$
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on: 18th January, 2017
Pronounced on:25th January, 2017
+ CS(COMM) 631/2016
INTAS PHARMACEUTICALS LTD ..... Plaintiff
Through: Mr. Rajiv Nayar, Sr. Adv. with
Ms. Niyati Kohli, Mr. Karan Luthra, Ms.
Aayushi S. Khazanchi and Mr. Saurabh
Seth, Advocates
versus
MACLEODS PHARMACEUTICALS LTD ..... Defendant
Through: Mr. Sandeep Sethi, Sr. Advocate
with Ms. Rajeshwari H., Advocate
CORAM:
HON'BLE MR. JUSTICE R.K.GAUBA
ORDER
IA 6604/2016 (u/O. 39 R. 1 & 2 CPC) a
1. This civil suit (commercial) seeking permanent injunction against the defendant from infringement of its registered trademark "GABAPIN" and against passing off products as though that are the products of the plaintiff by using phonetically / visually similar mark "GABAMIN" was instituted in May 2016 impleading two defendants. On the application of the plaintiff (IA 705/2017) invoking order 1 Rule 10 of the Code of Civil Procedure, 1908 (CPC) allowed by order dated 18.01.2017, the name of the second defendant, however, has since been struck off from the array The suit and the application CS (Comm) 631/2016 Page 1 of 10 under Order 39 Rule 1 and 2 CPC (IA 6604/2016) thus are pressed against the surviving (erstwhile first) defendant, it being Macleods Pharmaceuticals Ltd., having its registered office in Mumbai but a branch office in Kirti Nagar, Delhi (hereinafter referred to as "the defendant").
2. By the main suit, the plaintiff has taken exception to the adoption of the mark "GABAMIN" or its variation "GABAMIN NT" by the defendant in relation to its pharmaceutical (medicinal) products claimed to have been introduced in the market initially in June 2006, its active ingredients being "Gabapentin" and "Mecobalamin (Methylcobalamin)". By the application (IA 6604/2016) under Order 39 Rule 1 and 2 CPC, the plaintiff prayed for ad interim relief.
3. Arguments were heard at length and with the assistance of the learned senior counsel on both sides, record has been perused.
4. Both the plaintiff and the defendant are pharmaceutical companies incorporated under the Companies Act being engaged in the manufacture of medicinal and other pharmaceutical products. Both companies claim to have acquired goodwill and reputation for the quality of their respective products. The medicinal products which are the subject matter of this litigation concededly contain as their main ingredients a chemical compound known as "Gabapentine", statedly used primarily for treating epilepsy and neuropathic pain. It is not disputed by the defendant - rather it is substantiated prima facie by the plaintiff on the basis of documents submitted - that for marketing its medical preparation containing the aforesaid chemical compound "Gabapentin", it had adopted the mark "GABAPIN" and CS (Comm) 631/2016 Page 2 of 10 launched its said products in 1997, and applied for registration of such trademark on 14.10.1997 under class 5 (medicinal and pharmaceutical preparations). A certificate of registration was issued on such basis in favour of the plaintiff on 24.07.2007 which indisputably would relate back to the date of the application, thereby the plaintiff having become the exclusive owner of the trademark "GABAPIN" vide trademark registration no.772893 which is valid till 13.10.2017. Documents have been filed in support of the pleadings to the effect that on 19.03.1998, the Food and Drug Controller Administrator in the State of Gujarat permitted the plaintiff to manufacture two variations of the said product "GABAPIN" containing 300 mg and 400 mg respectively which were introduced in the market in the nature of "GABAPIN 300"and "GABAPIN 400", the suffix meant to indicate the respective strength of the medicine.
5. The plaintiff has also shown prima facie by documents on the record that it had introduced two variations of the said medicine "GABAPIN", one containing chemical compound of "Gabapentin" with "Methylcobalamin", it being sold under the name of "GABAPIN ME" and the other containing chemical compound „Gabapentin‟ and „Nortriptyline‟, sold under the mark of "GABAPIN NT". The trademark "GABAPIN ME" is also covered by the trademark registration no.1556853 which is relatable to yet another trademark "GABAPIN SR" vide registration no.1556856, applications for both having been submitted on 09.05.2007 and the registration having been granted on 07.03.2009, both again in class 5 (medicinal and pharmaceutical preparations).
