Back
2020 Supreme(Del) 1220
IN THE HIGH COURT OF DELHI AT NEW DELHI
Anu Malhotra, J.
Sun Pharma Laboratories Ltd - Appellant
Versus
Intas Pharmaceuticals Ltd - Respondent
First Appeal From Order No. 447 of 2018
Decided On : 09-01-2020
Subject
Intellectual Property - Trademark Infringement
Act Referred
FOOD SAFETY AND STANDARDS ACT: S.22
TRADEMARK ACT: S.28(1), S.29
Headnote
(B) The court held that the similarity between the marks does not create a likelihood of confusion among specialized medical professionals responsible for administering the drugs - The drugs are administered under careful supervision and cannot be self-administered, minimizing the chance of consumer confusion. (Paras 11, 12, 92)
(C) The learned trial court also noted that the plaintiff failed to prove its claim of reputation and goodwill in relation to its trademark 'BEVETEX', making the case for an injunction weak. (Paras 6.1, 90)
(D) The appeal was consequently dismissed, upholding the trial court's judgment. (
Result: Appeal dismissed.)
Sachin Gupta, Advocate, Jasleen Kaur, Advocate, Jyoti Mehra, Advocate, Anil Sapra, Advocate, Bitika Sharma, Advocate, Kapil Midha, Advocate, Lakshay Kaushik, Advocate, Sarthak Katyal, Advocate, Akanksha Choudhary, Advocate
| Table of Content |
|---|
| 1. trademark registration and proprietary rights (Para 1 , 2 , 3 , 6) |
| 2. own intellectual property rights and statutory protections (Para 4 , 5 , 18) |
| 3. judicial evaluation of trademark similarity tests (Para 9 , 24 , 26) |
| 4. likelihood of confusion in trademark usage (Para 10 , 29 , 30) |
| 5. public interest in preventing confusion in medications (Para 11 , 12 , 19 , 20) |
| 6. evidence needed to establish trademark confusion (Para 28 , 34 , 36) |
| 7. legal standards for confusion among medicinal products (Para 31 , 32 , 33 , 35) |
JUDGMENT
Anu Malhotra, J. - Vide the present appeal FAO 447/2018 under order XLIII Rule 1(r) read with Sections 104 and 151 of the Code of Civil Procedure, 1908, the appellant assails the impugned order dated 17.09.2018 of the learned ADJ-05 (SE), Saket Court, New Delhi in TM No. 146/2017 vide which the application under Order 39 Rule 1 & 2 of the Code of Civil Procedure, 1908 filed the appellant i.e. the plaintiff of the said suit seeking interdiction against the defendant of the suit i.e. the respondent herein qua use of trademark ''BEVATAS'' on the ground of similarity / deceptive similarity with its trademark ''BEVETEX'' was dismissed.
2. The suit filed by the appellant herein as the plaintiff of the TM No. 146/2017 before the learned Trial Court is one for permanent injunction, restraining infringement of trade mark, passing off, unfair competition, rendition of accounts of profits/ damages, delivery up, etc., which suit is in relation to the same trademark of the appellant herein bearing registration no. 410744 dated 16.09.1983 being allegedly infringed by the user of the impugned trademark ''BEVATAS'' by the respondent herein.
3. The appellant herein states that it is a well known medicinal pharmaceutical company in India and is now ranked as the no.1 pharma company in India in a total of 11 specialties and is the world''s 4th largest generic pharmaceutical company and provides the best of class products across 150 countries worldwide and its manufacturing operations are focussed on producing generics, branded generics, specially, over-the-counter (OTC) products anti-retrovirals (ARVs), Active Pharmaceutical Ingredients (APIs) and intermediates in the full range of dosage forms, including tablets, capsules, injectables, ointments, creams and liquids etc.
4. The appellant herein states that it is the proprietor and owner of the intellectual proprietary rights of the Sun Pharmaceutical Industries Limited for the domestic formulation undertaking activities under the Scheme of Arrangement between Sun Pharmaceutical Industries Limited and itself, which was approved and sanctioned by the Hon''ble High Court of Gujarat and Hon''ble High Court of Judicature at Bombay both vide order dated 03.05.2013 in Company Petition No. 31 of 2013 and Company Scheme Petition No. 283 of 2013.
5. The appellant submits that its predecessor Sun Pharmaceutical Industries Limited in the year 1983 invented a trademark ''BEVETEX'' and the same is registered vide registration no. 410744 dated 16.09.1983, which trademark is registered for goods for Medicinal and Pharmaceutical preparations for human use and has been renewed, is valid and subsisting and has been entered in the Trade Mark Register.
6. The appellant submits that this medicine of the appellant under the name of ''BEVETEX'' contains Molecule/Salt PACLITAXEL and is a scheduled drug used for treatment of Breast Cancer, Non-Small Cell Lung cancer and Pancreatic cancer. The appellant submits that on account of its registration qua the registered trademark ''BEVETEX'', the appellant herein has a statutory right to the exclusive use of its registered trademark and the use of the same or a deceptive similar trade mark by an unauthorized person or trader in relation to the simila
