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2016 Supreme(Del) 3834
IN THE HIGH COURT OF DELHI AT NEW DELHI
VIBHU BAKHRU, J.
CEPHALON, INC – Appellant
Versus
MANEESH PHARMACEUTICAL LIMITED & ANR – Respondent
CS(COMM) 106/2016
Decided On : 19-10-2016
For the Appellant :Mr. Chander M Lall, Advocate with Ms Kripa Pandit, Advocate.
For the Respondent:Mr. Gaurav Gogia and Ms. Bhavya Sethi, Advocate.
The potential harm of confusion in the pharmaceutical industry and the need for a greater degree of scrutiny in matters relating to drugs and medicinal products.
Headnote:
TRADEMARK - Infringement - Trade Marks Act,1999 - Section 2(1)(zg), Rule 50, Rule 51 - The court discussed the use and registration of the trademark 'PROVIGIL' by Cephalon and MPL, the prior use, confusion, and the international character of the pharmaceutical industry. The court referred to the decisions in Milmet Oftho Industries v. Allergan Inc and Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. to emphasize the potential harm of confusion in the pharmaceutical industry and the need for a greater degree of scrutiny in matters relating to drugs and medicinal products.
Fact of the Case:
Cephalon filed a suit seeking a permanent injunction against infringement of its trademark 'PROVIGIL' by MPL. MPL filed an application seeking vacation of the interim order restraining its use of the trademark. The court heard both applications together.
Finding of the Court:
The court found that the trademarks used by Cephalon and MPL were similar and had the propensity to create confusion, especially in the international pharmaceutical industry. It held that Cephalon was the prior user of the trademark 'PROVIGIL' and that MPL's use of the trademark would lead to an anomalous situation. The court rejected MPL's application for vacation of the interim order and ordered it to continue till the disposal of the suit.
Issues: The issues involved the use and registration of the trademark 'PROVIGIL', prior use, confusion, and the international character of the pharmaceutical industry.
Ratio Decidendi: The court emphasized the potential harm of confusion in the pharmaceutical industry and the need for a greater degree of scrutiny in matters relating to drugs and medicinal products. It held that Cephalon was the prior user of the trademark 'PROVIGIL' and that MPL's use of the trademark would lead to an anomalous situation.
Final Decision: The interim order restraining MPL from using the trademark 'PROVIGIL' was to continue till the disposal of the suit. MPL's application for vacation of the order was rejected.
VIBHU BAKHRU, J.
IA Nos. 2094/2016 and 6074/2016
1. The plaintiff (hereafter ‘Cephalon’) has filed IA no 2094/2016 under Order XXXIX Rule 1&2 CPC inter alia seeking an order restraining the defendants from using the trademark “PROVIGIL”. Defendant no 1 (hereafter ‘MPL’) has filed IA no 6074/2016 under Order XXXIX Rule 4 CPC seeking vacation of the interim order dated 12.02.2016 by virtue of which defendants were restrained from using the mark "PROVIGIL". Both the aforesaid applications were taken up and heard together.
2. Cephalon has filed the above captioned suit seeking a decree of permanent injunction restraining infringement of its trademark “PROVIGIL”, passing off, Unfair Practices and Damages against the defendants. MPL has filed its Written Statement. Although, defendant no 2 (hereafter ‘Sigma’) was served, none has entered appearance on its behalf and by an order dated 26.05.2016, Sigma’s right to file the Written Statement was closed.
3. Cephalon is engaged in the business of manufacturing pharmaceutical and medicinal preparations and specializes in drugs to treat and manage neurological diseases, sleep disorders, cancer and pain since the year 1987.
4. Cephalon claims that the mark "PROVIGIL" was first adopted in the year 1995 by Genelco, S.A, a subsidiary of the Cephalon; however, as per the documented use, it was adopted in 1998.
5. It is averred in the plaint that "PROVIGIL" is a drug containing 'modafinil' and is used for treating excessive sleepiness associated with narcolepsy and shift work disorder.
6. Cephalon is the registered proprietor of the trademark "PROVIGIL" in India under registration no. 1293763 in class 05 in relation to pharmaceutical and medicinal preparations. It is stated in the plaint that Cephalon has applied for registration and/or is the registered proprietor of the trademark "PROVIGIL" in various countries such as Brazil, Canada, Chile, China, Italy, Japan, Panama, South Africa, United Kingdom, United States of America, etc.
7. It is further stated in the plaint that owing to such long, extensive and continuous use across various countries, the mark "PROVIGIL" has become a well known mark as defined under Section 2(1)(zg) of the Trade Marks Act,1999.
8. It is averred in the plaint that in 2004, Cephalon came to know about a journal advertisement of the mark “PROVIGIL” bearing no 1025822 in class 05 in the name of Sigma. However, Sigma had filed for registration of the trademark on proposed user basis. It is further averred in the plaint that by a letter dated 24.06.2004 to the Registrar of Trade Marks, Cephalon initiated Opposition proceedings opposing the offending mark and thereafter, in April, 2005 a copy of Counter Statement was served on Cephalon (opponent in opposition proceedings) by Sigma. Further, it is stated that in June, 2005, Cephalon filed its Evidence in support of Opposition under Rule 50 of the Trade Mark Rules (hereafter 'the Rules') and the Opposition proceedings are stated to be pending as Sigma did not file its Evidence in support of the application under Rule 51 of the Rules.
9. It is stated that thereafter, in 2009, it came to the knowledge of Cephalon that MPL along with one of its subsidiaries Svizera Healthcare was using the mark “PROVIGIL” on its website http://svizerahealth.com/Products/Ace_Privigil.html with the registered (R) symbol; therefore Cephalon sent notices dated 08.10.2009 and 24.11.2009 to MPL regarding misuse of the mark “PROVIGIL”. Cephalon further states that MPL’s letter dated 28.11.2009 sent in response revealed that Sigma had assigned application of the trade mark in question in favor of MPL.
10. Cephalon avers that in November, 2013, it was served with a petition dated December, 2009 by the Trade Mark Registry under FORM TM-26 filed by MPL seeking cancellation of the Cephalon’s registration of the mark "PROVIGIL". It is further averred that Cephalon filed a counter statement dated 27.02.2014 and the matter is pending before the Trade Mark Registr
