RANBAXY LABORATORIES LIMITED Vs. CIPLA LIMITED

JUDGEMENT

(1.) THIS is an appeal against an interim order passed by the learned Additional District Judge on 23rd March, 2004. By that order, an application under Section 135(2) of the Trade Marks Act, 1999 read with Order 39 Rules 1 and 2 and Section 151 of the Code of Civil Procedure, 1908 filed by the respondent M/s. Cipla Limited, has been allowed and the defendant, who is the appellant before this Court, has been restrained from manufacturing, selling, offering for sale, advertising or directly or indirectly dealing in 'Enflox 400' manufactured in Orange coloured, oval shaped tablets that are packed in blister packs, till the disposal of the respondent's suit by that court.

(2.) THE case of the respondent/plaintiff before the learned Additional District Judge was that for over 16 years, it has been using the trade mark "Norflox" continuously and exclusively throughout the country on a very large scale and that it had started manufacturing and marketing "Norflox 400" in distinctive, orange coloured, oval shaped tablets since the year 1987. It was claimed that this blister packaging of the plaintiff/ respondent containing the distinctive orange coloured, oval shaped tablet constitutes a trade mark, the exclusive right of use of which is reserved to the plaintiff/ respondent alone. The plaintiff claimed sales worth hundreds of crores and also claimed to have spent many crores in advertising and promoting this product. The plaintiff contended that on 12th February, 2004, it discovered that the defendant/appellant has launched a similar product with identical oval, orange coloured tablets in blister packs, and that this constitutes passing off. The plaintiff contended that the shape and colour of the tablets produced by the defendant are deceptively similar to its own product and is likely to lead to confusion amongst the purchasing public and the trade, and that it constitutes an unfair attempt on the part of the defendant/appellant to take advantage of the business and goodwill generated by the plaintiff/respondent with regard to sale of this product. On these grounds, the plaintiff had prayed that the defendant be restrained from manufacturing, offering for sale or advertising or directly or indirectly dealing in pharmaceutical preparations with orange coloured oval shaped tablets of 'Enflox' packed in blister packs till the disposal of the suit by the trial court. Before that court, it was admitted that the drug in question is a schedule 'H' drug, meaning thereby, that the preparation cannot be sold except on prescription of Registered Medical Practitioner. The plaintiff however contended that despite this, such drugs are commonly sold without any doctor's prescription and, therefore, in view of the likelihood of deception due to similar colour, shape and packaging of the tablets, the plaintiff is entitled to interim relief. Before the trial court, it was conceded that there is no challenge to the name adopted by the defendant/appellant and that the same is visually and phonetically different from the name adopted by the plaintiff/ respondent. plaintiff's case was confined to the fact that the defendant/appellant was selling the drug in a colour, shape and packaging similar to that adopted earlier by the plaintiff/respondent. The plaintiff claimed that since the matter involves a medicinal preparation, therefore, similarity and likelihood of the one being mistaken for the other must be more readily inferred in the interest of the consuming public. Agreeing with the plaintiff, the learned Additional District Judge has taken the view that even though the law requires that this product can only be sold under the prescription of a Registered Medical Practitioner, however, ".... this fact alone is not sufficient to prevent confusion which is otherwise likely to occur". According to learned Additional District Judge, since a large percentage of the population is illiterate, confusion between the two products is possible, and keeping in mind that medicinal products are involved, even a lesser possibility of confusion is enough to grant an injunction. The learned trial court has concluded that this is a case of passing off and even if no confusion or deception may be caused to the dealer or the stockists, unwary purchasers might still be deceived. The contention of the defendant/appellant that various other manufacturers are also using similar orange coloured oval shaped tablets in blister packs for their drugs was not considered worthy of any merit by the learned ADJ in deciding the issue.

(3.) THE aforesaid case of CIPLA Ltd. (supra) is directly on the point and squarely covers the issue that has arisen for decision in this appeal. The said suit was instituted by M/s. Cipla Ltd. who happens to be the respondent in this appeal. There, M/s. Cipla Ltd. had moved an application under Order 39 Rules 1 and 2 CPC seeking an interim injunction to restrain one M/s. M.K. Pharmaceuticals from marketing and selling "Norfloxacin" under its generic name because the tablets offered for sale by M/s. M.K. Pharmaceuticals happened to have the same colour, shape and packaging as that of 'Norflox' sold by M/s. Cipla. In the instant case also, M/s. Cipla have mounted the same challenge on the same grounds against M/s. Ranbaxy Laboratories Ltd. i.e. the appellant before this Court. In the case brought by M/s. Cipla against M/s. M.K. Pharmaceuticals, this Court concluded that although undisputedly the packaging, shape and colour of the tablets of the plaintiff as well as the defendant is similar, however, in view of the fact that blister form of packaging of tablets is a common and prevalent type of packaging used for 50% of the tablets in the market, the plaintiffs can have no monopoly over a particular form of packaging and cannot pray that no one else should offer its medicine in that fashion. With regard to the colour and shape of the tablets, this Court had stated as follows: