India: Bombay High Court Stays the Order Passed in Favour of Alcon Inc. and Alcon Laboratories (I) Pvt. Ltd

Last Updated: 8 August 2010
Article by Margaret Niangsiamkim

The issues of trademark infringement, passing off and copyright infringement has once again been raised in the recent Bombay High Court case Alcon Inc. and Alcon Laboratories (I) Pvt. Ltd. & Anr vs. Ajanta Pharma Limited by the plaintiffs Alcon Inc. against the defendant Ajanta Pharma. Alcon. It is the claim of Alcon Inc. that one of its products is an Ophthalmic solution comprising of the basic active ingredient known as "TRAVOPROST" sold in various countries under the Trademark "TRAVATAN". This product is in the form of eye drops used for the treatment of glaucoma.

Alcon Inc. asserted that TRAVATAN product is the only Ophthalmic product in the Indian market with the prefix "TRAVA" and over the last many years TRAVATAN has acquired goodwill and reputation. It is the contention of Alcon Inc. TRAVATAN product insert qualifies as a literary work and that they are the proprietor and the first owner of the copyright in the product.

Alcon Inc. claimed to have come across infringing ophthalmic products manufactured and sold by Ajanta Pharma Limited under the mark "TRAVAXO", and hence the present suit has been filed. Alcon Inc. contended that the said product of Ajanta Pharma Limited contains the same active ingredient as that of their TRAVATAN product and sold as eye drops in packaging material/cartons using a similar colour combination of white and green as that of Alcon Inc.'s product. They further asserted that the mark "TRAVAXO" used by Ajanta Pharma is similar to the mark "TRAVATAN", in such a way that the two marks are visually, phonetically and structurally similar. They argued that the unauthorized use of such mark by Ajanta Pharma amounts to infringement of Alcon Inc.'s mark causing the likelihood of misrepresenting their goods to have some nexus with the goods of Alcon In. thereby causing damage to the goodwill and reputation of their business. They also argued that the prefix "TRAVA" which is copied from their TRAVATAN mark is the dominant feature of Ajanta Pharma's mark "TRAVAXO".

On the issue of copyright infringement, Alcon Inc.'s contended that the products insert contained in the "TRAVAXO" product of Ajanta Pharma are a reproduction and/ or a substantial reproduction of their literary copyright work contained in the TRAVATAN product insert and the same has been copied by Ajanta Pharma Limited from their product insert which is a copyright work, and in doing so, Ajanta Pharma has infringed the copyright of Alcon Inc.

Ajanta Pharma denied the contentions of Alcon Inc. on various grounds. First, they averred that they have coined the mark TRAVAXO by using "TRAV" from the main ingredient of the drug "TRAVOPROST" and added the letters "AX" between the letters "V" and "O" to make out a pronounceable word. They also submitted that they have already filed an application for registration. They argued that their mark is phonetically, structurally and visually different from that of Alcon Inc. and contended that there are several traders using the trademarks bearing the prefix "TRAV". They alleged that their product insert is completely different from that of Alcon Inc., whish has been created as a result of independent research and studies carried out by the Research and Development Department. They contended that they have not copied from the alleged literary copyright work contained in the product insert of Alcon Inc.

Alcon Inc. on the other hand submitted that they were not aware of other manufacturers using the letters "TRAVO" or "TRA", but argued that the mark used by Ajanta Pharma is phonetically similar to the mark used by them. Alcon Inc. also submitted that the term "TRA" cannot be a publici juris as Ajanta Pharma has applied for registration of their trademark.

The contrary contention of Ajanta Pharma was that that the basic ingredient of their product and that of Alcon Inc. is "TRAVOPROST", but the two impugned marks are different and no phonetic or deceptive similarity exists. Their submission has been that since the carton used for both the products are completely different and there is a vast price difference, there is no likelihood of consumers getting confused.

The Court after considering the submissions made by both the parties opined that the basic ingredient of the product of Alcon Inc. and Ajanta Pharma is TRAVOPROST, which is in the nature of eye drops. The Court also took note of the fact that the prefix "TRAV" has been used in both the products, and that TRAVATAN is a registered trade mark of Alcon Inc. The Court held that the mark used by Ajanta Pharma has strong resemblance with that of Alcon Inc. and that there is phonetic similarity. The Court noted that the mark used by Alcon Inc. has subsisting registration made in 1988, however Ajanta Pharma has applied for the registration of its mark recently.

The Court held that the difference in the size of the cartons used for the products makes no difference when there is similarity in the marks adopted by both the parties and the ingredient are same. The Court took the view that the first part of the product insert under the caption "Mechanism of Action" appears to be word to word same barring to small changes. The second part of the product insert of Alcon Inc is titled "pharmacokinetics" and that of Ajanta Pharma is "Pharmacodynamic". The said second heading has three sub headings in both the product inserts by the title "Absorption, Metabolism and Elimination". The Court opined that baring deletion of a sentence and change of two or three words in the product insert of Pharma Ajanta, the product insert of Alcon Inc. and Ajanta Pharma is virtually identical. The Court established a case of copyright infringement against Ajanta Pharma and made out a case for grant of ad-interim relief for the claims made by Alcon Inc.

The Court however stayed the operation of the order since the Notice of Motion is pending for grant of ad-interim relief from August 2008, and ordered Ajanta Pharma to maintain account of the sale of their products.

© Lex Orbis 2009

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions