Panacea Biotec Ltd v. Recon Ltd

Anil Dev Singh, J.:— This is an application under Order 39 Rules 1 and 2 read with section 151 of the Code of Civil Procedure. The facts as appear from the plaint are as follows:

2. The plaintiff is a limited company incorporated under the Indian Companies Act, 1956. It is engaged in the business of manufacture and sale of drugs and pharmaceuticals. On January 27, 1995, the plaintiff obtained licence from the Drug Controller to manufacture “NIMESULIDE TABLETS” each containing Nimesulide 100 mg. under the Brand name “NIMULID”. The preparation is indicated in the treatment of inflammatory condition including joint disorders such as Rheumatoid arthritis, post traumatic and post operative painful condition and fever. The plaintiff after the grant of the drug licence started the production of the drug under the trade mark “NIMULID”. It is alleged that within a short span of about ten months the trade mark acquired a unique goodwill and reputation in this country. It is asserted that the trade mark “NIMULID” became very popular amongst the patients, doctors and medical institutions.

3. The plaintiff claims to be the proprietor of trade mark “NIMULID” by virtue of its prior adoption, extensive and exclusive use coupled with huge and extensive publicity given to the same. It is further averred that the respondent M/s. Recon Limited is likely to introduce medicines under the brand name “REMULIDE” having the same composition as that of NIMULID. By means of this application the plaintiff prays that the defendant be restrained from manufacturing and selling the drug under the trade mark REMULIDE.

4. The defendant in its reply has taken the stand that the generic name of the drug is “Nimesulide” and the trade mark of the plaintiff “NIMULID” is derived therefrom so that it closely resembles the name of the principal drug. It is further stated that the plaintiff's trade mark is descriptive in nature indicating the composition of the medicine and cannot be protected under the provisions of the Trade and Merchandise Marks Act, 1958 (for short ‘the Trade Marks Act’). It is also stated that the defendant's trade mark “REMULIDE” has no similarity with the trade mark “NIMULID” of the plaintiff and the two are visually and phonetically different. The defendant also avers that first two letters of the trade mark REMULIDE have been taken from the corporate name RECON of the defendant, and the remaining portion of the trade mark is derived from the generic name of the drug ‘Nimesulide’. It is also pointed out that the plaintiff cannot be said to have acquired the reputation and goodwill in a short span of ten months. The defendant asserts that it is the first and only manufacturer of the drug ‘Nimesulide’ in India.

5. I have heard learned counsel for the parties and considered their submissions. It is not in dispute that ‘NIMULID’ tablets manufactured by the plaintiff contain the drug ‘Nimesulide’. At this stage it would be convenient to juxtapose the trade mark of the plaintiff with the name of the drug of which it is composed:

‘NIMULID’—‘NIMESULIDE’

6. From a comparison of the two it is clear that the first three letters of the trade mark of the plaintiff have been taken from the name of the drug ‘Nimesulide’. Suffix of the trade mark of the plaintiff consists of four letters which are ‘ULID’ and the same have also been taken from the last but four letters of the name of the same drug. It appears that the plaintiff has adopted trade mark ‘NIMULID’ in view of its near similarity or resemblance with the name of the basic drug ‘Nimesulide’. In fact ‘NIMULID’ can be taken as short form for the generic name of the drug ‘Nimesulide’. The trade mark of the plaintiff is descriptive in nature indicative of the composition of the medicine. It is well settled that no person can claim exclusive use of the descriptive and generic terms. It would be highly undesirable to confer on one trader proprietory right over the use of an ordinary, descriptive or a generic word indicative of the nature, composition and quality of the goods as that would give him complete monopoly to exploit the word to the exclusion of others. A word which can qualify as an exclusive mark of a trader must be distinctive so as to distinguish his goods from those of the other persons.

7. In Griffon Laboratories (P) Ltd v. Indian National Drug Co. P. Ltd, 1989 IPLR (Vol. 14, No. 1) page 9, the plaintiff, who was a prior user of the trade mark SORBILINE in respect of a medicinal preparation, was not granted interlocutory injunction by the Calcutta High Court to restrain the defendant from using the trade name SORBITONE inter alia on the ground that both the marks were derived from the drug called ‘SORBITOL’, which were indicative of the drug from which the two medicines were prepared, and the word ‘SORBI’, as a prefix for marks, was being used by others as well.

8. In In the matter of Trade Marks No. 221, 722, No. 230, 405, No. 230, 406 and No. 230, 407 (“ORLWOOLA”), 1909-1910 RPC (Vol. 26-27) 850, the Court of Appeal was confronted with the question whether the word “ORLWOOLA” could be registered as a trade mark of the respondent. The Court of Appeal held that the word “ORLWOOLA” was mis-spelling of the word “All wool” which was not a distinctive mark adopted to distinguish the respondents' goods, and accordingly held that the mark must be removed from the Register. In this regard the court giving its reasons for the opinion held as follows:—

“This case presents no difficulty. It is in substance a case of registration of the words “All wool,” grotesquely mis-spelt, as a Trade Mark for textile fabrics. When a Trade Mark consists solely of words it will be used orally as well as in writing, and to be proper to constitute a Trade Mark such words must be suitable, whether spoken or written. The mis-spelling does not affect the words when spoken, so that we have only to decide whether the words “All wool” are proper for registration in respect of such goods. To this there can be but one answer. If the goods are wholly made of wool the words are the natural and almost necessary description of them. If they are not wholly made of wool it is a misdescription which is so certain to deceive that its use can hardly be otherwise than fraudulent. In either case the words are utterly unfit for registration as a Trade Mark.”

