Emcure Pharmaceuticals Ltd vs Corona Remedies Pvt. Ltd on 10 September, 2014

[Cites 26, Cited by 4]

Bombay High Court

Emcure Pharmaceuticals Ltd vs Corona Remedies Pvt. Ltd on 10 September, 2014

1. This is a suit in trademark infringement combined with a cause of action in passing off. The Plaintiff claims that its registered trade marks, OROFER and OROFER-XT, used in conjunction with medicinal products, are being infringed by the Defendant's use of rival trade marks COROFER and COROFER-XT, and that the Defendant is attempting to pass off its goods as those of the Plaintiff. The present application is for interim reliefs, including an injunction and a Court Receiver.

2. The defence is, in brief, that the rival marks are not deceptively similar to those of the Plaintiff. They are distinct, and the differences are apparent and discernible. In any case, this is not a fit case for the grant of an injunction; the matter should proceed to trial. For, when the Defendant applied for registration, the Plaintiff's marks were not cited as conflicting. More importantly, the Defendant claims to be using the rival marks since 2001. The Plaintiff having acquiesced in the Defendant's use of the rival marks for over five years, the Defendant is now statutorily barred from opposing the Defendant's use of its rival marks.

3. I have heard Dr. Saraf, learned Counsel for the Plaintiff, and Dr. Tulzapurkar, learned Senior Counsel for the Defendant, at some 2 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC length. With their assistance, I have gone through the material on record. I have carefully considered their submissions, including Dr. Tulzapurkar's submission that the provisions of Section 33 of the Trade Marks Act, 1999 ("the Act") are not entirely restricted to a rival later registered trade mark; specifically, that Section 33(1)(b) applies also to a later unregistered trade mark. For the reasons that follow, I have found, prima facie, that the Defendant's marks infringe the Plaintiff's, and the Defendant's use of the rival marks to constitute passing off. I have not found sufficient merit in the defence to deny the reliefs sought. I have made the Notice of Motion absolute.

4. The factual background is, briefly, this. On 30th October 1996, the Plaintiff's marks OROFER and OROFER-XT were registered as word marks in Class 5 in relation to medicinal or pharmaceutical preparations for iron deficiency, anaemia, methylcobalmin deficiency, folic acid deficiency, zinc deficiency and so forth. In January 1997, the Plaintiff obtained a license from the Food & Drug Administration, Maharashtra for the manufacture of these products. Use and manufacture began in 1997. The product is a film-coated tablet or capsule, frequently prescribed by orthopaedic surgeons and consultants (for iron deficiency etc.) and by gynaecologists to address folic acid and Vitamin-B deficiencies in pregnancy. The products are also prescribed by general physicians for iron deficiency issues. Between 1997 and 2012, the Plaintiff has had sales of products under the OROFER mark in excess of Rs.95 crores. It is also widely exported, to some 34 countries worldwide. In that same period, the Plaintiff has spent handsomely on sales and promotional expenses. Certified statements of sales and expenses, 3 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC sample invoices and specimen advertising and promotional material are annexed to the plaint. The Plaintiff claims that, resultantly, its products have acquired a considerable and valuable reputation and much goodwill, and that its marks are distinctive of its products to the exclusion of others. The Plaintiff thus has common law and statutory rights in both marks.

5. On 10th January 2006, the Plaintiff noticed the Defendant's advertisement in the Trade Mark Journal No.1371, seeking registration of the mark COROFER in Class 5. On 17th December 2007, the Plaintiff's attorneys sent a cease-and-desist notice to the Defendant. The Plaintiff then opposed the Defendant's registration application on 20th December 2007, inter alia saying that the Plaintiff was the first and original adopter of the trade mark OROFER for medicinal and pharmaceutical preparations; that due to prolonged and extensive use, the mark was now exclusively identified with the Plaintiff; that the Plaintiff had acquired much goodwill and reputation in its mark; that the Defendant's proposed mark was identical with or similar to the Plaintiff's and would cause confusion and deception among customers, dealers and in the medical profession. Several months later, on 23rd August 2008, the Defendant countered the Plaintiff's opposition. It claimed to have commenced use of its mark in 2001 for an iron supplement, and said that the mark was a combination of the Defendant's corporate name and the first letters of the word ferrous, for iron. The Defendant also claimed to have spent considerable amounts on marketing, promotion and sales and said that it, too, had acquired goodwill. It claimed that the suffix FER was common to the trade, even though the Defendant itself had sought registration of a mark with that very 4 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC suffix. The Plaintiff then claims to have made enquiries but found no evidence of the Defendant's products. The Plaintiff nonetheless continued its opposition in the trade mark registry. Those proceedings are yet pending.

6. In May-June 2009, one of the Plaintiff's dealer is said to have reported COROFER-branded products in the market. The Plaintiff sent a second cease-and-desist notice to the Defendant on 29th June 2009. The Defendant replied on 26th July 2009, but this letter, a copy of which is annexed to the plaint, does not disclose any particulars of sales or expenses. The Plaintiff then claims that it believed the Defendant had withdrawn its products from the market and ceased using the impugned trade mark. It says that when it caused enquiries to be made, it was told that the Defendant's products were unavailable. It was not till July 2013 that the Plaintiff learned that the Defendant had, in the Plaintiff's words, "again started manufacturing and marketing" products under the impugned trade mark, but now also adding a suffix "XT" to the word COROFER. On 16th July 2013, the Plaintiff's representative purchased the offending product in Mumbai under the brand COROFER-XT.

7. The Plaintiff filed this suit on 7th September 2013. It also filed the present Notice of Motion. On 8th October 2013, the Notice of Motion was directed to be placed for final disposal a few days later. Affidavits in reply and rejoinder were filed. The Notice of Motion did not reach hearing. In the meantime, a written statement was filed in the suit, and, on 7th March 2014, issues were framed. This is the state of the record as it stands today.

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8. Dr. Saraf's first submission is that the two sets of marks are so similar as to be virtually indistinguishable for all intents and purposes. Except for the preceding letter 'C', there is no phonetic, visual or structural dissimilarity; at least none sufficient to clearly distinguish the two sets of products. The Plaintiff is a prior registrant. It has exclusive rights. The Defendant's marks infringe those of the Plaintiff. It is equally plain that the Plaintiff has acquired a significant and valuable reputation and goodwill in its marks. The similarity of the Defendant's marks to those of the Plaintiff is bound to cause confusion and deception across the spectrum, in the public, to consumers, traders and even medical professionals. All of them are eminently likely to believe that the Defendant's products emanate from the Plaintiff, so close is the similarity of the offending marks to the Plaintiff's. The products of both the Plaintiff and the Defendant use a similar ingredient, Ferrous Ascorbate. Both products are sold over the counter and ordered on the telephone. The Defendant's adoption of the marks is neither honest nor bona fide.

9. Dr. Saraf also points out that the Defendant's case of early adoption, from 2001, is one that simply cannot be believed. The Defendant has had ample opportunity to produce material before this Court evidencing sales and expenses. It has not done so. All that it discloses in its affidavit in reply are sales figures for the Defendant's 'group', not for the products with the impugned trade marks. The only invoices shown are from 2009 to 2013. 1 There are a handful from 2001, but none of significance; and from 2006 to 2009 there is nothing at all. On this material, Dr. Saraf submits, it is 1 A separate compilation was tendered.

6 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC impossible to conclude that the Defendant has been actively using the rival marks on its products continuously and extensively. If the defence to the Plaintiff's action is one of acquiescence, then the Defendant must show that the Plaintiff had knowledge of the Defendant's use; or that the Defendant's use was of so extensive and widespread a nature that the Plaintiff could not possibly have been ignorant of it. There is no such material.

