*1* nms.2224.10.s.2117.10.sxw kps IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.2224 OF 2010 IN SUIT NO.2117 OF 2010 Unichem Laboratories Ltd., ) A limited Company incorporated under ) The Companies Act, 1956 having its ) Registered office at Unichem Bhavan, ) Prabhat Estate, S.V.Road, ) Jogeshwari (West), Mumbai-400102. ) ..Plaintiffs -Versus- 1 Ipca Laboratories Ltd., ) A limited Company incorporated under ) The Companies Act, 1956, having its ) Place of business at Plot No.255/1, ) Athal, Silvassa 396230 (D &NH). ) 2 AstraZeneca Pharma India Ltd., ) A company incorporated under ) The Companies Act, 1956, having its ) place of business at Survey No.5-2/E,) 12th Mile Bellary Road, Yelahanka, ) Banglore-560063. ) ..Defendants .......... Mr.Ravi Kadam, Advocate General a/w Mr.A.Kamath, Mr.M.A.Mahadgut and Ms.Reema Bangale, for the Plaintiffs. Mr.Gauraj Shah i/b Vimadalal & Company, for the Defendant No.1. Mr.Janak Dwarkadas, Senior Counsel a/w Mr.Rahul Chitnis and Mr.Gajaria i/b Gajaria & Company, for the Defendant No.2. .......... CORAM : S.C.DHARMADHIKARI, J. Reserved on : 03rd December, 2010 Pronounced on : 24th January, 2011. *2* nms.2224.10.s.2117.10.sxw JUDGMENT: 1 This Notice of Motion for interim reliefs has been filed by the Plaintiffs in a suit seeking permanent injunction restraining the Defendants from in any manner manufacturing, marketing, selling, distributing, exporting and/or using in relation to any medicinal and/or pharmaceutical preparations and/or such allied and cognate goods the trade mark “SELORAM” or any other mark being deceptively similar in any manner whatsoever to the Plaintiffs mark “LORAM” so as to pass off or enable others to pass off the Defendants goods as and for the goods of the Plaintiffs. 2 It is agreed that since both the Plaintiffs and the Defendants are not registered proprietors of the respective marks the claim as made is only in relation to passing of. In other words, the mark of Plaintiffs being not registered, there is no question of seeking any permanent injunction restraining infringement. However, an action to prevent passing of is maintainable and that is pressed. 3 It is stated by the Plaintiffs that they are a company incorporated under the Companies Act, 1956 carrying on business inter- alia as manufacturers of and dealers in pharmaceutical and medicinal preparations, for the last several decades. They claim to be established and well known pharmaceutical company in India and their products enjoy very high reputation because of the excellent quality and efficiency. It is stated that total turnover for the year 2009-2010 amounts to approximately Rs.691 crores. 4 The Defendant No.1 is also a company incorporated under the Companies Act, 1956 carrying on business of manufacturing the pharmaceutical preparations. The Defendant No.2 is a company carrying *3* nms.2224.10.s.2117.10.sxw on business as seller and distributor of pharmaceutical preparations. 5 The Plaintiffs claim that their product/medicinal drug sold in the market under the mark "LORAM" has acquired good reputation over the years and the act of Defendant No.1 in manufacturing identical product under the mark "SELLORAM", so also, that of the Defendant No.2 in selling and distributing the same, is passing of their product as that of the Plaintiffs. 6 In paragraph No.4 of the plaint, the Plaintiffs have asserted their goodwill and reputation in the market and in paragraph Nos.5 and 6 this is what is stated:- “5. Sometime in early 2002, the Plaintiffs conceived, coined, invented and adopted the Trade Mark LORAM for use in respect of their Pharmaceutical or Medicinal Preparations. The Plaintiffs are the proprietors of Trade Mark LORAM (word per se) and have applied for registration of the said word mark under No.1077469 dated 01.02.2002 in respect of the goods “Medicinal and Pharmaceutical preparations” being goods falling in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002 framed under the Trade Marks Act, 1999. The Plaintiffs have also applied for registration of a label mark containing the word LORAM as its prominent and memorable feature under No.1192320 dated 17.04.2003 in respect o9f the goods “Medicinal and Pharmaceutical preparations” being