Lilly Icos Llc & Anr. vs Maiden Pharmaceuticals Lim.
2009 Latest Caselaw 768 Del

*               HIGH COURT OF DELHI : NEW DELHI

+                IA No.11493/2007 in CS (OS) No.1991/2007

                        Judgment reserved on :        6th February, 2009

                        Judgment pronounced on :        6th March, 2009

%    Lilly ICOS LLC & Anr.                       ...Plaintiffs
                    Through : Mr.C.M. Lall, Adv. with Ms. Kripa
                              Pandit, Adv.

                        Versus

     Maiden Pharmaceuticals Lim.                ....Defendant
                   Through : Mr. Inderdeep Singh, Adv.

Coram:

HON'BLE MR. JUSTICE MANMOHAN SINGH

1. Whether the Reporters of local papers may                        Yes
   be allowed to see the judgment?

2. To be referred to Reporter or not?                               Yes

3. Whether the judgment should be reported                          Yes
   in the Digest?

MANMOHAN SINGH, J.

1. The plaintiffs have filed the suit for permanent injunction,

infringement of trademark, passing off and rendition of accounts along

with costs.

2. The Plaintiff No.1 is a limited liability Company existing

under the laws of the State of Delaware, with its principal place of

business at 1209, Orange Street, Wilmington, Delaware, USA. The

Plaintiff No.2 is a subsidiary of Eli Lilly & Co., USA and markets

Plaintiff No.1‟s product in India.

3. The Plaintiffs allege that the Defendants has adopted the

trade mark MCALIS which is deceptively similar to the Plaintiff‟s well

known trade mark CIALIS. Also, the CIALIS Tablet Trade Dress

including distinctive yellow almond shaped tablet with inscription C20

and distinctive CIALIS Swirl have been allegedly copied by the

Defendants.

4. It is alleged that the Plaintiff No.1 is the owner of trade mark

CIALIS worldwide, including India. Products under trade mark CIALIS

are marketed and sold in Europe and North America by Plaintiff No.1

and in the rest of the world by Eli Lilly & Co., USA. This company was

founded in May, 1876 with the commitment of manufacturing

pharmaceutical products of the highest possible quality. It employs more

than 43,000 people worldwide and its products are available in more

than 158 countries. In India, its subsidiary has been working since 1993

and employs over 500 people.

5. The Plaintiffs further allege that in September 1998, Lilly

and ICOS formed the Plaintiff No.1 for the purpose of developing,

manufacturing, promoting and selling pharmaceutical preparations for

the treatment of male erectile dysfunction. The active ingredient in these

preparations is tadalafil, which has been patented in numerous countries

worldwide by the Plaintiff No.1 and its members.

6. In July 2001, the Plaintiff No.1made public its decision to

use the CIALIS trade mark to identify its innovative pharmaceutical

product. The Plaintiff has filed a sample of some early media coverage

of its CIALIS product. The Plaintiff developed a unique packaging with

unusual artwork, referred to as the „Cialis Swirl‟. A sample of the same

has also been filed. The tablet sold under trademark CIALIS was given a

unique and unusual shape of an almond and colour of light yellow.

7. The abovementioned product is now on sale in 57 countries.

Since its introduction in 2003, the Plaintiffs have sold more than 25

million tablets of the CIALIS drug around the world.

8. The Plaintiff No.1‟s trademark CIALIS has been registered

and/or is pending registration in more than 141 countries and has

already been registered in 117 countries.

9. In India, the Plaintiff No.1 is the registered proprietor of the

trade mark CIALIS and distinctive CIALIS tablet shape, the details

are :-

Trademark No.          Class Date             Goods

Cialis     1291814 5           22.06.2004     Pharmaceutical         and
Tablet                                        medicinal preparations for
with the                                      the treatment of sexual
alphabet C                                    dysfunction;
                                              pharmaceutical         and
                                              medicinal preparations for
                                              prevention    of    sexual
                                              dysfunction
CIALIS      887649     5       22.11.1999     Pharmaceutical         and
                                              medicinal preparations for
                                              the treatment of sexual
                                              dysfunction;
                                              pharmaceutical         and
                                              medicinal preparations for
                                              prevention    of    sexual
                                              dysfunction.
Cialis    1291990 5            23.06.2004     Pharmaceutical         and
Tablet                                        medicinal preparations for
Shape „C‟                                     the treatment of sexual
20                                            dysfunction;
                                              pharmaceutical         and
                                              medicinal preparations for
                                              prevention    of    sexual
                                              dysfunction.