10. Dr. Tulzapurkar's response, on facts, is that the Defendant's adoption is honest and bona fide. The Defendant's marks are based on the Defendant's corporate name and the word "FERROUS", descriptive of the ingredients or purpose of the pharmaceutical preparation. When the Defendant applied for registration, the Plaintiff's mark was not cited as being in conflict; therefore, the honesty of the Defendant's adoption cannot be doubted.

11. There is, too, Dr. Tulzapurkar says, the matter of acquiescence. The Trade Mark Journal in which the Defendant's registration application was advertised showed the use since 2001. The Plaintiff has had knowledge and has sent two cease-and-desist notices. It only claims, without any basis, that it found the Defendant not to be using the mark. But the Defendant has categorically asserted user, and said that this user dates back to 2001. The two notices do not reflect what is now alleged in the plaint, viz., that the Plaintiff 'learned' that the Defendant 'had started' using the rival marks, and that the Plaintiff found no evidence of goods under the rival marks. In any case, the Defendant replied to the second cease-and-desist notice on 26th July 2009, and there is neither response nor action till 2013. On what basis the 7 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC Plaintiff says it has "now learned" of the Defendant's use of the rival marks is undisclosed. This is not, Dr. Tulzapurkar says, a matter of degree or of volume. No law requires the Defendant to show greater usage than the Plaintiff, or, indeed, any particular amount of usage. The Defendant need only show commercial use, and it is inconceivable that the Plaintiff was unaware of the Defendant's use of the rival marks.

12. To put these contesting submissions in their correct sequence:

(a) First, are the Defendant's marks deceptively similar to those of the Plaintiff?

(b) Second, is the fact that there are other marks with the word (or letters) "FER" determinative, in that the use of this word or abbreviation by the Defendant cannot be said to constitute an infringement of the Plaintiff's marks?

(c) Third, if it be shown that the Plaintiff is not the first user of such a mark, does this furnish a valid defence?

(d) Fourth, is the Plaintiff's claim defeated by delay if such a delay is proved? If, along with this, the Plaintiff's knowledge of the Defendant's use is shown, has not the Plaintiff acquiesced in the Defendant's use of its rival 8 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC marks? Is Section 33 of the Act limited to a later registered trade mark?

13. On the first question, Dr. Tulzapurkar readily agrees that the question of deceptive similarity is a matter for the Court to decide. I believe Dr. Saraf to be correct in his submission that where the entire mark is incorporated in the rival mark, deceptive similarity is established. The test is to juxtapose the two marks and then ask what might be the likely effect on the mind of a person of average intelligence and imperfect recollection? Where the entire mark is incorporated in the rival mark, deceptive similarity is established. 2 Here, there is no difference between the Defendant's marks and the Plaintiff's marks except for the addition by the Defendant of a preceding letter 'C'. In all other respects, the Plaintiff's marks are entirely subsumed in the Defendant's rival marks. One must have regard to the way people in this country use the language and the enormous differences in pronunciation, the easygoing and laissez-

faire approach to communication, a land where English is not the lingua franca, as a result of all of which mistakes that might even otherwise be common might well be inevitable.3 One need not even go quite as far as the position in Boots Company PLC & Anr. v Registrar of Trade Marks & Anr.,4 where a learned single Judge of this Court held CROFEN to be deceptively similar to BRUFEN. Dr. Saraf's case is on surer footing, for the entirety of his client's marks are incorporated in the Defendant's. If the principal test is of 2 Indchemie Health Specialities Pvt. Ltd. v Naxpar Lbs Pvt. Ltd. & Anr., 2002 (2) Mh. L. J. 513.

Cadila Health Care Ltd. v Cadila Pharmaceutical Ltd., 2001 PTC 541 (SC) 4 2002 (4) Bom.C.R. 36 9 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC phonetic similarity,5 then there can be no doubt that the Defendant's marks in the present case are confusingly and deceptively similar to those of the Plaintiff.

