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1. Is the word 'ENERJASE' would deceptively similar to the word 'ENERGEX'? This is the question posed before us.

2. The appellant, Indo-Pharma Pharmaceutical Works Ltd., having its office at Ahmedabad, who is engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the plaintiff. The respondent, Citadel Fine Pharmaceuticals Ltd., having its office at Chennai, who is also engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the defendant.

4. In the original suit C.S.No. 4 of 1997, the appellant filed two applications, viz., O.A.Nos.4 and 5 of 1997 before the learned Single Judge requesting for the grant of interim reliefs. After hearing the parties, these applications were dismissed by the learned Single Judge by the common order dated 25.4.1997. Hence, these appeals.

5. The case of the plaintiff is this:

This plaintiff is the manufacturer of the infants and invalid food products and the said products are sold under the trade mark 'ENERJEX'. The trade mark 'ENERJEX' is associated with the plaintiff for the past 15 years. The defendant is using the trade mark 'ENERJASE' for manufacturing and marketing a similar product of medicinal preparation which is nothing but an infringement of the plaintiff company's trade mark. The defendant's mark is an imitation of the plaintiff's mark. The same is confusingly and deceptively similar to the trade mark used by the plaintiff. The adoption of the mark 'ENERJASE' by the defendant is neither accidental nor coincidental, but a deliberate act. hence the suit.

27. This averment in the plaint as well as in the affidavit filed by the plaintiff has been specifically denied in the counter filed by the defendant in the following words:

I reiterate that the prefix for both the marks are common to the trade and cannot be a proprietary name. As for the suffix, the same are sufficiently different so as to avoid any confusion in the market. In any event, there are 16 marks with the same prefix and several of them have suffixes which are similar to plaintiff's trade mark which is naturally so considering that the word 'ENERGY' is a commonly used word and would be description of energizing tonics for marketing. It is further submitted that the registration obtained by the applicant in respect of trade mark 'ENERJEX' is in Part-B of the register. This in itself shows that the mark is not per se distinctive as the prefix 'ENERGY/J' is not descriptive of the products manufactured thereunder. It is for this reason that the learned Registrar of Trade Marks has granted a Part-B registration for the plaintiff's 'ENERJEX' and that too for the word per se. I deny that the respondents trade mark is either phonetically or deceptively similar to applicant's trade mark. I deny that use by respondent of trade mark 'ENERJASE' amounts to an infringement of trade mark 'ENERJEX'.

43. The two rival marks 'ENERJEX' and 'ENERJASE' contain the common feature 'ENERJ' which is not only descriptive but also public juries. Therefore, a customer will tend to ignore the common feature and will pay more attention to uncommon features, i.e., 'JEX' and 'JASE'. These two cannot be said to have such phonetic similarity so as to make it objectionable.

44. Let us now refer to some of the judgments which deal with similar words containing both common and uncommon features.

45. The leading case is Roche & Co., v. G. Manners & Co. . The question was whether 'DROPOVIT' and 'PROTOVIT' are deceptively similar. The Apex Court found that the last three letters were common, and in the uncommon part, the first two are consonants, the next is the same vowel 'o' the next is a consonant and the fifth is again a common vowel 'o'. The combined effect was to produce alliteration. 'VIT' is a well known abbreviation used in pharmaceutical trade to denote vitamin preparation. Thus the terminal styllable 'VIT' in the two marks was both descriptive and common to the trade. The Apex Court observed as follows: