03 Chapter 1
03 Chapter 1
03 Chapter 1
In the whole of trade mark law, perhaps the most confusing area is that of
protection for pharmaceutical drugs and medicines. This is largely
because of the peculiar method of nomenclature adopted by pharma
companies. The etymology of several drugs can be traced to the common
chemical compound found in them. To give an illustration, drugs that
treat heart ailment use a common compound, termed (x) for the sake of
convenience, which in turn will be found as a part of the drug name,
either as a prefix or as a suffix. The same applies to drugs for treating
cancer, diabetes, hyper tension etc. This results in high likelihood of
confusion which can in turn lead to potentially harmful consequences as
well. Due to this, the tussle faced by a judicial mind when adjudicating on
completing claim of pharma companies is to balance the interests of the
public with those of the pharma companies.
235 Allergan Inc. v. Milment Oftho Industries AIR 1998 Cal 261 (DB), (1999) PTC 160 following F
Hoffinan La Roche & Co. AG v. DDSA Pharmaceuticals (1972) RPC 1; IDL Ltd. v. TTK Pharma Ltd.
AIR 1992 Bom 35.
291
fl85.11261 Strict standard to be employed: Where there is any possibility
of confusion in the case of medicines, public policy requires that the use
of a confusingly similar name be enjoined. In order to prevent likelihood
of confusion, strict standards are desirable where trademarks are applied
to different prescription pharmaceutical products, where confusion may
result in physical harm to the public.236 Where the goods involved are
medicinal products, each with different effects and designed for subtle
and different uses, or where one of them is contraindicated for the disease
for which the other product is indicated, or where the defendant's drug is
meant for curing the same ailment as the plaintiffs medicine but the
compositions are different, confusion among the products caused by
similar marks may have disastrous effects, and therefore, the test must be
applied strictly.237 In comparing the trademarks of the parties in action,
the ground realities and the market conditions coupled with the literacy
level of the purchasers, must be borne in mind. With a high degree of
possibility of accidental negligence, strict measures to prevent any
confusion arising from similarity of marks among medicines must be
taken.238
236 Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd AIR 2001 SC 1952, (2001) PTC 300 (SC),
(2001) 4JT SC 243, (2001) 5 SCC 73: Syntex Laboratories Inc v Norwich Pharmacal Co 169 USPQ 1
(1971, 2nd Cir). Sec American Home Products v Laboratories Ltd (1996) PTR 7, (1996) PTC (16) 44
(Bom) (the disastrous consequences that may flow if there is a mixup between the two products, where
the two medicines are meant for different diseases is an important consideration).
237 See Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd AIR 2001 SC 1952, (2001) PTC 300
(SC), (2001) 5 SCC 73 citing J Thomas McCarthy, ‘Trade Marks and Unfair Competition’ (3rd Edn)
Para 23.12; Cole Chemical Co v Cole Laboratories DC Mo 118 F Supp 612. (1954) 101 USPQ 44,
Glenwood Laboratories Inc v American Home Products Corpn 173 USPQ 19, (1972) 455 F 2nd 1384.
238 Cadila Health Care Ltd v Cadila Pharmaceuticals Ltd AIR 2001 SC 1952, (2001) PTC 300 (SC),
(2001) 5 SCC 73. See Pam Pharmaceutical v Richardson Vicks Inc (2000) PTC 412 (Guj) (the fact that
the drugs in question are prescription drugs is not, by itself, enough to reduce the possibility of
confusion).
292
r 185.11301 Sale without prescription: Even where the drugs are supposed
to be sold only on a doctor’s prescription, the same may still be available
across the counter in various chemist shops.
239 Ranbaxy Laboratories Ltd v Dua Pharmaceuticals Pvt Ltd AIR 1989 Del 44, (1988) PTC 273. See
Ciba Geigy Ltd v Crosslands Research Laboratories Ltd (1996) 16 PTC 1 (Del) (the test to be adopted
is not the knowledge of the doctor, who is giving the prescription but whether the unwary customer,
who goes to purchase the medicine can make a mistake.
240 Torrent Pharmaceuticals Ltd v The Wellcome Foundation Ltd (2002) 24 PTC 580 (Guj).
Halsbury'sLaws of India Volume 20(1)
293
6.2. PROVISION OF DRUGS AND COSMETICS ACTS AND
RULES TAKEN INTO CONSIDERATION:
(b) Such substances (other than food) intended to affect the structure or
any function of the human body or intended to be used for the
destruction of vermin or insects which cause disease in human
beings or animals, as may be specified from time to time by the
Central Government by notification in the official gazette”.
294
Section 2 (c) defines ‘Government analyst’. Section 2 (e) defines
‘inspector’. Section 2 ()f) defines ‘manufacture’ to mean in relation to a
drug, cosmetics, to include any process or part of a process for making,
altering, ornamenting, finishing, lacking, labeling, breaking up or
otherwise treating or adopting any drug or cosmetic with a view to its sale
or distribution but does not include the compounding or dispensing of any
drug or the packing of any drug or cosmetic in the ordinary course of
retail business and ‘to manufacture’ shall be construed accordingly.
Section 2 (h) defines ‘patent or proprietary medicines’ to mean-
6.2.2 Cosmetics
295
improve appearance of a person, that is, they enhance beauty, whereas a
medical product or a medicament is meant to treat some medical
condition. It may happen that while treating a particular medical
problem, after the problem is cured, the appearance of the person
concerned may improve. What is to be seen is the primary use of the
product.
6.2.4 Substances
296
for adulterated drugs. Section 17B provides for spurious drugs. Section
18 provides for prohibition of manufacture and sale of certain drugs and
cosmetics. Section 18A provides for disclosure of the name of the
manufacturer, etc. Section 18B provides for maintenance of records and
furnishing of information. Section 20 provides for Government analysts.
Section 21 provides for powers of inspectors. Section 23 provides for
procedure of inspectors. Section 24 provides for persons bound to
disclose place where drugs or cosmetics are manufactured or kept.
Section 25 provides for reports of Government analyst. Section 26
provides for purchaser of drugs or cosmetics enabled to obtain test or
analysis. Section 26A provides for power of Central Government to
regulate, restrict or prohibit manufacture etc. of drug and cosmetic in
public interest. Section 27 provides for penalty for manufacture, sale etc.
of drugs in contravention of this chapter. Section 27A provides for
penalty for manufacture, sale etc. of cosmetics in contravention of this
Chapter. Section 28 provides for penalty for non-disclosure of the name
of the manufacturer, etc. Section 28A provides for penalty for not
keeping documents, etc. and for non-disclosure of information. Section
28B provides for penalty for manufacture, etc. of drugs or cosmetics in
contravnetnion8of section 26A. Section 29 provides for penalty for use of
Government analyst’s report for advertising. Section 30 provides for
penalty for subsequent offences. Section 31 provides for confiscation.
Section 31A provides for application of provisions to Government
departments. Section 32 provides for cognizance of offences. Section
32A provides for power of Court to implead the manufacturer etc. Section
33 provides for power of Central Government to make rules.
297
6.2.5 Pharmaceutical products- special reference - what is drug ?
298
standards of medical treatment. That would certainly be
defeated if the necessary concomitant of medical or surgical
treatment were allowed to be diluted’ the very same evil
which the Act intends to eradicate would continue to
subsist”.
299
2.1 “10. The learned counsel for the appellant drew our attention
to certain decisions of this court wherein Ayurvedic product
have been held to be falling in chapter 30 of the Central
Excise Tariff Act, 1985 and not under chapter 33 . In C.C.E
v. Sharma Chemical works,245 it was held that the onus to
2.2 “11. In C.C.E v. Sharma Chemical works 246 this court was
considering whether ‘Banphool oil’ could be classified as
medicament. The product was hair oil and all its ingredients
were said to be Ayurvedic which were found in Ayurveda
text books. It had 98% Til oil and 2% Camphor, Amla and
Chandan (sandalwood). It was found that all the ingredients
of the hair oil were mentioned in Ayurveda text books and,
therefore, the product was liable to be classified as
medicament”.
2.3 “12.C.C.E v. Pandit D.P. Sharma 247 was again case of hair
oil named ‘Himtaj Hair oil”. The court emphasized the
common parlance test and found that a common man
understood the said hair oil as a medicinal hair oil and not
hair oil of common use as hair oil. Accordingly, this court
upheld its classification as a medicament”.
300
2.4 “13. Naturalle Health Product (P) Ltd. v. C.C.E 248. Two
observed:
2.5 “39 .We are also of the opinion that when there is no definition
of any kind in the relevant taxing statute, the articles
enumerated in the tariff schedules must be construed as far
as possible in their ordinary or popular sense,. That is, how
the common man and persons dealing with it understood it.
If the customers and the practitioners in Ayurvedic medicine,
the dealers and the licensing officials treat the products in
question as Ayurvedic medicines and not as Alopathic
medicines, that fact gives an indication that they are
exclusively Ayurvedic medicines or that they are used in
Ayurvedic system of medicine, though it is a patented
medicine, This is especially so when all the ingredients used
are mentioned in the authoritative books on Ayurveda. As
rightly contended by the counsel for the appellant, the
essential character of the medicine and the primary function
of the medicine is derived from the active ingredients
contained therein and it has certainly a bearing on the
301
determination of classification under the Central Excise Act.
As held in Amruthanjan case, the mere fact that the
ingredients are purified or added with some preservatives
does not really alter their character”.
302
2.8 “16. Muller and Phipps (India) Ltd v. C.C.E 252 was a case
303
2.12 “19.The word ‘medicament’ is not defined anywhere while
the word ‘cosmetic’ is defined in the Drugs and Cosmetics
Act, 1940 as under:” A ‘cosmetic’ means any article
intended to be rubbed, poured, sprinkled or sprayed on, or
introduced into, or otherwise applied to the human body or
any part thereof for cleansing, beautifying, promoting
attractiveness, or altering the appearance, and includes any
article intended for use as a component of cosmetic”.
2.13 “20.It will be seen from the above definition of cosmetic that
the cosmetic products are meant to improve appearance of a
person, that is, they enhance beauty. Whereas a medicinal
product or a medicament is meant to treat some medical
condition. It may happen that while treating a particular
medical problem, after the problem is cured, the appearance
of the person concerned may improve. What is to be seen is
the primary use of the product. To illustrate, a particular
Ayurvedic product may be used for treating baldness.
Baldness is a medical problem. By use of then product if a
person is able to grow hair on his head, his ailment of
baldness is cured and the person’s appearance may improve.
The product used for the purpose cannot be described as
cosmetic simply because it has ultimately led to
improvement in appearance of the person. The primary role
of the product was to grow hair on his head and cure his
baldness.”
304
low because a larger use may be harmful for the human
body. The medical ingredients are mixed with what is in the
trade parlance called fillers or vehicles in order to make the
medicament useful. To illustrate an example of Vicks
Vaporub is given in which 98% is said to be paraffine wax,
while the medicinal part i.e. Menthol is only 2%.Vicks
Vaporub has been held to be medicament by this court in
CCE v. Richardson Hindustan Ltd255 Therefore, the fact
that use of medicinal element in a product was minimal does
not detract from it being classified as a medicament*\
305
(b) If physicians’ samples are held to be excisable, then, what is
the appropriate method of valuing physicians’ samples for
the purpose of excise duty?
306
Bihar v. Shree Baidyanath Ahyurved Bhawan (P) Ltd
259has held (SCC p.774, para 14);
307
storage conditions, etc. which are in aid of the object of the
Act viz. promoting the use of good quality drugs, and
ensuring that drugs that do not live up to quality do not find
their way into the market”.
1.4B “36 (p 615) Rule 96 (1) (ix) of the Drugs Rules on which
Shri Ganesh heavily relies in support of his submission,
states that while complying with the labeling provisions
under clauses (i) to(vii) of rule 96 (1), the manufacturer must
further overprint on the label physicians’ sample- Not to be
sold’, in case they are to be distributed free of cost as
physicians’ samples. Further, the bare perusal of rule 96
shows that its heading bears ‘manner of labeling’ and sub
rule (10) of this rule contemplates or governs the manner of
labeling in a way that the particulars on the label of the
container of a drug shall be either printed or written in
indelible ink and shall appear in conspicuous manner. This
gives ample clarification that the process of labeling is
distinct or different from the overprinting on the label of a
physicians’ sample, and hence we are unable to agree with
Shri Ganesh that the manufacture for the purpose of the
Central Excise Tariff Act is not completed until 'physicians’
sample- Not to be sold’ is printed on the label.”
In the provisions of the Drug Act, the Central Government has also
enacted Drugs and Cosmetics Rules 1945 and Rule 65 provides
conditions of license. Rule 65A provides additional information to be
furnished by applicant for the license (125) or Rules 66,66a.
308
Chapter 7- Manufacture for sale or for distribution of products other than
homoeopathic medicines:
Rule 70A Form of loan license to manufacture for sale (or for
distribution) of drugs other than those (specified in schedules C, C(l) and
(X)
Rule 71B Conditions for the grant or renewal of a license in form 25A.
309
Rule 76 Forms of license to manufacture drugs specified in schedules
C and C(l), excluding those specified in (part X-B) and schedule X, or
drugs specified in schedules C, C (1) and X and the conditions for the
grant or renewal of such licenses.
Rule 83 Renewal
Rule 87 Labeling.
Rule 89 License
310
Rule 92 Conditions of license
311
7. (per C.K. Thakker, J. as he then was) M/s. Ciba Geigy Ltd. v M/s.
Sun Pharmaceutical Industries. 1992 (2) GLR 1053
8. Pam Pharmaceuticals V. RIchardon Vichs Inc. 2001 (1) GLR 125
(Coram A.R. Dave J)
9. Macleods Pharmaceuticals Ltd v. Alembic Ltd. 2008 (5) GLR 4528
10. Cadila Healthcare v. Speciality Meditech Pvt. Ltd. (Coram
M.R.Shah) 2010 (5) GLR 3742
11. Ciba Geigy Ltd. v. Torrent Laboratories Pvt. Ltd., 1993 (1)
Arbitration Law Reporter, 18.
12. Torrent Laboratories Ltd. Versus CIBA Geigy Ltd. Coarm : Mr.
Justice R. Balia and Mr. Justice A.R. Dave decision : 08/12/98
(upreported) Guj. High Court O.J. Appeal No. 11 of 1993
13. Astra IDL Ltd v. TTE Pharma Ltd. AIR 1992 BOM 35
14. Biochem Pharmaceuticals Industries v. Biochem Synergy Ltd.
1998 PTC (18) Bombay High Court.
15. Sun Pharmaceuticals Industries Ltd., v. Wyeth Holdings
Corporation and another. 2005 (30) PTC 14 (Bom)
16. Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals. AIR 1989
Delhi 44.
17. Ciba Geigy Ltd.,v. Crosslands Research Laboratories 1996 PTC
(16) (Delhi)
18. Colgate Palmolive Company and another v. Anchor Health and
Beauty Care Pvt Ltd.
19. Novartis AG v. Crest Pharma Pvt. Ltd. 2009 (41) PTC (Delhi)
20. M/s National Chemicals and Colour Co. v.Reckitt and Colman of
India Ltd., AIR 1991 Bom 76
21. Allergan Inc. v. Milment Oftho Industries. AIR 1998 Cal. 261
312
22. Cadila Healthcare Ltd., V.Swiss Pharma Pvt. Ltd., 2002(2) GLR
1734.
23. Torrent Pharmaceuticals Ltd v. The Welcome Foundation Ltd
(CoramrK.M. Mehta,J) *1 2002 (24) PTC 580 (Guj)
'Ji'A
313
extensively. It was further stated that the composite word
Lakshandhara was used to denote the same medicine as
Amritdhara; and the single word ‘dhara’ , it was stated, was first
used in conjunction with Amritdhara to denote the medicine of the
appellant and the medicine Laxmandhara being of the same nature
and quality could be easily passed off as Amritdhara to the ultimate
purchaser It was contended that as ‘Amritdhara’ was already
registered and Lakshamdhara being a similar name was likely to
deceive the public, registration should be refused. The Registrar
passed an order allowing registration of Lakshamndhara for sale in
the State of UP only. Against the decision of the Registrar, two
appeals were filed in the High court of Allahabad under section 76
of the Act; one was preferred by the respondent and another by the
appellant. The respondent complained of the registration being
limited to Uttar Pradesh only and the appellant pleaded that
registration should have been refused altogether. The learned
Judges of the High court held that the words Amrit and ‘dhara’
were common words in the Hindi language arid the combined word
Amritdhara meant current of nectar or the flow of nectar, the two
words Lakshman and dhara were also well known common words
and combined together they meant current or flow of Lakshman. In
view of the same, the High court allowed the appeal of the
respondent and dismissed that of the appellant by its judgment
dated 19.3.1958. Being aggrieved, the appellant filed appeal before
the Supreme Court. The matter was heard by three Judge bench
S.K.Das, Hidayatullah and J.C.Shah,JJ (judgment by S.K.Das,J).
The Supreme Court considered all the questions and also
considered the relevant provisions of Trade Mark Act, 1940.
(Section 8) .In Para 7, (page 452) the Supreme court considered
314
what is deceptively similar and in this behalf, the Supreme court
considered the judgment in Pianotist Case in Para 7 and ultimately,
the Supreme court held as under on page 453:
1.2” (Para 7, page 453) It will be noticed that the words used in the
section and relevant for our purpose are ‘likely to deceive or cause
confusion’. The Act does not lay down any criteria for determining
what is likely to deceive or cause confusion. Therefore, every case
must depend on its own particular facts arid the value of authorities
lies not so much in the actual decision as in the tests applied for
determining what is likely to deceive or cause confusion. On an
application to register, the Registrar or an opponent may object that
the trade mark is not registrable by reason of cl. (a) of S 8, or sub
sec. (1) of S 10, as in this case. In such a case the onus is on the
applicant to satisfy the261 Registrar that the trade mark applied for
is not likely to deceive or cause confusion. In cases in which the
tribunal considers that there is doubt as to whether deception is
likely, the application should be refused. A trade mark is likely to
deceive or cause confusion by its resemblance to another already
on the register if it is likely to do so in the course of its legitimate
use in a market where the two marks are assumed to be in use by
traders in that market. In considering the matter, all the
circumstances of the case must be considered. As was observed by
'SfS)
‘You must take the two words. You must judge them, both by their
look and by their sound; you must consider the goods to which
315
they are to be applied. You must consider the nature and kind of
customer who would be likely to buy those goods. In fact you must
consider all the surrounding circumstances, and you must further
consider what is likely to happen if each of those trademarks is
used in a normal way as a trademark for the goods of the respective
owners of the marks.’(3.777).
1.3 It also relied upon Kerly on Trade Marks,8th edi. P 400) In Para 8.
(page 453),the Supreme court considered its earlier judgment in
Corn Products Refining Co v. Shangrila Food Products Ltd.
1.4 “(Para 8 page 455) Let us apply these test to the facts of the case
under our consideration. It is not disputed before us that the two
names ‘Amritdhara’ and Lakshamandhara are in use in respect of
the same description of goods, namely a medicinal preparation for
the alleviation of various ailments. Such medicinal preparation will
be purchased mostly by people who instead of going to a doctor
wish to purchase a medicine for the quick alleviation of their
suffering, both villagers and town folk, literate as well as illiterate.
As we said in Com Products Refining Co v. Shangrila Food
316
Products Ltd, the question has to be approached from the point of
view of a man of average intelligence and imperfect recollection.
To such a man then overall structural and phonetic similarity of the
two names ‘Amritdhara’ and ‘Lakshmandhara’ is, in our opinion,
likely to deceive or cause confusion. We must consider the overall
similarity of the two composite words Amritdhara and
Lakshmandhara. We do not think that the learned judges of the
High Court were right in saying that no Indian would mistake one
for the other. An unwary purchaser of average intelligence and
imperfect recollection would not, as the High court supposed, split
the name into its component parts and consider the etymological
meaning thereof or even consider the meaning of the composite
words as current of nectar or current of Lakshman. He would go
more by the overall structural and phonetic similarity and the
nature of the medicine he has previously purchased or has been
told about or about which has otherwise learnt and which he wants
to purchase. Where the trade relates to goods largely sold to
illiterate or badly educated person, it is no answer to say that a
person educated in the Hindi language would go by the
etymological or ideological meaning and see the difference
between current of nectar and current of Lakshman. Current of
Lakshman in a literal sense has no meaning to give it meaning and
must further make the inference that the current or stream, is as
pure and strong as Lakshman of the Ramayan. As ordinary Indian
villager or townsman will perhaps know Lakshman, the story of the
Ramayana being familiar to him but we doubt if he would
etymolise to the extent of seeing the so called ideological
difference between Amritdhara and Lakshmandhara, He would go
more by the similarity of the two names in the context of then
317
widely known medicinal preparation which he wants for his
ailment”
“We agree that the use of the word ‘dhara’ which literally means
‘current or stream’ is not by itself decisive of the matter. What we
have to consider here is the overall similarity of the composite
words, having regard to then circumstance that the goods bearing
the two names are medicinal preparations of the same description.
