CHAPTER 6

PASSING OFF AND INFRINGEMENT

OF TRADE MARKS IN RELATION
TO PHARMACEUTICAL
PRODUCTS
CHAPTER 6 PASSING OFF AND INFRINGEMENT OF TRADE
MARKS IN RELATION TO PHARMACEUTICAL PRODUCTS

6.1 PHARMA TRADE MARK LAW,

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.

Pharmaceutical Trade Mark (Halsburv’s Law of India) First Edition

f 185.11251 Special consideration when dealing with pharmaceutical

trademarks: Special considerations are applicable where the product is a
medicinal preparation, more so when the clinical composition of two
competing products is different, not so much as to protect the reputation
of the trader but to safeguard the public. In the interest of the public, there
may not be two medicinal preparations bearing the same name from
Air

different sources and with different compositions.

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.

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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.

The argument that Schedule H drugs may only be sold on a prescription,

does not have much weightage, as the doctors are influenced by the
medical representatives of companies and the doctors often rely upon the
name of a leading pharmaceutical companies. Further, when a
prescription is given by the doctor, it is taken to the chemist who may
claim the defendant's product to be the same as the plaintiffs. In India,
schedule drugs are sold even without production of a doctor’s
prescription and this reduces the weightage that may be given to this fact
while considering the question of deceptive similarity.240

6.1.1 Intellectual property rights

The law is quick in arriving at a finding of likelihood of confusion

because of their special character. This is especially, so when it comes to
pharmaceutical products since it is imperative that public be protected
from deterious consequences of deception or even confusion.

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)

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6.2. PROVISION OF DRUGS AND COSMETICS ACTS AND
RULES TAKEN INTO CONSIDERATION:

6.2.1 Provisions of Drugs and Cosmetics Act and Rules

The Act is enacted to regulate the import, manufacture, distribution and

sale of drugs and cosmetics in the country. The problems of adulteration
of drugs and also of production of spurious and sub-standard drugs are
posing serious threat to the health of the community. It is, therefore,
considered necessary to amend the Drugs and Cosmetics Act so as to
impose more stringent penalties on the anti social elements indulging in
the manufacture of sale of adulterated or spurious drugs or drugs not of
standard quality which are likely to cause death or grievous hurt to the
user. This opportunity is also being availed of to incorporate certain other
provisions on the other aspects of effective control on the manufacture,
distribution, sale of drugs and cosmetics on the basis of experience gained
in the working of the Act.

Section 2 (b) defines ‘drug’ to include-

(a) All medicines for internal or external use of human beings or

animals and all substances intended to be used for or in the
diagnosis, treatment, mitigation or prevention of an disease or
disorder in human beings or animals, including preparations
applied on human body for the purpose of repelling insects like
mosquitoes;

(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-

(a) In relation to Ayurvedic, Siddha or Unani Tibb systems of

medicines all formulations containing only such ingredients
mentioned in the formula described in the authoritative books of
Ayurveda, Siddha or Unani Tibb systems of medicines specified in
the first schedule, but does not include a medicine which is
administered by parenteral route and also a formulation included in
the authoritative books as specified in clause (a).

(b) In relation to any other systems of medicines, a drug which is a

remedy or prescription presented in a form ready for internal or
external administration of human beings or animals and which is
not included in the edition of the Indian pharmacopoeia for the
time being or any other Pharmacopoeia authorized in this behalf by
the Central Government after consultation with the Drugs
Technical Advisory Board constituted under section 5”.

6.2.2 Cosmetics

The word ‘medicament’ is not defined anywhere while the word

‘cosmetic’ is defined in section 3 (aaa) of the Drugs and Cosmetics Act,
1940. That definition shows that the cosmetic products are meant to

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.

The extent or the quantity of medicament used in a particular product is

also not a relevant factor. The fact that use of medicinal element in a
product was minimal does not detract from it being classified as a
medicament.

6.2.3 Government Analyst

Government analyst would include all an analyst appointed by the State

as well as Central Government. Director of Central Drugs Laboratory is
also a Government Analyst, Ram Shanker Misra v. State of U.P.241

6.2.4 Substances

The appropriate meaning of the expression ‘substances’ in the section is

‘things’. It cannot be disputed and indeed it is not disputed, that absorbent
cotton wool, roller bandages and gauze are ‘substances’ within the
meaning of the said expression, Chimanlal Jagjivandas Sheth v. State of
Maharashtra,242 The act further it provides for the Drugs Technical
Advisory Board, the Central Drugs laboratory and the Drugs Consultative
Committee. Chapter IV provides for import of drugs and cosmetics.
Chapter IV provides for manufacture, sale and distribution of drugs and
cosmetics. Under that chapter, section 16 provides for standards of
quality. Section 17 provides for misbranded drugs. Section 17A provides

241 (1980), 1 SCC 255:1980 SCC (cri) 217.

242 AIR 1963 SC 65 1963 Supp (1) SCR 344: (1963) 1 Cri. U 621.

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.

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6.2.5 Pharmaceutical products- special reference - what is drug ?

1. What is ‘drug’ and what is the object of the Act?

1.1 In this connection, researchers refer to a Constitution bench

judgment of the Supreme Court in the case of Chimanlal
243
Jagjivandas Sheth v. State ofMaharashtra.

The Supreme Court after referring to the definition of ‘drug’

under the provisions of Drugs and Cosmetics Act has
observed as under:

1.2 “It cannot be disputed and indeed it is not disputed that

absorbent cotton wool, roller bandages and gauze are
‘substances’ within the meaning of the said expression. If so,
the next question is whether they are used for or in
‘treatment’. The said articles are sterilized or otherwise
treated to make them disinfectant and then, used for surgical
dressing; they are essential materials for treatment in
surgical cases. Besides being aseptic these articles have to
possess those qualities which are utilized in the treatment of
diseases. Thus for instance, in the case of gauze- one of the
articles concerned in this appeal it has to conform to a
standard of absorbency in order that it might serve its
purpose; otherwise, the fluid which oozes is left to
accumulate at the site of the wound or sore. The legislature
designedly extended the definition of ‘drug’ so as to take in
substances which are necessary aids for treating surgical or
other cases. The main object of the Act is to prevent sub
standards in drugs, presumably for maintaining high

243 AIR 1963 SC 665.

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”.

1.3 In para 4, it was observed as under:

“An impassioned appeal was made for reducing the

sentences imposed upon the appellant. When a similar
argument was advanced in the High court, it pointed out that
this was a gross case where large quantities of spurious
drugs had been manufactured by the appellant and passed off
as goods manufactured by a firm of repute. The appellant
was guilty of an anti social act of a very serious nature. In
our view, the punishment of rigorous imprisonment for three
months was more lenient than severe. There is no case for
interference with the sentence. The appeal fails and is
dismissed”.

2 Another judgment of the Supreme Court is in the case of M/s

Puma Ayurvedic Herbal (P) Ltd v. Commissioner, Central
Excise, Nagpur.244

The Supreme Court has considered the definition of ‘cosmetic’ as

well as definition of ‘drug’ in this behalf and has observed in
paraslO,! 1,12,13,14,15,16,17,18,19, 20,21 and 22 as under

244 AIR 2006 SC 1561.

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

prove that a particular product falls under a particular head

of the Central Excise Tariff is on the revenue. It was for the
revenue to show and establish that the product in question
was not a medicament or that the common man did not
understand the product as a medicament. In the present case,
the revenue has miserably failed to discharge this burden”.

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”.

245 2003 (154) ELT 328

246 2003 (154) ELT 328.
247 2003 (154)ELT 324

300
 2.4 “13. Naturalle Health Product (P) Ltd. v. C.C.E 248. Two

appeals were under consideration in this case. One was with

respect to Vicks Vapo Rub and Vicks Cough Drops while
the other was with respect to Sloan’s Balm and Sloan’s Rub.
Both the appeals were allowed holding that the items in
question were classifiable under the Chapter dealing with the
medicament in the Central Excise Tariff Act .In this case;
this Court followed the twin test earlier upheld by this Court
in C.C.E v. Richardon Hindustan Ltd249 Further, this court

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

248 2003 (158) ELT 257

249 1989 (42)ELT A100.

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”.

2.6 “14. In Amritajan v. C.C.E250, this court held that

Amritanjan pain Balm having menthol 1P,Camphor
IP,Turpantine IP and Methyl IP, Salicylate IP as main
ingredients, was classifiable as Ayurvedic medicine ubnder
Chapter 30 of the Tariff. It was noticed that the ingredients
were known both to Ayurvedic and western sciences. Still,
the classification as medicament was upheld”.

2.7 “15. BPL Pharmaceutcals v. C.C.E251 was a case in which

‘Selsun Shampoo’ was under consideration for purposes of
classification under the Tariff Act. According to the
manufacturer, ‘this shampoo was a medicated shampoo
meant to treat dandruff which is a disease of the hair. This
court held that having regard to the preparation, label,
literature, character, common and commercial parlance, the
product was liable to be classified as a medicament. It was
not an ordinary shampoo which could be of common use by
common people. The shampoo was meant to cure a
particular disease of hair and after the cure it was not meant
to be used in ordinary course”.

250 1995 (7?) ELT 500 (SC)

251 (1995) Suppl. 3 SCC 1

302
 2.8 “16. Muller and Phipps (India) Ltd v. C.C.E 252 was a case

of Johnson Prickly Heat Powder. This powder was again

held to be a medicament because it was not an ordinary
talcum powder but a powder to be used to get rid of the
problem of prickly heat. Similar in Manisha Pharmaplasto
pvt. Ltd v. Union of India252, the product under
consideration was Nycil Prickly Heat Powder.The
ingredients were-Chlorphensesin IP 1% w/w Zinc Oxide
IP 16% w/w Starch IP 51% w/w Talc Purified IP to 100%
w/w The powder was held to be not an ordinary talcum
powder but one falling in the category of medicament.”

2.10 “17. Lastly we were referred to Dabur (India) Ltd v.

C.C.E.254 This is a judgment of three Judge bench of this
court and the products under consideration were Janam
Ghunti and Lai Tail regarding Lai Tail. This court held that
it was liable to be classified as medicament under chapter 30
as all it ingredients were found to be in Ayurvedic texts.
However, regarding other product the matter was remanded
for further consideration on basis of evidence to be recoded”.

2.11 “18.From the above judgments, it follows that the law is

settled on the applicability of the twin test for determination
of classification of a product. We have already found that the
twin test is satisfied in the present case regarding most of the
items under consideration”.

252 2004 (167) ELT 374

253 1999 (1212) ELT 2.9 22
254 2005 (182) ELT 290 (SC).

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.”

2.14 “21. The extent or the quantity of medicament used in a

particular product will also not be a relevant factor.
Normally, the extent of use of medicinal ingredients is very

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*\

2.15 “22. In order to be a medicinal preparation or a medicament

it is not necessary that the item must be sold under a doctor’s
prescription. Similarly, availability of the products across the
country in shops is not relevant as it makes no difference
either way”.

Medley pharmaceuticals Limited v. Commissioner of Central Excise

and Customs Daman256

1 In this case, the questions which the Supreme Court was

considering were-

(a) Whether ‘physicians’ samples’ are excisable goods in view

of the fact that they are statutorily prohibited from being sold
under the Drugs and Cosmetics Act, 1940 and the rules made
there under?

255 1989 (42) ELT A100.

256 (2011)2 SCC 601

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?

1.1 In that context, the Supreme court held in para 11 ( p.608) as

under:
____ 'jc'7

“This court in Shinde Bros v. Commr. has held that excise

duty is imposed on goods, and the taxable event for the levy
is manufacture or production of the goods. A duty of excise
is a tax upon the goods and not upon sales or proceeds of
sale of goods. In terms of Entry 84, list I of the Seventh
Schedule to the Constitution, taxable event in respect of
excise is manufacture or production, (see CCE v. Acer India
Ltd) The levy is on the manufacture or production of
goods. The collection is shifted to stage of removal. Since
excise is a duty on manufacture, duty is payable whether or
not goods are sold. Therefore, sale is not a necessary
condition for charging excise duty”.

1.2 Ultimately, as regards Drugs and Cosmetics Act, it was held

in paras 29 and 3D as under:

1.2A “29.(p 613) Having said so insofar as excisability of goods

for the purpose of duty under the Act, we may notice the
purpose and object of the Drugs Act. In our opinion, the
main object or real purpose of the Drugs Act, 1940 and the
rules made there under is to regulate the manufacture of
drugs in order to maintain the standard or quality of drugs
for sale and distribution as a drug. This Court in State of

257 (2004) 8 SCC 173)

258 AIR 1950 SC 11: 1950 SCR 15.

306
 Bihar v. Shree Baidyanath Ahyurved Bhawan (P) Ltd
259has held (SCC p.774, para 14);

1.2B “14 (p 744 of Baidyanath case).The object of the Drugs Act is

to maintain the quality of drugs as drugs. Its use as any other
commodity in the hands of the consumer is not regulated.
Hence, the Drugs Act is relatable to Entry 19 of List III
which deals with drugs and poisons, subject to Entry 59 of
List I regarding opium. Lastly, the said Act regulates the
manufacture of drug for sale and distribution as a drug’.

1.3 “30 (p 613) Therefore, any requirement or condition

imposed by the Drugs Act and rules made there under is in
furtherance of its above stated object of regulating and
maintaining the quality of drugs”.

1.4 Thereafter, in paras 35 and 36, the Supreme Court

considered relevant provisions of Drug rules and observed as
under”

1.4A “35 (p 614) . We agree with Shri Ganesh, learned senior

counsel for the appellant that the manufacture of patent and
proprietary drugs is completed only after the labeling is
completed, for the purpose of levy of excise duty. However,
on a perusal of the labeling provisions in the Drugs Rules,
we find that they deal with the name of drug, contents of the
drug, name and address of manufacturer, a distinctive batch
number (details of manufacture of drug is recorded and
available for inspection as a particular batch), preparation of
drug , date of manufacturer and date of expiry of drug, its

259 (2005) 2 SCC 762)

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.”

6.3 PROVISIONS OF THE DRUGS RULES

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 68- Manufacture on more than one set of premises.

Rule 68A Grant of powers by the Central License Approving

Authority.

Rule 68B Delegation of powers by the Central license Approving

Authority.

Rule 69 Provides for application for license to manufacture drugs

other than

Those specified in Schedule C and C (1) to the Drugs and Cosmetics

Rules.

Rule 70 Form of license to repack or manufacture drugs other than

those specified in Schedules C and C(l).

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 71 Conditions for the grant or renewal of a license in for 25 (or

form 25-F).

Rule 71B Conditions for the grant or renewal of a license in form 25A.

Rule 72 Duration of license.

Rule 74 Conditions of license in (forms 25 and 25F)

Rule 75 Forms of application for license to manufacture for sale or

distribution of drugs specified in schedules C, C (1) and X (excluding
those specified in Part X-B and Schedule X).

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 77 Duration of license.

Rule 78 Conditions of license

Rule 79 Inspection before grant or renewal of license

Rule 80 Report by inspector

Rule 81 Procedure of licensing authority.

Rule 82 further applications after rejection

Rule 83 Renewal

Rule 83A Provisions for appeal to the State Government or Central

Government by party whose license has not been granted or
renewed.

Rule 85 Cancellation and suspension of licenses

Chapter 8- provides for manufacture for examination, Test or analysis.

Rule 86 Conditions relating to manufacture for examination

Rule 87 Labeling.

Rule 88 Labeling of drugs supplied to other persons.

Rule 89 License

Rule 90- Form of application

Rule 91 Duration of license

310
Rule 92 Conditions of license

Rule 93 Cancellation of license.

Chapter IX- Labeling and packing of drugs other than Homoeopathic

medicines

Rule 94 Exemption of certain drugs from certain provisions of this

Part

Rule 95 Prohibition of sale or distribution unless labeled.

