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New Delhi: The Delhi high court on Monday stayed an earlier order, passed on 26 February, restraining Lupin Ltd from using the trademark LUCYNTA for its medicines, said to be deceptively similar to the trademark NUCYNTA used by Johnson and Johnson.

“Johnson and Johnson are not selling goods and neither do they have any intention to do so in India under their mark NUCYNTA," counsel for Lupin Ltd argued on Monday. “The ultimate test is who was first in the relevant market, being India. If an Indian company has genuinely adopted a mark, a multinational must not try to throttle the Indian company."

Johnson and Johnson, in its response, said the relevant market could not be restricted to India.

The multinational company argued it was a renowned name, with a reputation across the world. Because of its reach—through advertisements, social media etc—there was an awareness of the mark NUCYNTA even in those parts of the world where the company did not use it.

The suit was originally filed by Lupin before the Bombay High Court on 26 July 2012. In the same case, on 23 December 2014, a full bench of the Bombay HC in a judgement held that a trademark can be challenged at interlocutory stage but the burden of proof would lie on the party posing such challenge. It said that in case the court finds that registration is ex-facie illegal and fraudulent, the court may decline to grant relief in favour of the party having the registered trademark.

Later, Johnson alleged that Lupin’s mark was illegal and malafide. The court ruled in favour of Johnson that such reversal could be brought about with the burden of proof on the one who alleges it, in this case Johnson and Johnson.

Lupin’s mark LUCYNTA was alleged to be prima facie illegal and malafide by Johnson and Johnson even as proceedings for passing off were going on against Johnson by Lupin.

The case by Lupin against Johnson was transferred to the Delhi High Court and an order was passed on 26 February, restraining Lupin from using the trademark LUCYNTA. The order was stayed and re-notified on Monday and the next hearing is scheduled for 16 September.

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.

However, in this case the scope of such trans-border reputation was debated, with Justice Badar Durrez Ahmed contending on Monday, “How can you claim that you have goodwill when you are not present in India whereupon you are claiming infringement of your mark?"

It was also noted that although a period of three years had elapsed, Johnson and Johnson had not obtained any approvals from the concerned statutory authority for manufacturing and selling drugs under the trademark NUCYNTA in India.

Lupin Ltd was also directed to give an account of its sales and profits under the trademark LUCYNTA at the next hearing.

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