Introduction: The case of B.L. And Co. And Others vs. Pfizer Products Inc. revolves around the alleged passing off of the drug 'VIAGRA' by the defendants through their product 'PENEGRA'. The dispute primarily concerns the deceptive similarity in trade names, trade dress, and product appearance. Pfizer, the plaintiff, sought an injunction restraining the defendants from manufacturing and marketing 'PENEGRA', claiming that it infringed upon its global reputation and goodwill associated with 'VIAGRA'. The case was heard before the Delhi High Court, which passed an ex parte injunction against the defendants, leading to an appeal.
Factual Background:Pfizer, a global pharmaceutical company, introduced 'VIAGRA' (sildenafil citrate) in 1998 for the treatment of male erectile dysfunction. The trade mark 'VIAGRA' was registered in various jurisdictions and had pending registration in India. Pfizer contended that the brand had achieved international recognition and had been extensively advertised worldwide, including in India.
The defendants, B.L. & Co. and Others, introduced a similar product under the name 'PENEGRA' in January 2001. The plaintiff discovered the existence of 'PENEGRA' through an internet search and media reports, which referred to it as 'Indian VIAGRA'. Pfizer alleged that the defendants intentionally adopted a deceptively similar trade name and trade dress, including the distinctive blue diamond-shaped tablet. Further, the defendants had allegedly copied elements from Pfizer's website onto their own, thereby misleading consumers and capitalizing on Pfizer's goodwill.
Procedural Background:Pfizer filed a suit for injunction and damages for passing off before the Delhi High Court. On June 1, 2001, the Single Judge granted an ex parte injunction under Order XXXIX Rules 1 and 2 CPC, restraining the defendants from manufacturing, marketing, or selling 'PENEGRA' or any product deceptively similar to 'VIAGRA'. The appellants challenged this order before a Division Bench of the Delhi High Court on multiple grounds, including the alleged failure of the Single Judge to consider crucial legal principles governing the grant of ex parte injunctions.
Issues Involved in the Case:
Whether the trade mark 'PENEGRA' was deceptively similar to 'VIAGRA'?
Whether Pfizer, despite not selling 'VIAGRA' in India, could claim passing off based on trans-border reputation?
Whether the Single Judge’s grant of an ex parte injunction was justified?
Whether there was undue delay by Pfizer in filing the suit, and if so, whether it impacted its right to relief?
Whether the balance of convenience favored the defendants, considering their established market presence?
Submissions of the Parties Plaintiff (Pfizer):
'VIAGRA' had acquired immense international goodwill and reputation, extending to India despite not being directly marketed.
The defendants deliberately chose the name 'PENEGRA' to deceive consumers and exploit the reputation of 'VIAGRA'.
The distinctive blue diamond-shaped tablet had been copied, further contributing to the likelihood of confusion.
The copying of website content demonstrated mala fide intent.
The principles of passing off allowed Pfizer to protect its brand even in jurisdictions where it had not commenced commercial operations.
Defendants (B.L. & Co. and Others):
'PENEGRA' was developed independently after extensive research and clinical trials.
The product had been in the market for over five months before the suit was filed, indicating delay on Pfizer's part.
The pronunciation and spelling of 'PENEGRA' were distinct from 'VIAGRA', and the packaging and branding were different.
The balance of convenience lay in favor of the defendants, as they had invested significantly in product development and marketing.
Pfizer’s product was not marketed in India, and hence, there was no possibility of deception or passing off.
Discussion on Judgments and Citations
Wander Ltd. v. Antox India (P) Ltd., 1990 (Supp) SCC 727: The Supreme Court held that interlocutory injunctions should balance the need to protect the plaintiff's rights against the defendant’s legitimate business operations. The High Court referred to this case in assessing the necessity of the injunction.
N.R. Dongre v. Whirlpool Corporation, 1996 PTC (16) 583 (SC): The Supreme Court upheld passing off claims based on trans-border reputation, which Pfizer relied upon.
Daimler Benz Aktiegesellscaft v. Hybo Hindustan, 1994 PTC 287: The Delhi High Court protected the reputation of international brands, even in the absence of direct business operations in India.
The Financial Times Ltd. v. Evening Standard Co. Ltd. (1991) FSR 7: A case concerning delay in seeking an injunction, which was used by the defendants to argue against Pfizer's claim.
Reasoning and Analysis of the Judge The Division Bench found that the Single Judge failed to consider critical factors before granting an ex parte injunction. These included:
The defendants had been manufacturing and marketing 'PENEGRA' for over five months before Pfizer took action.
Pfizer had knowledge of the defendants’ activities but delayed seeking legal recourse, indicating acquiescence.
The lack of availability of 'VIAGRA' in India weakened Pfizer’s claim of passing off.
The Single Judge did not record reasons justifying the urgency required for an ex parte injunction under Order XXXIX Rule 3 CPC.
The Bench noted that an interlocutory injunction should be granted only after hearing both parties unless the object of the injunction would be defeated by delay. In the absence of specific reasons recorded by the Single Judge, the ex parte order was deemed unsustainable.
Final Decision The Division Bench set aside the ex parte injunction granted by the Single Judge, allowing the defendants to continue manufacturing and marketing 'PENEGRA'. However, the defendants undertook to change the tablet’s color and refrain from using website content copied from Pfizer’s site. They were also directed to maintain records of production and sales.
Law Settled in This Case
Ex parte injunctions must be granted only when justified by urgency, with reasons explicitly recorded under Order XXXIX Rule 3 CPC.
Delay in seeking relief is a crucial factor against granting an interlocutory injunction in passing off cases.
Trans-border reputation can be a valid basis for a passing off claim, but its application depends on the facts of each case.
Balance of convenience must be weighed carefully, especially when the defendant has an established market presence.