14. On the second question, too, Dr. Saraf is, I believe, correct in saying that at least as far as our High Court is concerned, there is no question of going behind the Plaintiff's registration to test its validity. The fact that there may be other marks with the term FER in them is inconsequential; the Defendant has itself sought registration of a mark with this very expression and can hardly be heard to say that this portion of the mark is not distinctive. 6 In any case, this makes matters considerably worse for the Defendant. Remove the word FER, and there is as good as no difference between what is left of the two sets of marks. Other than the use of the preceding letter 'C', there is no other difference, and the phonetic similarity is almost exact.

15. The third point turns on the Defendant's contention that one Advent Laboratories Patna was a prior user of OROFER from 1983 with a registration on 24th September 1985. This has been denied by the Plaintiff in rejoinder, where it points out that the application by Advent Laboratories was for a proposed user; that there is no evidence of actual user; and that when the Plaintiff sought a 5 Charak Pharma Pvt. Ltd. v Glenmark Pharmaceutical Ltd., 2014 (57) PTC 538 (Bom) 6 Automatic Electric Limited v R.K. Dhavan & Anr., 1999 PTC (19) 81; Indian Hotels Company Ltd. & Anr. v Jiva Institute of Vedic Science and Culture, 2008 (37) PTC 468 (Del.) (DB); Ultra Tech Cement Limited v Alaknanda Cement Pvt. Ltd. & Anr., 2011 (5) Bom CR 588; Corn Products Refining Co. v Shangrila Food Products Ltd., AIR 1960 SC 142 10 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC certified copy of the extract of the register relating to this registration, the Plaintiff was informed that the registration to Advent Laboratories is not in force. In any case, as Dr. Saraf points out, this is hardly a defence available to the Defendant. Section 28(3) and Section 12 of the Act contemplate the co-existence of multiple simultaneous proprietors of a single mark. As between such registered proprietors inter-se, none has rights of exclusivity vis-à-vis the other. But as against any third party, each of them has the full panoply of rights conferred by the Act. The Defendant is such a third party, not a simultaneous or concurrent proprietor.

16. This brings us to the final question, the one of delay and acquiescence. It is now firmly settled that mere delay will not defeat the rights of a registered proprietor.7 I have recently had occasion to consider this issue and the various authorities on the point in Medley Pharmaceuticals Ltd. v Twilight Mercantiles Ltd. & Anr.8 In that decision, I also considered the next decision placed by Dr. Saraf, that of a learned single Judge of the Delhi High Court in Hindustan Pencils (P) Ltd. v India Stationery Products Co. & Anr. 9 The Delhi High Court held that, in law, the question of acquiescence arises where a mark's proprietor, being aware of his rights, and being aware that the infringer may be ignorant of these, does some affirmative act to encourage the infringer's misapprehension so that the infringer worsens his position and acts to his detriment. A mere failure to sue without a positive act of encouragement is no defence 7 Midas Hygiene Industries P. Ltd. & Anr. vs. Sudhir Bhatia & Ors., (2004) 3 SCC 90; Charak Pharma Pvt. Ltd., supra.

Notice of Motion No. 657 of 2008 in Suit No. 451 of 2008, decided on 11th June 2008, MANU/MH/0929/2014.

AIR 1990 Delhi 19 11 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC and is no acquiescence. A defendant who infringes the plaintiffs' mark with knowledge of that mark can hardly be heard to complain if he is later sued upon it. Hindustan Pencils was followed by a Division Bench of our Court in Schering Corporation & Ors. v Kilitch Co. (Pharma) Pvt. Ltd.10 The questions of delay and acquiescence were also before a learned single Judge of this Court in D.R. Cosmetics Pvt. Ltd. & Anr. v J. R. Industries.11 A man cannot sit indolent and idle, aware of the invasion of his rights by another, and then complain of that invasion. Acquiescence is a species of estoppel, a rule in equity and a rule of evidence. Essential to the acquiescence doctrine ig is that it is accompanied by an encouragement or an inducement: he who possesses a legal right must have encouraged the alleged violator of that right in acting to the latter's detriment, confident in the knowledge that the former is not asserting his rights against the violator. Acquiescence is sitting by when another invades your rights and spends money in the doing of it. It is conduct incompatible with claims of exclusivity, but it requires positive acts, not mere silence or inaction (of the stripe involved in the concept of laches). Acquiescence is not mere negligence or oversight.12 There must be the abandonment of the right to exclusivity.

