Bombay High Court
Neon Laboratories Ltd vs Themis Medicare Ltd on 16 September, 2014
Author: G.S. Patel
Bench: G.S.Patel
NMSL827-2014-F.doc
ars
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
NOTICE OF MOTION (L) NO. 827 OF 2014
IN
SUIT (L) NO. 336 OF 2014
NEON LABORATORIES LTD.,
A company incorporated under the Companies
Act, 1956 having its registered office at 140,
Damji Shamji Industrial Complex, Mahakali
Caves Road, Andheri (E), Mumbai 400093 ... Plaintiff
Versus
1. THEMIS MEDICARE LTD.,
A company incorporated under the
Companies Act, 1956 and having its
registered Office at 11/12, Udyog Nagar, SV
Road, Goregaon (W), Mumbai 400104
2. CIRON DRUGS &
PHARMACEUTICALS PVT. LTD.,
A company incorporated under the
Companies Act, 1956 having its registered
office at 1, Prabhat Nagar, Patel Estate
Road, Jogeshwari (W), Mumbai 400102 and
manufacturing facility at No. 118, 119
MIDC, Tarapur, Boisar Dist., Thane
401506 ... Defendants
A PPEARANCES
FOR THE PLAINTIFF Dr. Veerendra V. Tulzapurkar, Senior
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Counsel, a/w Mr. Amit
Jamsandekar, i/b Sunil Nair
FOR DEFENDANT NO. 1 Mr. Sandip Parikh, a/w Mr. Sunil Patel,
Mr. Gautam Panchal & Mr.
Alankar Kirpekar i/b M/s Sunil &
Co.
FOR DEFENDANT NO. 2, Mr. Alankar Kirpekar, i/b MAG Legal
CORAM : G.S.Patel, J.
JUDGMENT RESERVED ON
ig : 16th July 2014
JUDGMENT PRONOUNCED ON : 16th September 2014
JUDGMENT:
1. This is an action in trademark infringement combined with a cause of action in passing off. The Plaintiff manufactures, markets and sells various pharmaceutical goods. The 1st Defendant markets the pharmaceutical products manufactured by the 2nd Defendant.
2. The Plaintiff claims that its registered trade marks, LOX 2% ADRENALINE, LOX 4%, LOX 5%, LOX HEAVY 5%, LOX VISCOUS, LOXALPRIN, LOXALPRY, LOXIMLA, PLOX and RILOX ("the LOX Family"), have been infringed by the Defendants' use of deceptively similar trade marks XYLOX 2%, XYLOX HEAVY, XYLOX GEL, XYLOX ADRENALINE, XYLOX 2% Jelly ("the XYLOX Family"), and that the Defendants are attempting to pass off their goods as those of the Plaintiff. The 2 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc present application is for interim reliefs, including an injunction, and for the appointment of a Court Receiver.
3. I have heard Dr. Tulzapurkar, learned Senior Counsel for the Plaintiff, and Mr. Parikh, learned Counsel for the 1st Defendant, at some length. With their assistance, I have gone through the material on record. I have carefully considered this material and their respective submissions. For the reasons that follow, I have found, prima facie, that the Defendants' marks infringe the Plaintiff's, and that the Defendants' use of the rival marks constitutes passing off. I have not found sufficient merit in the defence to deny the reliefs sought. I have made the Notice of Motion absolute.
