Allowed

Unichem Laboratories Ltd. v. Hetero Healthcare Ltd. and Anr.

Bombay HC15 Feb 2010NMS/3852/2009

Case brief

AI extract

What is this about?

The Court allowed the Plaintiffs' Notice of Motion for interim injunction in a trademark passing-off suit concerning pharmaceutical preparations. While noting the distinction of the drugs being Schedule 'H' products requiring prescriptions, the Court held that confusion remains possible and preferred the Plaintiffs' prima-facie case regarding reputation and goodwill over the Defendants' explanatio

What did the court decide?

The Notice of Motion was made absolute, granting interim injunction as per the ad-interim order dated 19th November 2009.

Unichem Laboratories Ltd. Vs Hetero Healthcare Ltd. and Anr. — Bombay HC (2010) — LawSathi Research

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IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION

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NOTICE OF MOTION NO. 3852 OF 2009 IN

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SUIT NO. 2722 OF 2009

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Unichem Laboratories Ltd., a limited company incorporated under the Companies Act, 1956, having its registered office at Unichem Bhavan, Prabhat Estate, S.V. Road, Jogeshwari (West), Mumbai – 400 102. ... Plaintiffs. V/s. Hetero Healthcare Ltd., a company incorporated under the Companies Act, 1956 and having its place of business at H. No.8-3-166/1&2, Challa Estate, Erragadda, Hyderabad – 500 018. Brooks Laboratories Ltd. a company incorporated under the Companies Act, 1956 and having its place of business at Village Kishanpura, Nalagarh Road, Baddi (H.P.) 174 101. ... Defendants.

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... Defendants.

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Mr. Ravi Kadam, Sr. Counsel a/w. Ashish Kamath & Mahesh Mahadgut for the Plaintiffs. Mr. J.J. Bhatt, Sr. Counsel a/w. Mr. B.C. Mehta i/b. Dhruve Liladhar & Co. for Defendant Nos. 1 & 2.

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CORAM : S.C. DHARMADHIKARI, J.

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RESERVED ON : 15^th DECEMBER 2009.

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PRONOUNCED ON : 15^th FEBRUARY 2010.

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ORAL JUDGMENT :-

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This is a Notice of Motion by the Plaintiffs seeking interim reliefs. The interim injunction that is sought is to restrain the Defendants by themselves, their servants, dealers, distributors, etc. from in any manner manufacturing, marketing, selling, distributing, exporting and/or using in relation to medicinal and/or pharmaceutical preparations, the trade mark MPOX-CV or any other deceptively similar mark so as to infringe the Plaintiffs’ registered trade mark AMPOXIN registered under No.456475. The other prayer is to prevent passing off by the Defendants in relation to the subject trade mark and the preparations. In other words, the Plaintiffs are seeking restraining a temporary injunction so as to prevent passing off by the Defendants.

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When this application was placed before me for adinterim reliefs, it was stated by the Plaintiffs that they had given notice to the Defendants of the said application. After hearing the Senior Counsel appearing on behalf of the Plaintiffs on 19^th November 2009, I had granted a protective ad-interim order in terms of prayer Clauses (a) and (b).

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After the said order was passed, an application was made to vacate the ad-interim order as it was stated that the same has been passed without notice to the Defendants. After some arguments, it was agreed by both sides that the Notice of Motion itself be listed for hearing and final disposal.

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Accordingly, it was listed and I heard arguments of both sides. With their consent, the Notice of Motion is being disposed off finally by this order.

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The Plaintiffs have filed the Suit for a permanent injunction and damages and in such a Suit they have applied for interim reliefs.

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The claim of the Plaintiffs is based on the fact that they are a Company incorporated under the Companies Act, 1956. They are carrying on business inter-alia as manufacturers and dealers in pharmaceutical and medicinal preparations. They are a well known established Company enjoying high reputation. Their total turn-over is around Rs.648 crores for the year 2008-2009. They are selling the products in India as well as exporting them to foreign countries. They claim to be registered proprietors of trade mark AMPOXIN in relation to their medicinal and pharmaceutical preparations.

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The First Defendant and the Second Defendants are also Limited Companies. The First Defendant is marketing and selling goods bearing the impugned trade mark MPOX-CV. The Second Defendant is a manufacturer of pharmaceutical preparations. They have manufactured the goods bearing the impugned mark.

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In paragraphs 3 and 4, the Plaintiffs have set out as to how the pharmaceutical preparations AMPICILLIN AND

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CLOXACILLIN preparations has been sold in the form of tablets by them since 1986. They have registered this mark in relation to the goods falling in Class 5 of the Fourth Schedule to the Trade Mark Rules framed under the Trade Marks Act. This is a registration granted when the old Act was in force. It is stated that it is valid and subsisting and renewed from time to time. The Plaintiffs have pointed out that their preparation is sold as AMPOXIN in various strengths such as AMPOXIN-250, AMPOXIN-500, etc. These are drugs and prescribed for treatment of respiratory infections, skin, and skin structure infections so also urinary tract infections.

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The goods are being sold extensively throughout the country. The Plaintiffs have annexed copies of the registration certificate, sales turnover duly certified by their Chartered Accountant, specimen of the promotional material and the strip in which the tablet/drug is sold. They state that they enjoy a wide reputation and goodwill in India and the medical profession, trade and consumers associate the said mark with the Plaintiffs alone and none else.

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In paragraph 7 of the plaint they have pointed out that in April 2009, they came across goods of the Defendants being medicinal preparations under identical and/or similar mark MPOX-CV. It is stated that mark MPOX-CV is almost identical with and/or deceptively similar to the registered trade mark AMPOXIN inasmuch as the mark MPOX-CV is phonetically and aurally similar to the registered trade mark

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AMPOXIN. The two marks are similar structurally and visually. The Defendants have merely deleted the vowel “A” and suffix “IN” in the Plaintiffs’ mark. They have added two letters “CV” as a suffix in their mark to camouflage their unlawful adoption of the impugned mark. Actually the addition of the letters bring the mark of the Defendants closer to the Plaintiffs’ mark phonetically. They have annexed as Annexure ‘E’ a copy of the Defendants’ product pack.

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They have sent a cease and desist notice through their Advocates on 3^rd April 2009 to the Defendants and brought to their knowledge the aforesaid facts.

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It is alleged that a reply was received by them from the First Defendant vide their Advocate’s letter dated 22^nd April 2009 where they tried to justify their acts and did not agree to discontinue the use of the impugned mark.

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The Plaintiffs have pointed out in the subsequent paragraphs that the alleged differences are not such as to negative the claim of the Plaintiffs. The only argument appears to be that the name of the Defendants’ product is a part of a chemical name AMPICILLIN and CLAVULANIC respectively. That has nothing to do with the Plaintiffs’ mark. However, this defence is untenable because the Defendants were aware that the Plaintiffs’ products are available in the market. Even if they want to urge that their adoption is taking into account the generic name, yet, the Defendants

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have failed to explain as to how they chose almost identical name. The Plaintiffs have pointed out as to how customers and patients will be cheated and that is how they have prayed that the infringement and passing off be prevented.

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The Notice of Motion is in furtherance of these final reliefs and the prayers are supported by an affidavit of one Subharaman K., who is the Head-Legal and Company Secretary of the Plaintiffs. He has pointed out in the affidavit in support of the Notice of Motion that use of the impugned mark is bound to cause confusion and deception in the market and would lead to passing off by the Defendants goods as that of the Plaintiffs. Therefore, the interim injunction, as prayed, be granted. The plaint is lodged on 16^th October 2009 and the Motion is also filed on that date.

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The Defendants have filed an affidavit of their authorized signatory P.C. Khasgiwal in reply. They have pointed out that the First Defendant is one of the group companies of M/s. Hetero Group of Companies, which is marketing its products in over 100 countries of Asia, Middle East, Eastern Europe and Latin America. The annnual sales turnover of M/s. Hetero Group of Companies is approximately Rs.2200 crores. M/s. Hetero Group of Companies is a very respected manufacturer and marketeer of bulk drugs and finished dosage forms which are being purchased by many leading pharmaceutical companies in India, including the Plaintiffs. The First Defendant is a pharmaceutical company

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incorporated some time in March 2006. Defendant No.1 has developed and is commercializing pharmaceutical products catering to a variety of therapeutic categories.