CS (Comm) 631/2016 Page 3 of 106. The defendant, on the other hand, has not shown by any document or alleged in any manner to be selling any medicinal product containing the chemical compound "Gabapentin" alone. It, however, appears from the documents filed on record, and as is claimed by defendant in its written statement that sometime in May 2006, it launched the impugned product, a medicinal preparation containing combination of two chemical compounds i.e. "Gabapentin" and "Methylcobalamin" and for such purposes adopted the mark "GABAMIN". Similarly, in due course it also started manufacturing another medicinal preparation containing combination of chemical compound "Gabapentin" and "Nortriptylin", for which purposes it adopted the mark "GABAMIN NT".
7. The civil suit in which the application for ad interim injunction has been filed alleged that the plaintiff learnt about such products having been introduced in the market by the defendant sometime in May 2016. The plaint also alleged that earlier, in May 2006, the defendant had applied for registration of the mark "GABAMIN" under class 5 before the Trademark registry and upon this coming in the knowledge of the plaintiff it had filed its opposition in January 2010 to which the defendant had failed to file any counter statement.
8. The plaintiff impugns the use of the mark "GABAMIN" and "GABAMIN NT" by the defendant for medicinal products identical to that of the former contending that adoption of such mark is dishonest and intended to ride on the goodwill and reputation of the plaintiff, thereby causing undue and irreparable losses; the plaintiff being the owner of a trademark duly registered, the defendant having applied for CS (Comm) 631/2016 Page 4 of 10 similar registration of the impugned mark but not having followed it up till date; both marks i.e. the registered trademark of the plaintiff and the marks of the defendant being meant for treatment of the same medical condition, under the same class (medicinal and pharmaceutical preparations), the mischief of the marks used by the defendant being on account of phonetic similarity. The plaintiff also refers to the fact that it is the prior user of the registered trademark which, in its submissions, makes out a good prima facie case and puts the balance of convenience in its favour.
9. The defendant contests the suit, as also the application at hand, primarily contending that the expression "GABA", it being derivative of the chemical compound "Gabapentin" has been used only as a prefix and since the said prefix is a generic term, monopoly cannot be claimed by the plaintiff pharmaceutical company against its competitor (the defendant) - also for the reason that the rest of the mark is dis-similar - and further that the suffix "MIN" is sufficient to distinguish the product of the plaintiff from that of the defendant, such uncommon features having the tendency to draw attention of the intended customer. The defendant further submits that its product and that of the plaintiff are different compositions and, therefore, there is no scope for any confusion prevailing on account of adoption of the impugned marks. It is also argued that the plaintiff is guilty of concealment of the fact that it had knowledge about the product of the defendant since 2010 when it had submitted opposition to the trademark application submitted by the defendant in relation to the mark "GABAMIN" and also that the plaintiff is not entitled to any CS (Comm) 631/2016 Page 5 of 10 equitable relief on account of laches and acquiescence in as much as the defendant‟s product has been in market with extensive sales to the knowledge of the plaintiff since 2006, the case of the defendant being that the claim of the plaintiff‟s knowledge of such product being marketed having been acquired in May 2016 is false. On the basis of these very submissions, the defendant also claims that the balance of convenience lies in its favour and, thus, there is no case made out for any ad interim injunction.
10. Undoubtedly, neither side can claim exclusive rights to the use of a generic term such as "Gabapentin". It is also true, as pleaded by the defendant in its written statement, that there are a large number of products manufactured by numerous pharmaceutical companies containing primarily the same chemical compound "Gabapentin", marketed under different marks. In fact, in para 2(b) under the head of "Suppression of Material Facts" of the written statement, the defendant has set out, illustratively, particulars of as many as 39 such products of such pharmaceutical companies, including the parties to the case, in most of which the prefix "GABA", obviously derived from the name of the chemical compound "Gabapentin", has been used. But, as submitted by the learned senior counsel for the plaintiff, the exception taken by the plaintiff is not to the use of the prefix "GABA" derived by both parties in relation to their respective products from chemical compound "Gabapentin". The grievance of the plaintiff essentially relates to the suffix adopted by the defendant, it being "MIN", as explained by the defendant to have been drawn from the other ingredient viz. "Methylcobalamin", it obviously being CS (Comm) 631/2016 Page 6 of 10 phonetically similar to the trademark "GABAPIN" registered in favour of the plaintiff.
