JUDGMENT

I.A. 9647/2022

1. This application, under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter referred to as 'the CPC'), has been filed by the plaintiff praying for an order of a temporary injunction restraining the defendants, their proprietors, principal officers, directors, servants, representatives and agents or any of them, from manufacturing, marketing or selling pharmaceutical and medicinal preparations under the mark ZOYPOD or any deceptively similar variant of the plaintiff's registered trademark ZIPOD either as a standalone mark or as a prefix mark or in any manner whatsoever amounting to an infringement of the plaintiff's registered trademark ZIPOD or passing off their pharmaceutical preparations as those of the plaintiff.

PLAINTIFF'S CASE:

2. It is the case of the plaintiff that the trade mark 'ZIPOD' was conceived by the plaintiff in the year 2004 and has been in use since 2007 in respect of cefpodoxime based antibiotic and antibacterial preparations. The preparation is used to treat conditions like pneumonia, sinusitis, cystitis and ear infections. The said products are available in a dry syrup form, tablet and dispersible tablet. The said products have been a phenomenal success and currently hold a significant market share. The plaintiff is also the registered proprietor thereof under the registration no.1300578 as under:

3. The plaintiff asserts that its net sales and promotional expenses for the brand 'ZIPOD', with its variants since 2007, have increased from Rs.5,58,12,359/- and Rs.36,07,566/- respectively in the year 2007-08 to Rs.16,83,55,600/- from April 2021 till December 2021sells a number of products using the trade mark ZIPOD with suffixes to indicate their potency or their combination, such as ZIPOD 200, ZIPOD 100dt, ZIPOD 100DS, ZIPOD 50DS, ZIPOD 50DT ZIPOD CV 200 and ZIPOD O. The plaintiff asserts that it has been rigorously protecting its rights in the said trade mark and has been granted protection by this Court in other litigations.

4. The plaintiff is aggrieved by the adoption of the mark 'ZOYPOD' by the defendants for the pharmaceutical product containing the active pharmaceutical ingredient Cefpodoxime Proxetil. The plaintiff asserts that the mark is phonetically and conceptually similar to the plaintiff's registered trade mark 'ZIPOD' and the use of the mark 'ZOYPOD', therefore, amounts to infringement and passing off.

5. The plaintiff further asserts that it is only in January 2022 that it gained knowledge of use of the said mark by the defendant no.1, who was selling products under the mark ZOYPOD which was being used as a prefix for a number of its formulations such as ZOYPOD 200, ZOYPOD CV 325, ZOYPOD 100, etc.

6. On conducting a search on the database of the Trade Marks registry, the plaintiff came across the registration of the device markbearing no.3924887 in the name of defendant no.2. The plaintiff, thereafter, not only served a cease-and-desist notice on the defendant no.1, but also filed an application seeking rectification of the Trade Marks Register.

 SUBMISSIONS OF THE DEFENDANTS:

7. On the other hand, it is the case of the learned counsel for the defendants that the term 'POD' is generic in nature and is derived from the common molecular name i.e., Cefpodoxime, which falls in the list of International Nonproprietary Names (INN) and is used to treat bacterial infections. Therefore, no one can claim an exclusive right over the same or over any other mark having 'POD' either as a prefix or suffix. In support, she places reliance on the judgments of this Court in Sun Pharmaceutical Laboratories Ltd. v. Hetero Healthcare Ltd. & Ors., 20