Pharma branding is difficult terrain. The inspiration for a brand name in the pharmaceutical field is often drawn from the pharmaceutical ingredient or ailment the product intends to cure. Thus, it is challenging to stop third parties from adopting the portion of the brand derived from drug composition or an International Non-Proprietary name (INN). The case note discusses a similar situation where Sun Pharma Laboratories Ltd (Sun Pharma) https://sunpharma.com/ filed the suit alleging trademark infringement and passing off and to restrain Intas Pharmaceuticals Limited and Ors., (Intas) https://www.intaspharma.com/ from using the marks SITARA-D/SITARE or any other trademark deceptively similar to Sun Pharma’s registered mark ‘SETARET’ and unregistered trademark ‘SITARED’. The first part of the drug, ‘Sita’ in competing marks, is derived from the name of the drug itself, ‘Sitagliptin’.

Sun Pharma in the suit contended:

1. They are the registered proprietor of the mark ‘SETARET’ in class 5. The mark is registered since 1998 and was assigned to them in the year 2022 by their predecessor in interest.
2. In March 2022, they applied for registration of the mark ‘SITARED’ in class 5 which is pending registration before the Trademark Registry. Both the marks are filed on a ‘proposed to be used’ basis.
3. They launched ‘SITARED’ on 29.06.2022, which is used to lower blood sugar in patients with high-blood sugar levels and is a Schedule-G prescription drug. They claim to be using the mark ‘SITARED’ along with other combinations including ‘SITARED-M’ and ‘SITARED-XR’.
4. In September 2022, they came across medicinal goods under the impugned mark ‘SITARA-D’ of Intas which is deceptively similar to their registered trademark SETARET and unregistered mark SITARED.
5. Intas’s adoption and use of the mark ‘SITARA-D’ amounts to infringement and passing off and, are liable to be restrained.

Intas countered the contentions on the following:

• Admittedly, neither Sun Pharma nor its predecessor in interest have used the ‘SETARET’ mark since its registration and thus, it is liable to be removed from the Register. Thus, no relief can be prayed for on the basis of the said registration.
• Intas is the prior user of the SITARA-D mark as the drug approval for the medicine bearing the said mark was granted on 04.02.2022, which is prior to the use of the mark by Sun Pharma.
• Intas’s SITARA-D and Sun Pharma’s SITARED contain the anti-diabetic drug ‘Sitagliptin’. Therefore, ‘SITA’ portion of the mark is taken from drug name. The letter ‘D’ in SITARA-D indicates the drug ‘Dapagliflozin’.
• The competing marks are entirely different and there is no possibility of any confusion and no case of passing off is made out.

Courts finding/s

• Pleadings and documents on record evidence that the parties have launched their products around the same time. Admittedly, the medicinal goods of both the parties contain the drug ‘Sitagliptin’, thus, the prefix ‘Sita’ in competing products is based on the drug name.
• It is judicially settled that no one can monopolize the use of the part of the name of a salt/ingredient of the drug. The letter ‘D’ in Intas’s SITARA-D indicates the ingredient ‘Dapagliflozin’.
• Compared as a whole, prima facie, the marks ‘SITARED’ and ‘SITARA-D’ are not similar, either phonetically or visually. Moreover, as the packaging of the products are different, a case of passing off is not made out.
• The mark ‘SETARET’ has not been used by Sun Pharma or its predecessors for a period of 24 years since its registration in 1998. Thus, the argument that Sun Pharma is entitled to an injunction on the basis of the said registration alone cannot be accepted.

In light of the above, the Court dismissed the injunction application filed by Sun Pharma.