Bevit Pharmaceuticals Limited vs Planned Pharma Private Limited ...
2002 Latest Caselaw 628 Bom

JUDGMENT

S.A. Bobde, J.

1. This petition is filed by Bevit Pharmaceuticals Limited whose attempt to have the trade mark "ATNOL" registered was denied by the Deputy Registrar of Trade Marks on the ground that it is deceptively similar to the trade mark "ENTALL P".

2. The petitioner applied for registration of the word mark "ATNOL" on 14-10-1985 claiming that it has been in use since five days prior to the registration. Upon advertisement being published in the Trade Marks Journal on 15-12-1989 a notice of opposition was lodged by the respondent on 5-3-1990. The respondent No. 1 claimed that the word mark "ATNOL" is likely to cause confusion since that mark is deceptively similar to respondent No. 1's trade mark "ENTALL P". Both the trade marks are in respect of medicines for the same ailment for treatment of ear, nose and throat ailments. Respondent No. 1's trade mark is in respect of an ayurvedic medicine. The petitioner's trade mark is in respect of an allopathic medicine.

3. It appears from the order that no evidence was filed by either party before the Registrar who, however, heard the learned counsel for the petitioner. It appears to have been the petitioner's contention that they have been already using another medicine called "ATENOLOL" since 1985 and there has been no confusion or deception during the course of its use. The learned Registrar had, however, observed that the two rival marks "ATNOL" and "ENTALL P" are phonetically and deceptively similar and that the phonetic impact of the two

marks when pronounced one after another will or may result in confusion and deception. He relied on a Calcutta case where the trade mark "FORMISS" was held similar to "CHARMIS" and a Delhi case where a trade mark was also held similar to ESSCO.

4. The only question that arises is whether the Registrar has rightly concluded that "ATNOL" and "ENTALL P" are deceptively similar and likely to cause confusion.

5. Mr. Kadam, learned counsel for the petitioner, submitted that the learned Registrar ought not to have relied on the judgments in view of the fact that the judgments were not referred to by the Registrar at the time when the matter was being heard. It is not possible for me to consider this fact, even if true, as a breach of the principles of natural justice.

6. The next contention on behalf of the petitioner is that there is a marked difference between "ATNOL" and "ENTALL P" in that the letter of the two ends with 'P'. According to the learned counsel for the petitioner, the Registrar has completely lost sight of this fact while considering the similarity of the two words.

7. The emphasis placed on the existence of the suffix 'P' is uncalled for. Suffixes like the present one are rarely employed in speech. They are different from prefixes. It must be remembered that the products in question are medicines for which a request would be made by the patients by speech and in a state of ill-health, particularly since both the medicines are likely to be purchased across the same counter.

8. The Supreme Court observed in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., -

"Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them."

Bearing this in mind, I am of view that no undue emphasis needs be laid on the alphabet 'P'. It is common experience that suffixes like this tend to get dropped.

In the present case, there is a distinct possibility that a patient finds the wrong medicine in his hand.

9. In relation to medicines in the Cadila Health Care Ltd. 's case (supra), the Supreme Court has made the following observations:--

"The decisions of the Supreme Court in the last four decades have clearly laid down that what has to be seen in the case of passing-off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion. It is not correct to sway 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 townsfolk, literates 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. A trade may relate to goods largely sold to illiterate or badly educated persons. The purchaser in India cannot be equated with a purchaser of goods in England."

Further: --

"Drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. Schedule 'H' drugs are those which can be sold by the chemist oniy on the prescription of the doctor but Schedule 'L' drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar."

and "In the present case, although both the drugs are sold under prescription but this fact alone, is 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 India 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."

In the same case, the Supreme Court has laid down the following principles :--

"35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors are to be considered.

 (a)     The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.  
 

 (b)    The degree of resemblances between the marks, phonetically similar and hence similar in idea.  
 

 (c)     The nature of the goods in respect of which they are used as trade marks.  
 

 (d)    The similarity in the nature, character and performance of the goods of the rival traders.  
 

 (e)     The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.  
 

 (f)     The mode of purchasing the goods or placing orders for the goods.  
 

 (g)     Any other surrounding circumstances which may be relevant in the
extent of dissimilarity between the competing marks."   
 

 On application of these principles, I find that the two word marks are likely to create confusion and may be considered to be deceptively similar.
  
 

10. Having regard to the aforesaid, I am in complete agreement with the view of the learned Registrar that the trade marks "ATNOL" and "ENTALL P" are deceptively similar. I, therefore, see no merit in this petition which is hereby dismissed.

11. P. S. to give ordinary copy of this order to the parties concerned.