Dismissed

Medley Pharmaceuticals Limited v. Megha Healthcare Private Limited

Bombay HC30 Mar 2016NMS/255/2014

Case brief

AI extract

What is this about?

In a Notice of Motion for interim relief in a passing off suit regarding Vitamin D3 marks, the Court dismissed the application. The Judge found no sufficient similarity between 'SunDE' and 'Sun-D3', noting that the Plaintiffs had previously admitted distinguishability when seeking registration for a similar mark, thereby failing their current claim of deceptive similarity.

What did the court decide?

Notice of Motion dismissed. No costs awarded.

Medley Pharmaceuticals Limited Vs Megha Healthcare Private Limited — Bombay HC (2016) — LawSathi Research

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226-NMS255-14.DOC

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Shephali

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO. 255 OF 2014

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IN

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SUIT NO. 86 OF 2014

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Medley Pharmaceuticals Limited...Plaintiffs
Versus
Megh Healthcare Private Limited…Defendants

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Dr. Veerendra Tulzapurkar, Senior Advocate , a/w Ms. Pooja Kshirsagar, i/b M/s. Bharat Shah & Co., for the Plaintiffs.

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Dr. Birendra Saraf , a/w Mr. Rashmin Khandekar & Ms. Miloni Gala, i/b Mr. Mahesh Mahadgut, for the Defendants.

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CORAM: G.S. PATEL, J DATED: 30th March 2016

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PC:-

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1.The application is for interim relief in a Suit for passing off.
The two marks in question both relate to Vitamin D3 formulations.
The Plaintiffs’ mark is used on Vitamin D3 sachets, said to be sugar
free and in a delicious orange flavour. The Defendants’ mark is
used on cartons of Vitamin D3 capsules.

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2.The Plaintiffs’ mark is “SunDE”; the Defendants’ mark is
“Sun-D3”. I must straightaway say that on a comparison of the

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226-NMS255-14.DOC

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Plaintiffs’ mark1 and the Defendants’ mark,2 I am not persuaded
that there is such a sufficient similarity between them as would
justify an injunction. I understand the use by both parties of the
word “SUN” in relation to a Vitamin D3 preparation. That seems
to me merely obvious. I doubt either of them can claim exclusivity
in the word “SUN”, and there are limits in the way this word can
be pronounced or visually depicted.

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3.Leaving aside the question of sales figures, invoices and who
entered the market when, all of which might have been relevant had
I felt that there was even a slight possibility of confusion, deception
or misrepresentation, what is material is what Dr. Saraf for the
Defendants points out in relation to the Plaintiffs’ own view on
similarity. The material annexed to the Notice of Motion shows
that the Plaintiffs themselves were of the view at a much earlier
stage in 2013 that the mark “SUN D3”, then proposed to be used
by the Plaintiffs, was entirely distinguishable from an another mark
“SUNDEE” (of a third party) that was cited at the time as
conflicting.3 Now what is peculiar in this case is that it is the
Plaintiffs who adopted the mark “SUNDE” but now claim that the
Defendants’ adoption of the mark “SUN-D3” (of which the
Plaintiffs earlier sought registration) is deceptively and strikingly
similar and therefore furnishes a ground in passing off.

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4.This cannot possibly be. This is a classic case of the Plaintiffs
being, as Shakespeare famously said, “hoist by their own petard”.
Clearly the Plaintiffs cannot have it both ways. They cannot say for
1Plaint, pp. 34-35.

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2 Plaint, p. 83

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3 Motion paperbook, pp. 25-31.

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226-NMS255-14.DOC

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the purposes of registration that there is no similarity and the marks
are distinguishable, but for the purposes of passing off in this
Motion contend exactly the reverse. The Plaintiffs earlier said there
was no similarity and that the marks then cited were
distinguishable. Unfortunately for the Plaintiffs, I agree today with
what they said then.

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5. The Notice of Motion fails. It is dismissed. No costs.

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(G. S. PATEL, J.)

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Medley Pharmaceuticals Limited v. Megha Healthcare Private Limited

Case brief

What is this about?

What did the court decide?

Medley Pharmaceuticals Limited v. Megha Healthcare Private Limited

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Coram

Case details

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