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(iv) The abbreviation FOL stands for FOLICACID, while the abbreviation VIT stands for Vitamin, both of which are generic descriptions common to the trade. When a word consists of a common element, greater emphasis must be laid on the uncommon elements. Consequently, in assessing where there is deceptive similarity, both sets of letters viz., "FOL" and "VIT" must be excluded. The 'e'is all that remains in the mark of the Plaintiffs.

8. At the outset, it would be necessary to advert to the relevant provisions of the Trade Marks Act, 1999. Section 28(1) of the Act confers upon the registered proprietor of a trade mark, the exclusive right - upon a valid registration - to the use of the trade mark in relation to goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement in the manner provided by the Act. Section 29(1) provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person 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 goods or services 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. The expression "deceptively similar" is defined in Section 2(1)(h):

12. In Cadila Health Care (supra), the Supreme Court revisited the entire issue of deceptive similarity in the context of pharmaceutical preparations. About a year before the decision in Cadila, there was an earlier decision of the Court in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. in which it was observed that where common marks are included in rival trade marks, more regard was to be paid to the parts not common and the proper course was to look at the marks as a whole, but at the same time not to disregard the parts which are common. The Court had observed that dissimilarities in essential features in devices and composite marks are more important than some similarity. The Supreme Court disapproved of the formulation of legal principle in S.M. Dyechem and observed that decisions of the Court over four decades had laid down that what was required to be analysed in an action for passing off was the similarity between the competing marks and the likelihood of deception. The factors which were enunciated by the Supreme Court in deciding the issue of deceptive similarity are as follows :

17. In considering the question of deceptive similarity, the two marks have to be considered as a whole. The structure of the mark visually and phonetically must be borne in mind. The image which the Court must have is that of the quintessential common man. When the Judge looks at phonetics, the sound which accompanies the pronunciation of the mark is the sound of the mark to an ordinary purchaser bereft of the niceties of language. Structurally and phonetically FOLV falls within that perilous zone where approximation to the mark of the Plaintiffs is close enough to be deceptively similar. It is to my mind, no answer to state that the Plaintiffs intend that the VITE in their mark is to be so pronounced as to rhyme with 'white' while the Defendant intends that the "V" in their mark has to be so pronounced as to rhyme with the 'V' in 'victory' and to then make a distinction between VITE and the V. The ordinary customer goes to a small shop of a Chemist and to him the distinction between FOLVITE on the one hand and FOLV on the other is so thin as to almost be lacking in significance. It may well be that the manner in which the mark of the Plaintiffs is written in Devnagari may make the VITE in the mark resemble 'white'. But every customer in a multi lingual country such as India is not conversant with that script. An average consumer who asks for FOLVITE would fail to gauge the distinction when he is given a strip of tablets of FOLV and that is what matters on the question of deceptive similarity.

