Orchid Healthcare a Division of Orchid Chemicals and Pharmaceuticals Limited Through S Bala Sundharam Assistant Manager and ors Vs Aglowmed Limitted Through Power of Attorney Holder Mr Ajay Kumar Ghosh S O Late C C Ghosh - Citation 849742 - Court Judgment

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trade marks act, 1999-sections 18 and 27- registration of trade mark- mere filing of application for registration of trade mark cannot lead to conclusion regarding prior user of any particular product-it has to be judged from entry of products in market for purpose of sale and same cannot be proved only on basis of an application for registration of trade mark, but on basis of advertisement, invoices, dealings with dealers and retailers and cash memos of retailers. code of civil procedure, 1908-order xxxix, rule 1 and 2- two parties using the same trade mark honestly and concurrently-temporary injunction-survey report cannot be used blindly to ascertain launching of a product-application for registration pending-no law that one of parties in such matter has to be injuncted during pendency of the suit-unless strong prima facie case is shown by party, there cannot be any grant of temporary injunction-it is not a case where injunction either in favour of plaintiff-respondent or against it or vice versa can be granted. - ramesh kumar datta, j.1. heard learned counsel for the appellants and learned counsel for the respondent- 1st set. respondents 2nd set although have entered appearance but no one appears on their behalf in the matter.2. these two miscellaneous appeals have been filed against the orders dated 2.12.2004 and 29.4.2006 passed by the additional district judge xi, patna in title suit no. 14 of 2001, by the earlier of which order he has granted ad-interim injunction in favour of the plaintiff-respondent 1st set restraining the defendants- appellants from using the trade mark avastin till the disposal of the case under order 39 rule 1 and 2 of the code of civil procedure; and by the subsequent order he has extended the order dated 2.12.2004 till the disposal of the suit.3. the title suit was filed by the plaintiff-respondent ist set praying for declaration that the defendants are indulging in the act of passing off their product as of the plaintiff and further for seeking permanent injunction restraining the defendants from using the trade mark avastin for marketing their product or any other mark, which is similar to it in respect of medical and pharmaceutical products and for further consequential reliefs.4. the case of the plaintiff is that it is engaged in manufacturing and trading of medicine and pharmaceutical preparations and one of its product carries the brand name avastin, for which after ensuring that the said brand name is not being registered by any one else, it filed an application on 20.10.2000 for registration of the trade mark in respect of the said product under section 18(1) of the trade and merchandise mark act, 1958. the further case was that the trade mark/brand name was being carried on all its packings and medical and trade literature and are exported to other countries also. by virtue of the extensive and voluminous sales/sale promotion of the said product avastin, the said trade mark/trade name has acquired a very high reputation among the general public, the physicians, whole sellers/dealers in pharmaceutical products as well as the consumers. the said trade mark avastin has, thus, acquired the status of a property mark. it was further stated that the said drug under the brand name avastin was being prescribed by a large number of well known physicians and medical practitioners throughout the country as also in foreign countries. subsequently on learning that one m/s. mano pharmaceuticals private limited, chennai, defendant no. 1, was manufacturing and marketing one of its pharmaceutical products using the said trade mark avastin, which was identical and deceptively similar to that of the plaintiff's trade mark avastin to dupe and cheat the consumers, the plaintiff served a legal notice to the said defendant no. 1 at its chennai address on 12.7.2001, but the same was ignored and by letter dated 13.8.2001, defendant no. 1 asked for irrelevant particulars about filing of the application for registration, etc. in respect of its product avastin. it was alleged that the defendant-company was still continuing to market its product in the brand name avastin fraudulently imitating and misusing the plaintiff-company's trade mark. it was further alleged that defendant nos. 3 and 4 (respondent nos. 2 and 3 herein) are local dealers in patna, which were selling the product of the defendant -company by the trade name avastin-10 and similarly many shops in patna and elsewhere were also selling this product under this trade name, least suspecting that general public would be able to detect the misuse, which fact is evident from the cash memos dated 13.8.2001 issued by defendant nos. 3 and 4. the plaintiff-company had, in order to verify the fact that the company's trade mark was being misused, sent its employee to the above shops to purchase the product in question and accordingly the two cash memos were obtained. reference was also made to a complaint before the drug inspector, who had seized some of the illegally branded avastin on 17.8.2001 at patna. it was stated that the said action of the defendants has caused wrongful gain to them and huge loss to the plaintiff and accordingly, the prayer was made permanently to restrain the defendants, etc. as stated above.5. subsequently, the plaintiff filed applications under order 39 rules 1 and 2 read with section 151 of the code of civil procedure on 26.11.2001 and 3.8.2004 praying for ad-interim injunction to restrain the defendants from using the trade mark avastin.6. a written statement was filed on behalf of defendant nos. 1 and 2 in which it was stated that defendant no. 1 was taken over by m/s. orchid healthcare a division of orchid chemicals and pharmaceuticals limited (defendant no. 5-appellant no. 1) with effect from 2.1.2003. it was further stated that defendant no. 1 is producing the pharmaceutical products in the name and style of avastin-10 and also has agent for selling the same at different places including at patna in the state of bihar. it was stated that defendant no. 2 was using the said trade mark from 1.11.2000 and had applied before mumbai registry office for allotment of trade mark much prior to filing of the suit of which number has also been allotted. it is further stated that from a perusal of documents filed on behalf of the plaintiff-company in its application dated 20.10.2000, it appears that the plaintiff has proposed to use the trade mark avastin and, therefore, it was non-user of the said trade mark at that time. the statements of the plaintiff-company regarding voluminous sales/sale promotion of the said product avastin in the country and its exportation to foreign countries as well as its reputation and status of a property mark are highly mischievous and are not based on any iota of evidence. it is also pointed out that the complaint made by the plaintiff before the authority under the drugs and cosmetics act, on a consideration of the drug licence of the defendants, was not further proceeded with and no proceedings were initiated under the said act against the defendants. the further case of defendant no. 2 is that he had adopted the trade mark avastin-10 and drug licence was obtained duly for the said product as defendant nos. 1 and 2 were using the said trade mark from 1.11.2000 and also filed an application before the trade mark registrar on 21.8.2001. it was, accordingly, claimed that the defendant no. 2 was the prior user after getting due drug licence and had been using the impugned trade mark openly, continuously, uninterruptedly, explicitly and widely.7. defendant nos. 5 to 7 were made parties to the suit subsequently on the basis of the statements made in the written statement of defendant nos. 1 and 2 on the ground that the defendant no. 1- company had been sold to the said defendants and by the written statement filed on 19.2.2004, they adopted the written statement filed earlier on behalf of defendant nos. 1 and 2 in the year 2003.8. in the court below it was argued on behalf of the plaintiff that the plaintiff started using the trade mark avastin with all paraphernalia and formalities from september, 2000 whereas the original defendants from march, 2002, which was apparent from annexure-6 being org ims retail audit for pharmaceutical product in india published in may, 2004. the contention of learned counsel for the plaintiff is that the plaintiff was prior user after taking all care and caution, whereas no document has been filed on behalf of the defendants to show that they have taken all precautions before using the said trade mark as per the provisions of the trade mark act.9. on a consideration of the submissions of the parties, the learned additional district judge held that in the letter dated 21.8.2001, the period of user was written in pen ink as 1.11.2000 and instead of applying for avastin-10 as per claim of the defendants in the written statement, they applied for avastin for which the plaintiff had already applied. it was further held that from perusal of annexure-6 filed by the plaintiff, it appeared that it was prior user of the products of trade mark avastin than the defendants. for the said reasons, the learned trial court held that the plaintiff was prior user of the trade mark avastin than the defendants and there was a prima facie case and the balance of convenience in its favour and accordingly restrained the defendants till the disposal of the application under order 39 rules 1 and 2 of the c.p.c. by the aforesaid impugned order dated 2.12.2004. subsequently, the said order was extended by order dated 29.4.2006 restraining the defendants till the disposal of the suit.10. learned counsel for the appellants submits that the findings of the court below are illegal, perverse and not supported by any evidence. it