NATCO PHARMA LIMITED Vs. MERCK KGAA

JUDGEMENT

(1.) THIS appeal is directed against the order dated 9 August 2011 passed by the learned Single Judge of this Court allowing the Notice of Motion of the respondents -plaintiffs and restraining the appellants -defendants from using the mark OSTONAT. The learned trial Judge has held prima facie that there was violation of the plaintiffs' registered trade mark OSTONAT. The suit was filed for infringement and passing off the plaintiffs' trademark OSTONATE. The plaintiffs' trademark was registered in 2005 with effect from 1997 when the application was made. The defendants applied for registration of its trademark OSTONAT in 2003. The plaintiffs have opposed the registration before the Registrar of Trademarks. The defendants have applied for rectification of the plaintiffs' trademark in 2007. Both applications are pending. Plaintiff No. 1 licensed its trademark to plaintiff No. 2 in 2008. Plaintiff No. 2 is stated to have started the use of the trademark OSTONATE from January 2009. The defendants are stated to have used their trademark OSTONAT since 2003.

(2.) THE trademarks relate to pharmaceutical products. The plaintiffs' products are calcium supplements. The defendants' products are kits containing certain alendronic acid tablets and calcium tablets.

(3.) WHEREAS the plaintiffs' trademark is registered, the defendants' is yet not' registered. Consequent upon the registration the plaintiffs have obtained the statutory rights under Section 28(1) of the Trademarks Act, 1999 (the Act). Having the exclusive right to use the trademark in relation to the pharmaceutical products for which the trademark is allowed to be registered, such a trademark of the plaintiffs would be infringed by the defendants whose mark is not registered upon its use, if it is identical or similar to the plaintiffs' registered trademark under Section 29 of the Act.