Oftho Industries & Ors Vs. Allergan Inc  Insc 390 (7 May 2004)
N. Variava & H. K. Sema. S. N. Variava, J.
Appeal is against the Judgment of the Calcutta High Court dated 6th November, 1997.
stated the facts are as follows:
Appellants are an Indian Pharmaceutical company. The Respondents are also a
Pharmaceutical company which manufacture pharmaceutical products in several
countries. The Respondents filed a Suit for an injunction based on an action
for passing off in respect of mark "OCUFLOX" used on a medicinal
preparation manufactured and marketed by the Respondents. The Respondents
claimed that they were the prior users of the mark OCUFLOX in respect of an eye
care product containing Ofloxacin and other compounds. They claimed that they
first used this Mark on 9th September, 1992, after which they marketed the
product in other countries like Europe, Australia, South Africa and South
America and that they had obtained registration in Australia, Bolivia, Ecuador,
Mexico, Peru, South Africa, Canada and the United States of America. They
claimed that they had also applied for registration of the mark in several
other countries including India and that
their applications were pending. The Appellants were selling
"OCUFLOX" on a medicinal preparation containing CIPROFLOXACIN HCL to
be used for the treatment of the eye and the ear. They claim that they coined
the word "OCUFLOX" by taking the prefix "OCU" from
"OCULAR" and "FLOX" from "CIPROFLOXACIN" which is
the basic constituent of their product. The Appellants were granted
registration by the Food and Drug Control Administration on 25th August, 1993.
have also applied for registration of the mark OCUFLOX in September 1993. Their
application is also pending.
On 18th December, 1996 the Respondents got an ad interim
injunction. This injunction however was vacated on 29th January, 1997. The single Judge held that the Respondents' product was
not being sold in India and the Appellants having
introduced the product first in India, the Respondents were not entitled to an injunction.
Appeal filed by the Respondents had been allowed by the impugned Judgment. The
impugned Judgment has taken note of the law laid down by this Court. It has
been held that the Respondents were first in the market and therefore they were
entitled to an injunction.
law on the subject is well settled by a number of decisions.
not necessary to set out all those decisions. It would suffice to refer to only
case of N. R. Dongre vs. Whirlpool Corporation reported in 1996 (16) PTC 583,
the Appellants got registered the mark "Whirlpool" in respect of
washing machines. The Whirlpool Corporation filed a suit for passing off action
brought by the Respondents to restrain the Appellants from manufacturing,
selling, advertising or in any way using the trade mark "Whirlpool"
of their product. It was held that the passing off an action was maintainable
in law even against the registered owner of the trademark. It was held that the
name of "Whirlpool" was associated for long with the Whirlpool
Corporation and that its trans-border reputation extended to India. It was held that the mark
"Whirlpool" gave an indication of the origin of the goods as
emanating from or relating to the Whirlpool Corporation. It was held that an
injunction was a relief in equity and was based on equitable principles. It was
held that the equity required that an injunction be granted in favour of the
Whirlpool Corporation. It was held that the refusal of an injunction could
cause irreparable injury to the reputation of the Whirlpool Corporation,
whereas grant of an injunction would cause no significant injury to the
Appellants who could sell their washing machines merely by removing a small
label bearing the name "Whirlpool".
case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. reported in
2001 PTC 300 (SC), the question was whether the mark "Falicigo" and
"Falcitab" were deceptively similar. The trial Court refused interim
injunction. The Appeal was also dismissed. This Court did not interfere on the
ground that the matter required evidence on merits but laid down principles on
which such cases were required to be decided. This Court held that in a passing
off action for deciding the question of deceptive similarity the following
facts had to be taken into consideration:
The nature of the marks i.e. whether the marks are word marks or label marks or
composite marks, i.e. both words and label works.
degree of resembleness between the marks, phonetically similar and hence
similar in idea.
nature of the goods in respect of which they are used as trade marks.