goods falling in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002 framed under the Trade Marks Act, 1999. The said applications are pending. Hereto annexed and marked Exhibit “A-1” and “A-2” are the copies of the said applications with respect to the said Trade Mark LORAM (word per se) and LORAM (label). The Plaintiffs are selling the product LORAM since June, 2002. The Pharmaceutical preparation sold under the Trade Mark LORAM is used for treatment of Hypertension associated with Diabetes & renal ailment. The Plaintiff goods are sold as LORAM containing inter-alia Losartan and Ramipril and LORAM- H containing inter-alia Losartan, Ramipril and *4* nms.2224.10.s.2117.10.sxw hydrochlorothiazide. The Plaintiff has been manufacturing and marking the said preparation in varying potencies and/or strength of the active ingredients and selling it as LORAM 1.25, LORAM 2.5, LORAM 5mg, LORAM-H 2.5, LORAM-H 5mg. The product packs of Plaintiffs goods under the mark LORAM and its brand extensions are at Exhibit “B-1” and “B-2”. 6. The Plaintiffs have undertaken by themselves or through appointed agencies extensive trials on the product LORAM which comprises of the active pharmaceutical ingredients Losartan Potassium plus Ramipril. These trials are known as “Lord Trials”. The first Lord Trial was conducted in the year 2002. The Plaintiffs have spent lakhs of rupees on this trial and scientific papers of the efficacy of the product LORAM on patients with diabetic and renal problems was submitted to reputed medical journals like JAPI Vol.52 183-195 March 2004, Paper Presentation in ADA 66th Scientific Session June 9-13, 2003, Washington. The second series of Lord Trial was conducted in the year 2004. The Plaintiffs have spent lakhs of rupees on this trial too. The third series of Lord Trial was conducted in the year 2009 and again the Plaintiffs spent a large amount of money on this trial. In all the trial which is a unique post marketing surveillance was conducted on 1125 patients in these Lord Trials and the outcome of these trials are thoroughly referred to by scientists for major path breaking discussion in diabetic and renal patients. The Plaintiffs thereby have acquired large reputation not only in India but also abroad and the product LORAM alongwith LORD TRIALS are well known amongst medical practitioners. Copies of these scientific papers are hereto annexed and marked as Exhibit “C-1” to Exhibit “C-7”.” 7 The Plaintiffs have alleged that extensive trials of the product "LORAM" comprising of active pharmaceutical ingredients Losartan Potassium plus Ramipril were conducted on which lacs of rupees have been spent and these trials enabled them to acquire reputation not only in India but abroad. It is categorically stated that manufacturing and *5* nms.2224.10.s.2117.10.sxw marketing of the product bearing "LORAM" and its brand extension has been undertaken by the Plaintiffs since June, 2002. The Plaintiffs have annexed documents to prove the promotional expenditure and sales of their product. The statements in furtherance of the sale are made in paragraph Nos.7 to 9 of the plaint and in paragraph Nos.10 and 11 this is what is alleged:- “10. Sometime in June, 2010, Plaintiffs were shocked when they came across Defendants medicinal preparation under the impugned mark SELORAM. Hereto annexed and marked as Exhibit “G” is pack of Defendants product under the mark SELORAM sold under different strengths as SELORAM 25/2.5 and SELORAM 50/5. The Defendants mark is structurally, phonetically and visually almost identical with and/or deceptively similar to the Plaintiffs trade mark LORAM. The Defendants have merely added the letters “SE” in Plaintiffs mark and adopted the impugned mark. The whole of the Plaintiffs mark is incorporated in the Defendants mark. Such minor changes are insignificant and there is absolute overall visual and phonetic similarity between the rival marks which is not altered by such insignificant changes. The Plaintiffs further say that the impugned mark SELORAM is also structurally similar to the trade mark LORAM of the Plaintiff. The addition of alphabet “SE” has been done only so as to make a show of difference, which in any event, is almost non-existent. 