Madras High Court
Kivi Labs Ltd vs Sun Pharmaceuticals Pvt.Ltd on 1 October, 2012
Equivalent citations: AIR 2013 (NOC) 387 (MAD.)
Author: R.Subbiah
Bench: R.Subbiah
In the High Court of Judicature at Madras Dated 01.10.2012 Coram The Hon'ble Mr.Justice R.SUBBIAH Application Nos.2102 and 2103 of 2012 in Civil Suit No.87 of 2012 KIVI LABS LTD., No.147/148, GIDC, Por-Ramangamdi, Baroda District, Gujarat-391 243. ..Applicant/Defendant in both matters .vs. SUN PHARMACEUTICALS PVT.LTD., CD Plot No.3, Door No.8, Old Tower Block Street, Nandhanam Extension, Chennai-600 035, rep.by Power Agent K.Murugesan ..Respondent/Plaintiff in both matters For Applicant : Mr.P.C.N.Raghupathy For Respondent: Mr.A.A.Mohan R.SUBBIAH, J., Application Nos.2102 and 2103 of 2012 are filed by the applicant/defendant to vacate the order of ad-interim injunction (dated 22.02.2012) granted in O.A.Nos.97 and 98 of 2012 filed in the suit.
Applicant - Kivi Labs Ltd., is the defendant and Respondent - Sun Pharmaceuticals Private Limited is the plaintiff. For the sake of convenience, the parties are hereafter referred to as per their ranking in the suit.
2. For disposal of these applications, it is necessary to state the averments made in the plaint, which are as follows:
According to the plaintiff company, they are carrying on business as manufacturer of medicinal preparation for human consumption and they are an International Specialty pharma company, with presence in over 30 markets. Plaintiff is involved in making active pharmaceutical ingredients and in branded markets many of plaintiffs products are prescribed in chronic theraphy areas like cardiology, psychiatry, neurology, gastroenterology, diabetology, respiratory etc. Plaintiff is an established and well known pharmaceutical company in India which markets drugs and formulations in India since 1983. Plaintiff enjoys a very high reputation for its medicinal preparations because of the excellent quality and efficacy. Plaintiff has registered several trademarks for their pharmaceutical preparations and is marketing the products under different brand names. In its course of business, in April 1984, plaintiff adopted the trade mark AMIXIDE in respect of pharmaceutical preparations for treatment of depressive disorders and other psychotic disorders. The mark AMIXIDE is unique and distinctive, coined and used for the first time by the plaintiff in respect of medicinal preparations.
3. It is the further case of the plaintiff company that in October, 1983, they applied for and obtained Drug Licence from the Drug Control Administration for manufacture of medicinal preparation containing Chlordiazepoxide and Amitriptyline for treatment of depression and other psychotic disorders under the trademark AMIXIDE. After getting licence, plaintiff commenced manufacture of medical and pharmaceutical preparations under the trade mark AMIXIDE, which are sold in strips in varying strength since April 1984. Thereafter, they obtained registration under No.1748417 in class 5 in respect of "Medicinal and Pharmaceutical preparations and substances included in class 5". Plaintiff has claimed and proved user of the said mark since April 1984 before the appropriate authority and, therefore, exclusive proprietary right of the plaintiff is restricted to the trademark AMIXIDE. Plaintiff has also spent a huge amount for popularizing its said preparations under the trademark. In view of wide use and substantial sales, the trademark AMIXIDE has earned tremendous goodwill and enviable reputation in the market.
