indo-pharma Pharmaceutical Works Ltd. Vs. Citadel Fine Pharmaceuticals Ltd. - Court Judgment

SooperKanoon Citationsooperkanoon.com/829068
SubjectIntellectual Property Rights
CourtChennai High Court
Decided OnJun-19-1998
Reported in(1998)3MLJ214
Appellantindo-pharma Pharmaceutical Works Ltd.
RespondentCitadel Fine Pharmaceuticals Ltd.
Cases Referred(j) In Johann A. Wulfing v. C.I.
Excerpt:
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- constitution of india article 141; [a.p. shah, c.j., f.m. ibrahim kaliffulla &v. ramasubramanian, jj] reference to larger bench - precedent - full bench decision held, it is binding on the division bench. only if the full bench comes to conclusion that earlier full bench decision is incorrect, there is scope for making reference to larger bench. division bench doubting correctness of full bench decision cannot direct registry for placing papers before chief justice to make reference to larger bench. 
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m. karpagavinayagam, j.1. is the word 'enerjase' would deceptively similar to the word 'energex'? this is the question posed before us.2. the appellant, indo-pharma pharmaceutical works ltd., having its office at ahmedabad, who is engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the plaintiff. the respondent, citadel fine pharmaceuticals ltd., having its office at chennai, who is also engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the defendant.3. the appellant filed the suit for permanent injunction restraining the respondent from infringing plaintiff's registered trademark in respect of infants and invalid foods by use of the offending trade mark 'enerjase' or any other trade mark which is.....
Judgment:

M. Karpagavinayagam, J.

1. Is the word 'ENERJASE' would deceptively similar to the word 'ENERGEX'? This is the question posed before us.

2. The appellant, Indo-Pharma Pharmaceutical Works Ltd., having its office at Ahmedabad, who is engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the plaintiff. The respondent, Citadel Fine Pharmaceuticals Ltd., having its office at Chennai, who is also engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the defendant.

3. The appellant filed the suit for permanent injunction restraining the respondent from infringing plaintiff's registered trademark in respect of infants and invalid foods by use of the offending trade mark 'ENERJASE' or any other trade mark which is deceptively or phonetically similar to the plaintiff's trade mark 'ENERJEX'. In the said suit, it is also requested for grant of a permanent injunction re-straining the respondent from selling or dealing in food articles as those of the appellant by the use of expression 'ENERJASE' or any other trade name deceptively and phonetically similar to those of the appellant's trade name/trade mark 'ENERJEX' or in any other manner to pass of whatsoever.

4. In the original suit C.S.No. 4 of 1997, the appellant filed two applications, viz., O.A.Nos.4 and 5 of 1997 before the learned Single Judge requesting for the grant of interim reliefs. After hearing the parties, these applications were dismissed by the learned Single Judge by the common order dated 25.4.1997. Hence, these appeals.

5. The case of the plaintiff is this:

This plaintiff is the manufacturer of the infants and invalid food products and the said products are sold under the trade mark 'ENERJEX'. The trade mark 'ENERJEX' is associated with the plaintiff for the past 15 years. The defendant is using the trade mark 'ENERJASE' for manufacturing and marketing a similar product of medicinal preparation which is nothing but an infringement of the plaintiff company's trade mark. The defendant's mark is an imitation of the plaintiff's mark. The same is confusingly and deceptively similar to the trade mark used by the plaintiff. The adoption of the mark 'ENERJASE' by the defendant is neither accidental nor coincidental, but a deliberate act. hence the suit.

6. The case of the defendant as stated in the counter is given below:

The defendant carry on an established business as manufacturers and traders in medicinal and pharmaceutical products and have been in business for the last 30 years. They are the manufacturer of the product in Ayurvedic medicine under the trade name 'ENERJASE' in capsules form as an energiser and anti-stress formula. The trade mark 'ENERJASE' was allotted to the company for the pharmaceutical and medicinal products. The plaintiff's trade mark 'ENERJEX' has been registered in respect of the goods for infants and invalid foods, dietory food products and protein food concentrate. The products of the plaintiff being Allopathic are sold in the form of syrup in the bottle for pregnant women, convalescing patients and children. But the product of the defendant is energy capsules for stress relief and it is an Ayurvedic proprietary medicine. This medicine has been sold only in capsule form put in the strips and cartons. Since the products are entirely different both in form and character and there is no similarity. The applications are liable to be dismissed.