Rule 96 Manner of labeling

Rule 97 Labeling of medicines.

Schedule H (under Rules 65 to 97) provides for prescription to drugs.

(Those drugs are available only on prescription of doctors.

There are about 536 drugs which are in the schedule-H

6.4 Various judgments of Supreme Court of India and High Courts

of India.

1. Amritdhara Pharmacy v. Satya Dev Gupta, AIR 1963 SC 449

2. Kaviraj Pandit Drugs Dutt Sharma v. Navratna Pharmaceutical
Laboratories, AIR 1965 SC 980
3. F.Hoffman La Roche and Co. v. Geoffrey Manners & Co. AIR
1970 SC 2062
4. Wander Ltd.& Another v. Antox. 1990 (SUPP) SCC 727
5. Cadila Healthcare Ltd., v. Cadila Pharmaceuticals Ltd., AIR 2001
SC 1952
6. Milmet Oftho Industries and Others v. Allergan Inc (2004) 3 SCC
90
6a. Heinz Italia and another v. Dabur India Ltd. (2007) 6 SCC1

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

1 Amritdhara Pharmacy v.Satva Dev Gupta. (A three judge bench

judgment) (coram: S. K. Das. M. Hidavullahand
J.C.Shah-JJ.iudgment by Das,J)

1.1 Satya Dev Gupta, a respondent, made an application under section

14 of the Trade Marks Act, 1940 for registration of the trade name
of a biochemical medicinal preparation, commonly known as
‘Lakshamdhara’ in class 5 (pharmaceutical and medicines class) of
the Fourth schedule to the Trade Marks Rules 1942. The
application was made by the respondent as the sole proprietor of
Rupp Bila, company situated at Dhankutti in Kanpur. In the said
application, it was stated that the said medicinal preparation had
been in use by the name of Lakshmandhara since 1923 and was
sold throughout the length and breadth of India as also in some
foreign markets; the mark or name Lakshamndhara was said to be
distinctive to the article and it was stated that the approximate
annual turnover was Rs 40,000/-. When the application was filed
before the Registrar of Trade Marks, Amritdhara Pharmacy, a
limited liability company and appellant before the Supreme Court
filed an application in opposition. In this application, the appellant
stated that the word ‘Amritdhara’ was already registered as a trade
name for the medicinal preparation of the appellant and that
medicinal preparation wasintroduced in the market as far back as in
the year 1901,. It had great popularity and was advertised

260 AIR 1963 SC 449

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)

Parker J. in Re Pianotist Co’s Application which was also a case

of the comparison of two words-

‘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

261 (1906)23 RPC 774

262 (1906) 23 RPC 774

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).

For deceptive resemblance two important questions are — (i) who

are the persons whom the resemblance must be likely to deceive or
confuse and (2) what rules of comparison are to be adopted in
judging whether suchresemblance exists. As to contusion, it is
perhaps an appropriate description of the state of mind of a
customer why on seeing a mark thinks that it differs from the mark
on goods which he has previously brought but is doubtful whether
that impression is riot due to imperfect recollection”, (see Kerly on
Trade Marks, 8th edi. p.400)

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

‘I do not think it is right to take a part of the word and compare it

with a part of the other word; one word must be considered as a
whole and compare with the other word as a whole... I think it is a
dangerous method to adopt to divide the word up and seek to
distinguish a portion of it from a portion of the other word’.

263 (1935) 52 RPC 136

318
1.7 (Para 13- page 454)

“On a consideration of all the circumstances, we have come to the

conclusion that the overall similarity between the two names in
respect of the same description of goods was likely to cause
deception or confusion within the meaning of S 10(1) of the Act
and the Registrar was right in the view he expressed. The High
court was in error in taking a contrary view.

The Supreme Court allowed the appeal, set aside the judgment of
High court of Allahabad and restored the order of Registrar.

2.Kavirai Pandit Durga Putt Sharma v. Navratna Pharmaceutical

Laboratories.264 Coram: P.B. Gaiendragadkar. C. J.. J. C.Shah and
N.Raiagopala AvvangarJ J) (from Kerala AIR 1962 Kerala J 56).

2. The respondent- Navratna Pharmaceutical Laboratories - is a firm

and it carries on business At Ernakulam in the same name and style
as the trade mark in controversy Navratna Pharmaceutical
Laboratories. The firm manufactures medicinal products. The
business of the firm was founded in 1926. When it was started, it
was called Navratna Pharmacy but from January 1945, the name of
the business was changed by the present one- Navratna
Pharmaceutical Laboratories, from the very beginning, the
proprietor used the trade mark ‘Navratna’ on the products which
they manufactured and sold. In December 1928,_the word Navratna
and the name Navratna pharmacy as connoting the products of the
respondent firm were registered by a declaration of ownership
before the Registrar of Assurances, Calcutta. After 1940 Act, the
respondent registered the word ‘Navratna’ as a trade mark in

264 AIR 1965 SC 980

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.

2.1 (Para 4, P. 983) The appellant- Kaviraj Pandit Durga Dutta

Sharma- has, for some years been carrying on business in
the preparation of Ayurvedic pharmaceutical products at
Jullundur city in East Punjab under the name of the
Navratna Kalpa Pharmacy and had been vending the
medicines prepared by him under the name ‘Navratna
Kalpa’ . In October 1946, he applied for the registration of
the words ‘Navrant Kalpa’ as a trade mark for his medicinal
preparations. This application was advertised in April 1950
and the respondent firm opposed the application for
registration on the ground that the word Navratna was
descriptive and having no distinctiveness could not be
registered. This objection prevailed and the registration was
refused. This led to the proceedings which have culminated
in the appeals before the Supreme Court.

2.3 The appellant moved the Registrar of Trade marks for

removing from the register the trade mark ‘Navratna’ and
the word Navratna in the other mark of the respondent. (Para
5, page 983).

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.

2.5 The appellant accordingly filed O.P.No 19 of 1952 in the

High Court of Travancore Cochin praying that the
registration of the word Navratna by itself or as part of other
marks as a trade mark for goods belonging to the respondent
be removed from the register. Civil appeal No. 523 of 1962
arises out of the order of the High Court on this petition.
This original petition No. 19 of 1952 was kept pending in the
High Court after it was ready for hearing and was heard
along with the appeal against the decree of the District Court
in Original Suit No. 233 of 1951.

2.6 The original suit filed by the plaintiff-respondent herein i.e.

Navratna Pharmaceutical Laboratories was for a perpetual
injunction against the appellant for using the word Navratna
and the cause of action for that suit was stated to be that the
plaintiff (respondent before Supreme Court) being
proprietor of the two registered trademarks Navratna and

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.

2.8 Ultimately appropriate issues were framed based on the

pleadings and the contentions just now indicated and the
learned District Judge found- (Para 8, page 984)-

(1) that having regard to the method of packing adopted and

the other features of the get up etc on which the defense had
relied, the defendant was not guilty of passing off; (2) that
the word ‘Navaratna’ was a common word in Ayurvedic
phraseology and consequently the plaintiff could not claim
any exclusive title to the use of that word by reason of his
having used it for his product even though this had been for
a number of years. To reach this finding, the learned District
judge pointed out that it was brought to his notice that there
were several concerns manufacturing and vending

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 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:

“As Fry,L.J. said in re- Dunn,265 with reference to the

corresponding law in U.K., which has been reproduced by
section 6 of the Indian Act-

‘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 Supreme Court, then, in Para 20 observed as under:

“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

265 (1888)8 RPC 379, AT P. 386

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”.

2.11 The Supreme Court considered all relevant decisions and

also relevant sections and ultimately, in Para 21 (p 988), it
held-

“(Para 21, page 988) It is sufficient to point out that it would

not be reasonable construction of any statute to say that a
proviso which in terms purports to create an exception and
seeks to confer certain special rights on a particular class of
cases included in it should be held to be otiose and to have
achieved nothing merely because of the word
‘distinctiveness’ used in it which has been defined
elsewhere. A construction which would lead to old marks
and new marks being placed on the same footing and being
subjected to the same tests for registrability cannot in our
opinion be accepted”.

2.8 In Para 25 page 989), the Supreme Court further

observed as under:

“25 (page 989): As we have pointed out earlier, there are

concurrent findings of fact on this point that through long
user from 1926 onwards, the mark had become associated
exclusively in the market with the pharmaceutical products
manufactured by the respondent. That finding is not capable
of being challenged before us and was not, in fact, attempted
to be challenged. From this, it would follow that the

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”.

2.12 In Para 28, the Supreme Court held-

“28 (page 989 and 990)-The other ground of objection that

the findings are inconsistent really proceeds on an error in
appreciating the basic differences between the causes of
action and right to relief in suits for passing off and for
infringement of a registered trade mark and in equating the
essentials of a passing off action with those in respect of an
action complaining of an infringement of a registered trade
mark. We have already pointed out that the suit by the
respondent complained both of an invasion of a statutory
right under S 21 in respect of a registered trade mark and
also of a passing off by the use of the same mark, The
finding in favour of the appellant to which the learned
Counsel drew our attention was based upon dissimilarity of
the packing in which the goods of the two parties were
vended, the difference in the physical appearance of the two
packets by reason of the variation in their colour and other
features and their general get up together with the
circumstances that the name and address of the manufactory
of the appellant was prominently displayed on his packets
and these features were all set out to have negative effect on
the respondent’s claim that the appellant had passed off his
goods as those of the respondent. These matters which are of
the essence of the cause of action for relief on the ground of
passing off play but a limited role in an action for

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’.

2.13 In Para 29 also, the Supreme Court held-(page 990) “When

once the use by the defendant of the mark which is claimed
to infringe the plaintiffs mark is shown, to be ‘in the course
of trade’, the question whether there has been an
infringement is to be decided by comparison of the two
marks. Where the two marks are identical, no further
questions arise, for then the infringement is made out. When
the two marks are not identical, the plaintiff would have to
establish that the mark used by the defendant so nearly
resembles the plaintiffs registered trade mark as is likely to
deceive or cause confusion and in relation to goods in
respect of which it is registered. A point has sometimes been
raised as to whether the words ‘or cause confusion’
introduces any element which is not already covered by the
words ‘likely to deceive’ and it has sometimes been
answered by saying that it is merely an extension of the
earlier test and does not add very materials to the concept
indicated by the earlier words ‘likely to deceive.’ But this
apart, as the question arises in an action for infringement the

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’.

2.14 . In Para 30 (page 990-991) it was further observed:

“The mark of the respondent which he claims has been

infringed by the appellant is the mark ‘Navaratna
Pharmaceutical Laboratories’ and the mark of the appellant
which the respondent claimed was a colourable imitation of
that mark is ‘Navaratna Pharmacy’. Mr Agarwal here again

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:

‘Where common marks are included in the trade marks to be

compared or in one of them, the proper course is to look at
the marks as a whole and not to disregard the parts which are
common’. (Kerly on Trade Marks, 8th edition, page 407).
Lastly, it was held as under in Para 31:

2.15 “(Para 31, page 991)- It appears to us that the conclusion

reached by the Courts below that the appellant’s mark is
deceptively similar to that of the respondents cannot be
stated to be erroneous. Besides, this question of deceptive
similarity is a question of fact, unless the test employed for
determining it suffers from error. In the present case, it was
not suggested that the Courts below had committed any error
in laying down the principles on which the comparison has
to be made and deceptive similarity ascertained. (See per
Lord Watson in Attorney General for Ontario 1897 AC 199.)

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”.

Ultimately, the Supreme Court dismissed the appeal.

3-F.Hoffmann-LA Roche and Co. v. Geoffrey Manners and Co

(eoram: J.C.Shah and V.RamawamLJJ)266

The appellant - F HOffmann- LA Roche and Co. is a limited liability

company incorporated under the laws of Switzerland and carries on
business in the manufacture and sale of pharmaceutical and chemical
products. The respondent- Geoffrey Manners and Co is also a company
incorporated under the Companies Act of India and also carries on
business in the manufacture and sale of pharmaceutical products.

3.1 On 2.12.1946, the appellant applied for registration of its trademark

‘Protovif. The application was granted and the appellant’s mark
was registered in class V in respect of pharmaceutical preparations
for human use and for veterinary use, infants’ and invalids’ foods.
The same were being sold under that mark at least from 1951. On
28.1.1957, the respondent applied for registration of its mark
‘Dropovit’ in respect of medicinal and pharmaceutical preparations
and substances. The application was registered but the
advertisement of the respondent’s application escaped the notice of
the appellant who did not hence oppose the registration. Thereafter,
by a letter dated 4.3.1958, M/s Voltas Limited, the appellant’s
agents drew the attention of the appellant to the respondent’s mark
Dropovit. There was some negotiation between the parties. But on

266 AIR 1970 SC 2062

332
 19.3.1958, the respondent wrote to then appellant refusing to alter
its trade mark.

3.2 On 21.1.1959, the appellant applied for rectification of the Register

by removal there from of the respondent’s trade mark. The ground
urged in support of the application was that the respondent’s mark
so nearly resembled the appellant’s mark as to likely to deceive or
cause confusion. The appellant thereafter applied for amendment of
the application and an additional ground was taken that ‘Protovit’
was not an invented word. The application was opposed by the
respondent. By judgment dated 5.8.1961, the Joint Registrar
rejected the application for rectification holding that ‘Dropovit’
was not deceptively similar to Protovit and that the word
‘Dropovit’ considered as a whole was not descriptive. The
appellant took the matter in appeal to the Bombay High Court. On
7.12.1962, Mr Justice Tarkunde dismissed the appeal. The
appellant preferred an appeal under Letters Patent but the appeal
was dismissed by a Division Bench consisting of Chief justice
Chainani and Mody,J on 17.4.1964. During the hearing of the
appeal, the respondent restricted the designation of goods to
medicinal and pharmaceutical preparations and substances
containing principally vitamins.

The application for rectification was made ion 21.1.1959 before

the Trade and Merchandise Marks Act, 1958 came into operation
But it is not disputed that under section 136 (3) of this Act, the
decision of this case is governed by the provisions of Act No. 43 of
1958 .This apart, the appeal of the appellant was heard. The
Supreme Court considered sections 11 and 12 and 56 of 1958 Act

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”.

3.4 “11 (page 2064) - In Parker Knoll Ltd v. Knoll International

Ltd.267 1 Lord Denning explained the words ‘to deceive’ and the

phrase ‘to cause confusion’ as follows:

‘Secondly, ‘to deceive’ is one thing. To ‘cause confusion is another. The

difference is this: When you deceive a man, you tell him a lie. You make
a false representation to him and thereby cause him to believe a thing to
be true which is false. You may not do it knowingly, or intentionally, buy
still you do it, and so you deceive him to cause confusion without making
any false representation to him. You may indeed tell him he truth, the
whole truth and nothing but the truth, but still you may cause confusion in
his mind, not by any fault of yours but because he has not the knowledge
or ability to distinguish it from the other pieces of truth known to him or
because he may not even take the trouble to do so’.

The tests for comparison of the two word marks were formulated by Lord
Parkar in Pianotist Co Ltd’s application268 as follows:

267 1962 RPC 265 (274)

268 (1906) 23 RPC 774 (777)

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

269 1945 RPC 65 at p. 72

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’.

It is also important that the marks must be compared as whole. It is not

right to take a portion of the word and say that because that portion of the
word differs from the corresponding portion of the word in the other case
there is no sufficient similarity to cause confusion. The true test is
whether the totality of the proposed trade mark is such that it is likely to
cause deception or confusion or mistake in the minds of persons
accustomed to the existing trade mark. Thus, in Lavroma case, Tokalon
Ltd v. Davidson and Co.,270 at p. 136, Lord Johnston said:

‘....we are not bound to scan the words as we would in a question of

comparatio literarum. It is not a matter for microscopic inspection but to
be taken from the general and even casual point of view of a customer
walking into a shop”.

