The first application sought to restrain Sun Pharmaceuticals, their partners or proprietors, servants, agents, stockists, distributors, wholesalers, retailers and printers and all persons acting through or under its direction from reproducing, printing or publishing any label or packaging, including cartons, tubes and caps for purpose of exports, which are a colourable imitation or substantial reproduction of the applicant’s subject products — ‘Budecort Respules’ and ‘Doulin Respules’.
The second one sought to restrain the firm from dealing in medicinal products or goods of any description bearing the mark ‘Respule’ and/or any other marks that are identical or deceptively similar to the applicant’s registered trademark ‘Respule’ or containing any component of the subject trademark, amounting to infringement of the applicant’s registered trademark number 1127296.
The third one sought to restrain Sun Pharmaceuticals from dealing in medicinal products or goods of any description, using a packaging identical, or deceptively similar to the applicant’s packaging for ‘Budesonide Respules’ and ‘Doulin Levosalbutamol Respules’.
Passing interim orders, the judge said the evidence on record indicates prima facie that the word ‘Respules’ is used both by other manufacturers and by authorities such as the Director General of Health Services and the Drug Controller.
On examining the usage of the word by the aforesaid entities or authorities, it appears prima facie that ‘Respules’ has been used to describe a form in which the medicine is marketed.
In other words, the word has been used for medicines contained in capsules in liquid form, which are intended for injection into a nebuliser and used in the treatment of respiratory ailments. Indeed, as correctly pointed out by Cipla, even the applicant has used the word ‘Respules’ in its advertisements as referring to a form in which the medicine is marketed.
As discussed above, the word ‘Respules’ is not self-evidently derived from the words respiratory capsules. At the same time, it is not as difficult to discern the constituent descriptive words.
“From a balance of convenience and hardship perspective, when the above aspect is reckoned in the context of the fairly common use of the word ‘RESPULES’ to refer to a form of medicine (including by the applicant companies in the advertisements) used to treat respiratory conditions, for interlocutory purposes, I am not inclined to restrain the respondent (Sun Pharmaceuticals) from using the word ‘RESPULES’. The use of the lower case also does not tilt the balance in favour of the applicant companies,” the judge said.
The judge, however, directed Sun Pharmaceuticals to maintain accounts of revenues earned by the sale of products using the words ‘Respules’, including the profits derived therefrom.
Such accounts shall be filed in the court on a quarterly basis until the final disposal of the suit. The question as to whether ‘Respules’ is distinctive and capable of protection as a trademark may be framed as one of the issues in the suit, the judge said.