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They contend that the Plaintiffs are not entitled to any interim relief as the present Suit is filed to harass the Defendants. They submit that the trade mark of the Plaintiffs and that of Defendant No.1 are totally different. They are not similar and/or identical as wrongfully alleged by the Plaintiffs. It is incorrect for the Plaintiffs to allege that the Defendants are trying to pass off their goods as and for those of the Plaintiffs.

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In paragraphs 6 to 8 and 10 of the affidavit in reply filed on 4^th December 2009, this is what is stated :-

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“6. The trademarks of the Plaintiff and Defendant No.1 are totally distinct different and cannot be said to creating confusion, as alleged by the Plaintiff. The chemical composition of both the products are totally different. Use of application of both the products are different. Both the products belong to the group ‘antibiotics’ and are “Schedule-H” drugs, and are only required to be sold when prescribed by a Registered Medical Practitioner (doctor). In other words, in the absence of a prescription issued by the Registered Medical Practitioners (doctors), both the medicines cannot be purchased by a lay person from

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the Pharmacists/Chemists over the counter.

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I say that the Plaintiff’s mark AMPOXIN and the Defendants mark MPOX-CVare totally, phonetically, visually and structurally different from each other in all respects as the Plaintiff’s products are always presented and prescribed as AMPOXIN-250, AMPOXIN-500 etc., while the products of Defendant No.1 are presented and prescribed as MPOX-CV-325, MPOX-CV-675, etc., where the dosing strengths are very clearly printed on all the market packs of the products of the Plaintiff and the Defendant No.1. As seen, the idea conveyed by the two marks is also completely different. There is, therefore, no question of any deceptive similarity arising between these two marks as alleged by the Plaintiff at all.

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Besides, as the products of the Plaintiff and Defendant No.1 incorporate totally different chemical compounds (drugs), the selling price (M.R.P.) of the Plaintiff’s product is substantially below the selling price (M.R.P.) of the product of Defendant No.1. Therefore, by any stretch of imagination, there cannot be any confusion or replacement, much less, infringement, as alleged.

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Defendant No.1 is a leading drug manufacturer in India and has a very substantial presence in

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Pharmaceutical Industry. I say that, with an intent to market the drug in India, Defendant No.1 coined a name for the drug based on its chemical composition. The drug was named MPOX-CV which is derived from its key ingredient i.e. Amoxyillin & Potassium Clavulanate. I say that the Defendants have coined the word as follows :-

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M. OX from AMOXYCILLIN – The letters MOX as a prefix suffix or a part of the Brand Names are being commonly used by the Pharmaceutical companies for their products marketed in the medical field to indicate AMOXYCILLIN.

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PO from POTASSIUM.

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CV from POTASSIUM CLAVULANATE (emphasis added). The letters CV as a ‘suffix’ are very commonly used as a part of the brand name by the Pharmaceutical companies for their products marketed in the medical field to indicate the incorporation of the drug Potassium Clavulanate. Attached herewith and marked Exhibit “1” is a List of such Trade Marks marketed by various Pharmaceutical companies and prescribed by doctors in India.

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I say that a combination of the letters M PO X and CV

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resulted in the creation of the mark MPOX-CV.”

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The Defendants have contended that in pharmaceutical and medicinal trade it is common practice for medicinal preparation to have names based on the active ingredients or the disease or the symptoms. No one can be allowed to monopolize the name of the drug or the active ingredient or the disease. There are large number of products based on common active ingredients, disease and symptoms. The Defendants manufacture Amoxycillin and Potassium Clavulanate tablets under the mark MPOX-CV. Their mark originates from the active ingredients namely AMOXYCILLIN and POTASSIUM CLAVULANIC ACID. Therefore, this mark is coined based on the ingredients and the Plaintiffs cannot seek any monopoly over the word AMPOX, let alone against the manufacturer of drugs whose active ingredient is the drug AMOXYCILLIN. Further, the Plaintiffs have suppressed a material fact from this Court deliberately. They have concealed from this Court that the trade mark AMPOXIN was not invented by them. It is a derivative of the generic name of the drug AMPICILLIN. There are several pharmaceutical companies that are using the variants of the generic name AMPICILLIN. Some of whom have adopted it well before the Plaintiffs. For example, AMPILIN is the mark adopted by the First Defendant Group AMPILONG by American Remedies, AMPILOX by Biochem, etc. Thus, the word “AMP” is common and therefore, any small differences, if any, in cases of adoption of generic names is a common practice in the

