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TMI Blog2001 (3) TMI 928X X X X Extracts X X X X X X X X Extracts X X X X ..... composite marks, i.e., both words and label works. (b)The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c)The nature of the goods in respect of which they are used as trade marks. (d)The similarity in the nature, character and performance of the goods of the rival traders. (e)The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f)The mode of purchasing the goods or placing orders for the goods, and (g)Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case. The Trial Court will now decide the suit keeping in view the observations made in this judgment. - CIVIL APPEAL NO. 2372 OF 2001 - - - Dated:- 26-3-2001 - B.N. KIRPAL, DORAISWAMY RAJU AND BRIJESH KUMAR, JJ. Ashok H. Desai, Siddharth Chowdhury, Ms. Kumud Singh and Bhargava V. Desai ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in view of confusing similarity and deception in the names and more so because the drugs were medicines of last resort. The respondent-company stated in the defence that the word Falci , which is the prefix of the mark, is taken from the name of the disease Falcipharum Malaria and it is a common practice in pharmaceutical trade to use part of the word of the disease as a trade mark to indicate to the doctors and chemists that a particular product/drug is meant for a particular disease. It was also the case of the respondent that admittedly the two products in question were Schedule "L" drugs which can be sold only to the hospitals and clinics with the result that there could not even be a remote chance of confusion and deception. It may here be noticed that Schedule "H" drugs are those which can be sold by the chemist only on the prescription of the Doctor but Schedule "L" drugs are not sold across the counter but are sold only to the hospitals and clinics. 6. The Extra Assistant Judge, Vadodara by his order dated 30-5-1998 dismissed the interim injunction application. He came to the conclusion that the two drugs Falcigo and Falcitab differed in appearance, formulatio ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... respect thereof. In other words in the case of unregistered trade marks, a passing off action is maintainable. The passing off action depends upon the principle that nobody has a right to represent his goods as the goods of some body. In other words a man is not to sell his goods or services under the pretence that they are those of another person. As per Lord Diplock in Erwen Warnink BV v. J. Townend Sons 1979(2) AER 927, the modern tort of passing off has five elements, i.e., ( 1 ) a misrepresentation, ( 2 ) made by a trader in the course of trade, ( 3 ) to prospective customers of his or ultimate consumers of goods or services supplied by him, ( 4 ) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and ( 5 ) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so. 10. There being an action alleging passing off in the present case, it will be appropriate to consider a few decisions, specially of this Court, which are relevant on the point in issue. 11. In National Sewing Thread Co. Ltd. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ration of the mark Gluvita and Corn Products, who were the owners of registered trade mark Glucovita filed its objections to the registration of the respondent s mark. The Deputy Registrar came to the conclusion that the two words Glucovita and Gluvita were not visually or phonetically similar and that there was no reasonable likelihood of any deception being caused by or any confusion arising from the use of respondent s proposed mark. Against the decision of the Deputy Registrar, the appellant filed an appeal before the High Court. A Single Judge of the Bombay High Court came to the conclusion, disagreeing with the findings of the Deputy Registrar, that the two marks were sufficiently similar so as to be reasonably/likely to cause deception/confusion. The Division Bench, on an appeal, however, set aside the decision of the Single Judge and restored the decision of the Deputy Registrar. While allowing the appeal, it was observed as follows : ". . . We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having Gluco or Vita as a prefix or a suffix." (p. 977) Dealing with the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nt may object that the trade mark is not registrable by reason of clause ( a ) of section 8, or sub-section (1) of section 10, as in this case. In such a case the onus is on the applicant to satisfy the Registrar that the trade mark applied for is not likely to deceive or cause confusion. In cases in which the Tribunal considers that there is doubt as to whether deception is likely, the application should be refused. A trade mark is likely to deceive or cause confusion by its resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered. As was observed by Parker, J. in Re Pianotist Co. s Application [1906] 23 RPC 774, which was also a case of the comparison of two words You must take the two words. You must judge 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rade relates to goods largely sold to illiterate or badly educated persons, it is no answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between current of nectar and current of Lakshman . Current of Lakshman in a literal sense has no meaning; to give it meaning one must further make the inference that the current or stream is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the extent of seeing the so-called ideological difference between Amritdhara and Lakshmandhara . He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for his ailments. We agree that the use of the word dhara which literally means current or stream is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We ar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ht to the use of the trade mark in relation to those goods ( Vide section 21 of the Act). The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing of consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. 