1. The Plaintiff has filed the present Suit against the Defendant, inter alia, for a perpetual order and injunction, restraining the Defendant from infringing the registered trademark of the Plaintiff "EVANOVA" and also from passing off their goods/products as those of the Plaintiff by use of the mark "ECONOVA" or any other mark deceptively similar to the Plaintiffs registered mark. By the present Notice of Motion, the Plaintiff has sought a temporary injunction against the Defendant from manufacturing and marketing any medicinal preparations/products by using the mark "ECONOVA".
2. The Plaintiff is engaged in the business of manufacturing and marketing of ayurvedic medicinal and pharmaceutical preparations. The Plaintiff carries on the said business in the name of a Partnership firm M/s. Charak Bhandar since 1949. The original Plaintiff No.1 i.e. Charak Pharmaceuticals (India) Pvt. Ltd. was incorporated in May, 1970. In 1999, the original Plaintiff No.1 applied for registration and got the trademark "EVANOVA" registered in Class 5 of the Fourth Schedule to the Trade Mark Rules, 2002 read with Trade Marks Act, 1999 (hereinafter referred to as œthe Act?) for medicinal and pharmaceutical preparations and also started using the mark "EVANOVA" since 1999.
3. The present Plaintiff“Charak Pharma Pvt. Ltd. was incorporated in the year 2000 and started using the mark "EVANOVA" pursuant to a license agreement dated 12th April, 2002, executed by the original Plaintiff No.1 in favour of the Plaintiff for the use of the trademark. The Plaintiff commenced the sale of the ayurvedic preparation from April, 2002 in the form of capsules for the treatment of menopause.
4. The Defendant is engaged in the business of manufacturing and marketing of medicinal and pharmaceutical preparations in India and abroad. According to the Defendant, sometime in early 2006, the Defendant coined and adopted the mark "ECONOVA" for its new medicinal preparation. The Defendant commenced selling the medicinal preparation from May, 2006 in the form of probiotic capsules for the treatment of bacterial vaginosis.
5. According to the Plaintiff, some time in September, 2006, it came to its knowledge that the Defendant is manufacturing and selling medicinal preparation under the mark "ECONOVA" which in the opinion of the Plaintiff was deceptively similar to the Plaintiffs registered trademark "EVANOVA". The Plaintiff therefore by its notice dated 15th September, 2006, called upon the Defendant to cease and desist from using the trademark "ECONOVA". The Defendant replied to the said notice by its letter dated 27th September, 2006, in which it was stated that the presence of prefix œECO? in the Defendants mark distinguished it phonetically and visually from the Plaintiffs mark "EVANOVA".
6. On 12th June, 2007, the Plaintiff filed the present Suit against the Defendant for infringement of its trademark "EVANOVA" and passing off the Defendants goods as those of the Plaintiff by the Defendants use of the mark "ECONOVA". The Plaintiff also took out the above Notice of Motion and moved an application for adinterim relief. The adinterim relief as prayed was refused on the ground of delay i.e. from the date of knowledge i.e. September, 2006 till the date of filing of the Suit in June, 2007. Paragraph 8 of the adinterim order dated 9th August, 2007 is reproduced hereunder:
œ¦. I am not expressing any opinion on the correctness of the stand of the rival parties on merits but denying the relief of adinterim relief to the Plaintiff on the ground that they have not approached at the earliest opportunity and more particularly for having failed to offer any explanation whatsoever for such long delay?.
7. During the pendency of the Suit, by a Deed of Assignment dated 6th November, 2008, original Plaintiff No. 1 assigned the trademark to the Plaintiff. By a Scheme of Amalgamation approved by this Court on 18th December, 2009, original Plaintiff No.1 merged with the Plaintiff. As per the Scheme of Amalgamation, all properties of original Plaintiff No. 1 vested in the Plaintiff and the Plaintiff was also entitled to continue all legal proceedings.
8. The Defendant had also applied for registration of its mark "ECONOVA" sometime in May, 2006. The Registrar objected to the same citing the Plaintiffs mark as one of the conflicting marks and brought to the notice of the Defendant that the Defendants mark is identical with and deceptively similar to the Plaintiffs mark. It is submitted by the Plaintiff that even after the representation of the Defendant, the Registrar did not waive the objections and only issued an advertisement prior to acceptance clearly suggesting that the Registrar persists with the said objection.
9. On behalf of the Plaintiff, the following contentions were raised:
9.1 The Plaintiff is the registered Proprietor of the mark "EVANOVA". The Defendant is using a deceptively similar mark "ECONOVA" and ought to be restrained. The marks "EVANOVA" and "ECONOVA" are visually and structurally absolutely similar. Both are seven letters words beginning with œE? and ending with œNOVA?. Phonetically also both the marks are similar in a manner which is likely to deceive the consumer. Both the words begin with the letter œE? which has a very emphatic and prominent sound particularly in the manner in which it is pronounced by most Indians. Since both the marks begin with a prominent sound of œE? and end with the common word œNOVA? , there is a likelihood and in any case a possibility of the middle words to be slurred over. The comparison of these marks must be done therefore in the light of the extremely strict test laid down by the Honble Supreme Court in the cases of (i) F. Hoffmann “ La Roche and Co. Ltd. vs. G. Manners and Co. Ltd.(AIR 1970 SC 2062)and (ii) CadilaHealth Care Ltd. vs. Cadila Pharmaceuticals Limited(2001 PTC 541 (SC).
9.2 Relying on the observations made by the Honble Supreme Court in the case of CadilaHealth Care Ltd. (supra), it is pointed out on behalf of the Plaintiff that both medicinal preparations/products deal with gynaecological issues. The Plaintiffs product is an ayurvedic preparation in the form of capsules for treatment of menopause. On the other hand, the Defendants product is entirely different and is a medicine for treatment of bacterial vaginosis. If as a result of the confusion the wrong drug is administered, it would lead to disastrous consequences.
