MILMET OFTHO INDUSTRIES & ORS. V. ALLEGRAN INC.
In the case of Milmet Oftho Industries & Ors. V. Allegran Inc., the Supreme Court of India, relying on the doctrine of cross-border reputation, protected the trademark that was adopted and was used in the international market before being adopted and used the same trademark in India, even though the foreign trademark was never been registered in India.
In the year 1996, the respondent, Allergan, filed an injunction claim on the grounds of an action for passing away in favour of its trademark, OCUFLOX, used as an eye care drug. Allergan reported that the mark was in use since 9 September 1992, followed by promotion and registration in several countries. At that time, the application for registration of the trademark in India was pending.
The appellant, Milmet, an Indian pharmaceutical company, used the OCUFLOX trademark in relation to eye and ear treatment medicinal preparations. It claimed that the trademark OCUFLOX had been coined with the words OCULAR and CIFROFLOXACIN HCL and that it had been granted registration by the Food and Drug Administration on 25 August 1993, at the same time an application for registration of the trademark in India was filed which was still pending. Allergan secured an ex-party injunction in 1996, which was dismissed by a single judge in 1997 on the grounds that Allergan's drugs were not being marketed in India and Milmet first registered the trademark in India. Allergan appealed against the aforementioned order before the Division Bench of Calcutta High Court, which allowed the appeal on 6 November 1997, noting that, since Allergan was the first to launch the OCUFLOX trademark, it should get an injunction or should be authorized to take injunction.
In an appeal brought by Milmet against the judgment of the High Court of Calcutta, the Supreme Court of India held that, while considering the possibility of a probability of fraud or misunderstanding, especially in the field of medicinal products, it should be borne in mind that this area is of an international nature. Doctors and practitioners connected to this profession should stay up to date with the latest innovations in the area of medicine as a result of advancements in science and technology. In fact, due to promotion of goods by print and other media, many items can have a worldwide reputation. Exact judicial review is needed if there is a risk of misunderstanding on medicinal goods concerning labels, as the possible harm can be much more serious than in relation to ordinary consumer products. Based on these reasons, the court held that if a drug trademark is aligned with the industry worldwide, it should be protected against a similar trademark in respect of a similar drug sold by another company in India. The Court held that if the company was using that trademark globally then it won’t matter whether they used it in India or not. The Supreme Court rejected the plea and asked the trial court to dispose of this matter within six months.