UAS PHARMACEUTICALS PTY LTD Vs. AJANTHA PHARMA LIMITED

JUDGEMENT

(1.) The Original Side Appeal is filed against the order of the learned single Judge dated dated 8.7.2008 made in O.A.No. 15 of 2008 in C.S.No. 6 of 2008 non-suiting the appellants for an interim order of injunction restraining the respondent from in any manner passing off and enabling others to pass off the respondent's products as and for the appellants' products by manufacturing, selling, advertising, distributing or offering for sale dermatologic products including sun screen cream by name "SUNSTOP" or any mark similar thereto pending the suit seeking for the very same prayer.

(2.) The case of the appellants is that the first appellant was floated in Australia for manufacturing and developing dermatologic products in the year 2000. On 17.5.2001 the appellants introduced a product under the trade name "SUNSTOP" for protection of skin from sunlight and ultraviolet rays. The first plaintiff had obtained Registration of trademark for non-medicinal preparation under class 5 and medical and beauty care services under class 42 in Australia, Philippines and Cambodia. However, they did not obtain such registration of Trade name in India. The appellants have established worldwide reputation for the trademark under the trade name "SUNSTOP". Their products are marketed in India through the second appellant as distributor in India. In December 2007, they came to know that an identical product marketed by the respondent in the trade name are passed off in the market. Therefore, the appellants filed the suit for passing off action claiming the relief as stated above. Along with the suit, an application in I.A.No. 15 of 2008 is filed by the appellants seeking the interim relief of injunction against the respondent.

(3.) The respondent/defendant resisted the application by taking a stand that it is a leading pharmaceutical company in India manufacturing anti-retrovirals, anti- malarials, cardiovascular, dermatology and ophthalmology preparations. The respondent had a total sale turnover of Rs. 266.49 crores for the year 2006-2007. The respondent's research and development centre established at Mumbai in the year 1996, which is recognised by the Department of Scientific and Industrial Research, Government of India developed a new dermatologic formulation (cream/lotion), which when applied to skin surface, stopped harmful UVA and UVB rays of sun from affecting the skin. The respondent also conceived, coined and adopted the name SUNSTOP for the said cream/lotion after conducting thorough market survey and search of records of the trade marks Registry at Mumbai. The respondent applied for registration of Trade Mark "SUNSTOP" under Application No. 1377560 on 16/8/2005. The application for registration is pending with the Trade Mark Registry. The respondent has also obtained a drug licence on 9.11.2005 from the Drugs Controller at Aurangabad. They started marketing the product on commercial basis in May 2007. They incurred sales promotion and advertisement expenditure of Rs. 1,35,174.00 for the year 2007-2008 and has achieved sale turnover of Rs. 33.05 lakhs in the said financial year. It is the further case of the respondent that on 19/11/2007 they came to know about the proposed introduction of products of appellants in India and immediately they moved the Delhi High Court for preventive action. The appellants have not established transborder reputation of a great deal spilling into India, so as to be entitled to an order of injunction in an action for passing off.