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Sun Pharmaceutical Industries Limited V/S Brexsun Pharma Private Limited


Company & Directors' Information:- SUN PHARMACEUTICAL INDUSTRIES LIMITED [Active] CIN = L24230GJ1993PLC019050

Company & Directors' Information:- K D L PHARMA LIMITED [Under Liquidation] CIN = U24231WB1989PLC047198

Company & Directors' Information:- SUN INDUSTRIES LIMITED. [Active] CIN = U51909DL1991PLC045798

Company & Directors' Information:- R S M PHARMA PRIVATE LIMITED [Active] CIN = U85110KA1989PTC009974

Company & Directors' Information:- J P N PHARMA PRIVATE LIMITED [Active] CIN = U24230MH2004PTC145446

Company & Directors' Information:- U S PHARMA (INDIA) PRIVATE LIMITED [Active] CIN = U24230MH2003PTC140514

Company & Directors' Information:- A S PHARMACEUTICAL (INDIA) PRIVATE LIMITED [Active] CIN = U24230TN2010PTC076676

Company & Directors' Information:- V V L PHARMA PRIVATE LIMITED [Active] CIN = U24230MH2006PTC160047

Company & Directors' Information:- R K G PHARMA PVT LTD [Active] CIN = U74899DL1969PTC005111

Company & Directors' Information:- I G PHARMA LIMITED [Active] CIN = U24232DL2005PLC137560

Company & Directors' Information:- D L PHARMA PRIVATE LIMITED [Strike Off] CIN = U24230TG1996PTC023180

Company & Directors' Information:- A G L PHARMA PRIVATE LIMITED [Active] CIN = U24232TN2006PTC060592

Company & Directors' Information:- M R PHARMA PRIVATE LIMITED [Active] CIN = U24230MH1996PTC100199

Company & Directors' Information:- M C W PHARMA PVT LTD [Active] CIN = U24232MP1988PTC004693

Company & Directors' Information:- A B PHARMA PRIVATE LIMITED [Strike Off] CIN = U74899DL1987PTC028777

Company & Directors' Information:- SUN PVT LTD [Active] CIN = U24246RJ1984PTC003093

Company & Directors' Information:- G SUN INDIA PRIVATE LIMITED [Strike Off] CIN = U74899DL1995PTC071425

Company & Directors' Information:- S. B. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U24231UP1994PTC017328

Company & Directors' Information:- N B PHARMA PRIVATE LIMITED [Active] CIN = U24239HR2002PTC034813

Company & Directors' Information:- G AND G PHARMA (INDIA) LIMITED [Active] CIN = U74899DL1995PLC070349

Company & Directors' Information:- B L PHARMA LIMITED [Active] CIN = U24230TG1998PLC029483

Company & Directors' Information:- Y L PHARMA PRIVATE LIMITED [Active] CIN = U24230HP2021PTC008443

Company & Directors' Information:- P R P PHARMA LIMITED [Strike Off] CIN = U24233DL2004PLC127606

Company & Directors' Information:- A D PHARMA PRIVATE LIMITED [Strike Off] CIN = U74899DL1984PTC017927

Company & Directors' Information:- M B AND K PHARMA PRIVATE LIMITED [Active] CIN = U85110UP1993PTC015566

Company & Directors' Information:- P R A B PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U33111UP2013PTC054705

Company & Directors' Information:- D R L PHARMA PRIVATE LIMITED [Active] CIN = U74900DL2009PTC194144

Company & Directors' Information:- I PHARMA PRIVATE LIMITED [Strike Off] CIN = U24232KA2012PTC066464

Company & Directors' Information:- C & G PHARMA PRIVATE LIMITED [Strike Off] CIN = U24232KL2007PTC020840

Company & Directors' Information:- S D H PHARMA PRIVATE LIMITED [Active] CIN = U24100AP2021PTC118446

Company & Directors' Information:- S K PHARMA PVT LTD [Strike Off] CIN = U24200TG1988PTC008219

Company & Directors' Information:- I B PHARMA PRIVATE LIMITED [Active] CIN = U51397DL2007PTC166799

Company & Directors' Information:- J B K SUN PHARMA INDIA PRIVATE LIMITED [Active] CIN = U24231DL2002PTC115355

Company & Directors' Information:- G B PHARMA LIMITED [Under Process of Striking Off] CIN = U24231TN2004PLC053082

