M/S Sun Pharmacautical Industr v. M/S M.S.Sai Mirra Innopharm
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 04.02.2026
CORAM:
THE HONOURABLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY C.S. No.875 of 2003 M/s. Sun Pharmaceutical Industries Ltd., No.10/1, Jeypore Nagar, Gopalapuram, Chennai - 86.
.. Plaintiff vs M/s. Sai Mirra Innopharm Pvt. Ltd.
No.124, Lattice Bridge Road, Adyar, Chennai - 600 020.
.. Defendant Plaint filed under Order IV Rule 1 of O.S. Rules Read With Sections 105 and 106 of the Trade and Merchandise Marks Act, 1958 and Order VII Rule 1 of Code of Civil Procedure, 1908, praying for a judgment and decree on the following terms: a. For a permanent injunction restraining the defendant, their servants, agents, dealers or any other persons acting through or on behalf of the defendant directly or indirectly from using in relation to any medicinal and pharmaceutical preparation the word "DUORANDIL" with or without any additions and/or any other word/mark identical with or 1/7
deceptively similar in any manner to the plaintiff's trade mark KORANDIL so as to pass off and/or enable others to pass off the defendant's medicinal and pharmaceutical preparations as that of the plaintiff's;
b. for an order of rendition of accounts of profits illegally made by the defendant by use of the impugned word DUORANDIL and for a decree of the amount of such profits in favour of the plaintiff;
c. direct the defendant to deliver to the plaintiff for destruction all the goods, dies, articles, literature, packing materials bearing the impugned trade mark DUORANDIL or any other deceptively similar to the plaintiff's trade mark KORANDIL;
d. for costs of the suit.
For Plaintiff : Mr.A.Ramesh Kumar For Defendant : Mr.S.Prem Dass for Mr.M.B.Elakkumanan
JUDGMENT
This suit was instituted for remedies in respect of alleged passing off of the plaintiff's product bearing the mark KORANDIL by sale of products bearing the mark DUORANDIL.
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2. The defendant has filed an affidavit affirmed by Mr.J.Jayaseelan, Managing Director, on 03.02.2026. in the affidavit, it is stated in relevant part, as under:
'4..... The Defendant company, by its letter dated 24.08.2009, addressed to the Office of the Director of Drugs Control, voluntarily surrendered the manufacturing licence for "Duorandil 5 mg and 10 mg tablets," clearly stating that the company did not propose to continue with the manufacture of the said products in future.
5. I state that subsequently, the Office of the Director of Drugs Control, Tamil Nadu, by proceedings dated 23.09.2009, informed the defendant that the products DUORANDIL - 5 and DUORANDIL - 10 were cancelled as per their request, thereby conclusively establishing that the manufacture of the disputed products stood permanently discontinued.
6. I therefore categorically states that defendant company had stopped manufacturing, marketing, distributing, and selling goods bearing the trademark "DUORANDIL" from the year 2009, and the said trademark has not been used thereafter in any manner whatsoever. Even as on date, the defendant has no intention whatsoever to revive, use, or commercially exploit the said trademark or 3/7
any mark deceptively similar to that of the plaintiff. The defendant is presently engaged in the manufacture and marketing of other pharmaceutical products wholly unconnected with the mark in dispute.
7. I state that the voluntary surrender of the manufacturing licence followed by the statutory cancellation by the competent authority demonstrates the bona fide conduct of the defendant and clearly establishes that there is no possibility of recurrence of the alleged infringement. In view of the permanent discontinuation of the product and the admitted non-use of the impugned trademark for more than a decade, there exists no surviving cause of action against the defendant, and the continuation of the suit would serve no useful purpose.
8. I undertake before this Hon'ble Court that the defendant shall not, either by itself or through its directors, agents, servants, successors, assigns, licensees, or anyone claiming under it, manufacture, market, distribute, or sell any medicinal or pharmaceutical product under the trademark "DUORANDIL", or any other mark identical with or deceptively similar to the plaintiff's alleged trademark, at any time in future.'
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3. Learned counsel for the defendant, therefore, submits that the defendant is submitting to a decree as per paragraph No.21(a) of the plaint. Learned counsel for the plaintiff submits that the plaintiff is relinquishing the request for relief as per paragraph No.21(b) and (c). As regards costs, on instructions, learned counsel for the defendant submits that a sum of Rs.25,000/- would be paid to the plaintiff within one week from today.
4. Therefore, the suit is decreed in terms of the relief claimed in paragraph No.21(a) of the plaint. Request for relief in terms of paragraph No.21(b) and (c) is dismissed.
04.02.2026 Index:Yes/No mmi Plaintiff's witness:
P.W.1 - Mr.S.Daniel Documents exhibited by the Plaintiff:
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Exhibits Documents Ex.P1 Original unregistered specific power of attorney dated 19.11.2025 executed by M/s.Sun Pharmaceutical Industries Limited in favour of Mr.Daniel S 5/7
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Exhibits Documents Ex.P2 Photocopy of the permission to manufacture KORANDIL dated 30.07.1997 Ex.P3 Photocopy of the Memorandum and Articles of Association Ex.P4 Original sample product of plaintiff company Ex.P5 Original sample product of defendant company Ex.P6 Photocopy of the sales turnover for plaintiff products for the period 1997-1998 to 2002-2003 typed on the letter head of plaintiff company Ex.P7 Photocopy of the advertisement expenditure records for plaintiff product typed on the letter head of the plaintiff company Ex.P8 Photocopy of the application to register the trademarks dated 18.06.1997 Ex.P9 Original purchase bills (5 Nos.) of defendant company product Ex.P10 Photocopy of the legal notice dated 21.04.2003 05.02.2026 6/7
SENTHILKUMAR RAMAMOORTHY,J.
mmi C.S. No.875 of 2003 04.02.2026 7/7