is submitted by him that avastin is not the registered trade mark of either the plaintiff or the defendants, rather they are merely applicants for the same. in the said circumstances, the prima facie case can only be proved by showing as to who had started using the said trade mark earlier. it is contended by learned counsel that it is nowhere disclosed in the plaint as to who were using the trade mark avastin from before. learned counsel submits that an amendment application was filed for amending paragraph no. 2 of the plaint to show that the plaintiff started using the trade mark since january, 2001 and the amendment was allowed on 11.3.2002, but the same was not incorporated in the plaint and something entirely different was incorporated therein; it is thus contended that in view of the mandatory provisions of order 6 rule 18, it has to be held that no such amendment is on the record and the plaintiff cannot be permitted to take any benefit of the said amendment. in the absence of any pleadings on the record in that regard, it is urged that even no such evidence on behalf of the plaintiff can be allowed and the suit must fail on that count alone.11. in support of the aforesaid proposition, learned counsel relies upon a decision of this court in the case of mostt. kanti devi and anr. v. surendra prasad singh and ors. (2004) 3 pljr 1775, in paragraph no. 5 of which it has been held as follows:5. it is evident from the aforesaid provision that within fourteen days of the order of amendment it has to be incorporated by the parties or within the time extended by the court. it appears that the aforesaid provision is mandatory. in the case of failure to incorporate the amendment the party would not be permitted to incorporate the amendment after expiration of time as indicated above. counsel for the petitioners, however, stated that because the clerk of the counsel was ill and the counsel missed to incorporate the amendment, it could not be incorporated within the time as required under the law. however, in the case of dilbagh rai jerry v. union of india and ors. : air 1974 sc 130 the apex court has held that on failure to incorporate the amendment allowed within time the authority is justified in refusing the permission to incorporate the amendment after expiry of such time. in the instant case petition was filed for permission to incorporate the amendment after nine years of the order of amendment.12. learned counsel for the appellants also refers to paragraph nos. 6, 9, 11 and 14 of the plaint regarding the fact that the plaintiff himself admitted that the defendants-appellants were in the market since 12.7.2001 and their dealers and retail shop keepers were selling the products of the defendants' company with the trade name avastin-10, which fact is evident from the cash memos dated 13.8.2001 and regarding such sale, an inspection by the drug inspector was also made on 17.8.2001. it is also pointed out that in annexure-6 the plaintiff has been shown as the previous user of the said trade mark than the defendants on the basis of which only the ad-interim injunction has been granted, but in view of acceptance of the fact that the plaintiff started using the said trade mark avastin since september, 2001 coupled with their admission in the plaint that the defendants were already in the market on 12.7.2001 and their products were purchased by the employees of the plaintiffs on 13.8.2001 under cash memos, the order of ad-interim injunction granted by the court below is clearly perverse being contrary to the evidence on the record and the admissions of the plaintiff concerned.13. learned counsel for the appellants also refers to the impugned order dated 2.12.2004 to show that there is absolutely no finding on the question of balance of convenience and irreparable loss and simply after holding that the plaintiff has prima facie case and the balance of convenience and irreparable loss also go in favour of the plaintiff without any discussions on the said point, the court below granted ad-interim injunction in favour of the plaintiff.14. it is further submitted by learned counsel for the appellants that even the amendment sought in the plaint was only with regard to manufacturing and not marketing of the product, whereas trade name relates to marketing and not merely to manufacturing.15. learned counsel also refers to various documents annexed to the counter affidavit filed on behalf of the respondents, in which it is stated that an application before the drug controller of india was filed by the plaintiff on 20.2.2001 and the permission was granted to it to manufacture the said product on 30.3.2001 and further the permission was granted by the drug licensing authority on 4.4.2001. it is, thus, submitted that there can be no question of the plaintiff being in the market even before the permission for manufacturing the said product and having huge amount of sales and reputation with respect to the said product.16. in support of the aforesaid proposition, learned counsel relies upon a decision of the supreme court in the case of mahendra & mahendra paper mills limited v. mahindra and mahindra ltd. : (2002) 2 scc 147, in paragraph no. 18 of which it has been held as follows:18. in the case of wander ltd. v. antox india (p) ltd. a bench of three learned judges considered the question of grant of interlocutory injunction under order 39 rule 1 of the code of civil procedure in a case under section 29(2) of the act and section 55 of the copyright act, 1957 and held as follows: (scc pp. 731-32 & 733, paras 9 & 14)9 usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. the court, at this stage, acts on certain well-settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. the object of the interlocutory injunction, it is stated.is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. the need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. the court must weigh one need against another and determine where the 'balance of convenience' lies.the interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. the court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted.17. learned counsel also relies upon a decision of the supreme court in the case of dalpat kumar and anr. v. prahlad singh and ors. : a.i.r. 1993 supreme court 276, in paragraph no. 5 of which it has been held as follows:5. therefore, the burden is on the plaintiff by evidence aliunde by affidavit or otherwise that there is 'a prima facie case' in his favour which needs adjudication at the trial. the existence of the prima facie right and infraction of the enjoyment of his property or the right is a condition for the grant of temporary injunction. prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. the court further has to satisfy that non-interference by the court would result in 'irreparable injury' to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequences of apprehended injury or dispossession. irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely, one that cannot be adequately compensated by way of damages. the third condition also is that 'the balance of convenience' must be in favour of granting injunction. the court while granting or refusing to grant injunction should exercise sound judicial discretion to find the amount of substantial mischief or injury which is likely to be caused to the parties, if the injunction is refused and compare it with that it is likely to be caused to the other side if the injunction is granted. if on weighing competing possibilities or probabilities of likelihood of injury and if the court considers that pending the suit, the subject-matter should be maintained in status quo, an injunction would be issued. thus the court has to exercise its sound judicial discretion in granting or refusing the relief of ad interim injunction pending the suit.18. it is submitted by learned counsel that in this case what was required was not what has been found by the court below, rather the existence of strong prima facie case in favour of the plaintiff for grant of ad-interim injunction had to be considered; after considering the entire facts of the case, it cannot be said that the plaintiff had even a prima facie case when on its own admission in the plaint, the defendants had come into the market even before the products of the plaintiff in the month of july, 2001 whereas the product of the plaintiff was admittedly launched in september, 2001.19. in support of the aforesaid proposition, learned counsel relies upon a decision of the supreme court in the case of uniply industries ltd. v. unicorn plywood pvt. ltd. and ors. : (2001) 5 scc 95. paragraph nos. 6 to 9 of the said judgment are quoted below.6. considering the nature of pleadings in the two suits filed by the parties, it is clear that there is common field of activity between the two parties in respect of goods and trade marks sought to be used by either are identical. hence the decision in cadila case and of similar context may not be of much use in this case. inasmuch the areas of activity and the nature of goods dealt with or business carried on being identical, and the trade marks being of similar nature the only question that needs to be decided is as to who is the prior user. in deciding this question, the high court relied upon: (1) advertisement made by the respondents, (2) invoices, and (3) letters of dealers.7. it is no doubt true that advertisement of goods had been made by the respondents in 1993 itself. whether that was followed up by goods being dealt with the trade marks in question is not clear as is to be seen by the following discussions:so far as the invoices are concerned, it is not very clear from the same that they were in relation to goods containing the trades marks in question because there is no mention of any particular trade mark in the same and may be they pertain to such goods, but this is a fact which is yet to be established by placing proper material before the court. so far as the declarations made before the excise authorities are concerned, the high