Reportedly, Hon’ble Delhi High Court stayed an earlier order, dated 26 February, restraining Lupin from using the trademark “LUCYNTA” for its medicines, said to be deceptively similar to the trademark “NUCYNTA” of Johnson and Johnson.
It was argued on behalf of Lupin that Johnson and Johnson are neither selling any goods under the mark nor have any intention to do so in India. It was further argued that the ultimate test is to analyze who is first in the market being India. Further emphasis was laid on the argument that if an Indian company has honestly adopted the trade mark then a multinational must not try to throttle the Indian Company.
On behalf of Johnson and Johnson, it was argued that it was a well renowned name with reputation across the world. There was an awareness of the mark NUCYNTA even in those parts of the world where it was not used owing to its reach through advertisements, social media interalia.
In the same case, filed by Lupin, an order was passed on 26th February 2015 restraining Lupin from using the Trade Mark LUCYNTA. The order stands stayed and re-notified on Monday.
Pertinently over the last 15 years, multinational companies have increasingly cited the principle of trans-border reputation to protect the infringement of their trademarks in regions where they do not operate. And this was also the point of debate before Hon’ble Justice Badar Durrez Ahmed. It was also noted that Johnson and Johnson had not obtained any approvals from the concerned statutory authority for manufacturing and selling drugs under the trademark NUCYNTA in India even after period of three years had elapsed.
The next hearing is scheduled for 16 September. And Lupin was directed to give an account of its sales and profits under the trademark LUCYNTA at the next hearing.
It would be interesting to note the final verdict in the case having regard to the various aspects as claimed by the parties which includes honest adoption, prior use, trans border reputation inter alia.
About the Author: Mr. Abhijeet Deshmukh, Trade Mark Attorney, Khurana & Khurana, Advocates and IP Attorneys and can be reached at: Abhijeet@khuranaandkhurana.com