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TMI Blog1998 (6) TMI 580X X X X Extracts X X X X X X X X Extracts X X X X ..... respondent from selling or dealing in food articles as those of the appellant by the use of expression 'ENERJASE' or any other trade name deceptively and phonetically similar to those of the appellant's trade name/trade mark 'ENERJEX' or in any other manner to pass of whatsoever. 4. In the original suit C.S.No. 4 of 1997, the appellant filed two applications, viz., O.A.Nos.4 and 5 of 1997 before the learned Single Judge requesting for the grant of interim reliefs. After hearing the parties, these applications were dismissed by the learned Single Judge by the common order dated 25.4.1997. Hence, these appeals. 5. The case of the plaintiff is this: This plaintiff is the manufacturer of the infants and invalid food products and the said products are sold under the trade mark 'ENERJEX'. The trade mark 'ENERJEX' is associated with the plaintiff for the past 15 years. The defendant is using the trade mark 'ENERJASE' for manufacturing and marketing a similar product of medicinal preparation which is nothing but an infringement of the plaintiff company's trade mark. The defendant's mark is an imitation of the plaintiff's mar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e pending suit before the trial court, is so limited. Though umpteen number of judgments rendered by this Court as well as the Apex Court are available, regarding the powers of this Court while dealing with the miscellaneous appeal, it would be sufficient to refer two decisions, as given below: 11. The first case is Beach Estates v. Likhami Holdings Limited (1997)2 M.L.J. 51, rendered by one of us (Hon'ble Shivaraj Patil, J.). The relevant observation is thus: In a miscellaneous appeal, the appellate court could reverse the discretionary order of the trial court in granting or refusing an injunction order only when the appellate court would find that the discretion exercised by the trial court was either capricious, perverse or arbitrary and not even on the ground that two views are possible on the material placed before the trial court. 12. The next case is Wander Ltd. v. Antrox India (P) Ltd., 1990 S.C.C. 727. which arose out of Trade Mark case. The relevant observation made by the Apex Court is as follows: The appeals before the Division Bench were against the exercise of discretion by the Single Judge. In such appeals, the appellate court will not interfere with ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... p containing carbohydrates, proteins, iron and vitamins. Therefore, the persons would purchase the tonic kept in the bottle either under the prescription of the Doctor or by his experience. He is accustomed by the use of the particular brand. (iii) When the appellant's product is being allopathy, the persons who intend to purchase the same would know what the product they are asking for. No one would send an illiterate person to the pharmacy to get any medicine much less the tonic. (iv) When the two products are entirely different, there cannot be any misconception because the appellant's product is syrup and the respondent's product is capsules. Both the products are prescribed by the medical practitioners who are qualified persons in the respective fields. Every pharmacy is having qualified pharmacist. (v) The appellant sent a case and Desist Notice dated 13.10.95 to the respondent. It is stated in the said notice that the appellant had come across the respondent's product 'ENERJASE' along with the product literature. The appellant further called upon the respondent to stop forthwith the use of the brand name, failing which the appellant shall ins ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ain relief in respect of infringement of the trade mark in the manner provided under the Act. (f) Under Section 29 of the Act, the use of the trade mark by a person who not being a registered proprietor of the trade mark or a registered user thereof which is identical with, or deceptively similar to a registered trade mark amounts to the infringement of trade mark and the registered proprietor can take action or to obtain relief in respect of infringement of trade mark. 18. Thus, the reading of these sections would reveal that the registered proprietor of a trade mark has been given an absolute protection as against the infringement and passing off. 19. In an infringement action, the issue is whether the defendant is suing a mark which is the same as or which is a colourable imitation of the plaintiff's trade mark. In a passing off action, the issue is whether the defendant is selling the goods so marked as by design or calculated to lead the public to believe that they are the plaintiff's goods. The element of deception or confusion becomes irrelevant in this issue, as the same is implicit, inherent or presumed to be present. 20. In an action for infringement o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... thors; (a) Mc.Carthy on Trademarks and Unfair Competition (3rd Edition, Vol. 2) states: The names of the 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. 