 Cialis        1153781 5         27.11.2002      Pharmaceutical         and
Swirl                                           medicinal preparations for
                                                the treatment of sexual
                                                dysfunction;
                                                pharmaceutical         and
                                                medicinal preparations for
                                                prevention    of    sexual
                                                dysfunction.
C 20          1291813 5         22.06.2004      Pharmaceutical         and
                                                medicinal preparations for
                                                the treatment of sexual
                                                dysfunction;
                                                pharmaceutical         and
                                                medicinal preparations for
                                                prevention    of    sexual
                                                dysfunction.

10. It is stated in the plaint that by virtue of registration, the

Plaintiff No.1 has exclusive right to use the aforesaid trade marks with

regard to the goods in lieu of which they are registered. By virtue of

Section 31 of the said Act, original registration is prima facie evidence

as to its validity.

11. As alleged by the plaintiff, the worldwide revenue in US

Dollars of said product is as follows:-

2003- Over 200 million

2004- Over 550 million

2005- Over 740 million

2006- Over 970 million.

12. The contention of the plaintiffs is that the trade mark CIALIS

has been featured in number of publications in India including Times of

India, Indian Express and Hindu. By virtue of such extensive use

started in January 2003 the trademark CIALIS and CIALIS Swirl with

the trade dress of the tablet have become well known and closely

associated with the goods of the plaintiffs. In India, the plaintiff No.2

has been granted marketing approval on 11 th September, 2003 by the

Drug Controller General of India to import and market the drug and to

launch the drug in India on or about 30th September, 2004.

13. The plaintiffs came to know about the defendant‟s activities

when the defendant‟s application No.1386462 in Class 5 for registration

of the trade mark MCALIS was published in the trademark Journal. The

said application was duly opposed by the plaintiffs. It is further alleged

in the plaint that the defendant has a website in the name of

www.maidenpharma.com in which the product MCALIS and visual

representation disclosed that the defendant has not only copied the

similar trade mark CIALIS but has also copied the CIALIS Swril and

trade dress of the tablet, therefore, the present suit has been filed. It is

also alleged that the defendant is a habitual infringer of the brand name

of other parties also. According to the plaintiffs the Plaintiff No.1 is the

registered proprietor of the trade mark CIALIS and distinctive trade

dress of CIALIS tablet and CIALIS swril device and since the

defendant has blatantly copied the plaintiff‟s trade mark/trade dress of

the tablet and swril device and, therefore, the defendant is guilty of

infringing the registered trade mark as well as passing off their goods as

that of the plaintiff. The contention of the plaintiffs is that the two trade

marks CIALIS and MCALIS are deceptively similar and, therefore, it is

a classic case of infringement of trade mark.

The defendant has raised the defence that the defendant had

decided to produce the product MCALIS in the year 2004 after getting

the approval of Drug Licensing Authority and that there is no similarity

between the plaintiff‟s and defendant‟s goods and there are large

number of distinctive dissimilarities. The defendant is exporting its

goods with due permission of the authorities.

INFRINGEMENT OF TRADE MARK

14. The action for infringement is a statutory remedy under

Section 28 of the Trade Marks Act, 1999 the person who is the

registered owner of the trademark has the exclusive right to use the said

mark and he can obtain relief in respect of infringement of trademark

in the manner provided by this Act. As per Section 29 of the Trade

Marks Act, 1999 infringement is established if the other side uses either

an identical with or deceptively similar mark to the registered

trademark in such a manner as to render the use of the mark likely to be

taken as being used as a trade mark. As per Section 31 of the Trade

Marks Act, 1999 registration is the prima facie evidence of validity.

The definition of Trademark is given in Section 2(m) read with Section

2(z)(b) which clearly indicates that any word in relation to goods for

the purpose of indicating a connection in the course of trade can

become a trademark.

15. It is well established law that the trademark of the defendant

is to be compared as a whole. It is submitted that the registered

trademark of the plaintiff cannot be split while comparing it with the

trademark of the defendant.

16. In the case reported at AIR 1971 SC 898 at page No.903

National Bell Co. Vs. Metal Goods Manufacturing Co. Ltd., it was

observed as under:

"on registration of a trade mark the proprietor gets under Section 28 the exclusive right to the use of such trade mark in relation to goods in respect of which the trade mark is registered and to obtain relief in respect of any infringement of such trademark."

17. Again, in the case reported at AIR 1986 SC 137 Page 137

American Home Products Corporation vs. Mac Laboratories Pvt.

Ltd. at page 155 it was observed as under :

"When a person gets his trade mark registered he acquires valuable rights by reason of such registration."

18. Similar observation was made by the Apex Court in another

case reported at AIR 1965 SC 980 Durga Dutta Sharma Vs. N.P.

Laboratories at page 989 and 990 (para 28).

19. Also, in the case reported at AIR 1991 Delhi 22 M/s. Avis

International Ltd. vs. Avi Footwear Industries and Anr. it was

observed as under :

"Statutory registration establishes prima facie case in favour of the plaintiff."