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 plaintiff s rights are violated. Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e of the comparison is for determining whether the essential features of the plaintiff s trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff." (p. 990) 15. Dealing once again with medicinal products, this Court in F. Hoffmann-La Roche Co. Ltd. v. Geoffrey Manner Co. (P.) Ltd. 1969(2) SCC 716 had to consider whether the words Protovit belonging to the appellant was similar to the word Dropovit of the respondent. This Court, while deciding the test to be applied, observed 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he 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 s 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. " (p. 720) 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. 16. Our attention was drawn to a recent judgment of this Court in S.M. Dyechem Ltd. v. Cadbury (India) Ltd. [2000] 5 SCC 573 where in a passing off action, the plaintiff, which was carrying on the business under the mark of Piknik , filed a suit for injunction against the defendant which was using the mark of Picnic for some other chocolates sol ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ations in S.M. Dyechem Ltd. s case ( supra ). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd. s case ( supra ), Corn Products Refining Co. s case ( supra ), Amritdhara Pharmacy s case ( supra ), Kaviraj Pandit Durga Dutt Sharma s case ( supra ), Hoffmann-La Roche Co. Ltd. s case ( supra ). Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in S.M. Dyechem Ltd. s case ( supra ) sought to examine the difference in the two marks Piknik and Picnic . It applied three tests, they being ( 1 ) is there any special aspect of the common feature which has been copied ? ( 2 ) mode in which the parts are put together differently, i.e., whether dissimilarity of the part or parts is enough to make the whole thing dissimilar and ( 3 ) whether when there are common elements, s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the bottle without sufficient consideration and without reading what is written very plainly indeed up the face of the label, you cannot say he is deceived." (p. 600) These observations appear to us to be contrary to the decision of this Court in Amritdhara Pharmacy s case ( supra ) where it was observed that the products will be purchased by both villagers and townfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England. While we agree that in trade mark matters, it is necessary to go into the question of comparable strength, the decision on merits in S.M. Dyechem Ltd. s case ( supra ) does not, in our opinion, lay down correct law and we hold accordingly. 20. It will be useful to refer to some decisions of American Courts relating to medicinal products. In the case of American Cynamid Corpn. v. Connaught Laboratories Inc. 231 USPQ 128 (2nd Cir. 1986), it was held as under : "Exacting judicial scrutiny is r ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d in the decision of Morgenstern Chemical Co. s case ( supra ), it had been held that : "Physicians are not immune from confusion or mistake. Furthermore 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." The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The Courts need to be particularly vigilant where the defendant s drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff s medicine but the compositions are different. The confusion is more likely in such cases and the incorrect in take of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glen ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e human body. Confusion in such products can have serious consequences for the patient. Confusion in medicines must be avoided. ****** Prevention of confusion and mistakes in medicines is too vital to be trifled with The observation made by Assistant Commissioner Leeds of the Patent Office in R.J. Strasenburgh Co. v. Kenwood Laboratories, INC. 1955, 106 USPQ 379, 380 are particularly apt, that Physicians are not immune from confusion or mistake. Furthermore 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." The defendant concedes that physicians and pharmacists are not infallible but urges that the members of these professions are carefully trained to detect differences in the characteristics of pharmaceutical products. While this is doubtless true to does not open to door to the adoption by manufacturers of medicines of trade marks or names which would be con ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd edn., para 23.12 of which reads as under : "The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is prop ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health. 29. Keeping in view the provisions of section 17B of the Drugs and Cosmetics Act, 1940 which inter alia indicates an imitation or resemblance of another drug in a manner likely to deceive being regarded as a spurious drug it is but proper that before granting permission to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade Mark office pertaining to the trade mark in question which will enable the drug authority to arrive at a correct conclusion. 30. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered : ( a )The nature of the marks, i.e., whether the marks are word marks ..... X X X X Extracts X X X X X X X X Extracts X X X X
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