IPR Supreme Court Judgment- Milmet Oftho Industries & Ors v. Allergan Inc. [Civil Appeal No. 5791 of 1998]
There are several laws on Trademarks. These laws vary by countries and regions; for instance, the Lanham Act for the United States, the Indian Trademark Act, to mention a few. But there is not a single law which covers trans-boundary trademarks.
It is expected that a global brand must register its trademark in any country it enters. Thus, it is rare to see cases such as the above where the parties are trying to establish the first-in-time rule over trans-national boundaries for their medical goods.
The case went all the way to the Supreme Court before it was finally decided that the first-in-time applies to all irrespective of nationality and registration provided the business in question is of medical importance.
Facts of the Case-
The Appellants and the Respondents are pharmaceutical companies and one of their product is the OCUFLOX which is the bone of contention. Both products have a basic chemical component that pertains to the eye.
The Appellants claimed that their OCUFLOX contains a medical preparation of CIPROFLOXACIN HCL from which the name was drawn from. A Prefix of OCU and a suffix of FLOX and it is used for eye and ear treatment. The Appellant applied for registration of the name on 25th August 1993 under the Food and Drug Control Administration.
They also applied for the registration of the Mark on September 1993. Prior to the lawsuit, the application was pending.
The Respondents are into global manufacturing and distribution of drugs. Their products are in Australia, Europe, South African, and South America. They have an approved registration in countries such as the United States, Canada, Australia, Ecuador, South Africa, Mexico, Bolivia, Peru, and South Africa. They applied for registration in India but their registration is pending.
The trial court which is the Calcutta High Court granted an interim injunction against the Respondent. The court held that the Appellants were first in time in India to register the product, as such, they have the right to the name and the trademark.
Subsequently, the High Court revised its decision and revoked the interim injunction against the respondents.
The case was brought before the attention of the Supreme Court. Thus, the appeal pertaining to this case by the Appellant is against the decision of the Calcutta High Court which was dated on the 16th November 1997.
The Issues for Determination-
The Appellants argued that they are the first-in-time to file for registration of their name and trademark in India. Also, they claimed that their product is deceptively similar and identical to the product the Respondents brought into the Indian market.
They also highlighted that they are a company located in India with the purpose of providing goods (products) for Indian users.
The Appellant argued that they coined the word OCUFLOX from OCULAR CIPROFLOXACIN HCL which are basic medicinal preparation for the eye and ear treatment. They adduced that the branding and design of their product are different from what the Respondents have or intend to bring into the market.
The Respondents, on the other hand, argued that they are a global company with registrations approved and pending in several countries. Their aim is to deliver OCUFLOX to doctors, health clinics, pharmaceutical companies, and pharmacy stores across several regions including India.
The Respondents claimed that they have filed registration of their name and trademark in India and it is still pending approval.
The Respondents pointed out that OCUFLOX is a medical preparation for the treatment of the eyes. They adduced that allowing another brand with similar or identical names will create confusion not only in the local market but also the international market.
The Supreme Court Judgment Delivered-
The Supreme Court considered all points of arguments and relied on two cases to pass its judgment. It relied on the case of N. R. Dongre v. Whirlpool Corporation, 1996 (16) PTC 583 and Cadila Health Care Ltd v. Cadila Pharmaceutical Ltd 2001 PTC 300 (SC).
In the former case, the plaintiff registered a trademark for Whirlpool for their washing machine. The court held that the name was passing off as a company is already known by that name. Therefore, if they include the name ‘Whirlpool’, people will think it emanated from the company. They are allowed to register another name except for the word ‘whirlpool’.
In the latter case, the court relied on the judgment of the Supreme Court which stated that when a name is deceptively similar or identical especially in medical practice, it does not matter that it is a local or an international brand. The sole purpose is not to confuse people.
This is because doctors are known to write prescriptions which are interpreted by the Pharmacists. Most times doctors’ prescriptions range from legible to ineligible handwriting which is only deciphered by the Pharmacists by relying on the chemical composition of the drug mentioned to find a suitable brand.
Therefore, it would be grievous whereby the pharmacist provides the wrong product because the chemical component written matches the name of another drug.
In deciding, the court relied on seven (7) principles in the case to reach a decision. They include
- The nature of the marks and name.
- The nature of the goods or products.
- The degree of resemblance between the products in dispute and the parties involved.
- The similarity between the products and the name.
- The class of the purchasers of the products.
- The mode of the purchase
- Other extenuating circumstances
The court held that it would be a better decision if the Appellant were to refrain from using the name and trademark although they are the first-in-time to file their application for registration in India.
The court decided that since the Respondents are already a global brand and are recognized in different regions of the world with the OCUFLOX, allowing another brand to use that name may be deceptive as the people will think they are one and the same company.