1. Suit for temporary injunction alleging trademark violation regarding the use of a specific prefix in pharmaceutical drug names. (Para 2 , 4 )
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1999 Supreme(SC) 1370
SUPREME COURT OF INDIA
B.N.Kirpal : D.P.Mohapatra : R.P.Sethi
Aristo Pharmaceuticals Limited
Versus
Wockhardt Limited
Case No. : 6739 , 6740 of 1999
Date of Decision : 11/24/99
In trade mark disputes, a temporary injunction should not be granted if there are disputed factual claims regarding the generic nature of a term that require evidence at trial. Appellate courts should not interfere with a lower court's reasoned decision to vacate an ex-parte injunction in such cases.
Headnote:(A) Trade Marks - Temporary Injunction - Dispute over the use of a specific word in a drug name - Whether a temporary injunction can be granted when the generic nature of the word is disputed and requires evidence - If the word is alleged to have been used generically in the industry since before the registration of the trade mark, such a fact is a relevant consideration that can only be determined through evidence at trial - Division Bench should not interfere with the decision of a Single Judge who declined to confirm an ex-parte injunction in the presence of such disputed facts. (Paras 7, 8)
Facts of the case:
A respondent manufacturing a drug under a registered trade mark filed a suit for injunction against an appellant manufacturing a drug using a similar prefix. The appellant contended that the prefix was a generic term used to indicate the drug's purpose and had been used by various manufacturers since before the registration of the trade mark. The Single Judge vacated the ex-parte injunction, but the Division Bench reversed this and granted the injunction.
Findings of Court:
The court found that the question of whether the prefix had been used generically in connection with medicines before and after the registration date was a relevant consideration and a matter of dispute that required the parties to lead evidence, which could only be done at the time of trial.
Issues: Whether the Division Bench was justified in reversing the Single Judge's order and granting a temporary injunction despite the existence of disputed facts regarding the generic use of a term in a trade mark.
Ratio Decidendi: A temporary injunction should not be granted when there are disputed facts that require evidence to be led at trial, particularly regarding the generic nature of a term used in a trade mark. The appellate court should not have interfered with the lower court's reasoned order vacating an ex-parte injunction under such circumstances.
Result: Appeals allowed.
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Table of Contents
2. Whether a registered trademark prevents others from using a common descriptive prefix used in the pharmaceutical industry to indicate drug purpose. (Para 5 , 6 )
3. Granting an injunction requires evidence when material facts regarding the common usage of a term are disputed and not admitted by the parties. (Para 7 )
4. An appellate court should not interfere with a lower court's refusal to grant a temporary injunction when disputed facts require trial evidence. (Para 7 , 8 )
5. Appeals allowed; Division Bench order set aside; appellant directed to maintain accounts; parties permitted to modify product appearance to prevent confusion. (Para 9 )
6. When is the production of evidence necessary before granting a temporary injunction in trademark disputes?
Evidence is necessary when the facts alleged by the defendant—such as the common usage of a term in the industry—are not admitted by the plaintiff and are relevant to the determination of the dispute. (Para 7 )
7. Under what circumstances should a Division Bench refrain from reversing a Single Judge's decision to vacate an ex-parte injunction?
A Division Bench should not interfere with a Single Judge's decision to decline an injunction if the resolution of the dispute depends on evidence that can only be determined during the trial of the suit. (Para 7 , 8 )
(1) LEAVE granted.
(2) WE have heard counsel for the parties at length. The question involved in this case is whether in the suit for injunction filed by the respondent herein alleging violation of its trade mark the division bench of the High Court should have reversed the finding of the Single Judge and granted temporary injunction.
(3) IN view of the fact that the suit is still pending and taking into consideration the nature of dispute between the parties and the state of evidence, we do not think it proper and appropriate to deal with the matter in any great detail and to express opinion on the merits of the dispute because that may prejudice the parties at the time of trial of the suit.
(4) WE are here dealing with a case where the respondent, who manufacturing a drug under the name SPASMO-PROXYVON, registered in his favour, filed a suit for injunction against the appellant herein who was manufacturing and selling a drug called SPASMO-FLAXON. The Single Judge of the Madras High court by a reasoned order vacated the ex-parte injunction in his favour which had been granted. The said decision was challenged and the division bench allowed the appeal of the respondent and granted an injunction in his favour
(5) IT is the case of the appellant herein that this is not a case where the trade-mark of SPASMO PROXYVON is being violated by the appellant. According to the appellant the respondent is manufacturing the drug called PROXYVON and also a milder form of that drug called SPASMO-PROXYVON. Similarly, the appellant is manufacturing the drug called FLEXON and milder version of that called SPASMO-FLEXON. According to the appellant the use of the word SPASMO is meant to indicate that the drug is meant for the soft tissues. It is also the case of the appellant that the word SPASMO, which is being objected to by the respondent herein, has been used for several drugs since long before and after the respondent got its trade mark registered in the year 1977.
(6) THE respondent, on the other hand, submits that the words SPASMO PROXYVON having been registered in its name the appellant cannot use the word SPASMO in the drug which is manufactured by it.
(7) IT appears to us that before an injunction could have been granted it was necessary for the court to have allowed the parties to lead evidence inasmuch as the facts alleged by the appellant herein were not exactly admitted by the respondent. This could have been done only at the time of trial. Whether the word SPASMO has been used in connection with medicine since before and after 1977 is a relevant consideration and there was a dispute between the parties as to whether any drug using the word SPASMO was still being manufactured and sold after the respondent had got its trade mark registered in the year 1977.
(8) IN our opinion, therefore, the Division Bench ought not to have interfered with the decision of the Single Judge who had declined to confirm the ex-parte injunction which had been issued earlier in favour of the respondent.
(9) WE accordingly allow these appeals, set aside the judgment of the division bench dated 30/01/1999 and direct the appellant to maintain proper accounts in relation to the manufacture and sale of its drug SPASMO-FLEXON which accounts statement shall be submitted in the trial court annually. We make it clear that the observations made in this Judgment shall not prejudice the parties at the time of trial. The trial court should expedite the hearing of the suit. Mr. P. Chidambaram, learned senior counsel states that the written statement will be filed within eight weeks. In is further made clear that the parties will be at liberty to change the shape and colour of the product in such a manner that one product cannot be mistaken for another.
