Trademark dispute over anti-ulcer drug Omez: Delhi HC rules in favour of Dr Reddy's
New Delhi: In a relief to Dr Reddy's Laboratories, Delhi High Court has accepted an affidavit filed by West-Coast Pharmaceutical Works agreeing not to manufacture or sell a product under trademark Omes, that amounts to infringement of the former's anti-ulcer drug omeprazole sold as Omez.
This comes as a major relief to Dr Reddy's that adopted and coined the trademark OMEZ and launched the product in the market in 1990, which is registered under class 5.
The Hyderabad-based drug maker sought legal intervention to protect Omez, a drug used in the cure of acidity and diseases related to the gastrointestinal tract after one of its agents, while surfing internet stumbled upon a similar medicine containing the same salt "omeprazole" by the name of 'OMES' being manufactured, sold and advertised by West-Coast Pharmaceutical Works. This drug was also being used to treat the same ailments as cured by Omez.
Eventually, a trademark infringement case was filed by Dr Reddy's against West-Coast Pharma.
Dr Reddy's claimed in its case that the product OMES of West-Coast Pharmaceutical Works was very similar to their trademark product both in utterance and vision. And while the first three letters O, M and E could come from the parent drug- "omeprazole", OMEZ was a term coined by them and only them having no linguistic or etymological meaning. They also claimed that they were the giants in the world of manufacturing omeprazole capsules.
The counsel for Dr Reddy's, in his submission argued, "Though the first three letters "OME", are also the first three letters of the active ingredient in the product, i.e. Omeprazole. There was no reason for the West-Coast Pharmaceutical Works to also use a four-letter name for its product which was phonetically similar to the Dr Reddy's registered trademark."
In addition, he asserted, "As the products are identical, available through the same trade channels, and cater to the same customer base, there is every likelihood of an unwary customer purchasing the product of the defendant believing it to be that of the plaintiff. There is a clear prima facie case in favour of the plaintiff, justifying the grant of ex parte ad interim relief."
The case was heard by Justice C. Hari Shankar. In response, West-Coast Pharmaceutical Works filed an affidavit agreeing and acknowledging that Dr. Reddys having registered trademark "OMEZ."
Remarking that West-Coast Pharmaceutical Works had "very recently engaged in the matter", the counsel for it submitted an affidavit of acknowledgement towards Dr Reddy's trademark. They stated clearly that "it will neither by itself nor through its director, group of company and its divisions assigned and its business, presence, distributor or dealers, present manufacturing, selling, offering for sale, directly or indirectly dealing in the trademark under dispute, which is Omes, or in combination or in any other form as it may amount to infringement of Dr Reddy's trademark registration."
It further added, "The West-Coast Pharmaceutical Works admitted and accepted the rights of the Dr. Reddy and acknowledged the validity thereof and further undertake that, the defendant shall not file any application seeking cancellation of the Dr. Reddy registered Trademark."
Moreover, in the affidavit, the West-Coast Pharmaceutical Works confirmed that it had already removed all the listings of the impugned mark OMES and/or any other mark deceptively similar to the Dr. Reddy's mark OMEZ, if any, from its web site, B2B web sites, or any other online directories, B2C websites, or portals that were used by the West-Coast Pharmaceutical Works.
The court accepted the an affidavit. However, the complainant also pleaded that West-Coast Pharma should be fined for dragging them to court unnecessarily and for wasting the court's time. It was suggested that the cost imposed could be put in the Covid-19 relief fund.
Deliberating the concern, Justice C Hari Shankar ordered a deposit of Rs 11000 by West-Coast Pharmaceutical Works as a demand draft favouring Prime Minister's National Relief Fund (PMNRF).
The court observed,
"The dispute forming the subject matter of these proceedings, does not survive for adjudication, in view of the affidavit filed by the West-Coast Pharmaceutical Works and the undertaking therein to which the West-Coast Pharmaceutical Works shall remain bound at all times."
"As this litigation has taken up the time of this Court and also subjecting the Dr. Reddy to an unnecessary litigative exercise, I am of the opinion that the West-Coast Pharmaceutical Works ought to be subjected to token costs. As such, the West-Coast Pharmaceutical Works is directed to deposit, with the Registrar General of this Court, cost of ₹11,000/-, by way of a cross cheque/demand draft favouring to Prime Minister's National Relief Fund (PMNRF)."
The order by the High Court was passed after an earlier order denying an exparte ad interim injunction demanded by Dr Reddy's directed the West Coast Pharma to stop the manufacture, sale and marketing of their drug immediately, reports Lexology.
Such a denial was made due to the failure of the complainant to prove all three requisites needed for such an injunction, reports This means, to get an exparte ad interim injunction, three requisites need to be satisfied by the complainant namely, prima facie case, the balance of convenience, irreparable loss. Not being able to prove other of them would lead to a failure of getting the desired injunction.
To view the official order/affidavit, click on the link below: