Milmet Oftho Industries and Ors. Vs. Allergan Inc.

Milmet Oftho Industries and Ors. Vs. Allergan Inc.

2004 (28) PTC 585 (SC)

Appellants were Pharmaceutical Companies. Respondent was also a Pharmaceutical company. Respondents filed a Suit for injunction seeking restraining of passing off in respect of mark “OCUFLOX” in respect of eye care product. Respondents claimed that they were the prior users of the mark OCUFLOX Globally. They claimed that they first used this Mark on 9th September, 1992. The Appellants were also selling “OCUFLOX” for a medicinal preparation containing CIPROFLOXACIN HCL to be used for the treatment of the eye and the ear.

In suit, it was held that the product of the Respondent was not being sold in India and the Appellants having introduced the product in India, the Respondents were not entitled to an injunction.

In the Appeal filed by the Respondents, the order of the Single Judge of the High Court was reversed. It was held that the Respondents were first in the market and therefore they were entitled to an injunction.

When the matter came up before the Supreme Court, the Supreme Court followed the dictate and the guidelines laid down in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.; 2001 PTC 300 SC which stated that “In respect of medicinal products it was held that exacting judicial scrutiny is required if there was a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products.”

The Supreme Court observed:

• Issues may occur between the use of the mark by one entity in India and the user by the another entity overseas.

• If a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India.

• In the present case, the marks are the same. Respondents not using the mark in India would be irrelevant if they were first in the world market.