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35. Mr. Sai Deepak also reiterates the contention that the "PANTO" prefix is common to the trade and, in this context, has invited the attention of the Court to the search report generated from the website of the Trade Mark Registry, which indicates a large number of marks, for pharmaceutical preparations, which start with "PANTO". He also points out that, in the written statement, he has specifically adverted to physical sales of several such products in the market, so that the contention of the plaintiff that the mere presence of similar marks on the Register of Trade Marks does not make out a case of the mark being common to the trade, cannot hold water. For the same reason, he submits that the ratio of the decision of the Division Bench of this Court in Pankaj Goel v. Dabur India Ltd. 8 would also not apply.

61.5.2 In the context of pharmaceutical preparations, this issue is no longer res integra. A Division Bench of this Court was, in AstraZeneca12 seized of a substantially similar controversy. The rival marks, in that case, were "MERONEM" of the plaintiff and For Section 17, refer Footnote 2 Signing Date:16.08.2023 15:12:19 "MEROMER" of the defendant. The division Bench held that, as the prefix "MERO" was taken from the name of the API meropenem, the plaintiff could not claim exclusivity on the basis of the common "MERO" prefix. The Division Bench agreed with the decision of the learned Single Judge - on which Mr. Sai Deepak relies - that, if one were to exclude the common "MERO" prefix, the remainder of the two competing marks "NEM" and "MER" could not be treated as phonetically similar. Similarly, in Schering Corporation8, another Division Bench of this Court held the marks TEMOKEM and TEMOGET not to be deceptively similar, as the prefix "TEMO" refers to the common API Temozolomide, and there was no phonetic or other similarity between "KEM" and "GET". In a similar vein, albeit not in the context of pharmaceuticals, the Supreme Court had, in J.R. Kapoor v. Micronix India 41, held that the marks MICRONIX and MICROTEL were not deceptively similar, as the prefix "MICRO" was descriptive of the technology used in the products and could not, therefore, constitute the basis for a claim to exclusivity, and there was no phonetic or other similarity between "NIX" and "TEL".

61.5.3 These decisions cannot, however, affect the aspect of infringement in the present case, as, unlike the situation which obtained in AstraZeneca12 or Schering Corporation8, if one were to exclude, from consideration, the common prefix "PANTO", from the rival marks PANTOCID and PANTOPACID, as representing the API pantoprazole, the remaining parts of the two marks, "CID" and "PACID", when considered as the latter halves of the two rival marks 1994 Supp (3) SCC 215 Signing Date:16.08.2023 15:12:19 PANTOCID and PANTOPACID, are themselves deceptively similar to each other, to the extent that the whole marks PANTOCID and PANTOPACID become equally deceptively similar. This, therefore, is not a case like AstraZeneca12 or Schering Corporation8, in which, once the former descriptive part of the marks was excluded from consideration as a basis to claim infringement, the latter parts were wholly dissimilar to each other.

61.5.4 Mr. Sai Deepak's contention that the prefix "PANTO" is common to the trade, is neither here nor there. The plaintiff is not claiming infringement, between PANTOCID and PANTOPACID, on the basis of the prefix "PANTO". What the plaintiff contends - and the Court finds substantial - is that, seen as whole marks, PANTOCID and PANTOPACID are deceptively similar to each other. That deceptive similarity cannot be mitigated, in any manner, by the number of trademarks, for pharmaceutical products, which contain the prefix "PANTO", in existence.