7. After having considered the submissions made by the counsel for the parties in the light of the respective pleadings, the learned single Judge dismissed the applications holding that the appellant/ plaintiff did not make out a prima facie case of infringement and. passing off.

8. Mr. U.N.R. Rao, the learned senior counsel for the appellant, and Mr. K. Venkatasubramanian, the learned Counsel for the respondent would put for before this Court with vehemence the respective plea pointing out various aspects of the matter and citing several authorities in support of their respective contentions.

9. Before going into merits of the submissions made on either side, it is quite appropriate to refer to the powers of this Court in the appeal against the discretionary order passed by the trial court either granting or refusing the interim relief sought for.

10. It is well-settled that the scope of miscellaneous appeal, filed against the discretionary orders of interlocutory nature pending suit before the trial court, is so limited. Though umpteen number of judgments rendered by this Court as well as the Apex Court are available, regarding the powers of this Court while dealing with the miscellaneous appeal, it would be sufficient to refer two decisions, as given below:

11. The first case is Beach Estates v. Likhami Holdings Limited (1997) 2 M.L.J. 51, rendered by one of us (Hon'ble Shivaraj Patil, J.). The relevant observation is thus:

In a miscellaneous appeal, the appellate court could reverse the discretionary order of the trial court in granting or refusing an injunction order only when the appellate court would find that the discretion exercised by the trial court was either capricious, perverse or arbitrary and not even on the ground that two views are possible on the material placed before the trial court.

12. The next case is Wander Ltd. v. Antrox India (P) Ltd., 1990 S.C.C. 727. which arose out of Trade Mark case. The relevant observation made by the Apex Court is as follows:

The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not 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. An appeal against exercise of discretion is said to be an appeal on principle. Appellate court do not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of discretion.

13. Keeping in view the principles laid down in the authorities referred to above, let us now deal with the question raised in this case. The main ground on which the injunction is sought for by the appeal is that both the names, viz., 'ENERJEX' and 'ENERJASE' are phonetically similar and as such, the products of the respondent are likely to pass off as that of the appellant's goods. On the other hand, the counsel for the respondent submitted that the product of the appellant and the respondent are totally different and that, there is no visual and phonetic similarity.

14. While accepting the case of the respondent, the learned Single Judge held that the appellant is not entitled for any interim order. The reason given by the learned single Judge in the impugned order are given below:

(i) The product of the plaintiff is allopathy and is the syrup. Their products are packed in the bottles and tins. But the defendant's product is Ayurvedic and is the capsules which are packed in small carbodard boxes. Therefore, the products and the containers are different.

(ii) When the two products, which are being different, are handled by the experienced persons in the pharmacy, it is not so easy to pass off the goods as that of the appellant. The appellant's product is being syrup containing carbohydrates, proteins, iron and vitamins. Therefore, the persons would purchase the tonic kept in the bottle either under the prescription of the Doctor or by his experience. He is accustomed by the use of the particular brand.

(iii) When the appellant's product is being allopathy, the persons who intend to purchase the same would know what the product they are asking for. No one would send an illiterate person to the pharmacy to get any medicine much less the tonic.

(iv) When the two products are entirely different, there cannot be any misconception because the appellant's product is syrup and the respondent's product is capsules. Both the products are prescribed by the medical practitioners who are qualified persons in the respective fields. Every pharmacy is having qualified pharmacist.

(v) The appellant sent a case and Desist Notice dated 13.10.95 to the respondent. It is stated in the said notice that the appellant had come across the respondent's product 'ENERJASE' along with the product literature. The appellant further called upon the respondent to stop forthwith the use of the brand name, failing which the appellant shall institute appropriate legal action. In the reply dated 29.11.1995, the respondent stated that they had adopted 'ENERJASE' as their trade-mark after ensuring themselves that it has no conflicting marks and have been registered by as many as 15 different proprietors using the same prefix.

(vi) Though his reply has been received by the appellant on 6.12.1995, he filed the present suit and got it numbered as C.A.No. 4 of 1997 after considerable delay.

15. The grievance of the appellant in these appeals is that though the appellant had complained in the suit about the phonetic similarity, the learned single Judge has not adverted to this point and merely held that the respondent trade mark is not similar to that of the appellant.

16. Before going into the contentions of the parties relating to the question of phonetic similarities between the words 'ENERJEX' and 'ENERJASE', let us at the outset refer to a few Sections of the Trade and Merchandise Marks Act, 1958 and the settled principles as laid down by various authorities in the field of trade marks.

17. What is a trade mark? How the rights are acquired therein? What is the effect of use of common descriptive or generic words as trade mark or as one of the constituents of the word? What amounts to infringement of a trade mark and passing off goods as the goods of another person? The answers for these questions are contained in the following sections.

(a) Under Section 2(v) of the Act, a Trade mark is a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right to use the mark.

(b) Under Section 2(d) of the Act, a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other marks as to be likely to deceive or cause confusion.

(c) Under Section 2(k) of the Act, the name includes any abbreviation of a name.

(d) Under Section 11 of the Act, a mark the use of which would be likely to deceive or cause confusion is prohibited from being registered.

(e) Under Section 28 of the Act, the registration of a trade mark shall give to the registered proprietor of the trade mark, the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided under the Act.

(f) Under Section 29 of the Act, the use of the trade mark by a person who not being a registered proprietor of the trade mark or a registered user thereof which is identical with, or deceptively similar to a registered trade mark amounts to the infringement of trade mark and the registered proprietor can take action or to obtain relief in respect of infringement of trade mark.

18. Thus, the reading of these sections would reveal that the registered proprietor of a trade mark has been given an absolute protection as against the infringement and passing off.

19. In an infringement action, the issue is whether the defendant is suing a mark which is the same as or which is a colourable imitation of the plaintiff's trade mark. In a passing off action, the issue is whether the defendant is selling the goods so marked as by design or calculated to lead the public to believe that they are the plaintiff's goods. The element of deception or confusion becomes irrelevant in this issue, as the same is implicit, inherent or presumed to be present.

20. In an action for infringement of trade mark, relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the court that the use of the mark which the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered.

21. In Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories : [1965]1SCR737 , the Apex Court has set out the distinction between action for passing off and action for infringement of a trade mark. The Supreme Court has then stated the law for the courts faced with an action for infringement of a trade mark and laid down the following principles;

(1) Where the two marks are identical no further questions arise for, then the infringement is made out;

(2) When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered;

(3) The onus would be on the plaintiff;

(4) The court has to compare the two marks, the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standard. The persons who would be deceived are of course the purchasers of the goods and it is the likelihood of their being deceived that is the subject for consideration. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found used by the defendant. The ultimate test is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff;

(5) The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark;

(6) The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on evidence led before it as regards the usage of the trade.

22. The above principles are deducible from Ruston & Hornby Ltd. v. Zamindara Engineering Co. : [1970]2SCR222 .

23. In Parle Products (P) Ltd. v. J.P. & Co. : [1972]3SCR289 , the Apex Court laid emphasis on the test of overall similarity.

24. Let us now refer to some of the passages from various books by famous authors;

(a) Mc.Carthy on Trademarks and Unfair Competition (3rd Edition, Vol. 2) states:

The names of the product or service itself, what it is, is the very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms 'generic' and 'trade mark' are mutually exclusive. Thus, if, in fact a given term is 'generic', it can never function as a mark to identify and distinguish the products of only one seller.

An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, 'generic '.

If the abbreviation is not recognisable as that original generic term, then the abbreviation is like a fanciful mark and protectable.

(b) Kerly in Law of Trade Marks and Trade Names (12th Edition) deals with proof of likelihood of deception as under:

The court must in the common case be satisfied that the defendant's conduct is calculated to pass off other goods as those of the plaintiff, or, at least, to produce such confusion in the minds of probable customers or purchasers or other persons with whom the plaintiff has business relations as would be likely to lead to the other goods being bought and sold for his. This is the foundation of the action. (c) In Halsbury's Laws of England (4th Edition, Vol. 48, it has been dealt with as under:

In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to

(i) the nature and extent of reputation relied upon;

(ii) the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business;

(iii) the similarity of the mark, name, etc., used by the defendant to that of the plaintiff;

(iv) the manner in which the defendant makes use of the name, mark, etc., complained of and collateral factors; and

(v) the manner in which the particular trade is carried on the class of persons it is alleged is likely to be deceived and all other surrounding circumstances.

25. Keeping these settled principles in our mind, we shall now deal with the question posed before us in this case. Now the action is sought for by seeking relief as against the infringement and passing off as pointed out by the learned Counsel for the appellant mainly on the basis of phonetic similarity. It is vehemently contended by the learned Counsel for the appellant that the learned single Judge passed the impugned order without considering the aspect of the phonetic similarity.

