In a trademark infringement suit, the Delhi High Court awarded Sun Pharma a five-lakh-rupee penalty for its 2001 “Oxiplat” trademark.
Title: Sun Parma Laboratories Ltd. v. Mylan Laboratories Limited & Anr.
Decided on: 2nd August, 2023
+ CS(COMM) 1098/2016 & I.A.1395/2023
CORAM: JUSTICE PRATHIBA M. SINGH
Introduction
The Delhi High Court, presided over by Justice Pratibha M Singh, has awarded costs of Rs. 5 lakhs in a trademark infringement suit to Sun Pharmaceutical Industries Limited. The case was brought forth by Sun Pharmaceuticals against two pharmaceutical companies over their registered mark “Soxplat”, which was alleged to infringe upon Sun Pharmaceuticals’ registered mark “Oxiplat”. The court’s decision was based on the substantial sales and investments made by Sun Pharmaceuticals in promoting and using the “Oxiplat” mark.
Facts
Sun Pharmaceutical Industries Limited filed a trademark infringement suit in 2016 against two pharmaceutical companies that had registered the mark “Soxplat” in 2014. Sun Pharmaceuticals had coined the mark “Oxiplat” back in 2001, which was used for medicinal preparations containing Oxaliplatin. The company sought a permanent injunction against the use of the “Soxplat” mark.
The Court noted that Sun Pharmaceuticals’ sales of medicinal formulations under the “Oxiplat” mark were substantial, with a sales turnover of approximately Rs. 26.5 crore at the time of filing the suit. The company had also invested significantly in advertising and promoting the mark.
During the course of the proceedings, the defendants’ trademark “Soxplat” was canceled, rendering them no longer registered for the mark.
Analysis
The Court took note of the substantial sales and investments made by Sun Pharmaceuticals in relation to the “Oxiplat” mark. It observed that the defendants had canceled their trademark “Soxplat” during the proceedings, indicating that there was no longer any dispute between the parties concerning the use of the mark. The Court refrained from expressing an opinion on the similarity of the two marks “Oxiplat” and “Soxplat,” as the defendants had abandoned the latter mark.
Held
The Delhi High Court awarded costs of Rs. 5 lakhs to Sun Pharmaceutical Industries Limited in the trademark infringement suit. The Court’s decision was influenced by the substantial sales and investments made by the plaintiff in relation to the “Oxiplat” mark and the subsequent cancellation of the defendants’ “Soxplat” mark. The defendants’ decision to abandon the mark led the Court to conclude that there was no longer any dispute regarding the marks’ similarity.
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Written by- Ankit Kaushik