Doral Pharmamedics v. Pharmaceutical Generic Dev.
| Decision Date | 19 June 2001 |
| Docket Number | No. CIV 00-2342 DRD.,CIV 00-2342 DRD. |
| Citation | 148 F.Supp.2d 127 |
| Parties | DORAL PHARMAMEDICS, INC., Plaintiff, v. PHARMACEUTICAL GENERIC DEVELOPERS, INC., Defendant. |
| Court | U.S. District Court — District of Puerto Rico |
Rafael Escalera-Rodriguez, Jorge A. Rullan-Marin, Reichard & Escalera, San Juan, PR, Michael H. Selter, Farkas & Manelli, Washington, DC, for plaintiff.
Manuel Fernandez-Bared, Toro Colon Mullet & Rivera, San Juan, PR, Armando Llorens, Dora M. Penagaricano-Suarez, McConnell Valdes, San Juan, PR, for defendant.
Pending before the Court is a request for preliminary injunction sought by Plaintiff, Doral Pharmamedies, Inc., ("Doral"), owner of the ExoticHC trademark (hereinafter referred to as "Exotic"), seeking to restrain Defendant, Pharmaceutical Generic Developers, Inc., ("PGD") from using the Genexotic-HC (hereinafter referred to as "Genexotic"), mark or any other mark or trade dress that in any way may cause confusion, mistake or deception as to the trademark "Exotic".
Defendant PGD has averred that this Court should deny Doral's request for injunctive relief because there is no likelihood of confusion between the Doral and PGD products. That is, that there is no confusion between Exotic and Genexotic trademarks. Defendant has also argued that Doral's complaint, which serves as the basis for the injunctive relief request under the Court's consideration, should be barred on judicial estoppel grounds. For the reasons set forth in this opinion, Plaintiff's request for preliminary injunction is DENIED.
On October 18, 2000, Plaintiff Doral filed a verified complaint (Docket No. 1) alleging that (1) PGD had infringed on Doral's Exotic-HC ("Exotic") trademark rights under Section 32(1) of the Lanham Act, 15 U.S.C. Sec. 1114(1); and, (2) PGD's deliberate use of the Genexotic-HC ("Genexotic") mark and confusingly similar trade dress in the distribution, marketing and sale of Genexotic constituted unfair competition and false designation of origin actionable under Section 43 of the Lanham Act, 15 U.S.C. Sec. 1125(a).
Defendant did not present an answer to Doral's complaint and instead noticed Plaintiff with a motion to dismiss (Docket No. 21). The preliminary injunction hearing for the present case was held on March 6 and 7, 2001. During the preliminary injunction hearing the parties presented their witnesses and documentary evidence. On its behalf, Plaintiff presented the testimony of: (1) Ricardo Mayo, president and owner of Plaintiff, Doral; (2) Daniel Torre, marketing manager of Rimaco, Inc., ("Rimaco"), a local distribution company; (3) David Alejandro, one of Rimaco's medical representatives; and, (4) Santiago Martinez, a consumer that purchased the Genexotic product for his child. Plaintiff's also presented the following documentary evidence: (1) Doral's United States Patent and Trademark Office Registration Certificate 2,031,443 for Exotic H-C (Exhibit # 1); (2) a transparent box with an Exotic dropper vial and insert (Exhibit # 2); (3) a transparent box with a Zoto-HC dropper vial and insert (Exhibit # 3); (4) a transparent box with a Genexotic dropper vial and insert (Exhibit # 4); (5) a letter dated September 27, 2000, from Mary Boney Denison, Esq., to Mr. Rafael Arribas, President of PGD requesting that PGD immediately cease to use the Genexotic-HC mark and Doral's Exotic tradedress (Exhibit # 5); (6) a letter dated October 3, 2000, from Armando Llorens, Esq., to Mary Boney Denison, Esq., refusing Doral's September 27, 2000, request (Exhibit # 6); (7) promotional literature for the Exotic product (Exhibit # 7); (8) promotional material, comprised of container and single dose applicators, for Exotic's introduction to the Puerto Rico market (Exhibit # 8); and, (9) letter dated February 13, 2001, from Dr. Ildefonso Padro to Mr. David Alejandro informing him that during the last few months he had observed a series of allergic reactions in patients that have used the Genexotic product (Exhibit # 9).
On its behalf, PGD presented the testimony of Rafael Arribas, president of PGD. Defendant did not present any documentary evidence during the injunctive relief hearing.
After said hearing, the court suggested to the parties to file memoranda of law in support of their respective positions, including the merits of Defendant's motion to dismiss based on judicial estoppel grounds. The parties complied. (Dockets No. 33 and 34). Afterwards, PGD and Doral filed a joint motion stipulating a series of facts. (Docket No. 27).