26. The averment in the plaint with reference to the same, as in para 11 of the plaint, is as follows:

ENERJEX' has acquired all India reputation as the product of the plaintiff. The use of the trade mark 'ENERJASE' by the defendant is calculated to mislead the public into believing that the product of the defendant is that of the plaintiff. The two trade marks are phonetically so 'similar that there is bound to be confusion of the origin of the goods among the users and the traders, particularly as the commercial outlets for the two goods are the same. The defendant by using 'ENERJASE' are attempting illegally to exploit the commercial goodwill acquired by the plaintiff with respect to 'ENERJEX'.

27. This averment in the plaint as well as in the affidavit filed by the plaintiff has been specifically denied in the counter filed by the defendant in the following words:

I reiterate that the prefix for both the marks are common to the trade and cannot be a proprietary name. As for the suffix, the same are sufficiently different so as to avoid any confusion in the market. In any event, there are 16 marks with the same prefix and several of them have suffixes which are similar to plaintiff's trade mark which is naturally so considering that the word 'ENERGY' is a commonly used word and would be description of energizing tonics for marketing. It is further submitted that the registration obtained by the applicant in respect of trade mark 'ENERJEX' is in Part-B of the register. This in itself shows that the mark is not per se distinctive as the prefix 'ENERGY/J' is not descriptive of the products manufactured thereunder. It is for this reason that the learned Registrar of Trade Marks has granted a Part-B registration for the plaintiff's 'ENERJEX' and that too for the word per se. I deny that the respondents trade mark is either phonetically or deceptively similar to applicant's trade mark. I deny that use by respondent of trade mark 'ENERJASE' amounts to an infringement of trade mark 'ENERJEX'.

28. Therefore, it cannot be contended that the learned single Judge has not considered the aspect of phonetic similarly, especially, when it is held by the learned Single Judge that the two products are entirely different and no similarity could be established in the light of the materials placed before this Court in the form of plaint, affidavit, and the counter and the documents filed among with that.

29. Mr. U.N.R. Rao, the learned senior counsel for the appellant, cited several authorities in order to establish that the trade mark 'ENERJASE' does have the phonetic similarity with 'ENERJEX' which is the trade mark of the appellant. The authorities are given below.

30. The first decision is Amritdhara Pharmacy v. Satya Deo : [1963]2SCR484 . In this decision it is held that to a man of average intelligence, the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' was likely to deceive or cause confusion.

31. In K. Krishna Chettiar v. Ambal & Co. A.I.R. 1970 S.C. 147, it is held that that there is a striking similarity and affinity of sound between the words 'Andal' and 'Ambal'. There is a real danger of confusion between the two marks.

32. In K.R.C. Chetty v. K.V. Mudaliar : AIR1974Mad7 , the appellant's application for registration of their snuff 'Radha's Sri Andal' was opposed by the respondent. The Division Bench of this Court has held as follows:

The combination of the two words 'Radha's Sri Andal' is likely to be taken by snuff users as the snuff manufactured and marketed by the applicant originally as 'Sri Andal'.

33. All these decisions rendered by the Apex Court and this Court, on the basis of the facts of that case and on analysing the materials placed before the court. As pointed out by the Apex Court in Amritdhara Pharmacy v. Satya Deo : [1963]2SCR484 , the Act does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular facts and the value of authorities lies not so much in the actual decision in determining what is likely to deceive or cause confusion.

34. The Apex Court held in Amritdhara Pharmacy's case : [1963]2SCR484 , that the trade marks/ names 'Amritdhara' and Laxamandhara' likely to deceive or cause confusion because of the overall structural and phonetic similarity The goods were such as are largely sold to illiterate or badly educated persons. The Apex Court in that case however held that the use of the word 'Dhara' was not of itself decisive of the matter, in the facts found in that case.

35. The learned senior counsel appearing for the appellant cited other authorities inclusive of unreported decisions. Those decisions are given below:

(1) Aravind Laboratories v. V.A. Samy Chemical Work : AIR1987Mad265 . (2) Aravind Laboratories v. Annamalai Chettiar : (1981)1MLJ75 . (3) Amrutanjan Ltd. v. Amarchand Sobachand, C.S.No. 108 of 1977, dated 18.9.1979. (4) Amrutanjan Ltd. v. Mehta Unani Pharmacy Company, C.S.No. 54 of 1970, dated 30.3.1976. (5) Glaxo Operations U.K. Ltd v. Amar Soba (P) Ltd., C.S.No. 687 of 1980, dated 29.1.1985. (6) Aravind Laboratories v. Jamma Product, C.S.No. 734 of 1984, dated 13.11.1996. (7) Aravind Laboratories v. Balamani Product, C.S.No. 735 of 1984, dated 18.1.1987.(8) Aravind Laboratories v. Vasavi Cottage Industries, C.S.No. 699 of 1984, dated 7.2.1997.