similarity in the nature, character and performance of the goods of the rival
class of purchasers who are likely to buy the goods bearing the marks they
require, on their education and intelligence and a degree of care they are
likely to exercise in purchasing and/or using the goods.
mode of purchasing the goods or placing orders for the goods, and
other surrounding circumstances which may be relevant in the extent of
dissimilarity between the competing marks."
respect of medicinal products it was held that exacting judicial scrutiny is
required if there was a possibility of confusion over marks on medicinal
products because the potential harm may be far more dire than that in confusion
over ordinary consumer products. It was held that even though certain products
may not be sold across the counter, nevertheless it was not uncommon that
because of lack of competence or otherwise that mistakes arise specially where
the trade marks are deceptively similar. It was held that confusion and
mistakes could arise even for prescription drugs where the similar goods are
marketed under marks which looked alike and sound alike.
held that physicians are not immune from confusion or mistake.
held that it was common knowledge that many prescriptions are telephoned to the
pharmacists and others are handwritten, and frequently the handwriting is not
legible. It was held that these facts enhance the chances of confusion or
mistake by the pharmacists in filling the prescription if the marks appear too
in full agreement with what has been laid down by this Court. Whilst considering
the possibility of likelihood of deception or confusion, in present times and
particularly in the field of medicines, the Courts must also keep in mind the
fact that nowadays the field of medicine is of an international character. The
Court has to keep in mind the possibility that with the passage of time, some
conflict may occur between the use of the mark by the Applicant in India and the user by the overseas
company. The Court must ensure that public interest is in no way imperiled.
Doctors particularly eminent doctors, medical practitioners and persons or
Companies connected with medical field keep abrest of latest developments in
medicine and preparations worldwide. Medical literature is freely available in
this country. Doctors, medical practitioners and persons connected with the
medical field regularly attend medical conferences, symposiums, lectures etc.
It must also be remembered that nowadays goods are widely advertised in
newspapers, periodicals, magazines and other media which is available in the
country. This results in a product acquiring a worldwide reputation. Thus, if a
mark in respect of a drug is associated with the Respondents worldwide it would
lead to an anomalous situation if an identical mark in respect of a similar
drug is allowed to be sold in India. However
one note of caution must be expressed. Multinational corporations, who have no
intention of coming to India or introducing their product in India should not
be allowed to throttle an Indian Company by not permitting it to sell a product
in India, if the Indian Company has genuinely adopted the mark and developed
the product and is first in the market. Thus the ultimate test should be who is
first in the market.
present case, the marks are the same. They are in respect of pharmaceutical
products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were
first in the world market. The Division Bench had relied upon material which
prima-facie shows that the Respondents product was advertised before the
Appellants entered the field. On the basis of that material the Division Bench
has concluded that the Respondents were first to adopt the mark. If that be so
then no fault can be found with the conclusion drawn by the Division Bench.
it was submitted on behalf of the Appellants that the Respondents were not the
first to use the mark. It was submitted that there was no proof that the
Respondents had adopted the mark and used the mark before the Appellants
started using the mark in India.
view, these are matters which would require examination on evidence.
Considering the fact that for all these years, because of the injunction Order,
the Appellants have sold their product under some other name, the balance of convenience
is that the injunction order be continued and the hearing of the Suit be
expedited. If on evidence it is proved that the Respondents had adopted the
mark prior to the Appellants doing so, on the settled law, then the Respondents
would become entitled to an injunction. However, if on evidence it is shown
that the Respondents had not adopted the mark prior to its use in India by the Appellants then,
undoubtedly, the trial Court would vacate the injunction. The trial Court would
undoubtedly then assess the damage which Appellants have suffered for having
wrongly not been allowed to use the mark for all these years.
these directions, the Appeal stands disposed of. There will be no order as to
costs. The Suit stands expedited. The trial Court is requested to dispose of
the Suit as early as possible and in any case within a period of 6 months from