Madras High Court
Wockhardt Limited vs Aristo Pharmaceuticals Limited on 30 January, 1999
Equivalent citations: (1999)2MLJ467
JUDGMENT C. Shivappa, J.
1. These two appeals are directed against the order dated 2.6.1998, passed on O.A.Nos.182 and 183 of 1998 on the Original Civil Jurisdiction of this Court, vacating the ex parte interim injunction granted on 16.4.1998.
2. Original Application No. 182 of 1998 was filed for grant of an ad-interim injunction restraining the respondent and others from use or otherwise dealing with the pharmaceutical preparations and substances under the trade mark "SPASMO-FLEXON". O.A.No. 183 of 1998 was for grant of ad-interim injunction restraining the respondent and others from passing-off the goods under the trade-mark "SPASMO-FLEXON", on the ground that the same is identical or deceptively/ phonetically similar to the appellant's trade-mark "SPASMO-PROXYVON"
3. In the suit, the trial Judge by an order dated 16.4.1998 granted ad-interim injunction ex parte. Against the said order, the respondent herein filed Applications No. 1650 to 1654 of 1998 to vacate the ex parte order passed on O.A.Nos.182 and 183 of 1998 and also to permit the respondent to complete preparation of the "SPASMO-FLEXON" drug and to dispose of the manufactured drugs and also the unsold drugs of the respondent pending disposal of the applications. The learned single Judge allowed those applications and vacated the ex parte order of interim injunction holding that both the plaintiff and the defendant should maintain their respective structure and colour of the drugs. Aggrieved by the said common order, the appellant is now before us.
4. The case of the appellant/plaintiff is that it adopted the trade mark SPASMO-PROXYVON" in respect of its pharmaceutical products and the said trade mark was also registered on 4.8.1977 under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'The Act' for short) and the registered number is 327582. The said trade mark was advertised in the Trade Mark Journal No. 706 at page No. 612, and the registration of the same was notified in Trade Mark Journal No. 750 at page No. 450. Thereafter, it was renewed upto 4.8.1998 and that fact was also notified in Trade Mark Journal No. 1014 at page No. 763. Subsequently, the appellant/plaintiff had also applied for renewal of the said trade mark for a further period of 7 years.
5. The appellant came to know that the respondent herein has introduced a pharmaceutical product under the trade mark "SPASMO-FLEXON", a drug for relieving pain, with almost same preparation and bearing a deceptive similarity to that of the appellant's trade mark "SPASMO-PROXYVON" and, hence there is every possibility for the public being mislead in buying it. In other words, the trade mark "SPASMO-FLEXON" is deceptively and phonetically similar to that of the appellant's trade mark "SPASMO-PROXYVON" and also having colourable imitation that led to filing of suit and interlocutory applications pertaining to use of trade marks and passing-off goods.
6. The respondent-company has filed a counter-affidavit stating that it was founded in or around the year 1972 and for the past 25 years, it has built up a reputed business in the pharmaceutical industry and is presently among the top 15 pharmaceutical companies in India. The respondent-Company has around 22 branches and more than 1000 stockists spread out all over India. The annual sales turn over of the respondent-Company is presently around Rs. 160 crores. In the year 1986, the respondent-Company adopted the invented word "FLEXON" as a trade mark called a pain relieving drug meant for muscles in the human body. The "FLEXON" drug of the respondent-Company gained huge success and sales have been growing steadily over the past 12 years and presently having a turn over of more than Rs. 10 crores. The trade mark "FLEXON" is associated exclusively with the respondent-Company. It is submitted that in the field of medicine and pharmaceuticals, it is a common and established practice that a part of the brand name of a drug contains: (i) the name of the ailment; (ii) the name of the organ which it treats or (iii) the principal ingredient. The above enables the Doctor to associate a particular trade mark with an ailment, organ or ingredient. Such descriptive portion of the trade mark is by its very nature, generic, publici juris and common to the trade and no trader can claim exclusive rights to such descriptive portion of an ailment, organ or ingredient. It is further submitted that in October, 1997, the respondent-Company decided to launch a new drug as a by-product of the main "FLEXON" drug. While the "FLEXON" drug treats all muscular pains, the new drug would be used to treat 'SPASMS' of the soft muscles of the stomach and intestines which are one particular type of muscular ailment/pain. As per the common established practice in the pharmaceutical industry, the brand name "SPASMO-FLEXON" was therefore coined, by combining the generic/descriptive name of the ailment, i.e., 'SPASM', along with the respondent-Company's famous brand name "FLEXON". The new drug "SPASMO-FLEXON" was launched in October, 1997 and has been sold continuously all over India thereafter. The drug "SPASMO-FLEXON" has been well received in the market and by the doctors and chemists and patients and sales have been steadily increasing and the drug has tremendous potential for further growth and popularity in use.
7. It is further submitted that more than 32 applications/registrations can be seen in the Trade Marks Registry Records for trade marks starting with the word "SPASMO". The above makes it clear that the brand name "SPASMO-FLEXON" was coined and used in the normal course of established pharmaceutical industry practice and not to cash in on the reputation of the 'SPASMO-PROXYVON" drug of the petitioner. The use of the word "SPASMO" as a prefix just indicates the type of ailment being treated which is common in the pharmaceutical industry as a descriptive generic term and is "publici juris' and open to use by all.
8. The drug was launched in Bombay and all over India in October, 1997 and there were good sales with steady increase month by month, which is reflected at para 9 of the counter. From October. 1997 upto March, 1998, there is a steady increase from Rs. 8,375 to Rs. 5,68,174 in November. 1997 and later with variations in between Rs.2 and 3 lakhs till March, 1998. In April, 1998, sales were temporarily stopped due to an exparte order of interim injunction until the beginning of June, 1998 when it was vacated. Sales of "SPASMO-FLEXON" drugs were thereafter resumed on an all India basis and for the past 2 1/2 months, have been enjoying good sales and demand all over India. The sales in June and July, 1998 are given below:
June, 1998 - 74756 strips - Rs. 3,16,000 July, 1998 - 64443 strips - Rs. 2,73,000
9. The grievance of the respondent is that the appellant obtained an ex parte order of interim injunction by suppressing the material facts from the court. The explanation is that the appellant and the respondent-Companies are both based in Bombay and the "SPASMO-FLEXON" drug was launched in October, 1997 more than six months before the filing of the suit. As a rival company, the appellant was well aware of the launching of the drug, but still filed a suit in Chennai six months after the launch of the "SPASMO-FLEXON" product in Mumbai and had been attempting to make on a case that the "SPASMO-FLEXON" drug was seen at Chennai in March and April, 1998, whereas, to the knowledge of the appellant, the drug was being widely sold in Bombay from October, 1997. It was also contended that the appellant-Company deliberately suppressed the fact that the brand name "FLEXON" had been used by the respondent for more than 10 years in relation to a pain relieving drug for muscles and that it was the normal industry practice to add the word "SPASMO" as a prefix to indicate that "SPASMO-FLEXON" is one of the species of the main drug "FLEXON". The main drug "FLEXON" treats all muscular pains, whereas "SPASMO-FLEXON" towards only soft muscular spasms of the stomach and digestive tracks. The appellant suppressed the fact that it itself has a drug "PROXYVON" and another drug called "SPASMO-PROXYVON", just like the respondent has a drug called "FLEXON" and "SPASMO-FLEXON". Both the drugs involved are schedule H drugs, which cannot be sold in retail except on a prescription of a medical practitioner and that such medicine is supplied through the hands of skilled persons such as doctors and chemists, who by their training, experience and by their knowledge render it practically impossible for any deception or confusion to take place.
