Delhi High Court

Schering Corporation & Ors vs Alkem Laboratories Ltd. on 4 July, 2008

Author: Badar Durrez Ahmed

THE HIGH COURT OF DELHI AT NEW DELHI

% Judgment delivered on: 04.07.2008

+ IA No. 4555/2007 in CS (OS) 730/2007 (u/O 39 R 1 & 2 CPC) &
IA No. 6041/2007 in CS (OS) 730/2007 (u/O 39 R 4 CPC)

SCHERING CORPORATION & ORS ... Plaintiffs

- versus -

ALKEM LABORATORIES LTD. ...Defendant

Advocates who appeared in this case:
For the Plaintiffs : Mr Sachin Datta with Mr Amit Mehta and Mr Ritesh Singh
For the Defendant : Mr Valmiki Mehta, Sr Advocate with Ms Ishani Sahiwal,
Mr Mahesh and Ms Akanksha

CORAM:-
HON'BLE MR JUSTICE BADAR DURREZ AHMED

1. Whether Reporters of local papers may be allowed to see the
judgment ?

2. To be referred to the Reporter or not ?

3. Whether the judgment should be reported in Digest ?

BADAR DURREZ AHMED, J

1. IA 4555/2007 has been filed under Order 39 Rules 1 and 2 of the

Code of Civil Procedure, 1908 (hereinafter referred to as the ‗CPC') by the

plaintiffs seeking an ad-interim injunction restraining the defendant from

using the mark ‗TEMOKEM' in respect of the pharmaceutical product --

Temozolomide -- on the ground that the mark ‗TEMOKEM' is deceptively

similar to the plaintiffs' registered trademarks ‗TEMODAL' and

‗TEMODAR' in relation to the very same pharmaceutical product --

Temozolomide. IA No. 6041/2007 has been filed under the provisions of

Order 39 Rule 4 CPC by the defendant seeking the vacation of the ex parte

order passed in IA No. 4555/2007 on 23.04.2007 whereby the defendant

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.1 of 18
was restrained from launching /using, advertising, promoting, stocking,

offering for sale or distributing or otherwise using the trademark

‗TEMOKEM' or any other mark deceptively or confusingly similar to that

of the plaintiff's registered trademarks ‗TEMODAL/ TEMODAR' in

relation to drugs used for treatment of brain cancer. The plaintiffs seek the

confirmation of the order dated 23.04.2007 till the disposal of the suit and

the defendant seeks the vacation of the same.

2. The case of the plaintiffs is that their predecessor synthesized the

compound Temozolomide in 1984. Through 15 years of research and

development by the plaintiffs, the said compound was found to be useful as

a drug for treatment of brain cancer. Temozolomide, according to Wikipedia

-- an encyclopaedia on the internet, is an oral alkylating agent used for the

treatment of refractory anaplastic astrocytoma-- a type of cancerous brain

tumor. Temozolomide is a derivative of imidazotetrazine. According to

the plaintiffs, in 1999 they applied the pre-existing mark ‗TEMODAL' in

respect of the drug (Temozolomide) and that from 1999 to 2004 the

plaintiffs were the sole users of the mark ‗TEMODAL'. In 2004 some

Indian manufacturers used similar names.

3. The mark ‗TEMODAL' was registered in favour of the plaintiff

No. 3 in India vide registration No. 687936 with effect from 23.11.1995 in

Class 5 which, inter alia, related to pharmaceuticals including alkylating

cytotoxic agents for the treatment of various types of cancer. Similarly, the

mark ‗TEMODAR' was also registered in favour of the plaintiff No. 3 in

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.2 of 18
India vide registration No. 888816 with effect from 29.11.1999 under the

said Class 5.

4. It was contended on behalf of the plaintiffs that the plaintiffs had

exclusive rights in respect of the registered trademarks ‗TEMODAL' and

‗TEMODAR' and that the defendant's mark ‗TEMOKEM' used for the very

same drug -- Temozolomide-- constituted an infringement of the plaintiffs'

registered trademarks and, therefore, the plaintiffs were entitled,

straightaway, to an interim injunction restraining the defendant from using

the mark ‗TEMOKEM'. It was also contended on behalf of the plaintiffs

that while the plaintiffs' trademarks were registered, the defendant's

trademark was not registered. It was also contended that ‗TEMODAL' and

‗TEMODAR' have acquired distinctiveness and are well-known and the

said marks were used by the plaintiffs worldwide. It was also contended

that the prefix ‗TEMO' constituted an essential feature of the plaintiffs' said

registered trademarks and the same could not be appropriated by the

defendant. It was contended that the prefix ‗TEMO' could only be used

exclusively by the plaintiffs and by no other person. It was also contended

that while there have been infringements in India inasmuch as since 2004

some persons have used the prefix ‗TEMO' in respect of their products

involving Temozolomide, such infringements have not been rampant and

that the plaintiffs have taken recourse to law in respect of all such alleged

infringers which have come to the notice of the plaintiffs. On behalf of the

plaintiffs reliance was placed on:-

(1) Astrazeneca UK Ltd. & Anr. V. Orchid Chemicals &
Pharmaceuticals Ltd.: 2007 III AD (Delhi) 430;

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.3 of 18
(2) Heinz Italia and Anr. v. Dabur India Ltd: (2007) 6 SCC 1;

(3) Bhagwan Dass Gupta v. Shiv Shankar Tirath Yatra Co. Pvt.
Ltd.: 2001 V AD (Delhi) 663;

(4) Milmet Oftho Industries & Ors. v. Allergan Inc.: (2004) 12 SCC
624;

(5) Pfizer Ireland Pharmaceuticals v. Intas Pharmaceuticals &
Anr.: (2004) 28 PTC 456 (Del.);

(6) Hoechst Pharmaceuticals Ltd. & Ors. v. Government of India &
Ors.: 1983 PTC 265 (Del.) (DB);

(7) Ramdev Food Products (P) Ltd. v. Arvindbhai Rambhai Patel &
Ors.: (2006) 8 SCC 726.

5. On behalf of the defendant it was contended that Temozolomide

was a generic word referring to a particular chemical compound being a

derivative of imidazotetrazine. It was submitted that consequently

Temozolomide was publici juris. ‗TEMO' being an abbreviation of

Temozolomide would, therefore, also be publici juris. In this background,

it was submitted that the term ‗TEMO' being publici juris could be adopted

by anyone as a part of his trademark in respect of the chemical compound

Temozolomide. It was contended that the defendant has taken a part of the

word Temozolomide and combined it with a part of its company name:

‗TEMO' from Temozolomide and ‗KEM' from Alkem Laboratories Limited

(i.e, the defendant's name).

6. It was also contended that there is no deceptive similarity

between the plaintiffs' registered marks ‗TEMODAL' and ‗TEMODAR'

and the defendant's mark ‗TEMOKEM'. It was further submitted that if the

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.4 of 18
prefix is derived from a salt/ compound, as in the present case the term

‗TEMO' is derived from Temozolomide, then the emphasis should be on

comparing the suffixes by ignoring the common prefix. Employing this

test, it is apparent, according to the learned counsel for the defendant, that

‗DAL' and ‗DAR' are entirely dissimilar from ‗KEM'. Consequently, it

was submitted that the basic ingredient for an infringement action, of

deceptive similarity, is not satisfied and, therefore, the plaintiffs would not

be entitled to any injunction.

7. It was also contended that apart from the visual and phonetic

dissimilarity between the plaintiffs' registered trademarks and the trademark

of the defendant, the price ranges of the products are so distinct that no

reasonable person would confuse the product of the defendant as that of the

plaintiffs and, therefore, there is no question of there being any possibility

of deception. It was submitted that 5 capsules of 100 mg each of

TEMODAL / TEMODAR are sold for Rs 33,602/- whereas 5 capsules of

100 mg each of ‗TEMOKEM' sell for only Rs 6,300/-. It is apparent that

the price of the plaintiffs' product is approximately six times the price of the

defendant's product. It was contended on behalf of the defendant that this

stark difference in price is an important factor to be kept in mind while

taking a decision on the question of deceptive similarity.

8. It was also contended on behalf of the defendant that the

defendant has honestly adopted its trademark and that it is the usual practice

of the defendant in adopting a trademark in respect of its pharmaceutical

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.5 of 18
products by taking the prefix from the name of the salt/ chemical compound

and attaching the suffix ‗KEM' which forms part of the defendant's name.

It was also contended that the defendant is not a fly-by-night operator and is

an established concern.

9. Another factor which was highlighted is that Temozolomide is a

Schedule ‗H' drug under the Drugs and Cosmetics Act, 1940 and the Drugs

and Cosmetics Rules 1945, which implies that it can only be sold in retail

on the prescription of a registered medical practioner. In other words,

Temozolomide whether it is sold under the plaintiffs' mark ‗TEMODAL/

TEMODAR' or under the defendant's mark ‗TEMOKEM', can only be sold

upon prescription of a registered medical practioner. It was contended on

behalf of the defendant that this is also an important aspect which has to be

kept in mind when the question of deception is being considered.

10. The learned counsel for the defendant placed reliance on:-

(1) Astrazeneca (supra);

(2) Kalindi Medicure Pvt. Ltd. v. Intas Pharmaceuticals Ltd. and
Anr.: 2007 (34) PTC 18 (Del.);

(3) Cadila Laboratories Ltd. v. Dabur India Ltd.: 1997 PTC (17)
(Del.)

11. In rejoinder, the learned counsel for the plaintiffs contended that

as the plaintiffs' marks were well-known, the argument of publici juris was

not available to the defendant. He submitted that the term ‗TEMO' is only

suggestive of Temozolomide and cannot be regarded as a substitute or an

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.6 of 18
abbreviation of Temozolomide. Consequently, although Temozolomide is

publici juris, the term ‗TEMO' cannot be regarded as publici juris.

12. The entire controversy in the present case is whether the

defendant's mark ‗TEMOKEM' is deceptively similar to the plaintiffs'

registered trademarks ‗TEMODAL' and ‗TEMODAR'. There is no doubt

that registration of a trademark gives the registered proprietor thereof the

exclusive right to the use of the trademark in relation to the goods or

services in respect of which the trademark is registered and to obtain relief

in respect of infringement of the trademark in the manner provided under

the Trademarks Act, 1999 (hereinafter referred to as the ‗said Act'). This is

stipulated in Section 28 (1) of the said Act. There is no doubt that the

plaintiffs' trademarks ‗TEMODAL' and ‗TEMODAR' are registered in their

favour in relation to, inter alia, pharmaceuticals (including alkylating

cytotoxic agents for the treatment of various types of cancer) which include

the chemical compound Temozolomide. Clearly, the plaintiffs have the

exclusive right to use the marks ‗TEMODAL' and ‗TEMODAR' in respect

of Temozolomide.

13. However, in order to establish infringement of the said registered

marks, the plaintiffs would have to bring the case within the ambit of

Section 29 of the said Act. Sub-Section (1) of Section 29 specifically

stipulates that 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

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.7 of 18
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. In the context of the facts

of the present case, it is apparent that the mark ‗TEMOKEM' is not a

registered trademark. It is also apparent that the defendant's mark is not

identical with the plaintiffs' registered trademarks. It is also clear that the

defendant's trademark and the plaintiffs' trademarks are in relation to the

very same goods, i.e, Temozolomide. Therefore, the only question that has

to be examined is whether the defendant's mark is deceptively similar to the

plaintiffs' registered trademarks.

14. It is obvious that the term ‗TEMO' used in the plaintiffs'

registered trademarks as well as in the defendant's mark is derived from the

name of the chemical compound Temozolomide. To the said term ‗TEMO',

the plaintiffs have added the suffixes ‗DAL' and ‗DAR' to arrive at the

trademarks ‗TEMODAL' and ‗TEMODAR' respectively. On the other

hand, the defendant has added the suffix ‗KEM', which is part of its

company name, to arrive at the trademark ‗TEMOKEM'. All the

trademarks in this case, be they the plaintiffs' registered trademarks or the

defendant's trademark are what are described as portmanteau words. A

portmanteau word is used to describe a linguistic blend, namely, a word

formed by blending sounds from two or more distinct words and combining

their meanings. Examples of portmanteau words are -- brunch (breakfast +

lunch); Tanzania (Tanganyika + Zanzibar). As per the Wikipedia,

portmanteaus can also be created by attaching a prefix or suffix from one

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.8 of 18
word to give that association to other words. For example, the suffix

‗holism' or ‗holic' taken from the word ‗alcoholism' or ‗alcoholic' can be

added to a noun, creating a word that describes an addiction to that noun.

For example, chocoholic means a person who is addicted to chocolate and

workaholic means a person who is addicted to work and so on. Portmanteau

words can also be used to describe bilingual speakers who use words from

both languages while speaking. For instance, a person would be considered

speaking ‗spanglish' if he is using both spanish and english words at the

same time. Similarly, the portmanteau word ‗hinglish' would refer to the

usage of hindi and english words at the same time.

15. This discussion makes it clear that parts of words can be

combined to pack the meanings of both the words in the new word so

formed. The defendant has been able to show the derivation of the

trademark ‗TEMOKEM'. ‗TEMO' from Temozolomide and ‗KEM' from

Alkem Laboratories Limited. The combined effect of ‗TEMO' and ‗KEM'

would be Temozolomide manufactured by Alkem Laboratories.

16. In Kalindi Medicure Pvt. Ltd. (supra), a learned Single Judge of

this Court considered the question as to whether the defendants' trademark

‗LOPARIN' was deceptively similar to the plaintiff's registered trademark

‗LOPRIN' in respect of pharmaceutical products. In that decision the

learned judge took the view that in the pharmaceutical trade, one finds

names of various drugs almost similar to each other, having common

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.9 of 18
prefixes or suffixes, for the reason that the name of the drug conveys as to

which salt/ compound it is a derivative of. The learned judge also indicated

that the method of intake of a drug by a person is also an important factor.

Taking this into consideration, the learned judge decided to vacate the ex

parte injunction which had been earlier granted because ‗LOPRIN' was sold

in the form of pills in aluminum foils whereas ‗LOPARIN' was sold in

prefilled syringes. It was also held that the price difference between the two

products was huge. Consequently, the ex parte injunction was vacated.

From this decision three things become clear. First of all, in the

pharmaceutical trade it is common to have prefixes or suffixes linked to the

chemical compound / salt across various similar products manufactured by

different persons. What it means in the context of the present case is that in

the pharmaceutical trade it would not be unusual to find drugs including the

term ‗TEMO' as a prefix or a suffix as a part of the name of the drug when

it relates to the chemical compound Temozolomide. Secondly, the form in

which the drug is sold is also material. If it is different, such that one drug

is sold in the form of pills or capsules and the other is sold in the form of

prefilled syringes, the likelihood of deception is minimized. Thirdly, when

the price difference of the products is of a high magnitude, the likelihood of

deception would also be greatly reduced.

17. In Astrazeneca (supra), a Division Bench of this Court was

considering the question of infringement of the registered trademark

‗MEROMER' by the impugned trademark ‗MERONEM'. Both the

products referred to Meropenem. The Division Bench after considering

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.10 of 18
several decisions including Cadila Health Care Ltd. v. Cadila

Pharmaceuticals Ltd.: (2001) 5 SCC 73 and SBL Limited v. Himalaya

Drug Company: 1997 PTC (17) 540 (Del.) (DB) came to the conclusion

that 'Meropenem' is the molecule which is used for treatment of bacterial

infections and the term ‗MERO', being an abbreviation of a generic term

(Meropenem), was publici juris. It was held that the plaintiffs in that case

could not claim exclusive right to the use of ‗MERO' as a constituent of any

trademark. It was observed that the common feature in both the competing

marks, i.e., ‗MERO' was only descriptive and publici juris and, therefore,

the customers would tend to ignore the common feature and would pay

more attention to the uncommon features, namely, ‗MER' and ‗NEM' which

were clearly dissimilar. The Division Bench observed as under:-

―19. Admittedly, ‗Mero', which is common to both the
competing marks, is taken by both the appellants/plaintiffs
and the respondent/ defendant from the drug ‗Meropenem',

taking the prefix ‗Mero' which is used as a prefix in both the competing marks. Both the appellants/plaintiffs and the respondent/defendant are marketing the same molecule ‗Meropenem'. Neither the appellants/plaintiffs nor the respondent/defendant can raise any claim for exclusive user of the aforesaid word ‗Meropenem'. Along with the aforesaid generic/common prefix, ‗Mero', the appellants/plaintiffs have used the syllables ‗nem', whereas, the respondent/defendant has used the syllable ‗mer'. It is true that the aforesaid words/trade names cannot be deciphered or considered separately, but must be taken as a whole. But even if they are taken as a whole, the prefix ‗Mero' used with suffix in the two competing names, distinguishes and differentiates the two products. When they are taken as a whole, the aforesaid two trademarks cannot be said to be either phonetically or visually or in any manner deceptively similar to each other.‖

The Division Bench also noted that in the trade of drugs, it is a common

practice to name a drug by the name of the organ or ailment which it treats

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.11 of 18 or the main ingredient of the drug. The name of such an organ, ailment or

ingredient being publici juris or generic cannot be owned by anyone

exclusively for use as a trademark.

18. In my view, the present case is covered entirely by the Division

Bench decision in Astrazeneca (supra). However, it was sought to be

contended on behalf of the defendant that the present case is different from

the Astrazeneca case. It was contended that in Astrazeneca (supra), the

plaintiff therein was not the first to have adopted and used the prefix

‗MERO' and that there were other companies using ‗MERO' as a prefix and

that there was also no averment in Astrazeneca (supra) with regard to trans-

border reputation. Whether the plaintiff was the first to adopt and use the

prefix ‗MERO' in the Astrazeneca's case and ‗TEMO' in the present case is

not of much consequence when infringement of a registered trademark is

being considered. The case is not one of passing off where prior user would

be a relevant consideration. The case is also not one where the defendant

has raised a defence of prior user under Section 34 of the said Act where,

again, the question of who used the mark first would be relevant. The

present case is one of infringement under Section 29 of the said Act and the

only question that requires consideration, as noted above, is whether the

defendant's trademark is deceptively similar to the plaintiffs' registered

trademarks. The distinction that the defendant seeks to draw between the

Astrazeneca case and the present case is a mere illusion. There is no such

distinction.

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.12 of 18

19. The decision in Heinz Italia (supra) is a case which deals with

passing off and stands on a different footing. In Bhagwan Dass Gupta

(supra), a learned Single Judge of this Court noted that the basic test to find

out whether a trademark is a publici juris is that if the mark has come to be

so public because of its universal use that it does not confuse or deceive by

the use of it the purchasers of the goods of the original trader. The object to

protect a trademark is merely to prevent the trader from being deceived or

confused by the other persons goods as his goods. Although this decision

was cited on behalf of the plaintiff, there is nothing in it which enables us to

detract from the clear position as indicated in Astrazeneca's case. There is

no doubt that Temozolomide is a generic word and is publici juris and

nobody can claim exclusivity in respect of the same. Consequently, the

clipped expression ‗TEMO' derived from clipping the word Temozolomide

would also be publici juris over which no person can claim exclusive

proprietorship.

20. In Cadila Laboratories Ltd. v. Dabur India Ltd.: 1997 PTC (17)

page 417, a learned Single Judge of this Court considered the case of

infringement of the plaintiffs' registered trademark ‗MEXATE' by the

defendant's trademark ‗ZEXATE' in respect of the same type of cancer

medicine. The suffix ‗EXATE' in both cases was common. The prefixes

were only the letter ‗M' and the letter ‗Z'. The learned Judge took the view

that:-

―According to the decisions laid down by the various Courts, the importance of the prefix of the word should be taken due weightage and important (sic) in case where the suffix is

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.13 of 18 common. Where the suffix of the word is common, regard must be had to the earlier portion of the word which distinguishes one from the other. Where the suffix is common, the earlier portion of the word is the natural, necessary and, in fact, the actual mark of distinction.‖

Applying this test to the present case, the prefix being common to the

plaintiffs' mark and the defendant's mark, it would be the suffixes which

would have to be compared to see whether the marks are deceptively similar

or not.

21. While holding that the marks ‗MEXATE' and ‗ZEXATE' were

not deceptively similar, this Court in Cadila Laboratories (supra)

observed:-

―As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered.‖

22. The learned counsel for the plaintiffs had placed reliance on

Milmet Oftho Industries (supra) with regard to the first adoption of the

mark. He placed reliance on the following observation:-

―8. We are in full agreement with what has been laid down by this Court. Whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicines, the Courts must also keep in mind the fact that nowadays the field of medicine is of an international character. The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in India and the user by the overseas company. The Court must ensure that public interest is in no way imperiled. Doctors particularly eminent doctors, medical practitioners and persons or Companies connected with medical field keep abreast of latest developments in medicine

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.14 of 18 and preparations worldwide. Medical literature is freely available in this country. Doctors, medical practitioners and persons connected with the medical field regularly attend medical conferences, symposiums, lectures etc. It must also be remembered that nowadays goods are widely advertised in newspapers, periodicals, magazines and other media which is available in the country. This results in a product acquiring a worldwide reputation. Thus, if a mark in respect of a drug is associated with the Respondents worldwide it would lead to an anomalous situation if an identical mark in respect of a similar drug is allowed to be sold in India. However one note of caution must be expressed. Multinational corporations, who have no intention of coming to India or introducing their product in India should not be allowed to throttle an Indian Company by not permitting it to sell a product in India, if the Indian Company has genuinely adopted the mark and developed the product and is first in the market. Thus the ultimate test should be who is first in the market.‖

The decision in Milmet Oftho Industries (supra) is not applicable to the

present case. First of all, it is not an action for infringement of a trademark

under the said Act but one of passing off. It is obvious that in a passing off

case prior use and first adoption would be of vital importance. Secondly,

and more importantly, the case before the Supreme Court was one where the

competing marks were identical. Both the plaintiff and the defendant had

adopted ‗OCUFLOX' as their trademark. In the present case the mark

adopted by the defendant is not identical to the registered marks of the

plaintiffs. Clearly, the decision in Milmet Oftho Industries (supra) would

not be of much help to the plaintiffs' case. Similarly, the decision in the

case of Pfizer Ireland Pharmaceuticals (supra), the ‗LIPITOR'--

‗LIPICOR' case, would also not be relevant for the purposes of the present

case inasmuch as that was also a case of passing off. The decision in

Hoechst Pharmaceuticals Ltd (supra) has been relied upon by the learned

counsel for the plaintiffs to submit that derivative drugs from the same bulk

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.15 of 18 drug may have different therapeutic values. It was submitted that while

both the plaintiffs and the defendant are manufacturing and marketing

Temozolomide, their products are not interchangeable and may have

different therapeutic values. Consequently, consumers may be deceived

into purchasing the defendant's product thinking that it would have the

same therapeutic value as that of the plaintiffs' products. This argument

cannot be accepted because it proceeds on the basis of an assumption that

the plaintiffs' products are superior to the defendant's product. At this

prima facie stage such an assumption cannot be made. Moreover, the

defendant has a drug licence under the Drug and Cosmetics Act, 1940 and

no presumption can be drawn that the defendant's product is not a quality

product. For the same reasons, the decision in Ramdev Food Products (P)

Ltd. (supra) would also not be applicable to the present case.

23. Comparing the plaintiffs' trademark ‗TEMODAL' and

‗TEMODAR' with the defendant's trademark ‗TEMOKEM', it is apparent

that the marks are not identical. There is also no phonetic or visual

similarity between the marks. I have already noted above that the term

‗TEMO' cannot be exclusively used by the plaintiffs in view of the fact that

it is publici juris being a clipped abbreviation of the generic word

Temozolomide. There is no doubt in my mind, at this prima facie stage,

that the suffix ‗KEM' is entirely different and distinct from the suffixes

‗DAL' and ‗DAR' of the plaintiffs' trademarks. There is also no doubt that

there is no phonetic or visual similarity between the defendant's mark and

the plaintiffs' marks taken as a whole as would be prone to deceive

IA Nos.4555/07 & 6041/07 in CS(OS 730/2007 Page No.16 of 18 consumers. It is also relevant to point out that Temozolomide is a Schedule

‗H' drug which can only be sold in retail on the prescription of a registered

medical practioner. While this condition is not by itself sufficient to

establish a case of ‗no deception', it is an important factor particularly

when the pharmaceutical product is a highly specialized drug and is used for

the specific treatment of a type of brain cancer. The warning indicated in

the packaging of the defendant is also relevant. The warning reads:-

―To be supplied against demand from cancer hospitals, institutions and against the prescription of a cancer specialist only.‖

It is obvious that the defendant's product is not an off-the-shelf product

which any person can go and purchase. The product is to be supplied only

against demand from cancer hospitals / institutions and that too against the

prescription of a cancer specialist only. This warning greatly reduces the

possibility of deception. The cancer specialist would be aware of the

therapeutic values of the defendant's product as also of the plaintiffs'

products. Apart from this, a significant consideration is the vast difference

in the prices of the products. It has already been noted above that the

plaintiffs' products are approximately six times more expensive than the

defendant's product. When the difference in the price structure is so vast,

the likelihood of deception is virtually nil.