36. We have perused the above decisions. We do not think that any of the cited cases would help the appellant for two reasons:

(1) The conclusion was arrived at in these decisions only after the trial is over; and

(2) It has been held in these cases, that the products are same and the offending trade mark was deceptively, visually and phonetically similar to each other.

37. Moreover, the defendant's trade name was found to be offending by the courts concerned on the facts and circumstances of each case.

38. But in this case, the products 'ENERJEX' and 'ENERJASE' are different and the containers are also different. However, it is argued that there is clear phonetic similarity which would certainly give rise to the infringement and passing off action. In view of the emphastic assertion made by the learned Counsel for the appellant, let us now consider the question, whether the word 'ENERJASE', the defendant mark, would be atleast phonetically similar to the word 'ENERJEX', the plaintiff's mark.

39. Admittedly, the form, shape and get-up of these two products are entirely different. 'ENERJEX' is allopathic medicinal preparation. 'ENERJASE' is Ayurvedic medicinal preparation. 'ENERJEX' is syrup kept in bottle for pregnant women and convalescing patients and children. 'ENERJASE' is capsules packed in cardboard boxes for stress relief and for energy. As admitted by the plaintiff in the Cease and Desist Notice sent to the the defendant, the product 'ENERJASE' was being sold in cardboard boxes along with the product literature. Therefore, visual impression of these products is totally different. It cannot also be stated in the light of the above materials that the product manufactured by the defendant were being passed off as the goods of the appellant.

40. Both the parties have adopted their respective trade mark after applying for the same. Before applying for the trade mark 'ENERJASE', the defendant conducted a continuous search through a specialised agency which revealed that there are totally 16 marks by the prefix 'ENERGY/J'. Therefore, according to the defendant, he coined the new word with general prefix and adopted the trade mark 'ENERJASE'. As held by the Apex Court, we must take the two words and judge of them, both by their look and by their sound and it is also necessary to have both visual and phonetic test.

41. According to defendant, 'ENERJ/G' is an appreciation of 'ENERGY'. This abbreviation has been used in over 16 registration in the field of medicinal and pharmaceutical preparations. The word 'ENERGY/J' is therefore generic and common to the trade, as describing the product meant for giving energy. A generic name of a product can never function as a trade mark to indicate the origin. It has become a public juris, on which not one can claim proprietary right for the exclusive use. In this context, it will be relevant to refer the sentence contained in Mc.Carthy on Trademarks and Unfair Competition.

abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, 'generic'.

42. Phonetically, the words 'JEX' and 'JASE' being totally dissimilar, are not going to create any confusion in the mind of the users, especially, in this case, when the visual impression of the said two trade names, as explained earlier, is completely different. Therefore, the submission made by the defendant that there cannot be any chance of buyers and users being misguided or confused by the two trade names, cannot be brushed aside. Therefore, there is no difficulty in coming to the conclusion that there is no phonetic and visual resemblance. Moreover, nobody can claim exclusive right to use any abbreviation, which has become public/juris.

43. The two rival marks 'ENERJEX' and 'ENERJASE' contain the common feature 'ENERJ' which is not only descriptive but also public juries. Therefore, a customer will tend to ignore the common feature and will pay more attention to uncommon features, i.e., 'JEX' and 'JASE'. These two cannot be said to have such phonetic similarity so as to make it objectionable.

44. Let us now refer to some of the judgments which deal with similar words containing both common and uncommon features.

45. The leading case is Roche & Co., v. G. Manners & Co. : [1970]2SCR213 . The question was whether 'DROPOVIT' and 'PROTOVIT' are deceptively similar. The Apex Court found that the last three letters were common, and in the uncommon part, the first two are consonants, the next is the same vowel 'o' the next is a consonant and the fifth is again a common vowel 'o'. The combined effect was to produce alliteration. 'VIT' is a well known abbreviation used in pharmaceutical trade to denote vitamin preparation. Thus the terminal styllable 'VIT' in the two marks was both descriptive and common to the trade. The Apex Court observed as follows:

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 letters 'D' and P' in 'DROPOVIT' and the corresponding letters 'P' and 'T' in 'PROTOVIT' cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or photetic point of view.

