The court emphasized the importance of prior usage, the generic nature of active ingredients, and the settled principle of law regulating the grant or refusal of interlocutory injunctions in trademark disputes.

JUDGMENT

Manmohan, J.

Caveat No.441/2022

Since appearance has been entered on behalf of the respondents, present caveat stands discharged.

C.M.Nos.53627-53628/2022

Exemption allowed, subject to all just exceptions.

Accordingly, the applications stand disposed of.

FAO(OS)(COMM) No.322/2022 & C.M.No.53629/2022

1. Present appeal has been filed challenging the order dated 22nd November, 2022 passed by the learned Single Judge of this court in CS(COMM) 688/2022 whereby Appellant-Plaintiff's application under Order XXXIX Rules 1 & 2, CPC was dismissed on the ground that the two marks in question are not phonetically or visually similar.

2. Learned counsel for the Appellant-Plaintiff states that the Appellant-Plaintiff and the Respondents-Defendants launched their medicines around the same time i.e. June-July, 2022 after expiry of the patent protection granted to the anti-diabetic drug `Sitagliptin'. He states that the Appellant-Plaintiff's trademark "SITARED" and the Respondents-Defendants' mark "SITARA" are derived from the salt `Sitagliptin' and the registration applications of the marks of both the parties are currently pending registration. He further states that the Respondents-Defendants are using an additional letter `D' as a suffix with its primary mark "SITARA" to indicate the presence of an additional secondary salt `Dapagliflozin' and therefore trading its medicine under the name "SITARA-D".

3. Learned counsel for the Appellant-Plaintiff states that the Respondents-Defendants' mark "SITARA-D" is deceptively similar to two of the Appellant-Plaintiff's trademarks namely "SITARED" (which is not registered) and "SETARET" (which though registered in 1998, yet has not been used by the Appellant-Plaintiff). He states that even though the Respondents-Defendants claim that its mark "SITARA-D" is not deceptively similar to the mark of the Appellant-Plaintiff's by virtue of the hyphen (-) in between its primary mark "SITARA" and the letter `D', yet in light of human error when the impugned mark is written without the hyphen (-), "SITARA-D" would become "SITARAD" which is similar to the Appellant-Plaintiff's marks "SITARED" or "SETARET". He points out that the Appellant-Plaintiff does not have any objection to the use of the Respondents-Defendants' mark "SITARA" and is only opposing the use of the letter `D' as a suffix to the primary mark. He suggests that the Respondents-Defendants instead of using the mark "SITARA-D", should use the mark "SITARA-DAP" and/or "SITARA-DAPA".

4. Learned counsel for the Appellant-Plaintiff submits that the test of deception in a pharmaceutical product is more stringent and any possibility of confusion is to be avoided as it can lead to disastrous consequences. In support of his submission, he relies on the decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.

5. Learned counsel for the Appellant-Plaintiff states that the learned Single Judge erred in holding that the Appellant-Plaintiff cannot claim an ad-interim order of injunction based on its registered trademark "SETARET" as it had never been used by the Appellant-Plaintiff or its predecessor-in-interest. He states that till date, the Appellant-Plaintiff's registration in the mark "SETARET" is valid and subsisting and therefore the Appellant-Plaintiff is a deemed user and entitled to statutory protection and is not required to show use. In support of his submission, he relies on the decision of the Supreme Court in Gujarat Bottling Co. Ltd. v. Coca Cola Co., (1995) 5 SCC 545 and the Bombay High Court in Wockhardt Ltd. vs Eden Healthcare Pvt. Ltd., 2014 SCC OnLine Bom 163.

6. Per contra, learned counsel for the Respondents-Defendants, who appears on advance notice, states that the Respondents-Defendants are the prior adopter of the mark "SITARA". In support of her contention, she relies upon the letter of Drug Approval dated 04th February, 2022. She states that "SITARA-D" is the natural progression