S.J. Vazifdar, J.
1. The plaintiff has filed this suit to restrain the defendants from using, manufacturing, selling, offering for sale and/or advertising or dealing in any manner by themselves, their servants, agents, distributors and stockists in any medicinal or pharmaceutical preparations in any form bearing the trade marks TOCILLIN', 'CEFTIN' and 'TREX' or any other trade marks which are deceptively similar to or are a deceptive variation of the plaintiffs marks 'CELIN', 'CEFTUM' and TROX'.
2. Plaintiff No. 1 is a company incorporated under the laws of England. Plaintiff No. 2, Glaxo SmithKline Pharmaceutical Ltd., is a company incorporated under the Indian Companies Act, 1913. The plaintiffs manufacture and carry on business inter alia in medicinal, pharmaceutical and veterinary preparations. The defendants carry on a similar business.
3. It is not necessary for me to decide the plaintiffs case regarding its trade mark CEFTUM as Mr. Tulzapurkar stated that the defendants do not intend to and shall not use the mark CEFTIN.
4. The plaintiffs case is that plaintiff No. 1 is the registered proprietor of the trade mark 'CELIN' in respect of medicinal and pharmaceutical preparations in class 5. The registration is valid upto 14 September 2006. The preparations under the trade mark 'CELIN' are manufactured and sold in the nature of drops and tablets. The plaintiffs claim to have incurred considerable promotional expenses in relation to the products sold under the said trade mark. The preparations are sold in every State in India. As a result thereof they claim that the word mark 'CELIN' is associated by the medical profession, chemists and the public with the plaintiffs exclusively.
5. On 25th January 1993 the defendants applied for registration of the trade mark 'TOCILLIN' for pharmaceutical preparations in class 5. The application was advertised in the Trade Marks Journal dated 16th June 2001. Plaintiff No. 1 opposed the application by filing a notice of opposition at the trade marks registry based on its registered trade mark 'CELIN'.
6. Plaintiff No. 2 is the proprietor of the registered trade mark TROX. The mark was registered on 8th February 1960 in respect of medicinal and pharmaceutical preparations. It was originally registered in the name of British Drug House. Ltd. British Drug House Ltd. was amalgamated with plaintiff No. 2. By virtue of the amalgamation order dated 26 July 1968 passed by this Court the trade mark TROX was transferred to plaintiff No. 2. Applications have been made by the plaintiffs to bring on record the change in the name of the proprietor of the said mark.
The defendant applied for registration of the trade mark TREX. Plaintiff No. 2 has filed a notice of opposition against the said application based on its trade mark TROX.
7. I will first deal with the plaintiffs case for infringement and passing off in respect of its trade mark TROX.
Plaintiff No. 2 introduced its pharmaceutical preparations under the trade mark TROX in the year 1974 in India. It introduced veterinary preparations under the trade mark TROX on 7th January 2000. The sales of the plaintiffs products under the trade mark TROX in the year 2000 was Rs. 94,00,000 and in the year 2001, Rs. 95,00,000. Plaintiff No. 2 has also incurred considerable promotional expenses in relation to its products sold under the trade mark TROX. On 25th February 2002 plaintiff No. 2 filed an application for registration of the trade mark TROX in respect of pharmaceutical and veterinary preparations in class 5 and claiming user since 1974 agreed for the association of the new application with the registered trade mark No. 194383 i.e. the aforesaid registration dated 8th February 1960. The preparations of plaintiff No. 2 bearing the trade mark TROX are sold in every State in India. The plaintiffs contend that as a result of the large and extensive sales of their products bearing the trade mark TROX and the promotional expenses incurred by them, the members of the medical profession, chemists and the public associate the word mark TROX with plaintiff No. 2 exclusively.
8. The plaintiffs reputation in its mark TROX is established. Its user of the same over the years and the extent of its user has not been seriously controverted.
9. Judging the marks as a matter of first impression and applying the test of an ordinary person with average intelligence and an imperfect recollection the case must be answered in the plaintiffs favour. If the two marks TROX and TREX are seen as a whole there is no doubt whatsoever that there is a likelihood of confusion in view of the deceptive similarity between the two. The substitution of the letter 'O' with the letter 'E' makes no difference. The two marks are visually and phonetically almost identical. There is a very high possibility of a mispronunciation leading a person to mistake one mark for the other. A perfect pronunciation, a clear enunciation of the words may indicate the difference. But words such as these are not always so pronounced. Moreover it is useful to mention, as has been noticed in several decisions, that words tend not to be properly enunciated and in particular the ending of words is often slurred. Even if either of the marks is pronounced correctly there is an equally high possibility of the person hearing the same to mistake one for the other. Indeed the likelihood of confusion or deception is so apparent and 6bvious that I find it: unnecessary to enter into any detailed consideration of the law on this aspect. As far as these marks are concerned it is not even necessary for the plaintiff to rely upon the well established principle that public interest would support lesser degree of proof showing the confusing similarity in the case of trade marks in respect of medicinal products as against non-medicinal products. It will suffice, in this regard, to merely refer to the judgment of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., : [2001]2SCR743 .
