AVIAT CHEMICALS PRIVATE LIMITED Vs. INTAS PHARMACEUTICALS LIMITED

JUDGEMENT

(1.) I.A. No. 12230/2000 is an application filed by the plaintiffs under Order XXXIX Rules 1 and 2 read with Section 151, CPC for grant dad-interim injunction. In this application, order dated 9/02/2001 has been passed restraining the defendant in terms of para 15 of the I.A. till further orders. I.A. No. 3035/2001 is filed by the defendant under Order XXXIX Rule 4, CPC for vacation of the order dated 9/02/2001. Accordingly, both these applications were heard together and are disposed of by this common order.

(2.) Plaintiffs are the two companies incorporated under the Indian Companies Act which are carrying on business, inter alia, as manufacturers and dealers of pharmaceutical and medicinal preparations. Amongst other, one of the drugs of the plaintiff No.1 is LIPICARD. It is stated in the plaint that in January,1997 the plaintiff No. 1 had conceived and invented the trade mark LIPICARD for its medicinal and pharmaceutical prepartions and filed application on or about 9/06/1997 for registration of the trade mark LIPICARD under No. 742450 in respect of pharmaceutical preparations falling in Clause 5 of the Fourth Schedule of Trade Mark and Merchandise Marks Rules, 1959. This application is still pending. In June, 1998 the plaintiffs decided to manufacture and market the hew drug in India for the first time. Hence, plaintiff No. 2 applied for permission to the Drug Controller General (India), New Delhi for import of the bulk drug Fenofibrate for the purpose of testing and carrying out formulation development. In November, 1999 the plaintiff No. 2 applied for permission to the Drug Controller General (India) for import and manufacture of Fenofibrate capsules. In December, 1999 the Drug Controller General granted permission to the plaintiff No. 2 for import of the said drug. Thereafter, the plaintiffs applied and were granted drug manufacturing licence on 4/02/2000 by the Food and Drug Administration Authority permitting it to manufacture LIPICARD preparation. After taking further necessary steps, the plaintiff No.2 manufactured the medicine under the trademark LIPICARD in May, 2000 and started marketing this product. The plaintiff No. 1 has granted to plaintiff No. 2 a non-exclusive licence and rights to use the trade mark LIPICARD. It is also the case of the plaintiffs that owing to the excellence of the medicinal preparation sold under the trade mark LIPICARD and the superior efficacy thereof, it has been a runaway success and became highly popular amongst the doctors, chemists and public. It has enjoyed formidable reputation and goodwill and has been widely accepted all over the country. Its sales for the period upto October, 2000 were to the tune of about Rs. 1,34,51,000/-. The plaintiffs are also spending enormous money on publicity, advertisement and to promote the sale of this drug. The cause of action, according to the plaintiff, for filing the present suit arose when the plaintiff No. 1 came across in September, 2000 the medicinal preparation manufactured by defendant bearing the trade mark LIPICOR. The suit is filed for infringement of passing off action allegedly committed by the defendant by use of the trade mark LIPICOR in relation to its medicinal and pharmaceutical preparation and it is alleged that the trade mark LIPICOR is deceptively similar to the plaintiffs trade mark LIPICARD. Before filing the suit even legal notice dated 28/09/2000 was served calling upon the defendant to stop manufacture and sale of its product under the trade mark LIPICOR but no reply was received nor defendant complied with the requirements stated in the legal notice. The plaintiffs have claimed prior user of the trade mark LIPICARD. The plaintiffs have also tried to contend that use of trade mark LIPICOR by the defendant in respect of same medicinal preparation is likely to cause confusion or deception because the competing trade marks when compared as a whole are likely to be confused by each other on account of imperfect regulation as the similarity between the two is in respect of prefix as well as suffix. It is submitted that consumers do not have advantage of side by side comparison of competing trade marks, and therefore, these similarities by adopting such mode of comparison should not be seen. It is the overall similarity which is basis for consideration as consumers who arc having 'Average Intelligence' and 'imperfect recollection' are bound to get confused between the two products. It is further stated that in view of the judgment of Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. reported as III (2001) SLT 225=JT 2001 (4) SC 243, the distinction between scheduled drug and non-scheduled drug has been dispensed with and as per this judgment, even if drugs are scheduled drugs, Court would apply stricter test of deceptive similarity and prohibits sale of any drugs which are marketed under the brand that will lead to confusion and deception.

(3.) The case of the defendant in the written statement, in I.A. No. 12230/2000 as well as in I.A. No. 3035/2001 is that the plaintiffs are not the proprietor of the trade mark in question. Plaintiffs have not invented any such word 'LIPICARD'. In fact, according to the defendant, plaintiffs have themselves abbreviated the prefix of the mark LIPI from the generic term "Lipid Correction" i.e., management of Lipid abnormalities. There are various companies who are having registered trade mark/ pending application and are using the prefix LIPI in relation to pharmaceutical preparation and many such instances are given by the defendant. On this basis it is stated that the plaintiffs are not the proprietors of the mark LIPICARD and the name is not distinctive for the goods of the plaintiffs only. The prefix LIPI is a generic word common to the trade and no one can have the monopoly/exclusive right of the same. It is also stated that the plaintiffs have not come to the Court with clean hands and have made certain false and misleading statements in relation to material particulars in the plaint and while obtaining an ex-parte injunction. It is also stated that both the parties launched their respective products around the same time i.e. June, 2000, and therefore, plaintiffs cannot claim prior user in respect of their product. Defendant has also tried to highlight the differences in the features of the two products and tried to make out a case that the two products are phonetically, structurally and visually dissimilar, and therefore, there is no question of any confusion. According to the defendant, it has also spent huge amount for promoting the sale of the product and its sale of the product under the trade mark LIPICOR are even more than that of the plaintiffs' sale of product LIPICARD.