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Schering Corporation & Another v/s Messrs. United Biotech (P) Ltd. & Another

    APPEAL NO.548 OF 2007 IN NOTICE OF MOTION NO.3459 OF 2004 IN SUIT NO.3419 OF 2004
    Decided On, 08 October 2010
    At, High Court of Judicature at Bombay
    By, THE HONOURABLE MR. JUSTICE D.K. DESHMUKH & THE HONOURABLE MRS. JUSTICE R.P. SONDURBALDOTA
    For the Appellants: Dr. V.V. Tulzapurkar, Sr. Advocate i/b. M/s. Cr. Baylay & Co., Advocates. For the Respondents: H.W. Kane, Advocate.


Judgment Text
ORAL JUDGMENT: (D.K. Deshmukh, J.)


1. This appeal takes exception to the order dated 14th July, 2006 passed by the learned Single Judge of this Court dismissing Notice of Motion No.3459 of 2004. That Notice of Motion was taken out by the Appellants seeking certain interim reliefs in Suit no.3419 of 2004. The civil suit was filed by the present Appellants seeking decree of permanent injunction restraining the Defendants-Respondents from infringing the Plaintiffs? registered trade mark ?NETROMYCIN? and from passing off the defendants? goods by using the trade mark ?NETMICIN?. The Appellants had also prayed for permanent injunction restraining the Respondents-Defendants from using label, copy of which was filed with the Plaint, on the ground that by using that label the Defendants were passing off their goods as and for goods of the Appellants. The Appellants had also prayed for permanent injunction restraining the Respondents from infringing the copyright of the Appellants in the literary work of the package insert, as according to the Appellants, the Respondents had copied the same. The Appellants had prayed for interim reliefs in the Notice of Motion in the similar terms. At the hearing of the Notice of Motion, however, as the Respondents had contended that their mark was also registered, the relief in relation to passing of only was pressed by the Appellants. The learned Single Judge by her order impugned in the Appeal, rejected the Notice of Motion holding that


(i) the Appellants have failed to prove distinctiveness of their mark or packaging;


(ii) Two marks viz. ?NETROMYCIN? and ?NETMICIN? are not deceptively similar;


(iii) there is no possibility of any confusion as the Respondents? goods were purchased in bulk by the hospitals and that the same were not sold over the counter, whereas the Appellants? goods were sold over the counter and that the purchasers of the Defendants? goods have requisite knowledge and technical expertise in dealing with the drugs;


(iv) the essential features of the Appellants? mark are different from that of the Respondents;


(v) There would not be any adverse effect on the consumer since the chemicals used in both the products are common; and


(vi) there were many medicines and pharmaceutical products being manufactured and traded in the market ending with the letters ?Mycin?, ?Micin? and ?Cin?.


