Bombay HC restrains firm from infringing Sun Pharma trademark Prolomet

The order was issued during a hearing conducted by G S Patel through video conferencing, deliberating the case filed by Sun Pharma. The counsel for Sun Pharma informed the court that in April 2021, Sun Pharma learned that Salud Care (India) Private markets a pharmaceutical preparation for the treatment of hypertension with tachycardia, angina, hyperthyroidism, and myocardial infarction with the same based drug, Metoprolol Succinate, under the trade mark PROLOMEK.

Salud Care (India) Private also uses variants with numbers or combinations of numbers and letters.

The counsel for Sun Pharma in his submission argued that Sun Pharma and its predecessor-in-title have used several pharmaceutical preparations. However, in the instant case, the one formulation with which they are concerned is PROLOMET, adopted in October 2005.

PROLOMET contains the generic drug Metoprolol Succinate in tablet form.

This is prescribed for the treatment of hypertension, angina and arrhythmia. There are a number of trade variants, such as PROLOMET-XL 100, PROLOMET-XL 12.5 and so on. These indicate additional drugs in the formulations, the extended release dosage form and so on. Some of these additional formulations are combined with other generic drugs, including Telmisartan, also used for the treatment of heart and cardiac disorders.

Further, a few years later, on 22nd May 2008, the Sun Pharma predecessor-in-title obtained registration of the mark PROLOMET as a word mark. Sun Pharma Laboratories' name has now been entered as a subsequent proprietor on the Register.

In addition, Sun Pharma stated that the mark has been used continuously and openly since 2006. The aggregate sales from then until 2019-2020 are over Rs. 91,000 lakhs. There are evidentiary documents annexed to substantiate this. Additional material points to expenses on sales promotion and publicity.

In line with the abovementioned claims, Sun Pharma noted that it has both statutory and common law rights and has achieved immense reputation and goodwill in the market.

After hearing the facts of the case, it was noticed by the court that Dr Chandrachud, counsel for Sun Pharma Laboratories, is prima facie correct in saying that there is almost nothing to distinguish the Salud Care (India) Private's mark PROLOMEK from the Sun Pharma Laboratories PROLOMET mark.

Only the last letter is changed. Structurally and visually, they are identical. Phonetically, one is very likely to be mistaken for the other.

The court ruled in favour of Sun Pharma and observed,

There is, apart from the commercial interest of the Plaintif, the public health dimension. These are distinct formulations and one should not be mistaken for the other. There is a sufficient prima facie case warranting the grant of an injunction. The fact that both are schedule H drugs that require a prescription makes the matter even more serious.

In view of the foregoing, the court held,

For the moment, there will be an ad-interim injunction until further orders restraining the Defendants, by themselves, their agents, directors, etc., from directly or indirectly using the mark PROLOMEK or any other trade mark containing that mark or any other mark that is identical with or deceptively or confusingly similar to the Sun Pharma Laboratories mark PROLOMET, whether with or without suffix, in any manner whatsoever.

To view the official order, click on the link below:

https://indiankanoon.org/doc/177394378/