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TMI Blog2006 (10) TMI 476X X X X Extracts X X X X X X X X Extracts X X X X ..... ;. 5. Objection taken by the plaintiff is to the visual and phonetic similarity in the trademark/name adopted by the defendants. 6. A perusal of the trademark/name adopted by the defendants shows that they have inserted the letter 'A' midway between the trademark of the plaintiff i.e. letter 'A' finds itself between the letters 'LOP' and 'RIN'. 7. Prima facie it is a case of phonetic as well as visual similarity, tested on the principle of a common man with the usual imperfect memory, seeing the goods of the defendants and from his memory recollecting those of the plaintiff and getting misled. 8. I am satisfied that delay occasioned by putting the defendants to prior notice is likely to defeat the purpose of the injunction. 9. Goods are pharmaceutical goods and a stricter standard have to be applied. 10. However, lest business of the defendants be affected all of a sudden, and noting that as per case pleaded by the plaintiff, it learnt about the offending activity of the defendants in May, 2006, I direct that after 30 days from today, defendants or any person acting under the authority of the defendants would not sell pharmaceutical ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ng off of the Defendants' goods as those of the plaintiff. It is further submitted that the adoption of the trademark LOPARIN by the Defendants, which is visually, structurally and phonetically similar to the plaintiff's trademark LOPRIN, and its variants is dishonest and tentative. The Defendants adoption of the impugned mark appears to be guided solely by ulterior motives and the dishonest intent to misappropriate the goodwill and exclusively enjoyed by the plaintiff in respect of the trademark LOPRIN and to pass off their goods as those of the plaintiff. It is further submitted that use of the trademark LOPARIN by the Defendants is an attempt to derive an unfair advantage by creating an impression that their products have some connection, association, affiliation or endorsement with the plaintiff. 7. defense set up in that suit suffers from gross and latches, disentitling the plaintiff to any relief. That defendant No. 2 obtained permission from the Government under the Drugs and Cosmetics Act, 1940 to manufacture the drug Loparin and sale commenced in October, 2005. Suit was filed after 10 months. That the plaintiff had knowledge of said fact evidenced by the plainti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ts (ICCU). It contains the active ingredient Enoxaparin, which by category belongs to Low Molecular Weight Heparin. Low Molecular Weight Heparins are used to prevent coagulation from the damaged endothelium of coronary arteries. LOPARIN forms part of the category of drugs called anti-coagulatns, which are primarily used in almost all major complications of the heart and thromboemobolism, like ACS, Post MI, Percutaneous Coronary Intervention (PCI), Deep Venous Thrombosis (DVT), Pulmonary Embolism, with an average usage of 7 days in treating critical cardiac condition. LOPARIN belongs to the Life Saving Medicines Category and is typically given to patients in critical hours of vascular complications. Heparins are of two types: (I) UFH (Unfractionated Heparin) with molecular weight ranging from 2,00,000 Daltons, and (2) LMWHs (Low Molecule Weight Heparins) with molecular weight below 20,000 Daltons. LOPARIN has a molecular weight of 4500 Daltons and is Therefore LMWH. LMWHs have several benefits over UFH, being more efficacious in saving life with more specificity in action, lesser side effect in terms of lesser bleeding complications and case of administration in terms of less freque ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the Defendant sells for ₹ 201/- (20mg), ₹ 306 (40mg), ₹ 405(60mg) and ₹ 480 (80mg). The distinct and different nature of the product, the mode of administration and the vast difference in the price of the product of the Defendants, which comes to about 52 times the price of the plaintiff's for 20mg injection, obviates any chance of confusion or deception in the minds of the purchasing public and the members of the trade. The packaging and the get up of the two products is also completely different. The salient differences between the two products are mentioned in the table below: Parameter plaintiff's Loprin Defendant's Loparin Dosage from Tablet Injection Composition Aspirin Enoxaparin Sodium Manufacturing technique Tablet compression Fractionation Major of strength Mg. (milligrams) International Units Strength 75mg. 20mg/0.2 ml 40mg/0.4 ml 60mg/0.6 ml 80mg/0.8 ml Packaging Strip of 14 tablets Sterile, pyrogen - free injectable solution contained in ready to use pre-filled syringe. Accessories None (usually dispensed A pre-filled syringe with only in strips and not needle and patient even a carton) information booklet, giving, inter alia t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d its products, including LOPARIN enjoy huge reputation and goodwill in the market. The plaintiff has Therefore wrongly averred that LOPARIN trade mark is used by the Defendant for identical goods. Considering the distinctive nature, it cannot at all be said that the use by the Defendant of the trade mark LOPARIN is such as to render its use as being likely to be taken as being use of the plaintiff's trade mark. 20. The Defendant No. 2 obtained permission from the Government to manufacture LOPARIN for the Defendant No. 1, on 16.09.2005, and since October 2005, the Defendant No. 2 has been manufacturing and Defendant No. 1 has been marketing LOPARIN, across the country. This Defendant has coined LOPARIN adopting LO from the category of the drug, being Low Molecular Weight Haparin and PARIN from the name of the molecule - Enoxaparin. This Defendant has applied for registration of the trade mark LOPARIN, under the Trade Marks Act, 1999 on 26.08.2005. This Defendant has by now incurred an expense of about ₹ 74.67 lacs for the purpose of launch of LOPARIN. The aggregate sale of LOPARIN till date have been about ₹ 8.89 crores. 