Fdc Limited vs Mr. Ajay G. Piramal & Ors
2008 Latest Caselaw 1058 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

           IA 2265/2007 in CS(OS) 334/2008

                                                    Reserved on July 3, 2008
                                                 Date of Decision: July 18, 2008

+
      FDC LIMITED                                        ..... Plaintiff
                             Through Mr.Pravin Anand with Mr.Dhruv Anand,
                             Advocate.

                    versus

      MR. AJAY G. PIRAMAL & ORS                 ..... Defendants
                       Through Mr.Sudhir Chandra Aggarwal,
                       Sr.Advocate with Mr.Pravin Bahadur,
                       Ms.Meghalee, Ms.Kanika Gomber, Ms.Sudha
                       Malla and Mr.Rajan Narain, Advocate for
                       defendants No.1 to 3.

CORAM:
HON'BLE MR. JUSTICE S. RAVINDRA BHAT

      1.

Whether reporters of local papers may be allowed to see the judgment? Yes

2. To be referred to the Reporter or not? Yes

3. Whether the judgment should be reported Yes in the Digest?

%

Mr. Justice S. Ravindra Bhat:

1. This order will dispose IA No. 2265/08 in CS (OS) 334/2008, through

which the plaintiff seeks an ad-interim injunction, restraining the defendants from

infringing their trademark in their product "ELECTRAL".

2. The plaintiff is a company duly incorporated in India, having its registered

office in Aurangabad and also an office in Delhi from where it carries on its

business, of manufacturing medicinal and pharmaceutical formulations under a

variety of trademarks. It claims to have, in 1968, adopted the trademark 'Electral'

in respect of a medicinal preparation described as 'an oral formulation of

physiologically important electrolytes in a granular carbohydrate base', used for dealing with

dehydration due to diarrhoea, dysentery, shock etc. It is also averred that in

1973, the plaintiffs adopted a distinctively designed sachet/ wrapper label

containing an original artistic work, lay-out and get up, which included a peculiar

schematic arrangement of various features, paneling, blocks and a distinctive and

unique colour scheme of green, white and black colours. The plaintiffs have

obtained registrations under the Trade Marks Act, 1999 (hereafter " the Act") for

the word and for the label. Registrations were also obtained for the sachet and

for the label of the mango flavour of the medicinal preparation. Further, the

"Electral" label has also been registered under the Copyright Act, 1957 since

1972. The labels, sachets and the copies of the certificates in this regard gave

been produced.

3. The suit avers that the plaintiff is a market leader in the said

pharmaceutical preparation with a market share of 45.89% and has spent

considerable amount of resources for promoting its brand. Figures relating to

sales and promotional expenditure in this regard have been produced. These,

coupled with the excellence of its product, adhering to WHO standards, it is

averred, have resulted in tremendous goodwill and reputation not just among the

traders but also among the public. The plaintiff also claims that said mark has

acquired a secondary meaning in relation to the product. It is further averred that

the plaintiff has been vigilant about safeguarding its trademark and has pursued

litigation in various parts of the country.

4. It is stated that in February 2008, the plaintiff came to know about the

existence of the defendant's product 'ELECT-ORS' in relation to the same

medicinal formulation. It is averred that the defendants have intentionally used

different colour combinations for the prefix and suffix in their mark to

emphasize on 'ELECT', something the plaintiffs also use in their trademark. It

This, say the plaintiffs, makes the defendant's mark phonetically similar to their

mark. Further, the arrangement of text and antecedent graphics on the reverse of

the packaging of the defendant's product is deceptively similar to that of the

plaintiff, in that, the first column contains as identical graphic of a tumbler

containing a litre of water and a sachet of the product adjacent to it with an

arrow indicating that it is to be poured into the tumbler. The defendant also, it is

claimed, has copied the directions for use, although the plaintiff's instructions are

given in 14 languages while the defendant's are only in English and Hindi. It is

further claimed that second block containing particulars such as dosage,

indications, caution and storage are in exactly the same words as of the plaintiff's

with an identical arrangement of the sequence of instructions, has also been

copied. Such copying of the directions of use, etc, it is averred, is violation of the

copyright of the plaintiff in them. Also, the words 'Oral Rehyderation Salts I.P.'

appearing above the mark in a thinner font has been similarly copied along with

the practice of printing the brand name in Hindi along with English letters.

