Recently the Delhi High Court granted an interim injunction in favour of the plaintiff, Sun Pharma, restraining the defendant, DWD Pharma, from manufacturing, selling, advertising or otherwise dealing in medicinal preparations under the mark FOLZEST, based on the mark’s deceptive similarity to Sun Pharma’s mark, FORZEST. The court, however, imposed costs to the tune of INR 10 lakhs (approx. USD 12,150) on Sun Pharma for concealing material facts from the court.
The plaintiff claimed to be the prior registered proprietor and user of the mark FORZEST since 2003. In May 2022, the court had passed an ex parte ad interim injunction in Sun Pharma’s favour restraining DWD Pharma from using the FOLZEST mark or any other mark deceptively similar to the plaintiff’s FORZEST mark. DWD Pharma, in turn, moved an application for setting aside the ex parte order on the ground that Sun Pharma concealed material facts from the court. DWD Pharma claimed that it is the registered proprietor of the mark ZEST and ZEST family of marks since 1983 and alleged that the plaintiff was well aware of these facts but did not disclose them intentionally in its plaint.
The court, ultimately, granted interim relief in Sun Pharma’s favour by observing that DWD Pharma cannot, under the garb of having exclusivity over the term ZEST, adopt a mark that is deceptively similar to a mark in which Sun Pharma has superior rights. The disastrous consequences on public health caused by any confusion between the rival marks, that were used in respect of completely different ailments, also led the court to rule in Sun Pharma’s favour. However, the court imposed costs on Sun Pharma for concealment of material facts and allowed the defendant’s request to grant it time to petition to cancel Sun Pharma’s registration for FORZEST. Sun Pharma, thereafter, filed an appeal to set aside the order imposing costs on it. The appellate court stayed the direction to deposit costs until the next hearing date.
Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd. CS(COMM) 328/2022 Order dt. 22.11.2022 and FAO(OS) (COMM) 310/2022 Order dt. 30.11.2022