4. While so, the plaintiff came to know the defendant's adoption of the almost identical trade mark KIMIXIDE when the application filed by the defendant for registration of the said mark under No.183997 in class 5 before the Trademark Registry was advertised in the Trademark Journal under No.1444 dated 16.07.2010. The defendant has adopted the mark KIMIXIDE which is deceptively similar to plaintiffs prior adopted and registered trademark AMIXIDE. On enquiry, plaintiff came to know one of the defendant's preparations bearing the mark KIMIXIDE, which they sell in strips of 20 tables and further came to know that the product under the mark KIMIXIDE is used for treatment of depression and other psychotic disorders, with almost same composition as the applicant's product under the mark AMIXIDE. The act of the defendant in adopting an almost identical/deceptively similar trademark amounts to infringement of registered trademark and passing off. Hence, they sent a legal notice on 09.10.2010, seeking to withdraw their trademark application forthwith in view of close similarity of the two trademarks and for which, defendant sent a reply on 18.10.2010 containing bald denials. Hence, the plaintiff filed notice of opposition against the defendant's trade mark KIXIMIDE and the defendant filed a counter and the opposition proceedings are pending. The defendant has deliberately adopted an almost identical/deceptively similar mark KIMIXIDE, which is nothing but a slavish imitation of plaintiffs prior adopted and well reputed trade mark AMIXIDE with a view to cause confusion and deception amongst the trade and public, completely ignoring the dangerous consequences thereof. Hence, they filed the present suit for the following reliefs:
(a) to grant a permanent injunction restraining the defendant and their distributors, stockists, etc., from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations infringing plaintiffs registered trade mark AMIXIDE by use of deceptively similar trade mark KIMIXIDE or any mark deceptively similar to plaintiffs registered trademark AMIXIDE or in any other manner whatsoever;
(b) to grant a permanent injunction restraining the defendant and distributors, stockists, etc., from in any manner manufacturing, selling, offering for sale, stocking, advertising directly or indirectly dealing in medicinal and pharmaceutical preparations under the trademark KIMIXIDE or any other trademark that is identical and/or deceptively similar as that of the plaintiffs registered trade mark AMIXIDE and/or use similar packaging as that of the plaintiffs products under the mark AMIXIDE so as to pass off the defendant's medicinal preparations as and for the medicinal preparations of the plaintiff and/or in any other manner whatsoever connected with the plaintiff;
(c) to pay a sum of Rs.1,00,000/- as liquidated damages for committing acts of infringement against plaintiffs registered trademark so as to pass off its products and for the plaintiffs products; and
(d) to render accounts of profits made by the defendant by use of trademarks KIMIXIDE which is identical and/or deceptively similar;
5. Pending suit, the following applications have been filed by the plaintiff for interim reliefs as under:
(i) O.A.No.97 of 2012 to grant ad-interim injunction restraining the defendant company, its distributors, etc. infringing their trade mark AMIXIDE by use of deceptively similar trade mark KIMIXIDE or any mark deceptively similar to AMIXIDE; and
(ii) O.A.No.98 of 2012 to grant ad-interim injunction restraining the defendant company, its distributors, etc., to pass off the defendant's medicinal preparation as and for the medicinal preparation of the plaintiff.
6. This Court, by order dated 22.02.2012 had granted an order of interim injunction as prayed for.
7. On appearance, defendant filed A.Nos.2102 and 2103 of 2012 to vacate the order of ex parte interim injunction stating that they are carrying on business in manufacturing and marketing medicinal and pharmaceutical formulations under the name and style of KIVI LABS LTD., in the State of Gujarat and their company was incorporated in the year October, 2002. They have adopted several brand names for their medicinal products. One of the brand names under which they are manufacturing and marketing is KIMIXIDE which contains two main ingredients as Chlordiazepoxide and Amitriptyline. That is why they have coined a brand name KIMIXIDE by having taken the letters 'KI" from the first two letters of their company name "Kivi" and the suffix 'MIXIDE' is having taken by telescoping the letters from the names of said two ingredients of the drug i.e.te letters 'MI' from the drug ingredient Amitriptyline and the letters 'XIDE' from another ingredient Chlordiazepoxide. Hence, the adoption of the said trade mark is honest and bona fide on the line of trade usage adopted by several pharmaceutical manufacturers. This kind of trade usage is prevalent among pharmaceutical manufacturers and it is admissible as evidence under section 146 of the Trade Marks Act, 1999. Apart from this, they have coined some other brand names with the letter 'KI' such KIDEP, KIVICALM, KIVIDOL, KIPNOL, KIVIT, KIVIRON, etc.
8. Further case of the defendant is that the syllable 'XIDE' is very common to the pharmaceutical trade. Several marks have been either registered or pending with the suffix 'XIDE'. For example, ZAMIXIDE, CLOXIDE, HEXIDE, FLEXIDE,. CALAXIDE, NIXIDE, HEREXIDE, BENZOLXIDE. Accordingly, nobody could claim exclusive rights over the said syllable. Plaintiffs trade mark AMIXIDE also contains two similar ingredients, namely, Amitriptyline and Chlordiazepoxide. Therefore, it is clear that the plaintiff have coined the mark AMIXIDE from the said two ingredients of the drug by having taken the prefix 'AMI' from the ingredient AMITRIPTYLINE and suffix 'XIDE from another ingredient CHLORDIAZEPOXIDE. Hence, the plaintiffs themselves could not claim exclusive monopoly rights over the said registered mark AMIXIDE because it is well settled rule of law that if a medicinal product name is coined wholly from the ingredients of the generic name of drug, nobody could claim exclusive monopoly rights. Though the plaintiffs claimed that they are the user of AMIXIDE from 01.04.1984, the list of documents filed in the plaint would show that they obtained permission for AMIXIDE from Food and Drug Control Authority as 29.10.2008. Apart from that, they have filed invoice copies only from the year August 1999 and filed the sales turnover and sales promotional expenses only from the year 1999-2000.
9. Prior to filling of trade mark application for AMIXIDE by the plaintiffs, one Delhi party is said to have coined the trade mark AMIXIDE on 02.02.1990 and filed the Trade Mark Application No.523778 in Class '05' on the ground of "proposed to be used" and it is still pending, thereby the plaintiffs could not be a proprietor of the trade mark AMIXIDE on the ground of prior adoption. Defendant filed Trade Mark Application No.1839667 in Class '05' and the same has been opposed and is pending before the Trade Mark Registry, Ahmedabad. Defendants are entitled for registration under section 12 of the Trade Mars Act, 1999 on the basis of "honest concurrent user" because they claim user from 24.10.2002. Defendants are having seven years longer user of the said mark prior to the date of trade mark application, viz., on 14.07.2009 without any incidence of confusion or deception in the market till the date of filing of opposition by the plaintiff. Since both the companies are carrying on business in Baroda District in the State of Gujarat, plaintiffs are well aware of the defendant's use of trade mark KIMIXIDE from the year 2002. Therefore, the application for interim injunction filed by the plaintiff is liable to be dismissed.
10. So far as the prayer of passing off, there is no misrepresentation on the part of the defendant in presenting their trade mark KIMIXIDE to the consuming public because all their carton boxes and aluminium foils containing the tablet KIMIXIDE are entirely different and distinctive from that of plaintiffs mark AMIXIDE and their packaging materials. Plaintiffs have not approached the Court with clean hands and they have not made out a prima facie case. The defendant's trade mark is not at all identical and deceptively similar to the plaintiff's mark and both the marks contain letters from the generic name of two active ingredients of the drug. Thus, they prayed for dismissal of both applications.
11. Plaintiff has filed reply statement to the counter statement stating inter alia that using the similar name with 'XIDE' by others cannot be a defence as the dispute is only between the parties in the present suit. Though the product of the defendant and plaintiff is applicable to psychotic illness, the composition of the drugs of plaintiff and defendant sold under the trade mark AMIXIDE and KIMIXIDE are different. Plaintiff's AMIXIDE tablets are Schedule-H drug to be sold by retail on prescription of a registered medical practitioner only. Each AMIXIDE tablet contains Amitriptyline 23mg and Chlordiazepoxide 10mg and the defendant's KIMIXIDE contains Chlordiazepoxide IP 5 mg and Amitriptyline 12.5 mg. The drug licence granted to the defendant does not mention that the drug should be Schedule-H drug although the carton of defendant's KIMIXIDE tablets contain the warning Schedule-H drug to be sold by retail on the prescription of a registered medical practitioner only. Both drugs are antidepressants having different strength and composition, having identical colour tablets, there is bound to be confusion when the doctors prescribe the drug and if the patients consume lesser strength of drug instead of higher strength drug, especially as the colour of both the tablets are identical, it may lead to disastrous consequences.
12. It is the further case of the plaintiff that originally in the year 1990, the application was filed before the Registrar of Trade Marks in the name of Sun Pharmaceutical Industries. Subsequently, the constitution of the firm was changed to Sun Pharmaceutical Industries Limited. The change of the firm was intimated to the Trademarks Registry. The said trade mark was published in the Trade Marks Journal at page 1032. But while updating the above mentioned details in the digital format, the Trademarks Registry had wrongly entered the details. The above discrepancies were intimated to the Trademarks Registry but they were not rectified. Thus, the plaintiff filed another application for the trademark AMIXIDE on 29.10.2008 and the registration certificate was issued on 10.11.2010. Plaintiff had obtained drug licence in the year 1983 itself for manufacture of AMIXIDE and they are the prior user of the said product. Hence, the defendant ought to have carried out search in the Trade Mark Registry before using the deceptively similar trade mark KIMIXIDE. The defendant has deliberately adopted the similar trade mark KIMIXIDE to trade upon and benefit from the reputation and goodwill enjoyed by plaintiffs registered trade mark AMIXIDE. Thus, the plaintiff prays for dismissal of the applications taken out by the defendant to vacate the order of interim injunction.
13. Learned counsel appearing for the plaintiff submitted that plaintiff is manufacturing tablets under the trade mark AMIXIDE since 1983. They are the prior users of the trade mark AMIXIDE. Originally they made an application before the Registrar of Trade Marks in the year 1990 under the name Sun Pharmaceutical Industries. Subsequently, the constitution of the firm was changed and thereafter another application was filed on 29.10.2008 and finally, registration certificate was issued on 10.11.2010. Thus, the learned counsel submitted that they are the prior user of the trade mark AMIXIDE. Further, the learned counsel invited the attention of this Court to the copy of invoices of plaintiff annexed in the typed set of papers from page Nos. 70 to 131 and also to the certificate issued by M/s.Valia & Timbadia, Chartered Accountants, available at page No.132, to substantiate their contention that they are selling the product AMIXIDE in the market for several years.
14. Further, the learned counsel for the plaintiff brought to the notice of this Court to the application filed by the defendant for Renewal of Drug Licence dated 11.10.2011 and also Form 25 issued by the Food and Drugs Control Administration, Gujarat State to the defendant from 2006 to 2011 and submitted that the said Form 25 issued to the defendant for licence to manufacture of drugs is only from 2006 to 2011 and the application filed by the defendant for renewal of licence pertaining to the period from 2011 to 2016, which would show that the claim of the defendant that they have been using the drugs since 2002 may not be correct since no document was filed to show that they have been using the trade name KIMIXIDE since 2002. The learned counsel further submitted that in the counter filed by the defendant though it has been stated that they have coined the brand name KIMIXIDE by having taken the letters 'KI' from their company and the suffix "MIXIDE' is having taken from the said two ingredients of the drug i.e.the letters 'MI' from the drug ingredient 'AMITRIPTYLINE' and the letters 'XIDE' from another ingredient 'CHLORDIAZEPOXIDE', the same has to be proved only by way of evidence. So far as the interim prayers are concerned, the Court has to see whether the words AMIXIDE and KIMIXIDE are phonetically similar and whether it would create confusion in the mind of the consumers. Though the defendant had produced a list of trade marks containing with the prefix AMI and with the suffix XIDE by downloading the same from the computer, he has to prove that such of those products are available in the market. Therefore, the list of names produced by the defendant cannot be taken into consideration at this stage.
15. Learned counsel for the plaintiff further submitted that though the drugs of both parties are meant for psychotic illness, the defendant's KIMIXIDE contains Chlordiazepoxide IP 5mg and Amitriptyline 12.5mg, whereas plaintiff's AMIXIDE contains Amitriptyline 23mg and Chlordiazepoxide 10mg. Therefore, the statement made in the counter filed by the defendant that both the products are applicable to psychotic illness and as such, there cannot be any confusion or deception, cannot be accepted. In support of this contention, the learned counsel has relied upon the decision reported in Cadila Health Care Ltd., .vs. Cadila Pharmaceuticals Ltd., ((2001) 5 SCC 73). Further, the learned counsel has also relied upon the judgments reported in Midas Hygiene Industries (P) Ltd., .vs. Sudhir Bhatia and others ((2004) 3 SCC 90) and Cadila Pharmaceuticals Limited .vs. Sami Khatib of Mumbai and another (2011 (47) PTC (Bom) (DB) to substantiate the contention that the delay in bringing the action is not sufficient to defeat grant of injunction.
16. The learned counsel for the plaintiff has also relied upon the judgment reported in Shubnath Deogam .vs. Ram Narain Prasad (AIR 1960 SC 148) in support of his contention that whether the defendant's mark is derived from chemical ingredients or not is a matter of evidence. Similarly, whether others are using the same mark with suffix 'XIDE' is also a matter of evidence. When prima facie both the trade names of the plaintiff and defendant phonetically similar, plaintiff is entitled for injunction.