We are aware that the admission of a mark is not to be refused
because unusually stupid people ‘fools or idiots’ may be deceived.
A critical comparison of the two names may disclose some point of
difference but an unwary purchaser of average intelligence and
imperfect recollection would be deceived by the overall similarity
of the two names having regard to the nature of the medicine he is
looking for with an somewhat vague recollection that he had
purchased a similar medicine on a previous occasion with a similar
name. The trade mark is then whole thing the whole word has to be
considered. In the case of the application to register ‘Erectiks’
(opposed by the proprietors of the trade mark ‘Erector’),
Farewell,J. said in William Bailey (Birmingham) Ltd’s
application.263
318
1.7 (Para 13- page 454)
The Supreme Court allowed the appeal, set aside the judgment of
High court of Allahabad and restored the order of Registrar.
319
respect of its medicinal preparations on 31.1.1947 and another
mark consisting of the words ‘Navratna pharmaceutical
Laboratories’ to denote the same products on 17.2.1948. There
was evidence before the Court that the respondent has been
having an expanding business in the products which it
manufactured and has been selling the same under the above and
other cognate names and this has continued ever since.
320
2.4 The respondent had also filed suit No/ 233 of 1951 (from
CA 522 of 1962 arises) before District Court for a
permanent injunction restraining the appellant from
advertising, selling or offering for a sale any preparations
under a trade mark combining the word ‘Navratna’ or any
similar word etc. By reason of the pendency of this
proceeding in which the validity of the registration of the
respondent’s mark was directly involved, the Registrar
refused his application and directed the appellant to move
the High Court within whose jurisdiction the District Court
was situated for the rectification of the register by deleting
the respondent’s mark.
321
Navratna Pharmaceutical Laboratories had an exclusive
right to the use of those marks for his medicinal preparations
and that the said right was infringed by the defendant
(appellant before Supreme Court) advertising his goods
under the name ‘Navratna Kalpa’ with the trade origin of
then goods being described as ‘Navratna Kalpa Pharmacy’.
There was also an allegation that by use of these marks, the
defendant was passing off his goods as those of the plaintiff.
2.7 The defendant raised objections to the effect that the word
‘Navratna’ in its etymological sense meant Ayurvedic
preparations of a particular composition and that the word
had been generally adopted by several firms and
organizations for designating their preparations which they
vended with that description. It was therefore submitted that
the plaintiff could claim no exclusive title to the use of that
word which was a common word for the description of then
product as a trade mark to designate the pharmaceutical
preparations. As regards the trade mark ‘Navaratna
Pharmaceutical laboratories ‘ which was in fact the name in
which the plaintiff carried on its business, the defense was
that the crucial integer in that mark was the expression
‘Navaratna’ and that if the plaintiff was not entitled to the
exclusive use of the word ‘Navaratna’ to designate its
products, the combination of that word with the two other
words ‘Pharmaceutical’ and ‘Laboratories’ which were
ordinary English words descriptive of the place where
medicines were prepared could not render the trade mark a
registrable one. For these two reasons, the defense was that
322
no claim could be made to relief under S 21 of the Trade
Marks Act, 1940. Next, it was submitted that even on the
basis that the plaintiff was entitled to the use of the word
‘Navaratna’ either alone or in the combination ‘Navaratna
Pharmaceutical Laboratories’, still the use of the trade mark
by the defendant of the words ‘Navaratna Kalpa’ and
‘Navaratna Kalpa Pharmacy’ were not either identical with
nor deceptively similar to the plaintiffs marks and therefore
he was not guilty of any infringement. As regards the claim
for relief on the basis of passing off, the defendant laid stress
upon the packing, get up and the manner in which the trade
origin of the goods was clearly brought out in the packages,
in which his preparations were marketed and it was
submitted that they clearly negative any possibility of
passing off.
323
Ayurvedic preparations which had for a very long time past
either used marks which included that word and had
described their products by calling them ‘Navaratna’ either
alone or in combination with other words The right of the
plaintiff to relief on the ground of the infringement of the
mark ‘Navaratna’ was therefore disallowed. (3) Dealing next
with the question as to whether the mark ‘Navaratna
Pharmaceutical Laboratories’ could be validly registered and
rights claimed for such a registration, the learned District
Judge answered it in the affirmative pointing out that no
evidence was placed before the Court of the use by any other
person, firm or concern of that name and that there was
evidence which was non contradicted that the trade name
‘Navaratna Pharmaceutical Laboratories’ or some variant of
the name had been used as a trade mark by the plaintiff for a
very long time and had come in the market to denote
exclusively the goods of the plaintiff. The learned District
Judge further held the mark ‘Navaratna Pharmaceutical
Laboratories’ or its permissible variants had been used long
before February 25, 1937 and having acquired factual
distinctiveness, was registrable under the proviso to Section
6(3) of the Act. The plaintiff was, therefore, granted a decree
for an injunction confined to the trade mark ‘Navratana
Pharmaceutical Laboratories’.
2.9 From this judgment the appellant filed an appeal to the High
Court and the learned Judges heard the appeal along with the
original petition under s. 46 of the Act filed by the appellant.
By a common judgment, the learned judges confirmed all the
324
findings and the decree of the learned District Judge and
made an order in the original petition conformably to this
decision. These two appeals were preferred by the appellant
after obtaining special leave from the Supreme Court in
these two matters respectively.
2.10 (In Para 10, page 984), the Supreme Court considered
contentions of the appellant and also section 6 of the Trade
Marks Act, 1940. In Para 12 (page 985), the Supreme Court
considered the Fruit salt case and observed as under:
‘It is said that the words ‘Fruit salt’ have never been used in
collocation except by Mr Eno. Be it so...I cannot help
regarding the attempt on Mr Eno’s part as an instance of that
perpetual struggle which it seems to me is going on to
enclose and to appropriate as private property certain little
strips of the great open common of the English language.
That is a kind of trespass against which I think the Courts
ought to set their faces’.
“The use of the words ‘as aforesaid’ takes one back first to
sub s. (3) and then on to sub s. (2) and necessarily also to the
provision in s. 6(1) (d) where marks which are incapable of
acquiring distinctiveness are dealt with. Hence even on the
terms of the proviso however construed it is not possible to
325
escape the conclusion that a mark which is not ‘adapted to
distinguish’ by the application of the tests laid down in S
6(1) could still qualify for registration by proof of acquired
distinctiveness”.
326
respondent’s mark was rightly registered and that he was
entitled to protect an invasion of his right by seeking a
perpetual injunction from persons who invaded those rights”.
327
infringement of a registered trade mark by the registered
proprietor who has a statutory right to that mark and who has
a statutory remedy in the event of the use by another of that
mark or a colourable imitation thereof. While an action for
passing off is a common law remedy being in substance an
action for deceit, that is, a passing off by a person of his own
goods as those of another, that is not the gist of an action for
infringement. The action for infringement is a statutory
remedy conferred on the registered proprietor of a registered
trade mark for the vindication of ‘the exclusive right to the
use of the trade mark in relation to those goods’. (Vide S 21
of the Act). The use by the defendant of the trade mark of
the plaintiff is not essential in an action for passing off, but is
the sine qua non in the case of an action for infringement. No
doubt, where the evidence in respect of passing off consists
merely of the colourable use of a registered trade mark, the
essential features of both the actions might coincide in the
sense that what would be a colourable imitation of a trade
mark in a passing off action would also be such in an action
for infringement of the same trade mark. But there the
correspondence between the two ceases. In an action for
infringement, the plaintiff must no doubt make out that the
use of the defendant’s mark is likely to deceive, but where
the similarity between the plaintiffs and the defendant’s
mark is so close either visually, phonetically or otherwise
and the Court reaches the conclusion that there is an
imitation, no further evidence is required to establish that the
plaintiffs rights are violated. Expressed in another way, if
the essential features of the trade mark of the plaintiff have
328
been adopted by the defendant, the fact that the get up,
packing and other writing or marks on the goods or on the
packets in which he offers his goods for sale show marked
differences, or indicate clearly a trade origin different from
that of the registered proprietor of the mark would be
immaterial; whereas in the case of passing off, the defendant
may escape liability if he can show that the added matter is
sufficient to distinguish his goods from those of the
plaintiff’.
329
onus would be on the plaintiff to establish that the trade
mark used by the defendant in the course of trade in the
goods in respect of which his mark is registered, is
deceptively similar. This has necessarily to be ascertained by
a comparison of the two marks- the degree of resemblance
which is necessary to exist to cause deception not being
capable of definition by laying down objective standards.
The persons who would be deceived are, of course, the
purchasers of the goods and it is the likelihood of their being
deceived that is the subject of consideration. The
resemblance may be phonetic, visual or in the basic idea
represented by the plaintiffs mark. The purpose of the
comparison is for determining whether the essential features
of the plaintiffs trade mark are to be found in that used by
the defendant. The identification of the essential features of
the mark is in essence a question of fact and depends on the
judgment of the Court based on the evidence led before it as
regards the usage of the trade .It should, however, be borne
In mind that the object of the enquiry in ultimate analysis is
whether the mark used by the defendant as a whole is
deceptively similar to that of the registered mark of the
plaintiff’.
330
stressed the fact that the ‘Navaratna’ which constituted an
essential part or feature of the registered trade mark was a
descriptive word in common use and that if the use of this
word in the appellant’s mark were disregarded there would
not be enough material left for holding that the appellant had
used a trade mark which was deceptively similar to that of
the respondent. But this proceeds, in our opinion, on
ignoring that the appellant is not, as we have explained
earlier, entitled to insist on a disclaimer in regard to that
word by the respondent. In these circumstances, the trade
mark to be compare with that used by the appellant is the
entire registered mark including the word ‘Navratna’. Even
otherwise, as stated in a slightly different context:
331
As there are concurrent findings of fact on this matter, we do
not propose to enter into a discussion of this question de
novo since we are satisfied that the conclusion reached is not
unreasonable”.
332
19.3.1958, the respondent wrote to then appellant refusing to alter
its trade mark.
333
and definition ‘deceptively similar’ in section 2 (1) (d) and
ultimately, in Para 10 to 13 on page 2065 observed as under:
3.3 (“10 (page 2064)- The first question to be considered in this appeal is
whether the word Dropovit is deceptively similar to the word
Protovit and offends the provision of sec 12 (1) of the Act. In other
words, the question is whether the respondent’s mark so nearly
resembles the registered mark as to be ‘likely to deceive or cause
confusion. It is not necessary that it should be intended to deceive
or intended to cause confusion. It is its probable effect on the
ordinary kind of customers that one has to consider”.
The tests for comparison of the two word marks were formulated by Lord
Parkar in Pianotist Co Ltd’s application268 as follows:
334
‘You must take the two words. You must judge of them both by their
look and by their sound. You must consider the goods to which they are
to be applied. You must consider the nature and kind of customer who
would be likely to buy those goods. In fact, you must consider all the
surrounding circumstances; and you must further consider what is likely
to happen if each of those trademarks is used in a normal way as a trade
mark for the goods of the respective owners of the marks. If, considering
all those circumstances, you come to the conclusion that there will be a
confusion- that is to say, not necessarily that one man will be injured and
the other will gain illicit benefit, but that there will be a confusion in the
mind of the public which will lead to confusion in the goods- then you
may refuse the registration, or rather you must refuse the registration in
that case’.
It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd
v. Rysta Ltd 269 , the House of lords was considering the resemblance
between the two words ‘Aristoc’ and ‘Rysta’. The view taken was that
considering the way the words were pronounced in English, the one was
likely to be mistaken for the other. Viscount Maugham cited the
following passage of Lord Justice Lemoore in the Court of Appeal, which
passage, he said, he completely accepted as the correct exposition of the
law:
‘The answer to the question whether the sound of one word resembles
too nearly then sound of another so as to bring the former within the
limits of section 12 of the Trade Marks Act, 1938, must nearly always
depend on first impression, for obviously a person who is familiar with
both words will neither be deceived nor confused. It is the person who
only knows the one word and has perhaps an imperfect recollection of it
335
that is likely to be deceived or confused. Little assistance, therefore, is to
be obtained from a meticulous comparison of the two words, letter by
letter and syllable by syllable, pronounced with the clarity to be expected
from a teacher of elocution. The Court must be careful to make
allowance for imperfect recollection and the effect of careless
pronunciation and speech on the part not only of the person seeking to
buy under the trade description, but also of the shop assistant ministering
to that person’s wants’.
3.5 (12, page 2065). In order to decide whether the word ‘Dropovit’ is
deceptively similar to the word ‘ Protovit’ each of the two words
must therefore be taken as a whole word. Each of the two words
consists of eight letters the last three letters are common, and in the
uncommon part the first two are consonants, the next is the same
vowel ‘o’, the next is a consonant and the fifth again a common
336
vowel ‘o’. The combined effect is to produce an alteration. The
affidavits of the appellant indicate that the last three letters ‘VIT’ is
a well known common abbreviation used in the pharmaceuticals
trade to denote Vitamin preparations. In his affidavit dated January
11, 1961, Frank Murdoch has referred to the existence on the
register of about 57 trademarks which have the common suffix
‘VIT’ indicating that the goods are vitamin preparations. It is
apparent that the terminal syllable ‘VIT’ in the two marks is both
descriptive and common to the trade. If greater regard is paid to the
uncommon clement in these two words, it is difficult to hold that
one will be is taken for or confused with the other. Then letters ‘D’
and ‘P’ in ‘Dropovif and the corresponding letters ‘P’ and ‘T’ in
‘Protovit’ cannot possibly be slurred over in pronunciation and the
words are so dissimilar that there is no reasonable probability of
confusion between the words either from the visual or phonetic
point of view”.
“(Para 13, page 2065) - In the High Court, counsel for the
respondent made a statement that the respondent was willing that
the Court should direct in exercise of its powers under section 56
(2) that the Registrar should limit the respondent’s trade mark
‘Dropovif to medicinal and pharmaceutical preparations and
substances containing principally vitamins and that the appeal
should be decided on this basis. The question of deceptive
similarity must therefore be decided on the basis of the class of
goods to which the two trademarks apply subject to the limitation
agreed to by the respondent. From the nature of the goods it is
likely that most of the customers would obtain a prescription from
a doctor and show it to the chemist before the purchase. In such a
337
case, except in the event of the handwriting of the doctor being
very bad or illegible the chance of confusion is remote. As we have
already observed the evidence shows that there are as many as 57
trade marks in the register of Trade Marks with the suffix ‘VIT\
Therefore, even an average customer would know that in respect of
vitamin preparations the word ‘VIT’ occurs in large number of
trademarks and because of this he would naturally be on h is guard
and take special care against making a mistake. In this connection,
the provisions of the Drug Rules, 1945 are also relevant. Under
Rule 61 (2) vitamin preparations would be covered by item 5 in
schedule C (1) to the rules and a license would be required to stock
such vitamin preparations and to sell them in retail. The question of
confusion must hence be determined on the basis that the goods
with one of the two rival trademarks would be sold only by such a
licensed dealer and would not be available in any other shop. The
fact that the vendor would be a licensed dealer also reduces the
possibility of confusion to a considerable extent”.
3.6 Para 14 (page 2066) - “Having taken into account all circumstances
of the presen4t case, we are of the opinion that the High Court and
the Joint Registrar of Trade Marks were right in holding that there
was no real tangible danger of confusion if respondent’s trade mark
was allowed to continue to remain on the register and the
application for rectification made by the appellant should be
dismissed”.
In Para 15, the Supreme Court considered section 9 (1) of the Act.
338
being misspelled as ‘o’. ‘VIT being used to denote ‘Vitamin’ and
the three separate words are joined together to make ‘Dropovit’ as
one word. It was said that the words ‘Dropovit’ was simply a
combination of three common words in English language and
cannot, therefore, be said to be an invented word. In Diablo case,271
“To be invented word within the meaning of the Act a word must
not only be newly coined, in the sense of not being already current
in the English language, but must be such as not to convey any
meaning, or, at any rate, any obvious meaning to ordinary
Englishman. It just is a word having no meaning or no obvious
meaning until one has been assigned to it”
3.7 “(Para 17 (page 2066): “In the case of De Cordova v. Vick Chemical
Co212 the Privy Council referred to that interpretation of Parkar,J
as ‘the best standing interpretation’. The question arising in this
case is whether the word ‘Dropovit’ would strike an ordinary
person knowing English meaning ‘Drop of Vitamin._In this
connection, the High Court has pointed out that the Original
application for rectification did not contain the ground that the
word ‘Dropovit’ was descriptive. It was therefore; legitimate to
draw the inference that the word ‘Dropovit’ did not strike even
Messrs.Depenning and Depenning the legal advisers of the
appellant as being descriptive. It was also pointed out that in his
judgment, Mr. Justice Tarkande has remarked that when the case
was opened before him, he did not understand that the word
‘Dropovit’ mean ‘Drop of Vitamin’; till the explanation of that
339
word was given to him. We see no reason, therefore, to differ from
the reasoning of the High Court on this aspect of the case if the
word ‘Dropovit’ is not descriptive word, it must be held to be
invented word. It is true that the word ‘Dropovit’ is a coined out of
words commonly used by and known to ordinary persons knowing
English. But the resulting combination produces a new word, a
newly coined word which does not remind an ordinary person
knowing English of the original words out of which it is coined
unless he is so told or unless at least he devotes some thought to it.
It follows that the word ‘Dropovit’ being an invented word was
entitled to be registered as an trade mark and it not liable to be
removed from the register on which it already exists”.
340
pursuant to and in implementation of these arrangements Antox applied
for the requisite manufacturing license from the Drug Controller under
the Drugs and Cosmetics Act, 1940 in the course of the processing of
which Wander Ltd. furnished before the Drug Controller an undertaking
that Wander Ltd would not authorize the use of its trademark “Cal-De-
Ce” by any other company and further not to manufacture “Cal-De-Ce”
with effect from Julyl, 1986, either by itself or under sole licenses from
it. The Drug Controller issued the manufacturing license to Antox.
(Para 5 Page 730) The working of the agreement dated March 28, 1986
between the parties, however, appears to have run into serious troubles.
The disputes culminated in Wander Ltd purporting to rescind the
agreement by its notice dated November 30, 1988 and calling upon Antox
to stop manufacture of “Cal-De-Ce” under the trade mark. It would also
appear that Wander Ltd, entered into a separate manufacturing agreement
with Alfred Berg & Co. (I) Pvt. Ltd, appellant 2, at Madras, under
licenses issued to appellant 2, by the authorities administering the Drugs
and Cosmetics Act, 1940 in that State.
(Para 6 Page 730) It is at this stage that the Antox came forward with the
present suit and sought temporary injunction.
(Para 7 Page 731) The case of Antox is that its agreement dated March
28, 1986 with Wander Ltd was itself void in that its object was one
forbidden by law; that it would, if permitted, defeat and violate several
statutory provisions and prohibitions; that the agreement thus, out of way,
the undertaking furnished on June 21, 1986 by Wander Ltd to the Drug
Controller in Karnataka, had the effect, in law, of and amounted to an
abandonment by Wander Ltd. of its proprietorship of the registered trade
mark “Cal-De-Ce” and of all such exclusive rights as Wander Ltd. had or
341
may have had in respect of that trademark and that the subsequent
continued user of the said trademark by Antox under the Drug
Controller’s license amounted to an independent user of the trademark by
Antox in its own right as, indeed, according to Antox, the said trademark
after its abandonment by Wander Ltd came to be in a nascent unknown
condition eligible to be picked up and used by anybody. It was said that
the user of the trademark by Antox after June 21, 1986 amounted to such
an independent user on the strength of which Antox claimed that it was
entitled to maintain a passing off action even against Wander Ltd. The
mere earlier registration of the trademark by Wander Ld, it is urged, is no
evidence of earlier user and with the abandonment of the trademark by
Wander Ltd. Antox is entitled, on the strength of its continuous user, to
restrain Wander Ltd from manufacture.
(Para 8 Page 731) The point for consideration is whether is a prima facie
case on which Antox could be held entitled to restrain Wander Ltd and
Alfred Berg from manufacturing and marketing goods under the trade
name “Cal-De-Ce” and whether on considerations of balance of
convenience and comparative hardship a temporary injunction should
issue. The corollary is that even if the injunction sought by Antox is
refused, that does not, ipso facto, entitle Wander Ltd and Alfred Berg to
manufacture and market the goods if they are not otherwise entitled to do
so under the relevant laws regulating the matter.
