ORDER
N. Dhinakar, J.
1. Plaintiff in C.S. No. 58/03 on the file of the Original Side of the High Court, Madras, is the appellant in O.S.A. No. 258/03 and the defendant in the said C.S. No. 58/03 is the appellant in O.S. No. 360/03. The said C.S. No. 58/03 was filed by the plaintiff for passing off action against the defendant and along with the civil suit, he also filed O.A. No. 95/03 for injunction, pending the suit, restraining the defendant/respondent from dealing with the medicinal and pharmaceutical preparation under the trade mark 'PIO-15' and 'PIO-30', which according to him are identical with and deceptively similar to the plaintiff's trade mark 'PIOZ-15' and 'PIOZ-30'.
2. The learned single Judge ordered notice on the said application on 28.1.03. The defendant/respondent appeared and filed his counter. He also filed O.A. No. 1396/03 for issuance of notice to the plaintiff/applicant as to why he should not be prosecuted for the acts of perjury and making false statements. The learned single Judge, by a common order dated 11.7.03 dismissed both the applications. The learned single Judge, while dismissing the injunction application, held that he defendant/respondent has no registered address at Chennai and, therefore, ought to have obtained leave to sue the first defendant, who according to the learned single Judge, was carrying on business outside the jurisdiction of this Court. The learned single Judge further held that the word 'PIO' is publici juris and the plaintiff/applicant had no monopoly over the same and that the products are not identical. In view of the above findings, the application for injunction sought by the plaintiff/appellant was dismissed. The learned single Judge also dismissed O.A. No. 1396/03, as stated earlier, holding that no perjury has been committed by the plaintiff/appellant since the address given in the plaint of the appellant is only a bona fide mistake of fact as he believed the address to be the official address of the first defendant. Aggrieved by the said order refusing to grant injunction, O.S.A. No. 258/03 has been filed by the plaintiff/appellant and aggrieved by that portion of the order refusing to initiate action for perjury against the plaintiff/appellant, the defendant has directed O.S.A. No. 360/03. As the issues involved are interlinked in the two appeals, they are disposed of by the following common order.
3. The plaintiff made an unofficial search for the trade mark 'PIOZ' on 26.7.00 and on 2.8.00 obtained quotation for designing 'PIOZ' logo from M/s.Avenue Topographies and on 10.8.00 received ten samples of 'PIOZ' logo and cartons for its approval. On 26.1.01, cartons of the plaintiffs medicinal preparations under the trade mark 'PIOZ' were made ready and on 1.2.01, preparations bearing the trade mark 'PIOZ' were transferred from USV Factory to godown. On 19.2.01 they started selling the preparation bearing the trade mark 'PIOZ' in the State of Andhra Pradesh and sales commenced in the State of Tamil Nadu in February, 2001. He was also selling the said preparations in other States. In the meantime, the defendant also started marketing its products under the brand name 'PIO-15' and 'PIO-30' in the form of tablets as could be seen from the bill of Nargiz Medicals on 4.1.03., though there is no definite material before this Court as to when the products 'PIO-15' and 'PIO-30' came to be marketed by the defendant. The fact remains that the products 'PIO-15' and 'PIO-30' were in the market atleast from 4.1.03 and it could have been much earlier also.
4. The contention of the appellant is that the plaintiff being the owner of the trade mark 'PIOZ', the defendant is not justified in passing off its products under the brand name 'PIO-15' and 'PIO-30'. It is not out of place at this stage to state that both the products contain 'PIOGLITAZONE', a molecule name, which is the active ingredient in various medicines meant for the treatment of diabetes.
