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

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