Madras HC orders in favour of Sun Pharma in trademark dispute

The Court issued a permanent injunction against Cadila Healthcare using marks similar to Sun Pharma's particular trademark

The Madras High Court has issued an order in favour of Sun Pharmaceuticals in a trademark dispute it has raised against Cadila Healthcare for the trademark of its depressive disorder drug VENIZ. The Court issued a permanent injunction against the latter using marks similar to Sun Pharma's particular trademark.

Sun Pharma approached the High Court seeking permanent injunction restraining Cadila Healthcare and the related parties from manufacturing, stocking or selling pharmaceuitcal products under the trademark VENZ or any other trademark indentical or deceptively similar to its trademark VENIZ. It added that Sun Pharma adopted the trademark VENIZ in August 2000 for medicines to treat depressive disorders and other psychotic disorders and Venlafaxine Extended Release capsule under the trademark VENIZ XR.

 

Considering the arguments of both Sun Pharma and Cadila Healthcare on the issue, Justice M Sathyanarayanan issued an order allowing permanent injunction restraining Cadila Healthcare and Zydus Healthcare, "their distributors, stockists, servants, agents,retailers, legal representatives or any other person claiming under them from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations infringing plaintiff's registered trademark VENIZ by use of deceptively similar trademark VENZ or any mark deceptively similar to plaintiff's registered trademark VENIZ or in any other manner."

Cadila Healthcare was also ordered to pay to Sun Pharma a sum of Rs 3 lakh as liquidated damages for committing acts of infringement against the latters' registered trademark so as to pass off their products as and for the plaintiff's products. The Court also ordered a preliminary decree in favour of Sun Pharma, directing Cadila Healthcare to render accounts of profits made by them by use of the trademark VENZ and for rendition of accounts.

Sun Pharma argued that it has come across Cadila's trademark VENZ-OD, which contains Desvenlafaxine used to treat depressive disorders and other psychotic disorders, in 2009. It alleged that the marks involved are almost identical and deceptively similar and the goods involved are identical and are meant for the same diesease.

Cadila Healthcare denied the allegations and sought to dismiss the petition. It also argued that its mark VENZ is a combination of the VEN from the active ingredient Des Venlafaxine and Z from the company's name Zydus Cadila.

The Court observed that while Sun Pharma has received Trade Mark registration from the Government of India for VENIZ-XR, D-VENIZ, while Cadila has not submitted any documents as the registraton of the mark "VENIZOD" granted in its favour. Cadila has also changed the name VENZ-OD to ZYVEN OD, it added.