5. We now take up the first contention of Mr. P. Chidambaram, learned senior counsel for the appellant, that the learned single Judge was not justified in holding that the plaintiff did not give the correct address of the first defendant and that he was not carrying on business within the jurisdiction of this Court. It was also contended that the learned single Judge was not justified in holding that the plaintiff did not apply leave to sue the first defendant as the address given by him is not correct and that he was not doing business in the State of Tamil Nadu. In support of his plea, the learned senior counsel drew our attention to the second paragraph of the plaint, wherein he has specifically averred that the first defendant is a company incorporated under the Companies Act, 1956, having its office at No. 11, 1st Street, Railway Colony, Mehta Nagar, Chennai-29. According to him, in the counter filed by the first defendant, it has been stated that the registered office of the first defendant is at No. 101, Pragathi Chambers, Ranjith Nagar, New Delhi-8 and that they have no branch office at Chennai. The learned counsel relying upon the said statement in the counter contended that it is not the case of the plaintiff that the first defendant was having its branch office at Chennai, but it is the case of the plaintiff that the first defendant through their consignee agent, M/s.Pride Remedies Pvt. Ltd., was marketing the products in Tamil Nadu and, therefore, there is no necessity to seek leave to sue. He submitted that if the offending product is sold in Chennai, this Court has jurisdiction to entertain the suit.
6. Per contra, Mr. Arvind P. Datar, learned senior counsel appearing for the defendants/respondents, submitted that Systopic Laboratories are not located at Chennai as alleged in paras-17 and 18 of the plaint and the first defendant's address in the plaint is the office address of the consignee agent and that the photograph of a building produced along with the application only shows that on the top portion of the building, a board is found containing the name Pride Remedies Pvt. Ltd. and, therefore, the plaintiff was not justified in stating that the address of the first defendant given in the plaint is the office address of the first defendant and according to him, M/s.Systopic Laboratories, who is the first defendant in the above civil suit, has no office at No. 11, 1st Street, Railway Colony, Mehta Nagar, Chennai, and, therefore, the plaintiff ought to have obtained leave before suing the first defendant.
7. Now we will have to take up the first contention to find out whether the first defendant was marketing his products under the brand name 'PIO-15' and 'PIO-30' in Chennai through the consignee agent. If we come to the conclusion that he has been marketing his products at Chennai, then it goes without saying that the first defendant was carrying on his business in Chennai and there will be no necessity for the plaintiff to obtain leave for suing him as this Court gets jurisdiction to entertain the suit against him.
8. In Ramu Hosieries v. , this Court had an occasion to consider whether the publication of a daily named 'Eenadu' emanating from Hyderabad and widely circulated in the city of Chennai amounts to infringement of the appellant's trade mark and whether cause of action arise wholly or in part within the jurisdiction of this Court on account of the trade mark registered at Madras Registry. After considering the law on the subject, this Court ultimately held that whether the infringement had taken place partly in one jurisdiction by way of advertisement and rest in another jurisdiction by marketing the product, then, a registered owner of the trade mark could maintain the suit either at the place where the cause of action arose partly or wholly, which includes the place of registration, advertisement or marketing.
9. In Scientific Compounds & Processes Private Limited v. National Soapnut Works, Bangalore, 1998 (1) LW 640, a Division Bench of this Court held that to decide whether the Court gets jurisdiction or not could not be decided on the basis of the statement made in the affidavit filed in support of the application and the proper course will be to frame an issue after the written statement is filed as to whether the Court has jurisdiction and try it either as a preliminary issue or along with other issues on the basis of the evidence that will be let in by the parties.
10. In Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Ltd., Simla v. Mohan Meakin Breweries Limited, Salon (Himpra), , a learned single Judge of the Punjab & Haryana High Court held that in a suit for passing off or injunction on account of infringement of trade mark, the cause of action partly or wholly arise in a given jurisdiction only if it is the defendant who is proved to have directly made sale of goods under the impugned trade mark, within that jurisdiction, not to an individual consumer but to a distributor, wholesaler or retailer and that such a sale is on a commercial scale.
11. At this stage, it becomes necessary to refer to Clause-12 of The Letters Patent - High Court, Madras. It reads as follows :
'if the defendant at the time of the commencement of the suit shall dwell or carry on business or personally work for gain within such limits'
12. This clause is in parimeteria to Section 20-A of the Code of Civil Procedure, which contemplates that every suit shall be instituted in a Court within the local limits of whose jurisdiction the defendant, or each of the defendants where there are more than one, at the time of commencement of the suit, actually and voluntarily resides, or carries on business, or personal bonds for gain.
