IN THE HIGH COURT OF GUJARAT AT AHMEDABAD FIRST APPEAL No 2155 of 2000 For Approval and Signature: Hon'ble MR.JUSTICE D.P.BUCH ============================================================ 1. Whether Reporters of Local Papers may be allowed : YES to see the judgements? 2. To be referred to the Reporter or not? : YES 3. Whether Their Lordships wish to see the fair copy : NO of the judgement? 4. Whether this case involves a substantial question : NO of law as to the interpretation of the Constitution of India, 1950 of any Order made thereunder? 5. Whether it is to be circulated to the Civil Judge? : NO @ CADILA HEALTHCARE LTD. Versus SWISS PHARMA PVT.LTD. -------------------------------------------------------------- Appearance: 1. First Appeal No. 2155 of 2000 MR M J Thakore, Sr.Advocate with Mr BH CHHATRAPATI for appellant MR PADMRAJ K JADEJA for Respondent No. 1 MR P M Thakkar, Sr.Advocate with Mr YJ TRIVEDI for Respondent No. 1 -------------------------------------------------------------- CORAM : MR.JUSTICE D.P.BUCH Date of decision: 17/08/2001 JUDGEMENT Whether "SUPERDAC" medicine manufactured, marketed and sold by the respondent herein contains a mark which is deceptively similar or identical with the mark "SPARDAC", a product of the appellant, is a question at controversy between the parties in this First Appeal. 2. The appellant above named has preferred this First Appeal under section 96 of the Civil Procedure Code, 1908 (for short, 'the Code') against the judgment and decree dated 25.8.2000 recorded by the learned Judge of the City Civil Court at Ahmedabad, in Civil Suit No.4754/98 under which the learned trial Judge dismissed the suit of the appellant-original plaintiff and further directed the appellant-original plaintiff to pay to both the respondents herein cost of the suit and to bear their own costs in the suit. 3. The main grievance of the appellant before the trial court was that the appellant had already marketed a medicine named SPARDAC somewhat over a year before the institution of the suit. The appellant also contended before the trial court that the respondents have been manufacturing , marketing and selling a medicine named SUPERDAC and the said process has been started little before the institution of the suit. The appellant contended before the trial court that the mark SUPERDAC is deceptively and/or confusingly similar to the appellant's trade mark SPARDAC and thereby, the respondents have committed an act of passing off their product SUPERDAC as the appellant's product SPARDAC. 4. The appellant contended before the trial court that initially CADILA was a common name for the appellant as well as the second respondent. There was a partition and therefore, the appellant continued its production, marketing and sale of medicine in the name of appellant, whereas, the second respondent started its manufacturing, marketing and sale of medicine in the name of Cadila Pharmaceuticals Ltd. Both of them are the Companies registered under the Companies Act, 1956. 5. The appellant contended before the trial court that the appellant had started production, marketing and sale of its product SPARDAC and had applied for registration of the said trade mark vide application dated 31.5.1996 under the provisions of Clause 5 part-A of the Trade and Merchandies Marks Act, 1958. (for short, 'the Act'). That thereafter, in November, 1996, the appellant started manufacturing and marketing the said product SPARDAC, a preparation of drug Super-floxacin, which is a potent anti-bacterial medicine used to prevent bacterial infections viz; respiratory tract infections, urinary tract infections, etc. That the appellant adopted the trade mark SPARDAC for the first time in the trade industry adopting the mark "SPAR" in connection with drug spar floxacin and adopted mark "DAC" from the word "ALIDAC" which indicates the name ALIDAC Genetics and Pharmaceuticals which is a division of the original company CADILA. 6. The appellant also contended that the respondents have recently started manufacturing a medicine named SUPERDAC. That the said name is deceptively similar and identical with the medicine SPARDAC manufactured by the appellant. That the people at large would naturally be put to a confusion on account of the similarity appearing in the names of these two medicines. Therefore, the appellant filed the aforesaid suit to restrain, the respondents from passing off their goods as appellants' goods. 7. The respondents were duly served and they appeared and filed written statements. The first respondent filed written statement at Exh.36 and the second respondent at exh.35. There the facts were not much in dispute but it was mainly contended by the respondents that the medicine and its mark SUPERDAC is not deceptively similar or identical with the medicine and its name SPARDAC of the appellant. It is further contended that even looking at the face of the two medicines and their packings, it is not likely that people at large, would be confused by the alleged similarity in the name. That therefore, the appellant have no case and, therefore, the suit may be dismissed with costs. 