Ajanta Pharma Limited vs Theon Pharmaceuticals Ltd And Anr
2017 Latest Caselaw 2345 Bom

                 Ajanta Pharma Ltd v Theon Pharmaceuticals Ltd & Anr
                            nms2681-16 Ajanta Pharma.doc



 Shephali


      IN THE HIGH COURT OF JUDICATURE AT BOMBAY
            ORDINARY ORIGINAL CIVIL JURISDICTION
                NOTICE OF MOTION NO. 2681 OF 2016
                                        IN
                               SUIT NO. 798 OF 2016

 Ajanta Pharma Ltd
 a company incorporated under the
 Companies Act, 1956, having its registered
 Office at Ajanta Huse, Charkop, Kandivli
 (West), Mumbai 400 067                                                ...Plaintiff

                         ~ versus ~

 1.         Theon Pharmaceuticals Ltd
            having its office at #50 Sector-28A
            Chandigarh, Chandigarh CH 160026
            and at #400, Industrial Area, Phase I,
            Panchkula 134113. Haryana also at
            Village Saini Majra, Tehsil Nalagarh,
            District Solan (HP) 174 101

 2.         Intas Pharmaceuticals Ltd
            having its office at 2nd floor, Chinubhai
            Centre, Ashram Road Ahmedabad,
            Gujarat 380009 and also at Matoda 382
            210, District Ahmedabad                              ...Defendants



 A PPEARANCES
 FOR THE PLAINTIFF                 Mr Himanshu Kane,
                                       with Ms. Ashwini Khalapurkar and
                                       Ms. Vrinda Gambhir, i/b M/s WS
                                       Kane & Co.


                                    Page 1 of 15
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                 Ajanta Pharma Ltd v Theon Pharmaceuticals Ltd & Anr
                           nms2681-16 Ajanta Pharma.doc




 FOR DEFENDANT NO. 1              Mr Alankar Kirpekar,
                                       with Mr. Shekhar Bhagat, i/b MAG
                                       Legal.
 FOR DEFENDANT NO. 2              Mr VR Dhond, Senior Advocate,
                                      With Mr. Rashmin Khandekar, a/w
                                      Mr. Darshan Mehta, i/b M/s
                                      Dhruve Liladhar & Co.



 CORAM                                            : G.S.Patel, J.
 JUDGMENT RESERVED ON                             : 15th December 2016
 JUDGMENT PRONOUNCED ON                           : 5th May 2017
 JUDGMENT:

1. This is an application for interim relief in a pharmaceutical trade mark and passing off action. In the time since this lawsuit was first filed, its contours have changed quite significantly. The Plaintiff ("Ajanta") brought suit claiming protection over its mark FERANTA, used for L-Methyfolate Calcium, Pyridoxal 5'- Phosphate, Methylcobalamin, Ferrous Ascorbate and Zinc Sulphate pharmaceutical tablets. Ajanta said the mark then used by the 2nd Defendant ("Intas"), FERINTA, constituted infringement and passing off. I first granted an ex parte injunction on 11th August 2016. On 1st September 2016, Intas agreed to discontinue using FERINTA. It said it would, instead, use the mark INTAS' FERINTAS. I allowed these two words to be used in any combination, or with some suitable additional word sufficient to sufficient that FERINTAS was by or came from Intas. Since then, Intas has been using its mark in that manner: INTAS' set above the word FERINTAS, with FER in black, and the rest in a rust red colour. FERINTAS is set in an oval or lozenge shaped device.

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2. Later, Mr Kane for Ajanta said his instructions were to contest even this use as being impermissible. I then heard Mr Kane Ajanta, Mr Dhond for Intas and Mr Kirpekar for the 1st Defendant, which manufactures products for Intas.

3. Though both sides have cited a great deal of authority, and which I propose to consider later in this judgment, it seems to me that shorn of all the usual jousting we see in court, the case turns on a very narrow factual determinant. The contest is now, as I have just said, not between FERANTA and FERINTA. That might indeed have been too close to call. The contest is now between FERANTA and INTAS' FERINTAS; or, visually, between this:

... and this:

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4. Mr Kane's submission is that there is visual, phonetic and structural similarity. Intas' mark is 'deceptively similar'. It is likely to deceive, and apt to cause confusion. Mr Dhond disagrees. So do I.

