Sun Pharma Laboratories Ltd. v. Finecure Pharmaceuticals Ltd. & Ors.

Relevant Acts and provisions

Trade Marks Act, 1999

Section 11(1)(a)Section 124Section 28Section 29(2)(b)Section 31(1)

Provisions considered: Sections 11(1)(a), 28, 29(2)(b), 31(1) and 124 of the Trade Marks Act, 1999.

Brief facts

Sun Pharma Laboratories Ltd. had the registered trade mark PANTOCID and had been using it since 1999, the application having been filed in 1998. Finecure Pharmaceuticals Ltd. claimed use of the PANTOPACID mark since 2007. Both marks were used for a drug containing the same active ingredient, Pantoprazole. Sun Pharma filed a suit alleging that PANTOPACID was deceptively similar to its registered trade mark and sought an interim injunction. The respondents raised the issue of delay in filing the suit. The Single Judge found the marks similar and held that there was prima facie infringement, but refused the interim injunction due to delay in approaching the Court in 2023 and non-disclosure of certain earlier proceedings and correspondence. Sun Pharma appealed against the refusal.

Issues before the Court

1. Whether the use of PANTOPACID for the same type of medicine caused confusion with the registered trade mark PANTOCID.
2. Whether Sun Pharma's trade mark registration could be questioned at the interim stage based on an earlier registration of the same mark by another company, when that earlier registration had already been removed.
3. Whether the delay in approaching the Court could be a reason to refuse an injunction despite a finding of trade mark infringement.

Court's findings

A stricter approach is required while comparing trade marks used for pharmaceutical products, as confusion between similar medicine names may have consequences beyond ordinary consumer confusion. Delay in taking action may not defeat an injunction against infringement, though it may affect the claim for damages.

Decision

The Division Bench held that PANTOPACID was deceptively similar to PANTOCID and prima facie infringed Sun Pharma's registered trade mark. The Court set aside the findings relating to the challenge to Sun Pharma's registration, suppression of facts, prior use and balance of convenience. The Respondents were restrained from manufacturing, selling or dealing in medicines under PANTOPACID, PANTOPACID D and PANTOPACID SR.

Keywords

Deceptive Similarity Delay Interim Injunction PANTOCID PANTOPACID Pharmaceutical Trademarks Public Interest Trademark Infringement