Family of Marks | The Last Word

Sun Pharmaceutical Industries Ltd., subsequent proprietor of the trade mark ‘FORZEST’, prayed for grant of an ad-interim injunction restraining DWD Pharmaceuticals Ltd. from using the mark ‘FOLZEST’. DWD Pharmaceuticals asserted, Sun Pharmaceutical obtained above ad-interim ex-parte injunction by concealing various material facts.

DWD Pharmaceuticals is a registered proprietor of ‘ZEST Family of Marks’ since 1983.

Sr. No.   Trade Mark Name   Registration Number   Year of Registration  
1 ZEST 4066398   13/06/1983  
2 ZESTICAL 1220931   06/08/2003  
3 ZESTVIT 1368996   05/07/2005  
4 CALCIZEST 799399   21/04/1998  
5 DIZEST 662839   19/04/1995  
6 ENERZEST 782695   17/12/1997  
7 EVERZEST 731043   21/01/1997  
8 FERIZEST 1086863   13/03/2002  
9 HEMOZEST 719261   11/10/1996  
10 ZEST D3 4069712   28/01/2019  

Sun Pharmaceutical had sought registration of marks ‘EXEZEST’, ‘TRIOLMEZEST’ which were opposed by DWD Pharmaceuticals in 2009 and 2014 respectively. These facts were important and material. Sun Pharmaceutical sought to mislead this Court and must be saddled with costs of Rs. 10,00,000/- [Rupees Ten Lakhs], to be deposited with Delhi High Court Legal Services Committee.

It is important to note, ‘FORZEST’ is for treating erectile dysfunction in men, while ‘FOLZEST’ is a multivitamin for pregnant women for lowering risk of pre-term births. In spite of concealment, Sun Pharmaceutical is entitled to an ad-interim relief, considering such marks of medicinal goods are deceptively similar and any confusion can lead to disastrous consequences.

DWD Pharmaceuticals cannot later adopt a mark, deceptively similar to Sun Pharmaceutical’s mark, relying upon its ‘ZEST Family of Marks’. Sun Pharmaceutical has been using ‘FORZEST’ since 2003. It is suspect at this stage, but worthy of weight. A right of a prior user shall always prevail [Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672].

Hon’ble Mr. Justice Navin Chawla of Hon’ble High Court of Delhi, Sun Pharmaceutical Industries Ltd. v. DWD Pharmaceuticals Ltd., [CS(COMM) 328/2022] decided on 22.11.2022.

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