342
remain uncertain till they are established at the trial on evidence. The
Court, at this stage, acts on certain well settled principles of
administration of this form of interlocutory remedy which is both
temporary and discretionary. The object of the interlocutory injunction, it
is stated
“...... is to protect the plaintiff against injury by violation of his rights for
which he could not adequately be compensated in damages recoverable in
the action if the uncertainty were resolved in his favour at the trial. The
need for such protection must be weighed against the corresponding need
of the defendant to be protected against injury resulting from his having
been prevented from exercising his own legal rights for which he could
not be adequately compensated. The Court must weigh one need against
another and determine where the “balance of convenience” lies”.
(Para 10 Page 732) In the present case, the learned Single Judge held
that, at all events, as between Antox and Wander Ltd. even to the extent
considerations relevant for a passing-off action go, the latter was
undisputedly the earlier user of the trademark in that Wander Ltd. was
manufacturing and marketing the Calcium Gluconate Vitamin tablets
under the trademark “Cal-De-Ce” at its own factory in Bombay from
343
August 1983 up to June 1986. If this is correct, Antox’s user cannot be
held to be prior user. It is pertinent to note, and perhaps emphasize, that
the appellate bench did not disturb this finding at all. Learned Single
Judge was persuaded to the view that, in any event, so far as the prima
facie position and to the test of earlier user is concerned Antox could not
be held entitled to interlocutory order in its favour on the basis of the
earlier user claimed by it. The interlocutory relief was accordingly
refused against both Wander and Alfred Berg.
(Para 11 Page 732) Against the Single Judge, Antox preferred appeal
before the Division Bench. The Division Bench reassessed the material
considered by the Single Judge and came to a different conclusion. The
Division Bench held:
“........................ The plaintiffs had licenses to manufacture for sale with the
trade names and had indeed sold the manufactured stock in bulk to
the defendants. Its user of the trade marks pursuant to the license
obtained, was not the user of registered user under Section 48 and
49 of the Trade and Merchandise Marks Act, nor was its
manufacture carried out in pursuance of any loan license taken out
by the defendant under Rule 69-A of the Drugs and Cosmetics
Rules ”,
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Court granted the injunction, the plaintiffs would be entitled to have
the interim injunction as prayed for by them
(emphasis supplied)
(Para 12 Para 733) Against the said order, the defendants had filed
appeal before the Hon. Supreme Court.
(Para 14 Page 733)The appeals before the Division Bench were against
the exercise of discretion by the Single Judge. In such appeals, the
appellate Court will not interfere with the exercise of discretion of the
Court of first instance and substitute its own discretion except where the
discretion has been shown to have been exercised arbitrarily, or
capriciously or perversely or where the Court had ignored the settled
principles of law regulating grant or refusal of interlocutory in junctions.
An appeal against exercise of discretion is said to be an appeal on
principle. Appellate Court will not reassess the materials and seek to
reach a conclusion different from the one reached by the Court below if
the one reached by that Court was reasonably possible on the material.
The appellate Court would normally not be justified in interfering with
the exercise of discretion under appeal solely on the ground that if it had
considered the matter at the trial stage it would have come to a contrary
345
conclusion. If the discretion has been exercised by the trial Court
reasonably and in a judicial manner the fact that the appellate Court
would have taken a different view may not justify interference with the
trial Court’s exercise of discretion. After referring to these principles,
274
Gajendragadkar, J., in Printers (Mysore)Pvt Ltd v. Pothan Joseph
(Para 15 Page 733) The passing-off action was based on the asserted
right to a trademark said to have been acquired by continuous user.
According to the appellate bench the user by Anox pursuant to the Drug
Controller’s license and after the undertaking given by Wander Ltd
“....was registered user under Sections 48 and 49 of the Trade and
Merchandise Marks Act nor was it a manufacture carried out in
pursuance of a loan because..... In a passing-off action this would be
relevant only in a negative way. Positively, the plaintiff must establish a
prior user of his own. Prima facie, Antox’s case appears silent on this
requirement n the context of a specific finding of the Single Judge as to
user by Wander Ltd. prior to June 1986. Antox’s user is admittedly after
June 1986.
346
statute. In a passing-off action, however, the plaintiff s right is
independent of such a statutory right to a trade mark and is against the
conduct of the defendant which leads to or is intended or calculated to
lead to deception. Passing-off is said to be a species of unfair trade
competition or of actionable unfair trading by which one person, through
deception, attempts to obtain an economic benefit of the reputation which
another has established for him in a particular trade or business. The
action is regarded as an action for deceit. The tort of passing-off involves
a misrepresentation made by a trader to his prospective customers
calculated to injure, as a reasonably foreseeable consequence, the
business or goodwill of another which actually or probably, causes
damages to the business or good of the other trader.
(Para 18 Page 735) The first is that the Drug Controller’s license claimed
by Antox as the source of its right to the user of the trademark, itself
expressly stipulates that the goods to be manufactured pursuant to the
said license shall be goods under the registered trademark of Wander Ltd.
The effect of this on the quality of the user has not been examined by the
appellate bench.
347
appropriate case where the appellate bench could have interfered with the
discretion exercised by the learned Single Judge.
(Para 20 Page 735) We, accordingly, allow these appeals; set aside order
dated January 19, 1990 of the Division Bench insofar as it pertains to
Civil Suit No. 1220 of 1988 and restore the order dated March 2, 1989
made by the learned Single Judge on Applications Nos. 4941 and 4942 of
1988. Since we are examining the matter at a interlocutory stage, none of
the observations contained in this order shall affect the final decision of
the suit on the merits after evidence.
(Appeal from Order No.280/1998 from Gujarat High Court (was decided
on 17.7.1998). The appellant Cadila Health care Ltd. and respondent-
Cadila Pharmaceuticals Ltd- are pharmaceutical companies. The present
proceedings arise from the suit for injunction which has been filed by the
appellant -plaintiff against the respondent-defendant in the District Court,
Vadodara. The suit related to a medicine being sold under the brand name
‘Falcitab’ by the respondent which according to the appellant was a brand
name similar to the drug being sold by it under its brand name ‘Falcigo’.
The case of the appellant was that its drug ‘Falcigo’ contains Artesunate
for the treatment of cerebral malaria commonly known as Falcipharum.
After the introduction of this drug, the appellant on 20.8.1966 applied to
the Trade Marks Registry, Ahmedabad for registration in part A clause 5
of the Trade and Merchandise Marks Act. On 7.10.1996, the Drugs
Controller General (India) granted permission to the appellant to make
348
the said drug under the trade mark of ‘Falcigo’. It is thereafter that since
October 1996, then appellant claimed to have started the manufacture and
sale of drug Falcigo all over India.
The appellant then filed a suit in the District Court at Vadodara seeking
injunction against the respondent from using the trade mark Falcitab as it
was claimed that the same would be passed off as appellant’s drug
‘Falcigo’ for the treatment of the same disease in view of confusing
similarity and deception in the names and more so because the drugs were
medicines of last resort. The Extra Assistant Judge, Vadodara by his
order dated 30.5.1998 dismissed then interim injunction application. He
came to the conclusion that the two drugs Falcigo and Falcitab differed
in appearance, formulation and price and could be sold only to hospitals
and institutions and there was thus no case had been made out for grant
of injunction and there was no chance of deception or/of confusion
specially as the dug was not meant to be sold to any individual.
Being aggrieved by and dissatisfied with the said decision, the appellant
filed appeal before the High Court. The High Court dismissed the appeal
(Appeal from Order No. 280/98 decided on 17.7.1998) (coram:
M.S.Parikh.J). The High Court of Gujarat after considering various cases
observed that it could not be said that there was a likelihood of confusion
349
being caused to an unwary consumer in respect of then disputed marks. It
observed that there was little chance of any passing off one product or the
other product.
Being aggrieved, an appeal was filed before the Supreme Court. In Para
10, the Supreme Court considered relevant provisions of the Trade and
Merchandise Marks Act, 1958. In Para 12, it considered the judgment in
the case of National Sewing Thread Co. Ltd.277 In Para 13 on page 1956,
the Supreme Court considered the case of Com Products Refinery Co.278
concerning products of Gluvita and Glucovita .In Para 14 (page 1957),
the Supreme Court considered Amritdhara Pharmacy case279( which we
have already referred to .
1.5 In Para 15, the Supreme Court considered the case of Durga Dutta
Sharma v. N.P.Laboratories. In Para 16, the Supreme Court
considered the case of F.Hoffman -La Roche v. Geoffrey Manner
and Co. and also certain English decisions. In Para 16, it
considered the case of F.Hoffmann-La Roche and Co Ltd. v.
Geoffrey Manners and Co2m In Para 17, the Supreme Court
considered the case of S.M.Dyechem Ltd v. Cadbury (India) Ltd.,
The Supreme Court observed as under:
1.6 “ (Para 17, p.1960)- Our attention was drawn to a recent judgment
TR1
of this Court in S.M.Dyechem Ltd v. Cadbury (India) Ltd,
Where in passing off action, the plaintiff who was carrying on the
business under the mark of ‘Piknik’ filed a suit for injunction
against the defendant which was using the mark of ‘picnic’ for
some other chocolates sold by tit. On the allegation that the
277 AIR 1958 SC 357;
278 (1960) 1 SCR 968:AIR 1960 SC 142;
279 AIR 1963 SC 449
280 (1969) 2 SCC 716:.AIR 1970 SC 2062
281 5 (2000) 5 SCC 573:AIR 2000 SC 2114
350
defendant’s mark was deceptively similar, the trial Court had
issued an injunction which was reversed by the High Court. On
appeal, the decision of the High Court was affirmed. One of the
questions which this Court considered, was that for grant of
temporary injunction, should the Court go by the principle of prima
facie case, apart from balance of convenience, or comparative
strength of the case of either parties or by finding out if the plaintiff
has raised a ‘triable issue’ . While considering various decisions on
the point in issue, this Court rightly concluded at page 591 (of
SCC) (AT P. 2181 of AIR SCW 2121 of AIR AND 1348 of CLC
(Para 21) as follows:
1.7 “In trade mark matters, ii Is now necessary to go into the question
of ‘comparable strength’ of the cases of either party, apart from
balance of convenience”.
1.8 “On merits of the case, this Court took note of some English
decisions and observed in Dyechem’s case (supra) at page 594
(Para 31) that ‘where common marks are included in the rival
trademarks, more regard is to be paid to the parts not common and
the proper course is to look at the marks as a whole but at the same
time not to disregard the parts which are common.
“17 (p. 1961) This Court sought to apply the principle that dissimilarity
in essential features in devices and composite marks are more important
than some similarity....This Court, after considering various decisions
referred to hereinabove observed in Dyechem’s case (supra) at page 596
(of SCC) (at pp. 2184-85 of AIR SCW 2124 IF AIR and 1351 of CLC)
(Para 34) as follows:
351
‘Broadly, under our law as seen above, it can be said that stress is laid
down on common features rather than on differences in essential features,
except for a passing reference to a limited extent in one case...It appears
to us that this Court did not have occasion to decide, as far as we are able
to see, an issue where there were also differences in essential features n or
to consider the extent to which the differences are to be given importance
over similarities. Such a question has arisen in the present case and that is
why we have referred to the principles of English law relating to
differences in essential features which principles, in our opinion, are
equally applicable in our country”.
352
copies? 2) mode in which parts are put together differently i.e.
whether dissimilarity of the part or parts is enough to make the
whole thing dissimilar and 3) whether when there are common
elements, should one not pay more regard to the parts which are
not common, while at the same time not disregarding the common
parts ? In examining the marks, keeping the aforesaid three tests in
mind, it came to the conclusion, seeking the manner in which the
two words were written and the peculiarity of the script and
concluded that ‘the above three dissimilarities have to be given
more importance than the phonetic similarity or the similarity in
the use of the word PICNIC for PIKNIK”.
1.12 “19 (P 1961), With respect, we are unable to agree that that
principle of phonetic similarity has to be jettisoned when the
manner in which the competing words are written is different and
the conclusion so arrived at is clearly contrary to the binding
precedent of this Court in Amritdhara’s case (supra) where the
phonetic similarity was applied by judging the two competing
marks. Similarly, in Durga Dutta Sharma’s case (Supra), it was
observed that ‘in an action for infringement, the plaintiff must, no
doubt, make out that the use of the defendant’s mark is likely to
deceive, but where the similarity between the plaintiffs and the
defendant’s mark is so close either visually, phonetically or
otherwise and the Court reaches the conclusion that there a
limitation, no further evidence is required to establish that the
plaintiffs rights are violated”.
1.12A In Para 20 (page 1962), the Court observed: (page 1962) Lastly, in
Dyechem’s case (supra) it was observed in Para 54 (of SCC) (Para
563 of AIR SCW, AIR CLC) as under:
353
“As to scope of a buyer being deceived, in a passing off action, the
following principles have to be borne in mind. Lord Romer,L.J. has
said in Payton and Co. v. Shelling, Lampard and Co 287 that it is
354
does not in our opinion lay down correct law and we hold
accordingly”.
1.13 In Paras 21, 22, 23 and 24, the Supreme Court considered certain
English decisions. In Para 24 and 25, the Court observed as under:
355
may usefully be made to the case of Glenwood Laboratories Inc. v.
American Home Products Corp, wherein it was held as under:
1.16 “(Para 26, page 1963)- It was further submitted on behalf of the
appellant that although the possibility of confusion in a drug being
sold across the country may be higher. The fact that a drug is sold
under prescription or only to physicians cannot be by itself
considered a sufficient protection against confusion. The
physicians and the pharmacists are trained people yet they are not
infallible and in medicines, there can be no provision for mistake
since even a possibility of mistake may prove to be fatal.”
356
1.18 The Court in Para 28, referred to an American case and in Para 29,
it referred to McCarthy on Trade Marks. In Para 30, it referred to
an American case and thereafter, in Para 31 it observed as under:
1.19 (Para 32- [page 1964) “ Public interest would support lesser degree
of proof showing confusing similarity in the case of trade mark in
respect of medicinal product as against other non-medicinal
products. Drugs are poisons, not sweets. Confusion between
medicinal products may, therefore, be life threatening, not merely
inconvenient. Nothing the frailty of human nature and the pressures
placed by society on doctors, there should be as many clear
indicators as possible to distinguish two medicinal products from
each other. It is not uncommon that in hospitals, drugs can be
requested verbally and/or under critical/ pressure situations. Many
357
patients may ne elderly, infirm or illiterate. They may not be in a
position to differentiate between the medicine prescribed and
bought which is ultimately handed over to them.” This view lands
support from McCarthy on Trade Marks, 3rd edition, Para 23.12 of
which reads as under:
1.20 “(Para 33- p. 1965)- In country like India where there is no single
common language, a large percentage of population is illiterate and
a small fraction of people know English, then to apply the
principles of English law regarding dissimilarity of the marks or
the customer known about the distinguish characteristics of the
plaintiffs goods seems to overlook the ground realities in India.
While examining such cases in India, what has to be kept in mind
is the purchaser of such goods in India who may have absolutely
no knowledge of English language or of the language in which the
trade mark is written and to whom different words with slight
difference in spellings may sound phonetically the same. While
dealing with cases relating to passing off, one of the important tests
358
which has to be applied in each case is whether the
misrepresentation made by the defendant is of such a nature as is
likely to cause an ordinary consumer to confuse one product for
another due to similarity of marks and other surrounding factors.
What is likely to cause confusion would vary from case to case.
However, the appellants are right in contending that where
medicinal products are involved, the test to be applied for
adjudging the violation if trade mark law may not be at par with
cases involving non-medicinal products. A stricter approach should
be adopted while applying the test to judge the possibility of
confusion of one medicinal product for another by the consumer.
While confusion in the case of non-medicinal products may only
cause economic loss to the plaintiff, Confusion between the two
medicinal products may have disastrous effects on health and in
some cases life itself. Stringent measures should be adopted
especially where medicines are the medicines of test resort as any
confusion in such medicines may be fatal or could have disastrous
effects. The confusion as to the identity of the product itself could
have dire effect on the public health.”
1.21 “(Para 34-page 1965- Keeping in view the provisions of section 17B
of the Drugs and Cosmetics Act. 1940, which inter alia indicates as
imitation or resemblance of another drug in a manner likely to
deceive being regarded as a spurious drug, it is but proper that
before granting permission to manufacture a drug under a brand
name the authority under that Act is satisfied that there will be no
confusion or deception in the market. The authorities should
consider requiring such an applicant to submit an official search
report from the trade mark office pertaining to the trade mark in
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question which will enable the drug authority to arrive at a correct
conclusion”.
1.22 “(Para 35 -page 1965)- Broadly stated , in an action for passing off
on the basis of unregistered trade generally for deciding the
question of deceptive similarity, the following factors to be
considered:
a) The nature of the marks i.e. whether the marks are word
marks or label marks or composite marks, i.e. both words
and label words.
360
Weightage to be given to each of the aforesaid factors depends upon fact
of each case and the same weightage cannot be given to each factor in
every case.”
1.23 In Para 36, the Supreme Court directed that the trial Court will now
decide the matter on the principles laid down by the Supreme
Court.
361
treatment of the eye and the ear. They claim that they coined the word
“OCUFLOX” by taking the prefix “OCU” from “OCULAR” and
“FLOX” from “CIPROFLOXACIN” which is the basic constituent of
their product. The appellants were granted registration by the Food and
Drug Control Administration on 25-8-1993. They had also applied for
registration of the mark OCUFLOX in September 1993. Their application
is pending.
(Para 4 Page 626) The appeal filed by the respondents had been allowed
by the impugned judgment on (06/11/1997). The impugned judgment has
taken note of the law laid down by this Court. It has been held that the
respondents were first in the market and, therefore, they were entitled to
an injunction.
Thereafter, the Hon. Supreme Court considered its own decision in N.R.
Dongre v. Whirlpool Corpn.,294 and also Cadila Health Care Ltd v.
Cadila Pharmaceuticals Ltd. After setting out principles therein, in
Para 8 and 9 the Court held that:
(Para 8 Page 627) We are in full agreement with what has been laid down
by this Court. Whilst considering the possibility of likelihood of
deception or confusion, in present times and particularly in the field of
medicine, the Courts must also keep in mind the fact that nowadays the
field of medicine is of an international character. The Court has to keep in
362
mind the possibility that with the passage of time, some conflict may
occur between the use of the mark by the applicant in India and the user
by the overseas company. The Court must ensure that the public interest
is in no way imperiled. Doctors, particularly, eminent doctors, medical
practitioners and persons or companies connected with the medical field
keep abreast of latest developments in medicine and preparations
worldwide. Medical literature is freely available in this country. Doctors,
medical practitioners and persons connected with the medical field
regularly attend medical conferences, symposiums, lectures, etc. It must
also be remembered that nowadays goods are widely advertised in
newspapers, periodicals, magazines and other media which is available in
the country. This results in a product acquiring a worldwide reputation.
Thus, 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. However, one note
of caution must be expressed. Multinational corporations, which have no
intention of coming to India or introducing their product in India should
not be allowed to throttle an Indian company by not permitting it to sell a
product in India, if the Indian company has genuinely adopted the mark
and developed the product and is first in the market. Thus the ultimate
test should be who is first in the market.
(Para 9 Page 628) In the present case, the marks are the same. They are
in respect of pharmaceutical products. The mere fact that the respondents
have not been using the mark in India would be irrelevant if they were
first in the world market. The Division Bench had relied upon material
which prima facie shows that the respondents’ product was advertised
before the appellants entered the field. On the basis of that material the
Division Bench has concluded that the respondents were first to adopt the
363
mark. If that be so, then no fault can be found with the conclusion drawn
by the Division Bench.
In July 2002, the appellants learnt that the defendant respondent, Dabur
India had launched a similar product under the name ‘Glucose D’ by
using packaging which was deceptively similar to the packaging used for
Glucon-D. The appellants thereupon served a notice on the respondent
calling upon it to desist from using the mark and the deceptive packaging
but as no satisfactory reply was forthcoming, filed a suit for permanent
injunction and accounts of profits for infringement of the trade mark
under sections 29 and 106 of the Act and infringement of copyright under
section 63 of the Copyright Act. Along with the suit the appellants also
filed an application under Order 39 Rules 1 and2 CPC for the grant of an
ad interim injunction to restrain the respondent from using the trade mark
364
‘Glucose-D’ or any other trade mark and deceptively similar packaging as
well.
It was also admitted that the term ‘Glucose-D’ had been used by the
respondent from the year 1989 and that the packaging which was the
subject matter of dispute in the present case had been8 in use from the
year 2000.
The respondent filed a written statement and took the plea that the word
‘Glucose’ was a generic expression of the product being sold and as such
no monopoly could be claimed by the appellants or anyone else on the
said word or its derivatives. It was also pleaded that there was no
similarity between the trade marks ‘Glucose-D’ and ‘Dabur Glucose-D’
and that the packaging was also dissimilar.
