1. Sex is an inescapable part of us. It is there from the moment of birth when we are given a sexual identity - boy or girl - and it is with us until the day we die - when it goes on the death certificate.
2. Ever since Adam and Eve ate forbidden apple and were transported to earth, sex has become basic human instinct. Among other creatures copulation may be only a biological act - for procreation. However, for human beings, sexual intercourse is not only procreative. It is creative as well. It has been described as 'the greatest driving force in the living world'.
2. No wonder then, that much is written about it. From time immemorial. On how to enjoy it most. On how to continue to enjoy and be sexually active even at advanced stage of life. Vatsyayana's 'Kamasutra' has placed him among the immortals and no better elegy or eulogy can be written than the following lines:
'So long as lips shall kiss and eyes shall see. So long lives This, and This gives life to Thee'.
3. Tantra has shown 'The Secret Power of Sex'. Sheikh Nefzaoui's celebrated work 'The Perfumed Garden' is well known and is translated in various languages. Sir Richard Burton, who has translated this work and 'kamasutra' has himself become immortal. The Khan Report on 'Sexual Preferences' by Sandra Kahn has become another classic. List would be endless.
4. Sex may be most confusing, disappointing and lonely experience. It may also be most piercingly beautiful, earthshaking and companionable experience. It is the experience of latter kind, which human beings chersh.
5. Knowing this insatiable appetite of human kind, medical science - traditional and modern - has not lagged behind. Aphrodisiacs are 'discovered' and 'invented' for prolonged and enhanced sexual encounters. Various therapies are administered for treatment of impotency or for sexual failures of all kinds. What a remarkable gift it would be, for those in need, when it was accidentally discovered that the drug - sildenafil citrate, commonly used for treatment of angina, could be a stimulant for male Erectile dysfunction. The plaintiff became pioneer in commercially exploiting the same. When a drug of this nature hits the market, there are bound to be many players. More and more would inevitably enter the arena. They would make the exploit. And it is bound to create economic war. That is exactly what has happened in these cases.
6. The plaintiff is a multi-national pharmaceutical Company. It is incorporated under the laws of the State of Connecticut, U.S.A. As per the averments made by the plaintiff in the plaint, it is a global research based Company which is responsible for discovering and developing innovative and value added products for improving the quality of life for people around the world and help them enjoy longer, healthier and more productive life. The drug discovered, developed and marketed by it are sold under PFIZER brand names. It claims to have invested enormous sums of money in research and development to establish and bring to the market a wide variety of innovative pharmaceutical products and in the process has created a global reputation for high quality and effectiveness of its pharmaceutical products. It has three business segments : health care, animal health and consumer health care. Its products are available in more than 150 countries.
This Suit filed by the plaintiff is for injunction and damages for passing of an unfair competition. The product in question is the drug for treatment of male Erectile dysfunction (hereinafter referred to as 'ED', for short) - 'sildenafil citrate' - which is marketed and sold by the plaintiff under the trade mark VIAGRA. It was introduced by the plaintiff-Company in early 1998 and the plaintiff claims it to be a revolutionary product. The plaintiff also claims that the said drug is the result of its extensive research on which millions of dollars were spent by the plaintiff-Company.
7. VIAGRA, according to the plaintiff, is a fanciful and coined word that was created by the plaintiff having no denotative meaning. After its introduction in the market as an innovative effective drug for treatment of male ED (sometimes referred to as impotence), with unsatisfactory treatments for such dysfunction so far, the product was an instant success. Overnight it became the household word across the globe and even in those countries where the product has not been launched it received enormous amount of media attention not only through advertisements and promotional activities by the plaintiff but also through unsolicited press reports, articles and features. The plaintiff claims distinctiveness in this product, inter alia, for the following reasons:-
(a) VIAGRA is a fanciful and coined word that was created by the plaintiff having no denotative meaning. The mark is inherently distinctive both to the trade and to the consuming public. The tablet was given a unique and unusual shape and colour i.e. unique blue colour and unusual and distinctive diamond shape. According to the plaintiff the notoriety, fame and goodwill is not just limited to the trade mark VIAGRA but also extends to its blue diamond tablet shape and colour. The trade mark and distinctive trade dress are universally recognised and relied on as identifying the plaintiff as the sole source of the drug and has distinguished the plaintiff's product from the goods and services of others.
(b) It is very effective for treatment of 'ED', for it is easier to administer than predecessor therapies. It is widely used treatment for 'ED'. As of April, 2001 VIAGRA has been prescribed more than 40 million times to more than 13 million men world wide by more than five lakh physicians. It is sold in more than one hundred countries. It is most extensively studied and widely used treatment for 'ED'. Its annual world wide sale in the year 1998-99-2000 were US $ 788 millions, US $ 1016 millions and US $ 1344 millions respectively.
(c) The plaintiff has also been extensively advertising this product in major international magazines. The product has also been discussed in number of booklets, journals and magazines which are circulated even in India. It is also advertised and promoted on the internet through the plaintiff's website being 'www.viagra.com'.
(d) The plaintiff's trade mark has been registered and/or pending registration in more than 147 countries around the world. The country where it stands registered are mentioned in para 10 of the plaint. The application for registration of this trade mark in India was made on June 1, 1996 which is pending registration with Registrar of Trade Marks. The said application has been assigned to PFIZER PRODUCT Inc. from PFIZER Inc.
8. As a result of aforesaid features and distinctiveness, the plaintiff claims that the VIAGRA trade mark and blue trade dress have acquired substantial goodwill and are extremely valuable commercial assets in the hands of the plaintiff.
9. The grave man of the plaintiff's grievance is the introduction of similar drug i.e. sildenafil citrate for same treatment, namely, 'ED' launched by the defendant no.2 under the brand name PENEGRA. According to the defendants the trade mark PENEGRA, which is described by various indigenous reports 'as Indian VIAGRA' is deceptively and confusingly similar to the plaintiff's world renowned trade mark VIAGRA. This name has been deliberately chosen in an effort to ride upon the reputation and goodwill of the plaintiff's trade mark VIAGRA. The defendants product PENEGRA is not only phonetically similar to that of the plaintiff's trade mark VIAGRA but the defendants have also copied the plaintiff's trade dress by introducing the product as blue diamond shape tablet. The plaintiff states that the malicious intention of the defendants in introducing the aforesaid product in aforesaid manner is further clear from the fact that the defendants have also launched its own website under the domain name 'www.PENEGRA. .org'. An access to this website would reveal that several features in this website has been directly lifted from the plaintiff's website 'www.viagra.com'. The plaintiff has stated the similarity in paras 23 to 28 in the plaint.
10. The plaintiff also points out that the defendants have made every effort to come as close as possible to the plaintiff's product inasmuch as the defendants product is also available in dosages of 25 mg, 55 mg and 100 mg. Both recommend intake of the product one hour before 'engaging in sexual activity'. The effect of both the drugs start after 30 minutes and lasts up to four hours. The plaintiff is aggrieved by the aforesaid adoption by the defendants of the plaintiff's product which according to the plaintiff is deceptively and confusingly similar to the plaintiff's product. The plaintiff states that it has spent millions of dollars and extensive resources on research and development of a new drug having the generic Chemical name sildenafil citrate, an approved oral therapy for 'ED'. 'ED', or male impotence, is a serious medical condition estimated to affect over one hundred million men around the world. One has to be very careful in prescribing such a drug to a man suffering from 'ED'. It is schedule 'H' drugs which can be sold only on medical prescription. thereforee, confusion has to be avoided at all costs. The consumer may buy the defendants product PENEGRA under the mistaken notion that it is Indian version of VIAGRA. According to the plaintiff, the defendant has marketed the product without proper research and any side effects or harmful effects on the patient taking PENEGRA may adversely affect the reputation and goodwill of the plaintiff's product VIAGRA. In fact, according to the plaintiff, it has not launched its product in India so far as the plaintiff did not intend to do so without proper research and studies. Thus apart from these possible harmful effects, which may likely to adversely affect the public opinion and view of the plaintiff's propriety VIAGRA brand - sildenafil citrate by unauthorisedly using of PENEGRA trade mark, the defendants have (a) traded upon and threatened to further trade upon the significant and valuable goodwill in the VIAGRA mark and distinctive blue tablet trade dress; (b) have caused or are likely to cause, public confusion as to the source, sponsorship or affiliation of its product; (c) have damaged and threaten to further damage the plaintiff's significant and valuable goodwill in the VIAGRA mark; (d) have injured and further threaten to injure the plaintiff's right to use its VIAGRA mark as the exclusive indicia or origin of PFIZER's 'ED' product containing sildenafil citrate; and (e) have diluted and threatened to further diminish the distinctive quality of the famous VIAGRA trade mark.
11. In these circumstances, the plaintiff has made the prayer for injuncting the defendants from producing, manufacturing, selling, etc. the VIAGRA mark or any colourable imitation thereof or any mark confusingly and deceptively similar thereto including but not limited to the name PENEGRA.
12. Along with the plaint, the plaintiff has also filed application under Order XXXIX Rules 1 and 2 read with Section 151 of the Code of Civil Procedure being IA.5563/2001. This application virtually reproduces the averments made in the plaint and as noticed above on the basis of which ad interim injunction on similar terms is prayed for.
13. While issuing summons to the defendants in the plaint by Order dated 1st June, 2001, notice were issued in IA.5563/2001 also for 11th June, 2001 and ex-parte ad interim injunction was granted to the plaintiff to restrain the defendants from producing, manufacturing, selling, etc. the VIAGRA mark or any colourable imitation thereof or any mark confusingly and deceptively similar thereto including but not limited to the name PENEGRA.
14. The defendant no.2 appeared on 11th June, 2001 and asked for time to file the written statement. Two weeks time was granted for this purpose. Further allowing the plaintiff to file replication/rejoinder before the next date, the case was directed to be listed on 10th July, 2001. Interim Order was also continued. Against the Order dated 1st June, 2001 granting ex-parte injunction the defendant no.2 preferred appeal being FAO(OS) No.276/2001 before the Division Bench and by judgment dated 30th June, 2001, the Division Bench allowed the said Appeal and set aside the injunction Order. Concluding paras of the judgment reads as under:-
'At this stage, we may also note that the learned counsel for the appellant with a view to demonstrate the appellant's bonafides has submitted that to dispel even the slightest doubt, the appellant no.2 undertakes to change the colour of their tablet from BLUE to another colour henceforth. Further the appellants would also not use and display they website till it was modified to ensure that there is no substantial adaptation whatsoever from the website of the respondents. Learned counsel further undertakes that the appellants would maintain records and file them in court with regard to the manufacture and sales of their products PENEGRA and abide by such directions as may be given by the Court.
We accept the above undertakings. The appellants shall duly file monthly statement giving details of the total number of PENEGRA tablets manufactured in different strengths, prices thereof and the sales revenue there from.
The Appeal is allowed in the above terms. The record be returned to the learned Single Judge for disposal of the application under Order 39 Rule 1 and 2 CPC on merits. Any observation made herein shall not tantamount to expression of opinion on merits of the application before the learned Single Judge.'
15. Thus significantly the defendant no.2 has changed the colour of the tablet from blue to pink and has also stopped using and displaying its website. It has also undertaken to maintain the records with regard to manufacturing and sales of its product PENEGRA and file them in the Court.
