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IN THE HIGH COURT OF DELHI AT NEW DELHI
Jyoti Singh, J.
Sun Pharmaceutical Industries Limited - Appellant
Versus
Kinetic Lifescience (opc) P. Limited - Respondent
CS (Comm) 241 of 2021 and I.A. 6745 of 2021
Decided On : 12-04-2022
The Court held that the impugned marks EYESITE/Fig.2 and KL (Label) are visually, structurally, and phonetically similar to the Plaintiffs' registered trademark SUN (Device) and ISITE/I-SITE, I-SITE formative trademarks and thus, their use by the Defendants will cause confusion and deception, thereby constituting infringement of the Plaintiffs' registered trademarks under Section 29 of the Trade Marks Act.
Fact of the Case:
Plaintiffs are a company incorporated under the Companies Act, 2013, and Plaintiff No.2 company is a wholly-owned subsidiary of Plaintiff No.1. Plaintiffs have been vigilant and zealous in protecting their intellectual property rights and have been taking actions from time to time against third parties from using deceptively similar marks. In the second week of May, 2021, Plaintiffs learnt about the Defendants' medicinal product/health supplement under the impugned mark 'EYESITE', which is deceptively similar to Plaintiffs' trademark ISITE/I-SITE and is being used for identical goods, i.e. health supplements. It is further alleged that Defendants are also using the impugned mark 'KL (Label)' for their products. Plaintiffs have filed a suit for permanent injunction, damages, and delivery up of the infringing material.
Finding of the Court:
The Court found that the impugned marks EYESITE/Fig.2 and KL (Label) are visually, structurally, and phonetically similar to the Plaintiffs' registered trademark SUN (Device) and ISITE/I-SITE, I-SITE formative trademarks and thus, their use by the Defendants will cause confusion and deception, thereby constituting infringement of the Plaintiffs' registered trademarks under Section 29 of the Trade Marks Act.
Issues: Whether the impugned marks EYESITE/Fig.2 and KL (Label) are visually, structurally, and phonetically similar to the Plaintiffs' registered trademark SUN (Device) and ISITE/I-SITE, I-SITE formative trademarks?
Ratio Decidendi: The Court held that the impugned marks EYESITE/Fig.2 and KL (Label) are visually, structurally, and phonetically similar to the Plaintiffs' registered trademark SUN (Device) and ISITE/I-SITE, I-SITE formative trademarks and thus, their use by the Defendants will cause confusion and deception, thereby constituting infringement of the Plaintiffs' registered trademarks under Section 29 of the Trade Marks Act. The Court relied on several judgments of the Supreme Court and various High Courts to arrive at this conclusion.
Final Decision: The Court decreed the suit partly in favor of the Plaintiffs and against the Defendants. Defendants, their Directors, partners or proprietors, as the case may be, their assignees, licensees, franchises, distributors, dealers, stockists, retailers, servants, and agents are permanently restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in health EYESITE supplements under the impugned marks EYESITE/Fig.2 and/or any other trademark deceptively similar to the Plaintiffs' trademark ISITE/I-SITE and its formative trademarks.
JUDGMENT
1. This is a suit for permanent injunction, damages and delivery up of the infringing material, filed by the Plaintiffs. Plaintiff No. 1 is a company incorporated under the Companies Act, 2013 and Plaintiff No.2 company is a wholly owned subsidiary of Plaintiff No.1.
2. It is averred in the plaint that Plaintiff No.1 started the business of marketing pharma products as a proprietary firm in the year 1978. In 1982, a partnership firm under the name and style of M/s. Sun Pharmaceutical Industries was formed to manufacture, deal and trade into pharmaceutical goods, preparations and allied goods & services. On 01.03.1993, the partnership firm was converted into a Joint Stock Company and incorporated under the Companies Act, 1956.
3. It is averred that the Plaintiffs are amongst the largest and highly reputed pharmaceutical companies in India, which manufacture and market drugs and formulations thereof in India and supply them to more than 150 countries across the world under their extensive range of well-known and distinctive trademarks/brand names. Plaintiffs are involved in the manufacturing of speciality pharmaceuticals and active pharmaceutical ingredients since the year 1983, with a consolidated annual turnover of Rs. 27,856.6 Crores, globally. As per the plaint, Plaintiffs are ranked No.1 pharma company in India, in a total of 11 specialities and world's fifth largest speciality generic pharmaceutical company.
4. It is pleaded that Plaintiffs have 45 manufacturing sites in 6 continents and 10 world class research centres with over 30,000 strong multi-cultural work force from over 50 different nationalities. The manufacturing units are located in several countries such as Bangladesh, Canada, Israel, etc.
5. It is averred that in 1993, Plaintiff No.1 conceived a logo, which is a circular device consisting of interlocking of four spheres, commonly known as SUN (Device) and has been using the logo either independently or in conjunction with house mark SUN by the Plaintiffs, as under:-
6. Plaintiffs aver that the trademark is not only the corporate logo but is also used as a trade name/mark by the Plaintiffs, which appears on all their products, packaging, promotional materials, stationery and even on the office buildings. The said mark is also prominently displayed on their website www. sunpharma. com.
7. It is stated that in order to protect its right in the SUN (Device) mark, Plaintiff No.1 obtained trademark registrations in India as well as in a few foreign jurisdictions, the details whereof are mentioned in the plaint. The registrations are valid and subsisting.
8. Plaintiffs plead that their SUN (Device)/logo consisting of four spheres interlocked/
is an 'original artistic work' registered in India under No. A-121881/2017 and A-120728/2017 in the name of Plaintiff No.1, within the meaning of Section 2(c) of the Copyright Act, 1957 (hereinafter referred to as the 'Copyright Act') and the copyright subsists in the said artistic work under Section 13(1) of the Copyright Act. Plaintiff No.1 is the first owner of Copyright in the SUN (Device) having exclusive right to use the same under Section 14 of the Copyright Act.
9. It is further averred that the mark ISITE/I-SITE was coined by Plaintiff No.l's predecessor in the year 1997 and has been in use ever since. Plaintiffs' product under the said mark is a well-balanced combination of vital vitamins and minerals in appropriate concentrations, which have been formulated to help in formation of blood cells, improving vision, treating acne, regulating blood pressure and treating certain skin disorders.
10. In order to obtain statutory protection, Plaintiff No.1's predecessor obtained registrations of the ISITE trademark in Class 5 for different goods such as medicinal, pharmaceutical and veterinary preparations and substances, dental preparations, dietary preparations, health and
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