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TMI Blog2001 (7) TMI 1305X X X X Extracts X X X X X X X X Extracts X X X X ..... cal preparations and filed application on or about 9th June, 1997 for registration of the trade mark LIPICARD under No. 742450 in respect of pharmaceutical preparations falling in Clause 5 of the Fourth Schedule of Trade Mark and Merchandise Marks Rules, 1959.. This application is still pending. In June, 1998 the plaintiffs decided to manufacture and market the new drug in India for the first time. Hence, plaintiff No. 2 applied for permission to the Drug Controller General (India), New Delhi for import of the bulk drug Fenofibrate for the purpose of testing and carrying out formulation development. In November, 1999 the plaintiff No. 2 applied for permission to the Drug Controller General (India) for import and manufacture of Fenofibrate capsules. In December, 1999 the Drug Controller General granted permission to the plaintiff No. 2 for import of the said drug. Thereafter, the plaintiffs applied and were granted drug manufacturing license on 4th February, 200 by the Food and Drug Administration Authority permitting it to manufacture LIPICARD preparation. After taking further necessary steps, the plaintiff No. 2 manufactured the medicine under the trade mark LIPICARDin May, 2000 a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that in view of the judgment of Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. , the distinction between scheduled drug and non-scheduled drug has been dispensed with and as per this judgment, even if drugs are scheduled drugs, Court would apply stricter test of deceptive similarity and prohibits sale of any drugs which are marketed under the brand that will lead to confusion and deception. 3. The case of the defendant in the written statement, in I.A. No. 12230/2000 as well as in I.A. No. 3035/2001 is that the plaintiffs are not the proprietor of the trade mark in question. Plaintiffs have not invented any such word 'LIPICARD'. In fact, according to the defendant, plaintiffs have themselves abbreviated the prefix of the mark LIPI from the generic term "Lipid Correction" i.d., management of Lipid abnormalities. there are various companies who are having registered trade mark pending application and are using the prefix LIPI in relation to pharmaceutical preparation and many such instances are given by the defendant. On this basis it is stated that the plaintiffs are not the proprietors of the mark LIPICARD and the name is not ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... a degree of care they are likely to exercise in purchasing and/or using the goods. (6) The mode of purchasing the goods or placing order for the goods and. (7) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. 5. When the question of passing of action is to be decided in a case involving medicinal products, the Court pointed out that the test to be applied to adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. One can deduce the following particular principles/peculiar features which is to be kept in mind in such cases : (i) The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The Courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of m ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health. These principles are kept in mind while deciding these applications. 6. Admittedly, both the drugs are scheduled drugs. Both the drugs are lipid lowering drugs used in cardiac diabetes patients with elevated cholesterol level. Therefore, it is the word Lipid which is indicative of the use of both the drugs. In S.B.L. Ltd. v. Himalaya Drug Co. , the Division Bench of this Court held that nobody can claim exclusive right to use any word, abbreviation which has become publici juris. The Court observed that in the trade of drugs, it is a common practi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... LIPIZYL 520404 Advertised Nicholas Labs India Limited 7. I am not quite convinced with the argument of the plaintiffs that list of aforesaid trade marks without any corroborative evidence of views cannot be relied upon as evidence in support of plea that LIPI is common to trade. It is also not a case of splitting the trade mark for purpose of comparison but a case where prefix LIPI which is generic word, has been used by not only both the plaintiffs and defendant but number of other such drug manufacturers. 8. In view of the aforesaid factual position as on the date, coupled with the fact that when even the plaintiffs launched their product LIPICARD there were number of drug manufacturers in respect of same medicinal preparation which were using the prefix LIPI, it is difficult to accept the submissions of the plaintiffs that trade mark LIPICARD adopted by them is an invented word. The word LIPI is a generic word common to the trade and already stands adopted by more than 20 companies and is in vogue for last number of years. In such circumstances by launching the product LIPICARD in June, 2000 the plaintiffs cannot claim monopoly over this name and restrain defendant from ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... y recollecting faint impression..we are therefore unhesitatingly of the opinion that the proprietor of LIV 52 was not entitled to the grant of an injunction restraining the use of LIV-T." 9. As already pointed above, Lipid is a fat or fatlike substance which causes diabetes and cardiac problems. These drugs are lipid lowering drugs used in cardiac and diabetes patients with elevated cholesterol level. The products are meant for Lipid Correction and Protection i.e. for Lipid Reducing Therapy. The Director of Drug Control Authority, Gujarat has granted permission to the defendant as well, for manufacturing and marketing of the product under license No. G/1339 on 7th June, 2000 for the purpose of the said product. Therefore, there is nothing unique or distinctive if plaintiffs are given the permission by the Drug Controller Authority for manufacturing and marketing of their products. , F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd. and , Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Limited and Anr. ) 10. From documents on record, one also notices that both plaintiffs and defendant launched their respective products almost arou ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... similar. Following differences projected by the defendant in the two products relating to colour combinations and other features can also not be lose sight of : Plaintiffs' "LIPICARD" Defendant's "LIPICOR" Sold on Doctor's prescription Sold on Doctor's prescription. Contains Drug Fenofibrate Contains Drug Atorvastatin Sold on round strip Sold on square strip Sold in capsules indicated by name of week days. Contains 10 tablets. Packing is yellow and red Packing is silver and golden. sold at ₹ 49/- for 7 capsules Sold at ₹ 197/- for 10 tablets or ₹ 115/- for 10 tablets. Name USV Ltd is printed in bold letters. Name INTAS is placed one each packing and strip. 12. It is thus observed that one product is red and yellow, the other is silver and golden. One is pasted on round shaped paper, the other is pasted on a square shaped paper. Prince are different. One costs ₹ 49/- for 7 capsules, the other costs ₹ 198/- for 20 mg. or ₹ 115/- for 10 mg. The shape of the boxes are vastly varying. These have to be necessarily routed and sold through prescription of doctors being Schedule "H" drugs pro ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... s a relevant consideration whether the defendant has yet to commence his enterprise somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted." 14. In view of these glaring facts of this case, judgments cited by the plaintiffs have no application in the present case. Certain cases cited by the plaintiffs are those where two trade marks were held to be deceptively similar. Like : 1. ( Amritdhara : Lakshmandhara) 2. ( Ambal: Andal ) 3. 35 (1988) DLT 417 ( Shapola : Saffola ) 4. ( Harrison : Haricon ) 5. 1992 (16) ARB.L.R. 297 ( Betaloc : Betalong ) 6. 1989 IPLR 194 ( Sephan : Cetian ) 7. 13 (1988) IPLR 194 ( Hepasyp : Hepax ) 8. ( Ciba : Cibol ) 9. 1977 IPLR 235 ( Naprocid : Naprosyn ) 10. (17) 1997 PTC 34 ( Diclomol : Dicmol ) 11. ( Camlpose : Calmprose ) 15. However, these judgments have no relevance in the instant case in view of the reason explained above, particularly when in the instant case word prefix LIPI in the two products is a generic word referring to the ailment which it treats and there being number of products already in the market using the prefix LIPI. For same reason, the judgments cite ..... X X X X Extracts X X X X X X X X Extracts X X X X
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