11. The Plaintiffs submit that the Defendants are manufacturing and selling goods by copying the Plaintiffs trade mark LORAM and its brand extensions thereby making it impossible for the common man to distinguish the Plaintiffs goods from those of the Defendants. The Plaintiffs state that the Defendants by copying and using the almost identical mark are causing damage to the reputation and goodwill of the Plaintiffs and at the same time are cheating the gullible customers and putting their lives to danger. The Plaintiffs’ goods are manufactured following very high and stringent quality standards. While the Plaintiff’s product contains inter-alia Losartan and Ramipril and is used for treatment of hypertension *6* nms.2224.10.s.2117.10.sxw associated with diabetes and renal problem, the Defendant’s product SELORAM contains inter-alia Metoprolol & Ramipril. Thus, if the product of the Defendant is given to a patient requiring the product of the Plaintiff or vis-a-versa it will certainly give patient a disastrous effect.” 8 It is in these circumstances that the Plaintiffs allege that by applying the impugned mark to the goods, the Defendants have committed the acts of passing of and therefore, the Plaintiffs are entitled to the perpetual injunction as claimed. On account of the fact that the products being drugs and medicinal preparations, in public interest, interim injunction is also claimed. The statements to support the claim for interim injunction have been made from paragraph Nos.12 to 19 of the plaint. 9 In the affidavit in support of the Notice of Motion, the statements in the plaint are reiterated and the Head-Legal & Company Secretary of the Plaintiffs states that the mark “SELORAM” of Defendants is identical with or deceptively similar to the trade mark of Plaintiffs “LORAM” and its use is to bound to cause confusion and deception in the market. Therefore, when the Defendants have recently entered the market, interim injunction as claimed must be granted or else hardship will be caused not only to the Plaintiffs but the public at large. It is clearly stated that the composition of two products being different, consumption of one in place of other will lead to disastrous consequences. 10 The affidavits in reply have been filed. In the first affidavit that has been filed by the Vice President- Legal & the Company Secretary of the Defendant No.2 namely N.R.Srinivasan, it is alleged that the suit is totally misconceived and the claim of Plaintiffs is frivolous, vexatious and *7* nms.2224.10.s.2117.10.sxw is abuse of process of law. It is stated that at least four pharmaceutical manufacturers/ companies claim to have adopted identical/ deceptively similar trade mark and exclusivity thereof as per details set out in the affidavit shows that M/s Haryana Formulations Pvt.Ltd. Ludhiana, proprietor of identical mark “LORAM” is claiming priority in adoption/ user since 01.01.1999, therefore, the Plaintiffs cannot claim either ownership in adoption or exclusivity of user, so also, any priority. In these circumstances, there is no substance in the claim of Plaintiffs that the mark “LORAM” is exclusively associated with them. The Plaintiffs are also guilty of infringement inasmuch as M/s Bestochem Formulations (India) Limited and M/s Adonis Laboratories Private Limited who have registered the trade marks “FLORAMIN” and “LORAMYL” are claiming use in respect thereof since January, 1989 and 01.03.1983 respectively. Therefore, when the Plaintiff itself is guilty of infringement and there is no question of such a person being given any discretionary and equitable reliefs. 