Delhi High Court
Sun Pharma Laboratories Ltd. vs Mylan Laboratories Ltd. & Anr. on 7 February, 2017
Author: R.K.Gauba
Bench: R.K.Gauba
$
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Reserved on : 23rd January, 2017
Pronounced on :7th February, 2017
+ CS (OS) 1098/2016 & IA No. 21119/2014 (under Order 39
Rules 1 & 2 CPC)
SUN PHARMA LABORATORIES LTD. ..... Plaintiff
Through: Mr. Hemant Singh, Ms. Mamta Jha,
Mr. Shashi Ojha & Ms. Ambica
Gautam, Advocates.
Versus
MYLAN LABORATORIES LTD. & ANR. .... Defendants
Through: Ms. Shwetasree Majumdar, Mr.
Prithvi Singh & Mr. Vishnu Rege,
Advs. for D-1.
Mr. Saurabh Kansal, Adv. for D-2.
CORAM:
HON'BLE MR. JUSTICE R.K.GAUBA
ORDER
1. This civil suit was initially instituted impleading three parties as defendants, they being Agila Specialties Pvt. Ltd. (first defendant), Strides Arcolab Ltd. (second defendant) and Onco Therapies Ltd. (third defendant), seeking reliefs primarily in the nature of permanent injunction so as to restrain the defendants, their directors, assignees in business etc. from manufacturing, marketing, selling, offering for sale etc. their medicinal preparation under the mark SOXPLAT or any CS (Comm) 1098/2016 Page 1 of 16 other mark as may be phonetically similar to that of the plaintiff‟s trademark OXIPLAT registered vide trade mark No. 1003586, amounting to its infringement or passing off of the defendant‟s goods and business for those of the plaintiff, besides for order of delivery of the alleged infringing goods including packaging or promotional materials, stationery, office blocks etc. and a decree of damages or, in the alternative, order for rendition of accounts of profits earned leading to a decree for amount so found, in addition to the costs of the proceedings.
2. By application (IA No. 11316/2015) moved on 20 th May, 2015 invoking Order 1 Rule 10 read with Order 22 Rule 10 and Section 151 of the Code of Civil Procedure, 1908 (CPC), it was submitted that the defendant No.1 and 3 had been acquired by Mylan Laboratories Ltd., Plot No.564/A/22, Road No.92, Jubilee Hills Hyderabad-500034, Andhra Pradesh, India, The application noticeably had been moved on behalf of the said Mylan Laboratories proposing itself to be impleaded as the first defendant and the other defendant (then existing defendant No.2) to be retained accordingly. This application, upon the plaintiff submitting no objection, was allowed by order dated 25th May, 2015. It may further be added that by another application (IA No. 11562/2015), subsequently moved, again under Order 1 Rule 10 read with Section 151 CPC, it was brought to the notice of the Court, and of the plaintiff, that another company incorporated in the name and style of Shasun Pharmaceuticals Ltd. had amalgamated with the second defendant in terms of the scheme duly approved by the High Court of Bombay by order dated 15.9.2015 and pursuant to such CS (Comm) 1098/2016 Page 2 of 16 amalgamation, the said second defendant had acquired the new name of Strides Shasun Ltd., the Registrar of Companies having accordingly issued a fresh certificate of incorporation under the changed name, the existing second defendant having thus ceased to exist and the new entity known as Strides Shasun Ltd. having come into existence in its lieu. This application was allowed by order dated 18.10.2016 upon the plaintiff submitting no objection.
3. As a consequence of the above-mentioned orders, the suit is now directed against Mylan Laboratories Ltd. (first defendant) and Strides Shasun Ltd. (second defendant).
4. Along with the suit, the plaintiff moved an application under Order 39 Rules 1 & 2 CPC (IA No. 21119/2014) praying for an ad interim injunction for restraining the defendants, their directors, assignees in business, their distributors, dealers, stockists, retailers, servants and agents from manufacturing, marketing, selling, offering for sale, advertising, directly or indirectly dealing in medicinal preparations under the impugned mark SOXPLAT, or any other mark as may be phonetically deceptively similar to the plaintiff‟s trademark OXIPLAT amounting to infringement of said registered trade mark No. 1003586 of the plaintiff or passing off the defendant‟s business, goods for those of the plaintiff. The suit and the application have been resisted primarily through the written statement and reply filed by the first defendant.