9.3 In various judgments of this Court, the strict test laid down for pharmaceutical products by the Honble Supreme Court of India in the Cadilascase (supra) has been applied and accordingly the following rival marks were found to be deceptively similar and injunctions were granted in the respective cases:
(i) 'Spoxin' and 'Supaxin' in Medley Pharmaceuticals Limited vs. Khandewal Laboratories Ltd.(2005 (31) PTC 515 (Bom));
(ii) 'RB Tone' and 'HB Tone' in CadilaPharmaceuticals Ltd. vs. Sami Khatib of Mumbai and another(2011 (3) Bom. C.R. 587);
(iii) 'Folvite' and 'Folv' in Wyeth Holdings Corporation and Anr. vs. Burnet Pharmaceuticals Pvt. Ltd.(2008 (36) PTC 478 (Bom));
(iv) 'Parkitane' and œPacitane' in Sun Pharmaceuticals Industries Ltd. vs. Wyeth Holding Corporation(2005 (30) PTC 14 (Bom) (DB));
(v) 'PVdine' and 'Piodin' in BDH Industries Ltd. vs. Croydon Chemical Works Pvt. Ltd., Bombay and Anr.(2002 (25) PTC 351 (Bom));
(vi) 'Crofen' and 'Brufen' in Boots Company Pic, England and Anr. vs. Registrar of Trade Marks, Mumbai and Anr.(2002 (25) PTC 784);
(vii) 'Betaloc' and 'Betalong' in AstraIDLLtd. vs. TTK Pharma Ltd.(Air 1992 Bombay 35 (1));
(viii) 'Pantodac' and 'Pantobloc' in CadilaHealthcare Ltd. vs. Aureate Healthcare Pvt. Ltd. and Anr.(2012 (51) PTC 585 (Del);
(ix) 'Tocillin' and 'Celin' in GlaxoGroup Ltd. and Anr. vs. Neon Laboratories Ltd.(2004 (29) PTC 88 (Bom)).
10. The following are the contentions raised on behalf of the Defendant:
10.1 The mark "ECONOVA" was coined by the Defendant in early 2006 for a new medicinal preparation which is a patented product, meant for the treatment of Bacterial Vaginosis that is a condition which disturbs the Natural Vaginal Ecosystem (Vaginal Microbial Flora). The prefix œECO? is taken out from the word œEcosystem? and the suffix œNOVA? was added which means œNovel or œNew. 10.2 The adoption of the mark by the Defendant is honest and bona fide. The Defendant had upon coining the mark, applied for and obtained official search report from the Registrar of Trademarks, Mumbai, to ascertain the availability of the said mark. In the Search Report, the Registrar did not cite the Plaintiffs mark as a conflicting one as against the Defendants mark. Also the Defendant had not come across any existing similar mark when it made enquiries in the market to ascertain if any same/similar mark was already in existence.
10.3 Since May, 2006, the Defendant has been extensively using the trademark "ECONOVA" in relation to the medicinal and pharmaceutical preparation (which is manufactured by M/s. Tablets (India) Limited being the exclusive licensees of the product in India) and enjoys immense reputation and goodwill of its own as can be seen from the sales figures provided by the Defendant.
10.4 The Defendant has spent monies on the promotional activities.
10.5 The mark of the Defendant that is "ECONOVA" is distinct and distinguishable from the mark of the Plaintiff that is "EVANOVA". In the case of the Defendant, the letters œC? and œO? control the sound of the Defendant's mark, whereas in the case of the Plaintiff, the letters œV? and œA? control the sound of the Plaintiff's mark. The Court should turn to the principles laid down by the Honble Supreme Court in its judgment in Cadilascase (supra) and the decision of this Court in Burroughs Welcome (I) Ltd. vs. American Home Products and another (2002 (25) PTC 747 (Bom.) for comparing the two rival marks and arriving at a conclusion as to whether the two rival marks are deceptively similar or not. In both the judgments it is held that the main test to be applied to such rival marks is the phonetic test.
10.6 The suffix œNOVA in the rival marks is common both on the Register as well as in the trade in actual use. In support of its contention, the Defendant has relied on the lists of products annexed and marked Exhibits H, I and K to its affidavit in reply.
10.7 Without prejudice to the afore-stated contentions, even if this Court holds that the marks are similar, there is no likelihood of any confusion/deception between the two marks in question, since there is a widespread use of the prefix/suffix œNOVA by several traders in the pharmaceutical trade and the purchasing members will tend to ignore and/or gloss over and/or give less importance to the common features and will always pay more regard to the uncommon part. The Defendant has set out the differences in the salient features between the two products qua its use, packaging, display on cartons, catch cover on blister pack and price and has submitted that this added material is sufficient to distinguish the two products and rules out the question of passing off. In support, the Defendant has relied on the decision of the Hon'ble Supreme Court in the case of KavirajPandit Durga Dutt Sharma vs. Navaratna Pharmaceutical (AIR 1965 SC 980). The Defendant has also submitted that though the Defendant has been selling its products since May, 2006, however, till date the Defendant has not received any complaint of confusion or deception between its products and that of the Plaintiff.
10.8 The Defendant has relied on the decisions in which the Courts have held that the following rival marks are not similar. The same are as under:
(i) 'NOVIGAN' vs. 'NOVALGIN' in AnjiReddy, Hyderabad vs. Hoechst Aktiengesellschaft (2007 (34) PTC 585 (Mad.) (DB));
(ii) 'CIPLAMINA' and 'COMPLAMINA' in M/s. Johann A. Wulfing vs. Chemical Industrial and Pharmaceuticals Laboratories Ltd. and Anr.(AIR 1984 BOM 281);
(iii) 'AZIWIN' and 'AZIWOK' in Bal Pharma Ltd. vs. Wockhardt Ltd. and Ors.(Appeal No. 498 of 2002 in Suit No. 1305 of 2002);
(iv) 'DROPOVIT' and 'PROTOVIT' in F. HoffmannLa Roche and Co. Ltd. vs. Geoffrey Manners and Co. Pvt. Ltd. (supra);
(v) 'ZANOCIN' and 'ZENOXIM' in Ranbaxy Laboratories Ltd. vs. Indchemie Health Specialities Pvt. Ltd.(2002 (24) PTC 510 (Bom));
(vi) 'NETMICIN' and 'NETROMYCIN' in Schering Corporation and Anr. vs. United Biotech Pvt. Ltd. and Anr.(Appeal NO. 548 of 2008 (DB) (Unreported judgment));
(vii) 'LIV52' and 'LIVT' in SBL Limited vs. Himalaya Drug Company (AIR 1988 Delhi 126) and (viii) 'MICRONIX' and 'MICROTEL' in J.R. Kapor vs. Micronix India (1994 (Suppl.) (3) SCC 215).