46. In M.M. Pharmaceuticals v. A. Wander : AIR1977Mad105 , the Division Bench, while considering the question of deceptive similarity between the trade marks 'ASTHMIX' and 'ASMAC', held that there is no similarly in the goods 'ASTHMIX' and 'ASMAC' by the look as well as in the sound. The relevant observation is as follows:

The primary tests are that the words should be judged by their look and by their sound. There is no similarity in the goods by their look in the present case.' Asthmix' and 'Asmac' in our view are not similar in sound and are not likely to confuse any person. The reason given by the learned Judge is that the person who may buy the medicine such as nurses, compounders and other laymen in charge of the hospital and similar institutions are mostly Indians and that their pronunciations of the English words are not likely to be perfect and proper. It may be stated here that this medicine can be dispensed only on the prescription of the doctors. According to the learned Judge, the customers are not likely to hail only from the group of literate persons well versed in English language. The learned Judge expressed the view that orders for the preparation of the drug 'asmac' are placed over the telephone and are indistinctly heard over and that written prescriptions are misspelt or badly written. He felt that nurses, compounders and lay people incharge of the hospital and similar institutions may place orders orally or across the counter or over the phone, which may lead to some confusion. With respect, we do not accept these as proper tests these medicines are schedule 'H' drugs and can only be dispensed on the prescription of the medical practitioner.

47. In M.M.P. Ltd. v. O.P. Corporation : AIR1975Mad74 , the Division Bench of this Court, while holding that the two trade marks 'Ortho-Gynol' and Utogynol' are strikingly dissimilar, would observe as follows:

There is nothing in the Indian way of pronouncing the words which makes for mixing up of such dissimilar, sounding words as Ortho' and 'Uto'. We have compared the two words not only syllable by syllable but as a whole, and we think that the total sound effect of the words lacks any similarity. So also when the words are written down and compared, they do not have any similarity, which can deceive the eye of the layman.

48. In J.R. Kapoor v. Micronix India : 1994(3)SCALE732 , Microtel wanted to restrain Micronix. The trade marks were used in respect of electrical and electronic apparatus. The relevant observation of the Apex Court is as follows:

There are two things which impress us. Firstly, the appellant is not manufacturing any one product such as the boosters, which has been mainly taken into consideration by the High Court. He is producing various electrical and electronic apparatus in many of which micro-chip technology is used. Even the boosters which he manufacturers and sells are of two types, viz., transistoriesed boosters and integrated circuit boosters whereas the respondent-plaintiff manufactures aerial boosters only of the first type. Thus micro-chip technology being the base of many of the products, the word 'micro' has much relevance in describing the products. Further, the word 'micro' being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro-chip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by, the prefix 'micro' in the trade name. Once, therefore, it is held that the word 'micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said word, the only question which has to be prima facie decided at this stage is whether the words 'tel' and 'nix' in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the other. According to us, phonetically the words being totally dissimilar are not going to create any such confusion in the mind of the users. Secondly, even the visual impression of the said two trade names is different. In the first instance, the respondent's trade name 'MICRONIX' is in black and white in slimmer letters and they are enconced in designs of elongated triangles both above and below the said name. On the other hand, the applicant's trade name 'MICROTEL' is in thick bold letters in red colour without any design around. As regards the logo, the respondent's logo consists of the word 'M' in the slim letter with 'I' sporting a dot on it and drawn in the well of 'M'. Below the letter 'M' in small letters is written the word 'MICRONIX' and all these letters and words are written in white in a black square in north-south direction. As against this, the appellant's logo is one letter, viz., 'M' which is drawn in bold broad letter with its left leg slimmer than all other parts which are in thick broad brush. The letter has also white lines drawn across it which is in blue colour. There is no other letter nor is it set against any background. We are, therefore, unable to see how the visual effect of both the logos will be the same on the mind of the buyers. This being the case, we are of the view that there is not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Same is the case with the carton which merely reproduces both the trade names and the logos.