4. The Plaintiff's case is this: In 1987, it conceived and adopted the mark LOX with respect to its pharmaceutical products. Its popularity and high standards led to the Plaintiff extending its product range, throughout with the mark LOX as an essential and prominent feature, to which either a prefix/suffix is added. The resultant goodwill is such that the industry, trade, medical practitioners and the public all associate the LOX Family marks with the Plaintiff. Any use of the mark LOX is thus perceived as an extension of the LOX Family. Documents are annexed to the plaint
-- trade mark registration certificates, photographs of the products, sale invoices, promotional and advertising material and medical literature -- in support of the Plaintiff's claims of registration and user. The Plaintiff claims to be using the mark "LOX" since 1987, and has since used it exclusively, extensively and without interruption. Its products are sold domestically and, since 1995, to overseas markets. Exhibits E-1 to E-7 of the plaint are sales figures 3 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc authenticated by the Plaintiff's Chartered Accountants. The amounts are considerable: nearly Rs.5.75 crores for "LOX 4%" in 2013-14 alone, and overall more than Rs.151 crores from 1987 to 2013-4. There are significant promotional expenses as well, and much publicity. The Plaintiff's products under the Lox Family marks are all anaesthetics of different formulations: LOX 2% ADRENALINE, for instance, has Lidocaine Hydrochloride and Adrenaline Bitartrate Injection I.P. and is used for infiltration when decreased bleeding is required; LOX 4% contains Lidocaine Hydrochloride and is a surface anaesthetic; and so forth.
5. The Plaintiff claims that in March 2014, it discovered that the Defendants were manufacturing and selling pharmaceutical products with the XYLOX Family marks for a virtually identical product range with a slightly different formulation: the Defendants' products contain Lignocaine Hydrochloride, but are also used as anaesthetics. These marks, the Plaintiff says, are visually, phonetically and structurally similar to the LOX Family marks. The Plaintiff claims that this was to mislead the public into believing that the Defendants' goods were an extended range of the Plaintiff, as they were aware of the Plaintiff's predominance and market popularity. The addition of the prefix "XY" does not, the Plaintiff claims, make a material difference: it does not distinguish the Defendants' marks from those of the Plaintiff, and, indeed, may even make matters worse by inducing consumers and users to believe that the Defendants' products are an extension of the Plaintiff's product range.
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6. The 1st Defendant denies these claims. In its Affidavits in Reply dated 23rd April 2014 and 30th June 2014, the 1st Defendant charges the Plaintiff with suppression and insufficient disclosure of facts. According to the 1st Defendant, the Plaintiff's alleged user of LOX can be no earlier than 1995; it certainly does not date back to 1987. The Plaintiff has kept from Court the fact that its application for registration of LOXID was refused by the Registrar and that it abandoned the application for registration of a proposed mark, LOX 2%, in the face of opposition from Cadila Healthcare Limited. The 1st Defendant alleges that the Plaintiff itself is an infringer and cannot claim monopoly over the mark LOX. This is a mark registered to many others even before the Plaintiff's claimed date of use or registration. For instance, the marks CIPLOX and NORFLOX are registered to Cipla Ltd, and the mark LOXOF is registered to Ranbaxy.
7. The 1st Defendant further claims that its adoption of the mark XYLOX is honest: this is a derivative of the first four letters 'XYLO' from the internationally renowned drug 'XYLOCAINE', its active ingredient, another term for 'LIDOCAINE'. It also contends that the rival marks LOX and XYLOX are entirely dissimilar without the remotest likelihood of confusion or deception for the prefix 'XY' is distinctive and materially alters the pronunciation of the word sufficient to distinguish the one from the other. The 1st Defendant also claims that to have adopted the mark XYLOX in 2012. The present action is, therefore, belated, and on that ground, both the suit and the Notice of Motion should be dismissed.
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8. To this last allegation of delay, the Plaintiff responds by pointing out that the Affidavit in Reply shows the Defendants' user of the rival marks only for the year 2013-14. There is no evidence of any earlier use. Moreover, it is now firmly settled that mere delay does not defeat the rights of a registered proprietor. 1 I recently considered this issue and the various authorities on the point in Medley Pharmaceuticals Ltd. v Twilight Mercantiles Ltd. & Anr.2 In Hindustan Pencils (P) Ltd. v India Stationery Products Co. & Anr.,3 the Delhi High Court held that delay by itself is not a sufficient defence to such an action especially where the use by the defendants is fraudulent. The issue of acquiescence arises where a mark's proprietor, being aware of his rights, and being aware that the infringer may be ignorant of these, does some affirmative act to encourage the infringer's misapprehension so that the infringer worsens his position and acts to his detriment. A mere failure to sue without a positive act of encouragement is no defence and is no acquiescence. A defendant who infringes the plaintiffs' mark with knowledge of that mark can hardly be heard to complain if he is later sued upon it. Hindustan Pencils was followed by a Division Bench of our Court in Schering Corporation & Ors. v Kilitch Co. (Pharma) Pvt.
