Delhi High Court

Merck Kgaa vs Galaxy Hompro And Anr on 13 March, 2012

Author: Vipin Sanghi

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

+                    Date of Decision: 13.03.2012


%                            W.P.(C) 2503/2010

      MERCK KGAA                                        ..... Petitioner
                         Through:     Mr. Arvind Nayar, Mr. Sushant
                                      Kumar, Mr. Abhinav Lohia &
                                      Mr.Surjeet Singh, Advocates.

                    versus


      GALAXY HOMPRO AND ANR                           ..... Respondents
                    Through:          Mr. Rajesh Chadha, Advocate.


      CORAM:
      HON'BLE MR. JUSTICE VIPIN SANGHI


VIPIN SANGHI, J. (Oral)

C.M. No. 4285/2011

By this application, the petitioner seeks correction of the word

„RECEBION‟, typed in this petition, instead of the word „RECIBION‟.

Learned counsel for the respondents does not oppose the application.

Accordingly, the same is allowed. The expression „RECEBION‟ used in

this writ petition shall be read as „RECIBION‟.

The application stands disposed of.

W.P.(C) 2503/2010

1. In this writ petition under Article 226 of the Constitution of

India, the petitioner assails the order dated 12.06.2009 passed by the

Intellectual Property Appellate Board (IPAB) bearing order No. 94/2009

whereby the petitioner‟s appeal against the order dated 28.06.2001

passed by the Assistant Registrar of Trade Marks, disallowing the

petitioner‟s opposition No. DEL-8313, and allowing the respondent‟s

application No. 517814 for registration of Trademark in Class 5 under

the provisions of the Trade and Merchandise Marks Act, 1958, has

been dismissed.

2. The petitioner claims to be in the business of manufacture

and sale of pharmaceutical drugs formulations. The case of the

petitioner is that it is producing and marketing various drugs with the

suffix „BION‟. The respondent is also in the same trade. The

respondent advertised for registration of the mark „RECIBION‟ on

03.10.1989. It claims user since 01.04.1987. When the petitioner

noticed the said advertisement, the petitioner filed an application to

raise objections. The petitioner claims that it had got registered

various marks such as BETABION, POLYBION, CEBION etc. with the

Registrar of Trade Marks which were pharmaceutical preparations. It is

claimed by the petitioner that the trade mark sought to be registered

by the respondent i.e., RECIBION in respect of a medicinal and

pharmaceutical preparation is deceptively similar to its mark „CEBION‟

which also contains the suffix „BION‟, with which the petitioner‟s

products are identified.

3. The objection of the petitioner was rejected by the Assistant

Registrar of Trade Marks vide order dated 28.06.2001. The Registrar

held that the mark RECIBION cannot be said to be either visually or

phonetically similar to the petitioner‟s marks „CEBION‟.

4. The petitioner‟s appeal has also been rejected by the IPAB by

the impugned order.

5. The submission of learned counsel for the petitioner, firstly, is

that the manner in which the IPAB proceeded to deal with the matter is

fundamentally wrong. He submits that the IPAB has resorted to

dissecting/breaking up of the marks in question. It has been held that

the suffix „BION‟ has been widely used not only by the petitioner but by

various others in respect of the medicinal preparations and

formulations and the prefix „RECI‟ used by the respondent is different

from the prefix „CE‟ used by the petitioner. Learned counsel further

submits that there is phonetic similarity between „RECEBION‟ and

„CEBION‟ in as much, as, the letter „R‟ is often slurred. Learned

counsel further submits that in matters of deceptive similarity in

relation to drugs, this Court has held that the test of confusion has to

be applied very strictly. Reliance is placed in this regard on the

decision in Cadila Laboratories vs. Dabur India Limited: 1997 (17)

PTC 417. Learned counsel for the petitioner has also placed reliance

on Corn Products Refining Co. vs. Shangrila Food Products Ltd.:

AIR 1960 SC 142; Wockhardt Towers vs. American Home

Products Corporation: 2009 (41) PTC 724; Torrent

Pharmaceuticals Ltd. vs. The Wellcome Foundation Ltd.: 2002

(24) PTC 580 (Guj.).

