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Unichem Laboratories Ltd v. Ipca Laboratories Ltd. & Another

Unichem Laboratories Ltd
v.
Ipca Laboratories Ltd. & Another

(High Court Of Judicature At Bombay)

Notice Of Motion No. 2224 Of 2010 In Suit No. 2117 Of 2010 | 24-01-2011


S.C. Dharmadhikari, J:

1. This Notice of Motion for interim reliefs has been filed by the Plaintiffs in a suit seeking permanent injunction restraining the Defendants from in any manner manufacturing, marketing, selling, distributing, exporting and/or using in relation to any medicinal and/or pharmaceutical preparations and/or such allied and cognate goods the trade mark "SELORAM" or any other mark being deceptively similar in any manner whatsoever to the Plaintiffs mark "LORAM" so as to pass off or enable others to pass off the Defendants goods as and for the goods of the Plaintiffs.

2. It is agreed that since both the Plaintiffs and the Defendants are not registered proprietors of the respective marks the claim as made is only in relation to passing of. In other words, the mark of Plaintiffs being not registered, there is no question of seeking any permanent injunction restraining infringement. However, an action to prevent passing of is maintainable and that is pressed.

3. It is stated by the Plaintiffs that they are a company incorporated under the Companies Act, 1956 carrying on business interalia as manufacturers of and dealers in pharmaceutical and medicinal preparations, for the last several decades. They claim to be established and well known pharmaceutical company in India and their products enjoy very high reputation because of the excellent quality and efficiency. It is stated that total turnover for the year 20092010 amounts to approximately Rs. 691 crores.

4. The Defendant No. 1 is also a company incorporated under the Companies Act, 1956 carrying on business of manufacturing the pharmaceutical preparations. The Defendant No. 2 is a company carrying on business as seller and distributor of pharmaceutical preparations.

5. The Plaintiffs claim that their product/medicinal drug sold in the market under the mark "LORAM" has acquired good reputation over the years and the act of Defendant No. 1 in manufacturing identical product under the mark "SELLORAM", so also, that of the Defendant No. 2 in selling and distributing the same, is passing of their product as that of the Plaintiffs.

6. In paragraph No. 4 of the plaint, the Plaintiffs have asserted their goodwill and reputation in the market and in paragraph Nos. 5 and 6 this is what is stated:

"5. Sometime in early 2002, the Plaintiffs conceived, coined, invented and adopted the Trade Mark LORAM for use in respect of their Pharmaceutical or Medicinal Preparations. The Plaintiffs are the proprietors of Trade Mark LORAM (word per se) and have applied for registration of the said word mark under No. 1077469 dated 01.02.2002 in respect of the goods "Medicinal and Pharmaceutical preparations" being goods falling in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002 framed under the Trade Marks Act, 1999. The Plaintiffs have also applied for registration of a label mark containing the word LORAM as its prominent and memorable feature under No. 1192320 dated 17.04.2003 in respect of the goods "Medicinal and Pharmaceutical preparations" being goods falling in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002 framed under the Trade Marks Act, 1999. The said applications are pending. Hereto annexed and marked Exhibit "A1" and "A2" are the copies of the said applications with respect to the said Trade Mark LORAM (word per se) and LORAM (label). The Plaintiffs are selling the product LORAM since June, 2002. The Pharmaceutical preparation sold under the Trade Mark LORAM is used for treatment of Hypertension associated with Diabetes & renal ailment. The Plaintiff goods are sold as LORAM containing interalia Losartan and Ramipril and LORAMH containing interalia Losartan, Ramipril and hydrochlorothiazide. The Plaintiff has been manufacturing and marking the said preparation in varying potencies and/or strength of the active ingredients and selling it as LORAM 1.25, LORAM 2.5, LORAM 5mg, LORAMH 2.5, LORAMH 5mg. The product packs of Plaintiffs goods under the mark LORAM and its brand extensions are at Exhibit "B1" and "B2".

7. The Plaintiffs have undertaken by themselves or through appointed agencies extensive trials on the product LORAM which comprises of the active pharmaceutical ingredients Losartan Potassium plus Ramipril. These trials are known as "Lord Trials". The first Lord Trial was conducted in the year 2002. The Plaintiffs have spent lakhs of rupees on this trial and scientific papers of the efficacy of the product LORAM on patients with diabetic and renal problems was submitted to reputed medical journals like JAPI Vol.52 183195 March 2004, Paper Presentation in ADA 66th Scientific Session June 913, 2003, Washington.

The second series of Lord Trial was conducted in the year 2004. The Plaintiffs have spent lakhs of rupees on this trial too. The third series of Lord Trial was conducted in the year 2009 and again the Plaintiffs spent a large amount of money on this trial. In all the trial which is a unique post marketing surveillance was conducted on 1125 patients in these Lord Trials and the outcome of these trials are thoroughly referred to by scientists for major path breaking discussion in diabetic and renal patients. The Plaintiffs thereby have acquired large reputation not only in India but also abroad and the product LORAM alongwith LORD TRIALS are well known amongst medical practitioners. Copies of these scientific papers are hereto annexed and marked as Exhibit "C1" to Exhibit "C7"."

7. The Plaintiffs have alleged that extensive trials of the product "LORAM" comprising of active pharmaceutical ingredients Losartan Potassium plus Ramipril were conducted on which lacs of rupees have been spent and these trials enabled them to acquire reputation not only in India but abroad. It is categorically stated that manufacturing and marketing of the product bearing "LORAM" and its brand extension has been undertaken by the Plaintiffs since June, 2002. The Plaintiffs have annexed documents to prove the promotional expenditure and sales of their product. The statements in furtherance of the sale are made in paragraph Nos. 7 to 9 of the plaint and in paragraph Nos. 10 and 11 this is what is alleged:

"10. Sometime in June, 2010, Plaintiffs were shocked when they came across Defendants medicinal preparation under the impugned mark SELORAM. Hereto annexed and marked as Exhibit "G" is pack of Defendants product under the mark SELORAM sold under different strengths as SELORAM 25/2.5 and SELORAM 50/5. The Defendants mark is structurally, phonetically and visually almost identical with and/or deceptively similar to the Plaintiffs trade mark LORAM. The Defendants have merely added the letters "SE" in Plaintiffs mark and adopted the impugned mark. The whole of the Plaintiffs mark is incorporated in the Defendants mark. Such minor changes are insignificant and there is absolute overall visual and phonetic similarity between the rival marks which is not altered by such insignificant changes. The Plaintiffs further say that the impugned mark SELORAM is also structurally similar to the trade mark LORAM of the Plaintiff. The addition of alphabet "SE" has been done only so as to make a show of difference, which in any event, is almost nonexistent.

11. The Plaintiffs submit that the Defendants are manufacturing and selling goods by copying the Plaintiffs trade mark LORAM and its brand extensions thereby making it impossible for the common man to distinguish the Plaintiffs goods from those of the Defendants. The Plaintiffs state that the Defendants by copying and using the almost identical mark are causing damage to the reputation and goodwill of the Plaintiffs and at the same time are cheating the gullible customers and putting their lives to danger. The Plaintiffs goods are manufactured following very high and stringent quality standards.

While the Plaintiffs product contains interalia Losartan and Ramipril and is used for treatment of hypertension associated with diabetes and renal problem, the Defendants product SELORAM contains interalia Metoprolol & Ramipril. Thus, if the product of the Defendant is given to a patient requiring the product of the Plaintiff or visaversa it will certainly give patient a disastrous effect."

8. It is in these circumstances that the Plaintiffs allege that by applying the impugned mark to the goods, the Defendants have committed the acts of passing of and therefore, the Plaintiffs are entitled to the perpetual injunction as claimed. On account of the fact that the products being drugs and medicinal preparations, in public interest, interim injunction is also claimed. The statements to support the claim for interim injunction have been made from paragraph Nos. 12 to 19 of the plaint.

9. In the affidavit in support of the Notice of Motion, the statements in the plaint are reiterated and the HeadLegal & Company Secretary of the Plaintiffs states that the mark "SELORAM" of Defendants is identical with or deceptively similar to the trade mark of Plaintiffs "LORAM" and its use is to bound to cause confusion and deception in the market. Therefore, when the Defendants have recently entered the market, interim injunction as claimed must be granted or else hardship will be caused not only to the Plaintiffs but the public at large. It is clearly stated that the composition of two products being different, consumption of one in place of other will lead to disastrous consequences.

