(June 30, 2001) 2001 (TLS)125319

2001-DLT-93-346 :: 2001-AD (Del)-6-836

B. L. AND COMPANY Vs. Pfizer Products Incl.

MANMOHAN SARIN

( 1 ) THE appellants have preferred this appeal, assailing the ex parte order dated 1/6/2001, passed by the learned Single Judge by which the appellants have been restrained from manufacturing, marketing their medicinal product penerra . The ex parte order had been passed on the application of the respondent under Order xxxix Rules 1 and 2 CIVIL PROCEDURE CODE in a suit for injunction and damages for passing off, instituted by the respondent. The operative part of the order dated 1/6/2001 is as under:

"i am satisfied that the plaintiff has made out a case for ex parte injunction. The defendants, its directors, principals, proprietors, franchises, representatives and assigns are restrained from producing, manufacturing, advertising, promoting, displaying for sale, offering for sale, sale, or distributing any articles of merchandise, or for any purposes whatsoever, the trade mark VIAGRA or any colorable imitations thereof or any mark confusingly or deceptively similar thereto, with the blue trade dress including the distinctive blue diamond shaped tablet or any other tablet trade dress that is confusingly similar thereto, or in any other manner whatsoever from passing of their goods as and for the goods of the plaintiff. Provisions of Order XXXIX Rule 3 civil PROCEDURE CODE be complied within one week. "

( 2 )

(I) The respondent instituted suit bearing no. 1165/2001, claiming to be a global research based pharmaceutical Company, which had in 1998 introduced a revolutionary product "sildenafil citrate" for the treatment of the male erectile dysfunction (ED), referred to as impotence.

(II) The respondent has been marketing and selling it under the trade name viagra . Respondent claimed that VIAGRA is a fanciful and coined word that was created by the respondent. The trade mark had inherently become distinctive both to the trade and the consuming public world wide. The respondent claims that viagra had become the most widely used treatment for erectile dysfunction (ED) and by end April, 2001. it had been prescribed more than 40 million times to more than 13 million men world wide. It was averred that the drug under the trade mark viagra is sold in more than 100 countries. The world wide revenue from sales was claimed to be in the range of US $ 1344 million in the year 2000.

(III) M/s. Pfizer Tnc. , the proprietor of trade mark viagra vide an assignment deed dated 3/6/1999 for a consideration of US $100 assigned the said trade mark for India to the respondent herein and plaintiff in suit. An application had been submitted for registration of the trade mark viagra in India which is pending with the Regis- trar of trade mark.

(IV) It is averred that the trade mark viagra has been registered and/or is pending registration in 147 countries. It has been extensively advertised in International magazines, medical books and Journals, which were circulated and read in India also widely. The product of respondent with trade mark "viagra" had received extensive publicity and media attention in India. It is claimed that despite, respondent not having commenced marketing or selling viagra in India, by virtue of extensive use world wide, it has become famous in India also and was associated only with products/goods of respondent.

(V) It is claimed in the suit that the fame and good will of respondent, was not just limited to the trade mark viagra , but also extended to the unusual and unique diamond shape and blue colour of the tablet.

( 3 ) THE respondent averred in the suit that the defendants/appellants had introduced a product under the name penegra some time in January, 2001. It is claimed that the respondent/appellant, learnt of the same through an internet search recently clone. Respondent came across numerous reports of the appellants product being described in the media as indian