{"id":119120,"date":"2002-04-10T00:00:00","date_gmt":"2002-04-09T18:30:00","guid":{"rendered":"https:\/\/www.legalindia.com\/judgments\/pfizer-products-inc-vs-b-l-company-and-ors-sun-on-10-april-2002"},"modified":"2015-07-22T16:11:57","modified_gmt":"2015-07-22T10:41:57","slug":"pfizer-products-inc-vs-b-l-company-and-ors-sun-on-10-april-2002","status":"publish","type":"post","link":"https:\/\/www.legalindia.com\/judgments\/pfizer-products-inc-vs-b-l-company-and-ors-sun-on-10-april-2002","title":{"rendered":"Pfizer Products Inc. vs B.L. & Company And Ors., Sun … on 10 April, 2002"},"content":{"rendered":"
Delhi High Court<\/div>\n
Pfizer Products Inc. vs B.L. & Company And Ors., Sun … on 10 April, 2002<\/div>\n
Equivalent citations: 2002 (25) PTC 262 Del<\/div>\n
Author: A.K.Sikri<\/div>\n
Bench: A Sikri<\/div>\n<\/p>\n
<\/pre>\n
JUDGMENT<\/p>\n
             A.K.Sikri, J.  <\/p>\n
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.\n<\/p>\n
2. Ever  since  Adam and Eve ate forbidden  apple
\n           and  were  transported to earth, sex has  become  basic
\n           human  instinct.  Among other creatures copulation  may
\n           be  only a biological act – for procreation.   However,
\n           for  human  beings,  sexual  intercourse  is  not  only
\n           procreative.   It  is  creative as well.  It  has  been
\n           described  as “the greatest driving force in the living
\n           world”.\n<\/p>\n
2. No wonder then, that much is written about it.\n<\/p>\n
           From time immemorial.  On how to enjoy it most.  On how
\n           to  continue  to enjoy and be sexually active  even  at
\n           advanced  stage of life.  Vatsyayana’s ‘Kamasutra’  has
\n           placed  him among the immortals and no better elegy  or
\n           eulogy can be written than the following lines:\n<\/p>\n
                “So  long as lips shall kiss and eyes shall  see.
\n               So long lives This, and This gives life to Thee”.\n<\/p>\n
3. Tantra  has  shown “The Secret Power of  Sex”.\n<\/p>\n
           Sheikh Nefzaoui’s celebrated work “The Perfumed Garden”
\n           is  well known and is translated in various  languages.
\n           Sir  Richard  Burton, who has translated this work  and
\n           ‘kamasutra’  has  himself  become immortal.   The  Khan
\n           Report  on  “Sexual  Preferences” by  Sandra  Kahn  has
\n           become another classic.  List would be endless.\n<\/p>\n
4. Sex  may be most confusing, disappointing  and
\n           lonely  experience.   It  may also be  most  piercingly
\n           beautiful,  earthshaking and companionable  experience.
\n           It is the experience of latter kind, which human beings
\n           chersh.\n<\/p>\n
5.                     Knowing  this  unsatiable  appetite  of  human
\n           kind,  medical  science – traditional and modern –  has
\n           not  lagged behind.  Aphordiasics are “discovered”  and
\n           “invented”   for   prolonged    and   enhanced   sexual
\n           encounters.   Various therapies are administered   for
\n           treatment  of  impotency or for sexual failures of  all
\n           kinds.   What a remarkable gift it would be, for  those
\n           in  need, when it was accidentally discovered that  the
\n           drug  – sildenafil citrate, commonly used for treatment
\n           of  angina,  could  be a stimulant  for  male  erectile
\n           dysfunction.    The   plaintiff   became   pioneer   in
\n           commercially  exploiting the same.  When a drug of this
\n           nature  hits  the  market, there are bound to  be  many
\n           players.   More  and  more would inevitably  enter  the
\n           arena.   They would make the exploit.  And it is  bound
\n           to  create  economic  war.  That is  exactly  what  has
\n           happened in these cases.\n<\/p>\n
6. The    plaintiff    is     a    multi-national
\n           pharmaceutical  Company.  It is incorporated under  the
\n           laws  of  the State of Connecticut, U.S.A.  As per  the
\n           averments  made by the plaintiff in the plaint, it is a
\n           global  research based Company which is responsible for
\n           discovering  and developing innovative and value  added
\n           products  for improving the quality of life for  people
\n           around  the world and help them enjoy longer, healthier
\n           and  more  productive  life.    The  drug   discovered,
\n           developed  and  marketed  by it are sold  under  PFIZER
\n           brand  names.  It claims to have invested enormous sums
\n           of  money in research and development to establish  and
\n           bring  to  the  market  a wide  variety  of  innovative
\n           pharmaceutical  products and in the process has created
\n           a  global reputation for high quality and effectiveness
\n           of  its pharmaceutical products.  It has three business
\n           segments  :   health care, animal health  and  consumer
\n           health  care.  Its products are available in more  than
\n           150 countries.\n<\/p>\n
 This  Suit  filed  by  the  plaintiff  is  for
\n           injunction  and  damages  for   passing  of  an  unfair
\n           competition.   The product in question is the drug  for
\n           treatment  of  male erectile  dysfunction  (hereinafter
\n           referred  to as ‘ED’, for short) – ‘sildenafil citrate’\n<\/p>\n
           – which is marketed and sold by the plaintiff under the
\n           trade   mark   VIAGRA.   It   was  introduced  by   the
\n           plaintiff-Company  in  early  1998  and  the  plaintiff
\n           claims it to be a revolutionary product.  The plaintiff
\n           also  claims  that the said drug is the result  of  its
\n           extensive  research  on which millions of dollars  were
\n           spent by the plaintiff-Company.\n<\/p>\n
7. VIAGRA,  according  to  the  plaintiff,  is  a
\n           fanciful  and  coined  word  that was  created  by  the
\n           plaintiff  having  no  denotative meaning.   After  its
\n           introduction  in the market as an innovative  effective
\n           drug for treatment of male ED (sometimes referred to as
\n           impotence),  with  unsatisfactory treatments  for  such
\n           dysfunction so far, the product was an instant success.
\n           Overnight it became the household word across the globe
\n           and  even in those countries where the product has  not
\n           been  launched  it  received enormous amount  of  media
\n           attention   not   only   through   advertisements   and
\n           promotional  activities  by  the   plaintiff  but  also
\n           through   unsolicited  press   reports,  articles   and
\n           features.  The plaintiff claims distinctiveness in this
\n           product, inter alia, for the following reasons:-\n<\/p>\n
            (a)      VIAGRA  is a fanciful and coined word that was
\n                    created  by the plaintiff having no denotative
\n                    meaning.   The mark is inherently  distinctive
\n                    both to the trade and to the consuming public.
\n                    The  tablet  was  given a unique  and  unusual
\n                    shape  and colour i.e.  unique blue colour and
\n                    unusual   and  distinctive    diamond   shape.
\n                    According to the plaintiff the notoriety, fame
\n                    and  goodwill is not just limited to the trade
\n                    mark  VIAGRA  but  also extends  to  its  blue
\n                    diamond  tablet  shape and colour.  The  trade
\n                    mark   and   distinctive   trade   dress   are
\n                    universally   recognised  and   relied  on  as
\n                    identifying  the plaintiff as the sole  source
\n                    of   the  drug  and   has  distinguished   the
\n                    plaintiff’s   product  from   the  goods   and
\n                    services of others.\n<\/p>\n
            (b)      It  is  very effective for treatment of  ‘ED’,
\n                    for   it   is  easier   to   administer   than
\n                    predecessor  therapies.   It  is  widely  used
\n                    treatment  for ‘ED’.  As of April, 2001 VIAGRA
\n                    has been prescribed more than 40 million times
\n                    to more than 13 million men world wide by more
\n                    than five lakh physicians.  It is sold in more
\n                    than  one  hundred  countries.    It  is  most
\n                    extensively  studied and widely used treatment
\n                    for  ‘ED’.  Its annual world wide sale in  the
\n                    year 1998-99-2000 were US $ 788 millions, US $
\n                    1016   millions  and  US   $   1344   millions
\n                    respectively.  <\/p>\n
\n\n \n\n            (c)      The   plaintiff  has   also  been  extensively\n                    advertising    this     product    in    major\n<\/pre>\n
                    international magazines.  The product has also
\n                    been discussed in number of booklets, journals
\n                    and  magazines  which are circulated  even  in
\n                    India.   It is also advertised and promoted on
\n                    the  internet through the plaintiff’s  website
\n                    being ‘www.viagra.com’.\n<\/p>\n
            (d)      The plaintiff’s trade mark has been registered
\n                    and\/or  pending registration in more than  147
\n                    countries around the world.  The country where
\n                    it  stands registered are mentioned in para 10
\n                    of   the   plaint.     The   application   for
\n                    registration  of this trade mark in India  was
\n                    made   on  June  1,   1996  which  is  pending
\n                    registration  with  Registrar of Trade  Marks.
\n                    The  said  application  has been  assigned  to
\n                    PFIZER PRODUCT Inc.  from PFIZER Inc.    <\/p>\n
                      8. As  a  result  of   aforesaid  features   and
\n           distinctiveness,  the plaintiff claims that the  VIAGRA
\n           trade   mark  and  blue   trade  dress  have   acquired
\n           substantial   goodwill  and   are  extremely   valuable
\n           commercial assets in the hands of the plaintiff.\n<\/p>\n
9.  The  graveman of the plaintiff’s grievance is
\n           the  introduction  of  similar  drug  i.e.   sildenafil
\n           citrate  for  same treatment, namely, ‘ED’ launched  by
\n           the  defendant  no.2  under  the  brand  name  PENEGRA.
\n           According  to  the defendants the trade  mark  PENEGRA,
\n           which  is described by various indigenous reports  “as
\n           Indian  VIAGRA” is deceptively and confusingly  similar
\n           to  the  plaintiff’s world renowned trade mark  VIAGRA.
\n           This  name has been deliberately chosen in an effort to
\n           ride   upon   the  reputation   and  goodwill  of   the
\n           plaintiff’s  trade mark VIAGRA.  The defendants product
\n           PENEGRA is not only phonetically similar to that of the
\n           plaintiff’s  trade mark VIAGRA but the defendants  have
\n           also  copied the plaintiff’s trade dress by  introducing
\n           the   product  as  blue   diamond  shape  tablet.   The
\n           plaintiff  states  that the malicious intention of  the
\n           defendants  in  introducing  the aforesaid  product  in
\n           aforesaid  manner  is further clear from the fact  that
\n           the defendants have also launched its own website under
\n           the  domain name ‘www.penegra.org’.  An access to  this
\n           website  would  reveal  that several features  in  this
\n           website  has been directly lifted from the  plaintiff’s
\n           website ‘www.viagra.com’.  The plaintiff has stated the
\n           similarity  in  paras  23  to 28 in  the  plaint.\n<\/p>\n
10. The  plaintiff  also  points   out  that  the
\n           defendants  have made every effort to come as close  as
\n           possible  to  the plaintiff’s product inasmuch  as  the
\n           defendants  product is also available in dosages of  25
\n           mg,  55  mg and 100 mg.  Both recommend intake  of  the
\n           product  one hour before “engaging in sexual activity”.
\n           The effect of both the drugs start after 30 minutes and
\n           lasts  up to four hours.  The plaintiff is aggrieved  by
\n           the  aforesaid  adoption  by   the  defendants  of  the
\n           plaintiff’s product which according to the plaintiff is
\n           deceptively  and confusingly similar to the plaintiff’s
\n           product.   The  plaintiff  states  that  it  has  spent
\n           millions of dollars and extensive resources on research
\n           and  development  of  a  new drug  having  the  generic
\n           Chemical  name  sildenafil  citrate, an  approved  oral
\n           therapy  for  ‘ED’.   ‘ED’,  or male  impotence,  is  a
\n           serious  medical condition estimated to affect over one
\n           hundred  million  men around the world.  One has to  be
\n           very  careful  in  prescribing  such a drug  to  a  man
\n           suffering  from  ‘ED’.  It is schedule ‘H’ drugs  which
\n           can  be sold only on medical prescription.   Therefore,
\n           confusion has to be avoided at all costs.  The consumer
\n           may  buy  the  defendants  product  PENEGRA  under  the
\n           mistaken  notion  that it is Indian version of  VIAGRA.
\n           According  to the plaintiff, the defendant has marketed
\n           the  product  without  proper  research  and  any  side
\n           effects  or  harmful  effects  on  the  patient  taking
\n           PENEGRA  may  adversely  affect   the  reputation   and
\n           goodwill  of the plaintiff’s product VIAGRA.  In  fact,
\n           according  to  the plaintiff, it has not  launched  its
\n           product in India so far as the plaintiff did not intend
\n           to  do  so without proper research and  studies.   Thus
\n           apart  from  these possible harmful effects, which  may
\n           likely  to adversely affect the public opinion and view
\n           of  the plaintiff’s propriety VIAGRA brand – sildenafil
\n           citrate  by unauthorisedly using of PENEGRA trade mark,
\n           the  defendants have (a) traded upon and threatened  to
\n           further  trade  upon  the   significant  and   valuable
\n           goodwill in the VIAGRA mark and distinctive blue tablet
\n           trade  dress;  (b) have caused or are likely to  cause,
\n           public  confusion  as  to the  source,  sponsorship  or
\n           affiliation  of  its  product;  (c)  have  damaged  and
\n           threaten  to further damage the plaintiff’s significant
\n           and  valuable  goodwill in the VIAGRA mark;   (d)  have
\n           injured  and further threaten to injure the plaintiff’s
\n           right  to use its VIAGRA mark as the exclusive  indicia
\n           or   origin  of  PFIZER’s   ‘ED’   product   containing
\n           sildenafil   citrate;   and  (e)   have   diluted   and
\n           threatened  to further diminish the distinctive quality
\n           of the famous VIAGRA trade mark.\n<\/p>\n
11. In  these  circumstances, the  plaintiff  has
\n           made  the  prayer  for injuncting the  defendants  from
\n           producing,  manufacturing,  selling, etc.   the  VIAGRA
\n           mark  or  any colourable imitation thereof or any  mark
\n           confusingly  and deceptively similar thereto  including
\n           but not limited to the name PENEGRA.\n<\/p>\n
12.                     Along  with the plaint, the plaintiff has also
\n           filed  application under Order XXXIX Rules 1 and 2 read
\n           with  Section 151 of the Code of Civil Procedure  being
\n           IA.5563\/2001.   This  application virtually  reproduces
\n           the  averments made in the plaint and as noticed  above
\n           on  the basis of which ad interim injunction on similar
\n           terms is prayed for.\n<\/p>\n
13.                      While  issuing  summons to the defendants  in
\n           the  plaint by Order dated 1st June, 2001, notice  were
\n           issued  in  IA.5563\/2001 also for 11th June,  2001  and
\n           ex-parte  ad  interim  injunction was  granted  to  the
\n           plaintiff  to  restrain the defendants from  producing,
\n           manufacturing,  selling,  etc.  the VIAGRA mark or  any
\n           colourable  imitation  thereof or any mark  confusingly
\n           and  deceptively  similar  thereto  including  but  not
\n           limited to the name PENEGRA.\n<\/p>\n
   14.                   The  defendant  no.2 appeared on  11th  June,
\n           2001  and asked for time to file the written statement.
\n           Two  weeks time was granted for this purpose.   Further
\n           allowing  the  plaintiff to file  replication\/rejoinder
\n           before  the  next  date, the case was  directed  to  be
\n           listed  on  10th  July, 2001.  Interim Order  was  also
\n           continued.   Against  the  Order dated 1st  June,  2001
\n           granting   ex-parte  injunction   the  defendant   no.2
\n           preferred  appeal being FAO(OS) No.276\/2001 before  the
\n           Division  Bench and by judgment dated 30th June, 2001,
\n           the  Division  Bench  allowed the said Appeal  and  set
\n           aside  the  injunction Order.  Concluding paras of  the
\n           judgment reads as under:-\n<\/p>\n
                        “At this stage, we may also note that the
\n                      learned  counsel for the appellant with a
\n                      view  to  demonstrate   the   appellant’s
\n                      bonafides  has  submitted that to  dispel
\n                      even  the slightest doubt, the appellant
\n                      no.2  undertakes to change the colour  of
\n                      their tablet from BLUE to another colour
\n                      henceforth.  Further the appellants would
\n                      also  not  use and display  they  website
\n                      till it was modified to ensure that there
\n                      is  no substantial adaptation  whatsoever
\n                      from  the  website  of  the  respondents.
\n                      Learned  counsel further undertakes  that
\n                      the appellants would maintain records and
\n                      file  them  in court with regard  to  the
\n                      manufacture  and sales of their  products
\n                      PENEGRA  and abide by such directions  as
\n                      may be given by the Court.  <\/p>\n
                       We  accept  the above undertakings.   The
\n                      appellants   shall  duly   file   monthly
\n                      statement  giving  details of  the  total
\n                      number of PENEGRA tablets manufactured in
\n                      different  strengths, prices thereof  and
\n                      the sales revenue there from.\n<\/p><\/blockquote>\n
                       The Appeal is allowed in the above terms.
\n                      The  record  be returned to  the  learned
\n                      Single   Judge   for   disposal  of   the
\n                      application  under Order 39 Rule 1 and  2
\n                      CPC  on  merits.   Any  observation  made
\n                      herein shall not tantamount to expression
\n                      of  opinion on merits of the  application
\n                      before the learned Single Judge.”\n<\/p><\/blockquote>\n
      15.               Thus  significantly  the  defendant  no.2  has
\n           changed  the colour of the tablet from blue to pink and
\n           has  also stopped using and displaying its website.  It
\n           has also undertaken to maintain the records with regard
\n           to  manufacturing and sales of its product PENEGRA  and
\n           file them in the Court.\n<\/p>\n
         16.            The defendant no.2 has filed detailed reply to
\n           this  IA filed by the plaintiff under Order XXXIX Rules
\n           1  and 2 of the Code of Civil Procedure in the form  of
\n           affidavit   of  Mr.Arun   Parikh,  its   Vice-President
\n           (Legal).   Apart  from controverting various  averments
\n           and  allegations  in the plaint, number  of  objections
\n           have  been taken to the maintainability of the Suit  as
\n           well as to this application on the strength of which it
\n           is  stated  that the plaintiff is not entitled  to  any
\n           such  injunction.  The submissions raising  preliminary
\n           objections by the defendant no.2 are as follows:-\n<\/p>\n
                     1.   The plaintiff’s trade mark VIAGRA has not
\n           been  registered in India.  The plaintiff has not  even
\n           started  selling  its product in India.  Therefore  the
\n           case  at hand is not one of infringement of trade  mark
\n           but  that  of  passing off action.  In  a  passing  off
\n           action,  in order to succeed the plaintiff has to prove
\n           prior  user which it cannot claim as it has not started
\n           selling its product in India.\n<\/p>\n
                     2.   The  defendants 2 and 3 have entered  the
\n           market with their product PENEGRA on 9th January, 2001.