10. The affidavits in reply have been filed. In the first affidavit that has been filed by the Vice PresidentLegal & the Company Secretary of the Defendant No. 2 namely N.R.Srinivasan, it is alleged that the suit is totally misconceived and the claim of Plaintiffs is frivolous, vexatious and is abuse of process of law. It is stated that at least four pharmaceutical manufacturers/ companies claim to have adopted identical/ deceptively similar trade mark and exclusivity thereof as per details set out in the affidavit shows that M/s Haryana Formulations Pvt.Ltd. Ludhiana, proprietor of identical mark "LORAM" is claiming priority in adoption/ user since 01.01.1999, therefore, the Plaintiffs cannot claim either ownership in adoption or exclusivity of user, so also, any priority. In these circumstances, there is no substance in the claim of Plaintiffs that the mark "LORAM" is exclusively associated with them. The Plaintiffs are also guilty of infringement inasmuch as M/s Bestochem Formulations (India) Limited and M/s Adonis Laboratories Private Limited who have registered the trade marks "FLORAMIN" and "LORAMYL" are claiming use in respect thereof since January, 1989 and 01.03.1983 respectively. Therefore, when the Plaintiff itself is guilty of infringement and there is no question of such a person being given any discretionary and equitable reliefs.

11. In paragraph No. 5(e) of the affidavit in reply affirmed at Mumbai on 13.09.2010, it is alleged as under:

"5(e) The Plaintiff has deliberately and with mala fide and ulterior motive suppressed from this Honble Court the fact that its application for registration of the marks "LORAM" under No. 1077469 and "LORAM" label under No. 1192320 are opposed as detailed hereinbelow:

I. Application No. 1077469 in respect of "LORAM" Opposed by F.HoffmannLa Roche AG, Switzerland.

II. Application No. 1192320 in respect of "LORAM" label Opposed by:

(i) Alkem Laboratories Ltd., Mumbai

(ii) Haryana Formulations Pvt.Ltd., Ludhiana

(iii) Neon Laboratories Limited, Mumbai.

The Plaintiff having suppressed the said material facts is liable to have its Suit dismissed."

12. It is then submitted that there is gross delay in approaching this Court because the Defendants product is in the market since May, 2009. There was conference organized by the Research Society for Study of Diabetes in India at which the representatives of both the Plaintiffs and the Defendants were present. When this conference was attended it was noticed by everybody that the Plaintiffs and the Defendants had stalls next to each other. The Plaintiffs allowed the Defendant No. 2 to market the product "SELORAM" for all these years and did not object or protest. Hence, it is false to suggest that the cause of action arose in June, 2010 and that is first time when the Plaintiffs detected the act of passing of.

13. It is stated that the Defendant No. 2 is a well established pharmaceutical company in India and it is part of a group namely AstraZeneca Group of Companies. They are in pharmaceutical business and leaders in world. The details thereof are set out in paragraph Nos. 6 to 11 of the affidavit and it is stated that the trade marks "SELOKEN" and "RAMACE" are registered in India in the name of AstraZeneca since 16.06.1977 and 28.12.1987 respectively. Further the trade mark "SELOKEN XL" is also registered in India in the name of Defendant No. 2 since 01.04.2002. The marks are valid and subsisting on the Registrar of Trade Marks. The trade marks "SELOKEN" and "RAMACE" have been adopted in 1973 and 1986 respectively. It is stated that the products under these trade marks are sold extensively all over India and the certificates of the Chartered Accountants would demonstrate that the goods with prefixes "SELO" and "RAM" have been sold. It is stated that the trade mark "SELORAM" was conceived, coined and invented in early 2008 and it clearly traces its roots to the brands "SELOKEN" and "RAMACE" i.e. prefix "SELO" from "SELOKEN" and "RAM" from "RAMACE". These marks can be traced to the companies which are in pharmaceutical business for decades together.

14. In paragraph Nos. 21 and 22 of this affidavit, this is what is stated:

"21. I say that the records of the Trade Marks Registry indicate numerous applications/ registrations for "LORAM" and/or "LORAM" formative marks in the name of different entities. The Defendant No. 2 craves leave of this Honble Court to refer to and rely upon list of "LORAM" and/or "LORAM" formative trade marks along with their advertisement cuttings/ extracts from the online records of the Trade Marks Registry which are being filed in separate compilation of documents. I say that "LORAM" of the Plaintiff is publici juris/generic and, therefore, no exclusivity in respect thereof can be claimed by the Plaintiff. For ease of reference, reproduced herein below is a list of few "LORAM" and/or "LORAM" formative marks which are easily discernible in respect of goods in Class 5. The list is illustrative and not exhaustive:

Sr.No.Trade MarkApplicant/ProprietorUser ClaimedStatus

1 AMLORAMRaptakos, Brett & Co. Ltd.*July 8, 2002Registered

2FLORAMINBestochem Formulations (I) Ltd. January 1, 1989Registered*

3FLORAMITEUniroyal Chemical

Company Inc.November 25, 2004 Registered*

4FLORAMOXBhupinder Singh

Inder Pal Singh Chawla, trading as

Daffodil Pharma

Corporation.April 1, 1999Opposed*

5LORAMHaryana

Formulations P. Ltd.January 1, 1999Opposed*

6LORAMZydus CadillaNot availableNot available

7LORAMKalindi Medicure Pvt. Ltd.Proposed Opposed*

8 LORAMETOptrex India

LimitedProposed Not available

9 LORAMEXNabros Pharma Pvt. Ltd.ProposedRegistered*

10 LORAMIDEJ.K. Chopra, K.K. Soni and Rajesh Chopra, trading as J.D.PharmaceuticalsProposed Removed*

11 LORAMINOKASA Pharma

Pvt. Ltd.Proposed Registered*

12 LORAMOXINCheryl Laboratories Pvt. Ltd. ProposedRegistered*

13 LORAMYCBioalliance PharmaProposed Opposed*

14 LORAMYLAdonis Laboratories Pvt. Ltd.March 1, 1983Registered*

15 OFLORAMArun Dua Trading

as Sri Ram Life SciencesMarch 3, 2004Registered*

16 TALORAMGlaxosmithkline

Trading Services Ltd.Proposed Advertised*





* As per online records of Trade Marks Registry.

22. I say that numerous "LORAM" and/or "LORAM" formative marks have been adopted/used in respect of goods in Class 5 in different countries of the world. The mark "LORAMET" in Class 5 in the name of Wyeth LLC, USA in respect of sedatives and hypnotic purposes is registered in UK and Singapore since August 31, 1979 and November 18, 1980, respectively. Further, an application dated July 25, 2005 for registration of the trade mark "LORAM" under No. 42008008963 in respect of pharmaceutical preparations namely Chloramphenicol in Class 5 has been filed with the Intellectual Property Office, Philippines by Wellness Ag, Inc., Philippines. The aforesaid examples are illustrative and not exhaustive. The Defendant No. 2 craves leave of this Honble Court to refer to and rely upon the online records downloaded from the Intellectual Property Offices of UK, Singapore and Philippines which are being filed in separate compilation of documents."

15. It is, therefore, alleged that by concealment of material facts, the Plaintiffs have perpetuated fraud on this Court and their suit is liable to be dismissed. Once their suit is liable to be dismissed, then, there is no question of grant of interim injunction in their favour. The conduct of Plaintiffs disentitles them from any equitable and discretionary reliefs particularly when they approach the Court with unclean hands.

16. There is a rejoinder affidavit filed by the Plaintiffs which deals with the affidavit in reply in which the allegations made have been denied. In addition, it has been stated that if both parties operate in the same trade, then, it cannot be believed that the Defendant No. 2 is unaware of the Plaintiffs prior adoption/use of the trade mark "LORAM". It is stated that both products are used for the treatment of hypertension. The Plaintiffs product is used for treatment of hypertension associated with diabetes and/or renal problems. The Defendants product is indicated in hypertension and associated with Cardiovascular disorders like heart failure. Therefore, the Defendants preparations if administered instead of Plaintiffs preparations to the patients that would have disastrous consequences and the Defendants product may disturb glycemic control. In such circumstances and when there is opinion of Doctors to this effect, then, the Plaintiffs deserve interim protection.