10. I have no hesitation in coming to the conclusion that the essential features of the plaintiffs trade mark have been adopted by the defendant. There is a high probability that persons familiar with only one of the marks would mistake one product for the other when confronted with it. The doctrine of wonderment would clearly apply to these marks. Moreover, the products of the plaintiffs and of the defendants relate to medicinal preparations. The possibility therefore of confusion and deception is enhanced.
11. Considering the nature of the defendants mark I have little hesitation in coming to the conclusion that it has sought to take advantage of the reputation and goodwill acquired by the plaintiffs marks. The defendant has thereby infringed the plaintiffs mark. The defendant is also guilty of passing off its business as that of the plaintiffs business and trade. There is also clearly a likelihood of the plaintiffs suffering damages in the event of the defendants products being of an inferior quality. As held by this Court in Podar Tyres Ltd. v. Bedrock Sales Corporation, : AIR1993Bom237 , any act or omission of the defendants would have a repercussion on the credit, reputation and goodwill of the plaintiffs.
12. Mr. Tulzapurkar submitted that the defendants mark is derived from the active ingredient of the drug methotrexate. He submitted that the plaintiffs products sold under the trade mark TROX is a veterinary drug whereas the defendants products sold under the trade marks TREX is an anti-cancer drug for human consumption in an indictable from. Hence, he contended, there can be no confusion as far as the two products are concerned. I am unable to accept the submission.
13. Mr. Daruwalla, the learned counsel appearing on behalf of the plaintiffs, relied upon the judgment in UNIVER Trade Mark 1993 RPC 239, It was an appeal in the matter of an application to register the trade mark UNIVER which was refused by the registrar of trade marks and came before the court by way of appeal. The applicant applied for registration of the trade mark UNIVER in respect of pharmaceutical preparations- The goods applied for related to cardio-vascular preparations. The applicants were prepared to further qualify that the same would be used only for treating humans and would be supplied only if prescribed by a registered medical practitioner. Objection was taken to the application on the ground that the mark conflicted with the mark UNIVET which was registered for veterinary preparations and substances, disinfectants (other than for laying or absorbing dust) for veterinary use. The proprietors of the cited mark were willing to voluntarily part-cancel their goods leaving only: 'veterinary preparations and substances, all being for sale wholesale to veterinary surgeons.' The registrar therefore proceeded on the assumption that the comparison of goods was between these restricted lists.
It was submitted on behalf of the applicant that the trade channels would be entirely and completely separate having regard in particular to the applicant's willingness to restrict their goods to supply only by doctors prescription. It is important to note that evidence was filed in support of this submission. One of the affinity stated that with the then current level of good pharmacy practice he believed that there could never be any danger to public health arising out of confusion at any level of a trade channel such that pharmaceutical products for human use and a veterinary product, both with a similar name, might be interchanged. The registrar held that the evidence did not satisfy him that his original concern about the scope for confusion at the wholesale link in the trade channel was misplaced. He observed that the qualified statement persuaded him to err on the side of caution and held: 'I do not believed it should be left to' good pharmacy practice' to act as a safety net where lives may be endangered.' It is further important to note that in that case the impugned mark was in fact in use and there was no suggestion that any trouble had arisen from its use. The registrar in refusing registration relied upon the following observations made by Lloyd Jacob J. in Harker Stagg Ltd.'s Trade Mark (1953) 70 RPC 205 :-
'.... if there were, or is, any reasonable ground for supposing that by reason of their similarity confusion or deception is likely to arise, the fact that they are used in relation to a pharmaceutical preparation is, perhaps, all the more reason for seeing that the public are protected from the consequences of deception and confusion.'
These observations were pressed into service in the case where the rival marks were used for veterinary preparations and medicinal preparations for human consumption. The decision and the reliance upon the aforesaid observations were affirmed by the court in the appeal.
14. The reliance upon the decision is well founded. In the case before me the defendants have not even attempted to demonstrate in any manner that there is no possibility of a pharmaceutical product for human use being confused with a veterinary product, in the course of marketing. A discussion on the disastrous effects caused by any confusion leading a person or an animal to take one drug instead of the other is unnecessary. The confusion may occur not only if the nature of the drugs is different but also due to the different dosages that may be prescribed for human beings and animals. The consequences are obvious.
