MANU/WB/0014/2006

Equivalent Citation: (2006)2CALLT272(HC), 2006(2)CHN179, 2006(32)PTC495(Cal)

IN THE HIGH COURT OF CALCUTTA

C.S. No. 349 of 1995

Decided On: 27.02.2006

Appellants: Allergan Inc

Vs.
Respondent: Sun Pharmaceuticals Industries Ltd.
Hon'ble Judges:
Sadhan Kumar Gupta, J.

Subject: Intellectual Property Rights

Subject: Law of Evidence

Acts/Rules/Orders:
Trade Marks Act, 1955; Evidence Act, 1872 - Sections 74, 78, 78(3), 78(4) and 78(6)

Disposition:
Appeal allowed

JUDGMENT
Sadhan Kumar Gupta, J.

1. This is a suit for permanent injunction praying for restraining the defendant from their attempting to pass off their Pharmaceuticals preparation being
Ophthalmic solution as that of the plaintiff by use on or in connection therewith in course of trade, the mark 'OCUFLOX' or any other deceptively
and/or confusingly similar mark and also for further necessary action against the defendant.

2. Plaintiffs case is that it is a leading manufacturer of well-known pharmaceutical products with extensive operations in several major countries of the
world. It is carrying on its business worldwide since 1960. One of the well-known pharmaceutical products of the plaintiff is an ophthalmic preparation
known as 'OCUFLOX' used for treatment of certain types of eye infections. Said mark was coined and adopted by the plaintiff in or about September,
1992. By virtue of subsequent prolonged and extensive use, said mark 'OCUFLOX' has become distinctive of the plaintiff in the eyes of the consumers.
The plaintiff is carrying on its business in respect of its product 'OCUFLOX' extensively in several major countries of the world since September, 1992
having first commenced its business in the United States of America. It also applied for registration of the mark 'OCUFLOX’ in several countries
including India and those applications are pending. The plaintiffs name is associated with the pharmaceutical eye care preparations of the highest order
and any product with any connection with the plaintiff or its reputation or goodwill has tremendous value and is considered to be a pharmaceutical
product of the highest order. The product 'OCUFLOX' is manufactured by the plaintiffs maintaining high standards and is widely prescribed by the
doctors worldwide to treat bacterial conjunctivitis and is acknowledged by the medical profession internationally as being one of the most potent
bactericidal. In connection with the said product, the plaintiff undertook extensive sale in various countries and also undertook extensive promotional
expenditure by way of advertisement etc. This product was advertised in several internationally famed medical journals. The name of the plaintiff and
its product 'OCUFLOX' have become household words on a worldwide basis and the plaintiff has acquired immense global reputation and the plaintiffs
product signifies top class Pharmaceuticals product. Although the plaintiffs product 'OCUFLOX' was not sold in India, the plaintiff has acquired
substantial goodwill and reputation in this country in respect of the said product. A large number of doctors practising in India as also the other Indians
who visit abroad on a regular basis are aware of the plaintiff company and its product 'OCUFLOX'. With a view to mark its products, the plaintiff has
formed a joint venture company, and it was in fact found between Allergan Inc of USA and Nicholas Pirmal Ltd. of India. Said joint venture company
has commenced operation in early 1996 and have already launched several Pharmaceuticals and surgical products.

