Decision of the Court
The Court started that it is true that neither side can claim exclusive rights to the use of a generic term such as "Gabapentin". The Court finds no substance in the submission of the Defendant that the Plaintiff is guilty of concealment of material facts. The Plaintiff has clearly declared in the pleadings that its product primarily contains the chemical compound "Gabapentin". The two other products later developed had other ingredients, one sold under the mark "GABAPIN ME" being similar to that of the impugned product of the Defendant, both also having as its contents "Methylcobalamin" and the other "GABAPIN NT" being again similar to the other product of the Defendant "GABAMIN NT", each adding the chemical compound "Nortriptylin" to the prime ingredient "Gabapentin". The Court rejected the contention of the Defendant that Plaintiff concealed the facts relating to trademark registration application submitted by the Defendant in 2006.
The Court further observed that filing of an application of registration of a trademark indicates that the applicant only proposes to use the trademark. Hence, it cannot be assumed that the Plaintiff had knowledge of the product being sold in market since 2010. The Court further observed that it is not possible to raise objections on the ground that prefix used therein is generic in nature and it is not permissible for the mark to be split up to compare them.
On these grounds, the Court held that the Plaintiff has made out prima facie case in its favor. The Court allowed the application under Order 39 Rule 1 & 2 of the Code of Civil Procedure and granted the relief of temporary injunction and restrained the Defendants from using the mark "GABAMIN" and / or "GABAMIN NT" or any other words identical or deceptively similar thereto, singularly or in conjunction with any other words or monogram / logo as a trade mark, service mark, trade name, trading style, or in any other manner whatsoever. However, the Court allowed the use the mark GABAMIN-NOR. But the use of the said mark shall be such that “GABAMIN‟ and “NOR‟ are in the same font and size.