17. What Dr. Saraf says is that for the prior period for which user is claimed there are simply no details. These are not to be found in the response to the Plaintiff's opposition to the Defendant's 10 1991 IPLR 1 11 2008 (2) Bom.C.R. 28, per Dr. D.Y. Chandrachud, J., as he then was.

Power Control Appliances v Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448; Halsbury's Laws of England, 4th ed.; cited in D. R. Cosmetics, supra.

12 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC application for registration. They are not to be found in the correspondence and the replies to the cease-and-desist notices. They are not to be found in the affidavit in reply to the Notice of Motion. The Defendant cannot expect endless opportunities, nor can he demand that the Court proceed on extrapolated conjecture and surmise. Why the Defendant did not trouble to take a search is unexplained. That is what he is required to do, as a matter of ordinary prudence and elementary precaution. Had the Defendant done so, it would undoubtedly have found the Plaintiff's mark. If, despite knowledge, it continued using a mark of deceptive similarity, the Defendant had only himself to blame; and if it did not take these precautions, it was no better off.13 When the Defendant claims to have begun using the mark, the Plaintiff's mark was on record, though yet to be registered. It is not possible, Dr. Saraf says, and I think rightly, that he should claim any equity.

18. A Division Bench of our Court also considered the question of delay, acquiescence and honesty in adoption. In Cadila Pharmaceuticals Ltd. v Sami Khatib,14 the Court said that even assuming that the Defendant's adoption was honest, the continued user of it was, if not dishonest, at its peril. The Court cited Hindustan Pencils and followed Schering Corporation, and then went on to hold that where it was shown that the Defendant had the means to discover the Plaintiff's mark and even more so where the Defendant knew of the Plaintiff's mark on account of its opposition to the registration application before the Registrar of Trade Marks, 13 Power Control Appliances v Sumeet Machines Pvt. Ltd., (1994) 2 SCC 448; Bal Pharma Ltd. v Centaur Laboratories Pvt. Ltd., 2002 (24) PTC 226 14 2011 (3) Bom.C.R. 587 13 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC the Defendant must be held to be using (or continuing to use) the rival trade mark at its peril. The burden, Dr. Saraf submits, citing Win Medicare Ltd v Somacare Laboratories Ltd. 15 and, in my view, with considerable justification, is always on the Defendant to show the honesty of its concurrent user and that this was to the knowledge of the Plaintiff. That case was very like this one. There was no overt act of encouragement by the plaintiff. The defendant did not produce its sales figures. The Court held that no question arose of acquiescence.

19. Dr. Tulzapurkar counters the submission that Section 33 of the Act is restricted to registered trade marks by saying that this cannot possibly be, for it would render Section 33(1)(b) otiose. Once a rival trade mark is registered, Section 28(3) comes into play and one registered proprietor cannot move against another registered proprietor claiming exclusivity. If that is so, then there is no situation in which Section 33(1)(b) could possibly apply. Hence, this section must be held to apply to unregistered trade marks. In Neel Electro Techniques & Ors. v Neelkanth Power Solution & Anr.,16 Mr. Justice S.C. Gupte rejected Dr. Tulzapurkar's submission on Section 33. The submission related, I must note, to the period of five years, not whether it applied to the proprietor of an unregistered mark as well. Mr. Justice Gupte said that Section 33 deals with the case of two registered trade marks, registered at different points of time. The issue before him was not of two registered trade marks. He also held that the period of five years was a time after which 15 65 (1997) DLT 369 16 Notice of Motion No.54 of 2012 in Suit No. 55 of 2012, decided on 24th June 2014.

