Gujarat High Court
Torrent Pharmaceuticals Ltd. vs Comed Chemicals Pvt. Ltd. on 29 June, 2018
Author: Biren Vaishnav
Bench: Biren Vaishnav
C/AO/125/2000 CAV JUDGMENT
IN THE HIGH COURT OF GUJARAT AT AHMEDABAD
R/APPEAL FROM ORDER NO. 125 of 2000
FOR APPROVAL AND SIGNATURE:
HONOURABLE MR.JUSTICE BIREN VAISHNAV
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1 Whether Reporters of Local Papers may be allowed to
see the judgment ?
2 To be referred to the Reporter or not ?
3 Whether their Lordships wish to see the fair copy of the
judgment ?
4 Whether this case involves a substantial question of law
as to the interpretation of the Constitution of India or any
order made thereunder ?
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TORRENT PHARMACEUTICALS LTD.
Versus
COMED CHEMICALS PVT. LTD.
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Appearance:
MR HARSHIL SHAH(1936) for the PETITIONER(s) No. 1
MR RR SHAH(790) for the PETITIONER(s) No. 1
MR HASIT DAVE(1321) for the RESPONDENT(s) No. 1
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CORAM: HONOURABLE MR.JUSTICE BIREN VAISHNAV
Date : 29/06/2018
CAV JUDGMENT
1 This Appeal from Order filed under Order 43 Rule 1(r) of the Code of Civil Procedure arises out of an order below notice of motion, order dated 09.02.2000 Page 1 of 32 C/AO/125/2000 CAV JUDGMENT passed by the Chamber Judge, Court No.17. By the aforesaid order, the learned Chamber Judge vacated the interim relief granted earlier in favour of the appellant - plaintiff in Regular Civil Suit No. 471 of 2000.
2 The facts in brief are as under:
2.1 The appellant herein (hereinafter referred to as "the plaintiff") filed Regular Civil Suit No. 471 of 2000 against the defendant. Both the plaintiff and defendant are carrying on business as manufacturers of pharmaceuticals and medicinal preparations.
2.2 It was the case of the plaintiff a public limited company, that it is the inventor, original adoptor and proprietor of trade mark "DROXYL"
introduced from the year 1989. According to the plaintiff, for manufacturing the said project, permission of the Food and Drug Control Administration, Gandhinagar, was obtained on 24.05.1989. It was the case of the plaintiff that, the brand name "DROXYL" is 'A' in class in pharmaceutical and medicinal preparation", for which application for registration of trade mark was filed Page 2 of 32 C/AO/125/2000 CAV JUDGMENT on 10.04.1989, which was granted on 15.01.1997 with effect from 10.04.1989.
3 The cause of action for the plaintiff to file a suit under the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as "The Trade & Merchandise Act") occurred, as according to the plaintiff, since the last week of November 1999, the defendant introduced its product under the identical and / or deceptively similar brand name "CODROXIL". It was contended that, therefore, the plaintiff was a prior user of the brand and that the defendant had adopted a deceptively similar brand name, and thus they were guilty of passing off action of infringement and trade mark under the Trade Marks Act.
4 The defendant brought forth a case that there was no infringement or passing off as the name was a derivative and originated from the generic name "CEFADROXYL".
5 Before the trial Court, several authorities were cited on behalf of the respective parties and on Page 3 of 32 C/AO/125/2000 CAV JUDGMENT proposition of the facts and the law, the learned Chamber Judge refused to grant injunction in favour of the plaintiff. It is in the background of this, that the present appeal has been preferred. 6 Mr.R.R. Shah, learned advocate has appeared on behalf of the plaintiff / appellant herein and Mr. Hasit D. Dave, has appeared on behalf of the respondent - defendant. Shri R.R.Shah, learned counsel for the appellant has raised the following contentions:
(i) That the trade name "DROXYL" has been registered with effect from 10.04.1989. It is submitted that the plaintiff appellant, therefore, was a registered user and undisputedly was a prior user of the name "DROXYL".