5. The pleadings of the parties and the documents on record reveal that the first defendant has challenged the registration of the plaintiff‟s trade mark OXIPLAT (trade mark registration No. 1003586) by an CS (Comm) 1098/2016 Page 3 of 16 application for its cancellation submitted before Intellectual Property Appellate Board (IPAB) submitted on 2.9.2015. It is further undisputed that the trademark SOXPLAT under which the defendants sell or market their product is also registered with the trademark registry vide trademark No. 1550804, the registration having been granted on the application moved by the second defendant on 18.4.2007 and since assigned in favour of the first defendant. It is further a common ground that plaintiff has also challenged the said registration of the trademark SOXPLAT in favour of the first defendant by an application for its cancellation/rectification submitted on 28.10.2014 before IPAB. The applications for cancellation/rectification moved by each side against the other have been pending consideration of IPAB.
6. Against the above backdrop, upon a request being made jointly by both sides, referring to the provision contained in Section 124 (1) of the Trademarks Act, 1999, the proceedings in the main suit were stayed to await the decision of the appellate Board (IPAB). Notwithstanding the stay of the proceedings in the suit, the plaintiff has pressed for adjudication upon its application under Order 39 Rules 1 & 2 CPC referring, in this context, to the provision contained in sub- section (5) of Section 124 of the Trademarks Act, 1999.
7. Arguments on the application for ad interim injunction were heard against the above back-drop and, with the assistance of learned counsel on both sides, the record has been perused.
8. The facts for purposes of decision on the application for interim protection moved by the plaintiff lie in a very narrow compass. The CS (Comm) 1098/2016 Page 4 of 16 companies on both sides of the divide are engaged in the business of manufacturing/selling of medicinal or pharmaceutical products. The products which are relevant here, as manufactured by each side, are primarily medicinal preparations the prime ingredient whereof is salt known as OXALIPLATIN. Neither side lays any claim of patent in its respect. Rather, it is conceded that a number of pharmaceutical companies are engaged in manufacture of similar anti-cancer drugs containing OXALIPLATIN as their prime ingredient manufacturing them under various trademarks including those set out in (para 10 of) the written statement; viz. OXOPLAN (Samarath Life Sciences Pvt. Ltd.), OXAMIL (Merck Ltd.), OXALTOR (Torrent Pharmecuticals Pvt. Ltd.), FEXOPLAT (Ferron Life Sciences Pvt. Ltd.), GLENOXAL (Glenmark Pharmaceuticals Pvt. Ltd.), OXALINIS (Neiss Labs Pvt. Ltd.), OXYREA (Neon Labs Pvt. Ltd.), RESOX (Resonance Laboratories Pvt. Ltd.), XPLATIN (VHB Life Sciences Ltd.), OXALICARE (Dr. Derma Expert Skin Care and Cure), KINAPLAT (Cadila Pharmaceuticals Ltd.), XALIPAT (KhandelwalLBS Ltd.), PLATOXIN (ShanthaBiotechnicsPvt. Ltd.)"
9. The products of each side, as already noted, marketed under the trademark OXIPLAT (of plaintiff) and SOXPLAT (of the defendants), are duly registered with the Indian trademark registry, each in Clause 5 (Medicinal and pharmaceutical preparations). The rights conferred by such registration are set out in Section 28 of the Trademarks Act, 1999 in following terms:-
CS (Comm) 1098/2016 Page 5 of 16"28. Rights conferred by registration.--(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor".
10. It was conceded at the bar that the registration of the trademark of each side is not subject to any conditions or limitations as envisaged In Section 28(2) so as to restrict the "exclusive right to the use" of such trademarks vested in the respective grantee. Assuming for the present that the trademark registered in favour of the defendants is identical with or nearly resembles that of the plaintiff, it is very clear from the plain reading of Section 28 (3) that neither side can be "deemed" to have acquired "the exclusive right" to use its registered trademark as against the other "merely" on account of such CS (Comm) 1098/2016 Page 6 of 16 registration, their rights under the such registration essentially being against other persons "not being the registered users using by way of permitted use".
