Trademark Infringement Suit: Delhi HC awards Rs 5 lakh cost to Sun Pharma over Oxiplat mark

The term "Oxiplat" was coined by Sun Pharmaceuticals back in 2001, and has since been associated with medicinal preparations containing Oxaliplatin. This drug is commonly used in the treatment of colon and rectum cancers.

Justice Prathiba M Singh presided over the lawsuit brought by Sun Pharmaceutical in 2016 against Mylan Laboratories Ltd. Mylan had obtained registration for the mark "Soxplat" in October 2014, which was deemed to be infringing upon Sun Pharmaceutical's established mark.

Sun Pharma had acquired knowledge of the Mylan’ mark ‘SOXPLAT’ in the first week of October, 2014, through field force/market analysis, and also found that the trademark of Mylan for the mark ‘SOXPLAT’ bearing no.1550804 dated 18th April, 2007. The same was filed by Mylan on a proposed to be used basis and was granted registration.

Consequently, Sun Pharma filed the suit seeking permanent injunction of the mark ‘SOXPLAT’.

The court was apprised that sales of Sun Pharma for medicinal formulations using the mark ‘OXIPLAT’ were substantial and at the time of filing of the suit, the sales turnover was aggregating to approximately Rs 26.5 crore. Substantive investment were also made in the form of advertising and promotional expenses for the mark ‘OXIPLAT’, of approximately Rs 20 lakhs for the financial year 2013-14 and aggregating to approximately Rs. 1.3 crore.

It's noteworthy that Mylan had voluntarily relinquished their claim to the disputed "Soxplat" mark. They formally stated their intention to refrain from using any mark, whether identical or similar to Sun Pharmaceutical's "Oxiplat." Furthermore, they acknowledged discontinuing the use of the "Soxplat" mark and confirmed that no remaining stock of medicines bearing this mark existed since November of the previous year.

Throughout the entire legal process, no interim injunction had been issued against Mylan. The court observed that both the Single Judge and Division Bench had ruled against Sun Pharma, denying the grant of an interim injunction. The Intellectual Property Appellate Board (IPAB) had also issued its decision in 2020.

Following the IPAB decision, Mylan promptly abandoned the use of the "SOXPLAT" mark, resulting in its removal from the trademark register.

During the recent hearing, the learned counsel for Sun Pharma, Hemant Singh submitted that the findings of the IPAB would operate as res-judicata between the same parties. Since the said judgment of the IPAB has not been challenged by Mylan, they can no longer use the mark ‘SOXPLAT’.

Meanwhile, the counsel for Mylan submitted that the drug maker has already given up use of the mark ‘SOXPLAT’. In addition, Mylan were willing to pay a sum of Rs. 3 lakhs as costs to Sun Pharma.

As far as the costs were concerned, Hemant Singh submitted that the actual costs incurred are to the tune of Rs11 lakhs and following the recent decision of the Supreme Court, the decree deserves to be passed and complete costs ought to be awarded to Sun Pharma.

Deliberating the case, the Court observed that Mylan have made a statement that they do not have any stock of the goods of medicines bearing the mark ‘SOXPLAT’, which they have discontinued since November, 2022.

In context of the damages and costs concerned, the Court observed that;

(i) The suit has remained pending and there was no interim injunction during this entire period against the Defendants (Mylan laboratories Ltd.). In fact, the ld. Single Judge and the ld. Division Bench have held against the Plaintiff and not granted an interim injunction.

(ii) The IPAB has rendered its decision only as in 2020. Immediately thereafter, the Defendants have given up the mark ‘SOXPLAT’.

(iii) The mark of the Defendants also stands removed from the Register.

Given these circumstances, the court concluded that the interests of Sun Pharmaceutical would be best served by awarding them costs amounting to Rs 5 lakhs. The specified costs are to be paid within a period of eight weeks from the date of the ruling. It observed;

"The circumstances and facts of the case as recorded above would show that insofar as the mark ‘SOXPLAT’ is concerned, there is no longer any dispute that exists between the parties as the Defendants (Mylan Laboratories Ltd. & Anr) have already given up the mark ‘SOXPLAT’, for whatever reasons. Thus, without rendering any opinion on the similarity or otherwise of the two marks ‘OXIPLAT’ and ‘SOXPLAT’, the Defendants’ submission is recorded and the Defendants shall be bound by the said statement that they do not wish to use the mark ‘SOXPLAT’ or any other mark, which is identical and similar to the mark ‘OXIPLAT’."

It added;

"The interest of the Plaintiff (Sun Pharma) would be suitably served by awarding costs of Rs.5 lakhs. The costs shall be paid within eight weeks from today."

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