- (1.) THESE two appeals are directed against the order dated 2-6-1998, passed on O. A. Nos. 182 and 183 of 1998 on the Original Civil jurisdiction of this Court, vacating the ex parte interim injunction granted on 6-4-1998.
(2.) ORIGINAL Application Nos. 182 and 183 of 1998 was filed for grant of ad interim injunction restraining the respondent and others from use or otherwise dealing with the pharmaceutical preparations and substances under the trade mark "spasmo-FLEXON". O. A. Nos. 183 of 1998 was for grant of ad interim injunction restraining the respondent and others from passing off the goods under the trade mark "spasmo-FLEXON", on the ground that the same is identical or deceptively/phonetically similar to the appellant's trade mark "spasmo-FLEXON". In the suit, the trial Judge by an Order dated 16-4-1998 granted adinterim injunction ex parte. Against the said order, the respondent herein filed Application Nos. 1650 to 1654 of 1998 to vacate the ex parte, order passed on O. A. Nos. 182 and 183 of 1998 and also to permit the respondent to complete preparation of the "spasmo-FLEXON" drug and to dispose of the manufactured drugs and also the unsold drugs of the respondent pending disposal of the applications. The learned single Judge allowed those applications and vacated the ex parte order of interim injunction holding that both the plaintiff and the defendant should maintain their respective structure and colour of the drugs. Aggrieved by the said common order, the appellant is now before us. The case of the appellant/plaintiff is that it adopted the trade mark "spasmo-PROXYVON" in respect of its pharmaceutical products and the said trade mark was also registered on 4-8-1997 under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as'the Act'for short) and the registered number is 327582. The said trade mark was advertised in the Trade Mark Journal No. 706 at page No. 612, and the registration of the same was notified in Trade Mark Journal No. 750 at page No. 450. Thereafter, it was renewed upto 4-8-1998 and that fact was also notified in Trade Mark Journal No. 1014 at page No. 763. Subsequently, the appellant/plaintiff had also applied for renewal of the said trade mark for a further period of 7 years. The appellant came to know that the respondent herein has introducing a pharmaceutical product under the trade mark "spasmo-FLEXON". A drug for relieving pain, with almost same preparation and bearing a deceptive similarity to that of the appellants trade mark "spasmo-PROXYVON", and, hence there is every possibility for the public being mislead in buying it. In other words, the trade mark "spasmo-FLEXON" is deceptively and phonetically similar to that of the appellant's trade mark "spasmo-PROXYVON" and also having colourable imitation that led to filing of suit and interlocutory applications pertaining to use of trade marks and passing off goods. The respondent-Company has filed a counter-affidavit stating that it was founded in or around the years 1972 and for the past 25 years, it has built up a reputed business in the pharmaceutical industry and is presently among the top 15 pharmaceutical companies in India . The respondent-Company has around 22 branches and more than 1000 stockists spread out all over India . The annual sales turn over of the respondent-Company is presently around Rs. 160 crores. In the year 1986, the respondent-Company adopted the invented word "flexon" as a trade mark called a pain relieving drug meant for muscles in the human body. The "flexon" drug of the respondent-Company gained huge success and sales have been growing steadily over the past 12 years and presently having a turn over of more than Rs. 10 crores. The trade mark "flexon" is associated exclusively with the respondent-Company. It is submitted that in the field of medicine and pharmaceuticals, it is a common and established practice that a part of the brand name of a drug contains (i) the name of the ailment; (ii) the name of the organ which it treats; or (iii) the principal ingredient. The above enables the doctor to associate a particular trade mark with an ailment, organ or ingredient. Such descriptive portion of the trade mark is by its very nature, generic, publici juris and common to the trade and no trader can claim exclusive rights to such descriptive portion of an ailment, organ or ingredient. It is further submitted that in October, 1997, the respondent-Company decided to launch a new drug as a by product of the main "flexon" drug. While the "flexon" drug treats all muscular pains, the new drug would be used to treat'spasms'of the soft muscles of the stomach and intestines which are one particular type of muscular ailment/pain. As per the common established practice in the pharmaceutical industry, the brand name "spasmo-FLEXON" was therefore coined, by combining the generic/descriptive name of the ailment, i. e. ,'spasm', along with the respondent-Company's famous brand name "flexon". The new drug "spasmo-FLEXON" was launched in October 1997 and has been sold continuously all over India thereafter. The drug "spasmo-FLEXON" has been well received in the market and by the doctors and chemists and patients and sales have been steadily increasing and the drug has tremendous potential for further growth and popularity in use.
(3.) IT is further submitted that more than 32 applications/registrations can be seen in the Trade Marks Registry Records for trade marks starting with the word "spasmo". The above makes it clear that the brand name "spasmo-FLEXON" was coined and used in the normal course of established'pharmaceutical industry practice and not to cash in on the reputation of the "spasmo-PROXYVON" drug of the petitioner. The use of the word "spasmo" as a prefix just indicates the type of ailment being treated which is common in the pharmaceutical industry as a descriptive generic terms and is'publici juris'and open to use by all. The drug was launched in Bombay and all over India in october 1997 and there were good sales with steady increase month by month, which is reflected at para 9 of the counter. From October 1997 upto March 1998, there is a steady increase from Rs. 8, 375/- to Rs. 5, 68, 174/- in November 1997 and later with variations in between Rs. 2 and 3 lakhs till March 1998. In april 1998, sales were temporarily stopped due to an ex parte order of interim injunction until the beginning of June 1998 when it was vacated, Sales of "spasmo-FLEXON" drugs were thereafter resumed on an all India basis and for the past 2 and 1/2 months, have been enjoying good sales and demand all over India. The sales in June and July 1998 are given below, June 1998 - 74756 strips Rs. 3, 16, 000/- July 1998 - 64443 strips Rs. 2, 73, 000/- The grievance of the respondent is that the appellant obtained an ex parte order of interim injunction by suppressing the material facts from this court. The explanation is that the appellant and the respondent-Companies are both based in Bombay and the "spasmo-FLEXON" drug was launched in October 1997 more than six months before the filing of the suit. As a rival company, the appellant was well aware of the launching of the drug, but still filed a suit in Chennai six months after the launch of the "spasmo-FLEXON" product in Mumbai and had been attempting to make out a case that the "spasmo-FLEXON" drug was seen at Chennai in March and april 1998, whereas, to the knowledge of the appellant, the drug was being widely sold in Bombay from October 1997. It was also contended that the appellant-Company deliberately suppressed the fact that the brand name "flexon" had been used by the respondent for more than 10 years in relation to a pain relieving drug for muscles and that it was the normal industry practice to add the word "spasmo" as a prefix to indicate that "spasmo-FLEXON" is one of the species of the main drug "flexon". The main drug "flexon" treats all muscular pains, whereas "spasmo-FLEXON" towards only soft muscular spasms of the stomach and digestive tracks. The appellant suppressed the fact that it itself has a drug "proxyvon" and another drug called "spasmo-PROXYVON", just like the respondent has a drug called "flexon" and "spasmo-FLEXON". Both the drugs involved are schedule II drugs which cannot be sold in retail except on a prescription of a medical practitioner and that such medicine is supplied through the hands of skilled persons such as doctors and chemists, who by their training, experience and by their knowledge render it practically impossible for any deception or confusion to take place. ;