15. Mr. Tulzapurkar submitted that the judgment in the UNIVER case would not assist the plaintiff as that was a case of registration where the onus is on the applicant. However both are medicinal products. The marks are deceptively similar. It was therefore for the defendants to satisfy the court that there was no possibility of confusion arising from a mix-up in the trade channels. Let me put the plaintiffs case, which in this respect really concerns the interests of the public in general, at its lowest. Apart from an argument of Mr. Tulzapurkar's which I shall deal with next, there is nothing to suggest that there is no possibility of the trade channels being mixed up. If so, in matters such as these it is, again to say the least, advisable that a court errs on the side of caution-especially at the interlocutory stage. In so doing I would grant the injunction.
16. Mr. Tulzapurkar further submitted that the plaintiffs themselves sold products for human consumption as well as veterinary products under the same trade mark, TROX. This therefore belied the plaintiffs contention that there could be confusion, deception or any harmful effects as a result of the mark being used by the defendants for its products. If the plaintiffs can successfully and safely use TROX for both, veterinary products and products for human consumption, there is no reason why the use of the mark TREX by the defendant for its products would be unsafe. The argument, though at first blush attractive, is unfounded. In this regard I am entirely in agreement with the following observations of the registrar in the Univer case:-
'The agent prays in aid the fact that the registrar will allow the same mark to be used by the same company on both veterinary and pharmaceutical goods. Of course he does as there is nothing in the law to prevent it, nor in my view, is there any need to be. The company will have total control over marketing their goods and it would be commercial suicide to allow the slightest chance of error. That is not the position where different companies are involved. Who takes responsibility?'
There is not even a suggestion, by the defendant, that the plaintiffs have not or may not take care to ensure that their medicinal preparations for veterinary use and for human consumption have been or are likely to be mixed up by the plaintiffs for any reason whatever. It would indeed be highly improbable that a manufacturer of such medicinal preparations would not ensure that the trade channels are not mixed-up. No useful purpose could possibly be served by their neglecting to do so. No such safeguard is shown to exist where different manufacturers are involved. None have been suggested before me.
There of course always remains the additional aspect in this case that the plaintiffs before me have made no concession as did the proprietor of the mark UNIVET. The plaintiffs here apply the mark TROX both, to products for human consumption and for veterinary use.
17. Even assuming that confusion arising from the trade channels being mixed up in respect of the same manufacturers goods under the same trade mark for human consumption and for veterinary purposes, is possible the same would not entitle another manufacturer to add to the confusion or deception. The remedy may then well be to prevent the manufacturer from causing such confusion.
18. This then brings me to the plaintiffs case regarding the trade mark 'CELIN' and 'TOCILLIN'. Mr. Tulzapurkar fairly did not deny that 'CELIN' is an invented word. It is not necessary therefore to refer to the authorities relied upon by Mr. Daruwalla in support of his submission that 'CELIN' is an invented word. Nor did Mr. Tulzapurkar deny the fact that the plaintiffs have a considerable reputation in this mark. It is not necessary therefore for me to deal with the evidence in this regard.
19. There is no visual similarity between the two marks. No doubt the letter 'I' after the letter 'C in the mark TOCILLIN' instead of the letter 'E' in the mark 'CELIN' would make no difference. However the letters 'TO' which precede the letters 'CILIN' ensure that there is no visual similarity between the two marks. When judged by the eye alone they are quite obviously different, distinguishable and there is no real danger of one being confused with the other. I say so even presuming that a prescription is written in a doctor's notoriously bad handwriting. I do not see how a person reading the two marks can mistake one for the other. I am unable therefore to agree with Mr. Daruwalla's submission that on a doctor's prescription stating '2 -'CELIN'' or 'Two-celin' prescribing the plaintiffs products, the defendants product 'TOCILLIN' is likely to be sold by the chemist and bought by unwary purchasers.
The only question is whether the marks are phonetically similar. The answer does not admit of a simple yes or no.
