Wockhardt Limited vs Dua Pharmaceutical Pvt. Ltd.
1997 Latest Caselaw 969 Del

JUDGMENT

S.N. Kapoor, J.

(1) This order shall dispose of an application under Order 39 Rule 1 & 2 as well as I.A. No.836/94 in Suit No. 208/94.

(2) The plaintiff seeks ad-interim injunction for restraining defendants, their servants, stockists, distributors, agents and retailers etc. from manufacturing, selling, offering for sale, advertising directly or indirectly dealing in pharmaceutical preparations under the impugned trade mark "SPASMA PROXY-N" and its deceptive carton and blister packs or from using any trade mark/marks and/or cartons which are identical to or deceptively similar to the plaintiffs trade mark "SPASMO PROXYV ON" and further from doing any other thing as is likely to lead to passing-off its goods and business as the goods and business of the plaintiffs.

(3) According to the plaintiffs version the plaintiff company is a limited company duly incorporated under the Indian Companies Act, 1956 and the suit has been filed by Shri M. Mirza its duly constituted attorney vide Power of Attorney dated 11th October, 1993. The plaintiffs commenced its business in the year 1963 and is one of the leading manufacturers of pharmaceutical and medicinal preparations in India, marketing a wide range of pharmaceutical preparations, bio-agro products, bulk drugs and food supplement for the past three decades.

(4) The plaintiff in the year 1977 adopted a trade mark "SPASMO PROXYON". It is an invented and coined word. Apart from the common law rights vested by virtue of prior adoption and use, the said trade mark "SPASMO PROXYV ON" is also registered under the provisions of the Trade & Merchandise Marks Act, 1958 (hereinafter referred to as 'the Act') in favour of the plaintiff under No.327582 in Class-5. The registration being more than seven years old and being registered in part A of the Register, conclusively valid under Section 32 of the said Act. This medicinal preparation is being sold for the last 15 years and as such required a reputation of being extremely safe and reliable drug originating from the plaintiffs company exclusively. The plaintiff had undertaken extensive advertising by spending lacks of rupees in medical journals which have been extensively distributed to a large number of medical institutions, pharmacies and drug stores throughout the country and has conducted sales of "SPASMO PROXYV ON" worth crores of rupees. The products of the plaintiff under the trade mark "SPASMO PROXYV ON" are packed in cartons, characterised by distinctive features, get-up, colour combination and lay-out having packings of 20 strips of 6 capsules each or 18 strips of 8 capsules each like Annexure B-1 and B-2. On account of superior quality of the said goods and the established market for over 16 years the plaintiffs sought exclusive right to use the respective trade mark.

(5) Recently it has come to the knowledge of the plaintiff that the defendant has launched a similar product bearing a deceptively similar trade mark "SPASMA-PROXY-N". The get-up, design, placement and colour combination appearing on the packing cartons and the blister packings in which the pharmaceutical preparations of the defendants are being sold are deceptively similar to that being used by the plaintiff. The said fact is evident on a bare perusal of the two packings. The corresponding outer-cartons of the plaintiffs and defendants have been annexed as Annexure C-1 and C-2 to the plaint. This adoption is actuated by malafides with an intention to encash upon the goodwill and reputation belonging to the plaintiff. The adoption and use of the trade mark "SPASMA PROXY-N" and the packings thereto which are visually, phonetically and/or structurally similar to the packings and the registered trade mark "SPASMO PROXYV ON" of the plaintiff in respect of the said medicinal preparations is bound to lead to confusion and deception amongst the public and trade and would create an impression that the defendant's products are in some way connected with the products of the plaintiff. This is likely to cause damage and injury both to the plaintiffs business and to its goodwill and reputation especially because the defendants are only selling half the recommended therapeutic dosage and in the process cheating the public at large. The goods of both are cognate and allied nature having identical trading channel and sold to the same class of purchasers. The mischievous intentions of the defendants is apparent from the fact that the defendants have even copied the colour combination of the plaintiff's capsules namely blue. That the use of the trade mark "SPASMA PROXY-N" alongwith its packings is not only likely to cause confusion and deception but is actually causing confusion and deception. Though being scheduled drugs it could be administered only upon the prescription of a registered medical practitioner but in actual practice sold to patients by chemists even without valid prescriptions. An expert doctor or a specialised chemists may not be confused or deceived, it is the deception and confusion of the public which should be a determining factor. As such suit for perpetual injunction restraining them as referred to above and in connection with the above said the present application has been filed for seeking ad interim injunction.