5. Mr Kane says once similarity is established, the rest must follow, and no proof of actual deception or confusion is ever necessary, and an injunction must follow. But that argument can often turn on itself, as it does here: if similarity is not established, let alone deceptive similarity, then there can be no order of restraint.

6. There are other arguments too, and I have considered these in sequence. Ultimately, for the reasons that follow, I have found for the Defendants and have dismissed the Motion.

7. Ajanta applied for registration of FERANTA on 11th February 2008 under number 1652066 in class 05 for pharmaceutical, medicinal and veterinary preparations. It obtained that registration with effect from that date. The registration subsists. Since 2013, Ajanta has used the mark on its L-Methyfolate Calcium, Pyridoxal 5'-Phosphate, Methylcobalamin, Ferrous Ascorbate and Zinc Sulphate tablets. It has considerable sales -- Rs.88.21 lakhs in 2015-16 -- and has run up promotional costs too. These are supported by Chartered Accountants' certificates. None of this is seriously disputed. It then says that in July 2016 it chanced upon Intas' Ferrous Ascorbate and L-Methyl Folate tablet under the FERINTA mark (now abandoned), with a suffix 'XT'. This was being sold as a dietary supplement, an argument of some consequence as we shall see. Ajanta then found that Intas had sought registration under application number 2969381. This was also in class 05, and the application said the FERINTA mark was

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'proposed to be used'. The Registrar objected to the application, citing Ajanta's prior registration of FERANTA as a conflicting mark. On that objection, Intas made another application on 15th April 2016 under number 3235362 for the mark FERINTA XT. In the plaint, there are the usual averments about similarity, infringement, passing off and so on. They were all in the context of FERINTA or FERINTA XT. I must consider these in the context of what is now being used, INTAS' FERINTA (with or without suffixes).

8. Mr Kane proceeds directly to the defences. One of these was the 'copycat defence', that is to say Ajanta is itself guilty of copying another's mark. Intas in its Affidavit in Reply points to a previous mark FERINATAL. That, Mr Kane says, is incorrect: the mark's registration lapsed in 1989; and it was never in use but only ever proposed to be used.

9. The second defence is that the goods are different. Ajanta's product is sold as a pharmaceutical; Intas' as a food or dietary supplement. This is rank nonsense, Mr Kane insists: the two products have precisely the same ingredients and serve exactly the same purpose. Referencing the NICE classification, he says pharmaceuticals include dietary and meal supplements and dietetic foods adapted for medicinal use (but, importantly, does not include meal supplements and dietetic foods not for medicinal use). The contents or ingredients are the same, as are the trade and marketing channels and the consumer base. It matters not a whit, Mr Kane says, that there are the usual endorsements found on Intas' cartons: "as directed by dietician"; "Dietary Supplement. Not for medicinal use" and so on. There is also a warning against 'exceeding the stated

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daily recommended dose'. Any difference is formulation is trivial, he says; and both products are vended to treat anaemia. A party cannot slither around in Class 05 by saying its mark, though in that class, is for a different sub-class or sub-species. The test in law speaks to the existence of rival marks in a class, not in a sub-classification. A classification or sub-classification in any case is never as important as the manner of use. What the law prevents is a rival from adopting a deceptively similar mark.

10. In an infringement action, Mr Kane submits, honesty in adoption is irrelevant, but, in any case, there is no such honesty: Intas knew of Ajanta's prior registration and its mark inter alia from the Registrar's citing of the latter as a conflicting mark.

11. As to the actual coining, I will accept for now that both sides have used FER from ferrous, the principal ingredient or generic, and the main purpose, and combined this with part of their respective corporate names: FER-ANTA from FERrous and AjANTA, and FER-INTAS from FERrous and INTAS. I will also accept, on the basis of the material produced by Intas in the Affidavit in Reply that there are several marks and products with FER in their name. Mr Kane's submission is that this is wholly irrelevant to a question of a deceptive similarity.

12. That takes us to what I think is the central defence. Mr Dhond says this is not a case under Section 29(1) of the Trade Marks Act, 1999 at all, but more correctly under Section 29(2) and this makes all the difference. This is how he constructs the defence: the goods are admittedly different, and the slightest difference in formulation or prescribed use is sufficient. It is not possible to

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conflate uses because Class 05 has a wide sweep. Within that class, there are permissible differentiations, and if a party has only ever used its mark on, say, a pharmaceutical, and never on a food supplement, there is no question of confusion or its likelihood. Ajanta's claim falls under Section 29(2)(b), says Mr Dhond.