13. If we keep in mind the above Clause-12 of the Original Side Rules as well as the law on the subject, which have been enunciated by various Courts to which we have adverted to, it is clear that if a person carries on business in Chennai, then he could be sued without leave of the Court by the plaintiff. On the materials blaced before us, it could be seen that the first defendant, whose registered office is at New Delhi, consigned goods to M/s.Pride Remedies Pvt. Ltd. (C&A;), No. 11, Railway Colony, First Street, Mehta Nagar, Chennai-29 on 18.11.02 and were received by it. This shows that the goods were consigned to his agent and were consigned to various other agents at various places by the consignee agent to enable the products to go to the retailers for their ultimate sale to the consumers as could be seen from the documents placed before us, which form part of the typed set (Vol. III) filed by the defendant/respondent. This fact was also not disputed by the defendant's counsel.
14. Sub-section (9) of Section 2 of the Sale of Goods Act, 1930, defines 'mercantile agent' to mean a mercantile agent having in the customary course of business as such agent authority either to sell goods, or to consign goods for the purposes of sale, or to buy goods, or to raise money on the security of goods. The documents produced before us to which we have adverted to therefore show that the first defendant through his consignee agent, M/s.Pride Remedies Pvt. Ltd., has been carrying on business in the city of Chennai and there is no justification in the argument of the learned senior counsel for the defendants/respondents that the plaintiff ought to have obtained leave to sue.
15. The contention of the learned senior counsel for the appellant that the learned single Judge has erred on a question of law by holding that Order VI Rule 14(A) deals only with the plaintiff's duty to give the address and not of the defendant, though unacceptable to us, in view of other sub-sections found in Rule 14(A), the fact remains that M/s.Pride Remedies Pvt. Ltd., is the consignee agent of the first defendant. It is to be remembered at this stage that notice was sent to the first defendant at the address given in the plaint. It was received by the consignee agent and the following endorsement is also seen therein:
'Received Notice 'as consignee agent of Systopic Laboratories'.'
This notice was in fact forwarded to his principal, namely, the first defendant and he appeared before this Court and filed the counter. This shows that M/s.Pride Remedies Pvt. Ltd, was acting as the consignee agent of the first defendant.
16. Order XXIX, Rule 2 deals with service on Corporations. It states that subject to any statutory provision regulating service of process, where the suit is against a Corporation, the summons may be served
'(a) ..........
(b) by leaving it or sending it by post address to the Corporation at the registered office or if there is no registered office, then at the place where the Corporation carries on business.'
17. In passing off action there is no statutory provision as to how the service of summons has to be effected and, therefore, Rule 2(b) of Order XXIX takes over the field. The learned single Judge, though rightly held that service of summons could be served in terms of provisions of Order XXIX, Rule 2, CPC did not go into the question whether the summons served on the consignee agent is a service on the principal, though the plaintiff had come out with a definite case that the first defendant was carrying on business through his consignee agent and service on the consignee agent is service on the first respondent.
18. At this juncture, we cannot but refer to the judgment of the Supreme Court in Jute and Gunny Bromers Ltd. and Ors. v. , where the Supreme Court held that when the service was effected on the managing agent of the mills, it was effected on one of the principal officers of the Corporation and establishes a good service under Order XXIX, Rule 2 and while holding so the Supreme Court rejected the contention that service must be on a human being in the background of Rules 1 and 3 as they did not define who a principal officer is. The Supreme Court stated that even though under Rules 1 and 3, a principal officer must be a human being, it does not fallow that in Rule 2 also he must be a human being and according to the Supreme Court Rule 2 relates to service and Clause (b) thereof clearly shows that the service to be effected need not necessarily be on a human being connected with the Corporation, for under Clause (b) the service will be effective if the summons is left or sent by post addressed to the Corporation at the registered office or if there is no registered office or at the place where the corporation carries on business.
19. It is also not out of context at this stage, for us to state, that to pointed questions posed to the counsel for the defendant/respondent, that whether M/s.Pride Remedies Pvt. Ltd. is the consignee agent of the first defendant; whether the goods have been consigned to them; and whether the products have been distributed to other agents for them to be distributed to the retailers, the learned senior counsel admitted that he cannot deny the above facts. The materials produced before us, which we have already referred to and the answers given by the learned senior counsel that he cannot deny the above facts therefore show that the first defendant was carrying on business in Chennai.