17. Countering the said submissions, the learned counsel for the defendant submitted that though the plaintiff claims that they are the prior user of trade mark AMIXIDE from 1983, they have not produced any document to substantiate the same, whereas the defendant had produced evidence to show that they have been using trade mark KIMIXIDE since 2002. It is recognised under law to consider the trade usage of the name while deciding the issue with regard to infringement. So far as the present case is concerned, for the past 10 years, defendant is using the trade name KIMIXIDE. Though the plaintiff had stated in their affidavit that they have submitted the application in 1990, the same was not proceeded. Only in the year 2008, they have filed an application for registration and certificate was issued in the year 2010, whereas the drug licence was issued to the defendant under the name KIMIXIDE on 04.10.2002. In this regard, the learned counsel, by inviting the attention of this Court to the list of products authorised to manufacture by the drug authorities, Gujarat, available at page 6 of the typed set of papers, submitted that defendant had obtained the drug licence for KIMIXIDE in the year 2002 itself. Further, the learned counsel also brought to the knowledge of this Court to the invoices filed by them dated 11.12.2002 and submitted that from December 2002 onwards, the defendant company is marketing their product under the name KIMIXIDE, whereas the present suit has been filed after 10 years from the date on which the defendant had started to use the trade mark KIMIXIDE. Though the delay cannot be a defence, in the instant case, the delay is inordinate and it is not a delay in simplicitor. Therefore, on this ground the applications filed by the plaintiff are liable to be rejected.
18. Apart from that, the learned counsel for the defendant submitted that though in the drug industry it is common to use the ingredients of the components contained in the drug as a trade name. So far as the present case is concerned, the drugs of plaintiff as well as defendant contained only two ingredients, namely, Amitriptyline and Chlordiazepoxide. Both the drugs are used for psychotic illness. Therefore, no harm would be caused to the patients. Moreover, the drugs are Schedule-H drug and only on the prescription of medical practitioners, the drugs will be sold. Under such circumstances, the plaintiff is not entitled for injunction. Further, by inviting the attention of this Court to the extract from the Medical Journal in relation to the plaintiffs product under the mark AMIXIDE, available from page Nos.10 to 29 in the plaintiff's typed set, the learned counsel pointed out that there are several products with prefix 'AMI' and suffix 'XIDE' and thus, submitted that whether there are products with the prefix 'AMI' and suffix 'XIDE' need not be proved by way of evidence when the extract from the Medical Journal produced by the plaintiff itself contains so many products with prefix 'AMI'. In support of this contention, the learned counsel has relied on judgment of Delhi High Court reported in the case of Schering Corporation & Others .vs. Alkem Laboratories Ltd., (2010(42) PTC 772 (Del.) (DB).
19. With regard to the judgment relied on by the learned counsel for the plaintiff reported in 2001(5) SCC 73 (supra), the learned counsel for the defendant, by inviting the attention of this Court to para 25 of the said judgment, submitted that the Honble Supreme Court has held that 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 plaintiff's medicine but the compositions are different. Thus, by relying upon the same, the learned counsel for the defendant submitted that only in the event of composition of the drugs of both parties are different, then the question of granting interim order would arise. But, in the instant case, the compositions of the drugs of plaintiff and defendant are one and the same. Therefore, the judgments relied upon by the plaintiff cannot be made applicable to the facts of this case.
20. Heard the learned counsel for both parties and perused the materials available on record.
21. It is the case of the plaintiff that they are manufacturing the product under the name AMIXIDE in respect of pharmaceutical preparations for treatment of depressive disorders and other psychotic disorders since 1984. They filed the application for registration in the year 2008 and they have obtained the registration certificate in 2010. While applying the registration of the trade mark, they came to know about the trademark of the defendant KIMIXIDE. According to the plaintiff, since the trade marks AMIXIDE and KIMIXIDE are visually, phonetically and structurally similar, that would create a confusion and deception amongst the trade and also in the minds of the public. Therefore, the defendant has to be restrained from continuing such infringement. But it is the submissions of the respondent that the compositions in both drugs are one and the same, which meant for the treatment of psychotic disorder. Both medicines could be purchased on the prescription of the medical practitioner. Therefore, there is no likelihood of creating confusion in the mind of the public.
22. It is an admitted case of both sides that the impugned products contained two medical compositions i.e. Amitriptyline and Chlordiazepoxide. The defendant, by adding two letters of their companys name, 'KI' along with letters of the chemical ingredients, namely, "MI" from AMITRIPTYLINE and 'XIDE' from CHLORDIAZEPOXIDE, and adopted the trade name "KIMIXIDE". It is the submission of the defendant that it is the legally accepted practice to use the letters from the components of the drugs as the name of their product by the drug manufacturers. Therefore, the plaintiff cannot claim exclusive right over the trade name. But, according to the plaintiff, whether the name adopted by the defendant is derived from the components of the drugs or not, is a matter of evidence. Similarly, according to the plaintiff, the claim of the defendant that since there are so many other products available in the market with suffix XIDE, no fault could be found in using the trade name KIMIXIDE by them, is not legally sustainable for the reason that whether such of those products with suffix XIDE had acquired reputation in the market as that of the plaintiff's product, is once again the matter of evidence. So far as the interim prayer is concerned, the Court has to see, whether there is a phonetical similarity between the products of the plaintiff and the defendant and if so, whether it would create a confusion in the minds of the consumers or not.
