Delhi High Court
Biofarma & Anr. vs Sanjay Medical Store & Another on 9 October, 1998
Author: R.C. Lahoti
Bench: R.C. Lahoti
ORDER R.C. Lahoti, J.
1. Plaintiff has come up in appeal feeling aggrieved by the impugned order passed by learned Single Judge of this Court rejecting the plaintiff's application for the grant of ad-interim injunction under Order 39 Rules 1 & 2 of the CPC, in a suit filed on the original side jurisdiction of the High Court.
2. "Flavedon" is registered trade mark of the plaintiff No.1/appellant in India having been so registered under No.337006 dated 13.5.1978 in Clause V in respect of pharmaceutical preparation and substance. The plaintiff No.1 has allowed the plaintiff No.2 to use the said trade mark pursuant to an agreement entered into between the two.
3. Shortly before the institution of the suit, the defendants have commenced marketing a pharmaceuticals product adopting the name "Trivedon". According to the plaintiffs "Trivedon" amount to infringement of the plaintiffs' trade mark and passing off by the defendants of their goods as the plaintiffs'.
4. It is not disputed that the active ingredients of both the medicines is TRIMETAZIDINE, which is prescribed for the treatment of heart diseases. The medicine is a schedule-H drug. It can be sold only on medical prescription and by a licensed dealer only. According to the plaintiffs, Trivedon is visually and phonetically similar to "Flavedon" of the plaintiffs and thus bears a deceptive similarity with the plaintiffs' product. The learned Single Judge has however held to the contrary and hence dismissed the plaintiff's application for the grant of ad-interim injunction restraining the use of "Trivedon".
5. The defendants contesting the plaintiff's application, set out the following factors in opposition to the plaintiffs' prayer :-
(a) That the two trade marks, namely, 'Flavedon' and 'Trivedon' are different as the opening syllable are completely different and the suffix 'vedon' is commonly used by a number of other pharmaceuticals manufacturers.
(b) That the pharmaceutical preparation in question being 'Trimetazidine' which is a Schedule 'H' drug, and more so, being used for the treatment of schematic heart diseases, any purchaser is not likely to walk out to a chemist and ask for the said medicine unless prescribed by a physician/cardiologist.
(c) That the two trade marks, each of the plaintiffs and the defendants, are both visually and phonetically totally dissimilar and different and therefore there is neither any infringement nor any passing off committed by the defendants.
(d) That there is a marked difference in prices of drugs manufactured and sold by the parties.
(e) That the packing of the two drugs is also different.
6. The learned counsel for the plaintiffs-appellants has advanced more or less similar submissions as were made before the learned Single Judge. A host of authorities has been cited by the learned counsel for both the parties.
7. Recently, a Division Bench of this Court had an occasion to deal with law relating to infringement and passing off in the field of medicines and pharmaceutical preparations in SBL Ltd. Vs. The Himalaya Drug Co. wherein Liv.52 had sought an injunction to restrain LIV-T. The law was summed up in the following words :-
(1) The crucial tests to be applied for judging an infringement action or a passing off action in the field of medicinal and pharmaceutical preparations remain the same as are applicable to other goods. However, in the case of preparation trading whereof is governed by statutory rules or regulations, additional considerations become relevant. They are :
(i) the manner in which the trade is carried on, such as sales being made only by authorised or licensed vendors who will be educated, also having special knowledge of medicines and pharmacy; (ii) the class of persons who would be the purchaser, whether they would be accompanied by doctors' prescription and would in all probability remain in touch with doctor while consuming the medicine purchased. The Court would ask - Is there such a similarity between the two trade marks that a doctor or a chemist or the both by some carelessness in expression, some obscurity in handwriting, some slip of recollection or some careless mistake not expected of a trained professional doctor or chemist might lead to the one being confused for the other? Regard shall be had not to hypothetical possibility but to ordinary practical business probabilities as applied to the circumstances of an individual case.
(2) The decision on the question of likelihood of deception is to be left to the Court.
(3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris. In the trade of drugs it is common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being publici juris or generic cannot be owned by any one for use as trade mark.
(4) Whether such feature is publici juris or generic is a question of fact.
(5) If the two trade marks by two competing traders use a generic word or an expression publici juris common to both the trade marks it has to be seen if the customers who purchase the goods would be guided by the use of such word or expression or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. The primary question to be asked is What would remain in the memory of customer? The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc. used on the packing also assume significance.
8. All the available leading authorities on the subject were placed before and considered by the Division Bench in the above said case. The authorities which have been cited in the case at hand are mostly the same. Still out of these we would like to refer to two.
9. The leading most case is Roche & Co. Vs. G.Mannaers & Co. . The question was whether DROPOVIT and PROTOVIT are deceptively similar. Vide para 12, their Lordships found that the last three letters were 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 is again a common vowel "O". The combined effect was to produce alliteration. VIT is a well known abbreviation used in pharmaceutical trade to denote vitamin preparation. Thus the terminal syllable `Vit'in the two marks was both descriptive and common to the trade. Their Lordships held :
"If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the others. The letters `D' and `P' in `DROPOVIT' and the corresponding letters `P' and `T' in PROTOVIT cannot possibly be slurred over in pronunciation and the words are so dis-similar that there is no reasonable probability of confusion between the words either from visual or phonetic point of view."
9.1 Vide para 13 their Lordships have also noted that the question of confusion must be determined on the basis that the goods with one of the two rival trade marks would be sold only by a licensed dealer and would not be available in any other shop, which fact also reduces the possibility of confusion to a considerable extent.
10. The following statement of law made in In Platonist Application (1906) 23 RPC 774 at 777 by Parker, J. has been quoted with approval in Lakshman Dhara's case :-
"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 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 trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks."
11. The learned Single Judge has vide para 10 of the impugned order noted that for deciding the question of deceptive similarity judicial pronouncements have laid down the following factors to be considered :-
"(a) The nature of the marks, i.e., whether the marks are word marks or level marks or composite marks, i.e., both word and level marks.
(b) The degree of resemble ness between the marks, whether they are phonetically, visually or structurally similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(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 the marks.
(f) The mode of purchasing the goods or placing orders for the goods; and
(g) Any other surrounding circumstances.
It is also settled that weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case."
We find ourselves in entire agreement with the statement of law as above said by the learned Single Judge.
12. Some of the findings further recorded by the learned Single Judge may also be noticed. He has found (i) that the opening syllables of the two competing trade marks are completely different and distinct; (ii) the degree of resemblance between 'Flavedon' and 'Trivedon' phonetically and visually appears to be dis-similar; (iii) a list of several drugs ending with the suffix Vedone/Vidone which goes to show that the use of such suffix is common in the trade; (iv) there is a difference in the prices of the two products. Vide para 23, the learned Single Judge has further opined that on an overall consideration of each of the several factors detailed in the impugned judgment apparently the two trade names of the two products are totally dis-similar and different.
13. There is no evidence - not even an allegation that the defendants have at any time attempted at passing of their products as that of the plaintiffs.
14. For the foregoing reasons, we are of the opinion that no fault can be found with the impugned order. The learned Single Judge has not erred either on facts or in law in refusing the prayer for the grant of ad-interim injunction to the plaintiff-appellant.
15. The appeal is held devoid of any merits and liable to be dismissed. It is dismissed accordingly though without any order as to the costs.