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TMI Blog1997 (7) TMI 682X X X X Extracts X X X X X X X X Extracts X X X X ..... tiff is against the use by the defendants of the trade mark LIV-T for its similar product, the defendants are also manufacturers and merchants of Homoeopathic pharmaceutical preparations. 4. According to the plaintiff, the mark Liv. 52 is a coined word. It has acquired tremendous goodwill in the market and is associated exclusively with the plaintiff. The defendants have come to the market in 1996 with the mala fide and fraudulent intention of utilising the goodwill earned by the plaintiff. The mark LIV-T is deceptively similar with the mark Liv. 52 of the plaintiff and is likely to mislead or confuse those who are likely to purchase such preparations in the market. The plaintiff complains of infringement of its trade mark as also passing off by the defendants. 5. According to the defendants they are renowned manufacturers of Homoeopathic and Ayurvedic preparations. They have a collaboration with BIRON Lab of France from whom they have obtained the technical know-how for many of its Homoeopathic formulations. They obtained a drug licence to manufacture its LIV-T formulation in the year 1987. They also applied for registration of the trade mark LIV-T together with bits packagi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ark LIV-T can be said to be deceptively similar to or confusing with the trade mark LIV-52; (2) Whether the provisions of Order 39 Rule 3 are mandatory ? If so, what is the effect of non-compliance therewith ? 8. Before dealing with the contentions of the parties we may refer to a few statutory provisions and settled principles in the field of trade marks. In particular let us refer to what is a trade mark ? How the rights are acquired therein ? What is the effect of use of common descriptive or generic words as trade mark or as one of the constituents of the word or phrase constituting a trade mark ? How the same principles would apply and operate in the filed of medicinal and pharmaceutical preparations with which we are concerned ? What amounts to infringement of a trade mark and passing off goods as the goods of another person ? 9. First, we may refer to a few provisions of the Trade and Merchandise Marks Act, 1958. A trade mark is a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right to use the mark. (Section 2(v)). A mark shall b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... of the trade. 11. The principles deducible from Ruston Hornby Ltd. v. Zamindara Engineering Co. , are : (i) Where the infringing trade mark is not identical with the complaining trade mark on the Register, but something similar to it, the test of infringement is the same as in action for passing off. (ii) In a passing off action the issue is : Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ? (iii) In an infringement action the issue is : Is the defendant using a mark which is the same as or which is colourable imitation of the plaintiff's registered trade mark ? (iv) The element of deception or confusion becomes irrelevant in the second issue (as the same is implicit, inherent or presumed to be present). 12. In Parle Products (P.) Ltd. v. J.P. Co. Mysore . Their Lightships have laid emphasis on the test of overall similarity. The broad and essential features of the two are to be considered. One need not place side by side the two to find out if there are any differences in the design, and if so, whether they are of such character as to prevent one from being mi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... egistered proprietor of such a trade mark may be lost in a variety of ways, e.g., by the goods not being capable of being distinguished as the goods of such a proprietor or by extensive piracy so that the marks become public juris. 14. Mc. Carthy on Trade Marks and Unfair Competition. (Third Edn. Vol. 2) states : The name of a product or service itself - what it is - is the very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms generic and trade mark are mutually exclusive ... The concept of generic name and trade name are-mutually exclusive. Thus, if, in fact a given term is 'generic', it can never function as a mark to identify and distinguish the products of only one seller (para 12.01). An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, generic . Acronyms of generic names are often used interchangeable with the full generic name and recognised as equivalent ..... . If the abbreviation is not recognisable as that original generic term, then the abbreviation is like a fanciful mark and pr ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... defendant's use of a name, mark or other feature which is the same or sufficiently similar that the defendant's goods or business are from the same source or are connected. While it is helpful to think of these two factual elements as two successive hurdles which the plaintiff must surmount, consideration of these two aspects cannot be completely separated from each other, as whether deception or confusion is likely is ultimately a single question of fact. In arriving at the conclusion of fact as to whether deception or confusion is likely, the court will have regard to : (a) the nature and extent of the reputation relied