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

270 32 RPC 133 (136)

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.

“Para 16, page 2066) “It is contended on behalf of the appellant

that ‘Dropovit’ meant only ‘Drop of Vitamin’ with the word ‘of

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

Parker,J has explained the meaning of ‘invented word’ as follows:

“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

271 (1908) 25 RPC

272 (1951) 68 RPC 103

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”.

Thus, the Supreme Court dismissed the appeals.

4. Wander Ltd, and another v. Antox273 (Judgment of Three Judge

Bench)

Appellant in the appeal before the Hon. Supreme Court, Defendants in

Civil Suit No. 1220 of 1988 on the original side of the High Court of
Madras and assail the order dated January 19, 1990. (Before Hon. Mr.
Justice M.N. Venkatachalliah, Hon. Mr. Justice N.D. Ojha and Hon. Mr.
Justice J.S. Verma, JJ)

(Para 4 Page 730) Wander Ltd, appellant 1, claiming to be the registered

proprietor of the registered trade mark “Cal-De-Ce” entered into an
agreement dated March 28, 1986 with Antox India (P) Ltd (Antox), the
respondent, under which Antox agreed to manufacture vitamin Calcium
Gluconate tablets under the said registered trade mark “Cal-De-Ce” and
sell the entire production to the Wander Ltd. It would appear that

273 1990 (SUPP.) SCC P.727

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.

The Hon. Supreme Court thereafter reiterated principle regarding interim

injunction application.

(Para 9. Page 731) Usually, the prayer for grant of an interlocutory

injunction is at a stage when the existence of the legal right asserted by
the plaintiff and its alleged violation are both contested and uncertain and

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”.

The interlocutory remedy is intended to preserve in status quo, the rights

of parties which may appear on a prima facie case. The Court also in
restraining a defendant from exercising what he considers his legal right
but what the plaintiff would like to be prevented, puts into the scales, as a
relevant consideration whether the defendant has yet to commence his
enterprise or whether he has already been doing so in which latter case
considerations somewhat different from those that apply to a case where
the defendant is yet to commence his enterprise, are attracted.

(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 ”,

“The plaintiffs manufacture with the trade names, under licenses in

the trade names and the consequent user of the trade names establish
a prima facie case for passing off action and the balance of
convenience, requiring the status quo to be maintained, the plaintiffs
having had the benefit of the injunction from September 23, 1988 till
March 2, 1989 when it was vacated and from May 2, 1989 when the

344
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 13 Page 733) On a consideration of the matter, we are afraid; the

appellate bench fell into error on two important propositions. The first is
misdirection in regard to the very scope and nature of the appeals before
it and the limitations on the powers of the appellate Court to substitute its
own discretion in an appeal preferred against a discretionary order. The
second pertains to the infirmities in the ratiocination as to the quality of
Antox’s alleged user of the trademark on which the passing-off action is
founded. We shall deal with these two separately.

(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

“These principles are well established, but as has been observed by

275
Viscount Simon in Charles Osenton & Co., v. Jhanaton ‘....the law
as to the reversal by a Court of appeal of an order made by a judge below
in the exercise of his discretion is well established, and any difficulty that
arises is due only to the application of well settled principles in an
individual case.”

The appellate judgment does not seem to defer to this principle.

(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.

(Para 16 Page 734) An infringement action is available where there is

violation of specific property right acquired under and recognised by the

274 (SCR 721) (1960) 3 SCR 713: AIR 1960 SC 1156.

275 (1942) AC 130

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.

(Para 19 Page 735) Secondly, even if a prior registration of a trademark

is not necessarily evidence of prior user as contended by Sri Rao, Antox
cannot, prima facie, explain how in a passing-off action its user
subsequent to June 1986 would prevail over the prima facie finding that
Wander Ltd was manufacturing Calcium Gluconate tablets under the
trademark “Cal-De-Ce” at its own factory in Bombay from August 1983
to June 1986. The appellate bench does not dislodge this finding nor does
it recognise the crucial effect of prior use by the defendant on the
plaintiffs case in a passing-off action. It appears to us that it was not an

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.

S.Cadila Health Care Ltd, v. Cadila Pharmaceuticals Ltd.. (A three

judge bench judgment- eoram: B.N.KirpalJDoraiswamy Raiu and
Briiesh Kumar.JJ)276

(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

276 AIR 2001 SC 1952.

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 respondent company is stated to have got permission on 10.4.1997

from then Drugs Controller General (India) to manufacture a drug
containing Mefloquine Hydrochloride. The respondent was also given
permission to import the said drug from abroad. According to the
appellant, it came to know in April 1998 that the said drug which was
also used for the treatment of Falcipharum Malaria was being sold by the
respondent under the trade mark of ‘Falcitab.’

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.

1.9 The Court observed as follows in Paras 17 to 20 as under:

“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”.

1.11 “18 (p 1961). We are unable to agree with the aforesaid

observation in Dyechem’s case (supra). As far as this Court is
concerned, the decisions in the last four decades have clearly laid
down that what has to be seen in the case of a passing off action is
the similarity between the competing marks and to determine
whether there is likelihood of deception or causing confusion. This
is evident from the decisions of this Court in the cases of National
Sewing Thread Co. Ltd’s case282 Com Products Refining
Company’s case,283 Amritdhara Pharmacy’s case284, Durga Dutt
Sharma’s case285 , Hofffnann-La Roche and Co. Ltd’s case.286
Having come to the conclusion, in our opinion, incorrectly, that
the difference in essential features is relevant, this Court in
Dyechem’s case (supra) sought to examine the difference in the
two marks ‘Piknic’ and ‘picnic’. It applied three tests, they being 1)
is there any special aspect of the common feature which has been

282 AIR 1953 SC 357;

28J AIR 1960 SC 142;
284 AIR 1963 SC 449
285 AIR 1965 SC 980
286 AIR 1970 SC 2062

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

a misconception to refer to the confusion that can be created upon

an ignorant customer that the Courts ought to think of in these
cases is the customer who knows the distinguishing characteristics
of the plaintiffs goods, those characteristics which distinguish his
goods from other goods in the market so far as relates to general
characteristics. If he does not know that he is not a customer whose
views can properly be regarded by the Court (See the cases quoted
in N.S. Thread and Co. v. Chadwick and Bros, which was a
passing off action). In Schweppes Case Lord Halsbury said, if a
person is so careless that he does not look and does not treat the
label fairly but takes the bottle without sufficient consideration and
without reading what is written very plainly indeed up the face of
the label, you cannot say he is deceived’

“These observations appear to us to be contrary to the decision of

this Court in Amritdhara case (supra) where it was observed that
the products will be purchased by not villagers and town folk,
literate as well as illiterate and the question has to be approached
from the point of view of a man of average intelligence and
imperfect recollection. A trade may relate to goods largely sold to
illiterate or badly educated persons. The purchasers in India cannot
be equated with a purchaser of goods in England. While we agree
that in trade mark matters, it is necessary to go into the question of
comparable strength, the decision on merits in Dyechem’s case

287 (1900) 17 RPC 47

288 AIR 1948 Madras 481
289 ((1905) 22 RPC 601 (hi)

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:

1.14 “24 (p. 1963)- In the case of R.J.Strasenburgh Co. v. Kenwood

Laboratories Inc290 as noted in the decision of Mogenstem
Chemical Company’s case (supra), it had been held that-

‘Physicians are not immune from confusion or mistake.

Furthermore it is common knowledge that many prescriptions are
telephoned to the pharmacists and others are handwritten and
frequently handwriting is not unmistakably legible. These facts
enhance the chances of confusion or mistake by the pharmacist in
filling the prescription if the marks appear to much alike when
handwritten or sound too much alike when pronounced’.

1.15 “(Para 25-page 1963)-The drugs have a marked difference in the

composition with completely different side effects the test should
be applied strictly as the possibility of harm resulting from any
kind of confusion by the consumer can have unpleasant if not
disastrous results. The Courts need to be particularly vigilant
where the defendant’s drug, of which passing off is alleged, is
meant for curing the same ailment as the plaintiffs medicine but
the compositions are different. The confusion is more likely in such
cases and the incorrect intake of medicine may even result in loss
of life or other serious health problems. In this regard, reference

290 (1955) 106 USPQ 379

355
 may usefully be made to the case of Glenwood Laboratories Inc. v.
American Home Products Corp, wherein it was held as under:

‘The products of the parties are medicinal and applicant’s product

is contraindicated for the disease for which opponent’s product is
indicated. It is apparent that confusion or mistake in filling a
prescription for either product could produce harmful effects.
Under such circumstances, it is necessary for obvious reasons to
avoid confusion or mistake in dispensing of the pharmaceuticals’.

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.”

1.17 “(Para 27- p. -1963)- As far as present case is concerned, although

both the drugs are sold under prescription but this fact alone is not
sufficient to prevent confusion which is otherwise likely to occur.
In view of the varying infrastructure for supervision of physicians
and pharmacists of medical profession in our country due to
linguistic urban, semi urban and rural divide across the country and
with high degree of possibility of even accidental negligence, strict
measures to prevent any confusion arising from similarity of marks
among medicines are required to be taken”

291 173 USPQ 19(1972) 455 f. Reports 2nd, 1384 (1972)

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:

“(31. (page 1964) - Trade mark is essentially adopted to advertise

one’s product and to make it known to the purchaser. It attempts to
portray the nature and if possible, the quality of the product and
over a period of time, the mark may become popular. It is usually
at that stage that other people are tempted to pass off their products
as that of the original owner of the mark. That is why it is said that
in a passing off action, the plaintiffs right 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 other has established for himself in a particular
trade or business. The action is regarded as an action for deceit.
(See Wander Ltd v. Antox India Pvt Ltd192)

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

292 1990 Suppl. SCC 727

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:

‘The tests of confusing similarity are modified when the goods

involved are medicinal products. Confusion of source or product
between medicinal products may produce physically harmful
results to purchasers and greater protection is required than in the
ordinary case. If the goods involved are medicinal products each
with different effects and designed for even subtly different uses,.
Confusion among the products caused by similar marks could have
disastrous effects. For these reasons, it is proper to require a lesser
quantum of proof of confusing similarity for drugs and medicinal
preparations. The same standard has been applied to medical
products such as surgical sutures and clavicle splints’.

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

359
 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.

b) The degree of resemblances between the marks, phonetically

similar and hence similar in idea.

c) The nature of the goods in respect of which they are used as

trademarks.

d) The similarity in the nature, character and performance of

the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods

bearing of the marks they require, on their education and
intelligence and a degree of care they are likely to exercise in
purchasing and/or using the goods.

f) The mode of purchasing the goods or placing orders for the

goods and

g) Any other surrounding circumstances which may be relevant

in the extent of dissimilarity between the competent marks.

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.

6.Milmet Of the Industries and Others v. Allergen Inc.293 Two Judge

Bench (Before Hon. Mr. Justice S.N.Variava and Hon. Mr. Justice
H.K. Sema, JJ).

(P.2) The facts are as follows:

The appellants are an Indian pharmaceutical company. The respondents

are also a pharmaceutical company which manufactures pharmaceutical
products in several countries. The respondents filed a suit for an
injunction based on an action for passing off in respect of the mark
“OCUFLOX” used on a medicinal preparation manufactured and
marketed by the respondents. The respondents claimed that they were the
prior users of the mark OCUFLOX in respect of an eye-care product
containing Ofloxacin and other compounds. They claimed that they first
used this mark on 9-9-1992, after which they marketed the product in
other countries like Europe, Australia, South Africa and South America
and that they had obtained registration in Australia, Bolivia, Ecuador,
Mexico, Peru, South Africa, Canada and the United States of America.
They claimed that they had also applied for registration of the mark in
several other countries including India and that their applications were
pending. The appellants were selling “OCUFLOX”, medicinal
preparation containing CIPROFLOACIN HCL to be used for the

293 see P.624

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 3 Page 626) On 18-12-1996 the respondents got an ad interim

injunction. This injunction, however, was vacated on 29-1-1997. The
Single Judge held that the respondents’ product was not being sold in
India and the appellants having introduced the product first in India, the
respondents were not entitled to an injunction.

(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

294 (1996) 5 SCC 714: (1996) 16 PTC 583

295 (2001) 5 SCC 73 : 2001 PTC 300.

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.

6a Heinz Italia and another v. Dabur India Ltd. (2007) 6 SCC1

The next Supreme Court judgment is in the case of Heinz Italia and
another v. Dabur India Ltd.296 The facts of the case were that the
plaintiff appellant was the proprietor of the trade mark ‘Glucose D’ which
had been registered in India under the Trade Mark and Merchandise
Marks Act, 1958 (‘the Act’). This trade mark had earlier been registered
in the name of Glaxo on 21.5.1975 but subsequently, vide deed of
assignment dated 30.9.1994 had been assigned to the first petitioner along
with the goodwill, etc. Glaxo Laboratories had also assigned their rights
in the artistic work used on the packaging. The plaintiff appellants
thereupon used the trade mark ‘Glucose D’ ad the ‘packaging; from the
year 1994 to2002 without any interference and established a very good
name in the market.

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

296 (2007) 6 SCC 1

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:

“14. We first take up the objection raised by Mr Sudhir Chandra i.e.

with regard to the interference of this Court in an application for ad
interim injunction. It has been held in Wander Ltd case297 that an
interlocutory injunction under Order 390 Rules 1 and 2 CPC is in

297 1990 SUPP. SCC 724

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)-

‘In other word, in the case of unregistered trademarks, a passing off

action is maintainable. The passing off action depends upon the
principle that nobody has a right to represent his goods as the
goods of somebody. In other words, a man is not to sell his goods

298 1979 AC 731

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.”

“18. We have also examined the packaging of the product and

specifically annexure P-6. Item D of annexure P-6 is the packaging
in dispute. It will be seen that the colour scheme of Glocuse-D and
Glucone-D is almost identical with a happy family superimposed
on both. Mr. Chandra has however pointed out that in Glocuse-D
the happy family consisted of four whereas in the case of Glucon-
D, the family was of three and as such the two were dissimilar. We
are of the opinion however that the colour scheme and the overall
effect of the packaging have to be seen. We have also examined
item D individually which is the exclusive packaging for Glocuse
D; the one on the extreme left being the packaging in the year
1989, the one in the middle being the one for the year 2000 (which
is impugned in the present suit) and the third on the extreme right
which is the subject matter of the suit in Calcutta which has been
stayed on the application made by the respondent. We are of the
opinion that the packaging of Glucose-D and Glucon -D is so
similar that it can easily confuse a purchaser. We also feel that
mere fact that the respondents have time and again made small
changes in their packaging is an attempt to continue to mislead the
purchaser and to make it more difficult for the appellants to protect
their mark, which the record shows has acquired an enviable
reputation in the market which is sought to be exploited by the
respondent.”

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”.

Other decisions on Trade Mark Law regarding Pharmaceutical

Products, other than Supreme Court judgments.

7 JUDGMENT ON PHARMACEUTICAL PRODUCTS299 (per C.K.

Thakker, J. as he then was)

M/s Ciba Geigy Ltd. V M/s Sun Pharmaceutical Industries.

1. In the aforesaid matter, the appellant - plaintiff Ciba Geigy filed a

suit in the District Court, Baroda for permanent injunction
restraining the respondent defendant Sun Pharma from using in any
maner in relation to pharmaceutical or medicinal preparations, the
impugned trade mark 'Clofranil' or any other distinctly similar trade
mark so as to infringe the trade mark registered in favout of the
plaintiff under the style Anafranil'. Alongwith the plaint, the
plaintiff also filed application for interim relief. The Assistant
judge, Baroda by order dated 3.4.1992 issued notice to the
defendant and granted ex-parte adO- interim relief in favour of trhe
plaintiff restraining the defendant from using the said trade mark
till 24.4.1992.

