### Introduction
The case of Sun Pharma Laboratories Ltd. vs Dabur India Ltd. & Anr., adjudicated by the High Court of Delhi on February 9, 2024, is a significant trademark dispute involving the pharmaceutical industry. The appellant, Sun Pharma Laboratories Ltd., challenged the Trade Marks Registry’s dismissal of its opposition to the registration of the mark "DABURGLUCORID KP (Label)" by Dabur India Ltd. This appeal, filed under Section 91 of the Trade Marks Act, 1999, examines the principles of trademark similarity, likelihood of confusion, and the Registrar’s discretion in opposition proceedings. The judgment, delivered by Justice Prathiba M. Singh, provides critical insights into the protection of pharmaceutical trademarks, emphasizing the heightened scrutiny required due to public health implications.
### Factual Background
Sun Pharma Laboratories Ltd., a leading pharmaceutical company, opposed the registration of the trademark "DABURGLUCORID KP (Label)" applied for by Dabur India Ltd. under Application No. 1309040 in Class 5, which pertains to medicinal and pharmaceutical preparations. Sun Pharma claimed that the mark was deceptively similar to its registered trademark "GLUCORID," used for similar pharmaceutical products, alleging a likelihood of confusion among consumers and potential harm due to mistaken prescriptions. Sun Pharma asserted prior use and goodwill, arguing that Dabur’s mark could mislead patients and pharmacists. Dabur India Ltd. defended the application, contending that the composite mark, including the prefix "DABUR" and the label’s distinct design, differentiated it sufficiently from Sun Pharma’s mark, denying any risk of confusion.
### Procedural Background
Dabur India Ltd. filed Trademark Application No. 1309040 for "DABURGLUCORID KP (Label)" in Class 5, which was opposed by Sun Pharma under Opposition No. 204995, citing Section 21 of the Trade Marks Act, 1999. The Trade Marks Registry dismissed the opposition on July 21, 2022, allowing Dabur’s mark to proceed to registration. Aggrieved, Sun Pharma filed C.A.(COMM.IPD-TM) 146/2022 before the Delhi High Court, seeking to set aside the Registrar’s order. The appeal was heard through a hybrid mode, with arguments from both parties and assistance from prominent intellectual property counsels. The court reserved its judgment on December 8, 2023, and pronounced it on February 9, 2024, under the stewardship of Justice Prathiba M. Singh.
### Core Dispute
The central issue is whether the Registrar’s dismissal of Sun Pharma’s opposition was justified, particularly regarding the alleged deceptive similarity between "DABURGLUCORID KP (Label)" and "GLUCORID." The dispute focuses on the application of Sections 9 and 11 of the Trade Marks Act, 1999, concerning the likelihood of confusion in the pharmaceutical sector, where consumer safety is paramount. Sun Pharma argues that the similarity in the core element "GLUCORID" poses a significant risk of confusion, while Dabur contends that the prefix "DABUR" and the label’s distinct features eliminate any such risk, supporting the Registrar’s decision.
### Discussion on Judgments
The parties and court relied on several judicial precedents to frame their arguments. Sun Pharma cited Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73, to argue that stricter standards apply to pharmaceutical trademarks due to the risk of confusion affecting public health. They also referenced Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449, to emphasize that similarity in the essential features of a mark can justify opposition. Dabur relied on F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., AIR 1970 SC 2062, to assert that the overall impression of a composite mark, including prefixes and design, should be considered. The court drew on Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980, to assess the likelihood of confusion, and referenced Medley Laboratories (India) Ltd. v. Alkem Laboratories Ltd., 2002 (25) PTC 592 (Del), to highlight the heightened scrutiny for pharmaceutical marks, influencing the judicial analysis.
### Reasoning and Analysis of the Judge
Justice Prathiba M. Singh conducted a meticulous comparison of the marks, focusing on their phonetic, visual, and structural similarities. The judge noted that the core element "GLUCORID" was identical in both marks, and while Dabur’s mark included the prefix "DABUR" and a label design, these elements did not sufficiently distinguish it in the pharmaceutical context, where confusion could lead to serious health risks. The court recognized Sun Pharma’s prior registration and goodwill, establishing a prima facie case of deceptive similarity under Section 11. The Registrar’s dismissal was found lacking in adequate reasoning, particularly for failing to consider the public health implications emphasized in pharmaceutical trademark cases. The balance of convenience favored Sun Pharma, as allowing Dabur’s mark could cause irreparable harm to patients and the appellant’s reputation, justifying judicial intervention.
### Final Decision
The High Court allowed C.A.(COMM.IPD-TM) 146/2022, setting aside the Trade Marks Registry’s order dated July 21, 2022. The court sustained Sun Pharma’s opposition, directing the Registrar to refuse the registration of Dabur’s mark "DABURGLUCORID KP (Label)" under Application No. 1309040. The appeal was disposed of, with the decision pronounced on February 9, 2024, ensuring that the risk of consumer confusion in the pharmaceutical market was mitigated.
### Law Settled in This Case
This judgment establishes that in pharmaceutical trademark disputes, courts apply a heightened standard of scrutiny due to the potential health risks associated with consumer confusion. It clarifies that the presence of a house mark or design elements in a composite mark does not necessarily eliminate the likelihood of confusion if the core element is identical or deceptively similar to a prior registered mark. The decision reinforces the judiciary’s role in overturning inadequately reasoned Registrar decisions under Section 91 of the Trade Marks Act, 1999, setting a precedent for protecting public health in trademark opposition proceedings.
### Case Details
Case Title: Sun Pharma Laboratories Ltd. vs Dabur India Ltd. & Anr.
Date of Order: 09 February, 2024
Case Number: C.A.(COMM.IPD-TM) 146/2022
Neutral Citation: 2024:DHC:56795 (assumed for illustration, as not provided)
Name of Court: High Court of Delhi
Name of Judge: Prathiba M. Singh
Disclaimer: The information shared here is intended to serve the public interest by offering insights and perspectives. However, readers are advised to exercise their own discretion when interpreting and applying this information. The content herein is subjective and may contain errors in perception, interpretation, and presentation.
Written By: Advocate Ajay Amitabh Suman, IP Adjutor [Patent and Trademark Attorney], High Court of Delhi
Here are various suitable titles for this article for publication in a Law Journal:
1. Pharmaceutical Trademarks and Public Health: The Sun Pharma v. Dabur Case
2. Deceptive Similarity in Pharma Marks: Insights from the Delhi High Court
3. Section 91 and Trademark Opposition: Analyzing Sun Pharma v. Dabur
4. Heightened Scrutiny in IP Disputes: The 2024 Delhi High Court Ruling
5. Protecting Consumer Safety in Trademark Law: The Sun Pharma Case Study
6. Composite Marks and Confusion: Lessons from Sun Pharma v. Dabur
7. Judicial Oversight in Trademark Registration: The Sun Pharma Judgment
8. Balancing Brand Identity and Public Health: The Delhi High Court’s Approach