court itself found the material to be dubious. the letters issued by the dealers are both in favour of the appellant and the respondents. in this state of materials the courts below should have been wary and cautious in granting an injunction which would affect the trade and business of another person using an identical trade mark. both the appellant and the respondents have applied for registration of their respective trade marks before the registrar under the trade and merchandise marks act, 1958 and the respective rights of the parties will have to be investigated by the registrar and appropriate registration granted to either of them or both of them, as the case may be, bearing in mind the provisions of section 12(3) of the trade and merchandise marks act, 1958. there are many precedents to the effect that for inherently distinctive marks ownership is governed by the priority of use of such marks. the first user in the sale of goods or service is the owner and senior user. these marks are given legal protection against infringement immediately upon adoption and use in trade if two companies make use of the same trade mark and the gist of passing off in relation to goodwill and reputation to goods.8. some courts indicate that even prior small sales of goods with the mark are sufficient to establish priority, the test being to determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark. bona fide test of marketing, promotional gifts and experimental sales in small volume may be sufficient to establish a continuous prior use of the mark. but on some other occasions courts have classified small sales volume as so small and inconsequential for priority purposes. therefore, these facts will have to be thrashed out at the trial and at the stage of grant of temporary injunction a strong prima facie case will have to be established. it has also to be borne in mind whether the appellant had also honestly and concurrently used the trade marks or there are other special circumstances arising in the matter. the courts below have merely looked at what the prima facie case is and tried to decide the matter without considering the various other aspects arising in the matter. therefore, we think, the appropriate order to be made is that injunction either in the favour of the appellant or against them or vice versa is not appropriate and the proceedings in the suit shall be conducted as expeditiously as possible or the registrar under the trade and merchandise marks act, 1958 may decide the matter which may govern the rights of the parties.9. the order made by the high court shall stand set aside and it is made clear that there shall be no order of temporary injunction in favour of either party.20. learned counsel for the plaintiff-respondent, on the other hand, has sought to argue that in an appeal only the pleadings and evidence as before the trial court can be considered and not what has been brought on the record in the memo of appeal. it is submitted that the appellants have come to this court with entirely different pleadings and evidence. reference is made to paragraph no. 13 of the memo of appeal where the appellants have stated that m/s. mano pharmaceuticals private limited (defendant no. 1) has been manufacturing and marketing avastin produced at the factory of m/s. maral laboratories, old mahabalipuram road, chennai with whom it had purchase agreement for purchase of scheduled products mentioned in the schedule of the agreement which included avastin for which the drug licence had also been granted.21. in support of the aforesaid stand, learned counsel for the respondents refers to a decision of the supreme court in the case of transmission corporation of a.p. ltd. and ors. v. p. surya bhagwan : 2003 (6) scc 353, in paragraph no. 10 of which it has been held as follows:10. question as to whether the respondent was overaged for entry into the service was neither raised in the written statement nor was it argued before the high court. under the circumstances the appellant cannot be permitted to raise this point for the first time in this court.22. learned counsel has also referred to various statements made in the plaint and the written statement of the parties. he has seriously sought to defend the amendment made and allowed in paragraph no. 2 of the plaint stating that the court should consider what amendment was sought and allowed in the plaint by the court below and if there was any mistake on the part of the counsel inadvertently, the amendment cannot be itself thrown out.23. learned counsel for the plaintiff-respondent submits that the only criterion in obtaining trade mark is as to who is the prior user of the trade mark in question. in this regard, it is stated that the respondent before making an application under rule 44 of the trade mark rules obtained a certificate from an attorney on 20.10.2000 that there is no pending application in respect of the said trade mark and thereafter it filed application for registration of the trade mark on 20.10.2000. it is further submitted that admittedly the defendants' application for registration of trade mark came much later nearly ten months after on 21.8.2001. it is contended that it is also evident from the org ims retail audit of pharmaceutical products of india published in the month of may, 2004 (annexure-6 referred to in the impugned order) that the plaintiff had launched its product in september, 2001, whereas the defendant-appellants had launched their product in the month of march, 2002 and thus the plaintiff-respondent is evidently the prior user of the said trade mark, even on the basis of the survey report of an independent third party. learned counsel for the plaintiff also refers to the detailed manner in which it has proceeded from 20.10.2000 in the matter of bringing into production the said product as mentioned in a fax message dated 6.9.2001 (annexure-c to the counter affidavit). he also refers to the letter dated 7.11.2000 (annexure-d to the counter affidavit) of the drug monitoring and research institute whereby it had given its consent for taking the comparative bioequivalence study regarding the pharmacokinetic profile of single dose of atorvastatin 20 mg tablet for aglowmed ltd. it is, thus submitted that the plaintiff-respondent has been able to show that it was prior user of the drug in question whereas the defendant-appellants have failed to do so. merely saying that it is prior user is not sufficient and it was for the defendants to produce the materials in support of their said stand. it is further argued by learned counsel that the trial court could have only decided the matter on the materials produced by both the sides and after duly considering the same and the survey report, which was not that of the plaintiff nor by any agency connected with them. it has thus relied upon the said independent evidence to come to its conclusion. it is further submitted by learned counsel that the same trade mark of two manufacturers at the same time normally cannot be in the market and thus in such case one of them has to be injuncted which the court below has rightly done.24. in support of his submission, learned counsel for the plaintiff-respondent relies upon a decision of the supreme court in the case of dhariwal industries ltd. and anr v. m.s.s. food products 2005 (4) supreme bound reports 64, paragraph nos. 4 and 5 of which are quoted herein below:4. the trial court held that the plaintiff has prima facie established prior user of the mark 'manikchand' by itself and its predecessors. it observed that the question whether the assignments relied on from its predecessors by the plaintiff were genuine and are proved to be genuine was a question that could be decided at the trial and at this prima facie stage there was no reason to discard those documents. the documents relied on by the plaintiff, prima facie showed prior user. after referring to some of the decisions brought to its notice, it held that the plaintiff has established a prima facie case for interim injunction. it was further found by that court that the balance of convenience was in favour of the grant of interim injunction in favour of the plaintiff restraining the defendants from using the mark 'manikchand' till the final disposal of the suit. on appeal by the defendants, the appellate court reconsidered the relevant aspects in the light of the arguments addressed before it and came to the conclusion that the trial court was justified in granting an order of injunction and the grant of interim injunction by the trial court could not be said to be in exercise of discretion which was either arbitrary or perverse. the appellate court observed that the trial court at this stage was not wrong in coming prima facie to the conclusion that the prior user of the mark was by the predecessors of the plaintiff and the plaintiff. regarding the argument based on delay and latches and acquiescence, the appellate court took the view that the present action was triggered off by the filing of a suit by the defendants in the high court of bombay seeking to restrain the user of the mark 'malikchand' by the plaintiff and under the circumstances the claim for interim injunction could not be rejected on the ground of delay and laches when both sides seemed to agree that the marks were similar. the appellate court also took note of the number of prosecutions initiated against the defendants under the prevention of food adulteration act in respect of pan masala and gutkha sold under the name 'manikchand' and indicated that the plaintiff would be seriously prejudiced and its reputation affected, if the defendants are allowed to carry on their trade in these products under the name 'manikchand'. thus, finding no reason to interfere with the grant of interim injunction by the trial court, the lower appellate court dismissed the appeal filed by the defendants, but directed the trial court to try and dispose of the suit within a period of six months from the date of receipt of a copy of its order.5. before proceeding to consider the