IA Nos.19585/2014 (u/O 39 R 1 & 2 CPC) & 20124/2014 (u/O 39 R 4 CPC)
1. This suit is filed by the plaintiff seeking a decree of permanent injunction restraining the defendants, etc. from dealing with any medicinal preparations under the impugned mark TRI-VOBIT or any other mark which is phonetically or deceptively similar to the plaintiff’s trade mark TRIVOLIB. Other connected reliefs are also sought.
2. Along with the suit, the plaintiff filed IA No. 19585/2014 under Order 39 Rules 1 and 2 CPC. This application along with the suit came up for hearing on 01.10.2014 when this court passed an interim injunction restraining the defendants, etc. from dealing in medicinal preparations under the trade mark TRI-VOBIT or any other trade mark which may be deceptively similar to the plaintiff’s trade mark TRIVOLIB till further orders.
3. The defendants thereafter filed IA No. 20124/2014 under Order 39 Rule 4 CPC for vacation of the stay. As the matter was adjourned, the defendants filed an appeal before the appellate court being FAO (OS) 446/2014 seeking to impugn the order dated 01.10.2014. The appeal was disposed of on 17.10.2014 with the direction to the learned Single Judge to endeavour to decide the application expeditiously. The defendants were also permitted to liquidate its existing stock of TRI-VOBIT within a period of six months.
4. The case of the plaintiff is that it is a wholly owned subsidiary of Sun Pharmaceutical Industries Ltd. and in order to strengthen its organizational structure of Domestic Formulation Undertaking, Sun Pharmaceutical Industries Ltd. vide Scheme of Arrangement, spun off its domestic formulation division undertaking including intellectual property thereof to the plaintiff. The Scheme of arrangement was approved by the Bombay High Court vide order dated 03.05.2013. Hence, the plaintiff became the proprietor and owner of all the intellectual property rights of Sun Pharmaceutical Industries Ltd. for the domestic formulation undertaking activities. The plaintiff has recorded itself as the subsequent proprietor of the trade marks with the Trade Marks Registry.
5. It is pleaded that the plaintiff has one preparation (through its predecessor in business) which is marketed under the trade mark TRIVOLIB which is a coined mark. The medicine is used for treatment of non-insulin diabetic patients. The medicine contains salts, namely, Gilmepiride, Voglibose and Metformin Hydrochloride. It is pleaded that the mark TRIVOLIB was coined by the plaintiff as a trade mark in August 2011 and enjoys inherent distinctiveness indicating trade origin. The said trade mark is said to have been used extensively and commercially in the course of trade of medicinal preparations since 2011. The trade mark TRIVOLIB is also registered in Class V vide registration dated 12.08.2011. The statement of annual sales and sales promotional expenditure of the drug using the said trade mark has been stated. It is pleaded that from 01.10.2011 till 31.03.2012, the plaintiff had a sale of Rs.2.86 crores. From 01.04.2012 to 31.03.2013, the sales figures jumped up to Rs.13.39 cores and the next year, it jumped up to Rs.24.39 crores. It is pleaded that the consumers at large distinguish, identify and associate TRIVOLIB with the plaintiff which is a well known trade mark as per the provisions of Section 2(1) (zg) of the Trade Marks Act, 1999.
6. Defendant No.1 is said to be a company which is marketing the medicines manufactured by defendant No.2. It is pleaded that sometimes in the third week of September 2014, the plaintiff came across the medicine of the defendants under the impugned mark TRI-VOBIT 1 and TRI-VOBIT 2 selling in Delhi. The said medicine also contains a composition of the same salts, namely, Voglibose, Metformin Hydrochloride and Gilmepiride and is also for the same ailment, namely, diabetes. It is pleaded that the defendants having seen the success of the plaintiff’s medicine have adopted the impugned trade mark TRI-VOBIT with the same composition for the same ailment. It is also stated that defendant No.1 is already selling the medicine containing Metformin Hydrochloride under the mark GLUCONORM and also the medicine with the composition of Metformin Hydrochloride and Gilmepiride under the mark of GLUCONORM G. Similarly, the plaintiff has no objection to the defendants using VOBIT for medicine containing Voglibose or VOBIT M which comprises of Voglibose and Metformin. It is pleaded that there was no reason for the defendant to adopt the impugned trade mark. As a natural progression for the medicine containing the three chemicals, the defendants should naturally have used VOBIT GM but mischievously chosen to adopt TRI-VOBIT.
