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TMI Blog1992 (4) TMI 253X X X X Extracts X X X X X X X X Extracts X X X X ..... escription. According to the plaintiffs, their said trademark has been extensively used in India for more than 15 years; that they have spent considerable amounts by way of promotional expenses and that, therefore, their said mark 'Disprin' has come to be associated by the traders and members of public exclusively with the plaintiffs. In 1979, the plaintiffs also applied for and obtained registration of another mark, viz., `Disprin Junior' in respect of the same goods and the said mark is valid and subsisting. The said products of the plaintiffs are available in tablet form, are packed and sold in strips and are available across the counter as the same do not require doctor's prescription. The plaintiffs claim that in or about August 1989 they came across defendants' product sold in tablet form, packed in strips and marketed under the mark 'Medisprin'. The plaintiffs, through their trademark attorneys, served a cease and desist notice dated 12th August, 1989 on the defendants. The defendants, through their trademark attorneys' letter dated 5th September, 1989, replied to the plaintiffs' attorneys' said letter refusing to comply with the requi ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... mulated by Lord Parker in (Pianotist Co. Ltd.'s application), 1906(23) R.P.C. 774, at page 777, as follows : You must taken 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 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 you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case. Later case (see, for example, the judgment of Sargeant, J., in (Sandow Ltd.'s Application), 31 R.P.C. at page 205) have explained that among the surrounding circumstances to be taken into acc ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ouncil, while considering whether the mark 'Karsote Vapour Rub' was deceptively similar to trade mark 'Vapo Rub', inter alia, held - It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Mr. Tulzapurkar also relied on the decision of the Supreme Court in Ruston and Hornby Ltd. v. Zamindara Engineering Co., . The Supreme Court, while considering whether the mark 'Rustam India' was deceptively similar to the trade mark 'Ruston', held that the addition of the word 'India' to the trade mark was of no consequence. Mr. Tulzapurkar further submitted that the defendants' mark had completely absorbed plaintiffs' mark and, thus, 'Medisprin' contained the entire trade mark, viz., 'Disprin'. Thus, it was obvious that the plaintiffs' mark was infringed. 9. Mr. Patel, the learned Counsel for the defendants, submitted that the mark 'Medisprin' consists of two syllables, 'Medi' and 'Sprin', that 'Medi' ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... age 119. In the said matter, the impugned mark 'Vivicillin' incorporated the whole of the rival mark 'Cyllin'. It was held that the two marks were neither phonetically nor visually similar inasmuch as that the first syllable in the two marks, viz., 'Vivi' and 'Cy' were totally different. Further, reliance was placed on the decision in the Application of (London Lubricants '1920' Limited), reported in 42 R.P.C. 264. In the said matter also, although the impugned mark `Tripcastroid' incorporated major portion of the rival mark 'Castrol', it was held that the two marks were neither phonetically nor visually similar because the first syllables in the two marks, viz., 'Trip' and 'Cas', were totally different and that prefix 'Trip' was so completely amalgated in the word 'Tripcastroid' that there was no reason for coming to the conclusion that the syllable 'Trip' would in ordinary use be dropped. Lastly, reliance was placed on the decision in E.R. Suibb Sons Inc. v. Curewel India Ltd., . In this matter, although the mark CURECHLOR incorporated the rival mark RECLOR, it was held that the two mark ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ', is again followed by 'd' and 'i', thus making it totally different. Phonetically also, the impugned mark is different. Any word starting with `Me' and immediately followed by a consonant, a vowel and again a consonant, e.g., 'd', 'i' and 's', as in the case of the impugned mark, will be pronounced as 'Medi' as in the case of 'Medication', 'Medicare', 'Medical' and 'Meditation'. Only when 'Medi' is not followed by a consonant but by a vowel, 'Me' will be pronounced as 'Mi' as in the case of 'Mediation', 'Media' and 'Medieval'. The word `Medisprin', when pronounced, cannot be mistaken for 'Disprin' as it is thus phonetically different although the entire word 'Disprin' is absorbed by it. The prefix 'Medi' in relation to sickness and drugs has been always a popular prefix and much older in usage than the plaintiffs' mark. Thus, 'Medisprin' is visually, phonetically and structurally different than 'Disprin' and it is, thus, neither deceptively similar nor the use thereof is likely to deceive or cause c ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... only if so advised and not otherwise. 'Medisprin' is a cardio vasodialator and is for treatment of cerebrovascular and heart ailments which by their very nature are such ailments that only upon medical advise it is to be taken. 12. The next two factors, viz., the class of people dealing with the products and the mode of sale, can be conveniently considered together. It was submitted by Mr. Tulzapurkar, the learned Counsel for the plaintiffs, that both the products were being sold in tablet form and in strip packing and that both were sold by chemists shops. Mr. Patel, on the other hand, submitted that it was true that defendants' product was being sold in tablet form and in strip packing but relied on the strip packing of defendants' product to show that the entire design, get up, and even the size of the strip packing were totally different, and moreover the price at which 'Medisprin' is being sold is about five times more than 'Disprin'. I was shown the strips of 'Medisprin' and also of 'Disprin' and Mr. Patel is right in his submission that they are totally different, thus, obviating confusion. The price factor is also not disp ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... given to this factor. He relied on a decision of this Court (Pendse, J.) in Borroughs Wellcome (India) Ltd. v. G.K. Sharma and King Scientific Research Centre, reported in 1989(14)2 I.P.L.R. at page 60. He further relied on a decision of this Court (Jhunjhunuwala, J.) in Astra-IDL Ltd. v. TTK Pharma Ltd., . In this decision it was, relying on the case of Ranbaxi Laboratories Ltd., , inter alia, held : In my view, in the present circumstances, doctord's prescription factor has lost its importance since the reality of the situation cannot be ignored. In India scheduled drugs which are to be sold under doctor's prescription are even sold without production of doctor's prescription and as such reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The Court cannot close its eyes to the existing circumstances and judicial notice of the factual aspects in existence has to be taken. 14. I do not agree with the abovementioned view of Jhunjhunuwala, J. To my mind, it is clear that when the rival marks were found deceptively similar and where the drugs and their packing were also found similar, the fact ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nus, according to Mr. Tulzapurkar, is not discharged. Mr. Patel, in reply, submitted that the said decision which requires evidence of use of the marks having common prefix was rendered on and would be applicable to a matter decided on final hearing after evidence is led. Thus, according to him, at the interim stage it would be prima facie sufficient to show that marks with suffix 'Sprin' are in use with reference to Indian Pharmaceutical Guide and that in the instant case the defendants were not merely referring to the marks on the Trade Mark Register but to marks of products which are in use as indicated in the said Guide. I see considerable force in Mr. Patel's submission. Prima facie, I am satisfied that several products containing Aspirin and having their trade marks with a suffix of 'Sprin' are in use. Moreover, the fact of such products marketed under such marks is not disputed. In these circumstances, I reject Mr. Tulzapurkar's submission. 16. In these circumstances, taking into consideration the factors to be considered and the surrounding circumstances, prima facie, it appears to me that the impugned mark is neither structurally nor phonetically ..... X X X X Extracts X X X X X X X X Extracts X X X X
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