Company & Directors' Information:- G R PHARMA PRIVATE LIMITED [Active] CIN = U85300MH2014PTC251911

Company & Directors' Information:- S B PHARMA PVT LTD [Strike Off] CIN = U74899DL1984PTC018041

Company & Directors' Information:- M S G PHARMA INDIA PRIVATE LIMITED [Active] CIN = U51109DL1998PTC093237

Company & Directors' Information:- P S A PHARMA PRIVATE LIMITED [Active] CIN = U74899DL1987PTC026593

Company & Directors' Information:- G D H PHARMA PRIVATE LIMITED [Active] CIN = U74899DL2000PTC105701

Company & Directors' Information:- G. V. PHARMA (INDIA) PRIVATE LIMITED [Strike Off] CIN = U85100TG2010PTC071776

Company & Directors' Information:- C M C PHARMACEUTICAL PVT LTD [Strike Off] CIN = U24231WB1985PTC039722

Company & Directors' Information:- P C INDIA PHARMA PRIVATE LIMITED [Strike Off] CIN = U24230MH2000PTC129963

Company & Directors' Information:- M S C PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U24230MH2003PTC143605

Company & Directors' Information:- C T I L PHARMA PRIVATE LIMITED [Strike Off] CIN = U24230MH2005PTC157982

Company & Directors' Information:- M P PHARMA PRIVATE LIMITED [Strike Off] CIN = U51397MH2004PTC144622

Company & Directors' Information:- J B M PHARMA PRIVATE LIMITED [Strike Off] CIN = U24231TG2001PTC037890

Company & Directors' Information:- R M PHARMA PVT LTD [Active] CIN = U24230AP1986PTC006128

Company & Directors' Information:- B P L PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U24239MH1978PTC020449

Company & Directors' Information:- SUN PHARMA PVT LTD [Strike Off] CIN = U24231HR1984PTC017474

Company & Directors' Information:- R. N. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U74999DL2017PTC314515

Company & Directors' Information:- S G K PHARMA PRIVATE LIMITED [Active] CIN = U52311UP2021PTC143177

Company & Directors' Information:- A S A PHARMA PVT. LTD. [Strike Off] CIN = U24231HR2001PTC034701

Company & Directors' Information:- F PHARMA PRIVATE LIMITED [Strike Off] CIN = U24239DL2003PTC120158

Company & Directors' Information:- D. R. Y. PHARMACEUTICAL PRIVATE LIMITED [Active] CIN = U52599DL2018PTC329353

Company & Directors' Information:- BREXSUN PHARMA PRIVATE LIMITED [Strike Off] CIN = U74999PB2017PTC047326

Company & Directors' Information:- M I PHARMA PRIVATE LIMITED [Active] CIN = U24239MH2009PTC190502

Company & Directors' Information:- S V J PHARMA (INDIA) PRIVATE LIMITED [Strike Off] CIN = U24297MH2013PTC245885

Company & Directors' Information:- S G A PHARMA PRIVATE LIMITED [Strike Off] CIN = U51109MH2013PTC242911

Company & Directors' Information:- F. D. I. PHARMA PRIVATE LIMITED [Strike Off] CIN = U74120MH2013PTC240347

Company & Directors' Information:- B N L PHARMA PRIVATE LIMITED [Strike Off] CIN = U24239TG2003PTC040355

Company & Directors' Information:- B P N PHARMA PRIVATE LIMITED [Strike Off] CIN = U51397UP2003PTC028134

Company & Directors' Information:- S P D PHARMA PRIVATE LIMITED [Active] CIN = U52100UP2015PTC074941

Company & Directors' Information:- B K D PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U52100WB2014PTC200227

Company & Directors' Information:- D M PHARMA PRIVATE LIMITED [Active] CIN = U33119CH2012PTC033815

Company & Directors' Information:- T S PHARMA PRIVATE LIMITED [Strike Off] CIN = U24100DL2011PTC226063

Company & Directors' Information:- R S V PHARMA PRIVATE LIMITED [Strike Off] CIN = U24232DL2009PTC186739

Company & Directors' Information:- S R J PHARMA PRIVATE LIMITED [Strike Off] CIN = U24239DL2004PTC124535

Company & Directors' Information:- J B J PHARMA PRIVATE LIMITED [Active] CIN = U74899DL2001PTC109186

Company & Directors' Information:- G S S PHARMA PRIVATE LIMITED [Active] CIN = U51102KA2015PTC082095