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pharmaceutical industry to distinguish one brand from the other. Thus, this is not a unique invention of the Plaintiffs. The Defendants, in or around March 2007 began distributing/marketing drug MPOX-CV. They began distribution of drug MPOX-CV in India in April 2007. The Plaintiff is aware that they buy bulk drugs as well as finished products from M/s. Hetero Group of Companies. MPOX-CV was tremendously successful and till date the sales exceed Rs.15 crores. The Defendants have spent about Rs.3.00 crores in marketing and promoting their product. Their market share presently is 1.5% and growing. The drug is one of the market leaders for infective diseases like diarrhoea, allergic diseases, painful and inflammatory conditions etc. In these circumstances, the Plaintiffs have come up with a false case that they became aware of the user and adoption by the Defendants in April 2009. Hence, apart from guilty of delay and latches, the Plaintiffs are not entitled to any equitable reliefs. The Plaintiffs have caused losses to the tune of Rs.3 lakhs per day and therefore, the injunction be vacated and the Motion be dismissed.

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The Plaintiffs have filed a rejoinder and have urged that the reasons given for adopting the impugned mark are dishonest. They are different from the reasons in the reply to the Advocate’s notice. Such shifting stands expose the dishonesty or lack of credibility.

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It is contended by the Plaintiffs that if the Defendants were honest in their user and adoption, they would not have dissected the generic name into two parts. Their explanations are different from time to time. While reiterating the averments in the plaint and deny whatever is contrary therewith, Plaintiffs have stated that the rival marks are phonetically, structurally as well as visually identical. Further, they are medicinal preparations and therefore, merely because the Defendants raise a plea that the product being Schedule ‘H’ drugs or that they being sold by registered chemicals on the basis of medical prescription is no answer and defence. That does not rule out possibility of confusion between the rival marks. It has been recognized that medicines are available across the counter even without prescription. Therefore, the attempt is nothing but to take advantage of the enormous reputation and goodwill of the Plaintiffs and their mark AMPOXIN. There is nothing like trade practice and such a defence is untenable. The use of generic name in the trade has been also dealt with and it is contended that marks are to be compared as a whole and not by breaking into parts. There are several marks with prefix “AMP” or suffix “IN” but that does not take over the right of the Plaintiffs in relation to their mark. The members of the trade or the public cannot distinguish the marks in this manner and therefore, there is no substance in the defence. The Plaintiffs have stated that though they are buying the bulk drugs as well as the finished products from M/s. Hetero Group of Companies, they were not aware of the adoption

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under the impugned mark till April 2009. All other assertions and pleas are denied and it is stated that the Motion be made absolute.

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With these materials, I have heard Mr. Kadam, learned Advocate General, appearing on behalf of the Plaintiffs and Mr. Bhatt, learned Senior Counsel appearing on behalf of the Defendants. With their assistance, I have perused the plaint and the annexures thereto and Notice of Motion so also the affidavits on record. I have gone through the statutory provisions and the citations relied upon by the Counsel.

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In the case of Cadila Healthcare Ltd. V/s. Cadila Pharmaceutical Limited, (2001) PTC 541 SC, the Hon’ble Supreme Court referred to all decisions in the field and held as under :-

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“22. It may here be noticed that Schedule ‘H’ does are those which can be sold by the chemist only on the prescription of the doctor while Schedule ‘L’ drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar. In Blansett Pharmaceuticals Co. V/s. Carmick Laboratories Inc., 25 USPQ 2^nd , 1473 (TTAB 1993), it was held as under :

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“Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed under marks which look alike and sound alike.”