The trial Court held that the word ‘Glucose’ was a generic word and as
such the appellants could not claim that the use of the word ‘Glucose-D’
violated their registered trade mark ‘Glucone’D’. The Court also rejected
the plea that the packaging used by then respondent was deceptively
similar by making an examination of the two sets of packaging and
noticing the dissimilarities between the two. The application was
accordingly dismissed. The appellants thereupon filed a first appeal in
the High Court but that too was dismissed by the impugned judgment.
The appellants went before the Supreme Court by special leave. It was
observed by the Supreme Court as under:
365
the nature of a discretionary relief and that interference should not
be made when two Courts have gone against a party. We however
find from the facts of the case that in that matter the ad interim
injunction had been held to be rightly refused as the opposite party
had claimed and proved prior user on which the passing off action
was based. In the present case, however, the fact that Glucose-D
and its distinctive packaging had been used by Glaxo since the year
1940 and thereafter by the appellant long before it had been used
by the respondent is clear on record. We also find that the
challenge in these proceedings is to the mark and packaging used
in Gurgaon from the year 2000. We therefore reject the first
argument raised by Mr Sudhir Chandra.”
“15. We have also considered the arguments with regard to the prior use
of the trade mark ‘Glucon-D’ and the specific packaging. It is the
admitted case that the term ‘Glucose-D’ has been used by the
respondent from the year 1989 and that the packaging which is the
subject matter of dispute in the present suit has been in use from
the year 2000,298 In Century Traders 1979 AC 731, it has been held
that in an action for passing off, the plaintiff has to establish prior
user to secure an injunction and that the registration of the mark
or similar mark in point of time, is irrelevant. This Court in Cadila
Health case also laid down the tests in the case of passing off and
observed as under (SCC P. 80, Para 10)-
366
or services under the pretence that they are those of another person.
As per Lord Diplock in Erven Wamink BV v. J.Townend and sons,
the modem tort of passing off has five elements i.e. (1) a
misrepresentation, (2) made by a trader in the course of trade, (3) to
prospective customers of his or ultimate consumers of goods or
services supplied by him,. (4) which is calculated to injure the
business or goodwill of another trade (in the sense that this is a
reasonably foreseeable consequence), and (5) which causes actual
damage to a business or goodwill of the trader by whom the action
is brought or (in a quia timet action) will probably do so’
“16. Likewise, it has been repeatedly held that before the use of a
particular mark can be appropriated it is for the plaintiff to prove
that the product that he is representing had earned a reputation in
the market and that this reputation bad been sought to be violated
by the opposite party. In Com Products case, it was observed that
the principle of similarity could not be very rigidly applied and that
if it could be prima facie shown that there was a dishonest intention
on the part of the defendant in passing off goods, an injunction
should ordinarily follow and the mere delay in bringing the matter
to Court was not a ground to defeat the case of the plaintiff. It bears
reiteration that the word ‘Glucose-D’ and its packaging ad been
used by Glaxo since 1940 whereas the word ‘Glucose-D’ had been
used for the first time in the year 1989”
“17. In Cadila Health care case, it has also been held that in the case of a
passing off action the similarities rather than the dissimilarities
have to be taken note of by the Court and the principle of phonetic
‘similarity’ cannot be ignored and the test is as to whether a
particular mark has obtained acceptability in the market so as to
367
confuse a buyer as to the nature of product he was purchasing. We
observe that both Glucon-D and Glucose-D are items containing
glucose and to us it appears that there is remarkable phonetic
similarity in these two words.”
368
“20. We accordingly set aside the order of the trial Court dated
11.12.2003 and the order of the High8 Court dated 27.10.2995.
However, as this order is confined only to the limited question of
an ad interim injunction, any observation made in this order would
not bind the trial Judge in the proceedings in the suit. The
application for ad interim injunction is accordingly allowed in
terms of prayer clause (ii) of the application”.
369
GLR 1049) After hearing both the parties, the High Court partly
allowed the said appeal by order dated 9.4.1992 and directed the
trial court to dispose of the application Ex.5 on or before
18.4.1992.
3. Pursuant to the said order, the trial court heard the parties and by
order dated 20.4.1992 dismissed the application for interim
injunction filed by the plaintiff. Being aggrieved, the plaintiff -
appellant filed the present appeal from order before the High Court.
The matter was placed before C.K. Thakker, J (as he when was).
370
5:1 Is the defendant selling goods so marked as to be designed or
calculated to lead purchasers to believe that they are the
plaintiffs goods?
371
such a commodity in open market and so on. Purchase of a biscuit
can neither be compared with purchase of a machine nor with a
medicine. Again, even in the case of medicine, a question may be
posed before the Court in a given case whether such a medicine
would be available freely in the market or can be had only upon
prescription of a Doctor. Finally, the test should not be that in no
case a purchaser would commit mistake but the percentage of the
possibility or likelihood of committing such mistakes. Thus, in
Roche & Co. (supra), the Supreme Court observed that in the case
of medicine, ordinarily, the customers would obtain a prescription
from a Doctor and show it to the chemist before the purchase. In
such a case, except in the event of handwriting of a Doctor being
very bad or illegible the chance of confusion is remote. Again, such
possibility is remote in view of the further fact that the drug in
question would not be available from any other shop except from a
licence dealer".
372
founded that an ordinary lay-man when he would be purchasing
medicine of such a nature, he would be on his guard and quite
cautious and would not allow himself to be satisfied with a
different medicinal preparation. Similarly, under the Rules a duty is
cast on the dealers and they cannot consistently with that duty pass
on any other preparation instead of the one prescribed by the
Doctor. By doing so, they would be committing breach of the
provisions of the Rules as also conditions of licence. Mr. Desai, no
doubt, submitted that this aspect cannot be considered by the Court
at this stage while deciding application, Exh. 5. I am unable to
accept the said submission. In my judgment, all relevant material
and facts which can be considered at the time of hearing of the suit
can be considered at the time of hearing of application Exh. 5 also.
I, however, make it clear that all the observations made by me
hereinabove must be treated as prima facie observations only to the
extent to deciding application Exh. 5 and the trial Court while
deciding the suit will not be influenced by those observations and
will decide the matter in accordance with law on merits".
373
production of other documents which was rightly rejected by the
Court".
374
prejudice the trial of the case. In Para 40, the learned Judge
observed as under:
2. (“40- P- 140) Having considered the fact that the Court has
jurisdiction and the suit is maintainable, one has to look at the sum
and substance of the allegations made in the plaint. The grievance
of the plaintiffs in a nutshell is that rights of the plaintiffs under the
Trade Mark Act and Copyright Act have been violated and the
defendants are passing off their goods i.e. their cough drops named
VICAS as VICKS. I am conscious of the fact that still the parties
have not led the evidence. Prima facie, one has to see whether the
goods manufactured and sold by the defendants are deceptively
similar to the goods manufactured and sold by the plaintiffs. The
law on the subject has been settled since long and merely by
looking at some of the judgments one can find out whether the
goods manufactured by the defendants can be said to be
deceptively similar to those of the plaintiffs. It is a well established
principle that for the purpose of ascertaining whether the goods are
deceptively similar, one has not to look at the goods like a a
meticulous or a methodical person, who is having excellent or
photogenic memory and who makes a comparison every time when
he purchases goods. In such a case, one has to look at an average
person with average memory and imperfect recollection. In the
instant case, the two products with which the Court is concerned
are VICKS and VICAS...... It is true that spelling of both words
are different and phonetically also there is a difference between the
two. The Honble Supreme Court had an occasion to determine such
an issue in the case Com Products Refining Company v. Shangrila
Food Products Ltd., AIR 1960 SC 142. Looking to the law laid
down by the Honble Supreme Court in the case of Com Products
375
Refining Co. (supra) and the observations made by the Honble
Supreme Court, one can clearly say that the phonetic difference
which learned Advocate Shri R. R. Shah is referring to is not of
much importance as we are concerned with a person of average
intelligence and imperfect recollection who is likely to err while
making a decision with regard to purchase of cough drops. In the
instant case, one has to see whether the product of the defendants is
likely to cause confusion. The defendants might not be having any
intention to deceive a customer but the product of the defendants
should not be such which would even cause confusion in the mind
of a buyer of average intelligence and imperfect recollection”.
4. (“42, P- 141). There is one more important thing in this case. The
product is a medicinal product. Though it is a medicinal product, it
is not covered under the provisions of Drugs and Cosmetics Act. It
can be sold over the counter without any prescription. In my
opinion, when the Court is concerned with any medicinal product,
376
the Court has to be more cautious for the reason that an average
person with average intelligence and imperfect recollection should
not be misguided and should not, due to some mistake or due to
inadvertence, purchase another product. A similar question had
arisen in case of calmpose and ealmprose in the case of Ranbaxy
Laboratories v. Dua Pharmaceutical Ltd., AIR 1989 Delhi 44. The
drug which was subject-matter of the said litigation was a
scheduled drug and it was not open to a consumer to get the drug
without prescription of a doctor. It was the case of the defendant in
that case that as the drug was a scheduled drug, chances of making
a mistake or having a confusion were not there. Dealing with the
said argument, the Court had observed as under :
....It is true that the said drugs are supposed to be sold on doctors
prescription, but it is not unknown that the same are also available
across the counters in the shops of various chemists. It is also not
unknown that the chemists who may not have CALMPOSE may
pass off the medicine CALMPROSE to an unwary purchaser as the
medicine prepared by the plaintiff The test to be adopted is not the
knowledge of the doctor, who is giving the prescription. The test to
be adopted is whether the unwary customer who goes to purchase
the medicine can make a mistake. (Emphasis supplied)...
377
examination of both the products or to compare them by keeping
them side by side, but one has to be guided by common sense and
general observation. If, at the first sight, both the products appear
to be similar, one can very well say that there is an element of
deceptive similarity in the products
6. (“45, P-142) Having prima facie come to a conclusion that the
product of defendant No. 1 is deceptively similar to that of the
product of the plaintiffs, the question is now with regard to grant of
injunction”.
7. (“50, P- 143) 50. In the instant case, the plaintiffs have satisfied
the Court that there is a prima facie case in favour of the plaintiffs.
The balance of convenience is also in favour of the plaintiffs, and
as stated hereinabove, the product is a medicinal product, and
therefore, it would be also in the interest of the consumers, if the
defendants are restrained from manufacturing the product which is
deceptively similar to the one which is manufactured and sold by
the plaintiffs. In the instant case, the position of the plaintiffs is
surely superior to that of the defendants, and therefore, one can
have no hesitation in saying that the balance of convenience is
definitely in favour of the plaintiffs. When the defendants
knowingly manufacture a product under trade name VICAS having
get up similar to that of VICKS manufactured by the plaintiffs, the
Court should not hesitate in grant of injunction in favour of the
plaintiffs so as to prevent damage being caused to the plaintiffs.
Moreover, looking to the principles laid down by the Honble
Supreme Court in the case of N. R. Dongre v. Whirlpool
Corporation, 1996 (5) SCC 714, the trial Court has rightly
protected the plaintiffs by granting the injunction in their favour
and I do not see any reason to interfere with the impugned
378
interlocutory order passed by the trial Court, and therefore, the
appeal is dismissed with no order as to costs Appeal dismissed”.
379
various product in its kitty which have MAC as the suffix. After
recording the said features emerging from the case before it, the
learned court has proceeded to record that it has reason to believe
that if the ex parte injunction was not granted at this stage then the
defendant ( i.e. present appellant) would be able to enjoy the
goodwill earned by the plaintiff company. The learned court,
except recording the said reason, has not given out any reason from
which it can become clear that for the particular reason, the learned
court believed that if the notice for a period of one week or at least
three days before granting injunction was issued, then within that
short period of one week or three days, the object of granting
injunction would be defeated”.
3. (20.3, P. 4538) In the present case, the said aspect becomes more
relevant and necessary, besides the importance and relevance on
account of proviso under Rule 3, in light of the fact that the
appellant has started manufacturing and marketing its product
under the trade mark GEMIMAC since May, 2007 i.e. since about
one year and also for the reason that the plaintiff itself had waited
for atleast ten months after issuing the "cease and desist notice"
Ultimately, in pars 24.1., 24. And 25 the learned Judge observed
as under:
4. (20.4. P.4538) The learned Court does not appear to have
addressed and/or considered the said feature of the present case.
The learned Court also does not appear to have addressed the issue
that if the concern for general public was, as is now claimed by the
plaintiff on the ground that the alleged phonetic and visual
similarity would result into deceiving people, so important in its
mind, then in that event the plaintiff would have immediately
380
moved the Court after it received reply dated 3-7-2007 and would
not have waited until 29-5-2008.
5. (22.1.P. 4539) When the impugned order is examined in light of
the law laid down by the Hon'ble Apex Court with regard to Rule 3
of Order 39 and its proviso, the question which arises is as to
whether the impugned order contains or gives out the reasoning
which convinced the learned Court to make ex parte interim
injunction.
6. (23.1.P. 4540) However, as noticed hereinabove earlier, when an
order granting ex parte injunction is passed, then in addition to the
reasoning as regards the strong prima facie case, balance of
convenience and irreparable injury which cannot be compensated
in terms of money, the reasons disclosing as to how and why a
prior notice of period of one week or atleast three days would so
gravely defeat the object of granting injunction that the plaintiff
cannot withstand such short delay also are required to be recorded.
The impugned order lacks in this requirement and requires this
Court to proceed on assumption that the learned Court must have
satisfied itself about the expediency and only then waived the
notice. This would defeat the right and expectation of the other
side, besides the requirement prescribed by the proviso.
7. (24.P.4540) The impugned order is also required to be examined in
light of the facts of the present case. It is pertinent to recall that the
plaintiff filed the suit after almost ten months since the issuance of
the "cease and desist notice". In the backdrop of this vital fact, the
learned Court ought to have addressed the issue that when the
plaintiff itself waited for a period of almost ten months since the
"cease and desist notice" and for almost same period since the
appellant started marketing the product, how would or how could a
381
period of 7 or atleast 3 days defeat the object of granting
injunction.
8. (24.1 P. 4540) It is as much necessary to record the reasons in
response to such issue as it is to consider the issue and the order
ought to disclose that both aspects have been met. As noticed
hereinabove earlier, it is not only the other side's legitimate
expectation, but also a right to know the reasons which convinced
the Court to waive notice and to not give a period of atleast 2-3
days to the other side by issuing notice before granting interim
injunction”.
9. (24.2. P-4540) “On perusal of the impugned order, it is difficult to
say that the learned Court has disclosed the reasons which weighed
with it for not issuing prior notice and for waiving the said
requirement and issuing ex parte interim injunction”.
10. (“25.- P. 4540) In light of the facts of the present case and on
perusal of the operative part of the impugned order, which gives
out that the returnable date of the process issued by the Court in
respect of the notice of motion is 18-6-2008, it would be of little
consequence now to set aside the order and it is now also not of
any effective or practical purpose to decide as to whether the
impugned order, which apparently lacks in the reasoning as regards
the issue on hand, should be quashed and set aside or not inasmuch
the process is, as noticed hereinabove earlier, made returnable on
18-6-2008. While dealing with the appeal, it is also relevant for this
Court to note that the impugned order is dated 29-5-2008 and the
appeal is filed in the Registry on 10-6-2008 and circulated on 11-6-
2008 whereafter it came to be adjourned with consent of the
appellant for a day so as to enable the opponent i.e. the original
plaintiff to file reply affidavit”
382
11. (27. P.4541) Upon having noted that the impugned order falls short
of the requirement prescribed by Rule 3, Order 39 and its proviso
and does not comply with the said requirement and the direction of
granting injunction until further order is also unwarranted and
unreasonable, this Court in the peculiar facts of the case, the
following order and directions would suffice and serve the interest
of justice and the subject appeal can be, justifiably, disposed of
with below mentioned directions :
11.1 (i) The interim injunction granted by order dated 29-5-2008 is
restricted and limited until 18-6-2008 and shall not operate beyond
18-6-2008. However, it would be open for the learned Court to
pass appropriate order, including similar or any other order of
injunction, after hearing the parties.
11.2 (ii) The appellant herein shall positively file its reply-response to
notice of motion (and if it so desires to the suit also) before or
atleast on 18-6-2008 with a copy to the plaintiff and shall not seek
any further time to file reply to the notice of motion and/or suit. In
the event, the opponent prays for further time it would be open for
the trial Court to pass any appropriate order after hearing the
parties to the proceedings.
11.3 (iii) If the appellant (original opponent) files its reply-response
before or atleast on 18-6-2008 then it would be open to the plaintiff
to file rejoinder, if need be, on or before 20-6-2008 and the learned
Court, would thereafter, proceed to hear and decide the matter i.e.
the injunction application on urgent basis, and if the roster so
permits, by hearing the same on day-to-day basis.
11.4 (iv) In the event, the plaintiff has not to file any rejoinder then it
would disclose the said decision on 19-6-2008 and the hearing of
383
the injunction application shall, in that event, commence from 19-
6-2008 and the learned Court need not wait till 20-6-2008.
11.5 (v) It would be open to the learned Court to pass appropriate order,
though not of unlimited nature, to protect the interest of the parties
and subject-matter of the suit, until the hearing of the injunction
application is concluded and the order with regard to the interim
injunction is passed. But this can be done after hearing and taking
into account the submissions of the parties to the proceedings.
11.6 (vi) The original plaintiff i.e. the present opponent would maintain,
separately, accounts of production, sale, receipts etc. of the product
in question from 29-5-2008 onwards until further orders in this
regard are made by the learned Court and it shall file the same on
the record of the said suit, every fortnight.
12. (“28, P-4542) The learned Court would pass appropriate order,
including interim order on merits after hearing the parties and
without being influenced by this order and by taking into account
the well settled and recognised principles relevant for deciding the
passing off action and prayer for interim relief in passing off
action”.
13. (“29, P- 4543). This Court is conscious of the limitation in dealing
with Appeal From Order against an ad-interim and discretionary
order, however, when it is shown that while passing the
discretionary order, the learned Court has failed to observe the
conditions prescribed by the Code, then it is necessary and justified
for the appellate Court to step-in and interject. In the present case,
the learned Court, not only passed ex parte order after passage of
almost ten months since the cease and desist notice and failed to
disclose the reasons as to why the laxity on the part of the plaintiff
was not considered a ground sufficient enough for issuing prior
384
notice of at least three days, but the learned Court also failed to
make the process issued on notice of motion immediately and has
made it returnable after almost 20 days and granted an unlimited
injunction i.e. did not restrict the injunction till the date on which
the notice is made returnable. It is in this view of the matter and in
light of the aforesaid discussion that this Court considered it
appropriate to issue the aforesaid directions and to restrict the
injunction till 18-6-2008 i.e. the returnable date of the notice.
Hence the aforesaid order”.
14. Thus the learned Single Judge held that the trial court ought to
have given reasons while passing ex-parte order. As reasons were
not recorded, the court disposed of the appeal from order with
directions contained in para 27 (which is quoted earlier).
385
1.1 (9. (P- 3759) Even otherwise on merits also, plaintiff has not
case. According to plaintiff, defendants have infringed
registered trade-mark 'OCID' by using their mark
'DOMOCID'. At the outset, it is required to be noted that
nothing is on record whether plaintiffs are manufacturing
drugs in the trade-mark 'OCID'. Plaintiffs are not using any
trade-mark by the name of OCID and only its variance
OCID-B, OCID-10, OCID-20 and OCID-QRS are used and
they are available in the market. It is to be noted that OCID'
is not a coined word and it is a common word, against which
it is the case on behalf of the defendants that trade-mark
'DOMOCID' is coined of which DOM stands for
DOMPERIDONE and 0 stands for OMEPROZOLE and CID
stands for ACID Control and it is a combination drug used
for ulcer. Thus, comparing drugs 'DOMOCID' with 'OCID'
and in order to find out whether the former is deceptively
similar to the later and whether it is likely to deceive or
cause confusion, each of two words must be taken as a
whole. The comparison has not to be microscopic but
general and casual as that of a customer walking into a shop.
On such comparison, the mark 'DOMOCID' to be dissimilar
to 'OCID', visually and structurally compared, the
'DOMOCID' is different. 'DOMOCID' has more letters than
'OCID'. It starts with different consonant. Phonetically also
impugned mark is different. Word 'DOMOCID' when
pronounced cannot be mistaken for 'OCID' as it is thus
phonetically different although the entire word 'OCID' is
absorbed by it. The prefix 'DOM' stands for DOMOCID' is
coined of which DOM stands for DOMPERIDONE and 0
386
stands for OMEPROZOLE and CID stands for ACID
Control. Thus, 'DOMOCID' is visually, phonetically and
structurally different from word 'OCID' and it is, thus neither
deceptively similar nor the use thereof is likely to deceive or
cause confusion. It is to be noted and as stated above, both
drugs are Schedule 'H' drugs and same cannot be made
available without prescription of qualified medical
practitioner".