Company & Directors' Information:- L T & L PHARMA PRIVATE LIMITED [Active] CIN = U01132GJ2013PTC077595

Company & Directors' Information:- V 4 U PHARMA PRIVATE LIMITED [Strike Off] CIN = U51397KL2012PTC031740

Company & Directors' Information:- J S M PHARMA PRIVATE LIMITED [Active] CIN = U51397KL2014PTC037674

Company & Directors' Information:- R P PHARMA INDIA PRIVATE LIMITED [Active] CIN = U24290GJ2021PTC121186

Company & Directors' Information:- S I PHARMA PRIVATE LIMITED [Active] CIN = U24230MH2021PTC368265

Company & Directors' Information:- K PHARMA PVT LTD [Strike Off] CIN = U24239MH2006PTC165126

Company & Directors' Information:- G B PHARMACEUTICAL PRIVATE LIMITED [Strike Off] CIN = U85121HR2006PTC036295

Company & Directors' Information:- SUN INDIA CORPORATION PRIVATE LIMITED [Strike Off] CIN = U65991TN1943PTC000994

Company & Directors' Information:- SUN INDUSTRIES LIMITED [Dissolved] CIN = U99999MH1947PTC005559

    CS (COMM) 994/2018 and I.As. 8573-8574/2018

    Decided On, 13 December 2018

    At, High Court of Delhi

    By, THE HONORABLE JUSTICE: MANMOHAN
    By, J.

    For Petitioner: Sachin Gupta, Advocate



Judgment Text


1. Present suit has been filed for permanent injunction restraining infringement of trademark, passing-off, unfair competition, rendition of accounts of profits/damages and delivery up. The prayer clause is reproduced hereinbelow:-

"30. It is, therefore, most respectfully prayed that this Hon'ble Court may be pleased to grant the following reliefs in favour of the Plaintiff and against the Defendant:

(a)A decree for permanent injunction restraining the Defendant, its directors, assignees in business, its distributors, dealers, stockists, retailers/chemists, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal preparations/services related to the pharmaceutical business under the impugned trade names/trade mark/domain name/corporate name, name as may be deceptively similar to the Plaintiff's trade name/mark/domain name/corporate name SUN/SUN PHARMA/SUN PHARMACEUTICALS amounting to infringement of registered trade mark Nos. 408870, 1564369, 1822656 of the Plaintiff;

(b) A decree for permanent injunction restraining the Defendant, its directors, assignees in business, its distributors, dealers, stockists, retailers/chemists, servants and agents from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal preparations/services related to the pharmaceutical business under impugned trade names/trade mark/domain name/corporate name, namely Brexsun Pharma, www.brexsun.com or using any other trade name/trade mark/domain name/corporate name as may be deceptively similar to the Plaintiff's trade name/mark/domain name/corporate name SUN/SUN PHARMA/SUN PHARMACEUTICALS amounting to passing off of the Defendant's goods and business for those of the Plaintiff;

(c) An order for rendition of accounts of profit illegally earned by the Defendant and a decree for an amount so found due, or in the alternative, a decree for Rupees One Crore Five Thousand only (Rs. 1,00,05,000/-) towards token damages may be passed in favour of the Plaintiff and against the Defendant.

(d) An order for delivery of the infringing goods of the Defendant including impugned promotional materials, stationery, dyes, blocks etc. bearing the impugned trade names/trade mark/domain name/corporate name, namely Brexsun Pharma, www.brexsun.com and/or any other trade name/trade mark/domain name/corporate name as may be deceptively similar to the Plaintiff's trade name/mark/domain name/corporate name SUN/SUN PHARMA/SUN PHARMACEUTICALS to an authorised representative of the Plaintiff for destruction/erasure. The Defendant may also be directed to withdraw contents in respect of impugned mark from domain/website names, email IDs, trade journals, e-journals etc.;

(e) An order for costs in the proceedings

(f) Any further orders as this Hon'ble Court may deem fit and proper under the facts and circumstances of the present case."

2. Today learned counsel for the plaintiff has handed over his personal affidavit dated 13th December, 2018 and the same is taken on record. The relevant portion of the said affidavit is reproduced hereinbelow:-

"1. I say that I am the counsel for the Plaintiff in the matter.