16. The defendant no.2 has filed detailed reply to this is filed by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure in the form of affidavit of Mr.Arun Parikh, its Vice-President (Legal). Apart from controverting various averments and allegations in the plaint, number of objections have been taken to the maintainability of the Suit as well as to this application on the strength of which it is stated that the plaintiff is not entitled to any such injunction. The submissions raising preliminary objections by the defendant no.2 are as follows:-
1. The plaintiff's trade mark VIAGRA has not been registered in India. The plaintiff has not even started selling its product in India. thereforee the case at hand is not one of infringement of trade mark but that of passing off action. In a passing off action, in order to succeed the plaintiff has to prove prior user which it cannot claim as it has not started selling its product in India.
2. The defendants 2 and 3 have entered the market with their product PENEGRA on 9th January, 2001. The present Suit was filed by the plaintiff on 30/31st May, 2001. In the interregnum the defendants have already established a niche in the market and are having approximately 34% share of sildenafil citrate market in India. The plaintiff was aware of the launch and market of its product in June 2001 itself. However, it chose to wait and file the present Suit after a considerable delay when the defendants have already established a substantial market. Thus on the grounds of delays, laches and estoppel also the plaintiff is not entitled to interim injunction.
3. The plaintiff is merely an assignee in India for the trade mark VIAGRA of PFIZER Inc. PFIZER Inc. has not come forward to file the present case. Although the plaintiff has claimed immense world wide reputation of the product, this reputation and goodwill belongs to PFIZER Inc. and not to the plaintiff. The plaintiff has not made any averment in reply of its reputation and goodwill of the trade mark. The law of trade mark, as it exists in India and in most of other countries, does not recognise that different companies/entities can enjoy/claim reputation/good will of a trade mark in different domestic jurisdictions, unless the respective entities/companies are marketing the product in their respective domestic jurisdiction. The plaintiff cannot claim for its reputation and goodwill of a trade mark used by a different entity/company elsewhere in the world. thereforee, the plaintiff has no locus to file the present proceedings.
4. The plaintiff is not even proposing to market the product VIAGRA in India as is clear from the various statements made by PFIZER Inc. and the assignment in favor of the plaintiff for India amounts to trafficking in trade marks, thus disentitling the plaintiff to file any Suit in India.
17. On merits the defendants explain that the drug sildenafil citrate is a Chemical compound which is a generic drug on which nobody can have any monopoly nor it is claimed by the plaintiff either. It is stated that sildenafil citrate if taken an hour before sexual intercourse works on the normal body chemistry to allow the blood to rush into the penis when the man is sexually stimulated. It is stated that the defendant no.2 conducted clinical trials of its product of sildenafil citrate in India and only after it administered and established that its product match the quality and importantly the bio- availabilities ( i.e. the presence of a concentration of the drug in the blood after its administration to a person at different time periods after administration was equal to the product VIAGRA as sold in USA) that Government of India gave permission to the domestic pharmaceutical firms, including the defendant no.2, to manufacture and market sildenafil citrate. When this permission was given on or around January 8, 2001 the defendant no.2 started marketing sildenafil citrate tablets under the trade mark PENEGRA from 9th January, 2001. The defendant no.2 in the process made and satisfied and complied with all the procedural and other requirements of the Drug and Cosmetics Act, 1940. Thus according to the defendants, it is incorrect for the plaintiff-Company to claim any superiority in quality as the quality equivalence is the first requirement for obtaining a Drug Permission in India for the new drug. Consequently, different companies such as Ranbaxy Laboratories, Cadila Healthcare Ltd., torrent Pharmaceuticals Ltd., Sun Pharmaceuticals Ltd. and Cipla Ltd. obtained approval from the Drug Controller for manufacturing and marketing of the said drug, in the trade names coined by the respective companies.
18. The defendants have also explained as to how they chose the word PENEGRA for their product. According to the defendant no.2 it coined the word PENEGRA as trade mark keeping the purpose of drug in mind namely, satisfying the human sexual need. It is explained that the first four letters 'PENEGRA. ' were obtained from the word 'penetration' which means 'the insertion by a male of his penis into the vagina or anus of a sexual partner'( The new Shorter Oxford English Dictionary. Thumb Index Edition) while the last three letters 'gra' were obtained from the latin word 'gratificari' and the French word 'Gratus' which means 'pleasing'. The English word 'to gratify' or 'gratification' is derived from the aforesaid words and means as per the Oxford English Dictionary 'a thing that gratifies or pleases, a source or pleasure or satisfaction or to give pleasure or satisfaction to a person'. It is stated that the word 'PENEGRA' was coined by the defendant no.2 to indicate a satisfying or a pleasing penetration, which would be achieved through the use of the drug. Incidentally, the defendant no.2 found that the word coined also could have a different shade of meaning, which is apt for the drug. The first three letters 'Pen' could indicate 'penis' while the last three letters 'gra' also mean 'long' or 'loving'. Thus the defendants found that the most appropriate coining of the trade mark would be the word 'PENEGRA'.
19. It is also clarified by the defendants that as per the permission of the Drug Controller the said drug which is a schedule H drug can be sold only on prescription of urologist, endocrinologist or a psychiatrist. This condition of prescription, keeping in mind the known side effects of this drug is a step ahead to curb misuse or abuse of its product which is not even imposed in U.S.A. itself. It is further stated that drug administration is also keeping vigilance on the implementation of these conditions by regularly raiding/checking chemist shops and lodging complaints under the Drug laws.
20. It is further explained that when the drug can be sold only on the prescription of a super specialised doctors, such doctors would not prescribe any drug on the basis of the colour, shape, size, trade dress or get up of the medicine nor even based on the trade name given to the drug. Doctor prescribes the drug essentially considering the composition of the generic drug or drugs which he wants to prescribe and the reputation of the company manufacturing and marketing each composition. thereforee there is no scope of any deception or confusion.
21. It is also the case of the defendants that the question of deception or mistake by the pharmacist dispensing the defendant's product PENEGRA in place of VIAGRA also would not arise because the plaintiff's drug - VIAGRA is not even sold in India. The defendants have no intention to cause deception and in fact there is no misrepresentation by the defendants to doctors or the public which is leading or is likely to lead them to believe that goods or services offered by the defendants are the goods or services of the plaintiff's.
22. Thus, according to the defendants, neither the plaintiff had established its prior user of product VIAGRA in India nor existence of good-will of this product in India nor is there any actual or possibility/chance of deception/confusion between the plaintiff's product and the defendant's product, keeping in mind the manner in which the trade is being conducted and the product is being sold. thereforee, the plaintiff has no right to maintain action of passing of against the defendants.
23. Lengthy arguments were advanced and elaborate submissions made by senior counsel appearing on both sides in support of their respective cases. The submissions noted above were elaborated with the aid of various documents, statements and charts filed by either sides. Plethora of judgments and precedents running into volumes were cited in support of legal submissions. Mr.K.K. Venugopal, learned senior counsel ably assisted by Mr.Chander M. Lall (who also made submissions in rejoinder) argued for the plaintiff. Mr.P. Chidambaram, learned senior counsel argued on behalf of the defendant no.2 whereas Mr.Rajiv Nayyar, learned senior counsel made his submission on behalf of the defendant no.3. Arguments were concluded on 11th January, 2002 when the learned counsel for the plaintiff also filed written submissions with copies to learned counsel for the defendants. The defendants were also given an opportunity to file the written submissions by 22nd January, 2002 which were duly filed by the defendants.
24. At this stage, it may be mentioned that along with this Suit four more Suits (wherein similar application under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure have been filed) being Suit Nos. 1444/2001, 1258/2001, 1049/2001 and 1418/2001 filed by the plaintiff against four different companies relating to this very product of the plaintiff were also heard and arguments concluded simultaneously. However, in one such case being Suit No.1418/2001, while filing the written submissions, the defendants also filed affidavit Along with which certain documents were annexed. The matter was listed for direction and an Order was passed permitting the plaintiff to file its reply affidavit which the plaintiff filed on 1st February, 2002. On going through the written submissions of the parties it was felt that on certain points some clarifications were required and accordingly this matter was listed for directions and thereafter the matter was further argued on the queries put by the Court to the counsel and was finally reserved for judgment on 5th April, 2002.
25. From the pleadings noted above on which arguments of the parties revolve, following questions arise for consideration in this application outcome of which will determine its fate:-
1. Whether the plaintiff has locus standi to file the present Suit?
2. Whether the product VIAGRA has acquired trans border and/or spill over reputation in India?
3. Whether the defendants product 'PENEGRA' is deceptively and confusingly similar to that of the plaintiff's VIAGRA? OR Whether there is any likelihood of confusion between the plaintiffs and the defendants' product i.e. whether consumer may buy the defendants product PENEGRA under the impression that it is infact buying VIAGRA?
4. Whether the plaintiff has filed the present Suit and application for ad interim injunction belatedly and is not entitled to injunction because of alleged laches and delays?
5. Whether the plaintiff has satisfied the conditions for grant of injunction as required under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure read with provisions of Trade and Merchandise Marks Act?
1. Whether the plaintiff has locus standi to file the present Suit?
It is the first objection of the defendants that the case of the plaintiff is limited to claim for passing off and is not a case of alleged infringment of patent, copyright, design or trade mark nor any pleadings to this effect in the plaint or in the Application under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure (hereinafter referred to as CPC, for short). thereforee the submissions in respect of action of passing off only need to be considered. It is further the case of the defendants that VIAGRA is the trade mark of PFIZER Inc. The plaintiff namely, PFIZER PRODUCTS Inc. is only an assignee of the said trade mark in India as per the Assignment Deed dated 3rd June, 1999. This Deed very categorically states that the plaintiff has been assigned all the rights, title, interest, benefit and property whatsoever in and to the said trade mark together with the goodwill in India of the business in connection therewith.
As per this assignment the plaintiff has only been assigned 'goodwill in India' and thereforee it cannot be contended that it has goodwill elsewhere or international goodwill and further as far as goodwill in India is concerned admittedly the plaintiff has no business in India and is not selling its product VIAGRA in India. thereforee in the absence of any goodwill in India the plaintiff cannot file the present Suit and again rely upon the international reputation and goodwill of PFIZER Inc.
The plaintiff has explained that PFIZER PRODUCTS Inc. i.e. the plaintiff as well as PFIZER Inc. are part of the same group. The assignment of the plaintiff is in respect of all non US marks. The transfer was done to centralize cooperation and efficiency of management. In para 3 of the plaint, the plaintiff has stated that the term includes reference to PFIZER Inc. and the Indian assignment was only for the purpose of transferring the application for registration and the consideration of US$ 100 is only to complete the contract and for calculating stamp duty. It is also the submission of the plaintiff that in 1996-97 the Group had decided to transfer of non mark US products and trade marks of PFIZER Inc. including VIAGRA to newly formed company - PFIZER PRODUCTS Inc. This was done to have a single entity, for maintaining and managing of the intellectual property to centralize cooperation and efficiency of management. Since the application for registration of trade mark VIAGRA in India was filed prior thereto, the assignment thereof became necessary for the purpose of transferring this application for registration and that is why Assignment Deed dated 3rd June, 1998 was executed and consideration of US $ 100 was mentioned with a view to complete the contract. The plaintiff has relied upon the judgment of this Court in the case of Indian Shaving Products Ltd. versus Gift Pack and another reported in 1998 (18) PTC 698 (known as 'Duracell case' for short) in support of its submission wherein only the Indian subsidiary was the plaintiff but the Court held that being part of US Company group the plaintiff could take advantage of the trans border reputation. The learned counsel for the plaintiff also sought reliance upon the judgment of Bombay High Court in the case of Aktiebolaget Volvo versus Volbo Steel Ltd. reported in 1998 (18) PTC 47 (known as 'Volvo case') in support of its proposition where again the plaintiff had relied upon the Volvo group of companies for claiming the reputation in which the plaintiff had controlling shares.