3. Some time in the month of November, 1994 the plaintiff for the first time came to learn that the defendant was manufacturing for sale the products
similar to those of the plaintiff being sold under the mark 'OCUFLOX' under an identical trade mark. As such, the plaintiff sent a letter to the defendant
on 29.12.1994 demanding them to refrain themselves from using the mark 'OCUFLOX'. Discussion also took place in between the plaintiff company
and the defendant company for resolving the controversy. The defendant company on 21.01.1995 addressed a letter to the plaintiff requesting personal
discussion for settling the dispute. As such, there was a discussion in between the representative of the two companies on 10.06.1995. But no fruitful
result yielded in the said discussion. Thereafter the plaintiff for some months could not locate the defendant's product carrying the impugned mark, in
the market, prompting the plaintiff to believe that the defendant gave up the use of the impugned mark of the plaintiffs product. However, some time
during the first week of July, 1996 the plaintiff came to know that the defendant was using the mark 'OCUFLOX' illegally in its product. The plaintiff
collected said product of the defendant from the market wherefrom the plaintiff came to know that the defendant in fact is illegally using the mark
'OCUFLOX' in its product. Said mark, as used by the defendant, is identical to the trade mark of the plaintiff and it is apparent that the sole aim of the
defendant is to use illegally the plaintiffs internationally famous trade mark with a view to cash in on the goodwill and reputation of the plaintiff and to
attract the consumers/potential consumers inducing them to believe that they are actually dealing with the plaintiff. The use of the plaintiffs mark of

2011-02-04 Source : www.manupatra.com WIPRO Limited

'OCUFLOX' by the defendant is thus calculated to deceive the consumers into belief that the defendant is a part of the worldwide operation of the
plaintiff and thereby the defendant is illegally trying to cash in the goodwill and reputation of the plaintiff. The quality of the defendant's products are
far inferior to the plaintiffs products. If such activities of the defendant is permitted to be continued, then it will seriously affect the consumers. As such,
the plaintiff has filed the present suit praying for an order of permanent injunction restraining the defendant company in illegally using the plaintiffs
trade mark viz. 'OCUFLOX".

4. The original defendant Milmet OFTHO Industries filed written statement wherein it has denied the allegations of the plaintiff on all the

material points. Subsequently, Sun Pharmaceuticals Industries Ltd. was substituted in place of the original defendant and the said company contested
the suit as a defendant. In the written statement the defendant has claimed that the original defendant was engaged in the business of manufacture and
sale of pharmaceutical and medicinal preparations and substances since the year 1982. It was using several trade marks to distinct their goods in the
course of trade and its trade marks have established and enjoyed reputation in the trade. Prior to July, 1993 the defendant decided to manufacture and
market a pharmaceutical and medicinal preparation for OPHTHALMIC use containing CIPROFLOXACIM HCL as its active ingredient for the
treatment of ocular related disorders and diseases. Since the said preparation was made for ocular use, the defendant conceived, coined and adopted the
trade mark 'OCUFLOX' in respect of the said product. The word OCUFLOX was independently coined by taking the prefix OCU from the word
OCULAR which means pertaining to eye and suffix FLOX which is the common part of all the ingredients of three bactericidal agents viz.
CIPROFLOXACIM, OFLOXACIM and NORFLOXACIM.

5. On or about 26th July, 1993 the defendant applied to the Commissioner of Food and Drugs Control Administration, State of Gujrat for licence to
manufacture and mark the said preparation having its active ingredient CIPROFLOXACIM HCL under the trade mark 'OCUFLOX'. The authority
concerned, by its letter dated 25.08.1993 granted permission to the defendant to manufacture and market the said product under the trade mark
'OCUFLOX'. On 15.09.1993 the defendant submitted an application for registration of the said trade mark 'OCUFLOX'. That application of the
defendant is still pending. Since 30.10.1993 the defendant started manufacturing the said product under the said trade mark honestly and without
knowledge of any trade mark resembling thereto either registered or pending registration or being used at all in India or abroad. Since 1993 the
defendant acquired considerable reputation and goodwill in respect of the said product. It has further been claimed by the defendant that tremendous
efforts and pains were undertaken to promote and publicise the said product bearing trade mark 'OCUFLOX'. Within a very short span of the
introduction of the said product, it became very popular and resulted in large sales. The defendant has denied that the plaintiff has any goodwill or
reputation in relation to the said mark so as to become distinctive or identifiable with the products in India. There is no prior user of the said trade mark
in relation to the plaintiffs product. The defendant has clearly denied the plaintiffs claim that the trade mark 'OCUFLOX' was coined and adopted by
the plaintiff on or about September, 1992 and that the said trade mark 'OCUFLOX' has become distinctive of the plaintiff in the eyes of the consumers
or trade all over the world including India. It has clearly denied that the plaintiff is carrying on the business of 'OCUFLOX' extensively 'in several
major countries of the world since September, 1992 having first commenced its business in the United States of America. The plaintiffs alleged product
is not available in India and there is no publicity of the plaintiffs said product in India. The defendant has further denied and disputed the claim of the
plaintiff that its product was registered in Australia and any other countries of the world. The defendant has further denied the plaintiffs claim of sale of
'OCUFLOX' extensively carried on in different parts of the world, as alleged. It has also denied the plaintiffs claim that it incurred extensive
promotional expenditure for advertising its product 'OCUFLOX' in all over the world. It has further been denied by the defendant that the plaintiff has
acquired any goodwill or reputation at all in India in respect of the said mark 'OCUFLOX' as admittedly the plaintiff was not selling the said product in
India. It has further denied that the large number of doctors practising in India became acquainted with OCUFLOX' during their visit in abroad. It has
further denied the plaintiffs claim that it came to know about the existence of the product 'OCUFLOX' as made by the defendant, in the month of
November, 1994. The defendant has admitted that there were discussion between the plaintiff and the defendant on or about 10th June, 1995.
According to the defendant the result of such discussion was not fruitful. However, in the said discussion the bona fide use of the said mark by the
defendant was explained and no further objection was raised by the plaintiff for about two years. The defendant has emphatically denied that it is guilty
of passing off its product by illegally using the trade mark 'OCUFLOX' as manufactured and coined by the plaintiff. According to the defendant even
prior to the use of the said mark by the defendant in India, the plaintiff had not commenced commercial use of the said mark even in America and there
was no goodwill or reputation of the plaintiff in the said mark. According to the defendant the use of the said mark 'OCUFLOX' by the plaintiff was not
at all published in medical journals or reference books available in India or abroad prior to use of the said mark by the defendant. The defendant has
further denied the plaintiffs claim that the quality of the product of the defendant was inferior to that of the plaintiffs product. The defendant has further
denied that it has any obligation in favour of the plaintiff not to use the mark 'OCUFLOX' or any other mark deceptively similar thereto. It has further
denied the plaintiffs claim that by using the said mark without the authority or consent of the plaintiff the defendant has caused breach of obligation, as
alleged by the plaintiff. The defendant has thus prayed for dismissal of the suit as there was no existence of any prima facie case in favour of the
plaintiff.

6. It may be pointed out here that during the pendency of the suit Sun Pharmaceuticals Ltd. obtained the interest of the defendant Milmet

OFTHO Industries and as such said company was substituted as the defendant in place of the original defendant. The substituted defendant also

practically has accepted the written statement as submitted by the erstwhile defendant.

7. Upon the above pleadings, following issues were framed on 10.09.2004:

(1) Who has coined and adopted the mark 'OCUFLOX' and since when?

(2) Who is entitled to the goodwill over the mark 'OCUFLOX' and to what extent?

(3) Whether the defendant has been passing off its goods as those of the plaintiffs in India? If so, since when and to what extent?

(4) Whether the defendant was the first user of the mark 'OCUFLOX' ?

(5) Whether the defendant had adopted the mark 'OCUFLOX' and used the mark before the plaintiff started using the said mark in
India?

(6) Whether the defendant had suffered damages for having wrongly not been allowed to use the mark and, if so, to what extent?

(7) Is the plaintiff is entitled to get the relief, as prayed for?

2011-02-04 Source : www.manupatra.com WIPRO Limited

 (8) To what relief or reliefs are the parties entitled?

