SCHERING CORPORATION Vs. PERK PHARMACEUTICAL SERVICES

JUDGEMENT

(1.) This is an appeal preferred by original plaintiffs to challenge the order dated December 18, 1989 passed by learned Single Judge on Notice of Motion No. 2909 of 1989. By the impugned order, the learned Judge declined to grant interim relief. The facts which gave rise to the filing of the suit are as follows:

(2.) Appellant No.1 are a Corporation organised under the laws of United States of America and are carrying on business as manufacturers of and dealers in medicinal and pharmaceutical preparations. The appellant No. 2 are a limited Company incorporated under the Indian Companies Act and appellant No.1 is the largest single holder of appellant No. 2. Appellant No. 2 carry on business as manufacturers of and dealers in pharmaceutical and medicinal preparations. In September, 1965, appellant No.1 applied for and obtained registration of the trade mark 'GARAMYCIN' in Class 5 in respect of pharmaceutical and medicinal preparations. The registration of the mark has been renewed from time to time and is valid and subsisting. In March 1971, the appellant No. 2 introduced into the market a pharmaceutical product under the trade mark 'GARAMYCIN' and the product has since then been continuously and widely sold and marketed in India. The product is a single ingredient injectable consisting of 'GENTAMYCIN'. The appellant also introduced in February, 1982, eye and ear drops bearing the trade mark 'GARAMYCIN' and which is sold in bottle and carton. By a deed of assignment dated February 26, 1974, all the right, title and interest in the registered trade mark has been assigned by appellant No.1 to appellant No. 2. The mark was reassigned on April 9, 1979 by appellant No. 2 to appellant No.1 and again assigned in favour of appellant No. 2 on April 10, 1989.

(3.) The appellant claim that with the dishonest object of trading upon the reputation and goodwill of the appellants in the product sold under the trade 'GARAMYCIN' the respondents started manufacturing, marketing and selling identical products under the trade mark 'GAMAMYCIN' which is identical with or deceptively similar to the appellants' trade mark. The appellants claim that because of the distinctive trade mark, colour scheme, lettering, layout and get-up of the appellants mark the products have come to be identified by the trade and members of the public exclusively with the appellants and that the use of identical or deceptively similar trade mark by the respondents inevitably will deceive and confuse the public. The appellants lodged a criminal complaint against the respondents and a general search warrant for the search of the premises and factory of the respondents was issued. The appellants instituted Suit No. 3079 of 1989 on September 12, 1989 for perpetual injunction restraining the respondents from manufacturing, selling, offering for sale, advertising or otherwise dealing in any pharmaceutical or medicinal product under the trade mark 'GAMAMYCIN' or any other name deceptively similar so as to infringe the appellants registered trade mark 'GARAMYCIN'.