\n           The  present Suit was filed by the plaintiff on 30\/31st
\n           May,  2001.   In  the interregnum the  defendants  have
\n           already  established  a  niche in the  market  and  are
\n           having  approximately  34% share of sildenafil  citrate
\n           market in India.  The plaintiff was aware of the launch
\n           and  market  of  its  product   in  June  2001  itself.
\n           However,  it  chose to wait and file the  present  Suit
\n           after  a  considerable delay when the  defendants  have
\n           already  established a substantial market.  Thus on the
\n           grounds  of  delays,  laches   and  estoppel  also  the
\n            plaintiff is not entitled to interim injunction.\n<\/p>\n
                       3.   The  plaintiff is merely an  assignee  in
\n           India  for the trade mark VIAGRA of PFIZER Inc.  PFIZER
\n           Inc.   has  not come forward to file the present  case.
\n           Although  the plaintiff has claimed immense world  wide
\n           reputation of the product, this reputation and goodwill
\n           belongs  to PFIZER Inc.  and not to the plaintiff.  The
\n           plaintiff  has  not made any averment in reply  of  its
\n           reputation  and goodwill of the trade mark.  The law of
\n           trade  mark, as it exists in India and in most of other
\n           countries,   does   not    recognise   that   different
\n           companies\/entities can enjoy\/claim reputation\/good will
\n           of  a  trade mark in different domestic  jurisdictions,
\n           unless  the respective entities\/companies are marketing
\n           the  product in their respective domestic jurisdiction.
\n           The  plaintiff  cannot  claim for  its  reputation  and
\n           goodwill   of  a  trade  mark   used  by  a   different
\n           entity\/company  elsewhere in the world.  Therefore, the
\n           plaintiff has no locus to file the present proceedings.\n<\/p>\n
                     4.   The  plaintiff is not even  proposing  to
\n           market the product VIAGRA in India as is clear from the
\n           various  statements  made  by   PFIZER  Inc.   and  the
\n           assignment in favor of the plaintiff for India amounts
\n           to  trafficking  in trade marks, thus disentitling  the
\n           plaintiff to file any Suit in India.\n<\/p>\n
            17.         On merits the defendants explain that the drug
\n           sildenafil  citrate  is a Chemical compound which is  a
\n           generic  drug on which nobody can have any monopoly nor
\n           it  is  claimed by the plaintiff either.  It is  stated
\n           that  sildenafil citrate if taken an hour before sexual
\n           intercourse works on the normal body chemistry to allow
\n           the  blood  to  rush  into the penis when  the  man  is
\n           sexually  stimulated.  It is stated that the  defendant
\n           no.2  conducted  clinical  trials  of  its  product  of
\n           sildenafil   citrate  in  India   and  only  after   it
\n           administered and established that its product match the
\n           quality  and importantly the bio- availabilities ( i.e.
\n           the  presence  of  a concentration of the drug  in  the
\n           blood after its administration to a person at different
\n           time  periods  after  administration was equal  to  the
\n           product VIAGRA as sold in USA) that Government of India
\n           gave  permission to the domestic pharmaceutical  firms,
\n           including the defendant no.2, to manufacture and market
\n           sildenafil  citrate.  When this permission was given on
\n           or  around  January 8, 2001 the defendant no.2  started
\n           marketing  sildenafil  citrate tablets under the  trade
\n           mark  PENEGRA  from 9th January, 2001.   The  defendant
\n           no.2  in  the process made and satisfied  and  complied
\n           with  all the procedural and other requirements of  the
\n           Drug  and  Cosmetics Act, 1940.  Thus according to  the
\n           defendants,  it is incorrect for the  plaintiff-Company
\n           to  claim  any  superiority in quality as  the  quality
\n           equivalence  is  the first requirement for obtaining  a
\n           Drug   Permission   in   India   for  the   new   drug.
\n           Consequently,  different  companies   such  as  Ranbaxy
\n           Laboratories,   Cadila   Healthcare    Ltd.,   torrent
\n           Pharmaceuticals  Ltd.,  Sun Pharmaceuticals  Ltd.   and
\n           Cipla  Ltd.  obtained approval from the Drug Controller
\n           for  manufacturing  and marketing of the said drug,  in
\n           the trade names coined by the respective companies.\n<\/p>\n
               18.      The  defendants have also explained as to  how
\n           they   chose  the  word   PENEGRA  for  their  product.
\n           According  to  the  defendant no.2 it coined  the  word
\n           PENEGRA  as  trade mark keeping the purpose of drug  in
\n           mind  namely, satisfying the human sexual need.  It  is
\n           explained  that  the  first four  letters  “Pene”  were
\n           obtained  from the word ‘penetration’ which means  ‘the
\n           insertion  by  a male of his penis into the  vagina  or
\n           anus  of  a  sexual partner'( The  new  Shorter  Oxford
\n           English  Dictionary.   Thumb Index Edition)  while  the
\n           last  three letters ‘gra’ were obtained from the  latin
\n           word  ‘gratificari’ and the French word ‘Gratus’  which
\n           means  ‘pleasing’.   The English word ‘to  gratify’  or
\n           ‘gratification’ is derived from the aforesaid words and
\n           means  as  per the Oxford English Dictionary  ‘a  thing
\n           that  gratifies  or  pleases, a source or  pleasure  or
\n           satisfaction  or to give pleasure or satisfaction to  a
\n           person’.   It  is  stated that the word  ‘PENEGRA’  was
\n           coined  by the defendant no.2 to indicate a  satisfying
\n           or  a  pleasing  penetration, which would  be  achieved
\n           through  the  use  of   the  drug.   Incidentally,  the
\n           defendant  no.2  found that the word coined also  could
\n           have a different shade of meaning, which is apt for the
\n           drug.   The  first three letters ‘Pen’  could  indicate
\n           ‘penis’  while  the last three letters ‘gra’ also  mean
\n           ‘long’ or ‘loving’.  Thus the defendants found that the
\n           most appropriate coining of the trade mark would be the
\n           word ‘PENEGRA’.\n<\/p>\n
                  19.   It is also clarified by the defendants that as
\n           per the permission of the Drug Controller the said drug
\n           which  is  a  schedule  H  drug can  be  sold  only  on
\n           prescription   of  urologist,   endocrinologist  or   a
\n           psychiatrist.   This condition of prescription, keeping
\n           in  mind the known side effects of this drug is a  step
\n           ahead  to curb misuse or abuse of its product which  is
\n           not  even  imposed  in U.S.A.  itself.  It  is  further
\n           stated  that  drug  administration   is  also   keeping
\n           vigilance  on the implementation of these conditions by
\n           regularly  raiding\/checking  chemist shops and  lodging
\n           complaints under the Drug laws.\n<\/p>\n
                     20. It is further explained that when the drug can
\n           be sold only on the prescription of a super specialised
\n           doctors,  such doctors would not prescribe any drug  on
\n           the  basis  of the colour, shape, size, trade dress  or
\n           get up of the medicine nor even based on the trade name
\n           given   to  the  drug.    Doctor  prescribes  the  drug
\n           essentially  considering the composition of the generic
\n           drug  or  drugs  which he wants to  prescribe  and  the
\n           reputation  of the company manufacturing and  marketing
\n           each  composition.  Therefore there is no scope of  any
\n           deception or confusion.\n<\/p>\n
                  21.   It is also the case of the defendants that the
\n           question  of  deception  or mistake by  the  pharmacist
\n           dispensing  the defendant’s product PENEGRA in place of
\n           VIAGRA  also  would not arise because  the  plaintiff’s
\n           drug  –  VIAGRA  is  not   even  sold  in  India.   The
\n           defendants  have no intention to cause deception and in
\n           fact there is no misrepresentation by the defendants to
\n           doctors  or the public which is leading or is likely to
\n           lead  them to believe that goods or services offered by
\n           the  defendants  are  the  goods  or  services  of  the
\n           plaintiff’s.\n<\/p>\n
                    22. Thus, according to the defendants, neither the
\n           plaintiff  had  established its prior user  of  product
\n           VIAGRA  in  India  nor existence of good-will  of  this
\n           product   in  India  nor  is   there  any   actual   or
\n           possibility\/chance  of deception\/confusion between  the
\n           plaintiff’s   product  and   the  defendant’s  product,
\n           keeping  in mind the manner in which the trade is being
\n           conducted  and the product is being sold.   Therefore,
\n           the  plaintiff  has  no  right to  maintain  action  of
\n           passing of against the defendants.\n<\/p>\n
                   23.  Lengthy  arguments were advanced and elaborate
\n           submissions  made  by senior counsel appearing on  both
\n           sides  in  support  of  their  respective  cases.   The
\n           submissions noted above were elaborated with the aid of
\n           various  documents,  statements  and  charts  filed  by
\n           either  sides.   Plethora of judgments and  precedents
\n           running  into  volumes were cited in support  of  legal
\n           submissions.    Mr.K.K.   Venugopal,   learned   senior
\n           counsel  ably assisted by Mr.Chander M.  Lall (who also
\n           made   submissions  in  rejoinder)   argued   for   the
\n           plaintiff.   Mr.P.  Chidambaram, learned senior counsel
\n           argued on behalf of the defendant no.2 whereas Mr.Rajiv
\n           Nayyar,  learned senior counsel made his submission  on
\n           behalf of the defendant no.3.  Arguments were concluded
\n           on  11th January, 2002 when the learned counsel for the
\n           plaintiff also filed written submissions with copies to
\n           learned  counsel  for the defendants.   The  defendants
\n           were  also  given  an opportunity to file  the  written
\n           submissions by 22nd January, 2002 which were duly filed
\n           by the defendants.\n<\/p>\n
                    24. At  this stage, it may be mentioned that along
\n           with  this  Suit  four   more  Suits  (wherein  similar
\n           application under Order XXXIX Rules 1 and 2 of the Code
\n           of  Civil  Procedure have been filed) being  Suit  Nos.
\n           1444\/2001,  1258\/2001, 1049\/2001 and 1418\/2001 filed by
\n           the plaintiff against four different companies relating
\n           to  this very product of the plaintiff were also  heard
\n           and  arguments  concluded simultaneously.  However,  in
\n           one such case being Suit No.1418\/2001, while filing the
\n           written   submissions,   the   defendants  also   filed
\n           affidavit   Along with  which   certain  documents  were
\n           annexed.   The  matter was listed for direction and  an
\n           Order  was passed permitting the plaintiff to file  its
\n           reply  affidavit  which  the  plaintiff  filed  on  1st
\n           February,   2002.   On  going   through   the   written
\n           submissions  of the parties it was felt that on certain
\n           points   some   clarifications    were   required   and
\n           accordingly  this matter was listed for directions  and
\n           thereafter the matter was further argued on the queries
\n           put  by  the  Court  to the  counsel  and  was  finally
\n           reserved for judgment on 5th April, 2002.\n<\/p>\n
               25.      From  the  pleadings  noted   above  on  which
\n           arguments  of the parties revolve, following  questions
\n           arise  for consideration in this application outcome of
\n           which will determine its fate:-\n<\/p>\n
            1.       Whether the plaintiff has locus standi to file
\n                    the present Suit?\n<\/p>\n
            2.       Whether  the product VIAGRA has acquired trans
\n                    border and\/or spill over reputation in India?\n<\/p>\n
     3.       Whether  the  defendants product ‘PENEGRA’  is
\n                    deceptively and confusingly similar to that of
\n                    the  plaintiff’s VIAGRA?  OR Whether there  is
\n                    any   likelihood  of   confusion  between  the
\n                    plaintiffs  and  the defendants’ product  i.e.
\n                    whether   consumer  may   buy  the  defendants
\n                    product  PENEGRA under the impression that  it
\n                    is infact buying VIAGRA?\n<\/p>\n
            4.       Whether  the  plaintiff has filed the  present
\n                    Suit and application for ad interim injunction
\n                    belatedly  and  is not entitled to  injunction
\n                    because of alleged laches and delays?\n<\/p>\n
     5.       Whether   the  plaintiff   has  satisfied  the
\n                    conditions for grant of injunction as required
\n                    under Order XXXIX Rules 1 and 2 of the Code of
\n                    Civil  Procedure read with provisions of Trade
\n                    and Merchandise Marks Act?\n<\/p>\n
            1.       Whether the plaintiff has locus standi to file
\n                    the present Suit?\n<\/p>\n
                    It  is  the first objection of the  defendants
\n           that  the case of the plaintiff is limited to claim for
\n           passing off and is not a case of alleged infringment of
\n           patent,  copyright,  design  or   trade  mark  nor  any
\n           pleadings  to  this  effect  in the plaint  or  in  the
\n           Application  under Order XXXIX Rule 1 and 2 of the Code
\n           of Civil Procedure (hereinafter referred to as CPC, for
\n           short).  Therefore the submissions in respect of action
\n           of  passing  off  only need to be  considered.   It  is
\n           further  the case of the defendants that VIAGRA is  the
\n           trade mark of PFIZER Inc.  The plaintiff namely, PFIZER
\n           PRODUCTS  Inc.   is only an assignee of the said  trade
\n           mark  in  India  as per the Assignment Deed  dated  3rd
\n           June,  1999.  This Deed very categorically states  that
\n           the  plaintiff has been assigned all the rights, title,
\n           interest, benefit and property whatsoever in and to the
\n           said  trade mark together with the goodwill in India of
\n           the business in connection therewith.\n<\/p>\n
                    As  per this assignment the plaintiff has only
\n           been  assigned  “goodwill  in India” and  therefore  it
\n           cannot  be contended that it has goodwill elsewhere  or
\n           international  goodwill and further as far as  goodwill
\n           in  India is concerned admittedly the plaintiff has  no
\n           business in India and is not selling its product VIAGRA
\n           in  India.  Therefore in the absence of any goodwill in
\n           India  the  plaintiff cannot file the present Suit  and
\n           again  rely  upon  the   international  reputation  and
\n           goodwill of PFIZER Inc.  <\/p>\n
                  The   plaintiff  has   explained  that  PFIZER
\n           PRODUCTS  Inc.   i.e.  the plaintiff as well as  PFIZER
\n           Inc.   are  part of the same group.  The assignment  of
\n           the  plaintiff is in respect of all non US marks.   The
\n           transfer  was  done  to   centralise  cooperation   and
\n           efficiency of management.  In para 3 of the plaint, the
\n           plaintiff  has stated that the term includes  reference
\n           to  PFIZER Inc.  and the Indian assignment was only for
\n           the  purpose  of  transferring   the  application   for
\n           registration  and the consideration of US$ 100 is  only
\n           to  complete  the  contract and for  calculating  stamp
\n           duty.   It is also the submission of the plaintiff that
\n           in  1996-97  the Group had decided to transfer  of  non
\n           mark  US  products  and  trade  marks  of  PFIZER  Inc.
\n           including  VIAGRA  to  newly formed  company  –  PFIZER
\n           PRODUCTS  Inc.  This was done to have a single  entity,
\n           for  maintaining  and  managing   of  the  intellectual
\n           property  to  centralise cooperation and efficiency  of
\n           management.   Since the application for registration of
\n           trade mark VIAGRA in India was filed prior thereto, the
\n           assignment  thereof became necessary for the purpose of
\n           transferring this application for registration and that
\n           is  why  Assignment  Deed  dated  3rd  June,  1998  was
\n           executed  and  consideration of US $ 100 was  mentioned
\n           with  a  view to complete the contract.  The  plaintiff
\n           has relied upon the judgment of this Court in the case
\n           of  Indian Shaving Products Ltd.  versus Gift Pack  and
\n           another  reported  in  1998  PTC  (18)  698  (known  as
\n           ‘Duracell case’ for short) in support of its submission
\n           wherein  only  the Indian subsidiary was the  plaintiff
\n           but  the Court held that being part of US Company group
\n           the  plaintiff could take advantage of the trans border
\n           reputation.  The learned counsel for the plaintiff also
\n           sought  reliance upon the judgment of Bombay High Court
\n           in  the  case of Aktiebolaget Volvo versus Volbo  Steel
\n           Ltd.   reported in 1998 PTC (18) DB 47 (known as ‘Volvo
\n           case’)  in  support of its proposition where again  the
\n           plaintiff  had relied upon the Volvo group of companies
\n           for  claiming the reputation in which the plaintiff had
\n           controlling shares.\n<\/p>\n
               Keeping  in  view the fact that the  plaintiff
\n           and  PFIZER Inc.  are part of the same group and  there
\n           is  an  assignment of PFIZER Inc.  to the plaintiff  in
\n           respect  of all non US marks and the dicta laid down in
\n           Duracell  and Volvo cases, prima facie it appears  that
\n           the  plaintiff  can maintain the present Suit and  rely
\n           upon  the goodwill of PFIZER Inc.  The plaintiff cannot
\n           be  non-suited  at  this stage on  such  a  preliminary
\n           objection  raised by the defendants.  Therefore for the
\n           purpose  of the present application we shall proceed on
\n           the  basis  that the plaintiff and PFIZER  Inc.   being
\n           part  of the same group the plaintiff can rely upon the
\n           goodwill of its counter part namely, PFIZER Inc.  After
\n           all,  what  is  protected by the Indian Courts  is  the
\n           Indian   goodwill.    The   concept   of   trans-border
\n           reputation  deals with how this goodwill is acquired in
\n           India.   It is not disputed by the defendants that  the
\n           Courts  in India now recognise that goodwill can be now
\n           acquired  in India without the physical presence of the
\n           product.   This  aspect  would be discussed  in  detail
\n           while  dealing  with the second question  posed  above.
\n           The  plaintiff is the assignee of the goodwill in India
\n           and  due  to  spill  over of  the  reputation,  such  a
\n           goodwill  can  be recognised in India even without  the
\n           physical presence of the product.  Prima facie I do not
\n           think  that  such  a technical objection taken  by  the
\n           defendants  can  come  in the way of the  plaintiff  in
\n           maintaining the present Suit.\n<\/p>\n
             Relying  upon  the judgment of  the  Chancery
\n           Division  in  the  case  of  Athletes  Foot   Marketing
\n           Associates  Inc.  versus Cobra Sports Ltd., reported in
\n           (1980) RPC 343 and Star Industrial Company Ltd.  versus
\n           Yap  Kwee  Kor reported in 1976 FSR 256 the  defendants
\n           argued that in a passing off action in respect of right
\n           to  property  it  is nothing but the  goodwill  in  the
\n           business   and  since  goodwill   and   business   were
\n           inseparable if there was no business there could not be
\n           any  goodwill  and  in  the  absence  of  goodwill  the
\n           plaintiff  could not maintain an action of passing  off
\n           and  further  that  the plaintiff could  not  take  the
\n           benefit  or rely upon the activities or goodwill of the
\n           PFIZER  Inc.  as this was not allowed in Atheletes Foot
\n           case (supra).  However the thinking of Indian Courts is
\n           not  in  the same wave length.  In Apple Computer  Inc.