(ii) Shri Shah, has further contended that it is an admitted fact that the defendant started the sale of their drug "CODROXIL" in November 1996, and therefore, evident it will be on reading Section 29 of the Trade and Merchandise Act that, since the defendant is not a registered proprietor, nor is a Page 4 of 32 C/AO/125/2000 CAV JUDGMENT permitted user of the mark which is identical and/or deceptively similar to the one used by the plaintiff, the trade mark of the plaintiff is infringed.
(iii) Shri Shah, has taken me through the sales figure in the paper book to submit that there has been a constant rise in the sale figures of their product "DROXYL" and for the year 01.01.2004 to 31.12.2004, they have had sales of Rs.16,44,05,418/
(iv) Shri Shah, has further invited my attention to Section 34 of the Act to contend that, the plaintiff has vested right to use the name "DROXYL", as it is not open for the defendant to prevent a proprietor or a registered user to use the trade mark.
(v) Inviting my attention to Section 31 of the Act, Shri Shah contended that, admittedly, the plaintiff's product is registered and therefore in accordance with Section 31, there is a prima facie evidence of its validity.
(vi) Admittedly, according to Shri Shah, the Page 5 of 32 C/AO/125/2000 CAV JUDGMENT registration of the Trade mark of the defendant is still pending. Therefore, there is no evidence or document produced by the defendant to show that the brand name of the defendant is registered under the Trade Marks Act.
(viii) Inviting my attention to Section 27 of the Act, it is contended by Shri Shah that, since the trade mark of the plaintiff is registered, infringement action lies.
7 Shri Shah, has taken me through the findings of the learned Chamber Judge drawing my attention to paragraphs 10 to 13 of the judgement. Shri Shah contended that, the learned Chamber Judge committed an error in refusing to grant injunction by holding that there was no prima facie similarity on account of the fact that the two names respectively i.e. of the plaintiff and the defendant are originated from a generic drug. He submitted that, once it was admitted that it was the case of the plaintiff that he was a prior user, injunction in favour of the plaintiff ought to have been granted.
Page 6 of 32 C/AO/125/2000 CAV JUDGMENT 8 Shri Shah further submitted that, admittedly, when the words "DROXYL" i.e. of the plaintiff is compared to the word "CODROXIL" of the defendant and the pamphlet displaying the name of the defendant is seen, there is phonetic similarity. Like in the case of passing off when infringement is proved, the natural and the obvious course for a trial Court is to grant injunction in favour of the plaintiff. 9 Shri Shah, further contended that the learned Chamber Judge committed an error in holding that since the drug was a Schedule "H" drug and could be sold only by the retailer, through the prescription of a registered medical practitioner, to hold that there was no cause of confusion in the eyes of the customer was illegal. In support of the submissions made by Shri Shah, that in the case of passing off and/or infringement injunction restraining the defendant from using the mark should be automatically granted, Shri Shah, has relied on the following judgements:
1) Duncans Agro Industries Ltd. v. Somabhai Tea Processors., reported in 36 1 GLR pg 380.Page 7 of 32 C/AO/125/2000 CAV JUDGMENT
2) Radheshyam Tourism vs. Radheshyam Travels Private Limited., rendered in Appeal From Order No. 123 of 2017. In this, Shri Shah has invited my attention specifically to paragraph 15 of the judgment to contend that prior use of the trade mark is prime consideration for grant of interim injunction of passing off action.
3) Shree Sainath Industries vs. Sainath Auto Industries., reported in 2004 (28) PTC 377
4) Dhariwal Industries Ltd. & Anr., vs. M.S.S. Food Products., reported in 2005(30) PTC 233 (SC)
5) Midas Hygiene Industries P. Ltd vs. Sudhir Bhatia., reported in 2004 (28) PTC 421 (SC).
This judgment is relied upon by Shri Shah to suggest that the law on the subject is well settled that, where the infringement either of the trade mark or copy right is proved, injunction must necessarily follow.
6) Nucron Pharmaceuticals Pvt. Ltd. & Another vs. International Pharmaceuticals, reported in PTC (supp1) (2) 485 (Bom) is a judgment of High Court of Bombay relied upon by Shri Shah to contend that, merely because the drug happens to Page 8 of 32 C/AO/125/2000 CAV JUDGMENT be a Schedule "H" drug, it cannot be said that it would not create confusion or deception in the mind of the customer. It is a fact that such drugs are sold over the counter and an unsuspecting patient can be confused.
7) Rupa & Co. Ltd. & Anr., vs. Dawn Mills Co. Ltd & Anr., reported in AIR (1998) Gujarat 247. This is relied upon by Shri Shah to contend that, merely because there is a delay, relief cannot be denied.
10 Reliance is placed on a judgement in the case of Kachchh Kala vs. New Kutch Kala., rendered by this Court in First Appeal No. 5061 of 1998, on 23.11.2005 to suggest that the cause of infringement and an act of passing off occurs day to day and such tortious act or deceit each day gives a sufficient cause of action.
11 Mr. Hasit Dilip Dave, learned advocate appearing on behalf of the defendant - respondent has supported the order of the learned trial Judge. According to Shri Dave, the learned trial Judge has rightly Page 9 of 32 C/AO/125/2000 CAV JUDGMENT refused to grant injunction in favour of the plaintiff. In the course of his submissions, Shri Hasit Dave, drew my attention to the provisions of Section 13 of the Act to contend that, if the word from which the brand name originates is commonly used and is accepted as a single chemical element, then such a name would not give an exclusive domain to either of the parties of being an invention. Shri Dave has further contended that the defendant has permission to sell the drug "CODROXIL". Permission is granted under the provisions of Food & Drugs Act by the State, and therefore, there is no question of the plaintiff being a prior user or a registered proprietor, and therefore, no claim for passing off or infringement would lie against the defendant. 11.1 In support of his submissions, Shri Dave, has submitted that the injunction was refused on 09.02.2000, the Appeal from Order was admitted in the year 2000 and since then, no interim relief has been granted to the plaintiff and the defendant is selling the drug in the market. Admittedly, there is no adverse effect of such marketing on the plaintiff and Page 10 of 32 C/AO/125/2000 CAV JUDGMENT the suit must be therefore directed to be decided in accordance with law. In support of the fact that the suit must be decided in accordance with law, Shri Dave has relied on a judgment of the Hon'ble Supreme Court in the case of Bajaj Auto Ltd., vs. T.V.S Motor Company Limited., reported in 2009 (9) SCC
797. He has specifically drawn my attention to paragraphs 9,10 and 11 of the judgment to suggest that the suit must be disposed of finally at an early date. For the same purpose, Shri Dave has relied on a judgment in the case of Shree Vardhman Rice & Gen Mills vs. Amar Singh Chawalwala ., reported in 2009 (10) SCC 257. He has further contended that the pendency of the registration would suggest that it is a permit use, and therefore, there can be no cause for passing off infringement.
12 Inviting my attention to provisions of Section 13 of the Act, Shri Dave has contended that nobody can have an exclusive or vested right to use a generic term as a trade mark.
13 According to Shri Dave, the drug Cefadroxyl, Page 11 of 32 C/AO/125/2000 CAV JUDGMENT which is a generic name from which the words DROXYL of the plaintiff and CODROXIL of the defendant had been coined, is a Schedule 'H' drug, and therefore, once being sold through the chemist, there is no reason that there can be confusion in the mind of the customer because they cannot be so deceptively similar.
14 Inviting my attention to the observations made by the learned trial Judge in holding that both the brand names were not phonetically similar, Shri Dave supported his stand by citing the following judgments:
(i) S.B.L Limited vs. Himalaya Drug Co., reported in AIR 1998 Delhi 126. According to Shri Dave, the test of judging a case of infringement and/or passing off though would remain the same in drugs and other goods, once it is found that there is no deception or likelihood of such deception as has been so held in the judgment under challenge, no cause for infringement has been made out.
(ii) Shri Dave has also relied on a judgment in the Page 12 of 32 C/AO/125/2000 CAV JUDGMENT case of F.HoffmannLaRoche and Co. Ltd., v.
Geoffrey Manners and Co. Private Ltd., reported in AIR 1970 SC 2062., to contend that when the generic name is used there can be no infringement.
(iii) The other judgment cited by Shri Dave is in the case of Acme Pharmaceuticals vs. Torrent Pharmaceuticals Ltd reported in 51 (1) GLR 802. In this case, according to Shri Dave, the present appellant had gone to the trial Court for injunction for restraining Acme Pharmaceuticals from using trade mark 'AROXIL'. The trial Court granted injunction in their favour. It was a subject matter of challenge before the High Court. The High Court considering the rival submissions, reversed the order of injunction holding that since both the names had their origin from the generic name 'CEFADROXYL', it was not a case of infringement.