10.9 The Defendant has also relied on a passage from Kerly'sLaw of Trade Marks and Trade Names, Page 416, Chapter 17“20 : Importance of First Syllable, wherein it is stated that it has been accepted in several reported cases that the First Syllable of a word mark is generally the most important. It has been observed in many cases that there is a tendency of persons using the English language to slur the terminations of words. The Defendant has also relied on the ORG Report and in support of its contention that the said Report is good evidence, the Defendant has relied on the decision in Medley Pharmaceuticals Ltd. vs. Khandelwal Laboratories Ltd. (supra).
10.10 In the light of the above submissions and also having regard to the fact that the mark of Defendant is in use since May, 2006, without a single reported incidence of confusion and/or deception, it is submitted on behalf of the Defendant that the Notice of Motion deserves to be dismissed. The Defendant has also contended that since the Plaintiff has not got interim relief since the date of filing of the Suit, no interim relief ought to be granted. The Defendant has submitted that the balance of convenience also supports the Defendant at this interim stage. It is submitted that the hearing of the Suit has progressed, Written Statement has been filed, issues have been framed and the Suit is at the stage of admission/denial of documents and hence there is no warrant for grant of any interim reliefs.
11. In rejoinder, the Plaintiff has submitted as follows:
11.1 The contention of the Defendant that since there is a widespread use of the prefix /suffix "NOVA" by several traders in the pharmaceutical trade, the purchasing members will tend to ignore and/or gloss over and/or give less importance to the common feature and will always pay more regard to the uncommon part is clearly fallacious. The Plaintiff has relied on the decisions in Corn Products Refining Co. vs. Shangrila Food Products Ltd.(AIR 1960 SC 142), PidiliteIndustries vs. S.M. Associates and Ors. (2004 (28) PTC 193 (Bom)), and Wyeth Holdings Corporation and Anr. vs. Burnet Pharmaceuticals (Pvt.) Ltd. (supra) wherein it is held that the evidence of extensive sales must be placed as on the date when the cause of action arose that is in 2006. However, the ORGIMS certificate relied upon by the Defendant only furnishes sales figures for October, 2009. It is submitted that in view thereof, Exhibits-H, I and K to the affidavit in reply of Defendant do not assist the Defendant. It is submitted that the reliance on the observations made in the judgment of the Hon'ble Madras High Court in the case of AnjiReddy, Hyderabad-1 vs. Hoechst (supra) that the Court had come across many other pharmaceutical preparations which starts with the letters œNOVA? and œNOV? is clearly erroneous. Before the Hon'ble Madras High Court, the contentions based on the judgment of the Hon'ble Supreme Court in the case of Corn Products (supra) and the other judgments were not even raised. In any event, this argument is not available to the Defendant since the Defendant itself had applied for registration of the mark "ECONOVA".
11.2 That the reliance placed by the Defendant on additional material such as packaging material, etc. to contend that there was no likelihood of confusion completely overlooks the fact that the present Suit is not merely for passing off but also for infringement. Relying on the decision of this Court in Medley Pharmaceuticals Ltd. vs. Khandelwal Laboratories Ltd. (supra), it is submitted that once the mark is identical or deceptively similar, the other factors viz. the packing being different, the number of tablets contained in the competing package is not the same, prices are not identical and/or the goods being sold on doctor's prescription, are altogether irrelevant and immaterial in an infringement action.
11.3 The contention of the Defendant that the adoption of the mark by the Defendant is honest and bona fide does not inspire confidence. In any event, such an explanation does not avoid any possibility of confusion. It is submitted that this Court in the case of CadilaPharmaceuticals Ltd. vs. Sami Khatib of Mumbai and another (supra) has observed that while comparing the marks, the Court does not go into the etymological meaning of the rival words/marks. The Plaintiff has also relied on paragraph 24.57 from Law of Trade Marks and Passing Off by P. Narayan wherein it has been observed that honest adoption does not justify continued user.
11.4 As regards the contention of the Defendant that since the Plaintiff has not got interim relief since the date of filing of the Suit, no interim relief ought to be granted, it is submitted on behalf of the Plaintiff that adinterim reliefs were not granted on the ground of delay of just one year in the initiation of court proceedings. Mere delay in initiation of the proceedings would not disentitle the Plaintiff to interim relief. In any event the Defendant has not pressed this argument at the final hearing of the Notice of Motion.
11.5 With regard to the contention of the Defendant that the Registrar being an expert in the field has advertised the mark, it is submitted on behalf of the Plaintiff that the said contention is clearly on a misreading of the advertisement and the provisions of the Act. After the Defendant applied for the registration of the mark, the Registrar after evaluation of the marks cited the Plaintiff's mark as identical with and deceptively similar to the Defendant's mark. The Defendant had filed its representation before the Registrar. However, the Registrar has advertised the mark prior to acceptance as per the proviso to Section 20 of the Act. Thus the advertisement before acceptance does not in any manner mean that the Registrar has waived his objections. The Plaintiff has also distinguished the judgments cited on behalf of the Defendant. The Plaintiff submitted that the Notice of Motion be allowed as prayed.
12. I have considered the submissions advanced on behalf of the parties and the case laws cited by them. The first issue which needs to be considered is as to whether the Defendant's mark "ECONOVA" is deceptively similar to the Plaintiff's mark "EVANOVA".
12.1 The Hon'ble Supreme Court in the case of F. Hoffmann“La Roche and Co. vs. G. Manners and Co. (supra) has laid down the following tests to determine whether a mark is deceptively similar to another mark:
œThe marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade marks is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.?
In the above case, the Honble Supreme Court cited with approval the following test formulated by Lord Parker in PianotistCo. Ltds application ((1906) 23 RPC 774)
œYou must take the two words. You must judge of them, both by their look and their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owner of the marks. By considering all those circumstances, you come to the conclusion that there will be confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you may refuse the registration in that case.?
