Allergan Inc Vs. Milment Oftho Industries and ors. - Court Judgment

SooperKanoon Citationsooperkanoon.com/862620
SubjectIntellectual Property Rights
CourtKolkata High Court
Decided OnNov-06-1997
Case NumberG.A. No. 606 of 1997 and A.P.O.T. No.78 of 1997, G.A. No. 3907 and C.S. 349 of 1996
JudgeRuma Pal and ;Devendra Kumar Jain, JJ.
Reported in(1997)2CALLT92(HC)
ActsTrade and Merchandise Marks Act, 1958 - Section 29
AppellantAllergan Inc
RespondentMilment Oftho Industries and ors.
Appellant AdvocateSudipto Sarkar, Adv.
Respondent AdvocateGautam Chakrabortti and ;R.K. Khanna, Advs.
DispositionAppeal allowed
Cases ReferredLtd. v. Samrat Pharmaceulicals
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ruma pal, j.1. the appellant, allergan inc, is a company which manufacturers pharmaceutical products in several countries. it does not carry on any business in india. the first respondent is a company which carries on business of manufacturing pharmaceutical products in indian. the appellant seeks to restrain the respondents from using the mark 'ocuflox' in respect of a medicinal preparation manufactured and marketed by the respondents. the issue to be decided in this appeal is the right of a foreign manufacturer to restrain use of a mark in india on the basis of prior user of the mark outside the country.2. on the material before this court there can be no doubt that the appellant manufactures a pharmaceutical eye care product under the name of ocuflox containing of loxacin and other.....
Judgment:

Ruma Pal, J.

1. The appellant, Allergan Inc, is a company which manufacturers Pharmaceutical products in several countries. It does not carry on any business in India. The first respondent is a company which carries on business of manufacturing pharmaceutical products in Indian. The appellant seeks to restrain the respondents from using the mark 'OCUFLOX' in respect of a medicinal preparation manufactured and marketed by the respondents. The issue to be decided in this appeal is the right of a foreign manufacturer to restrain use of a mark in India on the basis of prior user of the mark outside the country.

2. On the material before this Court there can be no doubt that the appellant manufactures a pharmaceutical eye care product under the name of OCUFLOX containing of loxacin and other compounds. Accqrding to the appellant it first used the mark on 9th Sept, 1992 after which it has marketed the product in several countries in Europe, Australia, South Africa and South America and has obtained registration of the mark in Australia, Bolivia, Equador, Mexico, Peru, South Africa, Canada and the United States of America. It has also applied for registration of the mark OCUFLOX in several countries including India. These applications are pending. The appellant has claimed world-wide sales of 5960034 units of OCUFLOX worth US $ 1,51,000 in 1993; US$ 7,064,472 in 1994; US$ 14,344,010 in 1995 and US $ 10,974,869 for the period January to August, 1996. It has also claimed that in the USA alone it spent US $ 0.3 million in 1992; US $ 2.6 million in 1993; US$ 2.7 million in 1994; US $ 2.1 million in 1995 and US $ 1.9 million between January and August, 1996 on advertisements and promotional literature. The appellant has claimed that it has earned a considerable reputation in all these countries in respect of the product by extensive sales and wide spread advertisements in medical journals which are circulated in India.

3. According to the respondents they knew nothing of the appellant's product. They say that in 1993 they decided to manufacture and sell a medicinal preparation containing CIPROFLOXACIN HCL for treatment of the eye. They say that they coined the word OCUFLOX taking the prefix 'OCU' from 'OCULAR' and 'FLOX' from 'CIPROFLOXACIN' being the basic constituent of the preparation. On 26th July, 1993 they applied for a drug licence to manufacture and market the product. This was granted by the Commissioner of Food & Drug, Control Administration on 25th August, 1993. In Sept. 1993, the respondents applied for registration of the mark 'OCUFLOX' in Class V of the Fourth Schedule to the Act. The application is pending. The respondents claim to have commenced sale of their product 'OCUFLOX' from 30th Oct. 1993 and to have successfully built up a reputation by such sales. By letter dated 15th Nov. 1994 the respondent No. 1 wrote to Dr. Eric D. Donnenfeld in the USA enclosing a list of the respondent No. 1 's products 'for trial purpose'. Amongst the several products mentioned one of the products was 'OCUFLOX'.

