LOKESHWAR PRASAD, J.
(1) THIS Order will dispose of plaintiff's application (IA 2444/96) filed under Order 39 Rules I and 2 read with Section 151 of the Code of Civil Procedure, 1908 (hereinafter referred to as 'the CPC') with the prayer that an interim injunction be granted restraining the defendants, its partners, or proprietors, as the case may be, their officers, agents and servants from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in a pharmaceuticals/medicinal preparations under the mark DICAMOL or any other mark as may be identical with or deceptively similar to the plaintiff's trade mark DICLOMOL or from doing any other thing as may be likely to lead to passing off the goods and/or business of the defendants as that of the plaintiff's.
(2) THE facts relevant for the disposal of the above mentioned application, briefly stated are that the plaintiff Company filed a suit for permanent injunction, restraining passing off, rendition of accounts of profits, delivery up etc. against the defendants, named above, averring that the plaintiff is a Company incorporated under the provisions of the Companies Act, 1956, having its registered office at 1400, Hemkunt Tower, 98, Nehru Place, New Delhi and Shri Dev Kumar Lalwani, Company Secretary and the constituted attorney of the plaintiff Company is fully authorised to sign and verify the plaint and to institute the present proceedings on behalf of the plaintiff Company. It is stated that the plaintiff Company, which was established in the year 1981, has carved a niche for itself in the field of manufacture, development and marketing of high quality pharmaceutical preparations and that the plaintiff Company has gained tremendous reputation in the medical trade/ medical profession amongst the consumers through large scale advertisement, extensive sales. innovative promotional schemes including distribution of literature among the medical circles.
(3) IT is further stated that one of the well known products of the plaintiff Company is anti-inflammatory and analgesic medicines sold in the form of Diclofenac Sodium and Paracetamol tablets under the trade mark DICLOMOL which is used for treatment of various deceases like rheumatoid arthritis, osteoarthritis, ankylosing spondylitis, cervical spondylosis, intervertebral disc syndrome and sciatica, nonarticular rheumatic conditions such as fibrositis, myositis, bursitis, lower back pain, soft tissue injuries such as sprains, strains and sports injuries, painful inflammatory conditions in gynecology, post-operative and post traumatic inflammation and swelling, pain and inflammation following dental surgery and acute attacks of gout. It is stated that the said analgesic medicine under the trade mark DICLOMOL belonging to the plaintiff is also available in the form of injection and gel and is widely used to combat pain and inflammation.
(4) IT is averred that the plaintiff Company adopted the trade mark DICLOMOL on 1st September, 1988 and has been in continuous use of the above said trade mark DICLOMOL since then. As per the case of the plaintiff, the plaintiff after 1st September, 1988, has taken various preparatory steps to have the labels, artwork, blocks, dies, stationery and sales, promotional material in relation to the trade mark DICLOMOL,prepared. The plaintiff, it is averred, also obtained approval from the concerned Drug authorities for the purposes of drug licenses on or about 7th January, 1989 and thereafter launched its product under the trade mark DICLOMOL in the Indian market on 25th July, 1989. It is alleged that as a result of wide publicity, involving huge expenditure the plaintiffs above said product under the trade mark DICLOMOL has gained tremendous reputation in the business market and also in the public so much so that the said product under the trade mark DICLOMOL is identified exclusively with the plaintiff. It is stated that the plaintiff's trade mark DICLOMOL appears in a bold typeface on a coloured strip having a half arrow head at its one end. The above said configuration constitutes and original artistic work within the meaning of Section 2 (c) of the Copyright Act, 1957.
(5) IT is stated that by virtue of prior adoption, long, continuous, extensive user as aforesaid as well as owing to the large scale publicity, the trade mark DICLOMOL is identified exclusively with the plaintiff and therefore the plaintiff has the exclusive right to use the said mark' and the use of the said mark or any other mark deceptively similar by any one else without the consent of the plaintiff would amount to violation of the plaintiff's legal rights.