2. The learned Counsel appearing for Appellants submitted that the Learned Judge failed to apply the proper test of comparison of the two words ?NETROMYCIN? and ?NETMICIN?. It is also submitted that the true test is that the two marks are to be compared as whole. It is submitted that the learned Judge has held that there is no phonetic similarity between the two words because the number of syllables in the two words is different and that for phonetic resemblance, the number of syllables has to be the same. It is submitted that the similarity is to be judged by not making microscopic examination, and the principle that the word must be considered as a whole and compared with the other word as a whole was noted by the Supreme Court in the case of ?Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (2001)PTC 300? and also in the case of ?Corn Products Refining Co. Vs. Shangrila Food Products Ltd., (1960)(1) SCR 968. It is submitted that in the latter case it was held, in respect of the two concerned trademarks therein viz. ?Glucovita? and ?Gluvita?, that apart from the syllable ?co? in the Appellant?s mark, the two marks were identical and that the syllable ?Co? was not in the opinion of the Court, such as would enable the buyers in our country to distinguish the one mark from the other. It is submitted that in the case of ?Amritdhara Pharmacy vs. Satyadeo Gupta, AIR 1963 SC 449? which was referred to by the Supreme Court in the Cadila?s case referred to above, the two words Amritdhara and Lakshmandhara were held to be similar. It is further submitted that the learned Single Judge erred in holding that visually and structurally the two words ?Netromycin? and ?Netmicin? were different. It is submitted that the said finding is contrary to the principle of comparison, as laid down by the Supreme Court in the aforesaid cases and the overall similarity is to be judged. It is submitted that it is a matter of the first impression as to whether the two words are similar, and such impression is to be formed by taking a broad view and not comparing letter by letter, or syllable by syllable, and the overall effect of the two words is required to be considered. It is submitted that the learned Judge erred in making a microscopic examination. It is further submitted that the goods can be ordered on telephone and therefore, the printing of the words on the carton in a slightly different manner in two cases will not make any difference at all. It is submitted that the argument that the goods of the Respondents are sold in bulk to the hospitals and that the Appellants? product is sold over the counter would rule out the possibility of confusion is not a factor which can be taken into account in view of the decision of the Supreme Court in ?Cadila Case? referred to above and in the said decision, the Supreme Court referred to various authorities in which it was categorically observed that the physicians and pharmacists are not immune from mistaking one mark for another.


3. It is further submitted that the learned Single Judge erred in refusing injunction on the ground that the essential features on the Plaintiffs? mark are different from the Defendants. It is submitted that it is necessary to consider the essential features of the word marks which are prominently written on the packaging of both the products, and the dissimilar features in the packaging cannot outweigh the similarity of the word marks. It is submitted that in any event, in the present case, the colour scheme and the placement of material is very similar on the packaging of the two products. It is submitted that even if the packaging is taken into account, the effect of the resemblance and deceptive similarity of the two words is not in any manner reduced. It is submitted that the so-called added matter cannot outweigh the impression created by the similarity of the word marks themselves and in this regard, reference may be made to ?M/s.Girnar Tea Vs. Brooke Bond(India)Ltd., 1990PTC 245: (1991)93 BomLR 97? in which case the two marks ?Girnar? and ?Gulnar? were held to be deceptively similar and that the packaging differences thereof did not outweigh the impression created by the two words. It is submitted that in that case, as in the instant case, was a passing-off action. It is submitted that the Division Bench in the said case, referred to the decision of the Supreme Court in the case ?Kaviraj Pandit Durga Dutta Sharma Vs. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980? in which it was held that the Defendants in a passing-off action can escape liability by relying on added matters to show that there is no likelihood of deception and confusion. It is further submitted that the Division Bench in Girnar case held that the added matter must outweigh the similarity in the two words. It is submitted that in the instant case, prima facie there are no such differences considering the two packages with reference to the colour scheme, layout and placement of material, which will outweigh the impression created by the two words ?Netromycin? and ?Netmicin?.


4. It is submitted that any argument to the effect that there are various marks ending with letters ?Mycin?, ?Micin? and ?Cin? and that therefore, there would not be confusion, is totally irrelevant in the present case in as much as the peculiar facts of the case show that both the Appellants? mark and the Respondents? mark are registered, each one having established distinctiveness. It is submitted that, according to the Respondents, in addition to the fact that there are various products with ?Mycin?, ?Micin? and ?Cin? as suffix there are at least three products with the prefix ?Net?, and that both the marks ?Netromycin? and ?Netmicin? are derived from the common generic name ?Netilmicin Sulphate? and therefore, there is no likelihood of confusion. It is submitted that the aforesaid contention cannot be countenanced in the present case for the following reasons:- (a) the Respondents having obtained registration of the mark containing ?Net? and ?Mycin? and pleading registration as a defence to the Appellants? action for infringement of registered trademark, are reiterating the position that the mark Netmycin is distinctive and it distinguishes Respondents? mark Netmycin from all other marks containing Mycin, Micin and Cin. It is further submitted that the Respondents are, therefore, estopped by their conduct from raising the aforesaid contention and in this regard, reference may be made to the decision in Automatic Electric Ltd. Vs. R.K.Dhawan & Anr, (1999) OTC 81, and in the said case the Defendant had got its trade mark ?Dimmer Dot? registered in Australia and it was observed that the fact that the Defendant itself had sought to claim trade proprietary right and monopoly in ?Dimmer Dot?, it did not lie in its mouth to say ?Dimmer? in the Plaintiffs? trademark ?Dimmer Stat? is a generic expression and this decision of Single Judge of the Delhi High Court was approved of by the Division Bench of Delhi High Court in ?Indian Hotels Co.Ltd. Vs. Jiva Institute of Vedic Science & Culture, 2008 PTC 468?; and (b) the adoption of the mark ?Netmycin? by the Respondents is not honest.


