2010 Supreme(Guj) 2

2010 (2) GCD 1180 (Guj)
Hon’ble Mr. Justice K.A. Puj
ACME Pharmaceuticals
Versus
Torrent Pharmaceuticals Ltd.
Appeal From Order No. 357 of 20061—Decided on 11/01/2010

Point in Issue :
Whether the plaintiff respondent in the case is entitled to interim relief of temporary injunction as claimed by him.

Headnote:Civil Procedure Code, 1908 (Central Act 5 of 1908) — Order 39 Rules 1 and 2, Order 43 Rule 1(r) — Trade Marks Act, 1999 — Sections 9, 9(1)(a), 13, 13(a), 29, 30, 30(2) — Trade mark — Restrained from using — Granting of interim relief — Propriety of — Finding as to — The trial Court allowed the application of respondent plaintiff and restrained the appellant from using his trade mark ‘AROXIL’ in respect of drug ‘CEFADROXIL’ where as trade mark of plaintiff respondent is ‘Droxyl’ in respect of the same drug and obtained from drug ‘CEFADROXIL’ — In order to grant relief in such matters plaintiff is required to establish prima facie case, availability of balance of convenience and irreparable loss — In the present case the trade mark used by respondent plaintiff is derived from pharmaceutical preparation and it derogation the kind of goods — It is devoid of any distinctive character — It is also to be noted that Appellant coined word ‘AROXIL’ by taking word ‘A’ as the first letter of his name and last five letters of drug — No one including the plaintiff can claim monopoly in respect of a word which is descriptive of particular drug used in medical production — Court, therefore, opened that the injunction granted by trial Court accepting the claim of monopoly in respect of words DROXYL of respondent plaintiff is not prima facie sustainable — The plaintiff claim on other two grounds of balance of convenience and irreparable loss is also not acceptable — Court, therefore, accepted the appeal and set aside the order of trial Court granting temporary injunction.

       Held :

       Here in the present case, the trade mark of the Respondent Plaintiff “DROXYL” is derived from pharmaceutical preparation “CEFADROXIL” and thus designates the kind of the goods and devoid of distinctive character. It is true that the Respondent Plaintiff’s trade mark “DROXYL” has been registered by the Registrar of Trade Mark under the Registration No. 508348 in respect of pharmaceutical and Medicinal Preparation as of 10.4.1989. It is also true that the Appellant has not moved any application for cancellation of the registration of the Respondent Plaintiff’s trademark under Section 50 of the Trade Marks Act or even if such application were filed, no order has been obtained till this date. This fact, by itself, however does not prevent the Appellant from contending that the registration has been wrongly granted while opposing the Respondent Plaintiff’s application for interim injunction. Section 13 of the Act deals with prohibition of registration of names of chemical elements or international non-proprietary names. Section 13(a) says that No work which is the commonly used and accepted name of any single chemical element or any single chemical compound (as distinguished from a mixture) in respect of a chemical substance or preparation, shall be registered as a trade mark. The Appellant’s contention is that the trade mark “DROXYL” is nothing but the name of a chemical element, which is commonly used and accepted in respect of chemical substance or preparation namely “CEFADROXIL”. It is true that Section 29 deals with infringement of registered trade marks. However, Section 30 puts limits on effect of registered trade mark and it starts with the opening words that nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use is in accordance with honest practices in industrial or commercial matters, and is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark. Sub Section (2) of Section 30 specifically states that a registered trade mark is not infringed where the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering or services or other characteristics of goods or services. If the Appellant’s contentions were accepted that the use of the word “AROXIL” by the Appellant is in relation to goods and it merely indicates the kind and quality of the medical preparation namely “CEFADROXIL”, in that case there would not be any infringement. [Para 22]

       The word “AROXIL” is coined and invented by the Appellant by taking letter ‘A’ as the first letter of its own name, i.e. ACME Pharmaceuticals and “ROXIL” as last five letters of drug “CEFADROXIL”. No one including the Respondent Plaintiff can claim monopoly in respect of a word which is descriptive of particular drug used in medicinal production. The trade mark of the Respondent Plaintiff is nothing else but the copy of last letters of a drug known as “CEFADROXIL”. In the mark either “CEFA” or “DROXIL” or “CEFADROXIL” is a descriptive word mark and there are many other manufacturers using the same words.

       The Court is therefore of the prima facie view that the trade mark of the Respondent Plaintiff is nothing else but an adoption of last letters i.e. “DROXYL” from drug known as “CEFADROXIL” and in the pharmaceutical industries, this drug is known as generic drug, i.e. referring to the chemical / drug formulation itself. Thus, the injunction granted in favour of the Respondent Plaintiff by accepting its claim of monopoly in respect of the words “DROXYL” is hardly sustainable. [Para 23]

       Apart from merits of the matter, to arrive at a prima facie satisfaction, the other two ingredients are equally important. Balance of convenience and in absence of interim injunction whether irreparable loss or injury will be caused to the Plaintiff or not. Taking over all view of the matter, the Court is of the view that the Appellant succeeded in pursuading this Court to take the view that the trial Court has wrongly and in violation of statutory provision and judicial precedents, granted injunction in favour of the Respondent Plaintiff. Mere prima facie satisfaction is not enough and that too cannot be arrived at merely on the ground that the Respondent Plaintiff’s trade mark “DROXYL” is a registered mark or that it has been using the said trade mark since 1989 onwards. The other relevant aspects are also to be kept in mind, such as, same or the similar trade marks have been used by the other manufactures, no objection was ever raised by the Respondent Plaintiff, the trade mark appears to have been based on a generic drug, namely, “CEFADROXIL”. Over and above this, balance of convenience can certainly tilts in favour of the Appellant as the trade mark “AROXIL” is being used by the Appellant since 1996. The Respondent Plaintiff has not raised any objection for about four years and suit was filed only in 2000. During the pendency of the suit between 2000 to 2006, there was no stay and only when the injunction was decided on 30.11.2006 the injunction was granted by the trial Court, which again remains in suspension till this date by virtue of the Courts’ orders. If, at this stage, the impugned order of the trial Court is confirmed and interim injunction is granted, an irreparable loss or injury would be caused to the Appellants. [Para 35]

       Law Laid Down :

       Apart from merits to arrive at prima facie satisfaction for grant of temporary injunction other two ingredients balance of convenience and irreparable loss or injury to the plaintiff is also important.