4. The appellant came to know that the respondents were using the mark OCUFLOX from this letter. The appellant wrote to the respondents on 29th Dec. 1994 objecting to use of the term OCUFLOX. The respondent No. 1 wrote to the appellant in January, 1995 in reply to the appellant's letter of objection asking for a discussion in the matter. That a discussion was thereafter held in June, 1995 is not in dispute. However, the appellant and the respondents have differed as to what took place during such discussion. It is the appellant's case that the meeting was inconclusive but that the respondent did not, to the knowledge of the appellant, use the name OCUFLOX till July, 1996.

5. In the meanwhile in January, 1995 the appellant filed an application for registration of the mark OCUFLOX under the Trade and Merchandise Marks Act, 1958 in Bombay. In early 1996 the appellant formed a joint venture company, Allergan India Ltd. with Nicholas Pirmal Ltd., an established Indian pharmaceutical company to market its products in India.

6. This suit was filed by the appellant in Dec. 1996 against the respondents to restrain them from using the mark OCUFLOX on any product. An ex parte ad-interim order was granted on the application of the appellant on 18th Dec. 1996 restraining the respondents from using the mark OCUFLOX. After the filing of affidavits and a contested hearing the injunction was vacated on 29th January, 1997.

7. The learned single Judge held that the plaintiff in an action for passing off must be able to establish reputation in the product by long prioruser in the country. He hold that OCUFLOX had not become distinctive of the product of the plaintiff in the country. In addition, he held that the plaintiff had neither marketed nor obtained by licence to market its product in India unlike the defendant, who had been marketing its product with the mark OCUFLOX in India being duly licensed by the Drug Controller to do so. The interim order of injunction was accordingly vacated but the respondents were directed to maintain separate accounts in respect of sales of their product OCUFLOX and to furnish copies of such accounts to the appellant once every three months. The hearing of the suit was also expedited.

8. Theappellanthas appealed from this order. According to the appellant the Learned single Judge erroneously held that marketing in this country is necessary to establish reputation. It was argued on the basis of several authorities that even without having any business in India, a world wide reputation would be protected by Court in India against passing off particularly in the field of medicine. It is argued that the appellant had been marketing its product OCUFLOX world wide prior to the adoption of the mark by the respondent and that if protection were not granted by injuncting the defendant it would be irreparably prejudiced. The appellant has said that compared to the sales by the appellant of its product OCUFLOX, the sales of the respondents product (accepting the respondents figures to be correct) were very small and to secure the respondent No. 1 against any prejudice it may suffer by being restrained from using the mark OCUFLOX, the appellant was willing to secure the respondent No. 1 until the hearing of the suit.

9. The respondents have challenged the initiation of the proceeding on the ground that the plaint was not verified by a person authorised to do so. On the merits it has been contended that there was no reliable evidence to show that the appellant had commenced business under the mark OCUFLOX in 1993 when the respondent for the first time used the name in connection with its goods. It is contended that there was nothing to show that in 1993 when the respondents commenced marketing their products under the mark OCUFLOX, that the appellant had any goodwill in India in respect of the mark or that the respondents had any knowledge of the user of the mark OCUFLOX by the appellant. On the question of balance of convenience it was submitted that the suil was instituted more than 2 years after the appellant became aware of the user of the mark OCUFLOX by the respondents during which period the respondent No. 1 had built up its sales of its product under the mark OCUFLOX. The respondents have relied on copies of several invoices showing sales of OCUFLOX and have claimed to have spent Rs. 1,98,9671 between 1993 December, 1996 on publicity. During this period, the respondents manufactured about 4 lakh units of OCUFLOX of which about I lakh units were physicians samples. Although the value of the units manufactured have been given as about Rs. 5 lakhs (out of which the value of the promotional sample is Rs. 3 lakhs), no figure of the sales of OCUFLOX effected by the respondents been given. It is submitted by the respondents that the appellant had never marketed any product by the name of OCUFLOX in India and was in fact marketing similar products elsewhere in the world under the mark OCUFLOX.

10. The respondents' objection to the filing of the suit is without substance. The plaint has been affirmed by Mr. A.K. Ghosh of Robson, Black & Ghosh. The appellant has produced copies of a power of attorney dated 29th December, 1994 in the form prescribed under the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as the Act) authorising inter alia Mr. A. K. Ghosh of Robson, Black & Ghosh to act on behalf of the appellant in all proceedings under the Act. In addition a form of authorisation dated 27th January, 1997 authorising Mr. A. K. Ghosh of Robson, Black & Ghosh not only to file proceedings under the Act in Court but also ratifying and confirming actions already taken in this respect was produced. These are adequate to remove any doubt as to the filing of the suit. Besides, the issue is not one which can be raised in appeal particularly when the Learned single Judge did not record any finding in favour of the respondents on the point and no cross appeal has been preferred therefrom.

11. An action for passing off, as the word 'passing off itself suggests, is to restrain the defendant from passing off its goods to the public as that of the plaintiff's. It is an action not only to preserve the reputation of the plaintiff but also to safeguard the public. The defendant must have sold its goods in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods are the plaintiffs.

12. In this case the mark is identical. There is as such no question of determining whether the mark of the defendant is deceptively similar to, that of the appellant or not. Both the products arc pharmaceutical preparations but with different compositions. With identical names there would obviously be confusion in the mind of the purchasing public between the two. It is not in dispute that the appellant chose the name first and used it on its product in several countries around the world, excluding India, when the respondents entered the market with their product.

13. Reputation is the connection that the public makes between a particular product or service and a particular source which may or may not be known. Some Courts have held that reputation which is built up on the basis of trade within the country is entitled to protection from passing off. Others Court have made some concession to the communication explosion and held that if the plaintiff has a reputation in another country, his right to the mark will be protected if it is coupled with some actual or proposed business activity within the country (See Alain Beniardin et Cie v. Pavilion Properties, (1967) RFC 581; Amway Corporation. v. Eurway Int. Ltd. (1974) RFC 82.'Still other Courts have held that with the increase in international commerce, mass media communications and the frequency of the foreign travel, political and geographic boundaries do not stem the exchange of ideas and instant information. Local business is not an essential ingredient of a passing off action. However, the reputation must be well established or a known one See : Panhard et Levassor v. Panhard Motor Co. Ltd., (1901) 18 RPC 405; Sheraton Corpn. v. Sheraton Motels, (1964) RPC 202; Orkin Exterminating Co. Tnd. v. Pest Co. of Canada (1985) 5 Canadian Patent Reporter 433; Vitamins L. D.'s Application for Trademark, 1956 (1) RPC 1. The decisions which reflect the first and second view have so held for reasons which are partly historic, partly geographic and partly because reputation was equated with goodwill. Goodwill has been defined as the benefit derived from reputation. It is not the reputation required to found a passing off action. The law of passing off is not trammelled by definitions of goodwill developed in the field of revenue law [per Hockhart J., Conagra Inc. v. McCain Foods (Aust) P. Ltd., 1993 (23) IPR 193 231]. It is an asset of a business assessable in terms of money and transferable (See IRC v. Muller, (1901) AC 217, Trego v. Hunt (1896) AC 7; ITC v. B.C. Srinivas Shetty, : [1981]128ITR294(SC) . In my opinion reputation framing the basis of a passing off action need not be so localised. Whatever the compulsion for the Courts taking the first or second view in other countries, as far as this country is concerned, Courts in India prescribe to the third view and have held that a plaintiff with a reputation which is established internationally can sue to protect it in this country even if it does not have any business activity here. In other words reputation of a product may precede its introduction and may exist without trade in such product in the country. See N.R. Dongre v. Whirlpool Corporation, : AIR1995Delhi300 (DB); J. N. Nichols (Vimto) Ltd. v. Rose & Thistle, 1994 PTC 83 (DB); Calvin Klein Inc. v. International Apparels, (1995) FSR 515 : 1995 IPLR 83; Conagra Inc. v. McCain Foods (Supra) at p. 133.

14. In this case although the appellant is not carrying on business here, prima facie it is not a case of the appellant seeking to have a monopoly in respect of the name OCUFLOX applied to a product with no intention of exploiting it in this jurisdiction. It is in evidence that the appellant has together with an Indian Pharmaceutical company set up a joint venture company for sale of its products in India. It has also applied for registration of the disputed mark before the registrar of Trade Marks in Bombay. It appears from the application for registration that the appellant proposes to use the mark OCUFLOX in India.

