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TMI Blog2007 (2) TMI 690X X X X Extracts X X X X X X X X Extracts X X X X ..... t/plaintiffs. In the Suit, an application was filed by the appellants/plaintiffs under Order XXXIX Rules 1 2 CPC praying for temporary injunction restraining the respondent/defendant from using the aforesaid trademark 'Meromer'. The learned Single Judge, while issuing summons in the Suit, entertained the aforesaid application and issued notice thereon. While doing so, on 6th October, 2005, an ad interim injunction was also granted restraining the respondent/defendant from using the trade name 'Meromer' which is deceptively similar to 'Meronem', the trade name of the appellants/plaintiffs and also from selling, marketing, or in any manner dealing with the pharmaceutical products under the name 'Meromer'. The respondent/defendant filed an application under Order XXXIX Rule 4 CPC. Both the applications were taken up together by the learned Single Judge and by the impugned order, the ad interim injunction granted earlier was vacated. Consequently he dismissed the application filed under Order XXXIX Rules 1 2 CPC with a further direction that the respondent/defendant would maintain accounts of sale of the drug under the trade name 'Meromer' wh ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... st, 2004. 6. It was contended on behalf of the appellants/plaintiffs before the learned Single Judge that the trade name 'Meromer' of the respondent/defendant, if compared as a whole with the trade name of the appellants/plaintiffs, it would be clear that both are deceptively similar. It was also submitted that though the registration of the assignment of the trade mark 'Meronem' in favor of the first appellant/first plaintiff was pending with the Registrar of Trade Marks, nonetheless the said appellant/plaintiff was entitled to assert its rights as owner of the trade mark in view of the assignment as registration/recordal on the basis of assignment was only evidence of the title and Therefore the first appellant/plaintiff can maintain the action for infringement on the basis of the said assignment of the trade mark and seek injunctive reliefs. It was also argued before the learned Single Judge that the first appellant/plaintiff has filed a rectification application before the Appellate Board for rectification of register to remove the trade mark 'Meromer' there from and accordingly, the appellants/plaintiffs filed an application under Section 124((1)(b)( ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... APPELLANTS/PLAINTIFFS' AND RESPONDENT/DEFENDANT'S PRODUCTS WHO ARE MARKETING THE SAME DRUG MEROPENEM, BELONGING TO CARBAPENEM GROUP OF ANTIBIOTICS Sl. No. APPELLANTS/PLAINTIFFS' PRODUCT RESPONDENT/DEFENDANT'S PRODUCT 1. COMPOSITION: COMPOSITION: -Active ingredient: Meropenem trihydrate equivalent to anhydrous meropenem USP 1 gm/500 mg. Buffering agent: Sodium Carbonate (1 gm formulation contains 90.2 mg of sodium 500 mg formulation contains 45.1 mg of sodium) Shelf life of the product (4 years) Active ingredient: Meropenem trihydrate equivalent to anhydrous meropenem USP 1 gm/500 mg. Buffering agent: Sodium Carbonate (100 mg formulation contains 82 mg of sodium) 500 mg formulation contains 41 mg of sodium) Shelf life of the product (2 years). 2. COLOUR COMBINATION: COLOUR COMBINATION: The Plaintiffs vials are sold in Quantity of 500 mg and 1000 mg/1 gm quantity) The Plaintiffs use a colour Combination scheme (of reds ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... gistration of the trade mark 'Meromer' was filed by the respondent/defendant on 2nd August, 2004 in Class-5 and after the aforesaid advertisement, as no opposition was filed, the trade mark of the respondent/defendant was allowed and a registration certificate dated 1st December, 2005 was issued. Therefore, on the date when the appellants/plaintiffs filed a Suit i.e. on 4th October, 2005, the application for registration of the trade mark which was filed i.e. on 2nd August, 2004 was pending and upon granting of registration of the aforesaid trade mark it will be deemed that the registration was granted to the respondent/defendant effective from the date of submission of the said application. In the light of the provisions of Section 28 of the Trade Marks Act, 1999 the registration would date back to the date of application and Therefore on the date when the suit was filed it would be deemed that the respondent/defendant had in its favor, the registration of its trade mark 'Meromer'. 