7. It is also pointed out that defendant No. 1 had filed a trade mark application for registration of the mark TRI-VOBIT 1 on 27.04.2012 which was then proposed to be used. The application was published in trade mark journal on 13.05.2013. The plaintiff filed its notice of opposition on 13.08.2013.
8. It is pleaded that the defendants’ actions constitute infringement, passing off and unfair competition. The trade mark of the defendant TRI-VOBIT is phonetically and deceptively similar to the plaintiff’s registered mark TRIVOLIB. Hence, the present suit. It is pleaded that the interim order passed by this court be confirmed.
9. The defendants have filed their respective written statements. In the written statement, it has been pleaded that defendant No. 1 has obtained registration of the mark TRI-VOBIT 2 in Class V and hence, no suit for infringement of the trade mark can lie against the use of a registered mark and this court has no jurisdiction to entertain the present suit. At best, the only cause of action for which the plaintiff can sue is for passing off, which again the plaintiff would fail as the plaintiff has not acquired goodwill in the mark TRIVOLIB. It is also stated that the defendants’ mark has been launched in October 2012. It is also pleaded that defendant No. 1 is the registered proprietor of the mark VOBIT and the said VOBIT is a registered mark, bona fidely adopted much prior to. The word TRI means a combination of three drugs which in the present case are Voglibose, Metformin Hydrochloride and Glimepiride. It is pointed out that the plaintiff themselves stated that they have no objection to the defendants using the trade mark VOBIT or from the defendant using the prefix TRI. Hence, it is pleaded that the plaintiff has no right to seek injunction against the combination of TRI and VOBIT. Defendant No.1 has independent rights in VOBIT being a registered trade mark. TRI is a descriptive of the three compound combination. It is pleaded that the product is used for the treatment of diabetes and thousands of patients using the drugs on daily basis would be deprived of the defendants’ medicines. It is also stated that the adoption of the present mark is not to trade on the alleged goodwill of the plaintiff’s mark. It is also pleaded that the plaintiff has falsely claimed to have acquired goodwill and reputation.
10. I have heard learned counsel for the parties.
11. Learned senior counsel for the defendants has vehemently pleaded that the injunction order passed by this court be vacated on the following grounds:-
(i) The trade mark of the defendants is also registered, namely, TRI-VOBIT 2. As both the marks are registered, no suit for infringement can be filed against the defendants. It is pleaded that under Section 28(3) of the Trade Marks Act, the plaintiff cannot file a suit against the defendants as the trademarks of both the parties are registered.
(ii) It is pleaded that even if the present suit was to be treated as a suit for passing off, there is no passing off as the defendant is the prior user of the trade mark VOBIT. The trade mark VOBIT was used for the first time by the defendants in 2008 whereas the plaintiff has being using the trade mark TRIVOLIB since August 2011. It is pleaded that only the word TRI has been prefixed to the word VOBIT since October 2012. The defendant being a prior user of the mark, no suit for passing of would also lie.
(iii) It has also been pointed out that the defendant had filed an application for registration of two trademarks, namely, TRI-VOBIT 1 and TRI-VOBIT 2. The plaintiff chose to oppose registration of trade mark TRI-VOBIT 1. They never filed an opposition to TRI-VOBIT 2. Hence, they cannot now turn around and say that they have rights in the said trade mark.