appeal, we may observe that in this appeal, various documents, not produced before the trial court or before the lower appellate court, have been produced and elaborate arguments addressed based on those documents. the present proceeding is an appeal by special leave against an order passed by the high court in an appeal under order xliii rule 1 of the c.p.c. and normally the appeal here must be considered based on the material that was produced before the trial court or before the appellate court in terms of the permission granted by that court under order xli rule 27 of the c.p.c. at this interlocutory stage it would not be proper for this court to enter into an adjudication based on the various documents produced before this court which are not of undoubted authenticity and the genuineness, acceptability and value of which are mutually questioned. generally, the arguments based on genuineness, admissibility and so on, are ones to be raised at the trial, though no doubt they could be raised at the interlocutory stage in respect of a prima facie case or in opposition thereto. in other words, we think that it will be proper to confine ourselves to the materials available before the trial court and those made available before the lower appellate court with the permission of that court while considering this interlocutory appeal.25. learned counsel also submits that the case of mahendra and mahendra (supra) relied upon by the learned counsel for the appellants, as a matter of fact, supports the stand of the respondents and in this regard, he refers to paragraph no. 24 of the said decision, which is quoted below:24. judging the case in hand on the touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the words 'mahindra & mahindra' in its companies/business concerns for a long span of time extending over five decades. the name has acquired a distinctiveness and a secondary meaning in the business or trade circles. people have come to associate the name 'mahindra' with a certain standard of goods and services. any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' group of companies. such user may also affect the plaintiff prejudicially in its business and trading activities. undoubtedly, the question whether the plaintiffs' claim of 'passing-off action' against the defendant will be accepted or not has to be decided by the court after evidence is led in the suit. even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant company which is yet to commence its business from utililsing the name of 'mahendra' or 'mahendra & mahendra' for the purpose of its trade and business. therefore, the division bench of the high court cannot be faulted for confirming the order of injunction passed by the learned single judge.26. learned counsel for the plaintiff-respondent also refers to the conduct of the defendants in the matter submitting that they have been instrumental in delaying the disposal of the suit, although the normal conduct of the party in a court against which an interim injunction has been granted is to ensure the disposal of the case.27. on a consideration of the rival submissions, this court finds sufficient force in the submissions of learned counsel for the defendant-appellants. it is evident from the impugned order dated 2.12.2004 that the reason for grant of ad-interim injunction is that the plaintiff was prior applicant for the grant of registration of the trade mark and further as per annexure 6, the report of the org ims retail audit for pharmaceutical products of india, the plaintiff was the prior user of the product under trade mark avastin than the defendants.28. in my view the first ground by itself cannot establish the claim of prior user. it is true that the plaintiff-respondent had applied for registration of the trade mark avastin ten months prior to the defendant-appellants but mere application for registration of trade mark is never considered a conclusive evidence regarding prior user which has to be judged from the entry of the products in the market for the purpose of sale and the same cannot be proved only on the basis of an application for registration of trade mark, but on the basis of advertisement, invoices, dealings with the dealers and retailers, cash memos of retailers, etc. thus, the mere filing of application for registration of trade mark cannot lead to the conclusion regarding prior user of the said product avastin.29. similarly the court cannot blindly act only upon the information contained in annexure-6, report of org ims retail audit. it is true that the said report states that the plaintiff launched its product in the month of september, 2001, whereas the defendants launched the same in the month of march, 2002 but the said information has to be seen in the context of the averments made in the plaint itself that the defendants were very much in the market as per the admission of the plaintiff at least on or before july, 2001, since the legal notice for infringement of trade name of the drug in question was issued to the defendant no. 1 on 12.7.2001. to the similar effect is the statement in the plaint that the plaintiff had sent its employees to the retail shops and by two cash memos dated 13.8.2001 issued by defendant nos. 3 and 4, it was found that the defendant company was using the brand name avastin of its product.30. in view of the said clear admission by the plaintiff regarding the defendant company being in the market at least from the month of july, 2001 itself, the court below should not have blindly relied upon the said annexure-6, survey report, which shows that the defendants had launched their product in the month of march, 2002, subsequent to the launching of the product of the plaintiff in the month of september, 2001. the undisputed fact of the defendants-appellants being in the market at least from july, 2001 clearly shows that the survey report (annexure-6) relied upon by the court below was not accurate and thus the finding of the court below on the basis of the said single document is perverse being contrary to the materials on the record.31. this court also finds that there has been no discussion at all regarding the balance of convenience being in favour of the plaintiff or that the plaintiff being put to irreparable loss, if the injunction was not granted. merely because the court below arrived at the conclusion that the plaintiff was prior user of the product avastin, it had formed the other two conclusions regarding the balance of convenience and irreparable loss, which is not permissible and thus the court below has not properly applied its mind while granting temporary injunction.32. this court also does not agree with the submission of learned counsel for the plaintiff-respondent that one of the parties has to be necessarily injuncted temporarily during the pendency of the suit. no such law has ever been laid down either by this court or the supreme court that temporary injunction in such matter is necessary, rather the law is that unless strong prima facie case is shown by a party, there cannot be any grant of temporary injunction.33. so far as the present matter is concerned, it is not a case bearing any similarity to that of the case of mahendra and mahendra (supra) where the trade mark was with respect to the very name of the company which was manufacturing various products since long, whereas in the present case the trade mark relates to a particular product, namely, a drug bearing the chemical name atrovastatin; it is thus evident that the trade mark avastin closely corresponds to the chemical name of the drug in question and is not a distintictive name related to the name of the company itself. the consideration in the two cases is entirely different. here there is a case of common field of activity between the two parties where both of them sought to use the similar trade mark with respect to their drug in question marketed by them. from the materials on the record, it is evident that both the parties have around the same time sought to manufacture the drug in question by obtaining the licences and/or marketed them under the same trade name. the materials brought on the record before the court below were not at all conclusive of the matter as to which of them was the prior user.34. in such circumstances as pointed out by the apex court in uniply industries ltd. (supra), the court below ought to have been very cautious in granting injunction which could affect the trade or business of another person using an identical trade mark unless a strong prima facie case was established by the plaintiff, apart from considering the question of balance of convenience and irreparable loss which has not at all been kept in mind by the court below. it appears prima facie in the instant case that the two parties were honestly and concurrently using the same trade mark and thus the issue of injunction could not have been decided in the superficial manner in which it has been clone in the present case.35. this court is clearly of the view that the present matter is substantially covered by the principles laid down by the apex court in the case of uniply industries ltd. (supra) and thus it was not an appropriate case where any order of injunction ought to have been made either in favour of one of the parties or against it or vice versa.36. in view of the aforesaid discussions, it is not necessary to deal with the other submissions of learned counsels for the parties.37. accordingly, the orders dated 2.12.2004 and 29.4.2006 passed in title suit no. 14/2001 are both set side.38. in the facts and circumstances of the case, this court is of the view that it is not a case where injunction either in favour of the plaintiff-respondent or against it or vice versa can be granted. therefore, it is directed that the court below shall conduct the proceedings and conclude the same as expeditiously as possible or the registrar under the trade mark act may decide the matter which may govern the rights of the parties.39. these appeals are, accordingly, allowed subject to the aforesaid directions.