(6) IT is stated that in the month of December, 1995, the plaintiff came to know that a pharmaceutical product under a deceptively similar mark, i. e. 'dicamol' was being manufactured and sold by the defendants. Thereupon the plaintiff served a legal notice dated the 13th December, 1995 on the defendants asking them to cease and desist for using the mark DICAMOL or any other mark identical or deceptively similar to plaintiff's mark. The defendants in their reply dated the 7th February, 1996 to the said legal notice refused to tender any undertaking in terms of the legal notice. It is stated that the dishonest adoption of the mark DICAMOL by the defendants in respect of medicinal and pharmaceutical preparations is actuated with a clear intention of encashing upon the goodwill and reputation of plaintiff associated with its trade mark. It is further stated that the illegal adoption and use by the defendants of the impugned mark which is phonetically and visually identical to the plaintiff's trade mark DICLOMOL, is dishonest and is bound to cause confusion and deception amongst the public and trade. It has been prayed that the defendants be injuncted from carrying on their acts, unfair competition and passing off their goods and/or business as that of the plaintiff's, as, besides the plaintiff's interest it also involves the interest of the public at large.
(7) NOTICE of the above mentioned application was given to the defendants who have filed adetailed reply. In the reply filed on behalf of defendants, it is stated that both the medicines DICAMOL and DICLOMOL are different in colour, phonetically with the different batch number and as a matter of fact there is no similarity in the nature of the products of the plaintiff and that of the defendants. It is further stated in the reply filed on behalf of the defendants that both the medicines fall in Schedule of the Drug and Cosmetic Act which can be manufactured after the grant of license and are sold only on a prescription by a qualified medical practitioner and therefore there cannot be any confusion or deception in the minds of the public/ patients. It is contended that the defendants have derived the name of its product from the two contents used in the product i. e. 'dic' from Diclofence Sodium and 'amol' from 'paracetomol' and therefore the plaintiff cannot stop the defendant from using the names of the contents as the plaintiff has no right of trade mark or copy right. It is stated that the plaintiff has no prima fade case, nor any balance of convenience is in favour of the plaintiff and that the application filed by the plaintiff be dismissed with costs.
(8) THE plaintiff/applicant filed a rejoinder to the reply controverting the pleas taken in the reply and reiterating/reaffirming the contents of the application.
(9) I have heard the learned Counsel for the parties at length and have also carefully gone through the documents/material on record. As per settled law, culled out from various decisions, relief under Order XXXIX, Rules 1 and 2 can be given to an applicant provided the applicant is in a position to satisfy the Court that the applicant has a 'primafacie case that the 'balance of convenience' is in his favour and that' irreparable loss/injury would be caused to him if the relief is not granted to him. The phrases 'prima fade case 'balance of convenience' and 'irreparable loss' are not rhetoric phrases for incantation, but words of width and. elasticity to meet myriad situations, presented by men's ingenuity in given facts and circumstances, hedged with sound exercise of judicial discretion to meet the end of justice. The burden is always on the applicant/plaintiff to satisfy the Court that there is a 'prima facie case' in his favour which needs adjudication at the trial. The existence of prima facie right and infraction of the enjoyment of his property or the right, is a condition for the grant of temporary injunction. However, satisfaction that there is a 'prima facie case' by itself is not a sufficient ground to grant injunction. The Court further has to satisfy itself that non-interference by the Court would result in irreparable injury to the party seeking relief and that there is no other remedy available to the party except the one to grant injunction and that the applicant needs protection from the consequences of apprehended injury. Irreparable injury, however, does not mean that there must be no physical possibility of repairing the injury but means only that the injury must be a material one, namely, one that cannot be adequately compensated by way of damages. While granting relief under the above-provisions the Court has also to see that the 'balance of convenience' must be in favour of granting injunction. In other words, the Court, while granting or refusing to grant injunction, is expected to exercise sound judicial discretion to find out the amount of substantial mischief or injury which is likely to be caused to the parties if the injunction is refused and compare it with that it is likely to be caused to the other side if the injunction is granted. If on weighing competing possibilities or probabilities of likelihood of injury and if the Court considers that pending the suit the subject matter should be maintained in status quo an injunction under the above provisions would be granted by the Court Their Lordships of the Supreme Court incase Dalpat Kumar v. Prahlad Singh reported as AIR 1993 SC 276 have held that before granting injunction the Court would be circumspect and look to the conduct of the party, the probable injuries to either party and whether the plaintiff could be adequately compensated if the injunction is refused.