1.3 "12 (P- 3760) Thus, on facts, plaintiff has failed to prove any
prima facie case and is not entitled for injunction as prayed
for. As on facts this Court has held that mark 'DOMOCID' is
not similar to that of 'OCID' and is not likely to create any
confusion, this Court is not considering submissions of
defendants with respect to delay and laches etc. Said
question is kept open i.e.whether injunction allowing
infringement of trade-mark can be refused on the ground of
delay and laches".
387
1.4 After noting the judgment in wander Ltd V. Antox India Pvt
Ltd., 1990 (Supp) SCC 727, the learned judge observed in
para 14 as under:
1.5 " 14. P- 3761) In view of above and for the reasons stated
above, it cannot be said that learned trial Court has
committed any error in refusing to grant in petition as prayed
for which calls for interference of this Court in exercise of
appellate jurisdiction under Order 43, Rule 1 of C.P.C.
Under the circumstances, Appeal From Order deserves to be
dismissed, and accordingly, it is dismissed. Ad interim relief,
if any, stands vacated. In view of dismissal of Appeal From
Order, no order in Civil Application".
(Appeal Dismissed)
388
The case of respondent No. 1 was that it had adopted the impugned
mark ULCIBAN in the year 1984 and was using the same since
then after obtaining the permission from the Drug Control
Administration in the State of Gujarat. In the counter statement
filed by respondent No.l, they denied that the registration of the
impugned mark was contrary to the provisions of sections 9, 11(a),
11 , 12 (1) or 18(1) of the Act. The main controversy centered
round the question as to whether the impugned mark was likely to
cause deception and confusion amongst the trade and public by
virtue of the use of the word CIBA as a prominent feature and
because the petitioner was the proprietor of a series of marks
consisting that word. The Assistant Registrar of Trade Marks was
of the op8inino that the impugned mark ULCIBAN comprised of
two prominent features ‘ULCI’ and ‘BAN’ and though the word
CIBA was included in the impugned mark by virtue of the presence
of word CIBA, the word CIBA could not, by itself, be pronounced
independently and therefore, it did not occupy any prominent
position in the impugned mark ULCIBAN. He was of the view
that the registration of the impugned mark of respondent No.l was
not likely to cause any confusion or deception. The Assistant
Registrar accepted the suggestion of the learned counsel for
respondent No. 1 for amending the specification of goods so as to
read ‘medicinal and pharmaceutical preparation containing
CIMETIUDINE for the treatment of ulcer and to be sold on the
written prescription only instead of pharmaceutical and medicinal
preparations which appear in the advertisement in the Trade Marks
Journal. The opposition of the petitioner was, therefore, refused
and the Assistant Registrar directed the application to proceed to
registration after the said amendment in the specification of goods.
389
Ultimately, the learned Judge in Paras 7, 8 and 9 observed as under:
“7. On the question whether the impugned mark was likely to cause
deception and confusion in public and trade,. The Assistant
Registrar appears to have over simplified the matter by splitting
the impugned mark ULCIBAN into two parts which he called
prominent features, namely ULCI and BAN and holding that
having split the word into two parts, it was not possible to
pronounce the word CIBA which lost its identity by virtue of such
splitting up. He was of the view that the letters C.I.B.A had
become insignificant as they were not used either as a suffix or as a
prefix. He further held that, phonetically also the registration of the
impugned mark was not likely to cause confusion or deception. It
is true that the word CIBA is not used either as a suffix or as a
prefix in the impugned mark ULCIBAN. However, it cannot be
said that a word can cause deception or confusion only if it is used
as a prefix or a suffix. What is relevant in such a case is to find out
the common part. The word CIBA which is registered trade mark
of the petitioner constitutes the common part in the impugned mark
ULCIBAN. It is evident that the said common element namely the
word CIBA would be more firmly fixed in the mind of the
customer. In the impugned mark, it is evident that the common part
CIBA is more emphatic and highly distinctive because the
preceding letters UL and the last letter ‘N’ have no distinctiveness
of their own. The said common part namely CIBA is not merely
descriptive of the goods nor is it a commonly used word in the
trade and therefore its use in the impugned mark cannot be
defended on that ground. Therefore, visually, the word CIBA
appearing in the impugned mark Ulciban because of its
390
distinctiveness as common element with the registered trade mark
CIBA cannot but attract attention. From the record, it appears that
the evidence in support of the application which is the affidavit of
Mr. Vijay Shah, a glossy pamphlet containing trade literature is
produced at Ann. B. On its first page, the mark Ulciban is
prominently written in the lower half and which is also written in
the middle on the left side. On the second and third pages again,
the impugned mark Ulciban is prominently written at the top and at
the bottom on both the pages. In none of these three pages, there is
any reference to the fact that the said mark belongs to the
respondent No.l. On the last page at the top, the impugned mark is
written prominently and it is only at the bottom, there is a writing
‘For further information please write’, below which the name of
the respondent No. 1 is printed. Even at that place, it is not written
that the product is their own. It is prominently written impugned
work, the word CIBA which alone stands distinctive by virtue of
its being registered trade mark of the petitioner, would attract the
attention of a reader. The approach adopted by the Assistant
Registrar by separating the letters ULCI from BAN is not
warranted because that is not the way in which an average reader
will read the word. His attention is bound to focus on the highly
distinctive portion of the word which has its root that is its essential
part of the word namely CIBA. It is, therefore, clear that optically
the impugned mark is likely to cause deception or confusion as to
the source of the goods in whose connection it is used and a person
is likely to be led into a belief that the goods bearing the impugned
mark are of the proprietors of the trade mark CIBA that is the
petitioner. The evidence on8 record clearly shows that series of
marks namely CIBAZOL and CIBALGIN are also the registered
391
trademarks of the petitioner. This is an additional factor which may
cause use of the impugned mark deception in the public and the
trade by leading one to believe that the gods in respect of which
impugned mark is used are also one of the families of marks
belonging to the registered proprietor. When a number of marks all
have a common element, may it be prefix suffix or root, i.e.
essential part or the core of the mark, they come to be associated in
the public mind as indication of the same source”.
392
“9. Phonetically also, it is evident that pronouncing the impugned
mark ULCIBAN, the sound of the word CIBA is quite distinct and
would be likely to cause confusion or to deceive one to believe that
the impugned mark is in respect of a product coming from the same
source bearing the trade marks CIBA, CIBAZOL or CIBALGIN.
We are not bound to scan the words as we would in a question of
comparatio literarum. The Court must be careful to make
allowance for imperfect recollection and the effect of pronunciation
and speech on the part not only of the person seeking to buy under
the trade description but also of the shop assistant ministering to
that person’s wants. Though first syllable may be important in
deciding phonetic similarity, it is not always the rule that when first
syllable differs there should be presumption that there is no
similarity. As pointed out hereinabove, the common element has to
be identified in the impugned mark and the registered trade mark
and if such common element is highly distinctive and is not just a
description or a commonly used word, the likelihood of deception
or confusion would be very much there despite the fact that it may
not constitute part of the first syllable and the impugned mark. The
fact that the goods under the impugned mark and under the
registered trademarks belong to the same species of pharmaceutical
and medicinal goods make deception or confusion more likely to
occur. In respect of pharmaceutical products, it is obviously more
important that the public should be protected from the
consequences of deception and confusion”.
393
In Para 12, the learned judge considered one judgment of the
Gujarat High Court. In Para 13, the learned judge considered the
case of American Home Products Corporation v. Mac Laboratories
Pvt Ltd,.302. In Para 14, the learned judge considered the case of
E.R. Squibb ad sons Inc. v. Curewel India Ltd303. Ultimately, in
Para 15, the learned judge held as under:
“In view of the above discussion, it is clear that the impugned mark
is likely to cause deception or confusion in the trade and the public
having regard to resemblance that it bears by virtue of
incorporating within it the highly distinctive part CIBA which is
the registered trade mark of the petitioner who is also the proprietor
of the other registered trademarks CIBAZOL and CIBALGIN
which incorporate the said distinctive mark CIBA. Therefore, the
proposed mark cannot be registered as a trade mark of the
respondent No.l in view of the prohibition contained in sections
11(a) and 11(e) of the Act. The Registrar ought not to have
exercised his discretion under sub section (4) of section 88 of the
Act in accepting the registration even on the ground that the
respondent No.l had tried to dishonestly use the impugned mark in
view of the fact that it was in the same business and was well
aware of the petitioner’s registered trademarks CIBA, CIBAZOL
and CIBALGIN. As noticed in the earlier part of this judgment, the
glossy pamphlet containing literature of the impugned mark,
ULCIBAN while prominently writing the mark ULCIBAN at
several places on first three pages of the pamphlet, does not even
refer to the source from which the goods emanated. Even on the
last page of the pamphlet, it is not indicated that the said product
394
bearing the impugned mark ULCIBAN was manufactured by the
respondent No.l. It is only mentioned in a comparatively small
print at the bottom that, for further information, one may write to
the respondent No.l. It is also significant to note that there was a
marked decline in the sale of the said product under the impugned
mark ULCIBAN, even if the statement of sale figures attached with
the affidavit of the Power of Attorney holder of the respondent
No.l Company at Annexure F was taken to be true. In 1985, then
sale of that product was nearly Rs 54 lakhs which has slide down to
about Rs 27 lakhs in 1986, about Rs 15 lakhs in 1987 and about Rs
9 lakhs in 1989. From the material on record, it appears that the
respondent No. 1 made use of the impugned mark by incorporating
the highly distinctive mark CIBA in it dishonestly with a view to
take advantage of the reputat8ino built up in respect of the said
distinctive mark CIBA. Therefore, the Registrar ought not to have
exercised his discretion in accepting the application even on that
count also”.
395
other trademarks for specification of the goods medicinal
preparations, pharmaceutical and veterinary preparations.
1.3 The Registrar, by his Order dated 15.5.1991, found that though
letters 'CIBA' are included in the impugned mark but that could not
be pronounced independently and, therefore, did not occupy any
prominent position in the impugned mark 'ULCIBAN' and that
registration of impugned mark of the respondent was not likely to
cause any confusion or deception because the word CIBA in the
impugned mark cannot be pronounced independently. Upon this
reasoning, the Registrar held that there is no likelihood of
deception or confusion in terms of section 11 (a) of the Act of 1958
by the use of word ULCIBAN as trade mark. Thus,overruled the
396
objections and having found the plaintiffs mark eligible for
registration and of proprietorship of the mark, allowed the
application by rejecting the opposition after incorporating the
amendment in the specification of goods as suggested by the
applicant, so as to read "medicinal and pharmaceuticals
preparation" containing 'CIMETIDINE' and to be sold on the
written prescription only.
1.4 Against that, an appeal was filed before the Gujarat High Court,
(before the learned Judge R.K. Abichandani which has been
reported in 1997 GLRP) Allowed the appeal of CIBA Geigy and
thus rejected the application of Torrent Laboratories LTD. for
registering the word 'ULCIBAN'.
1.5 Being aggrieved against the judgment and order of the learned
Single Judge dated 5/6.5.1192, Torrent Laboratories Ltd.,
appellant, in appeal
1.6 The Division Bench considered the facts of the case, findings of the
learned Single Judge, arguments of the advocates for the appellant
i.e. Torrent Pharmaceuticals Ltd as well as arguments of the
advocates for the respondent- Ciba Geigy. The Division bench also
considered various judgments of the High Court and the Supreme
Court and observed as under:
397
it is coming from the same source as some other goods bearing a
similar mark which he is familiar with. This is deception or
confusion as to trade origin. The third type of deception or
confusion that may come into existence or is likely to come in
existence in a situation where a person looking at the mark may not
think that it is the same as the one with a different brand in his
mind but the similarity may make him believe that the two are in
some way or other connected with each other. This is in area of
deception or confusion, concerning trade relations.”
1.9 “If one applies phonetic test, one cannot conceive that word
ULCIBAN can be pronounced without emphasis of syllable of 'UL'
and 'N'. Neither the first syllable UL can be slurred nor last syllable
'N' can be slurred to the extent to give any prominence to the word
'CIBA' in any form of speech. We are not tempted to divide the
word ULCIBAN in three independent parts UL-CIBA-N to find
similarity.”
398
1.10 “We are unable to agree with the learned Single Judge ,with great
respect, about the conclusion to which he has reached by dividing
the word ULCIBAN into three portions UL-CIBA-N and finding
similarity in the use of CIBA. If that were sufficient to reach the
conclusion about the impugned mark being deceptively similar to
one owned by the respondent, in no case, the word which is already
registered as trade mark can be used by any one forming part of
larger world treating it to be a trade mark and it would become per
se the mark likely to cause deception or confusion. But this is not
law and issue has been joined to that aspect. The only caution is
that scrutiny in such case may be much greater to find out whether
the words which have been used as prefix or suffix as additions, in
fair and reasonable manner are of such insignificance that only
essential features of existing mark gives out an impression to cause
confusion in respect of the goods or trade origin or trade
connection as the case may be.”
1.11 “We have noticed that ordinarily in a multi syllable word prefix
syllable is of prime importance as essential feature of the mark.
Though it is not an inflexible rule. However, on the evidence of
opponent itself the mark CIBA is forepart of the corporate name of
the company and is used as PREFIX of many of its registered
marks as CIBAZOL and CIBALGIN which constitute some of
marks containing word CIBA. That is to say, that distinctive
feature of opponent's mark CIBA is in its use as prefix of various
products connected with it. In other words, the essential feature
which is likely to strike in the mind of an average man using one or
other goods of the series is the word mark as prefix with some
other letters like CIBAZOL or CIBALGIN suggesting zol or !gin
399
are likely to tag in memory with CIBA standing out as prefix in the
mind, if seen in this light also, the syllable CIBA in the middle are
likely to call attention with average customer of opponent's goods
in mind. It may also be observed in this connection that under
section 9, a name of the company individual or firm is eligible to
be registered in part A of the register without proof of
distinctiveness only if such word mark is presented in particular or
specific manner. According to case of opponent word CIBA is fore
part of the company's name that is to say word mark is preferable
to company's name without any evidence for its presentation in
special or particular manner.”
1.13 “By taking the two words together as a whole, and taking into
consideration that the word mark CIBA is applied to number of
goods in the medicinal and pharmaceutical preparations showing
trade origin of the goods and proposed mark in respect of medicine
falling under schedule H of the Drugs and Pharmaceutical rules and
considering the kind of customer who are likely to buy goods in the
circumstances viz. on prescription of the registered medical
practitioner and from licensed dealer only and also considering the
fact that two marks in question are single word consisting of multi
syllable properties and that the proposed mark contains, in the
400
middle of it, whole of the mark of the opponent and both the marks
are to be used without any distinctive feature in presentation of
medicine and apart from the fact that the impugned mark contains
whole of the opponent's mark in the middle of it, we do not find
any such similarity, phonetic or ocular, in the two marks, to think
that if the proposed mark is used in fair and ordinary manner, it is
likely to cause confusion in the mind of ordinary buyer with
average intelligence.”
1.14 “In the circumstances of the case, we are also of the opinion that
the finding of the learned Single Judge that the applicant has
dishonestly used the word CIBA as part of its proposed mark
deliberately is not well founded particularly in view of the fact that the
reason given by the Registrar about the adaptation of word ULCIBAN
as its trade mark for labeling the drug meant to be used for curing
ulcer was neither found to be wrong nor was challenged. As it is well
settled, that no precedent in the matter of deciding question whether
such resemblance as is likely to deceive or cause confusion which in
the very nature of things incapable of definition offers a parallel, each
case must depend upon its own facts, we resist temptation to examine
and distinguish large number of cases to which our attention has been
drawn during the course of hearing as illustrative case by both the
learned counsel. However, we may observe in all the cases cited either
prefix has been held to be important or suffix has been held to be
important or in other cases, part of the word has been held to be of
greater consequences, then the other for reaching conclusion for or
against such resemblance. But none of the cases presents a parallel to
one before us, where contention is to ignore prefix and suffix both and
401
find resemblance with the middle syllable by ignoring the opening and
terminating syllables.”
Appeal Allowed. Judgment & Order of learned single judge is set aside.
The plaintiff - Astra Ltd- filed the suit against the defendants-TTE
Pharma- for permanent injunction restraining the defendants from
infringing the plaintiffs trade mark ‘Betaloc’ registered under the Trade
Marks Act in class 5 in respect of pharmaceutical preparation by use of
the impugned trade mark Betalong. The plaintiff is a public limited
company duly incorporated and registered under the provisions of the
Companies Act. The plaintiff is proprietor of trade mark ‘Betaloc’ which
is registered on 16.6.1977 in class 5 i.e. pharmaceutical preparations and
is entitled to its extensive use. It is the case of the plaintiff that defendant
is also carrying on similar business in manufacture and sale of
pharmaceutical and medicinal products. It is the case of the plaintiff that
in or about November 1987, the plaintiff became aware of the
manufacture and sale of pharmaceutical product under the trade name
‘Betalong’ by the defendant. Notice correspondence ensured. However,
the defendant refused to comply with the requisitions made by the
plaintiff in the cease and desist notice. According to the plaintiff, the said
goods of the defendant bearing the trade mark Betalong are being passed
off and are likely to be passed off as and for the well known goods of the
plaintiff sold under the trade mark Betaloc.
2.The defendant denied the allegation that they are passing off their goods
as alleged by the plaintiff. It is their case that they decided to manufacture
and launch a new product for controlling hyper tension and treatment of
402
angina pectoris and arryhanias. For that product, they selected trade mark
‘Betalong’ and in the month of March 1986, they applied for registration
of that trade mark under the Act and the application was still pending.
The new product was marketed and sold under the trade mark Betalong
and the first sale took place on 29.12.1986. According to the defendant,
during the period between Dec. 29, 1986 and May 31, 1987, the
defendant has sold the said product under the trade name Betalong of the
sizeable amount and during the period 1.6.1980 to 18.11.1988 sale was
also of sizeable amount. It appears that the plaintiff filed a suit for passing
off as well as infringement and the Court granted injunction on
18.3.1988. Prior to injunction, the said product Betalong has been
continuously marketed and sold all over India and that the said product
has been identified with the defendant and has acquired good reputation
and goodwill. It is the case of the defendant that the said product
Betalong is a drug which falls under schedule H to the Drugs and
Cosmetics Rules and as such can be sold only by a chemist holding
appropriate license under the said Rules and that too on the prescription
of a registered medical practitioner. The plaintiffs product Betaloc is also
a drug falling under schedule H to the said rules and as such the
plaintiffs product Betaloc can only be sold by a chemist holding
appropriate license under the said rules and that too on the prescription of
a registered medical practitioner. According to the defendant, in coining
the word trade mark for its said product took the work ‘Beta’ as
representing ‘beta’ receptors’ and coined it with the word Tong’
representing the long duration for which It blocks or controls the action of
the said hormones of beta receptors. According to the defendant, the said
trade mark Betalong was coined and adopted by the defendant for its said
product without reference to the plaintiffs trade mark Betaloc. According
403
to the defendant, their trade mark Betalong can by no means be called
similar or deceptively or confusingly similar.
The learned Judge considered provisions of the Act and also considered
Parameters for deciding the question of deceptive similarity in Para 6
(page 39 of report).
4.1 (Para 18, p 43) “In my view, in the instant case, phonetically
visually and structurally both the marks are similar. Actual
deception is not necessary to be proved. What as material in the
circumstances is likelihood of deception”.
4.2 Thereafter, the ,learned Judge considered the judgment in the case
of Burroughs Welcome (India) Ltd v. G.K.Sharma and King
404
Scientific Research Centre, 312 and also judgment in the case of
Ranbaxy Laboratories Ltd and observed in Para 23 as under :
4.3 (Para 23, p 45) “In my view, in the present circumstances, doctor’s
prescription factor has lost its importance since the reality of the
situation cannot be ignored. In India, scheduled drugs which are to
be sold under doctor’s prescription are even sold without
production of doctor’s prescription and as such reduce the
weightage that can be given to this aspect of the matter while
considering the question of deceptive similarity. The Court cannot
close its eyes to the existing circumstances and judicial notice of
the factual aspects in existence has to be taken., In case where the
fact of the medicines being sold on doctor’s prescription has been
taken into consideration for deciding that there was no likelihood
of confusion being created, the marks were not visually,
phonetically and structurally similar. In the instant case, the two
marks Betaloc and Betalong being visually, phonetically and
structurally similar and so close to each other that it outweighs the
weightage to be given to the factor that the goods are scheduled
drugs. The two marks are to be compared as a whole and the prefix
‘Beta’ cannot be ignored in the matter of such comparison”.
4.4 The learned Judge also relied upon Kerly’s Law of Trade Marks
and Trade Names (12th edition) on page 46 and ultimately, in Paras
28 and 29, observed as under:
4.5 (Para 28, p 47) Applying the three fold rests of phonetic, visual and
structural similarity and considering the various authorities cited
and referred here in above,. I am of the opinion that the plaintiff
405
has made out a very strong prima facie case for grant of
interlocutory relief s as prayed for in the Notice of motion.”
