Delhi High Court - Orders
Alkem Laboratories Ltd vs Dr Reddys Laboratories Ltd. & Ors on 12 October, 2021
Author: Jayant Nath
Bench: Jayant Nath
$~OS-28
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ CS(COMM) 506/2021 & IA 13364/2021
ALKEM LABORATORIES LTD ..... Plaintiff
Through Mr.Sandeep Sethi, Sr.Adv. with
Ms.Ishani Chandra, Mr.Sagar
Chandra, Ms.Shubhie Wahi and
Ms.Sanya Kapoor, Advs.
versus
DR REDDYS LABORATORIES LTD. & ORS. ...Defendants
Through Mr.Parag P.Tripathi, Sr.Adv. with
Mr.Pranav Sapra and Mr.Gaurav
Mannuja, Advs. for D-2.
CORAM:
HON'BLE MR. JUSTICE JAYANT NATH
ORDER
% 12.10.2021 IA Nos.13365-13367/2021(exemption) Applications are allowed, subject to all just exceptions. CS(COMM) 506/2021 Let the plaint be registered as a suit.
Issue summons. Learned counsel for the defendants accepts notice. Pleadings be completed within the statutory period.
IA No.13364/20211. This application is filed by the plaintiff under Order 39 Rules 1 and 2 CPC seeking an ex-parte interim injunction to restrain the defendants, their directors etc. from manufacturing, selling, offering for sale, exporting, advertising etc. any pharmaceutical or medicinal preparation or any such allied and cognate goods under the impugned marks 'Doctor PAN- D'/'Doctor PAN'/'Dr.Pan' or any other mark identical and/or deceptively similar to the plaintiff's marks 'PAN-D' and 'PAN Family of Marks' or doing any other act which tantamounts to infringement of the plaintiff's PAN Family of Marks' registered in Class 5, passing off, dilution etc.
2. The case of the plaintiff is that it adopted the mark 'PAN-40' in 2000 and has been used continuously and uninterruptedly by the plaintiff since then for medicinal and pharmaceutical preparations. The plaintiff has a wide array of products which are being manufactured and marketed under the trademark 'PAN' which includes PAN-40, PAN-20, PAN-20 MD etc.(hereinafter referred to as 'PAN Family of Marks'). The plaintiff obtained registration of the mark PAN-40 on 20.01.2000, the mark PAN- 20 was registered on 20.01.2000, and the mark PAN-20 MD was registered on 09.02.2010 and so on. In 2004, the plaintiff adopted the most successful variant of the PAN Family of Marks, i.e. the trademark/brand 'PAN-D'. The mark PAN-D has been continuously, extensively and uninterruptedly used for pharmaceutical, medicinal and ayurvedic preparations and substances.
3. In and around September, 2021, it is stated that the plaintiff was shocked when a representative of the plaintiff came across the products of the defendants bearing the marks 'Doctor PAN- D' and 'Doctor PAN'. It is stated that the same are identical/deceptively similar with the plaintiff's marks 'PAN-D' and 'PAN Family of Marks'. Further, the ingredients of the plaintiff's product 'PAN- D' and the defendants' impugned product 'Doctor PAN-D' are identical, namely, Pantoprazole and Domperidone. Similarly, the ingredients of the plaintiff's product 'PAN-40' and the defendants' impugned product 'Doctor PAN' are also identical. Defendant No.1 has also applied for registration of the impugned mark 'Dr.Pan' on 02.12.2019 on a proposed to be used basis in Class 5. The said mark is currently objected to. Similarly, defendant No.1 has also applied for registration of the impugned mark 'Doctor PAN' on a proposed to be used basis in Class 5 on 03.02.2021.
4. The products of the defendants are reproduced in the plaint as the follows:
Impugned Product 'Doctor PAN-D' Impugned Product 'Doctor PAN'
5. When the matter came up for hearing on 11.10.2021, it was suggested by the court that the parties may try and settle the matter.
6. Today, learned senior counsel for the defendants has made some suggestions which have not found favour with the plaintiff.