11. Section 27 (1) of the Trademarks Act, 1999 inhibits institution of any proceedings to prevent, or to recover damages for, the infringement of an unregistered trademark. Section 29 of the Trademarks Act, 1999 sets out the circumstances in which a person may be said to be infringing a registered trademark. For purposes of present discussion only the first three sub-sections of Section 29 need to be noted, the same being as under:-
"29. Infringement of registered trade marks.--(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.
(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--
(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or
(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or CS (Comm) 1098/2016 Page 7 of 16
(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark, is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.
(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public."
(Emphasis supplied)
12. The bare provision shows that it intends to protect the rights of the owner of a registered trademark as against/competing interests of a person claiming proprietary rights in a trademark which is not registered. For purposes of present discussion, however, it may be noted that identity or deceptive similarity are the touchstones and in case there is identity of the two marks and of the nature of goods (or services), in an infringement action, the law presumes resultant confusion.
13. Pertinent to note here that the provision contained in Section 30 puts certain limits on the effect of registered trademark. For purposes of this order, the said provision, to the extent relevant, may be extracted as under:
"30. Limits on effect of registered trade mark.--(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use--
(a) is in accordance with honest practices in industrial or commercial matters, and CS (Comm) 1098/2016 Page 8 of 16
(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. (2) A registered trade mark is not infringed where--
xxx
(e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act x x x".
(Emphasis supplied)
14. Though it is inherent in afore-quoted part of section 29, Sections 2 (e) of section 30 particularly makes it abundantly clear that infringement action may generally not be a remedy available against owner of a competing trademark which is registered.
15. Having regard to the above noted provisions of Sections 29, the learned counsel for the applicant (plaintiff) fairly conceded that prayer for injunction, including ad interim injunction, cannot be pressed for against the defendants in the case so long as they are proprietor of the (impugned) registered trademark. He, however, submitted that the provision contained in Section 27(2) protects the rights of the plaintiff to bring an action on the existing factual matrix against "passing off"
of the goods of the defendants as that of the plaintiff under the trademark (even if it be a registered trademark) on account of its deceptive similarity with that of the plaintiff‟s trademark urging, in this context, the court to take note of the facts that the plaintiff has been the prior user of its duly registered trademark, having acquired goodwill and reputation thereupon on account of extensive CS (Comm) 1098/2016 Page 9 of 16 commercial use (and sales), the tests of "imperfect recollection" and "deceptive similarity" - also phonetic and structural - demonstrating the propensity and likelihood of confusion amongst potential consumers and thereby arguing for its proprietary rights in the trademark to the protected and the defendant to be injuncted from using the impugned trademark which, in his submissions, results in "passing off".
16. The learned counsel for the plaintiff summarized his arguments on deceptive similarity thus :-
"(a). Competing trade marks ought to be compared as a whole and not in dissections. It is not the dissimilarities but the similarities that are to be paid attention to. When compared as a whole, "SOXPLAT" is deceptively similar to "OXIPLAT". There is a remarkable phonetic as well as structural similarity between the two. But for the letter „S‟, "OXPLAT" and "OXIPLAT" are almost identical. Such similarity arises from similarities of prefix as well as suffix between the two.
(b). It is not permissible to make side by side comparison between competing marks. The similarity ought to be evaluated applying the test of "imperfect recollection" of plaintiff‟s trade mark by consumers of average intelligence.
(c). No evidence of actual confusion or deception is required because the test is "likelihood" of confusion as per definition of "deceptive similarity" under Section 2(1)(h) of the Act.CS (Comm) 1098/2016 Page 10 of 16
(d). Lesser degree of similarity is sufficient to hold deceptive similarity if competing trademarks are used in relation to medicinal products. This is in the larger public interest as held by Hon‟ble Supreme Court in "Cadila" case.
(e). Also as held by Hon‟ble Supreme Court in "Cadila", the fact that the drugs are Schedule-H or Schedule-L prescription drugs is irrelevant, considering that physicians or chemists are not infallible to imperfect recollection and confusion. Even prescription drugs are often sold without prescription and margin ought to be given for imperfect pronounciation in multilingual society such as India and illegible handwriting of physicians on the prescription."