20. The contention of the learned senior counsel for the plaintiff/appellant that the learned single Judge did not properly appreciate the law laid down by the Supreme Court in Shalimar Rope Works Ltd. v.cannot be easily brushed aside by us. That was a case where the summons were handed over to an employee not authorised to accept the summons and in that context the Supreme Court held that mere handing over of summons to an employee not authorised to accept summons does not amount to valid service of summons on company. In the case before us, it is not in dispute that the summons were served on the consignee agent, who made an endorsement, which we have already referred to and forwarded the said summons to his principal. It is not the case of the defendant that summons were handed over to an employee not authorised to accept summons and that there is no valid service of summons on the company. In view of the above it is clear that summons were served on the consignee agent, namely, M/s.Pride Remedies Pvt. Ltd. and there can be no difficulty for this Court to come to the conclusion that there was valid service of summons on the first defendant since the consignee agent received the summons and forwarded it to his principal as could be seen from the endorsement made by the consignee agent. We therefore hold that there was effective service of summons on the first defendant through his consignee agent.
21. It has to be pointed out that from the photograph relied upon by the learned senior counsel appearing for the defendant and the board seen on the top of the building, this Court cannot come to the conclusion that the first defendant was not running his business through the consignee agent since we have already held that M/s.Pride Remedies Pvt. Ltd. is the consignee agent of the first defendant, which could be seen from Page-17 of Vol.111 of the typed set of papers furnished by the appellant.
22. It is also to be remembered that the defendant did not attribute any oblique motive nor it is his case that the address of the first defendant given in the plaint is a fictitious address. It is not even the case of the defendants that the address of the first defendant is not an address with which he has no connection since the materials show that he has business connection with the first defendant at the said address, as it is to the very address he has sent goods for distribution. It is also not the case of the defendant that there was no service of summons upon him on the said address. In view of the above, we hold that there is no need for the plaintiff to have obtained the leave to sue the first defendant and this point is answered in favour of the plaintiff/appellant.
23. The next contention of the learned senior counsel for the appellant was that the learned single Judge committed an error in coming to the conclusion that the word 'PIO' sounds different from the word 'PIOZ' is incorrect and they are not phonetically different, not identical and they are deceptively similar and, therefore, passing off action against the defendant could be maintained. Per contra, the learned senior counsel appearing for the defendant/respondent contended that 'PIO' and 'PIOZ' are phonetically different and there is no deceptive similarity and the word is a publici juris and the plaintiff has no monopoly over it.
24. Before we go into the question, we have to know what is meant by publici juris. It is a Latin word and deals with public right. The word 'public' in this sense means pertaining to the people, or affecting the community at large; that which concerns a multitude of people; and the word 'right,' as so used, means a well-founded claim; an interest; concern; advantage; benefit. This term, as applied to a thing or right, means that it is open to or exercisable by all persons. It designates things which are owned by 'the public,' that is, the entire state or community, and not by any private person. When a thing is common property, so that any one can make use of it who likes, it is said to be publici juris; as in the case of light, air, and public water (vide Black's Law Dictionary - 5th Edn.).
25. Kerley in his book 'Law of Trade Marks and Trade Names' (13th Edn.) stats that names, which once carried a distinctive reference to a particular trader may, in consequence of successful piracies, or of their use by the trader himself for goods which are the goods of others, or are put forward as such, or for other reasons, lose it and fall into common use and become publici juris, in the same way as trade marks may be lost or abandoned. The proper test whether an exclusive right has become publici juris is whether the use of the trade mark by other persons has ceased to deceive the public as to the maker of the article and that piracy, which exceeds in volume the genuine goods may fail to destroy the reputation of a mark, if it remains surreptitious, so that the ultimate consumer never appreciates the true position.
26. Dr. Venkateswaran in the book 'The Law of Trade Marks and Passing Off' (4th Edn.), has stated that marks, which are common to the trade cannot be distinctive to the goods of any particular manufacturer and will not be registered. A mark may be common to the trade when it is in common use in the trade in the goods concerned or is open to the trade to use. A word to the exclusive use of which as a trade mark a particular trader has been entitled, may subsequently become publici juris and if this happens no monopoly can thereafter be claimed by any person in that word. Every trader has a right to use for his trade purposes the terminology common in his trade, provided always that he does this in a fair, distinct and unequivocal way. The author is also of the opinion that the phrase 'common to the trade' is capable of two meanings:
'i) in common use in the trade ;
ii) open to the trade to use'
and that it is a question of fact in each case whether a mark is common to the trade.