5. It is submitted that if the intention is proved to be dishonest, then there is no need to make any further enquiry whether there would be likelihood of deception or confusion. It is submitted that in view of the dishonest intention in adopting the impugned mark and the impugned packaging, the Respondents? contentions that both the marks are derived from the generic name i.e. Netilmicin, or that the letters ?Micin? are commonly used, cannot be countenanced. It is submitted that in view of the aforesaid, the authorities relied upon by the Respondents to the effect that due to common elements or marks being derived from generic drug there would be no confusion, become inapplicable.


6. It is submitted that the Respondents? contention that the surrounding circumstances such as (a) the drug being administered by doctors after sensitivity culture test, (b) the price of the Appellants product being higher than that of the Respondents product, (c) Micin being common to trade, cannot and do not outweigh the impression created by the similarity in the two marks. It is submitted that as stated above, the Supreme Court in the Candila case referred to above has accepted the position that the doctors and personnel in the hospital are not infallible. It is submitted that the aforementioned factors (b) and (c) are variables in as much as the use of the impugned mark by the Respondents, in respect of pharmaceutical preparations other than the pharmaceutical preparations presently sold by the Respondents, cannot be ruled out and that the prices also can vary.


7. It is further submitted that the authorities are useful for the principles laid down therein and not for the findings that a particular mark is or is not deceptively similar to another.


8. On the other hand on behalf of the Respondents it is submitted that both the Appellants and 1st Respondent have coined their respective trade marks from the generic drug name Netilmicin, and the Appellants have substituted the letters ?il? in Netilmicin by the letters ?ro? where as the 1st Respondent has coined its trade mark by telescoping the first 3 and the last 5 letters of the said generic name, and both have done so with a view to indicate the contents of the injection upon and in relation to which the respective trade marks are used. It is submitted that the said injection is consumed mostly by hospitals and medical institutions and is administered by doctors only after carrying out culture sensitivity test and the said injection is an expensive drug and the price of the 1st Respondent?s drug is higher than the price of the Appellants? drug. It is submitted that the suffixes ?Micin?, ?Mycin? in the rival trade marks are common to the trade and this fact is not disputed by the Appellants. It is submitted that the 1st Respondent has also secured registration of its trade mark ?Netmicin?. It is submitted that though the 1st Respondent had not conducted official search of the Register of Trade Marks prior to the adoption of the trade mark Netmicin, it had requested its Trade Mark Agent to conduct personal search at the Trade Mark Registry to ascertain availability of inter alia the trade mark Netmicin and the said Trade Mark Agent had advised the said Respondent after conducting such search that the trade mark Netmicin can be adopted by the said Respondent. It is submitted that the Trade Mark Agent?s search report is on record and the said fact is not disputed.


9. It is further submitted that the Appellants had objected to the use of the product insert/product literature by the 1st Respondent on the ground that the 1st Respondent?s product insert is identical to the Appellants? product insert and that the 1st Respondent has thereby committed infringement of the Appellants? alleged copyright in their product insert. It is submitted that the 1st Respondent, in its Affidavit in reply filed at the ad-interim stage, contended that the contents of the product insert are merely of general descriptive nature and are taken from common source and no copyright could be claimed by the Appellants in their product insert, however, later the 1st Respondent changed the contents of the product insert so as to avoid any possible conflict with the Appellants on the said issue.


