RANBAXY LABORATORIES LIMITED Vs. INTAS PHARMACEUTICALS LTD

JUDGEMENT

(1.) The plaintiff is a large pharmaceutical company manufacturing and marketing a number of medicinal products including a drug for urinary tract infection, which it is selling under the registered trademark NIFTRAN. The word NIFTRAN is alleged to be a coined, unique and an invented word. The compound used in the drug NIFTRAN is Nitrofurantoin. The plaintiff had a sale of Rs.30.4 million, Rs.42.9 million and Rs.11.47 million in the year 2007, 2008 and first quarter of the year 2009 respectively from NIFTRAN alone. It claims to have incurred approximate expenses of Rs.5.6 million, Rs.5.2 million and Rs.2.7 million respectively during the aforesaid period. The defendant No.1 is manufacturing and marketing a drug under the trademark NIFTAS which is alleged to be similar/identical with the trademark NIFTRAN of the plaintiff. NIFTAS also is prescribed in the treatment of urinary tract infection. The case of the plaintiff is that the trademark NIFTAS has been adopted by the defendant with the intention of encashing upon the goodwill and reputation in the trademark NIFTRON and is bound to cause confusion and deception amongst the purchasing public in the trade, which would be induced into believing that the products being sold by the defendant also originates from the plaintiff company. IA No. 10148/2009 has been filed by the plaintiff seeking interim injunction against use of the mark NIFTAS by defendants during pendency of the suit.

(2.) Defendant No. 1 has contested the suit and has claimed that the trademarks NIFTRAN and NIFTAS are based on the drug NITROFURANTOIN, the words NIFTRAN and NIFTAS representing the molecule or drug represented by the names and no one can claim a monopoly over these names. It is also alleged that suffix in the marks NIFTRAN and NIFTAS are altogether different phonetically as well as visually and represent the names of the manufacturing companies, i.e. "RANBAXY" AND "INTAS" respectively. It is claimed that the adoption of the mark "INTAS" is in line with defendants policy to use the word "TAS" as a suffix in most of its products. It is also claimed that the suit suffers from the vice of delay, laches and estoppels since the plaintiff became aware of defendants product in April, 2009. It is claimed that the defendant applied for registration of the trademark NIFTAS in March, 2008 and launched the drug in the marked on 23rd January, 2009. The defendant has also pointed out that the product of the plaintiff is a hard gelatin capsule, whereas the product of the defendant is a sustained release tablet; the product of the plaintiff is packed in a plastic bottle containing 20 capsules, whereas the product of the defendant is sold in aluminum foil. It is also alleged that since it is launched in January, 2009, NIFTAS had a sale of Rs 70.18 lakh till the date written statement was filed on 20th November, 2008

(3.) It is an admitted case that the trademark NIFTRAN of the plaintiff as well as NIFTAS of defendant No. 1 are their respective registered trademarks. Defendant No.1 applied for registration of the trademark NIFTAS claiming user since February 29, 2008 based upon the preparatory steps undertaken by it towards creation of NIFTAS logos and artwork. Defendant No.1 has placed on record the copy of the invoice dated 29.02.2008 whereby it paid design charges for the logo design NIFTAS to ONE Advertising and Communication Services Limited. The application of defendant No.1 was advertised in trademark Journal No.1414 dated 16.04.2009, to which no objection was filed. The registration was accordingly granted to defendant No.1 on 03.05.2010 with effect from 10.03.2008.