Decisions with reasons:

8. It may be mentioned here that initially an interim injunction was granted in favour of the plaintiff. But subsequently at the time of the hearing of the
temporary injunction the ld. Single Judge vacated the said injunction order. As against this, an appeal was preferred and the Division Bench by its order
dated 06.11.1997 was pleased to set aside the said order and restored the original injunction order. Being aggrieved the defendant preferred an appeal
before the Supreme Court when the order of the Division Bench was confirmed and the matter was sent back to this Court for disposal on merit after
recording evidence of both the sides. Accordingly both the sides adduced evidence in support of their respective claims and as per direction of the
Hon'ble Supreme Court the suit was taken up for disposal.

Issue Nos. 1 to 5 :

9. All those issues are taken up together as they are co-related. Admittedly both the plaintiff and the defendant are dealing with a product known as
'OCUFLOX' and both claimed that they were first in using and marketing the same. Admittedly the marks of the product in question, as allegedly
marketed by the parties, are same. They are in respect of pharmaceutical products. The plaintiff has claimed that it first coined and adopted
'OCUFLOX', marketed the same and it has earned worldwide reputation in respect of the said product. On the contrary the defendant has claimed that it
was not within its knowledge about the plaintiffs product of 'OCUFLOX' and it started marketing the said product in India and as such they should not
be restrained in any way in doing business in respect of the said trade mark. So far as the present suit is concerned, we are to confine our attention to
the fact as to who was first in the market in respect of the said product 'OCUFLOX'. In fact, the suit has been filed for taking an action against the
defendant for passing off the plaintiffs goods as if it was the product of the defendant company. An action for passing off is to restrain the defendant
from passing off its goods to the public as that of the plaintiffs. It is not only an action to safeguard the interest of the public but also to preserve the
reputation of the plaintiff company. It is for the plaintiff to establish that the defendant sold its goods in a manner which has deceived or would be
likely to deceive the public to the effect that the defendant's goods are in fact the goods of the plaintiffs. So far as the present case is concerned there is
no dispute that the mark of both the companies is identical in nature. Both the products are pharmaceutical preparations having different compositions.
As such, there cannot be any doubt that there would obviously be confusion in the mind of the public as a whole in respect of the identical names of the
products of the two companies. It is the claim of the plaintiff that it first coined the trade name and marketed it in several countries around the world
excluding India. So the vital question that is to be considered so far as this suit is concerned, is whether the plaintiff was the first in the world market in
respect of the product in question. Whether the plaintiffs product/mark is in use in India is not at all relevant. The main thing that is to be considered is
whether plaintiff has been able to prove that it introduced the product 'OCUFLOX' in the market first. In support of such contention the plaintiff has
adduced evidence both oral as well as documentary. On the other hand the defendant has adduced evidence to counter the claim of the plaintiff in this
respect. Let us now see from the evidence on record as to how far the plaintiff has been able to prove that its product 'OCUFLOX' first came into use in
the market before the defendant adopted the said product.

10. In order to substantiate its claim that the plaintiffs product 'OCUFLOX' first came into the market than that of the defendant's product, the plaintiff
in addition to the oral evidence of the PWs has produced documentary evidence also. In this respect, the plaintiff has proved a certificate, by document
custodian. Along with this certificate some other papers have been filed which were marked for identification. It appears from the Exhibit 'A' that
before the Notary Public, California, Susan, J. Hinchey, an official of the plaintiff/company sweared an affidavit stating therein that the attached
document is the reproduction of the registration certificate for 'OCUFLOX'. She has stated in the said affidavit that the complete photocopies of those
documents are in her possession. It appears from this document that there is signature of the Notary Public. It appears from the certificate of registration
of trade mark under the Trade Marks Act, 1955 that the Government of Australia vide No. A 589040 granted certificate of registration in favour of
Allergan Inc, which is the original plaintiff company in respect of their product 'OCUFLOX'. It further appears from the said certificate that the said
medicine is an OPTHALMIC preparations for treatment of infections of eye and related ocular diseases. This certificate bears the seal of the Trade
Mark Authority of the Commonwealth of Australia. This document shows that license was granted for 7 years from 22.10.1992.