(iv) Reliance is placed on “Additional list of products to be manufactured” issued by the Drug Licensing and Controlling Authority, Uttrakhand to Akums Drugs and Pharmaceuticals Ltd. dated 31.03.2010 which permits the said entity to manufacture drugs TRIVOLIB 1 and TRIVOLIB 2. It is pleaded that this itself throws doubts on the proprietary rights of the plaintiff on the trade mark TRIVOLIB. It is pleaded that there is no explanation as to who is this company Akums Drugs and Pharmaceuticals Ltd.
(v) It is also pleaded that the plaintiff has falsely claimed that the plaintiff’s mark has acquired goodwill and reputation and is a well know mark. No evidence recognizing the plaintiff’s mark as a well known mark has been adduced. It is inconceivable that the mark will become well know in about three years. Only limited extent of usage has been placed on record.
12. Learned counsel appearing for the plaintiff has rebutted the contentions of the learned senior counsel for the defendants on the following grounds:-
(i) He has pleaded that admittedly the plaintiff has no objection to the defendants using the trade mark VOBIT. The plaintiff also does not object to the defendants using the mark TRI. However, the defendant cannot use the word TRI-VOBIT as it is structurally and phonetically similar to the registered trade mark of the plaintiff TRIVOLIB.
(ii) It is pleaded that the trade mark journal is a voluminous document. The plaintiff is proprietor of about 1600 trademarks. To identify similar trademarks to the trademarks owned by the plaintiff, the plaintiff and other companies use a software which helps to search through the voluminous record of the Trade Marks Registry to identify similar or deceptively similar trademarks. The search by the software of the plaintiff did throw up TRI-VOBIT 1 and hence, the objections were filed. It however did not throw up the name of TRI-VOBIT 2 and hence, the plaintiff missed filing objections to the registration of the said trade mark. It is pointed out that the plaintiff have applied for cancellation of the said trade mark to the Trade Marks Registry.
(iii) It is submitted that under Section 124(5) and 28 (3), a court can pass an injunction order against the use of a registered trade mark.
(iv) It is pointed out that the plaintiff is a prior user having started using the trade mark since October 2011. Admittedly, the defendant is a subsequent user, allegedly since October 2012. In the very first year of its production, the plaintiff had a turnover of Rs.2.86 crores and in the second year a turnover of Rs. 13 crores. Being a prior user, it is clear that an injunction is to be passed for passing off against the defendants.
13. Learned senior counsel for the defendants in rejoinder has pleaded relying upon the judgment of the Supreme Court in the case of Patel Field Marshal Agencies and Anr. vs. P.M. Diesels Ltd. and Ors., 2017 (13) Scale 783 that the rectification plea filed by the plaintiff is no plea in the eyes of law. It is also pleaded relying upon the judgment of the Supreme Court in the case of Toyota Jidosha Kabushiki Kaisha vs. M/s. Prius Auto Industies Ltd. & Ors., 2017 (14) Scale 472 that there is no reputation of the brand of the plaintiff which would permit this court to pass any order for the alleged passing off.
14. I may first deal with the contention of the defendant about the effect of the registration of the trade mark TRI-VOBIT 2 of the defendants on the present suit for injunction.
15. Section 28(3) of the Trade Marks Act reads as follows:-
“28. Rights conferred by registration.—
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.”
16. Section 124 (5) of the Trade Marks Act reads as follows:-
“124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.—
(1) Where in any suit for infringement of a trade mark—
(a) the defendant pleads that registration of the plaintiff’s trade mark is invalid; or
(b) the defendant raises a defence under clause (e) of sub-section (2) of section 30 and the plaintiff pleads the invalidity of registration of the defendant’s trade mark, the court trying the suit (hereinafter referred to as the court), shall,—
(i) if any proceedings for rectification of the register in relation to the plaintiff’s or defendant’s trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;
(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiff’s or defendant’s trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.
(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.”
