IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL UNDER SECTION 109 No 17 of 1995 For Approval and Signature: Hon'ble MR.JUSTICE K.M.MEHTA ============================================================ 1. Whether Reporters of Local Papers may be allowed : YES to see the judgements? Yes 2. To be referred to the Reporter or not? Yes 3. Whether Their Lordships wish to see the fair copy : NO of the judgement? No 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? No 5. Whether it is to be circulated to the Civil Judge? : YES To be circulated to Dist.Judge, lower court -------------------------------------------------------------- M/S.TORRENT PHARMACEUTICALS LTD. Versus THE WELLCOME FOUNDATION LTD -------------------------------------------------------------- Appearance: MR RR SHAH for Petitioner MR. VYAS FOR MR GN SHAH for Respondent No. 1 NOTICE SERVED for Respondent No. 2 -------------------------------------------------------------- CORAM : MR.JUSTICE K.M.MEHTA Date of decision:11/07/2001 C.A.V. JUDGEMENT 1. M/s Torrent Pharmaceuticals Ltd-original applicant-appellant-petitioners herein have filed this appeal against the judgment and order, dated 19.8.94 passed by the Assistant Registrar of Trade Marks-the respondent No.2 herein wherein he has allowed the opposition No.AMD 425 filed by Welcome Foundation Ltd. (hereinafter referred to as "the opponent No.1") and application No.483813 in class 5 of Fourth Schedule of the Act is ordered to be refused for registration under the provisions of Trade & Merchandise Marks Act, 1958 (hereinafter referred to as "the Act"). 2. FACTS: 2.1 The appellants are company incorporated under the provisions of the Companies Act and carrying on business at Ahmedabad. 2.2 The appellants filed application on 1.5.1988 and applied for registration of Trade Mark "TROVIREX" vide application No.433813 in class 5 of Fourth Schedule of the Act in respect of medicinal and pharmaceutical preparations. The aforesaid application was accepted for registration by the respondent No.2 herein and was accordingly advertised in Trade Mark Journal No.102 dated 1.3.1992 on page 1479 of journal No.1026 dated 1.3.92. Copy of the said trade mark journal has been produced at Exh.A to the memo of appeal. 2.3 The Welcome Foundation Ltd., an English Company, respondent No.1 herein gave a notice on 27.4.92 of their intention to oppose the registration of the trade mark advertised as aforesaid on the ground of its violation of sections 9, 11(a), 11(e), 12(1) and 18(1) of the Act. On 27.7.92 the applicants contested the said notice of opposition by filing their counter statement (under section 26 of the Act) consisting the grounds in support of the registration of the application as well as the grounds in rebuttal to the objections taken by the opponents in their notice of opposition. The opponents objected to the said application on the ground that one of their trade marks are ZOVIRAX which was registered since 17.78.77 in class 5 and another ZOVIREX in class 5 in respect of pharmaceuticals and medicinal preparations and substances having registered since 17.8.77 and 14.4.78 respectively. 2.4 The opponent-respondent No. 1 on 30.3.93 filed evidence in support of their opposition by way of affidavit, dated 24.3.93 in the name of Shri Alan Sinclair Cox-Trade Marks Manager in the opponents company annexing therewith list of various trade marks of the opponents registered in different countries in the world which was produced at annexure "A" to the said affidavit. In the said affidavit it was stated that in India, their company conducts its business through its associate company, Burroughs Wellcome (India) Ltd. having address at Bombay in which their company has an equity stake of 40%. It was further stated that the company has permitted Burroughs Wellcome (India) Ltd. to use, interalia, its trade marks in relation to its goods only so long as they are manufactured and marketed by Burroughs Wellcome (India) Ltd. It has also decided to manufacture in strict accordance with the specifications, formulae and standards of quality laid down, directions and instructions given and information supplied by the company only so long as the company through its authorised representatives has the right and is permitted to inspect the goods made and sold by Burroughs Wellcome (India) Ltd. It was further stated that owing to the control and supervision exercised by the company over Burroughs Wellcome (India) Ltd. the goods produced and sold by Burroughs Wellcome (India) Ltd. under Zovirax-series of trade marks or any of them conform to international standards of quality and thus command great reputation and valuable goodwill among members of the medical profession, pharmaceutical industry and the relevant class of patients in India. 2.5 The applicant filed affidavit in reply in support of application on 28.5.93. The affidavit was filed in the name of Shri Divyang R.Shah , the company Secretary of the applicant-Company. 2.6 The opponents filed their reply evidence on 12/11/1993 by way of affidavit, dated 21.10.1993 in the name of Shri Alan Sinclair Cox- the Trade Marks Manager of their company. 