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TMI Blog2001 (7) TMI 1305X X X X Extracts X X X X X X X X Extracts X X X X ..... about 9th June, 1997 for registration of the trade mark LIPICARD under No. 742450 in respect of pharmaceutical preparations falling in Clause 5 of the Fourth Schedule of Trade Mark and Merchandise Marks Rules, 1959.. This application is still pending. In June, 1998 the plaintiffs decided to manufacture and market the new drug in India for the first time. Hence, plaintiff No. 2 applied for permission to the Drug Controller General (India), New Delhi for import of the bulk drug Fenofibrate for the purpose of testing and carrying out formulation development. In November, 1999 the plaintiff No. 2 applied for permission to the Drug Controller General (India) for import and manufacture of Fenofibrate capsules. In December, 1999 the Drug Controller General granted permission to the plaintiff No. 2 for import of the said drug. Thereafter, the plaintiffs applied and were granted drug manufacturing license on 4th February, 200 by the Food and Drug Administration Authority permitting it to manufacture LIPICARD preparation. After taking further necessary steps, the plaintiff No. 2 manufactured the medicine under the trade mark LIPICARDin May, 2000 and started marketing this product. The plaint ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. , the distinction between scheduled drug and non-scheduled drug has been dispensed with and as per this judgment, even if drugs are scheduled drugs, Court would apply stricter test of deceptive similarity and prohibits sale of any drugs which are marketed under the brand that will lead to confusion and deception. 3. The case of the defendant in the written statement, in I.A. No. 12230/2000 as well as in I.A. No. 3035/2001 is that the plaintiffs are not the proprietor of the trade mark in question. Plaintiffs have not invented any such word 'LIPICARD'. In fact, according to the defendant, plaintiffs have themselves abbreviated the prefix of the mark LIPI from the generic term Lipid Correction i.d., management of Lipid abnormalities. there are various companies who are having registered trade mark pending application and are using the prefix LIPI in relation to pharmaceutical preparation and many such instances are given by the defendant. On this basis it is stated that the plaintiffs are not the proprietors of the mark LIPICARD and the name is not distinctive for the goods of the plaintiffs only. The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ise in purchasing and/or using the goods. (6) The mode of purchasing the goods or placing order for the goods and. (7) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. 5. When the question of passing of action is to be decided in a case involving medicinal products, the Court pointed out that the test to be applied to adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. One can deduce the following particular principles/peculiar features which is to be kept in mind in such cases : (i) The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The Courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ould be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health. These principles are kept in mind while deciding these applications. 6. Admittedly, both the drugs are scheduled drugs. Both the drugs are lipid lowering drugs used in cardiac diabetes patients with elevated cholesterol level. Therefore, it is the word Lipid which is indicative of the use of both the drugs. In S.B.L. Ltd. v. Himalaya Drug Co. , the Division Bench of this Court held that nobody can claim exclusive right to use any word, abbreviation which has become publici juris. The Court observed that in the trade of drugs, it is a common practice to name a drug by th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... LIPIGEM 502332 Pending The Anglo Franch Drug Co. (Eastern) Ltd. LIPIGEM 504209 Pending Alkem Labs Ltd. LIPIGEM 510688 Registered Tide Pharms Pvt. Ltd. LIPIFRED 519438 Pending Haryana Drugs Pharma Ltd. LIPIKAD-12 307552 Registered M.M. Labs LIPILON 532856 Registered Kopran Limited LIPILAK 663645 Pending Shri Lakhavi Drugs Pvt. Ltd. LIPINORM 498835 ADVT torrent Pharmaceuticals Ltd. LIPIODOL 325182 Registered Laboratorie Guerbet LIPIMET 606413 Registered Laboratories Griffon Limited LIPOSORB ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the following observations: ...Whether such feature is publici Jurisdiction or generic is a question of fact... here are about 100 drugs in the market using the abbreviation 'LIV' made out of the word Liver...LIV has become a generic term and publici Jurisdiction . It is descriptive in nature and common in usage. Nobody can claim an exclusive right to the use of 'LIV' as a constituent of any trade mark...the possibility of deception or confusion is reduced practically to nil in view of the fact that the medicine will be sold on medical prescription and by licensed dealers well versed in the field and having knowledge of medicine. The two rival marks LIV 52 and LIV-T contain a common feature LIV which is not only descriptive but also publici Jurisdiction ; a customer will tend to ignore the common features and will pay more attention to the uncommon features i.e. 52 and T. The two do not have such phonetic similarity as to make it objectionable.... LIV 52 is in a carton with a colour scheme consisting of dark brown, dark yellow and white. On the dark brown background LIV.52/drops 60 ml. are printed in white colour...the other matter is dark brown on yellow backg ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f the plaintiffs' product. Although the plaintiffs have tried to give certain date prior to June, 2000 when they applied for drug license etc, however, as per the plaintiffs' own showing they commenced production and marketing of this product on 27th May, 2000. On the other hand, the defendant launched its product in June, 2000. It cannot be said that the plaintiffs had acquired any reputation of their product within few days when the defendant had launched this product. This is an important factor which goes against the plaintiffs when the question of passing off is to be determined as acquiring a reputation of the mark is a sine qua non in passing off the trade mark. . The question of deception damages arise subsequently. One also cannot ignore the figures of the sales of two products. Whereas the plaintiffs claim that till October, 2000 they had sold the goods worth ₹ 1,34,000 lacs (although denied by the defendant as according to it, in ORG report, the total figure up to December, 2000 is ₹ 97,58,000/-), the sale figures of the defendant up to February, 2001 is ₹ 2,06,000/- appro. This shows as of today that the product of the defendant has also got sa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rescription. 13. In view of the aforesaid magnitude of the sale of the drug by the defendant as well it would be improper to restrain the defendant from marketing the product under the trade mark LIPICOR. One has to go by the principle of 'balance of inconvenience' in contract to 'balance of convenience' as propounded by the Supreme Court in such cases. Going by this principle also, the ex-parte order dated 9th February, 2001 warrants to be vacated. It may also be useful to refer to the judgment of the Supreme Court in the case of Wander Ltd. and Anr. v. Antox India (P) Ltd. reported in 1990 (Supp.) SCC 727. following observations show the path to be taken in considering such matters. Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The Court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The objection of the interlocutory injunction, i ..... X X X X Extracts X X X X X X X X Extracts X X X X
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