Shri R.R.Shah, would contend that this judgment would not be applicable to the facts of this case, particularly in view of the fact that Section 9 of the Trade Marks Act was not considered by the learned Judge of this Court.
Page 13 of 32 C/AO/125/2000 CAV JUDGMENT 15 Having considered the rival submissions of the learned advocates for the respective parties, the question that needs to be considered is, whether the order passed by the Chamber Judge, Court No.17, City Civil Court Ahmedabad, dated 09.02.2000 in the Notice of Motion in Civil Suit No. 471 of 2000, deserves interference. Facts which are not in dispute may be recapitulated:
(A) The plaintiff - appellant herein, is in the business of manufacturing of and dealing with pharmaceutical and medicinal preparations. The defendant too, is engaged in the same line of business.
(B) The plaintiff has a registered trade mark "DROXYL", certificate of which is dated 15.01.1997, but with effect from 10.04.1989, and the same is renewed from time to time.
(C) The defendant has moved an application on 06.06.1996 bearing No. 707/2000 to register its trade mark "CODROXIL" under the provisions of the Trade and Merchandise Marks Act, 1958, which is still pending.
(D) Admittedly therefore the plaintiff is a registered proprietor of the trade mark "DROXYL" and Page 14 of 32 C/AO/125/2000 CAV JUDGMENT in the market prior to the defendant and therefore not only entitled to bring in action for passing off under Section 27(2) of the Trade Marks Act, 1999 but also for infringement under Section 29 of the Trade Marks Act.
(E) It is also not in dispute that both the rival claimants are engaged in the pharmaceutical business and issue is whether the name "CODROXIL" used by the defendant's product infringes the trade mark "DROXYL" of the plaintiff - appellant, when both have their roots in the generic name of the medicine "CEFADROXYL".
(F) That it is also undisputed that the drugs in question are Schedule "H" drug as per the Drug and Cosmetic Rules, 1945, which cannot be sold without the prescription of the registered medical practitioner.
16 In light of these basic facts before this Court, the learned Judge, Chamber Court, held as under:
"11 Again, the trade name used for the defendant's product is not prima facie found deceptively similar to that of the plaintiff's mark mainly on the count that, "cefadroxil" is a generic drug and the plaintiff in order to distinguish its mark has merely inserted the Page 15 of 32 C/AO/125/2000 CAV JUDGMENT letter "Y" instead of letter "I" in cephadroxil and has adopted the word "DROXYL" in verbatim from this basic constituent. Whereas, there is a plausible explanation on the part of the defendant that, the prefix "CO" is taken from the first two letters of the defendant company "Comed" to denote that, the same is manufactured by the defendant company. When it is found that, principal drug is "cefadroxyl" and the name of the plaintiff's produce is derivative from principal drug "cefadroxyl" the same is found deceptive of the nature of the composition of the drug and as ruled in the various authorities, no protection under the Act can be given in case of either a generic or a descriptive name. Adding of "Y" in the place of "I" would not make the word inventive and again defendant's use of trade mark is with "I" in Droxil on the line the generic name of "Cephadroxil" and not "Y" in immitation of the plaintiff. From the CIMS (January March 1998) as well as from January March 2000, it is found that there are other drugs with similar sounding products with the same generic composition manufactured by other companies in India like Odoxil from Lupin. Lydroxil from Lyka. Zoxil from Medley. Droxibit from Hindustan Antibiotics, Droxyceph from Orchid. Of course, no data of their production/sale etc., are available to this Court but, at the same time, when the name is derived or coined from the principal ingredients in the manufacture of the medicine, this Court will have to keep in view this fact and no injunction can be granted on the basis of the distinctiveness or the exclusiveness as being claimed by the plaintiff although its mark is registered. Prima facie, it would not be possible to come to a conclusion that common element abbrivated from this description name "Cephadroxil" is so distinctive as would become associated in the public mind as an indicative of source of that of the plaintiff alone.
