A foreign manufacturer can restrain the use of a mark in India on the basis of prior user of the mark outside the country, provided that the mark has acquired a reputation in India through advertisements, publications, or other means.

( 1 ) THE appellant, Allergan Inc, is a company which manufacturers Pharmaceutical products in several countries. It does not carry on any business in India. The first respondent is a company which carries on business of manufacturing pharmaceutical products in Indian. The appellant seeks to restrain the respondents from using the mark "ocuflox" in respect of a medicinal preparation manufactured and marketed by the respondents. The issue to be decided in this appeal is the right of a foreign manufacturer to restrain use of a mark in India on the basis of prior user of the mark outside the country.

( 2 ) ON the material before this Court there can be no doubt that the appellant manufactures a pharmaceutical eye care product under the name of OCUFLOX containing ofloxacin and other compounds. According to the appellant 3 it first used the mark on 9th Sept. 1992 after which it has marketed the product in several countries in Europe, Australia, South Africa and South America and has obtained registration of the mark in Australia, Bolivia, Equador, Mexico, Peru, South Africa, Canada and the United States of America. It has also applied for registration of the mark OCUFLOX in several countries including India. These applications are pending. The appellant has claimed world-wide sales of 5960034 units of OCUFLOX worth US $ 1,51,000 in 1 993; US $ 7,064,472 in 1994; US $ 14,344,010 in 1995 and US $ 10,974,869 for the period January to August, 1996. It has also claimed that in the USA alone it spent US $ 0. 3 million in 1992; US $ 2. 6 million in 1993; US $ 2. 7 million in 1994; US $ 2. 1 million in 1995 and US $ 1. 9 million between January and August, 1996 on advertisements and promotional literature. The appellant has claimed that it has earned a considerable reputation in all these countries in respect of the product by extensive sales and wide spread advertisements in medical journals which are circulated in India.

( 3 ) ACCORDING to the respondents they knew nothing of the appellant's product. They say that in 1993 they decided to manufacture and sell a medicinal preparation containing CIPROFLOXACIN HCL for treatment of the eye. They say that they coined the word OCUFLOX taking the prefix "ocu" from "ocular" and "flox" from "ciprofloxacin" being the basic constituent of the preparation. On 26th July, 1993 they applied for a drug licence to manufacture and market the product. This was granted by the Commissioner of Food and Drug Control Administration on 25th August, 1993. In Sept. 1993, the respondents applied for registration of the mark "ocuflox" in Class V of the Fourth Schedule to the Act. The application is pending. The respondents claim to have commenced sale of their product "ocuflox" from 30th Oct. 1993 and to have successfully built up a reputation by such sales. By letter dated 15th Nov. 1994 the respondent No. 1 wrote to Dr. Eric D. Donnenfeld in the USA enclosing a list of the respondent No. 1's products "for trial purpose". Amongst the several products mentioned one of the products was "ocuflox".

( 4 ) THE appellant came to know that the respondents were using the mark OCUFLOX from this letter. The appellant wrote to the respondents on 29th Dec. 1994 objecting to use of the term OCUFLOX. The respondent No. 1 wrote to the appellant in January, 1995 in reply to the appellant's letter of objection asking for a discussion in the matter. That a discussion was thereafter held in June, 1995 is not in dispute. However, the appellant and the respondents have differed as to what took place during such discussion. It is the appellant's case that the meeting was inconclusive but that the respondent did not, to the knowledge of the appellant, use the name OCUFLOX till July, 1996.

( 5 ) IN the meanwhile in January, 1995 the appellant filed an application for registration of the mark OCUFLOX under the Trade and Merchandise Marks Act, 1958 in Bombay. In early 1996 the appellant formed a joint venture company, Allerg