2.7 The Assistant Registrar of Trade Marks thereafter heard the application of the opponents somewhere on 28.1.1994 when respective counsel for the applicants and opponents appeared before him. 2.8 After hearing the parties, the Assistant Registrar of Trade Marks, by his order, dated 19.8.1994 came to conclusion that the marks, i.e. marks of applicant and opponents have the highest degree of resemblance visually as well as phonetically. The Assistant Registrar also came to conclusion that the mark applied for, i.e. TROVIREX is deceptively similar to the opponents' registered trade marks namely ZOVIREX and ZOVIREX. The Assistant Registrar also came to conclusion that on perusal of the record he did not find any evidence that the mark applied for is in respect of Schedule "H" drug. The Assistant Registrar also came to conclusion that the mark applied for is so nearly resembling to the opponents' registered trade mark as to likely to deceive or cause confusion, hence, are the deceptively similar trade marks, and it was held that both the conditions required to invoke the prohibition contained under section 12(1) of the Act are fulfilled, therefore, the registration of the mark applied for namely TROVIREX is prohibited by operation of section 12(1) of the Act. The Assistant Registrar also came to conclusion that the proposed use of the mark applied for which is deceptively similar to the opponents' trade marks shall definitely create confusion in the minds of consumers who are acquainted with the opponents' product under their aforesaid trade marks. The registration of the mark applied for is, therefore, prohibited by operation of section 11(a) of the Act. In view of the same, the Assistant Registrar allowed the opposition of the opponent and refused the registration of the applicant-Trade mark. 3. STATUTORY BACKGROUND: 3.1 The Trade And Merchandise Marks Act, 1958 (hereinafter referred to as "the Act") has been enacted to provide for the registration and better protection of trade marks and for the prevention of the use of fraudulent marks on merchandise. 3.2 Section 2(1)(d) provides definition of "Deceptively similar" means 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. 3.3 Section 2(1)(j) provides definition of "mark" means 'mark' includes a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof". 3.4 Section 2(1)(p) defines "registered" means "registered under this Act". 3.5 Section 2(1)(r) defines "registered the trade mark" means "a trade mark which is actually on the register". 3.6 Section 2(1) (v) defines "trade mark" means-- (i) in relation to chapter X (other than s.81) a registered trade mark or a mark used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some persons having the right as proprietor to use the mark; and (ii) in relation to other provisions of this Act, a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, either as proprietor or as registered user, to use the mark whether with our without any indication of the identity of that person, and includes a certification trade mark registered as such under the provisions of Chapter VIII. Chapter II provides for Register and Conditions for Registration. Chapter III provides for Procedure for and duration of Registration 3.7 Section 9 provides for requisites for registration in Parts A & B of the register. 3.8 Section 11 provides for prohibition of registration of certain marks and reads as under: A mark-- (a) The use of which would be likely to deceive or cause confusion, or (b) The use of which would be contrary to any law for the time being in force, or (c) Which comprises or contains scandalous or obscene matter, or (d) Which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India, or which would otherwise be disentitled to protection in a court shall not be registered as a trade mark. 3.9 Section 12 provides for prohibition of registration of identical or deceptively similar trade marks and reads as under: (1) Save as provided in Sub.sec(3), no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods. (2) Where separate applications are made by different persons to be registered as proprietors respectively of trade marks which are identical or nearly resemble each other in respect of the same goods or description of goods, the registrar may defer the acceptance of the application or applications bearing a later date until after the determination of the proceedings in respect of the earlier application, and may dispose of such application or applications in the light of the evidence tendered in relation to earlier application and the oppositions thereto, if any. (3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods, subject to such conditions and limitations, if any as the Registrar may think fit to impose. 3.10 Chapter III provides for procedure for duration of registration. Section 18 provides for application for registration. This section provides as to how application for registration to be made. Once Registrar accepts the application for registration, the application is required to be advertised under section 20 in Trade Mark journal. Once such application is advertised there may be opposition for registration of trade mark in favour of applicants and therefore section 21 makes provision for lodging such opposition and as to how such opposition is to be dealt with. 3.11 Section 21 reads as under: "Section 21. Opposition to registration: (1) Any person may within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar of opposition to the registration. (2) The registrar shall serve a copy of the notice on the application for registration and within two months from the receipt by the applicant of such copy of the notice of opposition, the applicant shall send to the Registrar in the prescribed manner a counter statement of the grounds on which he relies for his application and if he does not do so, he shall be deemed to have abandoned his application. (3) If the applicant sends such counter statement the Registrar shall serve a copy thereof on the person giving notice of opposition. (4) Any evidence upon which the opponent and the applicant may rely shall be submitted in the prescribed manner and within prescribed time to the Registrar, and the Registrar shall give an opportunity to them to be heard if they so desire. (5) The Registrar shall, after hearing the parties, if so required, and considering the evidence decide whether and subject to what conditions or limitations, if any, the registration is to be permitted, and may take into account a ground of objection whether relied upon by the opponent or not. (6) Where a person giving notice of opposition or an applicant sending a counter statement after receipt of a copy of such notice neither resides nor carries on business in India, the Registrar may require him to give security for the costs of proceedings before him and in default of such security being duly given, may treat the opposition or application, as the case may be, as abandoned. 