SUN PHARMA LABORATORIES LIMTED Vs. INTAS PHARMACEUTICAL LIMITED

JUDGEMENT

(1.) Present appeal has been filed challenging the order dtd. 22/11/2022 passed by the learned Single Judge of this court in CS(COMM) 688/2022 whereby Appellant-Plaintiff's application under Order XXXIX Rules 1 and 2, CPC was dismissed on the ground that the two marks in question are not phonetically or visually similar.

(2.) Learned counsel for the Appellant-Plaintiff states that the AppellantPlaintiff and the Respondents-Defendants launched their medicines around the same time i.e. June-July, 2022 after expiry of the patent protection granted to the anti-diabetic drug 'Sitagliptin'. He states that the AppellantPlaintiff 's trademark "SITARED" and the Respondents-Defendant' mark "SITARA" are derived from the salt 'Sitagliptin' and the registration applications of the marks of both the parties are currently pending registration. He further states that the Respondents-Defendants are using an additional letter 'D' as a suffix with its primary mark "SITARA" to indicate the presence of an additional secondary salt 'Dapagliflozin' and therefore trading its medicine under the name "SITARA-D".

(3.) Learned counsel for the Appellant-Plaintiff states that the Respondents-Defendant' mark "SITARA-D" is deceptively similar to two of the Appellant-Plaintiff's trademarks namely "SITARED" (which is not registered) and "SETARET" (which though registered in 1998, yet has not been used by the Appellant-Plaintiff). He states that even though the Respondents-Defendants claim that its mark "SITARA-D" is not deceptively similar to the mark of the Appellant-Plaintiff's by virtue of the hyphen (-) in between its primary mark "SITARA" and the letter 'D', yet in light of human error when the impugned mark is written without the hyphen (-), "SITARA-D" would become "SITARAD" which is similar to the Appellant-Plaintiff's marks "SITARED" or "SETARET". He points out that the Appellant-Plaintiff does not have any objection to the use of the Respondents-Defendant' mark "SITARA" and is only opposing the use of the letter 'D' as a suffix to the primary mark. He suggests that the Respondents-Defendants instead of using the mark "SITARA-D", should use the mark "SITARA-DAP" and/or "SITARA-DAPA".