In Alcon Inc v Ajanta Pharma Limited (Case 2652/2008, November 17 2008, unreported), the Mumbai High Court has granted a pre-interlocutory injunction restraining the use of the TRAVAXO mark for eye drops.
owns registrations for the trademark TRAVATAN in several countries, including India, in respect of ophthalmic pharmaceutical products (eye drops for the treatment of glaucoma). Alcon's eye drops are made from the basic ingredient Travoprost. The sales of TRAVATAN-marked products are substantial, both in India and worldwide. Alcon alleged that its product was the only ophthalmic pharmaceutical product on the Indian market with the prefix ‘trava’.
Ajanta Pharma Limited
started to sell eye drops under the trademark TRAVAXO. Alcon contended that TRAVAXO was confusingly similar to TRAVATAN and applied for a pre-interlocutory injunction restraining the use of the TRAVAXO mark. Alcon relied on the decision of the Supreme Court in Cadila Healthcare v Cadila Pharmaceuticals
(AIR 2001 SC 1952), in which the court held that stricter standards should be applied where medicinal products are involved. Alcon also argued that Ajanta had acted dishonestly in that it had copied the product insert of the Travatan product (as available on Alcon’s website), thereby breaching Alcon’s copyright in the literary work contained in the product insert.
In its defence, Ajanta contended that the marks TRAVATAN and TRAVAXO were not similar. In particular, Ajanta pointed out that the prefix 'trav' in the TRAVAXO mark derived from the basic ingredient Travoprost.
The Mumbai High Court rejected Ajanta’s arguments and held in favour of Alcon. The court granted an injunction preventing the use of:
- the TRAVAXO mark on the grounds of trademark infringement and passing off; and
- the Travaxo product insert on the grounds of copyright infringement.
The decision is important in that the court sought to implement the guidance provided by the Supreme Court in the Cadila Case. The decision also establishes that where two pharmaceutical trademarks are similar overall, it is not a defence to claim that the prefix of the marks is generic since it is derived from the basic ingredient of the pharmaceutical product.
Mustafa Safiyuddin, DSK Legal, Mumbai