27. In Cadila Health Care Ltd. v., it was held by the Supreme Court that the real question to decide in cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. The Supreme Court further held that in deciding a question of similarity between two marks, marks have to be considered as a whole and that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. It further held that to decide the question it must be seen as to how an unwary purchaser of average intelligence and imperfect recollection split the name into its component parts and consider its etymological meaning thereof or even consider the meaning of the composite words.
28. In Lakshmikant V. Patel v. , the Supreme Court held that an action for passing off will lie whenever the defendant company's name or its intended name is calculated to deceive, and so to divert business from the plaintiff, or to occasion a confusion between the two businesses and if this is not made out there is no case. It further stated that where there is probability of confusion in business, an injunction will be granted even though the defendants adopted the name innocently. The Supreme Court was of the further view that honesty and fair play are, and ought to be, the basic policies in the world of business and that when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of some one else to himself and thereby resulting in injury. The Supreme Court referred to the judgment in Oertil v. Bowman, 1957 RPC 388 and held that gist of passing off action was defined by stating that it was essential to the success of any claim of passing off based on the use of given mark or get-up that the plaintiff should be able to show that the disputed mark or get-up has become by user in the country distinctive of the plaintiff's goods so that the use in relation to any goods of the kind dealt in by the plaintiff of that mark or get-up will be understood by the trade and the public in that country as meaning that the goods are the plaintiff's goods.
29. We are very well aware that it is common in Pharmaceutical trade to take a few letters of a chemical or even part of the word and add a few more alphabets to them and market the said preparation under a brand name. A look at the Indian Drug Review (IDR), Sept.-Oct. 2003 issue at page-526, shows that 'PIOGLITAZONE' does not appear to inhibit any of the major P450 enzymes at clinically relevant concentrations. The pharmacokinetics of pioglitazone was not altered following its concurrent administration with metformin. Co-administration of glipizide (5 mg. once daily) for seven days had no clinically relevant effect on the pharmacokinetics of Pioglitazone. It further reveals that 'PIOGLITAZONE' is marketed by several companies under various brand names like 'PEPER', 'PIOGLAR', 'PIOGLIT', 'PIOGLU', 'PIOKAP', 'PIOLEM', 'PIOLET', 'PIOMED', 'PIONORM', 'PIOREST', 'PIOSTAR', 'PIOSAFE', 'PIOTAZ', 'PIOTOP', 'PIOTROL', 'PIOZED', 'PIOZIT', 'PIOZONE', 'DIAGLIT, 'G-TASE', 'GLITO', 'GLITTER', 'GLIZONE', 'GLUFIT', 'OGLO', 'OPAM' AND 'PIO'.
30. Several more examples could be given by this Court that, while marketing a product, the manufacturers take two or more alphabets from the name of the chemical and add one or more alphabets to the same and market them under a brand name containing the said chemical as a medicine. In this case, the plaintiff has been marketing his product under the brand name 'PIOZ', and the defendant has been marketing his product under the brand name 'PIO', but both containing 'PIOGLITAZONE'. The plaintiff had taken 'PIO' and the alphabet 'Z' from the word 'PIOGLITAZONE' and named his produce as 'PIOZ', whereas the defendant stopped with the first three alphabets 'PIO' of the chemical 'PIOGLITAZONE', while naming his brand. There are more than 28 manufacturers of 'PIOGLITAZONE' with various brand names and out of those 28, 19 are using the letters 'PIO' and some others are using the other letters from the word 'PIOGLITAZONE'.
31. It is to be remembered that if a word is an invented word, the protection for the invented word is of a higher degree, whereas the medicines, which have brand names containing few letters of the chemical, the protection is not that higher.
32. In F.Hoffimann-La Roche & Co. Ltd. v. , the Supreme Court held that the marks must be compared as a whole and on comparing the trade marks 'DROPOVIT' and 'PROTOVIT', held that they are not deceptively similar as according to the Supreme Court, the letters 'D' and 'P' in 'DROPOVIT' and the corresponding 'P' and 'T' in 'PROTOVIT' cannot possibly be slurred either in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view.