11 In paragraph No.5(e) of the affidavit in reply affirmed at Mumbai on 13.09.2010, it is alleged as under:- “5(e) The Plaintiff has deliberately and with mala fide and ulterior motive suppressed from this Hon’ble Court the fact that its application for registration of the marks “LORAM” under No.1077469 and “LORAM” label under No.1192320 are opposed as detailed hereinbelow: I. Application No.1077469 in respect of “LORAM” Opposed by F.Hoffmann-La Roche AG, Switzerland. II. Application No.1192320 in respect of “LORAM” label Opposed by: (i) Alkem Laboratories Ltd., Mumbai (ii) Haryana Formulations Pvt.Ltd., Ludhiana (iii) Neon Laboratories Limited, Mumbai. The Plaintiff having suppressed the said material facts is liable to have its Suit dismissed.” *8* nms.2224.10.s.2117.10.sxw 12 It is then submitted that there is gross delay in approaching this Court because the Defendants’ product is in the market since May, 2009. There was conference organized by the Research Society for Study of Diabetes in India at which the representatives of both the Plaintiffs and the Defendants were present. When this conference was attended it was noticed by everybody that the Plaintiffs and the Defendants had stalls next to each other. The Plaintiffs allowed the Defendant No.2 to market the product “SELORAM” for all these years and did not object or protest. Hence, it is false to suggest that the cause of action arose in June, 2010 and that is first time when the Plaintiffs detected the act of passing of. 13 It is stated that the Defendant No.2 is a well established pharmaceutical company in India and it is part of a group namely AstraZeneca Group of Companies. They are in pharmaceutical business and leaders in world. The details thereof are set out in paragraph Nos.6 to 11 of the affidavit and it is stated that the trade marks “SELOKEN” and “RAMACE” are registered in India in the name of AstraZeneca since 16.06.1977 and 28.12.1987 respectively. Further the trade mark “SELOKEN XL” is also registered in India in the name of Defendant No.2 since 01.04.2002. The marks are valid and subsisting on the Registrar of Trade Marks. The trade marks “SELOKEN” and “RAMACE” have been adopted in 1973 and 1986 respectively. It is stated that the products under these trade marks are sold extensively all over India and the certificates of the Chartered Accountants would demonstrate that the goods with prefixes “SELO” and “RAM” have been sold. It is stated that the trade mark “SELORAM” was conceived, coined and invented in early 2008 and it clearly traces its roots to the brands “SELOKEN” and “RAMACE” i.e. prefix “SELO” from “SELOKEN” and “RAM” from *9* nms.2224.10.s.2117.10.sxw “RAMACE”. These marks can be traced to the companies which are in pharmaceutical business for decades together. 14 In paragraph Nos.21 and 22 of this affidavit, this is what is stated:- “21. I say that the records of the Trade Marks Registry indicate numerous applications/ registrations for “LORAM” and/or “LORAM” formative marks in the name of different entities. The Defendant No.2 craves leave of this Hon’ble Court to refer to and rely upon list of “LORAM” and/or “LORAM” formative trade marks along with their advertisement cuttings/ extracts from the online records of the Trade Marks Registry which are being filed in separate compilation of documents. I say that “LORAM” of the Plaintiff is publici juris/generic and, therefore, no exclusivity in respect thereof can be claimed by the Plaintiff. For ease of reference, reproduced herein below is a list of few “LORAM” and/or “LORAM” formative marks which are easily discernible in respect of goods in Class 5. The list is illustrative and not exhaustive: Sr. No. Trade Mark Applicant/Proprietor User Claimed Status 1 AMLORAM Raptakos, Brett & Co. Ltd. July 8, 2002 Registered* 2 FLORAMIN Bestochem Formulations (I) Ltd.. January 1, 1989 Registered* 3 FLORAMITE Uniroyal Chemical Company Inc. November 25, 2004 Registered* 4 FLORAMOX Bhupinder Singh Inder Pal Singh Chawla, trading as Daffodil Pharma Corporation. April 1, 1999 Opposed* 5 LORAM Haryana Formulations P.Ltd. January 1, 1999 Opposed* 6 LORAM Zydus Cadilla Not available Not available 7 LORAM Kalindi Medicure Pvt.Ltd. Proposed Opposed* 8 LORAMET Optrex India Limited Proposed Not available 9 LORAMEX Nabros Pharma Pvt.Ltd. Proposed Registered* 10 LORAMIDE J.K.Chopra, K.K.Soni and Rajesh Chopra, trading as J.D.Pharmaceuticals Proposed Removed* *10* nms.2224.10.s.2117.10.sxw 11 LORAMIN OKASA Pharma Pvt.Ltd. Proposed Registered* 12 LORAMOXIN Cheryl Laboratories Pvt.Ltd. Proposed Registered* 13 LORAMYC Bioalliance Pharma Proposed Opposed* 14 LORAMYL Adonis Laboratories Pvt.Ltd. March 1, 1983 Registered* 15 OFLORAM Arun Dua Trading as Sri Ram Life Sciences March 3, 2004 Registered* 16 TALORAM Glaxosmithkline Trading Services Ltd. Proposed Advertised* * As per online records of Trade Marks Registry. 