23. At this stage, it would be appropriate to see the judgments relied on by the plaintiff. In AIR 1960 SC 142 (supra), the Hon'ble Apex Court has held as follows:
13. The second point on which the learned appellate Judges based themselves in arriving at the conclusion that there was no reasonable apprehension of confusion or deception was, as we have earlier stated, that there were various trade marks with a prefix or suffix Gluco' or Vita' and that made it impossible to say that the common features Glu' and Vita' were only associated with the appellant's products. This view was founded on a passage which the learned appellate Judges quoted from Kerly on Trademarks, 7th Edn. p. 624. That passage may be summarised thus: Where there are a series of marks, registered or unregistered, having a common feature or a common syllable, if the marks in the series are owned by different persons, this tends to assist the applicant for a mark containing the common feature. This statement of the law in Kerly's book is based on In re: an application by Beck, Kollar and Company (England) Limited (1947) 64 R.P.C.76. It is clear however from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that those marks had acquired a reputation by user in the market. We will now read a portion of the judgment at pp. 82 & 83 in Beck, Kollar & Co. case from which what we have stated earlier, appears:
I am disposed to agree with Mr Burrell's submission that the series objections is primarily founded upon user, because the inference which the Registrar is asked to draw is that traders and the public have gained such a knowledge of the common element or characteristic of the series that when they meet another mark having the same characteristic they will immediately associate the later mark with the series of marks with which they are already familiar. But I do not think that this statement necessarily implies that the whole issue must be determined solely under the provisions of Section 11, as I will now endeavor to explain.
When an application for registration is before the Registrar it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the Register in the name of one proprietor only, or in the name of several different proprietors. At this stage, when the matter is one between the applicant and the Registrar, the latter generally has before him no evidence as to whether the registered marks are in actual use or not, but in forming an opinion under Section 12 as to whether or not confusion or deception is likely to arise, he is bound, I think, in the absence of evidence to presume that, prima facie some at least of the registrations have been effected bona fide by persons who at the date of their respective applications were using or proposed in the near future to use their marks. If, therefore, all the marks were owned by one proprietor, the Registrar would presume that the latter was using a series of marks and judge the conflict between the applicants' mark and each of the proprietor's marks with this consideration in mind. Of course, if the registrations merely consisted of one and the same word registered separately in respect of several articles to be found in a single class of the Trade Marks Schedules, the Registrar would in general regard all these registrations as but the equivalent of a single registration covering all the items, for they would not constitute a series as now under discussion. On the other hand, if the registered marks found were owned by several different proprietors, this would be a circumstance which might considerably assist the applicant, who would be in a position to submit that the common characteristic was one well recognised in marks in use in the particular trade. In short, when the Registrar comes to compare the applicant's mark with the registered marks, using the principles laid down in the Pionotist case the presence of marks on the Register other than the one with which the comparison is being made is regarded as one of the surrounding circumstances which he is required to take into account.
But when the same question comes before the Registrar in opposition proceedings, it appears to me that he is no longer in a position to make any presumption as regards the surrounding circumstances, but that before he can draw the suggested inference based upon the user of other marks either in the applicant's or the opponent's favour, any such user must be established by evidence (see, e.g. Harrods Ld.'s Application, 52 RPC, p. 70, 1. 39-p. 71, 1. 15, where the Registrar refused to draw the necessary inference in favour of the applicants in the proceedings). We have no reason to think that Kerly in stating the law on the subject intended to depart from the principle stated in the passage that we have just now read, from Beck, Kollar & Co case (1947) 64 RPC 76".
24. In the case of Indian Shaving Products Ltd., .vs. Gift Pack (2000 C.L.C.183), wherein the Delhi High Court has held as follows:
"52. It was next argued by the learned counsel for the defendant that the said trade mark Ultra is being used by several other persons/companies besides the defendants, such as Toshiba, National and Sony. Thus the same has become publici juris and the plaintiffs cannot claim any exclusive right therein.
