery of the infringing goods and a decree for damages and costs.
3. The case of the plaintiff is that the plaintiff is a Company registered under the Companies Act, 2013 and is wholly owned subsidiary of Sun Pharmaceutical Industries Ltd. which is ranked as one of the top five pharma companies in India which was set up in India in 1983. It is stated that one of the preparations manufactured by the plaintiff, is under the trade mark DECITEX which is a coined mark. The said product is used for treating cancer/chemotherapy. It is stated that the product DECITEX contains a salt/molecule Decitabine. It is further pleaded that the trade mark DECITEX was coined by the plaintiff's predecessor as trade mark in July, 2011 and enjoys inherent distinctiveness indicating trade origin and source of the goods. The said trade mark has been used extensively and commercially by the plaintiff in the course of medicinal preparations since December, 2011. It has acquired formidable goodwill and reputation as a badge of quality for cancer and originating from the plaintiff. The trade mark DECITEX was registered in India under Class 5 on 15.07.2011. The name of the subsequent proprietor was also duly registered by an application dated 03.09.2013 with the Trade Mark Registry. Hence, the plaintiff has statutory rights to the exclusive use of its registered trade mark DECITEX. It is stated that the goodwill and reputation of the trade mark DECITEX is evident from the statement of annual accounts and promotional expenditure. In 2013-14 sales figures were Rs. 382.19 lakhs and the promotional expenses were approximately Rs. 19.11 lakhs. It is further stated that the mark DECITEX is a well known mark as per the provisions of Section 2(1) (zg) of the Trade Mark Act.
4. The defendant is also a Company incorporated under the Companies Act, 2013 and is engaged in the business of manufacturing and marketing pharmaceutical preparations. It is stated that in the second week of September 2014, the plaintiff through its field force came across defendant's product under the impugned trade mark DECITAS which is deceptively similar to the plaintiff's trade mark DECITEX. Further the defendant's drug is used for treatment of the same ailment, namely, cancer.
5. It is stated that the plaintiff conducted a search of the defendant's impugned trade mark with the Trade Mark Registry and found that an application for the mark DECITAS dated 19.04.2014 was applied by the defendant as "proposed to be used". This application has yet to be advertised. It is vehemently stated that the defendant's trade mark DECITAS is visually, structurally, phonetically and deceptively similar to the plaintiff's trade mark DECITEX.
6. It is stated that the defendant has malafidely adopted the trade mark DECITAS in April 2014 for the sale of its product which amounts to unfair trade practice and unfair competition. It is pleaded that the conduct of the defendant is unethical, unfair, lacks bona fide and is unlawful.
7. The defendant has filed its written statement and the reply to the interim application. It has been pleaded in the written statement:-
(i) That DECITAS and DECITEX are both based on the drug/molecule Decitabine. The prefix "DECI" in the trade name of the plaintiff and defendant represents the molecule or the active ingredient present in the drugs manufactured by both the partie