17. The Supreme Court in the case of Patel Field Marshal Agencies and Anr. vs. P.M. Diesels Ltd. and Ors.(supra) on this issue held as follows:-
“27. Rather, from the resume of the provisions of the 1958 Act made above it becomes clear that all questions with regard to the validity of a Trade Mark is required to be decided by the Registrar or the High Court under the 1958 Act or by the Registrar or the IPAB under the 1999 Act and not by the Civil Court. The Civil Court, infact, is not empowered by the Act to decide the said question. Furthermore, the Act mandates that the decisions rendered by the prescribed statutory authority [Registrar/High Court (now IPAB)] will bind the Civil Court. At the same time, the Act (both old and new) goes on to provide a different procedure to govern the exercise of the same jurisdiction in two different situations. In a case where the issue of invalidity is raised or arises independent of a suit, the prescribed statutory authority will be the sole authority to deal with the matter. However, in a situation where a suit is pending (whether instituted before or after the filing of a rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the Civil Court as regards the prima facie tenability of the plea of invalidity.
30. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the Civil Court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act.
The Tribunal will however come into seisin of the matter only if the Civil Court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the Civil Court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive.”
18. Clearly as per the above judgment, the issues relating to the validity of a registration have to be dealt with by the Tribunal and not by the civil court. In the event, the civil court is approached and the issue of invalidity of the trade mark is raised, such a plea is not to be decided by the civil court but by the tribunal. However, the tribunal will come into seisin of the matter only if the civil court is satisfied that an issue with regard of invalidity ought to be framed in the suit. Once the issue is framed, the matter will have to go to the tribunal and the decision of the tribunal will thereafter bind the civil court.
19. In the present case, when the plaintiff filed the present suit, admittedly, the concerned trade mark of the defendants, namely, TRI-VOBIT 2 was not registered. The said trade mark got registered about 14 days after filing of the suit. Keeping in view the above dicta of the Supreme Court, it is true that the Tribunal would not come into seisin of the application filed by the plaintiff for revoking the registration of the trade mark in favour of the defendant until this court were to frame an issue after being satisfied that an issue in this regard needs to be framed. Hence, mere moving of an application by the plaintiff before the Trade Marks Registry/concerned authority as done by the plaintiff would not confer any rights for the present on the plaintiff.
20. I need not further deal with this aspect as it was admitted by both sides that a suit for passing off would lie against the defendants despite registration of the trade mark TRI-VOBIT 2 provided the essential ingredients of passing off are made out.
21. Reference in this regard may be had to the judgment of the Supreme Court in the case of S.Syed Mohideen vs. P. Sulochana Bai, (2016) 2 SCC 683 wherein the court held as follows:-
“30. Firstly, the answer to this proposition can be seen by carefully looking at the provisions of Trade Marks Act, 1999 (The Act). Collective reading of the provisions especially Section 27, 28, 29 and 34 of the Trade Marks Act, 1999 would show that the rights conferred by registration are subject to the rights of the prior user of the trademark. We have already reproduced Section 27 and Section 29 of the Act.
30.1 From the reading of Section 27(2) of the Act, it is clear that the right of action of any person for passing off the goods/services of another person and remedies thereof are not affected by the provisions of the Act. Thus, the rights in passing off are emanating from the common law and not from the provisions of the Act and they are independent from the rights conferred by the Act. This is evident from the reading of opening words of Section 27(2) which are "Nothing in this Act shall be deemed to affect rights...."
30.2 Likewise, the registration of the mark shall give exclusive rights to the use of the trademark subject to the other provisions of this Act. Thus, the rights granted by the registration in the form of exclusivity are not absolute but are subject to the provisions of the Act.
