Delhi HC Awards 5 Lakh Cost To Sun Pharma Over Its 2001 "Oxiplat" Mark In Trademark Infringement Suit

A Delhi High Court Bench of Justice Pratibha M Singh has awarded costs of Rs. 5 lakhs in a trademark infringement suit to pharmaceuticals company Sun Pharmaceutical Industries Limited, which was filed by it over its registered mark "Oxiplat". Oxiplat is named after one of its drug preparations.

Counsel Hemant Singh, among others, appeared for the plaintiff, while Counsel Prithvi Singh, among others, appeared for the defendants.

In this case, the Court was hearing Sun Pharmaceuticals' suit, which was filed in 2016, over the mark "Soxplat" registered by two pharmaceutical companies in 2014. The plaintiffs prayed for a permanent injunction of the mark "Soxplat".

Notably, "Oxiplat" was coined by Sun Pharmaceuticals back in 2001, and since then, it has been used for medicinal preparations which consist of Oxaliplatin.

The Court noted that the sales of Sun Pharmaceuticals for medicinal formulations using the mark "Oxiplat" have been substantial and that, at the time of filing the suit, the sales turnover was aggregating to approximately Rs. 26.5 crore. It was also observed that substantive investment was also made in the form of advertising and promotional expenses for the same mark.

Subsequently, the Court noted that the defendants' trademark Soxplat has been canceled, and therefore, as of the date of the suit, the defendants were no longer registered for the mark.

In light of the same, the Court observed that "The circumstances and facts of the case as recorded above would show that insofar as the mark ‘SOXPLAT’ is concerned, there is no longer any dispute that exists between the parties as the Defendants have already given up the mark ‘SOXPLAT’, for whatever reasons. Thus, without rendering any opinion on the similarity or otherwise of the two marks ‘OXIPLAT’ and ‘SOXPLAT’, the Defendants’ submission is recorded and the Defendants shall be bound by the said statement that they do not wish to use the mark ‘SOXPLAT’ or any other mark, which is identical and similar to the mark ‘OXIPLAT’."

Cause Title: Sun Parma Laboratories Ltd. v. Mylan Laboratories Limited & Anr.

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