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The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the Defendant’s drug, of which passing-off is alleged, is meant for curing the same ailment as the Plaintiff’s medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. V/s. American Home Products Corpn (supra), where it was held was under :-

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“The products of the parties are medicinal and the applicant’s product is contraindicated for the

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disease for which opposer’s product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals.”

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It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot be itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal.

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As far as the present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from

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similarity of marks among medicines are required to be taken.

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Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3^rd Edn., para 23.12 of which reads as under :-

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“The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in

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the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints.”

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The tests laid down in para 35 in this decision are in relation to an action for passing off on the basis of unregistered trade mark.

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As far as the registered trade marks are concerned, and infringement thereof, the statutory provisions are clear.

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In a decision reported in 2002(25) PTC 592, a Division Bench of this Court, presided over by the then Hon’ble Chief Justice Mr. C.K. Thakker, held thus :-

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“15. In our opinion, the learned Counsel for the Appellants is right in contending that once the Plaintiffs’ mark is registered, what was necessary for the Plaintiffs to how was that the Defendant has used a mark ‘deceptively similar’ to that of the Plaintiffs. In view of registration of marks, the

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Plaintiffs had an exclusive right to use the said mark “SPOXIN”, and they were also entitled to prevent any other person from using an identical mark or a mark ‘deceptively similar’ to such mark.

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Inviting our attention to the term “deceptively similar” in Clause (d) of sub-Section (1) of Section 2 of the Act, the counsel contended that a mark can be said to be deceptively similar’ to another mark, if such mark is likely to deceive or cause confusion. SUPAXIN, according to the learned counsel, is deceptively similar to SPOXIN, the registered mark of the plaintiffs. It is visually, phonetically and structurally very close to the Appellants mark SPOXIN. Once the mark is identical or deceptively similar, the other factors, viz., the packing being different, number of tablets contained in the competing package is not the same, prices are not identical and/or the goods being sold on doctor’s prescription are altogether irrelevant and immaterial.

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The Hon’ble the Chief Justice adverted to the tests laid down in Cadila (Supra) and held that they were applicable. While turning down the arguments of non-adoption and user and generic name, the Division Bench observed thus :-

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“30. Mr. Kadam, no doubt, urged that the

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mark SUPAXIN has been honestly adopted and used by the Respondent. In fact, his contention is that mark SPOXIN was similar to the marks registered in favour of other companies, such as SPORXIN, ZEPOXIN, as also some marks which are pending for registration such as ZEPOXIN, FOXIN, CIPOXIN, SYPROXIN, SYOXIN, etc. When no material was placed on record regarding confusion on behalf of the Plaintiffs, and on the contrary, there are affidavits of doctors as well as pharmacists that there is no likelihood of confusion even if a patient is intimated to take a particular drug on telephone, no inference can be drawn that there was likelihood or possibility of confusion, which could result in disastrous consequences or adverse effect. It was also not the case of the Plaintiffs in the plaint, nor in the Notice of Motion, that such confusion would result adverse effect on the customer. If, in the light of that fact, discretion has not been exercised by the learned Single Judge in favour of the Plaintiffs and reasons have been recorded in support of such order, it does not require interference, as the Appeal is filed on principle. When there was no allegation about unpleasant or fatal consequence, the Appellants would be estopped from raising such point at the hearing of the Appeal.

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The principle that normally, in

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discretionary matters, an Appellate Court will not interfere with the order passed by the Trial Court is well settled. At the same time, however, when an adjudication has been made, may be prima facie, and in doing so, correct test has not been applied, it is open to the Appellate Court to interfere with the discretionary order made by the Trial Court. In the instant case, correct test is ‘possibility’ of confusion and not actual confusion which should have been brought on record by placing necessary material. The point is finally set at test in Cadila Healthcare Ltd. and, hence, the order passed by the learned Single Judge cannot be sustained.”

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The present case will have to be decided on the touchstone of these principles.

