Prior use saves the day for Sun

This post discusses the tussle between two well established pharmaceutical companies in relation to trademark being used on a diabetic drug. The Plaintiff, Sun Pharma Laboratories Ltd, (Sun) filed the action before the Delhi High Court against Lupin Limited (Lupin) and another alleging trademark infringement, passing off, etc. Sun filed the suit to safeguard its rights in the registered trademark TRIVOLIB and restrain Lupin from using the mark TRI-VOBIT. The injunction granted in favour of Sun is challenged by Lupin and have sought to set aside the injunction.

Sun’s case:

  1. They are a wholly owned subsidiary of Sun Pharmaceutical Industries Ltd and the registered proprietor of the mark TRIVOLIB which is used in the treatment of non-insulin diabetic patients.
  2. TRIVOLIB is a coined mark and contains salts, Gilmepiride, Voglibose and Metformin Hydrochloride. The mark was coined in August, 2011, and has been extensively used since then. The consumers identify and associate the well-known TRIVOLIB mark with Sun.
  3. In September 2014, Sun came across Lupin’s medicines under the names TRI-VOBIT-1 and TRI-VOBIT-2, containing identical salts and being used for same ailment. Lupin’s adoption is in bad faith. Sun has filed an opposition against Lupin’s application for TRI-VOBIT-1 which is pending.
  4. TRI-VOBIT mark of Lupin being phonetically and deceptively similar to Sun’s registered mark TRIVOLIB amounts to infringement, passing off and unfair competition.

Lupin in its defence argued:

  1. They have registration for the mark TRI-VOBIT-2 in Class 5. Thus, no suit for infringement can lie against the use of a registered mark and the court has no jurisdiction to entertain the suit.
  2. The Passing off action must also fail as Sun has not acquired goodwill in the TRIVOLIB mark. There is no evidence recognizing TRIVOLIB as a well-known mark.
  3. They are prior adopter and registered proprietor of VOBIT mark and the word ‘TRI’ prefixed to the mark means a combination of three drugs which in the present case are Voglibose, Metformin Hydrochloride and Glimepiride.
  4. They had first used the trade mark VOBIT in 2008, whereas, Sun has been using the trade mark TRIVOLIB since August 2011. In October 2012 they simply prefixed the word TRI to their registered mark VOBIT.
  5. Sun has only opposed TRI-VOBIT-1 and not TRI-VOBIT-2 in the name of Lupin.

Sun countered the Lupin’s contentions arguing:

  1. Sun has no objection in Lupin using the trade mark VOBIT, however, cannot use TRI-VOBIT as it is structurally and phonetically similar to the registered trade mark TRIVOLIB.
  2. Sun has applied for cancellation of the TRI-VOBIT 2 mark at the Trade Marks Registry.

Court Ruling:

  • Passing off action will lie in the instant dispute as it is a common law rule that no person is entitled to carry on his business under the pretext that the business is that of another. The use of the mark/carrying on business under the name confers rights in favour of the person and generates goodwill in the market. The latter user of the mark/name cannot misrepresent his business as that of business of the prior right holder. Thus, prior user is considered to be superior than any other rights. Again, it is no defence to passing off that the defendant’s mark is registered. It only needs to be considered who generated goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder. Admittedly Lupin commenced use of the TRI-VOBIT mark only in October 2012 which is subsequent to Sun’s use of the TRIVOLIB mark.
  • The contention that Lupin is the prior user of the mark VOBIT and has only added a prefix TRI and therefore Sun cannot claim prior user is misplaced. In this regard when the marks are compared as a whole TRI-VOBIT is structurally and phonetically similar to Sun’s mark TRIVOLIB and as the two drugs are for the same ailment, likelihood of confusion cannot be ruled out.

In view of the above the court confirmed the injunction in favour of Sun.

Our comment

India is referred as the diabetes capital of the world with as many as 50 million people suffering from type-2 diabetes. Thus, much is at stake for pharma companies in keeping their market share intact.

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