10. It is to be noted that in the Notice of Motion taken out by the Appellants, the learned Single Judge of this Court had granted ad-interim injunction. However, that order was challenged before the Division Bench of this Court and by consent of parties, ad-interim injunction was set aside, and the learned Single Judge was requested to hear the Notice of motion finally. Thereafter, the Notice of Motion was finally heard and the order which is impugned in this appeal was passed dismissing the Notice of Motion. Thus, during the pendency of the Suit since the year 2004, admittedly, no injunction is operating against the Respondents and it is the case of the Respondents that the Respondents have been using their trade mark ?NETMICIN? since January, 2003.


11. After having heard the learned Counsel appearing for both the sides in detail and after having gone through the judgments relied on by both the learned Counsels and the record, we find that disturbing the order passed by the learned Single Judge would not be proper. The trade mark of the Respondents ?NETMICIN? is admittedly registered, and therefore, the Respondents have statutory right to use that trade mark. The Appellants have adopted their trade mark ?NETROMYCIN? from the generic drug name ?Netilmicin?. When a trade mark is found from the common generic name, no single proprietor can claim absolute monopoly in such name or trade mark. When a proprietor adopts a trade mark on the basis of name of generic drug or ingredient, it will be safe to assume that he is aware that the other proprietors are also likely to adopt and use similar marks in case their product is based on the same generic drug or ingredient. In such a case, the first user cannot claim exclusivity in his trade mark or in the name which is derived from the generic drug. At the most such proprietor can claim exclusivity in those added features which differentiates his trade mark from the name of the generic drug or ingredient. When two trade marks are coined from the same generic drug or ingredient, there are bound to be similarities between the two and in such a case, even if the differences between the two trade marks are minor or small, then also at least at the prima facie stage no injunction can be granted.


12. It has come on record that the other manufacturers and traders of medicinal goods have also adopted trade marks with prefix NET to indicate the drug name ?Netilmicin Sulfate? and the suffix ?MICIN/MYCIN? is common to pharmaceutical trade. Both the trade marks are used in respect of ?Netilmicin Sulfate? and both the trade marks owe their origin to the said medicine name. Since there is commonality in origin, ingredient, compositio

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n and purpose, even if one drug is consumed for the other, there cannot be disastrous consequences. It is an established position on record that Netilmicin Sulphate injection is an expensive drug, consumed and used by doctors, generally in hospitals and medical institutions while treating patient with critical condition and is administered to patients after carrying out sensitivity culture test and only if the doctors are satisfied that such injection is appropriate medicine to be given to the patient. In our opinion, the learned Single Judge has rightly considered this aspect while rejecting the notice of motion. It is further to be noted that the Respondents? goods are purchased in bulk by the hospitals and not by the common consumers, they are not sold over the counter. Whereas the Appellants? goods are sold over the counter to the consumers. In our opinion, the manner in which the drug is administered and that the product of the Respondents is used only in the hospitals by the Doctors after carrying out sensitivity culture test, is enough to rule out any possibility of any confusion as the chemical used in both the products is same. Even if by mistake one is used for the other, no injury is likely to be suffered by the consumer or patient. In our opinion, therefore, this circumstance coupled with the circumstance that both the trade marks are registered and that from the year 2003 the Respondents have been using its trade mark uninterruptedly dis-entitles the Plaintiffs- Appellants to interim injunction restraining the Defendants-Respondents from using its trade mark. 13. So far as the complaint in relation to the product insert is concerned, admittedly, the Respondents have changed the contents of the product insert. 14. In the result, therefore, the Appeal fails and is dismissed. No order as to costs.
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