FAO (OS) Nos.313/2008 & 314/2008 Page 1 of 64 * IN THE HIGH COURT OF DELHI AT NEW DELHI Judgment reserved on: 25.09.2009 + Judgment delivered on: 01.12.2009 % 1. FAO(OS) 313 OF 2008 SCHERING CORPORATION & ORS. .....Appellants Through: Mr. Sachin Datta, Ms. Lakshmi Ramamurthy Ms. Shaila Arora, and Mr. Amit Mehta, Advocates VERSUS ALKEM LABORATORIES LTD. …….Respondent Through: Mr. Praveen Anand, Ms. Ishani Chandra and Ms. Vaishali Kakra, Advocates AND 2. FAO(OS) 314 OF 2008 SCHERING CORPORATION & ORS. .....Appellants Through: Mr. Sachin Datta, Ms. Lakshmi Ramamurthy, Ms. Shaila Arora and Mr. Amit Mehta, Advocates VERSUS GETWELL LIFE SCIENCES INDIA PRIVATE LIMITED …….Respondent Through: Mr. Praveen Anand, Ms. Ishani Chandra and Ms. Vaishali Kakra, Advocates CORAM: HON’BLE MR. JUSTICE MUKUL MUDGAL HON’BLE MR. JUSTICE VIPIN SANGHI 1. Whether the Reporters of local papers may No be allowed to see the judgment? 2. To be referred to Reporter or not? Yes 3. Whether the judgment should be reported Yes in the Digest? FAO (OS) Nos.313/2008 & 314/2008 Page 2 of 64 VIPIN SANGHI, J. 1. The present appeals have been filed by the appellants Schering Corporation, Schering-Plough Ltd. and Fulford (India) Ltd. under Order 43 Rule 1(r) CPC. They are directed against the identical orders dated 04th July, 2008 passed by the Learned Single Judge dismissing the appellants‘/plaintiffs‘ applications under Order 39 Rules 1 & 2 in the two suits CS (OS) No.730/2007 (out of which FAO(OS) No. 313/2008 arises) and CS(OS) No.361/2007 (out of which FAO(OS) 314/2008 arises) and vacating the ex parte ad interim orders of injunction passed in the said suits. 2. These interim applications had been filed to seek grant of an interim injunction to restrain the Respondent Alkem Laboratories Ltd. (Defendant in CS(OS) NO. 730/2007) (hereinafter referred to as ALKEM) and Getwell Sciences India Pvt. Ltd ( Defendant in Suit No. 361/2007) (hereinafter referred to as GETWELL) from using the marks TEMOKEM and TEMOGET respectively in relation to their pharmaceutical products — the active ingredient whereof is TEMOZOLOMIDE, a drug administered for the treatment of brain cancer. 3. The appellants filed the aforesaid two suits to, inter alia, seek permanent injunction to restrain infringement of registered trademarks, copyright, passing off, dilution, unfair competition, FAO (OS) Nos.313/2008 & 314/2008 Page 3 of 64 rendition of accounts of profits, deliver-up etc. against the aforesaid respondents ALKEM & GETWELL respectively. 4. The appellants have disclosed the genesis of the TEMOZOLOMIDE molecule and its marks TEMODAL and TEMODAR used by the appellants. In 1984 one Professor Steven synthesized a molecule and named it TEMOZOLOMIDE. In 1991 the Cancer Research Campaign Technology Ltd., UK acquired rights to the TEMOZOLOMIDE technology from its maker, Prof. Stevens. In 1992 the appellants obtained worldwide license for TEMOZOLOMIDE technology from the aforesaid Cancer Technology Ltd. and initiated their research and development of a brain cancer drug. The drug was approved as a medical drug for cancer treatment in 1999. The appellants then filed for TEMODAL as their Trademark for their TEMOZOLOMIDE-based drug. According to the appellants the drug is being sold in India ever since 17.01.2000. Even the mark TEMODAL was registered in India in favor of the appellant vide registration no.687936 w.e.f. 23.11.1995 in class 5, which, inter alia, relates to pharmaceuticals including alkylating cytotoxic agents for the treatment of various types of cancer. Similarly, TEMODAR is registered in name of appellant no. 3 vide registration no. 888816 w.e.f 29.11.1999. 