Friday, 3 July 2015

Psycoremedies Ltd. Wins ‘SYZOPIN’ Battle Against Sun Pharma

In a recent trademark feud between Sun Pharma Laboratories Ltd. (hereinafter the Plaintiff) and Pcycoremedies Ltd. (hereinafter the Defendant), the Plaintiff sought to restrain the Defendant from using the trademark SYZOPIN which was nearly identical to the Plaintiff’s registered trademark SIZOPIN with respect to medicinal preparations for the treatment of depression and schizophrenia. The Plaintiff approached the Madras High Court for grant of injunctive relief against alleged infringement.

Facts of the case:
  1. The Plaintiff is the registered proprietor and prior user of the mark SIZOPIN which it has been using since 1995 for marketing of medicinal and pharmaceutical preparations under class 5.
  2.  The Plaintiff encountered the Defendant’s medicinal preparation bearing an identical mark SYZOPIN, which was visually, structurally and phonetically identical to the Plaintiff’ mark SIZOPIN, and issued a legal notice to the Defendant dated July 11, 2014 calling upon them to cease and desist from using the mark SIZOPIN in relation to their medicines.
  3. The Defendant refused to comply with the Plaintiff’s requisitions and instead, claimed that the Plaintiff’s mark was generic in nature and applied for statutory protection of their own mark SYZOPIN by way of registration of the mark. Further, the Defendant also applied for rectification of the Plaintiff’s registered trademark SIZOPIN.
Aggrieved by the aforesaid, the Plaintiff filed a suit for permanent injunction before the Madras High Court.

Plaintiff’s Contentions
  1. The Plaintiff had been using the mark SIZOPIN extensively and continuously since 1995 whereas the Defendant had started using the mark SYZOPIN much later in 2002. The Plaintiff, apart from being the registered proprietor of the mark SIZOPIN, had also earned tremendous goodwill garnered through undisputed prior adoption and long and continuous use of the mark. The Plaintiff’s preparations bearing the mark SIZOPIN were well-reputed and well-established in the market long before the Defendant adopted the deceptively similar mark, SYZOPIN.
  2. The Defendant’s mark SYZOPIN was almost identical with the Plaintiff’s registered trademark SIZOPIN and was phonetically, structurally and ocularly identical to the registered trademark. The Defendant had deliberately changed the letter ‘I’ with another phonetically identical letter ‘Y’ while copying Plaintiff’s registered trademark. The change introduced by the Defendant was trivial and did not in any manner distinguish the marks of the Plaintiff and the Defendant.
  3. The Defendant had deliberately applied for registration of the mark with the sole intent to subvert the rights of the Plaintiff. This reflected their mala fide intention to create a false impression in the minds of the public that their products also emanated from the Plaintiff’s illustrious group of companies and thereby ride on the goodwill and reputation of the Plaintiff.
In view thereof, the Plaintiff sought the grant of permanent injunction restraining the Defendants from using the Plaintiff’s registered trademark SIZOPIN with respect to their medicinal products along with liquidated damages, delivery-up of goods, account of profits and cost of proceedings.

An interim injunction was granted in favour of the Plaintiff pending the disposal of the suit.

Defendant’s Contentions

The Counsel for the Defendant filed an application seeking to vacate the interim order of injunction granted by the court. It was submitted on behalf of the Defendant that:
  1. The Defendant had coined the name SYZOPIN honestly from their trade name and ingredient. The Defendant’s predecessor company (Psyco Remedies) had adopted the use of the mark SYZOPIN in the year 2002 for a medicinal products for the treatment of psychiatric disorders.
  2. It was also contended that the syllable SIZO was not uncommon in the pharma trade for products relating to psychiatric disorders. It was argued that numerous marks were already registered and pending registration, with the prefix SIZO.
  3. The Defendants also pointed out that there were lucid packaging dissimilarities between the two goods which ruled out the possibility of any confusion and deceptive similarity.
  4. Further, it was submitted that the products in question are used to treat Schizophrenia which is a serious ailment and hence are not to be treated like any other pharmaceutical products like paracetamol. In the instant case, the products could be purchased without a prescription and as such there would not be any confusion in identifying the two marks.
Laches and Acquiescence in filing of Suit by Plaintiff

The major setback in the Plaintiff’s case was a delay of almost 12 years in filing of the suit for injunction against the Defendant’s use of their mark SYZOPIN. It was submitted on behalf of the Defendant that the trademark SYZOPIN has been used openly, continuously and without any interruption whatsoever by them since the year 2002. In evidence, sale invoices from the year 2002 were produced by the Defendant. Further, it was argued that the Plaintiff had known or at least ought to have known about the Defendant. In this regard the counsel furnished several medical journals from the year 2008 and showed that the drugs of the Plaintiff and the Defendant featured together consistently. Having allowed the Defendant to use the mark SYZOPIN for the past 12 years, now the Plaintiff is estopped from restraining the Defendant from using the mark SYZOPIN.

In their defense, the Plaintiff submitted that the business of the Defendant did not have any substantial presence in the market until about the time of initiation of proceedings and hence the Plaintiff had no occasion or opportunity to know about the Defendant’s mark until recently. Therefore, the submission made by the Defendant on the ground of delay and acquiescence could not be accepted.

Observation and Decision of the Madras High Court
  • The Court observed that there was no dispute nor any doubt that both marks were identical and were being used with respect to the similar products, and hence it was unnecessary to delve into the submissions made by the Plaintiff.
  • However, while addressing the question of the delay in filing of the suit for injunction the Court observed that both trademarks featured together in medical journals since 2008, therefore the Plaintiff ought to have known about the existence of the Defendant’s mark since around that time. The Plaintiff’s argument that the business of the Defendant did not have any substantial presence in the market until about the time of initiation of proceedings thus the Plaintiff had no occasion to know about the Defendant’s mark was a weak one.
  • Thus, according to the Court, prima facie the Plaintiff had the knowledge about the Defendant’s mark and that the case of the Plaintiff suffered from not mere delay, but also laches coupled with acquiescence.
  • The Defendant had been using the mark SYZOPIN for the past 12 years and the restraint from using the said mark would definitely affect their business adversely. Whereas, the Plaintiff who had allowed the Defendant to use the mark SYZOPIN all this while would not suffer any loss if the Defendant was allowed to use the mark.
The Court found the balance of convenience in favor of the Defendant and the held that the Plaintiff was not entitled to the continuation of the interim injunctive relief.  

The Honorable Court’s reasoning in the above ruling upholds the maxim of “Vigilantibus Et Non Dormientibus Jura Subveniunt” or “the law assists those who are vigilant with their rights, not those that sleep thereupon”.  

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