Moreover, it is claimed that the defendant's word mark uses 'ORS', a descriptive

element, in its suffix and its prefix contains 5 out of 8 letters. It is submitted that

such use by the defendant of its trademark, is an infringement of the plaintiff's

statutory rights and also amounts to passing off, as the defendants intentionally

and dishonestly attempt to appropriate the goodwill of the plaintiffs.

5. Mr. N. K. Kaul, learned senior counsel on behalf of the plaintiff

submitted that the generic name for the formulation is Oral Rehydration Salts

(ORS) and not electrolytes. An electrolyte is a liquid containing ions, which when

added to glucose, excipients and flavour result in an ORS. Notwithstanding that,

he contended that even a descriptive word was capable of being protected as a

trademark and distinguishing the goods of the proprietor once it had attained

secondary meaning. He argued that trademarks could be generic, laudatory or

descriptive and still capable of protection if due to prior and consistent use they

have acquired a secondary meaning. He relied on Caterpillar v. Mehtab Ahmed

(2002) PTC 438; Reddaway v. Banham (1896) RPC 218; Cadilla Healthcare Ltd. v.

Gujarat Co-Operative Milk Markteing Federation Ltd. (2008) PTC 168 Del; Info Edge

v. Shailaesh Gupta 2002(24) PTC 355 (Del) and Godfrey Philips v. Girnar Food &

Beverage, 2005 (30) PTC 1 in this regard.

6. Learned counsel relied on Globe Super Parts v. Blue Super Flame Industries,

AIR 1986 Del 245 to contend that common dictionary words are capable of

becoming trademarks if their collocation is coined. Marks that contain as

abbreviation, of an active ingredient, an organ or an ailment along with a second

invented component, as is in the case of 'Electral' (Elect-ral), he argued, render

the word the status of an invented mark and thereby, worthy of protection. In

support of this contention counsel relied on the decisions in USV Ltd. v. IPCA

Laboratories 2003(26) PTC 21 (Mad); Jamna Products v. Aravind Laboratories 2003

(27) PTC 409 (Mad) and Medley Laboratories (P) Ltd v. Lakem Laboratories Ltd. 2002

(25) PTC 592 (Bom). It was also argued on behalf of the plaintiff that one

proprietor might appropriate an abbreviation of the name of an active ingredient

as long as the entire active ingredient is not sought to be monopolized per se.

Smithkline Beecham v. Prakash Setia 2002 (25) PTC 482 was cited in this regard.

7. Learned counsel refuted the defendant's allegation that many

manufacturers of the same medicinal formulation were using the prefix 'Elect',

and submitted that third party usage is not a valid defense in a suit for

infringement. He relied on the decision reported as Reddy Pharmaceuticals v. Dr.

Reddy's Laboratories 2007 (35) PTC 868 (Del) (DB). He further urged that the

other manufacturers were using the prefix 'Elect' with different invented

components like ELECTROKIND, ELECTROBION, etc, whereas, the

defendant had used a generic prefix as well as a generic suffix.