4.6 (Para 29, p 47) “...... Even assuming that there has been some delay
on the part of the plaintiff in approaching this Court as contended
by the defendant, firstly the question of delay has to be balanced
against the likelihood of the plaintiffs ultimately succeeding in
the action and where the strength of the plaintiffs prima facie case
is very strong, the plaintiffs delay in filing the action would not
disentitle the plaintiff to relief and it would be right to grant rather
than to withhold the interlocutory injunction prayed for. As stated
above,. In my opinion, the plaintiff has made out a very strong
prima facie case for grant of interlocutory relief and under the
circumstances, I hold that delay if any, on the part of the plaintiff in
filing the suit does not disentitle it to interlocutory relief on this
Motion. Moreover, as held by the High Court at Delhi in the case
of Hindustan Pencils Pvt Ltd. v. India Stationery Pvt. Ltd,.314
even where there is an honest concurrent user by the defendant
then inordinate delay or latches may defeat the claim of damage or
rendition of accounts but the relief of injunction should not be
refused. This is so because it is in the interest of general public
which is the third party in such cases, which has to be kept in
mind”.
406
14. Biochem Pharmaceutical Industries v. Biochem Synergy Ltd.
(coram: A.F.Shah J. as he then was).315
407
1.2 The plaintiffs alleged that sometime in October 1989, they
learnt that the defendant-Biochem Synergy- company which
has started for manufacture and sale of pharmaceutical and
chemical preparations and drugs got itself registered as
Biochem Synergy Ltd. under the Companies Act. The
plaintiff alleged that the adoption of the word ‘ Biochem’ by
the defendant was willful, deliberate and with the sole and
dishonest intention of exploiting and cashing upon the
reputation and goodwill of the plaintiffs in respect of their
mark Biochem and further to suggest a common origin of
goods. The plaintiffs alleged that by using the trade mark
‘Biochem’ as part of their trade name and trading style, the
defendants were committing acts of infringement of the trade
mark and passing off.
1.4 They did not receive any adequate response from the
Registrar and ultimately, on 29.4.1992, the plaintiffs filed a
suit against the defendants. The defendants raised various
defenses in this behalf. It is their case that the plaintiffs’
goods are sold by pharma chemists and druggists in strips of
10 tables/capsules at a time to members of public. The
defendant’s goods are never available to the members of the
public and are sold only to formulators like the plaintiffs
themselves. Therefore, there is no likelihood of the plaintiffs
or the defendants ever having a common customer. Thus,
the requirement of section 29(2) having been satisfied by the
408
defendants, it is clear that there is no likelihood of any
persons confusing themselves regarding the goods of the
plaintiffs and those of the defendants. According to the
defendants, they have set up a very modem and sophisticated
bulk plant in Madhya Pradesh employing 300 people and
having its project costs of about Rs 11 crores. The
defendants have about 8000 shareholders. Balance of
convenience also lies in favour of the defendants.
1.7 (Para 19, P 281) “Now., the legal position that emerges upon
consideration of the various decisions and the commentaries
cited at the bar, is that registration in part B of the Register
confers lower rights on then registered proprietor than
315 Re.
317 Re.
318 (1982) RPC 44
409
registration in part A ,in that such registration does not give
him the exclusive right to the use of the mark but is only
prima facie evidence that he has such exclusive right and
leaves it open to a defendant in an infringement action to
prove that the user of which the registered proprietor
complains is not calculated to deceive or to lead to the belief
that the goods the subject of such user are the goods of such
proprietor. If the mark is identical, the burden to prove the
defense under section 29 (2) will automatically shift on the
defendant. However, if the mark is deceptively similar, the
plaintiff will have to establish a prima facie case of
likelihood of deception or the causing of confusion. If the
plaintiffs establish that, then, as observed by Lord Evershed,
the defendants may still have another line of defense and
may say ‘thought it may generally be as you say a mark
likely to cause confusion, in fact in the way I have used it
and in the circumstances and environment in which I have
used it, it is not likely to cause confusion. It must be borne in
mind that the test as to likelihood of confusion or deception
is the same in a passing off claim and in order to avail of the
defense under section 29(2), the defendant will have to
establish both the requirements, namely, that the use of the
mark (a) is not likely to deceive or cause confusion and (b)
as indicating a connection in the course of trade between the
goods of the plaintiff and the goods of the defendant. Mere
absence of evidence of actual deception would not enable the
defendants to rely on the special defense under section 29(2)
as the Court can consider the possibility of such confusion or
deception having regard to the facts of the case .The
410
defendants will be able to rely on matters like get up,
packing or other circumstances to establish the defense
under section 29 (2) and the question as to whether the
defendant has discharged then burden under section 29(2)
will depend upon all facts of the case”.
1.8 “(Para 20, p 282) Then turning to the case at hand, the
plaintiffs’ registered mark is ‘Biochem.’ ‘Biochem’ is also
the house mark of the plaintiffs. It is also brought on record
that there are 28 registered trademarks belonging to the
plaintiffs and in use with the letters ‘Bio’ as prefix. The
plaintiffs are actively engaged in the business of
manufacture and sale of pharmaceuticals and drugs over 35
years having sale of more than rupees twenty crores. The
evidence produced on record also shows that the plaintiffs
have invested substantial amounts in promoting their
products, incurring expenses of more than rupees two crores
in the year 1990-91. Prima facie, in my opinion, the
plaintiffs have established that their mark ‘Biochem’ has
become distinctive of the plaintiffs’ goods. The defendants
are also using the word ‘Biochem’ as part of their corporate
name. The defendants have admitted that they are also using
the word ‘Biochem’ as a house mark. In fact the defendants
are not using any other trade mark for their goods. The
goods of the plaintiffs and the defendants fall in the same
class although the plaintiffs and the defendants’ trade
channels are different. But their goods cannot be said to be
poles apart inasmuch as both deal in drugs and in fact some
of the products are common even though the defendants sell
411
only in bulk. In my opinion there is likelihood of deception
and confusion, particularly, relating to the origin of the
goods. There is a clear possibility of confusion between the
two businesses suggesting that the defendants’ business is an
extension, branch or agency or otherwise connected with the
plaintiffs business. In these circumstances, I am unable to
accept the defense of the defendants that the use of the mark
Biochem is not likely to deceive or cause confusion or
indicate a connection between the goods”.
1.9 (Para 24, p 284). “This was a case where despite similarity
of trade mark and corporate name, the products to be made
by the two companies, type of customers, trade channels of
distribution were so different that it took the view that there
was no likelihood of confusion at all. I am prima facie
satisfied that in the present case, the material on record does
indicate that there is such likelihood of deception and/or
confusion”.
1.10 (Para 25, p 284) Another reason for injunction is that, the
defendants in their use of the word ‘Biochem’, in their
corporate name is that the plaintiff in their affidavit stated
412
that they wanted to enter in the business of bulk drug. In
Kodak’s case, one reason given for protection was that the
plaintiff company might want subsequently to extend their
business into the defendant’s field. Same is the case hear. I
have, therefore, no hesitation in holding that the defendants
have failed to establish the defense under section 29(2) of
the Act”. The learned judge considered two decisions of the
Bombay High Court in 76, BLR 146 and AIR 1993 Bom
237 in Para 26. Ultimately, in par 27, he observed as under:
1.12 (Para 28, p. 287 )”It would appear that inordinate delay
would be analogous or similar to laches. Again, laches and
or acquiescence which are a different concept may not be
sufficient ground to deny the relief of injunction. However, it
is not necessary to deal with these aspects since the
defendants have not even pleaded laches or acquiescence.
Suffice it to make a reference to the decision of Kirpal,J. as
413
he then was, in M/s Hindustan Pencils Pvt. Ltd. v. India
Stationery Co. and another,321, where the learned judge has
extensively discussed the legal position.”
1.4 (Para 30, p 287) “In the result, notice of motion is partly allowed
in regard to prayer based on infringement. I am declining interim
relief of passing off at this stage. Notice of motion is, therefore,
made absolute in terms of prayer clause (s). The defendants are
granted six months time to comply with order of this Court. No
order as to costs”.
414
15. Sun Pharmaceutical Industries Ltd, v. Wyeth Holdings
Corporation and another (Coram: R.M.Lodha (as he then was) and
Anoop V. Mohta JJ)323
415
1.2 The predecessors of the respondent No.2 have been using
the said trade mark as licensee of the respondent No.l. The
goods manufactured by the predecessors and by respondent
No.2 hare claimed to be strictly in accordance with the
formula and prescribed specifications by the respondent
No.l. The preparations in relation to trade mark ‘Pacitane’
are manufactured and sold in the form of tablets.
416
material on record passed interim order on 30.9.2003 in
terms of prayer clauses (a), (b) and (c) and therefore,
injunction was granted in favour of the plaintiffs and against
the defendants.
1.7 (Para 24, p 24) “I find from the record that the
pharmaceutical preparation of the respondent registered
trade mark Pacitane have been in use in India since 1955
with the relevant licensees under the drug control
authorities. The respondents pharmaceutical preparation
under the trade mark Pacitane used by the predecessors in
title of respondent No.2 since 1985.The said pharmaceutical
417
preparations have been manufactured and sold by respondent
No.2 on a very large and extensive scale. This is supported
by Chartered Accountant’s certificate from the year 1986 till
year 2002. The statement of annual advertisement and
promotional expenses incurred by respondent No.2 from
1986 to2002 is also on record apart from advertisement and
promotional expenses details. There is no doubt therefore in
view of the above as well as other materials on record that
the respondents are using continuously the said products
Pacitane prior in time. The respondents have earned
goodwill and reputation of the said pharmaceutical
preparation. Such a long exclusive use of the said products in
the market definitely acquires the goodwill and the
reputation and association of the said trade mark with the
respondent company. Prima facie, the respondents cannot be
held guilty of acquiescence as alleged by the appellants
counsel. It cannot be overlooked that the respondents
immediately after having knowledge of appellants illegal
action of adoption of alleged trade mark Parkitane resisted
by cease and desist notice dated 11th February 2000. The
same was duly within the knowledge of appellants as
appellants themselves contended that they had replied the
said notice dated 11th February 2000 by their reply dated 2nd
March 2000. It is also clear from the record that the
respondents by their second notice again objected the action
of the appellants. Therefore, the appellants were fully aware
of the existing product of the respondents in the market.
However, in spite of said objection, they continued to adopt
or use then trade mark Parkitane for the pharmaceutical
418
preparations and acted with full knowledge and
consequences. There cannot be claim of equity in their
favour. The appellants’ action in the facts and circumstances
of the case amounts to dishonest adoption of the trade mark
Parkitane”
419
the letter ‘I’ can be slurred. Those assertions of respondents
at this stage prevail over the case of appellants”.
1.11 (Para 32,p 27).” The materials on record indicate that the
respondents are registered owner of the trade mark Pacitane
since 1950 and they are prior user of the said mark. There is
no perversity or unreasonableness pointed out by the
appellants. Question of likelihood of a deception and the
nature of reputation earned by the respondents in respective
field and activity and the manner in which the particular
trade is being carried on’ and other surrounding
circumstances are relevant. We find no merit in the
contentions advanced by the appellants counsel. We are of
the view that unless sufficient and more evidence and
material placed on record, interim order already granted in
favour of the respondents does not deserve to be vacated
merely on the contentions raised by the appellants on the
foundation of publicia juris or generic as observed in (1997
PTC (19) (supra) . In Delhi case, trademarks were in
operation in two different fields i.e. Ayurvedic and
Homeopathic.”
420
1 Pianotist case325
2 (Cadila Health case Ltd v. Cadila Pharmaceuticals
Ltd.326
3 Medley Laboratories (P) Ltd v. Alkem Laboratories
Ltd.327
421
likelihood of a deception or confusion. If the product and
the trade in question fall within the protection of common
law rights and the Act of 1958, there is no reason to refuse
the interim order or any preventive order against infringer or
any such person”.
422
refusing or vacating the interim protective order in
infringement and or passing off suits,. On the contrary, there
is sufficient reason to pass such protective order if above
elements are available and made out on record at prima facie
stage, and unless these issues are proved otherwise or
contradicted in trial, there is no reason to depart from the
view taken by the learned Single Judge”.
1.17 “40 (p.30) Conclusion: “We are of then opinion that there is
common field of activity, common field and procedure for
selling such pharmaceutical medicines and above all material
medica is common or composition of such product is
common, there is more possibility of deception and
confusion and infringers actions definitely cause damage to
the goodwill and the reputation of the trade mark of parties
like respondents herein. The factual and actual material
including roaring sale in the market and continuous use and
marketing of the product of respondents entitled them in
protective or preventive order against appellants’ fraudulent
or dishonest use of the trade mark i.e. Parkitane. The equity
and the balance of convenience in such case lies in favour of
the affected parties and not in favour of the infringers.
Appellants’ plea of acquiescence or publicia juris is devoid
of substance as their own action is not in good faith and
appears to be deceitful. We, therefore, find no justifiable
reason to disturb the order of the learned Single Judge”.
423
16 Ranbaxv Laboratories Ltd v. Dua Pharmaeeuticals Pvt Ltd
Coram: B.N.KirpaLJ, as he then was)328
l.The plaintiff- Ranbaxy Laboratories filed suit alleging that its registered
trade mark Calmpose has been infringed by the defendant who is
manufacturing similar medicine and marketing under the mark of
Calmprose . The prayer in the suit was for perpetual injunction and for a
decree for rendition of accounts. In this case, the plaintiff also filed
application under O ./ 39, R.l and 2 of CPC.
The learned Judge considered the contentions of the plaintiff and also
other judgments and in pars 6 and 7, he observed as under:
1.1 (“6 page 45). It was then contended by the learned counsel
for the defendant that the said medicines can only be sold on
the doctor’s prescription and therefore there can be little
likelihood of confusion. It is true that the said drugs are
supposed to be sold on doctor’s prescription but it is not
unknown that the same are also available across the counters
the shops of various chemists. It is also not unknown that the
chemists who may not have Calmpose may pass off the
medicines Calmprose to an unwary purchaser as the
medicine prepared by the plaintiff. The test to be adopted is
not the knowledge of the doctor who is giving the
prescription. The test to be adopted is whether the unwary
customer who goes to purchase then medicine can make a
mistake”.
1.2 (“7, page 45) I have also been shown the strips
containing the medicines manufactured by the parties. It is
424
clear that the dimension of the strip of the defendant is
practically the same as the one made by the plaintiff; the
type of packaging is identical’ the colour scheme is similar
and even the manner of writing is not very different. This is
a clear case of an attempt by the defendant to pass off its
product as that of the plaintiff’.
425
plaintiff. That by virtue of license agreement dated 9.4.1981;
Hindustran Ciba Geigy Ltd is the licensed user of the said
registered trade mark Voltaren in India. The plaintiff is also the
registered proprietor of the trade mark Voltaren in India under No.
195 739 in class 5 in respect of medicinal and pharmaceutical
preparations and the trade mark Slow-K under No. 446207B in
respect of preparations of Potassium Salts for pharmaceutical
purposes. The registration of the trade mark Slow K and Voveran
are in force and Hindustan Ciba Geigy Ltd is the licensed users of
the said trademarks Voveran and Slow K in India. In fact,
Hindustan Ciba Geigy Ltd is licensed to manufacture medicines
containing Diclofenac sodium in India by virtue of a manufacturing
license issued by the Drugs Controller (India) dated 5.9.1985
Hindustan Ciba Geigy Ltd is manufacturing medicines containing
diclofenac sodium, under the trade mark Voveran in India and the
sales figures and advertisement expenses for past three years were
also mentioned.
426
to the trade mark Volta K or any other trade mark or trade name
which is identical to and/or deceptively similar or so resembling
the plaintiffs trade mark Voltaren or containing the expression
Volta and there from infringe plaintiffs statutory rights. The
plaintiff filed voluminous documents on record as well as
advertising expenses and various authorities were also filed.
Ultimately, the defendant filed reply and they also filed
voluminous evidence on record. Learned counsel for the plaintiff
as well as defendant also raised number of contentions.
2.1 “(23, p 14). 114 years ago in the year 1881 Lord Loingdale
'J'JA
2.2 (24, p 14). “It was also expressed in several cases that the
imitation of man’s trade mark in a manner ‘liable to mislead
the unwary, cannot be justified showing either that the
device or inscriptive upon the imitated mark is ambiguous
and capable of being understood by different persons in
different ways or that a person who carefully or negligently
examined and studied he might not be misled”.
427
Thereafter, the learned judge considered some of English
judgments. The plaintiff also relied on number of authorities.
In Paras 38 39, the learned judge observed:
2,.4 (Para 39, p 18) “The fact that the plaintiff has registered the
trade mark in India cannot be disputed. It cannot be said on
the facts and circumstances of this case that the plaintiff has
not been using the trade mark in India. The words Voltarten
and Volta K are phonetically similar and they are likely to be
misunderstood by all persons concerned in the field.”
428
shops. There are lakhs of primary health centres all over
India and wherever there are primary health centres there are
medical shops and invariably in the medical shops a man is
in-charge, who is not very much qualified except that he
undergoes a certificate course knowing about the names of
medicines. The wholesale distributors in their turn depend
upon medical representatives. These representatives are not
qualified in medicines but they take instructions from the
manufacturing co. and the wholesale distributors to inform
the doctors and the medical shops.
I do not for a moment state that the doctors do not know the
difference between Voltaren and Volta K. But when the life
has become very busy one is apt to commit an error and at
the time of prescription one cannot expect a doctor, however,
eminent he might be, to know the exact manufacturer of a
429
product. The doctors often go by the manufacture made by
leading companies in the world. Therefore, they have always
in their minds only big companies manufacturing medicines
and the new companies take a long time to get into the minds
of doctors. What happens is when a doctor gives a
prescription say Voltaren i.e. taken to the medical shop and
the medical shop tells the patient that Volta K is available in
his shop and it is the same as Voltaren. The medical shop
man also does not know the difference and he may
unknowingly say Volta K thinking that is the product of the
plaintiff co. That is where the confusion would arise.
Therefore, the argument that the scheduled drugs are sold
only on prescription and therefore there is no scope for any
confusion cannot at all be advanced.
The adding of the word ‘K’ at the end of the word Volta are
mentioning it as K-Volta, does not make any difference.”
430
Co. v. Sri Ambal and Co.m as well as subsequent Madras
High Court judgment -AIR 1974 Madras 7 and thereafter, in
Para 46, he observed as under:
431
hypothesis that physicians often do not know the generic
equivalents of trade names and vice versa. In particular, the
components of combination preparations, and even the
combination status itself were poorly known. Thus, there
may be a gap in the knowledge required to prescribe by
trade names and the knowledge acquired from non
commercial sources of drug information that use generic
names. This information gap and the confusion caused by
the multitude of names may have clinical consequences.
4.1 (Para 51, page 25) “It is well settled proposition of law that
proof of a fraudulent intention is not a necessary element in a
cause of action for passing off. The relevancy of fraud to
such an action is simply with the intention to deceive is
found, it will be readily inferred that the deception will
result. Who knows better than the trader the mysteries of his
trade?”
432
of the day the question of likelihood of confusion is a matter
for the eye of the Judge. The question is not whether the
Judge himself would be deceived by the defendant’s get up.
The question is whether in the light of whole admissibly
evidence the Judge is persuaded that an average shopper,
shopping in the places in which the article is available for
purchase and under the usual conditions in which such a
purchase is likely to be made is likely to be deceived”.
4.3 (Para 55, p 25) . I would add whether the doctors would be
remembered to remember the trade names and distinguish
between the product of the plaintiff and the defendant in the
instant case. I answer the question in favour of the plaintiff
and say that the doctors would not be able to distinguish and
would be under the impression that Volta K is a product
from Ciba Geigy”.
4.4 (Para 56, p 26). For all these reasons, I have no hesitation to
hold that the plaintiff has succeeded in establishing the
infringement and passing off. The plaintiff has made out a
prima facie case for the grant of injunction”.
433
principal office at New York. Plaintiff No.2 is a public limited
company having its registered office at Mumbai, Plaintiff No. 1 is
the proprietor of the trade mark ‘Colgate’ whereas plaintiff No.2 is
the registered or licensed user and has been manufacturing and
marketing dental products in India under the trade mark Colgate.