(10) IN the light of the above settled legal position, it is to be seen as to whether in the present case the plaintiff has a 'primafacie' case in its favour; whether the balance of convenience' is also in its favour and whether 'irreparable loss/injury' would be caused to the plaintiff if the relief sought for is not granted.
(11) INSOFAR as the present application is concerned it is not in dispute that both the 'marks' i. e. the one being used by the plaintiff and the other one being used by the defendant for manufacturing and marketing their products are not registered trade marks, registered under the provisions of Trade and Merchandise Marks Act, 1958. The averment of the plaintiff that the plaintiff adopted the trade mark 'diclomol/ on 1st September, 1988 and since then has been in continuous use of the above said trade mark has not been specifically controverted/denied by the defendant. It is nowhere pleaded by the defendant that the mark being used by the defendant- 'dicamol' is prior in point of time as compared to that of the plaintiff.
(12) FOR deciding the question as to whether the plaintiff has a primafacie case and whether the balance of convenience is in favour of the plaintiff, the two points requiring consideration by this Courc are as under :
(i) Whether the mark "dicamol/ being used by the defendant and the mark 'diclomol' being used by the plaintiff for the manufacture and marketing of their products are so similar that confusion is likely to be created amongst those who were/are dealing with the plaintiff Company; the public at large and the consumers?
(ii) In case this Court 'primafacie' comes to the conclusion at this stage that the above said two marks are deceptively similar and likely to create confusion in that event whether the plaintiff Company has a legal right to prevent the defendant from carrying on its business by using the mark 'dicamol' for the manufacture and marketing of its product ? Point No. 1:
(13) SO far as the first point is concerned the Supreme Court in case Corn Products Refining Company v. Shangrila food Products Limited, AIR 1960 SC 142, has held that the question whether the two marks are likely to give rise to confusion or not is a question of 'first impression'. Their Lordships of the Supreme Court in the above said case have held-
"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 in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them. (Emphasis supplied)
(14) IN Parker - Knoll Ltd. v. Knoll International Ltd. , (1962) RPC 265, Lord Denning explained the words "to deceive" and the phrase "to cause confusion" as follows:
"secondly, "to deceive" is one thing. To "cause confusion" is another. The difference is this: When you-deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so. "
(15) THE tests for the comparison of the two word marks were formulated by Lord Parker J in Pionotist Co. , Ltd's. application (XXIII RPC 774) 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. "
In Thomas Bear and Sons (India) Ltd. v. Prayag Narain and Anr. , AIR 1940 PC 86, the Privy Council pointed out that the test is whether a person exercising ordinary caution is likely to be deceived and not whether some ignorant and indiscriminating persons might not be so deceived. In the Leather Cloth Co. Ltd. v. The American Leather Cloth Co. Ltd. , (1866) 11 HLC 523, Lord Cran worth stated that the question is whether there is such a resemblance as to deceive a purchaser who exercises ordinary cautions.
(16) IT is necessary to apply both the visual and phonetic tests. In Aristae Ltd. v. Rysta Ltd. , 62 L XII RPC 65, the House of Lords was considering a 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.
(17) THE High Court of Jammu and Kashmir in case M/s. Rightway v. M/s. Rightways footwear and Anr. , AIR 1986 Jandk 71, where the plaintiff's mark "rightway" acquired good will and reputation and the defendants were using the mark "rightway Foot Wear" on their goods, held that the trade name and the mark used by the defendants were deceptively similar to the trade name and mark used by the plaintiff and that the defendants were passing off the goods to their customers under the same name. In the above said case the Jandk High Court held that the plaintiff was entitled to ad-interim relief. In another case - B. K. Engineering Co. , Delhi v. UBHI Enterprises (Regd.) Ludhiana and Am. , AIR 1985 Delhi 210, where the plaintiffs and the defendants were engaged in the manufacture of cycle bells and the plaintiffs started manufacturing cycle bells in 1971 by adopting "b. K. " as their house mark. The defendants in the above said case were marketing cycle bells under the trademark "b. K-81" from the year 1981. The plaintiffs filed a suit and sought to restrain the defendants from marketing their products under the trade name/ trademark "b. K-81" alleging that the defendants have misappropriated the distinctive indicum of the plaintiffs' bells. In the above said case it was held by this Court that the plaintiffs were entitled to temporary injunction restraining the defendants from using the said mark till the decision of the suit as the balance on the whole lilted in favour of the plaintiffs.
(18) HAVING regard to the facts of the present case the question is whether a customer entering into dealing with the Company or effecting the purchases of the goods manufactured by the defendant Company would get confused so as to mistake the goods of the defendant under the mark 'dicamol' to be that of the plaintiff being manufactured and marketed under the mark 'diclomol'. In my opinion, it would not be proper to apply the test of a man of extraordinary memory who remembers the spelling of the name of each mark or a person who jots down meticulously and methodically the details of the 'marks' in his diary and brings out his diary and every time cross checks as to whether he is purchasing the goods manufactured by the one Company or the other. The mark 'dicamol' used by the defendant for manufacture and marketing its product is a fancy or invented mark so also the word 'diclomol' used by the plaintiff for the manufacture and marketing its product. It is the trade mark which the plaintiff Company has deliberately invented and has deliberately used for the manufacture and marketing its products. It is the case of the plaintiff Company that the defendant is using the mark 'dicamol' fraudulently and purposefully with a deliberate view to secure unethical and undue advantage of the goodwill earned by it in respect of its well known products and that the same was done by way of invasion of the plaintiff company's rights in its goodwill. It was urged by the learned Counsel for the plaintiff, during the course of the arguments, that this was done by the defendant with a view to create an impression amongst the trade and persons dealing with the defendant that they were dealing with the goods manufactured by the plaintiff Company. The above aspect would be examined a little later. For the present I propose to consider the question whether the two marks are so deceptively similar so as to cause confusion amongst the persons dealing with the plaintiff and the defendant and whether the plaintiff in the facts and circumstances of the case is justified in taking exception to the use of the mark 'dicamol' by the defendant for the purpose of manufacture and marketing its products.
(19) THE two marks 'diclomol' (being used by the plaintiff for the manufacture and marketing of its products) and 'dicamol' (being used by the defendant for the manufacture and marketing of its products) may be placed in juxtaposition from the standpoint of the visual test as also from the standpoint of the phonetic test. The following features deserve to be emphasised in this connection :
(i) In both the marks, the letters 'dic' and 'mol' are common;
(ii) Phonetically the first three letters and the last three letters in both the marks are similar inasmuch as 'dic' and 'mol' are pronounced in an identical manner; and
(iii) To an average person, with imperfect recollection, both the marks would appear to be so similar that one will not suspect that one is dealing with one and not the other and vice/versa.
(20) AS against the above features the only point of difference which could be pointed out is that in the plaintiff's mark after the letters 'dic' and be fore the letters 'mol' the letters used are 'lo' whereas in the defendants mark in place of letters 'lo' the letter used is 'a'. In my opinion, the difference, as indicated above in reality is no point of distinction because in the mark of defendant the letter 'a' is preceded and followed by identical letters 'dic' and 'mol' and both the marks are bound to be spoken or pronounced more or less in an identical manner. Besides, the above point of difference is so insignificant that only a person with extraordinary memory and recollection of a most meticulous and careful person would be in a position to notice the distinction or difference. As already observed the test of a meticulous or metliodical person, who notes down the names in the diary and makes a comparison every time he enters into dealing, or a person with a photographic memory or a memory much better than that of an average person, cannot be applied. In such like cases the test of an average person with average memory and imperfect recollection has to be applied. It is also worth noting that the products manufactured and marketed by the plaintiff and by the defendant Company are marketed throughout the Country and therefore the similarity in the 'marks' will have to be examined from the standpoint of persons speaking different languages whom one cannot expect to notice these minor differences which do not detract from the general impression of similarity created by the salient features as pin pointed earlier. In my opinion, the points of similarity far outweigh and out number the points of difference/dissimilarity between the two marks being used by the plaintiff and by the defendant for manufacture and marketing their products. Moreover, in the present case, the two marks are being used in respect of same or similar medicinal preparation, the overall pattern of the cartons used for marketing the products are also similar. Both the marks are in capital letters of the same size and shape and are identical except the syllable 'lo' and 'a'. There is not much emphasis on these syllable in pronunciation. Thus both the marks have an overall structural and phonetic similarity and therefore likely to cause confusion and deception to a man of average intelligence and of imperfect recollection. Above all both the marks are being used for manufacture and marketing medicinal products, being used for alleviation of various ailments and therefore by and large would be purchased mostly by people whether in villages, towns or cities, who are mostly either illiterate or literate.
(21) THE learned Counsel for the defendant, during the course of the arguments, has contended that the medicinal product in respect of which these marks are being used are scheduled medicines which are sold only on the prescription of a registered medical practitioner and therefore there is no possibility of any confusion or deception. Similar contention was raised in Ranbaxy Laboratories Ltd. v. Dua Pharmaceutical Ltd. , AIR 1989 Delhi 44, where the competing marks were 'calmpose' and 'calmprose' which was disposed of as under :
". . . It is true that the said drugs are supposed to be sold on doctor's prescription, but it is not unknown that the same are also available across the counters in the shops of various chemists. It is also not unknown that the chemists who may not have "calmpose' may pass off the medicine 'calmprose' to an unwary purchaser as the medicine prepared by the plaintiff. The test to be adopted is not the knowledge of the doctor, who is giving the prescription. The test to be adopted is whether the unwary customer who goes to purchase the medicine can make a mistake. "
(Emphasis supplied) Such a plea for similar reasons was as also not accepted in case Ciba Geigy Ltd. v. Cross Lands Research Laboratories Ltd. , (16)1996 PTC Delhi I, by K. Ramamoorthy, J.
(22) IN view of the above discussion, in my opinion, the mark 'dicamol' (being used by the defendant for the manufacture and marketing its products) and the mark 'diclomol' (being used for the purpose of manufacture and marketing its product by the plaintiff) are so similar that confusion is likely to be created amongst those who are dealing with the plaintiff Company and the public at large and the consumers. A perusal of my discussion above would show that the plaintiff in the instant case decidedly has established a prima facie case for grant of an ad interim injunction in its favour.
(23) ONCE a primafacie case is established, balance of convenience would follow. Even otherwise the question of balance of convenience would arise only when the parties are practically on the same level and their rights are equal. However, in the case inhand the plaintiff's position is definitely superior to that of the defendant who intends to use the trade name deceptively similar to the trade name of the plaintiff and consequently there is no difficulty in holding that balance of convenience at this stage lies in the grant of ad interim injunction in favour of the plaintiff.
(24) COMING to the question of irreparable injury, it needs to be mentioned here that where the plaintiff has established a prima facia case and the balance of convenience is also in favour of the plaintiff, the Court can assume that irreparable injury would necessarily follow if an ad interim injunction, as prayed for, is not granted. The irreparable injury in the present case would be the likely confusion that may be caused if the defendant is allowed to use the trade name which is primafacie the trade name of the plaintiff. Moreover, it will take quite some time before this suit is finally decided and if the defendant is not restrained by means of an ad interim injunction, it would continue to use the trade name deceptively similar to the trade name of the plaintiff and would continue to market its goods with the deceptively similar trade name of the plaintiff. Thus the likelihood of confusion being caused cannot be ruled out. It also cannot be ruled out that in the absence of an ad interim injunction the defendant would continue to pass off its goods with deceptively similar trade name as that of the plaintiff's thereby causing irreparable damage to the reputation of the plaintiff besides causing pecuniary loss. Even otherwise injunction would not be refused unless the supposed consequences of deception are remote, speculative and improbable. Once the plaintiff has established that he has got a primafacie case, he primafacie would be entitled to ad interim injunction and heavy burden would lie upon the defendant to prove that the plaintiff should not be granted ad interim injunction. In my opinion, viewed from all angles the plaintiff in the present circumstances, at this stage, decidedly is entitled to ad interim injunction, prayed for.