15. I am also prima facie of the view that the appellant is entitled to seek and be granted protection in respect of the name OCUFLOX to medicinal products against the respondents. In arriving at this conclusion I have kept in mind principles which appear from the welter of decisions cited by the parties.

16. First it is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of sales and extent of advertisements. In Stanard v. REAY, 1967 (19) RPC 589 the plaintiff started a business under the name of Mr. Chippy of selling fish and chips from a van. Three weeks later the defendant also started same business under the same name. Allowing the application of the plaintiff to restrain the defendants from using the same name, Buckley J. found on evidence that even in the 3 short weeks the sale was sufficient to establish a connection in the mind of the public between the name Mr. Chippy and the plaintiffs business. Similarly in Consolidated Foods Corporation v. Brandon & Co., : AIR1965Bom35 it was said: 'A trader acquires a right to property in a distinctive mark irrespective of length of user or extent of his trade'. The question according to Their Lordships is - who gets there first?

17. Second, evidence of reputation abroad may spill over in the country through advertisement. The Division Bench of the Delhi High Court in N. R. Dongre v. Whirlpool Corpn., : AIR1995Delhi300 (affirmed in appeal : (1996)5SCC714 said:

'The knowledge and awareness of a trade mark in respect of the goods of a trader is not necessarily restricted only to the people of the country where such goods are freely available but the knowledge and awareness of the same reaches even the shores of those countries where the goods have not been. When a product is launched and hits the market in one country, the cognizance of the same is also taken by the people in other countries almost at the same time by getting acquainted with it through advertisements in newspapers, magazines, television, video films, cinemas etc; even though there may not be availability of the product in those countries because of import restrictions or other factors. In today's world it cannot be said that a product and the trade mark under which it is sold abroad, does not have a reputation or goodwill in countries where it is not available. The knowledge and awareness of it and its critical evaluation and appraisal travels beyond the confines of the geographical area in which it is sold. This has been made possible by development of communication systems which transmit and disseminate the information as soon as it is sent or beamed from one place to another. Satellite Television is a major contributor of the information explosion. Dissemination of knowledge of a trade mark in respect of a product through advertisement in media amounts to use of the trade mark whether or not the advertisement is coupled with the actual existence of the product in the market.'

18. The same view was taken by the Division Bench of this Court in J. N. Nichols (Vimto) Ltd. v. Rose & Thistle, 1994 PTC 83 (DB):

'Thus a product and its trade name transcends the physical boundries of a geographical region and acquires a trans order or overseas or extraterritorial reputation not only through import of goods but also by its advertisement. The knowledge and the awareness of the goods of a foreign trader and its trade mark can be available at a place where goods are not being marketed and consequently not being used. The manner in which or the source from which the knowledge has been acquired is immaterial...... The Courts do notapprove of any attempt by one trader to appropriate the mark of another trader, even though that trader may be a foreign trader and'mostly uses his mark in respect of the goods available abroad i.e. outside the country where the appropriate of the mark has taken place. As mentioned earlier, awareness and knowledge of the mark in the latter country may be because of small trickle of goods in that country or through advertisement. The manner and method by which the knowledge of the mark is acquired by the public is of no consequence and will not matter.'

19. Thirdly, the matter will have to be looked at from the point of view of the purchasing public. If it is possible for a purchaser of the respondent's product in India to do so under the impression that he is buying the appellant's product the respondents as the subsequent adopter of the mark must be restrained from doing so.

20. Finally, special considerations come into play where the product is a medicinal preparation See F. Hoffman - La Roche & Co. A. G. v. DDSA Pharmaceuticals, (1972) RFC I more so when the clinical composition of the two competing products are different not so much as to protect the reputation of the plaintiff but to safeguard the public. In the matter of: Vitamins L. D.'s application for trade mark I956(1)RPC I, Vapplied for registration of a mark in respect of a pharmaceutical product in England. The application was opposed by a company which had its mark registered in America. The opposition was dismissed by the Trade Mark Authorities. On appeal Lloyd-Jacob J. said :

'Having regard to the fact that the evidence discloses a genuine business on the part of the appellants in their country of origin, and that advertisements of such are reaching this country and appearing in libraries or places of reference to which medical men may resort, it seems to me that 1 am bound to consider the possibility that with the passage of time, some conflict may occur between the use of the mark by the present respondents and the advertisement and user of the mark overseas by the present appellants. Having regard to the international character which medicine and the allied sciences have assumed and increasingly assumed over the last two decades, it seems to me that the Court, must be particularly careful to see that in exercising its discretion under the Act the public interest is not in any way imperilled. For my part I am not satisfied that, in allowing to be used by manufacturers in this country as a brand name for a pharmaceutical substance a word which is in fact used by an American Corporation in respect of the same material and advertised in journals, which on the evidence are received into this country and referred to, the public interest will be best served by permitting registration.'