1. Since 1993, Doral has continuously used the Exotic-HC ("Exotic") trademark in Puerto Rico for its prescription otitis externa medication.
2. Doral registered Exotic with the United States Patent and Trademark Office on January 21, 1997, U.S. Trademark Reg. No. 2,031,443. Until April 1996, the medication had been sold under the name Exxotic-HC; thereafter, the product has been sold under the registered trademark name Exotic-HC.
3. During the second semester of the year 2000, PGD introduced Genexotic-HC ("Genexotic") as a generic to Exotic in the Puerto Rico market.
4. Exotic and Genexotic are prescription drugs that treat the same condition (otitis externa) and have the exact same active ingredients, precautionary indications and counterindications, but different inactive ingredients.
5. PGD knew that Exotic was Doral's registered trademark at the time it introduced Genexotic in Puerto Rico.
6. To the best of PGD's knowledge, Doral is the only entity that uses the word "Exotic" as part of its trademark in the pharmaceutical industry. (Stipulated fact B, Docket No. 27).
7. The Exotic trademark was devised by Ricardo Mayo from two components: (1) "Ex" which corresponds to the word "external" and (2) "otic" which corresponds to ear channel.
8. The Exotic name was selected after a long and expensive process of trial and error that culminated with the registration of the federal trademark.
9. Doral sells its products in Florida, Central America, the Bahamas and Puerto Rico.
10. Rimaco, Inc. ("Rimaco") is the exclusive distributor since 1993 of Doral products in Puerto Rico, including Exotic.
11. Rimaco introduced Exotic in Puerto Rico and aggressively promotes and markets Exotic, currently using a sales force of approximately 10 to 12 salesmen.
12. Rimaco devised and undertook successful and extensive promotional strategy to introduce Exotic in the Puerto Rico market; a force of nine (9) medical representatives regularly visit physicians to promote the Exotic product.
13. PGD knew that Exotic was being actively marketed at the time Genexotic was introduced in the market. (Stipulated fact A, Docket No. 27).
14. Rimaco is a Puerto Rico Corporation and Doral is a Florida corporation. Ricardo Mayo is the owner and president of both corporate entities and neither company is a shareholder in the other. Both entities have different boards of directors and are not subsidiaries of each other. Mr. Ricardo Mayo and his son constitute a majority in the board of directors of both companies.
15. Rimaco distributes non-Doral products for over twenty companies in Puerto Rico. Doral does not distribute all of its products through Rimaco. Doral and Rimaco have a close nonlitigating relationship.
16. Llorens Pharmaceutical filed a lawsuit against Rimaco before the Puerto Rico courts.
17. Doral was the owner of the Novagesic product that was the object of the Llorens litigation1. Ricardo Mayo was not directly involved in the Llorens litigation, although he was aware of the litigation in his capacity as president and owner of Rimaco. Mr. Daniel Torre, Rimaco's marketing manager was directly involved in Rimaco's defense.
18. Rimaco argued and was able to establish in the local Llorens litigation that confusion was not possible between a prescription drug and an over the counter drug, the latter not requiring a prescription and kept outside of the area where prescription drugs are dispensed. (Conclusion of fact # 11, Llorens litigation)2
19. Exotic and Genexotic marks are identical but for the prefix "Gen".
20. The labeling of Genexotic does not contain an explicit statement that Genexotic is a comparable or similar product to Exotic. (Stipulated fact D, Docket No. 27).
21. The Exotic and Genexotic vials use very similar font, a transparent case and both products have virtually identical package inserts, and similar shades of blue, that, to the layperson's eye, appear identical. PGD chose to use a 10-milliliter dropper vial rather than a 5-milliliter dropper vial for its Genexotic product, partly for the reason that Doral uses a 10-milliliter dropper vial.
22. Brand pharmaceutical products are subject to substitution by generic products irrespective of the name, trade dress and label of the generic product. (Stipulated fact E, Docket No. 27).
23. Exotic and Genexotic use the same types of distribution channels. Exotic and Genexotic target the same class of ultimate purchasers, the consumers. However, the physicians make the decision to prescribe Exotic, it is typically pharmacists who offer to consumers the generic substitute Genexotic, upon the pharmacists own initiative, upon the consumer's request, or pursuant to guidelines set forth by the health plan underwriting the prescription drug and or covering the patient.
24. Accordingly, Doral promotes its Exotic product primarily but not exclusively to physicians, and secondarily to drug stores and to drug wholesalers known as "Droguerias". For its part, PGD promotes Genexotic directly to drugstores and drug wholesalers known as "Droguerias", but not to physicians.
25. Both Doral and PGD use printed material to promote Exotic and Genexotic, while Doral also uses samples.
26. Doral has received several complaints from physicians regarding the Genexotic product.
27. Zoto-HC is a prescription otitis externa medication available in the Puerto Rico market that...
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