12. There is also a dispute with regard to the registration of trade mark of the plaintiffs/appellants under the trade name 'Meronem'. An application for rectification was als ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... terlocutory application. Therefore, the submission of the counsel for the appellants/plaintiffs in this regard, is misconceived and cannot be accepted. 14. In order to prove and establish that both the marks namely, 'Meronem' of the appellants/plaintiff and 'Meromer' of the respondent/ defendant are similar, reliance was placed by the counsel for the plaintiffs/appellants on various judgments. It is submitted that both the marks are deceptively similar to each other. Heavy reliance is placed on the decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. reported in 2001 PTC 541 (SC). In fact learned Counsel appearing for the respondent/defendant had also placed reliance on the said decision and Therefore it would be necessary for us to examine the ratio of the aforesaid decision of the Supreme Court. 15. In the said case the Apex Court exhaustively dealt with the subject of passing off of drugs. It was held that when the question of passing off action is to be decided in a case involving medicinal products, the test to be applied to adjudge the violation of the trade mark may not be at par with the case involving non-medicinal p ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... bed and bought which is ultimately handed over to them. (v) While dealing with cases relating to passing off, one of the important tests which was to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product or another due to similarity or marks and other surrounding factors. What is likely to cause confusion would vary from case to case. 16. We may also at this stage refer to one very celebrated judgment of the Delhi High Court in SBL Limited v. Himalaya Drug Company reported in 1997 (17) PTC 540 wherein a Division Bench of this Court held as under: 25.(3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici 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 an organ ailment or ingredient being publici Jurisdiction or generic cannot be owned by anyone for use as trade mark. 17. We may also refer to two other decisions of this Court in Biofarma v. Sanjay Medical Stores reported in 1997 (17) PTC 355 and Cadila La ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... f various drugs almost similar to each other or having the same prefix or suffix, the competing words namely, 'flaredon' and 'trivedon' are dissimilar as the two marks start with distinct dis-similarities so far as the first syllable is concerned. Similarly, in the other decision namely, Cadila Laboratories v. Dabur India Limited (supra) it was held that there is no possibility of 'Mexate' being pronounced and read as 'Zexate'. It was also laid down that meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered. 19. Admittedly, 'Mero', which is common to both the competing marks, is taken by both the appellants/plaintiffs and the respondent/ defendant from the drug 'Meropenem', taking the prefix 'Mero which is used as a prefix in both the competing marks. Both the appellants/plaintiffs and the respondent/defendant are marketing the same molecule 'Meropenem'. Neither the appellants/plaintiffs nor the respondent/defendant can raise any claim for exclusive user of the aforesaid word 'Meropenem'. Along with the afore ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... Jurisdiction and it is distinctive in nature. Consequently, the appellants/plaintiffs cannot claim exclusive right to the use of 'Mero' as constituent of any trademark. The possibility of deception or confusion is also reduced practically to nil in view of the fact that the medicine is sold only on prescription by dealers. The common feature in both the competing marks i.e. 'Mero' is only descriptive and publici Jurisdiction and, Therefore, the customers would tend to ignore the common feature and would pay more attention to the uncommon feature. Even if they are expressed as a whole, the two did not have any phonetic similarity to make it objectionable. There are at least four other registered users of the prefix 'Mero' in India whereas the names of 35 companies using 'Mero' trademarks, which have been registered or applied for registration, have been furnished in the pleadings. The respondent/defendant advertised its trademark 'Meromer' after submitting its application for registration and at that stage, there was no opposition even from the appellants/plaintiffs. The trademark of the respondent/defendant was registered there being no oppo ..... X X X X Extracts X X X X X X X X Extracts X X X X
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