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In the present case, when the Plaintiffs pointed out to the Defendants that they are manufacturing and distributing/marketing the product in question and the Defendants have commenced manufacturing of a medicinal preparations under identical mark which is likely to deceive and confuse the persons in medical profession, trade and consumers, in reply thereto, by their Advocate’s letter dated 22^nd April 2009 what the Defendants asserted is that they are also leading and established manufacturers and merchants of various medicinal and pharmaceutical preparations. They stated that before adoption of the mark MPOX-CV, they had

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caused the search in the registry of the trade mark and the search report did not indicate the Plaintiffs’ mark as a conflicting mark. Still, it was asserted by them that their brand MPOX-CV is standing for the composition of the drug and it being a Schedule ‘H’ drug, it is not sold over the counter. They contended that both marks cannot be said to be similar either phonetically, visually or otherwise. This was the reply given to the notice issued by the Plaintiffs prior to this Suit.

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However, in the affidavit in reply, that is filed by the Defendants, their case is that the First Defendant is a leading drug manufacturer in India and has a very substantial presence in the pharmaceutical industry. It is stated that with an intent to market the drug in India, Defendant No.1 coined a name for the drug based on its chemical composition.

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A perusal of the plaint would show that the First Defendant is carrying on business of marketing of pharmaceutical preparations. Even on the packaging and the tablets strip, the First Defendant’s name appears as a marketeer, under the heading “Marketed by Hetero Healthcare Ltd.”. The drug is stated to be manufactured under a manufacturing license by the Second Defendant. Therefore, on what basis the First Defendant makes a statement that it is a leading drug manufacturer in India and has a very substantial presence in pharmaceutical industry is not clear at all. On the other hand, in paragraph 2 of the

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reply it is stated that the First Defendant is one of the group companies of M/s. Hetero Group of Companies. That group is marketing its product in over 100 countries of Asia, Middle East, Eastern Europe and Latin America. The annual sales turnover is mentioned. Thereafter, it is stated that the Hetero Group of Companies is a very respected manufacturer and marketeer of bulk drugs and finished dosage forms which are purchased by many leading pharmaceutical companies in India including the Plaintiffs. The First Defendant has been incorporated some time in March 2006. Therefore, it is clear that no details of the manufacturing activities of the First and the Second Defendants or the Group are set out. On the other hand, it is alleged that the Defendants began distribution of MPOX-CV in April 2007. They have annexed sales figures and sales performance of MPOX-CV. The figures are from April 2007 up to November 2009. There is nothing stated about the manufacturing activities of these drugs as to when the Second Defendant began manufacturing it and what is the quantity manufactured and brought into the market has not been mentioned in the affidavit at all.

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This being the position, the Defendant had to point out as to how they coined the word MPOX-CV. The attempt is to show that there are several manufacturers in India, who have coined such words. Instances are given in Exhibit 1. However, save and except OPOX-CV, the list does not mention anything which could be said to be similar to MPOX-CV. The instances given are not by themselves decisive and

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conclusive. The Division Bench of this Court had negatived the arguments based on such statements.

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Further, the arguments based on splitting up the mark in the manner resorted to by the Defendants in paragraph 10 are again not acceptable going by the settled principles. There is no question of any monopoly in such cases. The question is whether the pharmaceutical companies have been using the marks or not. If the Defendants are stating that the letters MOX as a prefix and suffix are being used by several pharmaceutical companies to mark AMPOXYCILLIN, that by itself in the facts of this case, would not be of any assistance to them. Thus, whether the Defendants have proved that by their acts they have not been using the mark deceptively similar to that of the Plaintiffs is something which will have to be established in this case only at the trial. By mere statements in the affidavit in reply which have been denied by the Plaintiffs in their rejoinder, it cannot be assumed that the Defendants have coined their mark on the basis of a Brand name commonly used in the pharmaceutical industry. Something more will have to be established and proved by the Defendants who are recent entrants in the market.

