Family of Marks

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  
1ZEST4066398  13/06/1983  
2ZESTICAL1220931  06/08/2003  
3ZESTVIT1368996  05/07/2005  
4CALCIZEST799399  21/04/1998  
5DIZEST662839  19/04/1995  
6ENERZEST782695  17/12/1997  
7EVERZEST731043  21/01/1997  
8FERIZEST1086863  13/03/2002  
9HEMOZEST719261  11/10/1996  
10ZEST D34069712  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.