17. Per contra, the defendants argued, through counsel, that the plaintiff cannot claim any relief of temporary injunction even in "passing off" action unless it independently demonstrates that the trademark adopted by it has a distinctive character and is not in the nature of attempt to monopolize the mere abbreviation of the name of the main ingredient i.e. the generic name of the salt OXALIPLATIN - arguing that this is precisely what the plaintiff is attempting to do - submitting that the plaintiff‟s trademark "OXIPLAT" is, prima facie, invalid, referring in this context, to the provision contained in Section 9 (1) of the trademarks Act, 1999.
18. The defendant submits that "OXIPLAT" is actually derived by the plaintiff from the name of the salt OXALIPLATIN, the opening part "OX" from the beginning and "IPLAT" picked up from the middle. In contrast, the defendants submit the trademark CS (Comm) 1098/2016 Page 11 of 16 "SOXPLAT" was adopted by picking up "OX" from the beginning and "PLAT" from the middle of the generic name of the main ingredient and after joining them together creating a new distinctive name by prefixing it with the letter „S‟, it being the opening letter of the name of the second defendant ("Strides"), the word thus coined, "SOXPLAT" having no dictionary meaning and, therefore, an invented word.
19. The defendants refer to Section 28(3) and Section 30 (2) (e) of the Trademarks Act, 1999 to argue that the plaintiff has not satisfied the threshold requirement of making out a good case of passing off since there is nothing to show that the defendants are conducting their business under the impugned mark so as to persuade their customers into believing that their goods belong to or are associated with the plaintiff, the act of using the trademark SOXPLAT being nothing more than in furtherance of "statutory rights" of the defendants under the registration. The defendants also argued that the prime tests in cases founded on competing trademarks, as laid down in the judgment reported as Cadila Healthcare Ltd. vs. Cadila Pharma Ltd. (2001) 5 SCC 73, referred to by both sides, have not been satisfied as there is nothing to show that any confusion has prevailed amongst intended users of both products, the prime submission of the defendants being that there is no structural or phonetical similarity between the two marks, the use of the prefix OXI by the plaintiff and SOX by the defendants making them "significantly different".
20. The reliance by the plaintiff on Stiefel Vs. Ajanta Pharma, 2014 (49) PTC 24 and Raj Kumar Vs. Abbott Healthcare, 2014 (6)) PTC 51 CS (Comm) 1098/2016 Page 12 of 16 (Del) (DB) is admittedly misplaced in present context. As conceded, the defendants‟ trademark also being registered, it is not permissible to raise the plea of infringement of the plaintiff‟s registered trademark. For this reference needs to be made to the joint effect of Section 28(3) and Section 30(2)(e) as noted above.
21. It is well settled that the generic name of the salt "OXALIPLATIN" is publici juris and the same or its mere abbreviation cannot be monopolized. [see SBL Ltd. Vs. Himalaya Drugs Company, AIR 1998 Del. 126; Schering Corporation & Ors. Vs. Alkem Laboratories Ltd., 2010 (42) PTC 772 Del. (DB); Indo Pharmaceuticals Works Ltd. Vs. Citadal Fine Pharmaceuticals Ltd., 1998 PTC (18) (DB); Astrazeneca Limited Vs. Orchid Chemicals and Pharmaceuticals Ltd., 2007 (34) PTC 469 (DB) Del.; and Sun Pharmaceuticals Industries and Anr. Vs. Anglo French Drugs & Industries Ltd. and Anr].
22. Noticeably, the plaintiff has not explained in any manner as to how the expression "OXIPLAT" adopted by it as the trademark of its product was coined. In these circumstances, there is no reason why the defendants‟ argument that the same is based on joining of "OX" from the beginning and "IPLAT" from the middle of the name of the salt, be discarded. Though this contention would need to be first adjudicated upon by IPAB in the appeals pending before it, for purposes of inquiry as to whether the plaintiff has a good prima facie case, it must be observed that the defendants‟ argument that the said trademark adopted by the plaintiff is not capable of distinguishing the goods from those of another person on account of it being devoid of CS (Comm) 1098/2016 Page 13 of 16 any distinctive character within the meaning of the requirement of Section 9(1) of the Trademarks Act cannot be lightly brushed aside.