11. It further appears that another document has been filed showing certificate of registration of the product 'OCUFLOX' in favour of the plaintiff?
company which was issued by the Registrar of Trade Marks, Government of Republican of South Africa. It shows that the plaintiffs product
'OCUFLOX' was granted registration on and from November, 1992. The certificate issued by Kevin Shelley, Secretary of State, the State of California
shows that Tamara, J. Hallen was the Notary Public in the State of California and this certificate certifies in respect of the seal of the said Notary
Public. If we look into the certificate of the Notary Public then it will appear that there it has been clearly mentioned that Susan, J. Heinchey affirmed
that the certificate of registration for 'OCUFLOX' was true, correct and complete photocopy of document which was in her possession. It further
appears that it has been certified by the Assistant Consular Officer, Consulate General of India, Sanfrancisco and he duly certified the signature of the
Notary Public. So it appears that the plaintiff has filed documents in support of his contention that the plaintiffs product 'OCUFLOX' was registered in
the year 1992 i.e. much before the date of adoption of the said mark by the defendant/company in India.

12. Ld. Advocate for the defendant argued that the documents which were marked for identification cannot be taken into consideration since those have
not been proved legally. It appears from the record that at the time of recording of the deposition as the Id. Advocate for the defendant raised objection
regarding those documents, so those were not marked as Exhibit and instead those were marked for identification only. The ld. Advocate for the
plaintiff argued that there cannot be any bar for this Court to take into consideration those certificates issued by the foreign authorities in favour of the
plaintiff, in respect of its product 'OCUFLOX'. As I have already pointed out that the main question that is to be considered so far as this suit is
concerned, is, who has first adopted the mark 'OCUFLOX', so the registration certificates issued by the authorities of Australia and South Africa in
respect of the plaintiffs product 'OCUFLOX', are very vital for the purpose of this suit. Let us now see as to whether those certificates can be
considered in this suit or not. Admittedly originals of those certificates have not been produced by the plaintiff/company. The explanation for this non-
production is that those certificates are required to be kept in the plaintiffs office for the purpose of inspection, verification etc. by the concerned
authorities of those States and as such, the originals of those certificates could not be produced by the plaintiff in connection with this suit. Admittedly,
the plaintiff is a part of a multinational company having worldwide business. Naturally, it is expected that the originals of those Trade Marks
registration certificates are always required to be kept in the office for the purpose of inspection by the authorities from time to time. There cannot be
any doubt that if those certificates are not produced at the time of inspection by the authorities, then certainly the plaintiff/company will be liable for
prosecution as per law of the concerned country. So, it is difficult for the plaintiff/company to produce the original of the certificate in this suit, which
is in all likelihood be kept in the Court of India for a considerable period. Under such circumstances there cannot be any doubt that the plaintiff
company would face much difficulties in other countries where it is running the business of 'OCUFLOX'. The explanation, as given by the plaintiff in
this respect, appears to me to be quite justifiable and I find no reason to disbelieve this claim. Now, the question that will arise, is, then what will be the
solution for the plaintiff/company in case it files a suit in India. If the rule is rigidly followed to the effect that unless the original of the Trade Marks
registration certificate is produced in the suit in India then that suit will be liable to be dismissed in absence of the original document, then it will create
much hardship for the plaintiff/company for no fault of their own. In an era of globalisation this concept cannot be accepted and to my mind it will
cause actual hindrance to the business of a big company having its business throughout the world. Our legislature was also not unmindful to this
problem. As such, provision has been made to that effect in the Indian Evidence Act. It appears from Section 78 of the Indian Evidence Act that it has
been laid down to the effect:-

2011-02-04 Source : www.manupatra.com WIPRO Limited

 The following public documents may be proved as follows:

* * * *

(6) Public documents of any other class in a foreign country, —

By the original or by a copy certified by the legal keeper thereof, with a

certificate under the seal of a Notary Public, or of an Indian Consul or
Diplomatic Agent, that the copy is duly certified by the officer having
the legal custody of the original, and upon proof of the character of the
document according to the law of the foreign country.