10. The learned senior counsel Mr. C.A. Sundaram for the appellant contended that, (1) the appellant has an exclusive statutory right by virtue of the appellant being registered proprietor of the trade mark "SPASMO-PROXYVON" to the exclusion of all others; (2) the respondent's sale of its drug under the name "FLEXON" prefixing the word "SPASMO" amounts to infringing the registered trade mark of the appellant; (3) the reasoning that "SPASMO-FLEXON" is phonetically and structurally not deceptive is solely on the basis of the colour and physical appearance, because the composition of the drug or colour or get-up would not arise where both marks are identical or deceptively similar; (4) the word "SPASMO" is not a generic word or descriptive word and in fact it is part of the registered trade mark; (5) the doctor's prescription since lost its importance, both schedule and non-schedule drugs are now sold without any such prescription and no weight age can be given to the contention that since the goods are sold under doctor's prescription, no confusion would arise; (6) the prescription written by doctors are often not decipherable and when they are rendered in running hand, the rival marks would bear sufficient similarity as to be likely to cause confusion or deception; (7) there is a tendency among the medical practitioners to write the termination or suffix of the drug prescribed by them with a flourish so that the first portion or prefix of the drug prescribed is legible while the latter part is not so; and (8) the basic dictum is that the mark as a whole has to be looked at and not its parts.
11. The learned senior counsel Mr. P. Chidambaram appearing for the respondent contended that, (1) the offending mark is not deceptively similar to the appellant's mark; (2) the word "SPASMO" is a generic word and it has no inherent distinctiveness, it being a common English word found in the dictionary over which none can claim monopoly and the word has become pub lid juris; (3) There is no evidence for actual confusion and there is no visual resemblance between the two marks; (4) The said medicines since sold on doctor's prescription, there can be little likelihood of confusion; (5) The two drugs visually and phonetically being different in colour and container, it will not cause confusion in the mind of the public; (6) There are ever so many products having common name, though close phonetically, have been carrying on business and the appellant has selected only the respondent's though there is no affinity of sound and resemblance with the trade name of the defendant, and (7) the scope of the appellate court being limited to interfere with discretionary orders of interlocutory nature, even if two views are possible on the material placed before the trial court, a different view may not justify interference with the trial court's exercise of discretion
12. The point for consideration in these appeals is whether the offending mark is identical or deceptively similar to the appellant's trade mark?
13. To decide the above question, we have to incidentally deal with certain aspects such as, (1) the exclusive statutory right of a registered proprietor of the trade mark; (2) whether the word "SPASMO" is descriptive word or a generic word? (3) Whether phonetically and structurally, on the basis of colour and physical appearance, there is any deception, and (4) The importance or otherwise of the doctor's prescription. These aspects have already been considered by the Apex Court and various High Courts, including this Court and a criteria has been laid down as to how these aspects have to be looked into. In addition to these aspects, the scope of the appellate Court while dealing with the discretionary orders of interlocutory nature.
14. Under Section 2(j), "mark" includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. Under Section 2(r), "registered trade mark" means a trade mark which is actually on the register. The Register referred to in Section 6 shall be divided into two parts called respectively Part A and Part B. The appellant's mark is registered under 'A' Category. A trade mark shall not be registered in Part A of the Register unless it contains or consists of atleast one of the essential particulars mentioned in Sub-Clause (a) to (e) of Section 9(1). Section 11(a) prohibits registration of certain marks, the use of which would be likely to deceive or cause confusion. Section 12 prohibits registration of identical or deceptively similar trade marks which is already registered in the name of different proprietor in respect of the same goods or description of goods. 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 as defined under Section 2(d). Section 28(2) gives to the registered proprietor of the trade mark the exclusive right to the use of the trade mark the exclusive right to the use of the trade mark in relation to the goods 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 the Act. Section 31(1) inter alia provides that the registration of the trade mark shall be prima facie evidence of the validity thereof. Section 29 of the Act prohibits infringement of trade mark right in course of trade. A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark, which is identical with, or deceptively similar to the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. Under Sub-section (2) of Section 29, in an action for infringement of a trade mark, an injunction or other relief shall not be granted, if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complains is not likely to deceive or cause confusion.
15. In American Home Products Corporation v. Mac. Laboratories Pvt. Limited at para 36, it has been held that "the registration of a trade mark is prima facie evidence of its validity. After the expiry of seven years from the date of the registration, a trade mark is to be valid in all respects except in the three cases set out in Section 32. The proprietor of an unregistered trade mark whose mark is unauthorisedly used by another cannot, however, sue for the infringement of such trade mark. His only remedy lies in bringing a passing-off action, an inconvenient remedy as compared to an infringement action. In a passing-off action, the plaintiff will have to prove that his mark has by user acquired such reputation as to become distinctive of the plaintiff's goods so that if it is used in relation to any goods of the kind dealt with by the plaintiff, it will be understood by the trade and public as meaning that the goods are the plaintiff's goods. In an infringement action, the plaintiff is not required to prove the reputation of his mark.
16. Since the basis of the infringement action is on the ground of likelihood of deception, it is appropriate to refer the test as to what constitutes deception. In Ruston & Honby Limited v. Z. Engineering Company , it was held that, "the action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34, and 35 of the Act. On the other hand, the gist of a passing-off action is that A is not entitled to represent his goods as the goods of B, but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. In equity, however, Lord Cotteonham, L.C. in Millington v. Fox (1838)3 My. & Cr. 338, held that it was immaterial whether the defendant had been fradulent or not, in using the plaintiff's trade mark and granted an injunction accordingly.... At para 7, it was held thus:
The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Limited v. June Perfect Limited (1941) 58 R.P.C. 147 at page 161:
The statute Law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing-off. But it differs from that law in two particulars, namely, (1) it is concerned only with one method of passing-off, namely, the use of a trade-mark, and (2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringment the courts have held, and, it is now expressly provided by the Trade Marks Act, 1938, Section 4, that "infringemnet takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark, the court will not inquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing-off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing-off actions.