17. In paragraph Nos. 6 of this rejoinder, the Plaintiffs dealt with the allegations of infringement of registered trade marks belonging to M/s Bestochem Formulations (India) Limited and M/s Adonis Laboratories Private Limited and it is stated that it is for these companies/ entities to make complaint of such infringement and not for the Defendants. In any event there is no visual/ structural/ phonetical similarity between the Plaintiffs mark and registered trade marks "FLORAMIN" and "LORAMYL". In such circumstances that argument is not open for the Defendants.

18. As far as the alleged suppression is concerned, the case as set out is irrelevant because the matter is purely between the Plaintiffs and the Defendants. The Plaintiffs were under no legal obligation to disclose all opposition proceedings. The opposition to registration is of no relevance as the claim in the present suit only relates to passing of.

19. In paragraph Nos. 8.2 and 8.3 of the rejoinder, the allegations with regard to delay and latches and acquiescence have been dealt with by urging that mere presence in All India Conferences will not show that the Plaintiffs had knowledge or they were aware of Defendants user and adoption.

20. In these circumstances, while reiterating the plaint allegations what has been stated is that the Defendants have failed to make out any case of dishonesty and lack of bonafides on the part of Plaintiffs.

21. There is additional affidavit which is filed by the Defendant No. 2 on 18.09.2010 and in the said affidavit, the Defendant No. 2 has stated that the Plaintiffs along with the Defendant No. 1 participated at 37th Annual Meeting of Research Society for Study of Diabetes in India held in Ahmedabad from 5th to 8th November, 2009 through its division namely Unisearch CD along with the Defendant No. 2 wherein the products of the Defendant No. 2 under the trade mark "SELORAM" were extensively promoted/ displayed publicly. In fact the stalls of the Defendant No. 2 and Unisearch CD were in the same vicinity. More than 3,000 delegates participated in the said conference which was dominated by diabetologists, cardiologists and other medical practitioners. It is stated that the stalls of the Defendant No. 2 and the Plaintiffs were adjacent to each other and the pharmaceutical products were known from November, 2009 and in any event they have been known to the market since December, 2009 because the data in that behalf is published by the IMS Health Information and Consulting Services India Private Limited. Therefore, the Plaintiffs were aware of the products of Defendant No. 2 if not from April 2009 at least from November, 2009, therefore, the statement that they became aware from June, 2010 is false.

22. In paragraph Nos. 9 and 10 of the additional affidavit of Defendant No. 2 dated 18.09.2010, this is what is stated:

"9. I further say that the Plaintiff is guilty of concealment of material facts and is not entitled to any relief/s from this Honble Court. As stated in my previous affidavit, the Plaintiff has deliberately and with malafide and ulterior motive suppressed from this Honble Court that its application for registration of the marks "LORAM" under No. 1077469 and "LORAM" label under No. 1192320 were opposed by four entities. The aforesaid Notices of Opposition are absolutely essential for determining the alleged claim of exclusivity over "LORAM" made by the Plaintiff. The Defendant No. 2 craves leave of this Honble Court to refer to and rely upon the requests filed with the Trade Marks Registry for the issuance of the certified copies of the aforesaid Notices of Opposition and/or other relevant documents which are being filed in separate compilation of documents. I say that the said certified copies of the Notices of Opposition shall be filed with the Court as and when the same are made available to the Defendant No. 2 by the Trade Marks Registry.

10. I say that M/s Wyeth LLC, USA and M/s Wellness Ag. Inc., Philippines sell/distribute internationally the products bearing the marks "LORAMET" and "LORAM", respectively. The product under the mark "LORAMET" is available extensively in countries such as Belgium, Greece, Hong Kong, Ireland, Netherlands, South Africa, Singapore, Spain, Switzerland, Thailand, Czech Republic, Poland etc.. I crave leave of this Honble Court to refer to and rely upon the study dating back to the year 1985 and the literature dating back to the year 1995 in respect of the product under the trade mark "LORAMET", which is being filed in separate compilation of documents."

23. Therefore, the claim is that the mark "LORAM" is commonly used by many companies in the market and the goods are sold under various brand names/marks of similar nature and, therefore, the Plaintiffs are not entitled to the interim injunction as prayed.

24. As stated above there is rejoinder affidavit of the Plaintiffs and on this material that I have proceeded to hear Mr.Kadam, learned Advocate General appearing on behalf of the Plaintiffs and Mr.Dwarkadas, learned Senior Counsel appearing on behalf of the Defendant No. 2.

25. Mr.Kadam submitted that a clear case of passing of is made out because the products in question are identical. They are medicinal preparations and drugs and are treating the same ailments. The Plaintiffs have pointed out as to how they have been in market since June, 2002 and have acquired reputation in trade. It is also pointed out by the Plaintiffs by producing their sale certificates that sales are extensive and product is popular. In such circumstances, the Defendants product sold in the market is similar to that of the Plaintiffs. Thus, the mark of Defendants "SELORAM" is structurally, visually and phonetically identical or deceptively similar to the trade mark of Plaintiffs "LORAM". Mere addition of letters "SE" will not change the mark. It has been pointed out by production of documents by the Plaintiffs as to how the Defendants are trying to trade on to reputation of the Plaintiffs.

26. Mr. Kadam submits that the use of mark "SELORAM" by the Defendants is admittedly after the adoption and use by the Plaintiffs. In other words, it is after June, 2002. If the Plaintiffs are prior users and adopters of the mark "LORAM", then, injunction cannot be denied on the ground that the Plaintiffs are trading upon somebody elses reputation or that the claim of Plaintiffs is lacking in bonafides. It is clear from the judgment of the Honble Supreme Court in case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.. reported in AIR 2001 SC 1952 that the possibility of confusion is the test and not the probability. If the products are pharmaceuticals and medicinal, then, the principles laid down in paragraph No. 26 of this decision would apply. All ingredients of passing of have been satisfied by the Plaintiffs. The mark "LORAM" has been associated with the public and trade for the last more than 7 years and the products have acquired definite goodwill and reputation. Mr.Kadam submits that if the marks are taken as a whole, then, there is likelihood of confusion and deception. There is likelihood of damage to public interest because there would be adverse medical consequences if the products/drugs of the Defendants are administered as that of the Plaintiffs. It is submitted that the patients suffering from hypertension take such medicine for decades together, the damage would be enormous.

Mr. Kadam submits that the Plaintiffs applied for registration on 01.02.2002 and in that behalf he invites my attention to Annexure A1 (page 16 and 17 of the paper book). Mr.Kadam submits that the use of Plaintiffs is since June, 2002, therefore, it is no answer to the Plaintiffs claim and particularly to state that the Plaintiffs themselves have infringed the marks which are in the market. Mr.Kadam submits that the application made by M/s Haryana Formulations Pvt.Ltd. is 06 months after the registration application of the Plaintiffs i.e. 01.02.2002. The application of M/s Haryana Formulations Pvt.Ltd. is dated 01.08.2002. As far as other entities are concerned, the Defendants have not produced any evidence to show that the marks of these entities were used and adopted prior to 01.02.2002. In such circumstances, the injunction which is discretionary relief cannot be denied to the Plaintiffs on the ground that they have fraudulently and dishonestly adopted/copied the mark "LORAM" from the rightful proprietors. No conclusion can be drawn at this prima facie stage that the use and adoption by the Plaintiffs of mark "LORAM" is dishonest as urged by the Defendants. For all these reasons, it is submitted that the injunction as prayed be granted.

27. Mr. Kadam, in support of his submissions, has relied upon the following decisions:

(1) (1994) 2 SCC 448 (M/s Power Control Appliances and others. v. Summet Machines Pvt.Ltd.)

(2) The order dated 15.10.2010 passed in Notice of Motion No. 599/2006 in Suit No. 568/2006. (Bombay High Court) (Sami Khatib & another. v. Cadila Pharmaceuticals Ltd.)

(3) The judgment dated 05th December, 1995 passed in Notice of Motion No. 258/1994 in Suit No. 4080/1993. (Bombay High Court) (American Home Products Corpn. Wyeth Laboratories Ltd. v. Lupin Laboratories Ltd..)

(4) 1998 PTC (18) (Bombay High Court) (AngloFrench Drugs & Industries Ltd. v. Eisen Pharmaceutical Company Pvt.Ltd.)

