If the trademarks of two different companies were identical or resembled alike, and if both were registered, then both the entities were not entitled to have exclusive right to use one of the marks against the other, the Delhi High Court has recently held.
Quoting the provisions of Section 28 of the Trade Marks Act, 1999, Mr Justice Anil Kumar, who heard the averments of the two parties — Astrazeneca UK Ltd (plaintiff) and Orchid Chemicals & Pharmaceuticals Ltd (defendant) — observed that it was difficult to infer at this stage that the adoption of the trademark `Meromer' by the defendant to market a life-saving drug was with the intention to pass off his product as that of the plaintiff.
If the defendant was to be restrained from marketing the drug under the tradename `Meromer', the inconvenience caused to the defendant shall be much more.
So, prima facie, the balance of convenience was in favour of the defendant, the Judge held.
`For marketing advantage'
The plaintiff, which became the assignee of registered trade mark `Meronem', a sterile dry powder for intravenous injection or infusion for curing infections such as pneumonias and nosocomial pneumonias, contended that the defendant had launched similar drug to derive advantage in marketing the same.
Allowing the defendant to continue use of the drug would create an impression in the trade that the trademark of the defendant was also connected with the plaintiff.
The defendant submitted that the trademark `Meromer' was adopted in an honest manner after taking all necessary safeguards prior to its adoption. They had been in the business of manufacturing and selling various bulk drugs and formulations and had their own plant to manufacture the molecule Meropenem.
The counsel for the defendant, Mr. C. Daniel, further contended that since the plaintiff and defendant were both having registered trademarks, the plaintiff could not exercise their rights on the basis of registered trademark against the defendant. The defendant also sought vacation of the ex-parte ad interim order passed in favour of the plaintiff.
The Judge said that the defendant had spent considerable amount in setting up the plant. The plaintiff was not the first to adopt and use the prefix `Mero' as trademark. There were other companies marketing the same drug. Public interest would also support availability of the drug at a cheaper price. "So, prima facie, in my opinion, the balance of convenience was in favour of the defendant".
The loss of the plaintiff seemed to be financial which could be safeguarded by directing defendant to maintain accounts of sale of the drug, and submit the accounts regularly to this Court every half-yearly. The interim order dated October 6, 2005 was vacated. The views expressed here were tentative and prima facie conclusions, which shall not be treated as expression of any final opinion.
Source : Business Line, June 12, 2006