17. The learned Counsel for the respondent contended that the word "SPASMO" is an ordinary dictionary word in which no one has any right. The word "SPASM" as per the Grolier International Dictionary-Vol. II, means "A sudden, involuntary contraction of a muscle or group of muscles". The word "FLEX" as per the Concise Oxford Dictionary of Current English, Eighth Edition,, means "bend (a joint, limb etc.) or be bent, move (a muscle) or (of a muscle) be moved to bend a joint". In substance, both relates to muscular pain or a joint pain. It is proper to name a product on an organ or ailment or two or three ingredients combined together or otherwise the words is nonsensical. If the argument of the respondent is accepted, it boils to that no word of general import can be used as a trade mark. After seven years, a presumption arises regarding the validity. As per Stedman's Medical Dictionary, 24th Edition, SPASM (spasm) (G. Spasmos SPA) Spasmus. 1. An involuntary muscular contraction; if painful, usually referred to as a cramp; if violent, a convulsion. 2. Muscle s.; increased muscular tension and shortness which cannot be released voluntarily and which prevent lengthening of the muslces involved; s. is due to pain stimuli to the lower motor neuron. In the Concise Oxford Dictionary of Current English, 8th Edition, Spasm means 1. a sudden involuntary muscular contraction. 2. a sudden convulsive movement or emotion etc. (a spasm of coughing). 3. (usu. foll, by of) colloq. a brief spell of an activity. (ME f. OF spasm or L. Spasmus f. GK. Spasmos, spasma). Spasm has different shades of meaning in the Chambers 20th Century Dictionary: Spasmo, spasma, spasmos, k spasmodes are adjectives, meaning convulsion. In the Webster's Third New International Dictionary, spasmo is an involuntary abnormal contraction of muscle or muscle fibers or of a hollow organ. Spasmodism, Spasmodist, Spasmogenic, Spasmolsis, Spasmoltic, Spasmophilia, Spasmophilic, relate to spasmodic emotion, inducing spasm, relaxation of muscle spasm, contraction of filament etc. "Flex" is also, according to Webster's Third New International Dictionary, to move muscle so as to cause flexion of a joint, to bend so as to form a fold or clasp, an act or instance of flexing. In Chambers 20th Century Dictionary, the meaning of "flex is to bend. The action of a flexor muscle. Flexion - a bend; a foldl the action of a flexor muscle. The Concise oxford Dictionary of Current English, 8th Edition: "Flex" means a joint; limb etc. move (a muscle) or (of a muscle) be moved to bend a joint. Flexion - the act of bending or the condition of being bent esp. of a limb or joint. According to The Grolier International Dictionary, Vol.1, "Flexion" means, the act of bending, the condition of being bent (variant of flection). "SPASMO PROXYVON" contains Dicyclomine hcl. and dextropropoxyphene. "FLEXON" contains Ibuprofen and Paracetamol. Though basically, FLEXONH is a medicine to treat a muscle contraction, that acts to flex a joint, aiding spasmo. According to Dr. S.M. Bandukwala, "SPASMO FLEXON" contains Dicyclomine Hydrocholoride and Paracetamol, whereas, "SPASMO PROXYVON" contains Dicyclomine Hyderochloride, Paracetamol and Dextropropoxyphene. As evident, "SPASMO PROXYVON" contains an additional ingredient named Dextropropoxyphene. Dextropropoxyphene is a very powerful centrally acting pain killer. It is reserved for managing severe painful conditions only. It is also important to note that "SPASMO PROXYVON" is advocated for shorter periods only to avoid risk of dependence and other unpleasant side effects." The products are basically the same and are used for the same basic ailment. The only difference is the efficacy of the appellant's product requiring more judicious use as compared to the respondent's product where an overdose may not have same consequences.
18. It is not in dispute that the goods with the mark "SPASMO PROXYVON" are sold throughout the length and breadth of the country and the mark had acquired reputation. The appellant being one of the leading manufacturers of the pharmaceutical preparations, invented and adopted the trade mark "SPASMO-PROXYVON" in respect of treatment of certain ailments pertaining to spasms, whereas, the respondent used the mark only from the year 1997. Turning to the two marks, it is obvious that the beginning and ending of the two marks is similar and indeed except for the letters ' PROXY' and 'FLEX', the two marks are identical. On the first impression, it is obvious that there is every likelihood of deception or confusion by the user of the mark of the respondent. It is now well settled that the court while considering likelihood of deception or confusion, must make allowance for imperfect recollection and the effect of careless pronounciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. It is not permissible to make a meticulous comparison of the words, letter by letter and syllable by syllable and the two marks must be taken as a whole to ascertain whether there is a likelihood of deception or confusion. The principle that the marks must be compared as a whole, is well settled and it is incumbent upon the court to consider whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the mind of the person accustomed to the existing trade mark.
19. As laid down by the Supreme Court in P. Hoffman-La Roche & Co. Limited v. Geoffrey Manners & Co. A.I.R. 1970 S.C. 2064, the marks must be compared as a whole and it would not be right to take portion of the word and say that because the portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. The true test is whether a totality in a proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade marks. The deception or confusion in such cases would be of the public and not of an expert Doctor or a specialised Chemist dealing in the medicinal preparations. One cannot ignore the fact that when a mark likely to deceive or cause confusion is to be used by a person, he will strive to find those who joined him in his design and an obliging Doctor and a conniving Chemist will be the integral part of the design to practice deception and cause confusion. The unwary purchaser, that is material for the purpose of deciding whether the mark should be registered or not in view of the provisions of Section 11 (a) of the Act.
20. In Parle Products (P) Ltd. v. J.P. & Co. Mysore , the Apex Court took the view that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
21. This Court in P.L. Anwar Basha v. M. Natarajan , held thus:
I may at once point out that this kind of comparison is what is precisely prohibited in Park Products (P) Limited v. J.P. and Co. (1973)2 S.C.J. 17, where their Lordships of the Supreme Court have observed: "It is therefore clear that in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so whether they are of such a character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.
22. In Gopal Hosiery v. Deputy Registrar of Trade Marks , it was held that the question whether a trade mark resembles another or not or it is likely to deceive or cause confusion to the public is a question of fact to be decided at a later stage. But before coming to such a conclusion, the court has to take into consideration the surrounding circumstances, both phonetic and visual resemblances, nature of the goods and all other relevant matters based on certain particulars. It is true that the primary duty of the court is towards the public and to maintain the purity of the Register. The object of maintaining the trade mark register is that public should know whose goods they are buying and with whom particular goods are associated. It is essential therefore, that the Register should not contain trade marks which are identical and which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry. The court has to decide that itself, quite apart from the evidence of cases of actual confusion or the opinions of experts as to the likelihood of confusion, as to the inherent probability of the confusion. In making a decision on this question, the Court has to take into consideration all the surrounding circumstances, the extent of one resemblance, visual or phonetic, the nature of the market of the goods, the character education, the general mental equipment of the persons who are likely to purchase these goods and all other matters which are relevant.
