1. The Court: First mentioned application taken out by the defendant for dismissal of the above suit and/or revocation of leave granted under clause (12) of Letters Patent in the suit, and also for vacating all interim orders. The second mentioned application has been taken out by the plaintiff for suitable interlocutory relief in the aforesaid suit. The suit filed by the plaintiff for passing off against the defendant in relation to the mark “Oxyline” used for marketing and selling of a medicinal product viz. eye drop. The plaintiff obtained ad interim order of injunction on 28th April, 1999, restraining the defendant from using’ the mark “Oxyline”. This interim order has been continuing till the date of hearing of both the applications. Learned Counsel for the defendant Mr. Ajoy Gupta submits that the application taken out by his client need not be heard separately, but the points and contentions taken therein should be considered at the time of hearing of the plaintiff's pending application.
2. It is an admitted position that the interim order has been continuing for last long nearly six years. The plaintiff wants that this interim order should be confirmed on the following facts and circumstances shortly put as hereunder:
The plaintiff is a leading manufacturer of well-known pharmaceutical product with extensive market in several major countries of the world. The petitioner has been carrying on this business continuously in several countries since 1960. It has promoted and/or got itself associated with a company in India, viz. Allergan India Ltd. having its office on 9 Floor Manipal Centre, 47 Dicken Sen Road, Bangalore-560042. The plaintiffs well-known product is Oximelazine Hydrocholorine solution which is marketed and sold worldwide under the mark “Oxyline” which is acknowledged to be very effective for giving relief from non-inference red eyes. The said mark was invented and adopted by the petitioner in the year 1984 (wrongly mentioned 1988 as per clarification in the affidavit-in-reply). The main active ingredient of the plaintiff's product sold under the mark “Oxyline” is Oxymetazilin Hydrochloride. This mark has been registered in various countries viz. Australia, Ireland, and South Africa, Sweden, Spain, New Zealand, Mexico, Democratic Republic of Korea, Peru, U.K, Bolivia so on. However, the application for registration in India has been pending. Such application has been made in India on 29 July, 1993. At the time of hearing of this application it is submitted and shown that this application has been notified in the gazette for inviting objection and it is said that hearing of this application is still pending. It is said further that because of the extensive marketing and use of the product of the plaintiff with the aforesaid mark, it has acquired reputation and the same has spilled over crossing border of several countries as stated above. The turnover in the international market from 1994 till 1998 have been given in paragraph 9. From the data given in paragraph 9 the sale in terms of dollar is quite substantial in each year, except in 1996 when it exceeded nearly 1.8 million dollars and in 1996 the turnover is 2.4 million dollars. It is said further that the plaintiff through its Indian partner has marketed the said product with the aforesaid mark “Oxyline” turnover fetched therefrom reached approximately at Rs. 15,69,675/-.
3. Thus it is stated that the plaintiff's aforesaid mark has also got reputation in India also. Because of the continuous use of the aforesaid mark and registration in other countries the plaintiff has acquired proprietary right in the said mark. It is further claimed that the plaintiff is a senior user of the said mark in the medicinal preparation. The defendant in colourable imitation of the said mark has also marketed the medicinal product being nazal drop with the name Oxyline. According to the plaintiff the use of the identical mark of the defendant is defrauding aiming at to filch international reputation of the plaintiff in markets. The defendant's product is also a medicinal one with the mark having phonetical similarity. It is dangerous to allow two marks to remain in the market for medicinal product as the confusion will arise not only in the mind of the consumer public but in the mind of the pharmacist too who will be offering these products mistakenly to the common customer across the counter. This dangerous situation is also apparent in view of the fact that in India medicinal products are frequently sold across the counter without any prescription of medical practitioner. Therefore, the interim order passed by this Court be confirmed. The defendant in fact has admitted and acknowledged that the plaintiff is the senior user in writing dated 8 October, 1988 through their learned Lawyer that there has been phonetical similarity of the two marks and two marks cannot remain side by side. In the said letter it has been admitted that the defendant applied registration of the said mark in 1994. It is further admitted that in the event it is found that the defendant is a later user then it shall take corrective action.
4. The plaintiff has stated with document that it has been using the mark from 1984 in other part of the world. Therefore, by virtue of the registration in other part of the world in 1984 the petitioner has become the senior user.
