Intas Pharmaceuticals Limited v. Sun Pharma Laboratries Limited

$~101 * IN THE HIGH COURT OF DELHI AT NEW DELHI + FAO(OS) (COMM) 170/2019 and CM APPL. 32654/2019 (stay) INTAS PHARMACEUTICALS LIMITED ..... Appellant Through:

Mr.Rajiv Nayar, Sr.Advocate with Mr.Rishi Agrawala, Ms.Niyati Kohli and Ms.Aarushi Tiku, Advocates.

versus SUN PHARMA LABORATORIES LIMITED ..... Respondent Through:

Mr.Hemant Singh with Mr.Waseem Shuaib Ahmed, Advocates.

CORAM:

JUSTICE S.MURALIDHAR JUSTICE TALWANT SINGH

O R D E R

% 07.08.2019

1. The joint terms of settlement dated 7th August 2019 signed by authorized representatives of both the Appellant and the Respondent is placed before the Court. The terms of settlement read as under: "2. Accordingly, the following are the terms agreed to between the parties, on which the present appeal may be disposed of: a. The Appellant/Defendant agrees to change the trademark of its Decitabine drug product from "DECITAS" to "DECINTAS"; b. The Appellant/Defendant agrees to file an appropriate request at the Trade Marks Registry, Ahmedabad, for withdrawal of its trademark application no. 2720905 in Class 5 dated 19.04.2014 for the mark DECITAS;

c. The Appellant/Defendant will liquidate its existing stock of products under the impugned mark DECITAS within a period of six months i.e. by 04.02.2020;

d. The Appellant/Defendant will provide details of its existing stock of products under the impugned mark DECITAS by filing an affidavit in the format provided in ANNEXURE - A to this note and shall supply a copy of such affidavit to the Plaintiff/Respondent;

e. The Appellant/Defendant undertakes to not use the mark DECITAS or any other similar mark except DECINTAS for the Appellant‟s/Defendant accordingly does not object to the exclusivity of the mark DECITEX in hands of the Respondent/Plaintiff in any manner whatsoever; f. The Appellant/Defendant agrees not to manufacture, sell, offer for sale, advertise, directly or indirectly deal in medicinal preparation under the trademark DECITAS or any other mark as may be structurally and deceptively similar to DECITEX; g. The judgment and order dated 15.05.2019 passed by the learned Single Judge in IA No. 19122 of 2014 of CS (Comm.) No. 1206 of 2016 (earlier numbered as CS (OS) No. 2994 of 2014) would merge into the terms of settlement recorded by this Hon‟ble Court and the civil suit being CS (Comm.) No.1206 of 2016 (earlier numbered as CS (OS) No. 2994 of 2014) shall b e disposed of finally in the above terms."

2. The above signed Joint Terms of Settlement, signed by both parties along with Annexure A thereto shall be read as forming part of this order. The parties are bound by the above terms.

3. In that view of the matter, it is clarified that the impugned judgment and order dated 15th May 2019 passed by the Single Judge in IA 19122 of 2014 in CS (COMM) 1206 of 2016 (earlier numbered as CS(OS) 2994 of 2014) merges with this order and the above terms of settlement. This order will be treated as having disposed of the aforementioned CS (COMM) 1206 of 2016

(earlier numbered as CS(OS) 2994 of 2014) as well as the present appeal. The pending application also is disposed of.

S. MURALIDHAR, J.

TALWANT SINGH, J.

AUGUST 07, 2019 / tr