HC stays order involving penalty of ₹10 lakhs on Sun Pharma

According to the order the stay has been granted till 27 March 2023, it is when the matter will be taken up for hearing by the high court. 

On 22 November, the Delhi High Court in its order levied a penalty of ₹10 lakhs on Sun Pharmaceutical Industries for concealing facts in order to obtain an ex-parte injunction order in its trademark matter with DWD Pharmaceuticals.This order was immediately challenged by Sun Pharma for seeking a stay. 

The stay was the  granted by  a bench led by Justice Manmohan.  

Last week , a bench led by Justice Navin Chawla held that “The plaintiff (Sun Pharma) cannot be allowed to escape the consequences of having concealed material facts from this Court to obtain an ex-parte order of injunction. Whether with the disclosure of the above-mentioned material facts, the Court would have still granted the ad-interim ex-parte order of injunction or not, is not relevant and cannot absolve the plaintiff from the consequences of not making such disclosure of material facts”. 

Adding that such a practice not only has to be deprecated but must also be penalised. The plaintiff, therefore, is saddled with costs of Rs.10 Lakh.The penalty has to be paid by the company within two weeks, the order said.   

In May, an interim injunction was passed by the high court restraining DWD from using the mark “Folzest” or any other mark similar to Sun Pharma’s mark “Forzest” 

Essentially, DWD’s Folzest is a multivitamin for pregnant women to reduce the risk of pre-term birth while Sun’s Forzest is used for the treatment of erectile dysfunction in men.  

Sun in its plea prayed for the grant of an ad-interim injunction restraining the DWD from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal preparations under the mark ‘FOLZEST’ or any other trademark which is deceptively similar to the plaintiff’s trademark ‘FORZEST’. 

Sun also contended that mark Forzest has been registered since 2003. While it also claimed that it came across the defendant’s application seeking registration of the impugned mark ‘FOLZEST’ in May, after which it approached the court.  

On the other hand, DWD said that it had approached the court stating that it is the registered proprietor of trademark Zest since 1983 and has a family of registered mark with Zest forming a part of them. And that certain material information was concealed from this court.  

Further, DWD alleged that Sun Pharma was well-aware of not only the registration of the mark ‘ZEST’ in favour of the DWD, but also of the other marks registered and used by the defendant, in as much as, the plaintiff had earlier applied for the registration of the mark ‘EXEZEST’, which was opposed by the defendant way back in the year 2009, citing the ‘ZEST’ Family of Marks. The said opposition is still pending adjudication before the Trade Marks Registry, according to the judgement. 

 “It is the case of the defendant that the plaintiff has intentionally not disclosed the above facts in its plaint, and is, therefore, guilty of concealing material facts”, it said.