6. On the other hand, the submission of learned counsel for the

respondent is that the petitioner is not the original user of the mark

„BION‟. He submits that Cipla had advertised „Calcibion‟ as early as in

1949, and claimed user since 25.08.1942. Reference in this regard has

been made to the copy of the advertisement published in 1945.

Learned counsel further submits that scores of other drugs are being

sold in the market with the suffix „BION‟ such as Mecobion, Rumbion,

Embion, Pantabion, Lycobion etc. Learned counsel further submits

that, in fact, the petitioner has not been using the mark „CEBION‟, with

which the petitioner claims phonetic similarity vis-à-vis the

respondent‟s trade mark „RECIBION‟, for a long period and the

petitioner has not produced in the proceedings before the Registrar or

even before the IPAB, even a single invoice to show the sale of

„CEBION‟ in the last 4-5 years. Learned counsel submits that the

respondent has already moved an application for rectification of the

petitioner‟s mark CEBION which is also pending. It is also submitted by

learned counsel for the respondent that the respondent‟s drug

„RECIBION‟ is a schedule C-I drug under the Drugs and Cosmetics Act,

1940, which means that the said drug cannot be sold over the counter

except on the prescription of a qualified medical doctor. He further

submits that the said drug is a syrup of vitamin B-Complex and other

vitamins. Reliance is placed on Schering Corporation & Ors. vs.

Getwell Life Sciences India Pvt. Ltd., 2008 (37) PTC 487 (Del),

Kalindi Medicure Pvt. Ltd. vs. Intas pharmaceuticals Ltd. and

Anr., 2007 (34) PTC 18 (Del.) and Panacea Biotec Ltd. vs. Recon

Ltd.: 1996 PTC (16) 561.

7. Having heard learned counsel for the parties and considered

their respective submissions, in my view there is no error in the

impugned order. I find no merit in the present writ petition.

8. The submission of the petitioner, as regards

dissecting/breaking-up of the marks in question, seems to be

paradoxical. On the one hand, the Petitioner questions the breaking-up

of the marks into their respective prefix‟s and suffix‟s, as resorted to

by the IPAB in the impugned order while deciding the question of

deceptive similarity, and on the other hand, the Petitioner raises the

claim of deceptive similarity on account of the latter half (i.e. the

suffix) of the marks being similar, i.e., „BION‟. The petitioner‟s entire

case is based on its claim that it has various drugs with registered

Trademarks which have „BION‟ at the suffix, including „CEBION‟. In my

considered opinion the Petitioner cannot be allowed to blow hot and

cold at the same time.

9. The reasoning adopted and methodology resorted to by the

IPAB, in deciding the question of deceptive similarity of the two marks,

namely „CEBION‟ (of the Petitioner) and „RECIBION‟ (of the

Respondent), is in line with the dictum laid down by various Courts.

10. The Supreme Court in Corn Products (Supra), while deciding

the question of similarity between two marks, took note of a situation

where a series of marks, which are in use in the market, contain

common element or elements. It made reference to In re: Harrods'

application, 52 R.P.C. 65, wherein it was observed:

"Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause

purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used."

11. In the case before the Supreme Court, the respondent applied

for registration of the mark „Gluvita‟ used with reference to „biscuits‟

manufactured by it. The appellant, who had been using the registered

mark „Glucovita‟ with reference to glucose with vitamins, opposed the

application. In the absence of any evidence being led by the parties as

to the use of marks in the market containing the common element, the

Supreme Court after considering the structural and phonetic similarity

of the two marks, which was likely to cause confusion, allowed the

opposition of the Appellant.

12. In Cadila Laboratories Ltd. (Supra), this Court, while

considering the case of infringement of the plaintiff‟s registered

trademark „MEXATE‟ by the defendant‟s trademark „ZEXATE‟ in respect

of the same type of cancer medicine, observed as under:

"According to the decisions laid down by the various Courts, the importance of the prefix of the word

should be taken due weightage and importance in case where the suffix is common. Where the suffix of the word is common, regard must be had to the earlier portion of the word which distinguishes the 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. It is also held in Miss. Johan A. Wolfing v. Chemical Industrial & pharmaceutical Laboratories Ltd. & Anr., AIR 1984 Bom281 and American Home Products Corporation v. Mac Laboratories Pvt. Ltd. & Anr., AIR 1986 SC 137, that the marks are different and not similar medicines considering the prefix. In the present case, competing trade marks 'Mexate' and 'zexate' have different and distinguished prefix, one having syllable 'M' and the other having 'Z'. There is no possibility of 'Mexate' being pronounced and/or read as 'Zexate' under any circumstances. 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. The two marks Fleboline' and 'Bionoboline' was held to be not similar by the Bombay High Court in Johan A. Wolfing. v. Chemical Industrial & Pharmaceutical Laboratories Ltd. & Another (Supra) as the terminology 'boline' cannot be an exclusive monopoly of the respondents and

that the cumulative effect of the two words did not produce the same impression. Even phonetically the two marks were held to be not closely similar. In the present case, since the two marks are different as the opening syllables of both the rival marks are completely different and distinct and the two drugs are Schedule 'H' drugs of a specialised nature which could only be purchased on showing a prescription from a cancer specialist, the two competing trade marks appear to be prima facie entirely different and dissimilar." (Emphasis supplied).

13. In Astrazeneca UK Limited and Anr. Vs. Orchid Chemicals

and Pharmaceuticals Ltd., 2007 (34) PTC 469 (Del), this Court was

considering the question of infringement of the registered trademark

„MEROMER‟ by the impugned trademark „MERONEM‟. Both the

products referred to „Meropenem‟, a molecule used in the treatment of

bacterial infections. 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 relevant

observations made, are as under:

"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." (Emphasis supplied).

14. This Court, again, in Schering Corporation (Supra), was posed

with a question of infringement on account of deceptive similarity. The

Plaintiff claimed infringement of its registered mark „TEMODAL‟ and

„TEMODAR‟ by the Defendant‟s mark „TEMOGET‟. This Court placing

reliance on its decision in Astrazeneca (Supra), amongst various

others, held as under:

"Comparing the plaintiffs' trademark 'TEMODAL' and 'TEMODAR' with the defendant's trademark 'TEMOGET', 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 Jurisdiction being a clipped abbreviation of the generic word Temozolomide. There is no doubt in my mind, at this prima facie stage, that the suffix 'GET' 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 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." (Emphasis supplied).

This decision has been upheld by the Division Bench of this Court in

Schering Corporation & Ors vs. Getwell Life Sciences India

Private Limited in FAO (OS) 314/2008.

15. In Wockhardt Towers (Supra), registration of the mark „AZICIN‟

was opposed on account of infringement of the registered trademark

„ANACIN‟ on the ground of deceptive similarity. The Registrar of Trade

Marks while dealing with the said opposition, referred to the decision of

the Supreme Court in Corn Products (Supra), and held as under:

"As the applicants have not filed any evidence so as to prove that the so-called marks in the series, alleged to have common suffix 'CIN' have been used in the market, they are not allowed to seek any relief from the presence of such marks in the series, if on record and/or to challenge the existence of the opponents' registration and as such, the arguments addressed by the applicants to this have no bearing.

Thus, considering the question of deceptive similarity having in view the settled principles that the two marks are to be compared as a whole and bearing in the mind, the structure of the marks visually and phonetically and the idea conveyed as well as an average intelligence and imperfect recollection of an unwary customer, the trademark 'AZICIN' is considered deceptively similar to the opponents trademark 'ANACIN'. However, it is needless to state that the opponents mark consisted of an invented word and it would not be open to the applicants to break the marks in parts and compare a part of one mark with other of another trade mark against the settled principles of law and thus, the objection raised on under Section 11 (1) of the Act is

sustained." (Emphasis supplied).

16. In the present case, the suffix „BION‟ is common to both the

marks in question. It is in use in various other marks of not only the

Petitioner, but also other traders in the market. In view of such

common occurrence of the suffix „BION‟ in the market, the IPAB

proceeded to hold that the purchasers would pay more attention to the

other features of the respective marks, namely, the Prefix‟s „CE‟ and

„RECI‟.

17. The petitioner cannot claim to enjoy protection of a part (namely

„BION‟) of his registered mark. Merely because a part of the mark, the

prefix or suffix, may be common, because it is common to the trade or

it is public juris, is no ground to claim that the two marks are

deceptively similar. In that situation, the other parts of the marks have

to be compared so as to see whether the marks in question as a whole

can be held to be deceptively similar. The law confers on the proprietor

the exclusive right to the use of the trademark as a whole, and not a

part of it. The whole marks have to be compared to decide whether

there is deceptive similarity between them.

18. Considering the marks as a whole, there is no phonetic or visual

similarity between them, so as to cause confusion. In Corn products

(Supra), the Supreme Court while considering the aspect of visual and

phonetic similarity observed as under:

"We think that the view taken by Desai, J., is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole... Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonable likely to cause a confusion between them."

19. In Wyeth Holdings Corporation vs. Burnet

Pharmaceuticals P. Ltd, 2008 (36) PTC 478 (Bom), while considering

whether the mark „FOLV‟ of the defendant was deceptively similar to

the mark „FOLVITE‟ of the plaintiff, the Registrar of Trade Marks held

that the two competing marks have to be considered as a whole. The

structure of the mark visually and phonetically must be borne in mind.

The image that the court must have is that of the quintessential

common man. It was held:

"When the Judge looks at phonetics, the sound which accompanies the pronunciation of the mark is the sound of the mark to an ordinary purchaser bereft of the niceties of language."

20. Approaching the problem at hand from the point of view of a

man of average intelligence and imperfect recollection and keeping in

view the pronunciation of an ordinary purchaser bereft of the niceties

of the English language, it cannot by any means whatsoever be held

that the marks in question are structurally and phonetically similar and

would, thereby, cause confusion. There is a marked difference in the

prefix of both the marks in question, not only in terms of their

appearance but also in terms of their pronunciation, which would

differentiate the respective words when taken and spoken as a whole,

i.e., one word.

21. It is also relevant to point out that the medicinal product, to

which the respondent‟s mark pertains, is a Schedule C-1 drug which

can only be sold on the prescription of a registered medical practioner.

Although this condition by itself is not sufficient to establish a case of

no deceptive similarity, but this condition coupled with the

aforementioned reasons leads to the conclusion that there is no

deceptive similarity between the two marks, namely, „CEBION‟ and

„RECIBION‟.

22. It is also pertinent to note that to the respondent‟s submission,

that the petitioner has not shown actual use of its mark CEBION in the

past few years by producing even a single invoice, the petitioner has

no answer. This is also an important and germane consideration.

Therefore, even if the mark of the respondent had been somewhat

deceptively similar to that used by the petitioner at some earlier point

of time, that would not have sufficed as the petitioner does not appear

to be using the mark CEBION for a number of years.

23. The judgment of the Gujarat High Court in Torrent

Pharmaceuticals Ltd. (Supra), relied upon by the petitioner would

not render much assistance to its submissions. The said case did not

involve the question of use of marks in the market containing the

common element of the marks in question. The Court, while dealing

with the question of deceptive similarity between two marks

„TROVIREX‟ and „ZOVIREX‟, concurred with the finding of the Registrar

of trade marks that there existed the highest degree of resemblance,

visually and phonetically, between the two marks. The Court further

observed that the probability of confusion and deception was more

since the trade marks were used in relation to the pharmaceutical

products i.e. similar goods.

24. Because the competing marks pertain to medicinal products

would not, by itself, be sufficient to establish deceptive similarity.

There are several factors that have to be kept in mind while deciding

deceptive similarity. These factors were laid down by the Supreme

Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.,

(2001) 5 SCC 73, as under:

"a) The nature of the marks i.e. whether the marks are

word marks or label marks or composite marks, i.e. both

words and label works.

b) The degree of resembleness between the marks,

phonetically similar and hence similar in idea.

c) The nature of the goods in respect of which they are

used as trade marks.

d) The similarity in the nature, character and performance

of the goods of the rival traders.

e) The class of purchasers who are likely to buy the goods

bearing the marks they require, on their education and

intelligence and a degree of care they are likely to exercise

in purchasing and/or using the goods.