Xxx xxx xxx xxx Page 16 of 32 C/AO/125/2000 CAV JUDGMENT xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx xxx
In the instant matter, abbreviation from "Cephadroxil" to "Droxyl" by change in spelling from "I" to "Y" does not appear to change generic significance entitling the plaintiff to claim invention and coining of the word.
12 XXX XXX xxx Though this Court has taken into due consideration the ruling of the Honourable High Court of Gujarat given in the case of Cadila Pharmaceuticals v/s. Torrent Pharmaceuticals Ltd. (Supra) it was in the light of the given facts and circumstances that the Hon'ble High Court had found that, inspite of there being a Schedule "H" drug, injunction was necessary. Here with the existing facts the ratio of Ciba Geigy Limited case, laid down by the Honourable Gujarat High Court and approved by the Honourable Apex Court needs to be followed. With the restrictions and safe guards enumerated in the Act and Rules, the Court is of the opinion that, both the drugs are not likely to be sold by the retailer except on the prescription of registered medical practitioner and moreover, there are no possibilities of mistake or confusion, as a fact of its being scheduled "H"
drug cannot be ignored by the Court of Law. A mention is also required to be made of the fact that, defendant have produced its strips, packing and the packaging boxes as well as the strips of the plaintiff as well as the outer packaging which is undoubtedly different and the two products do not have the structural similarity at all. Not only there is a difference of "Y" and "I" prefixxed by "Co" making it phonetically dissimilar but, from the Page 17 of 32 C/AO/125/2000 CAV JUDGMENT packing etc., there is an absence of visual and structural similarity and hence, there appears to be a thin possibility that, the goods of the defendant are likely to be passed off as that of the plaintiffs. The fact that there has been an ever increase in the sale figure of the said trade preparation of the plaintiff over the period of time also goes to show that, the introduction of the defendant in the said market has not adversely affected the plaintiffs market.
13 xxx xxx xxx However, from overall surrounding circumstances, it is not possible to come to the conclusion that, there will be a possibility of confusion in the minds of patients and purchasers and use of this mark by the defendant will injure the plaintiff and that the defendant will gain illicit benefit of the reputation of plaintiff's product at the cost of plaintiff and the general public also."
16.1 Therefore the learned Chamber Judge found that:
(i) Since both "DROXYL" and "CODROXIL" are derivatives of the generic name of the drug "CEFADROXIL" adding 'Y' in place of 'I' would not make the plaintiff's word inventive.
(ii) When the drug is sold only through a prescription there are no possibilities of mistake or confusion because it is a Schedule 'H' drug
(iii) There is no possibility of passing off as the Court on visual inspection found that packaging is Page 18 of 32 C/AO/125/2000 CAV JUDGMENT different and the prefix "CO" makes it phonetically dissimilar.
(iv) There has been an overall increase in the sale of the plaintiff's product and therefore introduction of the defendant's product has not adversely affected the plaintiff's market.
17 There can be dispute on the propositions of law laid down by this Court, in case of grant of injunction where a case is made out for passing off. Citations relied upon by Shri R.R.Shah in case of Duncan Agro (supra), Radheshyan Tourism (supra), Shree Sainath Industries (supra) and Dhariwal Industries (supra), suggest that once prior use in point of time is found to be established, as in the case on hand, which is the prime consideration, grant of interim injunction would follow.
18 Similarly reliance on the judgments in the cases of Midas Hygience (supra), Rupa & Co. (supra) that when there is infringement, Shri Shah's submission that the law is settled, that in cases of infringement, injunction becomes necessary on a prima Page 19 of 32 C/AO/125/2000 CAV JUDGMENT facie case being established, is also not disputed. 19 However, the law on the issue, needs to be applied to the facts of each case and whether in light of such facts, did the learned Chamber Judge commit an error, is the question to be answered. Parameters of judging the legality of examining the order in appeal are well settled. If the Court below has not exercised its discretion arbitrarily, capriciously or perversely or has not ignored the settled principles of law regulating grant or refusal to grant interlocutory injunctions, this Court would not substitute its own discretion.
