SUN PHARMACEUTICALS INDUSTRIES LIMITED Vs. CADILA HEALTHCARE LTD.

JUDGEMENT

(1.) The averments in the plaint are as follows.

(2.) The defendants had filed common written statement denying the allegations made in the plaint and would state that this Court has no territorial jurisdiction to entertain the present Suit for the reason that the registered office of the first defendants as well as the plaintiff are located at Ahmedabad, Gujarat State and the registered office of the second defendant is at Sikkim and that apart, the plaintiff has failed to show any commercial sales of the defendant's mark VENZ OD within the territorial jurisdiction of this Court. The defendants, on the merits of the case, would contend that the plaintiff has acknowledged that it became aware of the defendant's product VENZOD in Aug., 2009 and the plaintiff claims to have actually issued a 'seize and desist' notice to the defendants in Aug. 2009 and though the first defendant has launched VENZ-OD in the market as early as on 03.08.2009, there is a gross delay in instituting the litigation.

(3.) The defendants would further state that in the year 2001, the first defendant adopted the trademark VEN-OD for its product Venlafaxine by adopting VEN from the name of the drug and OD from ONCE A DAY and the product under the said mark was launched in Sept., 2001. It is further stated by the defendants that the first defendant in the last quarter of the year 2006, started development work on the Active Pharmaceutical Ingredient (API) Desvenlafaxine at its facility and after successful development, it also started development work on the finished formulation containing Desvenlafaxine in Aug. 2008 and also undertook Toxicology studies, Clinical Trials and Bio-equivalence study for the said finished formulation and after successful completion, the first defendant applied to the Government of India for the manufacture of finished formulation containing Desvenlafaxine and the Director General of Health Service, vide letter dated 20.07.2009, granted permission to the first defendant to manufacture the said finished formulation. The first defendant also claims that it is the first pharmaceutical company in India to obtain manufacturing permission for Desvenlafaxine from the health authorities and the drug containing Desvenlafaxine is manufactured by Zudus Healthcare, namely the second defendant. Since Desvenlafaxine is the isomer of Venlafaxine, the first defendant decided to modify its mark Ven and took the first letter Z from the first defendant trademark Zydus and coined the trademark Venz for the product of Desvenlafaxine and thus, the mark Venz is coined by adding the letter Z in the first defendant's existing mark Ven and the mark Ven was launched by the first defendant on 03.08.2009.