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IN THE HIGH COURT OF DELHI AT NEW DELHI
C. Hari Shankar, J.
Sun Pharma Laboratories Ltd. – Appellant
Versus
Finecure Pharmaceuticals Ltd. & Ors. – Respondents
CS(COMM) 283 of 2023, I.A. 8800 of 2023
Decided On : 16-08-2023
The Court held that the plaintiff's PANTOCID mark was infringed by the defendant's PANTOPACID mark, but the plaintiff was not entitled to an injunction because its registration was invalid due to an earlier application by Takeda for the same mark. The Court also found that the plaintiff had engaged in concealment and suppression of facts, and that the balance of convenience did not favor granting an injunction.
Fact of the Case:
The plaintiff, a pharmaceutical company, sued the defendant for infringement of its registered trademark PANTOCID, used for a drug containing pantoprazole. The defendant used the mark PANTOPACID for a similar drug. The plaintiff claimed that the defendant's mark was deceptively similar to its own and was likely to cause confusion among consumers. The defendant argued that its mark was not confusingly similar to the plaintiff's, that the plaintiff's registration was invalid due to an earlier application by Takeda for the same mark, and that the plaintiff had engaged in concealment and suppression of facts.
Finding of the Court:
The Court found that the defendant's PANTOPACID mark was deceptively similar to the plaintiff's PANTOCID mark and was likely to cause confusion among consumers. However, the Court also found that the plaintiff's registration was invalid due to an earlier application by Takeda for the same mark. The Court further found that the plaintiff had engaged in concealment and suppression of facts, and that the balance of convenience did not favor granting an injunction.
Issues: 1. Whether the defendant's PANTOPACID mark infringed the plaintiff's PANTOCID mark? 2. Whether the plaintiff's registration was invalid due to an earlier application by Takeda for the same mark? 3. Whether the plaintiff had engaged in concealment and suppression of facts? 4. Whether the balance of convenience favored granting an injunction?
Ratio Decidendi: 1. The Court held that the defendant's PANTOPACID mark was deceptively similar to the plaintiff's PANTOCID mark and was likely to cause confusion among consumers. The Court applied the Pianotist test, which considers the look, sound, and meaning of the marks, as well as the goods or services they are used for, and the nature and kind of customers who are likely to buy those goods or services. The Court found that the marks were similar in appearance, sound, and meaning, and that they were used for the same type of product. The Court also found that the customers who were likely to buy the products were not likely to be able to distinguish between the two marks. 2. The Court held that the plaintiff's registration was invalid due to an earlier application by Takeda for the same mark. The Court found that Takeda's application was filed before the plaintiff's application, and that the marks were identical. The Court also found that there was no evidence that Takeda had abandoned its application. 3. The Court held that the plaintiff had engaged in concealment and suppression of facts. The Court found that the plaintiff had failed to disclose the existence of Takeda's earlier application in its application for registration of the PANTOCID mark. The Court also found that the plaintiff had failed to disclose the fact that it had received a legal notice from the defendant regarding the use of the PANTOPACID mark. 4. The Court held that the balance of convenience did not favor granting an injunction. The Court found that the plaintiff had delayed in filing its lawsuit, and that the defendant had been using the PANTOPACID mark for a number of years. The Court also found that the defendant had a strong defense to the plaintiff's claims.
Final Decision: The Court dismissed the plaintiff's application for an injunction. The Court also directed the defendant to maintain a separate account of its earnings and returns from use of the mark PANTOPACID, and to file periodical statements on affidavit placing on record its returns from sales of products using the impugned PANTOPACID mark, or any of its variants.
JUDGMENT
C. Hari Shankar, J.
Facts
The Plaint
1. The plaintiff claims to be the largest pharmaceutical company in India in 11 specialties, and the fourth largest Generic Pharmaceutical Company in the world, with a global turnover of Rs. 33,139 crores. Among other products, the plaintiff manufactures and markets pantoprazole, a well-known anti-acidity drug, under the brand name PANTOCID, in various variants, stand alone as well as in combination with other drugs. Where pantoprazole is to be found in combination with other drugs, appropriate suffixes attach to PANTOCID, such as PANTOCID-DSR, PANTOCID-L, and the like. The plaintiff holds registrations for the marks PANTOCID, PANTOCID-DSR, PANTOCID-IV and PANTOCID-L, under the Trade Marks Act, 1999, w.e.f. 19 February 1998, 30 August 2020, 8 September 2020 and 1 May 2020, respectively. Sales of the PANTOCID range of drugs have resulted in earnings to the plaintiff, during the years 2020-2021 and 2021-2022, of Rs. 386.8 crores and Rs. 513.63 crores. Para 11 of the plaint asserts that "the trademark PANTOCID was coined by the plaintiff's predecessor in the year 1998 and has been in use since the year 1999."
2. The plaintiff has asserted, and succeeded in defending, its PANTOCID trademark from infringement in several proceedings. 18 such orders have been placed on record with the present plaint. However, save and except for one order, they are all orders passed at the ex parte ad interim stage, without contest from the defendants against whom the orders came to be passed.
3. The plaintiff claims to have come across the defendants' product PANTOPACID, also containing pantoprazole, in April 2023. The averment in this regard, as contained in the plaint, reads thus:
"KNOWLEDGE
21. The Plaintiff in the 3rd week of April 2023 came across the Defendant's medicine under the mark PANTOPACID SR being sold at Delhi and on third party e-commerce interactive websites, which is deceptively similar to the Plaintiff's medicine under the trademark PANTOCID and PANTOCID DSR."
Elsewhere in the plaint, however, the plaintiff avers:
"It may be noted that the Defendant No. 3 has filed one application for registration of the impugned trademark on PANTOPACID (device) under application no. 1805856 dated 13.04.2009 in class 5 for goods, namely "pharmaceutical and medical preparation included in class-05", claiming use since 15.06.2007. The said application is currently opposed. The application for registration was opposed by the Plaintiff vide opposition no. 770019 dated 28.10.2010. The Defendant No. 3 filed its counter-statement on 06.06.2011 claiming continuous use since their date of adoption. The Plaintiff filed its affidavit in evidence on 16.01.2012 along with documentary evidence in support of opposition specifically denying the Defendants alleged claim of use and further calling upon the to prove use by way of clear documentary evidence. The Defendant failed to file any evidence. The said opposition proceedings is currently pending and in all probability will be decided in favour of the Plaintiff and against the Defendant in view of the fact that the Defendant has failed to prove any use."
4. The plaintiff alleges that the defendants' mark PANTOPACID is merely a convenient corruption of the plaintiff's mark PANTOCID and is deceptively similar to it, the only difference being the intervening "PA" between "PANTO" and "CID". The defendants, it is alleged, have created a deliberately confusing mark for their product, so that an unwary customer would end up mistaking the defendants' product for the plaintiff's. The mark PANTOPACID is alleged to be visually, phonetically and structurally similar to PANTOCID. Thus, alleges the plaintiff, the defendants have, by use of the mark PANTOPACID, infringed the plaintiff's registered PANTOCID marks within the meaning of Section 29(2)(b)1 [(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted u
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