23. In Mother Care U.K. Ltd., v. Penguin Books Limited 1998 R.P.C. 113, the words "Mother Care"/"Other Care" came up for consideration. The words "Mother Care" in the title of the book were not used as a trade mark or in a trade mark sense; they were being used descriptively with the words "Other Care" what the book was about. There was no serious issue to be tried on infringement. The name "Mothercare" is made up of two common words in the English Language, "mother" and "care". The name is not used in a strictly descriptive sense as describing the business of the company, but it has a descriptive flavour in that it creates at once in the mind of the reader or hearer an impression of the sort of things that the business of Mothercare is about. Descriptive or not, however, there is no doubt, that as a result of the success of Mothercase, its name is now a household name and it has established ample goodwill in the name to support a passing-off action, if for instance, some third party were to seek to trade on the name of Mothercare within the field of Mothercare's established activities. Mothercare has also registered the word "Mothercare" as a trademark in very many classes which cover the goods in which it deals, including books. The present action is founded on alleged passing-off and alleged infringement of trade mark by the use of the words "Mother Care Other Care". It stands to reason that a Trade Marks Act would only be concerned to restrict the use of a mark as a trade mark or in a trade mark sense, and should be construed accordingly. If descriptive words are legitimately registered in Part A of the Register, there is still no reason why other people should not be free to use the words in a descriptive sense and not in any trade mark sense. Therefore, if a descriptive word is used, in the sense, for spasmodic treatment, etc. it may not be in a trade mark sense and he can use that word in a descriptive sense, but not as a product name in a trade mark sense. In other words, cause, effect, ingredients may be used to denote purpose, but the very word registered should not be used without in a descriptive sense.
24. In the matter of an Application by J. & P. Coats Limited for Registration of a Trade Mark 1936 R.P.C. 355, it was held that any bona fide description of the character or quality of his goods does not amount to infringement nor interference with the registration of a trade mark. The descriptive name may be distinctive and vice versa. But the question whether a word is or is not capable of becoming distinctive of the goods of a particular maker is a question of fact, and is not determined by its being or not being descriptive. No registration under this Act shall interfere with... 'the use by any person of any bona fide description of the character or quality of his goods'; clearly indicating that a registered trade mark may have as its essential part words capable of being used descriptively. Having thus established that the words having a direct reference to the character and quality of the goods, the registry is not entitled to record any particular word as unsuitable for registration by reason of the fact that it is outside any of the classes enumerated in paragraphs (1) to (4) of Section 9. When once the words is registered by user as a mark, the word has in fact become identified with the goods by continuous user in connection therewith and has obtained an acquired distinctiveness. It was held that, "further, I am of opinion that, if the word "Sheen" is registered as a trade mark, such registration will not prevent any rival trader from using the word in reference to the particular attribute of glossiness possessed by his own machine twist, so long as he refrains from any attempt to use it as distinctive of his goods; for example, such a trader would be protected under Section 44, if he stated that his machine twist possessed a fine "Sheen", for in that case the word would not be used in any sense as a trade description."
25. In Amritdhara Pharmacy v. Satya Deo , the Apex Court has taken the view that the overall similarity of the two composite words to be taken to decide whether there is likelihood of deception or confusion. It has to be approached from the point of view of an unwary purchaser of average intelligence and imperfect recollection. The learned Judge supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as 'current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Lakshman'. 'Current of Lakshman' in a literal sense has no meaning; to give it meaning, one must further make the inference that the 'current of stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian Villager or townsman will perhaps know Lakshman the story of Ramayana being familiar to him; but we doubt if he would etymologise to the extent of seeing the So-called ideological difference between 'Amritdhara' and 'Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medical preparation which he wants for his ailments'. It was further held in paras 9, 10 and 11 thus:
We agree that the use of the word 'dhara' which literally means 'current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarly of the composite words, having regard to the circumstances that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, "fools or idiots" may be deceived. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a| somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing -the whole word has to be considered. In the case of the application to register 'Erectics' (opposed by the proprietors of the trade mark 'Erector'), Farwell, J. said in William Bailey (Birmingham) Ltd. 's Application (1935)52 R.P.C. 136.
I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole... I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.
26. In Ciba-Geigy Limited v. Grasslands Research Laboratories Limited, 1995 P.T.C. 251 following the earlier decisions, this Court held that Court need not scan word as it would in a question comparation literaturm.
27. In Durga Dutt Sharma v. N.P. Laboratories , the Apex Court held that trade mark to be compared with that used by the appellant is the entire registered mark, in the sense, "SPASMO-PROXYVON", but not the one omitting "SPASMO".
28. In Jagan Nath v. B.D. Karyalaya A.I.R 1975 Del. 149. at para 7, it was held thus:
This being the law, it cannot be disputed that in an action for infringement the plaintiff can succeed not only when he proves that the whole of his registered trade mark has been copied but can also succeed if he shows that the defendant's mark is similar to the plaintiff's mark as it would be remembered by persons possessed of an average memory with its usual imperfections or that its essential particulars or the distinguishing or essential feature has been copied.
29. In G.T.C. Industries Limited, Bombay v. I.T.C. Limited, Madras , referring to Parle Products v. J.P.& Co. Mysore ,A. Shanmugha Mudaliar v. A. Abdul Kareem and Hiralal Parbhudas v. Ganesh Trading Co. , held that, "in order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered and that it would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him and that it is of no use to note on how many points there is similarity and in how many others there is absence of it.
30. In Ciba-Geigy Limited v. Torrent Laboratories Pvt. Limited and Anr. (1993)1 A.L.R. 18 the Gujarat High Court took to view that "It cannot be said that in order to cause confusion or deception, the impugned mark should contain the registered mark as a prefix or suffix. It is sufficient if it forms an emphatic part of the impugned mark."
31. Until the removal of the trade mark from the register, there is presumption about the validity of the trade mark under Section 31(1) of the Act. Deception can be caused even without the word as prefix or suffix. Whereas it is used as a prefix, it is evident that the said common element, namely, the word "SPASMO" would be more firmly fixed in the mind of the customer, and more emphatic and highly distinctive because the preceding letters 'P' and 'F' at times sounds phonetically nearer, and with the last two letters' ON' being prominently common bears the marks of similarity and there is every likelihood of causing confusion or deception. When a number of marks all have a common element, may it be prefix, suffix or root, i.e., essential part of the core of the mark, they come to be associated in the public mind as indication of the same source, as "SPASMO". It is that which mislead or causes deception or confusion. Though first syllable may be important in deciding phonetic similarity, it is not always the rule that when first syllable differs, there should be presumption that there is no similarity. The common element has to be identified in the impugned mark and the registered trade mark and if such common element is highly distinctive and is not just a description or a commonly used word, the likelihood of deception or confusion would be very much there, despite the fact that it may differ in similarity in certain letters.