20. In the cases of Automatic Electric Limited vs. R.K. Dhawan

and Anr. 1999 PTC (19) 81 (para 15); and 1963 Madras page 12 head

note S.A.P. Balraj and Ors. vs. S.P.V. Nadar and sons and another, it

was held that validity of the trademark cannot be challenged.

21. In the case of Durga Dutt Sharma vs. N.P. Laboratories

AIR 1965 SC 980 at page 990 para 28, it was held by the Apex Court

that only marks are to be compared in action for infringement and it is

immaterial if the packing material used by both the parties are

different.

22. In another case reported in Amritdhara Pharmacy vs.

Satya Deo Gupta, AIR 1963 SC 449, the Apex court on Page 458 and

Para 9 has observed as under:-

"We agree that the use of the word „dhara‟ which literally means „current or stream‟ is not by itself decisive of the matter. What we have to consider is the overall similarity of the composite word, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description....A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names...."(pg 458 para 9).

SIMILARITY OF THE MARKS

23. In the case of Parle Products (P) Ltd. vs. J.P. & Co.,

Mysore, AIR 1972 SC 1359 in para 8 it was held as under :

"8. According to Karly‟s Law of Trade Marks and Trade Names (9th Edn., para 838):

"Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own."

24. The main question in issue is if defendant‟s mark MCALIS

used in connection with the same goods is identical with or deceptively

similar to the registered mark CIALIS of the plaintiffs or the said

trademark MCALIS used by the defendant will thereby lead to the

deception of the mark of the plaintiff. The following are the recent

decisions given by the various High Courts on the similar situation of

the matter:-

a. 1996 PTC 44 American Home Products Corpn. Wyeth Lab Ltd vs. Lupin Lab Ltd - Plaintiff was the registered proprietor of the trademark ROLAC in respect of medicinal preparations. The defendants were selling analgesic tablets under the trademark TOROLAC. The counsel for the defendant contended that the prefix "TO" plays a very important role in judging the visual, phonetic or structural dissimilarity between the two marks and that the prefix "TORO" in emphatic and catchy and it distinguishes the defendant‟s trademark TOROLAC from the registered trademark ROLAC. The Hon‟ble Court did not agree to the contentions of the defendant and Injunction was granted in favour of the plaintiff.

b. 1998 (1) Arb L.R. 61 Anglo-French Drugs & Industries Ltd vs Eisen Pharmaceutical Company - Plaintiff registered proprietor of the marks BEPLEX and BEPLEX-ZEE. Defendant adopted the mark ZEEPLEX. The counsel for the defendant contended that there are a large number of vitamin tablets in the market with the suffix "PLEX" and that this suffix has now become common to the trade. The Hon‟ble Court did not agree to the contentions of the defendant and Injunction was granted in favour of the plaintiff.

c. PTC (Suppl)(1) 600 Simatul Chemical Industries Pvt Ltd vs Cibatul Ltd - Name CIBATUL forms part of the name of the

plaintiff company. The name SIMATUL forms part of the name of the defendant company. The defendant contended that the name SIMATUL was invented as a result of the combination of two names - Sima, the name of the daughter of the younger brother of the Managing Director and Atul, the name of the son of the Managing Director. The Hon‟ble Court held that the two names are deceptively similar and the plaintiff was entitled to the relief as claimed by the plaintiff.

d. 2004 (28) PTC 456 (Del) Pfizer Ireland Pharmaceuticals vs Intas Pharmaceuticals and Anr - Plaintiff adopted the mark LIPITOR. The defendant was using the mark LIPICOR. The counsel for the defendant contended that no case for interim injunction is made out since the word "LIPI" is a generic word common to the trade and stands adopted by many companies and that no one could have any exclusive monopoly over such words which have become "publici juris". He further contended that the words "TOR" and "COR" are not deceptively similar. The Hon‟ble Court observed that when similarity, whether visually or phonetically is judged and considered, the entire word has to be taken as whole and injunction was granted as there was deceptively similarity between the two marks.

e. 2003 PTC 425 Wockardt Limited vs Patiala Medical Agencies & Anr - Plaintiff was the registered proprietor of the trademark ANALGON. The defendant adopted the mark PALGON. Injunction was granted.

f. 47 (1992) DLT 412 Tata Ion & Steel Co Ltd vs Mahavir Steels

- Plaintiff was the registered proprietor of the mark TISCO. The defendant adopted the mark FISCO. The counsel for the defendant contended that the suffix "ISCO" is commonly used in the trade and therefore the same has become juris publics. He further contended there are a number of firms/ companies which are using phonetically similar trade names to the trademark TISCO and that in view of the wide use of suffix "ISCO" by

traders, the defendants cannot be stopped from using "ISCO" as their trade mark. The court rejecting the contentions raised by the defendant held that the defendant had infringed the registered mark of the plaintiff.

