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Thursday, 4 December 2008

One in the eye for Travaxo

The IPKat has been reading with interest an account by his longstanding friend and former student Mustafa Safiyuddin (now a partner in DSK Legal, Mumbai) of a very recent piece of litigation over the scope of protection of Alcon's TRAVATAN trade mark. European readers may remember TRAVATAN as the mark Alcon couldn't register as a Community trade mark for ophthalmic pharmaceutical preparations in the face of an opposition based on Biofarma's earlier Italian TRIVASTAN mark for a peripheral vasodilator (see earlier IPKat post here). But in Mumbai Alcon fared rather better. Mustafa explains:

"Alcon had worldwide registrations for the mark TRAVATAN, including India, in respect of ophthalmic products. It is used on eyedrops made from the basic ingredient Travoprost. Alcon, which had substantial TRAVATAN sales internationally and in India, contended that it was the only ophthalmic product in the Indian market with the prefix ‘TRAVA’.

Alcon’s Indian competitor Ajanta commenced sales of eyedrops under the mark TRAVAXO. Alcon contended that Travaxo was similar to TRAVATAN and applied for a pre-interlocutory injunction restraining the use of Travaxo. Alcon relied on the Supreme Court decision in the Cadila case, which held that stricter strandards should be applied when medicinal products were involved. It was established that Ajanta had acted dishonestly in that the entire product insert of Travatan that was available on Alcon’s website was also copied, infringing Alcon’s copyright in the literary work comprised in the product insert.

Ajanta contended that there was no similarity between Travatan and Travaxo, particularly since the prefix TRAV in Travaxo was derived from the basic ingredient Travopost. The court rejected Ajanta’s defence and held in favour of Alcon, having injuncted (i) the use of Travaxo on grounds of infringement and passing off and t(ii) he use of the Travaxo product insert on the basis that it infringed Travatan’s copyright.

The decision is particularly important since an injunction was granted at a pre-preliminary hearing (what is popularly known in India as ‘ad-interim injunction’) and it seeks to implement the guidance provided by the Supreme Court in the Cadila case in a strict manner when pharmaceuticals are involved and there is evidence of dishonesty".

The IPKat is fascinated by the concept of the pre-interlocutory injunction, particularly since in this case it was obtained following inter partes proceedings and is therefore not the sort of emergeny order you might get in a pre-interim relief stage in England and Wales. Merpel likes the idea of TRAVAXO: it sounds like a happy combination of TRAVATAN and GLAXO.

Right: it seems that there's more than one TRAVAXO too

You can read the order yourself here. If you'd like to know more about it, you can catch Mustafa here.

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