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Sun Pharmaceutical Industries Ltd & ... vs Kinetic Lifescience Opc P Ltd & Anr. on 12 April, 2022
cites
Section 29 in The Trade Marks Act, 1999 [Entire Act]
The Trade Marks Act, 1999
Corn Products Refining Co. vs Shangrila Food Products Ltd. on 8 October, 1959
"7. Let us apply these tests to the facts of the case under our
consideration. It is not disputed before us that the two names
"Amritdhara" and "Lakshman-dhara" are in use in respect of
the same description of goods, namely a medicinal preparation
for the alleviation of various ailments. Such medicinal
preparation will be purchased mostly by people who instead
of going to a doctor wish to purchase a medicine for the
quick alleviation of their suffering, both villagers and
townsfolk, literate as well as illiterate. As we said in Corn
Products Refining Co. v. Skangrila Food Products Ltd. [(1960)
(1) SCR 968] the question has to be approached from the point
of view of a man of average intelligence and imperfect
recollection. To such a man the overall structural and phonetic
similarity-of the two names "Amritdhara" and
"Lakshmandhara" is, in our opinion, likely to deceive or cause
confusion. We must consider the overall similarity of the two
composite words "Amritdhara" and "Lakshmandhara". We
do not think that the learned Judges of the High Court were
right in saying that no Indian would mistake one for the other.
Chandrakant Sahu vs Coal India Limited 47 Wa/48/2018 Indra ... on 10 December, 2019
"39. The test of confusion and deception in order to prove the
case of passing off has been very well discussed in the case of
Laxmikant V. Patel v. Chetanbhai Shah, a judgment delivered
by the Supreme Court, reported in (2002) 3 SCC 65, wherein
the Apex Court while considering a plea of passing off and
grant of ad interim injunction held that a person may sell his
goods or deliver his services under a trading name or style
which, with the passage of time, may acquire a reputation or
goodwill and may become a property to be protected by the
Courts. It was held that a competitor initiating sale of goods or
services in the same name or by imitating that name causes
injury to the business of one who has the property in that
name. It was held that honesty and fair play are and ought to
be the basic policy in the world of business and when a person
adopts or intends to adopt a name which already belongs to
someone else, it results in confusion, has the propensity of
diverting the customers and clients of someone else to himself
and thereby resulting in injury. It was held that the principles
which apply to trade mark are applicable to trade name also.
Relevant para 10 of the aforesaid judgment reads as under:-
Kaviraj Pandit Durga Dutt Sharma vs Navaratna Pharmaceutical ... on 20 October, 1964
32. In a claim for infringement, it is a settled law that the Court is
required to compare the two competing marks, i.e. registered mark of the
Plaintiff and the allegedly infringing mark used by the Defendant, in the
course of trade. Where the said two marks are identical, no further questions
arise as infringement is made out. However, when the two marks are not
identical, Plaintiff would have to establish that the impugned mark so
closely resembles or is deceptively similar that it is likely to deceive or
cause confusion in relation to the goods in respect of which the mark is
registered. The resemblance may be phonetic, visual or in the basic idea of
the Plaintiff's mark. This proposition clearly flows from the judgment of the
Supreme Court in Kaviraj Pandit (supra), relevant part of which is as
follows:-
F. Hoffmann-La Roche & Co. Ltd vs Geoffrey Manners & Co. Pvt. Ltd on 8 September, 1969
In F.Hoffmann-La Roche & Co. Ltd. vs. Geoffrey Manners & Co.
Pvt. Ltd., (1969) 2 SCC 716, the Supreme Court was dealing with the
question as to whether the mark 'Dropovit' was deceptively similar to
'Protovit' within the meaning of Section 2(1)(d) of the Trade and
Merchandise Marks Act, 1958. It was held that the marks must be compared
as a whole. It is not right to take a portion of the word, dissect it and then
hold that a part of the word differs from the competing mark and thus, there
is no sufficient similarity to cause confusion. The true test is whether the
totality of the proposed trademark is such that it is likely to cause deception
or confusion in the mind of the persons accustomed to the existing
trademark.
Hitachi Ltd. vs Ajay Kr. Agarwal And Ors. on 31 March, 1995
39. Another relevant judgment in the context of phonetic similarity is in
the case of M/s. Hitachi Ltd. v. Ajay Kr. Agarwal and Ors., 1995 (2) Arb.
LR 348, wherein Division Bench of this Court was dealing with the question
of similarity between two trademarks 'Hitachi' and 'Hitaish'. Applying the
CS(COMM) 241/2021 Page 24 of 45
This is a digitally signed Judgement.
Cadila Healthcare Limited vs Cadila Pharmaceuticals Limited on 26 March, 2001
61. It is pertinent to note that the products involved in the present case are
health supplements and OTC drugs, which can be purchased without
prescription of a medical practitioner. Hence, the products are primarily
purchased by consumers who would more often than not make informed
decisions on their own. Based upon market research, brand recollection and
the quality maintained by the product, the consumer makes a choice
amongst similar products in the market and, therefore, the trademark
acquires grave significance. Courts have repeatedly affirmed that a lower
threshold for determining confusion would apply in case of OTC medicinal
products, since a lay consumer, lacking knowledge or skill in the field of
medicine, would be unable to offset the doubtful impression created while
purchasing the products with identical or deceptively similar or similar
trademarks. Applying the principles to the present case, a consumer,
intending to purchase the health supplement would be prone to confusion on
account of the phonetic identity in the competing marks of the Plaintiffs and
the Defendants as the product is an OTC and is sold without prescription. It
would be useful in this regard to refer to a passage from the judgment of the
Supreme Court in Cadila Health Care (supra):-
M/S S.M. Dyechem Ltd vs M/S Cadbury (India) Ltd on 9 May, 2000
NEUTRAL CITATION NO: 2022/DHC/001471
Court held that the Court was unable to agree that the principle of phonetic
similarity has to be jettisoned when the manner in which the competing
words are written is different and that the tests followed in S.M. Dyechem
Ltd.(supra) were contrary to the binding precedent of the Supreme Court in
Amritdhara Pharmacy (supra).