Point No. 2:
(25) THE plaintiff Company can claim an injunction restraining the defendant from carrying on its business in such a deceptively similar name can scarcely be disputed in view of decisions rendered by English Courts going back to 1898 and by the various other High Courts.
(26) AS early as in 1898 a question of similar nature cropped up on a dispute between Dunlop Pneumatic Tyre Co. Ltd. v. Dunlop Lubricant Co. , (1899) 16 RPC 12, decided by the High Court of Justice Chancery Division on Nov. 17, 1898. The Court came to the conclusion that the defendant was using the word 'dunlop' in its name with a view to inducing customers to believe that the goods marketed by it were in some way connected with the plaintiff Company if not the goods manufactured by the plaintiff-Company itself or manufactured with its sanction. The plaintiff succeeded in obtaining an injunction restraining the defendant from carrying on business using the name 'dunlop' in that case.
(27) IN Ouvah Ceylon Estates Ltd. v. Uva Ceylon Rabber Estates Ltd. , (1910) 27 RPC 645, Mr. Justice Joyce affirmed this proposition in his judgment dated June 17, 1910. In that case a geographical name was used in the names of two Companies locked in the debate. The name in question was the name of a province in Ceylon known as 'ouvah'. The plaintiff-Company was doing its business in the name of 'ouvah Ceylon Estates Ltd. ' The defendant-Company started its business using the name of the said province but spelt it as "uva". Having reached the conclusion that the names were similar the Court came to the conclusion that it would inevitably lead to confusion, that it would interfere with the plaintiff's business, and that the plaintiffs were entitled to a perpetual injunction. This case was affirmed by the Court of Appeal by its judgment dated October 21, 1910 reported in (1910) 27 RPC 753. A similar question arose in the High Court of Justice Chancery Division in the matter of Harrods Ltd. v. R. Harrod Ltd. , (1924) 41 R. P. C. 74. In that case the plaintiffs were doing business in the name of 'harrods Limited' and had acquired considerable reputation and goodwill. The defendant-Company also entered upon business in the same line viz. money-lending under the name of 'r. Harrod Limited'. The defendant-Company utilised the name 'harrod' which occurred in the name of the plaintiff-Company. The Court came to the conclusion that the name 'harrod' had been utilised with a fraudulent intention in order to secure advantage of the goodwill earned by the plaintiff-firm. The explanation offered by the defendant for selecting the name 'harrod' was considered unsatisfactory and unconvincing and injunction was issued in favour of the plaintiff restraining the defendant from carrying on the business in the said name.
(28) ALMOST a similar question again arose in connection with the use of the name "charles of London", a well-known Hair Dresser, who was doing business in London under this trading name. The defendant also commenced his business adopting the same name in a different part of the Country. There was no evidence even is regards loss of customers to the plaintiff though there was evidence to show that persons got confused and thought that the defendant's business might be connected with the plaintiff's business in London. The Court upheld the contention of the plaintiff that the defendant was not entitled to carry on business in that name and issued an injunction as prayed for [ (1958) 75 RPC 161]. No useful purpose will be served by multiplying the instances of cases decided by the English Courts where an injunction was issued in order to restrain the defendant from doing business by using a trade deceptively similar so as to cause confusion.