upon; (b) the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business; (c) the similarity of the mark, name etc. used by the defendant to that of the plaintiff; (d) the manner, in which the defendant makes use of the name, mark etc., complained of and collateral factors; and (e) the manner in the particular 'trade is carried on the class of persons who it is alleged is likely to be deceived and all other surrounding circumstances. In assessing whether confusion or de ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rmaceuticals, it is common practice that the drugs are named either by the name of the organ which it treats or by the principal ingredients or the name of the ailment. This enables a doctor to associate a particular trade name with the organ, ingredient or ailment, thereby reducing chances of error. No trader can therefore restrain another trader from using the description of the organ, ingredients or ailment. The learned counsel has cited a host of authorities in support of his submission that a word or its abbreviation having become public juris ceases to be subject matter of proprietorship, also ceases to be source of deception ar confusion for the person likely to deal with such goods would ignore the public juris and go distinguishing the products by the prefixes and/or suffixes. 19.2. Secondly, he submitted that the goods, trade marks whereof are under scrutiny, are medicines. They are sold by the licensed chemists and druggists and that too under prescription by medical practitioners. It is not that airy man in the street would just reach the counter in a shop, ask for the goods by spelling out the trade mark and the salesman would hand over one or the other of the two g ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... owing statement of law from In re : Harrod's Application ((1935) 52 RPC 65). Now it is well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that where those two marks contain a common element; which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and as I have mentioned in use in the market in which the marks under consideration are being on will be used. 22.2 In J. R. Kapoor v. Micronix India ((1994) 3 Suppl. SCC 215 = 1994(2) Arb. LR 274). MICROTEL wanted to restrain MICRONIX. The two trade marks were used in respect of electrical and electronic apparatus. Their Lordships held that micro-chip technology being the base of many of the products the word 'Micro' has much relevance in describing the products. It was descriptive of the micro-technology used for produc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... esaid propositions the conclusion is reached that the marks are similar it is irrelevant that the defendant had used differentiating features of get-up. Their Lordships then concluded : If it be viewed simply as a word mark consisting COCA and COLA joined by a hyphen, and the fact be borne in mind that COLA is a word in common use in Canada in naming beverages, it is plain that the distinctive feature in the hyphenated word is the first word 'Coca' and not Cola . Coca rather than Cola is what would remain in the average memo'. It is difficult, indeed impossible, to imagine that the mark Pepsi-Cola as used by the defendant, in which the distinctive feature is, for the same reason, the first word Pepsi and not Cola, would lead anyone to confuse it with the registered mark of the plaintiff. The trade mark used by the defendant and the registered mark of the plaintiff are not trade marks so nearly resembling each other or so clearly suggesting the idea conveyed by each other, that the contemporaneous use of both in the same area in association with wares of the same kind would be likely to cause dealers in or users of such wares to infer that the same person as ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... The letters 'D' and 'P' in 'DROPOVIT' and the corresponding letters 'P' and 'T' in PROTOVIT cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view. 23.2. In the matter of an application by Demeth Ltd. for the registration of a trade mark' (1948) LXV PRC 342. SEDA-SELTZER was sought to be registered for preparations for use in making Seltzer water. It was opposed by the Proprietor of the mark ALKA-STELTZER registered for goods of same description. Both were pharmaceutical preparations. Evidence was adduced to show that the word Seltzer was having general usage in the trade and there were several trade mark using a prefix to the word Seltzer and available in the market. One of the relevant factors relied on by their Lordships for holding the word SELTZER as public juris was that both the parties were using it in specification of goods suggesting that the word is one which is descriptive and well understood. It was held : If the fact be borne in mind that the distinctive feature of the mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... competence which, although may exist in a person here and there on occasions that, of course cannot be denied are not usually found in that class of persons. We are not concerned with hypothetical possibilities but with the ordinary practical business probabilities having regard to the circumstances of the case. (para 137). 