30.3 Section 28(3) of the Act provides that the rights of two registered proprietors of identical or nearly resembling trademarks shall not be enforced against each other. However, they shall be same against the third parties. Section 28(3) merely provides that there shall be no rights of one registered proprietor vis--vis another but only for the purpose of registration. The said provision 28 (3) nowhere comments about the rights of passing off which shall remain unaffected due to overriding effect of Section 27(2) of the Act and thus the rights emanating from the common law shall remain undisturbed by the enactment of Section 28(3) which clearly states that the rights of one registered proprietor shall not be enforced against the another person.
31. Secondly, there are other additional reasonings as to why the passing off rights are considered to be superior than that of registration rights.
31.1 Traditionally, passing off in common law is considered to be a right for protection of goodwill in the business against misrepresentation caused in the course of trade and for prevention of resultant damage on account of the said misrepresentation. The three ingredients of passing off are goodwill, misrepresentation and damage. These ingredients are considered to be classical trinity under the law of passing off as per the speech of Lord Oliver laid down in the case of Reckitt & Colman Products Ltd. v. Borden Inc: (1990) 1 AllE.R. 873 which is more popularly known as "Jif Lemon" case wherein the Lord Oliver reduced the five guidelines laid out by Lord Diplock in Erven Warnink v. Townend & Sons Ltd. [1979) AC 731, 742 (HL)] (the "Advocate Case") to three elements: (1) Goodwill owned by a trader, (2) Misrepresentation and (3) Damage to goodwill. Thus, the passing off action is essentially an action in deceit where the common law rule is that no person is entitled to carry on his or her business on pretext that the said business is of that of another. This Court has given its imprimatur to the above principle in the case of Laxmikant V. Patel v. Chetanbhat Shah and Anr.: 2002 (2) R.C.R. (Civil) 357 : (2002) 3 SCC 65.
31.2 The applicability of the said principle can be seen as to which proprietor has generated the goodwill by way of use of the mark name in the business. The use of the mark/carrying on business under the name confers the rights in favour of the person and generates goodwill in the market. Accordingly, the latter user of the mark/name or in the business cannot misrepresent his business as that of business of the prior right holder. That is the reason why essentially the prior user is considered to be superior than that of any other rights. Consequently, the examination of rights in common law which are based on goodwill, misrepresentation and damage are independent to that of registered rights. The mere fact that both prior user and subsequent user are registered proprietors are irrelevant for the purposes of examining who generated the goodwill first in the market and whether the latter user is causing misrepresentation in the course of trade and damaging the goodwill and reputation of the prior right holder/former user. That is the additional reasoning that the statutory rights must pave the way for common law rights of passing off.”
22. The Supreme Court in the case of Toyota Jidosha Kabushiki Kaisha vs. M/s. Prius Auto Industies Ltd. & Ors.(supra) while describing the principles governing the law of passing off noted as follows:-
“21. At the very outset, certain principles that govern the law of passing off may be usefully noticed. Such principles, in fact, have been considered by this Court in its decision in S. Syed Mohideen (supra), though in a somewhat different context, i.e., the right of a registered owner of a particular mark to bring an action for passing off against another registered owner of an identical or largely similar trade mark. In S. Syed Mohideen (supra), this Court on a collective reading of the provisions of the Act held that the action for passing off which is premised on the rights of prior user generating a goodwill shall be unaffected by any registration provided under the Act, which proposition actually stood approved in an earlier decision of this Court in N.R. Dongre (supra). The trinity test laid down in Reckitt and Colman Ltd. (supra) was reiterated by this Court in S. Syed Mohideen (supra) by holding that to prove and establish an action of passing off, three ingredients are required to be proved by the plaintiff, i.e., his goodwill, misrepresentation and damages.
