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Cipla Limited v. M.K. Pharmaceuticals
Factual and Procedural Background
The plaintiff, a manufacturer of "NORFLOXACIN" tablets marketed under the trade name 'NORFLOX-400', sought an interim injunction against the defendant. The plaintiff alleged that the defendant was marketing its "NORFLOXACIN" tablets in an oval shape and orange colour in blister packaging similar to the plaintiff's tablets. The plaintiff claimed that this similarity caused confusion among consumers, potentially leading to the passing off of the plaintiff's medicine as that of the defendant. The defendant, however, was marketing its tablets under the generic name and did not copy the plaintiff’s trademark. The plaintiff applied under Order 39 Rules 1 and 2 of the Civil Procedure Code (CPC) for restraining the defendant from marketing tablets with the said characteristics.
Legal Issues Presented
- Whether the plaintiff is entitled to an injunction restraining the defendant from marketing its "NORFLOXACIN" tablets in an oval shape and orange colour in blister packaging.
- Whether the plaintiff can claim monopoly over the colour and shape of its tablets and the blister packaging.
- Whether the defendant’s use of similar shape and colour amounts to passing off or causes confusion in the minds of consumers.
Arguments of the Parties
Plaintiff's Arguments
- The plaintiff manufactures and markets "NORFLOXACIN" tablets in oval shape and orange colour in blister packaging.
- The defendant’s tablets are similar in shape, colour, and packaging, leading to consumer confusion.
- This similarity causes the plaintiff’s medicine to be passed off as that of the defendant.
Defendant's Arguments
- The defendant uses the generic name "NORFLOXACIN" and does not infringe on the plaintiff’s trademark.
- Blister packaging is common and cannot be monopolized by the plaintiff.
- Colours and shapes of tablets are not subject to monopoly and do not create distinctive association with a particular brand.
Table of Precedents Cited
| Precedent | Rule or Principle Cited For | Application by the Court |
|---|---|---|
| Rizla Limited v. Bryant and May Limited (1986 RPC 389) | Principle that colours and shapes cannot be monopolized as trademarks. | Supported the view that no monopoly can be claimed over tablet colour or shape. |
| Smith, Kline and French Laboratories Ltd's Cinetidine Trade Mark (1991 RPC 17 Ch. D.) | Recognition that colour and shape of tablets are not distinctive trademarks. | Reinforced that colour and shape do not indicate origin or quality of medicine. |
| Surya Roshni Limited v. Metalman Industries Limited (2001 PTC 777 (Del)) | Trade mark principles relating to distinctiveness and passing off. | Supported the court’s conclusion on non-distinctiveness of colour and shape. |
| Colgate Palmolive Com. Limited and Anr. v. Patel and Anr (2005 (31) PTC 583 (Del.)) | Trade mark and passing off principles concerning product appearance. | Used to confirm that similarity in colour and shape alone does not amount to passing off. |
Court's Reasoning and Analysis
The court acknowledged the undisputed similarity in the shape, colour, and blister packaging of the plaintiff’s and defendant’s tablets. However, it emphasized that blister packaging is a common form used by many manufacturers and cannot be monopolized by any single entity. The court further analyzed the question of monopoly over colour and shape, holding that no exclusive right can be claimed over these features. It reasoned that customers do not choose medicines based on colour or shape but rather on the name and prescription of a doctor. The court noted that tablets are generally made in common shapes such as oval or round for ease of swallowing, and colours vary widely across the industry. The court found it implausible that the similarity in colour and shape would create confusion or passing off, as these attributes are not distinctive marks of origin or quality. The court relied on established precedents supporting the principle that colour and shape alone do not confer trade mark rights or grounds for passing off. Consequently, the court dismissed the plaintiff’s application for injunction.
Holding and Implications
The court DISMISSED the plaintiff’s application for interim injunction restraining the defendant from marketing its "NORFLOXACIN" tablets in oval shape, orange colour, and blister packaging.