32. Every word can be a trade mark. It may be a word of place, person, animal, organ, object and it depends upon one s meaning and sentiment. The contention that for ordinary dictionary words, no one has exclusive right, is untenable. The word 'SPASMO' refers to a muscle or muscle fibers or of a hollow organ or a contraction of muscle etc. SPASMINDON, SPASMODIC, SPASMODISM, SPASMODIST, though may relate to several characteristics, but, SPASMO, as such, has distinctiveness phonetically. Phonetically, visually and structurally with the word "SPASMO" as prefix common in both, there is every likelihood of deception or confusion. Taking the two marks as a whole, there was very close similarity and there is every likelihood of deception or confusion irrespective of the produce being sold on doctor's prescription.
33. The learned senior counsel Mr. P. Chidambaram appearing for the respondent submitted that the chances of deception or confusion are negligible as the preparations of both are sold only on medical prescription. Sale of drugs on medical prescription is merely one of the circumstances to determine whether there is likelihood of confusion or deception and can by no stretch of imagination be conclusive. The explanation is that the doctors in running hand write the prefix and so long the similarity is there, there is every likelihood of confusion. The prefix being the same, the first letter of the drugs 'P' and 'F' though not phonetically too dissimilar, and the ending letters 'ON' in both the drugs, may lead to confusion even in Doctor's prescription while writing. The word 'SPASMO' being the same, phonetically and identically bears a close resemblance that one can easily be mistaken for the other. The word "SPASMO" occupies a prominent place at the top with a good deal of similarity between the two. Any one who has a look at one of the packets, may easily mistake the other if shown on another day as being the same article treating the same disease. If one was not careful enough to note the peculiar features regarding the ingredients, he might easily mistake the defendant's product for the plaintiff's, if shown to him some time after he had seen the plaintiff's. After all, an ordinary purchaser is not gifted with the powers of observation of a Sherlock Holmes. The design of the capsule and the tablet though not identical, but the word "SPASMO" gives an impression that it resembles the plaintiff's mark and treats the same ailment, hence, can be easily mistaken for the other. In a trade mark, it is not the product or the design to be looked into, but the mark, as such, "SPASMO" will impress with similarity, that too, when it is for the same ailment.
34. The learned senior counsel Mr. P. Chidamabaram invited our attention to the Indian Drug Review, Jan./Feb. 1998 Edn. At page 237, there are several drugs coined with the word "SPASMO", viz., SPASMJZOL, SPASMOCIN, SPASMOCIN-FORTE, SPASMO-PROSYVON, SPASMODOL FORTE, SPASMOLAR. It is his case that the word "SPASMO" is a common generic name. The onus of proof of a common use is on the person who wants to rely on it. He has to prove positively, because a negative thing cannot be proved. Whoever may have used the word "SPASMO", there is no material to show that such person had actually manufactured and put the product to the market or even if it is put to the market, he may be a small trader, hence, chasing may not be necessary. Just because such words are there in other medicines, it does not mean that action is a must and inaction disentitled him to take action, when infringed.
35. The contention of the respondent is that the word "SPASMO" is a generic word descriptive of the usage in the product and it has no inherent distinctiveness and it being a common English word found in the Dictionary, for treatment of muscular pains, over which none can claim monopoly and the word has become publici juris. Whether it is descriptive or has become publici juris is a question of fact to be established. When once it is registered, after a lapse of seven years, it acquires the validity and it becomes a distinctive mark, but the grievance is that the word is distinctive with his product. If it is a descriptive word, it will never intend to oust the trade name of the appellant. He should have described it as "SPASMODIC" meant for pain killing or relief from pain. Instead of so describing, he used the word being a manufacturer of the petitioner product, both based in Bombay itself, having knowledge, using the same word "SPASMO", prefixing it to the product FLEXON, when it is meant for treatment of same ailment, there is every possibility of deception. (C.S.No. 204 of 1998).
36. At this stage, whether the appellant has no exclusive right to use the word "SPASMO" which according to the respondent has become publici juris, is a matter to be established as a question of fact. The reasoning of the learned Judge on this point virtually putting a seal on a question of fact to be decided during trial, ultimately, in effect is dismissal of a suit before trial. This itself is a wrong approach.
37. In Ciba-Geigy Limited v. Grasslands Research Laboratories Limited (1996) 16 P.T.C. 1 at paras 42 and 43, it was held thus:
We have to remember what learned Halsbery L.C. had said in Reddaway v. Banham, 1896 A. C. 199, "What in each case or in each trade will produce the effect intended to be prohibited is a matter of which must depend upon the circumstances of each trade and the peculiarities of each case. It will be very rash a priori to say how far thing might or might not be described without being familiar with the technology of a trade. In the mark relating to the sale of medicinal preparations, the distributors have a vital role to play. The manufacturers depend on the wholesale distributors and the retail medical shops. There are lakhs of primary health centres all over India and wherever there are primary health centres, there are medical shops and invariably in the medical shops a man is in charge, who is not very much qualified except that he undergoes a certificate course knowing about the names of medicines. The wholesale distributors in their turn depend upon medical representatives. These representatives are not qualified in medicines but they take instructions from the manufacturing company and the wholesale distributors to inform the doctors and the medical shops.
The medical representatives of established manufacturers visits the doctors and the medical shops on regular intervals, but the manufacturers who have entered the field afresh make visits to the doctors and medical shops very frequently to improve their sales. The doctors in the primary health centres act on the representations made by the medical representatives and they often go by the words of the medical shops in their locality. The doctors in the towns and the Metropolitan Cities are very busy and they depend upon the junior doctors for writing the prescription and we have come across cases where doctors giving wrong prescriptions without knowing the exact composition of the medicines and the manufacturers of the medicines.
38. The medical shop man also does not know the difference and he may unknowingly say both drugs are same. That is where confusion would arise. Therefore, the argument that scheduled drugs are sold only on prescription and hence, there is no scope for any confusion, cannot at all be considered.
39. The learned single Judge at para 20 of the judgment held that the drugs manufactured by, the appellant and respondent are scheduled drugs and they cannot be and should not be sold without the prescription from a qualified doctor, who would definitely understand and differentiate the appellant's drug "SPASMO-PROXYVON" and the respondent's drug "SPASMO-FLEXON". In fact, the public are not entitled to purchase these drugs without prescription, as such, it would not at all cause confusion in the mind of unwary public.
