The central legal point established in the judgment is the protection of a trademark based on substantial sales and investment, cancellation of a rival trademark, and the influence of medical prescription on the likelihood of confusion.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present suit has been filed by the Plaintiff - Sun Pharma Laboratories Ltd. seeking protection of its trademark `OXIPLAT', which is used by the Plaintiff for marketing pharmaceutical preparations comprising Oxaliplatin. The case of the Plaintiff is that it is a wholly owned subsidiary of Sun Pharmaceutical Industries Limited, which is one of the top five pharma companies of India and was set up in the year 1983. The Plaintiff is a spin off of the parent company, which is stated to have been set up as a domestic formulation division of the parent company.

3. The mark `OXIPLAT' was coined by the Plaintiff in April, 2001 and has been used for medicinal preparations consisting of Oxaliplatin, which is used in treatment of cancer of colon and rectum. The said drug is said to work by stopping or slowing down the growth of cancer cells. The mark `OXIPLAT' of the Plaintiff is registered and the details of the registration are set out herein below:

4. The sales of the Plaintiff for medicinal formulations using the mark `OXIPLAT' have been substantial and at the time of filing of the suit, the sales turnover was aggregating to approximately Rs. 26.5 crore. Substantive investment has also been made in the form of advertising and promotional expenses for the mark `OXIPLAT', of approximately Rs.20 lakhs for the financial year 2013-14 and aggregating to approximately Rs. 1.3 crore.

5. The Plaintiff acquired knowledge of the Defendants' mark `SOXPLAT' in the first week of October, 2014, through field force/market analysis, and also found that the trademark of the Defendants for the mark `SOXPLAT' bearing no.1550804 dated 18th April, 2007. The same was filed by the Defendants on a proposed to be used basis and was granted registration. The present suit then came to be filed by the Plaintiff seeking permanent injunction of the mark `SOXPLAT'.

6. Vide order dated 7th February, 2017, summons were issued in the suit and thereafter, the interim application was rejected by the Court. The same was also appealed to the ld. Division Bench, which was also rejected. The observations of the ld. Division Bench are set out below:

"9. The drug in question is a anti-cancer drug. It is obviously sold on a prescription of a doctor. We doubt whether a chemist would be confused with reference to the phonetics of `SOXPLAT' and `OXIPLAT'. The argument of the appellant that the letter `I' in the trademark `OXIPLAT' would be silent and thus a person would pronounce the word more akin to `OXPLAT'. And so pronounced, there would be phonetic similarity with `SOXPLAT'.

10. Prima-facie where are of the opinion that a person reading the word `OXIPLAT' would not pronounce it with the letter `I' being silent. In any case, it would be a matter of evidence.

11. For three reasons we affirm the impugned order. Firstly, the competing trademarks are registered. Secondly, the respondent is admittedly in the market since the year 2009. The suit was filed in the year 2014. Thirdly, prima-facie we do not find any phonetic similarity and likelihood of confusion keeping in view that the drug is an anti-cancer drug and is sold on the prescription of a doctor.' The chemist who sells the drug is an educated person and would know the phonetic difference between `SOXPLAT' and `OXIPLAT'."

7. The suit has thereafter remained pending. In the meantime, the Plaintiff sought cancellation of the Defendants' mark and the Defendants sought cancellation of the Plaintiff's registered trademark. The IPAB vide common order dated 18th June, 2020 in Sun Pharma Laboratories Limited and Ors. v. Agila Specialties Private Limited and Ors., MANU/IC/0014/2020, cancel