Keeping in view the fact that the plaintiff and PFIZER Inc. are part of the same group and there is an assignment of PFIZER Inc. to the plaintiff in respect of all non US marks and the dicta laid down in Duracell and Volvo cases, prima facie it appears that the plaintiff can maintain the present Suit and rely upon the goodwill of PFIZER Inc. The plaintiff cannot be non-suited at this stage on such a preliminary objection raised by the defendants. thereforee for the purpose of the present application we shall proceed on the basis that the plaintiff and PFIZER Inc. being part of the same group the plaintiff can rely upon the goodwill of its counter part namely, PFIZER Inc. After all, what is protected by the Indian Courts is the Indian goodwill. The concept of trans-border reputation deals with how this goodwill is acquired in India. It is not disputed by the defendants that the Courts in India now recognise that goodwill can be now acquired in India without the physical presence of the product. This aspect would be discussed in detail while dealing with the second question posed above. The plaintiff is the assignee of the goodwill in India and due to spill over of the reputation, such a goodwill can be recognised in India even without the physical presence of the product. Prima facie I do not think that such a technical objection taken by the defendants can come in the way of the plaintiff in maintaining the present Suit.
Relying upon the judgment of the Chancery Division in the case of Athletes Foot Marketing Associates Inc. versus Cobra Sports Ltd., reported in (1980) RPC 343 and Star Industrial Company Ltd. versus Yap Kwee Kor reported in 1976 FSR 256 the defendants argued that in a passing off action in respect of right to property it is nothing but the goodwill in the business and since goodwill and business were inseparable if there was no business there could not be any goodwill and in the absence of goodwill the plaintiff could not maintain an action of passing off and further that the plaintiff could not take the benefit or rely upon the activities or goodwill of the PFIZER Inc. as this was not allowed in Athletes Foot case (supra). However the thinking of Indian Courts is not in the same wave length. In Apple Computer Inc. versus Apple Leasing reported in 1992 (1) ALR 93 the Court has taken a contrary view and differed from the view taken from the Athletes Foot case (supra). Similarly in Kamal Trading versus Gillette U.K. reported in 1988 PTC 1 the Division Bench of Bombay High Court has taken a view which goes contrary to the view taken by the aforesaid two judgments cited by the defendants. At this stage, thereforee, it would not be advisable to express a definite and final view on this aspect and as mentioned above as there is some force in the argument of the plaintiff, prima facie opinion is that case of the plaintiff cannot be non-suited on the ground that the plaintiff has no locus standi to maintain the present Suit or rely upon the goodwill of the PFIZER Inc.
2. Whether the product VIAGRA has acquired trans border and/or spill over reputation in India?
In so far as international reputation acquired by the plaintiff in the product VIAGRA is concerned, there is abundance of material on record to establish such a reputation. Even the defendants could not dispute this. That was the reason that the defendants tried to deflect the issue by arguing that the plaintiff could not rely upon the trade mark and goodwill of the business of PFIZER Inc. in its product VIAGRA by contending that the plaintiff had only the assignment of 'goodwill in India' and thereforee could not claim any other or global goodwill which belongs to PFIZER Inc. Once we do not agree with this submission of the defendants, there may not be any difficulty on the basis of material produced on record to come to the conclusion that the plaintiff (including PFIZER Inc.) enjoys a world wide reputation of the product VIAGRA. It cannot be doubted that in no time, after the launch of the product VIAGRA, its reputation spread like fire in the forest. It travelled in almost all the countries over-night and came to be known as the 'wonder drug'. It created much hype and received substantial media attention. Articles kept pouring in various journals and magazines. Newspapers started reporting various stories linked with the use of this product. The plaintiff has placed on record the following material -
NEWSWEEK dated 17th November, 1997 -( a cover story on impotence - article features VIAGRA);
INDIA TODAY dated 27th April, 1998 (a cover story on 'Rising Impotency' - the shrinking world may have some bearing on impotency but it is also part of the cure : already, enterprising men in Mumbai are getting their relatives in the U.S. to send them VIAGRA while others are seeking the wonder drug through the internet);
TIME dated 4th May, 1998 (VIAGRA on front cover);
BUSINESS WEEK dated 11th May, 1998 (VIAGRA on front cover);
TIMES OF INDIA dated 28th May, 1998 (article entitled 'Women can benefit from VIAGRA too);
NEWSWEEK dated 22nd June, 1998 (Special Report entitled 'the culture of VIAGRA');
THE TIMES WEEKEND dated 11th July, 1998 (front page article on VIAGRA);
INDIAN EXPRESS dated 1st August, 1998 (article entitled 'Cadila Unichem jump onto VIAGRA bandwagon);
INDIAN EXPRESS dated 10th August, 1998 (article entitled 'Europe debating state funding of VIAGRA);
FORBERS dated 11th January, 1999 (VIAGRA on cover).
Infact the defendants while launching their product PENEGRA has itself used the expression 'the Indian Viagra' which would be conclusive of the reputation of the plaintiff's product inasmuch as for launching the drug - sildenafil citrate in India and for informing the consumer as to what kind of product it is, the defendants themselves conveyed the same to the consumers in this country by describing it to be 'Indian Viagra'. This shows that even the defendants knew the reputation of VIAGRA in India and thereforee thought that it would be easy to convey as to what was the purpose for which the PENEGRA was meant. When the defendant was launching its product, articles appeared in journals and newspapers in India describing that the defendants was conducting clinical trials or launching the drug which was 'VIAGRA - like drug'. The defendant has itself filed copies of some of its reports appearing in newspapers and journals. The various articles entitled as - 'Zydus Cadila to conduct clinical trials for 'VIAGRA - like drug', 'Zydus Cadila to launch cheaper VIAGRA clone'. These articles also compared VIAGRA and PENEGRA stating 'First VIAGRA now PENEGRA' or describing PENEGRA as 'Indian version of VIAGRA' or 'desi version of VIAGRA' or 'the wait's over, desi VIAGRA is here'. This material itself is sufficient to prove the trans-border reputation of the plaintiff's drug VIAGRA. It is not in dispute that many of these articles have appeared in Indian magazines and newspapers. It is also not in dispute that even foreign magazines where these articles have appeared are easily available and widely circulated in India.
26. In addition it is also a matter of record that the plaintiff has its own website 'www.viagra.com' which is easily accessible by the users in India. The evidence produced on record is so overwhelming that it would be naive to ignore the same or ostrich like close one's eyes towards this.
27. The cross-border or spill over reputation is now well recognised in India by series of judgments. In a paper presented by Hon'ble Dr.Justice A.S.Anand, former Chief Justice of India on 'Intellectual Property Rights - The Indian Experience' - a paper presented in the Second Worldwide Common Law Judiciary Conference at Washington D.C.( U.S.A.) held between May 25 - 30, 1997 and published in the Journal Section of (1997) 6 SCC 16. Following extract of the said article beautifully sums up the legal position:-
'Meanwhile, it would be comforting for the international community to know that reputation of trade marks of overseas companies is being recognised in India and there have been significant judicial precedents on the question of transborder or spill-over of international reputation, notwithstanding the fact that India is not a signatory to the Paris Convention and the patents law has not so far been amended in India after signing of GATT.
In November 1993 the Delhi High Court restrained two local companies by separate orders of interim injunction from using BENZ and MERCEDES respectively.
The restraint order in respect of BENZ involved a company in India engaged in sale of undergarments under trade mark VIP-BENZ in combination with a three-pointed human figure in a ring - characteristic of the three-pointed star device of Daimler Benz AG - with the legend 'Germans would be proud of it'. While upholding the plaintiff's claim for interim injunction, the High Court made the following observations: 'I think it will be a great perversion of the law relating to trade marks and designs, if a mark of the order of the 'MERCEDES BENZ', its symbol, a three pointed star, is humbled by indiscriminate colourable imitation by all or anyone; whether they are persons, who make undergarments like the defendant, or anyone else. Such a mark is not up for grabs - not available to any person to apply upon anything or goods. That name which is well known in India and world-wide, with respect to cars, as is its symbol a three-pointed star.'
28. Yet another observation in this case was:
'In my view, the trade mark law is not intended to protect a person who deliberately sets out to take the benefit of somebody else's reputation with reference to goods, especially so when the reputation extends world-wide. By no stretch of imagination can it be said that use for any length of time of the name 'BENZ' should not be objected to.'
(Daimler Benz vs. Hybo Hindustan)
29. The Supreme Court upheld that order. A restraint order was also passed in respect of use of MERCEDES on casseroles following the above judgment.
30. The principles enunciated in the above decisions were followed in another judgment by the Delhi High Court in October 1994 in the Whirlpool case. This was a passing off action instituted by Whirlpool Corpn. against an Indian company, seeking grant of an ad interim injunction preventing the defendant from passing off its goods as those of the plaintiffs by use of trade mark 'WHIRLPOOL'. One of the questions before the Court was whether the plaintiff-who was not selling in India - could claim the benefit of transborder reputation in trade mark 'WHIRLPOOL' so as to maintain a passing off action in India or should its goodwill and reputation be confined to territories in which it has proved actual use of the trade mark in the market. The documents filed in the proceedings proved that some limited sales had been made to US Embassy and USAID in India and that the 'WHIRLPOOL' products had been advertised in magazines having international circulation including in India. The court held that the plaintiff could bank upon transborder reputation of its washing machines for the purpose of maintaining passing off action in India. The Supreme Court upheld that decision.
31. It would, thus be seen, that even where neither 'the process' nor the 'product' is directly in issue Indian courts have gone beyond the cold print of the statute and granted relief to protect world-wide reputation which a trade mark has acquired, even where the trade mark as such has not been registered in India.
32. The rapidly growing international trade makes it imperative that intellectual property rights are properly recognized and managed in different countries of the globe. National protection is no longer adequate to safeguard intellectual property rights which can easily be pirated or copies by nationals of other countries and exploited in their own market or even in international markets. International remedies for such infringement are necessary. The earlier conventions which are administered by the World Intellectual Property Organisation and the provisions of the TRIPS Agreement are a step towards such international protection of intellectual property rights. Suitable laws which will protect such rights internationally and give adequate monetary compensation to the owner without creating any undue monopoly in the property can and are being formulated as standards for laws to be enacted by the different countries of the world. These standards reflect the experience of various countries of the world in protecting and enforcing such rights, while taking care of public interest in the availability of new ideas and technologies'.
33. This article was further cited in Caesar Park Hotels and Resorts Inc. versus West inn Hospitality Services Ltd. 1999 (19) PTC 123 (Mad). Following principle was laid down:-
'Thus, it is manifestly clear that the plaintiff in order to get the relief of interim injunction restraining the defendant from using its service mark need not establish that they actually carry on business in this country. It is enough if they have got customers here.'
34. In the case of N.R. Dongre versus Whirlpool Corporation 1996 (16) PTC 476 Delhi the Court observed that :-
'.... The court frowns upon any attempt by one trader to appropriate the mark of another trader although that trader is a foreign trader and the mark has only been used by him in a foreign country.'
35. In another case entitled Allergen Inc. versus Milment Of the Industries and others 1999 (19) PTC 160 Cal. the Court cited from the case of N.R. Dongre (supra) as follows:-
'The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinemas etc. even though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it cannot be said that a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems, which transmit and disseminate the information as soon as it is sent from one place to another. Satellite Television is a major contributor of the information exploitation. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.'