40. We have to bear in mind the circumstances prevailing in our country where 60% of the people are illiterates. Although certain medicines can be sold on doctor's prescription only, nevertheless, pharmacies sell the said products without insisting on Doctor's prescription. Further, when the Chemists would have to decipher the prescription, there is every likelihood of mistaking one product for the other. In Ciba-Geigy Limited and Anr. v. Grasslands Research Laboratories Limited 1995 P. T. C. 251. at para 20, it was held thus:
In Ranbaxy Laboratories Limited v. Dua Pharmaceuticals Pvt. Limited . the dispute was between the users of two trade marks "CALMPOSE" and "CALMPROSE". It was contended there that the said medicines can only be sold on the Doctor's prescription and, therefore, there can be little likelihood of confusion. Held-
It is true that the said drugs are supposed to be sold on Doctor's prescription, but it is not known that the same are also available across the counters in the shops of various chemists. It is also not unknown that the chemists who may not have "CALMPOSE" may pass-off the medicine "CALMPROSE" to an unwary purchaser as the medicine prepared by the plaintiff. The test to be adopted is not the knowledge of the Doctor, who is giving the prescription. The test to be adopted is whether the unwary customer who goes to purchase the medicine can make a mistake.
41. In Astra-idl Limited v. T.T.K. Pharma Limited the question arose whether the word "BETALOC" was deceptively similar to the word "BETALONG". BETALOC is used in connection with pharmaceutical preparations. A single Judge of the Bombay High Court has held following the Ranbaxy Laboratories Limited's case A.I.R. 1989 Del. 44. cited supra, that-
In the present circumstances, Doctor's prescription factor has lost its importance since the reality of the situation cannot be ignored. In India, scheduled drugs which are to be sold under Doctor's prescription are even sold without production of Doctor's prescriptions and as such reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The court cannot close its eyes to the existing circumstances and judicial notice of the factual aspects in existence has to be taken. In case where the fact of the medicines being sold on Doctor's prescription has been taken into consideration for deciding whether there was no likelihood of confusion being created, the marks were not visually, phonetically and structurally similar. In the instant case, the two marks 'Betaloc' and 'Betalong' being visually, phonetically and structurally similar and so close to each other than it outweighs the weightage to be given to the factors that the goods are scheduled drags. The two marks are to be compared as a while and the prefix ' Beta' cannot be ignored in the matter of such comparison.
Therefore, there is no merit in the reasoning of the learned single Judge.
42. The learned senior counsel for the respondent Mr. P. Chidambaram contended that there is no evidence for actual confusion and there is no visual resemblance between the two marks. These two contentions can be answered relying on the judgment of the Supreme Court in K. Krishna Chettiar v. Ambal & Co. , which reads thus:
There is no evidence of actual confusion, but that might be due to the fact that the appellant's trade is not of longstanding. There is no visual resemblance between the two marks, but ocular comparison is not always the decisive test. The resemblance between the two marks must be considered with reference to the ear as well as the eye. There is a close affinity of sound between Ambal and Andal.
43. The learned Judge at para 21 has held that of these two drugs, one is white colour tablet and the other is blue colour capsule. Therefore, if at all die general public to purchase the drags, would go mainly by the colour and not by the name, of course with exceptions and this being an important factor, it will not cause confusion in the minds of illiterate public. The test is not the resemblance being different, it is not dissimilarity in the product but in the mark, comparison is of the trade mark, not that one is capsule and other is tablet that has put the Judge from the point of an unwary public and if a pharmacist or a chemist says that this is for the same ailment but in different form, there is no reason why the public should disbelieve him, and they may opt irrespective of the colour and nature one for the other.
44. Changes in structure cannot be relevant since change will be seen post-purchase and consumers may believe that such minor changes are made by the manufacturers themselves. Therefore, the finding of the learned Judge that they are structurally different and will not lead to confusion, is unsustainable.
45. On this aspect, the learned senior counsel relied on a judgment in Durga Dutt Sharma v. N.P. Laboratories , wherein it was held that when the two 'marks are not identical, the identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the court led before it as regards the usage of trade. Kerly on Trade Marks 8th Edn. 407 reads: "Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as whole and not to disregard the parts which are common'. The fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his good for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial, because the purpose of comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. In the ultimate analysis, whether the mark used by the respondent as a whole is deceptively similar to that of the registered mark is the question, not the product. Therefore, the reasoning is erroneous.
46. The learned senior counsel, Mr. P. Chidambaram for the respondent contended that there are ever so many products having common name though close phonetically have been carrying on business. This argument does not deserve any consideration because an imitation acquires no legitimacy on the principle that a wrong is not righted by the many following wrongs. Infringement of trade mark by a trader cannot be justified on the ground that there are others like him who are doing the same. Imitators of trade marks have the sole object of diverting the business of others and such tendency must be curbed in the interest of the trade and from the point of view of consumers. Since the first word being common and the ailment to which it is required also being common, even a literate purchaser can be taken in by the offending trade mark and can be led to believe that he is buying the product of the appellant, when actually he would be purchasing the product of the respondent. It is a fact that a large number of people in our country are illiterate who can be victims of imitation. Though one may be a capsule and another may be a tablet, but still the main ingredient, disease to be treated, with the first word being common, proximity and affinity of sound and resemblance with the trade name of the appellant, in these circumstances, it cannot be said that there is no similarity. In that sense, there is every possibility to confuse persons of the class who generally purchase such drugs (The Tata Iron & Steel Co. Ltd., v. Mahavir Steels and Ors. (Cases & material on Trade Marks (Vol.1) Page 548).
47. While considering the relief for injunction and action against passing-off, what has to be seen is whether the plaintiff has acquired a reputation and good will in the mark which he is using in trading his goods uninterruptedly and somebody else is attempting to pass-off his goods under that trade mark. Not granting a relief amounts to allowing the respondent to make use of the reputation and good will of the appellant by adopting his trade mark or deceptively similar trade mark for his product. Since the product of the respondent is of recent origin, namely, introduced only in October 1997, whereas, the appellant's mark was there for a long time, i.e., from 4.8.1977, at the intermediary stage having regard to the continuous usage which indicates prima facie case, withholding an injunction will cause irreparable injury, leading to multiplicity of litigation between the parties, and, therefore, the balance of convenience is also in favour of the appellant. The test being common for the injunction and passing off action, we are of the opinion that withholding the relief will do greater mischief or create an irreparable injury than granting it. (Coolways India v. Princo A.C. & Refrigeration (1993)1 Arb. L.R. 401).