8. The trial court framed necessary issues at Exh.37. After permitting the parties to lead evidence and after hearing their arguments, the trial court found that the appellant had failed in proving that the respondents had adopted their trade mark SUPERDAC which is structurally and phonetically identical and deceptively similar to and which is a colourable imitation of the appellant's trade mark SPARDAC creating confusion in the trade and market. 9. The trial court has also found that the appellant had failed to prove that the above referred adoption of their trade mark SUPERDAC by the respondents, constitutes violation of respondents' proprietary rights to the use of their trade mark SPARDAC and it is illegal and dishonest and with intention to pass off their goods as those of the appellants. 10. On the aforesaid findings, the trial court found that the appellant was not entitled to claim any proprietary right over the trade mark SPARDAC and dismissed the above suit of the appellant. Feeling aggrieved by the said judgment and decree of the trial court, the appellant-original plaintiff has preferred this appeal before this court. It has been mainly contended here by the appellant above named that the trial court has failed to appreciate the facts of the case and has also failed in appreciating the legal position in respect of passing off. That the trial court has failed to appreciate that the appellant has clearly proved that the respondent has adopted their trade mark SUPERDAC and the same is structurally and phonetically identical and deceptively similar to the appellant's trade mark SPARDAC. That the trial court has failed to appreciate that the trade mark SUPERDAC adopted by the respondents constitutes violation of the appellant's proprietary right to use the trade mark SPARDAC. That this was an illegal and dishonest act done with intention to pass off their goods as those of the appellant's. That the trial court has also erred in not properly considering the fact that the appellant's product SPARDAC had built up a considerable goodwill and reputation which is reflected in the sale figures of this product SPARDAC. That on the whole, the judgment and decree passed by the trial court are illegal and erroneous and deserve to be set aside. The appellant has, therefore, prayed that the present appeal be allowed, the judgment and decree of the trial court be set aside and the suit of the appellant be decreed in terms of the relief prayed in the plaint. 11. On receipt of the appeal, notice as to admission of the matter appears to have been issued. Respondents have made appearance through their respective Advocates. With the consent of the parties, the matter has been heard finally and, therefore, it is being disposed of finally. 12. As stated above, the main and substantial question to be considered is as to whether the medicine named SUPERDAC manufactured, marketed and sold by the respondents could be treated to be containing a mark deceptively similar to the mark SPARDAC which is a medicine manufactured, marketed and sold by the appellant above named and that there is a likelihood of creation of confusion in the trade on account of the alleged similarity in the names of two products. It is not much in dispute that the aforesaid names of the medicines have not been registered as trade mark and therefore, the question is of passing off and there is no question of infringement of trade mark. This fact is absolutely undisputed during the course of argument advanced by the learned Advocates for the parties. 13. The main argument advanced on behalf of the appellant by learned Sr.Advocate Mr Mihir Thakore is that the trial court has not properly considered the similarity between the names of the two medicines and the trial court has also not properly considered that there is a probability of confusion being created in the minds of the consumers, chemists and traders and even in doctors and therefore, this aspect is required to be reconsidered here. It is his argument that the two words are, on the face of them, deceptively similar and, therefore, there are all probabilities and possibility of confusion being created amongst the consumers, traders and even in Doctors in prescribing such drugs. 14. As against this, the learned Sr.Advocte for the contesting respondent, Mr P M Thakker has also argued at length that there is no similarity between the two brand names and hence, there is no likelihood of confusion in the minds of the traders, consumers or doctors. That "super" is usually put to use in many products including drugs and 'dac' is the reverse reading to the first three letters of CADILA, the name of the respondent company. That, therefore, there is no case of respondents' passing of their goods and medicines as that of the appellants. 15.1. The learned Advocates for the parties have relied upon certain decisions. In a case of Erven Warnink B.V. & Anr. v. J. Townend & Sons (Hull) Ltd. (RPC 1980 P 31), it has been observed that a misrepresentation made by a trader in the course of trade to prospective consumers of his or/and ultimate consumers of goods or services supplied by him which is calculated to injure business or goodwill or any trader causes actual damage to a business or goodwill of the trader by him. This is treated to be an action of passing off. There the dispute was between the two drinks 'Advocaat and 'Old English Advocaat'. There the difference was that the word 'Advocaat' was a generic and therefore, any one was free to make use of the said word and therefore, there was no action of passing off on the part of the defendants, since the plaintiff had no proprietary right in the said name. 15.2. A reference was made to a case of Roche & Co. v. Geoffrey Manners & Co.