The defendant Anchor Health is a Company incorporated under the
Companies Act 1956 and carries on the business as manufacturers
and marketers of dental products under the trade mark Anchor. The
defendant is in the said business since 1996. The plaintiff have
been chasing the defendant since then as according to them, the
defendants have been trespassing the plaintiffs intellectual
property right and have filed as many as three suits against the
defendants pertaining to different products. It is the case of the
plaintiff that distinct feature of this combination is that around
l/3rd of the background of the upper part of the Can along with cap
is red colour and 2/3rd is in white colour and in that order the trade
mark Colgate appears in white against red. Thereafter, in 2002, the
said get up was improved and it was stated that because of the
distinctive shape of the container and the red and white colour
scheme and the overall get up that has helped the plaintiff in
attaining immense reputation and goodwill verging on acquisition
of a secondary significance as indicative of the trade of the
plaintiffs dental products. According to the plaintiff, get up of the
defendant’s product is so similar that it amounts to infringement of
trade mark and passing off its products. It is submitted that the
colour scheme red and white has been registered in respect of tooth
paste. The defendant resisted the contentions of the plaintiff and
cited various judgments. After considering various judgments cited
434
by both plaintiff and defendants, in Paras 52 and 53, the learned
Judge observed as under:
435
The criterion is the overall impression from the look of packaging/
container containing the goods and articles that can legitimately be
its rival. Such an action on the part of infringing party also has an
element of unfair competition.
5. (Para 57, p 498) . “Words ‘Colgate’ and ‘Anchor’ are distinct and
have not any of similarities either in look or in sound. That is why
the ingredients of trade dress, get up, colour combination, lay out
of the container or packing acquire significance and relevance for
determining the offence of passing off. This criterion flows from
the concept of action of passing off developed over the years that it
is the similarities and not the dissimilarities which go to determine
whether the action for passing off is required or not. That is why in
trade mark cases even the deceptive similarities are considered
sufficient for infringement of trade mark. If similarities of trade
dress are substantial from the look of then two goods, it comes
within the mischief of passing off’.
436
6. (Para 59, p 499) “Conscious imitation or substantial imitation of
colour combination or get up or layout of container again bares the
designs of the defendant in causing confusion in the minds of
customers. The Court is not required to find out whether there is
confusion or deceptiveness. The test is whether there is likelihood
of confusion or deceptiveness in the minds of unwary customers
irrespective of dissimilarities in the trade name”.
437
respect of tooth powder nor has any other manufacturer used colour
combination of red and white colour in respect of tooth
powder.’’Thereafter, in pars 67 and 69, the learned judge observed:
438
2 (Para 4, p 59) The trade mark SECEF, as per the plaintiff, was adopted
in the year 1998 and is a coined word and is a distinctive trade
mark. The said trade mark, according to the plaintiff, was available
in many countries since last 1980s and nearly 1990s and in India
since May 2002. There was also a discussion in various
pharmaceutical well known trade journals in the year 1988.
4 As per the plaintiff, the trade mark SECEF has been continuously
and extensively used in India since May 2002 and has registered
total sale of 20.7 crores till date. The plaintiff has alleged in the
plaint that the trade mark SECEF has earned substantial reputation
and goodwill and is associated with the goods of the plaintiff and
has acquired valuable common law rights.
439
chemists and doctors are bound to be misled or deceived in
believing these two products originating or approved by connected
with the plaintiff in some way even though the medicine in
question is schedule H drug.
9 (Para 20,p 62) One important factor in the present case is that the
said marks used by the parties have been shown in English
language and the defendant has used the first letter ‘C’ in place of
‘S’ of the plaintiff. The rest of the mark is the same as that of the
plaintiff. It cannot be denied that if both the marks are written and
read in other languages, then both the marks are identical.
440
Therefore, the contention of the defendant cannot be accepted that
the two trademarks are dissimilar.
10. (Para 21, p 63) The second contention of the defendant is that the
plaintiffs drug is prescribed for urinary respiratory tract infection
and acute otitis media; whereas the defendant’s product being an
antibiotic is prescribed mostly for post operative cases and the
ingredients of the two products are also different and used for
different purposes of disease. The defendant has also contended
that the plaintiffs product is used in tablet and oral suspension
form’ whereas the defendant’s product is only available in injection
form, therefore, there is no confusion and deception between the
two products in question.
12. (Para 23, p 64) As per well settled law, the actual confusion and
deception is not required in order to prove the case of passing off
even if the defendant has adopted the mark innocently and the
Court comes to the conclusion that the two trademarks are
deceptively similar, injunction under the said circumstances has to
be granted.
441
13. (Para 25, p 64) The third contention of the learned counsel for the
defendant is that the product of the parties in question is schedule
H drug and the same has to be purchased by the customers only on
the prescription of medical practitioner. The argument of the
defense of schedule H drug has already been dealt with in various
cases decided by the High Courts as well as the Apex Court
wherein the Court has rejected the said submission many times.
14. (Para 28, p. 66) This proposition has already been discussed in
various decisions passed by apex Court for the last more than four
decades in which they have clearly laid down that the rival marks
of the parties have to be compared as a whole. Therefore, it is not a
valid defense by the defendant to first split the mark in question
portion wise and then give its justification for adoption and use of
similar mark of the other party.
15. (Para 39, p. 69) In the case of Century Traders (supra), it was
observed that in order to succeed in an application for temporary
injunction, the appellant had to establish user of the aforesaid mark
prior in point of time than the impugned user by the respondents.
16. The learned Judge considered number of judgments and held that
both the marks are dissimilar. Regarding two products, the learned
Judge held that the plaintiffs product is used in tablet and oral
suspension form whereas the defendants’ product is only available
injection form. Regarding contention that product of both the
parties is schedule H drug, after relying upon the judgment in
Cadila Pharmaceuticals, and other judgment, the learned judge
rejected the said contention. Regarding contention that suffix of the
mark CEF is suggestive of the ingredient is also rejected.
442
Regarding using of similar trade mark by number of companies
was also rejected. As regards delay, the learned Judge rejected the
said contention also.
20. M/s National Chemicals and Colour Co. v. Reckitt and Colman of
india Ltd. (Division bench judgment by Mrs Suiata Manohar and
Kenia.JJ)338 (As they were then)
443
On 26th March 1971, National Chemicals and Colour Co, the appellants
applied for registration of a trade mark featuring two birds and the words
‘Bui BuF on it. They applied for registration of this trade mark in respect
of the goods falling in clause (2) of schedule IV of the said Rules. The
appellants, however, dropped the picture mark which they wanted to
register; they obtained registration of only the words ‘Bui BuF. This trade
mark was registered in the Trade Mark Journal dated 16th of September
1973. The trade mark did not contain any device or picture.
M/s Reckitt and Colman filed appeal under the provisions of the Trade
Marks Act before the High Court being Misc, petition No.52 of 1981.
The learned Judge by his judgment and order dated 27.9.1984 allowed the
appeal. He held that the trademarks are deceptively similar. He has also
held that the appellants’ mark was likely to deceive or cause confusion.
444
As a result, he set aside the judgment and order of the Deputy Registrar
of Trade Marks and dismissed the application of the appellants for
registration of their trade mark depicting two birds on a twig and bearing
the words ‘Bui Bui’ . Being aggrieved, the appellants filed appeal before
the Division Bench of the High Court. The Division bench considered the
case law and ultimately, in Para 12, the Division Bench held on page 79
as under:
“In the present case, in our view, the mark of a bird sitting on a twig is
very similar to the mark which is proposed to be registered, which is of
two birds sitting on a twig one of the birds being partially hidden by the
other. We agree with the learned Single judge that the mark proposed to
be registered is likely to cause confusion and is also deceptively similar to
the registered trade mark of the 1st respondent in respect of the same
description of goods”.
445
In Para 21, on page 82, it was further held-
1.1 On the material before the Court, there can be no doubt that
the appellant manufactures a pharmaceutical eye care
product under the name of ‘Ocuflox’ containing ofloxacin
and other compounds. According to the appellant, it first
used the mark on 9th Sept. 1992 after which it has marketed
the product in several countries in Europe, Australia, South
Africa and South America and has obtained registration of
446
the mark in Australia, Bolivia, Mexico, Peru, South Africa,
Canada and the United States of America. It has also applied
for registration of the mark Ocuflox in several countries
including India. These applications are pending. The
appellant has claimed worldwide sales of 5960034 units of
Ocuflox worth US $ 1, 51,000 in 1993; US $ 7,064,472 in
1994; US $ 14,344,010 in 1995 and US $ 10,974.869 for the
period January to August 1996. It has also claimed that in
the United States alone it spent US $ 0.3 million in 1992, US
$ 2.1 million in 1995 and US $ 1.9 million between January
and August 1996 on advertisement and promotional
literature. The appellant has claimed that it has earned a
considerable reputation in all these countries in respect of the
product by extensive sales and wide spread advertisement in
medical journals which are circulated in India.
1.2 (Para 11, p. 264)- An action for passing off, as the word
‘passing off itself suggest, is to restrain the defendant from
passing off its goods to the public as that of the plaintiffs. It
is an action not only to preserve the reputation of the
plaintiff but also to safeguard the public. The defendant must
have sold its goods in a manner which has deceived or would
be likely to deceive the public into thinking that the
defendant’s goods are the plaintiffs.
1.3 (Para 12, p. 264)- In this case, the mark is identical. There is
as such no question of determining whether the mark of the
defendant is deceptively similar to that of the appellant or
not. Both the products are pharmaceutical preparations but
with different compositions. With identical names, there
447
would obviously be confusion in the mind of the purchasing
public between the two. It is not in dispute that the appellant
chose the name first and used it in its product in several
countries around the world excluding India, when the
respondents entered the market with their product.
1.5 (Para 14, page 265)- In this case, although the appellant is
not carrying on business here, prima facie, It is not a case of
the appellant seeking to have a monopoly in respect of the
448
name Ocuflox applied to a product with no intention of
exploiting it in this jurisdiction. It is in evidenced that the
appellant has together with an Indian pharmaceutical
company set up a joint venture company for sale of its
products in India. It has also applied for registration of the
disputed mark before the Registrar of Trade Marks in
Bombay. It appears from the application for registration that
the appellant proposes to use the mark Ocuflox in India.
1.6 (Para 15, p. 265) The Court was also prima facie of the view
that the appellant is entitled to seek and be granted
protection in respect of the name Ocuflox to medicinal
products against the respondents. In arriving at this
conclusion, the Court kept in mind principles which appear
from the decisions cited by the parties.
449
the impression that he is buying the appellant’s products, the
respondent as the subsequent adopter of the mark must b e
restrained from doing so”.
1.12 In Para 22, (p.267) and Para 23 (p.267), the Court considered
the affidavits regarding volume of sale and advertisement.
450
1.13 In par 32, the Court held (p. 268)
451
the general public is affected, delay is of no consequence.
Moreover, delay could defeat the appellant’s right if the
respondents having built up their sales, were suddenly faced
with the prospect of an injunction, Where the respondents
were put on notice of the appellant’s claim in 1994 no
surprise could have been caused by the filing of the suit by
the appellant to enforce that claim”.
452
22. Cadila Healthcare Ltd.. V.Swiss Pharma Pvt. Ltd., 2002(2) GLR
1734. (Gui. High Court Coram D.P. Buch J.
1. The appellant (OH. Plaintiff) Cadila has trade mark 'Spardac' while
the respondent -swiss Pharma Ltd. (OH. Opponent) is using word
Superdac. The appellant filed a suit before the trial court alleging
that the appellant-plaintiff had already marketed a medicine named
Spardac. The respondent- defendant had been manufacturing,
marketing and selling a medicine named Superdac and the said
process had been started little before the institution of the suit. It
was the case of the plaintiff - appellant-before the trial court as well
as the High Court that mark Superdac is deceptively or confusingly
similar to the appellant's mark Spardac and thereby the
respondents have committed an act of passing off their product
Superdac as the appellant's product Spardac. The Trial court by its
judgment and order dated 25.08.2000 dismissed the suit of the
plaintiff. Being aggrieved, the plaintiff filed Appeal frem-ereler
No.2155 of 200 before the Gujarat High Court. It may be noted
that this is an appeal against final judgment and decree and not at
interim stage. In the judgment, the learned Single judge has noted
the arguments of both the sides and ultimately, in para 15.22.4, the
learned judge observed as under:
453
3. ("16 P- 1755) We can now turn to the case on hand, while keeping
in mind, the observations made and principles enunciated in the
above cases. It is not much in dispute that these drugs are the
Schedule H drugs, and therefore, ordinarily, it is necessary to have
a prescription for sale and purchase of these two medicines. There
is no dispute about the same. However, we may take into account
the argument that simply because a drug is a scheduled drug, it
does not mean that it is not being sold and purchased without any
prescription. It is also an argument that in practice, this Schedule H
drugs are being sold and purchased without prescription also. This
argument is required to be taken into account while deciding the
appeal finally".
454
times, such medicines are sold and purchased without insisting on
the prescriptions".
5 20 P-1757) Now, we can take it for granted that simply because the
medicine is scheduled in Schedule H drug and it is sold and
purchased only on the strength of prescription issued by the
Medical Officer, it does not mean that such a medicine is never
sold without insisting on prescription. Therefore, we take it that in
practice, at times, medicines comprises Schedule H may be sold
without insisting on prescription of a Registered Medical Officer as
argued by Mr. Thakore, learned Advocate for the appellant".
6. " (21 P- 1757) However, at the same time, we should also consider
another aspect of the case. If a medicine is a Schedule H medicine
and if it cannot be sold without prescription to be issued by
authorised Medical Practitioner and if a trader or a chemist sells it
without prescription, then certainly, he does it at his own risk.
Same way, if a consumer or a patient, purchases such a medicine
without having prescription of an authorised Medical Practitioner,
then he also does it at his own costs and risks. Therefore, similarity
in the names of the two medicines will not be material for the
purpose of sale of such medicines without insisting on prescription.
455
confusion either on the part of the consumer or on the part of the
trader. Since the medicines are stated to be sold and purchased
without the prescription of a Doctor, we take it that Doctors are not
in picture. Therefore, there is direct dealing between the trader and
the consumer".
456
9. (26, (P-1758) If we consider the medicine SUPERDAC, it would
appear that there is no such red cross appearing at any place of the
strip. The word SUPERDAC is having S capital. The remaining
letters are not in capital. Then, the size of the medicine is quite
different. The shape of the medicine is also quite different.
Therefore, on an apparent look at the two medicines, it cannot be
said that there would be any chance for confusion with respect to
the consumer, trader or doctor. Therefore, if a consumer goes to
purchase a particular medicine, say, he goes to purchase
SPARDAC and purchases the same. On the next occasion also he
goes to purchase the same medicine. Even on a bare look at the
strip of the medicine, he will be able to gather that what he
purchases is SPARDAC and not any other medicine. Therefore, the
appearance and get-up of the two medicines are such that there is
no likelihood of any sort of confusion amongst the traders,
consumers and doctors".
10. In Para 28 (P-1759) the learned judge dissected these two words
and observed:
457
The colour and get-up of the two strips of these two medicines are
noticeably different.
Their cartons are clearly different. There also, the size, colour and
get-up of the cartons are distinct.
458
SPARDAC 200 has a red triangle on the strip. This is not there in
SUPERDAC.
SPARDAC 100 has a red cross on the strip, which is clearly visible
as a prominent factor which is not there on the strip of
SUPERDAC.
The strip of SUPERDAC has red right angle at the right bottom
comer. This factor is absent in the case of strips of SPARDAC.
459
The appellant has filed application on 1.5.1988 and applied for
registration of trade mark 'TROVIREX' vide application No. 43313
in class 5 of Fourth schedule of the Act in respect of medicinal and
pharmaceutical preparations. The aforesaid application was
accordingly advertised in Trade Mark Journal No. 102 dated
1.3.1992 on page 1479 of Journal No. 1026 dated 1.3.1992. Copy
of the said trade mark journal has been produced at Exh. A to the
memo of appeal. ^ ‘
460
trade marks namely ZOVIREX and ZOVIRAX. The Assistant
Registrar also came to conclusion that on perusal of the record he
did not find any evidence that the mark applied for is in respect of
schedule H drug. The Assistant Registrar also came to conclusion
that the mark applied for is so nearly resembling to the opponent's
registered trade marks as to likely to deceive or cause confusion ,
hence, are the deceptively similar trade marks and it was held that
the conditions required to invoke the prohibition contained under
section 12 (1) of the Act are fulfilled, therefore, the registration of
the mark applied for namely TROVIREX is prohibited by
operation of section 12 (1) of the Act. The Assistant Registrar
allowed the opposition of the opponent and refused the registration
of the applicant's trade mark.
461
successive hurdles which the plaintiff must surmount,
consideration of these two aspects cannot be completely separated
from each other, as whether deception or confusion likely is
ultimately a single question of fact.
462
quality of the goods to give an indication to his eye of the trade
source from which e goods come, or the trade hands through which
they pass on their way to the market,. It tells the person who is
going to buy, that the product presented to him is either what is
known to him under the similar name as coming from a source
with which he is familiar or that it is what he has heard of before as
coming from that source. It gives the purchaser a satisfactory
assurance of the mark and quality of the article he is buying,
particular quality being not discernible by the naked eye. It is on
the faith of the mark being genuine and representing a quality equal
to that which he has previously found a similar mark to indicate
that the purchaser makes his purchase".
463
10 Ultimately, in para 9.2 it was held (page 600)- "In my view, the
respondent has successfully proved that the petitioner's proposed
mark is of such a nature as to deceive the public or cause
confusion. The respondent is able to establish that if the petitioner's
trade mark application is allowed, then, the said trade mark by
virtue of-
(a) Its identity with the registered trade mark (of the respondent)
and the similarity of the goods covered by registered trade
mark of respondent, or
(b) Its similarity to the registered trade mark and the identity or
similarity of the goods covered by such registered trade mark
of respondent,
464
4. Kavira- Pandit Durga Dutt Sharma vs. Navratna Pharm.
Laboratories.351 Novratna Pharama Case.
Three judge bench judgment of the apex court wherein it has considered
the principle regarding passing off action, infringement action and
deceptive similarity. It has also considered the principle on which
pharmaceutical product can be considered and strict approach should be
taken. The apex court has considered several English and American
465
cases. This is a land mark judgment on the principle of infringement and
passing off in relation to pharmaceutical product.
466
7. Macleds Pharmaceuticals vs Alebic Ltd.364 Principle regarding
to be deceptively similar.
467
8. M/s Johann A.Wulfing v. Chemical Industrial and Pharmaceutical
Laboratories372 Ciplamina and Complamina held to be not
deceptively similar.
Liv.52 and Liv.T were held to be not deceptively similar. Trial court
granted injunction in favour of the plaintiff company which had trade
mark Liv 52 against the defendant company using Liv T. Thereafter,
appeal was filed by SBL Ltd and the Division Bench reversed the
judgment and held that those words were not deceptively similar.
However, it appears that when the very suit was heard finally, the learned
Single judge held that those words were not deceptively similar.
468
However, against that judgment, ther3e was appeal filed before the
Division Bench and the Division Bench (2013 (53) PTC l)378 held that
both the marks were deceptively similar on full facts of the case.
However, the only objection is that when Division Bench had no
advantage of going through earlier judgment of the Division Bench in
AIR 1998 DELHI 126. Without going through the said judgment, the
Division Bench held that suit of the plaintiff with regard to infringement
is decreed. The defendant is restrained from using Liv as part of trade
mark Liv T while dealing with medical preparation.
be deceptively similar.
6. Aviat Chemicals Pvt Ltd v. Intas Pharma. Lipi and Lipicard were
held to be not deceptively similar.
be deceptively similar.
469
385
9. Astrazeneca UK Ltd v. Orchid Chemicals and Pharma Meromer
and Meronem were held not to be deceptively similar.
11. Glaxo Group ltd v. Manjit Patel387 Fortum and Nortum held to be
deceptively similar.
12. Novaris AG v. Crest Pharma Pvt Ltd 388 Secef and Cecef held to be
deceptively similar.
-y OQ
15. Pearl Retail Solutions Pvt Ltd v. Pearl Education Society391 Pearl
to be deceptively similar.
470
6.5.6 UNREPORTED JUDGMENTS:
471
2 Held-
2.1 1. That the word ‘VapoRub’ was an essential feature of the first
mark, that the words ‘vapour rub’ so clearly resembled that
word as to be likely to deceive and that the mark was
infringed.
2.3 That the second mark was not an invented word and had
direct reference to the character of the goods and having
been registered without an order of the court was liable to be
expunged, but that the court below had a discretion not to
expunge it, and there being clear evidence that mark was in
fact distinctive when registered, and there being no grounds
for saying that this discretion had been exercised upon
wrong principles, it should not be interfered with.
2.4 That the term ‘vapour rub’ being (in Jamaica, although not in
England) an indication that the goods were V’s goods and
not a description of character or quality, the use of that term
in Jamaica could not be a bona fide description of the
character or quality of goods.
3. “The court expressed its conclusion that the word ‘VapoRub’ was
in itself adapted to distinguish the respondents’ goods, apart from
the circumstance that, by 1941, user had rendered it in fact
distinctive; and from what has been said above, it will be clear that
472
their Lordships find no fault with the conclusion that ‘VapoRub’
was ‘adapted to distinguish’ for the purposes of the Act, and that
the formalities that were omitted in 1941 were formalities and no
more”, (p 108).