48. To judge deception, similarity must be of such a nature capable of causing a deceit or confusion in the mind of purchaser with ordinary intelligence. Section 2(d) defines "deceptively similar", in the sense, looking to the natural meaning of the words, first the offending mark must "so nearly resemble" the registered mark as to be "likely" to deceive or cause confusion. It is not necessary that it should be intended to deceive or cause confusion. One need not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which has to considered. "To deceive" is one thing and "to cause confusion" is another. This has to be judged not from the point of view of a person who has the ability to distinguish one from the other, but from the point of view of a common man. While deciding the question of "likely to deceive" or "cause confusion", the intention in conceiving such a mark is not relevant, atleast at an interim stage. Where if promoted or allowed to happen in conceiving and adopting the mark, the respondent stands to gain any pecuniary or monetary benefit is also a matter to be taken into consideration. Having knowledge that the use of the word "SPASMO" since long time, prior to the introduction of the new product by the respondent, with the word "SPASMO", smacks of an intention at this stage, indicating likelihood of deception or confusion, which itself is sufficient to entitle the appellant for an order of injunction. At this stage, since both conveyed the same idea, this by itself though not conclusive is a relevant factor to be taken into consideration to consider the prayer for injunction. In the instant case, the first word "SPASMO" being common, the last two letters "ON" in both the marks being common and there will not be much phonetic dissimilarity in pronouncing the word 'P' and 'F', there is every possibility for confusion from the point of view of an ordinary consumer. (G.D. Searle & Co. and Anr. v. Diggraphs Pharmaceuticals Pvt. Ltd. and Anr., Anuja's Intellectual Property Cases vol. 3).
49. The learned senior counsel Mr. P. Chidambaram, inviting our attention to a judgment of this Court in Indo-Pharma Pharmaceutical Works Ltd. Mumbai v. Citadel Fine Pharmaceuticals Limited, Madras 1998 M.L.J. 214 contended that the scope of the appellate court is limited to interfere with discretionary orders of interlocutory nature, that too, when the suit is pending. Even if two views are possible on the material placed before the trial court, the different view may not justify interference with the trial court's exercise of discretion, just because another view is reasonably possible on such material. It is settled in law that in a catena of decisions demarcating the exercise of appellate powers, on discretionary interlocutory orders a note of caution always suggests when and how interference could be caused with the exercise of discretion of the court of first instance and substitutes its own discretion. That could be done if the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. Of course, the appellate court to some degree has to re-assess the material if the assessment is capricious. It has to reach a conclusion different from the one reached by the court below if the conclusion is reasonably, prudently not possible on material. But, if the view expressed by the trial court is reasonably probable in the normal circumstances, in such a situation, the appellate court should be very slow to dislodge the view of the trial court to reach a contrary conclusion. In Printers (Mysore) Private Limited v. Pothan Joseph , which was noticed by the Apex Court in Wander Limited and another v. Antox India Limited (1991)11 P.T.C. Vol.1, it was held thus:
...These principles are well established, but as has been observed by Viscount Simon in Charles Osention & Co. v. Johnston, the law as to the reversal by a court of appeal of an order made by a Judge below in the exercise of his discretion is well established, and any difficulty that arises is due only to the application of well settled principles in an individual case....
If the reasonings of the learned Judge are opposed to the settled principles of law governing particular issue, such instance will be an eminently fit case to take a contrary view and to hold that the discretion is not exercised judiciously.
50. In Registrar, Trade Marks v. Ashok Chandra Rakhit Limited , the Apex Court held thus:
The last feature of the section is its proviso. That proviso preserves intact any right which the proprietor may otherwise under any other law have in relation to the mark or any part thereof. The disclaimer is only for the purposes of the Act. It does not affect the rights of the proprietor except such as arise out of registration. That is to say, the special advantages which the Act gives to the proprietor by reason of the registration of his trade mark do not extend to the parts or matters which he disclaims. In short, the disclaimed parts or matters are not within the protection of the statute.
That circumstances, however, does not mean that the proprietor's rights, if any, with respect to those parts or matters would not be protected otherwise than under the Act. If the proprietor has acquired any right by long user of those parts or matters in connection with goods manufactured or sold by him or otherwise in relation to his trade, he may, on proof of the necessary facts, prevent an infringement of his right by a passing-off action or a prosecution under the Indian Penal Code. Disclaimer does not affect those rights in any way.
Where the learned Judge has not adverted to an important consideration, namely, the strong possibility of the appellant claiming a statutory right to the word "SPASMO" by virtue of the registration, it amounts to not exercising the discretion properly. It is not the colour of the container or the difference in product, but it is the statutory right to the word, that has to weigh.
51. In Indo-Pharma Pharmaceutical Works Ltd. Mumbai v. Citadel Find Pharmaceuticals Limited, Madras (1998)1 M.L.J. 214, this Court took the view that the word was descriptive. In the instant case, it is the contention that it is distinctive. The court found in that case that phonetically the word "JEX" and' JASE' are totally dissimilar, which is not the case in the instant case. Therefore, that case has no application to the case on hand.
52. In Ruston & Hornby Ltd. v. Z. Engineering Co. , the Apex Court held that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive. In Roche & Co v. G. Manners & Co. , the Apex Court held that letters 'D' and 'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronounciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view. In Mount Mettur Pharmaceuticals (P) Ltd. v. Dr. A. Wander A.I.R. 1977 Mad. 105, this Court took the view that, "ASTHMIX" and "ASMAC" are not similar in sound and hence are not likely to confuse any person or any normal buyer or even an unwary purchaser. In Mount Mettur Parmaceuticals Limited v. Ortha Pharmaceuticals Corporation , this Court took the view that in a contest between medicinal preparations 'UTOGYNOL' and 'ORTHO-GYNOL" already registered, no confusion or deception likely to be caused and further observed that it is difficult to imagine that illiterate Indian women would have the ability to pronounce these startlingly un-Indian words, rather they would rely on their Doctor's prescriptions than purchase such medicines on their own. On that reasoning, they said that there is no likelihood of confusion. In S.B.L. Limited v. Himalaya Drug Co. 1997 P.T.C. 17 (D.B.), the High Court of Delhi held that uncommon features viz., 52 and 'T' do not have such phonetic similarity as to make it objectionable. But, in that decision, it was also held that the decision on the question of likelihood of deception is a question of fact to be established during trial and whether such feature is publici juris or generic is also a question of fact to be decided. In Griffon Laboratories (P) Ltd v. Indian National Drug Co. P. Ltd, (Suit No. 399 of 1985), the Calcutta High Court held that the word "SORBITONE" does not infringe or constitute infringement of the trade mark "SORBILINE" The medicine is prescribed by doctors and prescriptions are served by chemists and druggists who are registered pharmacists. The public does not enter the picture at all in the selection of the product. In that case, it was 'held, "Merely because there is phonetic similarity, that phonetic similarity cannot be held to be a circumstance to hold that it is deceptively similar to the trade mark of the petitioner". But we decline with respect, to subscribe our view in the line of that reasoning. In Ciba Geigy Limited v. Sun Pharmaceutical Industries, Cases and Materials on Trade Marks, Vol.1. 257), the judgment was based on the reasoning that an ordinary lay-man when he would be purchasing medicine of such a nature, he would be on his guard and quite cautions and would not allow himself to be satisfied with a different medicinal preparation. Similarly, under the Rules, a duty is cast on the dealers and they cannot consistently with that duty pass-on any other preparation instead of the one prescribed by Doctor. By doing so, they would be committing breach of the provisions of the Rules as also conditions of licence. On that grounds, it was held that there was no likelihood of deception or confusion. We respectfully disagree with this view and add that the question to be approached from a unwary public and from the circumstances and also from the point that in the event of handwriting of a Doctor being very bad or illegible, the chemists or druggists or pharmacists, in a craze to clear the commodity because it treats the same ailment, in such a situation, where there will be likelihood of deception or confusion, coupled with anxiety of the dealer, likelihood of causing confusion on the consumer. This case has also no application to the case on hand.