2. Being aggrieved by the said order, the defendant approached the

High court by filing Appeal from Ordr No. 200 of 1992 (1992(2)

299 1992(2) GLR 1053

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).

4. In Paras 3 and 4,arguments of the appellants were noted. In para 5,

arguments on behalf of respondent were noted. In para - 7, the
learned Judge laid down the principle regarding infringement and
passing off which read as under;

5. (7 P-1056). Mr. Desai is right in contending that in cases of

infringement, nothing more is necessary to establish and if
infringement of trade mark is proved, there is violation of the right
of the plaintiff entitling him to get the action of injunction in his
favour. In the case of Durga Dutta Sharma v. N. P. Laboratories,
reported in AIR 1965 SC 980, the Supreme Court drew a
distinction between the action for passing-off and action for
infringement of a trade mark, and observed that the action for
infringement is a statutory remedy conferred on the 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. Similarly, in
Ruston & Hornby Ltd. v. Zammdara Engineering Co., reported in
AIR 1970 SC 1649 also, the Supreme Court observed that in an
action of infringement, issue would be as under :

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?

5:2 The Court further observed that in an action for an

infringement, an injunction would issue as soon as it is
proved that the defendant is improperly using the plaintiffs
mark since an action of the infringement is a statutory night
and neither receipt nor actual damage need be proved in such
cases

5:3 Thereafter, again, arguments of the defendants- respondent

were noted. Judgment of Supreme Court in Amritdhara was
noted, judgment of the Supreme Court in Roche V.G.
Manners (AIR 1970 SC 2062) was also noted and ultimately,
in para 15,the learned judge has relieved interpreted the
judgment of Dropovit and Protovit and observed as under.:

6. "(15 (P- 1059) An important consideration however, in my opinion

in the instant case is this: It is an admitted fact that under the Drugs
85 Cosmetics Rules, 1945, the drug in question is included in
Schedule H. In view of the inclusion of the drug in Schedule H to
the Rules, it is available only on prescription of a Registered
Medical Practitioner under the provisions of the Rules. It is a
relevant consideration for the purpose of deciding the question of
deceptive similarity between the two marks. In my opinion, Mr.
Vakil is right in submitting that there is no test which can
universally apply in all cases and the test may vary from case to
case taking into account the commodity in question, a class of
purchasers or buyers, a class of dealers or sellers availability of

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".

6.1 Thereafter, again some of the judgments have been

considered by the learned Judge and in Paras 25 and 26, the
learned judge again considered schedule H drugs and
principle regarding interim injunction and observed as under:

7. (25 P- 1061) In my judgment, inclusion of a drug in Schedule H to

the Drugs and Cosmetics Rules, 1945 and its availability only on
the prescription by a Doctor is indeed a fact which cannot be
ignored by a Court of law. There is, therefore, really remotest
possibility of mistake or confusion. The Court will certainly
consider reasonable probabilities of any confusion or mistake but at
the same time cannot base its decision on remotest or hypothetical
possibilities. In my opinion, the argument of Mr. Vakil is well

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".

8. C26 P- 1062) With regard to application Exh, 30, I am of the

opinion that the trial Court has not committed any error of law in
not allowing the plaintiff to produce additional evidence at this
stage. Evidence is still to be led by the parties. The plaintiff filed a
suit on April 3, 1992. As per the order passed by this Court, the
trial Court was directed to decide the matter on or before April 18,
1992. Affidavit-in-reply was filed by the defendant on April 13,
1992 and on April 16, 1992, the plaintiff filed affidavit-inrejoinder.
Thereafter on April 18, 1992 the application was filed for

373
 production of other documents which was rightly rejected by the
Court".

8 Coram A.R.Dave J) (as he was then) Pam Pharmaceuticals V.

Richardon Vicks Inc. 2001 (1) GLR 125

1. In this case, Richardson, original plaintiff No. 1 is proprietor of

trade mark “ Vicks” for various medicinal preparations, Plantiff
No. 2 is subsidiary company of plaintiff No. 1 and is also engaged
in the business of manufacturing and marketing of medicinal
products under the trade Mark “Vicks”. The plaintiffs filed suit in
the City Civil Court, Ahmedabad being Regular Civil Suit No.854
of 1999 on the ground that defendant No. l,was offering for sale
cough drops under trade mark Vicks was written. That defendant
No. 1 was manufacturing cough drop under the mark Vicas and
the said mark is deceptively similar to the mark of the plaintiffs
trade mark Vicks. In Injunction application, both the parties filed
their affidavits and ultimately, the trial court granted injunction in
favour of the plaintiffs whereby defendant No.l was restrained
from manufacturing or selling its product Vicas by an order dated
6.4.1999 and being aggrieved by the said order, defendant No. 1
approached the Gujarat High Court by way of Appeal from Order
who is appellant before the High Court. Various contentions were
raised regarding jurisdiction of the City Civil court with which we
are not concerned . However, the main contention was that
defendant’s trade mark is deceptively similar to that of plaintiffs
trade mark and therefore, injunction ought to have been granted in
favour of the plaintiff. The learned Single Judge has observed that
as the court is deciding the matter at preliminary stage, the court
did not desire to deal with merits of the matter in details as it may

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”.

Thereafter, the learned judge observed in paras 41,42,44,45 and 50 as

under:-

3. (“41.P-141) In the instant case, upon perusal of both the products,

one may get confused as names of the products and get up under
which they are being sold are deceptively similar and they would
surely cause confusion. As the Honble Supreme Court has
observed in case Com Products Refining Co. (supra), one has to
look at the first impression which a person would have upon seeing
the products. Upon the first impression, as observed by the trial
Court, a customer is likely to be confused on account of phonetic
similarity and similarity in the get up of both the products”.

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)...

5. (“44, P- 142) It is pertinent to note that both the products were

produced before the trial Court and before this Court. Upon perusal
of both the products, the first impression which the learned Judge
of the trial Court had was that the product manufactured by
defendant No. 1 is deceptively similar to the one which is
manufactured by the plaintiffs. The mode in which the words
VICKS and VICAS have been written and the get up in which they
are being sold are quite similar. So as to ascertain whether the
products are deceptively similar, one has not to have careful

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”.

9 Macleods Pharmaceuticals Ltd v. Alembic Ltd., 2008 (5) GLR

4528

1. In the aforesaid matter, original plaintiff Alembic Ltd. filed a suit

on the ground that their trade mark Gerimac is a registered trade
mark and the defendant Macleods Pharmaceuticals is using trade
mark Gemimac. It may be noted that when the plaintiff filed the
suit against the defendant, the Ld. District Judge passed ad-
interim injunction order dt. 28/5/2008 against the defendant-
appellant in the appeal in terms of he prayer set out in the
plaintiffs injunction application. The question before the Gujarat
High court was as to whether the Ld. District Judge when he
passed ex-part Ad-interim the injunction order was bound to
consider the provisions of Order 39, Rule 3 of C.P.C. i.e.
requirement of recording reasons when the court grants ex-parte
injunction order. The learned Single Judge Hon’ble
Mr.K.M.Thaker considered the provisions of the Trade Marks Act.
He also considered several judgments on infringement and passing
off in this behalf. Ultimatrely, after considering the provisions of
Order 39,Rule 3, the learned Judge observed in Para 20(2) as
under:

2. “ 20(2) P. 4537, It is light of the legal position thus settled by the

Hon’ble Apex court that the impugned order is required to be
examined. A glace at the order shows that the learned court has
taken into account “A the similar purpose or use” of the two
products and that the plaintiff has several products in its armour
which have prefix GERI and the appellant (original defendant) has

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).

10 ($B Cadila Healthcare V. Speciality Meditech Pvt.Ltd. (Coram

M.R.Shah) 2010 (5) GLR 3742

1. The plaintiffs -Cadila Health Care registered trade mark is OCID;

wheres, the defendant's Speciality Meditech Pvt Ltd .1 trade mark
is DOMOCID. The Plaintiff flaliled a suit for infringement of trade
mark. The learned trial Judge by his order dated 28.11.2008
dismissed the interim injunction application in the suit filed by the
plaintiff. That is how Appeal from order No. 376 of 2008 was filed
by the plaintiff before the Gujarat High Court. The High Court
decided the matter on 8.10.2009.The learned Judge noted the
contentions of both the sides. He also considered the provisions of
the Trade Marks Act and various decisions cited by both the
parties. Ultimately the learned judge observed in para 9,12 as
under:

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".

1.2 610 (P- 3759-60) In the present case, impugned drug

'DOMOCID' is not deceptively similar to 'OCID'. That
products are not similar and packing and price are not
similar, and therefore, is not likely to create confusion. It
appears that even packing style and both drugs are different;
composition of drug is different, one is tablet and another
one is capsule, size of strip is different and both are Schedule
'H' drugs., therefore, impugned mark 'DOMOCID' is neither
phonetically nor visually similar to 'OCID'.

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)

11 Ciba Geigy Ltd, v. Torrent Laboratories Pvt. Ltd., 1993 (1)

Arbitration Law Reporter, 18.
There is a Gujarat High Court judgment in the case of Ciba Geigy
Ltd v. Torrent Laboratories Pvt Ltd.300 This is a case wherein
appeal was filed under section 109 of the Trade and Merchandise
Marks Act, against the decision of the Assistant Registrar of Trade
Marks dated 15.5.1991 accepting the application of respondent
No. 1 for registration of the trade mark ‘Ullciban’ subject to the
amendment under section 18(4) in the specification of goods so as
to read ‘medicinal and pharmaceutical preparations containing
‘Cimetidine’ for the treatment of ulcer and to be sold on the
written prescription only.

3°° 1993 (i) Arbitration Law Reporter, 18.

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”.

“8 A trade mark may be a source of confusion not because it is

deceptively similar to any trade mark but because it may appear to
be a memb7er of a family of marks of the registered proprietor.
Thus, when the petitioner is the proprietor of a series of marks such
as CIBAZOL and CIBALGIN, any other mark having the
common element CIBA as an essential part or then core thereof
would make it appear as if that trade mark also belongs to the
family of marks of the petitioner and the confusion as to the origin
of goods would be inevitable leading one to believe that they come
from the same source., It is well settled that, where there are
‘series’ of marks registered or unregistered but in use, having a
common feature or a common syllable ad where all the marks in
such a series belong to an opponent, these are generally
circumstances adverse to an applicant for a mark containing the
common feature, since the public might think that such a mark
indicated goods coming from the same source. The strength of
these ‘series’ objection depends on how distinct the common
feature is,. In the present case, it is obvious8 that the common
feature CIBA is highly distinctive in the impugned mark”

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”.

In Paras 10 and 11, the learned Judge considered the case of

P.Hoffmann-La Roche and Co Ltd v. Geoffrey Manners and Co301.

301 AIR 1970 SC 2064

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

302 AIR 1986 SC 137

303 AIR 1987 Del. 197

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”.

Ultimately, the appeal was allowed and order of the Assistant

Registrar was set aside.

12. O.J. Appeal No. 11 of 1993 Torrent Laboratories Ltd. Versus

CIBA Geisv Ltd. Coarm : Mr. Justice R. Balia and Mr. Justice A.R.
Dave decision : 08/12/98 (upreported)304 (Gui. High Court)

1.1 The question arose as to whether an application for registering

'ULCIBAN' as its trade mark under the provisions of 1958 Act has
deceptively similar to the registered trade mark 'CIBA' and several

304 Re: OJ Appel No.l 1/1993 (Guj. High Court)

395
 other trademarks for specification of the goods medicinal
preparations, pharmaceutical and veterinary preparations.

1.2 In this case, Torrent Laboratories Limited had filed an application

for registering 'ULCIBAN' as trade mark under the Act of 1958
on5.6.1984, which was advertised before acceptance under
section20 in Trade Mark Journal No. 925 dated 16.12.1989. The
CIBA Geigy Limited, respondent, in appeal filed notice of
opposition inter alia on the ground that it was a registered
proprietor of trade mark 'CIBA' and several other trademarks
comprising trade mark 'CIBA' for specification of the goods
medicinal preparations, pharmaceutical and veterinary
preparations for killing weeds and destroying vermin. The
opposition was founded on the ground that other mark 'ULCIBAN'
comprised of two prominent features 'ULCI' and 'BAN' and is
identical to the use to their trade mark. Registration of the
appellant's i.e. Torrent Laboratories Ltd. mark is likely to cause
confusion and deception amongst the trade and public who would
assume that it was yet another mark of the opponent.

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:

1.7 “Nature of deception or confusion may usually arise either in

relation to goods or in relation to trade origin or in relation to trade
connection. A person may buy goods pertaining to one group
thinking that it is brand which comes in his mind which in fact is
not the case. This may result in deception or confusion, as to
goods. A person looks at the mark and buys the goods thinking that

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.”

1.8 “The test of relative resemblance between comparative marks must

depend upon whether the proposed mark contains element of
earlier mark in its essential character in prominent way. If the same
is used with its projection in any manner prominently, so as to
create an impression that addendums are superfluous, the same
may be ignored and the substance of the matter may be seen, but at
the same time, merely because those very letters in the same order
are part of a different word, which is independent of other, the
latter cannot be denounced by straining to find out similarity. Then
likelihood of deception must be in ordinary and spontaneous
reaction to the marks and not through a strained of an expert.”

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.”

1.12 “We, therefore, after considering both the marks together as a

whole, do not find any such similarity or resemblance in sound or
in vision from the point of view of common purchaser, the doctor
who prescribes and the chemist who sells which can give rise to
reasonable probability of causing confusion or deception in his
mind while purchasing ULCIBAN which may lead him to think
that he is purchasing product of CIBA.”

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.

13. Astra IDL Ltd v. TTE Pharma Limited.305

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

305 AIR 1992 Bom. 35.

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).

The learned Judge thereafter considered the judgment of the Supreme

Court in Amritdhara Pharmacy v. Satya Dev Gupta,306 William Bailey
Ltd’s application307, Hiralal Prabhudas v. Ganesh Trading Company,308
Com Products Refining Co. v. Shangrila Food Products,309 Application
by Engg. Products Ltd310; judgment of the Supreme Court in
F.Hoffmann-La Roche and Co. Ltd v. Geoffrey Manners and Co. Pvt
Ltd.311 particularly page 2065 and 1966 RPC 152. The learned Judge also
considered arguments of defendant’s counsel and cases cited by him
before the Court. The learned judge also considered the judgment of the
Delhi High Court reported in AIR 1989 Delhi 44 and thereafter, in Para
18 observed as under:

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

306 AIR 1963 SC 449;

307 (1935) 52 RPC 136,
308 AIR 1984 Bom 218;
309 AIR 1960 SC 142
310 (1922) 39 RPC 155
311 AIR 1970 SC 2062

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

312 (1989) 14(2) IPLR 60

313 (AIR 1989 Delhi 44)

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”.

“30. In the circumstances, the notice of motion was made absolute in

terms of Para (a) and (b).

314 AIR 1900 DEL 19

406
14. Biochem Pharmaceutical Industries v. Biochem Synergy Ltd.
(coram: A.F.Shah J. as he then was).315

1 The plaintiffs filed a suit for perpetual injunction alleging

infringement of their registered trade mark and passing off and also
prayed for decree for rendition of accounts against the defendant.

