MEDLEY PHARMACEUTICALS LTD Vs. KHADELWAL LABORATORIES LTD

JUDGEMENT

(1.) THE present notice of motion is taken out for interim reliefs in a suit for passing off. By prayer (a) of the motion it has been prayed that the defendant should be restrained by temporary order and injunction from manufacturing, selling, exhibiting for sale and advertising pharmaceutical and medicinal preparations under the trade mark CEFI or cefi-DT or any other trade mark deceptively similar to the plaintiff's trade mark CEFO, cefo-P or CEFO-DT so as to pass off the defendant's pharmaceutical and medicinal preparation as if the same are pharmaceutical preparation of the plaintiff herein.

(2.) THE present suit is filed on a passing off action under Section 27 of the trade and Merchandise Marks Act, 1958. It is the case of the plaintiff that sometime in or about December, 1999 the plaintiff adopted a distinctive trade mark called CEFO for its use in relation to a medicinal and pharmaceutical preparation containing the drug "cefixime" to be marketed by the plaintiff. It is the case of the plaintiff that on 23-12-1999 the plaintiff applied for registration of the said mark CEFO under the provisions of the Trade and merchandise Marks Act, 1958 in class 5 and that the said application is pending before the trade Mark Authorities. It is the further case of the plaintiff that in or about January, 2000, the licensee of the plaintiff one M/s. Emil pharmaceutical Industries (P) Ltd. , made an application to the Joint Commissioner, (Konkan division), Food and Drug Administration, maharashtra for licence to manufacture

(3.) ON the other hand, the defendant has raised various contentions. It has been contended by the defendant that the plaintiff has made various false statements in the plaint particularly as to the date of the knowledge of the plaintiff about the defendants' use of the said mark. Even in respect of proceedings at ahmedabad against Alembic Ltd. , it has been contended by the defendant that the statements in para 8 of the said plaint was false because on 11-10-2002 the interim orders were not in force. On a perusal of the record and proceedings it has been found that on 07-10-2002 to 08-01-2003 there were no orders in operation and, therefore, the statement made in para 8 of the said plaint is false. The defendant has also claimed that the words "cef" is a prefix of the formulation and is commonly used by the various companies and there are large number of drugs which are already in market with prefix CEF and thus the plaintiff has no proprietary right nor the said mark is any innovative design or innovation by the plaintiff and thus the plaintiff is not entitled to use the said mark exclusively. It has been contended that the defendant has also made an application on 17-08-2000 for registration of the trade mark "cefi" in Class 5 and the said application is also pending. It has been also stated by the defendants that the defendants are in the market for the said goods right from november, 2000 when the permission is granted by FDA for manufacture and sale of the said product. The learned counsel for the defendant has relied upon various documents to show which includes the various pharmaceutical guides and the bulletins to show that the drugs of various companies with words "cef" being used are in the market and are sold side by side and thus there is no question of any right of the plaintiffs to prevent the defendant from using the said mark or from selling the said goods under the said mark.