Judgment:

Ramesh Kumar Datta, J.

1. Heard learned Counsel for the appellants and learned Counsel for the respondent- 1st set. Respondents 2nd set although have entered appearance but no one appears on their behalf in the matter.

2. These two Miscellaneous Appeals have been filed against the orders dated 2.12.2004 and 29.4.2006 passed by the Additional District Judge XI, Patna in Title Suit No. 14 of 2001, by the earlier of which order he has granted ad-interim injunction in favour of the plaintiff-respondent 1st set restraining the defendants- appellants from using the trade mark AVASTIN till the disposal of the case under Order 39 Rule 1 and 2 of the Code of Civil Procedure; and by the subsequent order he has extended the order dated 2.12.2004 till the disposal of the suit.

3. The title suit was filed by the plaintiff-respondent Ist set praying for declaration that the defendants are indulging in the act of passing off their product as of the plaintiff and further for seeking permanent injunction restraining the defendants from using the trade mark AVASTIN for marketing their product or any other mark, which is similar to it in respect of medical and pharmaceutical products and for further consequential reliefs.

4. The case of the plaintiff is that it is engaged in manufacturing and trading of medicine and pharmaceutical preparations and one of its product carries the brand name AVASTIN, for which after ensuring that the said brand name is not being registered by any one else, it filed an application on 20.10.2000 for registration of the trade mark in respect of the said product under Section 18(1) of the Trade and Merchandise Mark Act, 1958. The further case was that the trade mark/brand name was being carried on all its packings and medical and trade literature and are exported to other countries also. By virtue of the extensive and voluminous sales/sale promotion of the said product AVASTIN, the said trade mark/trade name has acquired a very high reputation among the general public, the physicians, whole sellers/dealers in pharmaceutical products as well as the consumers. The said trade mark AVASTIN has, thus, acquired the status of a property mark. It was further stated that the said drug under the brand name AVASTIN was being prescribed by a large number of well known physicians and medical practitioners throughout the country as also in foreign countries. Subsequently on learning that one M/s. Mano Pharmaceuticals Private Limited, Chennai, defendant No. 1, was manufacturing and marketing one of its pharmaceutical products using the said trade mark AVASTIN, which was identical and deceptively similar to that of the plaintiff's trade mark AVASTIN to dupe and cheat the consumers, the plaintiff served a legal notice to the said defendant No. 1 at its Chennai address on 12.7.2001, but the same was ignored and by letter dated 13.8.2001, defendant No. 1 asked for irrelevant particulars about filing of the application for registration, etc. in respect of its product AVASTIN. It was alleged that the defendant-company was still continuing to market its product in the brand name AVASTIN fraudulently imitating and misusing the plaintiff-company's trade mark. It was further alleged that Defendant Nos. 3 and 4 (Respondent Nos. 2 and 3 herein) are local dealers in Patna, which were selling the product of the defendant -company by the trade name AVASTIN-10 and similarly many shops in Patna and elsewhere were also selling this product under this trade name, least suspecting that general public would be able to detect the misuse, which fact is evident from the cash memos dated 13.8.2001 issued by defendant Nos. 3 and 4. The plaintiff-company had, in order to verify the fact that the company's trade mark was being misused, sent its employee to the above shops to purchase the product in question and accordingly the two cash memos were obtained. Reference was also made to a complaint before the Drug Inspector, who had seized some of the illegally branded AVASTIN on 17.8.2001 at Patna. It was stated that the said action of the defendants has caused wrongful gain to them and huge loss to the plaintiff and accordingly, the prayer was made permanently to restrain the defendants, etc. as stated above.

5. Subsequently, the plaintiff filed applications under Order 39 Rules 1 and 2 read with Section 151 of the Code of Civil Procedure on 26.11.2001 and 3.8.2004 praying for ad-interim injunction to restrain the defendants from using the trade mark AVASTIN.

6. A written statement was filed on behalf of defendant Nos. 1 and 2 in which it was stated that defendant No. 1 was taken over by M/s. Orchid Healthcare a Division of Orchid Chemicals and Pharmaceuticals Limited (defendant No. 5-appellant No. 1) with effect from 2.1.2003. It was further stated that defendant No. 1 is producing the pharmaceutical products in the name and style of AVASTIN-10 and also has agent for selling the same at different places including at Patna in the State of Bihar. It was stated that defendant No. 2 was using the said trade mark from 1.11.2000 and had applied before Mumbai Registry Office for allotment of Trade Mark much prior to filing of the suit of which number has also been allotted. It is further stated that from a perusal of documents filed on behalf of the plaintiff-company in its application dated 20.10.2000, it appears that the plaintiff has proposed to use the trade mark AVASTIN and, therefore, it was non-user of the said trade mark at that time. The statements of the plaintiff-company regarding voluminous sales/sale promotion of the said product AVASTIN in the country and its exportation to foreign countries as well as its reputation and status of a property mark are highly mischievous and are not based on any iota of evidence. It is also pointed out that the complaint made by the plaintiff before the authority under the Drugs and Cosmetics Act, on a consideration of the drug licence of the defendants, was not further proceeded with and no proceedings were initiated under the said Act against the defendants. The further case of defendant No. 2 is that he had adopted the trade mark AVASTIN-10 and Drug Licence was obtained duly for the said product as defendant Nos. 1 and 2 were using the said trade mark from 1.11.2000 and also filed an application before the Trade Mark Registrar on 21.8.2001. It was, accordingly, claimed that the defendant No. 2 was the prior user after getting due Drug Licence and had been using the impugned trade mark openly, continuously, uninterruptedly, explicitly and widely.

7. Defendant Nos. 5 to 7 were made parties to the suit subsequently on the basis of the statements made in the written statement of defendant Nos. 1 and 2 on the ground that the defendant No. 1- company had been sold to the said defendants and by the written statement filed on 19.2.2004, they adopted the written statement filed earlier on behalf of defendant Nos. 1 and 2 in the year 2003.

8. In the Court below it was argued on behalf of the plaintiff that the plaintiff started using the trade mark AVASTIN with all paraphernalia and formalities from September, 2000 whereas the original defendants from March, 2002, which was apparent from Annexure-6 being Org Ims Retail Audit for Pharmaceutical Product in India published in May, 2004. The contention of learned Counsel for the plaintiff is that the plaintiff was prior user after taking all care and caution, whereas no document has been filed on behalf of the defendants to show that they have taken all precautions before using the said trade mark as per the provisions of the Trade Mark Act.

9. On a consideration of the submissions of the parties, the learned Additional District Judge held that in the letter dated 21.8.2001, the period of user was written in pen ink as 1.11.2000 and instead of applying for AVASTIN-10 as per claim of the defendants in the written statement, they applied for AVASTIN for which the plaintiff had already applied. It was further held that from perusal of Annexure-6 filed by the plaintiff, it appeared that it was prior user of the products of trade mark AVASTIN than the defendants. For the said reasons, the learned trial Court held that the plaintiff was prior user of the trade mark AVASTIN than the defendants and there was a prima facie case and the balance of convenience in its favour and accordingly restrained the defendants till the disposal of the application under Order 39 Rules 1 and 2 of the C.P.C. by the aforesaid impugned order dated 2.12.2004. Subsequently, the said order was extended by order dated 29.4.2006 restraining the defendants till the disposal of the suit.

10. Learned Counsel for the appellants submits that the findings of the court below are illegal, perverse and not supported by any evidence. It is submitted by him that Avastin is not the registered trade mark of either the plaintiff or the defendants, rather they are merely applicants for the same. In the said circumstances, the prima facie case can only be proved by showing as to who had started using the said trade mark earlier. It is contended by learned Counsel that it is nowhere disclosed in the plaint as to who were using the trade mark AVASTIN from before. Learned Counsel submits that an amendment application was filed for amending paragraph No. 2 of the plaint to show that the plaintiff started using the trade mark since January, 2001 and the amendment was allowed on 11.3.2002, but the same was not incorporated in the plaint and something entirely different was incorporated therein; it is thus contended that in view of the mandatory provisions of Order 6 Rule 18, it has to be held that no such amendment is on the record and the plaintiff cannot be permitted to take any benefit of the said amendment. In the absence of any pleadings on the record in that regard, it is urged that even no such evidence on behalf of the plaintiff can be allowed and the suit must fail on that count alone.

11. In support of the aforesaid proposition, learned Counsel relies upon a decision of this Court in the case of Mostt. Kanti Devi and Anr. v. Surendra Prasad Singh and Ors. (2004) 3 PLJR 1775, in paragraph No. 5 of which it has been held as follows:

5. It is evident from the aforesaid provision that within fourteen days of the order of amendment it has to be incorporated by the parties or within the time extended by the Court. It appears that the aforesaid provision is mandatory. In the case of failure to incorporate the amendment the party would not be permitted to incorporate the amendment after expiration of time as indicated above. Counsel for the petitioners, however, stated that because the clerk of the counsel was ill and the counsel missed to incorporate the amendment, it could not be incorporated within the time as required under the Law. However, in the case of Dilbagh Rai Jerry v. Union of India and Ors. : AIR 1974 SC 130 the Apex Court has held that on failure to incorporate the amendment allowed within time the authority is justified in refusing the permission to incorporate the amendment after expiry of such time. In the instant case petition was filed for permission to incorporate the amendment after nine years of the order of amendment.

