Bombay High Court Grants Interim Injunction To Sun Pharma, Restrains Zawadi From Using “PANTOZED-40”

The Bombay High Court on 1 April, granted an interim injunction in favor of Sun Pharma Laboratories Limited, restraining Zawadi Healthcare Limited from using the trademark “PANTOZED-40” for pharmaceutical preparations.

Justice Sharmila U. Deshmukh held that Zawadi's mark was structurally, phonetically, and visually similar to Sun Pharma's registered mark “PANTOCID”, which has been in use since 1998. The Court observed:

“The Defendants cannot claim balance of convenience in their favour as the Plaintiff's adoption through their predecessor is since the year 1998. The Defendants have no registration in India and even its Kenyan registration is of recent origin. The Plaintiffs have thus made out prima facie case for grant of injunction against infringement of its registered trade mark.”

Sun Pharma filed the commercial IP suit against Zawadi Healthcare to secure an interim injunction, claiming that the phonetic similarity between the suffixes “CID” and “ZED” would cause consumer confusion.

Although Zawadi's products were intended for the Kenyan market, Sun Pharma argued that manufacturing and exporting infringing goods from Mumbai constitutes statutory use in India under Section 56 of the Trade Marks Act.

Zawadi Healthcare contended that Sun Pharma was attempting to monopolise the prefix “PANTO”, an International Non-Proprietary Name (INN) derived from the active drug molecule “PANTOPRAZOLE”. It argued that over 1,300 trademarks on the register use the same prefix, making it common to the trade.

However, the Court noted that Sun Pharma's 1998 registration is prima facie evidence of its validity and is not affected by the subsequent 2012 notification of “PANTOPRAZOLE” as an INN.

Accordingly, the Bench allowed the interim application, restraining Zawadi Healthcare from manufacturing, selling, or exporting any products under the mark “PANTOZED” or any other deceptively similar variant.