13. In the case of CadilaHealth Care Ltd. vs. Cadila Pharmaceuticals Limited (supra), the Hon'ble Supreme Court has set out the test to be applied while comparing two marks. Particularly in the context of pharmaceutical preparations, the Court acknowledging the ground realities in India laid down that stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product with another by the consumer since it may have disastrous consequences. The Court held as under:
"18. We are unable to agree with the aforesaid observations in Dye-chem case (supra). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of passing-off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd., case (supra), Corn Products Refining Co. case, (supra), Amritdhara Pharmacy case (supra), Durga Dutt Sharma case (supra) and HoffmannLa Roche and Co. Ltd. Case (supra).
19. With respect, we are 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 the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdhara case (supra) where the phonetic similarity was applied by judging the two competing marks.
These observations appear to us to be contrary to the decision of this Court in Amrutdhara case (supra) where it was observed that the products will be purchased by both villagers and townsfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into the question of comparable strength, the decision on merits in Dye-chem case (supra) does not, in our opinion, lay down correct law and we hold accordingly.
25. The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant's drug, of which passing-off is alleged, is meant for curing the same ailment as the Plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serous health problems.
26. It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provision for mistake since even a possibility of mistake may prove to be fatal.
32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.
33¦.. In country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people known English then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the Plaintiff's goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same.?
14. In KavirajPandit Durga Dutt Sharma vs. Navratna Pharmaceuticals Laboratories (supra), the Hon'ble Supreme Court has set out extensively the test to be applied while comparing two marks as under:
œ28. When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade,, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.?
15. The rival marks of the Plaintiff and the Defendant when placed side by side are as under:
"EVANOVA" "ECONOVA"
The Defendant has submitted that the mark of the Defendant is distinct and different from that of the Plaintiff and there is no similarity whatsoever in the rival marks. According to the Defendant, the syllable œCO? controls the sound of its mark "ECONOVA" while the syllable œVA? controls the sound of the Plaintiff's mark "EVANOVA". The Defendant has emphasized that the two rival marks are phonetically distinct and hence dissimilar and distinguishable. The Defendant has also submitted that since the letter "E" was followed by syllable 'CO' the sound of 'CO' being very emphatic and prominent, there was no likelihood of the same being slurred over.
16. The Plaintiff has denied and disputed the afore-stated contentions of the Defendant and has submitted that applying the aforesaid test and considering the Defendant's mark as a whole, it is apparent that the Defendant's mark is deceptively similar to the Plaintiff's mark. From a look at the afore-stated rival marks which are placed side by side, it is clear that both the marks are similar, visually and structurally. Both are seven letters words beginning with œE? and ending with œNOVA?. As correctly submitted by the Plaintiff, visually a man of average intelligence and imperfect recollection would have to really strain to identify the differences. Phonetically also both the marks are similar in a manner which is likely to deceive the consumer. Both the words begin with the letter œE? which has a very emphatic and prominent sound particularly in the manner in which it is pronounced by most Indians. The first syllable in both the marks being œE?; it is incorrect on the part of the Defendant to contend that the first syllables are œEVA? and œECO?. Since both the marks begin with the prominent sound of œE? and end with the common word œNOVA?, there is a great likelihood and in any case a possibility of the middle words to be slurred over.
17. The contention of the Defendant relying upon the passage from Kerly's Law of Trade Marks that the tendency of a person who is using the English language is to slur the termination of words would not be applicable in the present case. However, this cannot be accepted as an absolute rule and each case would have to be considered considering the marks. It was held by this Court in the case of GlaxoGroup Ltd. and Anr. vs. Neon Laboratories Ltd. (supra) (paragraph 24) that the effect of a prefix would have to be decided depending on the nature of a product and the nature of the prefix. Despite the addition of a prefix, the Court held the marks 'Tocillin' to be deceptively similar to the mark 'Celin'.
18. In fact, in one of the judgments of this Court which has been relied upon by the Defendant in the case of Burroughs Wellcome (I) Ltd. vs. American Home Products and Anr. (supra) this Court has observed in paragraph 6 that "Many Indians whilst speaking English or Indian words emphasis the suffix even more than prefix". In the present case, the marks not only terminate with the words "NOVA" but also begin with an extremely emphatic and prominent sound of "E" in both case. When the words begin with the same words and also end with a similarly strong words, the likelihood of confusion is extremely high. In this context, the judgment of this Court in the case of CharakPharmaceuticals vs. M.J. Exports Private Limited (DB) (1993 (13) PTC 309 (Bom) (D.B.) is relevant where this Court while considering two marks "MJ TONE" and "M2 TONE" noted that where the beginning and ending of two marks is similar and the only difference is the middle letters, there is every likelihood of deception or confusion. The Court held that it is not permissible to make a meticulous comparison of the words letter by letter and syllable by syllable.
19. It was also contended by the Defendant that since the letter "E" was followed by the syllable 'CO' and the sound of 'CO' being very emphatic and prominent, there was no likelihood of the same being slurred over. In this regard, reliance was placed by the Defendant on the judgment of the Hon'ble Supreme Court in the case of M/s. Johanna A Wulfing vs. Chemical Industrial and Pharmaceutical Laboratories Limited and another (supra) where the Court was considering the marks 'Complamina' and 'Ciplamina'. The reliance on the said judgment is misplaced. In the said judgment, the Hon'ble Supreme Court was considering a situation where both the words started with a distinctly separate pronunciation ' Complamina' started with the pronunciation 'K' whereas 'Ciplamina' commenced with the pronunciation 'C'. In the present case, both the marks start with a distinct and same sound of "E" which is pronounced in an emphatic manner in India. As regards the use of the syllable "CO" in between the words, the Hon'ble Supreme Court in the case of Corn Products (supra) while considering an identical situation in a case where two marks 'Gluvita' and 'Glucovita' held that the mere presence of the syllable 'CO' in between would not make a difference. In paragraph 16 of the said judgment, the Hon'ble Supreme Court approved the finding of the Deputy Registrar whereby, he rejected the contention that the syllable 'CO' in the mark being emphatic was not likely to be slurred over and held that the syllable 'CO' would not prevent any confusion between the two marks or any person being deceived by use of the same.
