Thakkar, J.
1. This appeal is filed against an order passed by the Second Extra Assistant Judge, Baroda below application Exh. 5 on April 20, 1992 in Trade Mark Suit No. 1 of 1992. The appellants are the original plaintiffs and the respondent is the original defendant. The appellants-plaintiffs filed a suit in the District Court at Baroda being Trade Mark Suit No. 1 of 1992 for permanent injunction restraining the respondent defendant from using in any manner in relation to pharmaceutical or medicinal preparations, the impugned trade mark CLOFRANIL or any other distinctly similar trade mark so as to infringe the trade mark registered in favour of the plaintiff No. 1 bearing No. 233145 under the style of ANAFRANIL. Alongwith the plaint, the plaintiffs filed an application Exh. 5 under Order 39 Rules 1 and 2 of the Code Civil Procedure, 1908 for interim relief. The Assistant Judge, Baroda by an order dt. April 3, 1992 issued notice to the defendant and granted ex-parte ad-interim relief in favour of the plaintiffs restraining the defendants from using the said trade mark till April 24, 1992.
2. Being aggrieved by the said order the defendant approached this Court by filing Appeal From Order No. 200 of 1992 and after hearing both the parties, I partly allowed the said appeal by my order dt. April 9, 1992 and directed the trial Court to dispose of the application Exh. 5 on or before April 18, 1992. Pursuant to the said order, the learned Judge heard the parties and by the impugned order, dismissed the application for interim injunction filed by the plaintiffs. It is against this order that the present appeal from order is filed by the original plaintiffs.
3. Mr. G. N. Desai, learned Counsel appearing for Mr. A. L. Shah, submitted that the impugned order below Exh. 5 requires to be quashed and set aside on a number of grounds. He submitted that the trial Court has committed an error of law in not keeping in mined & considering the distinction between 'infringement of a trade-mark' and 'action of passing-off'. He submitted that in the first category of cases, since trade mark is a proprietary right, mere act of infringement and breach of the registered trade mark is sufficient and nothing more is necessary. If the infringement is established, the plaintiff is entitled to injunction. He submitted that the mark of the defendant is 'deceptively similar' as defined in Section 2(1)(d) of the Trade and Merchandise Marks Act, 1958, (hereinafter referred to as 'the Act'), which reads as under :
'(d) 'deceptively similar' : A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;'
According to Mr. Desai by deeming provision the legislature has enacted that if one mark so nearly resembles other mark as to be likely to deceive or cause confusion, it would be deemed to be deceptively similar. Mr. Desai further submitted that in infringement cases, the test is not establishing of 20 per cent case by the plaintiff, but that the plaintiff must show a strong prima facia case 'something more is needed than a case that will avoid being struck out as frivolous or vexatious.' (Vide Kerly's Law of Trade Marks and Trade Names, Eleventh Edition, Para 15.69, page 297). Mr. Desai submitted that if interim relief is not granted, virtually the suit of the plaintiff would be dismissed at this stage and if on the other hand interim relief is granted and the defendant would finally succeed, he can be compensated by payment of damages and/or compensation. Finally, he submitted that the application of the plaintiffs, Exh. 30 for production of documents has been wrongly rejected by the trial Court.
Mr. S. B. Vakil for Mr. Y. J. Trivedi, on the other hand supported the order passed by the trial Court. He inter alia submitted that the order is interlocutory in nature and even if two views are possible, the Court cannot set aside the said order by reversing the finding of the trial Court. He submitted that to grant or refuse to grant interim injunction is undoubtedly in the discretion of the Court and unless the said discretion has been exercised arbitrarily, unreasonably or capriciously, this Court cannot interfere with the said order. According to Mr. Vakil, if interim injunction is granted, virtually the suit is decreed an interlocutory stage and thereafter nothing more is required to be done by the trial Court. On merits also, he submitted that as per settled principle of law, the burden of proof of infringement is always on the plaintiffs and there is no evidence worth the name that the defendant has committed infringement of Trade Mark of the plaintiffs. According to Mr. Vakil, the plaintiffs have no prima facie case at all, balance of convenience is also not in their favour inasmuch as admittedly the plaintiffs have never manufactured the drug in question in India. Even according to them, they have exported the product to India but looking to the documentary evidence, no separate figures of goods imported and said to have been marketed in India have been disclosed by the plaintiffs. It, therefore, cannot be said that the plaintiffs have acquired or established any distinctive mark for their product, Mr. Vakil further submitted that the expression 'CLOFRANIL' cannot be said to be deceptively similar to the expression 'ANAFRANIL' since both the expressions are visually as well as phonetically dissimilar. The first three letters of both of them are also not similar and there is no likelihood of deceipt or causing confusion as contended by the plaintiffs. According to Mr. Vakil, whether two marks can be said to be deceptively similar or not depends upon a number of factors; such as, commodity in question, the seller, the purchaser, whether they would be freely available in the market and so on. No universal rule can be laid down for deciding such a controversy. Finally, he submitted that the drug in question is included in Schedule 'H' to the Drugs and Cosmetics Rules, 1945 and the said drug can be purchased only upon the prescription of a Doctor and on that ground also, there is no possibility of creating confusion in the minds of buyers and the plaintiffs are not entitled to injunction as prayed for.
4. Having given anxious consideration to all the facts and circumstances of the case I am of the opinion that the order passed by the trial Court is in accordance with law and does not require any interference by this Court.
Mr. Desai is right in contending that in cases of infringement, nothing more is necessary to establish and is infringement of trade mark is proved, there is violation of the right of the plaintiff entitled him to get the action of injunction in his favour. In the case of Durga Dutta Sharma v. N.P. Laboratories : [1965]1SCR737 , the Supreme Court drew a distinction between the action for passing-off and action for infringement of a trade mark, and observed that the action for infringement is a statutory remedy conferred on the proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. Similarly, in Rustom and Hornby Ltd. v. Zamindara Engineering Co. : [1970]2SCR222 , the Supreme Court observed that in an action of infringement, issue would be as under :
'Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ?'
The Court further observed that in an action for an infringement, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark since an action of the infringement is a statutory right and neither deceipt nor actual damage need be proved in such cases.
5. Mr. Vakil for the respondents did not dispute the above proposition of law. He, however, submitted that in Durga Dutta Sharma (supra) the Supreme Court unequivocally held that in an action for infringement of trade mark the burden of proof is always on the plaintiffs and unless the said burden is discharged the plaintiffs are not entitled to injunction. The test is whether the term 'ANAFRANIL' can be said to be such that it can be said to be deceptively similar to 'CLOFRANIL'. From the facts it becomes clear that both the marks consist of nine letters in English. It also cannot be denied that six letters (FRANIL) are identical. According to Mr. Desai, there is structural, visual and phonetical similarity in both the expressions 'CLOFRANIL' and 'ANAFRANIL'. On the other hand, according to Mr. Vakil, there is on such similarity except the last six letters 'FRANIL'. According to him, even a reasonable lay-man is able to understand the distinction between 'CLO', and 'ANA' which is the controlling sound. There is, thus, total visual and phonetic dissimilarity between the two. A number of judgments have been cited before me by the learned Counsel for the parties. It is not necessary for me to deal with all the decisions cited by them, but some relevant decisions may now be considered.
6. In the case of Amritdhara Pharmacy v. Satya Deo : [1963]2SCR484 , the question before the Supreme Court was whether names 'Laxmandhara' and 'Amritdhara' in respect of the medical preparation for alleviation of various ailments could be said be deceptively similar to one another. Considering the nature of the drug in question the Court observed :
'It is not disputed before us that the two names 'Amritdhara' and 'Laxmandhara' are in use in respect of the same description of goods, namely a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly be people who instead of going to a Doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and towns folk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd. : [1960]1SCR968 , the question has to by approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Laxmandhara' is in our opinion, likely to deceive or cause confusion. We must consider the overall similarly of the two composite words 'Amritdhara' and 'Laxmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words 'as current of nectar' or 'current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated persons it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between 'current of nectar' and 'current of Lakshman'. 'Current of Lakshman' in a literal sense has no meaning; to give it meaning one must further make the inference that the 'current or stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologies to the extent of seeing the so-called ideological difference between 'Amritdhara' and 'Laxmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments.