13. So, it appears from the provision of Sub-section (6) of Section 78 of the Indian Evidence Act that it provides the mode of proof of public documents
of foreign country other than those mentioned in Sub-sections (3) & (4). Under Sub-section (6) of Section 78, public documents may be proved by
producing the original or by producing a copy certified by the legal keeper thereof. In the case of the copy there should be a certificate under the seal of
a Notary Public or a certificate of an Indian Consul or of a Diplomatic Agent to the effect that the copies are duly certified by the officer having the
legal custody of the original. In short the legal keeper of the foreign documents will give certificate to the effect that the copy is the true copy and the
Notary Public or the Indian Consul or Diplomatic Agent will certify that the person issuing the copy is in a legal custody of the document. So far as the
present suit is concerned, it appears that the plaintiff has in effect literally complied with all those requirements as provided under Section 78(6) of the
Act. As such, there cannot be any bar in admitting those certificates in evidence. Ld. Advocate for the defendant vehemently opposed this submission
of the ld. Advocate for the plaintiff by claiming that those certificates were not proved legally and those certificates cannot be termed as public
documents. If we look into the provisions of Section 74 of the Indian Evidence Act then it will appear that the definition of 'public documents' has been
provided to the effect:

The following documents are public documents— 1. Documents forming the acts or records of the acts—

(i) of the sovereign authority,

(ii) official bodies and tribunals, and

(iii) of public officers, legislative, judicial and executive, of any part of India or of the Commonwealth, or of a
foreign country.

14. I have already pointed out that those documents were issued by the Registration Authority of the foreign countries belonging to the Commonwealth.
As such, I am of opinion that those registration certificates should be considered to be public documents as provided under Section 74 of the Indian
Evidence Act. The argument of the ld. Advocate for the defendant in this respect is thus not accepted. So, in view of the provisions of Section 74 and
Section 78(6) of the Indian Evidence Act, I am of opinion that the Registration Certificates which were issued by the authorities of Australia and South
Africa should be taken into evidence as all the formalities have been observed, as provided under Section 78(6) of the Act.

15. It appears from those two certificates that the plaintiffs product 'OCUFLOX' came into the market on 17th November, 1992 as per certificate issued
by the Registration Authority of Republic of South Africa and on 22.10.92 as per certificate issued by the Registration Authority of Trade Marks of the
Commonwealth of Australia. So the fact remains that the plaintiff has been able to prove that its product 'OCUFLOX' was adopted and obtained
registration at least in the month of October,1992. So far as the defendant's product 'OCUFLOX' is concerned, it is the admitted position that the
defendant has claimed that its product was first marketed in the year 1993. So there cannot be any doubt that the plaintiff has prior adoption of the
product 'OCUFLOX' than that of the defendant's product. I have already pointed out that in the decision of the Hon'ble Supreme Court in connection
with this very case, there is a clear direction upon this Court to decide on evidence as to which of the party first adopted the mark 'OCUFLOX'. The
direction is to the effect "If on evidence it is proved that the respondents had adopted the mark prior to the appellants doing so, on the settled law, then
the respondents would become entitled to an injunction." I have already pointed out that from the materials on record it is very much clear that the
plaintiff adopted the mark 'OCUFLOX' in the year 1992 which is clearly prior to the adoption of the same mark by the defendant in 1993. Ld. Advocate
for the defendant argued that simply because the plaintiff adopted the mark prior to the defendant's adoption that will not be sufficient for the plaintiffs
getting an order of injunction. According to him, it must be proved by the plaintiff that this product was in extensive use in the market before the use of
the product of the defendant. He has further argued that simply because the plaintiff has reputation worldwide, that will not entitle him to get an order
of permanent injunction. The reputation of the company is not the criteria. The reputation of the product in question should be taken into consideration.
According to the Id. Advocate for the defendant the plaintiffs product 'OCUFLOX' has not received any reputation in the market prior to the use of
'OCUFLOX' by the defendant. That apart, he has further pointed out that admittedly the plaintiffs product is not in use in the Indian market as the
plaintiff has not yet acquired Trade Marks Registration in this country. He has also pointed out that the plaintiff has failed to prove that it has got any
intention of marketing its product in India in future. As such, the ld. Advocate argued that the plaintiffs prayer for permanent injunction should be
rejected. In support of his contention he has cited several decisions also. But I have already pointed out that so far as the present suit is concerned, the
Hon'ble Apex Court has clearly given direction to this Court to consider the fact as to who first adopted the mark 'OCUFLOX'. So we are to confine our
attention on that point only so far as the present suit is concerned. The decisions, as cited by both the parties regarding the other points in respect of an
action of passing off are not considered by this Court as the scope of this suit has been narrowed down by the direction of the Hon'ble Apex Court as
mentioned above. Hon'ble Apex Court in the said decision has further mentioned to the effect "the mere fact that the respondents have not been using
the mark in India would be irrelevant if they were first in the world market." I have already pointed out that from the materials on record it is clear that
the plaintiffs product 'OCUFLOX' was first adopted in the year 1992. As such, there cannot be any doubt that the plaintiffs adoption is prior to that of
the adoption of the defendant of its product 'OCUFLOX' in the year 1993.

