First-to-use test for medicine marks has international basis

In Milment Oftho Industries v Allergan Inc (Case CS 349/96, May 7 2004), the Supreme Court has ruled that where one party is using a trademark for medicinal preparations in India and another party is using an identical mark for a similar product outside India, the court must identify who was first to use the trademark on the international market to determine which of the parties has the better right to the mark.

Following an appeal from a judgment of the Calcutta High Court, the Supreme Court was asked to ascertain the rights of the parties in the mark OCUFLOX. Allergan Inc claimed to be the prior user of the mark internationally. It argued that it first used the mark in 1992. It relied on use and registration of the mark in various countries. Allergan's application for registration of OCUFLOX in India has been pending since 1993.

Milment Oftho, an Indian company, claimed that it coined the mark OCUFLOX independently by taking the prefix 'ocu' from the word 'ocular' and the suffix 'flox' from the antibiotic name ciprofloxacin. It maintained that its OCUFLOX product has been registered with the US Food and Drug Administration since August 25 1993.

The Supreme Court had to determine whether Allergan's international adoption of the mark or Milment's use locally (in India) should prevail. It was of the view that the "test should be who is first in the market". The court held that the mere fact that Allergan has not used the mark in India would be irrelevant if it was first to use it on the world market. It reasoned that the field of medicine is of an international character and medicinal products can therefore acquire worldwide reputation.

Accordingly, the court directed that evidence be recorded to clarify which of the two parties was first to use the mark, emphasizing that this evidence should relate to the international context.

Ranjan Narula, Rouse & Co International, Dubai