1.1 The first plaintiff Biochem Pharma is a registered

partnership firm and second plaintiff is a private limited
company promoted by the first plaintiff. Both the plaintiffs
are engaged in manufacture and sale of pharmaceutical and
medicinal preparations and drugs. Plaintiff No. 1 is engaged
in the said business since 1961 and so far as plaintiff No.2 is
concerned, from 1976 as a licensee of plaintiff No. 1. It is
the allegation of the plaintiffs that the word ‘Biochem’ forms
an integral part of the corporate name and trading style of the
plaintiffs. The word ‘Biochem’ is also the house mark of the
plaintiffs. They allege that their trademark appears on all the
products manufactured and marketed by them. The mark
‘Biochem; has been registered as a trade mark of plaintiff
No.l under the Act of 1958 in class B register in respect of
pharmaceutical and medicinal preparations falling under
class 5 (V) of the fourth schedule to the said Act. They have
been using the mark Biochem for the past 33 years and by
virtue of such long user, the said mark has become
distinctive of the plaintiffs goods. They have incurred large
expense of lakhs of rupees by way of advertisement and
promotional expenses and the sale of their products under
the trade name Biochem is over twenty crores.

315 (Bombay High Court) 1998 RPC (18)

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.

1.3 Thereafter, notice correspondence ensued. It appears that

the plaintiffs had taken up the matter with the Registrar of
Companies, Madhya Pradesh in the year 1990.

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.

1.5 The learned Judge after going through various decisions

cited before him in Para 6, held that suit for passing off
against the defendants is maintainable.

1.6 The learned Judge considered the judgment of the Supreme

Court in the case of Kaviraj Pandit Durga Dutta Sharma v.
T 1 /

Navratna Pharmaceutical Laboratories, He also

considered section 29(2) - infringement of registered trade
mark and certain exceptions to the said mle under clause (2).
He also considered the judgment of the Supreme Court in the
-jin

case of Ruston and Hornby Ltd v. Z. Engineering Co. He

also considered Thermawear Ltd v. Vedonis Ltdm _and
various other decisions cited before him. Ultimately, in Para
19 and 20, the learned judge observed:

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”.

The learned judge also considered judgment of the Bombay

High Court in Bajaj Electricals Ltd v. Metals and Allies
Products ,319 in Para 22; judgment of the Supreme Court in
the case of Corn Products v. Shangrila Food Products.
He also considered various decisions cited at the bar and
ultimately, in Paras 24 and 25, observed as under:

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

319 AIR 1988 Bom 167

320 AIR 1960 SC 142.

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:

1.11 (Para 27, p 286) “On a plain reading of the aforesaid, it is

seen that it is only the unusual circumstances of the case
persuaded the Division Bench to restrain itself from granting
discretionary relief till the rectification application is
decided. Surely, the Division bench has not even remotely
suggested that the pendency of the rectification application
by itself can be a ground for refusing injunction if the
plaintiff otherwise makes out a storing prima facie case for
grant of such relief.”

As regards delay, laches and acquiescence, he observed in

Para 28 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.”

1.13 (Para 28, page 287). As regards balance of convenience, the

learned judge observed in Para 29 as under “In any event, I
have no doubt that balance of convenience lies with the
plaintiffs. A change of names, if that is what will emerge,
will be far less damaging to a company which has only
recently started to trade than the damage to the plaintiff who
are trading for more than thirty five years (see in this
connection Chill Foods (Scotland) Ltd v. Cool Foods Ltd
'I'S'y

it is true that the grant of injunction is likely to cause

some hardship to the defendants but this can be taken care of
by granting some time to the defendants to comply with the
injunction order”.

Ultimately, In Para 30 also, the learned Judge observed :

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”.

321 AIR 1990 Delhi,19

322 (1997) RPC 522).

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

1. Respondent No.l (orig,plaintiff No. 1) known as Wyeth Holding

Corporation is a company formerly known as American Cynamid
Company incorporated under the laws of USA and having its
principal office at New Jersey, USA. Respondent No.l is a
manufacturer and carrying on business inter alia in medicinal and
pharmaceutical preparations. Respondent No.2 is a company
incorporated under the Companies Act having its registered office
at Bombay. Respondent No.l is a registered proprietor in India
and abroad of various trade marks in respect of medicinal
pharmaceutical and veterinary preparations. Respondent No.l is
the registered proprietor in India of the trade mark Pacitane,
registered in respect of certain preparations in class 5 from the
Registrar of Trade Marks. The said registration has been granted
since 27th June 1950 and is renewed from time to time. According
to the plaintiff the word ‘Pacitane’ is said to be invented word.
Since 1955, pharmaceutical preparations under the first
respondent’s registered trade mark Pacitane have been in use in
India.

1.1 On 20.11.1995, the Drugs Controller, State of Bombay, had

issued manufacturing licenses for the tablets, under the trade
mark of ‘Pacitane’ along with other drugs to the
predecessors in title of the second respondent.

323 2005 (30) PTC 14 (Bom)

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.

1.3 Sometime in February 2000, it came to the knowledge of the

second respondent that then appellants started manufacturing
and marketing a pharmaceutical preparation under the trade
name ‘Parkitane’ and it was an infringement of respondent
No.l’s registered trade mark Pacitane. The respondents took
search at the trade mark registry, Mumbai and found that
then appellants have also applied for registration of the trade
mark Parkitane in class 5 in respect of the medicine and
pharmaceutical preparations and substances. The case of the
respondents is that use by the appellants of the word mark
Parkitane is visually, phonetically structurally and
deceptively similar to the registered trade mark Pacitane of
the respondents bearing No. 144713 dated 27.6.1950.

1.4 Notice correspondence ensued between the parties.

Respondents filed suit No. 2299 of 2002 on 17.7.2003.
They also filed affidavit in support of their say and also
taken out Notice of motion in question i.e. 2138 of 2003.

1.5 The appellants resisted the notice of Motion by filing

affidavit in reply on 8.8.2003. The respondents filed affidavit
in rejoinder. The learned Judge after going through the

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.

1.6 Being aggrieved, the defendants-appellants filed appeal

before the Division Bench of the Bombay High Court. Thus,
appeal was filed against the order of interim injunction
passed by the learned Single Judge. In Paras 16 and 17, (pp/
18 and 20) appellants’ submissions were recorded. In Para
18, submissions of learned senor counsel for the
respondents Dr Virendra Tulzapurkar (senior counsel) have
been recorded as also decisions cited at the bar. Learned
senior counsel also invited attention of the Division Bench to
various provisions of the Trade Marks Act. He also stated
the principles on which the Division Bench should consider
the case when interim relief is granted in favour of plaintiff.

Learned counsel relied upon the judgment in the case of

Cadila Health Care v. Cadila Pharmaceuticals Ltd. and
Laxmikant Patel v. Chetanbhai Shah.

In Para 24, it was observed as under:

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”

1.8 Learned advocate for the respondent relied upon the

judgment in Willmott v. Barbar VOL. ix Chancery
Division,page 97 and judgment of Bombay High Court in
'l'yA

Bal Pharma v. Centaur Laboratories Pvt. Ltd . Thereafter,

in Paras 28, 30.32.33.34.36.37.38 and 40, the Division
Bench observed:

(Para 28, p 27) “Prior and long use of trade mark in

pharmaceutical business by the respondents is prima facie
sufficient to pass appropriate interim order against the
appellants”.

1.10 Re- Publicia Juris and generic or common trade.

Distinctiveness over all similarity of broad features,
(considered in Para 28- p 27).

1.1 OA “ Para 30 , p 27- In the facts and circumstances referred

above,. The mark Parkitane is visually, phonetically,
structurally and deceptively similar to the registered trade
mark Pacitane. The first syllable and last syllable are
identical in both the marks. The letter small T is important
and emphatic. Structurally and visually, the marks are
similar and there is great overall similarity notwithstanding
the presence of the letter T and ‘a’ in the appellants mark,

324 2002 (24) PTC 226.

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.”

1.12 “33. Identical trademarks with common materia medica_and

its effect: We find that both the marks are quite similar, its
composition is comparatively same and both then
pharmaceutical preparations in question are for the treatment
of the disease ‘Parkinson’. The medical market is also same.
The learned Single Judge while rejecting the case of the
appellants and while granting interim order in favour of the
respondents relied on the following cases:

420
 1 Pianotist case325
2 (Cadila Health case Ltd v. Cadila Pharmaceuticals
Ltd.326
3 Medley Laboratories (P) Ltd v. Alkem Laboratories
Ltd.327

1.13 “34 (p 28). The comparison of trademarks as laid down in

Pionotist ease (supra) and as observed by the learned Single
Judger at page 238, has been reflected in 2001 OTC 300
(SC) in case of Cadila Health care Ltd v. Cadila
Pharmaceuticals Ltd (supra) Cadila has been followed by
the division bench in Medley Laboratories (P) Ltd v. Alkem
Laboratories (supra) . In the facts and circumstances of the
case, the principles laid down in Medley Laboratories
(supra) are applicable. In the present case, admittedly, the
pharmaceutical products are similar, the marks are similar,
and the purchasers are same. The compositions of both
products are same and being prescriptive drug, there is a
possibility of a deception and confusion. Merely because the
present pharmaceutical preparation has no disastrous
consequence even if, it is prescribed by the doctor, we are
afraid that itself cannot be the reason to interfere with the
impugned order.”

1.14 “36 (p.29). If goods are deceptively similar, usable by

similar customers are saleable in the same pharmaceutical
market, then composite of the products, if are saleable and
usable for the similar disease like Parkinson, there is more

325 (1906) 23 RPC 774

326AIR 2001 SC 1952: 2001 PTC 300
327 2002 (25) PTC 592

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”.

1.15 “ 37 (p 29). Merely pharmaceutical prescriptions of infringer,

like respondents are not a danger or fatal or contra indicate,
to public at large, it cannot be said that the judgment of Apex
Court in Cadila (supra) is distinguishable or does not apply.
The principles noted in Para 35 of the Cadila case (supra) are
definitely guiding factors for cases of identical trademarks
disputes.”

1.16 “38 (p 29) Materia Medica of two pharmaceutical

preparations in question are comparatively similar and/or
common and are operating in the same field and market
usable by same customer for Parkinson disease and having
regard to then judicial opinion expressed by the Hon’ble
Supreme Court in the cases referred above and also in the
later cases, we are of then view that the principle of publicia
juris or an acquisition or delay, that itself cannot be
sufficient reason to vacate the preventive or protective
interim order passed in the matter. We cannot overlook at
this stage, the settled law with regard to points like”
‘registered trade mark or proprietary right’ prima facie effect
of registration’, prior or long and continuous use’ ‘deceptive
or dishonest use or deception or confusion in the mind of
general consumers, concurrent use or permissible use and
whole circumstances of the case, specially while granting or

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”.

1.18 Pare 41 (p 30) “- Result, We accordingly dismiss the

appeal.”

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

328 AIR 1989 DELHI 44.

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’.

1.3 (Pare 8,(page 45) - Thus, injunction which was granted on

30.11.1987 was made absolute pending the disposal of main
suit.
'I'lQ

17. Ciba Geigy Ltd v.Crosslands Research Laboratories.

1 The plaintiff is a company engaged in the business of marketing,

medicinal and pharmaceutical preparations for several years
Diclofenac Sodium is one of the original products of the plaintiff.
Prior to 1960, the plaintiff adopted the trade mark Volraren for the
treatment of antiheumatic , anti inflammatory, antipyretic product
containing the drug Dicllofenac sodium. The plaintiff further
averred that the plaintiff is the registered proprietor of the trade
mark Voltaren in India under the trade mark number 204862 since
19.9.1961 in class 5 in respect of pharmaceutical preparations and
substances for human and veterinary use. By virtue of the
registration, the plaintiff is exclusively entitled to use the trade
mark Voltaren. The plaintiff also stated the sales figures and
advertisement and marketing expenses. According to the plaintiff,
the plaintiff under the trade mark Voltaren have acquired a unique
and enviable reputation and goodwill. That Hindustan Ciba Geigy
Ltd having its office at Bombay is an associate company of the

329 1996 PTC (16) (Delhi)

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.

2. The plaintiff stated that the defendant is also marketing

pharmaceutical products and has adopted the trade mark Volta-K in
respect of its product containing Diclofenac Potassium. The
defendant is selling its products in New Delhi, The defendant’s
product Volta K is indicated as a rapid acting analgesic and anti
inflammatory. The plaintiff first notice the introductory
advertisement issued by the defendant in Hindustan Times, New
Delhi on 8.4.1994. Thereafter, notice correspondence ensued
between the parties. Thereafter, as the defendant did not desist to
adopt the name, the plaintiff filed the suit for injunction restraining
the defendant from carrying on any business under or by reference

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.

The learned Judge (in Para 19 p. 13) considered the statutory

provisions of the Act and discussed legal position (in Paras 23 and
24 (p.14) as under:

2.1 “(23, p 14). 114 years ago in the year 1881 Lord Loingdale
'J'JA

in Jongston Co. v. Archipol Orrewing observed that ‘no

man can allow to use name, marks, letters or other indicia
by which he may induce purchasers to believe that then
goods which he is selling are the manufacture of another
person.”

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”.

330 (17 AC 219)

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:

2.3 (Para 38, p. 18, “Having regard to the totality of the

circumstances, including the business of the applicant
company even if the argument that the plaintiff is not
carrying on any business in India cannot be correct because
as submitted by the learned senior counsel for the plaintiff
the plaintiff has been supplying medicines in India on
various occasions and the transborder reputation cannot be
lightly ignored. The Madras High Court in 1995 Ahuja
Intellectual Property Cases page 82 has held that there is no
need that there should be actual business in India and the
goodwill or reputation does not depend on the availability in
a particular country. The Madras High Court has referred to
Daimler Benz Aktiengesellschaft v. Hindustan.331

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.”

2.5 In Para 43 (p 19, he observed:

2.5 “In the mark relating to sale of medicinal preparations, the

distributors have a vital role to play. The manufacturers
depend on the wholesale distributors and the retail medical

331 AIR 1994 Delhi 239).

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.

The medical representatives of established manufacturers

visit the doctors and the medical shops on regular intervals
but the manufacturers who have entered the field afresh
makes visits to the doctors and medical shops very
frequently to improve their sales. The doctors in the primary
health centres act on the representations made by the medical
representatives and they often go by the words of the
medical shops in their locality The doctors in the towns and
the metropolitan cities are very busy and they depend upon
the junior doctors for writing the prescription and we have
come across case where doctors giving wrong prescription
without knowing the exact composition of then medicines
and the manufacturers of the medicines.

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.

2.6 (Para 43, page 20)- Having regard to the globalization, of

the economy, when several drugs are coming into the
market from the manufacturers abroad and here, the persons
in the market are apt to get misled by the trade mark.
Therefore, while deciding the question whether Volta K is
phonetically similar to Voltaren and therefore, its
deceptiveness has to be considered on the words used and
not on any another considerations.

The adding of the word ‘K’ at the end of the word Volta are
mentioning it as K-Volta, does not make any difference.”

Thereafter, again, the learned Judge considered the judgment

of the Supreme Court in K. R.Chinnikrishna Chetty and

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:

2.6A. Para 46 (p.21).This view was affirmed by the Supreme

Court. “Therefore, in my view, the addition of the word ‘K’
is of no moment. We are to take into consideration the trade
practice and how the medicines manufactured by the
manufacturers get into the market at the selling point, 11
years ago, when the Central Government had not thought of
globalization in a discussion abroad under the Trade Names
and Generic Names. A problem for prescribing physicians
was realized and it is stated as follows”.

(page 22) “In many countries drugs are marketed by both

generic and trade names. To determine whether this dual
name system causes problems to physicians, the authors
asked 102 finished physicians if they recalled the
composition of combination drugs and if they connected the
corresponding generic and trade names. The generic name
corresponding to the given trade name was known on
average by 83% of the physicians who had recently
prescribed them but knowledge of the combination drugs
was poor. When generic names were given on average only
9% of the physicians who had prescribed them could
mention the corresponding trade names.

This survey showed deficiencies in physicians’ knowledge

of the components and names of drugs. It confirmed the

332 AIR 1970 SC 146

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.