11. Prima facie, this court finds no substance in the submission of the defendant that the plaintiff is guilty of concealment of material facts. The plaintiff has clearly declared in the pleadings that its product primarily contains the chemical compound "Gabapentin". The two other products later developed had other ingredients, one sold under the mark "GABAPIN ME" being similar to that of the impugned product of the defendant, both also having as its contents "Methylcobalamin" and the other "GABAPIN NT" being again similar to the other product of the defendant "GABAMIN NT", each adding the chemical compound "Nortriptylin" to the prime ingredient "Gabapentin". It was for the defendant to disclose as to what were the ingredients of its products.
12. There is no merit in the submission that plaintiff concealed the facts relating to trademark registration application submitted by the defendant in 2006. On the contrary, as noted earlier, clear averments in this regard have been made. Rather, the defendant has not come with a clear answer to the allegation of the plaintiff with support of any cogent material, that it had actually, not submitted a detailed counter statement to the opposition by the plaintiff to its registration application in 2010. In absence of any clear document to that effect, it has to be assumed that the defendant did not follow up on its trademark registration application submitted in 2006 and, thus, assumably it launched its product, may be in 2006, without any registration of the trademark.
CS (Comm) 631/2016 Page 7 of 1013. At this stage, it is not possible to reach a conclusive decision as to whether the plaintiff had been aware, prior to May 2016, of the defendant having launched the impugned products in the market since 2006. Filing of an application for registration of the trademark, which concededly indicated that the applicant only proposed to use such trademark, does not ipso facto mean that the applicant has introduced its product in the market simultaneously or immediately thereafter. The objections of laches and acquiescence, in this view, also cannot come to the aid of the defendant at this stage.
14. The defendant has not challenged the validity of the registration of the plaintiff‟s mark and therefore, cannot ordinarily raise objections on the ground that prefix used therein is generic in nature. It is not permissible for the mark to be split up to compare them. The two marks, when compared as a whole, clearly bring out the phonetic and deceptive similarity of the one used by the defendant as compared to that of the plaintiff. This, by itself, would justify the grant of an ad interim injunction. [see Amritdhara Pharmacy Vs. SatyaDeo Gupta, AIR 1973 SC 449 and Novartis AG Vs. Crest Pharma Pvt. Ltd., IA No.5495/2008 in CS (OS) 851/2008 decided on 27.07.2009].
15. Since both products fall under the same class (medicinal and pharmaceutical preparations) meant for same ailments, the trade channels for the two products also being similarly common, the possibility of confusion amongst the two drugs for the end users being real, the registered trademark in relation to the medicinal products of the plaintiff merit higher protection. [see Cadila Healthcare Ltd. Vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73].
CS (Comm) 631/2016 Page 8 of 1016. In this view, the plaintiff has made out a prima facie case in its favour. Since it has been the prior user of the trademark, since 1997, the balance of convenience also lies in its favour. The interim relief if not granted is likely to result in irreparable losses to the plaintiff. Therefore, a case for an ad interim injunction as prayed has been brought home.
17. The defendant had entered appearance at the outset, even before summons in the suit or notice on the application were issued. Thus, when prayer for ad interim injunction was pressed, at the initial stages, (this, prior to the filing of the pleadings by the defendant), the matter was heard in light of oral submissions of the defendant. By order passed on 31.05.2016, the court inter alia directed as under :-
"...Accordingly, till the next date, without prejudice to the rights and contentions of either party, the defendants are restrained from using the mark, „GABAMIN-NT‟. The defendant may, however, in place of the said mark, use the mark, „GABAMIN-NOR‟. The use of the said mark shall be such that „GABAMIN‟ and „NOR‟ are in the same font and size..."
18. In view of the observations recorded above, in substitution of the said earlier order, while allowing the application under Order 39 Rule 1 and 2 CPC, a temporary injunction is issued against the defendant, its partners, directors, promoters, shareholders, managers, assigns, successors-in-interest, licensees, franchisees, subsidiaries, representatives, servants, distributors, agents, employees, associates, jointly and severally, restraining them during the pendency of this suit from infringing the plaintiff‟s registered trademark "GABAPIN"
CS (Comm) 631/2016 Page 9 of 10having TM No.772893 and restrain them from using the mark "GABAMIN" and / or "GABAMIN NT" or any other word(s) identical or deceptively similar thereto, singularly or in conjunction with any other words or monogram / logo as a trade mark, service mark, trade name, trading style, or in any other manner whatsoever.
19. The application stands allowed in above terms.
(R.K. GAUBA) JUDGE JANUARY 25th, 2017 yg CS (Comm) 631/2016 Page 10 of 10