5. In the affidavit-in-opposition the defendant however, has claimed that they are senior user in India of the mark as they have started using in the year 16 December, 1985 having obtained drug licence. Obtaining of drug licence is the unimpeachable evidence to establish the use. The defendant has also annexed a document namely research works for sale of their product at the earliest as on 29 July, 1988. Therefore, as far as India is concerned the defendant is prior user, the injunction order should be vacated as it has also been claimed in affidavit-in-opposition that the mark may be phonetically similar but the same is used in different medicinal product viz. nazal drop whereas the plaintiff's product is eye drop. It is unlikely for the common people to be confused, for treatment of nose problem appropriate medicine will not obviously be the product of the plaintiff meant for eye problem.
6. Mr. Sudipto Sarkar, ld. Senior Counsel appearing for the plaintiff/petitioner contends placing the letter written by the ld. Lawyer for the defendant that in the event, it is admitted, the plaintiff is senior user and their application is earlier then the defendant is prepared to change their mark. Therefore, it is admitted position there has been identity and deceptive similarity between the two marks. He has drawn my attention to the various documents annexed to the pleadings that the plaintiff has got registration in various countries and the earlier registration is in 1985 in Dubline, on 19 August, 1984, New Zealand June, 1985, where as the defendant first user has been established in India 29 July, 1988. The defendant applied for registration of the mark in May 1994. He submits that it is clearly established by the plaintiff that it has started using the mark from 1984 whereas the defendant did at the earliest 1988. He contends it is now settled position of the law that impact of registration and reputation in one country will have the benefit in other countries of the world even if the same is not registered in other countries for protecting intellectual properties. He contends that when there has been a clear and distinct phonetical similarity between the two marks in relation to medicinal product, though for different purpose the same shall not remain side by side for it is very dangerous if not fatal for use of identical mark in relation to two medicinal products. He contends that the aforesaid principle of law in passing of action has been established in judgment of this Court rendered in case Allergan Inc. v. Milmert Industries, reported in AIR 1998 Cal. 261 as affirmed by the Supreme Court on appeal on 7 May, 2004 which has been reported in 2004 SCC 486. He further contends that when the interim order of injunction continued for more than six years, and there is no complaint of suffering of loss and prejudice by the defendant it shall be presumed that without the said mark the defendant can carry on business. The Court should take serious note of the matter that the defendant for violation of order of injunction was penalized. Therefore, interim order of injunction should be confirmed.
7. Mr. Ajoy Gupta, learned Advocate, appearing for the defendant submits that his client has tried hard to get this matter heard out at an early date and for getting order of injunction vacated. Though the matter has been appearing in the list since 1999 the same could not be heard for varieties of reasons, for which his client is not at fault. His client as such made an application in 2000 for vacating of the interim order. Therefore, it cannot be said that the defendant has been bearing this interim order without any protest or demur.
8. He contends that the Lawyer's letter should not be treated to be an admission or concession as in fact his client is a senior user in relation to the above mark for it has started using the same while applying to the Drug Controller on 6 February, 1985 and started marketing from 29 July, 1988 but made application for registration in 1994, whereas admittedly the plaintiff has started marketing their product in India recently and much later than the defendant. Thus, by virtue of section 33 of the Trade and Merchandise Marks Act, 1958 (now repealed) his client has got vested right in the aforesaid mark and is entitled to get protection under the said section. Therefore, this position of the law cannot be compromised by the ld. Lawyers on the existing fact. This admission in this matter should be ignored and it was indeed written bona fide as his client is the senior user so wanted to settle the matter amicably. As far as the decision rendered in the earlier Allergan case reported in AIR 1988 Cal 261 is concerned the same is distinguishable on fact as in that case there was distinct and identical similarity between the two marks in relation to the same medicinal product. Moreover it was found in that case the plaintiff therein is senior user in several countries, whereas in this case the defendant is the senior user in India, in fact, it will appear from the plaint that the plaintiff started using in India in 1988. Thus, the above judgment is not applicable in this case. Moreover, his client has also applied for registration as the plaintiff has before the trade market registry.
9. Having heard respective contention of the learned Counsels I feel that it has to be examined what is the impact and implication of the letter of the ld. Lawyer for the defendant. The language of the learned Lawyer's letter dated 8 October, 1988 is very clear textually. It is admitted their trade marks are identically similar. It is made clear that if the defendant is found to be a later user of the mark then it is prepared to rectify the same.