Evidently, physicians cannot remember the different names

of the drugs. The problem is greatest for general
practitioners who handle the largest variety of patients and
drugs. It is likely that there is also confusion among other
-5-5-2

health professionals and among patients.”

4. Thereafter, the learned judge has considered the case of Corn

Products Refining Co. v. Shangrila Food Products,334 and then,
in Paras 51, 54, 55 and 56 he observed as under” (see pages 25,26)

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?”

4.2 (Para 54, p.25) “I recollect the observations of the Lords in

”2C

Reckitt and Colman Products v. Borden, that at the end

333 Drug Therapy by Hoister and Lasagna, 1986.

334 AIR 1960 SC 142

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”.

4.5 As regards balance of convenience, the learned Judge

decided in favour of the plaintiff.

18. Colgate Palmolive Company and another v. Anchor Health and

Beauty Care Pvt Ltd.336

1 Plaintiff No.l company- Colgate Palmolive- is a company

incorporated under the laws of United States of America having its

335 1990 RPC 341

336 2003 (27) PTC 478 (Delhi).

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:

2. (Para 52, p. 497). It is the overall impression that customer gets

as to the source and origin of the goods from visual impression of
colour combination, shape of the container, packaging etc. If
illiterate, unwary and gullible customer gets confused as to the
source and origin of the goods which he has been using for longer
period by way of getting the goods in a container having particular
shape, colour combination and get up, it amounts to passing off.,
In other words, if the first glance of the article without going into
the minute details of the colour combination, get up or lay out
appearing on the container and packaging gives the impression as
to deceptive or near similarities in respect of these ingredient, it is
a case of confusion and amounts to passing off one’s own goods
as those of the other with a view to encash upon the goodwill and
reputation of the latter.”

3. (Para 53, p 497), The plaintiffs have succeeded prima facie in

showing from the look of trade dress of the two articles, one
manufactured by the plaintiff and another by the defendant from
the point of view of not only unwary, illiterate customer/servants of
the household but semi literate also as the trademarks Colgate and
Anchor are written in English language cannot be distinguished by
ordinary customer of a country where bare literacy level is
abysmally low. There is every likelihood of confusion as to the
source on account of the similarity of substantial portion of the
container having particular colour combination and also shape of
the container which alone helps in determining the allegations of
passing off despite stripes in the same colour or in different colour.

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.

In Pars 56 and 57, learned Judge observed as under:

4. (Para 56, p 498). “It is not the diligent or literate or conscious

customers who always remain conscious to the quality of goods he
has been purchasing which determines an offence of passing off. It
is the unwary, illiterate and gullible person who determines by
arriving at a conclusion whether the infringed goods are
confusingly similar in colour combination, get up, lay out printed
over the container or packing, If it is not so, then, the offence of
passing off will cease to have its existence once the guilty party
chooses a different trade mark”

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’.

In pars 59,62 and 63, the learned judge observed:

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”.

7. (Para 62, p .499) “Significance of trade dress and colour

combination is so immense that in some cases even single colour
has been taken to be a trade mark to be protected from passing off
action. Colour combination is a trade mark within the definition of
the TMM Act as there is no exclusion in the definition. Even a
single colour has been held to be a trade mark. There may be
exception also. Exception is that where the colour cannot be
protected as the blue colour is for then ink and red colour is for the
lipstick. Red and white has nothing to do with the pink. Teeth as
white line and gum as pink colour alone at least sometimes can
meet the basic requirement as a trade mark. Colour depletion
theory is unpersuasive only in cases where a blanket prohibition is
being sought”.

8. (Para 63, p 499). “As to the element of deceit and confusion, it

varies from product to product and from customer to customer. As
regards the objection that the Court should not interfere that this
case pertains to two separate products that namely tooth powder
and tooth paste the facts are different, the containers are different
and the packaging is different. As regards the defense that the red
and white colour is common to the trade fact remains that no
manufacturer is using colour combination of red and white in

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:

9. (Para 67, p 500). As regards defense of delay, it is well settled that

delay is not a defense. Delay is relevant so far as damages are
concerned. This cannot stand in the way of injunction. If the
original use is dishonest where the notice has been issued,
inordinate delay or laches may at the most defeat the claim of
rendition of accounts. Party is not supposed or expected to rush to
the Court immediately”.

10. (Para 69, p 500). “Upshot of aforesaid discussion leads to the

most ineluctable conclusion that the plaintiffs successfully
established a prima facie case for injuncting the defendant from
using the colour combination of red and white in that order as
trade dress on the container and packaging,. As a consequence,, the
application is allowed and defendants are by way of ad interim
injunction, restrained from using the colour combination of red and
white in that order on the container/packaging of its goods viz. the
tooth powder”.

19. Novartis AG (plaintiff) v. Crest Pharma Pvt Ltd (defendant)

(coram :Manmohan Singh.J)337

1 The plaintiff Novartis AG is manufacturing and selling

pharmaceutical specialities and is in the business for the past 100
years. The plaintiff is the proprietor of the trade mark ‘SECEF’, a
medicinal formulation containing cefisime which is sold by the
plaintiff in capsule and suspension form. (Re- para 3. Page 59)

337 2009 (41) PTC 57 (Delhi).

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.

3 The plaintiffs application for registration of the said trade mark is

pending in India in class 5 on 9.10.2002. Though the plaintiffs
earlier application in class 5 was abandoned by it, the trade mark
was registered in 53 countries in the world.

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.

5 It is plaintiffs case that since February 2007, the plaintiff came to

know that defendant No.l is using the said trade mark. The
products packaging revealed that it was being manufactured by
defendant No.2. The search report also revealed that defendant
No.l had applied for registration of the trade mark in class 5.

6 Thereafter, some correspondence took place Thereafter, the

plaintiff filed the suit against the defendants alleging that the two
trademarks SECEF and CECEF are visually, structurally and
phonetically similar and are also prescribed for the identical
indications and the use of the said trade mark CECEF by the
plaintiff is unauthorized and unlicensed, therefore, the consumers,

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.

7 Lastly, it was alleged by the plaintiff that the defendants’ adoption

of the trademark CECEF is deliberate with a view to rake the
business and earn illegal profits from the reputation and goodwill
which is created by the plaintiff in respect of its trade mark SECEF
and it is a classic case of passing off where the defendants are
passing off their goods as that of the plaintiff.

8 The defendants raised several defenses- (i) the defendant’s trade

mark CECEF is visually, structurally and phonetically different;
(ii) the plaintiffs product is prescribed for urinary respiratory tract
infection and acute Otis; whereas defendant’s product is anti-biotic
and is prescribed mostly for post operation basis.(iii) The
plaintiffs product is available in tablet and oral suspension;
whereas the defendants’ product is available in injunction form’
(iv) there is no confusion as the product of the defendants being
schedule Ff drug can only be sold in retail doctor’s prescription.(v)
The plaintiff has also failed to prove the element of deceit and in
the absence of the same, the suit is liable to be dismissed.

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.

11 (Para 2, p. 63) I do not accept the submission of the learned

counsel for the defendant as I feel that it is more dangerous if the
pharmaceuticals products bearing the same mark is used for
different purposes for the same ailment or even otherwise . I also
do not accept the contention of the defendant’s counsel that there
would be no confusion if the product contains different ingredients/
different salt. In my opinion, it is more dangerous and harmful in
the trade if the same trade mark is used for different ailments.

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.

17. In Para 43, (page 70), the learned held as under:-

“After considering the overall circumstances of the matter, I am of

the view that prima facie it appeared that the defendants have
infringed the legal rights of the plaintiff and therefore, they have n
o justification to use the impugned trade mark. I am of the
considered view that an ex parte ad interim injunction granted by
this Court on 6th May 2008 is to be confirmed and ordered
accordingly. The application stands disposed of’.

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)

Rockitt and Colman are proprietors of registered trade mark in respect of

goods falling in clauses (1), (2) and (30 of schedule IV of the Trade and
Merchandise Marks Rules, 1959, One of their registered trademarks
consists of a picture of a bird sitting on a twig surrounded by a circle with
lines in the background, somewhat like the rays of the sun. The trade
mark has the words ‘Robin Ultra Marine Blue’ on it. Another registered
trade mark if Reckitt and Colman consist of a bird sitting on a twig.
These marks have been registered as far back as 1940 and 1946. These
trademarks distinguish the goods of the respondents from similar goods in
the market. According to them, a typical feature of their trade mark is a
bird sitting on a twig.

338 AIR 1991 BOMBAY 76.

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.

Thereafter, the appellants applied for registration of trade mark consisting

of a device of two birds- one partially hiding the other, sitting on a twig
with the word ‘Bui BuF written on it bottom. The registration was
applied for in respect of goods falling in clause (2) viz. colours. The
trade mark was ordered to be advertised before acceptance. The
respondents filed a notice of opposition to this trade mark on 5.5.1978.
Thereafter, they filed their affidavit in support of the opposition. The
parties also filed their affidavits of evidence. Ultimately, the matter came
up for hearing before the Deputy Registrar of Trade Marks who by his
order dated 28.10.1980 dismissed the opposition of the respondents and
permitted the registration of the trade mark applied for by the appellants.
The Deputy Registrar also gave benefit of section 12 (3) of the Act to
the appellants on the ground that they had used the trade mark honestly
and concurrently since 1969.. Accordingly, he permitted the registration
of the appellants’ trade mark.

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:

“From this point of view of broad similarity, or general impression which

then trademarks give, both the trade marks appear to be very similar. A
point of distinction which the Deputy Registrar made was that while the
o8ne trade mark had the words ‘Robin’ as a part of it, the other trade
mark would have the words ‘Bui Bui’ as a part of it. And these words are
different. But, in our view, this makes no difference to the overall
impression which the two trademarks give. We agree with the learned
Single judge that what would normally be retained in mind, after looking
at the trade marks, would be the picture of a bird sitting on a twig.
Whether the picture carries the legend ‘Bui Bui’ or ‘Robin’, does not
make much difference to the overall similarity of the two trademarks”.

In Para 17 on page 81, it was further held-

“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-

“Nevertheless, they continued to use the same device on their product

presumably in the hope of getting registration at a subsequent date. Such
a user cannot be considered as an honest concurrent user under sectioOn
12 (3). We, therefore, agree with the learned Single Judge that the benefit
of section 12 (3) cannot be granted to the appellants”.

21. Allergan Inc, v. Milment Oftho Industries. It is a division bench

judgment by Ruma Pal (As she was then) and Devendra Kumar
JahuJJ (judgment by Mrs Ruma Pal,J).339

1 In that case, the appellant Allergan Inc. was a company which

manufactured pharmaceutical products in several countries. It did
not carry on any business in India. The first respondent Milment
oftho Industries was a company which carried on business of
manufacturing pharmaceutical products in India. The appellant
sought to restrain the respondents from using the mark ‘Ocuflox’ in
respect of a medicinal preparation manufactured and marketed by
the respondents. The issue to be decided in this appeal was the
right of a foreign manufacturer to restrain use of a mark in India on
the basis of prior user of the mark outside the country.

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

339 AIR 1998 Cal. 261

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.

1.4 Para 13 (pp. 264-265)- Reputation is the connection that the

public makes between a particular product or service and a
particular source which may or may not be known. Some
Courts have held that reputation which is built up on the
basis of trade within the country is entitled to protection
from passing off. Others Courts have made some concession
to the communication explosion and held that if the plaintiff
has a reputation in another country, his right to the mark will
be protected if it is coupled with some actual or proposed
business activity within the country. In my opinion,
reputation framing the basis of a passing off action need not
be so localized. Whatever the compulsion for the Courts
taking the first or second view in other countries, as far as
this country is concerned, Courts in India prescribe to the
third view and have held that a plaintiff with a reputation
which is established internationally can sue to protect it in
this country even if it does not have any business activity
here. In other words, reputation of a product may precede its
introduction and may exist without trade in such product in
the country.

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.

1.7 In Para 17 , the High Court considered the earlier judgment

of the Delhi High Court reported in N.R.Dongre v.
Whirlpool Corpo.,340 which is affirmed in an appeal.341

1.8 In Para 18, the Court considered another judgment of

Calcutta High Court of J.N.Nichols (Vimto) Ltd v. Rose
and Thrisle (p. 266).342

1.9 In Para 19, the Court held (p. 266)

“Thirdly, the matter will have to be looked at from the point

of view of the purchasing public. If it is possible for a
purchaser of the respondent’s product in India to do so under

34U AIR 1995 Del. 300

341 (1996) 5 SCC 714 (P. 265-266)
342 (1994) PTC 83 (DB)

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”.

1.10 In Para 20 (p. 266), the Court observed

“Finally, special considerations come into play where the

product is a medicinal preparation. See F.Hoffman - LA
Roche and Co. AG v. DDSA Pharmaceuticals343 more so
when the clinical composition of the two competing products
are different not so much as to protect the reputation of the
plaintiff but to safeguard the public. In the matter of
Vitamins L.D’s application for trade mark344 applied for
registration of a mark in respect of a pharmaceutical product
in England. The application was opposed by company which
had its mark registered in America “(p.266)

1.11 In Para 21, the Court held (p.267)

“Applying these principles to the facts of the case, it appears

to be clear from the materials before the Court that the
appellant had sufficient word wide reputation connecting the
name Oeuflox to sustain the complaint of passing off by the
respondent”.

1.12 In Para 22, (p.267) and Para 23 (p.267), the Court considered
the affidavits regarding volume of sale and advertisement.

343 (1972) RPC 1)

344 (1956 (1) RPC 1)

450
 1.13 In par 32, the Court held (p. 268)

“Apart from advertisements, the possibility of confusion

between the two products in the minds of well travelled
Indians and of those visiting India would be a real one. It is
not a case of isolated use in a remote country but of wide
spread use in several countries”.

1.14 In Para 34, the Court held (p. 268)

“Once the appellant’s product is released in the Indian

market, the consequences may well prove disastrous given
the fact that in India, drugs are available without prescription
(see Astra IDL v.TTK Pharma Ltd).

1.15 In Para 36, the Court held (p. 269)-

“To sum up, in the interest of public, there cannot be two

medicinal preparations bearing the same name from different
sources and with different compositions. One must go. The
appellant was first in the field in several countries and that
gives it the edge over the respondents”.

1.16 In Para 39, the Court held (p. 269)

“This brings us to the question of delay which according to

the respondents, was sufficient to defeat the appellant’s
claim to any interlocutory relief. On the other hand, in Astra
IDL Ltd v. TTKpharma Ltd,245, and Hindustan pencils Pvt
Ltd v. India Stationery Products,246 the Courts were of the
opinion, which I respectfully adopt, that where the interest of

345 AIR 1992 Bom 35

346 AIR 1990 Del. 19.

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”.

1.17 In Para 42, the Court held (p. 270)

“Having regarded to the discussion, in my judgment, the

order under appeal must be set aside both on principles of
law and fact”.

1.18 In Para 43, it was observed (p. 270)

“Subject to the undertaking given by the appellant to the

Court, which is hereby recorded, to compensate the
respondents for loss, if any, which may be suffered by the
respondents by not using the name Oeuflox on their product,
the appeal is allowed and the order under appeal is set aside.
The ad-interim order granted by the learned Single Judge on
18.12.1996 will therefore survive and will continue until the
disposal of the suit. There will be no order as to costs”.

Devendra Kumar Jain,J. : I agree”.

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:

2. 65.22.4 -P- 1748). In the present case, there is no evidence about

actual confusion or deception which might have taken place. We
can take it that even likelihood of confusion or deception would be
sufficient to pass a decree in the present matter. I do not find any
material to show that even it can be said that there is a likelihood of
confusion between the two words in the minds of the consumers,
chemists and doctors".

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".