33. In Panacea Biotec Ltd, v. Recon Ltd., 1996 IPLR 380, a learned single Judge of the Delhi High Court had an occasion to consider the two preparations, namely 'NIMULID' and 'REMULIDE', both having the same composition to find out whether the two brand names are deceptively similar. The learned single Judge, after considering the law on the subject held that it is well settled that no person could claim exclusive use of the descriptive and generic terms and it would be highly undesirable to confer on one trader proprietary right over the use of an ordinary, descriptive or generic word indicative of the nature, composition and quantity of the goods as that would give him complete monopoly to exhibit the word to the exclusion of others. According to the learned Judge, a word, which could qualify as an exclusive mark of a trader must be distinctive so as to distinguish his goods from those of the other persons.
34. In E.R. Squibb & Sons Inc. v. Curewel India Ltd., : , a learned Judge of the Delhi High Court, while considering the two brand names, 'CURECHLOR' and 'RECLOR' held that the two trade marks in question are obviously not similar visually as the trade mark of the defendant starts with the letter 'Cu' preceding the entire trade mark 'RECLOR' of the plaintiff and that there is also an addition of the letter 'h' after the letter 'c' of 'RECLOR' and that phonetically also there is distinct similarity between 'RECLOR' and 'CURECHLOR'. The learned Judge also adverted to the arguments of the respective counsel appearing for the parties and held that the defendant's name is 'Curewel' and a number of its products have the letters 'CURE' appended in the beginning to his brand goes to show that the adoption of the brand 'CURE' by the defendant for marketing 'CHLORAMPHENICOL', which is a base drug is a bona fide one. The defendant's counsel, in fact, explained that the defendant has adopted the letters 'CURE' from its trading style and has adopted the word 'Chlor' from the product itself just as the plaintiff has done for his mark 'RECLOR' as is the common practice by the Pharmaceutical Companies.
35. Similarly in Reckitt & Coleman Ltd, v. Medicross Pharmaceuticals Ltd., 1994 IPLR 31 (Bom)), Griffon Laboratories (P) Ltd. v. Indian National Drug P. Ltd., 1989 IPLR 9, Cadila Laboratories Ltd. v. Dabur India Ltd. 1997 PTC 417, while considering the brand names 'DISPRIN' and 'MEDISPRIN', 'SORBILENE' and 'SORBITONE', 'MEXATE' and 'ZEXATE' respectively, the Courts have held that there is no deceptive similarity. The above three cases deal with chemicals.
36. In two other judgments in Aviat Chemicals Pvt. Ltd. v. Intas Pharmaceuticals Ltd. (Cases & Materials T 400) and Anjendra Kumar Agarwal v. Kruzer Herbals, 1996 PTC 501, the Supreme Court, while considering the brand names 'LIPICARD' and 'LIPICOR' and 'MENSCURE' and 'MENSUROL', respectively relating to ailments, held that the names are not deceptively similar. Similarly in SBL Ltd. v. Himalaya Drug Co., 1997 PTC 540, 'LIV-52' and 'LIV-T' it was held that the brand names are not deceptively similar.
37. This Court cannot also forget the fact that in Brista Myers v. Bristol, 1968 RPC 259, 'BRISTACYN' and 'BRISTACIN' were held to be deceptively similar. Similarly, in the judgments rendered in Aristav v. Rysta Ltd., , it was held that the brand names 'ARISTAC' and 'RYSTA', 'BEPLEX' and 'BELPLEX', 'CALMPOSE' and 'CALMPROSE', 'TOROLAC' and 'ROLAC', in the respective cases are deceptively similar. So it is clear that there are judgments on both sides and it is for this Court to approach the question from the point of view of a man of average intelligence and imperfect recollection to find out whether in a given case the words are deceptively similar and whether an unwary purchaser of average intelligence and imperfect recollection will be deceived. It should be borne in mind that the object of the enquiry in deciding the question in the ultimate analysis is, whether the mark used by the defendant as a whole is deceptively similar to that of the registered trade mark of the plaintiff.
38. Keeping the above principles of law laid down by the Supreme Court, we will now try to analyse the facts in this case to find out whether the word 'PIO' is publici juris and whether the plaintiff is entitled for an order of injunction.
