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Defendant's Arguments

44. Mr.Atishi Dipankar, learned counsel for the Defendant, first urges that marks are to be categorized on a sliding scale of distinctiveness from fanciful and arbitrary marks which enjoy a higher degree of protection to marks that are suggestive, descriptive or comprising generic terms. The latter, according to the Defendant, do not enjoy protection. On this scale, „Kodak‟ will be a fanciful mark, „Apple‟ for computers will be an arbitrary mark, „Coppertone and Whirlpool‟ for washing machines would be suggestive marks, „Roller Blade and Weight Watchers‟ can be descriptive marks and „Aspirin‟ would be a generic mark. It is emphasised that the prefix "LIV" is essentially an abbreviated form of Liver which is the name of the organ the ailments of which are sought to be treated both by the Plaintiff‟s drug as well as by the Defendant‟s drug. It is a known method of naming medicinal products. This is because both doctors and consumers can easily relate to the drug and recognise it as treating the organ whose name is incorporated in the name of the medicine. It is claimed that manufacturers consistently adopt this trade practice to popularize the medicines and to get their medicines easily identifiable by doctors and consumers.

52. There is merit in the contention that where the trademark includes a generic component, the manufacturers are not precluded from using as part of their marks the said generic component. This is because the generic component will obviously not be the distinctive portion and the dominant portion would be dissimilar or non-generic portion. When the comparison of the marks are taken up as a whole, the distinctive portion of the trade marks i.e. non-generic component would have to be compared and not the generic component.

53. The following passage in McCarthy on Trademarks, IVth Edition, 2009 at page 23-203 is significant in this respect:

"23:49 Common "generic" element of marks If a common portion of the two conflicting marks is a public domain generic name, the emphasis of enquiry should be upon the confusing similarity of the non- generic portion, with the ultimate issue determined by the confusing similarity of the total impression of both marks. For example, the Second Circuit found that the trademark HIBVAX does not infringe the mark HIB- IMMUNE, both for influenza vaccine against a type of influenza disease named by the generic term "HIB". "[A] trademark infringement finding...cannot be based on the use of a generic or descriptive term such as „Hib.‟ The presence of a generic term can make little difference in comparing otherwise similar marks. For example, the Federal Circuit found a likelihood of confusion between applicant‟s JOSE GASPAR GOLD for tequila and the cited registration of GASPAR‟S ALE for beer and ale. The presence of the generic word "ale" in the cited mark did not prevent likely confusion because it was proper to accord such a generic term less weight in judging the similarity of the marks."

74. In the considered view of this Court, the Defendant has been able to show that „LIV‟ is publici juris and, therefore, when the two marks Liv.52 and LIV-T are compared, „LIV‟ will be considered as the generic and non- distinctive part of the mark which, therefore, will have to be kept out of comparison. The issue is, therefore, answered in favour of the Defendant and against the Plaintiff.

75. Issue No. 13: Whether the suit suffers from delay, laches and acquiescence and if so, to what effect? (OPD) The Defendant has not been able to show that the suit is barred by laches. The issue is decided against Defendant and in favour of the Plaintiff.