12. Learned Counsel for the appellants also refers to paragraph Nos. 6, 9, 11 and 14 of the plaint regarding the fact that the plaintiff himself admitted that the defendants-appellants were in the market since 12.7.2001 and their dealers and retail shop keepers were selling the products of the defendants' company with the trade name AVASTIN-10, which fact is evident from the cash memos dated 13.8.2001 and regarding such sale, an inspection by the Drug Inspector was also made on 17.8.2001. It is also pointed out that in Annexure-6 the plaintiff has been shown as the previous user of the said trade mark than the defendants on the basis of which only the ad-interim injunction has been granted, but in view of acceptance of the fact that the plaintiff started using the said trade mark AVASTIN since September, 2001 coupled with their admission in the plaint that the defendants were already in the market on 12.7.2001 and their products were purchased by the employees of the plaintiffs on 13.8.2001 under cash memos, the order of ad-interim injunction granted by the court below is clearly perverse being contrary to the evidence on the record and the admissions of the plaintiff concerned.

13. Learned Counsel for the appellants also refers to the impugned order dated 2.12.2004 to show that there is absolutely no finding on the question of balance of convenience and irreparable loss and simply after holding that the plaintiff has prima facie case and the balance of convenience and irreparable loss also go in favour of the plaintiff without any discussions on the said point, the Court below granted ad-interim injunction in favour of the plaintiff.

14. It is further submitted by learned Counsel for the appellants that even the amendment sought in the plaint was only with regard to manufacturing and not marketing of the product, whereas trade name relates to marketing and not merely to manufacturing.

15. Learned Counsel also refers to various documents annexed to the counter affidavit filed on behalf of the respondents, in which it is stated that an application before the Drug Controller of India was filed by the plaintiff on 20.2.2001 and the permission was granted to it to manufacture the said product on 30.3.2001 and further the permission was granted by the Drug Licensing authority on 4.4.2001. It is, thus, submitted that there can be no question of the plaintiff being in the market even before the permission for manufacturing the said product and having huge amount of sales and reputation with respect to the said product.

16. In support of the aforesaid proposition, learned Counsel relies upon a decision of the Supreme Court in the case of Mahendra & Mahendra Paper Mills Limited v. Mahindra and Mahindra Ltd. : (2002) 2 SCC 147, in paragraph No. 18 of which it has been held as follows:

18. In the case of Wander Ltd. v. Antox India (P) Ltd. a Bench of three learned Judges considered the question of grant of interlocutory injunction under Order 39 Rule 1 of the Code of Civil Procedure in a case under Section 29(2) of the Act and Section 55 of the Copyright Act, 1957 and held as follows: (SCC pp. 731-32 & 733, paras 9 & 14)

9 Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The court, at this stage, acts on certain well-settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it is stated.is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated. The court must weigh one need against another and determine where the 'balance of convenience' lies.The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise or whether he has already been doing so in which latter case considerations somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted.

17. Learned Counsel also relies upon a decision of the Supreme Court in the case of Dalpat Kumar and Anr. v. Prahlad Singh and Ors. : A.I.R. 1993 Supreme Court 276, in paragraph No. 5 of which it has been held as follows:

5. Therefore, the burden is on the plaintiff by evidence aliunde by affidavit or otherwise that there is 'a prima facie case' in his favour which needs adjudication at the trial. The existence of the prima facie right and infraction of the enjoyment of his property or the right is a condition for the grant of temporary injunction. Prima facie case is not to be confused with prima facie title which has to be established, on evidence at the trial. Only prima facie case is a substantial question raised, bona fide, which needs investigation and a decision on merits. Satisfaction that there is a prima facie case by itself is not sufficient to grant injunction. The Court further has to satisfy that non-interference by the Court would result in 'irreparable injury' to the party seeking relief and that there is no other remedy available to the party except one to grant injunction and he needs protection from the consequences of apprehended injury or dispossession. Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury, but means only that the injury must be a material one, namely, one that cannot be adequately compensated by way of damages. The third condition also is that 'the balance of convenience' must be in favour of granting injunction. The Court while granting or refusing to grant injunction should exercise sound judicial discretion to find the amount of substantial mischief or injury which is likely to be caused to the parties, if the injunction is refused and compare it with that it is likely to be caused to the other side if the injunction is granted. If on weighing competing possibilities or probabilities of likelihood of injury and if the Court considers that pending the suit, the subject-matter should be maintained in status quo, an injunction would be issued. Thus the Court has to exercise its sound judicial discretion in granting or refusing the relief of ad interim injunction pending the suit.

18. It is submitted by learned Counsel that in this case what was required was not what has been found by the Court below, rather the existence of strong prima facie case in favour of the plaintiff for grant of ad-interim injunction had to be considered; after considering the entire facts of the case, it cannot be said that the plaintiff had even a prima facie case when on its own admission in the plaint, the defendants had come into the market even before the products of the plaintiff in the month of July, 2001 whereas the product of the plaintiff was admittedly launched in September, 2001.

19. In support of the aforesaid proposition, learned Counsel relies upon a decision of the Supreme Court in the case of Uniply Industries Ltd. v. Unicorn Plywood Pvt. Ltd. and Ors. : (2001) 5 SCC 95. Paragraph Nos. 6 to 9 of the said judgment are quoted below.

6. Considering the nature of pleadings in the two suits filed by the parties, it is clear that there is common field of activity between the two parties in respect of goods and trade marks sought to be used by either are identical. Hence the decision in Cadila case and of similar context may not be of much use in this case. Inasmuch the areas of activity and the nature of goods dealt with or business carried on being identical, and the trade marks being of similar nature the only question that needs to be decided is as to who is the prior user. In deciding this question, the High Court relied upon: (1) advertisement made by the respondents, (2) invoices, and (3) letters of dealers.

7. It is no doubt true that advertisement of goods had been made by the respondents in 1993 itself. Whether that was followed up by goods being dealt with the trade marks in question is not clear as is to be seen by the following discussions:

So far as the invoices are concerned, it is not very clear from the same that they were in relation to goods containing the trades marks in question because there is no mention of any particular trade mark in the same and may be they pertain to such goods, but this is a fact which is yet to be established by placing proper material before the Court. So far as the declarations made before the Excise Authorities are concerned, the High Court itself found the material to be dubious. The letters issued by the dealers are both in favour of the appellant and the respondents. In this state of materials the courts below should have been wary and cautious in granting an injunction which would affect the trade and business of another person using an identical trade mark. Both the appellant and the respondents have applied for registration of their respective trade marks before the Registrar under the Trade and Merchandise Marks Act, 1958 and the respective rights of the parties will have to be investigated by the Registrar and appropriate registration granted to either of them or both of them, as the case may be, bearing in mind the provisions of Section 12(3) of the Trade and Merchandise Marks Act, 1958. There are many precedents to the effect that for inherently distinctive marks ownership is governed by the priority of use of such marks. The first user in the sale of goods or service is the owner and senior user. These marks are given legal protection against infringement immediately upon adoption and use in trade if two companies make use of the same trade mark and the gist of passing off in relation to goodwill and reputation to goods.8. Some courts indicate that even prior small sales of goods with the mark are sufficient to establish priority, the test being to determine continuous prior user and the volume of sale or the degree of familiarity of the public with the mark. Bona fide test of marketing, promotional gifts and experimental sales in small volume may be sufficient to establish a continuous prior use of the mark. But on some other occasions courts have classified small sales volume as so small and inconsequential for priority purposes. Therefore, these facts will have to be thrashed out at the trial and at the stage of grant of temporary injunction a strong prima facie case will have to be established. It has also to be borne in mind whether the appellant had also honestly and concurrently used the trade marks or there are other special circumstances arising in the matter. The courts below have merely looked at what the prima facie case is and tried to decide the matter without considering the various other aspects arising in the matter. Therefore, we think, the appropriate order to be made is that injunction either in the favour of the appellant or against them or vice versa is not appropriate and the proceedings in the suit shall be conducted as expeditiously as possible or the Registrar under the Trade and Merchandise Marks Act, 1958 may decide the matter which may govern the rights of the parties.