16. Ld. Advocate for the defendant further argued that the plaintiff has failed to produce documents to show that it was undertaking business of
'OCUFLOX' throughout the world in an extensive way. But if we look into the plaint then it will appear that the plaintiff has claimed that it undertook
its business of 'OCUFLOX' from time to time. It may not be in a large-scale. But that makes little difference. We are to see as to whether the
plaintiff/company is conducting business of its product 'OCUFLOX' or not. This statement of the plaint finds support from the oral evidence also. It is
unbelievable that such a big multinational company would not do any business of the product although it got trade license for the same in different
countries. As such, this argument of the ld. Advocate for the defendant is not accepted.

2011-02-04 Source : www.manupatra.com WIPRO Limited

17. Ld. Advocate for the defendant further argued that since it is the admitted position that the plaintiff company is not doing business of 'OCUFLOX'
in India so there cannot be any harm if the defendant is allowed to do its business in India in respect of its own product 'OCUFLOX'. He has drawn my
attention to the fact that although the plaintiff applied for the Trade Marks Registration for the said product but, subsequently abandoned the proposal.
But it appears from the evidence on record that the plaintiff has claimed that it has not abandoned its intention for doing business 'OCUFLOX' in India.
On the other hand, it has claimed that as its application for registration was dismissed on technical ground, it has filed fresh application before the
authority and it is still pending. Be that as it may, we are not concerned with this fact very much as I have already pointed out that as per the decision of
the Apex Court it is immaterial whether the plaintiff is doing its business in respect of 'OCUFLOX' in India or not. The main thing that is to be
considered is whether it is doing its business at the material time in other parts of the world. I have already pointed out that before the adoption of the
defendant, the plaintiff already started its business of'OCUFLOX' in the year 1992. As such this argument of the defendant is not accepted.