20. The Plaintiff is correct in its submission that while considering the aspect of deceptive similarity, the Court would have to bear in mind that these products will be purchased by both villages and townsfolk, literate as well as illiterate. The Hon'ble Supreme Court has acknowledged in its decision in the case of CadilaHealth Care (supra) that there is a large section of population in India which is illiterate and only a small fraction knows English. While examining cases of pharmaceutical preparations and deceptive similarities in their context, the ground realities in India cannot be overlooked and what has to be kept in mind is the purchaser of the goods in India who has absolutely no knowledge of the English language and to whom different words with slight difference in spellings may sound phonetically similar. Many patients may be elderly, infirm or illiterate and may not be in a position to differentiate between the medicine prescribed and bought and which is ultimately handed over to them. In the present case, the pharmaceutical preparations relate to gynecological issues. Considering the ground reality of a high rate of illiteracy amongst women in India and more particularly in the villages, there is an extremely strong likelihood and in any case a possibility of confusion between the rival marks.
21. In fact, the Hon'ble Supreme Court has even acknowledged the reality in India, observing that physicians and pharmacists are also human beings and as such even they are subject to human frailties. Very often, many prescriptions are made via telephone to the pharmacist and others are handwritten and frequently handwriting is not legible. It is further acknowledged that œ....These facts enhance the chances of confusion or mistake by the pharmacist in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced?. In the present case also considering the two marks, there is an extremely strong likelihood that while writing a prescription, the two words in the middle may not be easily decipherable and thus resulting in confusion.
22. In BDH Industries Ltd. vs. Croydon Chemical Works Pvt. Ltd., Bombay and another (supra), the Court while considering the marks 'PVDine' and 'Piodin' found both of them deceptively similar. This Court held as under:
"8. Coming to the marks in question, namely "PVDINE" and "PIODIN" both consist of six letters and begin with a common syllable "P". The suffixes "DINE" and "DIN" in these two marks are almost similar except the fact that suffix in the mark "PVDINE" consists of 4 letters where as the suffix in the mark "PIODIN" consists of three letters. However, so far as the phonetic test is concerned, there is not much difference in the pronunciation of these two suffixes. The prefix in "PVDINE" consists of two letters "PV" whereas the prefix in the mark "PIODIN" consists of three letters "PIO". However, there is not much difference in the pronouncement of the same. Thus a fast or faint utterance of both the marks is very much likely to make a confusion that they are one and the same. It is a common knowledge that in our country English is not a mother tongue and, therefore, pronunciations are different from person to persons. For instance some people pronounce "school" as "Eschool". Para as "Pera", Bank and Baink, Report as Repot and so on. Therefore, it is not unlikely that the mark "PVDINE" is likely to be pronounced as "PIODIN". This is not a hypothetical possibility or probability but a practical reality which cannot be ignored."
23. In Boots Company Plc, England and Anr. Vs. Registrar of Trade Marks, Mumbai and Anr. (supra), the Court was considering the rival marks "Brufen" and "Crofen". Despite one of the marks starting with the sound 'K', the Court found the marks to be deceptively similar. The Court observed as under:
"12 ¦. Applying these 3 tests, I am of the opinion that the mark applied for i.e. "CROFEN" is deceptively similar to the registered trade mark of the petitioner i.e. "BRUFEN". The words "BRUFEN" and 'CROFEN' both are six lettered words having common suffix 'FEN'. The prefixes in both these words consist of 3 letters one of which i.e. 'R' is common. The same is preceded by different syllable and followed by different vowels. Visually there is some dissimilarity in both the prefixes and phonetically also there is dissimilarity, since the first letters of both these words are different but the vowels 'u' and 'o' which follow the letter 'R' are apt to be slurred over. The hurried and fast utterance of the word 'CROFEN' may sound as 'BRUFEN', while that of 'CROFEN' as 'BRUFEN'.
Therefore, it is not unlikely that the word "CROFEN" when pronounced hurriedly or fastly may slur over and pass as 'BRUFEN' and vice-versa. I cannot say whether this is a possibility of probability but it cannot be ignored that it is a fact which is likely to occur. The question which therefore, arises is as to what is the test for assessing whether there is deceptive similarity or not in the two words of mark."
23.1 Applying the aforesaid tests and considering the Plaintiff's and Defendant's mark as a whole, and for the reasons set out hereinabove, I am prima facie satisfied that the Defendant's mark "ECONOVA" is deceptively similar to the Plaintiff's mark "EVANOVA". In fact, the Plaintiff's product is an ayurvedic preparation in the form of capsules for treatment of menopause. On the other hand, the Defendant's product is entirely different and is a medicine for treatment of bacterial vaginosis. If, as a result of the confusion, the wrong drug is administered, it would lead to disastrous consequences. The Hon'ble Supreme Court while noting this aspect has clearly held that when the drugs have marked differences in their compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. In the words of the Hon'ble Supreme Court, "Public interest would support lesser degree of proof showing confusing similarity in the case of trade marks in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient".
24. The Defendant has contended that if this Court holds that the marks are similar, then the Defendant, without prejudice to its contention that the marks are not similar, could submit that in view of the fact that there is a widespread use of the prefix/suffix œNOVA? by several traders in the pharmaceutical industry, the purchasing members will tend to ignore and/or gloss over and/or give less importance to the common feature and will always pay more regard to the uncommon part. It is contended that the consumers are therefore discerning in distinguishing the same. In the course of arguments, it was sought to be contended that this is not an argument of 'common to trade' but of the ability of a consumer to distinguish in the light of the availability of larger number of marks incorporating "NOVA".
24.1 The aforesaid contention is clearly fallacious. The Hon'ble Supreme Court in the case of Corn Products Refining Co., vs. Shangrila Food Products Ltd. (supra), considered an absolutely identical contention by extracting a passage from In Re. Harrods' Application. Following the said passage which was extracted in paragraph 14 of the judgment, in paragraph 15 it was held by the Hon'ble Supreme Court that the series of marks containing the common elements can only assist the defendant when these marks are in extensive use in the market. The onus of proving such user is of course on the person, who wants to rely on the marks. The Hon'ble Supreme Court further held that it is possible that the mark may have been registered but not used and therefore it is not possible to draw any inference as to the user from the presence of the mark on the register.
24.2 The judgment of the Hon'ble Supreme Court in the case of Corn Products (supra) had been followed and applied by this Hon'ble Court in various matters relating to infringement and passing off. In the case of PidiliteIndustries vs. S.M. Associates and Ors. (supra), this Court in paragraph 58 held that it is not enough to prove that the marks are in use but the burden is to establish that the same is in "extensive use".