37. In the above case, the Calcutta High Court also cited a similar view taken by the Division Bench in the case of J.N. Nichols (Vimto) Ltd. versus Rose and Thistle reported in 1994 PTC 83:-
'Thus, a product and its trade mark transcends the physical boundaries of a geographical region and acquires a transborder or overseas or extra territorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial .... The Courts do not approve of any attempt by one trader to appropriate the mark of another trader, even though that trader may be a foreign trader and mostly uses his mark in respect of the goods available abroad i.e. outside the country where the appropriation of the trade mark has taken place. As mentioned earlier, awareness and knowledge of the mark, in the latter country may be because of small trickle of goods in that country or through advertisement. The manner and method by which the knowledge of the mark is acquired by the public is of no consequence and will not matter.'
38. In Central Industrial Alliance Ltd. versus Gillette U.K. Ltd. reported in 1998 (18) PTC (Bom.) the Court observed as follows:-
'In addition, it has to be remembered that in respect of a consumer article such as a safety razor blade publicity does not take place merely by advertisements in India. Such items are advertised in foreign newspapers and magazines and these newspapers and magazines are circulated in India and are freely imported and presumably read. Apart from this, judicial notice may be taken of a large number of Indians who go out temporarily to other countries, mainly to the Middle-East countries, and who, thereforee, had the opportunity to use the Plaintiff's blades. These persons do not permanently settle down abroad and return to India after their two year or three year stay'.
39. In the case of Indian Shaving Products Ltd. (Duracell case) (supra) this Court observed as under:-
'The world with the passage of time has become almost just like a city on account of the technical advancements in technology such as wireless, telephone, television, cinema, and computers so on and so forth, made by the people inhabiting this terrafirma. Similar advancements have been made in the means of transport such as railways, ships, airlines. These days if a product is launched in a particular country the goodwill and reputation, which a seller earns by selling his commodities in the market do not remain confined to the four corners of the said country. The reputation and goodwill and intrinsic worth of the said goods spread like a wild fire to every nook and corner of the world through magazines and newspapers, television, telephone, computers, films and cinema.
40. It is not necessary to quote from many other judgments taking similar view. The purpose would be subserved by citing those cases. These are:- Time Warner Entertainment Company, L.P. versus A.K.Das reported in 1997 (17) PTC 453, Volvo case (supra), Caterpillar Inc. versus Jorange reported in 1998 (18) PTC 31, Rainforest Cafe, Inc. versus Rainforest Cafe and others reported in 2001 PTC 353 (DEL), WWF International versus Mahavir Spinning Mills Ltd. reported in 1994 PTC 250.
41. Learned counsel for the defendants argued that since there were no sale or advertisement in India by the plaintiff, the plaintiff could not make out a case of cross-border reputation in support of this proposition. The defendants sought to rely upon the case of N.R.Dongre versus Whirlpool Corporation (supra), Smithkline Beecham Plc. versus Hindustan Lever Ltd. reported in 2000 PTC 83 and Gillettee Company versus A.K. Stationery reported in 2001 PTC 513.
42. It was also pleaded that in all cases where the concept of trans-border reputation had been accepted, were the cases where the world wide name of the company/corporation also happened to be the mark which is alleged to be passed off/infringed in contra-distinction from the same product name or mark, which is different from the company/corporation name or mark. It was submitted that reputation or goodwill of a particular product mark may not be equated with so called reputation/goodwill of the Corporation's name/mark. In the case of the plaintiff since the name of the product in question namely VIAGRA was different from the name of the Company i.e. word/mark PFIZER thereforee different considerations need to be applied.
43. This argument does not impress. In so far as the aforesaid judgment cited by the defendants are concerned they have no application to the facts of this case. In all those cases as well, the Courts had accepted the applicability of the principle of cross border or spill over reputation. However, what was experienced in these cases was that in order to portray trans- border reputation, it was necessary to place on record sufficient evidence in support thereof. This would be clear from the following observations in the case of Smithline Beecham (supra):-
'In the absence of any evidence of goodwill or any reputation, it cannot be presumed that the plaintiffs achieved a trans-border reputation prior to the filing of the suit in respect of their tooth brush, no injunction could be granted in favor of the plaintiff even in respect of OZETTE manufactured and marketed by the defendants vis-a-vis ACQUAFRESH FLEX. In the case of Whirlpool reported in 1996 PTC 415 there was voluminous evidence produced which were circulated in India for several years and the goods were sold to Embassies and in the context of such evidence this court held that the said product achieved trans-border reputation. No such evidence has been placed in the present case at least prior to 1996 and even whatever evidence has been placed on record after 1996 the same does not establish that the plaintiffs achieved a trans-border reputation. In order to prove trans-border goodwill and reputation the plaintiffs have relied upon materials published in the dental journal which admittedly has very restrict circulation. Mere publication of such advertisement and materials in dental journal cannot and would not establish a trans-border reputation. Such reputation, if any, was confined to a particular class of people i.e. the persons subscribing to the said specialised journals and cannot be said to be extended to the general consumers. It could not be shown that any advertisement was made by the plaintiffs prior to 1996 in any journal or magazine having wide circulation. In absence of same it is not possible to hold that the tooth brush of the plaintiff acquired any trans-border reputation and goodwill ...'.
44. Similarly in the case of Gillette Company (supra) this Court observed as under:-
I also agree with the submission of learned counsel for the defendant no.2 that the plaintiffs have not produced sufficient material on record to claim trans-border reputation in respect of the product in question and the observations of this Court in the cases of The Proctor and Gamble Company (supra) and M/s.Smithkline Beecham (supra) come handy for the defendant no.2.'
45. However, that is not the position in the instant case. The plaintiff in the instant case has produced plethora of material indicative of world wide reputation of its product VIAGRA. Such evidence is in fact to be found in various documents produced by the defendants themselves and various admissions of the defendants contained in these documents brief reference whereof has already been given above.
46. I do not agree with the submission of the defendants that different yardstick have to be applied when the reputation or goodwill of the trade name of the product which is involved is different from the name or mark of the company/corporation. When the action of passing off is complained of in relation to a product, it is the reputation of that product which would be the relevant consideration and whether the name of the product is synonymous with the name of the company or not would be totally irrelevant. Of course, this aspect may have bearing on the question of mis-representation or deceptive similarity between the two products which is dealt with appropriately at later stage.
47. Thus it can safely be concluded that the plaintiff Company enjoys world wide reputation in the product VIAGRA and this reputation has spilled over within the boundaries of India as well.
3. Whether the defendants product 'PENEGRA' is deceptively and confusingly similar to that of the plaintiff's VIAGRA? OR Whether there is any likelihood of confusion between the plaintiffs and the defendants' product i.e. whether consumer may buy the defendants product PENEGRA under the impression that it is infact buying VIAGRA?
48. This fact hardly requires repetition that we are dealing with the action in the realm of passing off. It is not a case for infringement of trade mark inasmuch as the trade mark VIAGRA is not a registered trade mark of the plaintiff in India. In fact both are on same wavelength i.e. the Court is dealing with a case of passing off action.
49. In the case of Ruston & Hornsby Ltd. versus The Zamindara Engineering Company reported in 1970 (2) SCR 272, the Apex Court brought out the distinction between the infringement action and passing off action in the following words:-
'The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in ss.30, 34 and 35 of the Act. On the other hand, the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on A's part. In equity, however, Lord Cottenham L.C. in Millington v. Fox* held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, buy fusing law and equity, gave the equitable rule the victory over the common law rule.
The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls, in Saville Perjumery Ltd. v. June Perject Ltd.**.
'The Statute law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing off. But it differs from that law in two particulars, namely (1) it is concerned only with one method of passing-off, namely, the use of a trade mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938 section 4 that infringement takes p-lace not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive.'
In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions.'
50. In the case of Ervin Warnik versus Tow end and Sons (Advocaat case) reported in 1979 AC 731 five characterstics are laid down which must be present in order to create a valid cause of action for passing off, viz:
i. a misrepresentation,
ii. made by trade in the course of the trade,
iii.to prospective customers of his or ultimate consumer of goods or services supplied by him,
iv. which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence), and
v. which causes actual damages to the business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.
51. Before dealing with the question of misrepresentation, we may have to deal with another incidental question which may have bearing on this aspect viz. whether the two products namely VIAGRA and PENEGRA are deceptively similar. After all person making misrepresentation may not succeed unless his product is deceptively similar to the other product when attempt is made by that person to pass on his product as a product of the other. thereforee, it would be appropriate to first deal with the question of similarity and or deceptive similarity of the two products.
52. The case of the plaintiff on this aspect of the matter is that the defendants have copied almost all the essential features of the plaintiff's product VIAGRA while launching and marketing their product PENEGRA and in this respect it was emphasised that:-
(a) The word PENEGRA is phonetically similar to the word VIAGRA;
(b) There is a similarity of the trade dress comprising of colour and shape;
(c) Website of the plaintiff and that of the defendant no.2 is also the same;
53. These features have already been narrated above. Elaborating the same, it was argued by the learned counsel for the plaintiff that the defendants were trying to point out artificial distinctions which were of no consequence. It was argued that the Court should take into consideration all the aforesaid similarities cumulatively which would establish the malafides of the defendants in adopting the trade mark PENEGRA with similar trade dress. The learned counsel for the plaintiff emphasised that in order to mislead the prospective consumers, the defendants adopted the name which was almost similar/phonetically similar to the trade name of the plaintiff's product. It also adopted the same trade dress by copying the colour and shape of the plaintiff's tablet namely, blue colour with diamond shape which would show malicious intention in introducing its product. The defendant's advertisement and publicity, while launching the product, also described it as 'Indian version of VIAGRA' thereby making the consumer to believe that VIAGRA had launched its product in India in the name of PENEGRA. Above all, it even launched a site with the domain name 'www.penegra.org.' by copying several features from the plaintiff's website 'www.viagra.com'. It was further argued that merely because the defendants had changed the colour of its tablet to pink and had discontinued its website would not have any effect on the merits of the case inasmuch as it would rather prove the guilt of the defendants in the first place and establish that the defendants admitted that by adopting the colour of their tablet as blue and diamond shape and website copying similar features the same would prove misleading the public. It would further establish that the defendants had copied the website of the plaintiff in the first place and by use of the website they had successfully passed off their product PENEGRA as that of the plaintiff's product VIAGRA. It was also stated that the defendants had not given any Explanationn as to why the exact shape of diamond and blue colour were adopted in the first place. It was further submitted that the defendants have also not offered any Explanationn on the publicity material whereby repeated reference was given to VIAGRA which would establish that the defendant had made an all out attempt to establish its trade connection with the plaintiff. The learned counsel concluded this aspect of the matter by submitting that the matter must be taken in its entirety and the situation as it existed on the date of filing of the Suit. All aspect taken together conclusively establish dishonesty with which the defendants had acted and their agreeing to change the colour and discontinue its website was indicative of their dishonest intention. Relying upon the judgment of this Court in Glenfidich (supra) the counsel submitted that similar claim of making such changes was rejected by this Court and the Court dealt with the situation as it existed on the date of the Suit.
