Delhi High Court: In a case wherein, Sun Pharma Laboratories Ltd., the plaintiff filed an application to seek interlocutory injunctive reliefs and restrain the defendants, Finecure Pharmaceuticals Ltd., from using the mark PANTOPACID, C. Hari Shankar, J.*, opined that the plaintiff had not succeeded in establishing its entitlement to relief against the infringement, by the defendants and subsequently rejected the interlocutory injunction to the plaintiff.
The plaintiff manufactured and marketed pantoprazole, a well-known anti-acidity drug, under the brand name PANTOCID. When pantoprazole drug was in combination with other drugs, appropriate suffixes were attached to PANTOCID, such as PANTOCID-DSR, PANTOCID-L and the like.
Further, the plaintiff held registrations for the marks PANTOCID, PANTOCID-DSR, PANTOCID-IV and PANTOCID-L, under the Trade Marks Act, 1999 (‘the TM Act’). Moreover, sales of the PANTOCID range of drugs had resulted in earnings to the plaintiff, during the years 2020-2021 and 2021-2022, of Rs. 386.8 crores and Rs. 513.63 crores.
The plaintiff alleged that the defendants’ mark PANTOPACID was visually, phonetically and structurally similar to PANTOCID. Hence, it was alleged by the plaintiffs that the defendants, by use of the mark PANTOPACID, infringed the plaintiff’s registered PANTOCID marks within Section 29-(2)(b) of the TM Act.
Thus, the plaintiffs filed an application to seek interlocutory injunctive reliefs and restrain the defendants from using the mark PANTOPACID, or any other variant which is deceptively similar to the plaintiff’s PANTOCID marks.
Analysis, Law, and Decision
The Court stated that the “Infringement”, within the meaning of Section 29-(2)(b), took place when following conditions were cumulatively satisfied:-
i. the defendants’ trademark was similar to the plaintiff’s registered trademark,
ii. the goods or services covered by the marks were identical or similar and,
iii. because of (i) and (ii), there was likelihood either of-
(a) confusion on the part of the public or
(b) association of the defendants’ trademark with the plaintiff’s registered trademark
The Court opined that these cumulative factors existed in the present case.
The Court applied the test laid down in Re: Pianotist Co.’s Application, (1906) 23 RPC 774, and opined that ‘PANTOCID’ and ‘PANTOPACID’ looked and sounded alike. The Court further opined that both were used for the same products and a customer who was not well versed with names and wanted to buy a product to cure his acidity would not be able to distinguish between ‘PANTOCID’ and ‘PANTOPACID’.
The Court referred to Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 and opined that there was no guarantee that the patient visiting the chemist’s shop for PANTOCID, would encounter the shop owner who would be aware of the subtle difference between PANTOCID and PANTOPACID. To the patient, there might be no difference, as, in either case, he would be dispensed pantoprazole. The Court further opined that the very possibility of the patient being dispensed PANTOPACID instead of PANTOCID resulted in the tort of infringement against the plaintiff.
Thus, the Court opined that the PANTOCID and PANTOPACID, being structurally, phonetically and visually similar, PANTOPACID prima facie infringed PANTOCID.
Further, on considering the issue that whether the plaintiff was entitled to any relief against the defendants, the Court opined that the claim of the plaintiffs that they came to know of defendant’s mark in third week of April, 2023 was not true as plaintiffs had opposed the defendants’ application for registration of PANTOPACID on 28-10-2010, and also issued a legal notice to the defendants on 16-06-2010, to withdraw their application. The Court relied on S.K. Sachdeva v. Shri Educare Limited, 2016 SCC OnLine Del 473 and opined that the omission on the part of the plaintiff to approach the Court with clean hands ipso facto disentitled the plaintiff to any injunctive relief.
The Court opined that despite being aware of the use of the impugned PANTOPACID mark since 2009, the plaintiff took no steps till 2023 to injunct such use, during which time the defendants had also grown into a formidable market player. The balance of convenience would clearly not justify bringing the use of the PANTOPACID mark to a complete halt, at this late stage.
The Court opined that the plaintiff had not succeeded in establishing its entitlement to relief against the infringement and thus, rejected the interlocutory injunction to the plaintiff.
The Court directed the defendant to maintain a separate account of its earnings and returns from the use of the mark PANTOPACID. The defendants should also place, on affidavit, the figures of the amounts earned, by use of the said mark, since inception, and periodical statements, on affidavit, should be filed by the defendants every three months, placing on record their returns from sales of products using the impugned PANTOPACID mark, or any of its variants.
[Sun Pharma Laboratories Ltd. v. Finecure Pharmaceuticals Ltd., 2023 SCC OnLine Del 4932, decided on 16-08-2023]
*Judgment by- Justice C. Hari Shankar
Advocates who appeared in this case :
For the Plaintiff: S. Ganesh and Rajshekhar Rao, Senior Advocates; with Sachin Gupta, Gaurangi Sharma, Manan Mandal and Meher A. Jaitley, Advocates;
For the Defendants: J. Sai Deepak, Tanvi Bhatnagar, Shilpi Sinha, Bindra Rana and Abhishek Avadhani, Advocates