Delhi High Court
Allergan Inc. vs Milmet Of The Industries And ... on 29 January, 1997
Author: S K Sinha
Bench: S K Sinha
JUDGMENT
Sujit Kumar Sinha, J.
1. This is an application by the plaintiff inter alia for an order restraining the defendants from using the trade mark "OCUFLOX" in respect of their ophthalmic drug in a passing-off action.
2. The plaintiff, which is a company incorporated in the United States of America, has obtained the approval of the US Food and Drug Administration for the manufacture of an ophthalmic formulation of fluoropuinolone, of Ciprofloxacin under licence from Dallchi and Santen for the treatment of bacterial conjunctivities. The plaintiff has been marketing the said formulation under the trade mark "OCUFLOX" ("the said trade mark" for short).
3. It appears from a copy of the International Drug Directory edited by the Swiss Pharmaceutical Society that the aforesaid ophthalmic solution is manufactured and marketed under various trade marks in Germany, Switzerland, Argentina, Canada and elsewhere but under the said trade mark in the United States of America.
4. The relevant page of the said directory is at page 16 of the affidavit-in-reply of the plaintiff.
5. The first defendant which initially started business as a partnership firm has with effect from 31 March, 1995 become a Private Limited company and is carrying on business under the name of "Milmet Laboratories Pvt. Ltd." a company incorporated under the Companies Act. In the course of its business the said defendant has been manufacturing the marketing an ophthalmic preparation under the said trade mark. The said drug contains Ciprofloxacin 0.3 per cent and is licensed by the Drug Controller. The first defendant has been marketing its said drug throughout this country under the said trade mark.
6. As held by Lord Diplock in the case of Erven Warnink B. V. and anothers v. J. Townend & Sons (Hull) Ltd. (1980(97) RPC 85).
It is "possible to identify five characteristics which must be present in order to create a valid cause of action for passing off :
(1) a misrepresentation,
(2) made by a trader in the course of trade,
(3) to prospective customers of his or ultimate consumers of goods or services supplied by him,
(4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and
(5) which cause actual damage to a business or goodwill of the trader by whom the action is brought or (in a qua time action) will probably do so".
7. It is necessary therefore, for the plaintiff in a passing off action to establish that the trade mark under which his product is marketed has acquired such goodwill or reputation as to become distinctive or identifiable with his product in the country where the action is brought inter alia by long prior user of the trade mark in relation to his product and further that the use of the same or similar trade mark by the defendant has injured or is likely to injure his goodwill or business in relation to his product and he has thereby suffered or is likely to suffer actual damage to his business or goodwill. The acquisition of the said goodwill or reputation is not dependent on whether the plaintiff actually sells his product under his trade mark in the country where the action is brought. It may be acquired for instance by extensive advertising of his product under that trade mark through mass media in that country.
8. The case cited on behalf of the plaintiff also support the aforesaid proposition.
9. However, at the end of the day the question whether the defendant in the course of his trade or business has passed off his goods as those of the plaintiff and he has thereby injured the plaintiff in his business or goodwill is a question of fact which has to be established at the trial.
10. At the interlocutory stage it is necessary for the plaintiff to demonstrate prima facie that the trade mark under which his product is sold is distinctive of the said product by reason inter alia of long prior user of that trade mark in the country where the suit is instituted. If he established that, then there is a presumption of injury or damage to his business or goodwill as a corollary.
11. Upon hearing the submissions and on the basis of material disclosed at the hearing, I an prima facie satisfied that the trade mark "OCUFLOX" has not become distinctive of the ophthalmic product of the plaintiff which is admittedly a different ophthalmic produce from that marketed by the first defendant in this country. I am also not prima facie satisfied that there has been a prior user of the said trade mark by the plaintiff in relation to its product. It is also not in dispute that said product of the plaintiff has not yet been marketed here nor has any licence been obtained by the plaintiff in respect thereof from the Drug Controller to do so. On the other hand, the first defendant has obtained licence for marketing its product under the said trade mark from the Drug Controller and it has since then been marketing its product in this country.
12. For the foregoing reasons and for the ends of justice I direct the defendants to maintain separate accounts of the sales of their product which is marketed by them under the trade mark "OCUFLOX" and to furnish copies of such accounts to the plaintiff once every three months until further orders of this court.
13. The earlier ad interim order of injunction granted in favour of the plaintiff is accordingly vacated.
14. The hearing of this suit is expedited. The service of the writ of summons of waived by the defendants. The defendants shall file their written statement within a fortnight from date, cross-order for discovery within a week thereafter, inspector forthwith thereafter and the suit will appear in the appropriate list for hearing five weeks hence.
Liberty to mention for early hearing.
The application is accordingly disposed of. Cost in the cause.
The learned counsel for the plaintiff prays for stay of operation of this order. The prayer is considered and refused.
All parties are to act on a signed xerox copy of this dictated order on the usual undertaking.
15. Application disposed of.