8. It was next contended by Mr. Kaul that the in cases relating to medicinal

products public interest supports a lesser degree of proof to establish confusing

similarity and deception by the infringer can be more readily inferred. He argued

that in cases of pharmaceutical trademarks the test is a "prefixes" test and not a

"suffixes" test. In this context it was urged that suffixes (of products - in this

case, being the plaintiff's "TRAL" as opposed to the defendants "ORS") should

not be emphasized as they are usually dropped in speech. In support of the

contention he relied on Cadila Health Care v. Cadila Pharmaceuticals Ltd., (2001)

PTC 300 (SC); Ambalal Sarabhai v. Sara Pharmaceuticals 1982 PTC 214 and Bevit

Pharmaceuticals v. Planned Pharma 2003 (26) PTC 336 (Bom). He also argued that

trademark law emphasized on the similarities and not dissimilarities. Therefore,

even though the packing of two products are dissimilar, deceptively similarity can

yet be found because of phonetic similarity in the names. Furthermore, he

submitted that the price difference was not a relevant factor while deciding cases

relating to infringement of trademark.

9. Learned counsel next refuted the defendant's argument that chances of

confusion are reduced since these products are sold only be chemists and

pharmacists, who are people familiar with all brands of ORS formulations. He

submitted that the products in question were not Schedule H drugs, and even if

they were, it would an irrelevant factor in deciding deceptive similarity. He stated

that the customer is likely to be deceived when the mark is visually, phonetically

and structurally identical. To this extent he relied on Cadilla (supra) and Sanat

Products Ltd v. Glade Drugs 2003(27) PTC 525 (Del). Finally, relying on Midas

Hygiene v. Sudhir Bhatia 2004 (28) PTC 121 (SC) and Satyam Infoway Ltd. v. Sifynet

Solutions Pvt. Ltd AIR 2004 SC 3540, he submitted that in cases relating to

infringement of registered trademark, the question of balance of convenience

does not assume importance, and the mere fact that the defendant was doing

business under the infringing mark is not a reason to deny adequate relief.

Therefore, he submitted that the injunction sought for ought to be granted.

10. The defendant submits that both products are based WHO formulations,

which cannot be monopolized by any single manufacturer. It is averred that

there is no element of deception or deceptive similarity between the two marks.

It is contended that the naming of the product using a part of the name of the

active ingredient (in this case, 'Elect') is a common practice in the pharmaceutical

industry and cannot be considered as infringement. Most manufactures of

"ORS" used the term "Elect" in their marks such as 'Electrobion', "Electrokind',

'Electrowok' and even 'Electro'. It is pointed out that the plaintiff has not

chosen to initiate action against other manufacturers who employ the same

prefix in their trade-marks. It was also averred that the pricing of the two

competing products is different and therefore, there can be no question of

deceptive similarity. It is averred that the defendant has spent around Rs. 65

lakhs in sales promotion and advertisement of its product.

11. Learned senior counsel on behalf of the defendant, Mr. Sudhir Chandra,

submitted that the plaintiff cannot place emphasis on the word ELECT as it is a

common word, capable of several meanings. In the context of oral rehydration

salts (ORS) the expression is descriptive of one ingredient, i.e electrolyte. This is

common to all the products, which adhere to WHO standards. It was urged that

the court should consider, in an action for infringement, whether, keeping the

two products together, the infringing product or the product of the defendant is

such as would deceive the unwary customer into believing it to be the plaintiff's

product or mark.

12. Counsel submitted, in this context, that what is in issue is whether the

distinctive nature or distinctive elements of the marks appear to be copied. Counsel

submitted that no one can claim monopoly over the word "ELECT" in the facts

of this case, the word was used by the plaintiff to describe one active ingredient

in the product. The quarrel, it was contended, is whether the defendant's word

mark, visually and phonetically looked and sounded like the plaintiff's word

mark. It was therefore, necessary, according to counsel, to resort to the "overall"

test and see whether the packaging and "get up" contributed to the overall

deceptive similarity of the two products. If these were taken together, it was

urged, there were absolutely no similarities between the two competing marks.

13. Learned counsel then addressed the issue of phonetic similarity. He urged

that the prefix and suffix of the defendants mark are pronounced separately,

which is indicated through the break in the mark with distinct colour schemes.