(5) 2001 PTC 541 (SC) (Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.)

(6) 1996 PTC (16) (High Court of Delhi) (Ciba Geigy Ltd. v. Crosslands Research Laboratories Ltd.)

(7) AIR 1960 SC 142 (Corn Products Refining Co.. v. Shangrila Food Products Ltd.)

(8) 2002(24) PTC 341 (Bombay High Court) (Indchemie Health Specialties Pvt.Ltd. v. Naxpar Labs Pvt. Ltd. and another)

(9) AIR 2002 SC 275 (Laxmikant V. Patel v. Chetanbhat Shah and another)

(10) 2002 (25) PTC 592 (Bombay High Court) (Medley Laboratories (P) Ltd., Mumbai and another v. Alkem Laboratories Limited)

(11) 2004(28) PTC 193 (Bombay High Court) (Pidilite Industries Ltd. v. S.M. Associates and others)

(12) 2008(36) PTC 478 (Bombay High Court) (Wyeth Holdings Corporation and another. v. Burnet Pharmaceuticals (Pvt) Ltd..)

28. On the other hand, Mr.Dwarkadas, learned Senior Counsel appearing on behalf of the Defendant No. 2, submits that the Plaintiffs have not approached this Court with clean hands. They have suppressed from this Court the fact that the Application No. 1077469 made by the Plaintiffs for registration of the word mark "LORAM" and the Application No. 1192320 filed by the Plaintiffs for registration of the label mark "LORAM" have been opposed by four companies. They are opposing the registration of the word and label marks. Further Mr.Dwarkadas has relied upon the compilation and more particularly page Nos. 37 to 47 thereof to urge that in the opposition that is filed by the Plaintiffs to the application made by M/s Haryana Formulations Pvt.Ltd., they took a stand that the word mark "LORAM" is common to the trade and there are several entities and manufacturers using and adopting identical mark. Once the Plaintiffs have taken such stand in the opposition proceedings and they have suppressed it from this Court in the present case, then, all the more their conduct can be safely termed as dishonest and blameworthy. This itself disentitles them from claiming any discretionary and equitable reliefs. In any event, suppression of stand taken by the Plaintiffs in the opposition proceedings is deliberate. What they are urging in the present suit is directly contradictory to the stand taken by them before the Trade Marks Registry. Mr.Dwarkadas has invited my attention to paragraph No. 11 (page5 of the plaint) and paragraph Nos. 2.3 (page 36 of the first affidavit in rejoinder). He has also highlighted the fact that on this ground alone, the injunction should be denied.

29. Mr.Dwarkadas submitted that the Plaintiffs have approached this Court after considerable delay. It has been pointed out in the affidavit in reply that the mark "SELORAM" is distinctive and is identified with the product of the Defendant No. 2 and none else. Total turnover in respect of the said product from May, 2009 to August, 2010 has been approximately Rs. 2.6 crores. A separate compilation of documents would show that from May, 2009 the product is available in market. Therefore, it is false to suggest that the Plaintiffs are unaware of the usage and adoption by the Defendants. Further it has been pointed out that the word mark "LORAM" is taken by the Plaintiffs from the registered trade marks "FLORAMIN" and "LORAMYL". It is, therefore, clear that the Plaintiffs were aware of the drugs under the said names in the market. On affidavit it has been pointed out as to how at Conferences, the stalls were adjacent to each other. In such circumstances, this application deserves to be dismissed also on the ground of delay and latches.

30. Further on merits, it has been pointed out by the Defendants that when numerous entities have been using the word mark "LORAM" per se and also composition of the rival products is different and equally the packaging, then, there is no question of any confusion amongst the members of trade and public at large. Therefore, even on the grounds of public interest, no injunction can be granted in favour of the Plaintiffs.

31. Mr.Dwarkadas has relied upon the following decisions in support of his submissions:

(1) 1992(3) BOM CR 408 (Reckitt & Colman of India Limited v. Medicross Pharmaceuticals Private Limited)

(2) 2005(31) PTC 515 (BOM) (Medley Pharma Ltd. v. Khandelwal Labs Ltd.)

(3) AIR 1987 DEL 1987 (E.R.Squibb & Sons Inc. v. Curewel India Limited)

(4) AIR 1984 Bom 281 (Johann A. Wulfing v. Chemical Industrial and Pharmaceutical Laboratories Ltd. and another)

(5) AIR 1970 SC 2062 (F.Hoffmannla Roche and Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd.)

(6) 2007(34) PTC 18 (Delhi) (Kalindi Medicure Pvt.Ltd. v. Intas Pharmaceuticals Ltd. and another)

(7) 2008 (37) PTC 487 (Delhi) (Shering Corporation & others v. Getwell Lifesciences India Pvt. Ltd.)

(8) 2001 (21) PTC 864 (Delhi) (Khandelwal Labs v. FDC Ltd.)

(9) 2005(3) PTC 75 (Delhi) (Novartis AG v. Wandury Ltd. and another)

(10) 2001 PTC 601 (Aviat Chemicals Pvt.Ltd. and another v. Intas Pharmaceuticals Ltd.)

(11) AIR 1990 Del 233 (Prem Singh v. Ceeam Auto Industries)

(12) AIR 1994 SC 853 (S.P.Chengalvaraya Naidu v. Jagannath and others)

(13) 2000 (20) PTC 396 (Delhi) (Online India Capital Co. Pvt. Ltd. v. Dimensions Corporate)

(14) 2008(37) PTC 413 (SC) (Khoday Distilleries Ltd. v. Scotch Whisky Association and others.)

(15) 1995 PTC 165 (SC) (Power Control Appliances and others v. Sumeet Machines Pvt. Ltd. and others)

32. Mr.Kadam tried to deal with Mr.Dwarkadass argument by urging that as far as the claim for passing of is concerned, the tests are independent, therefore, what stand the Plaintiffs have adopted in Registration proceedings or in opposing certain marks will not be of any assistance or relevance while considering the claim for passing of. The Defendants should displace the case of the Plaintiffs independently of the Plaintiffs stand in any other proceedings. If the claim is of prior adoption and use by the Plaintiffs, so also, their application for registration being pending, then, unless and until any contrary proof even at this prima facie stage is produced, the Plaintiffs application for injunction cannot be thrown out merely on the grounds urged by Mr.Dwarkadas. The adoption and use by the Plaintiffs being claimed from 01.02.2002, the goodwill and reputation that has been built upon over the years being prima facie established, then, not setting out as to what transpired in the proceedings for registration or the stand of the Plaintiffs in opposition, by itself will not mean that the Plaintiffs are disentitled from claiming interim injunction as prayed. For all these reasons, Mr.Kadam submits that the application deserves to be allowed.

33. Mr. Kadam has also taken me through certain portions of the plaint and has submitted that the proceedings before the Trade Marks Registry are inconclusive. There is no question of principles of estoppel, waiver or acquiescence being invoked to deny the claim of the Plaintiffs. The opposition to label mark and word mark is distinct and therefore, no assistance can be derived by Mr.Dwarkadas from the stand of Plaintiffs in the subject proceedings. Mr.Kadam has taken me through page Nos. 37 to 42 of the second compilation and equally page No. 93 thereof. He relied upon the aspect of public interest because of disastrous consequences on account of administration of wrong drug. Mr.Kadam submits that both tablets namely "LORAM" and "SELORAM" cannot be taken because one treats hypertension associated with Diabetes whereas other treats hypertension alone. In such circumstances, Mr.Kadam submits that on the strength of some pleas raised by the Plaintiffs in distinct proceedings the Defendants cannot get any advantage or benefit primarily because no question of applying the principles of approbate and reprobate, estoppel, waiver and acquiescence arise in this case. Mr.Kadam submits that as far as the plea of delay and acquiescence is concerned, there is overwhelming public interest involved and when the products are pharmaceuticals and medicinal preparations, this Court should not accept such vague assertions of the Defendants but grant the relief as prayed. Therefore, the motion be made absolute.

34. With able assistance of the learned Senior Counsel appearing for the respective parties, I have perused the plaint and annexures, so also, all affidavits placed on record and wherever necessary I have perused the documents in compilations as well.