7. Learned senior counsel for the defendants who was appeared on receipt of an advance copy of the paperbook has strongly urged that the word 'PAN' is derived from the ingredient 'Pantoprazole' and 'Domperidone'. Hence, it is urged that the said expression is publici juris. It is urged that in the trade of drugs, it is common practice to name a drug on the basis of the name of his active chemical compound or salt or disease it seeks to remedy. Reliance is placed on the judgment of the Division Bench of this court Schering Corporation & Ors. v. Alkem Laboratories Ltd., MANU/DE/3179/2009, judgment in the case of AstraZeneca UK Ltd. & Anr. v. Orchid Chemical & Pharmaceutical Ltd., MANU/DE/0869/2007, and the judgment in the case of Bharat Biotech International Ltd. v. Optival Health Solutions Pvt. Ltd. & Anr. MANU/DE/1102/2020 to support the above contention.
8. Learned senior counsel for the plaintiff has relied upon the judgment of the Supreme Court in the case of Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited, 2001(5) SCC 73, judgment of the Division Bench of this court in the case Himalayan Drug Company v. SBL Ltd., 2012 SCC OnLine Delhi 136, and the judgment of this court in IREO Pvt. Ltd. v. Genesis Infratech Pvt. Ltd., 2014 SCC OnLine Delhi 1162 to counter the submission of the defendants.
9. The fact is that the plaintiff has admittedly been using the 'PAN' set of marks since 2000. Number of its marks including PAN- D, PAN -40 and PAN- 20 are registered for a long time. On the other hand, the defendants have recently entered the market with their product 'Dr.PAN' and 'Dr.PAN D'. The trademark sought to be used by the defendants is quite similar to the trademarks being used by the plaintiff.
10. Heavy reliance was placed by learned senior counsel for the defendants on the judgment of the Division Bench in Schering Corporation & Ors. v. Alkem Laboratories Ltd. (supra) to plead that Dr.PAN is 'publici juris'. That case pertained to the marks of the appellant 'TEMODAL' and 'TEMODAR'. The respondent was using the mark 'TEMOKEM' and 'TEMOGET', which was in relation to the pharmaceutical product the active ingredient of which was TEMOZOLOMIDE. The court has held as follows:
"50. The concept of 'public', for the purpose of determining whether a word is publici juris for an article or thing would depend on what that article or thing is. For example, if the article or thing is one typically belonging to the field of aeronautics, the knowledge of the general public i.e. the common man on the street, of the meaning of the word would not be relevant. The meaning of the word would have to be gathered from the knowledge of the 'public' knowledgeable in the field of aeronautics, to determine whether the word is publici juris for the article or thing for which it is claimed to be publici juris. Similarly, to determine whether 'TEM'/'TEMO' is publici juris for TEMOZOLOMIDE, the query would have to be directed to those who would normally be expected to have knowledge of what TEMOZOLOMIDE and 'TEM'/'TEMO' mean. If people engaged in the treatment of, and research in the field of brain cancer use the word 'TEM'/'TEMO' for TEMOZOLOMIDE, in our view, it would be fair to conclude that 'TEM'/'TEMO' are publici juris for TEMOZOLOMIDE.
51. The submission of the appellants that 'TEM'/'TEMO' is not generic/publici juris for TEMOZOLOMIDE because it is not notified as a INN STEM or is not listed as one of the radical groups by the WHO; that it is not so mentioned in a standard dictionary or medical dictionary is fallacious, as it proceeds on the assumption that for a medicine related word/term to become publici juris, it must either to listed as an INN Stem or a radical group by the WHO or by a standard dictionary or medical dictionary. There is nothing to suggest that these sources are exhaustive of medical terms which are publici juris. Whether or not a medical term is publici juris is an issue of fact, which would have to be established at the trial of the suits. At this stage only a prima facie view has to be formed, which is not the final view. Therefore, if there is some material available to show that TEM/TEMO has been used to describe TEMOZOLOMIDE or any other chemical compound, TEM/TEMO would, prima facie, be publici juris.