5. The appellants claim that they are global science-based health care business entities with leading prescription, consumer and animal health products. The mark TEMODAL existed in the appellants‘ portfolio since 1978 and was first applied by them for FAO (OS) Nos.313/2008 & 314/2008 Page 4 of 64 ―Psychopharmaceutical Preparations‖ in Class 5 in Norway, Denmark and Sweden. The appellants commenced sales in Europe and thereafter in other parts of the world along with filing for registration of the mark TEMODAL in those respective countries, which they successfully acquired too. 6. The appellants claim to have came to know that the respondent ALKEM was marketing and selling an almost identically positioned drug (for treatment of brain cancer or glioblastoma multiforme) under the mark TEMOKEM which, according to the appellants, was phonetically, linguistically, textually, visibly, manifestly, confusingly and deceptively similar to their marks TEMODAL/TEMODAR. They also came to know that the respondent ALKEM had submitted a ―Proposed to be used‖ application bearing number 1348168 in class 5 for registration of the mark TEMOKEM and the same was advertised in Trademark Journal no. 1335-0 dated 01.11.2006 made available to the public on 03.03.2007. In answer to this, the appellants have filed a notice of opposition dated 23.03.2007 to the above application and the same is still pending. 7. The appellants alleged infringement of trademarks under section 29 of the Trademarks Act, 1999 (hereinafter referred to as ‗The Act‘) and also passing off against the respondent ALKEM, in their civil suit, being CS(OS) No.730 of 2007 filed on the original side of this Court. FAO (OS) Nos.313/2008 & 314/2008 Page 5 of 64 8. It appears that the learned Single Judge passed an ex parte ad interim order of injunction in favour of the appellants, and against the respondent ALKEM on 23.04.2007 thereby restraining the respondent ALKEM from launching/using, advertising, promoting, stocking, offering for sale or distributing or otherwise using trademark ―TEMOKEM‖ or any other mark deceptively or confusingly similar to that of the plaintiff‘s registered trademark ―TEMODAL/TEMODAR‖ as a drug used especially for treatment of brain cancer. However, after notice to the respondent ALKEM, and after hearing the parties the learned Single Judge by the impugned order has vacated the aforesaid order dated 23.04.2007 and dismissed the appellants‘ application under Order 39 Rules 1 & 2 CPC being I.A. No.4555/2007 while allowing respondent‘s application being I.A. No.6041/2007 filed under Order 39 Rule 4 CPC. 9. Similarly, in CS (OS) No.361/2007 wherein GETWELL is the defendant, the appellants claimed that they came to know in December, 2006 of the defendant/respondent marketing and selling an identically positioned drug by GETWELL under the brand name ‗TEMOGET‘ in Delhi and also in other towns of India. The appellants also stated that they had made enquiries with regard to the making of an application for registration of the trademark ‗TEMOGET‘ by the respondent GETWELL, but the search had produced no results. 10. The learned Single Judge initially passed an ex parte ad interim injunction order on 27.02.2007 thereby restraining GETWELL FAO (OS) Nos.313/2008 & 314/2008 Page 6 of 64 from advertising, promoting, stocking, offering for sale or distributing or otherwise using trademark ―TEMOGET‖ or any other mark deceptively or confusingly similar to that of the plaintiff‘s registered trademark ―TEMODAL/TEMODAR‖ as a drug used especially for treatment of brain cancer. After notice to and hearing the respondent GETWELL the ex parte ad interim order of injunction was vacated by the impugned order dated 04.07.2008 and the appellants application under Order 39 Rule 1 & 2 CPC being I.A. No.2226/2007 was dismissed. 