(29) IN case The National Bank of India v. The National Bank of Indore reported as AIR 1923 Bom. 119 where the plaintiff company was doing banking business in the name of the National Bank of India and the defendant company also engaged itself in the same business, namely, banking business under the name 'the National Bank of Indore', (though there was a glaring point of difference in the sense that while the plaintiff-company was using the geographical name of the whole Country, namely, India, the defendant company was only using the name of one of the States, namely, Indore), the Court came to the conclusion that there was a likelihood of confusion being caused and that the defendant company was not entitled to carry on the business in the said name. In the above case, the Bombay High Court observed :
"the principles by which this case must be decided are well established. The fundamental principle is that a person shall not trade under a name so closely resembling that of the plaintiff as to be mistaken tor it by the public. Hendriks v. Montagu (1881) 17 Ch D 638), in other words, that a person shall not carry on his business in such a way as to represent that his business was the business of another person; Merchant Banking Co. of London v. Merchants' Joint Stock Bank, (1878) 9 Ch D 560, 563)The question to be determined in cases of this description is whether there is such a similarity between the two names as that the one is in the ordinary course of human affairs likely to be confounded with the other; Hendriks v. Montagu, (1881) 17 Ch D 638 645). It is not necessary to prove that the defendants in taking the name complained of by the plaintiffs had any fraudulent intent. It is enough if the plaintiffs prove that the act of the defendants in assuming the name complained of is an injury to the plaintiff right; North Cheshire and Machester Brewery Co. v. Manchester Brewery Co. , (1899) AC 83, 87). There is no question in such cases of property or monopoly in the name. The principle upon which the cases on this subject proceed is not that there is property in the word, but that it is a fraud on a person who has established a trade and carries it on under a given name by some other person who assumes the same name or the same name with a slight alteration in such a way as to induce persons to deal with him in the belief that they are dealing with the person who has given a reputation to the name: Lee v. Haley, (1869) L. R 5 Ch. A 155, 161); Hendriks v. Montagu, (1881) 17 Ch D 638,649). The principles enunciated by the Earl of Halsbury L. C. in the North Cheshire Brewery's case, referred to above, have a material bearing on the present case. In that case the Manchester Brewery Company was the plaintiff. The plaintiff Company had carried on business under that name for years. The defendant Company bought an old business called "the North Cheshire Brewery Ltd. and then got themselves incorporated and registered under the name of "the North Cheshire and Manchester Brewery Co. Limited. " The plaintiff Company complained that the name of the defendant Company was calculated to induce the belief that the plaintiff Company had ceased to carry on business as a separate Company and that the defendant Company was an amalgamation of the plaintiff-company and the North Cheshire Brewery Limited, and it sued the defendant Company for an injunction. Byrne, J. refused the injunction, but the Court of Appeal reversed the judgment and granted the injunction. The judgment of the Court of Appeal was upheld by the House of Lords. In the course of his speech the Lord Chancellor said I have no complaint to make of their (Counsel) being too long or too elaborate; but the truth is that when one comes to see what the real question is, it is in a single sentence. Is this name so nearly resembling the name of another firm as to be likely to deceive. ? That is a question upon which evidence of course might be given, as to whether or not there was another brewery either in the one place or in the other, or whether there were several breweries nearly resembling it in name; what the state of the trade was, and whether there was any trade name; all those are matters which are proper to be dealt with upon evidence; but upon the one question which your Lordships have to decide whether the one name is so nearly resembling another as to be calculated to deceive, I am of opinion that no witness would be entitled to say that, and for this reason; that is the very question which your Lordships have to decide. "
(30) MUCH to the same effect are the observations of Lord Cozens Hardy M. R. in Ewing v. Buttercup Margarine Co. Ltd. , (1917) 2ch 1,10-11). In that case the plaintiff carried on business under the name of "the Buttercup Dairy Company. " The plaintiffs' business consisted in selling butter, margarine, cream, condensed milk etc. After some years the defendant Company - the Buttercup Margarine Company Limited - was incorporated as a private Company. The Memorandum of Association of the defendant Company Authorised trade in milk, cream, butter, margarine etc. In confirming the injunction granted by Astbury, J. the Master of the Rolls said:
"in a case like that, where the plaintiff is the owner of a business which has been established since 1904 and has a turnover of half a million a year, and must be regarded as an old established business none the less because its actual sphere of operations is mainly in Scotland and the North of England, what should I expect the defendants as honest men or honest representatives of a newly formed Company to do? I should expect them to say: 'we are very sorry; we were not aware of your existence in Scotland, but as you object to our name we will change it so as not in any way to interfere with you. ' Instead of doing that they assert their right to use the name and file a mass of affidavits in support of their claim to do what they have threatened and continued to do; and they seek to justify their name on the ground that the arm of the Court is not long enough to reach a defendant who takes a name similar to that of the plaintiff, unless it can be shown that such name is calculated to deceive in the sense that a person desiring to be a customer of the plaintiff is induced thereby to become a customer of the defendant. And they say that there can be no deception here because they are wholesale people while the plaintiff is a retailer, that it is true that they have the fullest possible power under the Memorandum and
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Articles of Association to carry on a retail business, but that at the present moment they have no such intention. I should be very sorry indeed if the jurisdiction of the Court should be regarded as so limited. I know of no authority, and I can see no principle, which withholds us from preventing injury to the plaintiff in his business as a trader by a confusion which will lead people to conclude that the defendants are really connected in some way with the plaintiff or are carrying on a branch of the plaintiff's business. " (31) IN my opinion, in view of the law on the subject, which now appears to be firmly settled, it is futile to contend that the plaintiff Company cannot claim an ad interim injunction restraining the defendant from carrying on its business by using a trade name so deceptively similar so as to cause confusion amongst those who may be concerned in dealing with it. Just as a citizen is entitled to protection in respect of his movable and immovable property, he is also entitled to seek protection in respect of his proprietary rights in a 'goodwill'. As the Courts will not permit theft of the property of a citizen, it will also not permit of the theft of the goodwill earned by a citizen. There is yet another dimension of the matter. The consumers too require to be protected if there is any danger of confusion being caused in their minds and there is a likelihood of their being led into believing that the product in reality manufactured by 'x' is manufactured by 'y' or by someone connected with 'y' When a consumer or a customer effects a purchase, he is entitled to be assured of the facts that he is purchasing the very goods that he wants and the goods manufactured by a concern in which he has confidence and not the goods manufactured by another concern whom the customer or the consumer does not know and that too by reason of the fact that he is deceived into believing that the product is manufactured by the former though it is, in fact, manufactured by the latter. Thus, even if the defendant had innocently selected the trade name which is deceptively similar to the trade name of the plaintiff Company, the Court would issue an ad interim injunction restraining the defendant Company from carrying on its business by using the said name. (32) THE learned Counsel for the defendant, during the course of arguments, placed reliance on decisions in cases J and P Coats Ltd. v. Popular Thread Mills, 1996 (39) DRJ (DB) 686; Rupees Gains Tele Times Pvt. Ltd. v. Rupee Times, 1995 (35) DRJ 30,amar Singh Chawalwala v. Shri Wardhman Rice and General Mills, 1996 (37) DRJ 97; Kellogg Company v. Parveen Kumar Bhadabhai, 1996 (36) DRJ 509; F. Hoffmann-LA. Roche and Company Ltd. v. Geoffery Manners and Company Pvt. Ltd. , (1970)2 SCR 213. 1 have gone through the above decisions relied upon by the learned Counsel for the defendant. There can be no two opinions in so far as the legal proposition laid down in the above said decisions. However, in the facts and circumstances of the present case, the same, in my opinion, in no way help the cause of the defendants in so far as the above mentioned application is concerned. (33) IN view of the above discussion, the above mentioned application filed by the plaintiff under Order 39, Rules I and 2 read with Section 151, Civil Procedure Code deserves to be allowed. It is, therefore, directed that till the disposal of the present suit the defendants, their partners or proprietors, their officers, agents, servants, are restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly, dealing in pharmaceutical/medicinal preparations under the mark 'dicamol' or any other mark as may be identical with or deceptively similar to the plaintiffs trade mark/trade name 'diclomol' or from doing any other thing as may be likely to lead to passing off the goods and/or business of the defendants as that of the plaintiff's. (34) IT may be mentioned here that my discussions are solely for the purposes of the disposal of the abovementioned interlocutory application and the same have no bearing on the merits of the case which would bedecided on die evidence which may be led by both the parties in support of their respective contentions before this Court.