He submitted that in the suffix 'ORS', each letter was to be pronounced

separately, (O'R'S) which is evident from the Hindi translation on the reverse of

the pack. He further drew the attention of the the court to the differences in the

colour scheme, logo design and the pattern of writing the name of the product

and submitted that there could be deceptive similarity between the two products.

Relying on Kaviraj Pandit Durga Dutt Sharma Vs. Navratna Pharmaceutical

Laboratories, AIR 1965 SC 980 and Hoffman La Roche v. Geofrey Manner & Co.

(1969) 2 SCC 716 counsel contended that the test to be applied is whether the

distinctive elements in the competing marks are deceptively similar. He

submitted that if due regard is given to the uncommon elements in the mark, in

the present case, due to the phonetic and visual dissimilarity between the

plaintiff's and defendant's mark, there can be no question of deceptive similarity.

14. Learned counsel relied on SBL Ltd v. Himalaya Drug Co. ¸67(1997) DLT

803 and submitted that the abbreviation of a generic name, which still conveys to

the buyer the original generic connotation of the abbreviated name, is still

generic. Further, he relied on Cadila (supra) to assert that while determining

deceptive similarity, the mark must be seen as a whole along with the packaging,

the class of purchasers who are going to buy the mark, the degree of

resemblances etc. Further reliance was also placed on Khandelwal Laboratories Ltd

v. FDC Ltd. 94 (2001) DLT 141 to urge that when many marks using the same

prefix or suffix exist in the market, it would be difficult to comprehend why only

one of them would be deceptively similar to the plaintiff's. Counsel also cited the

decision in Astra Zeneca v. Orchid Chemicals, 2007(34) PTC 469 (Delhi) (DB) to

urge that a part of the active ingredient which had become publici juris, used not

only by the plaintiff and the defendant but also by other manufacturers in the

market, could not be appropriated by one entity and therefore, injunction ought

not to be granted.

15. Learned Counsel finally argued that the copyright claim over the

directions of use, described at the reverse of the packaging of the plaintiff's

product, cannot be sustained. Relying on Eastern Book Company v. DB Modak

(2008) 1 SCC 1, he submitted that to claim copyright over a literary work,

something more than mere skill and labour expended would have to be shown.

Devoid of such modicum of creativity, he urged the plaintiffs could not claim

copyright over the directions of use and therefore, the defendants would not be

liable for infringement. Counsel submitted that in any case the text being

objected to would be changed, without in any manner conceding to the

plaintiff's copyright claim and ad-interim injunction on that score.

IA 2265/2007 in CS(OS) 334/2008 page No. 10 of 20

16. It would, be necessary, before discussing the merits of the rival contentions,

to extract the relevant provisions of the Act:

"Section 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 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; oir

(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

(c) its identity with the registered trade mark and the identity of the goods on 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.

(3) In any case falling under clause (c) of sub-section (2), the court shall presume that it is likely to cause confusion on the part of the public. (4) 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 -

(a) is identical with or similar to the registered trade mark; and

(b) is used in relation to goods or services which are not similar to those for which the trade mark is registered; and

(c) the registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. (5) A registered trade mark is infringed by a person if he uses such registered trade mark, as his trade name or part of his business concern dealing in goods or services in respect of which the trade mark is registered.

IA 2265/2007 in CS(OS) 334/2008                                  page No. 11 of 20
         (6)      For the purposes of this section, a person uses a registered mark, if,
        in particular, he -
        (a)      affixes it to goods or the packaging thereof;
        (c)      offers or exposes goods for sale, puts them on the market, or stocks

them for those purposes under the registered trade mark, or offers or supplies services under the registered trade mark;

(d) uses the registered trade mark on business papers or in advertising.

(7) A registered trade mark is infringed by a person who applies such registered trade mark to a material intended to be used for labeling or packaging goods, as a business paper, or for advertising goods or services, provided such person, when he applied the mark, knew or had reason to believe that the application of the mark was not duly authorized by the proprietor or a licensee.