10. The contention of Mr. Gupta in relation to this letter that this letter should not be looked into, rather be ignored, cannot be accepted by reason of the fact that his submission has not been stated anywhere in the affidavit-in-opposition in relation to the said letter. This admission does not relate to law, but fact. Rather in the affidavit-in-opposition the said letter has been accepted to be true and correct. Question of authority is essentially a question of fact and it is true if a particular state of affairs or a set of facts are stated in correctly then the correct position can be explained later if necessary by unimpeachable evidence. But in the letter it is claimed that in the event defendant is found to be later user they are prepared to correct their mark. It is not the question of law stated in the letter but fact. One can waive his right whether legal or otherwise, if it is purely in the nature of personem, such waiver can be looked into always. It is true the legal position cannot be compromised nor there can be estoppel as against the statutory provision if implication of compromise is in rem. So I do not find any reason to ignore this letter.
11. Taking queue from the said letter now I proceed to go into the factual aspect of the matter to find out whether the plaintiff is a senior user or riot. In the plaint it has been wrongly mentioned that the plaintiff has started using in 1988, as the document annexed to the affidavit-in-reply, suggests, rather establishes that plaintiff has started using its mark in other countries in 1984. It has been stated in the petition that in various countries wherein it has got extensive sale and thus has acquired reputation in relation to the said mark. It is now settled position by the above judgment that goodwill is also protectble in this country as well, meaning thereby if reputation of a trader with any mark or name in connection with the sale of any product is acquired in one country, will have protectable interest in other countries irrespective of factum of registration or even factual user. This position of law is settled by above judgment referred to by Mr. Sarkar. From the fact I find the plaintiff is a senior user as the defendant has started using the mark in the medicinal product in 1988 though obtained drug licence in 1985, but mere obtaining of drug licence is not the positive indication as user of mark of the product without any further evidence. Actual use of the mark with sale or before sale with advertisement and publicity is the basis in passing off action. Passing off action in relation to the medicinal product is viewed by the Court differently from that a case of ordinary merchandise. Medicinal product caring the lives of living being including human should not be allowed to be marketed with such mark that will give rise confusion as to identity of the goods in the mind of ordinary people. Unlike many a commodities, all the members of the public are prospective user, and in certain cases actual user of the medicine on inappropriate application thereof invites life risk. It is not uncommon at all in our country that a pharmacist in a medical shop across the counter is likely to commit mistake with confused mark by supplying wrong medicine as more often than not medicine is sold without prescription of the doctor or with illegibly written prescription. Here we are dealing with two medicinal products used for two vital organs of human being. Two medicinal products may be meant for two separate organs, but in my considered view it is dangerous to keep the same and identical mark for different products for different purposes. If for example, a doctor prescribes medicine bearing same name for eye problem, at the sales counter the pharmacist having been confused with the mark is likely to supply defendants product meant for nose problem. Ordinarily common people never verifies medicine with the prescription or for that matter it is very difficult for the patient party to verify whether medicine is supplied as prescribed by the doctors. So ordinary customers always depend upon the correctly reading ability of pharmacist. Thus one can imagine what would happen for use of nazal drop to cure eye problem. It would not be an imagination that one may lose eye sight altogether. In the aforesaid visualization of the fact if the Court remains unmoved it would be great disservice to the society, on the face of use of the two similar marks by two manufacturers. I think it is the social duty of the Court as well, to stop this, so I do not find any reason to vacate interim order rather it must be confirmed so it is hereby done. Thus the application is allowed.
12. To make it clear this judgment and observation will not have any bearing in the pending proceedings for registration of the mark of both the parties. Trade mark register will proceed in his own way and to assess respective and relative cases of the parties.
13. As far as the application for revocation of leave under Clause 12 of Letters Patent is concerned, I am of the view that at this stage leave should not be revoked. I have examined the plaint and found statements and averments made in paragraphs 12 and 21 of the plaint constitute cause of action and the same discloses part thereof having arisen within the jurisdiction of this Court. However, these are essentially mixed question of fact and law and can be agitated at the time of hearing of the suit by the defendant if so advised.
K.J Sengupta, J.:
Appeal allowed.
S.K.P
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