14 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC there was a complete statutory bar, and that did not mean that no such plea of acquiescence could be taken if the period was shorter. A court of equity could also decline an injunction where acquiescence was demonstrated, though not for a period of five years. Dr. Tulzapurkar's submission is that I should distance myself from Mr. Justice Gupte's observations. I find that I cannot.

20. I find it difficult to accept the necessary implication of Dr. Tulzapurkar's submission that Section 33 occupies the entirety of the universe of acquiescence in trade mark law. Indeed, it is not even Dr. Saraf's suggestion that no plea of acquiescence can be taken only because the Defendant is not a registered proprietor. He only says that the statutory defence under Section 33 is unavailable to Defendant; a general plea of acquiescence can always be taken. That section only provides immunity to a registered proprietor of a trade mark after a defined period of time. It cannot be read to mean that no plea of acquiescence can be taken in any other set of circumstances. Section 33 operates in a well-defined and circumscribed set of circumstances. It cannot possibly oust every other plea of acquiescence. For instance, it is still open to a registered proprietor to show that there has been acquiescence for a period of four years and 364 days; this defence is not defeated for the want of one day. All that Section 33 says is that where, as between two registered proprietors, the later registrant is able to show acquiescence of at least five years, certain statutorily mandated consequences follow. In other cases, the plea can well be taken, the only difference being that the statutorily mandated consequences in Sections 33(1)(a), (b) and Section 33(2) would not 15 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC necessarily result. This is also true when a plea of acquiescence is taken by a later proprietor of an unregistered mark.

21. De hors Section 33, then, what is it that Dr. Tulzapurkar suggests? He claims that the only action the Plaintiff took was to prevent the Defendant's registration. It did nothing to prevent the use of the rival marks. But was it that the Plaintiff ought to have done? What should it have moved against? The Defendant shows no invoices. Between 2001 and 2006, its sales figures are almost entirely irrelevant. For 2006 to 2009, no invoices are shown at all. The first cease-and-desist notice was of 2007, the second of 2009.

Any sales and use after this time are, in the words of our Division Bench, at the peril of the Defendant. What remains is no evidence of use at all. There is nothing that the Plaintiff could possibly do to meet the charge of acquiescence. In any case, the very worst that the Defendant might say of the Plaintiff is that the Plaintiff was silent.

But that is not enough to mount the challenge of acquiescence. It certainly cannot point to any positive or affirmative act that might have encouraged the Defendant to worsen its position.

22. There is, in my view, sufficient proximity between the two sets of marks to indicate, prima facie, that the Defendant's use is calculated to deceive. The phonetic similarity is almost exact. The structural and visual similarity is far too close to be happenstance.

The tests in Re Pianotist's Application17 are met. The two sets of marks, set by each other, assessed in relation to the goods to which they are applied, are almost indistinguishable. The average customer, user, chemist or medical practitioner is unlikely to see the 17 (1906) 23 RPC 774 16 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC very fine distinction between the two. The Defendant's claim of honest adoption is unconvincing. The Plaintiff has made out a sufficiently strong prima facie case. Its sales figures demonstrate the likely prejudice if reliefs are denied. The Plaintiff's sales and expenses volumes are high. I see no reason why the Plaintiff, an established and reputed manufacture of pharmaceutical products, should be denied relief.

23. In assessing the balance of convenience, one vital factor is the nature of the products in question. The decision of the Supreme Court in Cadila Health Care Ltd. v Cadila Pharmaceutical Ltd.18 demands that courts, especially those of equity, function as sentinels on the qui vive in matters involving pharmaceutical products.

Confusion between rival products might well have catastrophic consequences. There is an overarching public interest that requires a lower threshold of proof of confusing or deceptive similarity where the trade marks in question are applied to pharmaceutical products:

"drugs are poisons, not sweets". A life threatening confusion is not a mere inconvenience. In the plaint and the affidavit in rejoinder, the Plaintiff has shown how its drugs are prescribed in situations that are delicate and sensitive, particularly for pregnant women. Quality control is of paramount importance, and it is the right of every consumer to be assured of the quality of even an innocuous drug or preparation. Where competing drugs are designed to address the same spectrum of health issues, the slightest change in composition could have severe and perhaps even fatal consequences. Even if their formulations are identical, this does not lower the threshold of judicial scrutiny. Between the two competitors stands the consumer, 18 Supra.