22. The following passage from Kerly’s ‘Law of Trade Marks and Trade Names’7 noticed in S. Syed Mohideen (supra) may be reiterated herein for a clear exposition of the principles laying down the test for judging an action of passing off in the Indian jurisdiction. The provisions in the Indian Trade Marks Act, 1999 incidentally are analogous to those in the U.K. Trade Marks Act,
“15-034. Subject to possibly one qualification, nothing in the Trade Marks Act, 1994 affects a trader’s right against another in an action for passing off. It is, therefore, no bar to an action for passing off that the trade name, get up or any other of the badges identified with the claimant’s business, which are alleged to have been copies or imitated by the defendant, might have been, but are not registered as, trade marks, even though the evidence is wholly addressed to what may be a mark capable of registration. Again, it is no defence to passing off that the defendant’s mark is registered. The Act offers advantages to those who register their trade marks, but imposes no penalty upon those who do not. It is equally no bar to an action for passing off that the false representation relied upon is an imitation of a trade mark that is incapable of registration. A passing off action can even lie against a registered proprietor of the mark sued upon. The fact that a claimant is using a mark registered by another party (or even the defendant) does not of itself prevent goodwill being generated by the use of the mark, or prevent such a claimant from relying on such goodwill in an action against the registered proprietor. Such unregistered marks are frequently referred to as ‘common law trade marks’.” (Underlining is ours)”
23. The legal position that follows is that an action for passing off could lie despite Section 28(3) of the Act against the use of a registered trade mark. The use of the mark confers rights in favour of the person and generates goodwill in the market. The latter user of the mark cannot misrepresent his business as that of the prior right holder. Prior user is considered superior than that of any other rights.
24. I may now see as to whether it can be prima facie held that the action of the defendant tenatamounts to passing off its trade mark as that of the plaintiff. It is undoubtedly true that the plaintiff is a prior user of the trade mark TRIVOLIB. It commenced use of the trade mark in October 2011. In the very first year, it had a turnover of Rs.2.86 crores. The plaintiff has placed on record a certificate by Valia and TimBadia Chartered Accountants certifying the sales figures for TRIVOLIB from October 2011 to March 2012 and for the subsequent years.
25. The admitted position as per the written statement is that the defendants have commenced use of its trade mark TRI-VOBIT only in October 2012 and have sold over 15 lakhs strips. No further details are given. However, a statement of Chartered Accountant is filed stating that from April 2012 to March 2013, the defendant claims to have recorded a sale of Rs.1.28 croes for the medicines TRI-VOBIT 1 and TRI-VOBIT2 and has vested rights in the said trade mark.
26. It is manifest from the above facts and documents that the plaintiff has made out a prima facie case of having built substantial goodwill and reputation in the market. Prima facie, admittedly, the plaintiff is a much prior user of the brand TRI VOLIB and has vested rights in the said trade mark.
27. The next issue pertains to as to whether the trade mark of the plaintiff TRI VOLIB is prima facie deceptively similar to the trade mark of the defendants TRI-VOBIT. Both the parties have relied upon the judgment of the Supreme Court in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73. The said judgment pertains to medicines sold under the brand name of Falcitab sold by the respondent as compared to the medicine Falcigo used by the appellant. The Supreme Court formulated the test as follows:-
“16. Dealing once again with medicinal products, this Court in F. Hoffmann-La Roche & Co. Ltd. Vs. Geoffrey Manner & Co. Pvt. Ltd., 1969(2) SCC 716 had to consider whether the word “Protovit” belonging to the appellant was similar to the word “Dropovit” of the respondent. This Court, while deciding the test to be applied, observed at page 720-21 as follows:-
The test for comparison of the two word marks were formulated by Lord Parker in Pianotist Co. Ltd.s application as follows:
You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case.
It is necessary to apply both the visual and phonetic tests. In Aristoc Ltd. v. Rysta Ltd. the House of Lords was considering the resemblance between the two words "Aristoc” and “Rysta”. The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Lukmoore in the Court of Appeal, which passage, he said, he completely accepted as the correct exposition of the law:
The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that persons wants.
It is important that the marks must be compared as wholes. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. Thus in Lavroma case Lord Johnston said:
we are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."
On the facts of that case this Court came to the conclusion that taking into account all circumstances the words Protovit and Dropovit were so dissimilar that there was no reasonable probability of confusion between the words either from visual or phonetic point of view.
