JUDGMENT
A.K.Sikri, J.
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 unsatiable appetite of human
kind, medical science – traditional and modern – has
not lagged behind. Aphordiasics 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 graveman 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. Therefore,
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 IA 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. Therefore 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. Therefore, 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 “Pene” 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. Therefore 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. Therefore,
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). Therefore 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 therefore 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. Therefore 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 centralise 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 centralise 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 PTC (18) 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 PTC (18) DB 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. Therefore 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 Atheletes 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 Atheletes Foot case (supra).
Similarly in Kamal Trading versus Gillete 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, therefore, 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 therefore 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 therefore
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
(J) at page 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 Westinn Hospitality
Services Ltd. 1999 PTC (19) 123 DB (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 PTC (16) 476 (DB) 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 Allergan Inc. versus
Milment Oftho Industries and others 1999 PTC (19) 160
(DB) 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 PTC (18) (DB)
(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, therefore, 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 PTC (17) 453, Volvo case (supra),
Caterpillar Inc. versus Jorange reported in 1998 PTC
(18) (DB) 31, Rainforest Cafe, Inc. versus Rainforest
Cafe and others reported in 2001 PTC (DEL) 353, 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 Gilletee
Company versus A.K. Stationery reported in 2001 PTC513.
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
therefore 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 similiarity 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 infringment 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 Towend 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), andv. 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. Therefore, 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 explanation 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 explanation 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 therefore 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.2d 628 (iv) Duraco Products
versus Joy Plastics Ent. reported in 40 F.3d 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. Therefore, 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 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 whens 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
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 CITATIONB
1. FALCIGO FALCITAB
2. UTOGYNOL ORTHO-GYNOL
3. LUMINDON LUMINAL 1975 RPC
5454. DROPOVIT PROTOVIT 5. LIV-52 LIV-T 1997 PTC
5406. DANOL DE-NOL 1979 RPC
16457. SORBILINE SORBITONE 1989
IPLR 98. ACTICEPH ACTFIED 1992 IPLR
2779. FRILEX PILEX 10. DEPRAZINE DEPRANIL 1991 PTC
285 TMR11. LOMOTIL SLOTIL 1998 PTC
63412. DOLOGEL DONNAGEL 2000 PTC
6013. SPASMO FLEXON SPASMO PROXYVON 2001 PTC
13914. ANAFRIL CHLOROFANIL 1997 PTC
364 SC15. NIMULID REMULIDE 1996 PTC
56116. TRIVEDON FLAVEDON 1977 PTC
35517. MEXATE ZEXATE 1997 PTC
41718. MENSCUROL MENSCUREL 1996 PTC
501 DEL19. COMPLAMINA CIPLAMINA 1984 PTC
81 BOM20. THEOMIDON THEOMINAL 1975 RPC
54521. CAL U TEST …TEST 1969 FSR
3922. 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 PTC
601 (DEL)28. RECLOR CURECHLOR
29. FLAVEDON TRIVEDON 1998 PTC
67130. ZUPAR BUPAR 1997 PTC
79431. ASTHMIX ASMAC
———————————————————
INJUNCTION REFUSED IN NON DRUG CASES:-
————————————————————-
SR.NO. BPLAINTIFF’S PRODUCT KDEFENDANT’S PRODUCTBCITATION————————————————————-
1. SECURITY MANAGEMENT MANAGEMENT TODAY 1991 FSR 348
TODAY2. BLAZER YARDLEY ENGLISH 1992 FSR 501
BLAZER3. GALA GALA OF LONDON 1991 FSR 294
4. SEARS SEARS ALCOT 1998(1) ARB LR 72 [
5. BUDWEISER BUDWEISER 1984 FSR 413
6. CRAZY HORSE CRAZY HORSE 1967 RPC 581
7. AMWAY EURWAY 1974 RPC 82
8. GLUCO GLUCO GOLD 1998 (2) ALR 583
9. SUN CRUISER 2001 GOLDEN CRUISER
1200 1997 PTC 64 DEL10. SAFEGAURD SAFEGAURD 1996 PTC 78 DEL
11. MICROTEL MICRONIX 1994 SUPP(3) SCC 215 [
12. POLAROID SOLAVOID 1977 RPC 1
13. POLAROID POL RAMA 1977 RPC 581
14. COCA COLA PEPSI COLA 59 RPC 127
15. SKINDEW SKINDEEP 1960 RPC 229
16. FRIGIKING THERMOKING 1973 RPC 739
17. ADVOCAAT KEELING’S OLD 1979 AC 731
ENGLISH ADVOCAAT18. CASTROL BESTROL 1996 SUPP ALR 170
19. ACE BRAND AGE 1976 FSR 256
20. FLEX AQUAFRESH FLEX 2000 PTC 83
21. CENTRE ICE CENTRE ICE 53 CPR (3d) 34
22. HOME BOX OFFICE CHANNEL 5 HOME 1982 FSR 449
BOX OFFICE23. KEM KIM 1992 FSR 1
24. IVY IVORY 17 RPC 689
25. NEWSWEEK NEWSWEEK 1979 RPC 441
26. NEIGHBOURS NEIGHBOURS
27. TRIPCASTROID CASTROL 1925 VOL.42 264
28. B.K. B.K. 81 1985 PTC 1
29. COCA COLA KOALA KOLA 1968 SLT 353
30. RITO Y-TO 1919(36) RPC 296
31. TURBOD GO TUROBO 24 CPR (3d) 1
32. 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
(Supp) 3 SCC 215 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 .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 and the case of Kaul Products Refining
Company versus Shangrila Food Products .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. Therefore 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. Therefore, 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. Therefore, 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). Therefore, the alleged
confusion, if any, on this ground does not survive.
Therefore, this trade dress may not be of much
consequence while examining the aspect of
“misrepresentation”.69. The question therefore 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. Therefore, 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 alia 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 aphordiasics
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. Therefore, 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 discuasion 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 . 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 therefore
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, andg) 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 1990 (Supp) SCC 727 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 therefore 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, ande. 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 Yardely 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.
stated as under:-“It would seem to follow, therefore, 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. Therefore,
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 explanation 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 IA 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 explanation given is that `Gra’ is
common to the trade. It is a word in English
indicating affection or love and, therefore, 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 IA 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 dis-similarities in
the two products:INDIAGRA VIAGRA i) Packing in Blister i) Packing not known ii) Price of one packet of 10 ii) Price of one pill is around capsules 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 the
counter (OTC) Herbal food plaintiff is a Schedule`H’
supplement for general drug which can only be sold
vitality. after doctor prescription.vi) The product is 100% Ayurvedic vi) The product is Allopathic
and is a Chemical product.vii) The product is meant for men vii)The product is only for men
and women.viii)The product has no side effect viii)The product is not recom-
mended for men suffering
from diabetes,hypertension
and 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 therefore 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 Vs. Hindustan Radiators
Ltd. 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 alia 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 (41) holding that
marks `Motrate’ and `Filtrate’ were not similar. He
also referred to another judgment of this Court in the
case of Biofarma Vs. Sanjay Medical Store 1998 (18)
PTC 671 wherein the Court laiddown 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; and7. 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 IA 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 explanations 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.
Therefore 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 ZurichKloten 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 IA 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.