11. The learned Single Judge in his impugned orders observed that the term ‗TEMO‘ used in the appellant‘s registered trademarks as well as in the respondent‘s trademarks are derived from the name of the chemical compound TEMOZOLOMIDE. To the said term ‗TEMO‘ the appellants had added the suffix ‗DAL‘ and ‗DAR‘ to arrive at the trademarks ‗TEMODAL‘ and ‗TEMODAR‘ respectively. On the other hand, respondents had added the suffix ‗KEM‘ and ‗GET‘ which are the parts of the respondent‘s company names, to arrive at the trademark ‗TEMOKEM‘ and ‗TEMOGET‘ respectively. The learned Single Judge held that all the trademarks, as aforesaid, are portmanteau words. He further held as follows: ―A portmanteau word is used to describe a linguistic blend, namely, a word formed by blending sounds from two or more distinct words and combining their meanings. Examples of portmanteau words are – brunch (breakfast + lunch); Tanzania (Tanganyika + Zanzibar). As per the Wikipedia, portmanteaus can also be created by attaching a prefix or suffix from one word to give that association to FAO (OS) Nos.313/2008 & 314/2008 Page 7 of 64 other words. For example, the suffix ‗holism‘ or ‗holic‘ taken from the word ‗alcoholism‘ or ‗alcoholic‘ can be added to a noun, creating a word that describes an addiction to that noun. For example, chocoholic means a person who is addicted to chocolate and workaholic means a person who is addicted to work and so on. Portmanteau words can also be used to describe bilingual speakers who use words from both languages while speaking. For instance, a person would be considered speaking ‗Spanglish‘ if he is using both Spanish and English words at the same time. Similarly, the portmanteau word ‗Hinglish‘ would refer to the usage of Hindi and English words at the same time.‖ 12. He held that the respondents were able to show the derivation of the trademarks ‗TEMOKEM‘ and ‗TEMOGET‘ by employing ‗TEMO‘ from TEMOZOLOMIDE and ‗KEM‘ from the name of the respondent ALKEM and, similarly, ‗GET‘ from the name of the respondent GETWELL, respectively. The combined effect of ‗TEMO‘ and ‗KEM‘ would be TEMOZOLOMIDE manufactured by Alkem Laboratories. Similarly, the combined effect of ‗TEMO‘ and ‗GET‘ is TEMOZOLOMIDE manufactured by Getwell. 13. The learned Single Judge relied on the decision of this court in Kalindi Medicure Pvt. Ltd. Vs. Intas Pharmaceuticals Limited and Anr. 2007 (34) PTC 18 (Del) wherein this Court had taken note of the established practice that in pharmaceutical trade names of various drugs are often almost similar to each other, having common prefixes or suffixes, for the reason that the name of the drug conveys as to which salt / compound it is a derivative of. In that case, while one of FAO (OS) Nos.313/2008 & 314/2008 Page 8 of 64 the products was sold in the form of pills in aluminum foils, the other competing product was sold in pre filled syringes. The price difference in the competing products was also taken into account for vacating the ex parte injunction granted in favour of the plaintiff in that case. 14. The learned Single Judge heavily relied on the Division Bench Judgment of this Court in Astrazeneca UK Ltd. & Anr. Vs. Orchid Chemicals & Pharmaceuticals Ltd. 2007 (34) PTC 469 (DB) (Delhi) which concerned the claim for infringement of the plaintiffs/appellants registered trademark ‗MERONEM‘ by the defendants/respondents use of the trademark ‗MEROMER‘. Both the products were derived from the active ingredient ‗MEROPENEM‘. The Division Bench of this Court came to the conclusion that ‗MEROPENEM‘ is a molecule which is used for treatment of bacterial infection and the term ‗MERO‘ being an abbreviation of the generic term ‗MEROPENEM‘ was publici juris. Consequently, the appellants/plaintiffs in that case were held not entitled to claim exclusive rights to the use of the term ‗MERO‘ as a constituent of the trademark in question as it was descriptive of the appellants‘/plaintiffs‘ drug. The Division Bench further held that the common feature in both the competing marks ‗MERO‘ being descriptive and publici juris, the customers would tend to ignore the common feature and would pay more attention to the uncommon features namely ‗MER‘ and ‗NEM‘, which were clearly dissimilar. The following paragraph from the said decision of the Division Bench was particularly referred by the learned Single Judge : FAO (OS) Nos.313/2008 & 314/2008 Page 9 of 64 ―19. Admittedly, ‗Mero‘, which is common to both the competing marks, is taken by both the appellants/plaintiffs and the respondent/ defendant from the drug ―Meropenem‘, taking the prefix ‗Mero‘ which is used as a prefix in both the competing marks. Both the appellants/plaintiffs and the respondent/ defendant are marketing the same molecule ‗Meropenem‘. Neither the appellants/plaintiffs nor the respondent/defendant can raise any claim for exclusive user of the aforesaid word ‗Meropenem‘. Along with the aforesaid generic/common prefix, ‗Mero‘, the appellants/ plaintiffs have used the syllables ‗nem‘, whereas, the respondent/defendant has used the syllable ‗mer‘. It is true that the aforesaid words/trade names cannot be deciphered or considered separately, but must be taken as a whole. But even if they are taken as a whole, the prefix ‗Mero‘ used with suffix in the two competing names, distinguishes and differentiates the two products. When they are taken as a whole, the aforesaid two trademarks cannot be said to be either phonetically or visually or in any manner deceptively similar to each other.‖ 15. The learned Single Judge noted the view of the Division Bench in Astrazeneca (supra) that in the trade of drugs it was a common practice to name the drug by the name of the organ or ailment which it treated or the main ingredient of the drug. The name of such an organ, ailment or ingredient being publici juris or generic, could not be claimed by anyone exclusively for use as a trademark. The argument of the appellant that it was the first to have adopted and use the name ‗TEMO‘, and that the appellants had trans-border reputation [which were claimed to be the distinguishing feature from the Astrazeneca (supra) case] was rejected by the learned Single Judge as the claim of the appellants was founded upon an alleged FAO (OS) Nos.313/2008 & 314/2008 Page 10 of 64 infringement of registered trademark. It was also not a case where the respondents had raised a defence of prior use under Section 34 of the Act, where again, the question of ―who used the mark first‖ would be relevant. The case of the appellants was one of infringement under Section 29 of the Act and the only question which required consideration was whether the respondent‘s trademarks were deceptively similar to the appellants registered trademarks, which could lead to confusion in the mind of the purchaser to purchase the drugs of the respondents, while intending to purchase the appellants drugs. 16. The learned Single Judge held that the present cases are squarely covered by the decision of the Division Bench in Astrazeneca (supra). 17. The learned Single Judge also took note of the decision in Bhagwan Dass Gupta Vs. Shri Shiv Shankar Tirath Yatra Company Pvt. Ltd. 93 (2001) DLT 406 wherein a learned Single Judge of this court noted that the basic test to find out whether a trademark is publici juris is whether the mark has come to be so public because of its universal use that it does not confuse or deceive, by the use of it, the purchasers of the goods of the original trader. The learned Single Judge held that as TEMOZOLOMIDE is a generic word and is publici juris and nobody can claim exclusivity in respect of the same. Consequently, the clipped expression ‗TEMO‘ derived from clipping FAO (OS) Nos.313/2008 & 314/2008 Page 11 of 64 word TEMOZOLOMIDE would also be publici juris over which no person could claim exclusive proprietorship. 18. The learned Single Judge also placed reliance on another decision of this Court in Cadila Laboratories Ltd. V. Dabur India Ltd., 1997 PTC (17) 417. The competing marks considered in the said case were `MEXATE‘ AND `ZEXATE‘. The suffix `EXATE‘ was common to both the marks, the only difference being in the prefix `M‘ & `Z‘. It was held in that case that where the suffix is common, prefix would have to be compared to see whether the marks are deceptively similar. The following extract from Cadila (supra) was quoted by the learned single Judge in the impugned order: ―As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered.‖ 19. The learned single Judge rejected the appellants reliance on the decision of the Supreme Court in Milment Oftho Industries & Ors V. Allergan Inc., 2004 (28) PTC 585 (SC) on the ground that the said decision was rendered in a case of passing of and not in an action for infringement of trade mark. The competing marks in the case of Milment (supra) were identical. Both the plaintiff and the defendant had adopted `OCUFLOX‘ as their trade mark. However, in the present cases the marks of the appellants and the respondents are not FAO (OS) Nos.313/2008 & 314/2008 Page 12 of 64 identical. For the same reason, the decision in Pfizer Ireland Pharmaceuticals V. Intas Pharmaceuticals & Anr., (2004) 28 PTC 456 (Del) (The Lipitor v. Lipicor case) was distinguished. 20. Reliance placed by the appellants on the decision in Hoechst Pharmaceuticals Ltd & Ors V. Government of India & Ors, 1983 PTC 265 (Del) (DB) was also rejected as it proceeded on the assumption that the appellants products are superior to that of the respondent. The said basis could not be accepted at the prima facie stage, particularly, when the respondent had obtained drug licence under the Drug and Cosmetics Act, 1940. For the same reason, the learned Single Judge rejected the appellants reliance on the decision in Ramdev Food Products (P) Ltd. V. Arvindbhai Rambhai Patel & Ors., (2006) 8 SCC 726. 21. The learned single Judge also held that the trade marks `TEMODAL‘ & `TEMODAR‘ of the appellants were not identical with the trademarks TEMOKEM and TEMOGET. He held that there was no phonetic or visual similarity between the marks. The Court prima facie came to the conclusion that the suffix `KEM‘ and ‗GET‘ are entirely different and distinct from the suffix `DAL‘ and ‗DAR‘ used in the appellants trademarks. Prima facie the comparison of the competing marks did not show phonetic or visual similarity between the respondent‘s marks with the trademarks of the appellants and the respondents‘ marks were not prone to deceive the consumers. He also took into account the fact that TEMOZOLOMIDE is a schedule ‗H‘ drug FAO (OS) Nos.313/2008 & 314/2008 Page 13 of 64 which could be sold in retail only on the prescription of a registered medical practitioner. The same, though not sufficient to answer a case of ―no deception‖, was an important factor considering the fact that the product in question is a highly specialized drug and used for specific treatment of a type of brain cancer. The Court also took notice of the fact that in the case of both the respondents, their packaging of the drugs contained the warning ―to be supplied against demand from cancer hospitals, institutions and against the prescription of a cancer specialist only.” 22. The immense price difference between the products of the appellants on the one hand and those of the respondents was also taken note of by the learned single Judge. Whereas a set of 5 capsules of 100 mg of TEMODAL/TEMODAR are sold for Rs.33,602/-, 5 capsules of 100 mg each of TEMOKAM are sold for Rs.6,300/- and a set of 5 capsules of 250 mg each of TEMOGET sell for Rs.12,000/-. 23. For the aforesaid reasons, the learned single Judge dismissed the interim injunction applications filed by the appellants in the two suits. 24. Learned counsel for the parties have made elaborate submissions in support of their cases. 25. As noted above, the learned Single Judge has held that the present cases are covered by the Division Bench decision in Astrazeneca (supra). We have, therefore, gone through the said FAO (OS) Nos.313/2008 & 314/2008 Page 14 of 64 judgment. Before we proceed further, in our view it is essential for us to deal with the appellants‘ submissions vis-à-vis Astrazeneca (supra), as the scope of the parties‘ submissions which we need to consider in this appeal would depend upon our understanding of the said judgment. 