4. Their Lordships will humbly advise His Majesty that the appeal
should be dismissed. The appellants must pay the respondents’
costs of the appeal. In Inadine Trade Markm, the applicant sought
to register the trade mark’ Inadine in respect of ‘wound dressings’.
The application was opposed by the opponents based on the use
and registration of their marks ‘Anadin’ and ‘Anadin Extra’ for
‘analgesic preparations. The applicant contended that a major part
of the sales was to hospitals and confusion was not likely in such a
scenario since there was no side by side use, Aldous, J. speaking
for the Chancery Division, applied the basic test of whether the use
of Inadine in a normal and fair manner in connection with any
wound dressing would be reasonably likely to cause deception and
confusion among a significant number of persons. The learned
judge took note of the fact that in several instances, the actual
customer would be purchasing products of this kind for third
parties and often without being aware of the exact use to which the
product was sought to be put. Moreover, analgesic tablets and
wound dressings were often purchased without the actual purchaser
having any apparent symptoms. Weighing in all these factors, the
learned Judge rejected the application sought for by Inadine.
473
2. INTERNATIONAL CHARACTER OF MEDICAL PRODUCTS-
In the High Court of Justice Chancery Division, before Mr Justice
Lloyd Jacob.
A.H.R. had applied for registration of this mark in January 1952, but
V.Ltd (who was proprietor of the mark ‘Paravel) had opposed the
application which was withdrawn on 28th November 1952. On 9th
December 1952, V. Ltd filed the present application.
474
At a hearing before Mr. Langmaid (Assistant Comptroller) it appeared
that only one copy of a paper showing the opponents’ mark ‘Rabalate’
had reached this country prior to the date of the application.
(1) That in the definition in sec 4 of the mercantile Marks Act, 1887,
the relevance to the trade marks ‘protected by law’ meant only
such trademarks as by the provision of sec 103 of the Patents,
Designs and Trade Marks Act, 1883 would have an existing right
of priority for registration in the United Kingdom i.e. those marks
in respect of which a period of six months from the first application
for registration in a convention country had not yet elapsed.
(2) That as it has not been shown that this was the case for the
opponents’ mark Pabalate the objection under this head failed.
(3) That the letter from the opponents withdrawing their application
for the registration of the mark ‘Pabalate did not amount to an
abandonment of their rights in such mark.
(4) That in the circumstances the claim made by the applicants in their
application on form TM 2 to be ‘proprietors’ of the mark ‘Pabalate’
was an improper claim.
(5) That in the case for marks for medicinal products the public
interest may require that articles of different origin should not be
advertised and sold here and abroad under the same mark.
(6) That the court would, in its discretion, allow the appeal and refuse
registration of the mark”.
475
“Having regard to the international character which medicine and the
allied sciences have assumed and increasingly assumed over the last two
decades, it seems to me that the court must be particularly careful to see
that in exercising its discretion under the Act the public interest is not in
any way imperiled. For my part I am not satisfied that, in allowing to be
used by manufacturers in this country as a brand name for a
pharmaceutical substance a word which is in fact used by an American
Corporation in respect of the same material and advertised in journal,
which on the evidence are received into this country and referred to, the
public interest will be best served by permitting registration. Accordingly,
on both those grounds it seems to me that it is my duty to indicate that in
the light of the fuller consideration which the matter has received in the
court, the application should not be permitted to proceed”.
476
prescriptions were often not clearly written, and (ii) that customers
who gave verbal orders sometimes mispronounced then name of
the preparation they desired to buy, and could not even render
assistance to clarity any doubt as to what preparation was actually
required since they often did not know the nature of the
preparations. Though the respondent led trade evidence in the form
of statements by chief pharmacists form certain hospitals stating
that they would not be confused either visually or phonetically
between the marks in issue, the Registrar felt that such evidence,
emanating as it did from a class of persons used to taking great care
in dispensing prescriptions, would not be of any assistance in
regard to whether the marks would be confused by the general
purchasing public. However, based on an independent examination
of the marks, the Registrar refused the relief sought by the
applicant. Being aggrieved by the said decision, the applicant took
the matter on appeal to the Chancery Division which disagreed
with some of the observations made by the Registrar but affirmed
his decision. While doing so, Lloyd Jacob, J. speaking for the
Chancery Division held as follows: (p. 210)
1.1 “It is, therefore, unnecessary that I should go on, but I think
it is desirable that perhaps I should say this. Had the matter
been one for my initial consideration, I should, I hope, have
appreciated that, having regard to the absence of any
restriction upon the means of distributing these goods, and
the fact that all sorts and conditions of people may be either
visited with complaints which require their consumption or
may be sent to procure supplies of these goods, the matter
properly falls to be considered by an examination of the two
477
marks and, if these were, or is, any reasonable ground for
supposing that by reason of their similarity confusion or
deception is likely to arise, the fact that they are used in
relation to a pharmaceutical preparation is, perhaps, all the
more reason for seeing that the public are protected from the
consequences of deception and confusion”, (p 210).
478
were denied. Furthermore, the owners of the cited mark had
consented to registration of the propounded mark.
(ii) The goods for which the two marks were proposed to
be registered were of the same description.
referred to.
479
2.5 “I must, therefore, address the question of whether the goods
applied for are either then same or the same description as
the goods of the registered mark. The criteria for deciding
this issue were established in the judgment of Romer J. in
Jellinek’s application407 and these require that I take into
account:
480
2.8 Thereafter, the learned Judge has also considered the
FLORADIX case408 and also thereafter referring to Harker
observed as under:
481
but nevertheless the experienced hearing officer took the
view that the trade mark applicants have not discharged the
onus which rests upon them and I have likewise formed the
view that he was right in reaching that conclusion”.
482
(3) The applicant’s registration of TERBUL did not assist; there
was not the same likelihood of confusion between that mark
and the cited marks, despite the requirement for association”.
(P 24)
1.2 Further held “I also bear in mind the special danger associated with
pharmaceutical preparations. In these days, members of the public
are much more aware of the names of pharmaceutical preparations
than they were in the past when they used to get boxes simply
labeled ‘Pills’ and it is quite possible that even in the case of
ethical pharmaceuticals, confusion between similar names may
occur. Mr. Morcom said that public would not be confused because
the packaging and the like would be very different. I have no
information that this is necessarily so, in any event so far as
trademarks are concerned the principle is that one must be
concerned with the marks as such”, (p 25).
483
5. ‘Calmprose’ held deceptively similar to the plaintiffs ‘Calmpose’
6. ‘Volta-K’ held deceptively similar to ‘Voltaren’
7. ‘Becef held deceptively and phonetically similar to the plaintiff.
8. ‘Cheri’ held deceptively similar to ‘Cherish’
9. ‘Supaxin’ held deceptively similar to ‘Spoxin’. Although derived
from the generic drug ‘sparfloxacxin’
10. ‘Crofen’ refused registration for being deceptively similar to
‘Brufen’
11. ‘Prexmin’ held similar to ‘Premarin’
12. ‘Bicillin’ held similar to ‘Biocilin’
13. ‘Noveran’ held similar to ‘Voveran’
14. ‘Reform’, a medicine for osteoporosis held deceptively similar to
‘Refirm’
15. ‘Atnoli’ held deceptively similkar to ‘Entail P’ and hence
registration refused.
16. ‘Alrex’held deceptivelyu similar to ‘Alprax’
17. ‘Vicas’ held deceptively similar to ‘Vicks’.
18. ‘Eyesee’ held deceptively similar to ‘Eyetex’
19. ‘Litexin’ held phonetically similkar to ‘Lactisyn’
20. ‘Piozed’ held to be confusingly similar to ‘Pioz’ of the plaintiff,
even though ‘Pio’ is derived from the generic word. ‘Pioglitazone’
21. ‘Herbinol’ held deceptively similar to plaintiffs ‘Hurbinol’
22. ‘Torolac’ for analgesic medicines held deceptively similar to the
plaintiffs mark ‘Rolac’ for anti-aciditymedicines.
23. ‘Baragain’ held deceptively similar to the plaintiffs ‘Baralgan’
24. ‘Eficid’ or ‘Efcid-Civil Application’ held similar to ‘Efacid’.
25. ‘Coriderm’ held similar to ‘Quardriderm’
26. ‘Dicmol’ held similar to ‘Zovirax’ or ‘Zovirex’
27. ‘Trovirex’ held similar to ‘Zovirax’ or Zovirex’
484
28. ‘Winotone’ held similar to ‘Vintone’
29. ‘Alben’ held similar to ‘Aben.’
30. ‘Betaloc’ held similar to ‘Betalong.’
31. ‘Trovirex’ held similar to ‘Zovirex.’
32. ‘Destrol’ held similar to ‘Destro.’
33. ‘Spoxin’ held similar to ‘Supaxin.’
34. ‘Pioz’ held similar to ‘Piozed.’
35. ‘Triflu Plus’ held similar to ‘Trifluplus.’
36. ‘Bioeilin’ held similar to ‘Bicillin.’
37. ‘Voveran’ held similar to ‘Noveran.’
38. ‘Entail P’ held similar to ‘Atnol.’
39. ‘Mol’ held similar to’ Moly.’
40. ‘Analgon’ held similar to ‘Palgon.’
41. ‘Regu-30’ held similar to ‘Regulin-Forte.’
42. ‘Zinacef/Supacef held similar to ‘Lynacef.’
43. ‘Zentel’ held similar to ‘Fentel.’
44. ‘Pacitane’ held similar to ‘Parkitane.’
45. ‘Eva Cuol’ held similar to ‘Evacal.’
46. ‘Betadine’ held similar to ‘Gaurdine.’
47. ‘Revital’ held similar to ‘Rabital.’
48. ‘Ventolin’ held similar to ‘Etolin.’
49. ‘Fecontin - F’ held similar to ‘Femicontin.’
50. ‘Sorex’ held similar to ‘Corex.’
1 Bengal Immunity Cop v. DC Manufacturing Co AIR 1959 Cal 636
2 Water Bush Well Ltd v; Anil Arora PTC Supp (1) 849 (Del)
(though the drags are schedule H drags, which are not ordinarily
sold without the prescription of a medical practitioner, it may be
seen that for a minor complaint or indisposition one does not
always go to the medical practitioner and some medicinal
485
preparations, even certain schedule H drug, may be of frequent use
and a person may approach the chemist directly without obtaining
the prescription of a medical practitioner for purchasing such
medicinal preparations.
3 Burroughs Wellcome (India) Ltd v; Uni Sole Pvt Ltd (1999) 19
PTC 188 (Bom).
4 Panacea Biotec Ltd v. Elprags Pharma (2002) 24 PTC 385 (Del)
5 Ranbaxy Laboratories Ltd v. Dua pharmaceuticals Pvt Ltd AIR
1989 Del. 44, (198) PTC 273.
6 Ciba Heigy Ltd v. Crosslands Research laboratories Ltd (1996)
PTC (16) 1
7 Alkem Laboratogries Ltd v. Micro labs Ltd (2002) 24 PTC 701
(Mad)
8 Indchemie Health Specialities Pvt Ltd v. Naxpar Labs Pvt Ltd
(2002) 24 PTC 341, (Born) (DB).
9 Medley Laboratories Pvt Ltd. Alkem laboratories Pvt Ltd (2002) 25
PTC 592 (Bom) (DB)
10 Boots Company pic. England v. Registrar of Trade Marks, Mumbai
(2002) 25 PTC 784 (Bom)
11 American Home Products Corpn. New York v. KV Chennamallu
(2004) 28 PTC 154 (IPAB)
12 Bio-chem Pharmaceutical industries v Astron Pharmaceuticals
(2003) 26 PTC 200 (Del) (registration refused,although the names
were derived from 'bi' meaning two and from a mixture of
'Ampicillin' and 'Cloxacillin’).
13 Novartis AG v. Ishwar Lai Jain (2003) 26 PTC 226 (Del)
14 Sanat Products Ltd v. Glade Dmg & Nutraceutical Pvt Ltd (2003)
27 PTC 525 (Del)
486
15 Bevit Pharmaceuticals Ltd v. Planned Pharma Pvt Ltd (2003) 26
PTC 336 (Bom)
16 Cadila Pharmaceuticals Ltd v. Torrent Pharmaceuticals Ltd (1999)
19 PTC 318 (Guj).
17 Pam Pharmaceuticals v.Richardson Vicks inc (2000) PTC 412
(Guj)
18 Jamna Products Manufacturer of Kammaie , Karaikudi 1 v.
Aravind Laboratories (2003) 27 PTC 409 (Mad) (DB)
19 Griffon Laboratories Ltd Bombay v. Clover Pharmaceuticals Pvt
Ltd (1991) PTC 89 (Reg. Bom)
20 USV Ltd v. IPCA Laboratories Ltd (2003) 26 PTC 21 (Mad)
21 Cadila Lab Pvt Ltd v. Kamath Atul and Co. AIR 1991 Kant 303
(19910) PTC 259.
22 American Home Products v. Laboratories Ltd (199600 PTR 7
(1996) 16 ptc 44 (Bom)
23 Hoechst AG vs. Unisule Pvt Ltd (1996i)) PTR 138, (1996) 16 ptc
381 (Del)
24 Strassenbury Pharmaceuticals Ltd v. Himalaya Drugs co (2002) 24
PTC 441 (Cal)
25 Schering Corpn v. Kilitch Co (Pharma) Pvt Ltd (1990) 2 PTC
Suppl. 22 (Bom) (DB)
26 Wini-Medicare Ltd v. Somacare Labs (1997) 17 PTC 34 (Del)
27 Torrent Pharmaceuticals Ltd v. Wellcome Foundation Ltd (2002)
24 PTC 580 (Guj)
28 Standard Pharmaceuticals Ltd v. UP Dmg Pvt Ltd (1980) IPLR
117 (All).
487
Additional
29 2002 (25) PTC 482
30 AIR 1882 Bom. 35 Astra-IDL Ltd. v. TTK Pharma Ltd.
31. Torrent Pharma Ltd. v. The Wellcome Foundation Ltd. 2002 (24)
PTC 580 (Guj.HC)
32. Vijay Grover v. Bio-Chem Laboratory & other 2002 (24) PTC 438
(Delhi HC.)
33. Medley Corporation P. Ltd. v. Alkam Laboratories. Coram
C.K.C.J. (as he was then) & s Radhakrishnan J.) 2002 (25) PTC
592 (Bom) DB
34. 2003 (26) PTC 21 (Madras) USV Ltd. v. IPCA Laboratories Ltd.
(Madras HC)
35. Biologic & Psychotropics Pvt. Ltd. v. Triton Health Care Pvt. Ltd.
Dr. Mukumdakam Sharma, J. (as he was then) 2003 (26) PTC 180
(Delhi)
36. Bio-Chem Pharmaceutical Industries v. Astron Pharmaceuticals
and Anr. 2003 (26) PTC 200 (Delhi)
37. (Delhi) Novartis AG & Anr v. Ishwar Lai Jain & Ors. Coram Dr.
Mukundakam Sharma, J. (as he was then) 2003 (26) PTC 206
38. Bevit Pharmaceuticals Ltd. v. Planned Pharma Limited and
Another. Coram S.A. Bobde, J. (as he was then) 2003 (26) PTC
336 (Bom)
39. Fourts (I) Laboratories Limited v. Gufic Private Limited. 2003 (26)
PTC 367 (Reg.)
40. Wockhardit Limited. V. Patiala Medical Agencies & Anr. 2003
(26) PTC 425 (Delhi)
41. Syncom Formulations v. SAS Pharmaceuticals 2004 (28) PTC 632
(Delhi)
488
42. Glaxo Group Ltd. & Anr. V. R.A.S. Mani Iyer & Anr Dr.
Mukundakam Sharma, J. (as he was then) 2004 (29) PTC 325
(Delhi)
43. Glaxo SmithKline Pharmaceuticals Ltd. & Anr. v. Naval Kishore
Goyal & Ors. 2004 (29) PTC 421 (Delhi)
44. Charak Pharma Private Limited v. Prashi Pharma Private Ltd. Dr.
Mukundakam Sharma, J. (as he was then) 2004 (29) PTC 458
(Delhi)
45. Sun Pharmaceutical I. Ltd. v. Wyeth Holdings Co. and Anr. R.M.
Lodha, J. (as he was then) Anoop V. Mohta, J. 2005 (30) PTC 14
(Bombay) (DB)
46 Franco Indian Research P. Ltd. v. Unichem Laboratories Ltd. 2005
(30) PTC 131 (Bombay)
47. Win Medicare Pvt. Ltd. v. McLaren Biotech P. Ltd. Swatanter
Kumar, J. (as he was then) 2006 (32) PTC 321 (Delhi)
48. Glaxo Co. Ltd. vs. Kamlesh Patel and Ors. 2008 (36) PTC 311
(Delhi)
49. Modi-Mundipharma P. Ltd. v. Preet International P. Ltd. & Anr.
2010 (42) PTC 690 (Delhi)
50. Pfizer Products, Inc & Anr v. Vijay Shah & Ors. 2011 (45) PTC
DC (Delhi)
489
6.7 The following are instances of pharmaceutical trademarks not
held deceptively similar:
490
12. ‘Seda-Seltzer’ held not likely to be confused with ‘Alka-Seltzer’ as
‘Seltzer’ was common to the trade.
13. ‘Skin Dew’ not likely to cause deception with ‘Skin Deep’, both
being toilet preparations.
14. ‘Theomindon’ held not similar to Theminal’.
15. ‘Trivedon’ held not similkar to ‘Flavdedon’.
16. ‘Spasmo-Flexon’ held not similar to ‘Spasmo-Proxyvon.
17. ‘Acticeph’ held not similar to ‘Aetifed’.
18. ‘Optrin’ held dissimilar to ‘Optyl’ as ‘opt’ is a dictionary word
meaning ‘vision’ or ‘eye’ and is commonly used in the
pharmaceutical trade.
19. ‘ Lumindond ’ held not similar to ‘ Luminal ’.
20. ‘Xenex’ not similkar to ‘Xymex’ as both derived from enzymes.
21. ‘Lipicor’ of the defendant helkd not deceptively similar to the
plaintiffs ‘Lipicard’.
22. ‘Ziff not deceptively similar to ‘Cefi’ because of the use of the
highly distinctive letter ” by the defendant.
23. ‘Dropovit’ held not similar to ‘Protovit’, where ‘vit’ is derived
from ‘vitamin’.
24. ‘Medisprin’ is not similar to ‘Disprin’ as the packing and pricing
were dissimilar.
25. ‘Asthmix’ and ‘Asmac’ are not similar in sound and are not likely
to confuse any person.
26. ‘Utogynol’ held not similar tok ‘Ortho-Gynol’ since ‘Gynol’ is
derived from the Green word ‘Gynaeco’ and ‘Uto’ and ‘Ortho’ are
dissimilar.
27. ‘Curechfor’ visually and phonetically dissimilar to ‘Reclor’ as the
trademarks are derived from the compound ‘Chloramphenicol’ and
491
the prefixes ‘cu’ or ‘cure’ come from the trade name of the
defendant and are common to many of its preparations.
28. ‘Ciplalmina’ held dissimilar to ‘Complamina’.
29. ‘Megavic’ not similar to ‘Megavit’ for a vitamin preparation, as
‘mega’ was taken from the respondent’s corporate name and ‘vite’
added to it.
30. ‘Penegra’, ‘Edegra’, ‘Silagra’, ‘Indiagra’, and ‘Kamagra’ held not
similar to ‘Viagra’. However, the defendants were ordered to
change the colour of the tablet so as not to resemble the plaintiff s
blue coloured tablet.
31. ‘Zexate’ held not similar to Mexate’ as the common element
‘exate’ is taken from the word ‘methotrexate’ which is the active
ingredient used in the product.
2 ER Squibb & Sons v Curewell India Ltd AIR 1987 Del 197.
6 Cadila Healthcare Ltd v Swiss Pharma Pvt Ltd (2002) 24 PTC 708
(Guj).
492
8 SBL Ltd v Himalaya Drug Co AIR 1998 Del 126, 67 (1997) DLT
803, (1997) 17 PTC 540 (Del)(DB).
20 Sami Khatib v Seagull Labs (I) Pvt Ltd (2002) 24 PTC 165 (Del).
493
21 Aviat Chemicals Pvt Ltd v Intas Pharmaceuticals Ltd (2001) PTC
601 (Del) (the prefix 'Lipi' is a generic word derived from 'lipid’;
Additional factors like differences in packaging and prices further
negate the possibility of confusion).
27 ER Squibb & Sons v Curewell India Ltd AIR 1987 Del 197.
494
Schedule H drugs and may not be expected to be sold over the
counter as they are specialised drug for the treatment of cancer).
495