22. I say that numerous “LORAM” and/or “LORAM” formative marks have been adopted/used in respect of goods in Class 5 in different countries of the world. The mark “LORAMET” in Class 5 in the name of Wyeth LLC, USA in respect of ‘sedatives and hypnotic purposes’ is registered in UK and Singapore since August 31, 1979 and November 18, 1980, respectively. Further, an application dated July 25, 2005 for registration of the trade mark “LORAM” under No.42008008963 in respect of ‘pharmaceutical preparations namely Chloramphenicol’ in Class 5 has been filed with the Intellectual Property Office, Philippines by Wellness Ag, Inc., Philippines. The aforesaid examples are illustrative and not exhaustive. The Defendant No.2 craves leave of this Hon’ble Court to refer to and rely upon the online records downloaded from the Intellectual Property Offices of UK, Singapore and Philippines which are being filed in separate compilation of documents.” 15 It is, therefore, alleged that by concealment of material facts, the Plaintiffs have perpetuated fraud on this Court and their suit is liable to be dismissed. Once their suit is liable to be dismissed, then, there is no question of grant of interim injunction in their favour. The conduct of Plaintiffs disentitles them from any equitable and discretionary reliefs particularly when they approach the Court with unclean hands. 16 There is a rejoinder affidavit filed by the Plaintiffs which *11* nms.2224.10.s.2117.10.sxw deals with the affidavit in reply in which the allegations made have been denied. In addition, it has been stated that if both parties operate in the same trade, then, it cannot be believed that the Defendant No.2 is unaware of the Plaintiffs’ prior adoption/use of the trade mark “LORAM”. It is stated that both products are used for the treatment of hypertension. The Plaintiffs’ product is used for treatment of hypertension associated with diabetes and/or renal problems. The Defendants’ product is indicated in hypertension and associated with Cardiovascular disorders like heart failure. Therefore, the Defendants’ preparations if administered instead of Plaintiffs’ preparations to the patients that would have disastrous consequences and the Defendants’ product may disturb glycemic control. In such circumstances and when there is opinion of Doctors to this effect, then, the Plaintiffs deserve interim protection. 17 In paragraph Nos.6 of this rejoinder, the Plaintiffs’ dealt with the allegations of infringement of registered trade marks belonging to M/s Bestochem Formulations (India) Limited and M/s Adonis Laboratories Private Limited and it is stated that it is for these companies/ entities to make complaint of such infringement and not for the Defendants. In any event there is no visual/ structural/ phonetical similarity between the Plaintiffs’ mark and registered trade marks “FLORAMIN” and “LORAMYL”. In such circumstances that argument is not open for the Defendants. 18 As far as the alleged suppression is concerned, the case as set out is irrelevant because the matter is purely between the Plaintiffs and the Defendants. The Plaintiffs were under no legal obligation to disclose all opposition proceedings. The opposition to registration is of no relevance as the claim in the present suit only relates to passing of. 19 In paragraph Nos.8.2 and 8.3 of the rejoinder, the allegations with regard to delay and latches and acquiescence have been dealt with *12* nms.2224.10.s.2117.10.sxw by urging that mere presence in All India Conferences will not show that the Plaintiffs had knowledge or they were aware of Defendants’ user and adoption. 20 In these circumstances, while reiterating the plaint allegations what has been stated is that the Defendants have failed to make out any case of dishonesty and lack of bonafides on the part of Plaintiffs. 