4. 19 ( P- 1756) So far as the chemists are concerned, it is also

expected from them that they should closely read the names of the
medicines prescribed by the Medical Officer or Private Doctors in
their prescriptions. Therefore, also it is not likely that the traders
will commit some error in supplying one medicine in place of
another. It has also been argued by Mr. Mihir Thakore, learned
Senior Advocate for the appellant that the handwritings of the
doctors are not very good, and therefore, mistake is not unlikely. If
the mistake is committed on account of the handwritings of the
Doctors then for such mistake, similarity in name is not necessary.
Mistake cannot be attributed to the similarity in the names of two
medicines. It has also been contended that the two medicines are
scheduled in Schedule H medicine, and therefore, it is necessary to
have prescription of registered Medical Officer before sale and
purchase of these two medicines, the practice is otherwise and at

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.

Therefore, there is a protection given to such medicines when they

are shown in Schedule H. Apart from the aforesaid aspect of the
case, we may also consider the fact that as per the argument, the
practice prevailing in the State and in the country is that the
medicines shown in Schedule H are also being sold without
insisting on prescription. Even then, the names are not so
deceptively similar and identical that there would be some error or

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".

7. "(23 P-1758) It would be relevant to consider that so far as the

SPARDAC is concerned, the emphasis is on a and its
pronunciation is quite different staring with s. The letter s is not
being pronounced fully and it does not have a vowel to follow it
like a, e, i, o, u. It is followed by a (consonant) non-vowel letter p
and hence s has a half-pronunciation. On the other hand, so far as
SUPERDAC is concerned, the emphasis is on u, and therefore, the
pronunciation starts from su. Therefore, though the last letters
DAC are common in the two medicines, the two words Spa and
Sup cannot be treated to be similar from any comer of imagination
or from viewing the matter from any comer. Even sound of the two
words is not identical or similar. Therefore, when a consumer goes
to a chemist for buying SPARDAC, it is not likely that he would
not properly pronounce the word SPARDAC and the chemists
would hear and follow and understand it as SUPERDAC in place
of SPARDAC. Even the pronunciation are not similar or identical,
much less, deceptively similar or identical".

8. 625 (P-1758) We also find in the medicine SPARDAC 100, the

strip is also on record. Here, we find that there is a red cross and in
horizontal, the word SPARDAC 100 is mentioned. The letters are
in white colour and they are written in the red cross. The medicines
are again small in size and round in shape".

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:

10.1 We can also look at the strips of the two medicinal

preparations.

The word SPARDAC is entirely in capital letters with A at the

third and the sixth place is written artistically as said above. The
word SUPERDAC shows only S in capital letter and rest in small
letters.

Then, the word CADILA in SUPERDAC is found with

prominence and in capital letters which is not present with
SPARDAC.

457
The colour and get-up of the two strips of these two medicines are
noticeably different.

The colour and the get up of two medicines are different.

The size of the two medicines is different

The shape of the two medicines is different

Their cartons are clearly different. There also, the size, colour and
get-up of the cartons are distinct.

Since the letter U immediately follows the letter S in SUPERDAC,

the pronunciations of the two medicines are different as S is
followed by P and then by A in SPARDAC.

DAC is common in both. Then SUPER has five letters whereas

SPAR has four. This makes lot of difference.

SUPERDAC sounds differently from SPARDAC.

Even on a bare look at the two words SPARDAC and SUPERDAC

both are apparently different. So, there is no visual similarity
between the two.

As per the records of the trial Court, SUPERDAC strip has a

writing on it in capital letters which reads CIPROFLOXACIN as
TINIDAZOLE TABLETS.

SPARDAC 200 has a writing on its strip which reads as

SPARFLOXACIN TABLETS

SPARDAC 200 has also a writing in Hindi 200 which is absent

in SUPERDAC.

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.

The word CADILA is in capital letters on the strip of SUPERDAC.

It is not there in case of SPARDAC 200. SPARDAC 100 HAS
THE WORDS Zydus Cadila which word do not find place in
SUPERDAC.

The price is different.

11. Ultimately, the learned judge dismissed the first appeal.

23 Torrent Pharmaceuticals Ltd v. The Wellcome Foundation Ltd

*1 (coram :K.M.Mehta.J)347

1 M/s Torrent Pharmaceuticals Ltd- ori-applicant-appellant-

petitioners herein have filed this appeal against the judgment and
order dated 19.8.19094 passed by the Assistant Registrar of Trade
marks, the respondent No.2 herein, wherein he has allowed the
opposition No. AMD 425 filed by Wellcome Foundation Ltd and
application No,. 48313 in class 5 of fourth schedule of the Act is
ordered to be refusd for registration under the provisions of Trade
and Merchandise Marks Act, 1958.

347 2002 (24) PTC 580 (Guj. High Court)

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. ^ ‘

2 The Wellcome Foundation Ltd an English company, respondent

No.l gave a notice on 27.4.1992 of their intention to oppose the
registration^ the trade mark advertised as aforesaid on the ground
of its violation of sections 9,11 (a), 11(c), 12(1) & 18 (1) of the
1958 Act. On 27.7.1992, the applicants contested the said notice of
opposition by filing their counter statement (u/s 26 of the Act)
consisting the grounds in support of the registration of the
application as well as the grounds in rebuttal to the objection taken
by the opponents in their notice of opposition. The opponents
objected to the said application on the ground that one of their trade
marks is ZOVIRAX which was registered since 17.8.1987 in class
5 and another ZOVIREX in class 5 in respect of pharmaceuticals
and medicinal preparations and substances having been registered
since 17.8.1977 and 14.4.1978 respectively.

3 After hearing the parties, the Assistant Registrar of Trade Marks by

his order dated 19.8.1994 came to the conclusion that the marks i.e.
marks of applicant and opponent have the highest degree of
resemblance visually as well as phonetically. The Assistant
Registrar also came to conclusion that the mark applied for i.e.
TROVIREX is deceptively similar to the opponent's registered

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.

4 Thereafter, the court considered the statutory background, section

21-opposition to registration- and several judgments of the High
courts and Supreme court. Thereafter, the court referred to
Halsbury's Laws of England, 4th edition, vol. 48 para 48, page 114
which reads as under:

"Establishing deception or confusion- To establish a likelihood of

deception or confusion in an action for passing off where there has
bden no direct misrepresentation generally requires the presence of
two factual elements: (1) that a name, mark or other distinctive
feature used by the plaintiff has acquired a reputation among a
relevant class of persons; and (2() that members of that class will
mistakenly infer from the defendant's use of name, mark or other
feature which is the same or sufficiently similar that the defendant's
goods or business are from the same source or are connected.
While it is helpful to think of these two factual elements as two

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.

5 In arriving at the conclusion of fact as to whether deception or

confusion is likely, the court will have regard to (a) the nature and
extent of the reputation relied upon, (b) the closeness or otherwise
of the respective fields of activity in which the plaintiff and the
defendant carry on business; (c) the similarity of the mark, name,
etc. used by the defendant to that of the plaintiff; (d) the manner in
which the defendant makes use of the name, mark, etc, complained
of and collateral factors, and (e) the manner in which the particular
trade is carried on, the class of persons who it is alleged is likely to
be deceived and all other surrounding circumstances.

6 In assessing whether confusion or deception is likely, the court

attaches importance to the question as to whether the defendant can
be shown to have acted with a fraudulent intent, although a
fraudulent intent is not a necessary part of the cause of action.

7 The evidence which is admissible on the question of likelihood of

deception or confusion, and the way in which the court assesses it,
including the significance to be attached to the presence or absence
of actual instances of confusion, are discussed subsequently in
relation to both passing off and infringement of trade marks".

8 It was further observed in para 7.1 (page 599)-

"In my view, the function of trade mark is to give an indication to

the purchaser or possible purchaser as to the manufacture of

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".

9 Thereafter, in para 8, it was observed (page 599)- "In my view, the

finding of the Registrar of Trade Marks that both the marks have
the highest degree of resemblance visually as well as phonetically
and the word 'Trovirex' is deceptively similar to the opponent's
registered trade marks 'Zovirax' and 'Zovirex' is correct. The word
'Trovirex' is so nearly resembling to opponent's registered trade
mark 'Zovirex' so as to cause confusion amongst general public i.e.
an average man with imperfect recollection. In my view, both the
conditions specified under sections 11 and 12 (1) of the Act are
satisfied and therefore the objection raised by the opponent in his
opposition should be considered as well founded and the
application of the applicant for registering the trade mark 'Trovirex'
should be rejected. This court therefore confirms the order and
finding of the Registrar in this behalf. In my view, the opinion of
the Registrar should not be lightly disturbed because he has an
expert knowledge in the matter".

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,

there exists a likelihood of confusion on the part of the public, which

includes the likelihood of association with the earlier trade mark".

6.5 LIST OF JUDGEMENTS ON PHARMACEUTICAL

PRODUCTS

1. Chimanial Jaivandas Sheth v. State of Maharashtra. In

connection with what is drug?

2. M/s Puma Ayurvedic Herbal (P) Ltd. v.commissioner, Central

excise, Nagpur.349 In connection with what is drug?

3. Amritdhara Pharmacy v. Satya Deo Gupta. Amrutdhara &

Laxmandhara were held to be deceptive similar.

348 AIR 1963 SC 665

349 AIR 2006 SC 1561.
350 AIR 1963 SC 449.

464
4. Kavira- Pandit Durga Dutt Sharma vs. Navratna Pharm.
Laboratories.351 Novratna Pharama Case.

The above two judgments are three judge-bench judgments of the

Supreme court which deal with important principle regarding
infringement and passing off wherein the Supreme court has considered
several English cases and Kerly on Trade Mark.

5. H.Hoffimann-La Roche and co. v. Geoffrey Manners and Co.352

Dropovit and Protovit. Two judge-bench judgment of the Supreme court

wherein the apex court has considered several English cases. However, it
appears that attention of the apex court was not invited to the earlier two
judgments of three judge bench of the apex court wherein important
principle of infringement and passing off were considered and, therefore,
the apex court in the aforesaid case has held that Dropovit and Protovit
are not deceptively similar.

6. Wander Ltd v. Antox India Pvt. Ltd 353

‘Cal-De-a’. The apex court has considered important principle regarding

injunction and passing off and power of the appellate court.

7. Cadila Healthcare Ltd v. Cadila Pharmaceuticals Ltd

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

351 AIR 1965 SC 980.

352 AIR 1970 SC 2062
353 1990 (supp) SCC 727
354 AIR 2001 SC 1952.

465
cases. This is a land mark judgment on the principle of infringement and
passing off in relation to pharmaceutical product.

8. Midas Hygiene Industries v. Sudhir Bhatia 355 Principle regarding

passing off and injunction has been considered.

9. Milmet Oftho Industries vs. Allergan Inc.356 Ocuflox and Ocuflox

held deceptively similar.

10. HEINS Italia v Dabur India357 Glucose D. Held deceptively similar.

6.5.1 JUDGMENTS OF GUJARAT HIGH COURT

1. Sun Pharmaceutical Industries v. Ciba Geigy Ltd358 Words

Clofraniii and ‘AnafraniP. Held to be not similar.

•5CQ

2. Cadila Healthcare v Swiss Pharma Pvt Ltd Superdac and

Spardac were not held to be deceptively similar.

3. Torrent Pharmaceuticals Ltd v. The Wellcome Foundation Ltd 360

Trovirex and Zovirex held to be deceptively similar.

4. Raj Remedies v. Richardson Vicks Inc.361 Vicks and Vicas held to

be deceptively similar.

5. Pam Pharmaceuticals v. Richardson Vicks362 Vicks and Vicas held

to be deceptively similar.

6. - Cadila Healthcare Ltd v. Speciality Meditech Pvt Ltd 363 Domocid

and Acid were held to be not deceptively similar.

355 (2004) 3 SCC 90

356 (2004) 12 SCC 624
357 2007 (6) SCC 1
358 1992 (2) GLR 1049
359 2002 (2) GLR 1734
360 2002 (24) PTC 580
361 2003 3 GLR 2323
362 2001 (1) GLR 125

466
7. Macleds Pharmaceuticals vs Alebic Ltd.364 Principle regarding

Order 39, Rule 3 (proviso), CPC has been considered (reasons to

be recorded).

6.5.2 JUDGMENTS OF BOMBAY HIGH COURT

1. Astra-IDL Ltd v. TTK Pharma Ltd.365 Betalong and Betalac held

to be deceptively similar.

2. Winthrolucts Inc v. Eupharma Laboratories Ltd.366 Pandol and

Panadol held to be deceptively similar.

3. Glaxo Group Ltd v. Neon Laboratories.367 Trox and Trex held to be

deceptively similar.
'If.O

4. Sun Pharma Indus, v. Meth Holdings Corporation Parkitane and

Parkitane held to be deceptively similar.
1/A

5. Ranbaxy Labo. v. Indus Biotech P Ltd Rabital and Revital held

to be deceptively similar.

6. Wheth holdings Corporation v. Burnet Pharma. 370 Folvite and

Fol-V held to be deceptively similar.

7. Cadila Pharmaceuticals Ltd v. Sami Khatib of Mumbai37' Arbitone

and RB Tone held to be deceptively similar.

363 2010 (5) GLR3742

364 2008 (5) GLR 4528
365 AIR 1992 BOM.35
366 1998 PTC 18
367 2004 (29) PTC 88
368 2005(30) PTC 14
369 2006 2 Maharashtra Law Journal- 78.
370 AIR 2008 BOM. 100: 36 PTC 438
371 2011 [47JFTC 69 (DB).

467
8. M/s Johann A.Wulfing v. Chemical Industrial and Pharmaceutical
Laboratories372 Ciplamina and Complamina held to be not
deceptively similar.

6.5.3 JUDGMENTS OF CALCUTTA HIGH COURT

1. Banwaridas Pualla v. Colgate Palmolive Co.373 Formis and

Charmis were held to be deceptively similar.

2. Allergan Inc v. Milment Oftho Industries (confirmed by the

Supreme Court.374 Ocuflox and Ocuflox were held to be
deceptively similar.
'1HC

3. Allergan Inc v. Chetana Pharma Oxyline and Oxyline held to be

deceptively similar.

6.5.4 JUDGMENTS OF DELHI HIGH COURT

1. Sarabhai International Ltd v. Sara Exports International376

Sara/Sarabhai and Sarabhai held to be deceptively similar.

2. SBL Limited v. Himalaya Drug Co.377

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.

372 AIR 1984 BOM 281- (DB)

373 AIR 1979 CAL 133
374 AIR 1998261
375 2007 (34) PTC 267 (Cal).
376 AIR 1988 DELHI 134
377 AIR 1998 DELHI 126

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.

3. Ciba Geigy v. Crosslands Research Laboratories Voltaren and

Voltaren were held to be deceptively similar.

4. Win-Medicare Ltd v. Dua Pharma380 Dicamol and Diclomol held to

be deceptively similar.

5. M/s Charak Pharma v. MA_Deepharma Ltd381 Alsarex and Ulcerex

held to be deceptively similar.

07

6. Aviat Chemicals Pvt Ltd v. Intas Pharma. Lipi and Lipicard were
held to be not deceptively similar.

7. Novartis AG v. Wanbury Ltd383 Triaminic and Triominic were held

not deceptively similar.

8. Pfizer Ireland Pharma v. Intas Pharma.384 Liptor and Lipcor held to

be deceptively similar.

378 2013 (53) PTC 1

379 1996 PTC 16
38° 1998 pTC (18)
381 AIR 1999 DELHI 15
382 2001 FTC 601
383 2005 (31) PTC 75
384 2004 (28) OTC 456

469
 385
9. Astrazeneca UK Ltd v. Orchid Chemicals and Pharma Meromer
and Meronem were held not to be deceptively similar.