9. The order made by the High Court shall stand set aside and it is made clear that there shall be no order of temporary injunction in favour of either party.

20. Learned Counsel for the plaintiff-respondent, on the other hand, has sought to argue that in an appeal only the pleadings and evidence as before the trial court can be considered and not what has been brought on the record in the memo of appeal. It is submitted that the appellants have come to this Court with entirely different pleadings and evidence. Reference is made to paragraph No. 13 of the memo of appeal where the appellants have stated that M/s. Mano Pharmaceuticals Private Limited (defendant No. 1) has been manufacturing and marketing AVASTIN produced at the factory of M/s. Maral Laboratories, Old Mahabalipuram Road, Chennai with whom it had purchase agreement for purchase of scheduled products mentioned in the schedule of the agreement which included AVASTIN for which the drug licence had also been granted.

21. In support of the aforesaid stand, learned Counsel for the respondents refers to a decision of the Supreme Court in the case of Transmission Corporation of A.P. Ltd. and Ors. v. P. Surya Bhagwan : 2003 (6) SCC 353, in paragraph No. 10 of which it has been held as follows:

10. Question as to whether the respondent was overaged for entry into the service was neither raised in the written statement nor was it argued before the High Court. Under the circumstances the appellant cannot be permitted to raise this point for the first time in this Court.

22. Learned Counsel has also referred to various statements made in the plaint and the written statement of the parties. He has seriously sought to defend the amendment made and allowed in paragraph No. 2 of the plaint stating that the Court should consider what amendment was sought and allowed in the plaint by the court below and if there was any mistake on the part of the counsel inadvertently, the amendment cannot be itself thrown out.

23. Learned Counsel for the plaintiff-respondent submits that the only criterion in obtaining trade mark is as to who is the prior user of the trade mark in question. In this regard, it is stated that the respondent before making an application under Rule 44 of the Trade Mark Rules obtained a certificate from an attorney on 20.10.2000 that there is no pending application in respect of the said trade mark and thereafter it filed application for registration of the trade mark on 20.10.2000. It is further submitted that admittedly the defendants' application for registration of trade mark came much later nearly ten months after on 21.8.2001. It is contended that it is also evident from the ORG IMS Retail Audit of Pharmaceutical Products of India published in the month of May, 2004 (Annexure-6 referred to in the impugned order) that the plaintiff had launched its product in September, 2001, whereas the defendant-appellants had launched their product in the month of March, 2002 and thus the plaintiff-respondent is evidently the prior user of the said trade mark, even on the basis of the survey report of an independent third party. Learned Counsel for the plaintiff also refers to the detailed manner in which it has proceeded from 20.10.2000 in the matter of bringing into production the said product as mentioned in a Fax Message dated 6.9.2001 (Annexure-C to the counter affidavit). He also refers to the letter dated 7.11.2000 (Annexure-D to the counter affidavit) of the Drug Monitoring and Research Institute whereby it had given its consent for taking the comparative bioequivalence study regarding the pharmacokinetic profile of single dose of Atorvastatin 20 mg tablet for Aglowmed Ltd. It is, thus submitted that the plaintiff-respondent has been able to show that it was prior user of the drug in question whereas the defendant-appellants have failed to do so. Merely saying that it is prior user is not sufficient and it was for the defendants to produce the materials in support of their said stand. It is further argued by learned Counsel that the trial Court could have only decided the matter on the materials produced by both the sides and after duly considering the same and the survey report, which was not that of the plaintiff nor by any agency connected with them. It has thus relied upon the said independent evidence to come to its conclusion. It is further submitted by learned Counsel that the same trade mark of two manufacturers at the same time normally cannot be in the market and thus in such case one of them has to be injuncted which the Court below has rightly done.

24. In support of his submission, learned Counsel for the plaintiff-respondent relies upon a decision of the Supreme Court in the case of Dhariwal Industries Ltd. and Anr v. M.S.S. Food Products 2005 (4) Supreme Bound Reports 64, paragraph Nos. 4 and 5 of which are quoted herein below:

4. The trial court held that the plaintiff has prima facie established prior user of the mark 'Manikchand' by itself and its predecessors. It observed that the question whether the assignments relied on from its predecessors by the plaintiff were genuine and are proved to be genuine was a question that could be decided at the trial and at this prima facie stage there was no reason to discard those documents. The documents relied on by the plaintiff, prima facie showed prior user. After referring to some of the decisions brought to its notice, it held that the plaintiff has established a prima facie case for interim injunction. It was further found by that court that the balance of convenience was in favour of the grant of interim injunction in favour of the plaintiff restraining the defendants from using the mark 'Manikchand' till the final disposal of the suit. On appeal by the defendants, the appellate court reconsidered the relevant aspects in the light of the arguments addressed before it and came to the conclusion that the trial court was justified in granting an order of injunction and the grant of interim injunction by the trial court could not be said to be in exercise of discretion which was either arbitrary or perverse. The appellate court observed that the trial court at this stage was not wrong in coming prima facie to the conclusion that the prior user of the mark was by the predecessors of the plaintiff and the plaintiff. Regarding the argument based on delay and latches and acquiescence, the appellate court took the view that the present action was triggered off by the filing of a suit by the defendants in the High Court of Bombay seeking to restrain the user of the mark 'Malikchand' by the plaintiff and under the circumstances the claim for interim injunction could not be rejected on the ground of delay and laches when both sides seemed to agree that the marks were similar. The appellate court also took note of the number of prosecutions initiated against the defendants under the Prevention of Food Adulteration Act in respect of Pan Masala and Gutkha sold under the name 'Manikchand' and indicated that the plaintiff would be seriously prejudiced and its reputation affected, if the defendants are allowed to carry on their trade in these products under the name 'Manikchand'. Thus, finding no reason to interfere with the grant of interim injunction by the trial court, the lower appellate court dismissed the appeal filed by the defendants, but directed the trial court to try and dispose of the suit within a period of six months from the date of receipt of a copy of its order.

5. Before proceeding to consider the appeal, we may observe that in this appeal, various documents, not produced before the trial court or before the lower appellate court, have been produced and elaborate arguments addressed based on those documents. The present proceeding is an appeal by special leave against an order passed by the High Court in an appeal under Order XLIII Rule 1 of the C.P.C. and normally the appeal here must be considered based on the material that was produced before the trial court or before the appellate court in terms of the permission granted by that court under Order XLI Rule 27 of the C.P.C. At this interlocutory stage it would not be proper for this Court to enter into an adjudication based on the various documents produced before this Court which are not of undoubted authenticity and the genuineness, acceptability and value of which are mutually questioned. Generally, the arguments based on genuineness, admissibility and so on, are ones to be raised at the trial, though no doubt they could be raised at the interlocutory stage in respect of a prima facie case or in opposition thereto. In other words, we think that it will be proper to confine ourselves to the materials available before the trial court and those made available before the lower appellate court with the permission of that court while considering this interlocutory appeal.

25. Learned Counsel also submits that the case of Mahendra and Mahendra (supra) relied upon by the learned Counsel for the appellants, as a matter of fact, supports the stand of the respondents and in this regard, he refers to paragraph No. 24 of the said decision, which is quoted below:

24. Judging the case in hand on the touchstone of the principles laid down in the aforementioned decided cases, it is clear that the plaintiff has been using the words 'Mahindra & Mahindra' in its companies/business concerns for a long span of time extending over five decades. The name has acquired a distinctiveness and a secondary meaning in the business or trade circles. People have come to associate the name 'Mahindra' with a certain standard of goods and services. Any attempt by another person to use the name in business and trade circles is likely to and in probability will create an impression of a connection with the plaintiffs' Group of Companies. Such user may also affect the plaintiff prejudicially in its business and trading activities. Undoubtedly, the question whether the plaintiffs' claim of 'passing-off action' against the defendant will be accepted or not has to be decided by the Court after evidence is led in the suit. Even so for the limited purpose of considering the prayer for interlocutory injunction which is intended for maintenance of status quo, the trial court rightly held that the plaintiff has established a prima facie case and irreparable prejudice in its favour which calls for passing an order of interim injunction restraining the defendant Company which is yet to commence its business from utililsing the name of 'Mahendra' or 'Mahendra & Mahendra' for the purpose of its trade and business. Therefore, the Division Bench of the High Court cannot be faulted for confirming the order of injunction passed by the learned Single Judge.

