(July 30, 2001) 2001 (TLS)125497

2001-DLT-93-247

AVIAT CHEMICALS PRIVATE LIMITED Vs. INTAS PHARMACEUTICALS Limited

A. K. Sikri

( 1 ) I. A. No. 12230/2000 is an application filed by the plaintiffs under Order XXXIX Rules 1 and 2 read with Section 151, CPC for grant dad-interim injunction. In this application, order dated 9/02/2001 has been passed restraining the defendant in terms of para 15 of the I. A. till further orders. I. A. No. 3035/2001 is filed by the defendant under Order XXXIX Rule 4, CPC for vacation of the order dated 9/02/2001. Accordingly, both these applications were heard together and are disposed of by this common order.

( 2 ) PLAINTIFFS are the two companies incorporated under the Indian Companies act which are carrying on business, inter alia, as manufacturers and dealers of pharmaceutical and medicinal preparations. Amongst other, one of the drugs of the plaintiff No. 1 is LIPICARD. It is stated in the plaint that in January,1997 the plaintiff no. 1 had conceived and invented the trade mark LIPICARD for its medicinal and pharmaceutical prepartions and filed application on or about 9/06/1997 for registration of the trade mark LIPICARD under No. 742450 in respect of pharmaceutical preparations falling in Clause 5 of the Fourth Schedule of Trade mark and Merchandise Marks Rules, 1959. This application is still pending. In June, 1998 the plaintiffs decided to manufacture and market the hew drug in India for the first time. Hence, plaintiff No. 2 applied for permission to the Drug Controller general (India), New Delhi for import of the bulk drug Fenofibrate for the purpose of testing and carrying out formulation development. In November, 1999 the plaintiff No. 2 applied for permission to the Drug Controller General (India) for import and manufacture of Fenofibrate capsules. In December, 1999 the Drug controller General granted permission to the plaintiff No. 2 for import of the said drug. Thereafter, the plaintiffs applied and were granted drug manufacturing licence on 4/02/2000 by the Food and Drug Administration Authority permitting it to manufacture LIPICARD preparation. After taking further necessary steps, the plaintiff No. 2 manufactured the medicine under the trademark LIPICARD in May, 2000 and started marketing this product. The plaintiff No. 1 has granted to plaintiff No. 2 a non-exclusive licence and rights to use the trade mark LIPICARD. It is also the case of the plaintiffs that owing to the excellence of the medicinal preparation sold under the trade mark LIPICARD and the superior efficacy thereof, it has been a runaway success and became highly popular amongst the doctors, chemists and public. It has enjoyed formidable reputation and goodwill and has been widely accepted all over the country. Its sales for the period upto October, 2000 were to the tune of about Rs. 1,34,51,000/ -. The plaintiffs are also spending enormous money on publicity, advertisement and to promote the sale of this drug. The cause of action, according to the plaintiff, for filing the present suit arose when the plaintiff No. 1 came across in September, 2000 the medicinal preparation manufactured by defendant bearing the trade mark LIPICOR. The suit is filed for infringement of passing off action allegedly committed by the defendant by use of the trade mark LIPICOR in relation to its medicinal and pharmaceutical preparation and it is alleged that the trade mark LIPICOR is deceptively similar to the plaintiffs trade mark LIPICARD. Before filing the suit even legal notice dated 28/09/2000 was served calling upon the defendant to stop manufacture and sale of its product under the trade mark LIPICOR but no reply was received nor defendant complied with the requirements stated in the legal notice. The plaintiffs have claimed prior user of the trade mark LIPICARD. The plaintiffs have also tried to contend that use of trade mark LIPICOR by the defendant in respect of same medicinal preparation is likely to cause confusion