Delhi High Court imposes ₹10 lakh costs on Sun Pharma for concealing facts to obtain injunction against DWD Pharma

The Delhi High Court recently imposed costs of ₹10 lakh on pharmaceutical giant Sun Pharma for concealing facts to obtain an ex-parte injunction order in its trademarks dispute with DWD Pharmaceuticals [Sun Pharmaceutical Industries Ltd v. DWD Pharmaceuticals Ltd]..In a judgment pronounced on Tuesday, Justice Navin Chawla said that Sun Pharma cannot be allowed to escape the consequences of having concealed material facts from the Court.Whether the Court would have still granted the injunction if the material facts were disclosed, was not relevant and cannot absolve Sun Pharma from the consequences of not making such disclosure, the Court said..“Such a practice not only has to be deprecated but must also be penalised. The plaintiff, therefore, is saddled with costs of ₹10 Lakh (Rupees Ten Lakh only) to be deposited with the Delhi High Court Legal Services Committee within a period of two weeks from the date of the judgment,” Justice Chawla ordered..The High Court had passed the interim injunction in May restraining DWD from using the mark ‘Folzest’ or any other trademark which is deceptively similar to Sun’s mark ‘Forzest’.While Sun's Forzest is used for treating erectile dysfunction in men, DWD's Folzest is a multivitamin for pregnant women to lower the risk of pre-term births. .DWD approached the Court stating that it is the registered proprietor of trademark ‘Zest’ since the year 1983 and has a family of registered marks with ‘Zest’ forming a part of them.It was stated that Sun Pharma was aware of this fact since their earlier application for registration of the mark ‘Exezest’ was opposed by DWD in the year 2009, and this opposition is still pending with the Trade Marks Registry.DWD further said that it had also opposed Sun’s registration of ‘Triolmezest’, and that even when the registration of mark ‘Forzest’ was sought, DWD’s mark ‘Ferizest’ was cited as a conflicting mark..All these facts were not disclosed intentionally to the Court to get the ex-parte order, the Bench was told..After considering the arguments, though the Court found that material facts were indeed concealed, it added that the two marks are deceptively similar and given the fact that the goods in question are medicinal goods, Sun will be entitled to ad-interim relief.The judge added that in a medicinal good, the right of not only the private litigants but also public interest has to be kept in mind and given prominence, because even a remote chance of deception or confusion may lead to disastrous consequences for unwary consumers.“Therefore, in spite of the concealment and misstatement of the plaintiff, the plaintiff shall be entitled to an ad-interim relief if the marks of the medicinal goods are deceptively similar to each other,” the Court said..Advocates Sachin Gupta, Swati Meena and Yashi Agrawal appeared for Sun Pharma.DWD was represented through Senior Advocate Darpan Wadhwa and Advocates Karan Bajaj, Rupin Bahl and Neelakshi. .[Read order]