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. An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, generic . If the abbreviation is not recognisable as that original generic term, then the abbreviation is like a fanciful mark and protectable. (b) Kerly in Law of Trade Marks and Trade Names (12th Edition) deals with proof of likelihood of deception as under: The court must in the common case be satisfied that the defendant's conduct is calculated to pass off other goods as those of the plaintiff, or, at least, to produce such confusion in the minds of probable customers or purchasers or other persons with whom the plaintiff has business relations as would be like ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ame. As for the suffix, the same are sufficiently different so as to avoid any confusion in the market. In any event, there are 16 marks with the same prefix and several of them have suffixes which are similar to plaintiff's trade mark which is naturally so considering that the word 'ENERGY' is a commonly used word and would be description of energizing tonics for marketing. It is further submitted that the registration obtained by the applicant in respect of trade mark 'ENERJEX' is in Part-B of the register. This in itself shows that the mark is not per se distinctive as the prefix 'ENERGY/J' is not descriptive of the products manufactured thereunder. It is for this reason that the learned Registrar of Trade Marks has granted a Part-B registration for the plaintiff's 'ENERJEX' and that too for the word per se. I deny that the respondents trade mark is either phonetically or deceptively similar to applicant's trade mark. I deny that use by respondent of trade mark 'ENERJASE' amounts to an infringement of trade mark 'ENERJEX'. 28. Therefore, it cannot be contended that the learned single Judge has not considered the aspe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... that the use of the word 'Dhara' was not of itself decisive of the matter, in the facts found in that case. 35. The learned senior counsel appearing for the appellant cited other authorities inclusive of unreported decisions. Those decisions are given below: (1) Aravind Laboratories v. V.A. Samy Chemical Work . (2) Aravind Laboratories v. Annamalai Chettiar . (3) Amrutanjan Ltd. v. Amarchand Sobachand, C.S.No. 108 of 1977, dated 18.9.1979. (4) Amrutanjan Ltd. v. Mehta Unani Pharmacy Company, C.S.No. 54 of 1970, dated 30.3.1976. (5) Glaxo Operations U.K. Ltd v. Amar Soba (P) Ltd., C.S.No. 687 of 1980, dated 29.1.1985. (6) Aravind Laboratories v. Jamma Product, C.S.No. 734 of 1984, dated 13.11.1996. (7) Aravind Laboratories v. Balamani Product, C.S.No. 735 of 1984, dated 18.1.1987. (8) Aravind Laboratories v. Vasavi Cottage Industries, C.S.No. 699 of 1984, dated 7.2.1997. 36. We have perused the above decisions. We do not think that any of the cited cases would help the appellant for two reasons: (1) The conclusion was arrived at in these decisions only after the trial is over; and (2) It has been held in these cases, that the products are sa ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... The word 'ENERGY/J' is therefore generic and common to the trade, as describing the product meant for giving energy. A generic name of a product can never function as a trade mark to indicate the origin. It has become a public juris, on which not one can claim proprietary right for the exclusive use. In this context, it will be relevant to refer the sentence contained in Mc.Carthy on Trademarks and Unfair Competition. abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name, is still, 'generic'. 42. Phonetically, the words 'JEX' and 'JASE' being totally dissimilar, are not going to create any confusion in the mind of the users, especially, in this case, when the visual impression of the said two trade names, as explained earlier, is completely different. Therefore, the submission made by the defendant that there cannot be any chance of buyers and users being misguided or confused by the two trade names, cannot be brushed aside. Therefore, there is no difficulty in coming to the conclusion that there is no phonetic and visual resemblance. Moreover, nobody can claim exclusive right to ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... learned Judge is that the person who may buy the medicine such as nurses, compounders and other laymen in charge of the hospital and similar institutions are mostly Indians and that their pronunciations of the English words are not likely to be perfect and proper. It may be stated here that this medicine can be dispensed only on the prescription of the doctors. According to the learned Judge, the customers are not likely to hail only from the group of literate persons well versed in English language. The learned Judge expressed the view that orders for the preparation of the drug 'asmac' are placed over the telephone and are indistinctly heard over and that written prescriptions are misspelt or badly written. He felt that nurses, compounders and lay people incharge of the hospital and similar institutions may place orders orally or across the counter or over the phone, which may lead to some confusion. With respect, we do not accept these as proper tests these medicines are schedule 'H' drugs and can only be dispensed on the prescription of the medical practitioner. 