20. If the person speaking the word and the person hearing it are aware that it is but one word, I would rule out the possibility of any phonetic similarity. The letters 'TO' ensure this. This would be so irrespective of the manner in which the word mark 'TOCILLIN' is pronounced. The letters 'TO' could be pronounced as 'two' followed by the word 'cillin'. In other words it could be pronounced as 'twocillin'. It may also be pronounced as 'tochcillin' or 'toecillin'. Whichever way it is pronounced, phonetically it would clearly be different from the pronunciation of the plaintiffs word mark 'CELIN'. I am supported in this view by a principle enunciated in a judgment of a Division Bench of this Court cited by Mr. Tulzapurkar in the case of Johann A. Wulfing v. I and P Laboratories Ltd., AIR 1984 Bombay 283 where it was held:-
'... 'The first syllable of a word mark is generally the most important' as there is a 'tendency of persons using the English language to slur the termination of words'. (Kerley's Law of Trade Marks, 11th edition p 416). In Re. Bayer Products (1947) 64 RPC 125, it was held that 'Diasil' and 'Alacil' were not deceptively similar or likely to cause confusion. Where the first two syllables arc different, there is little likelihood of confusion. So was it observed by the Division Bench of the Madras High Court in Mount Mettur v. Ortha Corporation, : AIR1975Mad74 while holding, that UTOGYNOL and OR-THOGYNOL were not deceptively similar.'
The commentary in Kerley is based on a long line of cases. It would be useful to refer to the case of London Lubricants (1925) 42 RPC 264 where the Court of Appeal observed at p. 279:-
'But the tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison, and, in my judgment, the first syllable of a word is, as a rule, far the most important for the purpose of distinction.'
21. I accept therefore, Mr. Tulzapurkar's submission that the letters 'CILLIN' being preceded by the letters 'TO' negates the possibility of any phonetic confusion leading to the word 'TOCILLIN' being mistaken for the word 'CELIN' and vice-versa. There is nothing that persuades me to presume or even think that the syllable 'TO' will be dropped or slurred over in ordinary use. In fact the distinctiveness of the syllable 'TO' and its place as a prefix to the word mark 'TOCILLIN' would tend to it being accentuated. This of course is provided, as I have said earlier, that the person who utters the word mark and the person who hears it are aware that it is but one word. The matter however does not rest therefor, it may not always be so and the matter therefore always not so simple.
22. It is the nature of the prefix 'TO' and the nature of the products to which the mark is applied, medicinal products that may be sold in quantities exceeding one, and not the mere existence of a prefix that is relevant. Let me explain. The nature of the prefix can suggest the numeral 2. It is not unknown that doctors often prescribed drugs on the telephone. Nor is it unknown that patients order drugs from the pharmacist on the telephone. They also order drugs across the counter without a prescription. It is not inconceivable that if the defendant's product, TOCILLIN', is prescribed the person to whom it is prescribed may hear or understand it as two of the plaintiffs products sold under the mark 'CELIN'. Conversely if two of the plaintiffs products sold under the mark 'CELIN' are prescribed it is not inconceivable that the person hearing it may understand it to mean the defendant's product 'TOCILLIN'. The possibility of confusion cannot therefore be ruled out. The Supreme Court in Cadila's case, cited with approval the observation of the House of Lords in Aristoc Ltd. v. Rysta Ltd. (1945 (62) RPC 65 that the court must be careful to make allowance for careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that persons wants. I venture to add a circumstance justifying this need for caution at least in our country. Being available even without a prescription it is not always that the persons who are prescribed the medicine themselves purchase it. They often delegated that duty to another. This can only compound the confusion caused by careless pronunciation. The plaintiff must therefore succeed in its case for infringement.
23. Added to this is the fact that we are dealing here with medicinal products. The consequences of any confusion can be drastic. It is obvious that a person prescribed the plaintiffs vitamin C product would be adversely affected if by reason of any confusion he were to consume the defendants antibiotic drug sold under the mark 'TOCILLIN'. A person prescribed the defendants antibiotic drug sold under the mark 'TOCILLIN' may or may not be adversely affected merely by mistakenly consuming the plaintiffs vitamin C products. In other words the vitamin C itself may not be harmful to a person prescribed antibiotics consuming it. Adverse consequences can however also result by the patient not consuming the antibiotic drug which he ought to. The adverse effects by consuming a wrong drug are not limited to cases where the wrong drug itself has an adverse effect on the patient. The adverse effect can also arise from the patient not consuming the drug that is prescribed.
24; It would be clear from the above discussion that my conclusion that the mark 'TOCILLIN' is deceptively similar to the mark 'CELIN' and can cause confusion is based essentially on the fact that the products are not necessarily prescribed or sold in quantities not exceeding one. Indeed normally if not invariably, more than one capsule/item would be sold. They are not cars, cameras, computers or such other items which people normally buy only one of. The effect of a prefix would therefore necessarily have to be decided depending on the nature of the product and the nature of the prefix. It is the nature of the products and the nature and the effect of the syllable 'TO' that prefixes the word CILLIN that have led me to the conclusion of there being a probability of confusion despite my finding that the word CILLIN follows a distinctive prefix.
