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mst

IN THE HIGH COURT OF JUDICATURE AT BOMBAY

ORDINARY ORIGINAL CIVIL JURISDICTION

NOTICE OF MOTION NO.3101 OF 2008

IN

SUIT NO.2652 OF 2008

1. ALCON, INC, Bosch 69,

CH-6331, Hunenberg, Switzerland.

2. Alcon Laboratories (I) Pvt.Ltd;

154, Amarjyoti Layout, Domlur Inner

Ring Road, Bangalore - 560 071.

Plaintiffs

versus

Ajanta Pharma Limited,

Ajanta House, Charkop,

Kandivali (W), Mumbai.

Defendant

Mr.Virag Tulzapurkar a/w Nishad Nadkarni and

Shailendra Bhandare i/by DSK Legal for

plaintiffs.

Mr.Janak Dwarkadas, Sr.Counsel a/w Mahesh

Mahadgut for defendant.

CORAM : A.S.OKA, J.

DATE : 14th & 17th November 2008

PC:-

1. I have heard the submissions of the learned

counsel appearing for the parties on 10th

November 2008 on the prayer for grant of

ad-interim relief.

2. The case of the plaintiffs is that the

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first plaintiff company belongs to "ALCON

GROUP". It is the case of the plaintiffs that

Alcon Group is one of the world’s leading group

of companies carrying on business, inter alia,

in the manufacture, marketing, research and

development of high quality pharmaceutical

preparations including ophthalmic preparations

and antibiotic solutions for the treatment of

the diseases of the eye. According to the case

of the plaintiffs, one of the products of the

plaintiffs is an Ophthalmic solution comprising

of the basic active ingredient known as

"TRAVOPROST" which is sold in several countries

under the Trademark "TRAVATAN". The said

product is in the form of eye drops which is

used for treatment of glaucoma. According to

the case of the plaintiffs, since the year

2001, the mark "TRAVATAN" is either registered

or applied for registration in the name of

first plaintiff in international Class-5 in

respect of ophthalmic pharmaceutical

preparations in more than 100 countries.

According to the case of the plaintiffs, the

mark "TRAVATAN" is registered in the name of

first plaintiff under registration no.814839 in

Class-5 effective from 17th August 1998 under

the Trademarks Act, 1999 and the registration

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is valid and subsisting till today.

3. According to the case of the plaintiffs,

from 2001 onwards the sales turnover of

TRAVATAN Pharmaceutical and Ophthalmic

Preparation manufactured and sold

internationally by the Alcon Group of Companies

exceeds millions of dollars and approximate

sale for the year 2007 is US $ 333,374,764.

According to the case of the plaintiffs,

TRAVATAN is depicted in websites and in other

media. It is stated that for last several

years TRAVATAN products have been shipped to

India by plaintiff no.1 as mission shipments

for humanitarian purposes. The case of the

plaintiffs is that for last many years TRAVATAN

has acquired goodwill and reputation and even

in India, the TRAVATAN is enjoying enormous

goodwill and reputation.

4. According to the case of the plaintiffs, in

March 2006, the second plaintiff commenced

TRAVATAN pre-launch promotional activities in

India and in June 2006, the second plaintiff

launched TRAVATAN products in India under the

licence from the first plaintiff. The case of

the plaintiffs is that the products

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manufactured by overseas Alcon Group Companies

are imported and marketed by the second

plaintiff. The case of the plaintiffs is that

the second plaintiff’s TRAVATAN promotional

expenditure exceeds lakhs of rupees and since

it’s launch in market in India, the sale figure

exceeds Rs.3.00 crores. The contention of the

plaintiffs is that the TRAVATAN product is the

only Ophthalmic product in the Indian market

with the prefix "TRAVA". The case of