(8) A registered trade mark is infringed by any advertising of that tade mark if such advertising-

a) takes unfair advantage of and is contrary to honest practices in industrial or commercial matters; or

b) is detrimental to its distinctive character; or

c) is against the reputation of the trade mark.

(9) Where the distinctive elements of a registered trade mark consist of or include words, the trade mark may be infringed by the spoken use of those words as well as by their visual representation and reference in this section to the use of a mark shall construed accordingly.

17. Section 29 of the Act, differs considerably from section 29 and section 30

of the Trademarks and Merchandise Act, 1958. It elaborates the circumstances

under which infringement of registered trademarks can occur. Section 29(1) deals

with a situation wherein the defendant uses a mark, which is identical or

deceptively similar to that of the plaintiff, in respect of the same goods or

services, and in such manner that it is likely that such use is taken as being an use

as a trademark. Therefore, to fall within section 29(1), the defendant's use of the

mark must be so, that it is likely to lead the public to assume that its mark is

IA 2265/2007 in CS(OS) 334/2008 page No. 12 of 20 used as the plaintiff's trademark. Section 29(2) deals with three situations- one,

where the defendant's mark is identical to that of the plaintiff and in respect of

similar goods. The second eventuality is where the marks are similar and in

respect of goods which are identical or similar. The third eventuality is where,

the marks as well as the goods are identical. To constitute infringement, it is not

sufficient to satisfy one of these; it will also have to be proved that such use by

the defendant is likely to cause confusion on the part of the public or is likely to

have an association with the registered mark. Section 29(3) states that where

both the mark and the goods in respect of the marks are identical, then the court

shall presume that such use by the defendant is likely to cause confusion on the

part of the public. Section 29(4) on the other hand deals with cases where the

marks are identical or similar but the goods with respect to those marks are not

similar.

18. The court here has to consider if the present case falls under section

29(2), since the marks are similar and are in relation to identical goods. In order

to obtain the relief claimed for, the plaintiff will then have to demonstrate that

prima facie, the defendant's mark is deceptively and confusingly similar to that of

the plaintiff.

19. In Godfrey Philips India v. Girnar Food and Beverages, 2005 (30) PTC 1 (SC)

and Indian Shaving Produtcs . Gift Pack, 1998 (18) PTC 698, it was held that even

descriptive marks are capable of registration as trademarks, and their

IA 2265/2007 in CS(OS) 334/2008 page No. 13 of 20 unauthorized use can amount to infringement, provided they attain that level

distinctiveness, through sustained use and reputation, that a mere use of such

generic term would immediately signify the plaintiff as its manufacturer.

Therefore, in order to so find, that use of a descriptive term or a term that is

publici juris, amounts to infringement, the plaintiff must establish that use of the

term has become synonymous with its mark, or that the reputation of the mark is

of such nature that the public is likely to get confused and would attribute the

defendants' goods to the plaintiff's. The more descriptive the term employed or

alleged to be infringing, higher the standard of evidence required to establish that

term has in fact acquired secondary meaning and thereby, attained

distinctiveness.

20. As to the standard of evidence required to demonstrate distinctiveness, it

was held, in British Sugar [1996] RPC 281, that:

"There is an unspoken and illogical assumption that use equals distinctiveness. The illogicality can be seen from a example: no matter how much use a manufacturer made of the word "Soap" as a purported trade mark for soap the word would not be distinctive of his goods."

(internal quotes omitted)

In Bach Flower Remedies, [2000] RPC 513, the Court observed that:

"First, use of a mark does not prove that the mark is distinctive. Increased use, of itself, does not so either. The use and increased use must be in a distinctive sense to have any materiality."

In Broadhead (1950) 67 RPC 209, the Court, following the observation of Lord

Russell in the much celebrated Coca Cola of Canada v. Pepsi Cola of Canada (1942)

IA 2265/2007 in CS(OS) 334/2008 page No. 14 of 20 59 RPC 127, stated:

"Where you get a common denominator, you must in looking at the competing formulae pay much more regard to the parts of the formulae which are not common-although it does not flow from that that you must treat words as though the common part was not there at all."