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“…..The area of indicia available as Trade Marks has been increased by the successive Trade Mark Acts; under the Act of 1875 no mere word was registrable at all; the Act of 1883 extended the area of registrability by admitting fancy words not in common use; and the Act of 1888 again extended it by admitting words having no reference to the quality or character of the goods and not being a geographical name. This has received a further development in the Act of 1905 by Section 9, paragraph 5, of which these excluded words may, if distinctive, be registered by order of the Board of Trade or the Court. But the whole basis of the enactment is that the word or words to be registered must be distinctive, i.e, adapted to distinguish the goods of the proprietor of the Trade Mark from those of other persons; and this is obviously right and just, for a Trade Mark is necessarily a monopoly, and although it is no doubt proper, and not injurious to any honest man, to allow a trader to monopolise a Trade Mark in certain cases, it would be wrong to allow to any one man a monopoly of ordinary words, commonly used in the trade, and descriptive of the nature or colour, or laudatory of the quality of the goods; e.g, “cotton”, “blue”, “good”.

9. In Competition Review (P) Ltd.… v. N.N Ohja…, 1996 PTC (16) 124, it was held that no person can claim exclusive use of the English word “competition”. In this regard, this Court observed as follows:—

“The word Competition is an English word. Therefore, the plaintiff cannot claim exclusive right on the basis of registration under the Copyright Act. It is clear from the records that a number of persons are running journals under the word competition and the claim of the plaintiff that it came to know about the defendants journal in September 1995 is putforth for the purpose of this case. Under similar circumtances, Hon'ble Mr. Justice S.K Mahajan had occasioned to consider the question in Rupee Gains Tele-Times (P) Ltd v. Rupee Times, DRJ (35) page 30. The learned judge has observed that no person can claim any exclusive right in the word ‘Rupee’. The learned Judge has also held that there is no scope for any description in the use of word ‘Rupee’. I repsectifully agree with the reasoning given by the learned Judge and I hold that the plaintiff cannot claim any exclusive use of the word…..”

10. Having regard to the aforesaid decisions I am of the opinion that where a party uses a descriptive and generic term for its trade mark it cannot be given sole right to use the same to the exclusion of other traders. Commonly used words in trade and descriptive of the nature or colour or laudatory of the quality of the goods cannot be permitted to be monopolised. Similarly, in the case of a medicine, if a manufacturer uses the name of the basic drug of which it is constituted, no monopoly can be claimed by him in regard to the use of the same as his trade mark.

11. Learned counsel for the plaintiff submitted that there is a marked phonetic and visual similarity between the trade mark ‘NIMULID’ belonging to his client and the trade mark ‘REMULIDE’ used by the defendant and in view of the decision rendered in Ciba Geigy Ltd. v. Crosslands Research Laboratories Ltd., 1996 PTC (16) 1, the defendant cannot be allowed to use the trade mark ‘REMULIDE’. He cited the following observations in support of his claim:—

“Having regard to the globalisation of the economy, when several drugs are coming into the market from the manufacturers abroad and here, the persons in the market are apt to get misled by the trade marks. Therefeore, while deciding the question whether Volta-K is phonetically similar to Voltaren and, therefore, its deceptiveness has to be considered on the words used and not on any another considerations. The adding of the word ‘K’ at the end of the word Volta are mentioning it as K-Volta, does not make any difference.

I would add whether the doctors would be remembered to remember the trade names and distinguish between the product of the plaintiff and the defendant in the instant case. I answer the question in favour of the plaintiff and say that the doctors would not be able to distinguish and would be under the impression that Volta-K is a product from CIBA Geigy.”

12. I am afraid the decision rendered in the aforesaid case does not help the plaintiff. In that case the plaintiff had adopted the trade mark ‘VOLTAREN’ for its medicinal preparation. The product contained the drug ‘DICLOFE-NAC Sodium’. Subsequently, the defendant came out with the medicine ‘VOLTA-K’ with the same composition. It may be noted that the plaintiff in that case did not adopt the name of the basic drug as its trade mark and the opposite party had clearly copied the trade mark of the plaintiff and both the structural and the phonetic similarity between the two marks was striking. The learned counsel missed para 52 of the judgment where it was specifically held as follows:—

“The learned senior counsel for the plaintiff submitted that the consideration on the question of prefix or suffix would apply only to the words which are derived from generic words and that would not apply to invented words. This contention, prima facie, appears to me to be correct.”

13. Therefore, it clearly follows that in a case where the trade mark of the medicinal preparation is wholly derived from the name of the principal drug, used in its manufacture, the protection, which is available in the case of the invented word, would not be forthcoming.

14. In the instant case the position is that the plaintiff has adopted the trade mark ‘NIMULID’ as a short form of the word ‘Nimesulide’ which is the name of the basic drug. As already seen, the first three letters of the plaintiff's trade mark serving as its prefix are clearly derived from the name of the drug ‘Nimesulide’. Again the next four letters of the plaintiff's trade mark ‘ULID’ have also been bodily lifted from the name of the same drug. The only distinction between the trade mark of the plaintiff and the name of the basic drug has been achieved by skipping the three letter ‘es’ and ‘e’ in the trade name ‘NIMULID’ which occur in the name of the basic drug. This could be clearly termed as a mis-spelling of the word ‘NIMESULIDE’. The trade mark of the medicine in question is a pointer to the drug from which it is manufactured. When a name is derived or coined from the name of the principal ingredient utilised in the manufacture of a medicine no distinctiveness or exclusiveness can be claimed by a manufacturer or trader in respect of the part of the name taken by him for his trade mark.

15. Having regard to the aforesaid discussion I am of the prima facie opinion that the plaintiff is not entitled to the interim injunction. The application is accordingly dismissed.

* Indo-Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Bayer Ag., 1975 RPC (No. 22) 545 at page 598.