49. In Harker Stagg Limited's Trade Mark case (1954)71 R.P.C. 136 Aludrox had sought for cancellation of Algelox. Both were intended to be used in connection with aluminum hydroxide and also a substance considered and counted as a gel Aludrox contained syllables from aluminum and hydroxide. Algelox had reference to aluminum gel and hydroxide. It is held as follows:

When the two words in question in this case are first looked at and regarded as made-up words, as they in fact are, their reason and virtue may elude the mind; but when it is recognised that both are intended to be used in connection with aluminum hydroxide, or a substance substantially composed of aluminum hydroxide, and also a substance which is considered or counted as a gel' it is seen that both words are intended to convey by their characteristics, an indication of what it is that is being sold.

It was concluded that the similarity was not great enough to be likely to cause confusion.

50. Anchola and Anchovette in 'In the matter of an Application by F.W. Waide & Co Ltd. to Register a Trade Mark (1916)33 R.P.C. 320; Micronhic and Microvee in 'In the matter of Automotive Products Co. Limited's Application to Register a Trade Mark (1953)70 R.P.C. 224, were not found to be so similar as likely to deceive.

51. In Stadmed Pvt. Ltd. v. Hind Chemicals A.I.R. 1965 Punj. 17, dispute was between 'ENTROZYME' and 'ENTOZIME'. One of the relevant considerations kept in view by the Division Bench was that the goods being Schedule-H drugs were obtainable only on doctor's prescription. It was further held that there was no phonetic similarity and there was no cause for confusion.

52. In R.S. Krishna & Co. v. G.R. Gopal & Co. : AIR1981Mad262 . there were several medicinal oils using 'THENNAMARAKKUDI' - a geographical name as part of trade mark. It was held that the word having become public juris nobody could claim any exclusive right to its use.

53. We may now briefly refer to some more cases throwing light on the point of phonetic similarity alone.

(a) In E.R. Squibb & Sons v. Curewell India Ltd. : AIR1987Delhi197 . Curechlor and Reclour both being pharmaceutical preparation of the Chloromphemical were not similar.

(b) In Geigy A.G. v. Chelsea Drug & Chemical Co Ltd. (1966) R.P.C. 64. 'BUTAZOLIDIN' and BUTAZONE' both being medicinal preparations were not found to be similar.

(c) In Helena Rubinstoin Ltd's Application (1960) R.P.C. 229. SKIN De' and SKIN DEEP' both being toilet creams were held not liable to cause deception or confusion.

(d) 'LUMINDON' was held not similar to 'LUMINAL' goods medicinal preparations. 'THEOMINDON' was also held not similar to 'THEMINAL', goods medicinal preparations. Indo Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Bayer, A.G. 1975 R.P.C. 545.

(e) In an opposition to the registration of 'POL-RAMA', the mark was held not similar to 'POLAROID', goods sunglasses. Visually the marks were considered different. Phonetically also the words were considered different. Pol-Rama Tm., 1977 R.P.C. 581.

(f) 'CYCLOXIN' was held not similar to 'ENDOXAN-ASTRA' goods pharmaceutical preparation. 'XAN', 'OXAN' or 'OXANE' were common suffixes of a few trade marks and a number of pharmaceutical names. Biochem Pharmaceutical Industries' Applications (1977)2 I.P.L.R. 40.

(g) 'FIF' considered not similar to 'JIF' phonetically and visually, goods non-alcoholic drinks, FIF Tm., 1979 R.P.C. 355.

(h) 'TORNADO' and a geometrical device was held not similar to 'TORNA' in a circular device, goods being hand tools, etc. 'Tornado' was a well-known English word. Tornado Tm., 1979 R.P.C. 155.

(i) In Bayor Products Ltd., v. A. Wander Ltd. (1947)64 R.P.C. 125. Application to register 'BIASIL' was objected to by proprietor of 'ALACIL' Both were pharmaceutical preparations consisting of sulphadiazine. The plea as to deception or confusion was turned down.

(j) In Johann A. Wulfing v. C.I. & P. Laboratories Ltd. : AIR1984Bom281 , it is held that there is no deceptive similarities between the two marks 'COMPLAMINA' 'CIPLAMINA' though both of them are pharmaceutical and medicinal products. The relevant observation is this;

The visual impression is totally different No person, be he a layman of average intelligence and imperfect recollection or a medical practitioner is likely to confuse one for the other or be put in a state of wonderment. The visual impression of the two words is not conductive to any such confusion. (k) In S.B.L. Ltd., v. Himalaya Drug Co : AIR1998Delhi126 , the Division Bench of the Delhi High Court held that 'Liv, 52' is not phonetically similar to 'LIV-T' The relevant observation is this:The two rival marks 'Liv. 52' and 'LIV-T' contain a common feature 'Liv' which is not only descriptive but also public juris; a customer will tend to ignore the common feature and will pay more attention to uncommon features i.e., '52' and 'T'. The two do not have such phonetic similarity as to make it objectionable.

