ALLERGAN INC Vs. CHETANA PHARMACEUTICALS

JUDGEMENT

(1.) First mentioned application taken out by the defendant for dismissal of the above suit and/or revocation of leave granted under Clause (12) of Letters Patent in the suit, and also for vacating all interim orders. The second mentioned application has been taken out by the plaintiff for suitable interlocutory relief in the aforesaid suit. The suit filed by the plaintiff for passing off against the defendant in relation to the mark "Oxyline" used for marketing and selling of a medicinal product viz. eye drop. The plaintiff obtained ad interim order of injunction on 28th April, 1999, restraining the defendant from using the mark "Oxyline". This interim order has been continuing till the date of hearing of both the applications. Learned Counsel for the defendant Mr. Ajoy Gupta submits that the application taken out by his client need not be heard separately, but the points and contentions taken therein should be considered at the time of hearing of the plaintiffs pending application.

(2.) It is an admitted position that the interim order has been continuing for last long nearly six years. The plaintiff wants that this interim order should be confirmed on the following facts and circumstances shortly put as hereunder :- The plaintiff is a leading manufacturer of well-known pharmaceutical product with extensive market in several major countries of the world. The petitioner has been carrying on this business continuously in several countries since 1960. It has promoted and/or got itself associated with a company in India, viz. Allergan India Ltd., having its office on 9th Floor Manipal Centre, 47 Dicken Sen Road, Bangalore-560042. The plaintiffs well known product is Oximelazine Hydrocholorine solution which is marketed and sold world wide under the mark "Oxyline" which is acknowledged to be very effective for giving relief from non-inference read eyes. The said mark was invented and adopted by the petitioner in the year 1984 (wrongly mentioned 1988 as per clarification in the affidavit-in-reply). The main active ingredient of the plaintiffs product sold under the mark "Oxyline" is oxymetazilin, Hydrochloride. This mark has been registered in various countries viz. Australia, Ireland, and South Africa, Sweden, Spain, New Zealand, Mexico, Democratic Republic of Korea, Peru, U.K., Bolivia so on. However, the application for registration in India has been pending. Such application has been made in India on 29th July, 1993. At the time of hearing of this application it is submitted and shown that this application has been notified in the gazette for inviting objection and it is said that hearing of this application is still pending. It is said further that because of the extensive marketing and use of the product of the plaintiff with the aforesaid mark, it has acquired reputation and the same has spilled over crossing border of several countries as stated above. The turnover in the international market from 1994 till 1998 have been given in paragraph 9. From the data given in paragraph 9 the sale in terms of dollar is quite substantial in each year, except in 1996 when it exceeded nearly 1.8 million dollars and in 1996 the turnover is 2.4 million dollars. It is said further that the plaintiff through its Indian partner has marketed the said product with the aforesaid mark "Oxyline" turnover fetched therefrom reached approximately at Rs. 15, 69, 675/-.

(3.) Thus it is stated that the plaintiffs aforesaid mark has also got reputation in India also. Because of the continuous use of the aforesaid mark and registration in other countries the plaintiff has acquired proprietary right in the said mark. It is further claimed that the plaintiff is a senior user of the said mark in the medicinal preparation. The defendant in colourable imitation of the said mark has also marketed the medicinal product being nazal drop with the name Oxyline. According to the plaintiff the use of the identical mark of the defendant is defrauding aiming at to filch international reputation of the plaintiff in markets. The defendant's product is also a medicinal one with the mark having phonetical similarity. It is dangerous to allow two marks to remain in the market for medicinal product as the confusion will arise not only in the mind of the consumer public but in the mind of the pharmacist too who will be offering these products mistakenly to the common customer across the counter. This dangerous situation is also apparent in view of the fact that in India medicinal products are frequently sold across the counter without any prescription of medical practitioner. Therefore, the interim order passed by this Court be confirmed. The defendant in fact has admitted and acknowledged that the plaintiff is the senior user in writing dated 8th October, 1988 through their learned Lawyer that there has been phonetical similarity of the two marks and two marks cannot remain side by side. In the said letter it has been admitted that the defendant applied registration of the said mark in 1994. It is further admitted that in the event it is found that the defendant is a later user then it shall take corrective action.