54. Strongly refuting the aforesaid submissions, the learned counsel for the defendants, on the other hand, contended that since colour of PENEGRA had been changed from blue to pink and the website also had been discontinued, contention in this respect no longer survived for the purpose of interlocutory relief. The counsel argued that it is unfair for the plaintiff to allege any admission of guilt from the gesture of the defendants i.e. in changing the colour of the tablet from blue to pink and in discontinuing the web site. Such a change was obviously effected, as an interim measure and without prejudice to the rights and contentions of the defendants. Further more, even if one were to proceed by ignoring the change in colour and the discontinuance of the website, the plaintiff would still not be entitled to any relief. The plaintiff cannot and does not have any monopoly over the colour 'blue' which is common to trade. It is not and cannot be the plaintiff's case that the colour 'blue', as used in VIAGRA has acquired any secondary meaning. In so far as the website is concerned, the plaintiff does not own the website, nor is the plaintiff as assignee of the copyright in the website, which is allegedly copied, and thereforee no cause of action accrues in favor of the plaintiff.
55. It was also submitted that there is no monopoly in shape. There are many drugs in the market bearing the so called diamond shape. Beside, assuming the plaintiff's drug is in a diamond shape, the defendants drug resembles more an ellipse and is anything but resembling a diamond shape. There is no evidence that by using blue colour or adopting the diamond shape, the said colour and shape have acquired a distinctiveness or a secondary meaning. Following judgments were cited in support :- (i) The Boots Company Ltd. versus Approved Prescription Services Ltd. reported in 1988 FSR 48; (ii) Smith Kline & French Laboratories Ltd. versus K.V. Higson t/a Europharm reported in 1988 FSR 115.
56. It was further argued that trade dress must be a non-functional feature. There is no pleading at all about what features would qualify for trade dress, and if so, how that feature is non-functional. There must be further pleading and evidence that the said 'trade dress' has acquired a secondary meaning. In the absence of any pleading or evidence, this contention of the plaintiff is wholly misconceived. For this proposition the defendants' counsel took shelter of following case law: (i) Paytons & Company versus Snelling, Lampard & Company reported in 1900 (17) RPC 48; (ii) J.B. Williams Company versus H. Bronnley & Company reported in 1909 (26) RPC 481; (iii) Merchant & Evans versus Roosevelt Bldg. Products reported in 963 F.d 628 (iv) Duraco Products versus Joy Plastics Ent. reported in 40 F.d 1431.
57. In so far as the adoption of the trade name PENEGRA is concerned, the defendants submitted that it was not an imitative adoption of the trade mark VIAGRA. It was also a coined word. The defendants had adopted the combination of 'pene' and 'gra' which described a different meaning altogether than the word VIAGRA, as already noted above. thereforee, the adoption of the word PENEGRA was their own innovation keeping in view the performance for which the drug was introduced by the defendants. It was also submitted that there was no question of phonetic similarity between the two rival marks. For this reliance was placed in the case of Ruston & Hornsby Ltd.(supra) wherein the Court brought out the distinction between an infringement action and a passing off action. In the case of F.Hoffman versus Geoffrey Manners reported in : 2SCR213 the Court while laying down the tests to be applied for ascertaining if the rival marks were deceptively similar or not, observed that it is not right to take a portion of the word but that the marks must be compared as a whole. The Court held that:-
'the true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark'
58. The Court held that DROPOVIT was not deceptively similar to PROTOVIT after considering, inter alia, the non existence of the possibility of slurring over in pronunciation. In the instant case, VIAGRA and PENEGRA when taken as a whole, are completely dissimilar and cannot be slurred over in pronunciation. There is neither any phonetic or visual similarity.
59. The defendants also relied upon the observations of the Division Bench of the Madras High Court in the case of Mount Mettur Pharmaceuticals versus Dr.A. Wander reported in : AIR1977Mad105 which reads as follows:-
'the possibility of confusion is for a normal buyer or even an unwary purchaser and not for fools and idiots.'
60. Learned counsel for the defendants also submitted that there were numerous cases in the field of pharmacy and medicinal preparations as well as non-drug cases where injunction were refused although the plaintiff had claimed in such cases alleged phonetic similarity which claim did not find favor with the Courts. The defendants submitted the following example of such case law:-
INJUNCTION REFUSED IN DRUG CASES:- BSR.NO. BPLAINTIFF'S PRODUCT KDEFENDANT'S PRODUCTB CITATIONB1. FALCIGO FALCITAB : 2SCR743 2. UTOGYNOL ORTHO-GYNOL : AIR1975Mad74 3. LUMINDON LUMINAL 1975 RPC545 4. DROPOVIT PROTOVIT : 2SCR213 5. LIV-52 LIV-T 1997 PTC5406. DANOL DE-NOL 1979 RPC16457. SORBILINE SORBITONE 1989IPLR 98. ACTICEPH ACTFIED 1992 IPLR2779. FRILEX PILEX : AIR1992Bom35 10. DEPRAZINE DEPRANIL 1991 PTC285 TMR11. LOMOTIL SLOTIL 1998 PTC63412. DOLOGEL DONNAGEL 2000 PTC6013. SPASMO FLEXON SPASMO PROXYVON 2001 PTC13914. ANAFRIL CHLOROFANIL 1997 PTC364 SC15. NIMULID REMULIDE 1996 PTC56116. TRIVEDON FLAVEDON 1977 PTC35517. MEXATE ZEXATE 1997 PTC41718. MENSCUROL MENSCUREL 1996 PTC501 DEL19. COMPLAMINA CIPLAMINA 1984 PTC81 BOM20. THEOMIDON THEOMINAL 1975 RPC54521. CAL U TEST ...TEST 1969 FSR3922. MOTRATE FILTRATE 1920(37)RPC 3723. Y-TO RITO 1919(36)RPC 29624. DIASIL ALASIL 1947 (64)RPC 12525. VIVICILLIN CYLLIN 1947 (64)RPC 11926. SEDA SELTZER ALKA SELTZER 1948 (65)RPC 34227. LIPICARD LIPICOR 2001 PTC601 (DEL)28. RECLOR CURECHLOR : AIR1987Delhi197 29. FLAVEDON TRIVEDON 1998 PTC67130. ZUPAR BUPAR 1997 PTC79431. ASTHMIX ASMAC : AIR1977Mad105 ---------------------------------------------------------INJUNCTION REFUSED IN NON DRUG CASES:- -------------------------------------------------------------SR.NO. BPLAINTIFF'S PRODUCT KDEFENDANT'S PRODUCTBCITATION -------------------------------------------------------------1. SECURITY MANAGEMENT MANAGEMENT TODAY 1991 FSR 348 TODAY 2. BLAZER YARDLEY ENGLISH 1992 FSR 501BLAZER3. GALA GALA OF LONDON 1991 FSR 2944. SEARS SEARS ALCOT 1998(1) ARB LR 72 [ 5. BUDWEISER BUDWEISER 1984 FSR 4136. CRAZY HORSE CRAZY HORSE 1967 RPC 5817. AMWAY EURWAY 1974 RPC 828. GLUCO GLUCO GOLD 1998 (2) ALR 5839. SUN CRUISER 2001 GOLDEN CRUISER1200 1997 PTC 64 DEL10. SAFEGAURD SAFEGAURD 1996 PTC 78 DEL11. MICROTEL MICRONIX 1994 SUPP(3) SCC 215 [ 12. POLAROID SOLAVOID 1977 RPC 113. POLAROID POL RAMA 1977 RPC 58114. COCA COLA PEPSI COLA 59 RPC 12715. SKINDEW SKINDEEP 1960 RPC 22916. FRIGIKING THERMOKING 1973 RPC 73917. ADVOCAAT KEELING'S OLD 1979 AC 731ENGLISH ADVOCAAT 18. CASTROL BESTROL 1996 SUPP ALR 17019. ACE BRAND AGE 1976 FSR 25620. FLEX AQUAFRESH FLEX 2000 PTC 8321. CENTRE ICE CENTRE ICE 53 CPR (3d) 3422. HOME BOX OFFICE CHANNEL 5 HOME 1982 FSR 449BOX OFFICE 23. KEM KIM 1992 FSR 124. IVY IVORY 17 RPC 68925. NEWSWEEK NEWSWEEK 1979 RPC 44126. NEIGHBOURS NEIGHBOURS27. TRIPCASTROID CASTROL 1925 VOL.42 26428. B.K. B.K. 81 1985 PTC 129. COCA COLA KOALA KOLA 1968 SLT 35330. RITO Y-TO 1919(36) RPC 29631. TURBOD GO TUROBO 24 CPR (3d) 132. PAPER MATE FLEXGRIP EKCO FLEXGRIP 2001 PTC 513 DEL
61. Learned counsel for the defendant also submitted that suffix 'gra' which was only common factor in the two words, was not unique to the product of the plaintiff. This suffix 'gra' was commonly used in naming drugs. In support it was submitted that searches conducted at the US Patent and Trade mark Office for trade marks containing the suffix gra clearly establishes that number of drugs on the Like Register use this suffix e.g. PANAGRA, VYAGRA, INTEGRA, ALLEGRA, ENTEGRA, TIAGRA, VIGRA, PENTEGRA, etc.
62. The defendants also relied upon the judgment of J.R. Kapoors versus Micronix reported in : 1994(3)SCALE732 wherein the Court held that Microtel was not phonetically similar to Micronix. The following cases were also cited where common prefix and/or common suffix was held not sufficient to justify grant of injunction: Spasmo-Flaxon versus Spasmo Proxygen reported in 2001 PTC 139 (SC), Flavedon versus Trivedon reported in 1997 PTC 355, Mexate versus Zecate reported in 1997 PTC 417, Lomotil versus Slotil reported in 1998 (2) ALR 576 and the case of Asthamix versus Asmac reported in : AIR1977Mad105 .
63. In rejoinder refuting these argument of the defendants, the learned counsel for the plaintiff submitted that it was not permissible for the defendants to split the two composite marks VIAGRA and PENEGRA and deal with them in piecemeal. It was totally misconceived on the part of the defendants to try to establish that the plaintiff could not claim exclusivity to the term 'gra' by submitting that the first syllable 'via' and 'pene' are totally different. He submitted that a similar attempt was unsuccessfully made in the case of Amritdhara versus Lakshmandhara (supra) wherein the Supreme Court had held that what has to be seen is the overall similarity. Holding the marks to be deceptive did not mean that anybody had a monopoly over 'dhara'. The Supreme Court upheld the observation of the House of Lords while finding ARISTOC and RYSTA to be deceptively similar.
64. It was also submitted that the defendant's reliance upon the use of other 'gra' ending marks like SYLAGRA, ADEGRA, etc. was of no consequence inasmuch as in order to establish that a mark had become common to the trade, the defendants would have to lead extensive evidence of third party marks as was held by the Supreme Court in the case of National Bell Company versus Metal Good Manufacturing Company reported in : 1SCR70 and the case of Kaul Products Refining Company versus Shangrila Food Products reported in : 1SCR968 .
65. I have considered the rival submissions on this aspect. In so far as the question of similarity in trade dress is concerned one need not deal with the arguments on either side inasmuch as the defendants have changed the colour of their tablet to pink. The defendant's tablet is also not exactly diamond shape but resembles more an ellipse. thereforee there exists a marked difference as of today.
66. So far as alleged phonetic similarity in the two trade marks VIAGRA and PENEGRA is concerned, both the parties have cited number of cases in support of their rival contentions. Whether the two trade marks are phonetically similar or not is relevant only for the purpose of embarking upon the enquiry that the defendant's mark would cause or is likely to cause deception or confusion or mistake in the mind of persons. thereforee, it would be appropriate to immediately proceed to discuss this question, namely, whether the defendant is making misrepresentation and thereby attempting to confuse the general public. This misrepresentation has to be of a nature which shows the intention of the defendants to pass on their product as that of the plaintiffs and further that such misrepresentation is likely to create confusion in the mind of the public who would buy the product of the defendant believing the same to be that of the plaintiff.