g. 2004 (1) CTMR 398 (Delhi) Syncom Formulations (India) Ltd vs SAS Pharmaceuticals - The respondent / plaintiff was the proprietor of the mark REGULIN and REGULIN FORTE. The appellant / defendant adopted the mark REGU - 30. The counsel for the appellant contended that the cartons are completely different and that there is no similarity between the words REGU- 30 used by the appellant and the words REGULIN FORTE used by the respondents. Held that the two marks were deceptively similar and the appeal was dismissed.

h. 2004 (1) CTMR 425 (Delhi) Charak Pharma Private Limited vs Prashi Pharma Private Limited - Plaintiff was manufacturing and marketing pharmaceutical preparations under the mark "M2 Tone". Defendant manufacturing and marketing medicinal preparations under the mark "MV Tone". The counsel for the defendant contended that the defendant‟s product under the trademark "MVTONE" is only a tonic which could be sold over the counter whereas the product of the plaintiff under the trademark "M2TONE" is a product for Gynaecological problem and could be sold only upon a prescription given by the doctor. The Hon‟ble Court did not accept the contentions raised by the defendants and held that both marks were phonetically and visually similar and injunction was granted in favour of the plaintiff.

i. 2002 PTC 580 Torrent Pharmaceuticals Ltd vs The Wellcome Foundation Ltd - TROVIREX and ZOVIREX held to be phonetically and visually similar.

j. AIR 1992 Bombay 35 Astra-IDL Limited vs TTK Pharma Limited - The plaintiff was the registered proprietor of the trade mark BETALOC. The defendant adopted the trademark

BETALONG. The counsel for the defendant contended that in coining its trade mark for its said product it took the word „Beta‟ as representing „beta receptors‟ and coined it with the word „long‟ representing the longer duration for which it blocks or controls the action of the said hormones of beta receptors. He further contended there are a number of similar products in the market which are sold under the trademark beginning with the word „Beta‟. The Hon‟ble Court did not accept the contentions raised by the defendants and injunction was granted in favour of the plaintiff.

25. In view of the settled law, it is clear that there is a striking

similarity and affinity of sound between the word CIALIS and

MCALIS. I am satisfied that in case the defendant is allowed to use the

trademark Mcalis, there will be a real danger of confusion between the

two marks. The burden of proof always lies upon the party who alleges

that the mark adopted is not likely to deceive or cause confusion.

PUBLIC INTEREST

26. In the case of Cadila Healthcare vs. Cadila

Pharmaceuticals Ltd, 2001 PTC 300 SC it is observed by the Apex

court as under:-

"Public interest would support lesser degree of proof showing confusion similarity in the case of trade mark in respect of medicinal product as against other non medicinal product. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient." (pg 317).

"....Where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non medicinal products. A stricter approach should be adopted while applying the test of possibility of confusion of one medicinal product for another by the consumer.....The confusion as to the identity of the

product itself could have direct effects on the public health" (pg 318).

27. In the case of Milment Oftho Industries Allegran Inc the

Hon‟ble Supreme Court has held:-

"....Nowadays the field of medicine is of an international character" (pg 588, para 9).. "the ultimate test should be show is first in the market"....The mere fact that the respondents have not been using the mark in India would be irrelevant if they were the first in the world market" (pg 589 para 10)."

DELAY, IF ANY

28. In the case of Midas Hygiene Industries P. Ltd. & Anr.

Vs. Sudhir Bhatia & Ors.; 2004 (28) PTC 121 (SC) it was held as

under :

".....in the case of infringement either of Trade Mark or of Copyright normally an injunction must follow. Mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The grant of injunction also becomes necessary if it prima facie appears that the adoption of the Mark as itself dishonest." "...glace at the cartons used by both the parties shows that in 1992 when the Respondent first started he used the mark LAXMAN REKHA in cartons containing colours red, white and blue. No explanation could be given as to why that carton had to be changed to look almost identical to that of the Appellant at a subsequent stage. This prima facie indicates the dishonest intention to pass off his goods as those of the Appellants."

29. The defendants have not placed any cogent evidence before

this court in order to establish that they are using the trade mark

MCALIS since the year 2004. I am of the considered view that the

defendant has no justification whatsoever to adopt and use the

deceptively similar trade mark with the swril device as well as the trade

dress of the tablet. The defendant has also not disputed the fact that

they have used the same in their website even after passing of the ad

interim order. The conduct of the defendant under the said

circumstances is totally malafide with the intention to deceive the public

at large. At the same time the defendant has violated the ex parte ad

interim order granted by this court on 5th October, 2007.

In the result, the ex parte ad interim injunction granted by

this Court on 5th October, 2007 is made absolute.

MANMOHAN SINGH, J March 06, 2009 sd/sa