India: Delhi High Court grants temporary Injunction against Macleods Pharmaceuticals Ltd

February 20, 2017

In a recent case decided by the Delhi High Court, Justice R.K.Gauba granted temporary injunction in favor of Intas Pharmaceuticals Ltd (hereinafter referred to as the “Plaintiff”) restraining the use of its trademark by the Macleods Pharmaceuticals Ltd (hereinafter referred to as the “Defendant”). The Court granted the interim relief as the Plaintiff proved a prima facie case in their favor and the Defendants’ use of the mark was phonetically/visually similar to that of the Plaintiff’s mark.

Brief Facts of the Case:

The Plaintiff is a company incorporated under the Companies Act and is engaged in the manufacture of medical and other pharmaceuticals products. The Plaintiff got its trademark GABAPIN registered in the year 1997. In May 2016, it came to the knowledge of the Plaintiff that the mark used by the Defendant ‘GABAMIN’ is phonetically/visually similar to the Plaintiff’s mark ‘GABAPIN’ and is likely to cause confusion in the minds of public.

Accordingly, the Plaintiff filed a civil suit seeking permanent injunction against the Defendant for infringement of its registered trademark “GABAPIN”.

Plaintiff’s Submission

  • The Plaintiff produced records before the Court, showing that it had introduced the medicines in the name of GABAPIN ME and GABAPIN NT which is a variation of GABAPIN.
  • The Plaintiff contended that the Defendant has not shown any document or alleged in any manner to be selling any medicinal product containing the chemical compound “Gabapentin” alone.
  • In the application for ad interim relief the Plaintiff alleged that it learnt about the medicinal products having been introduced in the market by the Defendant sometime in May 2016 and in the Plaint the Plaintiff mentioned that the Defendant had applied for registration of the mark “GABAMIN” under Class 5 before the Trademark Registry and upon this knowledge the Plaintiff filed its opposition in January 2010 to which the Defendant had failed to file any counter statement.
  • The Plaintiff further contended that the use of the mark “GABAMIN” and “GABAMIN NT” by the Defendant is phonetically/visually similar to its registered mark and is dishonest and intended to ruin the goodwill and reputation of the Plaintiff.

Defendant’s Submission

  • The products of the Plaintiff and that of the Defendant has different composition and there is no scope for confusion.
  • The Defendant contended that in its mark GABAMIN the expression GABA is only a prefix and is a derivative of the chemical compound “GABAPENTIN”. It is a generic term and monopoly cannot be claimed by the Plaintiff. The rest of the mark is dissimilar and the suffix “MIN” is sufficient to distinguish the two products.
  • The Defendant further contended that the Plaintiff is guilty of concealment of the fact that it had knowledge about the products of the Defendant since 2010, as the Plaintiff had earlier opposed an application of the Defendant in relation to the mark “GABAMIN”.
  • The Plaintiff is not entitled to equitable relief on account of equitable laches and acquiescence. The Defendants’ product has been in the market since a long time, a fact that can be substantiated by their sales report.
  • The Defendant claims that balance of convenience lies in their favor.

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.

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