\n           versus  Apple  Leasing reported in 1992(1) ALR  93  the
\n           Court  has taken a contrary view and differed from  the
\n           view  taken  from  the  Atheletes  Foot  case  (supra).
\n           Similarly   in  Kamal  Trading   versus  Gillete   U.K.
\n           reported  in  1988 PTC 1 the Division Bench  of  Bombay
\n           High  Court has taken a view which goes contrary to the
\n           view taken by the aforesaid two judgments cited by the
\n           defendants.   At this stage, therefore, it would not be
\n           advisable  to express a definite and final view on this
\n           aspect and as mentioned above as there is some force in
\n           the  argument of the plaintiff, prima facie opinion  is
\n           that  case of the plaintiff cannot be non-suited on the
\n           ground  that  the  plaintiff  has no  locus  standi  to
\n           maintain  the present Suit or rely upon the goodwill of
\n           the PFIZER Inc.  <\/p>\n
            2.       Whether  the product VIAGRA has acquired trans
\n                    border and\/or spill over reputation in India?\n<\/p>\n
                     In so far as international reputation acquired
\n           by  the  plaintiff in the product VIAGRA is  concerned,
\n           there  is abundance of material on record to  establish
\n           such  a  reputation.   Even the  defendants  could  not
\n           dispute  this.  That was the reason that the defendants
\n           tried  to  deflect  the  issue   by  arguing  that  the
\n           plaintiff  could  not  rely  upon the  trade  mark  and
\n           goodwill of the business of PFIZER Inc.  in its product
\n           VIAGRA  by  contending that the plaintiff had only  the
\n           assignment  of “goodwill in India” and therefore  could
\n           not claim any other or global goodwill which belongs to
\n           PFIZER  Inc.  Once we do not agree with this submission
\n           of  the defendants, there may not be any difficulty  on
\n           the basis of material produced on record to come to the
\n           conclusion  that the plaintiff (including PFIZER  Inc.)
\n           enjoys  a world wide reputation of the product  VIAGRA.
\n           It  cannot  be  doubted that in   no  time,  after  the
\n           launch  of  the product VIAGRA, its  reputation  spread
\n           like  fire  in the forest.  It travelled in almost  all
\n           the  countries  over-night and came to be known as  the
\n           “wonder  drug”.   It  created much  hype  and  received
\n           substantial  media attention.  Articles kept pouring in
\n           various  journals  and magazines.   Newspapers  started
\n           reporting  various stories linked with the use of  this
\n           product.   The  plaintiff  has  placed  on  record  the
\n           following material –\n<\/p>\n
                     NEWSWEEK  dated 17th November, 1997 -( a cover
\n           story on impotence – article features VIAGRA);\n<\/p>\n
                     INDIA  TODAY  dated 27th April, 1998 (a  cover
\n           story  on ‘Rising Impotency’ – the shrinking world  may
\n           have  some bearing on impotency but it is also part  of
\n           the  cure  :  already, enterprising men in  Mumbai  are
\n           getting  their  relatives  in the U.S.   to  send  them
\n           VIAGRA while others are seeking the wonder drug through
\n           the internet);\n<\/p>\n
                     TIME  dated  4th  May, 1998 (VIAGRA  on  front
\n           cover);\n<\/p>\n
                     BUSINESS  WEEK dated 11th May, 1998 (VIAGRA on
\n           front cover);\n<\/p>\n
                     TIMES  OF INDIA dated 28th May, 1998  (article
\n           entitled ‘Women can benefit from VIAGRA too);\n<\/p>\n
                     NEWSWEEK dated 22nd June, 1998 (Special Report
\n           entitled ‘the culture of VIAGRA’);\n<\/p>\n
                     THE TIMES WEEKEND dated 11th July, 1998 (front
\n           page article on VIAGRA);\n<\/p>\n
                     INDIAN EXPRESS dated 1st August, 1998 (article
\n           entitled ‘Cadila Unichem jump onto VIAGRA bandwagon);\n<\/p>\n
                     INDIAN   EXPRESS  dated   10th  August,   1998
\n           (article  entitled  “Europe debating state  funding  of
\n           VIAGRA);\n<\/p>\n
                     FORBERS  dated  11th January, 1999 (VIAGRA  on
\n           cover).\n<\/p>\n
                     Infact  the  defendants while launching  their
\n           product  PENEGRA  has itself used the  expression  “the
\n           Indian  Viagra”  which  would  be  conclusive  of   the
\n           reputation  of the plaintiff’s product inasmuch as  for
\n           launching  the  drug – sildenafil citrate in India  and
\n           for  informing the consumer as to what kind of  product
\n           it  is, the defendants themselves conveyed the same  to
\n           the  consumers  in this country by describing it to  be
\n           ‘Indian  Viagra’.  This shows that even the  defendants
\n           knew  the  reputation of VIAGRA in India and  therefore
\n           thought  that it would be easy to convey as to what was
\n           the  purpose for which the PENEGRA was meant.  When the
\n           defendant  was launching its product, articles appeared
\n           in journals and newspapers in India describing that the
\n           defendants  was conducting clinical trials or launching
\n           the drug which was ‘VIAGRA – like drug”.  The defendant
\n           has  itself  filed  copies  of   some  of  its  reports
\n           appearing  in  newspapers  and journals.   The  various
\n           articles  entitled  as  –   “Zydus  Cadila  to  conduct
\n           clinical trials for ‘VIAGRA – like drug”, “Zydus Cadila
\n           to  launch cheaper VIAGRA clone”.  These articles  also
\n           compared  VIAGRA and PENEGRA stating “First VIAGRA  now
\n           PENEGRA”  or  describing PENEGRA as “Indian version  of
\n           VIAGRA”  or  “desi  version of VIAGRA” or  “the  wait’s
\n           over,  desi  VIAGRA is here”.  This material itself  is
\n           sufficient  to prove the trans-border reputation of the
\n           plaintiff’s  drug  VIAGRA.  It is not in  dispute  that
\n           many   of  these  articles   have  appeared  in  Indian
\n           magazines  and  newspapers.  It is also not in  dispute
\n           that  even foreign magazines where these articles  have
\n           appeared  are easily available and widely circulated in
\n           India.\n<\/p>\n
                  26.   In addition it is also a matter of record that
\n           the  plaintiff  has  its own  website  “www.viagra.com”
\n           which  is easily accessible by the users in India.  The
\n           evidence  produced on record is so overwhelming that it
\n           would be naive to ignore the same or ostrich like close
\n           one’s eyes towards this.\n<\/p>\n
                    27. The  cross-border or spill over reputation  is
\n           now  well recognised in India by series of  judgments.
\n           In  a paper presented by Hon’ble Dr.Justice  A.S.Anand,
\n           former Chief Justice of India on “Intellectual Property
\n           Rights  – The Indian Experience” – a paper presented in
\n           the Second Worldwide Common Law Judiciary Conference at
\n           Washington D.C.( U.S.A.) held between May 25 – 30, 1997
\n           and  published  in the Journal Section of (1997) 6  SCC
\n           (J)  at page 16.  Following extract of the said article
\n           beautifully sums up the legal position:-\n<\/p>\n
                        “Meanwhile, it would be comforting for
\n               the  international  community  to  know   that
\n               reputation   of   trade   marks  of   overseas
\n               companies  is  being recognised in  India  and
\n               there   have    been    significant   judicial
\n               precedents  on the question of transborder  or
\n               spill-over   of    international   reputation,
\n               notwithstanding  the fact that India is not  a
\n               signatory  to  the  Paris Convention  and  the
\n               patents  law  has not so far been  amended  in
\n               India after signing of GATT.\n<\/p><\/blockquote>\n
                        In  November 1993 the Delhi High Court
\n               restrained  two  local companies  by  separate
\n               orders  of interim injunction from using  BENZ
\n               and MERCEDES respectively.\n<\/p><\/blockquote>\n
                        The restraint order in respect of BENZ
\n               involved a company in India engaged in sale of
\n               undergarments  under  trade mark  VIP-BENZ  in
\n               combination  with a three-pointed human figure
\n               in    a   ring   –   characteristic   of   the
\n               three-pointed star device of Daimler Benz AG –
\n               with  the  legend “Germans would be  proud  of
\n               it”.   While  upholding the plaintiff’s  claim
\n               for  interim  injunction, the High Court  made
\n               the following observations:\n<\/p><\/blockquote>\n
                         “I think it will be a great perversion
\n               of  the  law  relating  to  trade  marks   and
\n               designs,  if  a  mark  of  the  order  of  the
\n               ‘MERCEDES  BENZ’, its symbol, a three  pointed
\n               star,  is humbled by indiscriminate colourable
\n               imitation  by all or anyone;  whether they are
\n               persons,  who  make   undergarments  like  the
\n               defendant, or anyone else.  Such a mark is not
\n               up  for grabs – not available to any person to
\n               apply upon anything or goods.  That name which
\n               is  well  known in India and  world-wide,  with
\n               respect   to   cars,  as  is  its   symbol   a
\n               three-pointed star.”\n<\/p><\/blockquote>\n
                       28. Yet  another observation in this  case
\n               was:\n<\/p><\/blockquote>\n
                         “In my view, the trade mark law is not
\n               intended  to protect a person who deliberately
\n               sets  out  to  take the  benefit  of  somebody
\n               else’s  reputation  with reference  to  goods,
\n               especially  so  when  the  reputation  extends
\n               world-wide.   By no stretch of imagination  can
\n               it  be said that use for any length of time of
\n               the name ‘BENZ’ should not be objected to.”\n<\/p><\/blockquote>\n
                        (Daimler Benz vs. Hybo Hindustan)  <\/p>\n<\/blockquote>\n
                        29. The  Supreme Court upheld that  order.
\n               A  restraint order was also passed in  respect
\n               of use of MERCEDES on casseroles following the
\n               above judgment.\n<\/p><\/blockquote>\n
                     30.   The principles enunciated in the above
\n               decisions were followed in another judgment by
\n               the  Delhi  High Court in October 1994 in  the
\n               Whirlpool case.  This was a passing off action
\n               instituted  by  Whirlpool Corpn.   against  an
\n               Indian company, seeking grant of an ad interim
\n               injunction  preventing  the   defendant   from
\n               passing   off  its  goods  as  those  of   the
\n               plaintiffs  by use of trade mark  “WHIRLPOOL”.
\n               One  of  the  questions before the  Court  was
\n               whether  the plaintiff-who was not selling  in
\n               India – could claim the benefit of transborder
\n               reputation  in trade mark “WHIRLPOOL” so as to
\n               maintain  a  passing  off action in  India  or
\n               should its goodwill and reputation be confined
\n               to  territories in which it has proved  actual
\n               use  of  the  trade mark in the  market.   The
\n               documents filed in the proceedings proved that
\n               some limited sales had been made to US Embassy
\n               and  USAID  in India and that  the  “WHIRLPOOL”
\n               products  had  been  advertised  in  magazines
\n               having  international circulation including in
\n               India.   The  court  held that  the  plaintiff
\n               could  bank upon transborder reputation of its
\n               washing   machines   for    the   purpose   of
\n               maintaining  passing off action in India.  The
\n               Supreme Court upheld that decision.\n<\/p><\/blockquote>\n
                        31. It  would,  thus  be seen,  that  even
\n               where  neither “the process” nor the “product”
\n               is  directly in issue Indian courts have  gone
\n               beyond  the  cold  print of  the  statute  and
\n               granted   relief   to    protect    world-wide
\n               reputation  which  a trade mark has  acquired,
\n               even where the trade mark as such has not been
\n               registered in India.\n<\/p><\/blockquote>\n
                    32.    The   rapidly   growing  international
\n               trade  makes  it imperative that  intellectual
\n               property  rights  are properly recognized  and
\n               managed  in different countries of the  globe.
\n               National  protection is no longer adequate  to
\n               safeguard  intellectual property rights  which
\n               can  easily be pirated or copies by  nationals
\n               of  other countries and exploited in their own
\n               market  or  even  in  international   markets.
\n               International  remedies for such  infringement
\n               are necessary.  The earlier conventions which
\n               are  administered  by the  World  Intellectual
\n               Property  Organisation  and the provisions  of
\n               the  TRIPS  Agreement are a step towards  such
\n               international   protection   of   intellectual
\n               property  rights.   Suitable laws  which  will
\n               protect  such rights internationally and  give
\n               adequate  monetary  compensation to the  owner
\n               without  creating  any undue monopoly  in  the
\n               property  can  and  are  being  formulated  as
\n               standards  for  laws  to  be  enacted  by  the
\n               different  countries  of   the  world.   These
\n               standards  reflect  the experience of  various
\n               countries  of  the  world  in  protecting  and
\n               enforcing  such  rights, while taking care  of
\n               public  interest  in the availability  of  new
\n               ideas and technologies”.  <\/p><\/blockquote>\n
                    33. This  article was further cited in Caesar Park
\n           Hotels  and  Resorts Inc.  versus  Westinn  Hospitality
\n           Services  Ltd.  1999 PTC (19) 123 DB (Mad).   Following
\n           principle was laid down:-\n<\/p>\n
                         “Thus,  it  is manifestly clear that  the
\n                      plaintiff  in order to get the relief  of
\n                      interim   injunction    restraining   the
\n                      defendant  from  using its  service  mark
\n                      need  not  establish that  they  actually
\n                      carry on business in this country.  It is
\n                      enough if they have got customers here.”\n<\/p><\/blockquote>\n
34. In  the case of N.R.  Dongre versus  Whirlpool
\n           Corporation  1996  PTC  (16) 476 (DB) Delhi  the  Court
\n           observed that :-\n<\/p>\n
                        “….   The court frowns upon any attempt
\n                      by  one trader to appropriate the mark of
\n                      another  trader although that trader is a
\n                      foreign trader and the mark has only been
\n                      used by him in a foreign country.” <\/p><\/blockquote>\n
                35.     In another case entitled Allergan Inc.  versus
\n           Milment  Oftho Industries and others 1999 PTC (19)  160
\n           (DB)  Cal.   the  Court  cited from the  case  of  N.R.
\n           Dongre (supra) as follows:-\n<\/p>\n
                        “The  knowledge and awareness of a  trade
\n                      mark  in respect of the goods of a trader
\n                      is not necessarily restricted only to the
\n                      people  of  the country where such  goods
\n                      are  freely  available but the  knowledge
\n                      and  awareness  of the same reaches  even
\n                      the  shores of those countries where  the
\n                      goods  have not been.  When a product  is
\n                      launched  and  hits  the  market  in  one
\n                      country,  the  cognizance of the same  is
\n                      also  taken  by  the   people  in   other
\n                      countries  almost  at  the same  time  by
\n                      getting   acquainted  with   it   through
\n                      advertisements  in newspapers, magazines,
\n                      television,  video  films,  cinemas  etc.
\n                      even though there may not be availability
\n                      of the product in those countries because
\n                      of  import restrictions or other factors.
\n                      In today’s world it cannot be said that a
\n                      product and the trade mark under which it
\n                      is   sold  abroad,  does   not   have   a
\n                      reputation or goodwill in countries where
\n                      it  is not available.  The knowledge  and
\n                      awareness   of   it   and  its   critical
\n                      evaluation  and appraisal travels  beyond
\n                      the  confines of the geographical area in
\n                      which  it  is sold.  This has  been  made
\n                      possible  by development of communication
\n                      systems,  which transmit and  disseminate
\n                      the  information  as soon as it  is  sent
\n                      from  one  place to  another.   Satellite
\n                      Television  is a major contributor of the
\n                      information  exploitation.  Dissemination
\n                      of  knowledge of a trade mark in  respect
\n                      of  a  product through  advertisement  in
\n                      media  amounts  to use of the trade  mark
\n                      whether  or  not   the  advertisement  is
\n                      coupled  with the actual existence of the
\n                      product in the market.”\n<\/p><\/blockquote>\n
 37. In  the  above case, the Calcutta  High  Court
\n           also  cited a similar view taken by the Division  Bench
\n           in  the case of J.N.  Nichols (Vimto) Ltd.  versus Rose
\n           and Thistle reported in 1994 PTC 83:-\n<\/p>\n
                        “Thus,  a  product  and  its  trade  mark
\n                      transcends  the physical boundaries of  a
\n                      geographical   region  and   acquires   a
\n                      transborder   or   overseas    or   extra
\n                      territorial  reputation not only  through
\n                      import   of  goods  but   also   by   its
\n                      advertisement.   The  knowledge  and  the
\n                      awareness  of  the  goods  of  a  foreign
\n                      trader   and  its  trade   mark  can   be
\n                      available  at a place where goods are not
\n                      being marketed and consequently not being
\n                      used.   The manner in which or the source
\n                      from   which  the   knowledge  has   been
\n                      acquired  is immaterial ….  The  Courts
\n                      do  not  approve  of any attempt  by  one
\n                      trader to appropriate the mark of another
\n                      trader,  even though that trader may be a
\n                      foreign  trader and mostly uses his  mark
\n                      in  respect of the goods available abroad
\n                      i.e.   outside  the   country  where  the
\n                      appropriation of the trade mark has taken
\n                      place.   As mentioned earlier,  awareness
\n                      and  knowledge of the mark, in the latter
\n                      country  may be because of small  trickle
\n                      of  goods  in  that  country  or  through
\n                      advertisement.   The manner and method by
\n                      which  the  knowledge  of   the  mark  is
\n                      acquired   by  the  public   is   of   no
\n                      consequence and will not matter.” <\/p><\/blockquote>\n
                 38.    In  Central  Industrial Alliance Ltd.   versus
\n           Gillette  U.K.   Ltd.  reported in 1998 PTC  (18)  (DB)
\n           (Bom.)  the Court observed as follows:-\n<\/p>\n
                        “In  addition,  it has to  be  remembered
\n                      that  in  respect of a  consumer  article
\n                      such  as  a safety razor blade  publicity
\n                      does   not   take     place   merely   by
\n                      advertisements  in India.  Such items are
\n                      advertised  in  foreign   newspapers  and
\n                      magazines   and  these   newspapers   and
\n                      magazines are circulated in India and are
\n                      freely  imported  and   presumably  read.
