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12. Regarding his mark 'MEROMER', the defendant contended that prefix `MERO' is common to the trade and cannot be appropriated by the plaintiffs alone. Relying on trade practices it was stated that as there are number of trademarks which are used in pharmaceutical industry with a common prefix derived from the generic name Meropenem, the defendant is entitled to use the mark `Meromer'. The plaintiffs and the defendant are marketing the molecule `meropenem' and the only difference between the two products is the shelf life and of course the price, as the drug marketed by the defendant is cheaper.

39. Per contra, the defendant pleas for even declining the relief of passing of to the plaintiffs are that prefix MERO is common to the trade and cannot be appropriated by the plaintiffs alone. Relying on trade practices it was stated that there are number of trademarks which are used in pharmaceutical industry with a common prefix derived from the generic name and so the plaintiffs can not claim exclusive rights and therefore, the defendant is entitled to use the mark `Meromer'.

40. The plaintiffs and the defendant are marketing the molecule `meropenem' and the only difference between the two products is the shelf life and of course the price as the drug marketed by the defendant is much cheaper. Relying on Section 144 of the Act it was contended that trade practices have also to be taken into consideration. Referring to added material it was pleaded that there is no likelihood of passing off. According to defendant marks `Meronem' and 'Meromer' are not phonetically, visually or in any other manner deceptively similar to each other. The defendant sells the goods in mono cartons whereas plaintiffs sell their goods in beehive cartons of 10 vials. The goods of the plaintiffs are made available to the purchaser in the vials as such without any cartons for the individual vial. Shapes of vials were also stated to be different as plaintiffs' vial is narrow and the defendant's vial is broad and from the bottom tapers towards the neck. Colures used on different vials were also stated to be different as well as the style of writing. The goods of the plaintiffs and defendant are schedule `H' drug and are sold on prescription and therefore the confusion between the two trademarks is almost none. The defendant highlighted the difference in price of the products of the plaintiffs and the defendant. It had been contended that the plaintiffs are also liable to provide the medicine at price at which it is marketed by the defendant. Denying any trans-border reputation, it was contended that the plaintiffs have not made any averments regarding trans-border reputation. Referring to the judgment of the Apex Court in Whirlpool (supra) it was stated that the trans-border reputation applies with respect to marks that are not derivative of the products.

56. The ratio of the judgments relied on by the plaintiff do not support their pleas and contentions and they are clearly distinguishable. In 2005(30) PTC 14 (BOM), Sun Pharmaceutical Industries Ltd. v. Wyeth Holdings Corporation and Anr., a division Bench of Bombay High Court had declined to interfere with the discretion exercised by the Single Judge in granting injunction in similar trade marks 'Pacitane' which was a registered trade mark and ' Parkitane' which was not a registered trade mark. Relying on the observation in N.R. Dongre v. Whirlpool Corporation (supra) and Printers (Mysore) Private Ltd. v. Pothan Joseph about the interference in the appeal arising out of discretionary order of the temporary injunction, it was held that the interference in appeal will be called for only if the conclusion reached is that the exercise of discretion by the trial judge was contrary to the settled principles for the grant of temporary injunction or that it is arbitrary or perverse. Similarly in the , Glaxo Smithkline Pharmaceuticals Ltd. and Anr. v. Naval Kishore Goyal and ors the defendant's proposed trade mark had not been published and therefore at the threshold and a preliminary stage of a suit, the holder of registered trade mark was accorded jural protection. In , Sanat Products Ltd. v. Glade Drugs and Nutraceuticals Pvt. Ltd. and anr the drugs `REFORM' and `REFIRM' were found to be deceptively similar but these names did not have any common prefixes based on some ailment, organ of the body or on the name of common medicine in contradistinction to the present case. The case of the SPOXIN and SUPAXI, 2002 (25) PTC 592 (Bom) (DB) is also clearly distinguishable on the same principle and does not support the contentions of the plaintiffs. These two trade marks were deceptively similar but the drugs were quite different and in case of confusion could lead to disastrous results in contradistinction to the plaintiffs' and defendant products which are the same drug marketed under the different names. The drug marketed by the parties to the suit is same except the content of buffering agent used by them which makes the shelf life different, shelf life is four years of plaintiffs' drug and two years of defendant drug.

59. Defendant is one of the companies in India which is marketing the drug `Meropenem' which is essentially the same as that marketed by plaintiff but at a cheaper price. The defendant had launched his drug in November, 2004 after investing considerable amount in setting up its unit for the manufacture of the said drug. The trademark of the defendant was advertised in the trademark journal but no opposition to it was filed by the plaintiffs. After the institution of the suit, the rectification proceedings were initiated first before the Registrar and thereafter before the Appellate Board without seeking prima facie satisfaction of this Court regarding invalidity of the registration of the defendant's mark. In the plaint and the application for interim injunction, correct particular and facts about the assignment of trade mark in favor of the plaintiffs were not given. The plaintiffs though have admitted that other companies are also marketing the same medicine with different trade marks having common prefix `Mero' and no action has been initiated by the plaintiffs against such other companies. In the entirety of the facts and circumstances, if the defendant shall be restrained from selling, marketing or in any manner dealing with the pharmaceutical drug Meropenem under the trade name 'MEROMER ' the of the inconvenience caused to the defendant shall be much more. Public interest will also support availability of same drug at a cheaper price. So prima facie, in my opinion the balance of convenience is in favor of the defendant. Any interim injunction in the facts and circumstances may also cause irreparable loss to the plaintiffs. The loss of the plaintiffs seems more to be financial which can be safeguarded by directing the defendant to maintain accounts of sale of the drug Meropenem under the trade name `Meromer' and submit the accounts regularly to this Court every half yearly.