The Delhi High Court restrained Lupin pharma from using the trademark LUCYNTA or any other trademark deceptively similar to Plaintiff trademark NUCYNTA in respect of pharmaceutical and medicinal preparation.
US major pharmaceutical company Johnson & Johnson (Plaintiff) alleged that Lupin is riding on the unique goodwill and trans-border reputation of its brand name NUCYNTA, an opioid pain reliever.
“The concept of passing off has undergone changes due to advent of technology and modernization. The courts entertaining the case of passing off can discount the localized existence of goodwill and the business in the territory specific if the substantial nature of reputation has been proved which has some kind of nexus in the territory where the protection is sought and the said concept in the modern language is called trans-border reputation whereas the goodwill is always local in character, the concept of reputation is dynamic and is all encompassing”, the Court said.
The Court said, “There is no valid argument raised by defendant No.1 that the plaintiff’s mark NUCYNTA does not enjoy any trans-border reputation in India. The same has no substance in view of documentary evidence placed by the plaintiff as in the present case, the plaintiff has filed cogent documentary evidence establishing that medical practitioners, research scholars and those related to the field of medicine in general in India and also the Indian media (both print/electronic) were well aware of the plaintiff’s mark NUCYNTA at the time when defendant No.1 allegedly launched its pharmaceutical preparation bearing the mark LUCYNTA in India in October, 2011.”
The Court said Lupin failed to explain as to how they came to adopt the mark LUCYNTA, which is nothing but a blatant imitation of Plaintiff’s arbitrary and coined mark NUCYNTA in relation to an identical pharmaceutical preparation. In the absence of any explanation much less any satisfactory explanation by the Lupin, the adoption of the mark LUCYNTA cannot be regarded as honest.