The main legal point established in the judgment is the need for stricter standards in matters of trademark infringement and passing off involving pharmaceutical products, emphasizing the potential life-threatening consequences of confusion between medicinal products and the importance of considering various factors in determining deceptive similarity.

Siddharth Mridul, J.

1. The appellants/plaintiffs have come up in this appeal being aggrieved by the order dated 02.12.13 passed by a learned Single Judge of this court in IA Nos. 16701/2011 and 485/2012 in CS (OS) 2596/2011. By way of the impugned order the interim injunction granted to the appellant/plaintiff vide order dated 18.10.2011 has been vacated.

2. Facts necessary to adjudicate the present appeal are briefly stated in the succeeding paragraphs:

3. The appellant is a pharmaceutical company incorporated under the Companies Act, 1956 which markets drugs and formulations in India and over 30 countries in the world under a wide range of distinctive trademarks/brand names for the last several years. The appellant had an annual turnover of Rs.4000 crores for the year 2007-08 in the manufacturing of specialty pharmaceuticals and active pharmaceutical ingredients. One of the medicinal preparations marketed by the appellant is Oxcarbazepine, an anticonvulsant and mood stabilizing drug used in the treatment of epilepsy and bipolar disorder under the trade mark OXETOL.

4. The appellant has been preparing and marketing this drug extensively and commercially since October 2001. The appellant‘s trademark OXETOL was registered in India in Class 5 under registration No. 1013231 on 31.05.2011 and No. 1232899 on 05.09.2003. The annual sales figure of the medicine under the trademark OXETOL is Rs.31.28 crores and approximately Rs.4.98 crores was spent on promotion and advertisement of this drug during the year 2010-11.

5. Respondent No.1 adopted the trademark EXITOL which the appellant came to know when Respondent No. 1‘s trademark application No. 1910625 dated 19.01.2010, on proposed to be used basis, was published in the Trade Mark Journal No. 1455 dated 25.10.2010. The appellant sent legal notice to respondent No.1 calling it to withdraw the impugned trademark application, however the respondent did not give any reply and the appellant filed its notice of opposition before the Registrar of Trade Marks.

6. It is stated that the medicine under the impugned trademark EXITOL is not available in any of the medicinal trade journals and/or markets. Respondent No.1 through its counsel sent an e-mail dated 12.05.2011 to the appellant offering to give an undertaking that they would confine the use of the mark EXITOL to granules and syrups containing Lactitol Monohydrate for treatment of constipation only and not use the mark towards any other pharmaceutical product.

7. The appellant wrote to the respondent‘s counsel seeking monetary compensation proposing grant of regulating license for compensation/ license fee which was declined by the defendant‘s counsel. It is the case of the appellant that the impugned trademark EXITOL of the respondent is almost identical to the appellant‘s trademark OXETOL and thus the same amounts to infringement and the act of the respondent constitutes an unfair competition as the respondents are using the trademark deceptively similar to the trademark of the appellant and thus taking advantage of the financial and human resources invested by the appellant since 2001 without incorporating any cost themselves.

8. The case of the respondent is that the respondent honestly adopted the mark EXITOL for treatment of constipation since it contains the salt namely Lactitol. The product is sold in syrup and granule form and there is difference in the mark of the appellant and that of the defendant. Respondent No.1 not only monitors the making of the products but also monitors the finished products including the marketing of them and its products enjoy great reputation and goodwill in the market.

9. Learned counsel for the appellant submits that the appellant is a registered proprietor of the trademark OXETOL and under Section 28 of the Trade Marks Act, 1999 is entitled to the exclusive right to use the same for medicinal preparations which include all forms of drugs. The mark of the defendant EXITOL being str