24.3 In the case of Wyeth Holdings Corporation and Anr vs. Burnet Pharmaceuticals (Pvt. Ltd.) (supra), this Court while considering the judgment of the Hon'ble Supreme Court in the case of Corn Products (supra) held that the evidence of extensive sales must be placed as on the date when the cause of action arose. This Court held that the relevant date for determining whether the conduct of the Defendant amounts to passing off is when the conduct commenced and as such, the material ought to have been produced of that period. In the present case, the cause of action arose in 2006 when the Defendant admittedly adopted their mark and started using the same.
24.4 The basic requirement therefore of agitating the contention as done by the Defendant is to present evidence of extensive sales of the other marks relied upon and that too of the period when the Defendant commenced using its mark. In the present case, the Defendant has grossly failed to bring such material before this Court. Furthermore, the mere presence of certain other marks containing "NOVA" would not be sufficient for the Plaintiff if the said part has been used in other marks in a completely distinct and different manner by which they are clearly distinguishable.
24.5 In support of the contention that there is a widespread use of the prefix/suffix œNOVA? by several traders in the pharmaceutical industry, the Defendant has placed before this Court the following material:
(i) At Exhibit 'H' page 117 of the affidavit in reply, is a list of marks including marks which are registered, applied for, abandoned and withdrawn before the Registrar of Trademarks. The said material is completely immaterial and does not fulfill the requirements as set out hereinabove. As set out in the judgment of the Hon'ble Supreme Court in the case of Corn Products (supra), even if a mark is in the register, it is not permissible to draw any inference as regards its use from the same. The production of records of the Registrar therefore is completely irrelevant. In any case, the marks which are enlisted appear to be distinct and different from the subject mark in the present case.
(ii) At Exhibit 'I' page 166 to the affidavit in reply, are list of marks having prefix /suffix "NOVA" as extracted from medical trade journal. Once again, the same has no figures of the sale of any of those marks. In any case, from a bare perusal of the said marks, it appears that the other marks are distinct and different from the Plaintiff's mark. In any case, the extracts of the various medical journals which are produced clearly indicate that the same relate to October 2009 and therefore, do not satisfy the requirement as laid down by this Court in the case of Wyeth Holdings Corporation and Anr. (supra), namely that evidence of extensive sales must be of the period when the cause of action arose.
(iii) At Exhibit 'K' on page 276 of the affidavit in reply, the Defendant has produced a certificate from ORG IMS Research Private Limited, to furnish the sales figures of certain pharmaceutical products with "NOVA" as a prefix/suffix. The said certificate furnishes sales figures of October 2009 much after the date when the cause of action arose in 2006. Thus, the condition as laid down by this Court in the case of Wyeth Holdings Corporation and Anr. (supra) that evidence of extensive sales must be of the period when the cause of action arose, is not fulfilled and complied with. The said sales figures are therefore irrelevant. The said statement lists out various items. Most items disclose nil sales. Most of the marks in which some sale is disclosed are primarily with "NOVA" as a prefix. The primary sales are for products such as "NOVALGIN", "NOVAMAX", "NOVACLAV" which use "NOVA" as a prefix. By no stretch of reasoning, the presence of such marks in the market would enable a consumer to discern and distinguish between "EVANOVA" and "ECONOVA". Even some of the marks with "NOVA" as suffix are ex-facie distinguishable and would not in any manner result in the purchasing members to ignore or gloss over "NOVA" in the present two marks. Though the Defendant submitted that on the basis of sales of 2009 the court should presume that there were extensive sales in 2006, the Court cannot be asked to presume what were the sales figures of 2006. There cannot be any evidence by way of conjectures. Sales of products vary from time to time and year to year depending on various other commercial factors. The Defendant also sought to contend that since the figures are in 0.0 crores, there could be cases where the sales were lesser than Rs.1 lakh. The said contention is hypothetical. In any case, such minuscule sales would hardly fulfill the requirements of extensive sales. It was also contended that since the certificate did not cover the sales to hospitals, institutions and dispensing doctors, the Court may presume that there would be further sales to such institutions. The Defendant cannot require the Court to draw presumptions when the Defendant has failed to produce the required evidence. The Defendant has also not explained that when they could get the sales figures of 2009 ORG IMS, why the figures of 2006 could not be obtained.
24.6 Being cognizant of their burden to bring evidence of extensive sales for the year 2006, the Defendant placed reliance on the judgment of Hon'ble Madras High Court in the case of AnjiReddy, Hyderabad1 vs. Hoechst Aktiengesellschaft (supra), where the Hon'ble Court while considering the rival marks "NOVIGAN" vs. "NOVALGIN" observed that the Court had come across many other pharmaceutical preparations which start with the letters "NOVA" and "NOV". It was contended by the Defendant that the said judgment was of 2006, the said observations should be treated as fulfilling the requirements set out in the aforesaid judgments. In my view, the said contention is clearly erroneous. Before the Hon'ble Madras High Court the contention based on the judgment of the Hon'ble Supreme Court in the case of Corn Products (supra) and the other judgments was not even raised. The Hon'ble Court had therefore no occasion to consider the compliance of the requirements in the said judgments. Further, the Hon'ble Madras High Court merely stated that there were other products in the market. The law as set out hereinabove is not merely to show presence in the market but to establish extensive sales. In any case, the observations of the Hon'ble Madras High Court are that there are products beginning with the word "NOVA" and not "NOVA" as a suffix. As submitted by the Plaintiff, the two situations are not at all comparable and certainly do not enable the customers to discern the differences between the rival marks in the present case.
Further, the contention of the Defendant that the presence of various other marks would enable a customer to discern between the two rival marks is not available to the Defendant, since the Defendant itself has applied for registration of the mark "ECONOVA". In various cases of infringement and passing off, this Court has held that once a party has applied for registration of a mark, it is not open to that party to contend that there are various other products identical to or similar to the said mark or any part thereof. This Court has clearly held so in the case of Ultra Tech Cement Limited vs. Alaknanda Cement Pvt. Ltd.(2011 (5) Bom.C.R. 588 (paragraph 31).