10. Kalindi Medicure Pvt Ltd v. Intas Pharma386

Loprin and Loparin 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

13. Schering Corporation v. Alkem Laboratories Temokem and

Temoget held to be not deceptively similar.

14. Novartis AG v. Altenburg Biotech Pvt Ltd390 Triaminic, T-minic

and Triatussic held to be deceptively similar.

15. Pearl Retail Solutions Pvt Ltd v. Pearl Education Society391 Pearl

and Pearl held to be deceptively similar.

6.5.5 JUDGEMENTS OF MADARAS HIGH COURT

1. Mount Mettur Pharmas v. Ortha Pharma392 Utogynol and Ortho-

Gynol held to be not deceptively similar.

2. UAS Pharma v. Ajantha Pharma393 Sunstop and Sunstop held not

to be deceptively similar.

385 200? (34) PTC 469.

386 200? (34) PTC 18
387 200? (34) PTC 109
388 2008 (41) PTC 5?
389 2010 1421 PTC 7?2
390 2011 (47) PTC 349
391 AIR 2013 DELHI 181
392 AIR 1975 MAD, 74
393 2009 (41) PTC 248 .

470
6.5.6 UNREPORTED JUDGMENTS:

1. Perettti Van Melle Benelux B V v. Ramkrishna Food Products and

others394 Passing off case.

2. Ms DRS Logistics P Ltd v. Ra’es Agarwal395 Agarwal Packers and

Movers and Agarwal’s Packer and -Movers- held to be deceptively
similar.

3. Coca Cola Co. v. Ratesh396 Cock and Coke Studio held to be

deceptively similar.

6.5.7 ENGLISH JUDGMENTS ON PHARMACEUTICAL

PRODUCTS

1. De Cordova and others, v. Vick Chemical Co. 397In the Privy

Court: (from the court of appeal in Jamaica).

1 Vick Chemical sued for infringement of two trademarks registered

in Jamaica (one containing, and the other consisting of, the word
‘VapoRub’) by the importation and sale of jars of ointment marked
‘Karsote Vapour Rub’. The defendants contended that the first
mark was not infringed and that the second was invalidly
registered, being merely descriptive of the goods concerned (an
ointment of the vapour rub type), and having been registered
(although a word, not being an invented word, and having direct
reference to the character of the goods) without an order of the
court deeming it to be distinctive. They further contended that the
words ‘vapour rub’ as used by them were a mere bona fide
description of their goods.

394 AIR 2013 NOC1 351 DELHI.

395 AIR 2013 NOC 352 DELHI.
396 AIR 2013 [NOC] 353-DELHI.
397 1951 (68) RPC 103

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.

2.2 That the second mark, although descriptive, was on the

evidence distinctive of V’s goods.

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.

2.5 That the defendant had been guilty of passing off.

2.6 That the appeal should be dismissed.”

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.

398 (1992) RPC 421

473
2. INTERNATIONAL CHARACTER OF MEDICAL PRODUCTS-
In the High Court of Justice Chancery Division, before Mr Justice
Lloyd Jacob.

In Re- Application of Vitamins Ltdm, In this case, the applicant sought

registration of the trade mark ‘Pabalate’ which was already registered and
being used by the opponents in the United States and in Canada but not in
the United Kingdom. The absence of use by the opponents in U.K. was
relied on by the applicant to contend that the applicant had proprietary
right in this trade mark and that no deception would be caused since the
opponents operated within different geographical limits. Moreover, the
fact that the opponents had, merely a fortnight ago, withdrawn their
application for registration of the trade mark in U.K. due to, among other
factors, the distinct possibility that the mark would never be used in U.K.
was also relied on by the applicant as an indication that the opponents
were relinquishing all the claims to the mark in U.K.

Facts: V Ltd applied to register 'Pabalate) in part A for pharmaceutical

substances. The application was opposed under sec 11 by A.H.R. Co. Inc.
a U.S.A. corporation, on the ground that they had registered this word in
various countries and had advertised it extensively in medical journals
which circulated in this country. They also contended that the Registrar
should refuse registration in the exercise of his discretion.

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.

399 (1956) (73) RPC 1

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.

On the facts of the case, Lord Lloyd Jacob), held as under:

(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”.

Ultimately, on page 13, the learned judge observed:

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”.

3. High Court of Justice- Chancery Division Harker’s Stags Ltd’s

trade mark.400

Trade mark- Rectification of register- Application for rectification-

Similar marks ‘Algelox’ and ‘Aludrox’- Onus- Rectification refused-
Practice- Trade Marks Act, 1938, sections 11 and 12(1).

1 The owners of the registered trade mark ‘Aludrox’ applied to the

Registrar for cancellation of a later registration of ‘Algelox’ for
substantially the same goods, namely aluminum hydroxide gel for
use in pharmacy. The trade evidence led by the applicants
consisted of affidavits by a number of wholesale or retail chemists
who expressed the view that the marks were confusingly similar.
The reasons stated by them for this were considered as having
some merit by the Registrar. These reasons were (i) that written

400 (1953) 70 EPC 206

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).

4. PUBLIC INTEREST DIMENSION- In the High Court of Justice-

before Julian Jeffs, Esq., Q.C. (sitting as a Deputy High Court
Judge)

In Re Univer Trade Mark401, 'Univer’ was sought to be registered for

cardio vascular preparations for treating humans and for supply only on
prescription by a registered medical practitioner. This was objected to on
the ground that there was an existing mark ‘Univet’ for veterinary
products.

2.1 Facts- objection was raised against the application to register

the mark Univer for a range of goods which ultimately were
restricted to 'cardio vascular preparations for use in treating
human and for supply only on prescription by a registe4red
medical practitioner’ on the ground that it nearly resembled
the trade mark Univet registered in respect of veterinary
preparations and substances etc. Evidence was filed claiming
that in practice, there would be no confusion in trade
channels between pharmaceutical products for humans and
veterinary products. It was also claimed that there had been
use of the proposed mark without any apparent confusion
and such use could legitimately continue even if registration

401 (1993) RPC 239

478
 were denied. Furthermore, the owners of the cited mark had
consented to registration of the propounded mark.

2.2 The hearing officer was not satisfied as to the separation of

trade channels nor was he prepared to rely on good
pharmacy practice as a final safeguard against confusion. He
refused the application and the applicants appealed to the
High Court.

Held, refusing the application-

(i) The marks Univer and Univet were confusingly

similar

(ii) The goods for which the two marks were proposed to
be registered were of the same description.

2.3 Jellinnek’s application402, applied. INVICTA Trade Mark403

referred to.

(iii) Having regard to the need to protect the public from

the consequences of confusion between
pharmaceutical products, the onus on the applicants
had not been discharged.

2.4 The High court also referred to Pianotist Co’s application404,

particularly page 77, another judgment in Aristoc Ltd v.
Rysta Ltd405 and London Lubricant Ltd’s application406.

Then, the learned Judge observed:

402 (1946) 63 RPC 39

403 (1920) RPC 341
404 (1906) 23 RPC 774
405 (1945) 62 RPC 87
406 (1925) 42 RPC 264

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:

(i) The nature of the respective goods

(ii) The use of the respective goods,

(iii) The trade channels through which the respective

goods are bought and sold”.

I, proceed on the assumption that the comparison of goods is

between those restricted lists.

2.6 The goods of interest to the applicants will include

preparations for the treatment of diseases of the heart and
blood vessel in humans. These are in the nature of drugs or
medicines.

2.7 Veterinary preparations will, I presume, also include drugs

and medicines for the treatment of diseases of the heart and
blood vessels, albeit in animals. Arguably the actual goods
may, in some instances be the very same preparations or
substances. Even if I am wrong in asserting this ‘same
goods’ point; the respective marks manifestly include goods
of the same nature and purpose”.

407 (146) 63 RPC at 70

480
 2.8 Thereafter, the learned Judge has also considered the
FLORADIX case408 and also thereafter referring to Harker

Stagg case, held:

2.9 (P 244) “For the reasons given earlier I am of the opinion

that there could be a real risk to public health arising from
confusion between the marks and I am not prepared to allow
this mark to proceed on the basis of the consent filed. I also
conclude that the objections under section 12 (1) must be
maintained.

2.10 In this decision I have considered_ all the documents filed

by the applicants and all the arguments submitted in relation
to this application and, for the reasons given, the application
is refused under the terms of sectionl7 (2) of the Trade
Marks ct, 1938 because it falls within the prohibition of
section 12 (1)”.

2.11 Ultimately, Harker Stagg case409 is again quoted and it is

observed as under:

“....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.

2.12 (P 248) I am sure that that is right. It may well be that in

practice there is little risk of deception or confusion’ here,

408 (1974) RPC 583 (588)

409 (1953) 70 RPC 205 (P 210)

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”.

5. (Terbuline Trade Mark)-In the Board of Trade- Before Rabin

Jacob. Ess. O.C. Terbuline Trade Mark410

1 A applied to register the trade mark TERBULINE for

pharmaceutical preparations and substances in class 5. The
Registrar’s hearing officer refused the application in the face of
prior registration of TERBOLAN and TURBALIN for identical
goods in the name of two other proprietors., He held that the mark
applied for was confusingly similar to both of the prior
registrations, considered separately. He further held that the
applicant’s own registration of TERBUL for the same goods did
not assist the application, but required TERBUL and TERBULIN
to be associated under section 23 (2) if the application should
succeed.

1.1 Held, dismissing the appeal-

(1) Registration of the mark applied for was prevented by

section 12 (1).

(2) The submission that the two registrations by other

proprietors meant that the public had come to distinguish and
would not be confused by the addition of the mark in suit,
involved too much supposition; confusion between the
applicant’s mark and one of the cited marks was not
unlikely.

410 1990 (107) RPC 21

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).

1.3 “As to Mr Morcom’s point on the word ‘TERBUL’, it does not

assist, TERBUL appears to be different from either of the cited
marks and whilst it may have been right to associate it with the
present mark it does not follow that there is a confusing similarity
between TERBUL and either of the cited earlier marks”.

6.6 The following are instances of pharmaceutical trademarks held

deceptively similar:

1. ‘B1 phlogiston’ held phonetically similar to ‘Antiphologistilne’

2. ‘Amploc 500’ held phonetically similar to ‘Amclox’
3. ‘Simptran’ held deceptively similar to the plaintiffs registered
trade mark ‘Septran’
4. ‘Nimesulide’ held deceptively similar to the plaintiffs ‘Nimulid’

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).

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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:

1. ‘Vivicillin’ held not phonetically or visually similar to the mark

‘Vyllin’ as the first syllables in the two marks were entirely
different.
2. ‘Curechlor’ held neither visually nor phonetically similar to
‘Rector’ as the first syllables in the two marks were totally
different.
3. ‘Entozine’ held not to be deceptively similar to the plaintiffs
‘Entrozyme’
4. ‘Sorbitone’ of the defendant not restrained in an action by the
plaintiff owning the trade mark ‘Sorbiline’ as both are derived from
the same salt ‘Sorbitol’
5. ‘Menscure’ for menstrual problems held not to be deceptively
similar to the plaintiffs registered trade mark ‘Mensural’ as both
are derived from the name of the problem sought to be cured and
the logos and packaging material was very different.
6. ‘Superdac’ held not similar to ‘Spardac’ as no confusion possible
as words are dissimilar and packaging is different.
7. ‘Cloffanir held dissimilar to ‘Anafranil’.
8. ‘Liv-T’ held dissimilar to ‘Liv-52’ as ‘Liv’ is deceptive being a
derivative ‘liver’.
9. ‘Enerjase’ not deceptively similar to ‘Energex’ as ‘Ener’ derived
from ‘energy’ and is therefore, generic and common to the trade,
describing the product as meant for giving energy.
10. ‘Diasil’ held dissimilar to ‘Alasil’.
11. ‘Butazone’ held dissimilar to ‘Butazolidin’.

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.

1 In the application of Hans Emanuel Enumann Enoch 64 RPC 119.

2 ER Squibb & Sons v Curewell India Ltd AIR 1987 Del 197.

3 Stadmed Pvt Ltd v Hind Chemicals AIR 1965 Ptinj 17 (DB).

4 Griffon Laboratories Pvt Ltd v Indian National Drug Co (1989)

IPLR 9.

5 Anjendra Kumar Aggarwal v Kruzer Herbals (1996) PTR 216

(Del), (1996) 16 PTC 501 (Del).

6 Cadila Healthcare Ltd v Swiss Pharma Pvt Ltd (2002) 24 PTC 708
(Guj).

7 Ciba Geigy v Sun Pharmaceuticals Ltd (1992) 2 GLR 1053, PTC

Supp (1) 575 (Guj).

492
8 SBL Ltd v Himalaya Drug Co AIR 1998 Del 126, 67 (1997) DLT
803, (1997) 17 PTC 540 (Del)(DB).

9 Indo-Pharma Pharmaceutical Works Ltd v Citadel Fine

Pharmaceuticals Ltd AIR 1998 Mad 347 (DB), (1998) 18 PTC 775,
(1999) 1 Arb LR 227.

10 Bayer's Products Ltd [1947] 2 All ER 188, (1947) 64 RPC 125

(CA).

11 Geigy AG v Chelsea Drug & Chemicals Co Ltd (1966) RPC 64.

12 Re an application by Demeth Ltd for the Registration of a Trade

Marks (1948) 65 RPC 342.

13 Helena Rubinstein Ltd's application (1960) RPC 229.

14 Indo Pharma Pharmaceutical Works Pvt Ltd v Farbenfabriken

Bayer AG (1975) RPC 545.

15 Biofarma v Sanjay Medical Store (1998) 18 PTC 671 (Del) (DB).

16 Aristo Pharmaceuticals Ltd v Wockhardt Ltd AIR 2000 SC 3624.

17 Burroughs Wellcome (I) Ltd v American Home Products Corpn

(1992) IPLR 277 (Reg).

18 Anglo-FrenChDrug Co Eastern Ltd, Bombay v Aphali

Pharmaceuticals Ltd, Bombay (1982) FTC 115 (Reg).

19 Indo Pharma Pharmaceutical Works Pvt Ltd v Farbenfabriken

Bayer AG (1975) RPC 545.

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).

22 Khandelwal Laboratories Ltd v FDC Ltd (2001) PTC 864 (Del)

(the plain-tiffs trade mark was derived from the chemical
compound 'Cefixine').

23 F Hoffman-LA Roche & Co Ltd v Geoffrey Manners & Co Pvt Ltd

AIR 1970 SC 2062, (1969) 2 SCC 716, FTC Supp (1) 88 (SC),
(1982) FTC 335.

24 Reckitt & Coleman of India Ltd v Medicross Pharmaceuticals Pvt

Ltd PTC Supp (1) 284 (Bom).

25 Mount Mettur Pharmaceuticals Pvt Ltd v A Wander AIR 1977

Mad 105 (DB), (1977) 1 Mad IJ 21, (1977) (2) IPLR 166.

26 Mount Mettur Pharmaceuticals Ltd v Ortha Pharmaceuticals Corpn

AIR 1975 Mad 74 (DB), (1975) 1 Mad LJ 103.

27 ER Squibb & Sons v Curewell India Ltd AIR 1987 Del 197.

28 Johann A Wolfing vs Chemical Industries & Pharmaceutical

Laboratories Ltd AIR 1984 Bom 281 (DB), (1984) IPLR 26.

29 Geoffrey Manners & Co Ltd v Megaphone Laboratories, PTC

Supp (2) 11 (1974) (Bom).

30 Pfizer Products Inc v BL & Co (2002) 25 PTC 262 (Del).

31 Cadila Laboratories Ltd v Dabur India Ltd (1997) PTC 17 417

(Del) (the possibility of confusion is remote since they are

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).

32 CE Fulford (India) Pvt Ltd v Sterfil Laboratories (1981) IPLR 115

(TM Registry).

495