35. Before any prima facie conclusion or finding is recorded, it would be advantageous to refer to a judgment of the Honble Supreme Court reported in AIR 2008 SC 2737 (Khoday India Ltd. v. Scotch Whisky Assoication & Others). In the context of applying the principles of waiver and acquiescence, the Supreme Court has held that in cases involving equity or justice, the conduct of parties has also been considered to be a ground for attracting the doctrine of estoppel, waiver or acquiescence. In this context, this is what is held in Khoday India Ltd. (supra):

"65. Thus, in cases involving equity or justice also, conduct of the parties has also been considered to be a ground for attracting the doctrine of estoppel by acquiescence or waiver for infringement.

66. This Court also in M/s. Power Control Appliances and others v. Sumeet Research and Holdings, [ (1994) 2 SCC 448 ] held:

"26. Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in laches. In Harcourt v. White Sr. John Romilly said: "It is important to distinguish mere negligence and acquiescence."

Therefore, acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was laid down in Mouson (J.G.) & Co. v. Boehm. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant as was laid down in Rodgers v. Nowill."

67. The question again came up for consideration before this Court in Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel and others,[(2006) 8 SCC 726] wherein it was held:

"103. Acquiescence is a facet of delay. The principle of acquiescence would apply where:

(i) sitting by or allowing another to invade the rights and spending money on it;

(ii) it is a course of conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc."

68. The delay by itself, however, may not be necessarily a ground for refusing to issue injunction. It was opined:

"106. The defence of acquiescence, thus, would be satisfied when the plaintiff assents to or lays by in relation to the acts of another person and in view of that assent or laying by and consequent acts it would be unjust in all the circumstances to grant the specific relief."

69. It was furthermore observed:

"108. Specific knowledge on the part of the plaintiff and prejudice suffered by the defendant is also a relevant factor. (See Spry on Equitable Remedies, 4th Edn., p.433.)

70. In Halsburys Laws of England, Fourth Edition, Vol. 16, para 1505, it is stated:

"Where a person has by words or conduct made to another a clear unequivocal representation of fact, either with knowledge of its falsehood or with the intention that it should be acted upon, or has so conducted himself that another would, as a reasonable man, understand that a certain representation of fact was intended to be acted on, and that the other has acted on the representation and thereby altered his position to his prejudice an estoppel arises against the party who made the representation, and he is not allowed to aver that the fact is otherwise than he represented it to be."

71. Delay would be a valid defence where it has caused a change in the subject matter and action or brought about a situation in which justice cannot be done."

36. In another decision reported in AIR 2008 SC 2291 (Mandali Ranganna & others v. T. Ramchandra and others) while considering an application for injunction, this is what is held:

"18. While considering an application for grant of injunction, the court will not only take into consideration the basic elements in relation thereto, viz., existence of a prima facie case, balance of convenience and irreparable injury, it must also take into consideration the conduct of the parties. Grant of injunction is an equitable relief. A person who had kept quiet for a long time and allowed another to deal with the properties exclusively, ordinarily would not be entitled to an order of injunction. The court will not interfere only because the property is a very valuable one. We are not however, oblivious of the fact that grant or refusal of injunction has serious consequence depending upon the nature thereof. The courts dealing with such matters must make all endeavours to protect the interest of the parties. For the said purpose, application of mind on the part of the courts is imperative. Contentions raised by the parties must be determined objectively.

19. This Court in M. Gurudas and Others v. Rasaranjan and Others [(2006) 8 SCC 367] noticed:

"19. A finding on "prima facie case" would be a finding of fact. However, while arriving at such a finding of fact, the court not only must arrive at a conclusion that a case for trial has been made out but also other factors requisite for grant of injunction exist. There may be a debate as has been sought to be raised by Dr. Rajeev Dhavan that the decision of the House of Lords in American Cyanamid Co. v. Ethicon Ltd. would have no application in a case of this nature as was opined by this Court in Colgate Palmolive (India) Ltd. v. Hindustan Lever Ltd. and S.M. Dyechem Ltd. v. Cadbury (India) Ltd. but we are not persuaded to delve thereinto."

20. Therein, however, the question in regard to valid adoption of a daughter was in issue. This Court held that Nirmala was not a validly adopted daughter. This Court wondered:

"34. The properties may be valuable but would it be proper to issue an order of injunction restraining the appellants herein from dealing with the properties in any manner whatsoever is the core question. They have not been able to enjoy the fruits of the development agreements. The properties have not been sold for a long time. The commercial property has not been put to any use. The condition of the properties remaining wholly unused could deteriorate. These issues are relevant. The courts below did not pose these questions unto themselves and, thus, misdirected themselves in law."

21. Emphasis was also laid on the conduct of the parties while granting an order of injunction.

22. In Seema Arshad Zaheer and Others v. Municipal Corpn. Of Greater Mumbai and Others [(2006) 5 SCC 282], this Court held:

"30. The discretion of the court is exercised to grant a temporary injunction only when the following requirements are made out by the plaintiff:

(i) existence of a prima facie case as pleaded, necessitating protection of the plaintiffs rights by issue of a temporary injunction;

(ii) when the need for protection of the plaintiffs rights is compared with or weighed against the need for protection of the defendants rights or likely infringement of the defendants rights, the balance of convenience tilting in favour of the plaintiff; and

(iii) clear possibility of irreparable injury being caused to the plaintiff if the temporary injunction is not granted. In addition, temporary injunction being an equitable relief, the discretion to grant such relief will be exercised only when the plaintiffs conduct is free from blame and he approaches the court with clean hands."

[See also Transmission Corpn. of A.P. Ltd. v. Lanco Kondapalli Power (P) Ltd. (2006) 1 SCC 540]"

37. The Plaintiffs have approached this Court seeking permanent injunction restraining the Defendants from in any manner manufacturing, marketing, selling, distributing, exporting and/or using in relation to any medicinal and/or pharmaceutical preparations and/or such allied and cognate goods the trade mark "SELORAM" or any other mark being deceptively similar in any manner whatsoever to the Plaintiffs mark "LORAM", so as to pass off or enable others to to pass off the Defendants goods as that of the Plaintiffs.

38. This relief is claimed on the basis that the Plaintiffs are established manufacturers, dealers and exports of wide range of specialty products in pharmaceutical field. Their products are being marketed under various distinctive trade marks and cartons/labels/packing/trade dress. Their products are sold predominantly in India and also in several countries abroad.

39. I have reproduced above paragraph Nos. 5 and 6 of the plaint because it is the case of the Plaintiffs that sometime in early 2002 they conceived, coined, invented and adopted the trade mark "LORAM" for use in respect of their pharmaceutical and medicinal preparations. They applied for registration of the mark and details of their application are set out in paragraph No. 5 of the plaint. They also relied upon the trials and tests and assert their reputation as far as the product "LORAM" is concerned and the details thereof are set out in paragraph No. 6 of the plaint. The Plaintiffs state that they have been manufacturing and marking the product "LORAM" and their brand extensions on extensive scale since June, 2002. Thus, they have built a case of their reputation by the medical fraternity, trade and consumers. They state that they were shocked and surprised to notice the Defendants medicinal preparation "SELORAM" and that is why they have come to this Court seeking relief as referred to herein above. Thus, the case is that "LORAM" has been conceived, coined, invented and adopted by the Plaintiffs and the goods sold under this mark have been manufactured and marketed by the Plaintiffs. The Plaintiffs have acquired tremendous reputation and goodwill in view of the extensive sale, wide publicity and high standard of quality. The case is that the products under the name "LORAM" are associated by everybody with the Plaintiffs. Because of the presence of the Defendants in the market and their alleged acts, it will be impossible for the common man to distinguish the Plaintiffs goods from that of the Defendants. Therefore, prima facie, exclusivity is claimed by the Plaintiffs in relation to the mark "LORAM". That is how the plaint proceeds.

40. At this stage, it would be pertinent to note that M/s Haryana Formulations Pvt.Ltd. being opponents in the matter of opposition have given a notice of opposition intending to oppose the registration of trademark "LORAM". They have set out in their grounds of opposition that M/s Haryana Formulations Pvt.Ltd. adopted the mark "LORAM" in the year 1993 and has been continuously using the trademark upto present time. By virtue of prior and extensive use, they have gained the common law rights to use the said trade mark and therefore, they can restrain others from using any identical and/or deceptively similar mark or to seek registration thereof under the provisions of the Trade Marks Act, 1999. They asserted their goodwill and reputation and raised grounds in opposition to the Plaintiffs claim for registration.