23.4. In Stadmed Pvt. Ltd. v. Hind Chemicals (AIR 1965 Punjab 17), dispute was between ENTROZYME and ENTOZIME. One of the relevant considerations kept in view by the DB (vide para 14) was that the goods being Schedule H drugs were obtainable only on doctor's prescription. It was further held that there was no phonetic similarity and there was no cause for confusion. 23.5. In R. S. Krishna Co. v. V. G. R. Gopal Co. , there were several medicinal oils using THENNAMARAKKUDI a geographical name as part of trade mark. It was held that word having become public juris nobody could claim any exclusive right to its use. 23.6. We may briefly refer to several other cases throwing light on the point. CURECHLOR and RECLOR both being pharmaceutical preparation of CHLOROMPHENICAL. In E. R. Squibb Sons v. Curewell India Ltd. , ASHEMIX and ASHNMC both being Sc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n of likelihood of deception is to be left to the court. (3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become public juris. In the trade of drugs it is common practice to name a drug, by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public juris or generic cannot be owned by anyone for use as trade mark. (4) Whether such feature is public juris or geris is a question of fact. (5) If the two trade marks by two competing traders use a generic word or an expression public juris common to both the trade marks it has to be seen if the customers who purchase the goods would be guided by the use of such word expression or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. The primary question to be asked is what would remain in the memory or customer ? The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc., used on the packing also assume significance. 26. Reverting back to the facts of the case, from the documentary evidence filed we are satisfied that here are ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n set out. 27.3. The respective packing prominently contain the name of the two contesting parties written in capital letters in bold and prominent fashion. The defendant's carton clearly mentions it to be the product of SBL Limited/collaboration BIORN France. The carton in the middle features an artistic impression of the organ liver. 27.4. Each of the two cartons has unique placement of lettering and other features constituting each an original artistic work under the Copyright Act. 27.5. Having examined the two cartons we are clearly of the opinion that there is no possibility of one being accused of deceptively similar with the other and the likely customer mistaking one with the, other, even by recollecting faint impressions. 28. We are, therefore, unhesitatingly of the opinion that the proprietor of Liv. 52 was not entitled to the grant of an injunction restraining the use of LIV-T. 29. The learned Counsel for the plaintiff respondent cited a host of authorities which we must catalogue to be fair to him : (1) Wander Ltd. v. Antox India P. Ltd. (1990 (Suppl.) SCC 727 = 1990(2) Arb. LR 399). (2) American Home Products v. Mac Lab Cair . (3) Parle Prod ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who on seeing a mark thinks that it differs from the mark on goods which he had previously bought, but is doubtful whether that impression is not due to imperfect recollection. 30.1. Their Lordships held Amritdhara and Laxmandhara likely to deceive or cause confusion because of the overall structural and phonetic similarity. The goods were such as are largely sold to illiterate or badly educated persons. Their Lordships formed an opinion that the use of the word DHARA was not of itself decisive of the matter, in the facts found in that case. 31. In view of our finding that the defendant's trade mark is neither deceptive with nor confusingly similar to the plaintiff's trade mark, a case for the grant of injunction is not made out, it is not necessary to deal with the plea of the defendant appellant disputing the plaintiff respondent's entitlement to the grant of ad interim injunction on the ground of ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ments of Clauses (a) and (b) of the proviso. Both the provisions are mandatory. The applicant gets an injunction without notice but subject to the condition of complying with Clauses (a) and (b) above said. 35. We may refer to several observations made by their Lordships of the Supreme Court in Shiv Kumar Chadha v. MCD . Though the observations have been, made primarily on the obligation of the Court to record the reasons but in our opinion they equally apply to the obligation cast on the applicant by the proviso. The provisions are mandatory. Their Lordships have observed : The imperative nature of the proviso has to be judged in the context of Rule 3 of Order 39 of the Code. Before the proviso aforesaid was introduced, Rule 3 said the court shall in all cases, except where it appears that the object of granting the injunction would be defeated by the delay, before granting an injunction, direct notice of the application for the same to be given to the opposite party . The proviso was introduced to provide a condition, where court proposes to grant an injunction without giving notice of the application to the opposite party being of the opinion that the subject of granting ..... X X X X Extracts X X X X X X X X Extracts X X X X
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