Delhi High Court: In a trade mark infringement case where the ex-parte ad-interim order of injunction was challenged, the Single Judge Bench of Navin Chawla, J. confirmed the order of injunction passed by this Court in favour of Sun Pharmaceutical Industries Ltd., and imposed Rs. 10,00,000 costs on Sun Pharmaceutical Industries Ltd. for concealing material facts from this Court.
Plaintiff’s predecessor-in-interest, ‘Ranbaxy Laboratories Ltd.’ coined and adopted the trade mark ‘FORZEST’ in 2003 and it was registered in Class 5 for ‘pharmaceutical and medicinal preparations for human and veterinary use’. Plaintiff was recorded as the subsequent proprietor of the said trade mark with the Trade Mark Registry.
Plaintiff asserted that it was only in 2022 that the plaintiff came across the defendant’s application seeking registration of the mark ‘FOLZEST’ on a ‘proposed to be used’ basis in Class 5 and the same was immediately opposed by the plaintiff. Further, plaintiff’s mark ‘FORZEST’ was cited in the Examination Report against the trade mark application of the defendant, and the defendant in the reply stated that the mark ‘FORZEST’ was phonetically and visually different from the defendant’s mark. Defendants also stated that they were registered proprietor of various ’ZEST’trade marks since 1983.
The trade mark application of the defendant was pending consideration before the Trade Marks Registry. The plaintiff asserted that the adoption of a similar mark to that of the plaintiff by the defendant amounted to infringement of the plaintiff’s trade mark as also passing off and unfair competition. Therefore, based on the assertions of the plaintiff and the documents submitted, this Court passed an ad-interim ex-parte order of injunction on 19-05-2022, restraining the defendant from selling its medicinal preparations under the impugned mark ‘FOLZEST’.
Later, the defendant asserted that the plaintiff obtained an ad-interim ex-parte order of injunction by concealing various material facts from this Court. Defendant stated that the plaintiff was well-aware of not only the registration of the mark ‘ZEST’ in favour of the defendant, but also of the other marks registered and used by the defendant, since, the plaintiff had earlier applied for the registration of the mark ‘EXEZEST’, which was opposed by the defendant way back in the year 2009. Moreover, the plaintiff thereafter applied for registration of its mark ‘TRIOLMEZEST’, which was also opposed by the defendant in 2014 on the ground that the defendant was the registered proprietor of the ‘ZEST’ ‘family of marks’.
Submissions on behalf of the Plaintiff
Counsel for the plaintiff submitted that the marks of the plaintiff and the defendant were deceptively similar, but the use of the medicinal preparations by them were different, as the medicinal preparation of the plaintiff targeted erectile dysfunction in men, while the medicinal preparation of the defendant was a multivitamin for pregnant women for lowering the risk of pre-term births. Thus, any confusion between the two marks could lead to wrongful consumption. It was submitted that there were third parties in the market who use the word ‘ZEST’ and therefore, the defendant could not claim any exclusivity over the word ‘ZEST’.
Submissions on behalf of the Defendant
Counsel for the defendant submitted that the facts were material to be disclosed by the plaintiff as they would have clearly disproved the assertion of the plaintiff that it came to know of the defendant and their use of mark ‘FOLZEST’ only in 2022 and it would have shown that the defendant had various registrations, with the word ‘ZEST’. Therefore, the counsel contended that the ad-interim ex-parte Order of injunction granted by this Court should be set aside on the ground of misrepresentation, concealment, and suppression of facts and of material documents by the plaintiff.
Analysis, Law, and Decision
The Court opined that the facts which plaintiff had concealed were important and material and should have been disclosed upfront in the plaint itself as the disclosure of such facts would certainly have had a bearing on this Court while considering the relief of an ad-interim ex-parte injunction in favour of the plaintiff. The Court held that the plaintiff with mala fide intent sought to mislead this Court by concealing material facts.
The Court observed that prima facie, the mark of the plaintiff ‘FORZEST’, was deceptively similar to the mark of the defendant ‘FOLZEST’, and it was also important to note that the medicine of the plaintiff was for treating erectile dysfunction in men, while the medicinal preparation of the defendant was a multivitamin for pregnant women for lowering the risk of pre-term births. In relation to this, the Court relied on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 and Novartis AG v. Crest Pharma Pvt. Ltd., 2009 SCC OnLine Del 4390 and held that “in a medicinal good, the right of not only the private litigants but also public interest has to be kept in mind, and, in fact, be given prominence. Even a remote chance of deception or confusion arising because of similarity in the marks was to be avoided and prevented, as it may lead to disastrous consequences for unwary consumers. Therefore, despite the concealment and misstatement of the plaintiff, the plaintiff shall be entitled to an ad-interim relief if the marks of the medicinal goods are deceptively similar to each other.”
The Court held that the following factors would still be in favour of the plaintiff for the grant of an ad-interim injunction against the defendant:
Plaintiff, through its predecessor-in-interest, had been the registered proprietor of the mark ‘FORZEST’ since the year 2003;
The said mark has been used by the plaintiff/its predecessor-in-interest since the year 2003 and had substantial sales;
Though the defendant had a ‘ZEST’ Family of Marks, it had started the use of the impugned mark ‘FOLZEST’ in June 2021/May 2022 only;
Use of the medicine of the plaintiff and the defendant were different;
Two marks are deceptively similar and any confusion in the same can lead to disastrous consequences.
Thus, the Court held that an ad-interim ex-parte order of injunction stands confirmed during the pendency of the present suit. The matter was listed next for 19-01-2023.
[Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd., CS (COMM) 328 of 2022, decided on 22-11-2022]
Advocates who appeared in this case:
For the Plaintiff(s): Advocate Sachin Gupta;
Advocate Swati Meena;
Advocate Yashi Agrawal;
For the Defendant(s): Senior Advocate Darpan Wadhwa;
Advocate Karan Bajaj;
Advocate Rupin Bahl;