Sun Pharmaceuticals or Sun Pharma has been granted the status of a ‘Well-Known Trademark’ status in India. The status has been granted by Delhi High Court in a case related to the infringement of one of the trademarks related to the company.
SUN PHARMA VS. ORISON PHARMA
Sun Pharma had recently approached the Delhi High Court for the infringement of its ‘Sun Pharma’ trademark. The Respondent in this case was Orison Pharma (no longer a valid company name).
The Plaintiff claimed that the respondent used the marks ORISON/ ORISON PHARMA/ ORISON PHARMACEUTICALS to sell all its products. All of these terms used the ORISON mark which contained a SON mark which was deceptively similar to its own trademark. Sun Pharma has been using the marks SUN/ SUN PHARMA/ SUN PHARMACEUTICALS since its inception in 1978.
The court examined the documents that established the continuous financial transaction made by the Plaintiff till 2021. Plaintiff had 52 trademark registrations in India and 143 International Registrations that included the USA and the European Union.
Apart from these, the company has also registered several domain names related to the marks, the first being established in 1997.
Verdict and ‘Well-Known Trademark’ Status
The court examined all the evidence provided by the Plaintiff and decided in its favour. The Court found that the mark ‘ORISON’ contained the ‘SON’ mark which was infringing the ‘SUN’ trademark of the Complainant.
The Court granted a permanent injunction to Orison Pharma and barred them from using the marks in commercial activities. Apart from this the Court also found a history of significant legal battles that the Plaintiff had fought earlier to protect its brand.
The Court found that the Plaintiff uses the trademarks actively on all of its products ranging several categories. Observing all of these, the court awarded the status of Well-Known Trademark to Sun Pharma.
Sun Pharmaceuticals
Sun Pharma is the biggest Pharmaceutical company in India and the fourth largest specialty generic pharmaceutical company in the World. It is a global brand with operations expanding to over 100 countries.
The company is really serious regarding the protection of its Trademarks. Just recently it also fought a case against Avighna Medicare Private Limited. Avighna Medicare was using the ‘DOSELA’ mark which was very similar to Sun Pharma’s ‘DUZELA’ mark.
Quite recently, Sun Pharma acquired US based Concert Pharma for $576 Million. The primary reasons behind the acquisition is the treatment of Alopecia Areata. It is a disease that leads to patchy baldness.
What is a Well-Known Trademark
A trademark stops anyone from using your mark for their commercial activities. That is what a trademark means right? So what does a Well-Known Trademark mean?
Well, a trademark gives you protection in a certain class of goods. A Well-Known trademark transcends these categories. It is ineligible to be registered by third parties across several different categories and segments. Its effects extend across the nation compared to a specific geographical location accorded in a regular trademark.
So much that the Trademark Registry itself cannot register a trademark similar to a Well-Known Trademark.
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