67. It is not in dispute that the drug in question is sildenafil citrate. It is also not in dispute that it is a generic drug for which the plaintiff has no monopoly. Sildenafil citrate is a single active ingredient Chemical compound consisting of certain elements : carbon (C), hydrogen (H), oxygen (O), Nitrogen (N) and Sulphur (S). The drug was well known though out the world for its use as a treatment of angina, that is chest pain caused by the blocking of blood vessels that lead to the heart. Accidentally, its use for the treatment of ED was discovered. There is nothing new or novel or special about this drug - sildenafil citrate.
68. Thus both the plaintiff and the defendants or any other third party has a right to use the drug - sildenafil citrate. It is not in dispute.
It is also an admitted fact that the plaintiff has not launched its product in India so far. It has no business in India. It has not advertised its product in India. thereforee, although the Indian public may know about the 'wonder drug - VIAGRA' and its use, most of the people would not have any knowledge about its trade dress. Most of the people would not have seen this drug. It could be that some of the Indians while going abroad would have bought this drug or some may have bought the same in the grey market in India as claimed by the plaintiff (which Of course is denied by the defendants on the ground that no such evidence in support of this claim is produced except some newspaper reports which would not have any evidentiary value). Persons belonging to such category would, however, be marginal and insignificant, when compared to the vast segment of people requiring and/or in need of this drug. In any case even those persons who have read the description of VIAGRA as blue diamond shape tablet (without seeing the same) would now have the defendant's drug in totally different colour (it being changed to pink). thereforee, the alleged confusion, if any, on this ground does not survive. thereforee, this trade dress may not be of much consequence while examining the aspect of 'misrepresentation'.
69. The question thereforee is as to whether while buying the drug PENEGRA the public would be confused and would buy this product believing it to be VIAGRA I do not think so. There are number of reasons for this opinion:-
(a) Although while launching the product the defendant has claimed it as ' Indian version of VIAGRA', what is sought to be conveyed is the purpose of this drug. As VIAGRA was very well known for its purpose at the time of its launch the defendants may have thought that it would be easy to educate the prospective consumers about the usefulness and performance of this drug by identifying it with VIAGRA. However, by no means a representation was made that the defendants' product PENEGRA was infact VIAGRA and was launched in India under a different name. Any person buying the drug with the name PENEGRA would know that he is not buying VIAGRA. He would know that same product is now produced in India. It would be foolish on his part to believe that this Indian product would have some therapeutic value or quality as that of VIAGRA. He would buy it consciously knowing that this product is now produced in India by an Indian Company. After all even the plaintiff has not produced any evidence, not even in the form of affidavit, either of the doctors or the chemists or consumers to show that the defendants had made any misrepresentation or they are selling their product as that of the plaintiff's product. There is no evidence to show that any consumers have bought the defendant's product thinking it to be VIAGRA.
(b) Such a confusion would not be there, prima facie, keeping in view the price of the two products. This is well known that the plaintiff's product is sold at $10 (= Rs.500/-) per tablet while the defendant's product is priced at Rs.18/- per tablet. Consumer would not be a fool to believe that he is given VIAGRA at such a low price when the international price of that drug is exorbitantly much higher.
(c) The likelihood of confusion is also not there because of the different names. The case of the plaintiff, after all, is that the consumer may believe that it is the Indian version of VIAGRA i.e. what is known as VIAGRA in other countries is sold in India as PENEGRA by the defendants. This argument ignores the ground realities and the prevailing international market conditions. India is an open economy. It is now welcoming foreign direct investments and also entertaining multi-nationals in this country as the world is becoming one global market. If, in such a scenario the plaintiff has to introduce and market its product in India, it would naturally introduce with the same name VIAGRA and not by different name PENEGRA. It is more so when this product of the plaintiff with its name VIAGRA enjoys world wide reputation. Why the plaintiff would forsake and give up its reputed name and launch the product in India with different name PENEGRA? Not much intelligence is required to understand this simple fact. thereforee, there may not be any likelihood of confusion in the mind of a buyer while purchasing PENEGRA, believing that he has infact purchased plaintiff's VIAGRA.
(d) The drug in question is a schedule H drug. Such a drug is not to be normally sold across the counter. It has to be sold by the chemists only on the prescription of a urologist, endocrinologist or a psychiatrist. In such a situation what kind of misrepresentation can be made by the defendants to the consumer is beyond comprehension.
70. Nodoubt judicial notice of the fact that can be taken note is that in a country like India even schedule H drugs are sold across the counter and without the prescription of a doctor. This is what the Supreme Court has emphasised in the case of Cadila Health Care Ltd. versus Cadila Pharmaceuticals Ltd. reported in 2001 PTC 300 (SC) : JT 2001 (4) SC 843 :-
'The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems.'
71. However, the reasons given above sufficiently portray that there is no likelihood of confusion in the instant case and inter alias made the following observation:-
'As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.'
72. However, when we examine the present case it would be seen that the prospective buyer in this case would fall in either of the two categories - an educated and well informed consumer or an illiterate and unwary consumer. As far as consumer of first category is concerned, there would not be any question of deception in his case. He fully knows the difference between VIAGRA and PENEGRA. He cannot be befooled by the chemist that PENEGRA is infact VIAGRA and marketed by the plaintiff under different name. So far as consumer belonging to second category is concerned he would go to a chemist to buy Aphrodisiacs and would demand such a medicine which may enhance his sexual; performance. Such a person would not know what is VIAGRA or for that matter what is PENEGRA. He would rely upon chemist for the particular medicine after telling him the purpose. thereforee, there is no case of confusion in this case also i.e. it cannot be said that he would be made to believe that he is buying VIAGRA under the changed name PENEGRA when he has no knowledge about the product VIAGRA as well. Thus in either case the likelihood of confusion is ruled out.
73. (e) Infact the question of confusion could be there had both the products namely, VIAGRA and PENEGRA were marketed and available in India. Only in such a case there would be a cause of confusion since a person knowing fully well about the VIAGRA i.e. blue diamond shaped tablet would be led to believe that the blue diamond shaped tablet being purchased by him is VIAGRA as there is alleged phonetic similarity and trade dress is same. When the plaintiff's product is not available in India the question of confusion would not arise. The plaintiff's own argument is that the chemist tend to pass off PENEGRA as desi VIAGRA and this is dubbed as misrepresentation. However, the moment the consumer is told that instead of dispensing VIAGRA its so called 'desi version' is dispensed with, the customers would immediately know that he is not getting VIAGRA but only Indian equivalent thereto. The representation of the chemist, as per the case put up by the plaintiff itself, is that it is the Indian version of VIAGRA. Thus, it is not 'misrepresentation' and rather representation of a 'fact' that what was sold was not VIAGRA but its local equivalent.
74. In the context of aforesaid discussion it cannot be said that the adoption of PENEGRA is imitative adoption of VIAGRA with purpose to confuse the very buyer. At this stage one may refer to the case of Cadbury-Schweppes Pty. Ltd. versus the Pub Squash Company Ltd. reported in (1981) RPC 429 wherein the Privy Council approved the Supreme Court's decision and while rejecting a case of passing off, held as follows:-
'Once it is accepted that the judge was not unmindful of the respondent's deliberate purpose (as he found) to take advantage of the appellants' efforts to develop 'Solo', the finding of 'no deception' can be seen to be very weighty, for he has reached it notwithstanding his view of the respondent's purpose. But it is also necessary to bear in mind the nature of the purpose found by the judge. He found that the respondent did sufficiently distinguish its goods from those of the appellants, the intention was not to pass off the respondent's goods as those of the appellants but to take advantage of the market developed by the advertising campaign for 'Solo'. Unless it can be shown that in so doing the respondent infringed 'the (appellants') intangible property rights' in the goodwill attaching to their product, there is no tort. For such infringement is the foundation of the tort.'
75. The learned counsel relied upon the judgment in the Gluvita case (supra) for the proposition that 'it is well known that the question whether the two marks are likely to give rise to confusion or not is the question of first impression. It is for the Court to decide that question'. He also submitted that this test was reiterated by the Supreme Court in the Dropovit case reported in : 2SCR213 . His further submission was that in view thereof no evidence in the form of affidavit from any doctor, chemist or consumer was required as it was for the Court to decide the question on first impression. The test was of a person who is familiar with only one mark and thereforee there was no question of filing evidence of such a person. He also relied upon the Division Bench judgment of this Court in the case of B.K. Engineering Company versus Ubhi Express reported in 1985 PTC 1 wherein the Court held that judge must not surrender his own judgment to any witness whatsoever. Various other judgment in support of the same proposition was relied upon. There is no dispute about the law laid down in the aforesaid judgments i.e. the exercise done above by this Court in the instant case and for the reasons stated above, the Court is of the opinion that there is no likelihood of confusion.
Question : 4 - Whether the plaintiff has filed the present Suit and application for ad interim injunction belatedly and is not entitled to injunction because of alleged laches and delays?
Question : 5 - Whether the plaintiff has satisfied the conditions for grant of injunction as required under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure read with provisions of Trade and Merchandise Marks Act?
76. It may be pointed out at this juncture that the principles laid down in various judgments in passing off action which were quoted at the Bar are being kept in mind. One may, however, refer to a recent land-mark judgment of the Supreme Court in the case of Cadila Health Care Ltd. versus Cadila Pharmaceuticals (supra) wherein the Court emphasised that the following factors are to be considered in an action of passing off on the basis of unregistered trade mark, generally for deciding the question of deceptive similarity:-
a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
b) The degree of resembleness between the marks, phonetically similar and hence similar in idea.
c) The nature of the goods in respect of which they are used as trade marks.
d) The similarity in the nature, character and performance of the goods of the rival traders.
e) The class of purchaser who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f) The mode of purchasing the goods or placing orders for the goods, and
g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
77. Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.