(AIR 1970 SC 2062). There the Hon'ble Supreme Court has observed that the marks must be compared as a whole. That it is not right to take a portion of the word in order to decide if there is similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark. The Supreme Court found that on comparison of the trade mark "Dropovit" and "Protovit" that they are not deceptively similar. 15.3. Another decision relied upon is in the case of Ciba-Geigy Ltd. v. Torrent Lab. (1993(1) 325. The question before the Court in that matter was whether ULCIBAN trade mark of respondent no.1 can pass off as the trade mark of the petitioner CIBA-Geigy Ltd? It was found that trade mark ULCIBAN could create confusion in the mind of public and could pass off as the trade mark of the petitioner Ciba-Geigy Ltd. This Court also found that the impugned trade mark is likely to cause deception or confusion in the trade and the public having regard to resemblance that it bears by virtue of incorporating within it the highly distinctive part CIBAN which is the registered trade mark of the petitioner who is also the proprietor of the other registered trade marks. That therefore, the proposed mark cannot be registered as a trade mark of respondent no.1 in view of the prohibitions contained in Sections 11(a) and 11(e) of the Act. 15.4. In O.J. Appeal No.11/93, the dispute was between the words "CIBA" and "ULCIBAN". At the time of registration, the Registrar of Trade Marks found that there is no likelihood of confusion or deception since the word 'ULCI' and 'CIBAN' were not identical or deceptively similar. It was also found that the letters 'ULCI' and 'BAN' are the two prominent features in 'ULCIBAN' which is absent in 'CIBA'. The matter went to the High Court and, there it was found that the word 'ULCI' was likely to cause deception. However, in appeal, the matter went otherwise and it was held that there was no likelihood of confusion or deception. 15.5. In the case of M/s. Ciba Geigy vs. Sun Pharmaceuticals Ltd., reported in 1992 (2) GLR 1053, this Court has observed that the test should not be that in no case a purchaser would commit a mistake but the percentage of the possibility or likelihood of committing such mistakes. There the dispute was between two words 'CLOFRANIL' and 'ANAFRANIL'. There the interim application was ordered to be dismissed showing that there was no similarity in such a way as to confuse the consumer, the chemists or the trader. 15.6. In S.B.L. Ltd. v. Himalaya Drug Co., reported in AIR 1998 Delhi 126. the Supreme Court has considered the two words 'Liv. 52' and 'Liv.T'. There it was observed that the common feature 'Liv', abbreviation made out from the word 'Liver' is descriptive in nature and common in usage. It is further observed that both the products have no phonetic similarity and both the products were found to have distinctive features. Therefore, it was observed that the proprietor of 'Liv.52' would not be entitled to injunction restraining the use of 'Liv.T.' It was also observed that there are about 100 drugs in the market using the abbreviation 'Liv' made out of the word 'Liver', which is the organ of the human body. 15.7. In Indo-Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceuticals Ltd., reported in AIR 1998 MADRAS 347, again the dispute was between two words 'Enerjex' and 'Enerjase'. The plaintiff was selling its product, allopathic medicinal preparation under the trade mark 'Enerjex'. On the other hand, the defendant sought to adopt the trade mark 'Enerjase' for selling Ayurvedic medicinal preparation. There it was observed that the prefix for both the marks viz; 'Enerj' is common and abbreviation of generic name 'energy'. Suffix to said words "Jex" and "Jase" are totally dissimilar and do not create confusion in the mind of users especially when visual impression of the said two trade names is completely different. It was also observed that the total sound effect of these two names does not have similarity and hence there is no infringement of trade mark of the plaintiff. It would be considered here that the two words contained seven and eight letters respectively. Out of that five letters were common in both the medicinal preparation. The suffix in one word was 'ex' whereas the suffix in the other word was 'ase'. It may be observed that the difference was very minor with respect to the suffix. but the words were looked at as a whole by the Hon'ble Court and there it was found that the suffix was quite different and there was no similarity phonetically or otherwise. While so doing the said court has considered numerous decisions on the aforesaid aspects. While deciding the matter, the court found that the two words 'jex' and 'jase' are totally dissimilar and not going to create any confusion. 