4. Shri R.R.Shah, the Ld. advocate for the appellant has made the following submissions: 4.1 He has stated that the learned Assistant Registrar of Trade marks has completely misdirected himself in passing the order under section 12(1) of the Act against the appellants. He has further stated that the learned Assistant Registrar of Trade Marks has failed to consider the application even in section 12(3) of the Act. He has further stated that the learned Assistant Registrar of Trade Marks has completely misdirected himself in passing the order under section 11(a) of the Act against the appellants. He has submitted that the learned Assistant Registrar of Trade Marks has failed to consider the fact that the prefix of a mark or a first syllabi is important while considering the rival marks as to whether they are identical or deceptively similar to each other. He has further stated that the learned Assistant Registrar of Trade Marks has erred in appreciating the fact that the appellants' trade mark applied for is to be used in respect of schedule "H" drug. That the learned Assistant Registrar of Trade Marks has failed to consider that the mark applied for is an invented one and does not conflict with the trade mark ZOVIRAX of the respondent No.1. The learned Assistant Registrar also failed to appreciate consider that the respondent No.1 has not filed any evidence of user of the trade mark ZOVIREX in India. 4.2 The learned counsel has relied on the judgment of the Division Bench of this court (Coram: R. Balia & A.R.Dave,JJ) decided in OJ Appeal No.11/93 decided on 8.12.1998. In that case the question before the Division Bench was as to whether the registration of trade mark "Ulciban" was deceptively similar to the trade mark "CIBA" of the opponent or not. The Division Bench was pleased to make following observations: "In comparing two work marks to find out what is the essential feature of the mark in use and the mark proposed to be used, the first syllable provides an important guideline which is of utmost importance in the word mark. The test of relative resemblance between comparative marks must depend upon whether the proposed mark contains element of earlier mark in its essential character in prominent way. If the same is used with its projection in any manner prominently, so as to create an impression that addendums are superfluous, the same may be ignored and the substance of the matter may be seen, but at the same time, merely because those very letters in the same order are part of a different word, which is independent of other,the latter can not be denounced by straining to find out similarity. The likelihood of deception must be in ordinary and spontaneous reaction to the marks and not through a strained of an expert. In this connection, it is very relevant that somebody buying a prescribed drug is not really concerned with trade origin of the drug. He is most concerned with what has been prescribed by the doctor. Moreover, as we have noticed above, confusion can be caused in three ways, confusion as to goods, confusion as to trade origin and confusion as to trade connection. In the matter of dispensation of medicinal preparation, test relates to trade origin or trade connection is not of much importance inasmuch as average man of common intelligence who has to purchase drugs on doctor's prescription is not concerned either with trade origin or trade connection, but with the goods itself. This confusion which is likely to be caused in that field attracts more importance than other factors. What is to be considered in the context of inhibition under section 11 is the probable effect of normal and fair use of applicant's mark and not by assuming strained and unfair abnormal use by any unscrupulous men and public. In other words, the test is by assuming that mark sought to be registered is to be used in fair and normal way and by user in such way, what is its probable effect vis a vis impression of actual user of the opponent's mark. 4.3 Mr.R.R.Shah in support of his contentions relied on the judgment reported in Johann A Wulfing vs Chemical Industrial & Pharmaceutical Laboratories Ltd. reported in AIR 1984 Bombay 281. In that case the Bombay High Court was considering whether the word CIPLAMINA is deceptively similar to word COMPLAMINA. In para 8 of its judgment the Division Bench of the Bombay High Court held as under: "The court is not concerned with hypothetical possibilities but with ordinary practical business probabilities having regard to the circumstances of the case.(F.Hoffmann Roche vs Sanitex Chemical Industrties (1965) 67 Bom LR 729). In the present case, all things considered, (visually and phonetically). We do not see any real tangible danger of 'confusion in the mind of the public which will lead to confusion in the goods"(Pianotist case, (1906) 23 RPC 774 at p.777)". 