78. There are other compelling factors and circumstances, apart from the aforesaid prima facie view regarding non misrepresentation and non confusion, which may persuade this Court not to grant any ad interim injunction in this matter. These are:-
I. As noticed above, on more than one occasion which needs repetition, the plaintiff has not shown his presence in Indian market. Infact as per the petitioner's own showing the plaintiff has no intention in introducing its product in India in immediate future. The reason given is that India is still not prepared for this drug and that the launch of this kind of drug in any market requires enormous amount of investment which has not been done by the plaintiff in India so far. When the plaintiff has not launched its product in India nor has any intention to do so imminently, why in these circumstances, the plaintiff was concerned about the introduction of the defendant's product PENEGRA in the Indian market? What was the damage which the plaintiff was likely to suffer because of the presence of PENEGRA in the Indian market which the plaintiff had consciously chose not to tread? The only answer given was that it would cause damage to the reputation of the plaintiff's product and name. Learned counsel for the plaintiff's submission was that the defendant's product was not under the quality control of the plaintiff. If the consumers associate the defendant's product with that of the plaintiff, the damage was imminent. It is not a convincing argument. Not only it pre-supposes that the defendants product is being sold as plaintiff's product (which argument already stands repelled), it further presumes that there are going to be adverse effects of using the defendants' product for which the plaintiff may be held responsible. Such a presumption militates against the provisions of the Drug and Cosmetics Acts and Rules. The argument would prove damp-squib once it is acknowledged that in view of the provisions of the aforesaid Act and Rules prior to the launching of the product, government's permission was necessary and which was duly obtained by the defendants. Before such permission could be given certain clinical trials are to be undertaken which is a statutory requirement. The extent of clinical trials is dependant upon the fact as to whether the drug is approved and marketed elsewhere, in which case limited clinical trials on a hundred patients in India is necessary to establish bio-equivalence. The defendant no.2 had carried out such clinical trials and demonstrated the necessary bio-equivalence. It is only thereafter that the Drug Controller gave license to the defendant no.2 to manufacture and market the product in question. It was explained by the learned counsel for the defendant no.2 that before introducing any new product in the Indian market, a manufacturer has to comply with the following provisions of, and has to obtain the following permissions, under the Drugs and Cosmetics Rules, 1945:-
i. Schedule-M lays down good manufacturing practices, and requirements of premises, plant and equipment to be complied with for obtaining a license for manufacturing facilities for manufacturing any drug.
ii. Schedule-U lays down particulars to be shown in the manufacturing records.
iii. Schedule-U, Part-III lays down particulars to be recorded in the analytical report: 5(e) disintegration test and 5(g) assay and toxicity test have been specifically mentioned.
iv. Schedule-V lays down standards for patent and proprietary medicines (Definition of ready to use medicine is that which is not specified in Indian Pharmacopoeia or any other prescribed Pharmacopoeia Sec-3(h) (Drugs and Cosmetics Act, 1940)
II. Not only this the plaintiff's own reaction in the first instance, after coming to know that the defendant and some other manufacturers in India were launching sildenafil citrate drug, was contrary to what is projected now. The plaintiff now apprehends imminent danger of damage to its reputation because of the launching of the products by the Indian companies including the defendants. However, its Vice-President, Mr.S. Ramakrishna had given an interview singing altogether a different tune. The relevant portion of his interview as appeared in one of the publications quotes him saying as under:-
'And the clones Viagra has spawned in India do not worry the Company. We are not perturbed by the launch of Viagra's clones in the Indian market. It will never be too late for us to launch the original Viagra in India'. How the plaintiff now pretends that it is going to suffer loss of reputation is indigestible.
III. In this context it would also be apt to note that in fact the plaintiff had come to know about the launching of the product by the defendant no.2 even when the defendant no.2 was doing clinical trials and contemplating move to launch its product. It neither chose to enter the Indian market (and rather chose to wait) nor was perturbed by the introduction of such products in the Indian markets by Indian companies. On the other hand, the defendant no.2 made investments in conducting clinical trials and obtaining the license from the Drug Controller and thereafter in developing the market. The plaintiff allowed the defendant no.2 to flourish. The defendant no.2 in the process made further investments for development of the market for its drug by advertising for the same. The defendant no.2 was considering the name PENEGRA for its product as far back as on 1st August, 1998 as is clear from the documents filed by it. Its products hit the Indian market on 9th January, 2001 when government approval was given. The present Suit was filed in June 2001. In the meantime, the sales of the product of the defendant no.2 saw quantum jump within six months si.e. by June 2001 when the Suit was filed, the sales touched the figure of Rs.80 lakhs.
Much was argued by either side on this delayed filing of the Suit by the plaintiff. According to the defendants in such circumstances the plaintiff would not be entitled to injunction for approaching the Court belatedly and number of judgments were cited in support of this proposition. On the other hand, the learned counsel for the plaintiff submitted that the delay would not be fatal and if the plaintiff had a good case warranting injunction the plaintiff was entitled to the same notwithstanding this alleged delay. It is not necessary to deal with these judgments cited by both the sides on this aspect. Suffice is to state that this factor would weigh in favor of the defendants when other factors examined above also negate the grant of relief to the plaintiff. This also answers question no.4 posed above.
IV. Further fact in this connection needs to be noted. Although this Court had granted ex-parte injunction vide Order dated 1st June, 2001 the same was vacated by the Division Bench in Appeal vide Order dated 27th June, 2001. The defendant no.2 is thus in the market since January 2001. It has established its market in the product whereas there is no presence of the plaintiff till date. In these circumstances disturbing the status quo at this stage would not be appropriate. In the case of Wander Ltd. versus Antox India P. Ltd. reported in the Court held as under:- 'the interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The Court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted.'
79. In the case of Graham versus Delderfield reported in 1992 FSR 313 the Court similarly held that:-
'where the other factors appear to be evenly balanced it is counsel of prudence to take such measures as are calculated to preserve the status quo. If the defendant is enjoined temporarily from doing something that he has not done before,the only effect of the interlocutory injunction in the even of his succeeding at the trial is to postpone the date at which he is able to embark upon a course of action which he has not previously found it necessary to undertake; whereas to interrupt him in the conduct of an established enterprise would cause much greater inconvenience to him since he would have to start again to establish it in the even of his succeeding at the trial.'
80. The Court also observed, and which observations equally apply to the present case, as follows:-
'the difficulty here is that it does not follow that the profits which the defendant will necessarily lose pending trial, through being restrained by an interlocutory injunction, will be reflected in profits which Mr.Graham will receive or earn pending trial.'
81. A similar view on the aspect of injunction is taken in the case of Athletes Foot (supra) case which is as follows:-
'....the decision on the motion, whichever way it goes, profoundly affects the rights of the parties in a way which cannot easily be undone if at the trial a different result is reached. If, for example, an injunction were granted as sought by the plaintiffs, then the defendants would have to change the name of their mail order and Bargain Basement Operations. It would be idle to say that they could change back-possibly years later after there has been a trial and appeals from the decision therein because in the meantime they will, of necessity, have invested time, money and effort in a totally different direction, and obviously, they would not wish to throw that all away. It has thereforee been clearly recognised that int he present type of case it is necessary to consider rather more than in the usual case the strength of the plaintiff's case in law.'
82. In these circumstances, there appears to be force in the submission of learned counsel for the defendant when they pointed out that the 'status quo' in the present case includes the following irreversible steps that have been taken and milestones which have been crossed:-
a. Clinical trials conducted by the defendant.
b. License granted by the Drug Controller, India.
c. Manufacturing license granted by the Government of Gujarat,
d. Launch of the product PENEGRA on 9th January, 2001 and subsequent sales; availability of the product for patients in need, and
e. Capture of 34% market share by PENEGRA.
83. The balance of convenience, in these circumstances, is also in favor of the defendants and in refusing the injunction. Further the damages to the plaintiff, if ultimately it is held that the plaintiff is entitled thereto can be quantified if the injunction is refused now. On the other hand, if the injunction is given but ultimately the plaintiff's Suit fails, damages to the defendants of such an injunction given now cannot be so quantified. In the case of Blazer plc. versus Yardley and Company Limited reported in 1992 FSR 501 the Court observed inter alia:-
'If the defendants are injuncted, they will have to decide whether to delay further marketing of their English Blazer products until after trial, or choose another name. If they choose the former course of action, sales will be lost. Also the evidence suggests that others are likely to enter the volume prestige market with the result that the defendants' position in that market will be lost. Thus damage will be certain. An award of damages will not be adequate compensation for such damage as it will be difficult if not impossible to estimate the number of sales lost, the effect on sales of lost opportunity to establish the range in the market and the effect of competitors entering the market during the period of the injunction.
84. It further held that:-
'The plaintiff's counsel submitted that if I concluded that the balance of convenience was evenly weighted, I should maintain the status quo by granting an injunction. I have concluded that the balance is in favor of no injunction, but I do not believe that this is a case where the status quo would be maintained by the injunction sought. First, an injunction would restrain the defendants, but the market in which the defendants wished to place their new range will not stay the same pending hearing of the action. Thus the status will change to the detriment of the defendants. Secondly, the submission that an injunction would maintain the status quo is inconsistent with the submission by the counsel for the plaintiff that the defendant should when injuncted, choose a new name. The effect of the injunction would be to change for all times the status in the United Kingdom. If the idea of maintaining the status quo is applicable, it seems to point towards doing nothing which would in practice resolve the dispute in one party's favor. That would mean no injunction.'
85. The Supreme Court in the case of Colgate Palmolive India Ltd. versus Hindustan Lever Ltd. reported in : AIR1999SC3105 stated as under:-
'It would seem to follow, thereforee, that what should be borne in mind, in addition to what has been phrased in Lord Diplock's speech, is that if there is uncertainty, the Court should be doubly reluctant to issue an injunction, the effect of which is to settle the parties' rights once for all.
On a clear analysis of the speech of Lord Diplock, it appears that if damages, recoverable at common law, would be an adequate remedy and the defendant would be in a financial position to pay the same, no interlocutory injunction should normally be granted, howsoever strong the plaintiff's claim appear to be at that stage. Lord Diplock went on to observe further that in the event of there being any doubt, as to the adequacy of the respective remedies and damages available to either party or both, then and in that event, the question of balance of convenience arises and the same will vary from case to case.'
86. The defendant no.2 is not fly-by-night company. It is an established giant in pharmaceutical business. It is claimed by the defendant no.2 that its group turnover is in excess of Rs.800 crores with a well established and independent research and development and quality control department. thereforee, in the event the plaintiff ultimately succeeds it can be duly compensated.
87. As recorded by the Division Bench in its Order dated 30th June, 2001 and reproduced above, the defendant no.2 has undertaken to change the colour of their tablet from blue to another (which stands changed to pink colour). It has stopped displaying its website and also undertaking to maintain records and file them in the Court with regard to manufacture and sale of their product PENEGRA. The defendants shall remain bound by these undertakings till the disposal of the present Suit.
88. With the aforesaid observations, the application filed by the plaintiff stands dismissed.
I.A.6408/2001 in S.No.1444/2001
89. In this Suit filed by the plaintiff the description of its trade mark is the same as noticed in Suit No.1165 of 2001. Insofar as the defendants are concerned they have launched their product, namely, Sildenafil Citrate drug under the trade name `EDEGRA'. The Explanationn given by the defendants is that it is a coined word which is the combination of `ED' and `GRA'. According to them E and D in ED stands for Erectile Dysfunction and `GRA' is taken from the defendant's trade symbol, which is a Genie lamp which `grants' wishes to user. The defendant herein had also launched its product in January,2001. It is also stated by the defendants that Sildenafil Citrate is a Gray coloured tablet and is 'cylindrical' in shape which is sold in blister packs of four/two tablets with EDEGRA written on the top. It is emphasised that there is no similarity between the product of the defendant and the plaintiff.
90. It may be mentioned that in this case no ex-parte injunction was granted and matter was directed to be taken up along with Suit No.1165/2001 and was heard along with that suit. The defense raised in this case is same as noted in S.No.1165/2001.
91. For the detailed reasons mentioned in the deciding is No.5563/2001 in Suit No.1165/2001, the following reliefs can be granted:
A. The defendant shall forthwith remove/discontinue its website.
B. Since there is no similarity in the colours of the two tablets, although the defendant states that colour of its tablet is Gray, the defendant should change the colour of its tablet which should be totally different from blue or resembling blue.
C. The defendant is directed to maintain and keep proper accounts of sale of its product, namely, `EDEGRA' with regard to manufacture and sales and file the same in Court regularly.
92. Giving the aforesaid directions to the defendant, the prayer for the injunction as made by the plaintiff stands rejected.
I.A.5780/2001 in S.No.1258/2001
93. The defendants have launched Sildenafil Citrate drug in this case under the trade name `SILAGRA'. The Explanationn given is that `Gra' is common to the trade. It is a word in English indicating affection or love and, thereforee, the plaintiff cannot claim any monopoly in this for using the word `Gra'. This product was also launched in January,2001. It is blue oval shape pill. The plaintiff's another grievance is that the defendants' website is having the same feature as the plaintiff's feature. It is emphasised that there is no similarity between the product of the defendant and the plaintiff.
