Wockhardt Limited vs Mahesh Medical And General Stores ...
2002 Latest Caselaw 449 Bom

JUDGMENT

P.V. Kakade, J.

1. The plaintiff has taken out this Notice of Motion in a suit, inter alia, for an order and injunction restraining the defendants by an interim order and injunction from in any manner using in relation to medicinal and pharmaceutical preparations the trade mark AZIWIN or any mark deceptively similar to the plaintiff's trade mark AZIWOK registered under No. 650354 in Class 05, so as to infringe the plaintiff's registered trade mark.

2.In the course of the interim order, I heard Mr. Virendra Tulzapurkar, learned Counsel for the plaintiff and Mr. Iqbal Chagla, learned Counsel for the defendant No. 2 at length and have also perused the entire record.

The plaintiff is a Limited Company incorporated under the Indian Companies Act, 1956 in the year 1999 under the name of Wockhardt Pharmaceuticals Ltd. which name was changed to Wockhardt Limited and is engaged in the business of manufacturing and marketing medicinal, pharmaceutical and veterinary products for nearly four decades, through its predecessors.

Defendant No. 1 is a retailer, having its shop in Mumbai and marketing and selling medicinal and pharmaceutical preparations bearing the impugned trade mark and manufactured by the defendant No. 2. Defendant No. 2 is doing business as manufacturer and merchant of medicinal and pharmaceutical preparations.

3. It is the case of the plaintiff that it is the owner of several trade marks. One such pharmaceutical preparation comprising of chemical compound azithromycin dihydrate which is used for treating respiratory and skin infections is manufactured and market by the plaintiff under the trade mark AZIWOK. The said pharmaceutical preparation is available in the markets in both tablet and in liquid syrup. The plaintiff further stated that it has honestly conceived and adopted the trade mark AZIWOK, wherein the prefix part AZI is taken from the compound Azithromycin and the suffix WOK from their corporate/business name WOCKHARDT. The plaintiff has been using the trade mark AZIWOK upon and in relation to its aforementioned products since atleast June 1995 and is a registered proprietor of the trade mark AZIWOK under the provisions of the Trade and Merchandise Marks Act, 1958 vide Registration No. 650354 as of 30th December, 1994 in Class 05 in relation to medicinal, pharmaceutical and veterinary preparations and sanitary substances. The registration of the said trade mark has been renewed and the same is valid, subsisting and in force.

It is the further case of the plaintiff that around the second week of February 2002 the plaintiff was shocked and surprised to come across counterfeit pharmaceutical preparations being azithromycin tablets of the defendant No. 2 bearing the trade mark AZIWIN which were sold within the City of Mumbai by the defendant No. 1, amongst others. Further enquiries made on the mark AZIWIN revealed that like the plaintiff, the defendant was manufacturing and marketing its medicinal and pharmaceutical preparations in both tablet and in liquid syrup form. It is the case of the plaintiff that the defendant No. 2 has used a deceptively similar mark thereof in relation to the same description of goods. The impugned trade mark is in fact phonetically, structurally and visually similar to the reputed and registered trade mark of the plaintiff and the defendants can have no justification for having adopted and used a confusingly similar mark to that of the plaintiff. It is further submitted that therefore the defendants are guilty of violating the plaintiff's statutory and common law rights in the trade mark AZIWOK. By using a deceptively similar mark to the reputed trade mark AZIWOK of the plaintiff, the defendants are misrepresenting their goods as those of the plaintiff and/or are misrepresenting that their goods have some connection with the goods of the plaintiff causing damage to the plaintiff and to the goodwill and reputation of the plaintiff's business and is also diluting the distinctiveness of the plaintiff's mark AZIWOK. The plaintiff submits that by such misrepresentations the defendants are passing-off or are attempting to pass-off their goods as those of the plaintiff. It is further submitted that such illegal and wrongful action of the defendants amounts to the tort of passing-off and/or unfair competition and is actionable as a civil wrong. In view of these aspects, it is submitted that the plaintiff has suffered irreparable loss, injury and harm to them and, therefore, in order to prevent further harm, injury and loss, pending the hearing and final disposal of the suit, ad interim relief is required to be issued in terms of prayers mentioned in the Notice of Motion. According to the plaintiff, the principle of balance of convenience is in their favour because the counterfeiting of the plaintiff's goods by the defendants is deliberate, dishonest and fraudulent as is event from the facts revealed from the record and hence the Notice of Motion is filed.

