9911796707
TMI Blog2001 (3) TMI 928X X X X Extracts X X X X X X X X Extracts X X X X ..... respondent in the District Court at Vadodara. The suit related to a medicine being sold under the brand name 'Falcitab' by the respondent which, according to the appellant, was a brand name similar to the drug being sold by it under its brand name 'Falcigo'. 4. The case of the appellant was that its drug "Falcigo" contains Artesunate for the treatment of cerebral malaria commonly known as 'Falcipharum'. After the introduction of this drug, the appellant on 20-8-1996 applied to the Trade Marks Registry, Ahmedabad for registration in Part-A, Class-5 of the Trade and Merchandise Marks Act, 1958 ('the Act'). On 7-10-1996 the Drugs Controller General (India) granted permission to the appellant to market the said drug under the trade mark of 'Falcigo'. It is, thereafter, that since October, 1996 the appellant claimed to have started the manufacture and sale of drug 'Falcigo' all over India. 5. The respondent-company is stated to have got permission on 10-4-1997 from the Drugs Controller General (India) to manufacture a drug containing 'Mefloquine Hydrochloride'. The respondent was also given permission to import the said drug from abroad. According to the appellant, it came to know in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... for hearing, detailed arguments were heard and, for the reasons to be given, this Court did not interfere with the orders passed by the Courts below but gave directions regarding expeditious disposal of the suit. In this judgment, we give the reason for not interfering and also set out the principles which are to be kept in mind while dealing with an action for infringement or passing off specially in the cases relating to medicinal products. The reason for not interfering with the order appealed against was that there may be possibility of evidence being required on merits of the case and directions were given for speedy trial of the suit. Expression of opinion on merits by this Court at this stage was not thought advisable. We now proceed to examine the principles on which these cases have been and are required to be decided. 9. Under section 28 of the Trade and Merchandise Marks Act on the registration of a trade mark in Part-A or B of the register, a registered proprietor gets an exclusive right to use the trade mark in relation to the goods in respect of which trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ct that the mark might have no identity or close resemblance with any other trade mark......... What the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or to cause confusion." (p. 363) This Court elaborated this principle further as under : "The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of section 8 and therefore, it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other." [Emphasis added] (p. 978) 13. In Amritdhara Pharmacy v. Satya Deo Gupta AIR 1963 SC 449 the respondent had applied for the registration of the trade name 'Lakshmandhara' in respect of a medicinal preparation for the alleviation of various ailments. This was opposed by the appellant whose trade name 'Amritdhara' had already been registered in respect of similar medicinal preparation. The question, which arose, was whether the name 'Lakshmandhara' was likely to deceive the public or cause confusion to the trade. While interpreting sections 8 and 10 of the Trade Marks Act, this Court observed as follows : "(7) It will be noticed that the words used in the sections and relevant for our purpose are 'likely to deceive or cause confusion'. The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed before us that the two names 'Amritdhara' and 'Lakshmandhara' are in use in respect of the same description of goods, namely, a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers & townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of the two composite words 'Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court were right in staying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, split the name into its component parts and consider the etymo ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole . . . . I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.'" (p. 452) 14. Another case relating to medicinal product is that of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980. In that case the respondent, who manufactured medicinal products, had got the word 'Navaratna' registered as a trade mark. The appellant, who was carrying on the business in the preparation of Ayurvedic pharmaceutical products under the name of 'Navaratna Kalpa' applied for registration of the words 'Navaratna Kalpa' as a trade mark for his medicinal preparations. The objection of the respondent to the proposed registration prevailed. This led to proceedings which culminated in the appeals to this Court. The observations by this Court on two aspects are very pertinent. Firstly with regard to the difference between an action for passing off and action for infringement of trade mark, it observed as follows : ". . . While an action for passing off is ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... parison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide section 21). A point has sometimes been raised as to whether the words 'or cause confusion' introduce any element which is not already covered by the words 'likely to deceive' and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words 'likely to deceive'. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks - the degree of resemblance which is necessary to exist to cause deception not being ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ance between the two words 'Aristoc' and 'Rysta'. The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maugham cited the following passage of Lord Justice Lukmoore in the Court of Appeal, which passage, he said, he completely accepted as the correct exposition of the law : 'The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seekin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... . Dyechem Ltd.'s case (supra) at page 594 that "where common marks are included in the rival trade marks, more regard is to be paid to the parts not common and the proper course is to look at the marks as a whole, but at the same time not to disregard the parts which are common". This Court sought to apply the principle that dissimilarity in essential features in devices and composite marks are more important than some similarity. This Court, after considering various decisions referred to hereinabove, observed in S.M. Dyechem Ltd.'s case (supra) as follows : "34. Broadly, under our law as seen above, it can be said that stress is laid down on common features rather than on differences in essential features, except for a passing reference to a limited extent in one case". (p. 596) Notwithstanding the aforesaid observations this Court in S.M. Dyechem Ltd.'s case (supra) proceeded to observe as follows : "35. It appears to us that this Court did not have occasion to decide, as far as we are able to see, an issue where there were also differences in essential features nor to consider the extent to which the differences are to be given importance over similarities. Such a question h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion for infringement, the plaintiff must, no doubt, make out that the use of defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated". 19. Lastly, in S.M. Dyechem Ltd.'s case (supra), it was observed as under : "54. As to scope of a buyer being deceived, in a passing-off action, the following principles have to be borne in mind. Lord Romer, L.J. has said in Payton & Co. v. Snelling, Lampard & Co. [1900] 17 RPC 48 that it is a misconception to refer to the confusion that can be created upon an ignorant customer that the courts ought to think of in these cases is the customer who knows the distinguishing characteristics of the plaintiff's goods, those characteristics which distinguish his goods from other goods in the market so far as relates to general characteristics. If he does not know that, he is not a customer whose views can properly be regarded by the Court. (See the cases quoted in N.S. Thread & Co. v. Chadwick & B ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t of the United States had held that: "The fact that confusion as to prescription drugs could produce harm a contrast to confusion with respect to non-medicinal products as an additional consideration of the Board as is evident from that portion of the opinion in which the Board stated :. . ." The products of the parties are medicinal and applicant's product is contraindicated for the disease for which opposer's product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals." The board's view that a higher standard be applied to medicinal products finds support in previous decisions of this Court, Clifton v. Plough 341, F.2d 934, 936, 52, CCPA 1045, 1047 (1965) ("It is necessary for obvious reasons, to avoid confusion in the dispensing of pharmaceuticals"), Campbell Products, Inc. v. John Wyeth & Bro. Inc. 143, F. 2d 977, 979, 31 CCPA 1217 (1944) it seems to us that where ethical goods are sold and careless use is dangerous, greater care should be taken in the use of regist ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... this fact alone was not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken. 25. Here, it will be useful to refer to the decision of Morgenstern Chemical Co.'s case (supra) where it has been held as under : "[5] In the field of medical products, it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. The test as to whether or not there is confusion similarity in these products even if prescribed and dispensed only by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. The rule enunciated by Judge Helen in Cole Chemical Co. v. Cole Laboratories D.C. Mo. 1954, 118F. Supp. 612, 616, 617, 101, USPQ, 44, 47, 48, is applicable here : 'Plaintiff and defendant are engaged i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... sirable where involved trade marks are applied to different prescription pharmaceutical products and where confusion result in physical harm to consuming public." Trade mark is essentially adopted to advertise one's product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiff's right is "against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business. The action is regarded as an action for deceit." - Wander Ltd. v. Antox India (P.) Ltd. 1990 Suppl. SCC 727. 28. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... amining 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 trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has 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 for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two m ..... X X X X Extracts X X X X X X X X Extracts X X X X
|