20 The basic principles for deciding whether there is "passing off" on the basis of unregistered trade mark generally for deciding the question of deceptive similarity are as under:
(a) The nature of mark i.e. whether the mark are word marks or label marks or composite marks i.e. both words and label works;
(b) The degree of resemblance between the marks, phonetically similar and hence similar in idea;Page 20 of 32 C/AO/125/2000 CAV JUDGMENT
(c) The nature of goods in respect of which they are used as trade marks;
(d) The similarity in nature, character and performance of goods bearing the marks they require;
(e) The mode of purchasing the goods or placing orders for the goods and;
(f) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage of each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.
21 Even in the case of "infringement", a product could be identical with or deceptively similar if it nearly resembles that other mark as to be likely to deceive or cause confusion on the part of the public. Let us now apply these parameters to the facts of the case where the product in question is a medicinal preparation.
22 What is noteworthy of the citations relied upon by Shri Shah is that they relate to products which Page 21 of 32 C/AO/125/2000 CAV JUDGMENT were not pharmaceutical products and/or medicinal preparations, and therefore, the parameters for judging passing off action and/or infringement as referred above would have different weightage in the facts of this case. It was in light of the facts of the case on hand that taking into consideration that the product in question was a drug/medicinal preparation, that it will be in the fitness of things to refer to the Division Bench decision of the Delhi High Court in the case of S.B.L.Limited vs. Himalaya Drug Co. reported in (AIR 1998 Delhi 126). The relevant paragraphs are as under:
"9 First, we may refer to a few provisions of the Trade and Merchandise Marks Act, 1958. A trade mark is a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right to use the mark. [Section 2(V)]. A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion [Section 2(d)]. Name includes any abbreviation of a name [Section 2(k)]. A mark the use of which would be likely to deceive or cause confusion is prohibited from being registered (Section 11). Use of a trade mark which is identical with or deceptively similar to a registered trade mark amounts to infringement of trade mark (Section
29). The statutory remedy of action for infringement does not take away the Common Law remedy of an action for passing off, which in substance is an action for decent (Section 27).Page 22 of 32 C/AO/125/2000 CAV JUDGMENT
xxx xxx xxx xxx 14 Mc. Carthy on Trademarks and Unfair
Competition [Third Edn. Vol.2], states :
"The names of a product or service itself - what it is - is the very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms "generic" and "trademark" are mutually exclusive.... The concept of "generic name" and "trade name" are mutually exclusive. Thus, if, in fact a given term is "generic", it can never function as a mark to identify and distinguish the products of only one seller (para12.01).
An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviation name, is still, "generic".
"Acronyms of generic names are often used interchangeably with the full generic name and recognised as equivalent..."
"If the abbreviation is not recognisable as that original generic term, then the abbreviation is like a fanciful mark and protectable. (Para 12.12(1)) As with misspelling of descriptive terms, a misspelling of a generic name which does not change the generic significance to the buyer, is still "generic".(Para12.12(2)) XXX XXX XXXX 24 The test of judging a case of infringement and/or passing off 'remains' the same when applied to medicines and pharmaceuticals. However, a few additional consideration arise when dealing with cases of such drugs which cannot be sold except on prescription of a doctor and which are sold only by such persons who have knowledge or expertise in the field.Page 23 of 32 C/AO/125/2000 CAV JUDGMENT
The manner in which trade in such medicines is carried on that is, they can be sold only on prescription and at authorised outlets only and the class of persons who would purchase that is, the patients advised by doctors, chemists and druggists these two facts assume significance and shall have to be kept in view by the Courts.
25 To sum up: (1) The crucial tests to be applied for judging an infringement action or a passing of action in the field of medicinal and pharmaceutical preparations remain the same as are applicable to other goods. However, in the case of preparations trading whereof is governed by statutory rules or regulations, additional considerations become relevant. They are : (I) the manner in which the trade as 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 purchasers, 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 might lead to the one being confused for the other? Regard shall be had not to the hypothetical possibilities 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 Page 24 of 32 C/AO/125/2000 CAV JUDGMENT ingredient being publici juris or generic cannot be owned by anyone 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 of 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 assumes significance."
23 While apprising myself of the judgment under challenge, what needs to be seen is that the learned Judge has considered the judgment of this Court in the case of Torrent Laboratories Ltd., vs. Ciba Geigy Ltd., reported in LAWS(GJH) 19981284 (rendered in O.J Appeal NO. 11 of 1993). Relevant it would therefore be to reproduce the following proposition from such judgment.
