WIN MEDICARE LIMITED Vs. SOMACARE LABORATORIES LIMITED

JUDGEMENT

(1.) This application (I.A.No. 1771/91) under Order 39 Rules 1 & 2 read with Section 151 of the Code of Civil Procedure has been filed by the plaintiff for temporary injunction for restraining defendants and their agents etc. from selling or offering for sale pharmaceutical and medicinal preparation under the trade mark DICMOL or any other trade mark identical or deceptively similar to the plaintiff's trade mark DICLOMOL in a suit filed by it for permanent injunction restraining defendants from passing off their goods under the trade mark DICMOL and other ancillary reliefs. Ex-parte ad-interim injunction was granted on 7.2.1996.

(2.) The case of the plaintiff is that the plaintiff is a company incorporated under the Indian Companies Act, 1956, in the year 1981, and is engaged in the field of manufacturing, development and marketing of pharmaceutical and medicinal preparations; and due to large scale advertisement and other innovative promotional schemes and their medicines being of superior quality have acquired reputation in the market, medical circle and consumers. It is also alleged that the plaintiff inter-alia are manufacturers of Anti-inflammatory and analgesic medicines in the form of Diclofenac Sodium and Paracetamol tablets, injections and gel which are sold under the trade mark DICLOMOL. The said medicine is used for treatment of various diseases like Rheumatoid arthritis, osteoarthritis, ankylosing spondylitis, cervical spondylosis, intervertebral disc syndrome and sciatica, nonarticular rheumatic conditions such as fibrositis, myositis, bursitis, lower backpain, soft tissue injuries, painful inflammatory conditions in gynecology, post-operative and post traumatic inflammation and swelling, pain and inflammation following dental surgery and acute attacks of gout. The plaintiff had adopted this trade mark on 1st September, 1988 and after obtaining approval from the Drugs authorities they launched the sale of the product under this trade mark in the Indian market on 25th July, 1989. Since then they have spent Rs. 92.00 lacs on publicity and due to wide publicity and their product being of high quality, the medicine has acquired a very good reputation in the market; their trade mark DICLOMOL appears in bold typeface on a coloured strip having a half arrow head at its one end in an original artistic work, that their sales have increased from Rs. 27.63 lacs during the year 1989 to Rs. 346.11 lacs during the year 1994 and the audited figures for subsequent period were not readily available with them when the suit was filed. The plaintiff has also given three instances where the plaintiff had successfully injuncted infringers from passing off their product sold under the said trade mark.

(3.) It is then alleged that for the first time in the month of May, 1995 the plaintiff came to know that the defendant-No. 2 was also manufacturing similar pharmaceutical product which was being marketed by defendant No. 1 under the trade mark DICMOL; which is identical and deceptively similar to that of the plaintiff's trade mark DICLOMOL. The defendants were thereby passing off their goods as those of the plaintiff with the intention of encashing upon the goodwill and reputation of the plaintiff associated with the plaintiff's said trade mark. On coming to know of this, plaintiff by means of a legal notice dated 1st May, 1995 required the defendants to cease and desist from using the trade mark of DICMOL or any other mark which is identical or deceptively similar to the trade mark DICLOMOL of the plaintiff and to tender an undertaking to that effect but vide their reply dated 14th May, 1995 defendant No. 1 showed their unwillingness to this request of the plaintiff and declined to comply this. The plaintiff did not file the suit for some time as the goods of the defendants kept disappearing sporadically from the market until they were again noticed in the month of January, 1996. Plaintiff has accordingly filed the present suit for permanent injunction and sought interim injunction as aforesaid.