\n                      Apart  from this, judicial notice may  be
\n                      taken of a large number of Indians who go
\n                      out  temporarily  to   other   countries,
\n                      mainly  to the Middle-East countries, and
\n                      who,  therefore,  had the opportunity  to
\n                      use   the  Plaintiff’s   blades.    These
\n                      persons  do  not permanently settle  down
\n                      abroad  and  return to India after  their
\n                      two year or three year stay”.\n<\/p><\/blockquote>\n
                   39.  In  the  case of Indian Shaving Products  Ltd.\n<\/p><\/blockquote>\n
           (Duracell case) (supra) this Court observed as under:-\n<\/p>\n
                       “The  world with the passage of time  has
\n                      become almost just like a city on account
\n                      of   the   technical    advancements   in
\n                      technology  such as wireless,  telephone,
\n                      television,  cinema, and computers so  on
\n                      and   so  forth,  made   by  the   people
\n                      inhabiting   this   terrafirma.   Similar
\n                      advancements  have been made in the means
\n                      of  transport  such as  railways,  ships,
\n                      airlines.   These  days if a  product  is
\n                      launched  in  a  particular  country  the
\n                      goodwill  and reputation, which a  seller
\n                      earns  by selling his commodities in  the
\n                      market do not remain confined to the four
\n                      corners   of  the   said  country.    The
\n                      reputation  and  goodwill  and  intrinsic
\n                      worth  of  the said goods spread  like  a
\n                      wild fire to every nook and corner of the
\n                      world  through magazines and  newspapers,
\n                      television,  telephone, computers,  films
\n                      and cinema.  <\/p><\/blockquote>\n
                40.     It  is not necessary to quote from many  other
\n           judgments  taking similar view.  The purpose would  be
\n           subserved  by  citing  those cases.  These  are:-  Time
\n           Warner  Entertainment  Company,  L.P.   versus  A.K.Das
\n           reported  in  1997  PTC (17) 453, Volvo  case  (supra),
\n           Caterpillar  Inc.  versus Jorange reported in 1998  PTC
\n           (18)  (DB) 31, Rainforest Cafe, Inc.  versus Rainforest
\n           Cafe  and  others reported in 2001 PTC (DEL)  353,  WWF
\n           International   versus  Mahavir   Spinning  Mills  Ltd.
\n           reported in 1994 PTC 250.\n<\/p>\n
                41.     Learned counsel for the defendants argued that
\n           since  there were no sale or advertisement in India  by
\n           the  plaintiff, the plaintiff could not make out a case
\n           of   cross-border  reputation  in   support   of   this
\n           proposition.   The  defendants sought to rely upon  the
\n           case   of  N.R.Dongre   versus  Whirlpool   Corporation
\n           (supra),  Smithkline  Beecham  Plc.   versus  Hindustan
\n           Lever  Ltd.   reported  in  2000 PTC  83  and  Gilletee
\n           Company  versus  A.K.  Stationery reported in 2001  PTC\n<\/p>\n
           513.  <\/p>\n
              42.       It  was  also pleaded that in all cases  where
\n           the  concept  of  trans-border   reputation  had   been
\n           accepted,  were the cases where the world wide name  of
\n           the  company\/corporation  also happened to be the  mark
\n           which   is  alleged  to  be  passed  off\/infringed   in
\n           contra-distinction  from the same product name or mark,
\n           which is different from the company\/corporation name or
\n           mark.   It was submitted that reputation or goodwill of
\n           a  particular  product mark may not be equated with  so
\n           called   reputation\/goodwill  of    the   Corporation’s
\n           name\/mark.  In the case of the plaintiff since the name
\n           of  the product in question namely VIAGRA was different
\n           from  the  name of the Company i.e.   word\/mark  PFIZER
\n           therefore different considerations need to be applied.\n<\/p>\n
               43.      This  argument does not impress.  In so far as
\n           the  aforesaid  judgment cited by the  defendants  are
\n           concerned they have no application to the facts of this
\n           case.   In  all  those cases as well,  the  Courts  had
\n           accepted  the  applicability of the principle of  cross
\n           border  or  spill over reputation.  However,  what  was
\n           experienced in these cases was that in order to portray
\n           trans-  border reputation, it was necessary to place on
\n           record  sufficient  evidence in support thereof.   This
\n           would  be clear from the following observations in  the
\n           case of Smithline Beecham (supra):-\n<\/p>\n
                        “In  the  absence  of   any  evidence  of
\n                      goodwill  or any reputation, it cannot be
\n                      presumed  that the plaintiffs achieved  a
\n                      trans-border  reputation  prior   to  the
\n                      filing  of  the suit in respect of  their
\n                      tooth  brush,  no   injunction  could  be
\n                      granted  in favor of the plaintiff  even
\n                      in  respect  of OZETTE  manufactured  and
\n                      marketed  by  the   defendants  vis-a-vis
\n                      ACQUAFRESH   FLEX.    In   the  case   of
\n                      Whirlpool  reported in 1996 PTC 415 there
\n                      was  voluminous  evidence produced  which
\n                      were  circulated  in  India  for  several
\n                      years   and  the  goods   were  sold   to
\n                      Embassies  and  in  the context  of  such
\n                      evidence  this  court held that the  said
\n                      product achieved trans-border reputation.
\n                      No  such evidence has been placed in  the
\n                      present  case at least prior to 1996  and
\n                      even whatever evidence has been placed on
\n                      record  after  1996  the  same  does  not
\n                      establish  that the plaintiffs achieved a
\n                      trans-border  reputation.   In  order  to
\n                      prove    trans-border     goodwill    and
\n                      reputation  the  plaintiffs  have  relied
\n                      upon  materials  published in the  dental
\n                      journal   which  admittedly    has   very
\n                      restrict  circulation.  Mere  publication
\n                      of  such  advertisement and materials  in
\n                      dental  journal  cannot   and  would  not
\n                      establish   a   trans-border  reputation.
\n                      Such  reputation, if any, was confined to
\n                      a  particular  class of people i.e.   the
\n                      persons   subscribing   to    the    said
\n                      specialised  journals and cannot be  said
\n                      to  be extended to the general consumers.
\n                      It   could   not  be   shown   that   any
\n                      advertisement  was made by the plaintiffs
\n                      prior  to 1996 in any journal or magazine
\n                      having  wide circulation.  In absence  of
\n                      same  it is not possible to hold that the
\n                      tooth brush of the plaintiff acquired any
\n                      trans-border   reputation   and  goodwill
\n                      …”. <\/p><\/blockquote>\n
                 44.      Similarly  in the case of Gillette  Company
\n           (supra) this Court observed as under:-\n<\/p>\n
                        I  also  agree  with  the  submission  of
\n                      learned  counsel  for the defendant  no.2
\n                      that  the  plaintiffs have  not  produced
\n                      sufficient  material  on record to  claim
\n                      trans-border reputation in respect of the
\n                      product  in question and the observations
\n                      of this Court in the cases of The Proctor
\n                      and    Gamble    Company    (supra)   and
\n                      M\/s.Smithkline Beecham (supra) come handy
\n                      for the defendant no.2.” <\/p><\/blockquote>\n
               45.      However,  that  is  not the  position  in  the
\n           instant  case.   The plaintiff in the instant case  has
\n           produced  plethora of material indicative of world wide
\n           reputation  of its product VIAGRA.  Such evidence is in
\n           fact  to be found in various documents produced by  the
\n           defendants  themselves  and various admissions  of  the
\n           defendants contained in these documents brief reference
\n           whereof has already been given above.\n<\/p>\n
                 46.    I  do  not  agree with the submission  of  the
\n           defendants  that different yardstick have to be applied
\n           when  the  reputation or goodwill of the trade name  of
\n           the  product  which is involved is different  from  the
\n           name  or  mark  of the company\/corporation.   When  the
\n           action of passing off is complained of in relation to a
\n           product,  it  is the reputation of that  product  which
\n           would  be  the relevant consideration and  whether  the
\n           name  of the product is synonymous with the name of the
\n           company or not would be totally irrelevant.  Of course,
\n           this  aspect  may  have  bearing  on  the  question  of
\n           mis-representation or deceptive similiarity between the
\n           two products which is dealt with appropriately at later
\n           stage.\n<\/p>\n
47.  Thus  it  can  safely be  concluded  that  the
\n           plaintiff  Company enjoys world wide reputation in  the
\n           product  VIAGRA  and this reputation has  spilled  over
\n           within the boundaries of India as well.\n<\/p>\n
            3.       Whether  the  defendants product ‘PENEGRA’  is
\n                    deceptively and confusingly similar to that of
\n                    the  plaintiff’s VIAGRA?  OR Whether there  is
\n                    any   likelihood  of   confusion  between  the
\n                    plaintiffs  and  the defendants’ product  i.e.
\n                    whether   consumer  may   buy  the  defendants
\n                    product  PENEGRA under the impression that  it
\n                    is infact buying VIAGRA?\n<\/p>\n
              48.       This  fact hardly requires repetition that  we
\n           are  dealing  with the action in the realm  of  passing
\n           off.   It is not a case for infringement of trade  mark
\n           inasmuch  as the trade mark VIAGRA is not a  registered
\n           trade mark of the plaintiff in India.  In fact both are
\n           on  same  wavelength i.e.  the Court is dealing with  a
\n           case of passing off action.\n<\/p>\n
                49.     In  the case of Ruston & Hornsby Ltd.   versus
\n           The  Zamindara Engineering Company reported in 1970 (2)
\n           SCR  272,  the Apex Court brought out  the  distinction
\n           between  the infringement action and passing off action
\n           in the following words:-\n<\/p>\n
                       “The   action  for   infringement  is   a
\n                      statutory  right.   It is dependent  upon
\n                      the  validity  of  the  registration  and
\n                      subject  to other restrictions laid  down
\n                      in  ss.30, 34 and 35 of the Act.  On  the
\n                      other  hand,  the gist of a passing  off
\n                      action  is  that  A is  not  entitled  to
\n                      represent his goods as the goods of B but
\n                      it is not necessary for B to prove that A
\n                      did  this knowingly or with any intent to
\n                      deceive.   It is enough that the  get-up
\n                      of  B’s goods has become distinctive  of
\n                      them  and that there is a probability  of
\n                      confusion  between them and the goods  of
\n                      A.   No case of actual deception nor any
\n                      actual  damage need be proved.  At common
\n                      law  the  action   was  not  maintainable
\n                      unless  there had been fraud on A’s part.
\n                      In  equity, however, Lord Cottenham  L.C.
\n                      in  Millington v.  Fox* held that it  was
\n                      immaterial whether the defendant had been
\n                      fraudulent   or   not    in   using   the
\n                      plaintiff’s  trade  mark and  granted  an
\n                      injunction  accordingly.  The common  law
\n                      courts,  however,  adhered to their  view
\n                      that   fraud  was   necessary  until  the
\n                      Judicature  Acts,  buy   fusing  law  and
\n                      equity,  gave  the   equitable  rule  the
\n                      victory over the common law rule.\n<\/p><\/blockquote>\n
                      The  two  actions, however,  are  closely
\n                      similar   in  some   respects.   As   was
\n                      observed  by the Master of the Rolls,  in
\n                      Saville  Perjumery Ltd.  v.  June Perject
\n                      Ltd.**.\n<\/p><\/blockquote>\n
                       “The Statute law relating to infringement
\n                      of  trade  marks  is based  on  the  same
\n                      fundamental  idea as the law relating  to
\n                      passing  off.   But it differs from  that
\n                      law  in two particulars, namely (1) it is
\n                      concerned   only  with   one  method   of
\n                      passing-off,  namely, the use of a  trade
\n                      mark, and (2) the statutory protection is
\n                      absolute in the sense that once a mark is
\n                      shown  to offend, the user of it  cannot
\n                      escape  by  showing   that  by  something
\n                      outside  the  actual mark itself  he  has
\n                      distinguished his goods from those of the
\n                      registered  proprietor.  Accordingly,  in
\n                      considering  the question of infringement
\n                      the  Courts  have  held, and  it  is  now
\n                      expressly  provided  by the  Trade  Marks
\n                      Act,  1938  section 4  that  infringement
\n                      takes   p-lace   not   merely  by   exact
\n                      imitation  but  by the use of a  mark  so
\n                      nearly  resembling the registered mark as
\n                      to be likely to deceive.”\n<\/p><\/blockquote>\n
                      In  an  action for infringment where  the
\n                      defendant’s  trade mark is identical with
\n                      the  plaintiff’s mark, the Court will not
\n                      enquire  whether the infringement is such
\n                      as   is  likely  to   deceive  or   cause
\n                      confusion.    But  where    the   alleged
\n                      infringement  consists  of using not  the
\n                      exact mark on the Register, but something
\n                      similar  to it, the test of  infringement
\n                      is  the same as in an action for  passing
\n                      off.  In  other  words, the  test  as  to
\n                      likelihood  of  confusion   or  deception
\n                      arising  from similarity of marks is  the
\n                      same both in infringement and passing off
\n                      actions.”\n<\/p><\/blockquote>\n
50.                     In  the case of Ervin Warnik versus Towend and
\n           Sons  (Advocaat  case)  reported in 1979  AC  731  five
\n           characterstics  are laid down which must be present  in
\n           order  to  create a valid cause of action  for  passing
\n           off, viz:\n<\/p>\n
 i.  a misrepresentation,  <\/p>\n
                     ii. made by trade in the course of the trade,  <\/p>\n
                     iii.to   prospective  customers  of   his   or
\n           ultimate consumer of goods or services supplied by him,  <\/p>\n
                     iv.   which  is  calculated   to  injure   the
\n           business  or  goodwill of another trader (in the  sense
\n           that this is a reasonably foreseeable consequence), and  <\/p>\n
                     v.   which  causes  actual   damages  to   the
\n           business  or goodwill of the trader by whom the  action
\n           is brought or (in a quia timet action) will probably do
\n           so.\n<\/p>\n
   51.                  Before   dealing   with    the   question   of
\n           misrepresentation,  we  may have to deal  with  another
\n           incidental  question  which  may have bearing  on  this
\n           aspect viz.  whether the two products namely VIAGRA and
\n           PENEGRA  are  deceptively  similar.  After  all  person
\n           making  misrepresentation  may not succeed  unless  his
\n           product  is  deceptively similar to the  other  product
\n           when  attempt  is  made by that person to pass  on  his
\n           product as a product of the other.  Therefore, it would
\n           be  appropriate  to  first deal with  the  question  of
\n           similarity  and  or  deceptive similarity  of  the  two
\n           products.\n<\/p>\n
      52.               The  case  of the plaintiff on this aspect  of
\n           the  matter  is that the defendants have copied  almost
\n           all  the essential features of the plaintiff’s  product
\n           VIAGRA  while  launching  and marketing  their  product
\n           PENEGRA and in this respect it was emphasised that:-\n<\/p>\n
                     (a)  The word PENEGRA is phonetically  similar
\n           to the word VIAGRA;\n<\/p>\n
                     (b)  There is a similarity of the trade  dress
\n           comprising of colour and shape;\n<\/p>\n
                     (c)  Website of the plaintiff and that of  the
\n           defendant no.2 is also the same;\n<\/p>\n
         53.            These  features  have already  been  narrated
\n           above.   Elaborating  the same, it was argued  by  the
\n           learned  counsel for the plaintiff that the defendants
\n           were trying to point out artificial distinctions which
\n           were  of no consequence.  It was argued that the Court
\n           should  take  into  consideration  all  the  aforesaid
\n           similarities  cumulatively  which would establish  the
\n           malafides of the defendants in adopting the trade mark
\n           PENEGRA with similar trade dress.  The learned counsel
\n           for  the plaintiff emphasised that in order to mislead
\n           the  prospective consumers, the defendants adopted the
\n           name  which was almost similar\/phonetically similar to
\n           the  trade  name of the plaintiff’s product.  It  also
\n           adopted the same trade dress by copying the colour and
\n           shape  of  the plaintiff’s tablet namely, blue  colour
\n           with   diamond  shape  which   would  show   malicious
\n           intention in introducing its product.  The defendant’s
\n           advertisement  and  publicity,   while  launching  the
\n           product,  also  described  it as  ‘Indian  version  of
\n           VIAGRA’  thereby  making the consumer to believe  that
\n           VIAGRA  had launched its product in India in the  name
\n           of  PENEGRA.  Above all, it even launched a site  with
\n           the  domain name “www.penegra.org.” by copying several
\n           features     from     the      plaintiff’s     website
\n           “www.viagra.com”.   It was further argued that  merely
\n           because  the defendants had changed the colour of  its
\n           tablet  to pink and had discontinued its website would
\n           not have any effect on the merits of the case inasmuch
\n           as  it would rather prove the guilt of the  defendants
\n           in  the first place and establish that the  defendants
\n           admitted  that by adopting the colour of their  tablet
\n           as  blue and diamond shape and website copying similar
\n           features  the same would prove misleading the  public.
\n           It  would  further establish that the  defendants  had
\n           copied the website of the plaintiff in the first place
\n           and by use of the website they had successfully passed
\n           off  their product PENEGRA as that of the  plaintiff’s
\n           product   VIAGRA.   It  was   also  stated  that   the
\n           defendants had not given any explanation as to why the
\n           exact shape of diamond and blue colour were adopted in
\n           the  first  place.  It was further submitted that  the
\n           defendants  have  also not offered any explanation  on
\n           the  publicity material whereby repeated reference was
\n           given  to  VIAGRA  which   would  establish  that  the
\n           defendant had made an all out attempt to establish its
\n           trade  connection  with  the plaintiff.   The  learned
\n           counsel  concluded  this  aspect  of  the  matter   by
\n           submitting  that  the  matter  must be  taken  in  its
\n           entirety  and the situation as it existed on the  date
\n           of  filing  of  the Suit.  All aspect  taken  together
\n           conclusively  establish  dishonesty   with  which  the
\n           defendants  had acted and their agreeing to change the
\n           colour  and discontinue its website was indicative  of
\n           their dishonest intention.  Relying upon the judgment
\n           of  this  Court  in  Glenfidich  (supra)  the  counsel
\n           submitted  that  similar claim of making such  changes
\n           was  rejected  by this Court and the Court dealt  with
\n           the situation as it existed on the date of the Suit.\n<\/p>\n
             54.        Strongly  refuting the aforesaid submissions,
\n           the  learned counsel for the defendants, on the  other
\n           hand,  contended that since colour of PENEGRA had been
\n           changed  from  blue to pink and the website  also  had
\n           been  discontinued,  contention  in  this  respect  no
\n           longer  survived  for  the  purpose  of  interlocutory
\n           relief.   The counsel argued that it is unfair for the
\n           plaintiff  to  allege any admission of guilt from  the
\n           gesture of the defendants i.e.  in changing the colour
\n           of  the tablet from blue to pink and in  discontinuing
\n           the  web site.  Such a change was obviously  effected,
\n           as  an  interim measure and without prejudice  to  the
\n           rights  and  contentions of the  defendants.   Further
\n           more,  even  if  one were to proceed by  ignoring  the
\n           change  in  colour  and   the  discontinuance  of  the
\n           website,  the plaintiff would still not be entitled to
\n           any  relief.   The plaintiff cannot and does not  have
\n           any monopoly over the colour “blue” which is common to
\n           trade.   It is not and cannot be the plaintiff’s  case
\n           that the colour “blue”, as used in VIAGRA has acquired
\n           any  secondary  meaning.  In so far as the website  is
\n           concerned, the plaintiff does not own the website, nor
\n           is  the plaintiff as assignee of the copyright in  the
\n           website,  which is allegedly copied, and therefore  no
\n           cause of action accrues in favor of the plaintiff.\n<\/p>\n
                55.     It  was  also  submitted  that  there  is  no
\n           monopoly in shape.  There are many drugs in the market
\n           bearing the so called diamond shape.  Beside, assuming
\n           the  plaintiff’s  drug  is  in a  diamond  shape,  the
\n           defendants  drug  resembles  more an  ellipse  and  is
\n           anything  but resembling a diamond shape.  There is no
\n           evidence  that  by using blue colour or  adopting  the
\n           diamond shape, the said colour and shape have acquired
\n           a  distinctiveness or a secondary meaning.   Following
\n           judgments  were  cited  in support :- (i)  The  Boots
\n           Company  Ltd.   versus Approved Prescription  Services
\n           Ltd.   reported  in 1988 FSR 48;  (ii) Smith  Kline  &
\n           French  Laboratories  Ltd.   versus K.V.   Higson  t\/a
\n           Europharm reported in 1988 FSR 115.\n<\/p>\n
               56.      It  was further argued that trade dress  must
\n           be  a non-functional feature.  There is no pleading at
\n           all about what features would qualify for trade dress,
\n           and  if so, how that feature is non-functional.  There
\n           must  be  further pleading and evidence that the  said
\n           ‘trade  dress’  has acquired a secondary meaning.   In
\n           the   absence  of  any   pleading  or  evidence,  this
\n           contention  of  the plaintiff is wholly  misconceived.
\n           For  this  proposition  the defendants’  counsel  took
\n           shelter  of following case law:  (i) Paytons & Company
\n           versus  Snelling,  Lampard & Company reported in  1900
\n           (17)  RPC 48);  (ii) J.B.  Williams Company versus  H.
\n           Bronnley  &  Company  reported in 1909 (26)  RPC  481;\n<\/p>\n
           (iii)   Merchant  &  Evans   versus  Roosevelt   Bldg.
\n           Products reported in 963 F.2d 628 (iv) Duraco Products
\n           versus Joy Plastics Ent.  reported in 40 F.3d 1431.\n<\/p>\n
                 57.    In  so  far as the adoption of the trade  name
\n           PENEGRA  is concerned, the defendants submitted that it
\n           was not an imitative adoption of the trade mark VIAGRA.
\n           It  was also a coined word.  The defendants had adopted
\n           the  combination of ‘pene’ and ‘gra’ which described  a
\n           different  meaning altogether than the word VIAGRA,  as
\n           already  noted  above.  Therefore, the adoption of  the
\n           word  PENEGRA was their own innovation keeping in  view
\n           the  performance  for which the drug was introduced  by
\n           the  defendants.  It was also submitted that there  was
\n           no  question  of  phonetic similarity between  the  two
\n           rival  marks.  For this reliance was placed in the case
\n           of  Ruston  &  Hornsby Ltd.(supra)  wherein  the  Court
\n           brought  out  the distinction between  an  infringement
\n           action  and  a  passing  off action.  In  the  case  of
\n           F.Hoffman  versus Geoffrey Manners   the Court while laying down the tests  to  be
\n           applied  for  ascertaining  if  the  rival  marks  were
\n           deceptively  similar  or not, observed that it  is  not
\n           right  to take a portion of the word but that the marks
\n           must be compared as a whole.  The Court held that:-\n<\/p>\n
                        “the true test is whether the totality of
\n                      the  proposed trade mark is such that  it
\n                      is likely to cause deception or confusion
\n                      or  mistake  in  the   minds  of  persons
\n                      accustomed to the existing trade mark”\n<\/p><\/blockquote>\n
           58.          The   Court  held  that   DROPOVIT   was   not
\n           deceptively  similar  to  PROTOVIT  after  considering,
\n           inter  alia,  the non existence of the  possibility  of
\n           slurring  over in pronunciation.  In the instant case,
\n           VIAGRA  and  PENEGRA  whens  taken   as  a  whole,  are
\n           completely  dissimilar  and cannot be slurred  over  in
\n           pronunciation.   There  is  neither  any  phonetic  or
\n           visual similarity.\n<\/p>\n
              59.       The   defendants   also    relied   upon   the
\n           observations  of the Division Bench of the Madras  High
\n           Court  in  the  case of  Mount  Mettur  Pharmaceuticals
\n           versus  Dr.A.   Wander
\n           which reads as follows:-\n<\/p>\n
                        “the  possibility  of confusion is for  a
\n                      normal  buyer or even an unwary purchaser
\n                      and not for fools and idiots.”\n<\/p><\/blockquote>\n
 60.                    Learned   counsel  for   the  defendants  also
\n           submitted  that there were numerous cases in the  field
\n           of  pharmacy  and  medicinal preparations  as  well  as
\n           non-drug  cases where injunction were refused  although
\n           the  plaintiff  had  claimed  in  such  cases   alleged
\n           phonetic  similarity  which claim did not  find  favor
\n           with   the  Courts.   The   defendants  submitted   the
\n           following example of such case law:-\n<\/p>\n
                         INJUNCTION REFUSED IN DRUG CASES:-\n<\/p>\n
      BSR.NO. BPLAINTIFF’S PRODUCT   KDEFENDANT’S PRODUCTB CITATIONB<\/p>\n
         1.    FALCIGO                 FALCITAB\n<\/p>\n
         2.    UTOGYNOL                ORTHO-GYNOL\n<\/p>\n
         3.    LUMINDON                LUMINAL            1975 RPC
\n                                                          545 <\/span>\n<\/p>\n
         4.    DROPOVIT                PROTOVIT                   5.     LIV-52                  LIV-T            1997 PTC
\n                                                         540<\/span>\n<\/p>\n
         6.     DANOL                   DE-NOL           1979 RPC
\n                                                         1645<\/span>\n<\/p>\n
         7.     SORBILINE               SORBITONE        1989
\n                                                         IPLR 9\n<\/p>\n
         8.     ACTICEPH                ACTFIED          1992 IPLR
\n                                                         277<\/span>\n<\/p>\n
         9.     FRILEX                  PILEX                     10.    DEPRAZINE               DEPRANIL         1991 PTC
\n                                                         285 TMR\n<\/p>\n
         11.    LOMOTIL                 SLOTIL           1998 PTC
\n                                                         634<\/span>\n<\/p>\n
         12.    DOLOGEL                 DONNAGEL         2000 PTC
\n                                                         60<\/span>\n<\/p>\n
         13.    SPASMO FLEXON           SPASMO PROXYVON  2001 PTC
\n                                                         139<\/span>\n<\/p>\n
         14.    ANAFRIL                 CHLOROFANIL      1997 PTC
\n                                                         364 SC\n<\/p>\n
         15.    NIMULID                 REMULIDE         1996 PTC
\n                                                         561<\/span>\n<\/p>\n
         16.    TRIVEDON                FLAVEDON         1977 PTC
\n                                                         355<\/span>\n<\/p>\n
         17.    MEXATE                  ZEXATE           1997 PTC
\n                                                         417<\/span>\n<\/p>\n
         18.    MENSCUROL               MENSCUREL        1996 PTC
\n                                                         501 DEL\n<\/p>\n
         19.    COMPLAMINA              CIPLAMINA        1984 PTC
\n                                                         81 BOM\n<\/p>\n
         20.    THEOMIDON               THEOMINAL        1975 RPC
\n                                                         545<\/span>\n<\/p>\n
         21.    CAL U TEST              …TEST          1969 FSR
\n                                                         39<\/span>\n<\/p>\n
         22.    MOTRATE                 FILTRATE         1920(37)
\n                                                         RPC 37\n<\/p>\n
         23.    Y-TO                    RITO             1919(36)
\n                                                         RPC 296\n<\/p>\n
         24.     DIASIL                 ALASIL           1947 (64)
\n                                                         RPC 125\n<\/p>\n
         25.     VIVICILLIN             CYLLIN           1947 (64)
\n                                                         RPC 119\n<\/p>\n
         26.     SEDA SELTZER           ALKA SELTZER     1948 (65)
\n                                                         RPC 342\n<\/p>\n
         27.     LIPICARD               LIPICOR          2001 PTC
\n                                                         601 (DEL)\n<\/p>\n
         28.     RECLOR                 CURECHLOR\n<\/p>\n
         29.     FLAVEDON               TRIVEDON         1998 PTC
\n                                                         671<\/span>\n<\/p>\n
         30.     ZUPAR                  BUPAR            1997 PTC
\n                                                         794<\/span>\n<\/p>\n
         31.     ASTHMIX                ASMAC\n<\/p>\n
         ———————————————————\n<\/p>\n
                       INJUNCTION REFUSED IN NON DRUG CASES:-\n<\/p>\n
       ————————————————————-
\n        SR.NO. BPLAINTIFF’S PRODUCT  KDEFENDANT’S PRODUCTBCITATION\n<\/p>\n
       ————————————————————-\n<\/p>\n
       1.     SECURITY MANAGEMENT MANAGEMENT TODAY  1991 FSR 348
\n              TODAY                                     <\/p>\n
       2.     BLAZER            YARDLEY ENGLISH  1992 FSR 501
\n                                BLAZER<\/p>\n
       3.     GALA              GALA OF LONDON   1991 FSR 294<\/p>\n
       4.     SEARS             SEARS ALCOT      1998(1) ARB LR 72                                                                 [ <\/p>\n
       5.     BUDWEISER         BUDWEISER        1984 FSR 413<\/p>\n
       6.     CRAZY HORSE       CRAZY HORSE      1967 RPC 581<\/p>\n
       7.     AMWAY             EURWAY          1974 RPC 82<\/p>\n
       8.     GLUCO             GLUCO GOLD   1998 (2) ALR 583<\/p>\n
       9.     SUN CRUISER 2001  GOLDEN CRUISER
\n                                1200             1997 PTC 64 DEL<\/p>\n
       10.    SAFEGAURD         SAFEGAURD    1996 PTC 78 DEL<\/p>\n
       11.    MICROTEL          MICRONIX    1994 SUPP(3) SCC 215                                                               [ <\/p>\n
       12.    POLAROID          SOLAVOID           1977 RPC 1<\/p>\n
       13.    POLAROID          POL RAMA           1977 RPC 581<\/p>\n
       14.    COCA COLA         PEPSI COLA         59 RPC 127<\/p>\n
       15.    SKINDEW           SKINDEEP           1960 RPC 229<\/p>\n
       16.    FRIGIKING         THERMOKING         1973 RPC 739<\/p>\n
       17.    ADVOCAAT          KEELING’S OLD       1979 AC 731
\n                                ENGLISH ADVOCAAT    <\/p>\n
       18.    CASTROL            BESTROL          1996 SUPP ALR 170<\/p>\n
       19.    ACE BRAND          AGE                1976 FSR 256<\/p>\n
       20.    FLEX               AQUAFRESH FLEX     2000 PTC 83<\/p>\n
       21.    CENTRE ICE         CENTRE ICE         53 CPR (3d) 34<\/p>\n
       22.    HOME BOX OFFICE    CHANNEL 5 HOME     1982 FSR 449
\n                                 BOX OFFICE          <\/p>\n
       23.    KEM                KIM               1992 FSR 1<\/p>\n
       24.    IVY                IVORY             17 RPC 689<\/p>\n
       25.    NEWSWEEK           NEWSWEEK         1979 RPC 441<\/p>\n
       26.    NEIGHBOURS         NEIGHBOURS<\/p>\n
       27.    TRIPCASTROID       CASTROL          1925 VOL.42 264<\/p>\n
       28.    B.K.               B.K. 81          1985 PTC 1<\/p>\n
       29.    COCA COLA          KOALA KOLA       1968 SLT 353<\/p>\n
       30.    RITO               Y-TO             1919(36) RPC 296<\/p>\n
       31.    TURBOD             GO TUROBO        24 CPR (3d) 1<\/p>\n
       32.  PAPER MATE FLEXGRIP   EKCO FLEXGRIP   2001 PTC 513 DEL   <\/p>\n
    61.                 Learned   counsel  for   the  defendant   also
\n           submitted  that  suffix  ‘gra’ which  was  only  common
\n           factor  in the two words, was not unique to the product
\n           of  the plaintiff.  This suffix ‘gra’ was commonly used
\n           in  naming  drugs.   In support it was  submitted  that
\n           searches  conducted  at  the US Patent and  Trade  mark
\n           Office  for  trade  marks  containing  the  suffix  gra
\n           clearly  establishes  that number of drugs on the  Like
\n           Register  use  this  suffix   e.g.   PANAGRA,   VYAGRA,
\n           INTEGRA,  ALLEGRA,  ENTEGRA, TIAGRA,  VIGRA,  PENTEGRA,
\n           etc.\n<\/p>\n
62. The  defendants also relied upon the judgment
\n           of  J.R.   Kapoors  versus Micronix  reported  in  1994
\n           (Supp)  3 SCC 215 wherein the Court held that  Microtel
\n           was   not  phonetically  similar   to  Micronix.    The
\n           following  cases  were also cited where  common  prefix
\n           and\/or common suffix was held not sufficient to justify
\n           grant  of  injunction:    Spasmo-Flaxon  versus  Spasmo
\n           Proxygen reported in 2001 PTC 139 (SC), Flavedon versus
\n           Trivedon reported in 1997 PTC 355, Mexate versus Zecate
\n           reported  in  1997  PTC   417,  Lomotil  versus  Slotil
\n           reported  in 1998 (2) ALR 576 and the case of  Asthamix
\n           versus Asmac .\n<\/p>\n
            63.         In  rejoinder  refuting these argument of  the
\n           defendants,  the  learned  counsel  for  the  plaintiff
\n           submitted   that  it  was   not  permissible  for   the
\n           defendants  to split the two composite marks VIAGRA and
\n           PENEGRA  and  deal  with  them in  piecemeal.   It  was
\n           totally  misconceived on the part of the defendants  to
\n           try  to  establish that the plaintiff could  not  claim
\n           exclusivity  to  the term ‘gra’ by submitting that  the
\n           first  syllable ‘via’ and ‘pene’ are totally different.
\n           He  submitted that a similar attempt was unsuccessfully
\n           made  in  the case of Amritdhara  versus  Lakshmandhara
\n           (supra)  wherein  the Supreme Court had held that  what
\n           has  to be seen is the overall similarity.  Holding the
\n           marks  to be deceptive did not mean that anybody had  a
\n           monopoly  over  ‘dhara’.  The Supreme Court upheld  the
\n           observation of the House of Lords while finding ARISTOC
\n           and RYSTA to be deceptively similar.\n<\/p>\n
           64.          It  was  also submitted that  the  defendant’s
\n           reliance  upon the use of other ‘gra’ ending marks like
\n           SYLAGRA,  ADEGRA, etc.  was of no consequence  inasmuch
\n           as  in order to establish that a mark had become common
\n           to  the  trade,  the  defendants  would  have  to  lead
\n           extensive  evidence of third party marks as was held by
\n           the  Supreme Court in the case of National Bell Company
\n           versus Metal Good Manufacturing Company   and the case of Kaul  Products  Refining
\n           Company  versus Shangrila Food Products .\n<\/p>\n
             65.        I  have  considered the rival  submissions  on
\n           this  aspect.  In so far as the question of  similarity
\n           in  trade dress is concerned one need not deal with the
\n           arguments  on  either side inasmuch as  the  defendants
\n           have  changed the colour of their tablet to pink.   The
\n           defendant’s  tablet  is also not exactly diamond  shape
\n           but  resembles more an ellipse.  Therefore there exists
\n           a marked difference as of today.\n<\/p>\n
         66.            So  far as alleged phonetic similarity in  the
\n           two  trade marks VIAGRA and PENEGRA is concerned,  both
\n           the  parties  have cited number of cases in support  of
\n           their  rival contentions.  Whether the two trade  marks
\n           are  phonetically  similar or not is relevant only  for
\n           the  purpose  of  embarking upon the enquiry  that  the
\n           defendant’s  mark  would  cause or is likely  to  cause
\n           deception  or  confusion  or  mistake in  the  mind  of
\n           persons.   Therefore,  it  would   be  appropriate   to
\n           immediately  proceed to discuss this question,  namely,
\n           whether  the defendant is making misrepresentation  and
\n           thereby attempting to confuse the general public.  This
\n           misrepresentation has to be of a nature which shows the
\n           intention of the defendants to pass on their product as
\n           that   of   the  plaintiffs   and  further  that   such
\n           misrepresentation  is likely to create confusion in the
\n           mind  of  the public who would buy the product  of  the
\n           defendant  believing  the  same  to   be  that  of  the
\n           plaintiff.\n<\/p>\n
            67.         It is not in dispute that the drug in question
\n           is  sildenafil citrate.  It is also not in dispute that
\n           it  is  a generic drug for which the plaintiff  has  no
\n           monopoly.   Sildenafil  citrate  is   a  single  active
\n           ingredient  Chemical  compound  consisting  of  certain
\n           elements  :   carbon  (C), hydrogen  (H),  oxygen  (O),
\n           Nitrogen  (N) and Sulphur (S).  The drug was well known
\n           though  out  the  world for its use as a  treatment  of
\n           angina,  that  is chest pain caused by the blocking  of
\n           blood  vessels  that lead to the heart.   Accidentally,
\n           its  use for the treatment of ED was discovered.  There
\n           is  nothing  new or novel or special about this drug  –
\n           sildenafil citrate.\n<\/p>\n
          68.           Thus  both the plaintiff and the defendants or
\n           any  other  third party has a right to use the  drug  –
\n           sildenafil citrate.  It is not in dispute.\n<\/p>\n
                     It is also an admitted fact that the plaintiff
\n           has  not launched its product in India so far.  It  has
\n           no  business  in  India.   It has  not  advertised  its
\n           product  in  India.   Therefore,  although  the  Indian
\n           public  may  know about the ‘wonder drug – VIAGRA’  and
\n           its  use,  most  of  the  people  would  not  have  any
\n           knowledge  about  its trade dress.  Most of the  people
\n           would  not have seen this drug.  It could be that  some
\n           of  the  Indians while going abroad would  have  bought
\n           this  drug or some may have bought the same in the grey
\n           market  in  India  as claimed by the  plaintiff  (which
\n           Of course is denied by the defendants on the ground that
\n           no  such evidence in support of this claim is  produced
\n           except  some newspaper reports which would not have any
\n           evidentiary value).  Persons belonging to such category
\n           would,  however,  be marginal and  insignificant,  when
\n           compared to the vast segment of people requiring and\/or
\n           in  need of this drug.  In any case even those  persons
\n           who have read the description of VIAGRA as blue diamond
\n           shape  tablet (without seeing the same) would now  have
\n           the  defendant’s  drug in totally different colour  (it
\n           being  changed  to  pink).    Therefore,  the   alleged
\n           confusion,  if  any, on this ground does  not  survive.
