USV LIMITED Vs. IPCA LABORATORIES LIMITED

JUDGEMENT

(1.) This is an application filed under Order XIV Rule 8 of Original Side Rules read with Order XXXIX Rules 1 and 2, and Section 151 of Civil Procedure Code to grant ad-interim injunction restraining the respondent and its distributors, stockists, servants, agents, retailers and representatives from in any manner manufacturing, selling, offering for sale, stocking, advertising or dealing directly or indirectly in medicinal preparations under the trade mark PIOZED or any other trade mark which is identical with and/or deceptively similar to the trade mark PIOZ of the applicant so as to pass off the respondent's preparations as and for the preparations of the applicant or in any other manner whatsoever connected with the applicant till the disposal of the suit.

(2.) The applicant is the plaintiff and has filed the suit against the respondent, who is the defendant for a permanent injunction restraining the respondent from passing off their medicinal preparations under the trade mark PIOZED as and for the applicant's medicinal preparations having the trade mark PIOZ and for other consequential relief. The applicant is carrying on the business as manufacturer and dealer of pharmaceutical and medicinal preparations and enjoys high reputation and goodwill because of the excellent quality and efficacy in preparation of the medicine. The turnover of the applicant company for 2000-2001 was more than Rs.297/- crores. The medicine manufactured by the applicant company is not only sold in this country, but exported to many foreign countries also. The applicant is having large Research and Development facilities. The trademark of the applicant is PIOZ in respect of their PIOGLITAZONE preparation for the treatment of diabetes. The applicant got search report on 28.7.2000 and also another report on 25.10.2000 about the availability of trademark PIOZ through its Attorney for registration and thereafter distributed ADIB Internationals Reprints booklet amongst the Doctors all over India advertising therein its trademark PIOZ in November, 2000. The applicant applied for permission to manufacture the drugs PIOGLITAZONE HYDROCHLORIDE in Tablets form containing 15 mg and 30 mg to the Drugs Controller General (India), New Delhi, in November, 2000. On 18.12.2000 an application was made for registration of the trade mark PIOZ by the applicant with the Trade Marks Registry and it was numbered as 9,77,709 and the application is pending for registration. The Drugs Controller General (India), New Delhi granted permission for manufacture of the said tablets by its letter dated 11.1.2001. Permission was granted to the applicant for manufacture of PIOZ tablets by the Food and Drug Administration on 16.1.2001 on application made by the applicant company. The applicant placed orders for supply of foil and carton bearing the trade marks PIOZ in January, 2001. After getting the permission from the Drugs Controller General (India), New Delhi and licence from Food and Drug Administration, the applicant company has started manufacturing of the medicine in tablets under the trade mark PIOZ in strips and made it available for sale in market. The sale of the tablets prepared under the trade mark PIOZ during February, 2001 to January, 2002 was Rs.5,98,35,000/-. The applicant has spent Rs.1,17,97,000/- towards advertisement and promotional expenses relating to the trade mark PIOZ for a period from August, 2000 to January, 2002. The applicant came across the preparation of some medicine in a pack of 15 mg and 30 mg as that of the applicant for the same disease and ailment having the trade mark PIOZED in August, 2001 and marketed in March, 2002. The respondent was fully aware of the manufacturing of the above said tablets by the applicant and marketed in or about January, 2001 throughout India under the trade mark PIOZ. The respondent has no right to use deceptively similar trade mark PIOZED in manufacturing and marketing of such medicine while such medicine was manufactured and marketed by the applicant in its trade mark name PIOZ even in January, 2001. The use of the deceptively similar trade mark by the respondent amounts to passing off its preparation as and for the preparation of the applicant and made illegal gains on the applicant's reputation. Confusion and deception are bound to arise as both trade marks are deceptively similar and both the preparations will be offered for sale to the same class of consumers for the same indication and ailments. The applicant is the prior adopter and user of the trademark PIOZ and therefore the respondent should be restrained by means of ad-interim injunction from using the preparations bearing trade mark PIOZED to avoid common loss to the applicant due to the passing off of the respondent's preparation as and for the preparations of the applicant.

