RFA (OS) 54/2013, C.M. APPL. 8333-8335/2013. Case: Allergan Inc. and Anr. Vs Intas Pharmaceuticals. High Court of Delhi (India)

Case NumberRFA (OS) 54/2013, C.M. APPL. 8333-8335/2013
CounselFor Appellant: Sh. C.M. Lall with Sh. Subhash and Sh. Anuj Nair, Advocates and For Respondents: Sh. Bishwajit Bhattacharyya, Sr. Advocate with Sh. Chandrachur Bhattacharyya, Advocate
JudgesS. Ravindra Bhat and Najmi Waziri, JJ.
IssueTrade Marks Act; Civil Procedure Code - Order XII Rule 6; Order XXXIX Rules 1, 2, 4; Order VI Rules 2, 17
Judgement DateSeptember 23, 2014
CourtHigh Court of Delhi (India)

Judgment:

S. Ravindra Bhat, J.

C.M. APPL. 8334/2013 (for condonation of delay of 130 days)

For the reasons mentioned in the application, C.M. Appl. 8334/2013 is allowed.

C.M. APPL. 8335/2013 (for exemption)

Allowed, subject to all just exceptions.

RFA (OS) 54/2013, C.M. APPL. 8333/2013

  1. This appeal is directed against an order of the learned single Judge, dated 9th October 2012, in C.S. (OS) 1445 of 2003, which directed dismissal of the plaintiff/appellant''s suit under Order XII, Rule 6 of the Civil Procedure Code ("CPC").

  2. The facts that give rise to the appeal are that the Appellant, a multinational pharmaceutical company, (hereafter "Allergan" or "plaintiff") holds the registered trademarks for BOTOX and BTX-A in India. The mark "BOTOX" has been used in India continuously since 1992. An application to register the trademark "BTX-A" was made by the Appellant in June 2002.

  3. A month before Allergan applied to register BTX-A, the Defendant (hereafter called "Intas" or "the defendant"), pursuant to an agreement with a Korean company, secured permission from the Drug Controller of India, to import articles and products under the brand name "BTXA" into India. In January 2003, Allergan sent a "ceaseand- desist" notice to Intas, asking it to desist from using "BOTOX", "BTXA" or any other mark deceptively similar to BTX-A. After correspondence between the parties, Intas refused to do so, and in July 2003, it began to distribute products under the mark "BTXA" in India.

  4. In response Allergan filed a suit, and an application for grant of ex parte ad-interim injunction under Order XXXIX, Rules 1 and 2 of the CPC (I.A. No. 7526 of 2003). The Single Judge granted an ex parte ad-interim injunction, restraining Intas from using the marks BOTOX/BTXA, or any other marks deceptively similar to the Appellant''s BOTOX and BTX-A.

  5. Intas then filed an application under Order XXXIX, Rule 4 CPC urging the court to vacate the ex parte ad-interim injunction (I.A. No. 9179 of 2003). Among other things, it argued that it had adopted the BTXA mark before Allergan, that BTXA in no way impinged upon the BOTOX trademark, and that Allergan had failed to show any sales in India. The Single Judge agreed with Intas'' contentions, and vacated the order, and dismissed I.A. No. 7526 of 2003. Allergan filed a review petition, and then an appeal, against the Single Judge''s order. In 2005, a Division Bench of the High Court partially allowed the appeal with respect to the use of "BOTOX", and also allowed Allergan to withdraw the rest of the appeal with liberty to pursue the pending review petition.

  6. In the meantime, in February 2005, Allergan''s 2002 application to register the trademark BTX-A proceeded for registration. In light of this, the Appellant filed an application under Order VI, Rule 17 of the CPC, to amend the plaint in order to bring this new development on record. The Appellant also filed a fresh application under Order XXXIX, Rules 1 and 2, for an interim injunction (I.A. No. 2439 of 2005). As a result of this, the review petition was disposed off with the observation that, in light of the changed circumstances, there would now be a fresh adjudication of the interlocutory relief.

  7. Later, in 2011, Allergan filed an application for arguments on I.A. No. 2439 of 2005, and for the framing of issues on the basis of which the trial could proceed. The learned Single Judge, however, by the impugned order, dismissed the suit under Order XII, Rule 6 of the CPC.