23. In SBL Ltd. (supra), a division bench of this court observed thus :-
"19.1 ...In the field of medicines and pharmaceuticals, it is common practice that the drugs are named either by the name of the organ which it treats or by the principal ingredients or the name of the ailment. This enables a doctor to associate a particular trade name with the organ, ingredient or ailment, thereby reducing chances of error. No trader can therefore restrain another trader from using the description of the organ, ingredients or ailment..."
20. A mark is said to be common to the trade which (i) it is in common use in the trade, or (2) when it is open to the trade to use. Any symbol, word or get up commonly used by traders in connection with their trade and in respect of which no particular trader can claim an exclusive right to use may be considered common to that particular trade, or publici juris. Further words, expressions, or devices which are descriptive of particular goods are open to use by all persons engaged in the trade. Such matters which are generally of a non-distinctive character may or may not be in actual use at any particular time. What is important is that the trading public has a right to use them in connection with their business."
24. Schering Corporation (supra) followed the view taken in S.B.L. Ltd. (supra)
25. The thrust of the arguments of the plaintiff in pressing home its prayer for ad interim injunction on the plea of passing off is based wholly on the contention concerning deceptive similarity basing such submissions on the decision in the cases of Cadila Healthcare Ltd. vs. CS (Comm) 1098/2016 Page 14 of 16 Cadila Pharma Ltd., (2001) 5 SCC 73; Neon Laboratories vs. Medical Technologies, (2016) 2 SCC 672; Amritdhara Pharmacy Vs. Satyadeo Gupta, AIR 1963 SC 449; Corn Products vs. Shangrila, AIR 1960 SC 142; and Mahindra Vs. Mahendra, AIR 2002 SC 117.
26. On careful consideration, however, this court finds no merit in the above noted arguments. As observed by a learned single judge of this court in Amba Lal Sarabhai Enterprises Ltd. Vs. Sara Pharmaceuticals Ltd. and Ors., 1982 PTC 214, while comparing two competing marks of similar products, emphasis must be laid on the distinguishing and essential features, the first syllable of a trademark being generally considered the most important part essentially in case of short words.
27. The test of similarity of pharmaceutical trademarks may also be the test of the prefix. If both competing marks draw letters, words or their parts from the main ingredient of similar pharmaceutical products, there is very little room for play or for permutations or combinations. Giving primacy to one would be denying the use to the others allowing resultantly the former to monopolize the generic name which is neither fair nor permissible. The marks used by the two parties herein have used the expression "PLAT" commonly as the suffix, obviously picking it up from the name of their main ingredient "OXALIPLATIN", the prefix used by the defendant "SOX" being significantly different and dis-similar from "OXI" appearing in the plaintiff‟s trademark. The appearance of the letter "I" in the middle of the trademark of the plaintiff and the use of the letter "S" in the beginning by the defendant is what makes all the distinction. This CS (Comm) 1098/2016 Page 15 of 16 court, therefore, does not find merit in the submission that both the marks are phonetically or structurally similar so as to present the possibility of deception or probabalize "imperfect recollection".
28. In above view of the matter, the mere fact that the plaintiff is the prior user or registrant of its trademark is inconsequential. In the result, no prima facie case has been made out for temporary injunction to be granted. The application under Order 39 Rule 1 and 2 CPC is, therefore, found unmerited and dismissed.
29. Given the fact that the appeals before the Intellectual Property Appellate Board (IPAB) filed by both sides are not likely to be adjudicated upon in near future, no purpose would be served by keeping the case pending on board. Therefore, the earlier order staying the proceedings in terms of Section 124(1) of the Trademarks Act, 1999 is modified. It is instead directed that the proceedings in the civil suit at hand shall stand adjourned sine die, to be revived on the motion of either side after IPAB has rendered its decision on the pending applications.
(R.K. GAUBA) JUDGE FEBRUARY 07, 2017 nk/yg CS (Comm) 1098/2016 Page 16 of 16