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High Court Of Delhi
PANACEA BIOTEC LIMITED - Appellant
Versus
RECON LIMITED - Respondent
Decided On : 07/24/1996
{'KEYWORD': 'Trade Mark', 'SUBJECT': 'Descriptive Trade Mark', 'ACT SECTION LIST': ['Trade and Merchandise Marks Act, 1958'], 'SUMMARY': 'The court held that a trade mark that is descriptive of the composition of a medicine cannot be protected under the Trade and Merchandise Marks Act, 1958. The court reasoned that a descriptive trade mark is not distinctive and cannot be used to distinguish the goods of one trader from those of another.'}
Fact of the Case:
The plaintiff, a pharmaceutical company, sought an injunction to restrain the defendant from using the trade mark "remulide" for its drug, which contained the same active ingredient as the plaintiff's drug, "nimulid". The plaintiff claimed that its trade mark was distinctive and had acquired goodwill and reputation, while the defendant argued that the trade mark was descriptive and could not be protected.
Finding of the Court:
The court found that the plaintiff's trade mark was descriptive of the composition of the drug and could not be protected under the Trade and Merchandise Marks Act, 1958. The court also found that the defendant's trade mark was not similar to the plaintiff's trade mark and would not cause confusion among consumers.
Issues: 1. Whether the plaintiff's trade mark was descriptive and could be protected under the Trade and Merchandise Marks Act, 1958. 2. Whether the defendant's trade mark was similar to the plaintiff's trade mark and would cause confusion among consumers.
Ratio Decidendi: The court held that a trade mark that is descriptive of the composition of a medicine cannot be protected under the Trade and Merchandise Marks Act, 1958. The court reasoned that a descriptive trade mark is not distinctive and cannot be used to distinguish the goods of one trader from those of another. The court also found that the defendant's trade mark was not similar to the plaintiff's trade mark and would not cause confusion among consumers.
Final Decision: The court dismissed the plaintiff's application for an injunction.
( 1 ) THIS is an application under Order 39 Rules I and 2 read with section 151 of the Code of Civil Procedure. The facts as appear from the plaint are as follows
( 2 ) THE plaintiff is a limited company incorporated under the Indian Companies Act, 1956. It is engaged in the business of manufacture and sale of drugs and pharmaceuticals. On January 27, 1995, the plaintiff obtained. licence from the Drug Controller to manufacture "nimesulide TABLETS" each containing Nimesulide 100 mg. under the Brand name "nimulid". The preparation is indicated in the treatment of inflammatory condition including joint disorders such as Rheumatoid arthritis, post traumatic and post operative painful condition and fever. The plaintiff after the grant of the drug licence started the production of the drug under the trade mark "nimulid". It is alleged that within a short span of about ten months the trade mark acquired a unique goodwill and reputation in this country. It is asserted that the trade mark "nimulid" became very popular amongst the patients, doctors and medical institutions.
( 3 ) THE plaintiff claims to be the proprietor of trade mark "nimulid" by virtue of its prior adoption, extensive and exclusive use coupled with huge and extensive publicity given to the same. It is further averred that the respondent M/s. Recon Limited is likely to introduce medicines under the brand name "remulide" having the same composition as that of NIMULID. By means of this application the plaintiff prays that the defendant be restrained from manufacturing and selling the drug under the trade mark REMULIDE.
( 4 ) THE defendant in its reply has taken the stand that the generic name of the drug is "nimesulide" and the trade mark of the plaintiff "nimulid" is derived therefrom so that it closely resembles the name of the principal drug. It is further stated that the plaintiffs trade mark is descriptive in nature indicating the composition of the medicine and cannot be protected under the provisions of the Trade and Merchandise Marks Act, 1958 (for short the Trade Marks Act ). It is also stated that the defendant s trade mark "remulide" has no similarity with the trade mark "nimulid" of the plaintiff and the two are visually and phonetically different. The defendant also avers that first two letters of the trade mark REMULIDE have been taken from the corporate name RECON of the defendant, and the remaining portion of the trade mark is derived from the generic name of the drug nimesulide . It is also pointed out that the plaintiff cannot be said to have acquired the reputation and goodwill in a short span of ten months. The defendant asserts that it is the. first and only manufacturer of the drug nimesulide in India.
( 5 ) I have heard learned counsel for the parties and considered their submissions. It is not in dispute that nimulid tablets manufactured by the plaintiff contain the drug nimesulide . At this stage it would be convenient to juxtapose the trade mark of the plaintiff with the name of the drug of which it is composed: nimulid - nimesulide
( 6 ) FROM a comparison of the two it is clear that the first three letters of the trade mark of the plaintiff have been taken from the name of the drug nimesulide . Suffix of the trade mark of the plaintiff consists of four letters which are ulid and the same have also been taken from the last but four letters of the name of the same drug. It appears that the plaintiff has adopted trade mark nimulid in view of its near similarity or resemblance with the name of the basic drug nimesulide . In fact nimulid can be taken as short form for the generic name of the drug nimesulide . The trade mark of the plaintiff is descriptive in nature indicative of the composition of the medicine. It is well settled that no person can claim exclusive use of the descriptive and generic terms. It would be highly undesirable to confer on one trader proprietory right over the use of an ordinary, descr
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