Delhi HC grants mark 'Sun, Sun Pharma, Sun Pharmaceuticals' status of 'well-known trademark'

A bench of Justice Amit Bansal was hearing a plea filed by Sun Pharma through advocate Sachin Gupta against Vensat Bio and others seeking a permanent injunction against Orison Pharmaceuticals from the specialties using the trade names ‘Orison/Orison Pharma/Orison Pharmaceuticals’ and the declaration of the trademark ‘Sun/Sun Pharma’ as a ‘well-known trademark’.

In its submission, Sun Pharma mentioned that it started business of marketing pharmaceutical products under the trade name 'SUN/ SUN PHARMA/ SUN PHARMACEUTICALS' in the year 1978. The court was informed that;

"Sun Pharma markets drugs and formulations in over 150 countries of the World and has 45 manufacturing sites in 6 continents and 20 research centres with over 30,000 strong multi-cultural work forces from over 50 different nationalities. Sun Pharma is ranked as no.1 pharmaceutical company in India in a total of 11 specialities and is the world's 4th largest generic pharmaceutical company."

The court further learnt that the drug giant has more than 52 registrations in India for the trade mark/ label 'SUN/ SUN PHARMA/ SUN PHARMACEUTICALS' in various classes. The earliest registration was granted in the year 1983. Sun also has more than 143 international registrations for the 'SUN' formative marks in different classes in various countries including U.S.A and European Union, and various 'SUN' formative domain name registrations used internationally. The earliest domain name registration was granted in the year 1997.

Moreover, the trade name 'SUN' appears on all of Sun Pharma's products, packaging, promotional materials and stationery and even on the office buildings of the drug major. Furthermore, Sun also placed on record statement of sales for the period 1992 to 2021 under the trade name 'SUN/ SUN PHARMA/ SUN PHARMACEUTICALS'. The annual sales turnover of the pharma firm in the financial year 2020-2021 is to the tune of Rs. 33,139 crores. It has also incurred expenditure of Rs. 750 Crores in the advertisements and promotions of its products in the corresponding year.

Going through the submissions, the bench opined that the company has made consistent efforts in protecting its statutory and common law rights in the trade name ‘Sun/Sun Pharma/Sun Pharmaceuticals’ and has secured injunction and rectification orders against various parties using trademarks or trade names that are deceptively similar to its own.

Given all this, the court granted Sun Pharmaceutical’s mark ‘Sun Pharma’ the status of a ‘well-known trademark’. It observed;

"From the averments made in the plaint and the documents filed along with the plaint, it is clear that Sun Pharma is a leading pharmaceutical company in the world. For more than three decades, it is the leader in the marketing of pharmaceutical products. Sun Pharma has acquired tremendous good will and reputation over the years in the pharmaceutical market."

It further noted that;

"There is merit in the submission of the petitioner that the word ORISON is in reality a single word. However, while pronouncing, it breaks into two parts 'ORI' and 'SON'. Clearly, the defendant no.3 is using the trade names 'ORISON/ ORISON PHARMA/ ORISON PHARMACEUTICALS' similar to the plaintiff's trade names 'SUN/ SUN PHARMA/ SUN PHARMACEUTICALS'."

The court clarified that;

"Vensat Bio and Ors is also engaged in the business of marketing pharmaceutical products like Sun Pharma. There would be a likelihood of confusion in the pharmaceutical market if the defendant continues to use the aforesaid trade names."

Accordingly, the court pronounced as;

"A decree of permanent injunction is passed against defendant no.3 in terms of paragraph 48(a) and 48(b) restraining the defendant no.3 from using the impugned trade names 'ORISON/ ORISON PHARMA/ ORISON PHARMACEUTICALS' or any other trade mark/trade name deceptively similar to the plaintiff's trade names 'SUN/ SUN PHARMA/ SUN PHARMACEUTICALS'. The declaration of the mark 'SUN/ SUN PHARMA' as a well-known mark in terms of paragraph 48(c) of the plaint is also granted."

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

https://indiankanoon.org/doc/193912223/