21. The Supreme Court, in Kaviraj Pandit Durga Dutt (supra) observed as follows:

"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, in deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exit to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff."

22. Later, the Supreme Court, in Hofffman La Roche (supra) approvingly quoted

the following test for the comparison of marks from Pionotist Co., Ltd.'s

Application, 23 R.P.C. 774:

"You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion- that is to say, not necessarily that one man will be injured and the other will gain illicit benefit,

IA 2265/2007 in CS(OS) 334/2008 page No. 15 of 20 but that there will be a confusion in the mind of the public which will lead to confusion in the goods-then you may refuse the registration, or rather you must refuse the registration in that case."

The Court then proceeded to apply this test to the case at hand and observed:

"In order to decide whether the word "DROPOVIT" is deceptively similar to the word "PROTOVIT" each of the two words must, therefore, be taken as a whole word. Each of the two words consists of eight letters, the last three letters are common, and in the uncommon part the first two are consonants, the next is the same vowel 'o', the next is a consonant and the fifth is again a common vowel 'o'. The combined effect is to produce an alliteration. The affidavits of the appellant indicate that the last three letters "VIT" is a well known common abbreviation used in the pharmaceutical trade to denote Vitamin preparations. In his affidavit dated January 11, 1961 Frank Murdoch, has referred to the existence on the Register of about 57 trade marks which have the common suffix "VIT" indicating that the goods are vitamin preparations. It is apparent that the terminal syllable "VIT" in the two marks is both descriptive and common to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters 'D' and 'P' in "DROPOVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view." (emphasis supplied)

23. This view was followed in JR Kapoor v. Micronix India , (1994) Supp 3 SCC

215, where the Court set aside the interim injunction in relation to the marks

'Micronix' and 'Microtel'. Closer home, a Division Bench of this court, in SBL

Ltd. (supra), after observing that descriptive marks are inherently in capable of

being appropriated and protected, until they assume a secondary meaning, held

as follows:

"(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

IA 2265/2007 in CS(OS) 334/2008 page No. 16 of 20 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. (4) Whether such feature is public juris or geris is a question of fact. (5) 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 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 or customer? The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc., used on the packing also assume significance."

24. The court proceeded to hold that, on a consideration of the competing

marks as a whole, there was no deceptive similarity between 'Liv.52' and 'Liv-T'.

A Division Bench of this Court in Astrazeneca UK Ltd v. Orchid Chemicals 2007

(34) PTC 469 followed these principles and concluded that the prefix 'Mero' had

become publici juris, and concluded that the marks 'Meronem' and 'Meromer' are

prima facie dissimilar to each other. In Apex Laboratories v. Zuventus Helath Care

2006 (33) PTC 492 (Mad) (DB) a similar proposition of law was articulated and a

similar conclusion arrived at in relation the marks 'Zincovit' and 'Zinconia'. The

Court specifically reasoned that there was no visual or phonetic similarity and

therefore, no deceptive similarity.

25. The courts have held that third party usage of the same or similar mark is

not a defense in an action for infringement. However, their existence, according

to this Court, is relevant for the purposes of ascertaining the descriptive nature

of the mark in question, and is also relevant for determining likelihood of

confusion. In this regard, it might be pertinent to recall the observation made by

IA 2265/2007 in CS(OS) 334/2008 page No. 17 of 20 this Court in Khandelwal Laboratories v. FDC Ltd 94 (2001) DLT 141:

"When there can be same medicinal products marketed by different companies with the use of CEF as part of the trade name, namely, cefo, cefix, cefu, ceff, ceffex, cefixe, cefox and cifex etc. which are more similar or nearer to the plaintiff's trade mark phonetically as well as alphabetically, and when all such trade marks can co-exist in the market without causing any deception or confusion it is beyond comprehension that the defendant's trade mark ZIFI which starts with alphabet-Z would cause any confusion of deception." (emphasis supplied)

26. With the above understanding of the state of law it is now necessary to

consider whether the defendant's mark is deceptively similar to the plaintiff's

mark. A look at the documents produced by both parties would reveal that there

are at least four brands using the prefix 'Elect', in relation to the identical

formulation; 'Electrobion', 'Electrowok', "Electrokind' and 'Electro'. All of them

on their respective packaging use the term 'ORS' or the phrase 'Oral Rehydration

Salts' and the phrase 'Based on WHO formula' in a prominent manner. Also, on

the reverse of the packaging, in more or less similar fashion all of them indicate

the dosage, instructions for use, storage and caution. The search report

produced by the defendants indicates that at least 26 marks using the prefix

'Elect' have applied for registration or have been registered in relation to

pharmaceutical products and medicines.

27. It is appropriate to compare the visual representation of both marks. The

plaintiff's word mark is written in bold black alphabets, in capitals and on a white

background. The packaging is done with a combination of black, white and

IA 2265/2007 in CS(OS) 334/2008 page No. 18 of 20 green colours, with the use of green colour predominating. In contrast, the

defendant predominantly uses white and orange, with black lettering. Its word

mark is split into two parts; the term 'ELECT' is in black print, in orange

background, in a smaller font compared to the plaintiffs; the second part 'O-R-S'

is printed in black on a white background. The orange colour as well as graphic

representations of slices of orange fruit make are sufficiently distinctive and

distinguish the defendant's mark, from the plaintiff's marks.

28. Now, the consideration of phonetic similarity. "Elect" is the common

factor between the plaintiff and the defendant. The five out of eight (common)

letters shared by the two competing marks argument made by the plaintiff, in the

opinion of the court is tenuous. Elect is a common word, with multiple

meanings. In relation to Oral Hydration Salts, it is the acronym of an active

ingredient, ie, electrolyte. The latter parts of the two marks are "TRAL"

(plaintiff) and "O'R'S" (Defendants). The two words sound different, if one

keeps in mind that the pronunciation of the defendants' mark is based upon

distinct utterance of each of the last three letters. Even otherwise, the "O" sound

predominates in the defendant's word, whereas the plaintiff's word markedly

depends on the "R" sound. In these circumstances, there should be

overwhelming evidence to show distinctiveness of the plaintiff's mark in relation

to a generic mark. The courts - particularly English and Canadian courts- while

dealing with such generic word marks, in relation to goods where the claimant

IA 2265/2007 in CS(OS) 334/2008 page No. 19 of 20 has a de facto monopoly, also held ( See Imperial Tobacco Co-vs- Purnell 1904 (21)

RPC 598 (CA) Imperial Group -vs- Phillip Morris 1984 RPC 293 and Canadian

Shredded Wheat Co. Ltd -vs- Kellog Co of Canada Ltd 1938 (1) All ER 618) that

when the claimant has the legal or de facto monopoly in certain goods it is likely that

the mark will become associated with it even under their generic name, but that

does not prove that the name, or the appearance of the goods has become

distinctive.

29. As far as the claim for copyright infringement is concerned, the court is

not ruling on it, in view of the statement of the defendants, that they would

change the objectionable material, i.e the instructions.

30. In view of the above discussion, the court is of the opinion that the

plaintiff has been unable to establish, prima facie, that the defendant's trademark

ELECT- ORS infringes its (the plaintiffs') registered trademark ELECTRAL, or

that it (the plaintiff) is entitled to temporary injunctive relief. The application, IA

2265/2008 is accordingly dismissed.

DATED 18, 2008                                       (S. RAVINDRA BHAT)
                                                                JUDGE




IA 2265/2007 in CS(OS) 334/2008                            page No. 20 of 20