25. In this view of the matter Mr. Tulzapurkar's reliance upon a judgment of the Delhi High Court in E.R. Squibb & Sons Inc. v. Curwel India Ltd., : AIR1987Delhi197 is of no assistance to him. The rival marks there were Curechlor and 'Reclor'. It was held that the former mark was not deceptively similar to the latter. However, the prefix 'Cur' is different from the prefix in the present case. It is not a numeral and therefore did not connote a quantum which the prefix 'TO' in this case does. The case is therefore distinguishable on facts.
26. Mr. Daruwalla placed strong reliance upon the judgment of a learned single Judge of this Court (S.J. Kapadia, J.) in the case of American Home Products Corporation and Anr. v. Lupin Laboratories Ltd. 1996 IPLR 61. The rival marks were ROLAC and TOROLAC, the former being a registered trade mark of the plaintiffs. The facts of this case are indeed very similar to the facts of the judgment. It is necessary therefore to set out the reasons given by the learned Judge for granting the injunction. They read as under:-
'Applying the tests laid down by the Supreme Court to the facts of the present case, I find considerable merit in the contentions advanced on behalf of the plaintiffs on the question of applying the tests to ascertain deceptive similarity between the two marks. In the present case, 1 am at an interim stage. At this stage, the question is whether the use of the mark TOROLAC infringes the registered trade mark ROLAC. Firstly it may be noted that the mark ROLAC has been registered in the year 1986. The said registration was given adequate publicity. It was advertised in the Trade Marks Journal No. 953 dated 16 February 1989. Secondly, the word ROLAC is an invented word which is very important in the matters of deciding whether infringement has resulted or not. It is not an ordinary or a generic word like COLA which can be used with another word which is known to the trade like COCA-COLA or PEPSI-COLA. Thirdly we are dealing with medicinal and pharmaceutical preparations. The preparation of the plaintiffs has a therapeutic value whereas preparation of the defendants has an analgesic effect. Plaintiffs have filed a detailed affidavit to indicate the disastrous consequences which may flow if there is a mix-up in the matter of consumption of the two preparations. It is pointed out in paragraph 17 of the plaint that TOROLAC being an analgesic will not be of any therapeutic use for patients of acidity who will not get symptomatic relief. On the contrary, the patient's condition could worsen because TOROLAC contains toxic potentials and side effects. It is pointed out that the patients who continue to take TOROLAC thinking that it is ROLAC would take, on an average, eight tablets per day against, recommendation of oral dosage of 10 mg every six hours which could lead to disastrous consequences and damage the health of the patients suffering from peptic ulcer. It is also pointed out that even in patients with less severe symptoms of acidity there is every chance of the symptoms getting aggravated and, therefore, the consequences would be disastrous. Fourthly it is pointed out that the entire trade mark TOROLAC has been borrowed and adopted by merely prefixing it with the two letters 'TO' which clearly indicates that even on first impression, the essential features of both marks are deceptively similar and it constitutes coloured imitation or nearing resemblance. In the circumstances, probable confusion cannot be ruled out. It is well settled that when considering the infringement of a registered trade mark, it is important to bear in mind the difference between the test for infringement and the test in passing off action. In a passing off action, the courts look to see whether there is misrepresentation whereas in infringement matters, it is important to note that the Trade Mark Act gives to the proprietor, an exclusive right to the use of the mark which will be infringed in the case of identical marks and, in the case of similar marks, even though there is no misrepresentation, infringement can still take place. The statute law relating to infringement of trade marks is based on certain fundamental ideas which may be common to the law relating to passing off, but it differs in two particular aspects, namely, the use of trade mark is one of the methods of passing off and secondly, the statutory protection in the case of registered trade mark is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing something outside the actual mark itself. Therefore, infringement takes place, not merely by exact imitation, but by the use of the mark sold nearly resembling the registered mark as likely to be deceptive (see 1941 (58) RPC 147 . The above test is also laid down in several judgments of the Supreme Court. In the present case, there is resemblance between ROLAC and TOROLAC. The said resemblance is structural as well as visual and phonetic. The sound of one resembles the sound of the other on first impression. Fifthly, it is also important to bear in mind that if a patient who knows only one word has imperfect recollection of the said word, he is likely to be deceived or confused when he purchases the medicine. No patient goes to the chemist for purchase of both the medicines ROLAC and TOROLAC. He will go for one of them and he may not recollect the other in which event, is likely to be deceived or confused which may lead to disastrous consequences. In the above circumstances, the doctrine of wonderment is also applicable to the facts of the present case. In the present case, I do not find any merit in the contentions of the defendants that the word TORO will make a difference. There is also no merit in the contention of the defendants that the word TORO is emphatic because in such cases meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution is not possible. In such cases, the courts have laid down a very important test which, to my mind, applies in this case viz., to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part of the patient and also on the part of the chemist. Therefore, it is the judicial year that is decisive and the conclusion must be based on the surrounding circumstances. Applying the above text, in the present case, I am satisfied that the plaintiffs have raised a serious contention which requires consideration. It is not possible for the defendants to contend that serious consideration of the facts is not involved at the trial of the suit, particularly when the two marks are confusingly similar. They are close in sound and site. A person who only knows ROLAC and who has an imperfect recollection will be deceived and confused if the chemist gave him TOROLAC and vice-versa. In the circumstances, I find merit in the contentions advanced on behalf of the plaintiffs with regard to deceptive similarity between the two medical preparations which may lead to disastrous consequences, as stated herein above.'