\n           Therefore,  this  trade  dress  may   not  be  of  much
\n           consequence    while   examining     the   aspect    of
\n           “misrepresentation”.\n<\/p>\n
           69.          The  question therefore is as to whether while
\n           buying  the  drug PENEGRA the public would be  confused
\n           and  would buy this product believing it to be VIAGRA ?
\n           I  do  not think so.  There are number of  reasons  for
\n           this opinion:-\n<\/p>\n
                     (a)  Although while launching the product  the
\n           defendant  has  claimed  it  as  ‘  Indian  version  of
\n           VIAGRA’,  what is sought to be conveyed is the  purpose
\n           of  this  drug.  As VIAGRA was very well known for  its
\n           purpose  at  the time of its launch the defendants  may
\n           have  thought  that  it would be easy  to  educate  the
\n           prospective   consumers   about   the  usefulness   and
\n           performance of this drug by identifying it with VIAGRA.
\n           However, by no means a representation was made that the
\n           defendants’  product PENEGRA was infact VIAGRA and  was
\n           launched  in India under a different name.  Any  person
\n           buying  the drug with the name PENEGRA would know  that
\n           he  is  not  buying VIAGRA.  He would  know  that  same
\n           product  is now produced in India.  It would be foolish
\n           on  his part to believe that this Indian product  would
\n           have  some  therapeutic  value or quality  as  that  of
\n           VIAGRA.   He would buy it consciously knowing that this
\n           product  is now produced in India by an Indian Company.
\n           After  all  even  the plaintiff has  not  produced  any
\n           evidence,  not even in the form of affidavit, either of
\n           the  doctors or the chemists or consumers to show  that
\n           the  defendants had made any misrepresentation or  they
\n           are  selling  their product as that of the  plaintiff’s
\n           product.   There  is  no  evidence  to  show  that  any
\n           consumers  have bought the defendant’s product thinking
\n           it to be VIAGRA.\n<\/p>\n
                     (b) Such a confusion would not be there, prima
\n           facie,  keeping in view the price of the two  products.
\n           This is well known that the plaintiff’s product is sold
\n           at  $10  (= Rs.500\/-) per tablet while the  defendant’s
\n           product  is  priced  at Rs.18\/- per  tablet.   Consumer
\n           would  not be a fool to believe that he is given VIAGRA
\n           at  such  a low price when the international  price  of
\n           that drug is exorbitantly much higher.\n<\/p>\n
                     (c)  The  likelihood of confusion is also  not
\n           there  because of the different names.  The case of the
\n           plaintiff,  after all, is that the consumer may believe
\n           that  it is the Indian version of VIAGRA i.e.  what  is
\n           known  as VIAGRA in other countries is sold in India as
\n           PENEGRA  by the defendants.  This argument ignores  the
\n           ground  realities  and   the  prevailing  international
\n           market  conditions.   India is an open economy.  It  is
\n           now  welcoming  foreign  direct  investments  and  also
\n           entertaining  multi-nationals  in this country  as  the
\n           world  is  becoming one global market.  If, in  such  a
\n           scenario  the plaintiff has to introduce and market its
\n           product in India, it would naturally introduce with the
\n           same name VIAGRA and not by different name PENEGRA.  It
\n           is  more so when this product of the plaintiff with its
\n           name  VIAGRA  enjoys  world wide reputation.   Why  the
\n           plaintiff  would  forsake and give up its reputed  name
\n           and  launch  the product in India with  different  name
\n           PENEGRA?    Not  much  intelligence   is  required   to
\n           understand  this simple fact.  Therefore, there may not
\n           be  any likelihood of confusion in the mind of a  buyer
\n           while  purchasing PENEGRA, believing that he has infact
\n           purchased plaintiff’s VIAGRA.\n<\/p>\n
                     (d) The drug in question is a schedule H drug.
\n           Such  a  drug  is not to be normally  sold  across  the
\n           counter.  It has to be sold by the chemists only on the
\n           prescription  of  a  urologist,  endocrinologist  or  a
\n           psychiatrist.   In  such  a   situation  what  kind  of
\n           misrepresentation  can be made by the defendants to the
\n           consumer is beyond comprehension.\n<\/p>\n
            70.         Nodoubt  judicial notice of the fact that  can
\n           be  taken  note  is that in a country like  India  even
\n           schedule  H  drugs  are  sold across  the  counter  and
\n           without the prescription of a doctor.  This is what the
\n           Supreme  Court  has  emphasised in the case  of  Cadila
\n           Health  Care  Ltd.  versus Cadila Pharmaceuticals  Ltd.
\n           reported in 2001 PTC 300 (SC) = JT 2001 (4) SC 843 :-\n<\/p>\n
                      “The  drugs  have a marked difference  in
\n                    the    compositions     with   completely
\n                    different  side effects, the test  should
\n                    be applied strictly as the possibility of
\n                    harm resulting from any kind of confusion
\n                    by  the  consumer can have unpleasant  if
\n                    not  disastrous results.  The courts need
\n                    to  be  particularly vigilant  where  the
\n                    defendant’s drug, of which passing off is
\n                    alleged,  is  meant for curing  the  same
\n                    ailment  as the plaintiff’s medicine  but
\n                    the  compositions  are   different.   The
\n                    confusion  is  more likely in such  cases
\n                    and  the incorrect intake of medicine may
\n                    even  result  in  loss of life  or  other
\n                    serious health problems.” <\/p><\/blockquote>\n
                71.     However,  the reasons given above sufficiently
\n           portray that there is no likelihood of confusion in the
\n           instant   case  and  inter   alia  made  the  following
\n           observation:-\n<\/p>\n
                        “As  far  as present case  is  concerned,
\n                      although  both  the drugs are sold  under
\n                      prescription  but this fact alone is  not
\n                      sufficient  to prevent confusion which is
\n                      otherwise  likely  to occur.  In view  of
\n                      the    varying      infrastructure    for
\n                      supervision of physicians and pharmacists
\n                      of  medical profession in our country due
\n                      to  linguistic,  urban,   semi-urban  and
\n                      rural  divide across the country and with
\n                      high   degree  of   possibility  of  even
\n                      accidental negligence, strict measures to
\n                      prevent   any  confusion   arising   from
\n                      similarity  of marks among medicines  are
\n                      required to be taken.”\n<\/p><\/blockquote>\n
           72.          However,  when we examine the present case  it
\n           would  be seen that the prospective buyer in this  case
\n           would  fall  in  either  of the  two  categories  –  an
\n           educated  and  well informed consumer or an  illiterate
\n           and  unwary  consumer.   As far as  consumer  of  first
\n           category  is concerned, there would not be any question
\n           of  deception  in  his  case.    He  fully  knows   the
\n           difference  between  VIAGRA and PENEGRA.  He cannot  be
\n           befooled  by the chemist that PENEGRA is infact  VIAGRA
\n           and marketed by the plaintiff under different name.  So
\n           far  as  consumer  belonging  to  second  category   is
\n           concerned  he would go to a chemist to buy aphordiasics
\n           and  would demand such a medicine which may enhance his
\n           sexual;   performance.   Such a person would  not  know
\n           what  is VIAGRA or for that matter what is PENEGRA.  He
\n           would  rely  upon chemist for the  particular  medicine
\n           after  telling him the purpose.  Therefore, there is no
\n           case  of confusion in this case also i.e.  it cannot be
\n           said that he would be made to believe that he is buying
\n           VIAGRA  under  the changed name PENEGRA when he has  no
\n           knowledge  about  the product VIAGRA as well.  Thus  in
\n           either case the likelihood of confusion is ruled out.\n<\/p>\n
         73.            (e)  Infact the question of confusion could be
\n           there  had both the products namely, VIAGRA and PENEGRA
\n           were  marketed and available in India.  Only in such  a
\n           case there would be a cause of confusion since a person
\n           knowing  fully well about the VIAGRA i.e.  blue diamond
\n           shaped  tablet  would be led to believe that  the  blue
\n           diamond  shaped tablet being purchased by him is VIAGRA
\n           as there is alleged phonetic similarity and trade dress
\n           is same.  When the plaintiff’s product is not available
\n           in  India  the question of confusion would  not  arise.
\n           The  plaintiff’s own argument is that the chemist  tend
\n           to  pass off PENEGRA as desi VIAGRA and this is  dubbed
\n           as misrepresentation.  However, the moment the consumer
\n           is told that instead of dispensing VIAGRA its so called
\n           ‘desi  version’ is dispensed with, the customers  would
\n           immediately know that he is not getting VIAGRA but only
\n           Indian  equivalent thereto.  The representation of  the
\n           chemist,  as  per  the  case put up  by  the  plaintiff
\n           itself,  is  that it is the Indian version  of  VIAGRA.
\n           Thus,   it  is  not   “misrepresentation”  and   rather
\n           representation  of a “fact” that what was sold was  not
\n           VIAGRA but its local equivalent.\n<\/p>\n
            74.       In  the  context  of aforesaid  discuasion  it
\n           cannot  be  said  that  the   adoption  of  PENEGRA  is
\n           imitative  adoption  of VIAGRA with purpose to  confuse
\n           the  very  buyer.  At this stage one may refer  to  the
\n           case  of  Cadbury-Schweppes Pty.  Ltd.  versus the  Pub
\n           Squash Company Ltd.  reported in (1981) RPC 429 wherein
\n           the Privy Council approved the Supreme Court’s decision
\n           and  while  rejecting  a case of passing off,  held  as
\n           follows:-\n<\/p>\n
                      “Once  it is accepted that the judge  was
\n                      not   unmindful  of    the   respondent’s
\n                      deliberate  purpose (as he found) to take
\n                      advantage  of the appellants’ efforts  to
\n                      develop   “Solo”,  the   finding  of  “no
\n                      deception”  can  be  seen   to  be   very
\n                      weighty,   for   he    has   reached   it
\n                      notwithstanding   his    view    of   the
\n                      respondent’s  purpose.   But it  is  also
\n                      necessary  to bear in mind the nature of
\n                      the purpose found by the judge.  He found
\n                      that  the  respondent   did  sufficiently
\n                      distinguish  its goods from those of  the
\n                      appellants, the intention was not to pass
\n                      off  the  respondent’s goods as those  of
\n                      the  appellants but to take advantage  of
\n                      the  market developed by the  advertising
\n                      campaign  for  “Solo”.  Unless it can  be
\n                      shown  that  in so doing  the  respondent
\n                      infringed  “the (appellants’)  intangible
\n                      property   rights”   in    the   goodwill
\n                      attaching  to their product, there is  no
\n                      tort.   For  such   infringement  is  the
\n                      foundation of the tort.” <\/p><\/blockquote>\n
               75.    The  learned counsel relied upon the judgment
\n           in  the  Gluvita case (supra) for the proposition  that
\n           “it  is  well known that the question whether  the  two
\n           marks  are  likely to give rise to confusion or not  is
\n           the  question of first impression.  It is for the Court
\n           to  decide that question”.  He also submitted that this
\n           test  was  reiterated  by  the  Supreme  Court  in  the
\n           Dropovit  case  .   His
\n           further submission was that in view thereof no evidence
\n           in  the  form of affidavit from any doctor, chemist  or
\n           consumer was required as it was for the Court to decide
\n           the  question  on first impression.  The test was of  a
\n           person who is familiar with only one mark and therefore
\n           there  was  no  question of filing evidence of  such  a
\n           person.   He  also  relied   upon  the  Division  Bench
\n           judgment   of  this  Court  in   the  case   of   B.K.
\n           Engineering  Company  versus Ubhi Express  reported  in
\n           1985  PTC 1 wherein the Court held that judge must  not
\n           surrender  his own judgment to any witness whatsoever.
\n           Various   other  judgment  in   support  of  the  same
\n           proposition was relied upon.  There is no dispute about
\n           the law laid down in the aforesaid judgments i.e.  the
\n           exercise  done above by this Court in the instant  case
\n           and  for the reasons stated above, the Court is of  the
\n           opinion that there is no likelihood of confusion.\n<\/p>\n
             Question :   4  –  Whether the  plaintiff  has
\n                    filed the present Suit and application for
\n                   ad interim injunction belatedly and is not
\n                    entitled  to injunction because of alleged
\n                    laches and delays?\n<\/p>\n
               Question :   5  –  Whether the  plaintiff  has
\n                    satisfied  the  conditions  for  grant  of
\n                    injunction  as required under Order  XXXIX
\n                    Rules  1  and  2  of  the  Code  of  Civil
\n                    Procedure  read  with provisions of  Trade
\n                    and Merchandise Marks Act?\n<\/p>\n
            76.       It  may  be pointed out at this juncture  that
\n           the  principles  laid  down in  various  judgments  in
\n           passing  off  action which were quoted at the  Bar  are
\n           being  kept  in  mind.  One may, however,  refer  to  a
\n           recent  land-mark judgment of the Supreme Court in the
\n           case   of  Cadila  Health   Care  Ltd.   versus  Cadila
\n           Pharmaceuticals  (supra)  wherein the Court  emphasised
\n           that  the following factors are to be considered in  an
\n           action  of  passing  off on the basis  of  unregistered
\n           trade  mark,  generally  for deciding the  question  of
\n           deceptive similarity:-\n<\/p>\n
             a)     The  nature of the marks i.e.  whether  the
\n                       marks  are  word  marks or label  marks  or
\n                       composite marks, i.e.  both words and label
\n                       works.\n<\/p>\n
               b)     The  degree  of  resembleness  between  the
\n                       marks,  phonetically  similar   and   hence
\n                       similar in idea.\n<\/p>\n
               c)     The nature of the goods in respect of which
\n                       they are used as trade marks.\n<\/p>\n
               d)     The similarity in the nature, character and
\n                       performance  of  the  goods  of  the  rival
\n                       traders.\n<\/p>\n
               e)     The  class  of purchaser who are likely  to
\n                       buy  the  goods  bearing   the  marks  they
\n                       require,    on    their    education    and
\n                       intelligence  and a degree of care they are
\n                       likely  to  exercise in  purchasing  and\/or
\n                       using the goods.\n<\/p>\n
               f)     The mode of purchasing the goods or placing
\n                       orders for the goods, and  <\/p>\n
               g)     Any  other surrounding circumstances  which
\n                       may   be   relevant  in   the   extent   of
\n                       dissimilarity between the competing marks.\n<\/p>\n
              77.      Weightage  to  be  given  to  each  of  the
\n                       aforesaid  factors  depends upon  facts  of
\n                       each  case and the same weightage cannot be
\n                       given to each factor in every case.\n<\/p>\n
           78.        There   are  other   compelling  factors   and
\n           circumstances,  apart  from the aforesaid  prima  facie
\n           view regarding non misrepresentation and non confusion,
\n           which  may  persuade  this Court not to  grant  any  ad
\n           interim injunction in this matter.  These are:-\n<\/p>\n
                I.   As  noticed  above,  on  more  than   one
\n           occasion  which needs repetition, the plaintiff has not
\n           shown his presence in Indian market.  Infact as per the
\n           petitioner’s own showing the plaintiff has no intention
\n           in  introducing  its  product  in  India  in  immediate
\n           future.   The  reason given is that India is still  not
\n           prepared for this drug and that the launch of this kind
\n           of  drug  in  any market requires  enormous  amount  of
\n           investment  which has not been done by the plaintiff in
\n           India  so far.  When the plaintiff has not launched its
\n           product  in  India  nor  has any  intention  to  do  so
\n           imminently,  why in these circumstances, the  plaintiff
\n           was concerned about the introduction of the defendant’s
\n           product  PENEGRA  in the Indian market?  What  was  the
\n           damage which the plaintiff was likely to suffer because
\n           of  the presence of PENEGRA in the Indian market  which
\n           the  plaintiff had consciously chose not to tread?  The
\n           only answer given was that it would cause damage to the
\n           reputation  of  the  plaintiff’s   product  and   name.
\n           Learned counsel for the plaintiff’s submission was that
\n           the  defendant’s  product  was not  under  the  quality
\n           control  of the plaintiff.  If the consumers  associate
\n           the defendant’s product with that of the plaintiff, the
\n           damage  was imminent.  It is not a convincing argument.
\n           Not only it pre-supposes that the defendants product is
\n           being  sold  as  plaintiff’s  product  (which  argument
\n           already  stands  repelled),  it further  presumes  that
\n           there  are  going  to be adverse effects of  using  the
\n           defendants’ product for which the plaintiff may be held
\n           responsible.   Such a presumption militates against the
\n           provisions  of  the Drug and Cosmetics Acts and  Rules.