39. Learned senior counsel for the plaintiff/appellant contended that 'PIO' and 'PIOZ' are deceptively similar and according to him the alphabets 'Z' in the word 'PIOZ' is a soft consonant and, therefore, an unwary purchaser of average intelligence and imperfect recollection is likely to be deceived by the defendant marketing his product under the brand name 'PIO'. We are unable to agree with the said argument. In SBL Ltd. v. Himalaya Drug Co., 1997 PTC 540, which we have already referred to above, though not in detail, a Division Bench of the Delhi High Court, while considering whether there is similarity between the words 'LIV-52' and 'LIV-T' held that the word 'LIV' is generic and common to trade as describing the medicines associated with the treatment of liver and it had become publici juris. The Division Bench went on to hold that in the field of medicines and pharmaceuticals, it is common practice that the drugs are named either by the name of the organ which it treats or by the principal ingredients or the name of the ailment, which enables the doctor to associate a particular trade name with the organ, ingredient or ailment thereby reducing the chance of error. The Division Bench thereafter held that no trader could therefore restrain the other trader from using the description of the organ, ingredients or ailment. We are in full agreement with the above views expressed by the Division Bench of the Delhi High Court.
40. It is no doubt true that the alphabet 'Z' is a soft consonant, but it is difficult to hold that the brand name 'PIOZ' is similar to the brand name 'PIO'. Anyone pronouncing the word 'PIOZ' and 'PIO' will be easily able to distinguish 'PIOZ' as different from 'PIO', since the alphabet 'Z' is distinctly heard when the word 'PIOZ' is pronounced. If the alphabet 'Z' is silent in a word when pronounced, then it could be said that there is likelihood of confusion among the unwary purchasers. For instance 'RENDEZVOUS', a French word, which is spelt as 'RON-DHE-VOO', shows that while pronouncing the said word 'RON-DHE-VOO', the word 'Z' is silent. Similarly, two other words ''ALCORZA' and 'ALCORRAZA', which are spelt as 'AL-KOR-THA' and 'AL-KA-RA-THA' respectively and in both words the alphabet 'Z' is silent while they are being pronounced. The word 'SHAA' is spelt as 'CHEZ' wherein also the alphabet 'Z' is silent while it is pronounced.
41. When we pronounce 'PIOZ', it cannot be said that though the letter 'Z' is added to the word 'PIO', the alphabet 'Z' is silent while pronouncing leading to a confusion among the unwary purchasers. In our view, 'PIO' is distinctive and dissimilar to the word 'PIOZ' since the alphabet 'Z' in the name 'PIOZ' is distinct and shows the difference between the two brands.
42. At this stage, it is not out of place for us to refer to a suit filed by the. plaintiff/appellant in C.S. No,234/02 against IPCA Laboratories Ltd., for selling its products under the brand name 'PIOZED'. Along with that suit the plaintiff/appellant also filed Application No. 230/02 seeking for an ad-interim injunction and the learned single Judge granted the prayer sought for by the plaintiff and aggrieved by the said order of injunction, the defendant in that suit filed O.S.A. No. 270/02. In the said appeal, a counter was filed by the plaintiff/appellant, who was the respondent in the said appeal and in para-11, he had taken a stand by stating as follows :
'I submit that the main grievance of the respondent (plaintiff in this case) is the petitioner's (defendant in that case) use of the word 'PIOZ' as a whole and not against 'PIO' as such.'
This therefore shows that on an earlier occasion when a suit was filed by him against another defendant for using the word 'PIOZED', he did not have any grievance for the use of the word 'PIO', but was only complaining that the word 'PIOZED' used by the defendant in that case is detrimental to his business interests, since the defendant in that case was using the appellant's brand name 'PIOZ' and trying to make a difference by adding two alphabets 'ED' and selling his product under the brand name 'PIOZED' and that the appellant in no uncertain terms stated that he will have no grievance for the defendant (in that case) marketing his product under the brand name 'PIO', The plaintiff/appellant having taken a definite stand earlier that he is not aggrieved by another manufacturer using the word 'PIO', cannot complain now against the defendant for marketing his product under the brand name 'PIO'.