25. It was contended by the Defendant relying on the packaging etc., of rival products that since there was difference in the same, there was no likelihood of deception. The said argument completely overlooks the fact that the present Suit is one not merely of passing off but also of infringement. The Plaintiff's mark is a coined phrase and the Plaintiff has an absolute statutory right to use the Plaintiff's mark to the exclusion of all the others. In these circumstances, once the Defendant's mark is found to be deceptively similar to the Plaintiff's mark, all other factors relied upon by the Defendant completely pale into insignificance. Further, it has been clearly held by this Court in Medley Pharmaceuticals Ltd. vs. Khandelwal Laboratories Ltd. (supra), in paragraph 16 that "Once the mark is identical or deceptively similar, the other factors viz. the packing being different, the number of tablets contained in the competing package is not the same, prices are not identical and /or the goods being sold on doctors' prescription are altogether are irrelevant and immaterial". In any case, as held by the Hon'ble Supreme Court in the case of Cadila(supra), very often, the drugs are ordered on telephone and depending on the doctor's handwritten prescription. A person who goes to buy the drug for the first time would not know what the price or packaging of the one drug shall be as distinguished to the other.
26. The Defendant has contended in its affidavit in reply that the mark "ECONOVA" was derived from "Restoration of the disturbed vaginal ECO-system using novel and revolutionary treatment" by taking the prefix œECO? from the word Ecosystem and the suffix "NOVA" was added which means "Novel" or "New? and that the said adoption was honest and bona-fide. Though the explanation given does not inspire much confidence, in any case, such an explanation does not avoid any possibility of confusion. In the case of CadilaPharmaceuticals Ltd. vs. Sami Khatib of Mumbai and another (supra), a Division Bench of this Court in this context observed that while comparing marks, the Court does not go into the etymological meaning of the rival words/marks.
26.1 The Defendant has contended that prior to adopting the mark, the Defendant took search in the office of the Registrar of Trade Marks and that the Plaintiff's mark was not cited as a conflicting mark. The Defendant therefore contends that the use of the mark by the Defendant was bona-fide. Prior to the use of the mark by the Defendant, the Defendant had applied for registration of the said mark and in the process, on 23rd May 2006, the Plaintiff's mark was cited by the Registrar as a mark identical with or deceptively similar to the Defendant's mark. Thus, despite being aware of the Plaintiff's registered mark, the Defendant proceeded to use the impugned mark.
26.2 In any case, once the court in an infringement action finds that the marks are deceptively similar, the honesty of adoption is completely irrelevant.
26.3 Furthermore, in this regard, reliance is placed to a passage from Law of Trade Marks and Passing Off by P. Narayan, paragraph 24.57 wherein it has been observed that honest adoption does not justify continued user. The same is reproduced hereunder:
"24.57. Honest adoption does not justify continue use "Even if it were made out that the defendants had originally adopted a mark honestly and innocently, either in ignorance of the existence of the Plaintiff's mark, or in the belief that their mark was so different from that of the Plaintiff as not to be calculated t mislead an ordinary purchaser, their continuing to use the mark after they become aware that their use of it did cause their goods to be mistaken for the goods of the Plaintiff, would be not less than fraudulent in the eye of the court than if they had originally begun to use it with a fraudulent intent. The defendants must bear in mind that the original honesty of intention does not protect the continued user, if the user is found practically to have the result of deceiving, or is calculated to deceive purchasers, because it is very easy for manufacturers to avoid any possibility of misleading purchasers if they are minded to avoid it."
27. The Defendant also sought to contend that though the Registrar had initially cited the Plaintiff's mark as a conflicting mark under Section 11 of the Act as being deceptively similar to that of the Plaintiff's mark, subsequently the Registrar had advertised the Defendant's mark. It was sought to be contended that thus the expert in the field does not any longer find the marks deceptively similar. The said contention is clearly on a misreading of the advertisement and the provisions of the Act. After the Defendant applied for the registration of the mark, the Registrar after evaluation of the marks cited the Plaintiff's mark as identical with and deceptively similar to the Defendant's mark. The Defendant filed its representation before the Registrar. However, the Registrar has advertised the mark prior to acceptance as per proviso to section 20 of the Act. Under the Trade Mark Act, 1999, the Registrar may cause an application to be advertised prior to acceptance, if it relates to a trade mark to which sub section (1) of Section 9 and sub section (1) and (2) of Section 11 apply. In the present case, the Registrar had cited the Plaintiff's mark as a ground of refusal to register the Defendant's mark under Section 9 (2) and 11 (1) of the Act. Under section 9 (2), the Registrar may decline to register a mark if it is likely to deceive the public or cause confusion. Under section 11, a trade mark shall not be registered if because of its identity or similarity with an earlier trade mark, there exists a likelihood of confusion on the part of the public. Thus, the advertisement before acceptance does not in any manner mean that the Registrar has waived his objections. On the contrary, the Registrar persists on the ground of refusal to register the Defendant's mark. Going by the Defendant's own arguments, an expert in the field perceives and considers the rival marks in the present case to be deceptively similar.
28. The Defendant has in its affidavit in reply contended that since the Plaintiff was not granted any adinterim relief, no interim relief ought to be granted. The said contention was not advanced during arguments. However, the Plaintiff has correctly submitted that the Plaintiff was not granted adinterim relief on the ground of delay of just one year in the initiation of court proceedings. It would therefore not follow that the Plaintiff is not entitled to even interim relief on that ground. In any case, in a case of an infringement action, in the absence of establishing acquiescence, mere delay is never a defence. It is true that the Notice of Motion is taken up for final hearing after six years but the Plaintiff cannot be denied relief merely because the interim relief application could not be heard earlier. A similar argument was raised by the Defendant in another case of Sami Khatib and Anr. vs. Cadila Pharmaceuticals Ltd. in Notice of Motion No. 599 of 2006 in Suit No. 568 of 2006 and considered by this Court. In paragraph 46 of its decision, this Court observed as under:
"46. I am in agreement with Mr. Kamdar that the delay in this case is not fatal. First of all, the delay caused on account of pendency of this notice of motion from the date of the adinterim order is not within the control of the Plaintiffs. The motion could not be heard early on account of the exigencies of work. That, by itself, will not give any right to the Defendants to contend that their user has been continuing. Such pendency does not confer any right to urge that there is delay and laches?.