\n           The   argument  would  prove   damp-squib  once  it  is
\n           acknowledged  that  in  view of the provisions  of  the
\n           aforesaid  Act and Rules prior to the launching of  the
\n           product,  government’s  permission  was  necessary  and
\n           which was duly obtained by the defendants.  Before such
\n           permission  could be given certain clinical trials  are
\n           to be undertaken which is a statutory requirement.  The
\n           extent of clinical trials is dependant upon the fact as
\n           to whether the drug is approved and marketed elsewhere,
\n           in  which  case  limited clinical trials on  a  hundred
\n           patients   in   India  is    necessary   to   establish
\n           bio-equivalence.   The  defendant no.2 had carried  out
\n           such  clinical  trials and demonstrated  the  necessary
\n           bio-equivalence.   It is only thereafter that the  Drug
\n           Controller  gave  license  to  the  defendant  no.2  to
\n           manufacture and market the product in question.  It was
\n           explained by the learned counsel for the defendant no.2
\n           that  before introducing any new product in the  Indian
\n           market, a manufacturer has to comply with the following
\n           provisions   of,  and  has  to  obtain  the   following
\n           permissions,  under  the  Drugs  and  Cosmetics  Rules,
\n           1945:-\n<\/p>\n
        i.       Schedule-M   lays  down   good   manufacturing
\n                    practices, and requirements of premises, plant
\n                    and  equipment  to  be   complied  with   for
\n                    obtaining   a   license    for   manufacturing
\n                    facilities for manufacturing any drug.\n<\/p>\n
          ii.      Schedule-U  lays down particulars to be  shown
\n                    in the manufacturing records.\n<\/p>\n
          iii.     Schedule-U,  Part-III lays down particulars to
\n                    be  recorded  in the analytical report:   5(e)
\n                    disintegration   test  and   5(g)  assay   and
\n                    toxicity   test    have    been   specifically
\n                    mentioned.\n<\/p>\n
          iv.      Schedule-V  lays down standards for patent and
\n                    proprietary  medicines (Definition of ready to
\n                    use medicine is that which is not specified in
\n                    Indian  Pharmacopoeia  or any other  prescribed
\n                    Pharmacopoeia  Sec-3(h)  (Drugs and  Cosmetics
\n                    Act, 1940)   <\/p>\n
                   II.   Not  only  this   the  plaintiff’s   own
\n           reaction  in  the first instance, after coming to  know
\n           that  the  defendant  and some other  manufacturers  in
\n           India  were  launching  sildenafil  citrate  drug,  was
\n           contrary  to what is projected now.  The plaintiff  now
\n           apprehends  imminent danger of damage to its reputation
\n           because  of the launching of the products by the Indian
\n           companies  including  the   defendants.   However,  its
\n           Vice-President,   Mr.S.   Ramakrishna   had  given   an
\n           interview  singing  altogether a different  tune.   The
\n           relevant portion of his interview as appeared in one of
\n           the publications quotes him saying as under:-\n<\/p>\n
                      “And  the  clones Viagra has  spawned  in
\n                      India  do not worry the Company.  We  are
\n                      not  perturbed by the launch of  Viagra’s
\n                      clones  in  the Indian market.   It  will
\n                      never  be  too late for us to launch  the
\n                      original Viagra in India”. <\/p><\/blockquote>\n
                   How  the  plaintiff  now pretends that  it  is
\n          going to suffer loss of reputation is indigestible.\n<\/p>\n
                   III.   In this context it would also be apt to
\n           note  that in fact the plaintiff had come to know about
\n           the launching of the product by the defendant no.2 even
\n           when  the defendant no.2 was doing clinical trials  and
\n           contemplating  move to launch its product.  It  neither
\n           chose  to enter the Indian market (and rather chose  to
\n           wait)  nor  was perturbed by the introduction  of  such
\n           products in the Indian markets by Indian companies.  On
\n           the  other hand, the defendant no.2 made investments in
\n           conducting  clinical  trials and obtaining the  license
\n           from  the Drug Controller and thereafter in  developing
\n           the  market.  The plaintiff allowed the defendant  no.2
\n           to  flourish.   The defendant no.2 in the process  made
\n           further  investments for development of the market  for
\n           its  drug  by advertising for the same.  The  defendant
\n           no.2  was considering the name PENEGRA for its  product
\n           as far back as on 1st August, 1998 as is clear from the
\n           documents  filed  by it.  Its products hit  the  Indian
\n           market  on  9th January, 2001 when government  approval
\n           was  given.   The present Suit was filed in June  2001.
\n           In  the  meantime,  the  sales of the  product  of  the
\n           defendant no.2 saw quantum jump within six months si.e.
\n           by June 2001 when the Suit was filed, the sales touched
\n           the figure of Rs.80 lakhs.\n<\/p>\n
                   Much was argued by either side on this delayed
\n           filing  of the Suit by the plaintiff.  According to the
\n           defendants  in  such circumstances the plaintiff  would
\n           not be entitled to injunction for approaching the Court
\n           belatedly  and  number  of  judgments  were  cited  in
\n           support  of  this proposition.  On the other hand,  the
\n           learned  counsel  for the plaintiff submitted that  the
\n           delay  would  not be fatal and if the plaintiff  had  a
\n           good  case  warranting  injunction  the  plaintiff  was
\n           entitled  to  the  same  notwithstanding  this  alleged
\n           delay.   It  is  not  necessary   to  deal  with  these
\n           judgments  cited  by  both the sides on  this  aspect.
\n           Suffice  is  to state that this factor would  weigh  in
\n           favor  of  the defendants when other factors  examined
\n           above also negate the grant of relief to the plaintiff.
\n           This also answers question no.4 posed above.\n<\/p>\n
                   IV.   Further fact in this connection needs to
\n           be  noted.   Although this Court had  granted  ex-parte
\n           injunction vide Order dated 1st June, 2001 the same was
\n           vacated  by  the  Division Bench in Appeal  vide  Order
\n           dated  27th June, 2001.  The defendant no.2 is thus  in
\n           the  market since January 2001.  It has established its
\n           market  in the product whereas there is no presence  of
\n           the  plaintiff  till  date.    In  these  circumstances
\n           disturbing  the  status quo at this stage would not  be
\n           appropriate.   In the case of Wander Ltd.  versus Antox
\n           India  P.   Ltd.  reported in 1990 (Supp) SCC  727  the
\n           Court held as under:-\n<\/p>\n
                      “the  interlocutory remedy is intended to
\n                      preserve  in  status quo, the  rights  of
\n                      parties which may appear on a prima facie
\n                      case.   The Court also, in restraining  a
\n                      defendant   from  exercising    what   he
\n                      considers  his  legal right but what  the
\n                      plaintiff  would  like to  be  prevented,
\n                      puts  into  the  scales,  as  a  relevant
\n                      consideration  whether the defendant has
\n                      yet to commence his enterprise or whether
\n                      he  has  already been doing so  in  which
\n                      latter   case   considerations   somewhat
\n                      different from those that apply to a case
\n                      where  the  defendant is yet to  commence
\n                      his enterprise, are attracted.”\n<\/p><\/blockquote>\n
          79.         In  the  case  of  Graham  versus  Delderfield
\n           reported  in  1992  FSR 313 the  Court  similarly  held
\n           that:-\n<\/p>\n
                      “where  the  other factors appear  to  be
\n                      evenly balanced it is counsel of prudence
\n                      to  take such measures as are  calculated
\n                      to  preserve  the  status  quo.   If  the
\n                      defendant  is  enjoined temporarily  from
\n                      doing  something  that  he has  not  done
\n                      before,the    only    effect    of    the
\n                      interlocutory  injunction in the even  of
\n                      his  succeeding  at  the   trial  is   to
\n                      postpone  the date at which he is able to
\n                      embark  upon a course of action which  he
\n                      has  not previously found it necessary to
\n                      undertake;   whereas to interrupt him  in
\n                      the  conduct of an established enterprise
\n                      would cause much greater inconvenience to
\n                      him since he would have to start again to
\n                      establish   it  in  the   even   of   his
\n                      succeeding at the trial.”\n<\/p><\/blockquote>\n
  80.                 The   Court   also     observed,   and   which
\n           observations  equally  apply  to the present  case,  as
\n           follows:-\n<\/p>\n
                      “the  difficulty here is that it does not
\n                      follow   that  the   profits  which   the
\n                      defendant  will necessarily lose  pending
\n                      trial,  through  being restrained  by  an
\n                      interlocutory   injunction,     will   be
\n                      reflected in profits which Mr.Graham will
\n                      receive or earn pending trial.”\n<\/p><\/blockquote>\n
     81.              A  similar view on the aspect of injunction is
\n           taken  in the case of Athletes Foot (supra) case  which
\n           is as follows:-\n<\/p>\n
                      “….the   decision   on    the   motion,
\n                      whichever way it goes, profoundly affects
\n                      the  rights of the parties in a way which
\n                      cannot easily be undone if at the trial a
\n                      different  result  is reached.   If,  for
\n                      example,  an  injunction were granted  as
\n                      sought   by  the   plaintiffs,  then  the
\n                      defendants  would have to change the name
\n                      of  their mail order and Bargain Basement
\n                      Operations.  It would be idle to say that
\n                      they  could  change  back-possibly  years
\n                      later  after  there has been a trial  and
\n                      appeals from the decision therein because
\n                      in  the meantime they will, of necessity,
\n                      have invested time, money and effort in a
\n                      totally    different     direction,   and
\n                      obviously,  they would not wish to  throw
\n                      that  all  away.  It has  therefore  been
\n                      clearly  recognised  that int he  present
\n                      type  of case it is necessary to consider
\n                      rather  more  than in the usual case  the
\n                      strength of the plaintiff’s case in law.”\n<\/p>\n
        82.           In  these  circumstances, there appears to  be
\n           force  in  the  submission of learned counsel  for  the
\n           defendant  when they pointed out that the ‘status  quo’
\n           in  the present case includes the following irreversible
\n           steps  that have been taken and milestones which  have
\n           been crossed:-\n<\/p>\n
                 a.    Clinical   trials   conducted   by   the
\n           defendant.\n<\/p>\n
                   b.   License  granted by the Drug  Controller,
\n           India.\n<\/p>\n
                   c.   Manufacturing  license   granted  by  the
\n           Government of Gujarat,  <\/p>\n
                   d.   Launch  of  the product  PENEGRA  on  9th
\n           January,  2001  and subsequent sales;  availability  of
\n           the product for patients in need, and  <\/p>\n
                   e.   Capture of 34% market share by PENEGRA.\n<\/p>\n
           83.        The   balance   of   convenience,   in   these
\n           circumstances,  is also in favor of the defendants and
\n           in refusing the injunction.  Further the damages to the
\n           plaintiff,  if ultimately it is held that the plaintiff
\n           is entitled thereto can be quantified if the injunction
\n           is  refused now.  On the other hand, if the  injunction
\n           is  given  but ultimately the plaintiff’s  Suit  fails,
\n           damages  to the defendants of such an injunction  given
\n           now  cannot  be so quantified.  In the case  of  Blazer
\n           plc.   versus  Yardely and Company Limited reported  in
\n           1992 FSR 501 the Court observed inter alia:-\n<\/p>\n
                      “If  the  defendants are injuncted,  they
\n                      will  have  to  decide whether  to  delay
\n                      further marketing of their English Blazer
\n                      products  until  after trial,  or  choose
\n                      another  name.  If they choose the former
\n                      course  of  action, sales will  be  lost.
\n                      Also  the  evidence suggests that  others
\n                      are  likely to enter the volume  prestige
\n                      market   with   the   result  that   the
\n                      defendants’  position in that market will
\n                      be  lost.   Thus damage will be  certain.
\n                      An  award of damages will not be adequate
\n                      compensation  for such damage as it  will
\n                      be   difficult  if   not  impossible   to
\n                      estimate  the  number of sales lost,  the
\n                      effect  on  sales of lost  opportunity  to
\n                      establish the range in the market and the
\n                      effect  of  competitors   entering   the
\n                      market   during   the   period   of   the
\n                      injunction.\n<\/p><\/blockquote>\n
              84.     It further held that:-\n<\/p>\n
                      “The  plaintiff’s counsel submitted  that
\n                      if  I  concluded  that   the  balance  of
\n                      convenience was evenly weighted, I should
\n                      maintain  the  status quo by granting  an
\n                      injunction.   I  have concluded that  the
\n                      balance  is  in favor of no  injunction,
\n                      but  I do not believe that this is a case
\n                      where  the status quo would be maintained
\n                      by  the  injunction  sought.   First,  an
\n                      injunction would restrain the defendants,
\n                      but  the  market in which the  defendants
\n                      wished  to place their new range will not
\n                      stay  the  same  pending hearing  of  the
\n                      action.   Thus the status will change  to
\n                      the   detriment   of    the   defendants.\n<\/p><\/blockquote>\n
                      Secondly,   the   submission    that   an
\n                      injunction  would maintain the status quo
\n                      is  inconsistent  with the submission  by
\n                      the  counsel  for the plaintiff that  the
\n                      defendant should when injuncted, choose a
\n                      new  name.  The effect of the  injunction
\n                      would  be  to  change for all  times  the
\n                      status  in  the United Kingdom.   If  the
\n                      idea  of  maintaining the status  quo  is
\n                      applicable,  it  seems to  point  towards
\n                      doing  nothing  which would  in  practice
\n                      resolve   the  dispute  in  one   party’s
\n                      favor.  That would mean no injunction.”\n<\/p><\/blockquote>\n
                 85.  The  Supreme  Court  in the  case  of  Colgate
\n           Palmolive  India  Ltd.   versus  Hindustan  Lever  Ltd.
\n            stated as under:-\n<\/p>\n
                   “It would seem to follow, therefore, that
\n                      what should be borne in mind, in addition
\n                      to   what  has  been   phrased  in   Lord
\n                      Diplock’s  speech,  is that if  there  is
\n                      uncertainty,  the Court should be  doubly
\n                      reluctant  to  issue an  injunction,  the
\n                      effect of which is to settle the parties’
\n                      rights once for all.\n<\/p><\/blockquote>\n
                     On a clear analysis of the speech of Lord
\n                      Diplock,  it  appears  that  if  damages,
\n                      recoverable  at  common law, would be  an
\n                      adequate  remedy and the defendant  would
\n                      be  in  a financial position to  pay  the
\n                      same,  no interlocutory injunction should
\n                      normally be granted, howsoever strong the
\n                      plaintiff’s  claim  appear to be at  that
\n                      stage.   Lord Diplock went on to  observe
\n                      further  that in the event of there being
\n                      any  doubt,  as  to the adequacy  of  the
\n                      respective remedies and damages available
\n                      to either party or both, then and in that
\n                      event,   the  question  of   balance   of
\n                      convenience arises and the same will vary
\n                      from case to case.”\n<\/p><\/blockquote>\n
             86.      The  defendant  no.2  is   not  fly-by-night
\n           company.   It is an established giant in pharmaceutical
\n           business.  It is claimed by the defendant no.2 that its
\n           group  turnover  is in excess of Rs.800 crores  with  a
\n           well   established   and   independent   research   and
\n           development and quality control department.  Therefore,
\n           in  the event the plaintiff ultimately succeeds it  can
\n           be duly compensated.\n<\/p>\n
         87.         As recorded by the Division Bench in its Order
\n           dated  30th  June,  2001   and  reproduced  above,  the
\n           defendant  no.2 has undertaken to change the colour  of
\n           their tablet from blue to another (which stands changed
\n           to pink colour).  It has stopped displaying its website
\n           and  also undertaking to maintain records and file them
\n           in  the  Court with regard to manufacture and  sale  of
\n           their  product  PENEGRA.  The defendants  shall  remain
\n           bound  by  these undertakings till the disposal of  the
\n           present Suit.\n<\/p>\n
            88.       With   the    aforesaid    observations,   the
\n           application filed by the plaintiff stands dismissed.\n<\/p>\n
                    I.A.6408\/2001 in S.No.1444\/2001     <\/p>\n
         89.          In  this  Suit  filed  by  the  plaintiff  the
\n           description of its trade mark is the same as noticed in
\n           Suit  No.1165  of 2001.  Insofar as the defendants  are
\n           concerned  they  have launched their  product,  namely,
\n           Sildenafil  Citrate drug under the trade name `EDEGRA’.
\n           The explanation given by the defendants is that it is a
\n           coined word which is the combination of `ED’ and `GRA’.
\n           According  to  them E and D in ED stands  for  Erectile
\n           Dysfunction  and  `GRA’ is taken from  the  defendant’s
\n           trade  symbol,  which  is a Genie lamp  which  `grants’
\n           wishes to user.  The defendant herein had also launched
\n           its  product in January,2001.  It is also stated by the
\n           defendants  that Sildenafil Citrate is a Gray  coloured
\n           tablet  and is “cylindrical” in shape which is sold  in
\n           blister  packs of four\/two tablets with EDEGRA  written
\n           on  the  top.   It  is  emphasised  that  there  is  no
\n           similarity between the product of the defendant and the
\n           plaintiff.\n<\/p>\n
            90.       It  may  be  mentioned that in  this  case  no
\n           ex-parte injunction was granted and matter was directed
\n           to  be  taken up along with Suit No.1165\/2001  and  was
\n           heard along with that suit.  The defense raised in this
\n           case is same as noted in S.No.1165\/2001.\n<\/p>\n
              91.     For  the  detailed  reasons mentioned  in  the
\n           deciding  IA  No.5563\/2001  in Suit  No.1165\/2001,  the
\n           following reliefs can be granted:\n<\/p>\n
                 A.     The     defendant    shall    forthwith
\n           remove\/discontinue its website.\n<\/p>\n
                   B.   Since  there  is  no  similarity  in  the
\n           colours  of  the  two tablets, although  the  defendant
\n           states that colour of its tablet is Gray, the defendant
\n           should  change the colour of its tablet which should be
\n           totally different from blue or resembling blue.\n<\/p>\n
                   C.   The defendant is directed to maintain and
\n           keep  proper  accounts of sale of its product,  namely,
\n           `EDEGRA’  with regard to manufacture and sales and file
\n           the same in Court regularly.\n<\/p>\n
          92.         Giving   the  aforesaid   directions  to   the
\n           defendant, the prayer for the injunction as made by the
\n           plaintiff stands rejected.\n<\/p>\n
                    I.A.5780\/2001 in S.No.1258\/2001     <\/p>\n
            93.      The   defendants  have   launched   Sildenafil
\n           Citrate  drug  in  this  case   under  the  trade  name
\n           `SILAGRA’.   The  explanation  given is that  `Gra’  is
\n           common  to  the  trade.   It  is  a  word  in   English
\n           indicating  affection  or  love   and,  therefore,  the
\n           plaintiff  cannot claim any monopoly in this for  using
\n           the  word  `Gra’.   This product was also  launched  in
\n           January,2001.   It  is  blue   oval  shape  pill.   The
\n           plaintiff’s  another grievance is that the  defendants’
\n           website  is having the same feature as the  plaintiff’s
\n           feature.   It is emphasised that there is no similarity
\n           between the product of the defendant and the plaintiff.\n<\/p>\n
                   It  may  be  mentioned that in  this  case  no
\n           ex-parte injunction was granted and matter was directed
\n           to  be  taken up along with Suit No.1165\/2001  and  was
\n           heard along with that suit.  The defense raised in this
\n           case is same as noted in S.No.1165\/2001.\n<\/p>\n
         94.          For  the  detailed  reasons mentioned  in  the
\n           deciding  IA  No.5563\/2001  in Suit  No.1165\/2001,  the
\n           following reliefs can be granted:\n<\/p>\n
                   A.     The     defendant    shall    forthwith
\n           remove\/discontinue its website.\n<\/p>\n
                   B.   The defendant should change the colour of
\n           its  tablet which should be totally different from blue
\n           or resembling blue.\n<\/p>\n
                   C.   The defendant is directed to maintain and
\n           keep  proper  accounts of sale of its product,  namely,
\n           `SILAGRA’ with regard to manufacture and sales and file
\n           the same in Court regularly.\n<\/p>\n
            95.       Giving   the  aforesaid   directions  to   the
\n           defendant, the prayer for the injunction as made by the
\n           plaintiff stands rejected.\n<\/p>\n
                    I.A.5136\/2001 in S.No.1049\/2001    <\/p>\n
         96.          The  drug in question of the defendant against
\n           which  injunction  is claimed by the plaintiff  is  not
\n           Sildenafil  Citrate.   It is an Ayurvedic  formulation.
\n           The  defendant  company deals with Ayurvedic drugs  and
\n           not  allopathic  drugs.  The defendant in  its  written
\n           statement  highlights the following dis-similarities in
\n           the two products:\n<\/p>\n
              INDIAGRA                VIAGRA \ni)   Packing in Blister             i)  Packing not known\nii)  Price of one packet of 10      ii) Price of one pill is around\n     capsules is Rs.178\/-               US $10 as per Internet.\n<\/pre>\n
iii) The product of Defendant is a  iii)Chemical based drug contain-\n<\/p>\n
     Herbal Ayurvedic food              ing “Sildenafil Citrate”\n<\/p><\/blockquote>\n
     supplement.                        (as per the plaint).\niv)  Brown Capsule                  iv) Pill (Colour not known).\n<\/pre>\n
v)   The product is sold over the   v)  Whereas the product of the
\n     counter (OTC) Herbal food          plaintiff is a Schedule`H’
\n     supplement for general             drug which can only be sold
\n     vitality.                          after doctor prescription.\n<\/p><\/blockquote>\n
vi)  The product is 100% Ayurvedic  vi) The product is Allopathic
\n                                        and is a Chemical product.\n<\/p>\n
vii) The product is meant for men   vii)The product is only for men
\n     and women.\n<\/p>\n
viii)The product has no side effect viii)The product is not recom-\n<\/p>\n
                                         mended for men suffering
\n                                         from diabetes,hypertension
\n                                         and heart patient.\n<\/p><\/blockquote>\n
            97.         The defendant also points out that as and when
\n           drug  VIAGRA is allowed to be sold in India because  of
\n           its price structure it can never be used by the general
\n           masses  of  India  because of its price tag  and  hence
\n           there  is  no  cause of confusion to  the  purchaser  \/
\n           customer.  In the event of its being allowed to sold in
\n           India,  the  product  VIAGRA can only be  used  by  the
\n           affluent class of the society because of its exorbitant
\n           price.  It is therefore stated that the suit is totally
\n           misconceived,  malafide, without merits and deserves to
\n           be  dismissed.   According to the defendant  the  trade
\n           name  `INDIAGRA’  is even made by combining  two  words
\n           `INDIA’ and `AGRA’.  The product INDIAGRA connotes that
\n           the  product is based on the Indian Ayurvedic system of
\n           medicine  which is unique in its own way.  Further, the
\n           word  “Agra” has been chosen because of its being world
\n           famous  on  account of Taj Mahal.  The learned  counsel
\n           for  the  defendant  relied upon the judgment  of  this
\n           Court  reported in 1986 IPLR 37 wherein it is held that
\n           interim  injunction cannot be granted in favor of  the
\n           plaintiff  where the mark is merely descriptive of  the
\n           goods.   It is also submitted that this Court has  held
\n           in Hindustan Radiators Company Vs.  Hindustan Radiators
\n           Ltd.    to the effect  that  in  an
\n           action  of  passing  off,  the plaintiff  in  order  to
\n           establish  a prima facie case for grant of  injunction,
\n           has to show, inter alia that the sphere of activity and
\n           the  market of consumption of goods of the parties  are
\n           the  same.   His further submission was that where  the
\n           suffix  is  common, the earlier portion of the word  is
\n           the  natural and necessary mark of distinction as  held
\n           in Fox’s Application,(1920) 37 RPC 37 (41) holding that
\n           marks  `Motrate’  and `Filtrate’ were not similar.   He
\n           also  referred to another judgment of this Court in the
\n           case  of  Biofarma Vs.  Sanjay Medical Store 1998  (18)
\n           PTC  671  wherein  the Court  laiddown  that  following
\n           factors   have  to  be   considered  for  deciding  the
\n           application of deceptive similarity:\n<\/p><\/blockquote>\n
                     1.  The nature of the marks, i.e.  whether the
\n           marks are word marks or level marks or composition mark
\n           i.e.  both word and level marks;\n<\/p><\/blockquote>\n
                   2.   The  degree of resemblances  between  the
\n           marks,  whether  they  are  phonetically,  visually  or
\n           structurally similar and hence similar in idea;\n<\/p><\/blockquote>\n
                   3.   The  nature of goods in respect of  which
\n           they are used the trade marks;\n<\/p><\/blockquote>\n
                   4.   The  similarity in the nature,  character
\n           and performance of the goods of the rival traders;\n<\/p><\/blockquote>\n
                   5.   The class of purchaser who are likely  to
\n           buy the goods bearing the marks;\n<\/p><\/blockquote>\n
                   6.   The  mode  of purchasing  the  goods  and
\n           placing orders for the goods;  and  <\/p>\n<\/blockquote>\n
                   7.  Any other surrounding circumstances.\n<\/p><\/blockquote>\n
                  In  addition  to the reasons  recorded,  while
\n           dismissing  the  application in  CWP.No.1165\/2001,  the
\n           another  significant distinction feature in the present
\n           case  is  that  the medicine in question  is  Ayurvedic
\n           formulation  and which would also clearly rule out  the
\n           possibility of any deceptive similarity or confusion in
\n           the mind of public.\n<\/p><\/blockquote>\n
            98.       It  may  be  mentioned that in  this  case  no
\n           ex-parte injunction was granted and matter was directed
\n           to  be  taken up along with Suit No.1165\/2001  and  was
\n           heard along with that suit.  The defense raised in this
\n           case is same as noted in S.No.1165\/2001.\n<\/p><\/blockquote>\n
               99.    For  the  detailed  reasons mentioned  in  the
\n           deciding  IA  No.5563\/2001  in Suit  No.1165\/2001,  the
\n           following reliefs can be granted:\n<\/p><\/blockquote>\n
                  A.   The defendant is directed to maintain and
\n           keep  proper  accounts of sale of its product,  namely,
\n           `INDIAGRA’  with  regard to manufacture and  sales  and
\n           file the same in Court regularly.\n<\/p><\/blockquote>\n
          100.         Giving   the  aforesaid   directions  to   the
\n           defendant, the prayer for the injunction as made by the
\n           plaintiff stands rejected.\n<\/p><\/blockquote>\n
                    I.A.6301\/2001 in S.No.1418\/2001    <\/p>\n<\/blockquote>\n
              101.     In  this case the defendant’s drug  Sildenafil
\n           Citrate  is  sold under the trade name `KAMAGRA’.   The
\n           defendant  states  that  this product was  launched  in
\n           March,2001.   According  to the defendant `KAMAGRA’  is
\n           again  a  coined  word.  Two explanations  are  offered
\n           which are:\n<\/p><\/blockquote>\n
                 1.   It is combination of two words `KAMA’ AND
\n           `AGRA’.   `KAMA’ is a word taken from Sanskrit, meaning
\n           of which is `wish, desire, longing’.  `AGRA’ is again a
\n           Sanskrit  word  and the meaning is `tip,  front,  upper
\n           most  part,  top, summit, pint and  hence  figuratively
\n           sharpness,  the nearest end, the beginning, the  climax
\n           or best part, goal, aim, multitude.\n<\/p><\/blockquote>\n
                   2.   `KAMA’ from Kamasutra.  `GRA’ from French
\n           word `Gratificari’.\n<\/p><\/blockquote>\n
           102.        Thus  according  to the  defendant,  trademark
\n           `Kamasutra’  is denotative of the climax of  fulfillment
\n           of desire.\n<\/p><\/blockquote>\n
                   The defendant has also highlighted its profile
\n           by submitting that it has:\n<\/p><\/blockquote>\n
                 (a)  been granted ISO Certification;\n<\/p><\/blockquote>\n
                   (b)  been recognised as an Export House;  <\/p><\/blockquote>\n
                   (c)   Joint  Ventures  in   some  of  the  CIS
\n           countries  and has been granted various recognitions by
\n           the countries in which it is operating;\n<\/p><\/blockquote>\n
                   (d)  a  well organized in-house  research  and
\n           development  unit which is duly recognised by the Govt.
\n           of India;\n<\/p><\/blockquote>\n
                   (e)   been  granted   Jamnalal  Bajaj   Award,
\n           Certificate  of Merit for Excellence in Quality from the
\n           Govt.  of India and Gold Medal from Turkmenistan.\n<\/p><\/blockquote>\n
                   Further  submission of learned counsel for the
\n           defendant  was  that  there is no  phonetic  similarity
\n           because:\n<\/p><\/blockquote>\n
        KAMAGRA – emphasis on consonant `K’ and `M’
\n           VIAGRA  – the pronunciation of `V’,`I’ & `A’ is smooth.
\n           Therefore KAMA is phonetically dissimilar with VIA.
\n           “KAMAGRA” as Trademark has been adopted honestly.\n<\/p><\/blockquote>\n
          103.         The  defendant has also given its sale figures
\n           and  according  to it, it has established  its  product
\n           which  has  been accepted widely not only in India  but
\n           defendant  has  also  exported   the  same  in  various
\n           countries  and  has  earned a total  of  US$  258472.75
\n           during the period from April,2000 to September,2001.\n<\/p><\/blockquote>\n
                   Along with the written arguments the defendant
\n           also  filed  an  affidavit in which apart  from  giving
\n           sales  figure  of its product in India,  export  sales,
\n           amount  spent  on publicity and on  experiments,  trial
\n           etc.  following significant averments are made:\n<\/p><\/blockquote>\n
                   “The   defendant  company  in  or   about
\n                      June\/July  1999  sent  a  consignment  of
\n                      KAMAGRA tablets containing 25 blisters of
\n                      100    mg    each    to    M\/s.Pharmachem
\n                      International   Ltd.    Switzerland   for
\n                      exporting  out of Switzerland.  But  this
\n                      consignment  was  seized at  the  Customs
\n                      Inspectorate  of the ZurichKloten Airport
\n                      and  Pfizer  Inc.,235 East, 42nd  Street,
\n                      N.Y.10017-5755  who  is the owner of  the
\n                      trade   Mark    VIAGRA    world-wide   and
\n                      hereinafter  referred  to  as  the   said
\n                      Pfizer  Inc.,  obtained an order  of  the
\n                      Commerce  Court  of the Canton of  Zurich
\n                      dated  15th December,1999, re  Trademarks
\n                      and     Patents,       Court’s    Records
\n                      No.H.F.990007.\n<\/p><\/blockquote>\n
                     I   state   that   pursuant   to   mutual
\n                      discussion  between the said Pfizer  Inc.
\n                      and  the  Defendant herein  a  Settlement
\n                      Agreement  dated  January   18,2000   was
\n                      entered into between the said Pfizer Inc.
\n                      and the defendant herein”.\n<\/p><\/blockquote>\n
            104.     The defendant has undertaken in para-8 of this
\n           affidavit  to give up existing carton, inner  packaging
\n           and  the  diamond  shaped tablet.  This para  reads  as
\n           under:\n<\/p><\/blockquote>\n
                      “I  state  that without prejudice to  the
\n                      submissions  made by the defendant herein
\n                      and  in  the alternative if this  Hon’ble
\n                      Court  so directs, the defendant is ready
\n                      and  willing  to  give  up  the  existing
\n                      carton   bearing   objectionable   colour
\n                      scheme  and  get up, the inner  packaging
\n                      and  the  diamond shape tablet  and  will
\n                      adopt cartons bearing such colour scheme,
\n                      get  up,  inner packaging and  triangular
\n                      shape  of  the tablet which  are  totally
\n                      dissimilar  to that of VIAGRA.  As and by
\n                      way  of a proposal the defendant  submits
\n                      herewith  outer cartons bearing a  colour
\n                      scheme  and  get  up,   and  dummy  inner
\n                      packaging   showing    triangular   shape
\n                      tablets  as  per the samples of  each  of
\n                      them   annexed   herewith    and   marked
\n                      collectively as Annexure-F”.\n<\/p><\/blockquote>\n<\/blockquote>\n
             105.      The  plaintiff  has submitted  reply-affidavit
\n           refuting  the various allegations made by the defendant
\n           in  its circular.  However, significantly the plaintiff
\n           does  not  dispute  that   settlement  Agreement  dated
\n           January  18,2000  was entered into between Pfizer  Inc.
\n           and  the defendant.  However, the plaintiff relies upon
\n           para-2 of the said Agreement as per which the defendant
\n           had  undertaken  to  desist from  using  the  trademark
\n           “KAMAGRA”  on sildenafil or sildenafil preparations  in
\n           any  country  where  Pfizer  Inc.   or  any  affiliated
\n           company  owns  a valid registration for  the  trademark
\n           `VIAGRA’  and  relying there upon it is submitted  that
\n           this  paragraph  constitutes an acknowledgement by  the
\n           defendant  of  the fact that KAMASUTRA  conflicts  with
\n           trademark  VIAGRA  and is likely to cause confusion  or
\n           deception.\n<\/p><\/blockquote>\n
           106.        Facts  remains  that   Agreement  was  entered
\n           between  the  parties  as per which the  plaintiff  has
\n           allowed  the defendant to use trademark `KAMASUTRA’  on
\n           sildenafil  or sildenafil preparations in the countries
\n           where  the plaintiff is not having any registration for
\n           the trademark `VIAGRA’.  Admittedly, when Viagra is not
\n           a  registered trademark in India, on this ground  alone
\n           the  plaintiff  shall not be entitled to injunction  at
\n           present.   Parties  are bound by the settlement and  by
\n           relying  upon  para-2 the plaintiff cannot now turn  up
\n           and  start  drawing  influences   there from  and   seek
\n           injunction  against  the defendant and  thus  countries
\n           including  India  where the trade mark `VIAGRA’ of  the
\n           plaintiff has not been registered.\n<\/p><\/blockquote>\n
           107.        It is the allegation of the plaintiff that the
\n           `KAMASUTRA’  tablet  is  also of  blue  diamond  shaped
\n           tablet  with same bubble packing as of plaintiff and it
\n           has  launched  its  website   by  copying   plaintiff’s
\n           website.   Even external carton with blue band on  left
\n           is  copied.\n<\/p><\/blockquote>\n
        108.           In  the  instant case the word  `KAMA’  cannot
\n           have  any similarity with the word VIAGRA.  Inasmuch as
\n           `KAMAGRA’  is a word which is more an Indian word  very
\n           well  known  as `DESI VIAGRA’ and clearly  as  Sanskrit
\n           origin  which  makes it totally different from  Viagra.
\n           Any  person  to  whom  Kamasutra tablet  is  given  can
\n           clearly see that it is native\/desi\/Indian drug and will
\n           have  nothing  to do with Viagra.  Thus by adoption  of
\n           the  name `KAMASUTRA’ there may not be any  possibility
\n           of any misrepresentation or confusion.\n<\/p><\/blockquote>\n
                   Almost  similar types of defense is raised  in
\n           reply  to the IA.6301\/2001 as well as written statement
\n           and  it  is  emphasised  that there  is  no  similarity
\n           between the product of the defendant and the plaintiff.\n<\/p><\/blockquote>\n
         109.          It  may  be  mentioned that in  this  case  no
\n           ex-parte injunction was granted and matter was directed
\n           to  be  taken up along with Suit No.1165\/2001  and  was
\n           heard along with that suit.  The defense raised in this
\n           case is same as noted in S.No.1165\/2001.\n<\/p><\/blockquote>\n
           110.        For  the  detailed  reasons mentioned  in  the
\n           deciding  IA  No.5563\/2001  in Suit  No.1165\/2001,  the
\n           following reliefs can be granted:\n<\/p><\/blockquote>\n
                 A.     The     defendant    shall    forthwith
\n           remove\/discontinue its website.\n<\/p><\/blockquote>\n
                   B.   The defendant shall change the colour  of
\n           its  tablet  and  packing as stated in para  8  of  its
\n           affidavit.\n<\/p><\/blockquote>\n
                   C.   The defendant is directed to maintain and
\n           keep  proper  accounts of sale of its product,  namely,
\n           `KAMAGRA’ with regard to manufacture and sales and file
\n           the same in Court regularly.\n<\/p><\/blockquote>\n
                   D.   The  defendant  as   per  para-8  of  its
\n           affidavit,  as  quoted aforesaid, will also change  its
\n           external  carton  to make it materially different  from
\n           the  plaintiff’s external carton so that even if  there
\n           is  a  slightest similarity, if all, that will also  be
\n           removed.\n<\/p><\/blockquote>\n
  111.                 Giving   the  aforesaid   directions  to   the
\n           defendant, the prayer for the injunction as made by the
\n           plaintiff stands rejected.<\/p>\n","protected":false},"excerpt":{"rendered":"
Delhi High Court Pfizer Products Inc. vs B.L. & Company And Ors., Sun … on 10 April, 2002 Equivalent citations: 2002 (25) PTC 262 Del Author: A.K.Sikri Bench: A Sikri 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 […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_lmt_disableupdate":"","_lmt_disable":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[14,8],"tags":[],"class_list":["post-119120","post","type-post","status-publish","format-standard","hentry","category-delhi-high-court","category-high-court"],"yoast_head":"\nPfizer Products Inc. vs B.L. & Company And Ors., Sun ... on 10 April, 2002 - Free Judgements of Supreme Court & High Court | Legal India<\/title>\n<meta name=\"robots\" content=\"index, follow, max-snippet:-1, max-image-preview:large, max-video-preview:-1\" \/>\n<link rel=\"canonical\" href=\"https:\/\/www.legalindia.com\/judgments\/pfizer-products-inc-vs-b-l-company-and-ors-sun-on-10-april-2002\" \/>\n<meta property=\"og:locale\" content=\"en_US\" \/>\n<meta property=\"og:type\" content=\"article\" \/>\n<meta property=\"og:title\" content=\"Pfizer Products Inc. vs B.L. & Company And Ors., Sun ... on 10 April, 2002 - 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