2. I say that Advocate Amit Tomar, claiming to have been appointed by the Defendant Company called the undersigned on 11.07.2018 from mobile No. 8800442587 and asked me to email him in suit papers at his email address amit@tomarassociates.com. The scanned copy of the complete suit papers being bulky files were emailed to Advocate Amit Tomar on 11.07.2018 through a website, namely WeTransfer.com, which files were downloaded by him on the same date. Copy of the emails both dated 11.07.2018 is attached as Annexure P-1(Colly).

3. I say that Advocate Amit Tomar showed interest in negotiating a settlement. Accordingly, a compromise application was prepared and sent to him by me on 19.07.2018. Copy of email dated 19.07.2018 is attached herewith as Annexure P-2.

4. I say that Advocate Amit Tomar also requested that the suit papers and compromise application be sent to his client Sh. Puneet Kauhal, Director of the Defendant Company directly, which was sent by me on 20.07.2018 to email address puneets.pharma@gmail.com. The email dated 20.07.2018 is attached as Annexure P-3.

5. I say that I received a phone call from Sh. Puneet Kaushal from phone no. +971566134441 and +971526161004. Sh. Kaushal informed me that he is in employment in Dubai and he has no plans to run the Defendant Company. He stated that he had no interest and hence has asked his agent to wind up the company.

6. I say that I requested Sh. Puneet Kaushal to appear in the matter through counsel but my request was turned down on the grounds that he would not like to incur any expenditure.

7. I say that complete set of suit papers along with the summons were dispatched by me through Speed post on 20.07.2018 to the Defendant Company as its registered office address recorded with the Registrar of Companies which is duly uploaded on the official website of the Ministry of Company Affairs. However, the summons were received back with the endorsement "insufficient address". Copy of affidavit of service dated 16.08.2018 containing Speed Post receipt dated 20.07.2018 and tracking report is attached herewith as Annexure P-4(Colly).

8. I say that complete set of suit papers along with the summons were also e-mail by me to the Defendant Company at email address Kaushalpharmacist2@gmail.com recorded with the Registrar of Companies, which is duly uploaded on the official website of the Ministry of Company Affairs. Copy of e-mail dated 14.08.2018 is enclosed with Annexure P-4 (Colly).

9. I say that the registry of this Hon'ble Court, pursuant to the orders dated 28.09.2018 also emailed the summons to the Defendant Company.

10. I say that the Defendant has complete knowledge about the present proceedings through its director, Sh. Puneet Kaushal."

3. Keeping in view the averments in the affidavit, and that the defendant has not appeared till date, it is proceeded ex-parte.

4. At the outset, learned counsel for plaintiff gives up prayers in para 30(c) and (d) of the plaint. The statement made by learned counsel for plaintiff is accepted by this Court and the plaintiff is held bound by the same.

5. This Court is of the view that the present suit can be disposed of without any further delay. A Coordinate Bench of this Court in Satya Infrastructure Ltd. and Ors. Vs. Satya Infra & Estates Pvt. Ltd., has held as under:-

"I am of the opinion that no purpose will be served in such cases by directing the plaintiffs to lead ex parte evidence in the form of affidavit by way of examination-in-chief and which invariably is a repetition of the contents of the plaint. The plaint otherwise, as per the amended CPC, besides being verified, is also supported by affidavits of the plaintiffs. I fail to fathom any reason for according any additional sanctity to the affidavit by way of examination-in-chief than to the affidavit in support of the plaint or to any exhibit marks being put on the documents which have been filed by the plaintiffs and are already on record. I have therefore heard the counsel for the plaintiffs on merits qua the relief of injunction."

6. The relevant facts of the present case as set out in the plaint are:-

i. The plaintiff originally started marketing pharma products as a proprietary firm in the year 1978 and in 1982 formed a partnership firm and continued its business under the name and style of M/s. Sun Pharmaceutical Industries. The plaintiff is engaged in the business of marketing drugs and formulations in more than 150 countries worldwide under its extensive range of well known and distinctive trade marks/brand names. The plaintiff is known in the trade circles as SUN/SUN PHARMA and has a consolidated annual turnover of over Rs. 30,000/- Crores globally.

ii. The plaintiff is the no. 1 Pharma Company in India in a total of 11 specialties and is the world's fourth largest generic pharmaceutical company and has manufacturing sites in six continents and ten world class research centres with over 30,000 strong multi-cultural workforce from over 50 different nationalities.

iii. The plaintiff is the registered proprietor of the various trademarks containing SUN (both as a word and device mark), SUN PHARMA and SUN PHARMACEUTICAL INDUSTRIES LTD. in various Classes under the Trade Marks Act, 1999. By virtue of continuous and extensive use since 1978, the words SUN and/or SUN PHARMA are exclusively associated with the plaintiff.

