Syntex Pharm AG, in a move against Cipla Limited and Syntex USA LLC [Syntex Pharma AG V. Cipla Limited and Syntex USA LLC. Notice of Motion No 3725 of 2008 in Suit No 2997 of 2008] alleged them for breach of trade mark before the High Court of Bombay. Syntex (USA) Inc was the registered proprietor of trademark 'Cellcept'. Later Syntex (USA) Inc merged into second defendant. Pursuant to merger all the rights of the Syntex (USA) Inc including intellectual property rights were transferred to the second defendant. Later, the second defendant assigned the Syntex Pharma AG with the trademark over the name 'Cellcept' by a deed of assignment. Syntex Pharma AG submitted that the mark 'Cellcept' has been openly used in respect of medical and pharmaceutical preparation. Syntex Pharma AG in the plaint stated a medicinal preparation under the trade mark 'Valcept' was introduced by the first defendant which was phonetically, visually and structurally similar to trade mark 'Cellcept'. Further it was averred that first defendant had made application for registration of the trade mark 'Valcept' in respect of medical and pharmaceutical preparation whereas 'Cellcept' is an immunosuppressive drug, both are similar and chances for administration of 'Valcept' by patients instead of 'Cellcept' are higher. Thus it was asserted an injunction must be granted to avoid such dangerous consequence.
The first defendant contented that the Drug Controller General while granting the permission to the first defendants had imposed a condition, that on the label of the product a warning 'to be sold by retail on prescription of specialists only' should be printed. It was submitted that both the products are to be dispensed only against a prescription given by the specialist thus avoiding any confusion. The first defendant further submitted that they had conceived the trade mark 'Valcept' in respect of the medical preparation containing 'Valganciclivir HCI' as its active ingredient and they were genuinely not breaching the rights of Syntex Pharma AG. Distinguishing the pricing of the products in contention, the first defendant pointed out the vast difference between the price of product of the plaintiff and the defendants. Syntax Pharma AG preparation is priced at Rs515 for ten tablets, whereas that of first defendant is Rs980 for four tablets. In discussing the case, first defendant relied upon the decision of Aristoc Ltd. V. Rysta Ltd.[AIR 1963 SC 449] to construe that the mark must be considered and compared as a whole and its is not correct to take a portion of it and compare it.
The court opinioned that the trade mark of Syntex Pharma AG 'Cellcept' and the trade mark of the first defendant 'Valcept' had phonetic similarity. In this view, the consequences of letting the first defendant to sell their products by using the offending trademark were found disastrous. Considering the dangerous consequence which might follow in case of confusion, the issue of balance of convenience was held to be in favour of Syntex Pharma AG. Further opining upon the notice of motion, it was stated that the operation of this order shall stay since notice of motion was pending for a long time for hearing of prayer for ad-interim relief.
