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CASE NO.: Appeal (civil)  5791 of 1998

PETITIONER: Milmet Oftho Industries & Ors.

RESPONDENT: Allergan Inc.

DATE OF JUDGMENT: 07/05/2004

BENCH: S. N. VARIAVA & H. K. SEMA.

JUDGMENT: J U D G M E N T

S. N. VARIAVA, J.

       This Appeal is against the Judgment of the Calcutta High Court  dated 6th November, 1997.         Briefly stated the facts are as follows: The Appellants are an Indian Pharmaceutical company.  The  Respondents are also a Pharmaceutical company which manufacture  pharmaceutical products in several countries.   The Respondents filed  a Suit for an injunction based on an action for passing off in respect of  mark "OCUFLOX" used on a medicinal preparation manufactured and  marketed by the Respondents.  The Respondents claimed that they  were the prior users of the mark OCUFLOX in respect of an eye care  product containing Ofloxacin and other compounds.   They claimed  that they first used this Mark on 9th September, 1992, after which they  marketed the product in other countries like Europe, Australia, South  Africa and South America and that they had obtained registration in  Australia, Bolivia, Ecuador, Mexico, Peru, South Africa, Canada and the  United States of America.  They claimed that they had also applied for  registration of the mark in several other countries including India and  that their applications were pending.  The Appellants were selling  "OCUFLOX" on a medicinal preparation containing CIPROFLOXACIN  HCL to be used for the treatment of the eye and the ear.   They claim  that they coined the word "OCUFLOX" by taking the prefix "OCU" from  "OCULAR" and "FLOX" from "CIPROFLOXACIN" which is the basic  constituent of their product.   The Appellants were granted registration  by the Food and Drug Control Administration on 25th August, 1993.    They have also applied for registration of the mark OCUFLOX in  September 1993.   Their application is also pending.         On 18th December, 1996 the Respondents got an ad interim  injunction.  This injunction however was vacated on 29th January,  1997.    The single Judge held that the Respondents’ product was not  being sold in India and the Appellants having introduced the product  first in India, the Respondents were not entitled to an injunction.         The Appeal filed by the Respondents had been allowed by the  impugned Judgment.  The impugned Judgment has taken note of the  law laid down by this Court.  It has been held that the Respondents  were first in the market and therefore they were entitled to an  injunction.          The law on the subject is well settled by a number of decisions.   It is not necessary to set out all those decisions.  It would suffice to  refer to only two decisions.   In the case of N. R. Dongre vs. Whirlpool Corporation reported in  1996 (16) PTC 583, the Appellants got registered the mark "Whirlpool"  in respect of washing machines.  The Whirlpool Corporation filed a suit  for passing off action brought by the Respondents to restrain the  Appellants from manufacturing, selling, advertising or in any way using  the trade mark "Whirlpool" of their product.  It was held that the

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passing off an action was maintainable in law even against the  registered owner of the trademark.  It was held that the name of  "Whirlpool" was associated for long with the Whirlpool Corporation and  that its trans-border reputation extended to India.   It was held that  the mark "Whirlpool" gave an indication of the origin of the goods as  emanating from or relating to the Whirlpool Corporation.  It was held  that an injunction was a relief in equity and was based on equitable  principles.  It was held that the equity required that an injunction be  granted in favour of the Whirlpool Corporation.   It was held that the  refusal of an injunction could cause irreparable injury to the reputation  of the Whirlpool Corporation, whereas grant of an injunction would  cause no significant injury to the Appellants who could sell their  washing machines merely by removing a small label bearing the name  "Whirlpool".              In the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals  Ltd. reported in 2001 PTC 300 (SC), the question was whether the  mark "Falicigo" and "Falcitab" were deceptively similar.  The trial Court  refused interim injunction.  The Appeal was also dismissed.  This Court  did not interfere on the ground that the matter required evidence on  merits but laid down principles on which such cases were required to  be decided.  This Court held that in a passing off action for deciding  the question of deceptive similarity the following facts had to be taken  into consideration: "a) The nature of the marks i.e. whether the marks are  word marks or label marks or composite marks, i.e. both  words and label works.

b) The degree of resembleness between the marks,  phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are  used as trade marks.

d) The similarity in the nature, character and performance  of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods  bearing the marks they require, on their education and  intelligence and a degree of care they are likely to exercise  in purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for  the goods, and  

g) Any other surrounding circumstances which may be  relevant in the extent of dissimilarity between the  competing marks."

In respect of medicinal products it was held that exacting judicial  scrutiny is required if there was a possibility of confusion over marks  on medicinal products because the potential harm may be far more  dire than that in confusion over ordinary consumer products.   It was  held that even though certain products may not be sold across the  counter, nevertheless it was not uncommon that because of lack of  competence or otherwise that mistakes arise specially where the trade  marks are deceptively similar.   It was held that confusion and  mistakes could arise even for prescription drugs where the similar  goods are marketed under marks which looked alike and sound alike.   It was held that physicians are not immune from confusion or mistake.   It was held that it was common knowledge that many prescriptions are  telephoned to the pharmacists and others are handwritten, and  frequently the handwriting is not legible.   It was held that these facts  enhance the chances of confusion or mistake by the pharmacists in  filling the prescription if the marks appear too much alike.           We are in full agreement with what has been laid down by this

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Court.   Whilst considering the possibility of likelihood of deception or  confusion, in present times and particularly in the field of medicines,  the Courts must also keep in mind the fact that nowadays the field of  medicine is of an international character.  The Court has to keep in  mind the possibility that with the passage of time, some conflict may  occur between the use of the mark by the Applicant in India and the  user by the overseas company.  The Court must ensure that public  interest is in no way imperiled.   Doctors particularly eminent doctors,  medical practitioners and persons or Companies connected with  medical field keep abrest of latest developments in medicine and  preparations worldwide.  Medical literature is freely available in this  country.  Doctors, medical practitioners and persons connected with  the medical field regularly attend medical conferences, symposiums,  lectures etc.   It must also be remembered that nowadays goods are  widely advertised in newspapers, periodicals, magazines and other  media which is available in the country.  This results in a product  acquiring a worldwide reputation.  Thus, if a mark in respect of a drug  is associated with the Respondents worldwide it would lead to an  anomalous situation if an identical mark in respect of a similar drug is  allowed to be sold in India.  However one note of caution must be  expressed.   Multinational corporations, who have no intention of  coming to India or introducing their product in India should not be  allowed to throttle an Indian Company by not permitting it to sell a  product in India, if the Indian Company has genuinely adopted the  mark and developed the product and is first in the market.  Thus the  ultimate test should be who is first in the market.   In the present case, the marks are the same.  They are in  respect of pharmaceutical products.   The mere fact that the  Respondents have not been using the mark in India would be  irrelevant if they were first in the world market.  The Division Bench  had relied upon material which prima-facie shows that the  Respondents product was advertised before the Appellants entered the  field.   On the basis of that material the Division Bench has concluded  that the Respondents were first to adopt the mark.  If that be so then  no fault can be found with the conclusion drawn by the Division Bench.    However, it was submitted on behalf of the Appellants that the  Respondents were not the first to use the mark.  It was submitted that  there was no proof that the Respondents had adopted the mark and  used the mark before the Appellants started using the mark in India.    In our view, these are matters which would require examination on  evidence.  Considering the fact that for all these years, because of the  injunction Order, the Appellants have sold their product under some  other name, the balance of convenience is that the injunction order be  continued and the hearing of the Suit be expedited.  If on evidence it  is proved that the Respondents had adopted the mark prior to the  Appellants doing so, on the settled law, then the Respondents would  become entitled to an injunction.  However, if on evidence it is shown  that the Respondents had not adopted the mark prior to its use in  India by the Appellants then, undoubtedly, the trial Court would vacate  the injunction.  The trial Court would undoubtedly then assess the  damage which Appellants have suffered for having wrongly not been  allowed to use the mark for all these years.         With these directions, the Appeal stands disposed of.  There will  be no order as to costs.   The Suit stands expedited.  The trial Court is  requested to dispose of the Suit as early as possible and in any case  within a period of 6 months from today.