21. Applying these principles to the facts of the case it appears to be clear from the materials before the Court that the appellant had sufficient world wide reputation connecting the name OCUFLOX to sustain the complaint of passing off by the respondent.

22. There is evidence of voluminous sales of the appellant's product OCUFLOX both in terms of quantity and value world wide from 1992 before the respondent thought of the name. At the interlocutory stage, where the deponents to the affidavits are not subjected to cross-examination, the Court necessarily has to proceed on the basis of affidavit of evidence. There is no reason at this stage to disregard the statements made on path by the appellant.

23. There was also publication of the product in medicinal journals before the respondents entered the scene. One of the publications relied upon by the appellant is a newspaper called SCRIP. The issue dated 23rd February, 1993 contains the following statement:

'In December, 1992, Allergan received an approvable letter from the US FDA for the ophthalmic anti-infective, Ocuflox (Offoxacin, licensed from Santen/Daiichi) solution, for the treatment of external ocular infection.'

24. The issue of SCRIP dated 26th March, 1993 shows that the appellant had applied for registration of OCUFLOX in the United States. The issue dated 17th August, 1993 refers to the sale of OCUFLOX by the appellant:

'The US FDA has approved Allergan's Ocuflox 0.3% solution, an ophthalmic formulation of the fluoroquinolone, ofloxacin (licenced from Daiichi and Santen) for the treatment of bacteriaconjunc-tivitis. It will be launched by the end of the year. Allergan already markets the product in France, Italy, the U.K., Greece, Brazil, Australia and South Africa.'

25. While the statements published in SCRIP may be hearsy and not amount to proof of its contents, as contended by the respondents, nevertheless the issue of SCRIP evidences the fact that such statements were published when they were.

26. AR Surgery News which describes itself as 'The Leading Medical Newspaper for Opthalmologists' dated 15th October, 1993 contains an article on the first page in respect of the appellant's sale of OCUFLOX under the heading 'FLUOROQUINOLONE OFFERS EDGE AGAINST BACTERIAL INFECTION'. The article is a lengthy one, relevant extracts of which read:

'The Food & Drug Administration has approved the anti-infective ofloxacin for ophthalmic use...

To be marketed by Allergan under the tradename Ocuflox, the fluoroquinolone may 'dramatically change' treatment of bacterial infections, according to Eric Donnenfeld,M.D........

The company is currently marketing of loxacin ophthalmic solution in Australia, Brazil, France, Greece, Italy, South Africa and the United Kingdom. Approval in Canada and Spain is pending. Ocuflox is licenced from Daiichi Pharmaceuti-cals Co. Ltd. Tokyo and Santen Pharmaceutical Co. Ltd. Osaka Japan.'

27. The November, 1993 issue of American Journal of Opthalmology (AJO) was produced by the appellant as a sample of the kind of advertisement made by the appellant for the sale of OCUFLOX. The advertisements cover eight consecutive full pages in colour. The word OCUFLOX is printed in an eye-cataching manner on seven pages in large letters. The first page has the following writing 'Now available in the USA : The World's leading Opthalmic Anti-infective'. The last statement is based on 'Leading industry audit for single-agent therapy, 1992 (based on local currency in dollars and standard units)'.

