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The Delhi High Court has issued a favourable order to Sun Pharmaceutical Industries by confirming an ad interim ex-parte injunction it has issued against Mumbai-based DWD Pharmaceuticals in May 19, 2022, related to alleged infringement of the former’s trademark Forzest.
In an interesting turn of events, however, the Court imposed a cost of Rs. 10 lakh on Sun Pharmaceutical for concealing material facts from the Court and allowed DWD Pharmaceuticals to apply for rectification petition against Sun Pharma’s trade mark Forzest, which it claimed to have registered in the year 2003 by its predecessor Ranbaxy Laboratories, for treating erectile dysfunction in men. The Court has dismissed another interlocutory application filed by Sun Pharmaceuticals seeking its permission to file a cancellation petition on DWD Pharma’s trademark Zest, which was registered since 1983.
“…the plaintiff (Sun Pharmaceutical) cannot be allowed to escape the consequences of having concealed material facts from this Court to obtain an ex-parte order of injunction. Whether with the disclosure of the above-mentioned material facts, the Court would have still granted the ad-interim ex-parte order of injunction or not, is not relevant and cannot absolve the plaintiff from the consequences of not making such disclosure of material facts. Such a practice not only has to be deprecated but must also be penalised. The plaintiff, therefore, is saddled with costs of Rs.10 lakh (Rupees ten lakh only) to be deposited with the Delhi High Court Legal Services Committee within a period of two weeks from the date of the judgement,” said the Order issued by Justice Navin Chawla on November 22, 2022.
The further proceedings in the suit have been adjourned for a period of three months to enable DWD Pharma to apply for rectification/cancellation of the registration of the trade mark Forzest of Sun Pharma, added the order.
Sun Pharma earlier this year filed an application with the Delhi High Court seeking grant of ad-interim injunction restraining DWD Pharma from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal preparations under the mark Folzest, alleging deceptive similarity of its trademark Forzest.
Sun Pharma said that it has come to know in May, 2022 that DWD Pharma has filed an application for trade mark Folzest filed in August 2020 on a ‘proposed to be used’ basis, for its multivitamin for pregnant women for lowering the risk of preterm births. The Court issued an ad-interim ex-parte order in May 19, 2022, restraining DWD Pharma from using the mark Folzest or any other trademark deceptively similar to Sun Pharma’s trademark.
DWD Pharma approached the Court with another application praying for setting aside the order. It alleged that Sun Pharma has obtained the order by concealing various material facts including that DWD Pharma is a registered proprietor of the trade mark Zest since the year 1983 and has a family of registered trade marks with Zest forming a part of them (Zest family of marks). Sun Pharma was well aware of these trade marks and has cited some of them as conflicting marks with the registration filings. DWD Pharma also said that it has also opposed some of the trade mark applications filed by Sun Pharma with the word Zest.
Sun Pharma argued that Zest, is a common dictionary word meaning - feeling of enjoyment, excitement and enthusiasm - over which no person can claim exclusivity. It explained that it has disclosed the Zest family of marks in its plaint. It also argued that the company is entitled to the ad-interim protection as both the marks are deceptively similar and there is a possibility of confusion between the two marks which can lead to wrongful consumption of the pharmaceutical goods by an unwary consumer, which in turn will lead to disastrous consequences.
Hearing both the parties, Justice Navin Chawla, observed that there were facts important and material to be disclosed upfront in the plaint by Sun Pharma, which has a bearing on the Court while considering the relief of an ad-interim ex-parte injunction in favour of the company.
“Clearly, the plaintiff, with a mala fide intent, sought to mislead this Court by concealing material facts from this Court,” said Justice Chawla.
However, in spite of the concealment and misstatement of the company, Sun Pharma shall be entitled to an ad-interim relief if the marks of the medicinal goods are deceptively similar to each other. Though DWD Pharma has a ‘Zest’ family of marks, it has started the use of impugned mark Folzest in June, 2021/May, 2022 only. Whether DWD Pharma can claim exclusivity to all marks containing the world Zest, can be determined only on the parties leading evidence, observed the Judge, confirming the interim injunction order issued on May 19, during the pendency of the suit. These are only prima facie findings of the Court and it shall not bind or influence it while considering the merits of the suit after evidence led by the parties, added the Order.
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