18. Ld. Advocate for the defendant further argued that the plaintiffs product 'OCUFLOX' has not been advertised in India and people of this country are
not aware about this product of the plaintiff in any way. But I find no substance in this argument for the ld. Advocate for the defendant. If we look into
the evidence of P.W. B Nageswar Rao, who is an officer of the National Library, Kolkata, then it will appear that he in his evidence has produced a
medical journal showing that the plaintiffs product 'OCUFLOX' was advertised in the said journal. Of course, the plaintiff has failed to produce any
other journal or like other substance to substantiate its claim that its product 'OCUFLOX' has been well-advertised in India and a large-scale of Indian
public are aware of it, still for that reason only it cannot be said that the plaintiffs product is not known in the Indian market. Again, I may point out
here, that we are living in an age of globalisation and it is common feature amongst the reputed Indian Doctors to visit foreign countries extensively
and get themselves acquainted with medical products of big multinational companies of other countries during their visit of those countries and also
through internet. As such, when it has been established that there was existence of the plaintiffs product 'OCUFLOX' before the introduction of the
defendant's product in the market, then we can safely presume that the Doctors in our country are aware of such a product of the plaintiff. So far as the
present case is concerned, it is the admitted position that the name of the product of both the companies are absolutely same viz 'OCUFLOX'. The
question of deception or ambiguity cannot be overlooked so far as the present matter is concerned. Possibility cannot be ruled out that by taking a
deceitful technique, a party may try to pass off its product to the members of the public although the said product is that of another company. Here, the
position is very peculiar. Both the names are similar and as such it is very much obvious that the members of the public will be confused while
purchasing this product from the market. If a person wants to purchase 'OCUFLOX' as produced by the plaintiff/company then there is every possibility
that he may be handed over the product 'OCUFLOX' as prepared by the defendant/company. As the names of both the products are similar, so there is
every possibility that a customer will be deceived. Same thing can also be made applicable so far as the prescription issued by the Doctors. It is our
common experience that the Doctors simply prescribe the name of the medicine and not of the manufacturer of the said medicine. It is not possible for
them also to do that. As such, if the Doctor wants to prescribe 'OCUFLOX' which is the product of the plaintiff, then there is every likelihood that the
customer may be handed over the product 'OCUFLOX' as prepared by the defendant company. The situation in such circumstances, may be dangerous
even. It is the admitted position that the defendant's product 'OCUFLOX' is meant for the treatment of eyes and ear, whereas the plaintiffs product
'OCUFLOX' is meant for treatment of eyes only. As such, if the customer is confused and identified a wrong product, then there is every likelihood that
the said customer may be in trouble. Under such circumstances, it is always desirable that the companies should use different brand name for their
product in order to be faithful to its customer. I have already pointed out that so far as the present suit is concerned, it is in respect of medical product
and so far as medical product is concerned there cannot be any doubt that utmost precaution should be taken to prevent any confusion in the mind of the
customer regarding the actual product which he is purchasing. If the defendant's product 'OCUFLOX' is allowed to be in existence in the market,
although it came much later than that of the product of the plaintiff company, then in my opinion, it will create much confusion and hazards to the
public at large and in the interest of the public the defendants should be restrained permanently from marketing the said product by using the brand
name of 'OCUFLOX' as prepared by the plaintiff/company. The defendant has claimed that the material as used by the said company in preparing the
product 'OCUFLOX' is different with that of the product of the plaintiff/company. If that is so, then I fail to understand as to why the defendant is
insisting upon using the brand name of the plaintiff/company viz. 'OCUFLOX'. The defendant can very well market its product by using another brand
name by using the substances which they are claiming to have used while preparing its product and if that is done then there will be no confusion at all
in the mind of the public and the business of the defendant cannot in any way hamper. Instead of doing that the defendant is insisting upon permitting it
to use the brand name of 'OCUFLOX' for their business in India. This, in my opinion, is not at all permissible in view of my discussion made above.

19. Therefore, from my above discussion, I am of opinion that it is a fit case where the plaintiffs prayer for permanent injunction should be allowed. All
the issues are answered accordingly.

Issues Nos. 6, 7 & 8:

20. Since I have already decided that the plaintiff is entitled to get an order of permanent injunction, so the question of the defendant getting any
compensation or damages does not arise at all. These issues are answered accordingly.

21. In the result the suit succeeds on contest.

Hence,

Ordered:

22. That the suit and the same is decreed on contest with cost. The defendants are restrained permanently from using the mark 'OCUFLOX' in any of its
product in any way whatsoever. The defendants are further directed to destroy all its product which bears the mark of 'OCUFLOX' immediately.

23. All parties are to act on a xerox signed copy of the operative part of this judgment on usual undertaking.

© Manupatra Information Solutions Pvt. Ltd.

2011-02-04 Source : www.manupatra.com WIPRO Limited