17 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC whose life and well being are at stake; and it is for his sake that one must, in such cases, guard against deceptive similarity. In matters of competing medicinal and pharmaceutical preparations, it is not only the rights to exclusivity that are to be considered. The consumer must be protected against every possibility of confusion from a mark that is deceptively similar. Any other view would result in a reading down or dilution of Cadila, and that is impermissible.19 I believe this is a factor to be considered while assessing the balance of convenience. It is not only the 'balance of convenience' between the two contestants in court; when dealing with such products, there is also the balance of a public convenience, of saving the public from potential harm or injury.

24. The Notice of Motion succeeds. It is made absolute in terms of prayer clauses (a) to (d), which are appended to this order. No costs.

25. At the request of learned Advocate for the Defendants, and having regard to the facts and circumstances of the case, the operation of this order is stayed for a period of four weeks from today.

(G.S. PATEL, J.) 19 Wyeth Holdings Corporation & Anr. v Burnet Pharmaceuticals (Pvt.) Ltd., 2008 (36) PTC 478 18 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC Prayer clauses :

"(a) that pending the hearing and final disposal of the suit, the Defendant by itself, its directors, servants, agents, dealers, distributors stockiest and all persons acting under it be restrained by a temporary order and injunction of this Hon'ble Court from manufacturing and/or marketing and/or trading in and/or advertising and/or otherwise dealing in medicinal and pharmaceutical preparation bearing the impugned trade mark "COROFER", "COROFER - XT" or any other trade mark deceptively similar to the Plaintiffs' well-known trade mark "OROFER" so as to pass off its medicinal and pharmaceutical preparation as and for the well-known medicinal and pharmaceutical of the Plaintiff sold under the trade mark "OROFER" or in any other manner whatsoever;

(b) that pending the hearing and final disposal of the suit, the Defendant, its directors, servants, agents, dealers, distributors stockiest and all persons acting under it be restrained by a temporary order and injunction of this Hon'ble Court from infringing the Plaintiffs' registered trade mark "OROFER" in class 05 by use of the impugned trade mark "COROFER", "COROFER - XT" or any other trade mark deceptively similar to the Plaintiffs' registered trade mark "OROFER" in respect of medicinal and pharmaceutical preparation or in any other manner whatsoever;

(c) that pending the hearing and final disposal of this suit the Court Receiver, High Court, Bombay or such other fit and proper person as this Hon'ble Court thinks fit, be appoint Receiver with all powers under Order XL Rule 1 and Order XXXIX Rule 7 of the Code of Civil Procedure, 1908 to attend and search the premises, shops, offices, factories, godowns of the Defendants their stockists, dealers and retailers and other premises where the goods bearing the impugned trade mark, any packaging material resembling the impugned trade mark / any packaging material may be stocked or are lying and to make an inventory, seize and take possession / custody thereof

19 of 20 ::: Downloaded on - 10/09/2014 23:48:21 ::: NM-1644-13-S-734-13-F.DOC and also of all production registers, invoices, printing and packaging material pertaining thereto and the Defendants, its officers, directors, proprietors, owners, employees, representatives, agents, retailers, stockists, retailers and distributors be ordered and directed to deliver up all of the aforesaid to the Court Receiver or to such other fit and proper person as this Hon'ble Court thinks fit and the Receiver shall be entitled (if he considers appropriate or necessary) to avail of police protection or assistance in implementing the aforesaid;

(d) that pending the hearing and final disposal of the suit, the Defendant, its directors, servants, agents, dealers, distributors stockiest and all persons acting under it be directed to deliver up to the Plaintiffs' for destruction of all goods, labels, cartons, advertising material, packing material and other literature bearing and containing the impugned mark "COROFER", "COROFER - XT";"

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