4.4 The learned counsel for appellants has also relied on the judgment of Bombay High Court in the case of Cluett Peabody & Co.Inc vs Arrow Apparals reported in 1998 PTC (18). In that case the plaintiff filed suit to restrain infringement plaintiff Nos.1 registered trade mark "ARROW" consisting of word mark "ARROW" and also the device of "ARROW" in relation to ready made garments. The suit was also to restrain the defendant from in any manner using in relation to ready garments the infringed mark "ARROW" and of device 'ARROW' or any mark deceptively similar thereto on deceptively similar to any marks mentioned in Exh.A to the plaint so as to pass of or enable others to pass of the goods of the defendants as and for the goods of the plaintiffs. On page 178 the court observed as under: "The suit is rightly filed by the plaintiffs because they are the registered proprietors of the trade mark. This position can not be disputed. However, in the present case, this court is of the opinion that the defendants have made out a strong primafacie case that they have used the mark right from 1985 to the knowledge of the World at oarge and without any interruption." The court on page 180 observed as under: "There is no prima facie evidence of user by the plaintiffs in India of the mark ARROW either by affixing the mark on goods or in relation to the goods of the plaintiffs in India. All the advertisements are post 1991. I am not inclined to rely upon the advertisements of 1980 in TIME magazine. There is nothing to indicate that TIME magazine, in 1980 was available on the counter in India. In fact, it is contended by the defendants that TIME magazine was not available to the public in India during the relevant period. There is no evidence of the reputation of the plaintiffs coming to India before 1985. Therefore, taking into the above facts, there is a strong effect of delay on the nature of the relief and I am not inclined to grant injunction in favour of the plaintiffs." 4.5 Learned counsel has also relied on the judgement of this court in the case of CADBURY INDIA LIMITED VS. S.M. DYECHEM LIMITED reported in 41(1) GLR 680. In that case the plaintiff registered a label mark PIKNIK with particular design for marketing potato chips, wafers etc. with defendant marketing chocolate product in the name of CADBURA PICNIC. On page 699 at para 39 it is observed thus: "In these circumstances, there is absolutely no scope of any deception or confusion or passing off. The products of the defendant and the plaintiff are distinct and there is also no scope of passing off because the defendant's products are brought because of the defendant's reputation as Cadbury. In the instant case, even the labels of the defendant and the plaintiff are different and distinctive and there is no scope of confusion and deception in the mind of an average buyer. In view of the aforesaid discussion, there is no scope of passing off the defendant's goods as and for that of the plaintiff." At para 40 it is further observed as under: "In view of the discussion made in the foregoing paragraphs, following aspects are high-lighted: (i) Plaintiff's trade mark having a label containing the word `PIKNIK' written in a particular script and manner with a caricature of a little boy above it though registered having a phonetic similarity to the word found in dictionary word picnic. (ii) The word PIKNIK on that label is neither invented nor a distinctive word and it is also not an essential feature of the plaintiff's trade mark which is a label. Therefore, no action for infringement against the defendant can lie. (iii) Since registration which is granted to the plaintiff is a label mark such registration does not prevent any one from using the dictionary word Picnic with respect to its goods and therefore also no action of infringement would take place. (iv) The articles manufactured and marketed by both the plaintiff and defendant are different and therefore also no action of infringement would arise. (v) So far as passing off is concerned, both the products are different, labels are different and, therefore, no scope of confusion or deception in the mind of common buyer. Therefore, there is no scope of passing off the goods of the defendant as and for that of the plaintiff. (vi) Since there is no infringement, there is no prima facie case. (vii) In view of the new formula elucidated in the case of American Cyanamid (supra) balance of convenience is tilted in favour of the defendant. If it appears that the damages awarded at the trial will adequately compensate the plaintiff and the defendant is likely to be able to pay, then, interlocutory relief should not normally be granted. Applying this principle to the present case, it appears to me that to grant an injunction will be to cut off for good the road to commercial success of a business competitor. In the event of the plaintiff's success damages will be an adequate remedy. The defendant's financial position to pay damages has not been questioned before me and they are prepared to give an undertaking. Therefore, the balance of convenience lies in favour of refusing the interlocutory relief that is sought." 4.6 The learned counsel for the petitioner has further relied on the decision of the Hon'ble Supreme Court in the case of S.M. DYECHEM LTD. VS. CADBURY (INDIA) LTD. reported in (2000) 5 SCC 573 where the appeal arose out of the judgement of this court in the case of CADBURY (INDIA) LTD. VS. S.M. DYECHEM LTD. (supra). On page 596 at para 35, the Hon'ble Court has observed as follows: "It appears to us that this Court did not have occasion to decide, as far as we are