29. The Defendant has cited various decisions where the courts have held that marks were not deceptively similar. However, the said decisions would be of no assistance to the Defendant. Each of the said judgments pertain to cases where the marks were derived from a generic drug. It was in this context held that a party cannot have a monopoly over a portion of name which was derived from a generic drug. Further, in these cases, the Court held that the test laid down in Corn Products (supra) was satisfied. In the present case, the marks are not derived from generic drugs and nor are the conditions in the case of Corn Products satisfied. The said judgments are distinguished hereunder.
29.1 Bal Pharma Limited vs. Wockhardt Limited and Anr. (supra): In this judgment, this Court was considering the marks 'Aziwok' and 'Aziwin'. The Court clearly held in paragraph 7 that the drug which was the basis of the products was 'Azithromycin' and nobody could claim a monopoly over the word 'Azi' which was a part of the basic drug. This Court also held that 'Azi' was common to trade. Further, this Court held in paragraph 10 while considering the judgment in the case of Cadilathat since both the products were made of a single ingredient, the question of causing any health problem or side effect really does not arise. None of these factors are applicable in the present case. In the present case, the marks are not derived from the basic drug. Further, the marks are for different ailments which may result in disastrous consequences.
29.2 Schering Corporation and Anr. Vs. Messrs. United Biotech (P) Ltd. and Anr. (supra): Firstly, this is only a passing off action and not an action in infringement. In this judgment, this Court was considering the marks 'Netromycin' and 'Netmicin'. This Court held in paragraphs 11 and 12 that both the marks were derived from the generic drug 'Netilmicin Sulfate' and no one can claim exclusivity in a mark which is derived from the generic drug. Furthermore, on the facts of the said case, the Court rendered a finding in paragraph 12 that there was commonality in origin, ingredient, composition and purpose and that even if one drug is consumed for the other there cannot be disastrous consequences. Further, the Court held that while one drug was an expensive drug administered only by doctors in hospitals and purchased in bulk by the hospitals and not by the consumers, any possibility of confusion is ruled out. None of these factors are applicable in the present case. The marks are not derived from the basic drugs. The drugs are for different ailments and may result in disastrous consequences in case of any confusion between the two.
29.3 F. HoffmannLa Roche and Co. Ltd. vs. Geoffrey Manners and Co. Pvt. Ltd. (supra): In this judgment, this Court was considering the marks 'Dropovit' and 'Protovit'. The Court held in paragraph 12 that from the affidavits filed, it was apparent that "Vit" was a well known common abbreviation used in the pharmaceutical preparation to denote vitamin preparations. Therefore, the Hon'ble Supreme Court was also considering a case where a part of the name was derived from the generic name Vitamin. Further, the Hon'ble Court held that since the first letters of both the marks were different i.e. 'D' and 'P', there was no likelihood of confusion. In the present case, none of the factors are applicable. Neither of the marks are derived from any generic or basic material nor are the first letters different. In fact, the first letter in the present case are the same and an emphatic 'E'.
29.4 Ranbaxy Laboratories Ltd. vs. Indchemie Health Specialties Pvt. Ltd. (supra): Firstly, this is only a passing off action and not an action in infringement. In this judgment, this Court was considering the marks 'Zanocin' and 'Zenoxim'. This Court in paragraph 11 clearly held that the basic drug of the Plaintiff was 'Ofloxacin' and the Plaintiff had derived the name from the basic drug. Similarly, the basic drug of the Defendant was the 'Cefuroxime' and they had also derived the mark 'Zenoxim' from the basic drug. This Court held that the marks were descriptive in nature, indicative of the composition of the respective medicines. The Court further held that no one can have a monopoly over the right to use the name of the basic drug or a part thereof. Further, this being only a passing of action, this Court considered various other factors including, the packaging, the price, etc. The present case being one of infringement, no such additional material can be relied upon. Further, in the present case the marks are not derived from the basic drug and its nobody's case that the marks are descriptive.
29.5 S.B.L. Limited vs. Himalaya Drug Co. (supra): In this case, the rival marks were 'Liv-T' and 'Liv-52'. The reliance on this order is completely baseless. The order cited by the Defendant is an Appeal from an adinterim order, where the Court had set aside the said adinterim order. In the Suit, the injunction was refused to the Plaintiff. Thereafter, an appeal was preferred by the Plaintiff against the judgment and decree where the Appeal Court had set aside the said judgment and granted injunction to the Plaintiff. The Court while setting aside the said judgment and decree relied upon the tests laid down in Cadilaand Corn Products and ultimately held that the marks 'Liv-T' and 'Liv-52' are deceptively similar. Thus, the judgment relied upon by the Defendant in interim proceedings has finally been reversed at the final stage.
29.6 J.R. Kapoor vs. Micronix India (supra): In this case, the rival marks were 'Micronix' and 'Microtel'. Firstly, the said judgment is not in the case of pharmaceutical products where the test laid down is very different and strict. Secondly, this Court held that micro chip technology being the base of many of the products, the word 'micro' is descriptive of the technology used for the production of many electronic goods in the market and no one can claim monopoly over the same. Thus, even this judgment is based on a name derived from the constituent technology.
29.7 Burroughs Wellcome (I) Ltd. vs. American Home Products and Anr. (supra): Here the two rival marks were 'Actifed' and 'Acticeph'. Here, 'Acti' was held to be common to trade and the Court held 'ceph' and 'fed' as different. It was in this context, the Court held that the marks were different and not deceptively similar. In fact, in this very judgment, in paragraph 6, this Court has held that many Indians while speaking English or Indian words emphasis the suffix even more than the prefix.
30. In the circumstances, the above Notice of Motion is allowed in terms of prayer clause (c). The Defendant shall change the name of its product and withdraw the stocks bearing the impugned mark from the market within a period of four weeks from today.
31. The learned Advocate for the Defendant seeks stay of the Order for a period of four weeks from today to enable the Defendant to test this Order in Appeal. Since time has been granted to the Defendant to change the name of its product and to withdraw the stocks bearing the impugned mark from the market within a period of four weeks from today, it is always open to the Defendant to file an Appeal and seek appropriate orders within that period. Hence, the application for stay is rejected.