We agree that the use of the word 'dhara' which literally means, 'current or stream' is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstances that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused because unusually stupid people, 'fools or idiots', may be deceive. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a some what vague recollection that he had purchased a similar medicine on a previous occasion with a similar name.'
According to the Hon'ble Supreme Court for deciding the question of deceptive resemblance two important questions must be considered : (1) who are persons whom the resemblance must be likely to deceive or confuse; and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. Formulating the test of 'an unwary purchaser of average intelligence and imperfect recollection', the Court held that a lay man may be misled by expression 'Lakshmandhara' and 'Amritdhara' and held that the plaintiffs were entitled to injunction.
In Parle Products v. J.P. & Co. Mysore : [1972]3SCR289 , the question before the Supreme Court was of Gluco Biscuits and Glucose Biscuits. Relying upon and following Durga Dutta Sharma (supra), the Court laid down the following test :
'It is, therefore, clear that an order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.'
The Court observed that after all an ordinary purchaser is not gifted with the powers of observation of Sherlock Holmes and that if there is overall similarity to the registered mark as would be likely to mislead a person usually selling with one to accept the other if offered to him, it would be sufficient.
7. The above principles are well settled. But at the same time, prima facie, it cannot be said that there is infringement of the mark of the plaintiff in view of three different letters in the beginning 'CLO' and 'ANA' pronounced differently. Again, prima facie, Mr. Vakil appears to be right in contending that the Court must also bear in mind the difference in letters by considering whether the difference is in the beginning in the middle or at the end and what is controlling sound. Relying on Kerly, he submitted that 'the first syllable of word mark is generally the most important'. (Vide Kerly's Law of Trade Marks and Trade Names; Eleventh Edition, para 17, 20 page 416). A number of decided cases have also taken into account the above principles while deciding whether infringement has been committed by the defendant or not.
In Roche & Co. v. G. Manners & Co. : [1970]2SCR213 the question before the Supreme Court was whether 'PROTOVIT' could be said to be similar to 'DROPVIT'. Both marks consisted of eight English letters, the last three being common and identical ('VIT'). Even though there was no sufficient difference in the first syllable of both the marks 'PROTO' and 'DROPO', the Supreme Court held that it could not be said that there was deceptive similarity in both the marks. Similar view has been taken in M/s. Johann v. C.I. and P. Laboratories Ltd. : AIR1984Bom281 and in other cases.
8. An important consideration however, in my opinion in the instant case is this : It is an admitted fact that under the Drugs and Cosmetics Rules, 1945, the drug in question is included in Schedule 'H'. In view of the inclusion of the drug in Schedule 'H' to the Rules, it is available only on prescription of a Registered Medical Petitioner under the provisions of the Rules. It is a relevant consideration for the purpose of deciding the question of deceptive similarity between the two marks. In my opinion, Mr. Vakil is right in submitting that there is no test which can universally apply in all cases and the test may vary from case to case taking into account the commodity in question, a class of purchasers or buyers, a class of dealers or sellers availability of such a commodity in open market and so on. Purchase of a biscuit can neither be compared with purchase of a machine nor with a medicine. Again, even in the case of medicine, a question may be posed before the Court in a given case whether such a medicine would be available freely in the market or can be had only upon prescription of a Doctor. Finally, the test should not be that in no case a purchaser would commit mistake but the percentage of the possibility or likelihood of committing such mistakes. Thus, in Roche and Co. (Supra), the Supreme Court observed that in the case of medicine, ordinarily, the customers would obtain a prescription from a Doctor and show it to the chemist before the purchase. In such a case, except in the event of handwriting of a Doctor being very bad or illegible the chance of confusion is remote. Again, such possibility is remote in view of the further fact that the drug in question would not be available from any other shop except from a licence dealer.