26. Learned Counsel for the plaintiff-respondent also refers to the conduct of the defendants in the matter submitting that they have been instrumental in delaying the disposal of the suit, although the normal conduct of the party in a court against which an interim injunction has been granted is to ensure the disposal of the case.

27. On a consideration of the rival submissions, this Court finds sufficient force in the submissions of learned Counsel for the defendant-appellants. It is evident from the impugned order dated 2.12.2004 that the reason for grant of ad-interim injunction is that the plaintiff was prior applicant for the grant of registration of the trade mark and further as per Annexure 6, the report of the ORG IMS Retail Audit for Pharmaceutical Products of India, the plaintiff was the prior user of the product under trade mark AVASTIN than the defendants.

28. In my view the first ground by itself cannot establish the claim of prior user. It is true that the plaintiff-respondent had applied for registration of the trade mark AVASTIN ten months prior to the defendant-appellants but mere application for registration of trade mark is never considered a conclusive evidence regarding prior user which has to be judged from the entry of the products in the market for the purpose of sale and the same cannot be proved only on the basis of an application for registration of trade mark, but on the basis of advertisement, invoices, dealings with the dealers and retailers, cash memos of retailers, etc. Thus, the mere filing of application for registration of trade mark cannot lead to the conclusion regarding prior user of the said product AVASTIN.

29. Similarly the Court cannot blindly act only upon the information contained in Annexure-6, Report of ORG IMS Retail Audit. It is true that the said report states that the plaintiff launched its product in the month of September, 2001, whereas the defendants launched the same in the month of March, 2002 but the said information has to be seen in the context of the averments made in the plaint itself that the defendants were very much in the market as per the admission of the plaintiff at least on or before July, 2001, since the legal notice for infringement of trade name of the drug in question was issued to the defendant No. 1 on 12.7.2001. To the similar effect is the statement in the plaint that the plaintiff had sent its employees to the retail shops and by two cash memos dated 13.8.2001 issued by defendant Nos. 3 and 4, it was found that the defendant Company was using the brand name AVASTIN of its product.

30. In view of the said clear admission by the plaintiff regarding the defendant company being in the market at least from the month of July, 2001 itself, the Court below should not have blindly relied upon the said Annexure-6, survey report, which shows that the defendants had launched their product in the month of March, 2002, subsequent to the launching of the product of the plaintiff in the month of September, 2001. The undisputed fact of the defendants-appellants being in the market at least from July, 2001 clearly shows that the survey report (Annexure-6) relied upon by the Court below was not accurate and thus the finding of the court below on the basis of the said single document is perverse being contrary to the materials on the record.

31. This Court also finds that there has been no discussion at all regarding the balance of convenience being in favour of the plaintiff or that the plaintiff being put to irreparable loss, if the injunction was not granted. Merely because the Court below arrived at the conclusion that the plaintiff was prior user of the product AVASTIN, it had formed the other two conclusions regarding the balance of convenience and irreparable loss, which is not permissible and thus the court below has not properly applied its mind while granting temporary injunction.

32. This Court also does not agree with the submission of learned Counsel for the plaintiff-respondent that one of the parties has to be necessarily injuncted temporarily during the pendency of the suit. No such law has ever been laid down either by this Court or the Supreme Court that temporary injunction in such matter is necessary, rather the law is that unless strong prima facie case is shown by a party, there cannot be any grant of temporary injunction.

33. So far as the present matter is concerned, it is not a case bearing any similarity to that of the case of Mahendra and Mahendra (supra) where the trade mark was with respect to the very name of the company which was manufacturing various products since long, whereas in the present case the trade mark relates to a particular product, namely, a drug bearing the chemical name Atrovastatin; it is thus evident that the trade mark AVASTIN closely corresponds to the chemical name of the drug in question and is not a distintictive name related to the name of the company itself. The consideration in the two cases is entirely different. Here there is a case of common field of activity between the two parties where both of them sought to use the similar trade mark with respect to their drug in question marketed by them. From the materials on the record, it is evident that both the parties have around the same time sought to manufacture the drug in question by obtaining the licences and/or marketed them under the same trade name. The materials brought on the record before the court below were not at all conclusive of the matter as to which of them was the prior user.

34. In such circumstances as pointed out by the Apex Court in Uniply Industries Ltd. (supra), the court below ought to have been very cautious in granting injunction which could affect the trade or business of another person using an identical trade mark unless a strong prima facie case was established by the plaintiff, apart from considering the question of balance of convenience and irreparable loss which has not at all been kept in mind by the court below. It appears prima facie in the instant case that the two parties were honestly and concurrently using the same trade mark and thus the issue of injunction could not have been decided in the superficial manner in which it has been clone in the present case.

35. This Court is clearly of the view that the present matter is substantially covered by the principles laid down by the Apex Court in the case of Uniply Industries Ltd. (supra) and thus it was not an appropriate case where any order of injunction ought to have been made either in favour of one of the parties or against it or vice versa.

36. In view of the aforesaid discussions, it is not necessary to deal with the other submissions of learned Counsels for the parties.

37. Accordingly, the orders dated 2.12.2004 and 29.4.2006 passed in Title Suit No. 14/2001 are both set side.

38. In the facts and circumstances of the case, this Court is of the view that it is not a case where injunction either in favour of the plaintiff-respondent or against it or vice versa can be granted. Therefore, it is directed that the Court below shall conduct the proceedings and conclude the same as expeditiously as possible or the Registrar under the Trade Mark Act may decide the matter which may govern the rights of the parties.

39. These appeals are, accordingly, allowed subject to the aforesaid directions.

Subject	Civil;Intellectual Property Rights
Court	Patna High Court
Decided On	Sep-03-2009
Case Number	M.A. No. 29 of 2005
Judge	Ramesh Kumar Datta, J.
Reported in	AIR2010Pat46,2010(58)BLJR231,LC2010(1)14
Acts	Trade and Merchandise Mark Act, 1958 - Sections 12(3), 18(1) and 29(2); ;Drugs and Cosmetics Act; ;Trade Mark Act; ;Copyright Act, 1957 - Section 55; ;Prevention of Food Adulteration Act; ;Code of Civil Procedure (CPC) - Order 6, Rule 18 - Order 39, Rules 1 and 2 - Order 41, Rule 27 - Order 43, Rule 1; ;Trade Mark Rules - Rule 44
Appellant	Orchid Healthcare a Division of Orchid Chemicals and Pharmaceuticals Limited Through S. Bala Sundha
Respondent	Aglowmed Limitted Through Power of Attorney Holder Mr. Ajay Kumar Ghosh S/O Late C.C. Ghosh, ;durga
Appellant Advocate	V. Nath, Adv.
Respondent Advocate	Tej Narayan Singh,; Ashok Kumar, and; Satish Kumar,
Disposition	Appeal allowed
Cases Referred	Dhariwal Industries Ltd. and Anr v. M.S.S. Food Products

Orchid Healthcare a Division of Orchid Chemicals and Pharmaceuticals Limited Through S. Bala Sundharam, Assistant Manager and ors. Vs. Aglowmed Limitted Through Power of Attorney Holder Mr. Ajay Kumar Ghosh S/O Late C.C. Ghosh, - Court Judgment