LILLY ICOS LLC Vs. RICHIE LABORATORIES LTD

JUDGEMENT

(1.) PLAINTIFF is a corporation organized and existing under the laws of the state of Indiana, USA with its principal place of business at Lilly Corporate center, Indianapolis, Indiana, USA. Plaintiff is a technical collaboration between Eli Lilly and Company, USA and ICOS Corporation and is the owner of trademark CIALIS in India as well as world-wide. Their products are sold in Europe and North America by the plaintiff itself and the rest of the world through its member Lilly.

(2.) IN brief the case of the plaintiff is that in September, 1998, Lilly and icos formed the plaintiff company for the purpose of developing, manufacturing, promoting and selling pharmaceutical preparations for the treatment of male erectile dysfunction. The active ingredient in those preparations is Tadalafil which has been patented in numerous countries worldwide by the plaintiff and its members. Plaintiff filed an application in the United States on June 17, 1999 to register CIALIS trademark which is a fanciful and coined word that was created by the plaintiff having no descriptive meaning. The mark including its. ALIS ending is inherently distinctive both to the trade and the consuming public. The trademark CIALIS was made public by the plaintiff in July, 2001. The tablet sold under the trade mark CIALIS was given a unique and unusual shape and colour as it was of a unique light yellow colour and is shaped in an unusual and distinctive almond shape. On the tablet is inscribed the plaintiffs trade mark C-20 in unique and distinctive script. The plaintiff was issued exclusive marketing rights in relation to Tadalafil under patent laws in India. The drug is widely in circulation and is being used for treatment for erectile dysfunction under the trade mark CIALIS and the Cialis Tablet Trade Dress around the world. Plaintiff has also applied for registration of the trade mark CIALIS in India and the said application was advertised in the Trade Marks Journal No. 1300 dated 1st August, 2003.

(3.) FROM search on the internet, plaintiff learnt that defendant is advertising on its website www. richielabs. com a Tadalafil tablet under the brand name tadarich using a pill shape which is identical to the Cialis Tablet Trade dress. The defendant used the numerals 20 written in a stylized form in place of the trade mark C-20 of the plaintiff. Plaintiff also found on the website that the defendant was using the brand name RICHCALIS which is deceptively and confusingly similar to plaintiffs trade mark cialis which is cleverly designed to represent that it is a richer form of cialis or is CIALIS by Richie Laboratories Ltd. (the defendant) with an intention to usurp the plaintiffs trade mark CIALIS. The defendant has chosen the name in an effort to ride upon the goodwill and reputation of the plaintiff amongst the purchaser of the said medicine with the entire effort to represent to the members of the trade and public that its product is the plaintiffs product and accordingly to pass off its goods as and for the goods of the plaintiff. This has caused irreparable harm and injury to the plaintiff being the manufacturer and merchant of high quality goods. This drug is schedule H goods to be sold only on medical prescriptions. The use of the word. ALIS by the defendant have significantly injured the Plaintiffs interest, have caused or likely to cause public confusion as to the source, sponsorship or affiliation of its product and have damaged and threatened to further damage the plaintiffs significant and valuable goodwill in the Cialis Tablet Trade Dress and CIALIS mark and have injured and threatened to further injure the Plaintiffs right to use its CIALIS mark and cialis Tablet Trade Dress as the exclusive indicia or origin of the Plaintiffs erectile dysfunction product containing Tadalafil and have diluted and threatened to further diminish the distinctive quality of the well known CIALIS trade mark and the Cialis Tablet Trade Dress.