9. In E. R. Squibb & Sons Inc. v. Curewel India Ltd. : AIR1987Delhi197 the High Court of Delhi was concerned with two marks 'RECLOR' and 'CURECHLOR'. the preparation was chloramphenicol being marked by both the parties under two brand names was admittedly a Schedule 'H' drug available only on the prescription of a Doctor. The Court after considering the relevant provisions of the Drugs and Cosmetics Rules, 1945, observed :
'The preparation 'Chloramphenicol' which is being marked by both the side under the two brand names is admittedly a Schedule 'H' drug and as per sub-rule (9)(a) of Rule 65 of the Drugs and Cosmetics Rules, 1945 substances specified in Schedule 'H' or Schedule X shall not be sold by retail except on and in accordance with the prescription of a Registered Medical Practitioner. The supply of drugs specified in Schedule 'H' or Schedule 'X' to Registered Medical Practitioners, Hospitals, Dispensaries and Nursing Homes can also be made only against the signed order in writing which has to be preserved by the licensee for a period of two years. There are conditions given for the purposes of preparation of prescriptions also with regard to the Schedule 'H' drugs, Sub-rule (11) of Rule 65 says that persons dispensing a prescription containing a drug specified in Schedule 'H', like the drug in question, shall comply with the requirements as detailed thereunder which also places a number of restrictions on the dispensing chemists for their sale to customers. The dispensing chemists also according to these rules have to be persons qualified in the Science and Pharmacology. Thus keeping in view these safeguards and restrictions regarding the stocking and sale to customers thereto by the chemists I am of the considered view that the chemists who alone are to sell the product in question to customers are not likely to be confused by the trade mark of the defendant when they have to sell the product of the plaintiff under the brand name 'Reclar'.'
Similar view is taken by this court in Appeal From Order No. 201 of 1987, decided on September 8, 1987 by M. B. Shah, J.
Mr. G. N. Desai, however, relied on the decision of this court in Kamp and Co. Ltd. v. Cadila Laboratories. Appeal From Order No. 89 of 1979, decided by S. H. Sheth, J. on July 9, 1979. He submitted that in that case even though the drug in question was Schedule 'H' drug, the Court granted injunction in favour of the plaintiff. Mr. Desai, placed reliance on the following observations :
'Lastly, Mr. Desai has argued that the defendant has not tried to explain why it has become necessary for them to change KEMP'S AMPICILLIN into 'KEMPSILLIN'. According to him, therefore, the change effected by the defendant is dishonest. In interlocutory proceedings, I do not propose to enter into honesty or dishonesty of that the defendant has done. However, it cannot be gainsaid that if interim injunction is confirmed, the defendant will not stand to loss anything because they can go on marketing the same product in the same bottles under a slightly different name KEMP'S AMPICILLIN under which they had been marketing it before they effected the present change because the statistics produced before the court show that it was the name of the manufacturer which mattered and not the name of the product because the defendant ...'
In a subsequent decision in Appeal Form Order No. 201 of 1987, this court, however, considered the above observations of S. H. Sheth, J. as lying down the principle that if the drug in question is included in Schedule 'H' and if it is not available except on the prescription by a Doctor, 'in all probability there would be absolutely less chance of deception'.
Mr. Desai also relied upon an order passed by the City Civil Court in Civil Suit No. 4762 of 1988. In that case also the drug was included in Schedule 'H'. Inspite of that injunction was granted by the trial Court. When the matter came to this Court by way of Appeal from Order, this court (Coram : A. P. Ravani, J.) passed the following order :
'I am broadly in agreement with the reasons given and the conclusions arrived at by the learned trial Judge. Hence dismissed. R & P be sent back to the trial court immediately.'
10. According to Mr. Desai, when the appeal was summarily dismissed, and this court agreed with the reasonings given and conclusions arrived at by the trial court, the order passed by the trial court would be applied with full force as if it were passed by this court. However, as mentioned hereinabove by me and looking to various authorities including the decision of the Supreme Court, inclusion of a drug in Schedule 'H' would indeed be a relevant and material consideration and the court can certainly consider that fact.
11. A leading case, in my opinion, is an English decision in the case of in Re Bayer Products Ltd. (AIR 1947 (2) ELR 188). The question before the court of Appeal was whether two marks 'DIASIL and 'ALASIL' could be said to be deceptively similar. Lord Greene M.R. considered the fact that the legislature ensured that the Scheduled poisons shall only be dealt with by skilled and responsible persons, subject to very careful regulation. 'It is obvious that, once you get a statutory regulation of the channels of supply, it is essential that the court, in considering the possibilities of deception, should take into account the extent to which such a possibility is minimised, or, perhaps, obliterated altogether, by the statutory regulations'.
