The main legal point established in the judgment is the assessment of deceptive similarity between trademarks, the consideration of potential consumer confusion and associated risks with public interest, and the interpretation of the description of goods mentioned under Sun Pharma's registration.

JUDGMENT

Sanjeev Narula, J.

I.A. 16736/2022 (under Order XXXIX Rules 1 and 2 r/w Section 151 of CPC, 1908)

Prescribing clarity in a trademark tussle between two pharmaceutical giants vis-a-vis the marks-Istamet and Indamet

1. Sun Pharma Laboratories Ltd. [hereinafter "Sun Pharma"] and Glenmark Pharmaceuticals Ltd. [hereinafter "Glenmark"], the two giants of the pharmaceutical industry in India are contesting their right to use drug names "ISTAMET" and "INDAMET", respectively, which Sun Pharma finds to be deceptively similar and confusing.

PLAINTIFF'S SUBMISSIONS

2. Mr. Sachin Gupta, counsel for Sun Pharma, has presented following facts and submissions:

2.1. Sun Pharma, one of the top pharmaceutical companies in the world, is a wholly-owned subsidiary of Sun Pharmaceutical Industries Ltd. [hereinafter "SPIL"] (formerly a partnership firm, M/s Sun Pharmaceutical Industries), which has been engaged in the pharmaceutical sector since 1978. Sun Pharma markets drugs and formulations in over 150 countries under various brand and trade names, and has 45 manufacturing sites in 6 continents and 10 world class research centers with over 37,000 staff of 50 different nationalities.

2.2. Sun Pharma's manufacturing operations are focused on producing generics, branded generics, specialty, Over-the-Counter [hereinafter "OTC"] products, Anti-Retrovirals (ARVs), Active Pharmaceutical Ingredients [hereinafter "APIs"] and intermediates in the full range of dosage forms, including tablets, capsules, injectables, ointments, creams and liquids.

2.3. In 2010, Sun Pharma's predecessor, Merck Sharp & Dohme Corp. [hereinafter "Merck"],^1[It is a global healthcare company based in the United States of America. The name of Merck Sharp & Dohme Corp. was changed to Merck Sharp & Dohme LLC on 12th April, 2022.^] coined and adopted the trademark (word) "ISTAMET" and applied for registration of the said mark as well as formative marks thereof,, ^2[Trademarks contained at Table-A in this judgment, among other marks.^] over a period of time. The mark "ISTAMET" and said formative marks were assigned from Merck to MSD International GmBH [hereinafter "MSD"] on 01st July, 2022 and further assigned to Sun Pharma with respect to India, by MSD, vide assignment deed dated 06th July, 2022. Sun Pharma has filed an appropriate application to have its name recorded as the subsequent proprietor in the records of the Trade Marks Register for the trademark "ISTAMET XR CP", which is currently pending.

2.4. Merck started using the trademark "ISTAMET" in India, in 2011, through Sun Pharma and SPIL, as its exclusive licensee under the Co-License Agreement dated 01st March, 2011. The medicine sold under the name "ISTAMET" contains the salts, `Metformin Hydrochloride' and `Sitagliptin Phosphate Monohyrdrate', which is used to treat diabetes. The said medicine is sold in the form of tablets, under the extensions ISTAMET, ISTAMET XR, and ISTAMET XR CP, and is a Schedule `G' drug.<sup>3[</sup>Schedule `G' to the Drugs and Cosmetics Act, 1940.^]

2.5. Merck's first application for registration of trademark (word) "ISTAMET" bearing no. 2062554 dated 02nd December, 2010, in Class 5, was opposed by third-party, Grefith Life Sciences P. Ltd on the ground that the said mark is deceptively similar to their registered mark "ESTIMET" under application no. 1894414 dated 10th December, 2009, in Class 5, with user claim of 26th November, 2006. Said opposition proceedings are pending. However, Sun Pharma has not come across any medicine being sold under the mark "ESTIMET" till date and therefore, no action has been taken against the same.

2.6. Merck filed another application for registration of a trademark (device) "[IMG] bearing no. 2722660 dated 22nd April, 2014, in Class 5. In the Examination Report dated 30th September, 2014,^4[Dispatch date 05th January, 2016.^] issued by Registrar of Trade Marks, conflicting marks being "ASTAMET", "INSTAMET", and "ESTIMET" were cited. The said application was refused vide ord