The Delhi High Court recently delivered a significant judgment in a trademark infringement dispute between Sun Pharma Laboratories Limited and Intas Pharmaceuticals Limited, reaffirming the heightened standard of scrutiny applicable in pharmaceutical trademark cases. The dispute revolved around the plaintiff’s registered mark “BEVETEX” and the defendant’s use of the mark “BEVATAS”, both in relation to anti-cancer drugs.

Background and Procedural History

The plaintiff instituted the suit alleging trademark infringement, passing off, and related claims, seeking to restrain the defendant from using the impugned mark.

The matter was initially heard by the District Judge at Saket Courts in 2018. At the interim stage, the Court declined to grant an ex parte ad-interim injunction, emphasizing the public interest involved given that the defendant’s product was a life-saving cancer drug. Subsequently, the injunction application was dismissed on the ground that no prima facie case was established. The plaintiff’s appeal and special leave petition were also unsuccessful at that stage.

Following a revaluation of the suit, the matter came to be heard by the Delhi High Court, where a comprehensive adjudication on merits was undertaken.

Plaintiff’s Case

Sun Pharma contended that:

1. It is the registered proprietor of the mark “BEVETEX” in Class 5, with registration dating back to 1983.
2. The mark is an invented and inherently distinctive term derived from the molecule Paclitaxel.
3. Commercial use commenced in 2015, accompanied by substantial investment in promotion and market development.
4. The mark has acquired significant goodwill and reputation in the pharmaceutical market.

The plaintiff argued that:

1. The defendant’s mark “BEVATAS” is deceptively similar, particularly in phonetic and structural terms.
2. Both products relate to cancer treatment, thereby increasing the risk of confusion.
3. In pharmaceutical cases, confusion can have serious public health consequences, warranting stricter scrutiny.
4. Prescriptions often do not specify salt composition or packaging, making brand similarity critical.
5. The plaintiff further alleged dishonest adoption by the defendant and emphasized that similarity must be assessed from the standpoint of an average consumer with imperfect recollection.

Defendant’s Case

Intas Pharmaceuticals resisted the claim, arguing that:

1. The marks “BEVETEX” and “BEVATAS” are visually, structurally, and phonetically distinct.
2. The drugs differ in composition: the defendant’s drug contains Bevacizumab, whereas the plaintiff’s contains Paclitaxel.
3. The products are prescription only (Schedule H drugs), administered under expert oncological supervision, minimizing any likelihood of confusion.

The defendant also contended that:

1. Its mark was coined bona fide by combining “BEVA” (from Bevacizumab) and “TAS” (from Intas).
2. The plaintiff’s delayed commercial use (despite registration in 1983) indicated “hoarding” of the mark.
3. The plaintiff suppressed material facts and delayed initiating action despite prior knowledge of the defendant’s product.

Issues before the Court

The Court framed and adjudicated multiple issues, including:

1. Ownership and prior use of the mark BEVETEX
2. Likelihood of confusion between the competing marks
3. Allegations of trademark hoarding
4. Delay, laches, and acquiescence
5. Validity of defendant’s adoption and claim of honest use

Court’s Findings

• Prior Rights and Distinctiveness

The Court held that the plaintiff is the registered proprietor and prior user of “BEVETEX”. The mark was found to be inherently distinctive and entitled to a high degree of protection.

• Deceptive Similarity and Infringement

Applying the anti-dissection rule, the Court compared the marks as a whole and found:

1. Structural and phonetic similarity between “BEVETEX” and “BEVATAS”
2. A likelihood of confusion, especially given imperfect recollection

Importantly, the Court reiterated that:

1. Pharmaceutical trademarks are subject to a stricter standard, owing to public health implications
2. Confusion may arise not only at the point of prescription but also during dispensing and purchase

Accordingly, the defendant’s use of “BEVATAS” was held to constitute infringement.

• Defence of Non-Use (“Hoarding”)

The Court rejected the defendant’s argument of trademark hoarding, holding that:

1. Under Section 47 of the Trademarks Act, non-use is a ground for rectification, not a defence in infringement proceedings
2. Until a mark is removed from the register, it continues to enjoy statutory protection

• Delay, Laches, and Acquiescence

The Court found no merit in the defence of delay:

1. The plaintiff had opposed the defendant’s mark before the Trademark Registry
2. The suit was filed promptly upon discovery of commercial use

It reaffirmed that delay alone is insufficient to defeat an injunction in trademark cases.

• Honest Adoption and Prior Use by Defendant

Although the Court did not find clear evidence of dishonest adoption, it held that:

1. Honest subsequent adoption is not a valid defence against infringement of a registered mark
2. The plaintiff’s prior registration and use prevail over the defendant’s later adoption

Relief Granted

In light of the above findings, the Delhi High Court granted a permanent injunction restraining the defendant from using the mark “BEVATAS” in relation to pharmaceutical products.

Notably, the plaintiff chose to treat the matter as one involving public interest and waived its claim for damages and rendition of accounts, which were accordingly not granted.

Comment

The judgment reinforces that in the pharmaceutical sector, the threshold for permissible similarity is exceptionally low. Even in the absence of proven mala fides or extensive prior use, statutory rights in a registered mark will be enforced where patient safety could be compromised. The decision reflects a careful balancing of commercial rights and public health, ultimately tilting in favour of caution, ensuring that avoidable risks arising from brand confusion in life saving drugs are decisively curtailed.