ALLERGAN INC. Vs. INTAS PHARMACEUTICALS

JUDGEMENT

(1.) The question : Whether the registered proprietor of a trademark can sue another registered proprietor of a trademark alleging deceptive similarity keeps on arising in this Court. The consistent view taken by learned Single Judges is that such a suit would be maintainable and thus by way of an interim injunction the defendant can be restrained from marketing goods under the offending trademark. The question has arisen once again in the suit filed by Abbott Healthcare Pvt. Ltd. and the antagonists are Raj Kumar Prasad and Alicon Pharmaceuticals Pvt. Ltd.

(2.) Abbott is a wholly owned subsidiary of Abbott Laboratories Chicago and manufactures pharmaceutical products, including medicines. As per Abbott, Khandelwal Laboratories Pvt. Ltd. had been manufacturing and selling Camylofin Dihydrochloride formulation under the trademark 'ANAFORTAN' since the year 1988 and had obtained registration of said word as its trademark from the Registrar of Trademarks vide serial No.501608 in Class 5 in respect of medicinal and pharmaceutical veterinary preparations. On April 15, 2008, Khandelwal signed an agreement with Nicholas Piramal India Ltd. for brand transfer and know how transfer called 'Brand Transfer And Know How License Agreement'. Under the agreement the trademark 'ANAFORTAN' was assigned to Nicholas. On May 13, 2008 name of Nicholas was changed to Piramal Healthcare Ltd. and thereafter to Piramal Enterprises Ltd. On September 08, 2010 Piramal assigned the trademark 'ANAFORTAN' to Abbott.

(3.) It is the case of Abbott that the predecessor-in-interest of the registered trademark 'ANAFORTAN' used the same extensively and widely for the medicines manufactured and sold in the market and since September, 2010 Abbott had been doing so. Thus, Abbott had established a good will and reputation in the mark 'ANAFORTAN'. As per Abbott it had sold pharmaceutical products under said trademark in sum of Rs.7.84 crores between September to December, 2010 and 23.047 crores between January and December, 2011. The grievance was that Raj Kumar Prasad, carrying on business as a sole proprietor of Birani Pharmaceuticals, was selling pharmaceutical products containing Camylofin Dihydrochloride under the brand name 'AMAFORTEN'. Concerning the second defendant Alicon Pharmaceuticals Pvt. Ltd. the grievance was that it was manufacturing the medicinal preparations for Raj Kumar Prasad, to be sold under the mark 'AMAFORTEN'. It is the case of Abbott that Raj Kumar Prasad surreptitiously obtained, vide registration No.1830060 under class 5, the registration of the mark 'AMAFORTEN' for which Abbott intends to file rectification proceedings.