13. Section 2(1)(h), Section 29(1) and Section 29(2) read thus:

2(1)(h) "deceptively similar".--A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;

Section 29 -- Infringement of registered trade marks

(1) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) A registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which because of--

(a) its identity with the registered trade mark and the similarity of the goods or services covered by such registered trade mark; or

(b) its similarity to the registered trade mark and the identity or similarity of the goods or services covered by such registered trade mark; or

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(c) its identity with the registered trade mark and the identity of the goods or services covered by such registered trade mark,

is likely to cause confusion on the part of the public, or which is likely to have an association with the registered trade mark.

(Emphasis added)

14. Section 29(1), Mr Dhond submits, is mark-centric. It speaks of marks that are identical, or a rival mark that is 'deceptively similar', and, by definition, 'deceptive similarity' takes within its sweep the likelihood of confusion. This was, indeed, the state of the earlier law before the 1999 Act. Section 29(2) is a later evolution of the law. Its concern is effect-centric. It speaks not of deceptive similarity but of the likelihood of confusion and it contemplates three situations: (1) identity of marks plus similarity of goods and services; (2) similarity of marks plus similarity or identity of goods and services; and (3) identity of marks plus identity of services. Here, the two marks are not identical. That is not even Ajanta's case. That eliminates 29(2)(a) and 29(2)(c), and leaves only 29(2)(b): where the marks are allegedly similar, and the goods are identical or similar. The test in 29(2) is not of deceptive similarity, but of likelihood of confusion; and, therefore, if this likelihood of confusion is not established, no injunction can be granted. Section 29(2) is a bulwark against unreasonable and unfair monopolization. In the simplest terms: in a Section 29(2) case, mere similarity of marks is insufficient. It must be accompanied by a similarity or identity of goods; and even that will not completely fulfil the requirements of Section 29(2), for a likelihood of confusion must be shown.

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15. That construct from Mr Dhond might be one that stops a little short. The ending words of Section 29(2) -- "or which is likely to have an association with the registered trade mark" -- probably speak to deception, and, therefore, read as a whole, the test might still be of deceptive similarity. Indeed, I think it is here that Mr Kane positions his cause, for he says Intas' mark is one that is (a) similar; (b) used in relation to (at the very least) similar, and possibly identical, goods; and (c) results in Intas' mark, or the goods under it, being associated with Ajanta's mark. Confusion, Mr Kane says, is therefore inevitable.

16. All of this turns on a single determinant: are the two marks 'similar'? If they are not, Mr Kane's cause must fail. If they are, and given the nature of the goods, then I believe it would be difficult to deny him the injunction he seeks. Ajanta's mark is a word mark. Intas' is a composite word and label mark (and, again, we are now only concerned with the newly adopted mark, not the one against which the suit was first brought, that having been abandoned). Intas uses a distinctive black-and-red colour combination. More importantly, the use of the word INTAS' serves a dual purpose: it visually and structurally distinguishes Intas' product from Ajanta's, and it also proclaims Intas' proprietorship and ownership in its product. "This is Ferintas from Intas", the composite mark seems to say; and hence Mr Dhond's submission that Intas has not left a thing to conjecture or supposition. It does not ask a consumer to infer that FERINTAS, because it incorporates INTAS, comes from Intas. It says so, and it says so loudly and unmistakably. This is simple and straightforward comparison. It has nothing to do with a

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dissection of the marks into etymological constituents, which a court may not legitimately do.1

17. Pharmaceutical companies routinely blend their corporate names, or parts of them, into their marks. So does Intas and, for that matter, at least in this case, so does Ajanta. Here, Intas has said this not once, or only by incorporation in the name, but it has said so twice, and it cannot be argued that Intas has used its own name in a non-descript or insignificant manner. Further, the use of the expression FER or FERI for iron-related products is common. There is a list of 40 such marks annexed at page 34 of the Motion paper book. All co-exist. From pages 37 through 41 is a list of pharmaceutical products (including Ajanta's and Intas') that use the expression FER or some variant of it; all co-exist and many incorporate bits and pieces of the manufacturer's corporate names. There are any number of marks prefixed with INTA or suffixed with TAS. The response, that not all manufacturers invariably follow this, is irrelevant; many do, and that is enough. This is not a carving up of the mark into components and testing the meaning of each. It is a question of what it is the industry broadly does in adopting marks. Mr Kane's submission on publici juris is misplaced. It is not Mr Dhond's case that Ajanta's mark is per se publici juris, and therefore, for Mr Kane to say that Intas has adopted a similar mark and cannot be heard to claim non-distinctiveness, is a strawman argument: it attempts to defeat a case never made. What Mr Dhond says is that Ajanta and Intas, each in their own way, coined marks in a fashion that is commonly done by the pharmaceutical industry -- taking the word of a principal or active ingredient, and cobbling it