41. In the rejoinder or in reply to the grounds of opposition of M/s Haryana Formulations Pvt.Ltd., what the Plaintiffs have stated is that they on or about June, 2002 honestly and bonafide conceived and adopted the trade mark "LORAM" in respect of pharmaceutical and medicinal preparations.

42. Similarly in relation to the claim for grounds of opposition raised by M/s Neon Laboratories, Mumbai, what the Plaintiffs stated is as under:

"3. With reference to paragraphs 5 and 6 of the Notice of Opposition, we firmly deny that the trademarks LOR/LORI and LORAM are anyway similar. The trademarks LOR/LORI and LORAM are visually, structurally and phonetically completely different. The whole trademark LORAM is pronounced as LORAAM. It is a wellsettled law that the trademarks are to be compared in its entirety and not in part. When two trademarks LOR/LORI and LORAM are compared as a whole, both the marks are obviously and completely different in all aspects visual, structural and phonetical. These obvious and prominent differences clearly distinguishes LORI/LOR from LORAM. Moreover, the mark LORAM is applied and used along with a device of distinctive + sign, which make the whole trademark completely distinctive and exclusive. In fact, we have never come across any product with the mark LOR/LORI and without admitting, for the sake of argument, even if accepted that the mark LOR/LORI is in use, neither the Opponent nor the Applicant faced any conflict in the market as not a single complaint is received by us in spite of long and wide use as claimed by the Opponents. Moreover, it is a known, well adopted and general practice of the Pharmaceutical Industry to conceive and adopt a trademark from its main molecule. Accordingly, for products containing LOSARTAN POTASSIUM, several trademarks with similar prefix or suffix are found in CIMS, MIMS, Drug Today and Pharmaceutical Products of India. We would like to place on record that the adoption and use of a trademark LORAM, which has passed through a complete legal process of examination and only after the same was found to be in order, the application was published in the Trademark Journal. Adoption and use of such trademark can never be a fraudulent mark as claimed by the Opponents. We emphatically and vehemently deny and condemn such allegations of the Opponents. We also would like to state that the Opponents have remained absolutely vague and ambiguous about use of their claimed marks. The Opponents should be well aware while advising and drawing attention of the preamble of the Trade Marks Act that the Act does not and never intend to protect any mark with mere registration without any intention to use. In fact, such registration is considered as tantamount to be cornering of a trademark and the Act clearly does not allow or encourage such unethical practice. In view of this, we submit that all the contentions of the Opponents are baseless, misconceived and frivolous and therefore, denied vehemently and put the Opponents to the strict proof for their contentions in these paragraphs."

43. There was also opposition by M/s Alkem Laboratories, Mumbai to the Plaintiffs application and they stated that their mark "LOPRAM" was conceived, adopted and used by them much prior to the Plaintiffs. They stated that they have registered the trademark "LOPRAM" vide Application No. 1019519 dated 22.06.2001 in respect of the goods falling under Class5 under the provisions of the Trade Marks Act, 1999 and the Rules in respect of "Medicinal & Pharmaceutical Preparations and Substances". Registration of the said trademark is being renewed from time to time and is valid and subsisting. It was specific case of M/s Alkem Laboratories Limited, Mumbai that the Plaintiffs mark "LORAM" is not a coined word but has been completely copied from that of the M/s Alkem Laboratories trade mark "LOPRAM". The Plaintiffs have bodily lifted whole of the mark "LOPRAM" and adopted the mark "LORAM" by merely deleting the letter "P" and retaining the structural, visual and phonetical similarity. Such minor change does not make any difference between the marks "LORAM" and "LOPRAM" particularly when the marks are pronounced rapidly.

44. In an answer to this stand of M/s Alkem Laboratories, what the Plaintiffs asserted is that they are proprietors of trademark "LORAM". The said mark was conceived and adopted with bonafide intention to use the same in respect of medicinal preparations and the Plaintiffs have been using the same continuously, openly and extensively since June, 2002. In order to obtain statutory protection, the registration was applied for. The stand is that the trade mark "LORAM" in respect of medicinal preparations is having LOSARTAN POTASSIUM and RAMIPRIL as active molecule and they are using the said trade mark openly, exclusively, uninterruptedly and extensively since June, 2002. It is well adopted and known practice of the pharmaceutical industry to coin a trade mark from its main ingredient/molecule. Thus, the mark "LORAM" was derived and coined from its main molecule LOSARTAN POTASSIUM and RAMIPRIL. It is being sold in a distinctive pack having a device of a + sign along with LORAM. In paragraph No. 2 of this reply to the notice of opposition, the Plaintiffs stated thus:

"2. With reference to paragraphs 3, 4 and 5 of the Notice of Opposition, we firmly deny that the trademarks LOPRAM and LORAM are anyway similar. The trademarks LOPRAM and LORAM are visually, structurally and phonetically completely different. The whole trademark LORAM is pronounced as LORAAM. It is a well settled law that the trademarks are to be compared in its entirety and not in part. When two trademarks LOPRAM and LORAM are compared as a whole, both the marks are obviously and completely different in all aspects visual, structural and phonetical. In fact the letter "P" is so emphatic, it makes the mark LOPRAM completely different. The mark LOPRAM is having a prefix LOP while our trademark is having a prefix LO. These obvious and prominent differences clearly distinguish LOPRAM from LORAM. Moreover, the mark LORAM is applied and used along with a device of distinctive + SIGN, which make the whole trademark completely distinctive and exclusive.

In fact, we have never come across any product with the mark LOPRAM and without admitting, for the sake of argument, even if accepted that the mark LOPRAM is in use, neither the Opponent nor the Applicant faced any conflict in the market as not a single complaint is received by us. Moreover, it is a known, well adopted and general practice of the Pharmaceutical Industry to conceive and adopt a trademark from its main molecule. Accordingly, for products containing LOSARTAN POTASSIUM and RAMIPRIL, several trademarks with similar prefix or suffix are found in CIMS, MIMS, Drug Today and Pharmaceutical Products of India. It is also pertinent to note that the trademark LOPRAM of Opponent is not appearing in any of these industry journals/periodicals. We would like to place on record that the adoption and use of a trademark LORAM, which has passed through a complete legal process of examination and only after the same was found to be in order, the application was published in the Trademark Journal. We also would like to state that the Opponents have no use of the mark LOPRAM. In fact the Trade Mark Act does not and never intend to protect any mark with mere registration without any bonafide intention to use. In fact, such registration is considered as tantamount to be cornering of a trademark and the Act clearly does not allow or encourage such unethical practice. We emphatically reiterate and deny that the Opponents mark LOPRAM and our mark LORAM and device are any way identical or similar.

It is submitted that when the trademarks LOPRAM are compared visavis LORAM in its entirety, it can be explicitly seen that the mark LORAM is structurally, visually and phonetically completely different from the marks LOPRAM. We state that when there is no similarity at all the question of objection under Sec.11(1) does not arise at all. In view of the differences between the trademarks LOPRAM and LORAM and device, its long and uninterrupted use, the question or confusion or deception does not arise. It is reiterated that both the marks being completely dissimilar, question of confusion amongst potential customers or dealers or distributors or chemists and all concern with the medical fraternity does not arise at all. We state that the Opponents have filed this opposition with a malafide intention to delay the due process of law and registration. We state that the Opponents do not have any base or merits in its claim of adoption of the mark LOPRAM and have no locus standi for their arguments as merely by registration without bonafide intention to use a mark does not entitle the Opponents to exclusivity. It is also pertinent to note that the Examiner did not even cite the Opponents mark as conflicting mark and raised objection under Sec.11. The Opponent should understand that the mark LORAM was not found to be objectionable either on account of the Opponents trademark (as claimed) or otherwise and was accordingly accepted for advertisement in the Trademark Journal. As the sales under the mark LORAM was not substantial at the time making application for registration, the Examiner allowed the application for advertisement under Sec.20(1) of the Act.