53. Admittedly, the said parties are not before this Court. Neither the said parties are claiming any relief against the plaintiffs nor the plaintiffs are claiming any relief against them. Hence, the said defence, that other persons are also using the said trade mark, is not available to the defendants. The Court is called upon to decide disputes in between the parties which are before it. The Court cannot be expected to adjudicate upon a dispute which is not before it. A matter very much akin to the matter in hand came up before a single Judge of this Court. It was observed in Coolways India v. Princo Air conditioning and Refrigeration, 1993(1) Arb.LR 401. The contention that a plaintiff himself is usurping or infringing the trade mark of a third party was not to be gone into by the Court while deciding the issue in between the parties. What is to be seen by the Court is as to whether the plaintiff has acquired goodwill and reputation for his products. Moreover, the plaintiffs have placed on record a report on Urban Market for Batteries, October, 1997. A perusal of the same shows that Sony New Ultra has sold only one unit during the month of May, 1997. There is no sale in the month of June, July, August, September, 1997. Similarly, Sony has got no market share during the months of May, June, July, August and September, 1997. Thus the same is absolutely of no avail to the defendants. To the same effect is the view expressed by a learned single Judge of this Court in Amrit Soap Company v. New Punjab Soap Factory, (1989) 2 Arbi LR 242. "The allegation that some other manufacturers are also using the same trade mark is of no consequence as the Court is concerned with parties before it only".
25. Relying upon the said judgments, learned counsel for the plaintiff submitted that though the defendant had produced a list of products with prefix "AMI' and suffix 'XIDE', whether those products are available in the market and if so, whether such of those products are having a reputation or not as that of the plaintiff's product, is a matter of evidence and the same cannot be considered at this stage. Though there is some force in the said submission of the learned counsel for the plaintiff, I find that the products involved in the cases relied upon by the plaintiff are not relating to the drug products. So far as the drug products are concerned, it is a legally acceptable practice to use the letters from the components of the drugs as the name of those products. Hence, the only test that has to be applied is, whether the tradename KIMIXIDE is a patent copy of the trade mark of the plaintiff AMIXIDE or not and whether the usage of trade mark KIMIXIDE would create a confusion in the minds of the consumers. It is an admitted case that the plaintiff company have coined their brand name AMIXIDE from the two chemical components, namely, AMITRIPTYLINE and CHLORDIAZEPOXIDE. The defendants products also contained the same chemical components but with different quantity. The defendant, by taking letters from their company name 'KI' and by deriving from the letters "MI' from AMITRIPTYLINE and 'XIDE' from the drug CHLORDIAZEPOXIDE, have coined their brand name KIMIXIDE. It is a common practice to name a pharmaceutical product by taking the letters from the components of the drugs. Therefore, I am of the view that adopting the trade name KIMIXIDE by the defendant would not amount to infringement of the trade mark of the plaintiff. Moreover, the drugs are to be sold only on the prescription of the medical practitioners. Under such circumstances, there is no question of creating confusion in the mind of the public. In this regard, an useful reference could be placed in the judgment relied upon by the defendant reported in the case of Schering Corporation and others .vs. Alkem Laboratories Ltd.,(2010 (42) PTC 772 (Del.) (DB) and the relevant paragraphs are extracted hereunder:
" 6. The appellants claim to have came to know that the respondent ALKEM was marketing and selling an almost identically positioned drug (for treatment of brain cancer or glioblastoma multiforme) under the mark TEMOKEM which, according to the appellants, was phonetically, linguistically, textually, visibly, manifestly, confusingly and deceptively similar to their marks TEMODAL/TEMODAR. They also came to know that the respondent ALKEM had submitted a -Proposed to be used? application bearing number 1348168 in class 5 for registration of the mark TEMOKEM and the same was advertised in Trademark Journal no. 1335-0 dated 01.11.2006 made available to the public on 03.03.2007. In answer to this, the appellants have filed a notice of opposition dated 23.03.2007 to the above application and the same is still pending.
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11. The learned Single Judge in his impugned orders observed that the term 'TEMO used in the appellant's registered trademarks as well as in the respondent's trademarks are derived from the name of the chemical compound TEMOZOLOMIDE. To the said term 'TEMO the appellants had added the suffix 'DAL and 'DAR to arrive at the trademarks 'TEMODAL and 'TEMODAR respectively. On the other hand, respondents had added the suffix 'KEM and 'GET which are the parts of the respondent's company names, to arrive at the trademark 'TEMOKEM and 'TEMOGET respectively. The learned Single Judge held that all the trademarks, as aforesaid, are portmanteau words. He further held as follows:
"A portmanteau word is used to describe a linguistic blend, namely, a word formed by blending sounds from two or more distinct words and combining their meanings. Examples of portmanteau words are brunch (breakfast + lunch); Tanzania (Tanganyika + Zanzibar). As per the Wikipedia, portmanteaus can also be created by attaching a prefix or suffix from one word to give that association to other words. For example, the suffix 'holism or 'holic taken from the word 'alcoholism or 'alcoholic can be added to a noun, creating a word that describes an addiction to that noun. For example, chocoholic means a person who is addicted to chocolate and workaholic means a person who is addicted to work and so on. Portmanteau words can also be used to describe bilingual speakers who use words from both languages while speaking. For instance, a person would be considered speaking 'Spanglish if he is using both Spanish and English words at the same time. Similarly, the portmanteau word 'Hinglish would refer to the usage of Hindi and English words at the same time".
