ALLERGAN INC Vs. SUN PHARMACEUTICALS INDUSTRIES LTD

JUDGEMENT

(1.) This is a suit for permanent injunction praying for restraining the defendant from their attempting to pass off their Pharmaceuticals preparation being Ophthalmic solution as that of the plaintiff by use on or in connection therewith in course of trade, the mark 'OCUFLOX' or any other deceptively and/or confusingly similar mark and also for further necessary action against the defendant.

(2.) Plaintiff's case is that it is a leading manufacturer of well-known pharmaceutical products with extensive operations in several major countries of the world. It is carrying on its business worldwide since 1960. One of the well-known pharmaceutical products of the plaintiff is an ophthalmic preparation known as 'OCUFLOX' used for treatment of certain types of eye infections. Said mark was coined and adopted by the plaintiff in or about September, 1992. By virtue of subsequent prolonged and extensive use, said mark 'OCUFLOX' has become distinctive of the plaintiff in the eyes of the consumers. The plaintiff is carrying on its business in respect of its product 'OCUFLOX' extensively in several major countries of the world since September, 1992 having first commenced its business in the United States of America. It also applied for registration of the mark 'OCUFLOX' in several countries including India and those applications are pending. The plaintiff's name is associated with the pharmaceutical eye care preparations of the highest order and any product with any connection with the plaintiff or its reputation or goodwill has tremendous value and is considered to be a pharmaceutical product of the highest order. The product 'OCUFLOX' is manufactured by the plaintiff's maintaining high standards and is widely prescribed by the doctors worldwide to treat bacterial conjunctivitis and is acknowledged by the medical profession internationally as being one of the most potent bactericidal. In connection with the said product, the plaintiff undertook extensive sale in various countries and also undertook extensive promotional expenditure by way of advertisement etc. This product was advertised in several internationally famed medical journals. The name of the plaintiff and its product 'OCUFLOX' have become household words on a worldwide basis and the plaintiff has acquired immense global reputation and the plaintiff's product signifies top class Pharmaceuticals product. Although the plaintiffs product 'OCUFLOX' was not sold in India, the plaintiff has acquired substantial goodwill and reputation in this country in respect of the said product. A large number of doctors practising in India as also the other Indians who visit abroad on a regular basis are aware of the plaintiff company and its product 'OCUFLOX'. With a view to mark its products, the plaintiff has formed a joint venture company, and it was in fact found between Allergan Inc of USA and Nicholas Pirmal Ltd. of India. Said joint venture company has commenced operation in early 1996 and have already launched several Pharmaceuticals and surgical products.

(3.) Some time in the month of November, 1994 the plaintiff for the first time came to learn that the defendant was manufacturing for sale the products similar to those of the plaintiff being sold under the mark 'OCUFLOX' under an identical trade mark. As such, the plaintiff sent a letter to the defendant on 29.12.1994 demanding them to refrain themselves from using the mark 'OCUFLOX'. Discussion also took place in between the plaintiff company and the defendant company for resolving the controversy. The defendant company on 21.01.1995 addressed a letter to the plaintiff requesting personal discussion for settling the dispute. As such, there was a discussion in between the representative of the two companies on 10.06.1995. But no fruitful result yielded in the said discussion. Thereafter the plaintiff for some months could not locate the defendant's product carrying the impugned mark, in the market, prompting the plaintiff to believe that the defendant gave up the use of the impugned mark of the plaintiffs product. However, some time during the first week of July, 1996 the plaintiff came to know that the defendant was using the mark 'OCUFLOX' illegally in its product. The plaintiff collected said product of the defendant from the market wherefrom the plaintiff came to know that the defendant in fact is illegally using the mark 'OCUFLOX' in its product. Said mark, as used by the defendant, is identical to the trade mark of the plaintiff and it is apparent that the sole aim of the defendant is to use illegally the plaintiff's internationally famous trade mark with a view to cash in on the goodwill and reputation of the plaintiff and to attract the consumers/potential consumers inducing them to believe that they are actually dealing with the plaintiff. The use of the plaintiff's mark of 'OCUFLOX' by the defendant is thus calculated to deceive the consumers into belief that the defendant is a part of the worldwide operation of the plaintiff and thereby the defendant is illegally trying to cash in the goodwill and reputation of the plaintiff. The quality of the defendant's products are far inferior to the plaintiff's products. If such activities of the defendant is permitted to be continued, then it will seriously affect the consumers. As such, the plaintiff has filed the present suit praying for an order of permanent injunction restraining the defendant company in illegally using the plaintiffs trade mark viz. 'OCUFLOX".