43. It is of course true that in the above appeal the parties have entered into a compromise and the defendant in that suit agreed to change the brand name 'PIOZED' to 'PIOMED' and the compromise could have been entered between the parties on account of any number of reasons. But that does not take away the stand taken by the plaintiff/appellant in that case that he has no grievance for the defendant to use the word 'PIO'. In this background also, the appellant cannot claim that the defendant by selling his product under the brand name 'PIO' is eating into his business and profits and that the words 'PIO' and 'PIOZ' are similar in nature. We have already held that the two words 'PIO' and 'PIOZ' are distinct and phonetically dissimilar and, therefore, the plaintiff is not entitled for an injunction.
44. This Court has to keep in mind the observations of the Supreme Court in Wander Ltd. and Anr. v. Antox India P. Ltd., , wherein the Supreme Court held that the appellate Court will hot interfere with the exercise of discretion of the Court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily or capriciously or perversely or where the Court had ignored the settled principles of law regulating grant or refusal of interlocutory injunction.
45. In TTK Textiles Ltd. v., a Division Bench of this Court held that even assuming that two views are possible, it is well settled that in appeals discretionary orders are not to be interfered with unless the orders are shown to be either arbitrary, capricious or perverse.
46. We have already considered the materials placed before us and discussed them in an elaborate manner and had come to the conclusion that the two words 'PIO' and 'PIOZ' are dissimilar in nature and the learned single Judge was justified in refusing to grant injunction and the findings given by the learned Judge that the word 'PIO' has become publici juris and the applicant has no monopoly over it therefore cannot be interfered with. Hence, we answer this point in favour of the defendant.
47. Though it was also argued by the learned senior counsel Mr.Arvind P.Datar that the law protects against deception and not against confusion by relying upon certain passages in Kerley's Law of Trade Marks and Trade Names' and confusion and deception are different, we are not able to accept the said argument. At page-442 of the said book under the caption 'The distinction between confusion and deception', it is found stated that the terms 'confusion' and 'deception' are used to mean the same thing and that however it is necessary to distinguish between 'mere confusion' on the one hand and 'deception' or its likelihood on the other. It is further stated therein that 'mere confusion' does not indicate or establish passing off and that no one is entitled to be protected against confusion as such since confusion may result from the collusion of two independent rights or liberties and where that is the case neither party can complain; they must put up with the results of the confusion as one of the misfortune that occur in life. The protection to which a man is entitled is protection against passing off, which is quite different from mere confusion. It is found further stated in the said book that 'at the heart of passing off lies deception or its likelihood ....... Never as tort shown even a slight tendency to stray beyond cases of deception'.
48. We cannot but say that the views of Kerley in the above book were his views expressed based on the standard of living and literacy level of the people of his country and that they are higher than that of the people living in India. His views cannot be taken and applied in our country and that is the reason why the Supreme Court in Cadila Health Care Ltd. v. held that the test is to find out whether an unwary purchaser of average intelligence and imperfect recollection will be deceived in buying a different product though his intention was to buy some other product. In fact, in the same judgment the Supreme Court further held that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection and also held that when 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. The Supreme Court went on to add that the point has some time 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'.
49. In Laxmikant V. Patel v., theSupreme Court held that an action for passing off will He wherever thedefendant company's name, or intended name, is calculated to deceive, andso to divert business from the plaintiff, or to occasion a confusion betweenthe two businesses and if this is made out, there is no case.
50. In Parker Knoll International Ltd., 1962 RPC 265 @ 274, Lord Denning explained the words 'to deceive' and the phrase 'to cause confusion' as follows:
'Secondly, 'to deceive' is one thing'. To 'cause confusion' is another. The difference is this ; When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even taken the trouble to do so.'
51. Even though we are unable to agree with the above argument of Mr.Datar that law protects against deception and not against confusion, we find it difficult to force ourselves to grant an injunction in favour of the plaintiff in view of our discussion and other findings, which we have given earlier. We accordingly hold the second point in favour of the defendant,
52. We have already held that the address of the defendant given by the plaintiff in the plaint is not a false address and it was not given with an oblique motive nor could it be said that the address is a fictitious one. In that view of the matter, we find no reason to initiate action against the plaintiff by allowing O.S.A. No. 360/03 filed by the defendant/respondent.
53. In the result, both the appeals are dismissed. There will be no order as to costs. Consequently, connected miscellaneous petition is also dismissed.