1992 (4) TMI 253 - HC - Indian Laws

Summary

Issues Involved:
1. Infringement of trademark 'Disprin' by 'Medisprin'.
2. Passing off 'Medisprin' as 'Disprin'.
3. Deceptive similarity between 'Disprin' and 'Medisprin'.
4. Nature and usage of the products.
5. Class of people dealing with the products and mode of sale.
6. Common elements in trademarks and onus of proving extensive use.

Issue-wise Detailed Analysis:

1. Infringement of trademark 'Disprin' by 'Medisprin':
The plaintiffs, proprietors of the trademark 'Disprin', sought to restrain the defendants from using 'Medisprin', alleging it infringed their registered trademark. The plaintiffs argued that 'Medisprin' was visually, phonetically, and structurally similar to 'Disprin', thus infringing their trademark.

2. Passing off 'Medisprin' as 'Disprin':
The plaintiffs claimed that the defendants' use of 'Medisprin' was likely to cause confusion among consumers, leading them to believe that 'Medisprin' was associated with or a product of the plaintiffs, thereby passing off their goods as those of the plaintiffs.

3. Deceptive similarity between 'Disprin' and 'Medisprin':
The court examined whether 'Medisprin' was deceptively similar to 'Disprin' under Section 2(1)(d) of the Trade and Merchandise Marks Act, 1958. It was considered whether the defendants' mark so nearly resembled the plaintiffs' registered mark as to be "likely to deceive or cause confusion". The court referenced several legal precedents, including Lord Denning's explanation of "to deceive" and "to cause confusion", and the tests for comparison of word marks formulated by Lord Parker in Pianotist Co. Ltd.'s application.

4. Nature and usage of the products:
The court analyzed the nature of the products, noting that 'Disprin' is an analgesic available over the counter, while 'Medisprin' is a coronary vasodilator requiring a doctor's prescription. The court found that although both drugs contain Aspirin, 'Medisprin' is primarily for heart patients and not for common ailments like 'Disprin'.

5. Class of people dealing with the products and mode of sale:
The court considered the class of people dealing with the products and the mode of sale. It was noted that 'Disprin' is sold even at pan-beedi shops, while 'Medisprin' is a Schedule 'H' drug sold only by licensed chemists against a doctor's prescription. The court referenced several cases, including F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Private Ltd., to highlight that the nature of sale reduces the possibility of confusion.

6. Common elements in trademarks and onus of proving extensive use:
The plaintiffs argued that the defendants' mark contained a common element due to the presence of Aspirin and that there were series of marks with similar suffixes in the market. The court found that the defendants provided sufficient prima facie evidence of the use of similar marks in the market, thus rejecting the plaintiffs' submission.

Conclusion:
The court concluded that 'Medisprin' was neither structurally, phonetically, nor visually similar to 'Disprin'. It was determined that the products, packaging, and mode of marketing were different and not likely to cause confusion. Consequently, the notice of motion was dismissed with costs.