27. The facts are in many respects similar to the facts in the present case. The prefix in both the cases viz., the letters 'TO' are the same. I am however satisfied basing my decision on the reasoning adopted by me earlier. As pointed out by Mr. Tulzapurkar, one of the differences between the case in American Home Products and the present case is that the word ROWLAC is a totally invented word whereas the word 'CELIN' is part of a generic term. Moreover it is a well-established principle, reiterated in American Home Products, that every case depends on its own facts and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. I do not read the decision as having laid down as a rule that in every case the mere existence of a prefix or even the mere existence of the letters 'TO' as a prefix to a registered mark would lead to infringement. The judgment on this aspect is therefore not binding as a precedent in all cases where a trade mark is prefixed with the letters 'TO'. On the other hand in Johann A. Wulfing v. I & P Laboratories Ltd. (supra) the Division Bench, accepting the passage from Kerley, laid down as a principle that the first syllable of a word of mark is generally the most important. The judgment was not brought to the notice of the learned Judge in American Home Products. Mr. Daruwalla was unable to effectively controvert the submission. It is by applying this principle among others that I have come to the conclusion that there is no phonetic similarity between the marks CELIN and TOCILLIN save as I have already discussed.
28. Mr. Tulzapurkar submitted that 'TOCILLIN' can only be sold on a doctor's description. This fact he submitted ought to weigh in the defendant's favour. I am unable to agree. A long line of decisions resting with the judgment of the Supreme Court in Cadila's case negates this contention. Considering the nature of the products in the present case and my above findings, the fact that the defendants products under the mark TOCILLIN' can be sold only on a doctor's prescription is virtually of no importance.
29. The defendants explanation for the adoption of the mark TOCILLIN' does not inspire confidence either, at least at this stage. In paragraph 21 of the affidavit in reply it is contended that the word 'TOCILLIN' denotes that the drug has two active ingredients namely ampicillin and cloxacillin and that the mark had therefore been coined/derived to indicate that two ingredients were present in the compound. As rightly pointed out by Mr. Daruwalla, if that were true the prefix would have been the letters 'TWO' and not 'TO'. Prima-facie I am not inclined to accept the defendants explanation for adopting the mark TOCILLIN'.
30. In view of this conclusion Mr. Tulzapurkar's submission based on the series theory may not carry him far. In any event there really is no evidence produced by the defendants to support the series argument. Apart from averments to the effect that there are various marks in the market derived/coined in this manner, there is no evidence to establish the plaintiffs case even prima-fade on the series argument. The plaintiffs in their rejoinder denied the averments and put the defendants to the proof thereof. Despite the same the defendant did not produce any proof. Mr. Daruwalla objected to Mr. Tulzapurkar relying upon the Indian Pharmaceutical Guide on the ground that the defendant had not relied upon the same. In view thereof Mr. Tulzapurkar fairly did not pursue the reliance upon the same. He however relied upon various judgments in support of this argument. In view of the absence of any proof in this regard the judgments are of no assistance to him.