The learned Master of the Rolls then observed :
'Once you get the position that only a doctor can order sulphadiazine, that he must give a written prescription, and that a chemist cannot supply it without such a prescription, you ensure that the article is only going to pass at that stage through the hands of skilled persons, who by their training, their experience and their knowledge would be most unlikely to refer to it in a way which would admit of any reasonable possibility of confusion.'
It was also argued that in spite of such regulations the possibility of confusion could not be ruled out altogether. Dealing with such a situation, the court observed :
'It is impossible, of course, to exclude entirely the risk of confusion. What we are concerned with are, not unlikely cases which may happen once in one hundred years, but reasonable probabilities, and we have to ask ourselves in relation to those facts : Is there such a risk that a doctor or a chemist, or the two of them in combination, by some carelessness in expression, some obscurity in handwriting, some slip of recollection, or some careless mistake which you would not expect highly trained professional people to fall in to, will refer to the product in such a way as will lead the court to say that there is a reasonable probability of confusion In my opinion, there is not. It seems to me that, if one is really to give weight to such a risk, it involves attributing to those highly skilled, experienced and careful people, to whom - and to whom alone - the legislature has entrusted the precautions necessary under the Pharmacy and Poisons Acts, qualities of carelessness or incompetence which are not usually found in that class of persons. We are concerned, not with hypothetical possibilities, but with the ordinary practical business probabilities, having regard to the circumstances of the case.'
12. In my judgment, inclusion of a drug in Schedule 'H' to the Drugs and Cosmetics Rules, 1945 and its a availability only on the prescription by a Doctor is indeed a fact which cannot be ignored by a court of law. There is, therefore, really remotest possibility of mistake or confusion. The Court will certainly consider reasonable probabilities of any confusion or mistake but at the same time cannot base is decision on remotest or hypothetical possibilities. In my opinion, the argument of Mr. Vakil is well founded that an ordinary lay lay-man when he would be purchasing medicine of such a nature, he would be on his guard and quite cautions and would not allow himself to be satisfied with a different medicinal preparation. Similarly, under the Rules a duty is cast on the dealers and they cannot consistently with that duty pass on any other preparation instead of the one prescribed by the Doctor. By doing so, they would be committing breach of the provisions of the Rules as also conditions of licence. Mr. Desai, no doubt, submitted that this aspect cannot be considered by the court at this stage while deciding application, Exh. 5. I am unable to accept the said submission. In my judgment, all relevant material and facts which can be considered at the time of hearing of the suit can be considered at the time of hearing of application Ext. 5 also. I, however, make it clear that all the observations made by me hereinabove must be treated as prima facie observations only to the extent to deciding application Exh. 5 and the trial court while deciding the suit will not be influenced by those observations and will decide the matter in accordance with law on merits.
13. With regard to application Exh. 30, I am of the opinion that the trial court has not committed any error of law in not allowing the plaintiff to produce additional evidence at this stage. Evidence is still to be led by the parties. The plaintiff filed a suit on April 3, 1992. As per the order passed by this court, the trial court was directed to decide the matter on or before April 18, 1992. Affidavit-in-reply was filed by the defendant on April 13, 1992 and on April 16, 1992, the plaintiff filed affidavit-in-rejoinder. Thereafter on April 18, 1992, the application was filed for production of other documents which was rightly rejected by the court.
14. For all these reasons, in my opinion, it cannot be said that the trial court has committed any error of law which required interference by this court. Hence appeal is dismissed.
15. The learned Counsel for the appellant prays that the appellant wants to approach the Hon'ble Supreme Court of India and prays that ad- interim injunction granted by the trial court and continued till today may be extended for some time so as to enable the appellants to take appropriate proceedings accordance with law. The learned Counsel for the defendant-respondent strongly objects the said prayer. However, in the facts and circumstances of the case, ad interim injunction granted earlier is ordered to be continued till May 6, 1992.
16. Appeal dismissed.