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61. TEMO has been used for TEMOZOLOMIDE by several parties apart from the respondents, namely, Cipla Limited, who use the brand name 'TEMOSIDE', Netco Pharma Limited, who use the brand name 'TEMONET' and Dabur Pharma Limited, who use the brand name 'TEMOZEM'. There are a number of other similar marks with the prefix TEM/TEMO for drugs, which are present in the market. The appellants have themselves pointed out that TEM/TEMO is contained as a part of the trade mark of a variety of different pharmacological groups, such as
(i) TEMSIROLIMUS (an anti kidney-cancer agent); (ii) TEMOPORFIN (a photosensitizing anti cancer agent like TEMOZOLOMIDE); (iii) TEMOCILLIN (antibiotic); (iv) TEMOCAPRIL (anti hypertensive). We may also notice that from the documents filed by the appellants it appears that there are various other drugs having the prefix TEM/TEMO such as TEMARIL- trademark for preparations of trimeprazine tartrate;
TEMAZEPAM- a benzodiazepine used as a sedative and hypnotic in the treatment of insomnia, administered orally; TEMEFOS- USAN for temephos; TEMEPHOS- an organophosphorous insecticide used a a larvicide for control of mosquitoes and blackflies and as a veterinary ectoparasiticide; TEMODOX- a veterinary growth stimulant; TEMOVATE- trademark for preparations of clobetasol propionate.
62. It has been repeatedly recognized that in the trade of drugs it is a common practice to name a drug on the basis of the name of its active chemical compound or salt, or the disease it seeks to remedy, or the particular organ it is intended to treat. The name of such an ingredient or compound, ailment or organ being in the public domain and of generic nature, which has been used descriptively, cannot be claimed by anyone for use exclusively as only his/her trademark.
63. From the materials produced by the respondent, it is evident that TEM/TEMO have been employed in place of TEMOZOLOMIDE or as abbreviations for certain other medicines. No doubt TEM/TEMO have also been used in place of 'TEMODAL' and 'TEMODAR'. However, there is nothing to suggest that TEM/TEMO mean, and only mean, TEMODAL/TEMODAR and nothing else. Even when TEM/TEMO is used in relation to 'TEMODAL' and 'TEMODAR', the reference is actually to the chemical compound TEMOZOLOMIDE, which is the active ingredient in 'TEMODAL' and 'TEMODAR'.
64. Consequently, in our view, prima facie the word fragment TEM/TEMO is publici juris and also generic for and descriptive of the chemical compound, TEMOZOLOMIDE, and, therefore, the appellants cannot claim the exclusive right to use thereof. The decision in Astrazeneca (supra) has rightly been held to apply on all fours to the cases in hand."
11. Hence, court recorded a finding that prima facie the word TEM/TEMO is publici juris and also generic and descriptive of the chemical compound, TEMOZOLOMIDE and a stay was not granted.
12. In my opinion, the plea of the defendants is wholly answered by the judgment of the Division Bench of this court in Himalayan Drug Company v. SBL Ltd. (supra). That was a case in which allegation was for infringement of the trademark 'Liv.52' by use of trademark 'LIV-T' by the defendant. The case of the defendant was that the word 'LIV' is generic and common to the trade as the medicines in question manufactured and marketed by both the parties are meant for treatment of liver. The court noted as follows:
"43. Both parties have given the list of the cases which are decided by various High Courts including this High Court. The details of few relevant cases are given as under:
Sr. Case Name Citation Name of Compound Allowed/Restrained No. Drug by the of Origin parties
(i) Anglo-French AIR 1984 Beplex (P) Vitamin-B Injunction granted Drug Co. P&H 430 Belplex (D) Complex (Eastern) (DB) Ltd. v. Belco Pharma
(ii) Allegran 1999 (19) Ocuflox Ocu-ocular Injunction granted Inc. v. Milment PTC 160 Ocuflox Flox-
Oftho Inds. (Cal) (DB) Ciprofloxac
in
(iii) Astra-ldl AIR 1992 Betaloc (P) Beta Injunction granted
Limited v. Ttk Bom 35 Betalong(D) receptors -
Pharma Limited arteries -
drug was to
work on this
part of body
(iv) Medley 2002 (25) Spoxin (P) Sparfloxaci Injunction granted
Laboratories (P) PTC 593 Supaxin(D) n
Ltd. v. Alkem (Bom.)
Laboratories (DB)
Limited
(v) Sun 2010 (43) VENIZ (P) Venlajaxine Injunction granted
Pharmaceutical PTC 483 VENZ (D)
Industries v. Ca (Mad) DB
dila Healthcare
Ltd.
(vi) Apex 2006 (33) ZINCOVIT Zinc Injunction granted
Laboratories PTC 492 (P)
Ltd. v. Zuventus (Mad) DB ZINCONIA
Health Care Ltd. (D)
(vii) Torrent MANU/GJ CIBA (P) CLIMETID Appeal allowed
Laboratories /0344/199 ULCIBAN INE Trade mark granted
Ltd. v. Ciba- 8 (DB) (D)
Geigy Ltd.