31. Recently in Pidilite Industries Ltd. v. S.M. Associates and Ors. 2003 (2) LJSOFT 4- I rejected the contention that though at the trial proof of extensive use of the series of marks is required, at the interim stage it is not. It was contended in that case on behalf of the defendants that the decision of the Supreme Court in Com Products v. Shangrila Food Products, : [1960]1SCR968 can be of no assistance as that was in the proceeding at the final hearing of the suit. The Supreme Court held that the principle clearly requires that the marks comprising the common element should be in fairly extensive use. It was further held that the series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is on the applicant who wants to rely on those marks. After dealing with various judgments on the aspect I rejected the submission that at the prima facie stage it is enough to show mere user and that it is not necessary for the defendant to show the extent of user. One of the judgments on which Mr. Tulzapurkar placed reliance was a judgment of a learned Single Judge of this Court in Reckitt & Coleman of India Ltd. v. Medicross Pharmaceuticals Pvt. Ltd. 1994 IPLR 31. Mr. Tulzapurkar also relied upon an unreported judgment of a learned Single Judge of this Court in Kopran Chemical Co. Ltd. v. Sigma Laboratories, (Notice of Motion No. 1309 of 1990 in Suit No. 1308 of 1990) which in turn referred to the judgment in Reckitt & Calman's case. Paragraphs 56 to 60 of my judgment read as under:-
56. Faced with this situation, Dr. Shivade submitted that the judgment in Com Products can be of no assistance as that was in a proceeding at the final hearing of the suit. In support of his contention, he relied upon a judgment of a learned Single Judge of this Court in Reckitt & Coleman of India Ltd. v. Medicross Pharmaceuticals Pvt. Ltd. 1994 IPLR 31. In that case the Plaintiff was a registered proprietor of a trade mark DISPRIN. The Defendants sold their medicinal products under the mark MEDISPRIN. Dismissing the Plaintiffs application for injunction to prevent infringement and passing off, N.D. Vyas, J. (as he then was) held in paragraph 13 as under:
'13. It was next submitted by Mr. Tulzapurkar, relying on the decision of the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., that it was defendants submission that their mark contained a common element because of their drug containing Aspirin and that there were series of marks in extensive use in the market and; therefore, the onus of proving such extensive user was on defendants who wanted to rely on such marks. This onus, according to Mr. Tulzapurkar, is not discharged. Mr. Patel, in reply, submitted that the said decision which requires evidence of use of the marks having common prefix was rendered on and would be applicable to a matter decided on final hearing after evidence is led. Thus, according to him at the interim stage it would be prima facie sufficient to show that marks with suffix 'Sprin' are in use with reference to Indian Pharmaceutical Guide and that in the instant case the defendants were not merely referring to, the marks on the Trade Mark Register but to marks of products which are in use as indicated in the said Guide. I see considerable force in Mr. Patel's submission. Prima facie, I am satisfied that several products containing Aspirin and having their trade marks with a suffix of 'Sprin' are in use. Moreover, the fact of such products marketed under such marks is not disputed. In these circumstances, I reject Mr. Tuizapurkar's submission.'57. I am unable to accept the submission that the ratio consisted of accepting the submission on behalf of the Defendant that the judgment of the Supreme Court in Com Products would only be applicable to a matter decided at the final hearing after evidence is led. The above extract itself indicates that the learned Judge accepted as sufficient at the interim stage, the evidence produced before him to establish prima-facie that several marks with the suffix 'Sprin' were in fact in use. It is difficult to read the judgment as having held that though at the trial proof of extensive use of the series of marks is required at the interim stage it is not.
58. The fallacy of this submission lies in the misconception that the issue to be proved is different at different stages of legal proceedings. Whatever the stage of the proceedings, the issue to be proved or the content of the proof remains the same. It is the level of proof that varies depending on whether the order sought is at the interim stage or at the final hearing.
The judgment in Com Products requires the Defendant to prove that the marks must be not merely in use but in 'extensive use'. Thus, even in interim proceedings, it is not sufficient merely for the Defendant to show prima-facie that there is some user of the marks. There must be prima facie evidence to show extensive use. At the final hearing of the suit the level of proof required is higher - the matter requiring to be proved viz. 'extensive or substantial use' remaining the same.
For instance, in a given case, a Defendant may well establish conclusively in interlocutory proceedings that there was actual use of the marks in the market. He would thus have fulfilled the first requirement viz. actual use. He may however candidly admit that the extent of use is minimal. The Defendant could not in such circumstances resist an injunction on the series argument contending that at the interim stage the extent of use is not material.
59. A Division Bench of this Court in Schering Corporation & Ors. v. Kilitch Co. (Pharma) Pvt. Ltd. 1994 IPLR 1, had occasion, also at the interlocutory stage, to consider this question in similar circumstances. The judgment was delivered before the judgment in Reckitt & Coleman case. The judgment is relevant on facts as well as on law. At page 8 the Division Bench held as under :-
'One final point requires consideration. According to the Defendants Affidavit-in-reply, there was a number of similar dermatology products in the market ending with the suffix Derm. Six such products are enumerated in paragraph 6 of the said Affidavit-in-reply. It was suggested, which suggestion appears to have appealed to the learned single Judge, that Curoderm and Qriderm were in the market and that these marks are also very similar to Quadriderm, The argument was that if the Plaintiffs have not objected to these two marks the Plaintiffs are disentitled from objecting to ar at any rate securing interim relief against the Defendants mark Coriderm. We find no substance in the plea. Apart from producing tubes and cartons and some bills the Defendants have not shown the extent of/the sales of these products. Indeed, at the most it can be assumed that two similar products are in the market in January 1990. That will not, in our opinion, non-suit the Plaintiffs or disentitle them to interim relief against the Defendant.'60. Thus, even if I were to accept Dr. Shinade's, interpretation of the judgment in Reckitt & Coleman's case I must hold that the same is not good law in view of the judgment in Schering Corporation and Anr. v. Kilitch Co. (Pharma) Pvt. Ltd. 1994 IPLR 1 (DB) 61.'
