Milmet Oftho Industries and Ors. vs. Allergan Inc.
Citation: 2004 (12) SCC 624
Decided on: 07.05.2004
Facts of the Case:
The Appellants are an Indian Pharmaceutical company. The Respondents are also a Pharmaceutical company which manufacture pharmaceutical products in several countries. The Respondents filed a Suit for an injunction based on an action for passing off in respect of mark “OCUFLOX” used on a medicinal preparation manufactured and marketed by the Respondents. The Respondents claimed that they were the prior users of the mark OCUFLOX in respect of an eye care product containing Ofloxacin and other compounds. They claimed that they first used this Mark on 9th September, 1992, after which they marketed the product in other countries like Europe, Australia, South Africa and South America and that they had obtained registration in Australia, Bolivia, Ecuador, Mexico, Peru, South Africa, Canada and the United States of America. They claimed that they had also applied for registration of the mark in several other countries including India and that their applications were pending. The Appellants were selling “OCUFLOX” on a medicinal preparation containing CIPROFLOXACIN HCL to be used for the treatment of the eye and the ear. They claim that they coined the word “OCUFLOX” by taking the prefix “OCU” from “OCULAR” and “FLOX” from “CIPROFLOXACIN” which is the basic constituent of their product. The Appellants were granted registration by the Food and Drug Control Administration on 25th August, 1993. They have also applied for registration of the mark OCUFLOX in September 1993. Their application is also pending.
Thereafter, on 18th December, 1996 the Respondents got an ad interim injunction. This injunction however was vacated on 29th January, 1997. The single Judge held that the Respondents’ product was not being sold in India and the Appellants having introduced the product first in India, the Respondents were not entitled to an injunction.
Judgment:
The Supreme Court restrained appellant from using the mark OCUFLOX. The judgment was given irrespective of the fact that the mark was neither used nor registered in India. The court held that the respondent was the first to enter the market and adopt the mark. It does not matter that the respondent has not used the mark in India if they are the first to enter the world market.
n respect of medicinal products it was held that exacting judicial scrutiny is required if there was a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products. It was held that even though certain products may not be sold across the counter, nevertheless it was not uncommon that because of lack of competence or otherwise that mistakes arise specially where the trade marks are deceptively similar. It was held that confusion and mistakes could arise even for prescription drugs where the similar goods are marketed under marks which looked alike and sound alike. It was held that physicians are not immune from confusion or mistake. It was held that it was common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently the handwriting is not legible. It was held that these facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike.
