Alkem Laboratories and Dr Reddy's Laboratories have entered into a settlement agreement in connection to the use of trademark Pan for their products, as the latter agreed to stay away from using marks similar to the former's PAN family of trademarks.
Dr Reddy's also agreed to withdraw its trade mark application for Dr.PAN, among others while Alkem agreed to give up its claims for costs, damages and others related to the suit according to the agreement, the terms of which has been decreed by a single Judge in the Delhi High Court now.
Alkem approached the Delhi High Court alleging that Dr Reddy's has infringed its 'PAN' family of marks by using Doctor PAN-D, Doctor PAN and Dr.Pan. Alkem claimed that it is the proprietor of the trademark PAN-D and the PAN Family of Marks for goods being pharmaceutical, medicinal and ayurvedic preparations and substances, dietetic food and substances adapted for medical use, dietary supplements for humans, nutritional supplements, nutraceutical preparations for therapeutic or medical purposes nutraceuticals for use as dietary supplements. It has been using the mark PAN since the year 2000 and PAN-D since the year 2004 for goods under the segment.
The dispute was settled between the parties with the intervention of the Delhi High Court Mediation and Conciliation Centre.
According to the terms of settlement, Dr Reddy's undertook not to use the marks Doctor PAN-D/Doctor PAN and Dr Pan, or any other identical or deceptively similar mark to Alkem's PAN Family of Marks in any manner whatsoever, in relation to the pharmaceutical, medicinal and ayurvedic preparations and substances, among others.
Dr Reddy's also shall withdraw the trade mark application for registration of the mark Dr.Pan, filed in December, 2019 and for the mark Doctor PAN filed in February, 2021 within two weeks from the date of execution of the settlement agreement.
The company also agreed that it shall not apply for registration of these marks or any other word/device mark/logo/trademark which is identical or deceptively similar to Alkem's trademark PAN-D and PAN Family of Marks, in the future, before the Trade Marks Registry or copyright office, the use of which may amount to passing off or infringement of the Trade Marks of Alkem. Dr Reddy's shall not, in future, adopt or use in any mark where PAN is being used in a stand alone manner or more, prominence is being given to the mark PAN per se, it added.
Through an earlier order, the Court has allowed Dr Reddy's to exhaust the stock of the products under dispute, with the disputed mark Doctor PAN D and others, and no other stock of the product is remaining with the company, said the agreement.
A similar agreement has also been signed between Alkem and Dr Reddy's contract manufacturer for the products.
"Parties are represented by Counsel who undertake, on behalf of their respective clients, to abide by the terms of settlement. In view of the aforesaid terms of settlement, no dispute survives for adjudication in the present suit. Defendants 1 and 2 shall remain bound by the aforesaid terms of settlement," said Justice C Hari Shankar in an order.
"The court has perused the terms of settlement and find them to be lawful. Let a decree sheet be drawn up accordingly," added the order.
According to a stock update report by HDFC Securities in April, 2023, Alkem's brand Pan, which consists of Pantoprazole in the gastro-intestinal therapeutic segment ranked one in molecular category and held around 31 per cent market share. PAN-D, a combination of domperidone and pantoprazole in the same therapeutic segment also held the first position in the molecular category and had 28 per cent market share.
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