2004 (5) TMI 535 - SC - Companies Law

Whether the marks are word marks or label marks or composite marks, i.e. both words and label works? Held that - In the present case, the marks are the same. They are in respect of pharmaceutical products. The mere fact that the Respondents have not been using the mark in India would be irrelevant if they were first in the world market. The Division Bench had relied upon material which prima-facie shows that the Respondents product was advertised before the Appellants entered the field. On the basis of that material the Division Bench has concluded that the Respondents were first to adopt the mark. If that be so then no fault can be found with the conclusion drawn by the Division Bench. However, it was submitted on behalf of the Appellants that the Respondents were not the first to use the mark. It was submitted that there was no proof that the Respondents had adopted the mark and used the mark before the Appellants started using the mark in India. In our view, these are matters which would require examination on evidence. Considering the fact that for all these years, because of the injunction Order, the Appellants have sold their product under some other name, the balance of convenience is that the injunction order be continued and the hearing of the Suit be expedited. If on evidence it is proved that the Respondents had adopted the mark prior to the Appellants doing so, on the settled law, then the Respondents would become entitled to an injunction. However, if on evidence it is shown that the Respondents had not adopted the mark prior to its use in India by the Appellants then, undoubtedly, the trial Court would vacate the injunction. The trial Court would undoubtedly then assess the damage which Appellants have suffered for having wrongly not been allowed to use the mark for all these years.

Summary

Issues:
- Suit for injunction based on passing off action for the mark "OCUFLOX"
- Prior use and registration of the mark by the Respondents in various countries
- Appellants' claim of coining the mark based on the basic constituent of their product
- Grant of registration by the Appellants in India
- Ad interim injunction obtained by Respondents and subsequent vacating of the injunction
- Appeal against the injunction decision leading to the impugned Judgment
- Application of legal principles from previous cases like N. R. Dongre vs. Whirlpool Corporation and Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.
- Consideration of factors for deceptive similarity in passing off actions
- Importance of avoiding confusion in medicinal products due to potential harm
- Need for judicial scrutiny in cases involving pharmaceutical products
- Emphasis on international character of the medical field and public interest protection
- Determining the party entitled to injunction based on first use in the market

Analysis:
The judgment dealt with a case involving a suit for an injunction based on a passing off action for the mark "OCUFLOX." The Respondents claimed prior use and registration of the mark in various countries, asserting their entitlement to the mark based on international usage. In contrast, the Appellants argued that they coined the mark based on the basic constituent of their product and obtained registration in India. The initial ad interim injunction obtained by the Respondents was later vacated due to the Appellants' introduction of the product in India first. However, the impugned Judgment allowed the Respondents' appeal, emphasizing their first entry into the market as the basis for entitlement to the injunction.

The judgment referenced legal principles from previous cases like N. R. Dongre vs. Whirlpool Corporation and Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. to establish the framework for deciding passing off actions. Factors such as the nature of marks, degree of resemblance, nature of goods, and class of purchasers were highlighted for determining deceptive similarity. Special emphasis was placed on the pharmaceutical industry, stressing the need for judicial scrutiny to prevent confusion in medicinal products due to potential harm. The judgment underscored the international nature of the medical field, necessitating protection of public interest and avoidance of conflicts between domestic and overseas companies.

In determining the party entitled to the injunction, the judgment emphasized the importance of establishing first use in the market. It highlighted the need for evidence to ascertain the timeline of mark adoption and usage, with a directive to expedite the trial to resolve the matter promptly. The judgment concluded by instructing the trial court to dispose of the suit within six months while maintaining the injunction until a final decision based on evidence is reached.