21 There is additional affidavit which is filed by the Defendant No.2 on 18.09.2010 and in the said affidavit, the Defendant No.2 has stated that the Plaintiffs along with the Defendant No.1 participated at 37th Annual Meeting of Research Society for Study of Diabetes in India held in Ahmedabad from 5th to 8th November, 2009 through its division namely Unisearch CD along with the Defendant No.2 wherein the products of the Defendant No.2 under the trade mark “SELORAM” were extensively promoted/ displayed publicly. In fact the stalls of the Defendant No.2 and Unisearch CD were in the same vicinity. More than 3,000 delegates participated in the said conference which was dominated by diabetologists, cardiologists and other medical practitioners. It is stated that the stalls of the Defendant No.2 and the Plaintiffs were adjacent to each other and the pharmaceutical products were known from November, 2009 and in any event they have been known to the market since December, 2009 because the data in that behalf is published by the IMS Health Information and Consulting Services India Private Limited. Therefore, the Plaintiffs were aware of the products of Defendant No.2 if not from April 2009 at least from November, 2009, therefore, the statement that they became aware from June, 2010 is false. 22 In paragraph Nos.9 and 10 of the additional affidavit of Defendant No.2 dated 18.09.2010, this is what is stated :- “9. I further say that the Plaintiff is guilty of concealment of material facts and is not entitled to any relief/s from this *13* nms.2224.10.s.2117.10.sxw Hon’ble Court. As stated in my previous affidavit, the Plaintiff has deliberately and with malafide and ulterior motive suppressed from this Hon’ble Court that its application for registration of the marks “LORAM” under No.1077469 and “LORAM” label under No.1192320 were opposed by four entities. The aforesaid Notices of Opposition are absolutely essential for determining the alleged claim of exclusivity over “LORAM” made by the Plaintiff. The Defendant No.2 craves leave of this Hon’ble Court to refer to and rely upon the requests filed with the Trade Marks Registry for the issuance of the certified copies of the aforesaid Notices of Opposition and/or other relevant documents which are being filed in separate compilation of documents. I say that the said certified copies of the Notices of Opposition shall be filed with the Court as and when the same are made available to the Defendant No.2 by the Trade Marks Registry. 10. I say that M/s Wyeth LLC, USA and M/s Wellness Ag. Inc., Philippines sell/distribute internationally the products bearing the marks “LORAMET” and “LORAM”, respectively. The product under the mark “LORAMET” is available extensively in countries such as Belgium, Greece, Hong Kong, Ireland, Netherlands, South Africa, Singapore, Spain, Switzerland, Thailand, Czech Republic, Poland etc.. I crave leave of this Hon’ble Court to refer to and rely upon the study dating back to the year 1985 and the literature dating back to the year 1995 in respect of the product under the trade mark “LORAMET”, which is being filed in separate compilation of documents.” 23 Therefore, the claim is that the mark “LORAM” is commonly used by many companies in the market and the goods are sold under various brand names/marks of similar nature and, therefore, the Plaintiffs are not entitled to the interim injunction as prayed. 24 As stated above there is rejoinder affidavit of the Plaintiffs and on this material that I have proceeded to hear Mr.Kadam, learned Advocate General appearing on behalf of the Plaintiffs and Mr.Dwarkadas, learned Senior Counsel appearing on behalf of the Defendant No.2. *14* nms.2224.10.s.2117.10.sxw 25 Mr.Kadam submitted that a clear case of passing of is made out because the products in question are identical. They are medicinal preparations and drugs and are treating the same ailments. The Plaintiffs have pointed out as to how they have been in market since June, 2002 and have acquired reputation in trade. It is also pointed out by the Plaintiffs by producing their sale certificates that sales are extensive and product is popular. In such circumstances, the Defendants’ product sold in the market is similar to that of the Plaintiffs. Thus, the mark of Defendants “SELORAM” is structurally, visually and phonetically identical or deceptively similar to the trade mark of Plaintiffs “LORAM”. Mere addition of letters “SE” will not change the mark. It has been pointed out by production of documents by the Plaintiffs as to