However, as explained in above paragraphs, "advertisement before acceptance" has no relevance. In fact the Opponents mark is applied as "proposed to be use" and was applied without any bonafide intention to use. Hence, apart from complete dissimilarity between the marks, the Opponents do not have any rights to oppose our application. As explained and stated above, the marks LORAM & device and LOPRAM are completely different in its visual appearance, its structure and in its sound. The difference between these two marks is absolute in all respects. When there is no similarity, the question of confusion or deception does not arise at all. We vehemently deny any kind of even remote possibilities or likelyhood of confusion or deception among the purchasing public or people connected in the industry due to complete dissimilarities in the marks. As stated, apart from complete dissimilarities, due to honest adoption, and use of the mark LORAM continuously and extensively since June, 2002, our mark is protected under the Common Law and by all the Courts of Law. Further, as stated herein above, we have been successful in achieving great sales over the years merely due to the excellent quality product and aggressive marketing strategy adopted by us.

We fail to understand the contention of the Opponents that our mark will be considered as an extension of the Opponents mark when they do not have any use at all.

When there is no use, the Opponents cannot claim to have achieved any reputation or goodwill in their trademark.

In the circumstances, the contentions of the Opponents with regard to confusion, deception and passing off of our product as products of the Opponent are completely baseless, misconceived and liable to be rejected in toto by the learned Registrar. Nonetheless, we put the Opponents to the strict proof to all the contentions and allegations made therein."

45. A perusal of these paragraphs would indicate that the stand of Plaintiffs in the present suit is at variance with that of the reply to the notice of opposition. No where in the plaint it is stated that the word is coined on the basis of well known usage and practice in pharmaceutical industry. What is pleaded is originality and exclusivity.

46. However, the Plaintiffs have suppressed this stand because they have not placed before the Court the fact of any opposition to their application.

47. It has been pointed out by the Defendants that the Defendant No. 2 is a part of one AstraZeneca Group of Companies and it has several medicinal and pharmaceutical preparations to its credit including "SELOKEN" and "RAMACE". Therefore, the trade mark "SELORAM" was conceived, coined and invented and the said mark clearly traces its roots to the brands "SELOKEN" and "RAMACE" i.e. prefix "SELO" from "SELOKEN" and "RAM" from "RAMACE". The product under the brand "SELORAM" comprises the active ingredients RAMIPRIL and METOPROLOL SUCCINATE. In paragraph No. 21 of the affidavit in reply, it has been pointed out that the records of the Trade Marks Registry would indicate numerous applications for registration of mark "LORAM" and/or "LORAM" formative mark in the name of different entities. From that what has been urged is that the trademark "LORAM" of the Plaintiffs is publici juris/generic, therefore, there is no exclusivity thereof which can be claimed by the Plaintiffs. The details of the products which are marketed with mark "LORAM" are set out and from that it is clear that there are registered marks such as AMLORAM, FLORAMIN, LORAMIN, and the mark "LORAM" is already claimed by M/s Haryana Formulations Pvt.Ltd. from January, 1999.

48. It is, therefore, urged that these facts being suppressed it would mean that the Plaintiffs have not approached the Court with clean hands and that opposition to their mark has been deliberately suppressed and the details of opposition to their mark have been intentionally held back from this Court or else the stand of the Plaintiffs would have been clear.

49. Without going into wider controversy raised by Mr.Kadam and particularly about distinction in the nature of proceedings before the Registrar of Trade Marks and before this Court namely registration/ opposition proceedings and civil suit claiming permanent injunction restraining passing of, I am of the view that there is much substance in the contentions of Mr.Dwarkadas. As has been noted in various judgments, while granting interim injunction even in the suit of present nature the conduct of the Plaintiffs is a vital ingredient. The Court can take that into account while denying interim relief which is discretionary and equitable relief. If compilation is perused it is clear that there is in the market a mark "LORAMET" which is also medicinal and pharmaceutical preparation. From pages No. 469 to 543 of the paper book, it will be clear that the Defendants have supported their statements made in paragraph No. 21 of their affidavit in reply. They have also referred to the packaging of the Plaintiffs wherein there is no reference to "+" sign as is now urged.

50. The Defendants have also invited my attention to the details of 37th Annual Conference of the Research Society for Study of Diabetes in India wherein several companies participated including the Defendant No. 2 and the Plaintiffs. They have also relied upon the details of the Plaintiffs product "LORAM" and that Losartan Potassium and Ramipril is administered for treatment of mild to moderate hypertension. These are the details released by the Plaintiffs themselves. The stand of M/s Haryana Formulations Pvt.Ltd. is that they have adopted the mark "LORAM" since 1999 and have been continuously using the same. They say that they are prior adopter and lawful proprietor of the same. In fact they claimed to be original adopter and lawful proprietor of the mark "LORAM" and they claimed to have widely advertised it in India.

They have claimed that the Plaintiffs mark is identical or deceptively similar to their mark "LORAM". It is not possible to distinguish the goods of M/s Haryana Formulations Pvt.Ltd. from that of the Plaintiffs. Therefore, they opposed the registration. In answer thereto, what the Plaintiffs have stated is that it is well adopted and known practice of the pharmaceutical industry to coin the trade mark from its main ingredient/molecule, therefore, "LORAM" was derived from its main molecule LOSARTAN POTASSIUM and RAMIPRIL. Therefore, they claimed that they were not aware of any prior adoption and use of mark "LORAM". What is sought to be claimed was a distinction inasmuch as the Plaintiffs applied their mark "LORAM" and used it along with device "+" sign which makes the trademark distinctive and exclusive. However, it is stated that in the market, there are several trademarks with similar prefix or suffix and the instances found in CIMS, MIMS, Drug Today and Pharmaceutical Products of India, have been cited. It is claimed that despite long use allegedly by M/s Haryana Formulations Pvt.Ltd., no product of mark "LORAM" is appearing in any form generally or periodically. It is on this basis, they claimed that it is distinctive and they are original adopters.

51. To my mind, not placing this stand before the Court at any time during these proceedings would disentitle the Plaintiffs from seeking any equitable and discretionary relief. The Plaintiffs stand in relation to not only the opposition of M/s Haryana Formulations Pvt.Ltd. but further opposition to the application by M/s Neon Laboratories ought to have been placed before this Court. It is clear that there the Plaintiffs stand in relation to "LORAM" which is claimed by M/s Haryana Formulations Pvt.Ltd. and the marks "LORI" and "LOR" which are claimed by M/s Neon Laboratories, would certainly be relevant at this interlocutory stage as well. While asserting that they have gone by well known and well adopted general practice of the pharmaceutical industry, they seek to assert that their mark pronounced particularly as "LORAM" is completely different in all aspects visually, structurally and phonetically from "LORI" and "LOR".

52. Similarly when the opposition was raised by M/s Alkem Laboratories as far as their mark "LOPRAM" is concerned, the Plaintiffs in addition to arguing that "LORAM" and "LOPRAM" are completely different, relied on the said well known and well adopted, so also, general practice of the trade. At that time they denied any prior adoption and user by M/s Alkem Laboratories. In addition they argued that the judgment in case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.. AIR 2001 SC 1952 is applicable when there is real likelihood of confusion.

No Court of law allows anybody to corner or traffic any trademark with bare registration without bonafide intention to use. They claimed that M/s Alkem Laboratories never placed the mark in use, therefore, they cannot get any assistance of the Supreme Court judgment in case of Cadila Health Care (supra). When directly contradictory pleading and argument is raised, I am of the view that it will not be proper to grant any relief to the Plaintiffs. All other pleas raised by Mr.Kadam and particularly on the question of delay and distinction in the nature of proceedings apart, purely going by the conflict in the version and suppression of the same from this Court while seeking equitable and discretionary relief, is enough to deny the interim injunction. There is substance in the contention of Mr.Dwarkadas that the Plaintiffs have not approached the Court with clean hands.

53. Reliance placed by Mr.Dwarkadas on some of the decisions including that of the Supreme Court, is apposite. In case of F.Hoffmannla Roche and Co.Ltd. v. Geoffrey Manner & Co. Pvt. Ltd., AIR 1970 SC 2062, the Honble Supreme Court held that terminal syllable "VIT" in two marks "DROPOVIT" and "PROTOVIT" was both descriptive and as the evidence showed, common to the trade. If greater regard was paid to the uncommon element in the two words it was difficult to hold that one would be mistaken for or confused with the other.

