JUDGMENT

S.N. Variava, J.

This Appeal is against the judgment of the Calcutta High Court dated 6th November, 1997.

2. Briefly stated the facts are as follows:

The Appellants are an Indian Pharmaceutical company. The Respondents are also a Pharmaceutical company which manufacture pharmaceutical products in several countries. The Respondents filed a Suit for an injunction based on an action for passing off in respect of mark OCUFLOX used on a medicinal preparation manufactured and marketed by the Respondents. The Respondents claimed that they were the prior users of the mark OCUFLOX in respect of an eye care product containing Ofloxacin and other compounds. They claimed that they first used this Mark on 9th September, 1992, after which they marketed the product in other countries like Europe, Australia, South Africa and South America and that they had obtained registration in Australia, Bolivia, Ecuador, Mexico, Peru, South Africa, Canada and the United States of America. They claimed that they had also applied for registration of the mark in several other countries including India and that their applications were pending. The Appellants were selling OCUFLOX on a medicinal preparation containing CIPROFLOXACIN HCL to be used for the treatment of the eye and the ear. They claim that they coined the word OCUFLOX by taking the prefix OCU from OCULAR and FLOX from CIPROFLOXACIN which is the basic constituent of their product. The Appellants were granted registration by the Food and Drug Control Administration on 25th August, 1993.They have also applied for registration of the mark OCUFLOX in September, 1993. Their application is also pending.

3. On 18th December, 1996 the Respondents got an ad interim injunction. This injunction however was vacated on 29th January, 1997. The single Judge held that the Respondents product was not being sold in India and the Appellants having introduced the product first in India, the Respondents were not entitled to an injunction.

The Appeal filed by the Respondents had been allowed by the impugned judgment. The impugned judgment has taken note of the law laid down by this Court. It has been held that the Respondents were first in the market and therefore they were entitled to an injunction.

4. The law on the subject is well settled by a number of decisions. It is not necessary to set out all those decisions. It would suffice to refer to only two decisions.

5. In the case of N.R. Dongre vs. Whirlpool Corporation reported in 1996(16) PTC 503, the Appellants got registered the mark Whirlpool in respect of washing machines. The Whirlpool Corporation filed a suit for passing off action brought by the Respondents to restrain the Appellants from manufacturing, selling, advertising or in any way using the trade mark Whirlpool of their product. It was held that the passing off an action was maintainable in law even against the registered owner of the trademark. It was held that the name of Whirlpool was associated for long with the Whirlpool Corporation and that its trans-border reputation extended to India. It was held that the mark Whirlpool gave an indication of the origin of the goods as emanating from or relating to the Whirlpool Corporation. It was held that an injunction was a relief in equity and was based on equitable principles. It was held that the equity required that an injunction be granted in favour of the Whirlpool Corporation. It was held that the refusal of an injunction could cause irreparable injury to the reputation of the Whirlpool Corporation, whereas grant of an injunction would cause no significant injury to the Appellants who could sell their washing machines merely by removing a small label bearing the name Whirlpool.

6. In the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. reported in 2001 PTC 300 (SC), the question was whether the mark Falicigo and Falcitab were deceptively similar. The trial court refused interim injunction. The Appeal was also dismissed. This Court did n