Delhi High Court Decision
Sun Pharma (plaintiff) registered a mark “SETARET” on a “proposed to be used” basis in 1998, though it was never eventually used. In June 2022, it applied for a new trademark “SITARED” and started using it in June 2022 for Sitagliptin. Registration for this mark is still pending. The Intas (defendant) marks are SITARA-D/SITARE and they are not registered. The plaintiff claimed an injunction against the defendant’s marks “SITARA-D/SITARE” for allegedly infringing the Plaintiff’s registered mark ‘SETARET’, and passing off their goods marked SITARED.
The court did a two-fold assessment of the present case. Dealing with the issue pertaining to passing off first, it assessed the similarity between the unregistered marks SITARED (plaintiff’s) and SITARA-D (defendant’s) and then moved to assess whether Plaintiff’s registration for ‘SETARET’ will entitle it to interim relief.
On the issue of passing off, the court held that the competing marks (SITARED and SITARA-D) are dissimilar, contain non-proprietary terms and are launched almost simultaneously therefore, no prima facie case of passing off is made by the Plaintiff. On deference to registration for seeking an interim injunction, the court held that SETARET has never been used by Plaintiff, despite being registered some 24 years ago!! And thus, does not merit an interim relief only by the virtue of this registration. Finally, as a note of caution, the court also directed Defendant to seek prior approval from the court before launching its products bearing the ‘SITARE’ mark.