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IN THE HIGH COURT OF DELHI AT NEW DELHI
HON’BLE MR. JUSTICE MUKUL MUDGAL HON’BLE MR. JUSTICE VIPIN SANGHI, JJ.
SCHERING CORPORATION & ORS. .....Appellants
VERSUS
ALKEM LABORATORIES LTD. …….Respondent
FAO(OS) 313 OF 2008
FAO(OS) 314 OF 2008
Decided on : 01.12.2009
The present appeals have been filed by the appellants Schering Corporation, Schering-Plough Ltd. and Fulford (India) Ltd. under Order 43 Rule 1(r) CPC. They are directed against the identical orders dated 04th July, 2008 passed by the Learned Single Judge dismissing the appellants’ applications under Order 39 Rules 1 & 2 in the two suits CS (OS) No.730/2007 (out of which FAO(OS) No. 313/2008 arises) and CS(OS) No.361/2007 (out of which FAO(OS) 314/2008 arises) and vacating the ex parte ad interim orders of injunction passed in the said suits.
Fact of the Case:
The appellants filed the aforesaid two suits to, inter alia, seek permanent injunction to restrain infringement of registered trademarks, copyright, passing off, dilution, unfair competition, rendition of accounts of profits, deliver-up etc. against the aforesaid respondents ALKEM & GETWELL respectively.
Finding of the Court:
The learned Single Judge held that the present cases are squarely covered by the decision of the Division Bench in Astrazeneca (supra). We have, therefore, gone through the said judgment. Before we proceed further, in our view it is essential for us to deal with the appellants’ submissions vis-à-vis Astrazeneca (supra), as the scope of the parties’ submissions which we need to consider in this appeal would depend upon our understanding of the said judgment.
Issues: Whether the appellants are entitled to claim proprietary over a word fragment of their marks, particularly when the said word fragment is publici juris for a generic compound TEMOZOLOMIDE, and is used descriptively for the active chemical compound in the appellants products and is descriptive in nature.
Ratio Decidendi: The crux of the appellants contention is that the word-fragment TEM/TEMO of the word-name TEMOZOLOMIDE Is not generic/ publici juris, as it is not so recognized either by: i) The WHO (in its notified list of INN-Stems or in its List of Radicals-Groups); ii) A standard dictionary or medical dictionary; iii) The market proliferation of brands of formulations of the pharmaceutical substance incorporating the word-fragment TEM/TEMO, which market proliferation is a) uncontested; b) longstanding (c) extensive and (d) significant.
Final Decision: The appeals are dismissed with no orders as to costs. However, the respondents Alkem and Getwell in the two appeals are directed to maintain detailed accounts of the sales of their respective drugs ‘TEMOKEM’ and ‘TEMOGET’ and to regularly file half yearly statements in the suit, till the disposal of the suit.
VIPIN SANGHI, J.
1. The present appeals have been filed by the appellants Schering Corporation, Schering-Plough Ltd. and Fulford (India) Ltd. under Order 43 Rule 1(r) CPC. They are directed against the identical orders dated 04th July, 2008 passed by the Learned Single Judge dismissing the appellants‘/plaintiffs‘ applications under Order 39 Rules 1 & 2 in the two suits CS (OS) No.730/2007 (out of which FAO(OS) No. 313/2008 arises) and CS(OS) No.361/2007 (out of which FAO(OS) 314/2008 arises) and vacating the ex parte ad interim orders of injunction passed in the said suits.
2. These interim applications had been filed to seek grant of an interim injunction to restrain the Respondent Alkem Laboratories Ltd. (Defendant in CS(OS) NO. 730/2007) (hereinafter referred to as ALKEM) and Getwell Sciences India Pvt. Ltd (Defendant in Suit No. 361/2007) (hereinafter referred to as GETWELL) from using the marks TEMOKEM and TEMOGET respectively in relation to their pharmaceutical products the active ingredient whereof is TEMOZOLOMIDE, a drug administered for the treatment of brain cancer.
3. The appellants filed the aforesaid two suits to, inter alia, seek permanent injunction to restrain infringement of registered trademarks, copyright, passing off, dilution, unfair competition, rendition of accounts of profits, deliver-up etc. against the aforesaid respondents ALKEM & GETWELL respectively.
4. The appellants have disclosed the genesis of the TEMOZOLOMIDE molecule and its marks TEMODAL and TEMODAR used by the appellants. In 1984 one Professor Steven synthesized a molecule and named it TEMOZOLOMIDE. In 1991 the Cancer Research Campaign Technology Ltd., UK acquired rights to the TEMOZOLOMIDE technology from its maker, Prof. Stevens. In 1992 the appellants obtained worldwide license for TEMOZOLOMIDE technology from the aforesaid Cancer Technology Ltd. and initiated their research and development of a brain cancer drug. The drug was approved as a medical drug for cancer treatment in 1999. The appellants then filed for TEMODAL as their Trademark for their TEMOZOLOMIDE-based drug. According to the appellants the drug is being sold in India ever since 17.01.2000. Even the mark TEMODAL was registered in India in favor of the appellant vide registration no.687936 w.e.f. 23.11.1995 in class 5, which, inter alia, relates to pharmaceuticals including alkylating cytotoxic agents for the treatment of various types of cancer. Similarly, TEMODAR is registered in name of appellant no. 3 vide registration no. 888816 w.e.f 29.11.1999.
5. The appellants claim that they are global science-based health care business entities with leading prescription, consumer and animal health products. The mark TEMODAL existed in the appellants‘ portfolio since 1978 and was first applied by them for Psychopharmaceutical Preparations in Class 5 in Norway, Denmark and Sweden. The appellants commenced sales in Europe and thereafter in other parts of the world along with filing for registration of the mark TEMODAL in those respective countries, which they successfully acquired too.
6. The appellants claim to have came to know that the respondent ALKEM was marketing and selling an almost identically positioned drug (for treatment of brain cancer or glioblastoma multiforme) under the mark TEMOKEM which, according to the appellants, was phonetically, linguistically, textually, visibly, manifestly, confusingly and deceptively similar to their marks TEMODAL/TEMODAR. They also came to know that the respondent ALKEM had submitted a ?Proposed to be used application bearing number 1348168 in class 5 for registration of the mark TEMOKEM and the same was advertised in Trademark Journal no. 1335-0 dated 01.11.2006 made available to the public on 03.03.2007. In answer to this, the appellants have filed a notice of opposition dated 23.03.2007 to the above application and the same is still pending.
7. The appellants alleged infringement of trademarks under section 29 of the Trademarks A
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