19. With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdharas case (supra) where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharmas case (supra), it was observed that:
In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated.
24. In the case of R.J. Strasenburgh Co. Vs. Kenwood Laboratories, Inc. reported in 106 USPQ 379, as noted in the decision of Morgenstern Chemical Companys case (supra), it had been held that:
Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced."
27. As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken.”
28. Similarly, the learned Single Judge of this court in Stiefel Laboratories, Inc. & Anr. vs. Ajanta Pharma Ltd., 2014 (59) PTC 24 (Del.) held as follows:-
“29. In the case of Indian Hotels Company Limited versus Ashwajeet Garg & Others (CS (OS) 394 of 2012 Order dated 01.05.2014), I had the occasion of considering various judicial pronouncements and culling out the following legal principles for determining the deceptive similarity of marks:
i. Action for infringement is a statutory remedy conferred on the registered proprietor of a registered trademark. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories: AIR 1965 SC 980
ii. Registration of trademark gives the proprietor the exclusive right to the use of the trademark in connection with the goods in respect of which it is registered. American Home Products v. Mac Laboratories : AIR 1986 SC 137
iii. If the essential features of the trademark of the Plaintiff have been adopted by the Defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets shows marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial. American Home Products v. Mac Laboratories : AIR 1986 SC 137
iv. Mere delay in filing of a suit for infringement is not fatal. Tata Oil Mills Co. Ltd. v. Wipro Ltd., MANU/DE/0614/1985 : AIR 1986 Delhi 345, Midas Hygiene v. Sudhir Bhatia and Ors. : 2004(28) PTC 121 (SC) v. Phonetic similarity constitutes an important index of whether a mark bears a deceptive or misleading similarity to another. Encore Electronics Ltd.
v. Anchor Electronics and Electricals Pvt. Ltd. : 2007(35) PTC 714.
vi. The Court must consider the usage of words in India, the manner in which a word would be written in Indian languages and the similarity of pronunciation if the rival marks are used K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. and Anr.: AIR 1970 SC 146
vii. Resemblance between the two marks must be considered with reference to the ear as well as the eye. K.R. Chinna Krishna Chettiar v. Sri. Ambal & Co. and Anr.: AIR 1970 SC 146
viii. The rival marks have to be compared as a whole. The two competing marks must be judged both by their look and by their sound. All the surrounding circumstances must be considered. Amritdhara Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449
ix. Where the similarity between the Plaintiffs and the Defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the Plaintiffs rights are violated. Kehsav Kumar Aggarwal Versus M/s. NUT Ltd. 2013 (199) DLT 242
x. Competing marks have to be compared keeping in mind an unwary purchaser of average intelligence and imperfect recollection. Amritdhara Pharmacy versus Satyadeo Gupta : AIR 1963 SC 449
xi. Broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any marked differences in the design and get up.
