This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.
Supreme Court of India [2004]: Milmet Oftho Industries v. Allergan Inc., (2004) 12 SCC 624
Date of judgment: December 3, 2004
Issuing authority: Supreme Court of India
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Civil)
Subject matter: Trademarks
Appellant: Milmet Oftho Industries and Others
Respondent: Allergan Inc.
Keywords: Well-known marks, Transborder reputation, First in the market test, Goodwill, Pharmaceutical products, Passing off
Basic Facts: The respondents, Allergan Inc., a multinational pharmaceutical company, adopted the trademark OCUFLOX on September 9, 1992 for an ophthalmic preparation containing Ofloxacin. The product was marketed internationally in several countries and had acquired reputation abroad. Although Allergan had not commenced sales in India, they had applied for registration of the mark.
The appellants, Milmet Oftho Industries, an Indian pharmaceutical company, launched an ophthalmic preparation containing Ciprofloxacin Hydrochloride under the same mark OCUFLOX in August 1993, after obtaining regulatory approval in India. They also applied for registration of the mark in India in September 1993.
The Calcutta High Court initially granted an injunction in favour of Allergan. A single judge vacated the injunction, reasoning that Allergan had no sales in India and Milmet was the first to use the mark domestically. On appeal, the Division Bench restored the injunction recognising Allergan’s prior international use. Milmet challenged this before the Supreme Court.
Held: The Supreme Court upheld the injunction in favour of Allergan, granting protection to its mark OCUFLOX despite absence of local sales.
The Court reaffirmed the principle in N.R. Dongre v. Whirlpool Corporation (1996) 5 SCC 714 that transborder reputation of a mark is protectable in India even in the absence of domestic sales. It stated that a product associated worldwide with one manufacturer cannot be allowed to be sold in India by another under the same name without causing deception.
It
stressed that doctors and patients in India are well informed of global
pharmaceutical developments through journals, conferences, and advertising.
Therefore, a drug name known internationally acquires recognition in India as
well, even before it is marketed locally. The Court observed:
“If a mark in respect of a drug is associated with the respondents
worldwide, it would lead to an anomalous situation if an identical mark in
respect of a similar drug is allowed to be sold in India.”
At the same time, the Court introduced an important qualification: multinational corporations should not be allowed to block Indian companies unless they have a bona fide intention to enter the Indian market. The principle was thus not absolute but subject to equitable considerations.
Applying the first in the market test, the Court held that Allergan had adopted OCUFLOX in 1992, before Milmet’s adoption in 1993. Allergan’s prior adoption and global reputation were sufficient to entitle it to protection in India.
On the balance of convenience, the Court noted that Milmet had already been injuncted and had started marketing under another name. Permitting them to continue under OCUFLOX would cause irreparable injury to Allergan and risk confusion in the pharmaceutical market, where the potential consequences of mistaken identity could be serious.
The Court directed that the trial be expedited and disposed of within six months.
Relevant Holdings in Relation to Well-Known Marks:
Transborder reputation: Indian courts will protect marks that have acquired reputation abroad, even if they are not used in India. The recognition of a well-known mark is not contingent on domestic sales, so long as existence of goodwill can be shown.
Whirlpool principle reaffirmed: The judgment reasserted the holding in N.R. Dongre (supra) that a foreign mark with international goodwill can be protected against local use in India.
First in the market test: Priority is determined by who first adopted the mark, irrespective of whether use began in India or abroad. On facts, Allergan’s adoption in 1992 gave it priority over Milmet’s 1993 launch.
Pharmaceutical trademarks: Stricter standards apply to medicinal products, since consumer confusion could endanger health. Even a possibility of confusion must be avoided.
Balance against overreach by multinationals: The Court expressly cautioned that foreign corporations cannot seek to “throttle” Indian enterprises unless they demonstrate a bona fide intention to use the mark in India. This ensures that protection of well-known marks is not misused. (See. Toyota Jidosha Kabushiki Kaisha v. Prius Auto Industries Ltd., (2018) 2 SCC 1)
Significance: This judgment, read with N.R. Dongre (supra), is a landmark in Indian jurisprudence on well-known marks. It shows the Court’s willingness to protect international reputation and goodwill under common law principles, even before the statutory recognition of “well-known trademarks” in the Trade Marks Act, 1999. At the same time, it set equitable limits by requiring bona fide intent to enter the Indian market.
Relevant Legislation: Trade and Merchandise Marks Act, 1958, Trade Marks Act, 1999