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High Court of Delhi
MANMOHAN SINGH, J.
Johnson & Johnson – Plaintiff
Versus
Lupin Limited & Another – Defendants
I.A. No. 11918 of 2012 & C.S. (OS) No. 1931 of 2012
Decided On : 27-02-2015
MANMOHAN SINGH, J. 1. The plaintiff has filed the present suit for permanent injunction restraining passing off and rendition of accounts and/or damages, against the defendants in respect of the mark LUCYNTA.
Fact of the Case:
The plaintiff, a corporation organized and existing under the laws of State of New Jersey, USA, was founded in the year 1886. The plaintiff along with its group companies claims to be the world leaders in pharmaceutical and consumer products. It is stated that plaintiff has a highly diversified business with at least 250 subsidiaries in 57 countries around the world.
Finding of the Court:
The plaintiff has established a prima facie case in its favour. The balance of convenience is also in favour of the plaintiff and against the defendants. The plaintiff is the prior adopter and user of the mark NUCYNTA internationally. The defendant No. 1’s adoption of a similar mark LUCYNTA is not coincidental. The defendant No.1 has no plausible justification for the adoption/use of the mark LUCYNTA.
Issues: Whether the plaintiff has established a prima facie case of passing off.
Ratio Decidendi: The ratio of the aforesaid decisions is squarely applicable to the facts of the present case. Thus, injunction cannot be refused on account of delay as the plaintiff has made a strong prima facie case of passing off. Even otherwise, from the facts in the present case, there is no much delay in bringing the action by the plaintiff against the defendants.
Final Decision: The prayer made in the application under Order XXXIX Rule 1 and 2 read with Section 151 CPC is allowed. The defendants are restrained during the pendency of suit from using of trademark LUCYNTA in respect of pharmaceutical and medicinal preparation and/or any mark which is deceptively similar to the plaintiff’s trade mark NUCYNTA.
MANMOHAN SINGH, J.
1. The plaintiff has filed the present suit for permanent injunction restraining passing off and rendition of accounts and/or damages, against the defendants in respect of the mark LUCYNTA.
2. By this order, I propose to decide the pending application being I.A. No.11918/2012 filed by the plaintiff under Order 39 Rule 1 and 2 CPC read with Section 151 CPC.
3. Brief facts of the case as per plaint are:-
(i) That the plaintiff, a corporation organized and existing under the laws of State of New Jersey, USA, was founded in the year 1886. The plaintiff along with its group companies claims to be the world leaders in pharmaceutical and consumer products. It is stated that plaintiff has a highly diversified business with at least 250 subsidiaries in 57 countries around the world.
(ii) Plaintiff's subsidiary Johnson & Johnson Limited was incorporated in India in the year 1957. It is averred that the same is today amongst the leading manufacturers, merchants, dealers and distributors of human pharmaceutical preparations in India. With over last more than 50 years presence in India, plaintiff has gained reputation for offering high-quality products at competitive prices.
(iii) It is averred that the plaintiff in the year 2008, adopted the mark NUCYNTA in relation to its Tapentadol based drug, an opioid pain reliever. Tapentadol, which is in a class of medications called opiate (narcotic) analgesics and is used to treat moderate to severe pain that is expected to last for a short time.
(iv) Plaintiff through its fully owned subsidiary Ortho-McNeil-Janssen Pharmaceuticals, Inc. (now Janssen Pharmaceuticals Inc.) applied for the New Drug Application (NDA) for NUCYNTA before United States Food and Drug Administration (FDA) which was granted on 20th November, 2008.
(v) NUCYNTA was launched in USA on 22nd June, 2009 where it has been continuously and extensively used since then. Plaintiff also obtained the FDA approval in the August 2011 for NUCYNTA ER, an extended release formulation of Tapentadol indicated for the management of moderate to severe chronic pain in adults when a continuous, around-the-clock opioid analgesic is needed for an extended period of time.
(vi) Also, plaintiff launched NUCYNTA CR in Canada in the year 2011 for the treatment of moderate to moderately severe pain in adults, which is continuously in use since then.
(vii) It is averred that plaintiff has applied for and/or obtained registration for the trademark NUCYNTA in several countries as detailed in para 3.7. of the plaint.
(viii) It is averred that the sales of NUCYNTA in USA accounted for more than $ 290 million for the period 2009- 2012 while the plaintiff incurred an expenditure of more than US $ 650 million on promotion of NUCYNTA since its launch. The trademark NUCYNTA and product thereunder has been widely advertised and promoted through various media including electronic and print media over the years.
(ix) The information pertaining to plaintiff's products under NUCYNTA is available and displayed on various websites like www.nucynta.com, www.jnj.com, www.drugs.com, www.wikipedia.com etc. The domain name "nucynta.com" was registered on 29th October, 2008. It is averred that easy availability of information regarding NUCYNTA has contributed immensely in enhancing the reputation and awareness of the said trademark worldwide including India.
4. It is averred that the plaintiff is the original, prior and honest adopter and user of the trademark NUCYNTA, which it has been using continuously, extensively and uninterruptedly since the year 2009 in USA. The drug bearing the trademark NUCYNTA is well known and has been discussed in several international conferences and seminars. Medical literature relating to plaintiff's products including NUCYNTA is freely available in India. The plaintiff has acquired worldwide reputation and enjoys trans-border reputation and/or spill over reputation in India.
When the suit was filed, the plaintiff had intended to l
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