13. In the replication filed, plainti ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rt reported as 110(2004)DLT732 . Pfizer Ireland Pharmaceuticals v. Intas Pharmaceuticals and Anr. was also cited to urge that in case of medicinal products, since disaster to health and in some cases life itself was an issue, stricter standard had to be applied to medicinal goods. Citing 2002 (254) PTC 592 Bom. Medley Laboratories Pvt. Ltd. v. Alken Laboratories Ltd. counsel urged that once the mark is identical or deceptively similar, the other factors, viz., the packing being different, number of tablets contained in the competing package is not the same, prices are not identical and/or goods being sold on doctors prescription are altogether irrelevant and immaterial. Lastly, counsel cited [2001]2SCR743 , Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. to urge that the two competing medicines were derivatives of different salts was irrelevant. That decision in Cadila Health Care's case (supra) held that decision reported in AIR 2000 SC 2114, S.M. Dyechem Ltd. v. Cadbury (India) Ltd. was not good law. That only similarities and not dissimilarities had to be considered. That as held in Durga Dutt Sharma's case AIR 1965 SC 890, when once the use by the defendant of th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favor at the trial. The need for such protection must be made against the corresponding need of the defendant to be protected against injury resulting from his having been preventing from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies. 18. As observed by their Lordships in Mahendra Mahendra Paper Mills Ltd v. Mahindra Mahindra (1995) 1 AD Delhi 319: The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted. 19. On the issue of phonetic similarity and dissimilarity, learn ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... vations in Dyechem's Case (Supra). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. 23. The decisions noted by their Lordships of the Supreme Court in Cadila Health Care case (Supra) for arriving at the conclusions aforenoted are (i) [1953]4SCR1028 National Sewing Thread Co. Ltd. Chidambaram v. James Chadwick Bros. Ltd. (ii) [1960]1SCR968 Corn Products Refining Co. v. Shangrila Food Products Ltd. (iii) [1963]2SCR484 Amritdhara Pharmacy v. Satya Deo (iv) [1965]1SCR737 Durga Dutt Sharma v. N.P. Lavoratories and (v) [1970]2SCR213 F. Hoffmann-La Roche Co. Ltd. v. Geoffrey Manner Co. Pvt. Ltd. 24. Further, in Cadila Health Care case (Supra), at page 314 of the report, their Lordships held that a higher standard has to be applied to medicinal products and that the courts need to be particularly vigilant where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the com ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... unction. The grant of injunction becomes necessary if it prime facie appears that the adoption of the mark was dishonest. 2004(28)PTC121(SC) Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia and Ors. 28. Acquiescence by itself is also no ground to non suit a plaintiff, if otherwise his claim is found to be genuine. In Willmott v. Barber (1880) 15 Ch.D. 96 Fry, J. said: It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud and in my views this is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights. 29. Acquiescence is nothing but one facet of delay. If a plaintiff stands by knowingly and lets a defendant build up an important trade until it has became necessary to crush it, the plaintiff would be stopped by acquiescence. It would be a fraudulent conduct to allow knowingly somebody to spend money to build a reputation and then try and crush it. 30. It is important to distinguish between mere negligence and acquiescence as was observed by Sr. John Romilly in Harcourt V White 28 Bea ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ventive drug, LOPARIN is a curative drug. As pleaded by the plaintiff (refer para 9 of the plaint), LOPRIN is a coined word derived from 'low dose of aspirin' i.e. amalgamation of the word 'low' and the word 'aspirin', defendants mark LOPARIN is a coined word derived from 'low molecular weight heparin' and the molecule-Enoxaparin i.e. amalgamation of the word 'Low' and the word 'Enoxaparin'. 34. It cannot be ruled with certainty at this stage that defendant has resorted to a dishonest adoption. 35. In pharmaceutical trade, one finds names of various drugs almost similar to each other --- having common prefix or suffix --- for the reason the drug conveys what salt it is a derivative of. 36. No doubt, doctors can also err and it is not uncommon for drugs to be purchased over the telephone and even handwritten prescriptions may be misread due to bad handwriting, but method of intake of a drug by a person is not to be ignored. 37. plaintiffs product is taken orally and is sold as a pill. Defendant's product is intramuscularly injected with aid of a syringe. Thus, other factors like nature of the product, design and get-up ..... X X X X Extracts X X X X X X X X Extracts X X X X
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