(viii) United 2012 (5) ORZID (P) CEFTAZID Division Bench
Biotech v. Orchi PTC 433 FORZID IME used to held marks are
d Chemicals & (Del.) (D) treat many similar
Pharmaceuticals (DB) kinds of
Ltd. bacterial
infections
(ix) Pankaj 2008 (38) RASMOLA Digestive Appeal dismissed
Goel v. Dabur PTC 49 (A) tables Injunction granted
India Ltd. (Del.) HAJMOLA
(DB) (R)
(x) Arvind 2007 (35) EYETEX Eye Lotion Injunction granted
Laboratories v. PTC 244 (P)
Hahnemann (SJ) EYELEX
Laboratory Pvt. (D)
Ltd.
(xi) USV 2003 (26) PIOZ (P) Pioglitazone Injunction granted
Limited v. IPCA PTC 21 PIOZED Hydrochlori
Laboratories (SJ) (D) de
Limited
(xii) Aravind 1981 (1) EYETEX Eye Tonic Injunction granted
Laboratories v. MLJ 75 (P)
V. Annamalai (SJ) EYESOL
Chettiar (D)
(xiii) Schering 2010 (42) TEMOKEM Temozolom Injunction refused
Corporation v. PTC 772 (P) ide
Alkem (Del) DB TEMOGET
Laboratories (D)
Ltd.
(xiv) Astrazenecea 2007 (34) MERONE Meropenem -do-
UK PTC 469 M (P)
Ltd. v. Orchid (DB) MEROMER
Chemicals (Del.) (D)
(xv) Novartis v. Wan 2005 (31) TRIAMINI SYAMPAT Injunction refused
bury Ltd. PTC 75 C (P) HOMIMET
(Del.) CORIMINI IC DRUGS
C (D)
(xvi) Aviat Chemicals 2001 PTC LIPICARD Lipid Injunction refused
Pvt. Ltd. v. Intas 601 (Del.) (P) Correctiv
Pharmaceuticals LIPICOR Medicines
(D)
(xvii) Serum Institute of 2011 (47) ONCO Bacillus Injunction granted
India PTC 452 BCG(P) Calmette
Limited v. Green (Bom) (SJ) BCG Guenn
Signal Bio ONCO
Pharma Pvt. Ltd. BP(D)
(xviii) Wyeth Holdings 2008 (36) FOLVITE Folic Acid Injunction granted
Corporation v. Bu PTC 478 (P) Vitamin
rnet (Bom) (SJ) FOLV(D)
Pharmaceuticals
(Pvt.) Ltd.
(xix) Wyeth Holdings 2004 (28) PACITANE Trihexyl- Injunction granted
Corp. v. Sun PTC 423 (P) phenidyl,
Pharmaceuticals (Bom) (SJ) PARIKTAN Anti
Industries Ltd. E (D) Spasmodic
Preparations
(xx) Boots Company 2002 (4) BRUFEN Ibuprofen Registration
Pic v. Registrar of Bom. CR (P) rejected
Trade Marks 36 (SJ) CROFEN
(D)
(xxi) Medley 2002 (4) SPOXIN Sparfloxaci Injunction granted
Laboratories (P) Bom. CR (P) n Ofloxacin
Ltd., 70 (DB) SUPAXIN
Mumbai v. Alkem (D)
Laboratories
Limited
(xxii) Glaxo Group 2006 (33) BETNOVA BETA from Injunction granted
Limited v. Vipin PTC 145 TE (P) Betamethas
Gupta Del (SJ) BETA VAT one and
(D) VAT from
Valerate IP
(xxiii) Remidex Pharma 2006 (33) ZEVIT (P) Vitamins Injunction granted
Pvt. Ltd. v. Savita PTC 157 EVIT (D)
Pharmaceuticals (Del) (SJ)
(xxiv) Cadila 66 (1997) MEXATE Methotrexat Injunction not
Laboratories DLT 741 (P) e Sodium granted
Ltd. v. Dabur (SJ) ZEXATE
India Limited (D)
(xxv) Win-medicare 65 (1997) DICLOMO Diclofenac Injunction granted
Ltd. v. Somacare DLT 369 L (P) Sodium
Laboratories (SJ) DICMOL
(D)
xxxxx
60. It is also fortified by the view taken by several Courts in India including Division Bench of Madras High Court and learned Single Judge Bombay High Court in the decision 2006 (33) PTC 492 (DB) (Mad), Apex Laboratories Ltd. v. Zuventus Health Care Ltd., and 2008 (36) 478 (BOM), Wyeth Holdings Corp. v. Burnet Pharmaceuticals Pvt. Ltd., wherein the Courts have protected the mark ZINCOVIT against the mark ZINCONIA wherein the word ZINCO is derived from the common denominator ZINC. Likewise, Bombay High Court in the case of Wyeth (supra) proceeded to protect FOLVITE P against the FOLVD wherein the word FOL is derived from folic acid. Even we apply the said rule of splitting the mark by excluding ZINCO, then conclusion to be arrived would be the same as arrived at by the learned Single Judge which is difference between 'NIC and 'VIT' but actually that is not the approach for comparison and not a priori assumption can be drawn about the generic component unless material placed on record speaks in the same voice. Both, Bombay High Court and Madras High Courts strictly followed the Supreme Court in the case of Cadila Healthcare Ltd. v. Cadila pharmaceuticals Ltd. (supra). There exist many other examples of the same which are evocative of the same proposition which is that the mere fact that the word is derived from the name of the salt does not mean that it loose protection for all times to come. This is more so especially in the light of observation of the Supreme Court in Cadila (supra) that the stringent measures are required to be taken to avoid any likelihood of confusion and deceptive especially in the case of medicines.
