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2. The case of the plaintiff is that the plaintiff is a company incorporated under the Indian Companies Act, 1956, in the year 1981, and is engaged in the filed of manufacturing, development and marketing of pharmaceutical and medicinal preparations; and due to large scale advertisement and other innovative promotional schemes and their medicines being of superior quality have acquired reputation in the market medical circle and consumers. It is also alleged that the plaintiff inter alia are manufacturers of anti-inflammatory and analgesic medicines in the form of Diclofenac Sodium and Paracetamol tablets, injections and gel which are sold under the trade DICLOMOL. The said medicine is used for treatment of various diseases like Rheumatoid arthritis, osteoarthrtis, ankylosing spondylitis, cervical spondylitis, inter vertebral disc syndrome and sciatica, non-reticular rheumatic conditions such as fibrosits, myositis, bursitis, lower back pain, soft tissue injuries, painful inflammatory conditions in gynaecology, post-operative and post traumatic inflammation and swelling, pain and inflammation following dental surgery and acute attacks of gout. The plaintiff had adopted this trade mark on 1st September, 1988 and after obtaining approval from the Drugs authorities they launched the sale of the product under this trade mark in the Indian market on 25th July, 1989. Since then they have spent Rs. 92 lacs on publicity and due to wide publicity and their product being of high quality, the medicine has acquired a very good reputation in the market, their trade mark DICLOMOL appears in bold typeface on a coloured strip having a half arrow head at its one end in an original artistic work, that their sales have increased from Rs. 27.63 lacs during the year 1989 to Rs. 346.11 lacs during the year 1994 and the audited figures for subsequent period were not readily available with them when the suit was filed. The plaintiff has also given three instances where the plaintiff had successfully injuncted infringers from passing off their product sold under the said trade mark.

5. Both the parties have relied on a number of case law in support of their contentions, plaintiff claiming that the trade mark of the defendant is identical or deceptively similar whereas learned counsel for the defendant has contended that the two marks are not identical or deceptively similar and otherwise also the plaintiff had taken the trade mark from the generic words Diclofenac Sodium and PARACETAMOL which is basic medicinal product, first 5 letters are from Diclofenac and last three letters are the last three letters of the word PARACETAMOL. This is descriptive of the name of the medicines to which it relates and plaintiff has got exclusive right to use such descriptive marks. He has also contended that the plaintiff is guilty of delay, laches and acquiescence and for these reasons the plaintiff is not entitled to the injunction interim or perpetual.

6. Both the trade marks in question are not registered ones. In a case of action for passing off when the marks of two traders are identical or deceptively similar priority in adoption and use is the determining factor and in order to succeed at this stage plaintiff is required to establish user of its mark prior in point of time than the impugned user of the defendant.

7. The plaintiff has placed on record copy of letter dated 7.1.1989 from the Drugs Controller, U.P., Lucknow addressed to it in reply to their two letters dated 22.9.1988 and 6.10.1988 whereby permission to manufacture inter alia the drug, namely DICLOMOL tablets was granted and this medicinal product was allowed to be added on the existing Drug Manufacturing Licence; the plaintiff has also placed on record copies of invoices showing their sales under this mark since 25.7.1989 photo copies of some advertisements of the product under the Trade Mark DICLOMOL, of the publication in the India Pharmaceutical Guide, 1995, Retail Store Audit and Retail Market report for Pharmaceutical Formulations in India conducted by the Operations Research Group giving technical details of the product, have also been placed on record. This material prima facie shows that the plaintiff had adopted the trade mark DICLOMOL in respect of pharmaceutical and medicinal product "Dielofenac Sodium and Paracetamol" in the form of tables in the year 1988; the sale of the product under the trade mark DICLOMOL was started on 25th July, 1989. The plaintiff claims to have incurred expenditure amounting to Rs. 92 lacs towards publicity of this product and their sales of this product have increased from Rs. 27.63 lacs during the year 1989 to Rs. 346.11 lacs during the year 1994. Prima facie this material shows that the plaintiff is the actual user of the trade mark DICLOMOL since 1989.

"To be an invented word within the meaning of the Act a word must not only be newly coined, in the sense of not being already current in the English language, but must be such as not to convey any meaning, or at any rate, any obvious meaning to ordinary Englishman. It must be a word having no meaning or no obvious meaning until one has been assigned to it."

18. Learned counsel for the defendant has contended that in the mark DICLOMOL prefix DICLO has been taken from DICLOFENAC SODIUM and suffix MOL has been taken from Paracetamol which are basic drugs and as such the mark is a descriptive mark and the plaintiff has no exclusive right for its use.