HC grants interim injunction against use of impugned mark Dosela deceptively similar to Sun Pharma Duzela

Justice Sanjeev Narula further directed the pharma firm to file an affidavit disclosing the list of products manufactured under the impugned name "DOSELA".

Sun Pharma, in its complaint stated that it is a prior adopter, user, owner and registered proprietor of two word-marks - "DUZELA" and "ATTENTROL" for medicinal and pharmaceutical preparations registered since November 09, 2004, and November 01, 2004, respectively. It added that continuous use of the afore-said marks since 2004, has garnered substantial goodwill, reputation and association exclusively with Sun Pharma, both within the trade as well as in public.

The drug giant contended that Avighna Medicare have recently started using the impugned marks "DOSELA" and "ATENTRUE", in respect of medicinal and pharmaceutical products, which are stated to be deceptively similar to its registered marks.

Avighna applied for registration of the impugned mark "DOSELA" in November 2021, and for the impugned mark "ATENTRUE" in January, 2022, both in Class 5 on a 'proposed to be used' basis. The said applications were opposed by Sun Pharma.

It was further contended that;

"Avighna, being in the same trade, have deliberately, fraudulently, and with complete knowledge of the Sun Pharma's rights and registrations in "DUZELA" and "ATTENTROL", adopted deceptively similar impugned marks, despite being put to knowledge of Sun Pharma's right in the aforenoted marks by way of the aforenoted opposition."

The adoption and use is without authority, and is an infringement Section 29 of the Trademarks Act, 1999, the drug maker added in its plaint.

A comparison between the said marks of the two pharma companies were made following which the court observed;

"A similarity between the marks "DUZELA" and "DOSELA", is quite apparent. The two marks are phonetically, structurally and instinctively similar. Only one letter is different, which can lead to confusion between consumer and pharmacist alike. In this regard, the Court finds prima facie case in favour of Sun Pharma to that extent, and in case no ex-parte ad-interim injunction is granted Sun Pharma will suffer an irreparable loss; balance of convenience also lies in favour of Sun Pharma and against the Avighna Medicare Private Limited."

With regard to the marks "ATTENTROL" and "ATENTRUE", the Court was unable to appreciate the case sought to be made out. It noted that;

"The latter is formed from the salt Atenolol, from which the prefix "aten-" has been derived. The plaint itself mentions that Avighna have registered many marks with the suffix "-true". Moreover, what sways the Court is Sun Pharma's submission in para 38 of the plaint, where it is categorically stated that it has no objection to Avighna using the suffix "-true" in the impugned mark. Thus, the Avighna's mark "ATENTRUE", being a combination of first four letters from the salt, and its family of suffix "-true", results in the impugned mark "ATENTRUE", and it cannot be prima facie said that the adoption is dishonest."

Accordingly, the Court did not find a prima facie case to grant an ex- parte, ad-interim injunction for this mark.

Meanwhile for the mark Duzela, the court, in its order said;

"In view of the foregoing, till the next date of hearing, Avighna, their business associates, partners/promoters, directors, proprietors, officers, subsidiaries, affiliates, franchisees, manufacturers, family members, servants, agents, dealers, distributors, stockists, licensee and/or anyone acting for and on their behalf are restrained from selling, offering to sell, manufacturing, advertising, promoting or in any other manner using the Impugned Marks "DOSELA" and/or any other mark identical or deceptively similar to the Plaintiff's registered trademark "DUZELA" with respect to goods falling under Class 5 and/or any cognate and allied goods either as a trademark or part of a trademark, sub-brand, trade name, or part of a trade name, corporate name, email, domain name or part of a domain name, or in any other manner resulting in infringement of the Plaintiff's registered trademark "DUZELA"."

It further noted;

"The Defendants are directed to file an affidavit disclosing the list of products manufactured under the impugned name "DOSELA", within a period of four weeks from December 23, 2022."

The matter has been listed before the Roster Bench on 29th May, 2023.

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

https://indiankanoon.org/doc/195057044/