15.8. In Kaviraj Pandit Durga Dutt Sharma vs. Navratna Pharmaceutical Laboratories, reported in AIR 1965 SC 980, it has been observed that when once the use by the defendant of the trade mark which is claimed to infringe the plaintiff's mark is shown to be "in the course of trade", the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise, for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered. In the present case, the undisputed fact is that the appellant's mark is not a registered trade mark and, therefore, the appellant is required to show that the mark used by the respondent is deceptively similar or identical so as to cause confusion in the minds of all concerned. 15.9. In an application of Bayer's Products Ltd., reported in (1947)2 All. E.R. 188 i.e. 64 RPC 125 C.A. the dispute was with respect to the two brand names, i.e. 'DIASIL' and 'ALASIL'. The former was for internal and external use. There was no user of mark. On the other hand, ALASIL was limited to "Sulphurdiazine Preparations" and was sold under a doctor's prescription and in a container being labelled "poison". It has been observed in it at page No. 773 and 774 as follows: "There was an argument, which was quite rightly put before us, to the effect that for the purposes of section 12(1), it is not the actual state of user that is conclusive or dominant' you have to look and see the description of goods for which the respective registrations are made or sought. It was pointed out, quite rightly, that the appellants have a registration which would cover, as I have already said, not merely sulphadiazine preparations, but any type of poison. It was said that there will be, therefore, an increased probability of deception if the appellants use their mark to the full extent to which they are entitled to use it, and the sub-section undoubtedly deals with that case and is not concerned with the limits of the actual user of the two marks; it is concerned with the ambit and scope of the registrations. That argument, in my opinion, does not carry the matter any further. The possibility of confusion in the domestic medicine cupboard or by the invalid on the invalid's bedside table has to assume that by some curious combination of circumstances, some coincidence, the two products would be in the medicine cupboard at the same time, or on the bedside table at the same time, otherwise there is no possibility of confusion. If the doctor had prescribed "Diasil", the patient would get "Diasil" into his medicine cupboard. The doctor has to give a written prescription and the chemist has to supply "Diasil" and that only, and I am nota going to assume that professional men of that character would make a mistake. The same would apply if the patient got a sulphadiazine preparation with the Opponents' "Alasil" mark upon it. Both those drugs would have reached the patient under the doctors prescription and in accordance with the doctor's orders. Of course, I should say that the "Alasil" product would not necessarily be a sulphadiazine, but might be some other type of poison; but that really does not carry the matter any further than the case which we are now considering on the basis of the appellants' present trade, because in such case you have to assume that the patient has got into his possession and under his control an "Alasil" product, be it poisonous or non-poisonous, and a "Diasil" product. In the circumstances, that is an assumption which you have to make before the possibility of confusion can arise. That argument is based on a number of assumptions of various degrees of probability. Speaking for myself, I feel that the likelihood of these various probabilities being found all to occur in the same case is so remote that I do not think that we would be justified in finding on that ground that the marks so nearly resemble one another that the registration of the Respondents' mark would be likely to deceive or cause confusion." 15.10. In Cadila Health Care Ltd. v. Cadila Pharma Ltd., reported in 2001 (2) GLH 53, there was a dispute between the two brand names i.e. "FALCITAB' and "FALCIGO". The Hon'ble the Supreme Court considered the principles governing an action for passing off and made following observations in para 35 : "35. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered: (a) The nature of the marks, i.e whether the marks are word marks or label marks ora composite marks, i.e. both words and label works. (b) The degree of resemblence 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. (f) The mode of purchasing the goods or placing orders for the goods, and (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks." 15.11. Thereafter in para 36, it has also been said that weight to be given to each of the aforesaid factors depends upon the facts of each case and the same weightage cannot be given to each factor in each case. 15.12. Again, the observations in para 33 are as follows: "The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions? We think not. In a country like India where there is no single common language, large percentage of population is illiterate and a small fraction of people know English, then to apply the principle of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiff's goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law, may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by