MOREPEN LABORATORIES LIMITED Vs. EAST WEST PHARMA

JUDGEMENT

(1.) The appellant (hereafter 'Morepen') is aggrieved by a judgment and orders that partly allowed its suit for permanent injunction, but denied the claim for damages.

(2.) The facts relevant to the appeal are that Morepen had instituted a suit against the respondent (hereafter 'East West') seeking reliefs of permanent injunctions, rendition of accounts and directions to handover all goods, packaging strip, unfinished products etc. bearing the trademark 'DOM' as also handover all plates, blocks, moulds, negative, duplicating equipments or other device used or to be used for printing or reproducing the copies of the cartons/packaging material/strips bearing the mark 'DOM' and/or any other mark similar or identical to 'DOM DT'. In addition, Morepen also sought leave of the Court to file a separate suit for damages on account of losses suffered, which were attributable to East West. It proceeded on the premise that Morepen was primarily engaged in the production and marketing of pharmaceutical products since the year 1985 and in view of the importance of its intellectual proprietary information and rights, it had filed various applications with the Controller General of Patents, Designs and Trademarks and, inter alia, had various trademark registrations in its kitty and that in the year 1995, it had started manufacturing and marketing a medicine under the brand name 'DOM DT' under license no. MB/96/5 and MNB/96/6, which trademark was renewed and valid upto 14.08.2019.

(3.) It was stated that Morepen's product was highly prescribed and trusted medicines for quick and effective remedy for stomach infection, nausea and vomiting. For its marketing and sales promotion, Morepen asserted to have spent about '58 lakhs in the last five years. It was alleged that in the third week of January, 2013, Morepen came to know that a medicine under the brand name 'DOM' was being sold by East West for the purpose for which Morepen was manufacturing its medicine under its trademark 'DOM DT' and that the salt composition of both the products was the same. It was also alleged that East West had started using the trademark 'DOM' from the year 2010 to encash the goodwill and reputation of Morepen and to earn illicit profits.