Similarity of Trademarks: Delhi HC refrains manufacture, sale of Rifaget, Zoe-Fer against Sun Pharma trademark Rifagut, Zofer

New Delhi: The Delhi High Court has ordered a permanent injunction stopping the sale of drug/supplement for iron deficiency in lactating and expecting mothers under the trademark 'Rifaget' and other 'Zoe-Fer' that stands against Sun Pharmaceuticals Ltd's registered trademark Rifagut and Zofer.

The order came following a petition moved by Sun Pharma, seeking permanent injunction restraining infringement of registered trademark of its antibiotic Rifagut and antiemetic agent Zofer as 'Rifaget' and 'Zoe-Fer' by Adwin Pharma and Vanmed Pharmaceuticals Pvt. Ltd. respectively. The firm further sought to the recall of the drugs already circulated in the market under the impugned trademark immediately.

Rifagut contains the composition of Rifaximin and is prescribed for travellers diarrhoea caused by certain bacteria and liver disease affecting the brain (hepatic encephalopathy); while the other drug Zofer is used to treat nausea and vomiting caused due to certain medical conditions and also by cancer chemotherapy and radiation therapy. This drug contains Ondansetron.

The adoption of deceptive trademarks as Rifaget and Zoe-Fer against Sun Pharma's Rifagut and Zoefer prompted the Gujarat-based pharma firm to approach the court, where it contended that the similarity of marks in relation to medicines for two separate ailments is against public interest as well.

Responding to the same, the counsel for Adwin Pharma and Nitin Joshi, Director, Vanmed Pharma informed that the infringed formulations are being manufactured by Raghav Remedies under their authority. Joshi further stated that "he will produce their directors before the court along with affidavit disclosing figures of the stocks already released and in possession of Adwin and Vanmed Pharma and subject to being granted reasonable time, will stop manufacturing the medicines under the impugned mark."

Accordingly, the affidavit was filed that showed the unsold stock of the medicine/food supplement under the impugned mark available with the Vanmed's directors- Nitin Joshi and Jayanta Pradhan and their stockists and retailers. They further sought time till 15th August 2019 to sell the medicine/food supplement under the impugned mark, stating;

"...whatever stocks remain unsold, whether in their possession or their distributors, stockists and retailers, will thereafter be recalled and the medicine/food supplement under the impugned mark, after 15th August 2019, will not be available anywhere."

However, Sun Pharma opposed their contention stating that the firms should be directed to immediately recall their medicine/food supplement under the impugned mark. It further submitted that while the medicine of the plaintiff is to prevent vomiting after chemotherapy, the medicine/food supplement of Vanmed Pharma under the impugned mark is to supplement the iron deficiency in lactating and expecting mothers.

"..it can play havoc with the lives of lactating or expecting mothers if consume the wrong medicine...Recall of medicines is a known and well-established practice of the trade and the defendants can always repackage and sell the medicine/food supplement, " Sun Pharma added.

The court was further informed that the expiry of the medicine/food supplement of the Adwin and Vanmed Pharma is till 2020.

After hearing both the parties, Justice Rajiv Sahai Endlaw found the proposal made by Adwin and Vanmed Pharma to be reasonable, especially considering that the goods under the impugned mark have been available since the year 2017.

The court, however, cautioned the Adwin and Vanmed pharma that if the medicine/food supplement under the impugned marked is found available anywhere post 15th August 2019, stringent action shall follow.

The court finally ruled in favour of Sun Pharma and held;

"Accordingly, a decree is passed, in favour of the plaintiff and jointly and severally against the defendants viz. (i) Nitin Joshi, (ii) Vanmed Pharmaceuticals P. Ltd., and, (iii) Raghav Remedies, of permanent injunction in terms of prayer paragraph 30(a) of the plaint dated 1st July 2019. However, the said decree for the permanent injunction shall come into force with effect from 16th August 2019."

Also Read: ZENTEL VERSUS FENTEL: HC restrains manufacture, sale of medicine for violation of trademark