Madras High Court
M/S.Apex Laboratories Private ... vs Macleods Pharmaceuticals ... on 5 July, 2021
O.S.A.(CAD) Nos.141 and 142 of 2021
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 05.07.2021
CORAM :
THE HON'BLE MR.SANJIB BANERJEE, CHIEF JUSTICE
AND
THE HON'BLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
O.S.A. (CAD) Nos.141 and 142 of 2021
M/s.Apex Laboratories Private Limited,
29, III Floor, SIDCO Garment Complex,
Guindy, Chennai – 600 032
rep. by its Authorised Signatory
D.Jude F.L.S.Durai Pandian ... Appellant
in both appeals
Vs.
Macleods Pharmaceuticals Limited,
304, Atlanta Arcade, Marol Church Road,
Near Leela Hotel, Andheri Kurla Road,
Andheri (East),
Mumbai – 400 059. ... Respondent
in both appeals
PRAYER: Appeals filed under Section 13 of the Commercial Courts Act,
2015 against the order dated 23.02.2021 passed in O.A.Nos.418 and
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O.S.A.(CAD) Nos.141 and 142 of 2021
For Appellant : Mr.R.Sathishkumar
For Respondent : Mr.P.S.Raman
Senior Counsel
for M/s.Madhan Babu
COMMON JUDGMENT
(Delivered by the Hon'ble Chief Justice)
These appeals arise out of a common judgment and order
dated February 23, 2021 passed at the final stage of an
interlocutory application in a suit for infringement and passing off.
2. The plaintiff is the appellant herein. The plaintiff is the
registered owner of the word-mark BILTEN used as a medicine with
the product Bilastine as its principal component. The product is sold
as tablets and comes in strips and is described as “Bilastine Tablets
20 mg”. The defendant uses the mark BELATIN. The mark is not
registered. The defendant's product also comes as a tablet in strips
and is described as “Bilastine Tablets 20 mg”. Both products are
used as antihistamines.
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O.S.A.(CAD) Nos.141 and 142 of 2021
3. An ex parte injunction was obtained by the plaintiff on
September 18, 2020 immediately upon the suit being received.
What counted with the Court at such stage was that the plaintiff's
mark was registered and the plaintiff may have introduced the
product in the market prior to the defendant's launch or commercial
sale of the defendant's BELATIN.
4. In the impugned judgment, the trial Court noticed that
there was close proximity between the dates of application for
registration of the two marks, the launch of the products and the
commercial release thereof. Indeed, at paragraph 19 of the
impugned judgment, the following dates have been recorded:
“19. ...
The above facts throw up for further discussion the
following:
(1) that the defendant had applied for registration on
21.06.2019;
(2) that the plaintiff had applied for registration on
25.07.2019;
(3) that both the plaintiff and the defendant had
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O.S.A.(CAD) Nos.141 and 142 of 2021
given in their application forms as propose to use
their respective marks;
(4) The defendant launched their product on
31.10.2019;
(5) The plaintiff commenced commercial exploitation
in November 2019; and
(6) The defendant commenced commercial
exploitation in February 2020.”
5. The plaintiff says that the only reason furnished in the
impugned judgment for vacating the subsisting injunction is found
at paragraph 24 thereof. The plaintiff disagrees with the test
formulated in the paragraph and the distinction made between an
ordinary person seeking to purchase an article of commerce and a
medical practitioner prescribing a particular medicine or drug. In
the relevant paragraph, the trial Court has held that a different set
of parameters needs to be adopted “by not just comparing the two
products as is compared in cases of products sold off a shelf or by
comparing the similarities in names but by examining them through
the looking glass of a registered medical practitioner.” The trial
Court has reasoned that the medical practitioner would be aware of
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O.S.A.(CAD) Nos.141 and 142 of 2021
the efficacies of several available drugs in the field and would
choose an appropriate drug for the patient. What the trial Court
seems to suggest is that a medical practitioner would know the
difference between BILTEN and BELATIN while prescribing the one
or the other for a particular patient. Prima facie, such a test cannot
be completely brushed aside. However, it must also be
remembered that several similar sounding drugs or medicines may
be generic and, to such extent, they may be interchangeable and
the medical practitioner may prescribe one or the other without
making any distinction or even the pharmacist may provide one or
the other depending on the availability. In a sense, the trial Court
appears to be justified that when it is the name of a medicine or
drug, particularly one which is not available over the counter and
without a prescription, the verisimilitude of the names may not
create the kind of confusion that may occur if the product was an
ordinary article of commerce where the imperfect recollection
theory would operate with greater force.
6. The plaintiff insists that since it is evident from the
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O.S.A.(CAD) Nos.141 and 142 of 2021
documents relied upon by the parties that it was the plaintiff who
was the first to hit the market with its BILTEN tablets, the injunction
already obtained should not have been vacated. There is substance
in the plaintiff's assertion in such regard that in a fifty-fifty situation
where no injunction subsists, none may be issued if there is a
genuine defence which is made out; but where an injunction
subsists, something more must be demonstrated by the defendant
to have it vacated than a mere arguable defence.
7. The dates indicated in the relevant order are important in
such context. Both products appear to be generic as they indicate
the primary composition to be Bilastine. Both products are used as
antihistamines.
8. Ordinarily, the prior user of a product has a better right,
where user is not necessarily the prior adopter of the mark, but the
person who uses the mark with the product in the market. Again,
the test is not as high as whoever is the earlier is entitled to
protection against the other. The assessment is not made with a
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O.S.A.(CAD) Nos.141 and 142 of 2021
stopwatch, whereby an interim order is issued merely because one
of the products was launched at 12 noon and the other at 6 pm or
one was launched a week before the other was.
9. At the end of the day, the substance of the actionable
wrong is the attempt to cash in on the goodwill or the reputation of
a mark or the efficacy of the product associated with the original
mark. If such is the basis of the law in this branch, the mere fact
that a product is launched one day before or the rival product
enters the market three or four months down the line, makes little
difference.
10. The impugned judgment cannot be faulted since it finds
the rights of the parties to be so evenly balanced so as not to be
able to choose one ahead of the other for an injunction to continue,
which is the veritable knell for the product injuncted. In such
context, particularly to balance the equities, the middle path chosen
by the impugned judgment and order appears to be justified and
unexceptionable. It is generally the practice for a direction for
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O.S.A.(CAD) Nos.141 and 142 of 2021
accounts to be maintained so that in the event the plaintiff is
successful in establishing exclusivity at the time of the trial,
adequate compensation may be ascertained from the quantum of
sales of the defendant's product.
11. For the reasons aforesaid, the judgment and order
impugned dated February 23, 2021 does not call for any
interference. It is hoped that the trial Court will find time to decide
the suit as expeditiously as possible and not encourage any delay
on the part of the defendant in the trial being conducted
expeditiously.
O.S.A.Nos.141 and 142 of 2021 are disposed of without any
order as to costs. C.M.P.Nos.6361 ad 6382 of 2021 are closed.
(S.B., CJ.) (S.K.R., J.)
05.07.2021
Index : No
sasi/bbr
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O.S.A.(CAD) Nos.141 and 142 of 2021
To:
The Sub Assistant Registrar
Original Side
High Court, Madras.
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O.S.A.(CAD) Nos.141 and 142 of 2021
THE HON'BLE CHIEF JUSTICE
AND
SENTHILKUMAR RAMAMOORTHY, J.
(sasi)
O.S.A. (CAD) Nos.141 and 142 of 2021
05.07.2021
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