LUPIN LIMITED Vs. JOHNSON & JOHNSON

JUDGEMENT

(1.) The plaintiff company is engaged in the business of manufacturing, marketing and selling pharmaceutical products. The defendant company is also engaged in the business of manufacturing, marketing and selling of pharmaceutical products. It is the contention of the plaintiff that the plaintiff has independently conceived and adopted a distinctive mark "LUCYNTA" and registered it in class 5 of Fourth Schedule to the Trade Marks Rules, 2002 on 9th March 2012 from 20th August 2012.

(2.) As against this It is the case of the defendant that the defendant has invented a new drug, namely, "TAPENTADOL" and coined and adopted a distinctive trademark "NUCYNTA" which is in existence in the international market since 2008. It is the contention of the defendant that its mark NUCYNTA is registered in various countries as registered trademark much prior to the registration of plaintiff's mark in India. It is the contention of the defendant that taking into consideration the popularity of the defendant's trademark LUCYNTA and the drug invented, namely, "TAPENTADOL", the plaintiff has deceptively imitated the trademark NUCYNTA with the same drug. It is their case that since the adoption of the plaintiff itself is deceptive the plaintiff is not entitled to any relief. It is further case of the defendant that the defendant has also filed a suit on an action of passing off against the plaintiff in the Delhi High Court along with application for interlocutory reliefs which is pending before the said Court.

(3.) Though various rival submissions have been advanced at bar by Dr. Tulzapurkar, learned senior counsel appearing for the plaintiff and Shri Kadam, learned senior counsel appearing for the defendant, I find that before considering the prayer of the plaintiff for an ad interim relief, it is necessary that the view taken by the Division Bench of this Court in Appeal No. 88/2005 in Notice of Motion No. 2638/2004 in Suit No. 2663/2004 dated 16th February 2005 (M/s. Maxheal Pharmaceuticals v. Shalina Laboratories Pvt. Ltd. ) to the effect that at the stage of consideration of an application for interlocutory orders, it is not permissible for this Court to go into the question of validity of the mark and as long as the mark remains on the register (even wrongly) the proprietor thereof is entitled for an order of injunction. I further find that to an extent the aforesaid view is in conflict with the view expressed by the Division Bench of this Court in the case of M/s. J. K. Sons v. M/s. Parksons Games & Sports,2011 CDJBHC 317 and the judgment of Full Bench of this Court in the case of Abdul Cadur Allibhoy v. Mahomedally Hyderally,1901 3 BLR 220.