Ltd.4 The questions of delay and acquiescence were also before a learned single Judge of this Court in D.R. Cosmetics Pvt. Ltd. & Anr. v J. R. Industries.5 A man cannot sit indolent and idle, aware of the 1 Midas Hygiene Industries P. Ltd. & Anr. vs. Sudhir Bhatia & Ors., (2004) 3 SCC 90; Charak Pharma Pvt. Ltd. v Glenmark Pharmaceutical Ltd., 2014 (57) PTC 538 (Bom) 2 Notice of Motion No. 657 of 2008 in Suit No. 451 of 2008, decided on 11th June 2014, MANU/MH/0929/2014.
3AIR 1990 Delhi 19 4 1991 IPLR 1 5 2008 (2) Bom.C.R. 28, per Dr. D.Y. Chandrachud, J., as he then was.
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Delay simpliciter is also no reason to deny relief.6
9. In response to the Defendants' allegation that the Plaintiff's case of use since 1987 is incorrect, the Plaintiff has in its Affidavit in Rejoinder produced copies of its stock registers of LOX 2% since 1987. This is sufficient prima facie material.
10. As regards the refusal of the Plaintiff's application for registration of LOXID, Dr. Tulzapurkar submits that the Plaintiff is not required to disclose every refusal. His cause of action is not founded on the applications made. It is founded on the marks registered to the Plaintiff. The very fact that the LOX Family marks have been registered sufficiently establishes that there exists a series of marks associated with the Plaintiff.
11. Since the Plaintiff has adopted a series of marks with LOX, it follows that consumers of the Plaintiff's products would be acquainted with the mark. Consequently, when confronted with the XYLOX Family marks, these consumers would naturally assume them to be part of the Plaintiff's series of marks. What has been copied, Dr. Tulzapurkar says, is LOX, the prominent feature of the Plaintiff's series of marks. If there be a series of marks registered to a single proprietor, a new mark with a feature prominent in that series leads to a perfectly natural assumption by a consumer that the new mark, too, emanates from the same proprietor. It is only where the marks in a series, whether registered or not, and which have a 6 Charak Pharma, supra; Medley Pharmaceuticals, supra.
7 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc common feature are owned not by a single entity but by several that a defendant's application for a new mark with that common feature acquires any legitimacy.7 Dr. Tulzapurkar relies on the "FLOWSTACKA" Trade Mark case:8 "The test which he applied was that suggested by Lord Parker in du Cros Ltd.'s Application (1913) 30 RPC 660, namely, whether other traders are likely in the ordinary course of their business and without any improper motive to desire to use the same mark or some mark nearly resembling it upon or in connection with their own goods.
Applying that test, I think that this mark is inherently adapted to distinguish the Applicants' goods. To my mind, FLOWSTACKA is not a mark which other traders would be likely in the ordinary course of their business and without improper motive to use in connection with machines for handling goods. Indeed, having regard to the number of FLOW marks already used by the Applicants, I should suspect that any manufacturer who wished to use the word was actuated by an improper motive. "
(Emphasis supplied)
12. Dr. Tulzapurkar also submits, and I believe with some considerable justification, that the Defendants' claim to honest adoption is hardly credible. The claim is that it is an adoption of a name similar to or derived from the principal chemical ingredient of the final formulation is not uncommon: hence, XYLOX, from the main ingredient Xylocaine. To accept this, Dr. Tulzapurkar says, 7 Corn Products Refining Co. v Shangrila Food Products Ltd., AIR 1960 SC 142, para 13.8
(1968) 3 RPC 66 at p. 73
8 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc would be judicial naiveté: why XYLOX with the trailing X? It could as well have been any of the other 25 alphabets. Especially given that the Plaintiff's series of marks with the feature LOX were already in the market, the Defendants' zeroing in on this particular letter as a suffix suggests that very motive that the Flowstacka court acknowledged as improper and dishonest.
