SUN PHARMACEUTICAL INDUSTRIES LIMITED Vs. CADILA HEALTHCARE LTD

JUDGEMENT

(1.) THE plaintiff is the appellant. THE suit was filed for an injunction restraining the respondents from infringing the registered trade-mark VENIZ by use of deceptively similar trademark VENZ or any mark deceptively similar to that of the plaintiff and for other reliefs.

(2.) THE plaintiff carries on the business of manufacturing medicinal preparations. It is an established and well known pharmaceutical company marketing drugs and formulations since 1983. According to the plaintiff, such preparations are sold all over the country on an extensive scale. THE plaintiff claims that in the speciality therapy areas like Psychiatry, Neurology and Cardiology, it is one of the top three companies. THE plaintiff manufactures medicines for treatment of major depressive, generalize anxiety, social anxiety, panic disorders and various other disorders requiring antidepressant medicines. In the year 2000, the plaintiff had applied to the Drug Controller for permission to manufacture Venlafaxine Extended Release (XR) Capsule for treatment of major depression disorders under the trademark VENIZ. Upon receipt of license, the plaintiff commenced manufacture of the medicinal and pharmaceutical preparations under the trademark VENIZ XR for 37.5 mg and 75 mg, which are sold in strips in varying strengths. THE plaintiff also acquired drug license for manufacture of medicinal preparations under the mark VENIZ XR for 150 mg. THE plaintiff became the registered proprietor of the mark VENIZ XR under No.949364 dated 22.8.2000 in respect of medicinal and pharmaceutical preparations and substances. THE registration contains the condition and limitation that the trademark VENIZ XR shall give no right to the exclusive use of the word XR, since terminologies such as XR, OD, SR, etc., refer to the characteristics of the drug, viz. Extended Release (XR), once a Day (OD), Sustained Release (SR) etc. the plaint gives the details of the sale turnover of the plaintiff for the period 2000-2001 to 2008-2009. According to them, the long and continuous use of the trademark VENIZ in respect of medicinal preparations has come to be identified only with the plaintiff.

(3.) ACCORDING to the defendants/respondents, for the purpose of infringement or passing off, the rival trademarks VENIZ-XR and VENZ-OD need to be considered and compared for any alleged similarity or alleged confusion. ACCORDING to them, there is clearly no similarity between VENIZ-XR and VENZ-OD visually, phonetically or structurally. The plaintiff-s trademark is an usage of the basic molecule which is Venlafaxine and Venlafaxine cannot be exclusively used by the plaintiff in view of the fact that it is publici juris. The defendants- trademark, on the other hand, is VENZ-OD is a coined word. ACCORDING to the defendants, they have a large number of products with the brand portfolio having suffix Z. They have also referred to the practice of pharmaceutical companies of deriving the name of the drug from the Active Pharmaceutical ingredient. The defendants have pointed out the salient differences between the two products and therefore claimed that the injunction ought not to be granted.