"47 Xxx xxx xxx It is a Schedule 'H' drug which is only to be procured on prescription of a register medical practitioner and to be dispensed with only by a licensed dealer. Person who prescribes is also concerned with the pharmaceutical properties and nature of the substance of the drug which he Page 25 of 32 C/AO/125/2000 CAV JUDGMENT wants to use for treating a particular ailment and the purchaser in most cases is dependent on such prescription and does not use his own discretion to buy one drug. If we keep this class of people in mind, there is no reasonable likelihood of confusion in the mind of any average purchaser.
48 In this connection, it is very relevant that somebody buying a prescribed drug is not really concerned with trade origin of the drug. He is most concerned with what has been prescribed by the doctor. Moreover, as we have noticed above, confusion can be caused in three ways, confusion as to goods, confusion as to trade origin and confusion as to trade connection. In the matter of dispensation of medicinal preparation, test relates to trade origin or trade connection is not of much importance inasmuch as average man of common intelligence who has to purchase drugs on doctor's prescription is not concerned either with trade origin or trade connection, but with the goods itself. This confusion which is likely to be caused in that field attracts more importance than other factors. It has rightly been found that CIBA is a trade mark which has connection with trade origin irrespective of goods where of average purchaser of ordinary intelligence with imperfect recollection to be kept in mind is one who is not concerned with trade origin or trade connection but with goods only, the weight of consideration in deciding whether the use of proposed mark in fair manner, in the ordinary course, is likely to cause confusion or deception, too shifts to such likelihood of deception and confusion in connection with goods. The surrounding circumstances become more important in the mind of such person for remembrance than trade origin.
49 Whether writing the word ULCIBAN or pronouncing the word ULCIBAN, significant importance of the word 'UL' or 'N' appears eloquently and cannot be ignored. Ordinarily, Page 26 of 32 C/AO/125/2000 CAV JUDGMENT rule of considering the pronouncement and writing of multisyllabic words first or last syllable usually occupies important place visually as well as phonetically. We cannot conceive of a situation unless an effort is made in some way to project CIBA distinctively against 'UL' and 'N' whether in writing or in pronouncing the word 'ULCIBAN' in any way bears such similarity which is likely to cause deception or confusion. What is to be considered in the context of inhibition under section 11 is the probable effect of normal and fair use of applicant's mark and not by assuming strained and unfair abnormal use by any unscrupulous men and public. In other words, the test is by assuming that mark sought to be registered is to be used in fair and normal way and by user in such way, what is its probable effect visavis impression of actual user of the opponent's mark. If any fair and normal use of the applicant's mark does not cause confusion or likely to cause confusion, it would be a case for refusing registration on the ground of likelihood of deception by unscrupulous use. There may be a case, where mark is used in a manner which is likely to cause deception or confusion. It may amount to infringement of mark. But at the time of registration of the applicant's mark without there being any material, one cannot assume the effect of the mark to be used in a particular manner in future which may not be fair and normal use of mark."
24 This Court, in case of the same drug "DROXYL" had an occasion to extensively consider the law, when the plaintiff Torrent Pharmaceuticals could get an injunction preventing a defendant using trade mark "AROXIL". This was in the case of Acme Pharmaceuticals (supra). It would be relevant to reproduce paras 20 and 21 of the said judgment, which Page 27 of 32 C/AO/125/2000 CAV JUDGMENT reads as under:
"20 Having heard learned Counsels appearing for the parties and having gone through the impugned judgment and order passed by the learned City Civil Judge, Ahmedabad in interim application granting injunction in favour of the respondent plaintiff and having considered the rival submissions of the parties in light of the statutory provisions contained in the Trade Marks Act as well as the decided caselaw on the subject, the Court is of the view that the learned City Civil Judge has committed a grave error of law and facts in granting interim injunction in favour of the respondentplaintiff and the said order and judgment deserves to be interfered with while exercising an appellate jurisdiction of this Court under Order 43, Rule 1(r) of the Civil Procedure Code.