53. In Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Limited, (Appeal No. 185 of 1979), (1984)1 P.L.R. 26, the salient feature is the distinctiveness of 'COM' and 'CIP' and not the words following them. In that context, the court observed that visually and phonetically, there is no tangible danger of "confusion in the minds of the public which will lead to confusion in the goods", which is not the same in the instant case. Therefore, the decisions cited by the learned Counsel for the respondent have no bearing on the facts and circumstances of this case.
54. Infringement is optional. Suppose if he is a small user, the registered owner may not bother, because it is not worthwhile to chase the in fringer. Even when registered, but the product not used, then also, he need not chase. Where the user is a big user, there the protection becomes necessary or where the user may be in such a place where the registered owner has not marketed his product, then also, he may or may not opt to chase. Where the goods are in extensive use in the market and when there is likelihood of infringement, then also, the registered owner can resort to seek protection. In such an event, the onus of proving such user is of course on the applicant who wants to rely on those marks. It is possible that the mark may have been registered but not used. It is also possible that the mark may not have been registered but used, as in the instant case. Where mere was no evidence that the mark had acquired any reputation among the public, but showed that it had acquired a reputation among the trades people only who were discerning and were not likely to be deceived or confused, and the public not being aware of the reputation of the infringer's trade mark, were not likely to be deceived or confused by the use of the proposed trade mark and the registered owner need not resort to action.
55. In our view, the proof of actual damage or fraud is unnecessary in a passing-off action whether the relief asked for is injunction alone or injunction, accounts and damages. If there is a likelihood of the offending trade mark invading the proprietary right, a case for injunction is made out. We are fortified in coming to this conclusion by the observations in a bench decision in Prina Chemical Works v. Sukhdayal, I.L.R (1974)1 Del. 545.
56. The reasonings of the learned single Judge are at paras 20, 21, and 25 of the impugned order. For reasons stated at paras 39, 40, 43, 44, 45, 46, 47, 49, 50, 55, 57 and 58 and the view taken by this Court in G. T.C. Industries Limited, Bombay v. I.T.C. Limited, Madras . We hold that the reasoning and approach of the learned single Judge is wrong. Normally, the appellate Court will not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. The conclusion arrived at by the learned single Judge is opposed to the settled principles of law, virtually affecting the right of a registered owner of a trade mark, resulting in irreparable injury and ignoring the balance of convenience. In view of the our reasonings in the aforestated paragraphs, the findings of the learned single Judge is capricious, unreasonable and prudently not possible in the facts and circumstances of the given case.
57. This Court, in G.T.C. Industries Limited, Bombay v. I.T.C. Limited, Madras , referring to a decision in National Garments v. National Apparels , held thus:
Generally stated even if the chance of success at the trial are only 20 per cent, the interim relief sought for is required to be granted. (See paras 15-66 of Kerly's Law of Trade Marks and Trade Names, Twelfth Edition). There is another reason for the grant of the interlocutory injunction under such circumstances. Such an order would stop the infringement without delay. Not only that from experience it is clear that a successful motion for interlocutory injunction normally puts an end to the litigation and the infringement with a great saving in expenses compared with a full trial and that is the reason why the law insists upon the hearing of such a motion in every case.
58. If there is likelihood of confusion or deception, the plaintiff need not in general show strong prima facie case and the prima facie case that is required to be shown must be something more than a case that will avoid the action being struck out as frivolous or vexatious. Where the mark used by the respondent is identical with trade mark of the appellate and the infringement takes place not merely by exact imitation, but by the use of marks so nearly resembling the registered mark, the statutory protection is absolutely necessary by way of an injunction in order to prevent confusion or deception arising from similarity of marks.
59. In view of the discussion and reasonings aforestated, we summarise our conclusion as follows. (1) the registered proprietor of a trade mark has exclusive right to the use of the trade mark in relation to the goods 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 the Act. (2) When once it is registered after a lapse of 7 years, it acquires the validity and it becomes a distinctive mark. (3) Whether it is descriptive or has become publicijuris is a question of fact to be established. (4) When a number of marks all have a common element, may it be prefix, suffix or root, i.e., essential part or the core of the mark, they come to be associated in the public mind as an indication of the same source, which misleads or causes deception or confusion. (5) It is the common element that has to be identified in the impugned mark and the registered trade mark and if such common element is highly distinctive and is not just a description or a commonly used word, the likelihood, of deception or confusion would be very much there, despite the fact that it may differ in similarity in certain letters. 6) The question has to be approached from the point of view of an unwary purchaser and not from the point of doctor's prescription or the advice of chemists, druggists or pharmacists, as they may do it in a craze to clear the commodity because it treats the same ailment. In such a situation, there may be likelihood of deception or confusion coupled with anxiety of the dealer to cause confusion on the consumer. (7) The nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration. (8) Marks must be looked at from the first impression of a person of average intelligence and imperfect recollection. (9) Marks must be compared as a whole microscopic examination being impermissible. (10) The broad and salient features must be considered, for which the marks must not be placed side by side to find out the differences in design. (11) Overall similarity is the touchstones. (12) It is not the colour of the container or the difference in the product, but it is the statutory right to the word what has to weigh. (13) The plaintiff need not in general show strong prima facie case and the prima facie case that is required to be shown must, be something more than a case that will avoid the action being struck out as frivolous or vexatious and even if the chance of success at the trial are only 20 per cent, the statutory protection is absolutely necessary by way of an injunction in order to prevent confusion or deception arising from similarity of marks.
60. Having regard to the facts and circumstances of this case, keeping in view the common element between the impugned mark and the registered trade mark, we are of the view that there is likelihood of deception or confusion in the minds of unwary public or from the stand point of a common consumer.
61. Therefore, the impugned order passed on Application Nos. 1650 to 1654 of 1998 is set aside and the injunction granted in O.A.Nos.182 and 183 of 1998 is made absolute. Both the appeals are allowed. Consequently, the connected miscellaneous petitions are closed. Parties to bear their own costs.