MILMENT OFTHO INDUSTRIES AND ORS. versus ALLERGAN INC.

Citation: [2004] SUPP. 2 S.C.R. 586 · Decided: 07-05-2004 · Supreme Court of India · Bench: S.N. VARIAVA · Disposal: Disposed off

Judgment (excerpt)

A 
B 
MILMENT OFTHO INDUSTRIES AND ORS. 
V. 
ALLERGAN INC. 
MAY 7, 2004 
[S.N. VARIA VA AND H.K. SEMA, JJ.] 
Food and Drug Control-Respondent Company manufacturing 
pharmaceutical products in several countries-Suit for passing off in 
C respect of mark 'OCUFLOX' against Indian Company claiming to be the 
first user of the mark-Grant of interim injunction-However vacated later 
on the ground that Indian company was the first one to introduce the 
product--Division Bench of High Court holding that the company filing 
suit being first in the market entitled to injunction-On appeal, Held : As 
D it is not clear with regard to the first user of the mark, matter to be 
examined on evidence and remitted to trial court-If found that company 
filing suit had adopted the mark prior to its use by the Indian Company, 
then entitled lo injunction and if not, injunction to be vacated and Indian 
Company would be entitled to damages. 
E 
Respondent-pharmaceutical company has been manufacturing 
and marketing pharmaceutical products in several countries. They 
filed suit for passing off in respect of mark "OCUFLOX" used on a 
medicinal preparation for eye care product against the appellant-
Indian pharmaceutical company. They claimed to be the first user of 
F this mark in several countries since 1992 and their applications for 
registration of the mark in several other countries including India were 
pending. Appellants were selling "OCUFLOX" on a medicinal 
preparation used for the treatment of the eye and the ear and their 
application for registration of the mark OCUFLOX filed in 1993 is 
G pending. The Court granted ad interim injunction to the respondents, 
which was later vacated on the ground that the respondents' product 
was not being sold in India and the appellants were the first one to 
introduce the product in India. Respondents filed an appeal. High 
Court allowed the appeal holding that the respondents were first in the 
H market, thus entitled to injunction. Hence the present appeal. 
MILMENT OFTHO INDUSTRIES v. ALLERGAN INC. 
587 
Disposing of the appeal, the Court 
HELD : 1.1. Whilst considering the possibility of likelihood of 
deception or confusion, particularly in the field of medicines which 
nowadays is of an international character, Court has to keep in mind 
A 
the possibility that with the passage of time, some conflict may occur B 
between the use of the mark by the applicant in India and the user by 
the overseas company. If a mark in respect of a drug is associated with 
the respondents worldwide and an identical mark in respect of a 
similar drug is allowed to be sold in India it would lead to an anomalous 
situation. However one note of caution must be expressed. The Court C 
must ensure that public interest is in no way imperiled. Further, the 
multinational corporations, who have no intention of coming to India 
of introducing their product in India should not be allowed to throttle 
an Indian Company by not permitting it to sell product in India, if the 
Indian Company has genuinely adopted the mark and developed the 
product and is first in the market. The ultimate test should be who is D 
first in the market. (591-D-E; 591-G-H) 
1.2. In the instant case, the marks in respect of pharmaceutical 
products are the same. The mere fact that the respondents have not been 
using the mark in India would be irrelevant if they were first in the world E 
market. The Division Bench of High Court had relied upon material 
which prima-facie shows that the respondents' product was advertised 
before the appellants entered the field and concluded thatthe respondents 
were first to adopt the mark. If that be so then no fault can be found with 
the conclusion drawn by the Division Bench. According to the appellants, F 
the respondents were not the firstto use the mark and there was no proof 
that the respondents had adopted the mark and used the mark before 
the appellants started using the mark in India. Therefore, the matter 
requires to be examined on evidence and is remitted to the trial court. 
However, injunction order is continued. Further if on evidence it is 
found that the respondents had adopted the mark prior to the appellants G 
doing so, they would be entitled to an injunction and if not so then, the 
trial court would vacate the injunction and the appellants would be 
entitled to damages. 1592-B-C; 592-D-F] 
Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., (2001) PTC H 
588 
SUPREME COURT REP

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