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IN THE HIGH COURT OF DELHI
Jyoti Singh, J.
Sun Pharmaceutical Industries Ltd. - Appellant
Versus
Kinetic Lifescience (OPC) P. Ltd. - Respondent
CS (COMM) 241 of 2021 & I.A. 6745 of 2021
Decided On : 12-04-2022
| Table of Content |
|---|
| 1. plaintiffs' company history and product lines. (Para 1 , 2 , 3 , 4) |
| 2. trademark and copyright registration details. (Para 5 , 6 , 7 , 8) |
| 3. distinctiveness and goodwill of the trademarks. (Para 9 , 10 , 11 , 12) |
| 4. plaintiffs’ enforcement of intellectual property rights. (Para 13 , 14 , 15) |
| 5. allegations against defendants related to trademark infringement. (Para 16 , 17 , 18) |
| 6. procedural developments in the case. (Para 19 , 20) |
| 7. court's reasoning regarding copyrights. (Para 21 , 22 , 23) |
| 8. arguments on likelihood of consumer confusion. (Para 24 , 25 , 26) |
| 9. court's observations on trademark registrations. (Para 27 , 28 , 29) |
| 10. legal standards for assessing trademark infringement. (Para 30) |
| 11. comparative analysis of marks and potential confusion. (Para 32 , 33 , 34) |
| 12. assessment of passing off claims. (Para 35 , 36 , 37 , 38) |
| 13. public interest considerations in trademark cases. (Para 39 , 40 , 41 , 42 , 43) |
| 14. conclusion on the infringement claim. (Para 44 , 45 , 46) |
| 15. rejecting plaintiff's comparison with defendants' trademark. (Para 47 , 48 , 49) |
| 16. final remarks on the distinctiveness of trademarks. (Para 50 , 51) |
| 17. characteristics of passing off actions. (Para 52 , 53 , 54) |
| 18. precedents in passing off actions. (Para 55 , 56 , 57) |
| 19. summary of plaintiffs' evidence and established goodwill. (Para 58 , 59 , 60) |
| 20. severity of confusion standard in medicinal product cases. (Para 61 , 62 , 63) |
| 21. final orders and directives of the court. (Para 64 , 65 , 66 , 67 , 68) |
JUDGMENT
1. This is a suit for permanent injunction, damages and delivery up of the infringing material, filed by the Plaintiffs. Plaintiff No.1 is a company incorporated under the Companies Act, 2013 and Plaintiff No.2 company is a wholly owned subsidiary of Plaintiff No.1.
2. It is averred in the plaint that Plaintiff No.1 started the business of marketing pharma products as a proprietary firm in the year 1978. In 1982, a partnership firm under the name and style of M/s. Sun Pharmaceutical Industries was formed to manufacture, deal and trade into pharmaceutical goods, preparations and allied goods & services. On 01.03.1993, the partnership firm was converted into a Joint Stock Company and incorporated under the Companies Act, 1956.
3. It is averred that the Plaintiffs are amongst the largest and highly reputed pharmaceutical companies in India, which manufacture and market drugs and formulations thereof in India and supply them to more than 150 countries across the world under their extensive range of well-known and distinctive trademarks/brand names. Plaintiffs are involved in the manufacturing of speciality pharmaceuticals and active pharmaceutical ingredients since the year 1983, with a consolidated annual turnover of Rs.27,856.6 Crores, globally. As per the plaint, Plaintiffs are ranked No.1 pharma company in India, in a total of 11 specialities and world's fifth largest speciality generic pharmaceutical company.
4. It is pleaded that Plaintiffs have 45 manufacturing sites in 6 continents and 10 world class research centres with over 30,000 strong multi-cultural work force from over 50 different nationalities. The manufacturing units are located in several countries such as Bangladesh, Canada, Israel, etc.
5. It is averred that in 1993, Plaintiff No.1 conceived a logo, which is a circular device consisting of interlocking of four spheres, commonly known as SUN (Device) and has been using the logo either independently or in conjunction with house mark SUN by the Plaintiffs, as under:
6. Plaintiffs aver that the trademark is not only the corporate logo but is also used as a trade name/mark by the Plaintiffs, which appears on all their products, packaging, promotional materials, stationery and even on the office buildings. The said mark is also prominently displayed on their website www.sunpharma.com.
7. It is stated that in order to protect its right in the SUN (Device) mark, Plaintiff No.1 obtained trademark registratio
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