iv. The plaintiff has been using the trademark SUN PHARMA as a part of its domain names since 1997. Furthermore, the plaintiff has various subsidiaries across the globe, whose names include the words 'Sun Pharma/Sun Pharmaceuticals/Sun Pharmaceutical Industries'. The plaintiff's stock code i.e. stock symbol in the Stock Market in NSE is SUNPHARMA.

v. The plaintiff's annual turnover in the financial year 2017-18 was Rs. 30,00,000 lakhs, approximately and the plaintiff incurred an expenditure of not less than Rs. 54,668 lakhs on advertisement and promotion.

vi. In the fourth week of June, 2018, the plaintiff came across the defendant's trademark application dated 07th March, 2018 for registration of the trademark BREXSUN under Class 5 of the Trade Marks Act, 1999, which was advertised on 12th June, 2018 in Delhi. According to the defendant's website, www.brexsun.com, the defendant is registered company engaged in the business of pharmaceutical marketing and regulatory consulting.

vii. The defendant has adopted the whole of the plaintiff's mark SUN PHARMA and simply added the prefix 'Brex', making it 'Brexsun Pharma'. The defendants have adopted a mark/name which is visually, structurally and phonetically deceptively similar to the plaintiff's trade mark SUN PHARMA.

7. Learned counsel for the plaintiff states that the defendant has unethically and unlawfully adopted the impugned mark/trade name with the intent to ride upon the goodwill and reputation of the plaintiff. He states that the adoption of the impugned trademark/trade name amounts to misrepresentation and misappropriation of the plaintiff's goodwill in its trade mark/trade name SUN/SUN PHARMA and also amounts to unfair trade practice, unfair competition and dilution.

8. He further states that the use of the impugned trademark/trade name by the defendant is likely to cause confusion and/or deception in the minds of the consumers, as the defendants are in the same business as that of the plaintiff.

9. Learned counsel for the plaintiff lastly states that the plaintiff has been vigilantly protecting its statutory and common law rights in the trademark/trade name SUN/SUN PHARMA and has secured injunction against various parties using trademarks/trade names deceptively similar to the plaintiff's trade mark/trade name SUN/SUN PHARMA like SUNMAY PHARMAA, SHREESON PHARMACEUTICALS. He states that vide order dated 12th October, 2018 passed in CS (COMM.) No. 922 of 2018, Sun Pharmaceutical Industries Ltd. Vs. Infocom Network Limited & Ors., this Court passed a decree restraining the defendants from using the marks JBK Sun Pharma India P. Ltd., M/s. Sun Shine Pharma, M/s. New Sun Pharma, M/s. Sun World Pharma, M/s. Sun Pharma Agency, M/s. Raising Sun Pharma, M/s. God Sun Pharma Science, M/s. Sun Pharma Equipments, M/s. Sun Pharma Drug Distributors and M/s. Sun Pharma Sales & Services.

10. A Division Bench of this Court in Intel v. Corporation vs. Dinakaran Nai and Ors. : 129 (2006) DLT 634 has held as under:-

"12. The defendants have failed to appear and to point out any significance why word ARTINTEL was used for the business of the defendants. There is force in the contention of the learned Counsel for the plaintiff that though word ARTINTEL is one

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word while pronouncing the same it gets broken up into two parts ART and INTEL. The mark INTEL of the plaintiff is well known and obviously the use of the word INTEL is with the object of showing some connection with the mark of the plaintiff INTEL and to take advantage of the goodwill and reputation of the plaintiff. Needless to say that the chances of such deception increase when the product range is same or similar. In view thereof, I am of the considered view that the plaintiff is entitled to a decree of permanent injunction and delivery up as prayed for in Para 48 (i) to (iii) of the plaint." 11. In view of the position explained above, this Court is of the opinion that the defendant has no real prospect of defending the claim, as it has neither entered appearance nor filed its written statement. Further, the plaintiff is the registered and prior user of the trade marks in question. 12. Consequently, the present suit is decreed in favour of the plaintiff and against the defendants in accordance with paragraph 30 (a) and (b) of the prayer clause of the plaint along with actual cost. The cost shall amongst others include the lawyers' fees, as well as the amounts spent on purchasing the court fees. 13. With the aforesaid observations, present suit and pending applications stand disposed of.
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