NOVARTIS AG & ORS. v. INTAS PHARMACEUTICALS LTD.
I.A. No. 8421 of 2015 in CS(OS) No. 1120/2015
IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Order: 24.04.2015
Prima Facie Facts:
• Plaintiffs were engaged in the business of manufacturing and sale of ranibizumab. Plaintiffs also conducted clinical data and scientific research by the name of ‘LUMINOUS’ in order to analyse, evaluate and benchmark the treatment, efficacy and safety of ranibizumab.
• Plaintiff No.1 initiated ‘LUMINOUS’ clinical research study in the year 2010.
• Plaintiffs sell ranibizumab under the trade marks ‘LUCENTIS’ and ‘ACCENTRIX’.
• In February 2015, Plaintiffs were shocked to witness in a conference organized by All India Ophthalmological Society, that the Defendant exhibited the proposed launch of the ranibizumab under the trade mark LUMINA.
• Plaintiffs issued a legal notice to the Defendant on 28th March, 2015.
• Vide letter dated 15th April, 2015, Defendant refused to comply with the requisitions sought by the Plaintiffs.
• On 21st April, 2015 Defendant instituted a suit being CS(OS) No. 1075/2015 before the Delhi High Court on the ground that the legal notice issued by the Plaintiffs constitutes groundless threats under Section 142 of the Trade Marks Act, 1999.
• Thereafter, the Plaintiffs filed the present suit against the Defendant for permanent injunction restraining passing off by the Defendant of it’s product under the mark ‘LUMIA’ as that of the Plaintiffs.
• The mark ‘LUMINOUS’ is being used in India since 1st December, 2012 and globally since 2010.
• Defendant has yet not commenced user of the drug. Thus, balance of convenience is in favour of the Plaintiffs
• To avoid contrary orders, the present suit ought to be clubbed with CS(OS) No. 1075/2015 filed by the Defendant under Section 142 of the Trade Mark Act.
• There is no commercial user ongoing by the Plaintiffs. The user of the trade mark ‘LUMINOUS’ is only for the research work, research studies and such kind of work and has no commercial user. Unless a commercial user is proved, it is stated that no protection can be sought for or granted to the Plaintiffs.
• ‘LUMINOUS’ is a generic word. There are various registrations on the record of the Registrar of Trade Mark of the Mark ‘LUMINOUS’.
• The matter has come up today for the first time. Defendant is yet to file reply and its documents. It is appropriate that these applications are heard and disposed off after replies are on record. It is also appropriate in view of the submissions of the Defendant that the matter is heard by the same Bench which is hearing CS(OS)1075/2015.
• What is to be considered is whether ad interim injunction is to be granted to the Plaintiff till the present application is heard and disposed after a reply is filed by the Defendant.
• I am persuaded in the meantime to grant ad interim injunction keeping in view the fact that admittedly the user of the Plaintiff of the trade mark ‘LUMINOUS’ is much prior. Prima facie documents placed on record show user of Plaintiff since 2010. Admittedly the Defendant is claiming user since February 2015.
• There appears to be prima facie structural and phonetic similarity of the impugned trade mark ‘LUMINA’ with that of ‘LUMINOUS’.
• Regarding the balance of convenience, in view of categorical averment of the Defendant in CS(OS) 1075/2015 that they have yet not launched their products, the balance of convenience is in favour of the Plaintiff.
The Defendant was restrained from dealing with the drug ranibizumab using the mark ‘LUMINA’ or any other mark deceptively similar to the Plaintiff’s mark ‘LUMINOUS’ till further orders in the interim application.
The order is only a prima facie finding and may lead to different conclusions once the Defendant files it’s reply and the matter is argued at length by the parties. The Defendant has only been restrained till the disposal of the interim application. The Hon’ble Court while granting the injunction has kept all the issues open but has restrained the Defendant on the principle of prior use of the mark ‘LUMINUOUS’ by the Plaintiffs and it’s similarity with Defendant’s mark ‘LUMINA’. In our opinion, the Hon’ble Court while granting the injunction should have also given a finding as to whether the use of the mark ‘LUMINUOS’ by the Plaintiffs constitutes trade mark use or not. The question is important as the product of the Plaintiffs is sold under the marks ‘LUCENTIS’ and ‘ACCENTRIX’ and not under the mark ‘LUMINUOS’. However, there is no finding on this aspect. From a perusal of the order it is unclear, whether the mark ‘LUMINUOS’ is being used by the Plaintiffs in trade mark sense or not.