The Delhi High Court has restrained Fincure Pharmaceuticals from manufacturing, selling, offering for sale, advertising, or dealing in medicinal and pharmaceutical preparations under the marks “PANTOPACID”, “PANTOPACID D”, and “PANTOPACID SR”, or any other deceptively similar mark amounting to infringement of “PANTOCID” belonging to Sun Pharma Laboratories. However, considering that Finecure had been selling its products and there was no injunction till date, the Court granted it a limited four-month period to dispose of its existing stock, subject to filing an affidavit giving full stock particulars, including batch number and manufacturing date, within the time directed. The Court also made it clear that with effect from the date of the order, no further manufacturing or packaging under the impugned mark would be permissible.
The High Court held that where infringement of a registered pharmaceutical trademark is prima facie established, interim injunction shall ordinarily follow, unless there is a sustainable challenge to the validity of the registration. In the present case, no such sustainable challenge survived because the earlier Takeda registration had already been removed from the Register, and the presumption of validity under Section 31(1), Trade Marks Act, 1999 remained intact. The Court further held that non-disclosure of concluded prior proceedings or of the Sep 16, 2010 letter did not amount to suppression disentitling relief.
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The Division Bench comprising Justice V. Kameswar Rao and Justice Manmeet Pritam Singh Arora observed that the Single Judge’s refusal of injunction could not be sustained once infringement had been found. It agreed that “PANTOPACID” is structurally, visually and phonetically deceptively similar to “PANTOCID”, especially because both marks are used for the same pharmaceutical product, where courts apply stricter standards because of public interest and the possibility of confusion in medicines.
On validity, the Court found that the Single Judge had erred in treating Takeda’s earlier PANTOCID registration as a live obstacle. Takeda’s opposition to Sun Pharma’s application had already been dismissed on Dec 27, 2010, that order was never challenged, and Takeda’s own registration was later removed from the Register by order dated Jan 08, 2019. Therefore, when the suit was filed in 2023, Sun Pharma’s mark was the only PANTOCID mark surviving on the Register, and the statutory presumption of validity under Section 31(1), Trade Marks Act, 1999 could not have been disregarded at the interlocutory stage.
The Bench also rejected the finding of suppression. It held that the earlier Takeda proceedings had already attained finality in Sun Pharma’s favour and were not a material fact for deciding the dispute between the present parties. Likewise, the non-filing of the letter dated Sep 16, 2010 was not fatal because Sun Pharma had already disclosed in the plaint that it had opposed Finecure’s 2009 trademark application in October 2010, and the letter itself merely asked Finecure to withdraw its application while also recording Sun Pharma’s stand that Finecure was not then using the impugned mark.
On delay and balance of convenience, the Bench found that the Single Judge’s conclusion that Finecure had become a “formidable market player” was not borne out from the record. Finecure’s annual sales were shown at around Rs. 28.64 lakhs for 2022–23, whereas Sun Pharma’s sales under PANTOCID for 2021–22 were over Rs. 513.63 crores. The Bench said that once infringement of a registered trademark was made out, and no credible challenge to validity survived, injunction ought to follow, particularly in the case of medicinal products.
Briefly, Sun Pharma Laboratories Ltd., the proprietor of the registered trademark “PANTOCID” for a pantoprazole-based Schedule H drug used to treat acidity-related conditions, challenged Finecure Pharmaceuticals’ use of the mark “PANTOPACID” for an identical pharmaceutical product. Sun Pharma’s application for PANTOCID was filed on 19.02.1998 and registration was granted on 01.02.2012. Finecure adopted PANTOPACID in December 2007 and filed its trademark application on 13.04.2009, which Sun Pharma opposed and that opposition remains pending. The Single Judge had already held that PANTOPACID prima facie infringes PANTOCID, but still refused interim injunction on the grounds of a credible challenge to Sun Pharma’s registration, alleged suppression of material facts, disputed prior use, and delay in filing the suit.
