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TMI Blog2011 (8) TMI 1291X X X X Extracts X X X X X X X X Extracts X X X X ..... 3; which is alleged to be similar/identical with the trademark NIFTRAN‟ of the plaintiff. NIFTAS‟ also is prescribed in the treatment of urinary tract infection. The case of the plaintiff is that the trademark NIFTAS‟ has been adopted by the defendant with the intention of encashing upon the goodwill and reputation in the trademark NIFTRON‟ and is bound to cause confusion and deception amongst the purchasing public in the trade, which would be induced into believing that the products being sold by the defendant also originates from the plaintiff company. IA No. 10148/2009 has been filed by the plaintiff seeking interim injunction against use of the mark NIFTAS‟ by defendants during pendency of the suit. 2. Defendant No. 1 has contested the suit and has claimed that the trademarks NIFTRAN‟ and NIFTAS‟ are based on the drug NITROFURANTOIN, the words NIFTRAN‟ and NIFTAS‟ representing the molecule or drug represented by the names and no one can claim a monopoly over these names. It is also alleged that suffix in the marks NIFTRAN‟ and NIFTAS‟ are altogether different phonetically as well as visually and rep ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 5. Thus, no infringement on the part of defendant No.1 is made out on account of use of the trade mark NIFTAS‟ by it and the case of the plaintiff is based on passing off alone. In a case of infringement, if it is found that the defendant has adopted the essential features of the registered trade mark of the plaintiff, he would be liable even if he is able to establish that on account of packaging, get up and other writings on his goods or on the container in which the goods are sold by him, it is possible to clearly distinguish his goods from the goods of the plaintiff. On the other hand in a case of passing off if it is shown that on account of these factors it is very much possible for the purchaser to identify the origin of the goods and thereby distinguish the goods of the defendant from the goods of the plaintiff, the defendant may not be held liable. As observed by the Supreme Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952, in a case of passing off what has to be seen is the similarity between the competing marks and whether there was likelihood of causing confusion. It is an undisputed proposition of law that actual confusion/dece ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that in our context, to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiff's goods seems to overlooking the ground realities in India. It was also observed that while examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trademark is written and to whom different words with slight difference in spellings may sound phonetically the same. Noticing that Schedule H drugs are to 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, Supreme Court observed that it was not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trademarks are deceptively similar. 8. A comparison of the product of defendant No.1 with the product of the plaintiff would show the following major dissimilarities:- (a) The product of the plaintiff is sold in plastic bottle whereas the product of the defendant is s ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ug which he intends to purchase. If, however, the customer is not carrying a medical prescription, and orally tells chemist that he wants to purchase NIFTRAN‟ there is very little likelihood of the chemist misunderstanding the name of the drug and mistaking NIFTRAN‟ as NIFTAS. If the chemist has NIFTRAN‟ as well as NIFTAS‟ with him, he would have no reason to pass on NIFTAS‟ as NIFTRAN to the customer. If he does not have NIFTRAN‟ in his stock, he is likely to ask the customer whether a substitute of the drug would be acceptable to him, instead of passing off NIFTAS‟ as NIFTRAN‟, without disclosing it to the customer. If the customer agrees, he may sell not only INTAS, but any other substitute as well, depending upon what is available with him, and in which drug he is getting a higher commission. But, then, there is not passing off, as the customer knows that he is not buying NIFTRAN‟, but, is buying a substitute. If the customer is well conversant with English language, it is not at all possible for the chemist to pass off NIFTAS‟ to him as NIFTRAN‟, since the vital difference between NIFTRAN‟ an ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... NIFTAS‟. Such a patient will not only note down the spelling, but would also compare it with the product sold to him. 12. The mark NIFTAS‟ and NIFTRAN‟, in my view, cannot be said to be phonetically or visually similar. The only similarity in the two marks is use of the letters NIFT which are common to both of them, but the pronunciation of NIFTAS‟ is altogether different from that of NIFTRAN‟. Visually also, NIFTAS‟ and NIFTRAN‟ cannot be said to be similar marks. 13. In an affidavit filed on 03rd August, 2011, defendant No. 1 has claimed that there are many drugs in the market other than NIFTRAN‟ and NIFTAS‟, which have NIF‟ as prefix or suffix. These drugs include NIFTY‟ manufactured by Wanbury and NIFUTIN‟ by IPCA Labs. There is no evidence of the plaintiff having sought any injunction against use of the trademarks NIFUTIN‟ by IPCA Labs and NIFTY‟ by Wanbury. As noted earlier, defendant No. 1 applied for registration of the trademark NIFTAS‟, claiming user since 10th March, 2008 and the proposed trademark was advertised in Trade Mark Journal on 16th April, 2009. Admi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... PTC 165, wherein Supreme Court extracted the following observations made in the case of K.E. Mohammed Aboobacker v. Nanikram Maherchand and another 1957 (II) Madras Law Journal 573: It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade in which he has notoriously used the mark. The legal notice to defendant No. 1 is alleged to have been given by the plaintiff for the first time on 20th April, 2009 though the case of the defendant No. 1 is that the notice received by it for the first time was of 26th May, 2009. The plaint does not disclose the exact date when the plaintiff came to know about launch of the drug NIFTAS‟ by the defendant, though it has been alleged in para 23 of the plaint that the cause of action first arose in April, 209 when the plaintiff learnt about the offending activities of the defendant. Assuming that the plaintiff came to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the two marks, one has the prefix PAC, whereas the other had the prefix PARK, suffix being the same in both the cases, the Court was of the view that the mark PARKITANE was deceptively similar to the mark PACITANE. A perusal of the judgment does not indicate that the trademark being used by the defendant in that case was a registered trademark. Moreover, the mark PACITANE definitely appears to be phonetically similar to the PARKITANE. This judgment, therefore, is of no help to the plaintiff. 18. The learned counsel for the plaintiff has also relied upon the decision of this Court in the case of Wyeth Holdings in support of his contention that mere delay to initiate legal proceedings would not disentitle the plaintiff to the interim injunction. A perusal of the judgment would show that the plea taken in the case of Wyeth was of infringement of the trademark, whereas the case of the plaintiff before this Court is essentially based on passing off, since the trademarks of both the parties are registered trademarks. Moreover, in the case of Wyeth, though the defendant had applied for registration of their trademark, it could not have been in the knowledge of the plaintiff since it wa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n the case of Ranbaxy (supra), where the mark of the plaintiff was CALMPOSE whereas the mark of the defendant was CALMPROSE. The case of Alcon Lab (I) Pvt Ltd (supra) was the case of infringement. The case of Strassenburg Pharmaceuticals (supra) was a case of infringement as well as passing off and the plaintiff was using the mark EFACID, whereas the defendant was using EFCID-CA. Unlike the case before this Court, the trademark of the defendant was not a registered trademark. In the case of Indian Shaving Products Ltd (supra), the plaintiff was using the trademark DURACELL ULTRA, whereas the defendant was using the mark ULTRA, thereby borrowing whole of the 2nd word used by the plaintiff as its trademark. In the case of Wyeth (supra), the plaintiff‟s mark FOLVITE, whereas the defendant had applied for registration of the mark FOLV, by lifting the first four letters of the trademark of the plaintiff. The case of Midas Hygiene Ind Pvt (supra) was the case of passing off as well as of infringement. The mark of the plaintiff was LAXMAN REKHA, whereas the mark of the defendant was MAGIC LAXMAN REKHA. The mark of the defendant thus incorporated the whole of the mark of the plaintif ..... X X X X Extracts X X X X X X X X Extracts X X X X
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