(6) The defendants are contesting the suit as well as the application on various grounds. The defendant was granted the licence to manufacture pharmaceutical products for the first time in the year 1980 by the Haryana State Drug Controller. The defendant has got the name as well as contents and formulation of its product "SPASMA PROXY-N" approved from the State Drug Controller Haryana vide letter dated 19th April, 1993. Licence of the defendant for manufacturing has been renewed from time to time. The word 'SPASM' is a common word which meant for a certain disease and it is being used as first name with various other medicines such as Spasmindon, Spasmizol, Spasmodic Forte etc. The defendant is not using the word of plaintiff but a different word and hence there is no visual or phonetic similarity between 'PROXYV ON' And 'PROXY-N'. The word 'N' is not used for any medical terminology or medicine. That 'N' is nowhere used for 'NEOMYCIN'. The drug could not be sold without the prescription of the registered medical practitioners. Since on the prescription name of the medicine is written by the doctor himself and sold by a licensed and qualified and registered pharmacist/chemist, there is no question of passing off.

(7) In all such matters the crucial tests to be applied for judging an infringement action or a passing off action in the field of medicinal and pharmaceutical preparations remain the same as are applicable to other goods. However, in the case of preparations trading whereof is governed by statutory rules or regulations, additional considerations become relevant. They are: 1. (i) the manner in which the trade is carried on, such as sales being made only by authorised or licensed vendors who will be educated, also having special knowledge of medicines and pharmacy (ii) the class of persons who would be the purchasers - whether they would be accompanied by doctor's prescription and would in all probability remain in touch with doctor while consuming the medicine purchased. The Court would ask - Is there such a similarity between the two trade marks that a doctor or a chemist or the both by some carelessness in expression, some obscurity in handwriting, some slip of recollection or some careless mistake not expected of a trained professional like doctor or chemist might lead to the one being confused for the other? Regard shall be had not to the hypothetical possibilities as applied to the circumstances of an individual case.

(8) (2) The decision on the question of likelihood of deception is to be left to the Court.

(9) (3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become public juris. In the trade of drugs it is common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public juris or generic cannot be owned by anyone for use as trade mark.

(10) (4) Whether such feature is public juris or generic is a question of fact.

(11) If the two trade marks by two competing traders use a generic word or an expression public juris common to both the trade marks it has to be seen if the customers who purchase the goods would be guided by the use of such word or expression or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. The primary question to be asked is what would remain in the memory of customer? The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc. used on the packing also assume significance.

(12) It is apparent that the registered trade mark of the plaintiff Spasmo Proxyv on and impugned trade mark of defendant Spasma PROXY-N though not absolutely similar yet they are so deceptively similar in view of the colour combination and phonetic similarity that there is bound to be confusion and deception. Similar colour combination coupled with similar type of descriptions adds a lot of force in the submissions made by the learned counsel for the plaintiff. There are only two differences, firstly of letter 'O' in the case of plaintiff's trade mark and 'A' in the case of defendant's trade mark after the work 'Spasm'. The word 'spasm' again though a generic word but it has acquired a specific meaning when used in the trade mark Spasmo Proxyv on which forms a composite word. It cannot be said that such an invented and coined word could not be absolutely owned by the plaintiff. According to the certified copy of the registration of the trade mark it appears that Spasmo Proxyv on was registered for the first time on 4th August, 1977 and renewed on 4th August, 1984 and again renewed for a period of seven years on 4th August, 1991. The plaintiff has also filed copy of invoices starting from 12th July, 1986 till 8th July, 1990. The defendant on the other hand has not filed any document in this case though there is a document in the file of Suit No.1212/94 filed by the defendant which indicated that the plaintiffs had applied for drug licence for the first time on 16th June, 1981 for Spasma proxy-N. This is certainly of subsequent date and not prior to 1977. Consequently one has to say that the plaintiffs have made out a strong prima facie case against the defendants and in view of the prior user of the trade mark the balance of convenience is also in favour of the plaintiffs. They will surely suffer irreparable loss in case ad interim injunction is not granted as sought for.

(13) Accordingly, I allow this application and restrain the defendants themselves, their servants, stockists, distributors, agents and retailers etc. from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in pharmaceutical preparations under the impugned trade mark "SPASMA PROXY-N" and its deceptive carton and blister packs or from using any trade mark/marks and/or cartons which are identical to or deceptively similar to the plaintiffs trade mark "SPASMO PROXYV ON" and further from doing any other thing as is likely to lead to passing-off its goods and business as the goods and business of the plaintiffs.

(14) This restraint order is subject to the condition that the plaintiff shall file an undertaking within four weeks to the effect that in case the suit is ultimately dismissed the plaintiff shall reimburse the loss or profits which is likely to be caused and estimated at 150% of the average net profit of the defendants earned during last five years by producing the drug as shown in audited books of accounts of the defendants.

(15) I.A. No. 836/94 is disposed of accordingly. Suit No. 208/94

(16) List the matter on 12.1.1998 for the further proceedings.