This appeal has been filed before the Honorable High Court of Calcutta pursuing the order passed on 6/11/1997.

The appellant is an Indian Pharmaceutical Company producing the medicine for eyes and ears. A different company sells the same medicine with a similar objective, is produced by the respondent company and has claimed production of the product long before the inception of the same to the appellant. The respondent alleged that the name (trademark) OCUFLOX is their trademark and have been provided with the documents for proof of this. The respondent states that the first use of this product by the respondent was made on 09/09/1992 and after such use, this product was further marketed in countries like Europe, Australia, South Africa and South America and also claiming the marketing of product they mentioned that this mark is being registered in the countries like Australia, Ecuador, Bolivia, Mexico, Peru, South Africa, Canada and the United States of America.

The respondents have also claimed that they have made an application for registration this mark in several other countries including that of India, but due to some reason with the department the registration of this mark is been on help or this mark is yet to be registered.  The appellant claims that the product contains Ciprofloxacin Hcl the composition that helps to cure the problems relating to eye and ear.  The appellant explaining the ideology behind the mark that they invented it by taking the OCU from Ocular and Flox from the word Ciprofloxacin. The name has derived from the basic constituents of this composition or product and has its own origin. The food and Drug Administration of Indian granted appellant registration for its mark on 25/08/1993. Further, they applied for registering their mark with the trademark authorities with the name OCUFLOX, even the appellant’s application is pending before the trademark authority. Respondent filed with the authority for an injunction against the trademark application of the appellant. The respondent then received the ad-interim injunction against the applicant. Further, the ad-interim injunction was vacated on 29/01/1997 by the authority.

The Learned Single Judge bench passed an order against the respondent stating the observation that the respondent did not have any presence in India and the appellant have made its use the country so there no point for issue any injunction against the appellant.  Considering the impugned judgment and law laid down by this court I can fairly conclude that the respondent though had no presence in the market but was first to introduce the product globally and so was entitled to such injunction order.

1. Is the injunction valid by the respondent against the appellant?

2. Who should have priority in the registration of a trademark?

The Honorable Court in its observation states that it is a dire need for exacting a Judicial Scrutiny where there is a case of medicinal products, further its very important to understand that confusion over a mark in medicinal products is grievous potential harm than any other ordinary products. It might cause a problem regarding incompetence or quality of some core objectivity that might be lacking or is a difference that other product but might deceptive because of the same or similar mark. This might also cause confusion at time prescription were there two or more medicines registered under the same name or similar mark that can led to confusion.

It was observed by the Honorable Court that though doctors are treated to be professional when it comes to the study and remedies of the human body they cannot be left out from the periphery from the doubts and confusion and considering these days the recommendation is provided over a phone call or a medium of telecommunication it might add the chances of confusion if there are multiple product available od the same or similar mark. The prescription provided by the doctors are sometimes in written form and handwriting can create confusion which might be a potential threat. Considering the potential threat and medicinal quality of the product the court finds it appropriate that all the facts present before this court are legit and appreciable in nature where such facts provide clear image or contemplation of the situation in future. The Honorable court further observes that due to its structure and understanding the medicine industries has its global or international characteristics and can have its operation in several other countries part from its origin. It is also observed that due to international characters any product or invention or change in its composition and objectivity of any product becomes a wide knowledge for the practitioners worldwide it is nowadays also are published in various media platforms that are accessible to the expert and other professionals in the country.

Doctors in the country have understood to attend various lectures and symposium conducted internationally. It is said that if any product is launched in the international market this becomes knowledge for all the experts immediately, but the test here is that whether the mark has put to use by the respondent or the appellant, this question should be further assessed by the Trial Court with the help of evidence provided before the Trial Court. The Honorable Court states that if any multi-national company has no desire to introduce the product or enter Indian market then such company should not throttle an Indian company in dealing with the products.

This court further deals and dispose of all the appeals hereinabove and further order the court to expediated the process to provide the decision so as to reinstate the appellant in the business or provide relief to the respondent as deems fit. A period of 6 months has been allotted from today to the Trail Court to assess the situation.

Case No.: CA 5797 of 1998

Date: 7/05/2004