28. It is true that the advertisements have appeared only in medical journals and newspapers but a pharmaceutical product is rarely, if ever, published in magazines of general interest. It is published for pharmacists and persons connected with medicine. That foreign medical journals, including the AJO, are circulated in India appears to be so from the advertisements issued by the respondents in respect of their product OCUFLOX :

'BROAD SPECTRUM ACTION

The fluoroquinolones are broad spectrum bactericidal agents with activity against many corneal pathogens including Pseudomonas aeruginosa (Ref: Journal Antimicrobial Chemotherapy 1989;23; 527-35)

* BETTER PENETRATION IN OCULAR TISSUES & FLUIDS

* HIGH SUCCESS RATE

Treatment with ciprofloxacin yielded a 91.9% success rate (AJO 1991 Oct; 112 (4 Suppl); 345-475)

* LEAST CHANCES OF BACTERIAL RESISTANCE

* SUPERIOR TO OFLOXACIN & NORFLOXACIN

Review of the minimum inhibitory concentrations of the fluoroquinolones against ocular pathogens reveals that Ciprofloxacin is more potent that Ofloxacin against many bacteria; Ofloxacin is in turn more potent that Norfloxacin (Ref: BJO 1995; 79, 606).'

29. The appellants reliance on copies of the Physicians Desk Reference (PDR) for the years 1995 and 1996, the Red Book 1994 and 1996, USP Dictionary 1997, Opthalmic Drug facts, 1996, American Drug Index, 1996, International Drug Directory of Swiss Pharmaceutical Society, 1995 and advertisements in Canada to establish the extent of the appellant's reputation in OCUFLOX bear testimony to reputation but are perhaps not material to the question of its reputation at the relevant time viz. 30th October, 1993 when the respondents claim to have entered the market for the first time.

30. However, the appellant's product OCUFLOX had attracted sufficient interest in the medical field as early as 15th October, 1993 so that Dr. Eric D Donnenfeld, acknowledged even by the respondents as an eminent specialist in his field by the respondents (vide the letter written on 15th November, 1994 by the respondent No. 1 to him), gave his opinion that it would 'drastically change treatment of bacterial infections'.

31. A global reputation associating the mark OCUFLOX with the appellant was asserted by the appellant in its letter to the respondent on 29th November, 1994 -- an assertion which was not denied by the respondents in their reply. All that the reply said was :

'In this connection, we request you kindly depute Mr. Arun Ghosh of Calcutta your Indian representative to discuss the same matter with undersigned to his best of satisfaction with prior appointment.

For better clarity, we fell personal discussion would be much helpful, that's why we request you to depute Mr. Ghosh.

We assure our fullest co-operation in subject-matter.'

32. Apart from advertisements, the possibility of confusion between the two products in the minds of well travelled Indians and of those visiting India would be a real one. It is not a case of isolated use in a remote country but of wide spread use in several countries.

'The international mobility of the world population increasingly brings human beings, and therefore potential consumer of goods and services, closer together and engenders an increasing and more instantaneous awareness of international commodities. This is an age of enormous commercial enterprises, some with budgets larger than soverign states, who advertise their products by sophisticated means involving huge financial outlay. Goods and services are often preceded by their reputation abroad. They may not be physically present in the market of a particular country, but are all well known there because of the sophistication of communications which are increasingly less limited by national boundries, and the frequent travel of residents of many countries for reasons of business, pleasure or study....... Reputation within the jurisdiction............ may be established by showing constant travel of people between other countries and forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner.' (PerLockhart J. in Congra Inc. v. McCain Foods (Supra) at P. 233, 234).

33. It is not for the appellant to establish actual confusion. To show the likelihood is sufficient at this stage (See Vitamins L.D.'s application (Supra); Century Traders v. Roshan Lal Duggar, : AIR1978Delhi250 (DB)).

34. Once the appellant's product is released in the Indian market the consequences may well prove disastrous given the fact that in India, drugs are available without prescription (See : Astra -IDL Ltd. v. TTK Pharma Ltd., : AIR1992Bom35 (Sic).

35. It is not necessary to speculate on the bona fides of the respondents. What is important is that the respondent admittedly adopted the mark after the appellant (See Staanard v. Reay (Supra); Ruston & Hornby Ltd. v. Zamindara Engineering Co., : [1970]2SCR222 ; East End Hosiery Pvt. Ltd. v. Agarwal Textile Mills, : AIR1971Cal3 . Cor. S. C. Ghosh, J.) and the main consideration is the likelihood of confusion with possible injury to the public and consequential loss to the appellant.

36. To sum up : In the interest of public there cannot be two medicinal preparations bearing the same name from different sources and with different compositions. One must go. The appellant was first in the field in several countries and that gives it the edge over the respondents.