13. Mr. Parikh then says that the Plaintiff is itself an infringer. The mark LOX was first used in LOXENE by Moureen Baun Ltd.
in 1956. This is no defence at all. It is immediately defeated by Section 28(3) of the Trade Marks Act, 1999 ("the Act"):
"28. Rights conferred by registration.--
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade 9 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he ig were the sole registered proprietor."
(Emphasis supplied)
14. Section 12 of the Act says:
Section12--Registration in the case of honest concurrent use, etc. In the case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of the trade marks which are identical or similar (whether any such trade mark is already registered or not) in respect of the same or similar goods or services, subject to such conditions and limitations, if any, as the Registrar may think fit to impose.
15. Thus, Sections 28(3) and 12 of the Act contemplate the co- existence of multiple simultaneous proprietors of a single mark. As between such registered proprietors inter-se, none has rights of 10 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc exclusivity vis-à-vis the other. But as against any third party, each proprietor enjoys the entirety of statutory rights.
16. While the Defendants allege use of the mark by others, they only have data for the marks CIPLOX, NORFLOX and LOXOF. First, this defence is met by Section 28(3), as I have already noted.
Even otherwise, CIPLOX and LOXOF are used as a treatment against bacterial infections and NORFLOX's principal use is for the treatment of infections of the urinary tract. The intended object of the Plaintiff's LOX Family mark products and the Defendants' competing products are exactly the same: used as a variety of anaesthetics. What is objectionable is the manner in which the offending mark is used: as a trade mark and in relation to a set of products far too similar to those of the Plaintiff. In Pidilite Industries Ltd. v S.M.Associates & Ors.,9 in which Vazifdar, J held:
"51. In paragraphs 26 to 28 of the affidavit in reply, the first Defendant has alleged that the word "Seal" is used by a number of manufacturers of Epoxy (Resin) compositions. The cartons of different manufacturers are produced by the first Defendants bearing the marks "my seal" "A-Seal" "Inn-Seal" "Jam-Seal" "Max-Seal" and "Klip-Seal". Similarly, he contended that most of the traders use the colours red, black and white. I do not think there can be or is any dispute that the first Defendant is entitled to use any or all these colours. I did not understand Dr. Tulzapurkar's arguments to mean that the first Defendant is barred from using these colours. It is the manner of use of the colours that is objected to by the Plaintiff."9
2003 (5) Bom CR 295 11 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc (Emphasis supplied)
17. This entire argument of LOX being common to the trade is defeated by the 1st Defendant's own conduct. If the mark of which the Plaintiff seeks protection was not unique and distinctive, there was no reason for the 1st Defendant itself to apply for registration of XYLOX. It did precisely this; and it has not disclosed this in the Affidavit in Reply, but it comes to light in Exhibit "C" to the Affidavit in Rejoinder. Not only does this hoist the Defendants by their own petard as regards their allegations of suppression by the Plaintiff, but it also defenestrates any possible defence of the mark being common to the trade. The statement in the 1st Defendant's Further Affidavit in Reply dated 30th June 2014, where the deponent claimed to be "unaware of the application" for registration of the mark XYLOX defies credulity. This is what the Plaintiff said in paragraph 8 of the Affidavit in Rejoinder:
8. I say that the "LOX" series of marks are used by the Plaintiff exclusively and the same are registered in the name of the Plaintiff. I say that "LOX" is an essential feature of all the "LOX' marks and is also a part of the same. I say that there are many applications pending in the name of the Plaintiff in which the word 'LOX' is an essential feature of the marks and the same are used by the Plaintiff. Therefore, I deny that the prefix and suffix is common to the trade as alleged by the Defendants or at all. I say that while marking [ sic ] false allegation of common use of the mark having 'LOX' as prefix and suffix the Defendant No.1 has deliberately suppressed the fact that the Defendant No.1 has made an application for registration of the mark 'XYLOX' on 23-10-2012 12 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc and has sought to claim rights in the same. I say that the 'LOX' is the only essential and prominent feature of the mark 'XYLOX' used by the 1st Defendant and applied for registration.
