Triple Identity Case: Delhi HC Bans Infringing Sun Pharma's PEPFIX-DSR, MINOZIL Marks

Sun Pharma filed the commercial suit seeking a permanent injunction, damages, rendition of accounts, delivery up of infringing goods, and costs. Earlier, on 22 December 2024, the Court had passed an ex-parte ad-interim injunction restraining the defendants from dealing in products under the impugned marks. Court-appointed Local Commissioners subsequently seized approximately 19,000 infringing products from the premises of Defendant No. 2.

During the pendency of the suit, Sun Pharma entered into settlements with Defendant Nos. 1 and 4, and the suit was decreed against them. Defendant No. 3 later undertook not to deal in the impugned marks and consented to be bound by the decree. The proceedings continued only against Defendant No. 2 (Biodeal Pharmaceuticals Pvt. Ltd.).

Sun Pharma submitted that it had coined and adopted the trademark “PEPFIZ” in 1991 and “MINOZ” in 2003, and that both marks are duly registered in Class 5 and have been used continuously and extensively. The company highlighted its strong market presence, stating that in FY 2023–24, it recorded sales of Rs 22.6 million for PEPFIZ and Rs 216 million for MINOZ.

The petitioner argued that the defendants’ marks “PEPFIX-DSR” and “MINOZIL” were nearly identical to its registered trademarks and had been dishonestly adopted to ride on Sun Pharma’s goodwill. In the application for summary judgment, Sun Pharma stated that it was willing to forgo damages and sought only a permanent injunction and costs.

Despite being served, Defendant No. 2 neither entered appearance nor filed a written statement. Consequently, no defence was placed on record to rebut the allegations of infringement, passing off, or dishonest adoption of the impugned marks.

Justice Tejas Karia noted that since Defendant No. 2 failed to appear or file a written statement, all averments in the plaint stood admitted. The Court observed that Sun Pharma is the registered proprietor of the trademarks and has established substantial goodwill and reputation through long and extensive use.

The Court held that the case involved “triple identity”, where the marks, the product category, the trade channels, and the consumer base are identical. It found that the impugned marks were visually, phonetically, and structurally similar, and that an unwary consumer of average intelligence would likely be confused about the source and origin of the products.

"This is a case of triple identity, where the Plaintiff’s Marks and the Impugned Mark are identical, the product category is identical and the trade channel as also the consumer base is identical. The Plaintiff being the prior user, adopter and the registered owner of the Plaintiff’s Marks are entitled to protection. The near identical Impugned Mark indicates a deliberate and dishonest adoption by Defendant No. 2, aimed at riding upon the goodwill and reputation of the Plaintiff’s Marks." the court noted.

The Court further observed that the seizure of around 19,000 infringing products clearly showed commercial-scale infringement. It concluded that Defendant No. 2 had deliberately attempted to ride on Sun Pharma’s goodwill, which was detrimental not only to the plaintiff’s reputation but also to consumers who could be misled into purchasing inferior products.

Allowing the application for summary judgment, the Court ordered:

“The present Suit is decreed against Defendant No. 2 in terms of prayers made in Paragraph No. 37(a), (b) and (f) of the present Suit.”

On costs, the Court held:

"As regards the relief for costs as pressed by the Plaintiff, considering the facts and circumstances of this case and non-appearance of Defendant No. 2, the Plaintiff shall be entitled to recover the costs of these proceedings from Defendant No. 2 in terms of the provisions of the CC Act and Rules, 2018 read with Rules, 2022."

To view the official order, click the link below:

https://medicaldialogues.in/pdf_upload/ordersun-v-ozieldelhc-643311-317905.pdf