xii. A single actual use with intent to continue such use eo instanti confers a right to such mark as a trademark. Century Traders v. Roshan Lal Duggar Co., : AIR 1978 (Del) 250
xiii. The applicant has to establish user of the aforesaid mark prior in point of time than the impugned user by the non-applicant. Clinique Laboratories LLC and Anr. Versus Gufic Limited and Anr. : 2009(41) PTC 41(Del), Siyaram Silk Mills Ltd. v. Shree Siyaram Fab Pvt. Ltd., : (2012) 2 Mah LJ 49, The Singer Company Limited & Anr. Versus Ms. Chetan Machine Tools & Ors ILR : (2009) 3 Del 802 : (2009) 159 DLT 135, Chorion Rights Limited Versus Ishan Apparel, : ILR (2010) 5 Del 481
xiv. A suit for infringement is maintainable by a registered proprietor against another registered proprietor. Clinique Laboratories LLC and Anr. Versus Gufic Limited and Anr.: 2009(41) PTC 41(Del), Siyaram Silk Mills Ltd. v. Shree Siyaram Fab Pvt. Ltd. : (2012) 2 Mah LJ 49, The Singer Company Limited & Anr. Versus Ms. Chetan Machine Tools & Ors : ILR (2009) 3 Del 802: (2009) 159 DLT 135, Chorion Rights Limited Versus Ishan Apparel, : ILR (2010) 5 Del 481
xv. While staying the further proceedings pending decision of the registrar on rectification, an interim order including of injunction restraining the use of the registered trademark by the Defendant can be made by the court. Rajnish Aggarwal Versus Anantam : 2010(43) PTC 442 (Del)
xvi. A trademark shall not be registered if it is identical or similar to an earlier trademark in respect of goods or services covered by the trademark and is likely to cause confusion amongst the public. Section 11 of the Trademarks Act, 1999
xvii. Registration of an identical or a similar trademark shall also be refused for goods an
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d services not covered by the earlier trademark if it is shown that the earlier trademark is a well known trademark. Section 11 of the Trademarks Act, 1999 xviii. The mere fact that the Plaintiff has not chosen to take any action against other parties cannot disentitle the Plaintiff from taking the present action Prakash Roadline Ltd. Vs. Prakash Parcel Service (P) Ltd. : 48(1992) DLT 390: 1992(22) DRJ 489” 29. Clearly, the test is to see as to whether the essential features of the trade mark of the plaintiff have been adopted by the defendants. Phonetic similarity would constitute an important index. In my opinion, the trade mark of the defendants TRI-VOBIT is prima facie phonetically and structurally similar to the trade mark of the plaintiff TRIVOLIB. Further the two drugs of the parties are for the same ailment. The likelihood of confusion cannot be ruled out. There is no merit in the contentions of the defendant to the contrary. 30. The other plea of defendants is that it is a prior user of the mark VOBIT since 2008 and merely a prefix TRI has been added to the same and hence, a case of passing off cannot be made out. It is settled legal position that while comparing the trademarks, the trademarks have to be taken as a whole. The above proposition was noted by the Supreme Court in the case of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.(supra) while relying upon the earlier judgment of the Supreme Court in the case of Corn Products Refining Co. V. Shangrila Food Products Ltd., AIR 1960 SC 142. The Supreme Court had approved the following observations from the judgment of Corn Products Refining Co. V. Shangrila Food Products Ltd.(supra):- “13. Xxx "We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other." 31. The plea that the defendant is the prior user of the mark VOBIT and has only added a prefix TRI and hence the plaintiff cannot claim prior user is plea that is entirely misplaced. As noted above, the full words have to be compared and not a part of the word. The defendant is using the mark TRI-VOBIT for its drugs. TRI-VOBIT has to be compared with TRIVOLIB. When we compare the two words, it is manifest that TRI-VOBIT is structurally and phonetically similar to the trade mark of the plaintiff TRIVOLIB. Merely because the defendant was using VOBIT earlier cannot be a ground to plead that the words have to be split and then compared as is sought to be done. 32. Defendants have also referred to certain documents filed by the plaintiff, namely, the additional list of products to be manufactured by Akums Drugs and Pharmaceuticals Ltd. to contend that there is confusion about the ownership of the trade mark of the plaintiff. Learned counsel for the plaintiff explains that this document is a license to manufacture and the drugs may have been manufactured from another company. However, it is manifest from a perusal of the certificate of the registration issued by the Trade Marks Registry that the trade mark TRIVOLIB is registered in the name of Sun Pharmaceutical Laboratory Ltd. There is no merit in the said plea of the defendant. 33. It is quite clear from the above that the plaintiff has made out a prima facie case. Balance of convenience is also in favour of the plaintiff. I accordingly allow IA No.19585/2014 and confirm interim order dated 01/10.2014. 34. IA No. 20124/2014 filed by the defendant stands dismissed.