The Supreme Court has disposed of a long-pending trademark dispute between Sun Pharmaceutical Industries Ltd. and West Coast Pharmaceutical Works Ltd. after recording a settlement under which the respondent agreed to stop using the mark “ACICAL”, which Sun Pharma alleged was deceptively similar to its trademark “ACUCAL”.
A Bench comprising Chief Justice Surya Kant and Justice V. Mohana allowed the civil appeals in terms of the settlement agreement executed between the parties on October 11, 2024, setting aside the orders of the Gujarat High Court and the City Civil Court, Ahmedabad, which had earlier refused interim relief to Sun Pharma.
The dispute arose from a passing-off suit filed by Sun Pharma seeking to restrain the respondents from using the mark “ACICAL” in relation to pharmaceutical products. At the time the suit was instituted, Sun Pharma’s application for registration of the trademark “ACUCAL” was still pending. Although the trial court initially granted an ex parte injunction, it later vacated the interim protection, holding that the competing products operated in different therapeutic areas, that the plaintiff’s mark had not yet been registered, and that deceptive similarity had not been established. The Gujarat High Court affirmed that view while distinguishing the Supreme Court’s decision in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73.
During the pendency of the appeals, Sun Pharma secured registration of the trademark “ACUCAL”. The parties thereafter entered into a settlement whereby West Coast Pharmaceutical Works Ltd. agreed to permanently cease manufacturing, marketing or dealing in pharmaceutical products under the mark “ACICAL” or any deceptively similar mark. The respondents also agreed to abandon their trademark application for “ACICAL”.
Accepting the settlement, the Supreme Court set aside both the January 23, 2012 order of the City Civil Court, Ahmedabad, and the June 20, 2012 judgment of the Gujarat High Court. The settlement agreement was directed to form part of the Court’s order.
Since the respondents were not represented when the matter was taken up, the Court clarified that they would be at liberty to approach the Supreme Court within four months if they had any objection to the recording of the settlement or the disposal of the appeals in those terms.