4. These submissions are stoutly challenged on behalf of the defendants in affidavit in reply made on behalf of the defendant No. 1 which is annexed with various documents. According to the defendants, the plaintiffs are guilty of suppressio veri and suggestio falsi due to the fact that they have come to the Court with a submission that they came across the product of defendant No. 2 AZIWIN in or about the 2nd week of February, 2002. However, in fact, the product is very much in existence since the year 1997 which can be seen from the documents produced on record and therefore it is submitted that all throughout the years the plaintiffs are well aware that the defendant No. 2 had introduced AZITHROMYCIN preparation as far back as in March 1997 under the trade mark AZIWIN which has now established substantial turnover/sales and goodwill in the market. According to the defendants, the defendant No. 2 is licenced under the Drugs & Cosmetics Act and Rules to manufacture various pharmaceutical products including AZIWIN and has obtained valid manufacturing licences from the Karnataka State Drug Controller as far back as 1996 and has from time to time renewed the same. Defendant No. 2 has further sought to make out a case that Azithromycin is marketed and sold in India by various pharmaceutical companies including the plaintiffs and the defendant No. 2 and has given a list of as many as 13 different names of various companies including the parties to the suit who are using the prefix "AZI" in this regard and, therefore, according to the defendants, it is clear that various brands of Azithromycin are marketed by different pharmaceutical companies using the common prefix "AZI" which is derived from the generic name of the drug. It is submitted that merely because the prefix of the brand name of Azithromycin manufactured and sold by the defendant No. 2 is common with prefix of the same drug manufactured and sold by the plaintiffs, the same does not create any confusion or deception in the minds of any of the consumers. It is further submitted that there is significant dissimilarity with the remaining part of the trade marks because the prefix "AZI" is descriptive of the generic drug and is common to the trade. It is further submitted that Azithromycin can only be ordered giving a written prescription and a chemist cannot supply the same without any such prescription, the relevant public to be considered are the specialists like doctors and pharmacists, and it is the case of the defendants that there cannot be and in fact there is no confusion in the minds of the doctors and pharmacists between the trade mark "AZIWIN" and "AZIWOK". It is certified by them and the record bears out the same fact. It is further case of the defendants that the brand name "AZIWIN" was coined by the defendant No. 2 by using the common prefix AZI denoting the generic names of the drug viz. AZITHROMYCIN. The suffix "WIN" was coined to denote "Winning over infection" which is an aggressive marketing slogan of defendant No. 2. In view of these aspects, it is submitted that there is absolutely no evidence of any confusion between the two trade marks. It is further submitted that the defendant No. 2 has also applied for registration of the said trade mark with the Registrar of Trade Marks under Application No. 802523 which is pending. Hence, it is the case of the defendant No. 2 that it has honestly, continuously and openly used and adopted the said trade mark "AZIWIN" and has been concurrently using it since 1997 and further the fact that the plaintiffs' mark "AZIWOK" is registered does not create any kind of exclusive right therein or in the mark "AZIWIN" being descriptive of the generic active ingredient. On this submission, it was further prayed that this is one of those matters which cannot be adjudicated at the ad interim stage unless all the evidence is recorded and the matter is finally adjudicated on merits and as such the Notice of Motion was sought to be dismissed.

5. At the outset, it would be noted that it is an admitted as well as evident position that the plaintiff is the registered trade mark user of "AZIWOK" under the provisions of Trade and Merchandise Marks Act, 1958 vide Registration No. 650354 as of 30th December, 1994 in Class 05. As against this aspect, the defendants' mark "AZIWIN" is not registered under the relevant provisions of the said Act and therefore, by virtue of the provisions of section 28 of the said Act, the plaintiff is entitled to claim exclusive right to use of the trade mark AZIWOK.

Then comes the question whether the defendants' mark AZIWIN is deceptively similar to the registered mark of the plaintiff "AZIWOK" because at this ad interim stage that would be the crucial issue to determine the fate of the proceedings. In this regard, it is to be noted that in deciding the question of similarity between two marks, certain principles are required to be observed. They are thus:---

(a) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole;

(b) overall similarity is the touchstone;

(c) marks must be looked at from the first impression of a person of average intelligence and imperfect recollection;

(d) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic test must be applied;

(e) marks must be compared as a whole, microscopic examination being impermissible; and

(f) the broad and salient features must be considered for which the marks must not be placed side by side to find out difference in design.