The said application dated 23-10-2012 made by the 1st Defendant bearing No.2416524 is pending. Hereto annexed and marked as Exhibit 'C' is a copy of the said application of the 1st Defendant .
(Emphasis supplied) The 1st Defendant traversed this in paragraph 12 of its further Affidavit in Reply thus:
12) I say that when I filed the earlier Affidavit I was not aware about application filed for registration of word 'XYLOX'. Hence, I have not intentionally suppressed any material facts from this Hon'ble Court. I say that the defense that the mark of Plaintiff is common to trade is independent of my right over the word 'XYLOX'. I say that the rights under Section 28 of the Trademarks Act, 1999 are independent of statutory defenses under Section 30 of the same act. The adoption of common to trade element as a part of trademark and/or part of coined word is in accordance with honest practices in industrial or commercial matters. In the present case, Defendant's adoption of word 'XYLOX' is not from Plaintiff's word 'LOX' but from the chemical compound 'XYLOCAINE'. The said adoption from the chemical compound name and/or drug name is in accordance with honest practices in industrial or commercial matters in pharmaceutical companies and is not to take unfair advantage of or be detrimental to the distinctive 13 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc character or repute of the Plaintiff's trademark 'LOX'. In view of the above, the adoption and use of the word 'XYLOX' is protected under Section 30 of the Trademarks Act, 1999. It has been time and again held by various courts that it is common in pharmaceutical industry to adopt name from the chemical compound or the drug name of the product.
18. This affidavit is made by one Sachin R. Menon, the 1st Defendant's legal executive. He is the same gentleman who affirmed the first Affidavit in Reply. His avowed legal background presumably makes him cognisant of the consequences of not disclosing that which is material and ought to have been disclosed. It seems to me hardly likely that Mr. Menon could have been unaware of any such application.
19. Mr. Parikh submits that if a composite label contains distinctive (XY, which cannot be slurred over while pronouncing XYLOX) and non-distinctive (LOX) matters, then the mark as a whole must be considered for registration.10 This, Mr. Parikh says, is the mandate of Section 17(2)(b) of the Act:
"17. Effect of registration of parts of a mark.
--
(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.
(2) Notwithstanding anything contained in sub-section (1), when a trade mark --10
Kailsam, K.C. and Ramu Vedaraman, Law of Trade Marks, 3rd Edition, p.
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(a) contains any part--
(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or
(ii) which is not separately registered by the proprietor as a trade mark; or
(b) contains any matter which is common to the trade or is otherwise of a non-
distinctive character , the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered."
(Emphasis supplied)
20. Therefore, Mr. Parikh submits, even if the 1st Defendant succeeds in registering the mark XYLOX, it would not get exclusive rights in the word LOX. This is publici juris and neither the Plaintiff nor the Defendants nor anyone else has any monopoly in its use.
21. The issue of whether a defendant can take such a plea of a mark or a prominent feature of a mark being common to the trade when the defendant has himself applied for registration is no longer res integra:11 the second action defeats the first argument. This seems to me logical. A man may well say, "I choose to use this particular mark because it is my belief that it is common to our trade 11 Automatic Electric Limited v R.K. Dhavan & Anr., 1999 PTC (19) 81; Indian Hotels Company Ltd. & Anr. v Jiva Institute of Vedic Science and Culture, 2008 (37) PTC 468 (Del.) (DB); Ultra Tech Cement Limited v Alaknanda Cement Pvt. Ltd. & Anr., 2011 (5) Bom CR 588 15 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc and therefore none may claim exclusivity over it." It is quite another for him to say "I will contend in opposition to a claim of exclusivity that the mark I have adopted is so common to our trade that none may claim exclusivity, but I will myself nonetheless apply for registration and thereby mount precisely such a claim to monopoly, and it matters not that implicit in my registration application is a self-annihilating contradiction of my own stand of the mark being commonplace." There is a form of estoppel by conduct that applies to such a defendant. A man may not 'approbate and reprobate'. He may take inconsistent stands, but not ones that are mutually destructive.