This decision directly affects the parties by allowing the defendant to continue marketing its tablets as described. The court clarified that no monopoly exists over tablet colour, shape, or common packaging forms, and therefore, no new precedent expanding trade mark protection to these features was established.
Page 1940 IA No. 811/2004 in CS (OS) No. 112/2004
1. By this application under Order 39 Rules 1 and 2 CPC, plaintiff has sought interim injunction against the defendant that defendant be restrained from marketing/selling its product "NORFLOXACIN" in oval shape, orange colour tablets in blister packagings.
2. The case of the plaintiff is that plaintiff has been manufacturing "NORFLOXACIN" Tablets under trade name 'NORFLOX-400' and the plaintiff had been marketing these tablets in blister packing. Tablets of the plaintiff were having oval shape and orange colour.
3. It is not the case of the plaintiff that the defendant has copied the trade mark of the plaintiff and was marketing its tablets under the trade mark "NORFLOX400". It is undisputed that defendant was using generic name of medicine and was within its right to do so. The contention of the plaintiff is that copying of colour of the tablets, shape of the tablets and blister packaging was causing confusion in the minds of the consumers and the medicine of the plaintiff can be passed off as medicine of the defendant.
4. There is no dispute about the fact that the packing shape and colour of the tablets of the plaintiff as well as that of the defendant is similar. The question arises whether plaintiff is entitled to an injunction restraining defendant from marketing its medicine in oval shape orange colour tablets or packing in blister form of packagings. Blister form of packagings of tablets is common and prevalent packaging. It is used in almost for 50% of tablets in the market. Plaintiff can have no monopoly over the particular form of packaging and cannot pray that no one else should pack its medicinal tablets in blister form of packaging.
5. The next issue arises whether defendant can copy the colour of the plaintiff's tablets and shape of the plaintiff's tablets. It is settled law that there can be no monopoly over colours. The plaintiff is in the field of manufacturing a wide range of medicines. Plaintiff may colour its tables in any colour starting from violet to red. Merely because plaintiff has started using a particular colour for its tablets plaintiff does not get monopoly over colour so that no one else can use that colour. The medicines are not bought by colours by the customers. There are thousand types of tablets available with Chemist for different ailments. No one goes to a chemist and asks for red, blue, orange, peach or white colour of tablets. All medicines are purchased at the advise of Doctors and they are sold on prescription. Even those tablets readily available without prescription, are known by their names. You will not find any manufacturer advertising his tablets by colour or shape. Even the common brands Crocin, Anacin, Disprin, Coldarin etc. are sold by name and not by shape or colour of the tablets. It is preposterous to believe that a person would go to the Chemist and ask the Chemist to give him tablets of Page 1941 such and such colour for such and such ailments. Neither colour of the tablet can be associated with any brand. Similar is the case of the shape. Shape of the tablets is not associated either with the quality of the tablets or with the nature of medicine. Most of the tablets are made round, oval or cylindrical shape so that they are easy to swallow. It would be very hard to get tablets in the rectangular or square shape in the market unless they are chewing tablets or sucking tablets. It cannot be said that because the shape of the plaintiff tablets and defendant's tablets being oval, it was going to create confusion in the minds of the customers. The distinctiveness of the medicines is in the name and not in the colour and shape. Even if there has been deliberate copying of similar colour and shape of the plaintiff's tablets that would not amount to passing off, since colour and shape are not indicative of the drugs neither they are associated with the trade mark. There may be several other tablets of the similar shape and colour available in the market. I am supported in my above view by Rizla Limited v. Bryant and May Limited 1986 RPC 389; Smith, Kline and French Laboratories Ltd's Cinetidine Trade Mark (1991) RPC 17 Ch. D. Surya Roshni Limited v. Metalman Industries Limited 2001 PTC 777 (Del.); Colgate Palmolive Com. Limited and Anr. v. Patel and Anr. 2005 (31) PTC 583 (Del.).
6. I find no ground in this application. Application is hereby dismissed.
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