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In this case, none of the averments in the plaint have been denied. That the mark of the Plaintiffs is registered in 1986, it is valid and subsisting, that the Plaintiffs have acquired and built up a reputation and goodwill of their own which is prima-facie proved by their sales figures are all

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statements which have gone un-controverted. None of the paragraphs in the affidavit in reply dispute the plaint averments in so far as the Plaintiffs’ reputation and goodwill in the market. All that has been stated is that the Plaintiffs wish to acquire a monopoly and what the Plaintiffs have been manufacturing and selling is a common product and even the brand name is common. However, the Defendants have not been able to substantiate even prima-facie as to how they have coined the words MPOX-CV. It goes without saying that the Plaintiffs spell their mark as MPOX-CV whereas, the Defendants spell as “AMPOXIN”. Therefore, by itself this is no distinction. In fact, it is quite possible that the consumers and patients buying the product/drug would be confused by the names coined by the Defendants. The consumers and patients are not excepted to undertake a minute and detailed comparison much less peruse the technical details pointed out by the Defendants. The contents of paragraph 9 of the affidavit by themselves are not decisive. Ultimately, the Defendants will have to establish and prove even prima-facie that such details are noted by the persons in the trade and the medical practitioners. Once, such details are not noted and often the drug is sold across the counter, then, at this stage, it will not be possible to hold that the Defendants have coined their mark on the basis of common trade usage and therefore, there is no infringement or passing off.

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If the tests laid down in the decision of the Supreme Court are taken into consideration, then, it would be

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necessary to note that in medical and pharmaceutical preparations, the common consumer is not in a position to make such comparisons and scrutiny. If the Defendants do not deny that their drug so also that of the Plaintiffs is used to treat infective diseases, inflammatory conditions and respiratory infections, then, it must be held that the Plaintiffs have made out a strong prima-facie case.

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Considering the details set out in the plaint, even the balance of convenience is in favour of the Plaintiffs because the Defendants are recent entrant in the market. The comparison of the sales figures would go to show that the Second Defendant has not even set out as to how much quantity of the drug MPOX-CV has been manufactured. If the market share of MPOX-CV is just about 1.5%, then, irreparable loss would be caused to the Plaintiffs if the Notice of Motion is not made absolute.

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In the result, the Notice of Motion is made absolute in terms of the ad-interim order dated 19^th November 2009.

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The Decisions cited on behalf of the Defendants need to be only referred to. The first decision reported in AIR 1970 SC 2062 (F. Hoffimann-La Roche and Co. Ltd. V/s. Geoffrey Manners and Co. Pvt. Ltd.) compares the two marks “Dropovit” and “Protovit”. That is a decision rendered by the Supreme Court on the basis of proceedings for registration of the mark of the Respondents. There, on facts, the Supreme

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Court noted that although all tests are applied, the two marks are not deceptively similar. The Supreme Court has referred to the fact that both are Vitamin preparations. The average customer would know of vitamin preparation. The word “vit” occurs in large number of trade marks and therefore, he would naturally be on his guard and not make a mistake. Thus, the nature of the preparations, their usage was a relevant factor when the Supreme Court came to this conclusion. The pharmaceutical preparations was nothing but vitamin tablets. Such is not the case before me and both sides do not dispute that the drug before me is a Schedule ‘H’ drug, is an anti-biotic and used for treating infections and infective diseases. This decision is, therefore, clearly distinguishable on facts.

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As far as the Judgment of the Single Judge reported in 2008(2) Bom. C.R. 739 (Wyeth Holdings Corporation & Anr. V/s. Burnet Pharmaceuticals (Pvt.) Ltd.), there, the injunction was refused by the learned Judge by applying the settled tests. There, there also, the pharmaceutical preparation was a Vitamin ‘B’ complex. The product had a nutritional factor. It was used in the treatment and prevention of vitamin deficiencies and anemias. It is, in these circumstances, and finding that the words incorporated in the mark are elements to the common business that the learned Judge denied the injunction. He distinguished all other cases and held that there is no material even prima-facie which would enable the Court to hold that the marks are deceptively similar. Thus,

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¶117

the generic word was the crucial factor. In the present case it cannot be straight away held that the mark coined is based on the generic words.

¶118

It is on the basis of the materials produced in this case and finding that the Plaintiffs have made out a prima-facie case that I allow the Notice of Motion in terms of my adinterim order but without any order as to costs.

¶119

(S.C. Dharmadhikari,J.)

Unichem Laboratories Ltd. v. Hetero Healthcare Ltd. and Anr.

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Unichem Laboratories Ltd. v. Hetero Healthcare Ltd. and Anr.

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