  8. Aggrieved by this order, Allergan is before this court, in appeal. It argues that the Single Judge''s order is contrary to the decision of the Supreme Court in Milmet Oftho Industries vs Allergan Inc., 2004 (28) PTC 585 (SC), recognizing the principle of "transborder reputation". It further argues that the record shows it to be the prior user of both the marks BOTOX and BTX-A, and that the respondent''s mark BTXA is deceptively similar to both. It, therefore, argues that this Court should set aside the order of the Single Judge, and restore the suit and application for interim injunction (I.A. No. 2439 of 2005). It also asks this Court to restrain Intas from using the marks "BOTOX" or "BTXA" or any other marks similar to the Appellant''s registered marks, BOTOX and BTX-A.

  9. It is argued by Mr. Lall, learned counsel for Allergan, that the impact of the learned Single Judge''s observations would be that without recourse to rectification or cancellation proceedings, a registered mark is virtually given a short shrift and the proprietor is denied the right to claim judicial remedies based on allegations of infringement. It was argued that whilst originally the suit was filed before Allergan''s application for registration of BTX-A was accepted, the subsequent development, i.e the registration which took place on 10.02.2005 was disclosed in the pending suit; amendment was allowed by the court, of the pleadings, on 28-09-2005. It was submitted that an attempt to have the suit summarily rejected on the ground of the court''s lack of territorial jurisdiction was unsuccessful; that application was dismissed on 28.04.2006. It is submitted that Intas does not challenge the validity of the registration in respect of BTX-A; it similarly never sought cancellation of that registered mark. Therefore, the learned Single Judge''s decision, premised as it is on the narrow ground of no established use, is based on an imperfect appreciation of the materials and pleadings in the suit.

  10. It was argued that the learned Single Judge fell into error in relying on Fedders Lloyd Corporation v Fedders Lloyd Corporation 119 (2005) DLT 410, because that case arose in the context of a claim for cancellation of trademark. It was urged that the Single Judge erred in observing that sales is a sine qua non to establish a case of passing off, which, counsel argued, is established on use. The term "use" is not restricted to sale of goods, but also extends to advertisement and publicity of the mark. It was argued by Allergan that BOTOX and BTX-A are used to refer to its products in medical journals, publications etc; and owing to such extensive usage, both the marks are associated with it and none else. This fact was ignored by the Single Judge. It was argued, lastly that Allergan never gave up the claim that Intas had passed off its mark; the claim in the suit was for both infringement and passing off. In these circumstances, the learned Single Judge could not have inferred an admission, and summarily dismissed the suit under Order XII, Rule 6, CPC. Counsel underlined that for a suit to be validly rejected or decreed in a summary fashion under that provision, the admission relied on by the court must be unambiguous and categorical. There were, argued counsel for Allergan, no such pleas which could be construed as unambiguous admissions, to warrant invocation of the provision enabling the court to draw a decree.

  11. Mr. Biswajit Bhattacharya, learned senior counsel for Intas, argued that Allergan has admitted non-use of the trademark BTX-A in India from 2002 till date. It is argued that in its plaint, Allergan has not invoked the principle of trans-border reputation, and, therefore, it cannot be permitted to lead evidence in that regard. Consequently, the conclusions of the learned Single Judge are unexceptionable. It was also pointed out that Intas itself sought registration of the BTX-A trademark for its product, sold in India. The learned counsel reiterated that mere registration of a mark did not ipso facto establish that it had a reputation for the goods which it stood for. To claim injunction, an equitable relief, the plaintiff- in this case Allergan - had to prima facie show that such a reputation existed in India apart from its injury. All the materials pointed to the plaintiff resting its claim for relief only on the basis of registration of BTX-A and its alleged infringement. Emphasizing that a trademark does not exist in vacuo and is meant to be used, learned senior counsel relied on Veerumal Praveen Kumar vs M/S. Needle Industries (India) 93 (2001) DLT 600. It was held in that decision that:

    "if there is non-user for a long period of time then by mere registration of the mark continuing the respondents would not be entitled to any injunction. this view is further reinforced by the judgment in Imperial Group's case (supra) wherein it was held that where there is no trading to give rise to a goodwill there is no interest to be...

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