In a trademark infringement case, the Delhi High Court awarded costs of Rs. 5 Lakhs in favour of the plaintiff, Sun Pharma Laboratories Ltd. pertaining to its registered trademark, “OXIPLAT”.
The registration for the plaintiff’s trademark was granted in the year 2001, whereas that for the defendants’ trademark, “SOXPLAT” was granted in 2007. In October 2014, the plaintiff came to know about the defendant’s mark and subsequently, filed a suit before the Delhi High Court seeking a permanent injunction against the infringement of its trademark, “OXIPLAT”, which was said to be used for medicinal preparations consisting of Oxaliplatin. The plaintiff submitted that this drug was used in the treatment of cancer of the colon and rectum.
However, the Single Judge Bench of the Delhi High Court rejected the plaintiff’s plea for an interim injunction. On appeal, the Division Bench also dismissed the request considering that the drug was sold based on a doctor’s prescription and the chemist would know the phonetic difference between both marks.
When the case was pending, the plaintiff filed an application before the Intellectual Property Appellate Board (IPAB) for the cancellation of the defendants’ registered trademark. The Board observed, “Sun Pharma is the prior in adoption and user of the Trademark than Mylan and other third parties’ registration referred by Mylan“. Consequently, the defendants’ trademark was cancelled by the IPAB on account of deceptive similarity in June 2020.
Pursuant to the IPAB order, the plaintiff approached the Delhi High Court for a summary judgment. The Court noted the defendants’ submissions that they had given up the use of the impugned mark since November 2022. Accordingly, the Court did not venture into the similarity or otherwise of the marks and awarded costs of Rs. 5 Lakhs in favour of the plaintiff.
 Sun Pharma Laboratories Ltd. v. Mylan Laboratories Limited & Anr. [CS(COMM) 1098/2016 & IA 1395/2023]