32. Mr. Tulzapurkar also relied upon the judgment of the Supreme Court in Roche & Co. v. G. Manners and Co., : [1970]2SCR213 . However that case is distinguishable on facts. The marks in question in the case were, on behalf of the appellant 'PROTOVIT' and on behalf of the respondent 'DROPOVIT'. The appellant had applied for rectification of the register by removal therefrom the respondents mark on the ground that it so nearly resembled its mark as to be likely to deceive or cause confusion. The Supreme Court accepted the case stated in the affidavits of the defendant indicating that the letters 'VIT' were a well-known abbreviation used in the pharmaceutical trade to denote vitamin preparations. The Supreme Court further observed that even an average customer would know that in respect of vitamin preparations the word 'VIT' occurs in a large number of trade marks and because of this he would naturally be on his guard and take special care against making a mistake. The Supreme Court held that it was apparent that the terminal syllable 'VIT' in the two marks is both descriptive and common to the trade and that if greater regard is paid to the uncommon element in these two words it is difficult to hold that one will be mistaken for or confused with the other. The argument based on the principle of series was thus accepted as on facts the plaintiff had established its case.
33. Similarly an unreported judgment of a learned single Judge of this Court in this case of Lupin Laboratories Ltd. v. Nicholas Piramai India Ltd., (Notice of Motion No. 239 of 1998 in Snit No. 4646 of 1997) relied upon by Mr. Tulzapurkar is of no assistance to him as even there the learned Judge came to the conclusion on the facts of the case. The plaintiffs mark was 'TERF'. The marks which according to plaintiff infringed their rights were 'TER2', 'TER3' and 'TER4'. The learned Judge found that there were many drugs used for the same purpose having in their names the word 'TERF'. Moreover, the defendants had been marketing their drugs under the said marks for about four years.
34. For the same reason, neither is the reliance by Mr. Tulzapurkar on the judgment of a learned single Judge of the Calcutta High Court in Griffon Laboratories Pvt. Ltd. v. Indian National Drug and Co. Pvt. Ltd. 1987 IPLR 9 well founded. The plaintiffs mark there Was SORBILINE and it sought to restrain the defendant from using the mark SORBITONE. It was found that the basic ingredient was SOR-BITOL. It was also found that with the prefix SORBI several medicines were being manufactured and in respect of one of them at least the plaintiff had not raised any grievance. The court therefore came to the conclusion that the manufacture of medicine with the prefix SORBE or SORBI was common in the medical world. Apart from that the defendant had already been using the marks for about six years before the suit was filed. It was inter-alia for these reasons that the Court held that the defendants mark will not and cannot cause deception or confusion among the public.
35. Mr. Daruwalla's reliance upon a judgment of the Chancery Division in Stuart Pharmaceuticals Ltd. v. Rona Laboratories Ltd., 1981 Fleet Street Reports 20 - in answer to the above judgment is however not appropriate. The plaintiff alleged that the defendants mark SORBISLO infringed its mark SORBITRATE. Mr. Daruwalla obviously referred to this judgment in view of the similarity of the marks in both the cases and the fact that in this case the plaintiffs succeeded in obtaining an injunction. But the injunction was granted for altogether different reasons. The series argument was also rejected for different reasons. It appears that it was rejected as it was found that in England the prefix SORBI was used only by the plaintiffs and the defendants so far as the field of preparation of the drugs for the treatment therein was concerned. It is not that the plaintiff succeeded in obtaining an injunction despite the defendant having established its case on the series theory.
36. In this case there is no evidence of the nature or to the extent required to sustain a defence on the series argument. I see no reason to take a different view in the present case from the one that I took in the Pidilite case. In the circumstances, I would reject Mr. Tulzapurkar's submission based on the series argument.
37. The Registrar shall however decide the proceedings before him between the parties in respect of the said marks on merits. The defendant shall be at liberty to produce such evidence as it may desire in the proceedings.
38. In the circumstances the Notice of Motion is made absolute in terms of prayers (a) to (f). There shall be no orders as to costs.