22. That leaves Mr. Parikh's surviving argument, viz., that the two marks are entirely distinct and that there is, therefore, no possibility of confusion. The prefix to the Defendants' mark clearly distinguishes it from that of the Plaintiff, visually, structurally and phonetically. There is not, Mr. Parikh says, the slightest likelihood of confusion or deception.12
23. I see no merit in this submission. When one compares two marks that are not identical, the Plaintiff must establish that the rival mark so nearly resembles its own that it is likely to deceive. The purpose of this comparison is to determine whether the essential features of the Plaintiff's trade mark are to be found in the 12 Macleods Pharmaceuticals Limited v. Intas Pharmaceuticals Ltd. & Anr., 2013 (55) PTC 380 (Bom); Astrazeneca UK Ltd. v. Orchid Chemicals & Pharmaceuticals Ltd., 2007 (34) PTC; Apex Laboratories Ltd. v. Zuventus Health Care Ltd., 2006 (33) PTC 492 (Mad.) (DB); F. Hoffman-La Roche and Co. Ltd., v. Geoffrey Manners and Co. Private Ltd., (1969) 2 SCC 716 : AIR 1970 SC 2062.
16 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc mark used by the Defendant.13 Every test of deceptive similarity must make allowances for imperfect recollection, careless pronunciation and speech.14 As the Supreme Court said in F. Hoffman-La Roche and Co. Ltd., v. Geoffrey Manners and Co. Private Ltd.:15 "7. ... It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. 62 R.P.C. 65 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 Luxmoore 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 the 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 who is likely to be deceived or confused Little assistance, therefore, is to be obtained from a 13 Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980.14
Aristoc Ltd. v. Rysta Ltd., 1945 62 RPC 65 at p. 72 15 (1969) 2 SCC 716 : AIR 1970 SC 2062; para 7 of the SCC report.
17 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc 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."
ig (Emphasis supplied)
24. I have compared the two marks. XYLOX is so depicted that that the leading X looks to have been cancelled. The second diagonal (from top left to bottom right) is a red line. The eye is led, ineluctably, to move over the next letter Y and to fasten on the succeeding letters, LOX. Visually, this is inevitable, and it would need the most careful scrutiny to discern the difference. Structurally and most of all phonetically, there is as good as no difference. The law in this regard is firmly settled by Cadila Healthcare Ltd. v Cadila Pharmaceuticals Ltd,16 where the argument that phonetic similarity is irrelevant where the trade dress is distinguishable. The test to be applied is that of the common man of average intelligence and imperfect recollection. The phonetic similarity test is crucial, and is the principal test.17 This is especially so in India, where English is not the common man's mother tongue, and where principles of phonetic pronunciation are applied willy-nilly to the oddities of 16 (2001) 5 SCC 73 : AIR 2001 SC 1952 17 Charak Pharma, supra.
18 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc English where indict is pronounced in-dite to rhyme with night (in which, too, the gh is not pronounced), where p is often silent, as in receipt. In Boots Company PLC & Anr. v Registrar of Trade Marks & Anr.,18 on this very reasoning, a learned single Judge of this Court held CROFEN to be deceptively similar to BRUFEN. In matters involving drugs and medicinal products especially, there is a higher standard of judicial care. As the Supreme Court said in Cadila, "33. [...] 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 specially where medicines are the medicines of last 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 effects on the public health."
(Emphasis supplied)
25. Any such confusion between products that deal with the same spectrum of health issues, even if sold under prescription, might well be life-threatening. It is human to err; doctors, like the rest of us, are no exception. An incorrect product mistakenly used might well be fatal. There is an overarching public interest that requires a lower threshold of proof of confusing or deceptive similarity where the trade marks in question are applied to pharmaceutical products:
182002 (4) Bom.C.R. 36 19 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc "drugs are poisons, not sweets", as the Cadila court said. A life threatening confusion is not a mere inconvenience.
