In a new development in the recently crowded sitagliptin and its combinations market in the country, the Delhi High Court has refused to issue an interim injunction restraining Intas Pharmaceuticals from manufacturing or selling of pharmaceutical preparations under the trade mark Sitara-D. The court was hearing an application filed by Sun Pharma Laboratories which alleged infringement of its trade mark Sitared.
Interestingly, products from both the companies comprise antidiabetes drug Sitagliptin and its combinations, a market which has got crowded in the recent past following the patent protection of the compound going off-patent.
Sun Pharma has filed an application requesting the Delhi High Court to grant an interim injunction restraining Intas Pharma, its directors, assignees in business, stockists, retailers, chemists, servants and agents from manufacturing, selling offering for sale, advertising, directly or indirectly dealing in medicinal and pharmaceutical preparations under the impugned marks Sitara-D or Sitare or any other trade mark as may be deceptively similar to Sun Pharma's registered trademark Setaret.
Sun Pharmaceutical, the parent company of Sun Pharma Laboratories, obtained a registration of the trademark Setaret in 1998, on a 'proposed to be used' basis and it was assigned to Sun Pharma Laboratories on July 5, 2022. On March 16, 2022 the company again applied for a trade mark Sitared, on a 'proposed to be used' basis and the application is pending consideration of the Registrar of Trade Marks.
The company claimed that it had launched the product Sitared on June 29, 2022, after the expiry of the patent protection granted to the anti-diabetic drug sitagliptin. The medical product is used to lower blood sugar in patients with high-blood sugar levels and is a Schedule G prescription drug. The company asserted that it has been using the mark Sitared along with other combinations indlucing Sitared-M and Sitared-XR.
It alleged that it has come across Intas Pharma's product under the impugned mark Sitara-D being sold in the markets of Delhi sometime in the first week of September, 2022 and it is similar to the registered trademark of Sun Pharma.
Intas Pharma submitted to the Court that Sun Pharma has not used the trade mark Setaret since its registration and it is liable to be removed from the Register of the Trade Mark. It also argued that it would be the prior user of the mark since the drug approval for the medicine was received on February 4, 2022, which is prior to the use of the mark by Sun Pharma. The company also argued that the two marks are entirely different and its mark is based on the composition of the drug - a combination of sitagliptin and dapagliflozin.
Justice Navin Chawla, hearing both sides, observed that while Sun Pharma claimed its launch of the product in July, 2022, it had filed an invoice for the medicine bearing the mark Sitared dated June 29, 2022. On the other hand, Intas Pharma's first invoice is dated July 6, 2022 for its mark Sitara and July 20, 2022 for the mark Sitara-D.
"Therefore, the parties appear to have almost simultaneously and concurrently launched their respective medicinal goods," observed the Judge. The initial part of the mark of both the parties is Sita, which is based on the drug sitagliptin and no party can monopolise the use of the part of the name of a salt or ingredient of the drug.
The Judge also opined that compared as a whole, prima facie, the marks under question - Sitared and Sitara-D cannot be held to be deceptively similar to each other, either phonetically or visually. Considering the medicinal product under the mark Sitare is not yet launched, the Court directed Intas Pharma to seek prior approval from the Court if they wish to launch their product with the said mark.
Considering Sun Pharma's claim on the trade mark Setaret, the Judge opined that the mark has not been used by the company or its predecessor-in-interest till date in spite of its registration and the Court is unable to agree with the company's argument that the said registration would still entitle it to seek relief against the infringement.
"The plaintiff (Sun Pharma), having not used the mark in spite of its registration and though such registration was applied for more than twenty-four years ago, on June 24, 1998, cannot claim an ad-interim order of injunction based only on such registration," said the Order.
"....the present application, so far as it prays for an ad-interim order of injunction against the use of the mark 'SITARA-D' by the defendants (Intas Pharma), is dismissed," concluded the Order, while clarifying that the observations are merely prima facie in nature and shall not bind or influence the Court at the final adjudication of the Suit.
Both the parties, prior to going ahead with the arguments, explored the possibility of arriving at an amicable settlement before the mediation centre and the attempt failed on November 18, 2022, said the Order.
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