37. The facts show that, at the very least the appellants claim is not frivolous and it cannot be said the appellant has no prospect of succeeding at the trial. The question therefore is whether the balance of convenience lies in favour of granting or refusing the interlocutory relief that is sought. The law as enunciated in American Cyanamid Co. v. Ethicon Ltd., (1975) 1 All ER 504 and which has been accepted by Courts in India as being correctly stated is :

'that the court should first consider whether if the plaintiff were to succeed at the trial in establishing his right to a permanent injunction he would be adequately compensated by an award of damages for the loss he would have sustained as a result of the defendant's continuing to do what was sought to be enjoined between the time of the application and the time of the trial. If damages in the measure recoverable at common law would be adequate remedy and the defendant would be in a financial position to pay them, no interlocutory injunction should normally be granted, however strong the plaintiffs claim appeared to be at that stage. If, on the other hand, damages would not provide an adequate remedy for the plaintiff in the event of his succeeding at the trial, the court should then consider whether, on the contrary hypothesis that the defendant were to succeed at the trial in establishing his right to do that which was sought to be enjoined, he would be adequately compensated under the plaintiffs undertaking as to damages for the loss he would have sustained by being prevented from doing so between the time of the application and the time of the trial.'

38. The respondents say that no prejudice would be suffered by the appellant could limit its user to OFLOX. The submission is a red herring. The question is whether the mark OCUFLOX is associated with the appellant internationally. Prima faice this appears to be so. The respondents cannot also rely on the goodwill if any they may have built up in the period after receiving the objection from the plaintiff in November, 1994. Their persistence in doing so was at their risk (See N.R. Dongre v. Whirlpool Corporation (Supra)).

39. This brings us to the question of delay which, according to the respondents, was sufficient to defeat the appellant's claim to any interlocutory relief. No doubt delay was considered a factor for dismissing a claim for interim relief in Shri Gopal Eng. & Chemical Works v. M/s. Pomx Laboratory, AIR 1992 Delhi 302; Century Electronics Ltd. v. CUS Enterprises Ltd., 1983 Fleet Street Reports 1; Baskin Robbins Ice-cream v. Gutman & Anr., (1976) Fleet Street Reports 545; Synthetic Mouders v. Samperil Aktiergesell shaft, 1980 Rajdhani LR 263 (DB). On the other hand in Astra-IDL Ltd. v. TTK Pharma Ltd., : AIR1992Bom35 (sic) and Hindusthan Pencils Pvt. Ltd. v. India Stationery Products, : AIR1990Delhi19 , the Courts were of the opinion, which I respectfully adopt, that where the interest of the general public is affected, delay is of no consequence. Moreover, delay could defeat the appellant's right if the respondents having built up their sales, were suddenly faced with the prospect of an injunction. Where the respondents were put on notice of the appellant's claim in 1994 no surprise could have been caused by the filing of the suit by the appellant to enforce that claim (See Glaxo Operations UK Ltd. v. Samrat Pharmaceulicals, : AIR1984Delhi265 ).

40. Apart from comparative prejudice, is the question of compensation. If the injury to reputation is computed with reference to the sales and promotional expenditure in any one year it is clear that the sales figures and promotional expenses claimed by the appellant are of a magnitude which would be impossible for an average sized concern to secure. Indeed the respondents have not offered to do so before us nor have they given any undertaking to the learned single Judge in this regard.

41. On the other hand the appellant has stated that it is willing to give an undertaking to the Court to pay the respondents such loss that may be suffered by them by reason of the injunction, as may be established at the trial. Here again, accepting the figures put forward by the respondents, the ability of the appellants to pay the same is not in dispute.

42. Having regard to the discussion, in my judgment, the order under appeal must be set aside both on principles of law and fact.

43. Subject to the undertaking given by the appellants to the Court, which is hereby recorded, to compensate the respondents for loss, if any, which may be suffered by the respondents by not using the name OCUFLOX on their product, the appeal is allowed and the order under appeal is set aside. The ad-interimorder granted by the Learned single Judge on 18th December, 1996 will therefore revive and will continue until the disposal of the suit. There will be no order as to costs.

Devendra Kumar Jain, J.

44. I agree.

45. Stay of operation of the order is prayed for and the same is granted 4 weeks from date.

46. Let a xerox copy of the judgment duly signed by the Assistant Registrar of this Court be given to the parties upon this undertaking to apply for certified copy of the judgment and or payment of usual charges.