47. In M.M.P. Ltd. v. O.P. Corporation , the Division Bench of this Court, while holding that the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ; in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the other. According to us, phonetically the words being totally dissimilar are not going to create any such confusion in the mind of the users. Secondly, even the visual impression of the said two trade names is different. In the first instance, the respondent's trade name 'MICRONIX' is in black and white in slimmer letters and they are enconced in designs of elongated triangles both above and below the said name. On the other hand, the applicant's trade name 'MICROTEL' is in thick bold letters in red colour without any design around. As regards the logo, the respondent's logo consists of the word 'M' in the slim letter with 'I' sporting a dot on it and drawn in the well of 'M'. Below the letter 'M' in small letters is written the word 'MICRONIX' and all these letters and words are written in white in a black square in north-south direction. As against this, the appellant's logo is one letter, viz., 'M' which is drawn in bold broad letter with ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... NAMARAKKUDI' - a geographical name as part of trade mark. It was held that the word having become public juris nobody could claim any exclusive right to its use. 53. We may now briefly refer to some more cases throwing light on the point of phonetic similarity alone. (a) In E.R. Squibb Sons v. Curewell India Ltd. . Curechlor and Reclour both being pharmaceutical preparation of the Chloromphemical were not similar. (b) In Geigy A.G. v. Chelsea Drug Chemical Co Ltd. (1966) R.P.C. 64. 'BUTAZOLIDIN' and BUTAZONE' both being medicinal preparations were not found to be similar. (c) In Helena Rubinstoin Ltd's Application (1960) R.P.C. 229. SKIN De' and SKIN DEEP' both being toilet creams were held not liable to cause deception or confusion. (d) 'LUMINDON' was held not similar to 'LUMINAL' goods medicinal preparations. 'THEOMINDON' was also held not similar to 'THEMINAL', goods medicinal preparations. Indo Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Bayer, A.G., 1975 R.P.C. 545. (e) In an opposition to the registration of 'POL-RAMA', the mark was held not similar to 'POLAROID', goo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... o. 51 of 1955 dated 25.8.1989 pointing out that this Court set aside the order of the single Judge refusing temporary injunction and held that 'EUGEL' was deceptively and visually similar to the registered mark 'EMULGEL' and hence, the plaintiffs were entitled to the injunction. That is the case where the product manufactured by both plaintiffs and the defendant is the same. The plaintiffs trade mark was 'EMULGEL' and the defendant was marketing the product with a name 'EMULGEL' and on receipt of notice from the plaintiffs objecting to the use of the said name, the defendant assured the plaintiffs that he would switch over the alternative brand name; thereafter he adopted a new name 'EUGEL' by drooping the letter 'M' from the expression 'EMULGEL'; however, the defendant simultaneously changed the colour scheme and geometrical design of carton and tube similar to those of the plaintiffs and under such circumstances, the Division Bench held that the usage of the name 'EUGEL' with the said colour scheme and geometrical design is a clear deception or confusion vis-a-vis, the plaintiffs' product 'EMULGEL' This d ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 39; is a commonly used word and would be the description of energising product. A generic name of a product cannot be treated as a trade mark to indicate the origin. The prefix for both the marks, viz., 'ENERJ' is common to the trade and cannot be a proprietary name. Nobody can claim exclusive right to use such an abbreviation. (d) As per the suffix, phonetically, the words 'JEX' and 'JASE' are totally dissimilar and are not going to create any confusion in the mind of the users, especially, in this case, when the visual impression of the said two trade names is completely different. (e) In fact, we have compared the two words as a whole with the eyes of the public. We think prima facie that the total sound effect of these two words lacks any similarity. So also, when these words are written down and compared, they do not have any similarity which can deceive the eye of the layman. 57. In view of the above findings, we hold that a case for grant of injunction sought for by the appellant is not made out and the orders under appeals have to be confirmed, as the balance of convenience is only in favour of the defendant. 58. In the result, the appeal ..... X X X X Extracts X X X X X X X X Extracts X X X X
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