It may be mentioned that in this case no ex-parte injunction was granted and matter was directed to be taken up along with Suit No.1165/2001 and was heard along with that suit. The defense raised in this case is same as noted in S.No.1165/2001.
94. For the detailed reasons mentioned in the deciding is No.5563/2001 in Suit No.1165/2001, the following reliefs can be granted:
A. The defendant shall forthwith remove/discontinue its website.
B. The defendant should change the colour of its tablet which should be totally different from blue or resembling blue.
C. The defendant is directed to maintain and keep proper accounts of sale of its product, namely, `SILAGRA' with regard to manufacture and sales and file the same in Court regularly.
95. Giving the aforesaid directions to the defendant, the prayer for the injunction as made by the plaintiff stands rejected.
I.A.5136/2001 in S.No.1049/2001
96. The drug in question of the defendant against which injunction is claimed by the plaintiff is not Sildenafil Citrate. It is an Ayurvedic formulation. The defendant company deals with Ayurvedic drugs and not allopathic drugs. The defendant in its written statement highlights the following dissimilarities in the two products:
INDIAGRA VIAGRA i) Packing in Blister i) Packing not knownii) Price of one packet of 10 ii) Price of one pill is aroundcapsules is Rs.178/- US $10 as per Internet.iii) The product of Defendant is a iii)Chemical based drug contain-Herbal Ayurvedic food ing 'Sildenafil Citrate'supplement. (as per the plaint).iv) Brown Capsule iv) Pill (Colour not known).v) The product is sold over the v) Whereas the product of thecounter (OTC) Herbal food plaintiff is a Schedule`H'supplement for general drug which can only be soldvitality. after doctor prescription.vi) The product is 100% Ayurvedic vi) The product is Allopathicand is a Chemical product.vii) The product is meant for men vii)The product is only for menand women.viii)The product has no side effect viii)The product is not recom-mended for men sufferingfrom diabetes,hypertensionand heart patient.
97. The defendant also points out that as and when drug VIAGRA is allowed to be sold in India because of its price structure it can never be used by the general masses of India because of its price tag and hence there is no cause of confusion to the purchaser /customer. In the event of its being allowed to sold in India, the product VIAGRA can only be used by the affluent class of the society because of its exorbitant price. It is thereforee stated that the suit is totally misconceived, malafide, without merits and deserves to be dismissed. According to the defendant the trade name `INDIAGRA' is even made by combining two words INDIA' and `AGRA'. The product INDIAGRA connotes that the product is based on the Indian Ayurvedic system of medicine which is unique in its own way. Further, the word 'Agra' has been chosen because of its being world famous on account of Taj Mahal. The learned counsel for the defendant relied upon the judgment of this Court reported in 1986 IPLR 37 wherein it is held that interim injunction cannot be granted in favor of the plaintiff where the mark is merely descriptive of the goods. It is also submitted that this Court has held in Hindustan Radiators Company v. Hindustan Radiators Ltd. : AIR1987Delhi353 to the effect that in an action of passing off, the plaintiff in order to establish a prima facie case for grant of injunction, has to show, inter alias that the sphere of activity and the market of consumption of goods of the parties are the same. His further submission was that where the suffix is common, the earlier portion of the word is the natural and necessary mark of distinction as held in Fox's Application,(1920) 37 RPC 37 holding that marks `Motrate' and `Filtrate' were not similar. He also referred to another judgment of this Court in the case of Biform v. Sanjay Medical Store 1998 (18) PTC 671 wherein the Court laid down that following factors have to be considered for deciding the application of deceptive similarity:
1. The nature of the marks, i.e. whether the marks are word marks or level marks or composition mark i.e. both word and level marks;
2. The degree of resemblances between the marks, whether they are phonetically, visually or structurally similar and hence similar in idea;
3. The nature of goods in respect of which they are used the trade marks;
4. The similarity in the nature, character and performance of the goods of the rival traders;
5. The class of purchaser who are likely to buy the goods bearing the marks;
6. The mode of purchasing the goods and placing orders for the goods; and
7. Any other surrounding circumstances.
In addition to the reasons recorded, while dismissing the application in CWP.No.1165/2001, the another significant distinction feature in the present case is that the medicine in question is Ayurvedic formulation and which would also clearly rule out the possibility of any deceptive similarity or confusion in the mind of public.
98. It may be mentioned that in this case no ex-parte injunction was granted and matter was directed to be taken up along with Suit No.1165/2001 and was heard along with that suit. The defense raised in this case is same as noted in S.No.1165/2001.
99. For the detailed reasons mentioned in the deciding is No.5563/2001 in Suit No.1165/2001, the following reliefs can be granted:
A. The defendant is directed to maintain and keep proper accounts of sale of its product, namely, `INDIAGRA' with regard to manufacture and sales and file the same in Court regularly.
100. Giving the aforesaid directions to the defendant, the prayer for the injunction as made by the plaintiff stands rejected.
I.A.6301/2001 in S.No.1418/2001
101. In this case the defendant's drug Sildenafil Citrate is sold under the trade name `KAMAGRA'. The defendant states that this product was launched in March,2001. According to the defendant `KAMAGRA' is again a coined word. Two Explanationns are offered which are:
1. It is combination of two words `KAMA' AND `AGRA'. `KAMA' is a word taken from Sanskrit, meaning of which is `wish, desire, longing'. `AGRA' is again a Sanskrit word and the meaning is `tip, front, upper most part, top, summit, pint and hence figuratively sharpness, the nearest end, the beginning, the climax or best part, goal, aim, multitude.
2. `KAMA' from Kamasutra. `GRA' from French word `Gratificari'.
102. Thus according to the defendant, trademark `Kamasutra' is denotative of the climax of fulfillment of desire.
The defendant has also highlighted its profile by submitting that it has:
(a) been granted ISO Certification;
(b) been recognised as an Export House;
(c) Joint Ventures in some of the CIS countries and has been granted various recognitions by the countries in which it is operating;
(d) a well organized in-house research and development unit which is duly recognised by the Govt. of India;
(e) been granted Jamnalal Bajaj Award, Certificate of Merit for Excellence in Quality from the Govt. of India and Gold Medal from Turkmenistan.
Further submission of learned counsel for the defendant was that there is no phonetic similarity because:
KAMAGRA - emphasis on consonant `K' and `M' VIAGRA - the pronunciation of `V',`I' & `A' is smooth. thereforee KAMA is phonetically dissimilar with VIA. 'KAMAGRA' as Trademark has been adopted honestly.
103. The defendant has also given its sale figures and according to it, it has established its product which has been accepted widely not only in India but defendant has also exported the same in various countries and has earned a total of US$ 258472.75 during the period from April,2000 to September,2001.
Along with the written arguments the defendant also filed an affidavit in which apart from giving sales figure of its product in India, export sales, amount spent on publicity and on experiments, trial etc. following significant averments are made:
'The defendant company in or about June/July 1999 sent a consignment of KAMAGRA tablets containing 25 blisters of 100 mg each to M/s.Pharmachem International Ltd. Switzerland for exporting out of Switzerland. But this consignment was seized at the Customs Inspectorate of the Zurich Kiloton Airport and Pfizer Inc.,235 East, 42nd Street, N.Y.10017-5755 who is the owner of the trade Mark VIAGRA world-wide and hereinafter referred to as the said Pfizer Inc., obtained an order of the Commerce Court of the Canton of Zurich dated 15th December,1999, re Trademarks and Patents, Court's Records No.H.F.990007.
I state that pursuant to mutual discussion between the said Pfizer Inc. and the Defendant herein a Settlement Agreement dated January 18,2000 was entered into between the said Pfizer Inc. and the defendant herein'.
104. The defendant has undertaken in para-8 of this affidavit to give up existing carton, inner packaging and the diamond shaped tablet. This para reads as under:
'I state that without prejudice to the submissions made by the defendant herein and in the alternative if this Hon'ble Court so directs, the defendant is ready and willing to give up the existing carton bearing objectionable colour scheme and get up, the inner packaging and the diamond shape tablet and will adopt cartons bearing such colour scheme, get up, inner packaging and triangular shape of the tablet which are totally dissimilar to that of VIAGRA. As and by way of a proposal the defendant submits herewith outer cartons bearing a colour scheme and get up, and dummy inner packaging showing triangular shape tablets as per the samples of each of them annexed herewith and marked collectively as Annexure-F'.
105. The plaintiff has submitted reply-affidavit refuting the various allegations made by the defendant in its circular. However, significantly the plaintiff does not dispute that settlement Agreement dated January 18,2000 was entered into between Pfizer Inc. and the defendant. However, the plaintiff relies upon para-2 of the said Agreement as per which the defendant had undertaken to desist from using the trademark 'KAMAGRA' on sildenafil or sildenafil preparations in any country where Pfizer Inc. or any affiliated company owns a valid registration for the trademark `VIAGRA' and relying there upon it is submitted that this paragraph constitutes an acknowledgement by the defendant of the fact that KAMASUTRA conflicts with trademark VIAGRA and is likely to cause confusion or deception.
106. Facts remains that Agreement was entered between the parties as per which the plaintiff has allowed the defendant to use trademark `KAMASUTRA' on sildenafil or sildenafil preparations in the countries where the plaintiff is not having any registration for the trademark `VIAGRA'. Admittedly, when Viagra is not a registered trademark in India, on this ground alone the plaintiff shall not be entitled to injunction at present. Parties are bound by the settlement and by relying upon para-2 the plaintiff cannot now turn up and start drawing influences there from and seek injunction against the defendant and thus countries including India where the trade mark `VIAGRA' of the plaintiff has not been registered.
107. It is the allegation of the plaintiff that the `KAMASUTRA' tablet is also of blue diamond shaped tablet with same bubble packing as of plaintiff and it has launched its website by copying plaintiff's website. Even external carton with blue band on left is copied.
108. In the instant case the word `KAMA' cannot have any similarity with the word VIAGRA. Inasmuch as `KAMAGRA' is a word which is more an Indian word very well known as `DESI VIAGRA' and clearly as Sanskrit origin which makes it totally different from Viagra. Any person to whom Kamasutra tablet is given can clearly see that it is native/desi/Indian drug and will have nothing to do with Viagra. Thus by adoption of the name `KAMASUTRA' there may not be any possibility of any misrepresentation or confusion.
Almost similar types of defense is raised in reply to the IA.6301/2001 as well as written statement and it is emphasised that there is no similarity between the product of the defendant and the plaintiff.
109. It may be mentioned that in this case no ex-parte injunction was granted and matter was directed to be taken up along with Suit No.1165/2001 and was heard along with that suit. The defense raised in this case is same as noted in S.No.1165/2001.
110. For the detailed reasons mentioned in the deciding is No.5563/2001 in Suit No.1165/2001, the following reliefs can be granted:
A. The defendant shall forthwith remove/discontinue its website.
B. The defendant shall change the colour of its tablet and packing as stated in para 8 of its affidavit.
C. The defendant is directed to maintain and keep proper accounts of sale of its product, namely, `KAMAGRA' with regard to manufacture and sales and file the same in Court regularly.
D. The defendant as per para-8 of its affidavit, as quoted aforesaid, will also change its external carton to make it materially different from the plaintiff's external carton so that even if there is a slightest similarity, if all, that will also be removed.
111. Giving the aforesaid directions to the defendant, the prayer for the injunction as made by the plaintiff stands rejected.