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TMI Blog2003 (1) TMI 562X X X X Extracts X X X X X X X X Extracts X X X X ..... ILLIN is a composite word by using BI , meaning two and Ceillin stands for a mixture of AMPICILLIN and CLOXACILLIN. 5. Taking the cases of both the parties at their face value, the question is whether it is likely to cause confusion or deception to the purchasers when they go to market to purchase BIOCILIN and instead get BICILLIN . It is also required to be seen: "Whether registration of "BICILLIN" would be in tune with clauses ( d ) and ( e ) of section 9(1) and sections 11( a ) and 12(1) of the Trade and Merchandise Marks Act, 1958 (in short the Act )?" 6. Before I proceed further, it would be beneficial to reproduce section 9(1)( d ) ( e ), section 11 and section 12(1) of the Act, which read as under: "9. Requisites for registration in parts A and B of the Register - (1) A trade marks shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely : ( a )to ( c )****** ( d )one or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any co ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Ltd. s case ( supra ). I do not think that these judgments could be of any help to him, as would be evident hereinafter. In that case the question which came to be considered related to phonetic similarity between the two competing words Falcitab and Falcigo . After considering the entire case law, the Supreme Court laid down the following test in paras 32, 33 and 35 of the judgment in Cadila Health Care Ltd. s case ( supra ): "32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Nothing 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, inform or illiterate. They may not be in a position to differentiate between the medicine prescribed and bough ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ight in contending that where medicinal products are involved, the test of be applied for adjudging the violation of trade mark law may not be on a par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test of judge the possibility of confusion of one medicinal product one another by the consumer. While confusion in the case of non-medicinal products only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effect on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion of such medicines may be fatal or could have disastrous effects. The confusion as to be identity of the product itself could have dire effects on the public health. 34.****** 35. 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 or label marks or composite marks i.e., both words and label works. ( b )The degree ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... attracted and the medicine BICILLIN is likely to be confused for BIOCILIN or vice versa. Consequently, this trade mark BICILLIN could not have been registered. 13. In Medley Laboratories (P.) Ltd. s case ( supra ) the Trade marked SUPAXIN and SPOXIN were held to be deceptively similiar in clause ( d ) of sub-section (1) of section 2 of the Act and it was held that if such mark is likely to deceive or cause confusion it could not be registered. The question in that case related to SUPAXIN and SPOXIN . It was held that: "It is visually, phonetically and structurally very close to the appellant s mark SPOXIN . Once mark is identical or deceptively similar to the other, viz. packing being different, number of tablets contained in the competing package is not the same, price are not identical and/or the goods being sold on doctor s prescription are altogether irrelevant and immaterial." 14. The learned Assistant Registrar of Trade Marks had also ignored the fact that BIOCILIN has acquired reputation as has been mentioned hereinabove. 15. Now, coming to the other argument relating to section 12 of the Act, since there is phonetic deceptive similarity i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ate much more confusion and is sure to result in the problem like the present one. To avoid this, similar direction is required to be issued to the Registrar of Trade Marks so that right hand knows what the left hand is doing and there is no conflict and any problem of this kind is sorted at the very initial stage. It is also notable that the Drug Authorities do not have any centralized office system of allotting names and they are generally working in different State capitals. If similar directions are issued, some Drug Controllers may respond while others may sleep over the matter. But it would not be difficult to get the requisite information in case they are inter-connected through internet and the information is made available by all the Drug Controllers; the Registrar of Trade Marks and similar other Authorities to each other on internet itself to avoid such a situation. One has to look to the problem from the point of saving time, energy and money not only of the parties but of different offices of the Government and the Courts by undertaking few minutes exercise before accepting a trade mark after making a search. That will save hundreds of hours of several authorities. Thi ..... X X X X Extracts X X X X X X X X Extracts X X X X
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