21 There is no dispute about the fact that the Appellant has been using the trade mark "AROXIL"
since 1996. There is also no dispute about the fact that the respondentplaintiff has filed Regular Civil Suit No. 4703 of 2000 in the year 2000 and no interim relief was granted by the trial Court at the initial stage. The injunction application was decided by the trial Court on 30.11.2006 and for the first time the interim injunction was granted whereby the appellant original defendant was restrained from infringing the respondentplaintiff's registered trade mark "DROXYL" and from using its impugned mark "AROXIL" in respect of the pharmaceutical and medicinal preparation, as prayed for. It is also relevant to note that this order of the trial Court was suspended by the trial Court itself so as to enable the appellant to approach this Court, and after filing this Appeal From Order, this Court has suspended the said order and it still remains under suspension as on today. The net result of this is that the Appellant has been using this trade mark "AROXIL" for the last more than 13 years. It is, therefore, incumbent upon the Court to consider this aspect as to whether after 13 years the Page 28 of 32 C/AO/125/2000 CAV JUDGMENT injunction order should or should not be granted in favour of the respondent plaintiff." 25 Thus, what is borne out from the reading of the aforesaid judgments is that, when the adaptation of the name has its origin from a genesis name, the user of the brand name cannot take the advantage of such use as an inventor or trade name. Therefore, on facts, when the word "Cefadroxil" is a generic name, the use of the word "DROXYL" would not in any manner give the appellant an exclusive right to use such a name when its origin is generic. Mr. Shah would contend that the said judgment would not apply to the facts of the case as the question of Section 9 of the "Trade Marks Act" was not considered. I am not inclined to accept the submission of Shri Shah, as, relevant provision was considered as reading of para 22 of the judgment so reveals. Even otherwise consideration of Section 9, would be of no relevance while considering the case of the appellant for passing off and/or infringement. Section 9 deals with refusal of registration in certain circumstances which is not the case on hand.
Page 29 of 32 C/AO/125/2000 CAV JUDGMENT 26 Now dealing with the contention of Shri Shah that irrespective of it being a Schedule 'H' drug, the phonetic similarity and visual similarity itself causes confusion in the mind of the consumer and therefore it is deceptively similar, Shri Shah would submit the test is to be applied in context of an unwary purchaser. It is not uncommon that because of lack of competence or otherwise mistakes can arise when marks are similar.
27 As discussed above the question of deceptive similarity has to be considered on several factors. Weightage has to be given to each factor depending on the facts of each case. The nature of goods here is a medicinal preparation and the mode of purchase is only through prescription, it being a Schedule 'H' drug. The learned Chamber Judge, keeping in mind these two broad parameters on facts has found that, merely because the alphabets 'Y' or 'I' are interchanged and when the root of the names is in its generic name "Cefadroxil", it cannot be said that the appellant has invented it. Admittedly, from the figures of sales pointed out by Shri Shah, from the Page 30 of 32 C/AO/125/2000 CAV JUDGMENT paper book, each year, the sales of the appellant's product has gone up. Facts on hand, and such relevant surrounding circumstances would obviously be a pointer to the fact that there is nothing deceptively similar to cause confusion in the minds of the customer.
28 The Court also is mindful of the fact that Regular Civil Suit is of the year 2000, namely Regular Civil Suit No. 471 of 2000. The injunction was refused on 09.02.2000. The appeal was admitted by this Court on 10.04.2000. By an order dated 30.08.2000 the civil application for stay was rejected. Eighteen years have passed and there is no restraint order and the respective claimants are in the business of selling their products. In light of the anxiety expressed by the Supreme Court in the case of Bajaj Auto Ltd. (supra), it will be in the fitness of things to direct the City Civil Court, Ahmedabad, before which the Regular Civil Suit No. 147 of 2000 is pending to dispose of the suit finally within a period of six months from the date of the receipt of writ of of the order of this Court. Page 31 of 32 C/AO/125/2000 CAV JUDGMENT 29 Accordingly, this appeal is dismissed with a request to the City Civil Court, Ahmedabad, to dispose of Regular Civil Suit No. 147 of 2000 preferably within a period of six months from the date of receipt of a certified copy of the writ of this order. Orders accordingly. Rule is discharged.
(BIREN VAISHNAV, J) Bimal Page 32 of 32