Summary
The Madras High Court recently issued a permanent injunction against Cadila Healthcare, restraining it from using trademarks similar to Sun Pharma's VENIZ for pharmaceutical products. Sun Pharma, which adopted the VENIZ mark in 2000, contended that Cadila's VENZ-OD was deceptively similar and likely to cause confusion in the market for medicines treating depressive disorders. The Court found in favour of Sun Pharma, awarding Rs 3 lakh in damages and requiring Cadila to render accounts of profits from the infringing mark. The decision was based on Sun Pharma's valid trademark registrations and the lack of registration proof from Cadila. Notably, Cadila had also altered its mark to ZYVEN OD after the dispute arose.
Cadila Healthcare is not only a popular name in the pharma industry but also in trademark circle. The people in the trademark fraternity are well aware about the landmark judgment involving Cadila Healthcare, which established the criteria for trade mark passing off action.
Last week, the Madras High Court passed an order, i.e. a permanent injunction against Cadila Healthcare, refraining the company from using any similar trademark, as that of “VENIZ ” which belongs to Sun Pharmaceuticals.
Sun Pharmaceuticals had adopted the trademark VENIZ in August 2000 for medicines to combat depressive disorders and other psychotic disorders and Venlafaxine Extended Release capsule under the trademark VENIZ XR. In 2009, the plaintiff became aware of the usage of deceptively similar trademark, i.e. VENZ-OD by Cadila Healthcare. Sun Pharmaceuticals contended in its petition seeking permanent injunction that the impugned marks involved are almost identical and deceptively similar and the goods involved are identical and are meant for the same disease, which is likely to create confusion in the market.
Cadila Helathcare, in its defence, 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. This kind of defence is very common in trademark disputes in the pharma industry.
The Madras High Court passed an order of permanent injunction restraining not only Cadila Healthcare, but also Zydus Healthcare, “their distributors, stockists, servants, agents, retailers, legal representatives or any other person claiming under them from dealing in any manner like 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.”
In addition to permanent injunction, Cadila Healthcare has also been ordered to pay Sun Pharma a sum of Rs 3 lakh as liquidated damages for infringement against the Sun Pharma’s registered trademark and passing off products as that of 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. The Court passed the favourable order, as Sun Pharma was able to provide its trade mark registration from the Trade mark Registry for its marks VENIZ-XR, D-VENIZ, while Cadila Healthcare did not submit any documents to showcase the registration of the mark “VENIZOD” granted in its favour. The Court also observed that Cadila Healthcare has changed its trademark name from VENZ-OD to ZYVEN OD for the impugned drug.
Authored by-Sambhavi Patnaik
Sources-1
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