26. In Astrazeneca (supra) both the appellant/plaintiff and the respondent/defendant had got their marks registered, though the appellant/plaintiff had moved an application for rectification in respect of the respondents/defendants trade mark `MEROMER‘. The appellant had contended that since 1995-96, the drug under the brand name `MERONEM‘ was being marketed by it in over 89 countries. On the other hand, the respondent/defendant had launched their drug `MEROMER‘ in India sometime in November, 2004 and they were granted registration of the trade name `MEROMER‘ on the basis of their application for registration filed on 2.8.2004 in Class 5. The appellant/plaintiff had contended that the trade name `MEROMER‘ of the respondent as a whole be compared with the trade mark of the appellant/plaintiffs i.e. `MERONEM‘ and on such comparison it would be clear that both are deceptively similar. On the other hand, the respondent/defendant had contended that an action for infringement was not maintainable in view of the provisions contained in Section 29 & 32(e) of the Act which provide, inter alia, that use of a mark by its registered proprietor shall not constitute infringement. FAO (OS) Nos.313/2008 & 314/2008 Page 15 of 64 27. The learned single Judge held that the two trademarks are phonetically not similar and that the two marks are distinct. He also held that if an injunction as sought for is granted by restraining the respondents/defendants from selling, marketing or in any manner dealing with the drug `MEROPENEM‘ under the trade name `MEROMER‘ there would be irreparable inconvenience caused to the respondents/defendants, whereas the loss of the appellants/plaintiffs if any, which is more financial in nature could be safeguarded by directing the respondent/defendants to maintain accounts of sale under the trade name `MEROMER‘. The appellant/plaintiff in Astrazeneca (supra) placed reliance on the decision of the Supreme Court in Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd., 2001 PTC 541 (SC). The Division Bench in Astrazeneca culled out the principles laid down by the Supreme Court which would be applicable to a passing off action involving medicinal products. The Supreme Court held that the test to be applied to adjudge the violation of trade mark may not be at par with the case involving non- medicinal products. The Division Bench then proceeded to take notice of an earlier Division Bench judgment of this Court in SBL Limited. V. Himalaya Drug company, 1997 PTC (17) 540 and quoted the following observation of the Court: ―25.(3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris. In the trade of drugs it is common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such an organ FAO (OS) Nos.313/2008 & 314/2008 Page 16 of 64 ailment or ingredient being publici juris or generic cannot be owned by anyone for use as trade mark.‖ 28. The Division Bench in Astrazeneca (supra) also referred to two other decisions in M/s Biofarma V, Sanjay Medical Stores, 1997 PTC (17) 355 and Cadila Laboratories V. Dabur India Limited, 1997 PTC (17) 417 wherein Dr. Mukundakam Sharma, J, as his Lordship then was, had occasion to deal with the trade names `TRIVEDON‘ and `FLAREDON‘ in the first case and `MEXATE‘ and `ZEXATE‘ in the second case. The Division Bench culled out the following extract from the decision in M/s Biofarma (supra): ―Section 2(d) of the Trade and Merchandise Marks Act 1958, (hereinafter referred to as the Act) defines the word ‗deceptively similar‘ as which would be deemed to be deceptively similar to another mark if it so nearly resembles that other mark so as likely to deceive or cause confusion. For deciding the question of deceptive similarity the Courts have laid down the following factors to be considered: (a) The nature of the marks, i.e. whether the marks are world marks or level marks or composite marks, i.e. both world and level marks. (b) the degree of resembleness between the marks, phonetically similar and hence similar in idea (c) the nature of the goods in respect of which they are used to trade marks (d) the similarity in the nature, character and performance of the goods of the rival traders. FAO (OS) Nos.313/2008 & 314/2008 Page 17 of 64 (e) The class of purchasers who are likely to buy the goods