THE WELLCOME FOUNDATION LTD. vs KHAWAR and 3 others
The petitioner, a pharmaceutical firm incorporated in the United Kingdom, manufactures and markets an anti-bacterial drug under the registered trade name "Septran" pursuant to the Trade Marks Act, 1940. The respondents subsequently began manufacturing and marketing the same drug under closely resembling trade names, namely "Septrim" and "Septrex". Treating this as a breach of its rights, the petitioner instituted suits seeking permanent and temporary injunctions. The trial court and the High Court both denied the prayers for temporary injunction pendente lite, leading to the filing of petitions for special leave to appeal before the Supreme Court. The core legal question concerned whether the use of phonetically similar trade names for the same pharmaceutical product justified the grant of interim injunctive relief. The Supreme Court held that the contentions raised regarding phonetic similarity and the likelihood of consumer confusion required detailed examination. Consequently, the Court granted leave to appeal and restrained the respondents from manufacturing or marketing the drug under the disputed names pending the final outcome of the appeals, while permitting the trial court to proceed with the main trials.
- Whether the use of phonetically similar trade names for the same pharmaceutical product constitutes a breach of trade mark rights warranting interim relief?
- Can a court grant a temporary injunction pendente lite when rival trade names are alleged to confuse an average consumer?
- Whether leave to appeal should be granted to examine the refusal of interim injunctions by lower courts in trade mark infringement matters?
- Trade Marks Act, 1940
ORDER
' SAAD SAOOD JAN, J.--The petitioner in these two petitions for special leave to appeal is a pharmaceutical firm, incorporated under the laws of the United Kingdom. Amongst others, it manufactures and markets cotrimoxazon, and anti-bacterial drug, under the trade name "Septran". The said trade name has been registered under the Trade Marks Act, 1940.
2. In 1985, the Ideal Pharmacy, respondent No,2 in C.P. No,415, started manufacturing and marketing the same drug under the trade name "Septrim". Similarly, in 1987, the Pharmacare, respondent No,2 in C.P. No, 414, began manufacturing and marketing it under the trade name "Septrex" . Treating the manufacture and marketing of the same drug under closely resembling trade names as a breach of its right, the petitioner brought two suits seeking, inter alia, injunctions to restrain the respondents in the two petitions from preparing and selling the said drug under the trade names adopted by them. It also sought temporary injunctions pendente lite to the same effect. The prayers for temporary injunction were denied by the trial Court and its appeals before the High Court also failed. It now seeks leave to appeal from this Court.
3. In support of these petitions it is contended that the trade names adopted by the respondents in respect of the drug in question are phonetically so similar to that under which the petitioner markets the same drug that an average man is likely to confuse the goods of the petitioner with those of the respondents. In the circumstances, the trial Court as well as the High Court erred in refusing the interim relief sought by the petitioner.
4. The contention raised in suport of these petitions needs examination. Leave to appeal is granted.
Security for costs in the sum of Rs,5,000 in each case. The appeals may be made ready for hearing on the present record with permission to the parties to file additional documents, if any. In the meanwhile the respondents are restrained from manufacturing or marketing the drug in question under the names Septrex and Septrim. The pendency of the appeals should not prevent the trial Court from proceeding with the trials as directed by the High Court.
Cited by 1 case
- JATCO Kabushiki Kaisha vs Registrar Of Trade Marks, Karachi 2012 P.C.T.L.R. 327