54. Mr. U.N.R. Rao, the learned senior counsel appearing for the appellant would put much stress on the judgment of the Division Bench of this Court in O.S.A. No. 51 of 1955 dated 25.8.1989 pointing out that this Court set aside the order of the single Judge refusing temporary injunction and held that 'EUGEL' was deceptively and visually similar to the registered mark 'EMULGEL' and hence, the plaintiffs were entitled to the injunction. That is the case where the product manufactured by both plaintiffs and the defendant is the same. The plaintiffs trade mark was 'EMULGEL' and the defendant was marketing the product with a name 'EMULGEL' and on receipt of notice from the plaintiffs objecting to the use of the said name, the defendant assured the plaintiffs that he would switch over the alternative brand name; thereafter he adopted a new name 'EUGEL' by drooping the letter 'M' from the expression 'EMULGEL'; however, the defendant simultaneously changed the colour scheme and geometrical design of carton and tube similar to those of the plaintiffs and under such circumstances, the Division Bench held that the usage of the name 'EUGEL' with the said colour scheme and geometrical design is a clear deception or confusion vis-a-vis, the plaintiffs' product 'EMULGEL' This decision in our view would not be applicable to the present case, as the facts on hand are stood entirely on different footing, as indicated earlier.

55. Coming back to the facts of the case, from the documents filed before this Court, it is clear that there are about 16 other companies in the market using the abbreviation 'ENERGY/J'. The product of the plaintiff being Allopathic is in the form of syrup and is packed in bottles and tins. The product of the defendant being Ayurvedic is in the form of capsules put in strips which are packed in small cardboard boxes. In the label affixed on the bottle of the tonic 'ENERJEX', plaintiff's mark, it is stated below the said mark as 'the extra energy'. In other label, it is mentioned as 'an energy prescription' with proteins, carbohydrates, iron and vitamins, especially, for growing children and pregnant women. In the strips of the defendant's product 'ENERJASE',-it is mentioned as 'AYURVEDIC Proprietary Medicine' for anti-stress formula and energiser. It is further printed 'the best from nature to restore and energise'. So the word 'ENERGY/J' used as a prefix in the both the trade names is the abbreviation of the generic term of the English word, 'energy'. As such, it is descriptive in nature and common in usage. Nobody can claim an exclusive right to the use of the word 'ENERGY/J' as the constituent of any trade mark. The customer dealing with these medicinal preparations would certainly distinguish the names of the medicines by ignoring the word 'ENERJ' and by assigning weight to the suffix so as to associate the name with the manufacturer.

56. Under these circumstances, we are constrained to come to the following conclusions:

(a) The discretion exercised by the learned single Judge in the impugned order vacating the interim injunction cannot be said to have been exercised arbitrary, capriciously or perversely, by ignoring the settled principles of law.

(b) In the facts and circumstances of the case and on the basis of the materials available as on date, we are not able to take a different view from that of the learned single Judge, as in our opinion, the trial court has exercised its discretion in a reasonable and judicial manner.

(c) The word 'ENERJ' is an abbreviation of a generic name 'energy'. The word 'energy' is a commonly used word and would be the description of energising product. A generic name of a product cannot be treated as a trade mark to indicate the origin. The prefix for both the marks, viz., 'ENERJ' is common to the trade and cannot be a proprietary name. Nobody can claim exclusive right to use such an abbreviation.

(d) As per the suffix, phonetically, the words 'JEX' and 'JASE' are totally dissimilar and are not going to create any confusion in the mind of the users, especially, in this case, when the visual impression of the said two trade names is completely different.

(e) In fact, we have compared the two words as a whole with the eyes of the public. We think prima facie that the total sound effect of these two words lacks any similarity. So also, when these words are written down and compared, they do not have any similarity which can deceive the eye of the layman.

57. In view of the above findings, we hold that a case for grant of injunction sought for by the appellant is not made out and the orders under appeals have to be confirmed, as the balance of convenience is only in favour of the defendant.

58. In the result, the appeals are dismissed. There is no order as to costs. Consequently, C.M.P.Nos. 10483 and 10484 of 1997 stand dismissed.