SUN PHARMA LABORATORIES LTD Vs. AJANTA PHARMA LTD

JUDGEMENT

(1.) Is the test for infringement and passing off for nutraceutical products the same as the test applicable for pharmaceuticals?

(2.) The dispute between the Plaintiff and the Defendant in the present case is in respect of two products used by patients of age related dimness of vision and diabetic retinopathy. They are sold under the trademarks 'GLOEYE' and 'GLOTAB'. Both are ocular medicines. Since they contain plant extracts, they are termed as 'nutraceuticals' under Section 22 of the Food Safety and Standards Act, 2006 (hereinafter "FSS Act, 2006") and are governed by the Food Safety and Standards (Licensing and Registration of Food Businesses) Regulations, 2011 (hereinafter "FSS Regulations, 2011") and the Food Safety and Standards (Health Supplements, Nutraceuticals, Food for Special Dietary Use, Food for Special Medical Purpose, Functional Food and Novel Food) Regulations, 2016 (hereinafter, 'FSS Regulations, 2016').

(3.) The case of the Plaintiff is that it commenced use of the mark 'GLOEYE' in July, 2005. The mark 'GLOEYE' was registered in class 5 since 25th July, 2005. The annual sales of the Plaintiff under this mark are around Rs.11 crores as of 2012-13 and the annual promotional expenses is approximately Rs.244 lakhs for the said year. The Plaintiff's product is an anti-oxidant tablet which is taken for age related dimness of vision and diabetic retinopathy. The Defendant - Ajanta Pharma Limited uses the mark 'GLOTAB' also for age related dimness of vision and diabetic retinopathy. The Defendant applied for the mark on 23rd July, 2008 on a proposed to be used basis and the mark was registered on 14th January, 2011. Thus, both the trademarks are registered, and the present suit would proceed as a passing off action. The use by the Defendant is since 2013. The Plaintiff filed the present suit in 2014 and sought an interim injunction. The parties explored mediation, which however failed. The Plaintiff, sought amendment in the suit to add averments that the Defendant's packaging is similar to that of the Plaintiff. In respect of the said amendment, the following order was passed on 23rd July, 2018: