SCHERING CORPORATION Vs. ALKEM LABORATORIES LTD

JUDGEMENT

(1.) IA 4555/2007 has been filed under Order 39 Rules 1 and 2 of the Code of Civil procedure, 1908 (hereinafter referred to as the "cpc") by the plaintiffs seeking an ad-interim injunction restraining the defendant from using the mark "temokem" in respect of the pharmaceutical product " Temozolomide " on the ground that the mark "temokem" is deceptively similar to the plaintiffs" registered trademarks "temodal" and "temodar" in relation to the very same pharmaceutical product " temozolomide. IA No. 6041/2007 has been filed under the provisions of Order 39 rule 4 CPC by the defendant seeking the vacation of the ex parte order passed in ia No. 4555/2007 on 23. 04. 2007 whereby the defendant was restrained from launching /using, advertising, promoting, stocking, offering for sale or distributing or otherwise using the trademark "temokem" or any other mark deceptively or confusingly similar to that of the plaintiff's registered trademarks "temodal/ TEMODAR" in relation to drugs used for treatment of brain cancer. The plaintiffs seek the confirmation of the order dated 23. 04. 2007 till the disposal of the suit and the defendant seeks the vacation of the same.

(2.) THE case of the plaintiffs is that their predecessor synthesized the compound temozolomide in 1984. Through 15 years of research and development by the plaintiffs, the said compound was found to be useful as a drug for treatment of brain cancer. Temozolomide, according to Wikipedia " an encyclopaedia on the internet, is an oral alkylating agent used for the treatment of refractory anaplastic astrocytoma" a type of cancerous brain tumor. Temozolomide is a derivative of imidazotetrazine. According to the plaintiffs, in 1999 they applied the pre-existing mark "temodal" in respect of the drug (Temozolomide)and that from 1999 to 2004 the plaintiffs were the sole users of the mark "temodal". In 2004 some Indian manufacturers used similar names.

(3.) THE mark "temodal" was registered in favour of the plaintiff No. 3 in India vide registration No. 687936 with effect from 23. 11. 1995 in Class 5 which, inter alia, related to pharmaceuticals including alkylating cytotoxic agents for the treatment of various types of cancer. Similarly, the mark "temodar" was also registered in favour of the plaintiff No. 3 in India vide registration No. 888816 with effect from 29. 11. 1999 under the said Class 5.