54. In another decision of this Court reported in 2005(31) PTC 515 (Medley Pharmaceuticals Ltd. v. Khandelwal Laboratories Ltd.), this Court held that there is no exclusivity in trade marks "CEFI" and "CEFIDT". The mark used by them is commonly used by many companies in the market and the goods are commonly sold in various brand names and therefore, relief of injunction to restrain passing of was denied. While denying that, the learned Single Judge placed reliance on the judgment of the Supreme Court in case of F. Hoffmannla Roche and Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd. (supra) and held that if both prefix and suffix are commonly used, then, there is no substance in the contentions of the Plaintiffs therein. This view has been taken in relation to medicinal products and the judgment of the Honble Supreme Court in case of F. Hoffmannla Roche and Co.Ltd. v. Geoffrey Manner & Co.Pvt.Ltd. (supra) is followed in number of cases on which reliance is placed by Mr.Dwarkadas. Recently, a Division Bench of this Court consisting of D.K.Deshmukh and Smt.R.P.SondurBaldota, JJ in an Appeal No. 548 of 2007 in Notice of Motion No. 3459 of 2004 in Suit No. 3419 of 2004 decided on 08th October, 2010 (Schering Corporation and another v. M/s United Biotech (P) Ltd. and another) held that the Appellants have adopted their trade mark NETROMYCIN from the generic drug named "Netilmicin". When a trade mark is found from the common generic name, no single proprietor can claim absolute monopoly in such name or trade mark. In paragraphs 11 and 12 of the judgment, this is what is held:

"11. After having heard the learned Counsel appearing for both the sides in detail and after having gone through the judgments relied on by both the learned Counsels and the record, we find that disturbing the order passed by the learned Single Judge would not be proper. The trade mark of the Respondents NETMICIN is admittedly registered, and therefore, the Respondents have statutory right to use that trade mark. The Appellants have adopted their trade mark NETROMYCIN from the generic drug name Netilmicin . When a trade mark is found from the common generic name, no single proprietor can claim absolute monopoly in such name or trade mark. When a proprietor adopts a trade mark on the basis of name of generic drug or ingredient, it will be safe to assume that he is aware that the other proprietors are also likely to adopt and use similar marks in case their product is based on the same generic drug or ingredient. In such a case, the first user cannot claim exclusivity in his trade mark or in the name which is derived from the generic drug. At the most such proprietor can claim exclusivity in those added features which differentiates his trade mark from the name of the generic drug or ingredient. When two trade marks are coined from the same generic drug or ingredient, there are bound to be similarities between the two and in such a case, even if the differences between the two trade marks are minor or small, then also at least at the prima facie stage no injunction can be granted.

12. It has come on record that the other manufacturers and traders of medicinal goods have also adopted trade marks with prefix NET to indicate the drug name Netilmicin Sulfate and the suffix MICIN/MYCIN is common to pharmaceutical trade. Both the trade marks are used in respect of Netilmicin Sulfate and both the trade marks owe their origin to the said medicine name. Since there is commonality in origin, ingredient, composition and purpose, even if one drug is consumed for the other, there cannot be disastrous consequences.

It is an established position on record that Netilmicin Sulphate injection is an expensive drug, consumed and used by doctors, generally in hospitals and medical institutions while treating patient with critical condition and is administered to patients after carrying out sensitivity culture test and only if the doctors are satisfied that such injection is appropriate medicine to be given to the patient. In our opinion, the learned Single Judge has rightly considered this aspect while rejecting the notice of motion. It is further to be noted that the Respondents goods are purchased in bulk by the hospitals and not by the common consumers, they are not sold over the counter. Whereas the Appellants goods are sold over the counter to the consumers.

In our opinion, the manner in which the drug is administered and that the product of the Respondents is used only in the hospitals by the Doctors after carrying out sensitivity culture test, is enough to rule out any possibility of any confusion as the chemical used in both the products is same. Even if by mistake one is used for the other, no injury is likely to be suffered by the consumer or patient. In our opinion, therefore, this circumstance coupled with the circumstance that both the trade marks are registered and that from the year 2003 the Respondents have been using its trade mark uninterruptedly disentitles the PlaintiffsAppellants to interim injunction restraining the DefendantsRespondents from using its trade mark."

55. In a decision of the learned Single Judge of Delhi High Court reported in 2001 PTC 601 (Aviat Chemicals Pvt.Ltd. and another v. Intas Pharmaceuticals Ltd.), the learned Single Judge noticed all the decisions in the field including the judgment of the Honble Supreme Court in Cadila Health Care Ltd. (supra) and concluded that where a generic word is used as prefix suggestive of the ailments which the drug treats and the said prefix having been used for several products of the same nature in the market, then, the Plaintiffs cannot allege confusion or deception, therefore, the relief cannot be granted.

56. Reference need not be made to all decisions brought to my notice by Mr.Dwarkadas in the view that I have taken, namely, on merits as well, prima facie, the Plaintiffs user and adoption is in consonance with their version of the well adopted, known and general practice of the pharmaceutical industry to coin a trade mark from its main ingredient/molecule, which is the case here. Hence, no Interim Injunction can be granted.

57. All that needs to be reiterated is that as far as passing of is concerned, that is a remedy or action for deceit. Therefore, in the peculiar facts of this case all judgments that have been brought to my notice by Mr.Kadam would not be of any assistance. As far as the judgment in case of Power Control Appliances and others v. Sumeet Machines Pvt. Ltd. and others, 1994(2) SCC 2488 is concerned, in later decisions the Supreme Court has considered this aspect. (See Khoday India Ltd. v. Scotch Whisky Assoication & Others (supra)) as quoted above.

58. The judgment of the Honble Single Judge in Notice of Motion No. 258/1994 in Suit No. 4080/1993 (American Home Products Corpn. Wyeth Laboratories Ltd. v. Lupin Laboratories Ltd.) decided on 05.12.1995 is distinguishable because the registered mark "ROLAC" was not an ordinary or generic term but was invented word which cannot be prefixed or suffixed. It is basically on this foundation, an order of injunction has been made in favour of the Plaintiffs and finding that other tests are satisfied. Before me, such is not the case.

59. The stand taken in this case by the Plaintiffs is crucial and going by their own statements, they cannot say that the mark "LORAM" was not an ordinary or generic term but was invented word which cannot be prefixed or suffixed. The judgment of the Honble Mr. Justice Variava in case of AngloFrench Drugs & Industries Ltd. v. Eisen Pharmaceutical Company Pvt. Ltd.. 1998 PTC (18), which is relied by Mr.Kadam is also distinguishable on facts.

60. In these circumstances, it would not be necessary to make a detailed reference to all judgments cited by Mr.Kadam particularly because those orders are based on the peculiar facts emerging from record in the cases dealt with by this Court. The cases of infringement of copyright and trade mark would not be of any assistance to Mr.Kadam.

61. Lastly, Mr.Kadams reliance on the decision of the learned Single Judge (Honble Justice Dr.D.Y.Chandrachud) in case of Wyeth Holdings Corporation and another v. Burnet Pharmaceuticals Pvt.Ltd., 2008(36) PTC 478 is also misplaced because there even prima facie proof of usage of marks, which were stated to be common to the trade or business, was not produced. Before me, that is not the controversy. The Plaintiffs may be claiming to be prior user and adopter, they were aware that their application for registration was being opposed by four entities who were all claiming to be in the market from at least 1993 and 1999. The Plaintiffs adoption and use is claimed from June, 2002. Therefore, this decision is also distinguishable on facts.

62. As a result of the above discussion, Notice of Motion fails and is, accordingly, dismissed. However, there will be no order as to costs.

Advocates List

For the Appellant Ravi Kadam, Advocate General a/w A. Kamath, M.A. Mahadgut & Ms. Reema Bangale, Advocates. For the Respondent 1 Gauraj Shah i/b Vimadalal & Company, Advocate. R2Janak Dwarkadas, Senior Counsel a/w Rahul Chitnis & Gajaria i/b Gajaria & Company, Advocates.

For Petitioner
  • Shekhar Naphade
  • Mahesh Agrawal
  • Tarun Dua
For Respondent
  • S. Vani
  • B. Sunita Rao
  • Sushil Kumar Pathak

Bench List

HON'BLE MR. JUSTICE S.C. DHARMADHIKARI

Eq Citation

2011 (45) PTC 488 (BOM)