In this regard, it must be noted that in addition, the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration.

If we apply these tests to the dispute at hand, there is absolutely no doubt that the mark AZIWIN of the defendant No. 2 is deceptively similar to the mark AZIWOK belonging to the plaintiff. It is the case of the defendants that their mark AZIWIN is distinctly dissimilar to the mark AZIWOK and, therefore, there is absolutely no likelihood of confusion in the mind of customer. It was also urged by the learned Counsel for the defendants that Azithromycin can only be ordered on giving written prescription and chemists cannot supply the same without such prescription, the relevant public to be considered are the specialists like doctors and pharmacists. I also disagree with this submission. Firstly, it must be noted that it is not dissimilarity, but deceptive similarity has to be taken into account. Moreover, it cannot be overlooked that both the trade marks are in relation to a common drug Azithromycin and, therefore, possibility of confusion has enhanced. In this regard, the Supreme Court has provided the guidelines in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., , wherein it is observed that the test to determine is the similarity and not dissimilarity between the competing marks. Phonetic similarity is not to be ignored when the competing words are written differently. Moreover, the question has to be approached from the point of view of an Indian of average intelligence and imperfect recollection. This is specially in case of drugs, the test is to be applied strictly even through the drug in question may be one that is sold not across the counter but only to hospitals and clinics or on prescription only.

The Supreme Court has also observed that what has to be seen in the case of a passing-off action is the similarity between the competing marks and to determine whether here is likelihood of deception or causing confusion. It is not correct to say that the difference in essential features is more relevant. The principle of phonetic similarity cannot be jettisoned when the manner in which the competing words are written are different. The products will be purchased by both villagers and townfolk, literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. 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.

If we are to be guided by these principles, I have no doubt whatsoever about the fact that the mark AZIWIN is deceptively similar to the trade mark of the plaintiff AZIWOK inspite of the fact that the common prefix AZI is obviously derived from the generic name of the drug Azithromycin.

6. Mr. Chagla, learned Counsel for the defendant No. 2, at this stage, invited my attention to the Supreme Court ruling in the case of J.R. Kapoor v. Micronix India, 1994 Supp. (3) S.C.C. 215. The dispute in that case was regarding the trade marks names MICROTEL & MICRONIX. The Apex Court, after considering all the relevant aspects and facets of the dispute came to the conclusion that there was not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Mr. Chagla argued that in this case also the word "Micro' in prefix was common and still it was found not to be disceptively similar. However, if we peruse the ratio of the said ruling in detail it is obvious that it was held that Micro-chip technology being the base of many of the products, the word 'micro' has much relevance in describing the products. Further, the word 'micro' being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro-chip technology would be justified in using the said word as a prefix to his trade name. Therefore, on this basis, both the trade names were found to be not deceptively similar. However, the present case cannot be equated with the said micro technology case because the entire facts and circumstances involved therein were totally different and the word 'micro' was found to be descriptive of micro technobology. In the present case before me, what is important is not the fact that the word prefix AZI is derived from the generic name Azithromycin of the drug. But what is important for our present purpose is whether the trade mark AZIWIN of the defendants is deceptively similar with the plaintiff's mark AZIWOK or not, and the answer is in the affirmative.

7. The learned Counsel for the defendants sought to raise various peripheral issues and referred to a catina of decisions of the Apex Court as well as this Court. However, in my considered view, those are aspects to be looked into at the time of final hearing of the suit on merits and for our purposes, it is sufficiently proved from the record that the plaintiff has established its prima facie case against the defendants. Moreover, the balance of convenience definitely tilts in favour of the plaintiff because if the defendants are not injuncted at the ad interim stage, the plaintiff is likely to suffer irreparable harm, injury and loss.

Hence order:--

The ad interim reliefs are granted in terms of prayer Clauses a, b and c. Notice of Motion is made returnable in due course.

The learned Counsel for the defendants at this stage requests for stay of the order to file the appeal. In view of the facts and circumstances, stay is granted for six weeks.