1 Cadila Pharmaceuticals Ltd v Sami Khatib, 2011 (3) Bom CR 587.

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together with some part of the corporate name. This is a wholly distinct argument.

18. I believe Mr Dhond is correct, and there is sufficient distinctiveness. I have to assess the marks as they are used, and as a whole, not on a now-past hypothetical of what Intas once used or put into the market. No one is engaged in a meticulous comparison of words and, again, Mr Kane's charge that this is what I am invited to do is simply wrong. All that Mr Dhond says to me is this: "look at the two marks, one by one, or side by side, as a whole, and decide for yourself if you can honestly say the one I now use -- because that is the only one I now use and it is the one Ajanta wants to injunct -- is so similar to Ajanta's mark that there is the remotest possibility that anyone -- judge, jury or the man on the Virar local train -- could ever be confused or deceived in any way. Would he be able to tell them apart? Would be cast into a 'state of wonderment'? Would he have to closely examine each to tell one from the other? Would he mistake one for the other, or believe mine came from Ajanta, or vice versa? If you cannot say this, that the two marks as used now are similar, then no other consideration matters, and the Motion must be dismissed." I believe there is only one answer to this, and it is in Mr Dhond's favour. If there is a finding of sufficient distinctiveness then the matter must surely end at that.

19. Mr Kane asks -- correctly -- that I should look at the marks as a whole.2 I do. He then in effect asks -- and incorrectly -- that I

2 Charak Pharmaceuticals v MJ Exports Pvt Ltd, 1993 IPLR 39; Astra-IDL Ltd v TTK Pharma Ltd, 1992 PTC 137; Lupin Ltd v Eris Lifesciences Pvt Ltd & Ors, 2016 (67) PTC 144 (Bom); F Hoffman-La Roche & Co Ltd v Geoffrey Manners & Co Pvt Ltd, (1969) 2 SCC 716.

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should not look at the marks as a whole. He asks that I drop from the rival mark the word INTAS' used throughout in a composite manner with FERINTAS, and should also ignore the introduced trailing S. In other words, he asks that I assess "INTAS' FERINTAS" simply as Ferinta. That is surely an extraordinary demand: that I grant the injunction on the basis of a mark not used, not defended, long abandoned and ignored every other factor that would come into play while doing the very thing Mr Kane asks, which is to compare the two marks 'as a whole'. Looking at the two marks as a whole, there is no doubt that there is, in the words of the Supreme Court in JR Kapoor v Micronix India3 not the remotest chance of buyers and used being misguided or confused.

20. As to the likelihood of confusion, it is true that I have no material at all to substantiate this barring an invocation of the 'eye of the beholder', usually the judge. Increasingly, I find this to be a most fallible and unreliable test. It is unacceptably paternalistic and perhaps even a shade condescending. Perhaps at a time when industry and commerce lacked the means to gather swiftly public responses and reactions, marshall the data and then put it through a series of analytics, courts and lawyers had little choice. Those days are behind us. With the sophistication -- and speed -- of data gathering, the effect on a representative sample of consumers cannot be so hard to assess that courts must continue to perceive themselves helpless and without an option but to fall back on a mere assumption of what a consumer might or might not feel, say, think or believe. Why should we be so astute to believe that consumers are not? It is the consumer's preferences and known 'associations' that

3 1994 Supp (3) SCC 215.

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drive manufacturers to adopt a particular design or artwork or name. Yet we persist in the impression of a consumer who is not just of 'average intelligence and imperfect recollection' -- something that, incidentally, might equally well be said of lawyers and judges -- but is actually infantile and incapable of any sort of differentiation; and then we project this to all consumers. Perhaps the time has come to demand rather more than we are used to doing from plaintiffs seeking protection. Perhaps we need to accept that fair competition and open markets are often better judges of these matters than the ones in robes; and, certainly, that the latter should not so readily assume they always know better or are wiser than the former.