23. A large number of authorities have been cited by Learned Counsel appearing for the contesting parities. Once the principle which forms the basis for adjudication is formulated, the outcome of each case necessarily turns on the application of the principle to the facts of that case. The Defendant relied upon a judgment of the Division Bench in Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Limited where the Court held that visually and phonetically, the Page 0426 marks Complamina and Ciplamina were as a matter of first impression not deceptively similar. The judgment of the Supreme Court in F. HoffimannLa Roche (Supra) involved a fact situation where the marks Dropovit and Protovit were held not be deceptively similar. Affidavits were filed before the Supreme Court by the appellants themselves who were aggrieved by the rejection of an application for rectification of the register, that there were as many as 57 trade marks registered with the suffix 'VIT'which denoted vitamin preparations. The Supreme Court held that the marks would have to be considered as a whole and the different prefixes of the two marks belied the claim of deceptive similarity. The prefix 'Dropo'was sufficiently distinguished from the prefix 'Proto'. In the judgment of the Delhi High Court in SBL Ltd. v. Himalaya Drug Co. 1997(17) PTC 540 the word 'LIV'was regarded as a generic abbreviation of 'Liver' so as to afford the Defendant a valid defence in an action for infringement and passing off. The decided cases furnish other instances. Among them is a judgment of the Delhi High Court where a trade mark of a medicinal preparation (Nimulid) is wholly derived from the principal drug used in its manufacture (Nimesulide). (Panacea Biotec Ltd. v. Recon Ltd. . Griffon Laboratories (P) Ltd. v. Indian National Drug Co. P. Ltd. Order dated 18-9-11987 in Suit 399/1985 (Calcutta High Court) was a decision of the Calcutta High Court where both the preparations -Sorbiline and Sorbitone were derived from the drug Sorbitol used in the preparation. Reference may also be made to the decisions in Kalindi Medicure Pvt. Ltd. v. Intas Pharmaceuticals Ltd. 2006(33) PTC 477 (Del) and Ranbaxy Laboratories Ltd. v. Indohemie Health Specialities Pvt. Ltd. 2002(24) PTC 510 (Bom)) Several of these cases turn on the application of the principle to the facts of each case. In certain decisions which were rendered before the decision of the Supreme Court in Cadila, the approach of the Court may now need to be reconsidered in view of the principle of strict scrutiny enunciated in Cadila. For instance, in the Liv 52 case (supra), an important consideration which weighed with the Delhi High Court was that the sales of medicinal preparations were made only by authorised or licensed vendors and a purchaser would normally have a Doctors' prescription, the purchasers continuing to remain in touch with the Doctors. Learned Counsel for the Defendant fairly did not therefore, rely on this part of the reasoning of that decision. The same reasoning forms the basis of the judgment of a Learned Single Judge of the Calcutta High Court in Griffon Laboratories (supra) where the Court held that medicines are either advertised in Special Journals or are prescribed by doctors and the prescriptions are served by registered Chemists. The Calcutta High Court observed that the public does not enter into the picture at all, in the selection of the product for after all it is the doctor who knows what is good for the heart and good for the liver. This line of reasoning is inconsistent with the law laid down by the Supreme Court in Cadila. A Learned Single Judge of this Court held in Schering Corporation v. United Biotech (P) Ltd. Notice of Motion No. 3459/2004 in Suit No. 3419/2004, dated 14-7-2006 that the Defendants'mark 'Netmicin'did not Page 0427 infringe the mark 'Netromycin' of the Plaintiffs or amount to passing off. The Learned Judge was of the view that the Plaintiffs had not been able to establish the distinctiveness of their mark and the words Netmicin and Netromycin were not phonetically similar. There was no possibility of confusion because while the Defendants' product was purchased in bulk by hospitals, the Plaintiffs' product was sold over the counter. Moreover, the Learned Single Judge accepted the claim that there were several other pharmaceutical products being traded in the market, ending with the letters MYCIN, MICIN and CIN. In Bal Pharma Ltd. v. Wockhardt Limited Judgment dated 12-6-2002 in Appeal 498/2002 in Notice of Motion 725/02 in Suit 1305/02 the mark AZIWOK was regarded as distinct from as AZIWIN. The Division Bench accepted the contention of the appellant that various brands of Azithromycin in the tablet and syrup form were being marketed by pharmaceutical Companies and AZI was an abbreviation for the generic name of the drug. There were thirteen other Companies which were using the prefix AZI. It was in these circumstances, that the word AZI was regarded as not being distinctive but as common to the trade. The suffixes WOK and WIN were regarded as dissimilar. The judgment of a Learned Single Judge in Medley Pharmaceuticals Ltd. v. Khandelwal Laboratories Ltd. Judgment dated 27-9-2005 in Notice of Motion 2808/02 in Suit 3323/02 holds that the mark CEFO of the Plaintiff and CEFI of the Defendant used for the manufacture and sale of Cefixime were not deceptively similar. In affirming the view of the Learned Single Judge, the Division Bench in the judgment in appeal (Appeal 1118 of 2005, decided on 22nd December 2005) held that there were cefixme preparations available in the market, using the prefix CEF and sales of those products were in millions of rupees. The finding of the Trial Judge that the Plaintiff had failed to establish the distinctiveness of his mark was, therefore, held not to suffer from any infirmity.