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15. The learned Single Judge noted the view of the Division Bench in Astrazeneca ((2007(34) PTC 469)(DB)(Del.) that in the trade of drugs it was a common practice to name the drug by the name of the organ or ailment which it treated or the main ingredient of the drug. The name of such an organ, ailment or ingredient being publici juris or generic, could not be claimed by anyone exclusively for use as a trademark. The argument of the appellant that it was the first to have adopted and use the name 'TEMO, and that the appellants had trans-border reputation [which were claimed to be the distinguishing feature from the Astrazeneca (supra) case) was rejected by the learned Single Judge as the claim of the appellants was founded upon an alleged infringement of registered trademark. It was also not a case where the respondents had raised a defence of prior use under Section 34 of the Act, where again, the question of "who used the mark first? would be relevant. The case of the appellants was one of infringement under Section 29 of the Act and the only question which required consideration was whether the respondent's trademarks were deceptively similar to the appellants registered trademarks, which could lead to confusion in the mind of the purchaser to purchase the drugs of the respondents, while intending to purchase the appellants drugs.
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62. It has been repeatedly recognized that in the trade of drugs it is a common practice to name a drug on the basis of the name of its active chemical compound or salt, or the disease it seeks to remedy, or the particular organ it is intended to treat. The name of such an ingredient or compound, ailment or organ being in the public domain and of generic nature, which has been used descriptively, cannot be claimed by anyone for use exclusively as only his/her trademark".
26. On going through the said judgment, it is seen that in the trade of drugs it is a common practice to name a drug on the basis of the name of its active chemical compound. As far as the present case is concerned, both the plaintiff and the defendant have coined name based on the two chemical components of the drugs AMITRIPTYLINE and CHLORDIAZEPOXIDE. Moreover, as found earlier, these products are sold only on the prescription by medical practitioners. Therefore, as per the dictum laid down in the above judgment, when the name of the drug being publici juris or generic, plaintiff cannot claim any exclusive right over the use of the trade mark.
27. No doubt, the learned counsel for plaintiff has relied on the judgment reported in the case of (2001) 5 SCC 73 (supra) in support of his contention that though both drugs are sold under prescription, the same is not sufficient to prevent confusion which is otherwise likely to occur. The relevant paragraph from the said judgment is as follows:
"25. The drugs have a marked difference in the compositions 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 plaintiff's 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 may usefully be made to the case of Glenwood Laboratories, Inc. v. American Home Products Corpn.(173 USPQ 19, where it was held as under:
"The products of the parties are medicinal and the applicant's product is contraindicated for the disease for which opposer'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 the dispensing of the pharmaceuticals".
28. A complete perusal of the said judgment would show that the facts in that case are totally different. But, in the instant case, the components found in both the drugs are one and the same, meant to cure the psychotic disorder. Therefore, the dictum laid down in the said judgment cannot be made applicable to the facts of the present case. Moreover, I find, from the documents produced on the side of the defendant that the defendant is manufacturing the drug in question right from the year 2002. Though delay is not a ground to grant injunction, in the instant case, I find that there is inordinate delay in approaching this Court. The conduct of the plaintiff in approaching the Court after 10 years itself would reveal that the sale of defendants' product in the market with the trade name KIMIXIDE will in no way affect the plaintiffs' products selling with the trade name AMIXIDE. Under such circumstances, I am of the view that plaintiff is not entitled to enjoy the order of interim injunction and the same is liable to be vacated.
For the foregoing reasons, A.Nos.2102 and 2103 of 2012 are allowed and O.A.Nos.97 and 98 of 2012 are dismissed and the order of interim injunction granted on 22.02.2012 is vacated.
Index: Yes. 01.10.2012
Internet: Yes.
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R.SUBBIAH, J.,
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Pre-delivery Order in A.Nos.2102 and 2103 of 2012 in C.S.No.87 of 2012
01.10.2012