(3.) The respondent resists the claim of the applicant on the following grounds:- The manufacture of the medicinal preparation having the trade mark PIOZED by the respondent was in or about September, 2001 and not in March, 2002 and the same should have been known to the applicant immediately thereafter. The application of the applicant suffers from gross delay, latches and acquiescence as the respondent has been openly and extensively selling the said medicine without any interruption since September, 2001. The respondent, one of the Pioneers of pharmaceutical industry in India, has been in existence from 1949 having multi jurisdictional and multi national business in the field of medicinal and pharmaceutical preparations for treatment of various ailments and disorders. The respondent has four manufacturing facilities to manufacture various products and possess several recognitions and certifications from various International Regulatory Authorities. The products of the respondent are not only sold in India, but also in 80 other countries. The respondent commands a formidable reputation and goodwill for providing efficacious and quality products meeting international standards of manufacturing and quality. The turnover of the respondent in 1996-97, 1997-98, 1998-99, 1999-2000, 2000-2001 and 2001- 2002 are Rs.271/- crores, Rs.292 crores, Rs.344/- crores, Rs.373/- crores, Rs.396/- crores and above Rs.450/- crores respectively. The annual publicity and promotional expenditure with respect to its various products during 1996-97, 1997-98, 1998-99, 1999-2000 and 2000-2001 are Rs.1.47 crores, Rs.1.92 crores, Rs.3.61 crores, Rs.4.73 crores and Rs.3.89 crores respectively. The respondent decided to manufacture and market medicinal for pharmaceutical preparations containing PIOGLITAZONE as its active ingredient under the trade mark PIOZED in May, 2000 and the trade mark was invented from the International Non-Proprietary name PIOGLITAZONE. The respondent made an application to the Drug Controller General of India, New Delhi for permission to conduct Bio-Equivalence study on 15.1.2001 and the permission was granted on 2.2.2001. An application made by the respondent to the said Drug Controller General of India, New Delhi for permission to market the molecule on 29.3.2001 and permission was granted on 21.5.2001. An application was made to Food and Drug Administration to formulate the preparation of medicine under the trademark PIOZED 15 and PIOZED 30 on 30.5.2001 and permission was granted on 16.6.2001. An application was filed for registration of the trade mark PIOZED on 31.5.2001 in respect of medicinal and pharmaceutical preparations in clause 5 of the 4th Schedule to the Trade and Merchandise Marks Rule, 1959 and the application was numbered as 1013232. The medicinal and pharmaceutical preparations under the trade mark PIOZED containing PIOGLITAZONE as its active ingredient commenced manufacturing in or about August, 2001 and marketed for sale in September, 2001. The respondent has honestly and in a bona fide manner conceived and adopted the trade mark from the International Non-Proprietary name of the active ingredient i.e. PIOGLITAZONE. Because of its efficacious nature and characteristic thereof the said medicine was received well and accepted in the market. The medical profession has also accepted the same and the sale of the medicine from September, 2001 to March, 2002 was to a tune of about Rs.22 lakhs. The trade mark PIOZED was exclusively used by the respondent in respect of the preparation of PIOZED 15 and PIOZED 30 and the trade mark has acquired tremendous reputation and goodwill. The trade mark PIOZED was promoted by publication and distribution of product literature, distribution of sample of the goods, visual aids etc. A sum of Rs.7.5 lakhs has been spent for promotion of the goods having trade mark PIOZED. The respondent has acquired valuable proprietary right in respect of the said trade mark PIOZED in relation to the medicinal and pharmaceutical preparation. By denying the averments made in the affidavit filed in support of the application by the applicant, the respondent states that the word PIO and/or PIOZ have been taken directly from the generic name of the drug PIOGLITAZONE and the word PIO and/or PIOZ are commonly used by several manufactures to market their preparations, viz., PIOZONE, PIOZULIN, PIOGLAR, PIOGLU, PIOGLIT, PIONORM, PIOLEM, PIOLET and PIOZIT. There is no confusion in sale of medicines on the ground of deception of trade mark since September, 2001 and the trade mark PIOZ is not phonetically and visually similar to the trade mark of the applicant PIOZ. The trade mark PIOZED is not deceptively similar to the trade mark PIOZ of the applicant. The applicant has not made out a prima facie case or balance convenience in his favour for grant of ad-interim injunction as prayed for in the application as the conduct of the applicant is mala fide to claim any equitable relief from the hands of this Court. The balance of convenience is only in favour of the respondent and the grant of ad- interim injunction in favour of the applicant will cause serious damage and irreparable injury both financially and otherwise to the trade and business of the respondent. No injury or damage is caused to the applicant by the respondent in manufacture of the medicine under the trade mark PIOZED by the respondent. It is on these grounds, the respondent has sought for dismissal of the application.