Trademark disputes in relation to
pharmaceutical products find themselves in litigation time and
again. In a plea for an interim injunction at the High Court of
Delhi, an ex-parte order had been rendered and the parties were
heard to confirm the order. The trademarks in question were
DIGEPLEX (for pharmaceutical preparations containing vitamins) and
DYGEX (for non-specific indigestion disorders) finding a place in
the suit, Shreya Life Sciences Pvt. Ltd. v. Magna Biochem Pvt.
Ltd. [2008 (38) PTC 331(Del.)].
According to the Averments, DIGEPLEX
had been adopted, applied for and registered by the predecessors of
its holders. The mark was later registered in the name of Rallis
India ltd, which was passed on to the present holder of the mark
vide a deed of Assignment. Shreya Life Sciences asserted that they
had filed the necessary documents in the regard at the Trademark
Registry and that the same was pending, while the mark itself was
said to be valid and subsisting. The mark was said to be
extensively used for the last thirty five years in India, bearing
association to its holders. They stated that the goods dealt with
allopathic compositions and had become a legend, owing to its
availability in various packages, variants and modes of
administration. On account of quality and expertise, they claimed
reputation and goodwill both amongst doctors and consumers and
corroborated this through invoices that they submitted depicting
large scale use.
Shreya Life Sciences averred that
they learnt of preparations under the trade name DYGEX in July 2004
and that the same were available over the counter. They stated
DYGEX to be phonetically, visually and structurally similar and
that a likelihood of confusion and deception was stated to be
present owing to the similarity in the marks. They stated that the
letters "PL" had been omitted and that the drug with the
impugned mark was often sold without a doctor' prescription.
They alleged Magna Biochem to have committed infringement of their
Shreya Life Sciences averring the
use of the impugned mark to be diluting the distinctiveness of the
well-known mark put forth their prayer for an injunction. In the
event of similarities in the mark, but difference in compositions,
the probability of irreversible medical complications arising out
of the confusion was also brought to the fore.
Magna Biochem stated that a suit was
pending to seek a declaration that DYGEX is not similar to DIGEPLEX
and that the present suit suffered from delay and laches. They also
propounded that DYGEX was a food product and not a medicinal
preparation. Denying all allegations, they discussed the price
differential as also the availability of the medicine even without
prescription. They also argued that Shreya Life Sciences' mark
was not distinctive and cited examples using similar/identical
Taking note of the precedents cited,
the Court opined that fundamental distinction is necessary for a
claim of infringement based on statutory rights. The court noted
that while Shreya Life Sciences' drug was a prescription drug,
while Magna Biochem' mark related to an over-the-counter drug.
The Court opined that on over-all consideration of factors that a
prima facie case of infringement was not shown. Further,
being a food product, Shreya Life Sciences' contention of the
food product being registered as a pharmaceutical product and that
impugned mark causes dilution had not been shown. In this light,
the ex-parte order was vacated in favour of Magnum Biochem.
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