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66. The plaintiff in the present case was able to prove that the Liv. 52 is still distinctive. The customers purchase the product of the plaintiff by asking Liv. 52 which is being used for the last more than 57 years. It has also come in evidence that the mark LIV is the essential feature of the registered trade mark Liv. 52. On the other hand, the defendant was unable to prove that it is a generic word and becomes common to the trade. It is also pertinent to mention here that on one hand, the defendant's entire case is that mark 'LIV is a generic word and is unprotectable in law, but on the other hand, the defendant itself applied for registration of 'LIV-T' in the Trade Marks Registry for getting the exclusive right before filing of the written statement, however in written statement word LIV is a generic mark and has become publici juris."
13. Hence, court noted a catenae of judgments to conclude that 'Liv.52' is still distinctive, which has been used for the last 57 years. The word 'Liv' is an essential and distinguishable feature of the registered trademark 'Liv.52. The defendant was unable to prove that it is generic and become common to trade.
14. At this stage, I cannot help noticing that the plaintiff has been using the PAN set of marks since the year 2000 i.e. 21 years. The defendants who have started manufacturing the impugned product would have to show that the word 'PAN is generic and un-protectable in law. I also cannot help noticing that the defendants themselves have applied for registration of the impugned mark and hence prima facie cannot claim the mark has become publici juris.
15. The defence raised by the defendants would require better consideration after they have filed their reply.
16. The plaintiff has made out a prima facie case. The defendants are restrained by an ex-parte injunction from manufacturing, selling, offering for sale, exporting, advertising etc. the aforenoted impugned goods using the impugned marks 'Doctor PAN- D'/'Doctor PAN'/'Dr.Pan' or any other variant or mark that is identical/deceptively similar to the marks of the plaintiff.
17. Issue notice. Learned counsel for the defendants accepts notice. Reply be filed within four weeks. Rejoinder, if any, be filed within four weeks thereafter.
18. At this stage, learned senior counsel for the defendants states that they should be allowed to sell the products which have already been manufactured. The details of the products manufactured have been communicated after the court proceedings as follows:
(i) Doctor PAN Injection- 45000
(ii) Doctor PAN Tablets(strip of 15)- 182879
(iii) Doctor PAN D Capsules (strip of 15)- 122019
19. In the interest of justice, let the defendants on an affidavit of a Director of the defendant company inform the court about the existing stock using the impugned marks and the value of the said products.
20. As the plaintiff are not informed about the pending stock, it is appropriate that directions to permit the defendants to sell the existing stock subject to the directions of the court are passed only after the plaintiff have seen the affidavit of pending stock of the defendant.
21. List for directions on the above request of learned senior counsel for the defendants on 26.11.2021.
JAYANT NATH, J.
OCTOBER 12, 2021/v