21. Whether or not we should make fine distinctions when looking at goods that, though in the same 'class', are used in distinct ways4 is a question that would arise if one found a similarity in the marks to begin with. One must guard as much against an approach that is overbroad, and sweeps in all manner of goods easily distinguished, and one that is much too narrow.5 Given the similarity of marks, the next step would then be to test similarity of goods. Intas' product is not adapted for medical use. The NICE classification to which Mr Kane refers (2016 version, 10th edition) in its entry for Class 5 says the class does not include meal replacements, dietetic food and beverages not for medical or veterinary use. If Intas' product is such a dietetic food, then that may be another point of distinction. But I do not need to go that far, on my finding that the two marks, as now used, as sufficiently distinguishable.

4 Indchemie Health Specialties Pvt Ltd v Intas Pharmaceuticals Ltd & Ors., 2015 (63) PTC 391 (Bom).

5 See British Sugar PLC v James Robertson & Sons Ltd, [1996] RPC 281.

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22. Is the public interest ill-served -- is it harmed -- by allowing Intas' product under its mark? There is no case that Intas' product is dangerous or spurious. Mr Kane's submission that the 'public interest' demands an injunction is not one that I can so readily accept. In Shaw Wallace & Co Ltd v Mohan Rocky Spring Water Breweries Ltd,6 this was the opinion expressed on the basis that the public needed to be protected from being deceived and misled. But that entire argument is posited, first, on similarity in marks being shown.

23. Given this, it is not really necessary to consider the welter of case law Mr Kane has put together in a compilation. The principles he advances are well-established: that a defendants' honesty of adoption is irrelevant when it comes to infringement; that the Intas knew of Ajanta's prior registration when the Registrar cited Ajanta's mark as a conflicting mark and so on.

24. Mr Kane's submission that in an infringement action, and where the plaintiff is the proprietor of a registered mark, balance of convenience plays a part only in unusual circumstances.7 But as Dr DY Chandrachud J (as he then was) said in Kamat Hotels (India) Ltd v Royal Orchid Hotels Ltd & Anr,8 considerations of the balance of convenience are not alien to infringement actions.9 But this

6 2006 (4) Mh LJ 396.

7 Poddar Tyres Ltd v Bedrock Sales Corporation Ltd, AIR 1993 Bom 237.

 8       2011 (47) PTC 111 (Bom).
 9       Chandrachud J seems to have doubted the correctness of the earlier

view in light of the Supreme Court decisions in Power Control Appliances v Sumeet Machines Pvt Ltd, (1994) 2 SCC 448; Wander Ltd v Antox India Pvt Ltd, (1990) Supp SCC 726; Mahendra & Mahendra Paper Mills Ltd v Mahindra & Mahindra Ltd, (2002) 2 SCC 147, and Khoday Distilleries Ltd v Scotch Whisky Association, (2008) 10 SCC 723.

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argument is of consequence only if I find there is similarity and then look to, say, Intas' sales.10 If no similarity is found and a prima facie is not made out, then there is no question of even having to consider the question of balance of convenience.

25. Finally, I believe there is a well-established sequence in which a claim in infringement and passing off (or either) should be examined. Though the causes of action are distinct, some of their tests overlap.11 Common to both is this sequencing: (1) are the marks identical? (2) if not, are they similar; (3) what is the nature and degree of similarity; (4) what goods or services are they being used on or for? (5) are those goods or services identical, or similar? The answers to these questions, in various permutations, yield a result. But I do not think it is possible to invert this paradigm, and suggest that because the goods are either the same or similar, therefore one must work backwards to conclude that the marks must be similar, or held to be similar, and therefore, infringement and passing off must both be presumed. Identity or similarity of marks must be the first test, not the assumption, and we proceed to the goods or services from there, not the other way around. That is self-evident.

26. It is not possible to hold that a prima facie is made out. The Motion fails. It is dismissed. There will be no order as to costs.

(G.S. PATEL, J.)

10 Notice of Motion paper book, p. 24. A total of about Rs.1.18 crores under the old mark.

11 Rustom & Hornby Ltd v Zamindara Engineering Co, AIR 1970 SC 1649.

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