26. There is no doubt in my mind that the Defendants' XYLOX family of marks are confusingly and deceptively similar to the Plaintiff's LOX family of marks. The Plaintiff has made out a very strong prima facie case. There is no manner of doubt, having regard to its volume of sales, and the lack of any corresponding material from the Defendants, that the most serious and irredeemable prejudice and injury will be caused to the Plaintiff if interim reliefs are denied. There is also the matter of the Defendants themselves having applied for registration of a mark of which the salient portion is, according to the Defendants themselves, incapable of any such registration or conferment of exclusivity. That, and the larger public interest, both indicate that the balance of convenience is firmly in favour of the Plaintiff.
27. The Notice of Motion succeeds. It is made absolute in terms of prayer clauses (a) to (d), reproduced and annexed to this order and judgment. There will be no order as to costs. Given my findings regarding the supervening public interest involved, and given, too, the nature of the products in question, there is no question of stay of this order. All to act on an authenticated copy of the order.
(G.S. PATEL, J.)
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(a) That pending the hearing and final
disposal of the present suit, the
Defendants by themselves, their servants and agents be restrained by a temporary order, injunction of this Hon'ble Court from in any manner, directly or indirectly, infringing the Plaintiff's trademarks by using the trademarks "XYLOX 2%, XYLOX HEAVY, XYLOX GEL, XYLOX AD, XYLOX 2% Jelly or any other marks deceptively similar to the Plaintiff's registered marks LOX 2% ADRENALINE, LOX 4%, LOX5%, LOX HEAVY 5%, LOX VISCOUS, LOXALPRIN, LOXALPRY, LOXIMLA, PLOX, and RILOX, of the Plaintiff bearing the registration Nos.1357750, 1357751, 1357752, 1357753, 1357754, 1314459, 1314458, 1401955, 696319, 696320 respectively, so as to infringe the Plaintiffs' registered trademarks;
(b) that pending the hearing and final disposal of the suit, the Defendants by themselves, their servants or agents be restrained by an order or injunction of this Hon'ble Court from in any manner using in relation to any pharmaceutical products bearing the impugned trademarks "XYLOX 2%, XYLOX HEAVY, XYLOX GEL, XYLOX AD, XYLOX 2% Jelly or any other deceptively similar trademark containing the word LOX 2% ADRENALINE, LOX 4%, LOX 5%, LOX HEAVY 5%, LOX 2% Jelly, LOX 10% SPRAY, PRILOX, LOX 5% OINTMENT or any other deceptively similar word or mark so as to pass-off or enable others to pass-off the Defendants goods and/or any goods not manufactured by the Plaintiffs 21 of 22 ::: Downloaded on - 24/09/2014 23:16:25 ::: NMSL827-2014-F.doc as or for the goods of the Plaintiffs.
(c) That pending the hearing and final disposal of the Suit, Court Receiver, High Court, Bombay be appointed Receiver of the Defendant's impugned goods, products, dies advertising or packaging material or articles and things of the defendants bearing the impugned trademarks "XYLOX 2%, XYLOX HEAVY, XYLOX GEL, XYLOX AD, XYLOX 2% Jelly or any other trademark deceptively similar to the Plaintiff's registered and pending trademarks LOX 2% ADRENALINE, LOX 4%, LOX 5%, LOX HEAVY 5%, LOX VISCOUS, LOXALPRIN, LOXALPRY, LOXIMLA, PLOX, and RILOX with all powers under Order XL Rule 1 of the CPC, 1908 including the power to take physical possession of the goods and custody of all the impugned goods, products articles and things of the Defendants bearing the said impugned trademarks "XYLOX 2%, XYLOX HEAVY, XYLOX GEL, XYLOX AD, XYLOX 2% Jelly from wherever they may be lying or situated, with the Police protection and the concerned Police station be ordered and directed accordingly;
(d) that the Plaintiffs / the Court Receiver be provided police protection at Mumbai i.e. at Goregaon, Jogeshwari, Tarapur Boisar Dist. Thane or wherever else necessary to execute the order of this Hon'ble Court.
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