1 IN THE HIGH COURT OF JUDICATURE AT BOMBAY O. O. C. J. NOTICE OF MOTION NO.4183 OF 2007 IN SUIT NO.3054 OF 2007 Wyeth Holdings Corporation & Anr. ...Plaintiffs. Versus Burnet Pharmaceuticals (Pvt.) Ltd. ...Defendant. ....... Mr. T.N. Daruwala with Mr. Darius Dalal, Ms. Hemlata Marathe and Ms. Rashmi Thakur i/b. M/s. Jahangir Gulabbai Bilimoria and Daruwala for the Plaintiffs. Mr. V.R. Dhond with Mr. Rahul Kadam and Mr. A. W. Kane i/b. H. W. Kane for the Defendant. ...... CORAM : DR. D.Y. CHANDRACHUD, J. January 25, 2008. ORAL JUDGMENT: This order will govern the Plaintiffs' Motion for interlocutory relief in an action for passing off and infringement. 2. On 6th September 1946, an application was made for the registration of the trade mark “FOLVITE” in class-5 in respect of “a nutritional factor of Vitamin B-Complex in the treatment and prevention of vitamin deficiencies and anemias”. The mark was 2 advertised in the Trade Marks Journal and came to be registered in class-5 on 28th April 1949. The registration of the mark continues to be valid and to subsist. The First Plaintiff entered into a Registered User Agreement on 30th April 1986 with Cyanamid India Limited. The name of Cyanamid India Limited was changed to Wyeth Lederle Limited with effect from 1st January 1998. It is undisputed that the Plaintiffs are entitled to use and adopt the mark FOLVITE in a proprietary character. 3. The Defendant initially adopted the mark FOLCACID for its products. Subsequently, the mark was changed to FOL-V. Permission to do so was granted by the Drugs Control Authorities on 19th December 2000. In May 2000, the Defendant had filed an application for the registration of the mark FOL-V in respect of medicinal and pharmaceutical preparations falling in class-5. The Defendant stated that the mark was proposed to be used. Upon the mark being advertised, the Plaintiffs filed an opposition to the registration of the mark. On 15th December 2006, an order was passed by the Registrar of Trade Marks refusing registration to the 3 trade mark FOL-V of the Defendant. The principles grounds which weighed to the Registrar were thus: -(i) The Defendant's mark FOL-V bears similarity to the earlier trade mark FOLVITE of the Plaintiffs and having regard to the similarity of the goods involved, there was a likelihood of confusion on the part of the public, particularly since it was established that the mark of the Plaintiffs had acquired a reputation in the Indian Market; (ii) Though the Defendant may be right in contending that the prefix FOL was common to the trade, the mere addition of the common alphabet 'V' which denotes 'Vitamin' cannot lend sufficient distinction to the mark of the Defendant from the mark of the Plaintiffs considered as a whole. There was an apparent danger of the public being confused and the use of the mark FOL-V would be detrimental to the distinctive character or repute of the mark of the Plaintiffs; (iii) The mark FOL-V adopted by the Defendant was visually and phonetically similar to the trade mark FOLVITE of the Plaintiffs; (iv) As a result of a long and extensive user, the mark of the Plaintiffs has acquired a tremendous reputation in the Indian Market and the user of 4 a deceptively similar mark by the Defendant was likely to cause confusion in the mind of the public and the trade. 4. The Defendant has filed an appeal against the order passed by the Registrar refusing registration to the Intellectual Property Appellate Board. The appeal is pending. 5. The suit out of which these proceedings arise has been instituted for infringement and passing off. 6. In support of the application for injunction, it has been urged on behalf of the Plaintiffs that (i) The goods of the Plaintiffs and the Defendant are identical and the mark of the Defendant is visually and phonetically similar to the mark of the Plaintiffs. Comparing the mark as a whole, it is evident that the Defendant has adopted a mark which is deceptively similar to the mark of the Plaintiffs which consists of an invented word; (ii) There is a serious likelihood of confusion since both the marks are used for the same ailment, for the same purpose, and by the same type of customers or patients and the mark of the 5 Defendant is deceptively similar; (iv) The adoption of the mark FOL-V by the Defendant is not honest and there is neither any explanation nor any traverse on affidavit of the reasons which led the Defendant to change over from the mark FOLCACID to FOL-V; (v) There is no delay or acquiescence on the part of the Plaintiffs in filing the suit and the conduct of the Plaintiffs in opposing registration of the Defendant's mark and other similar marks would be indicative of the fact that there was no abandonment by the Plaintiffs of their right to sue for infringement and passing off; (vi) The mark of the Plaintiffs was registered as a nutritional factor of the Vitamin B-Complex for the treatment of anemia and it is a misnomer to suggest that the mark as registered is confined to a folic acid preparation. FOLVITE is an invented word and so long as the registration continues to remain valid and the mark continues on the Register, the consequence of an infringement must follow; (vii) In view of the judgment of the Supreme Court in Cadila Health Care Ltd vs. Cadila Pharmaceuticals Ltd.,1 a deceptive similarity in the case of medicinal products must be dealt with by a great degree of strictness in order to protect the members of the public from the serious consequences that may ensue as a result 1 AIR 2001 SC 1952 6 of such confusion; (viii) The relevant date for the cause of action is the date on which the conduct of the Defendant commenced. In the present case, the Plaintiffs have established sales of Rs. 9.89 crores in the year 2000-01 and Rs.60 crores between 1990 and 2001 in respect of the mark FOLVITE. The Defendant has adduced no proof whatsoever of the actual sales of the other products using the prefix FOL; (ix) The Plaintiffs had opposed the registration of similar marks Fulivit and FLUOVITE – one application was abandoned while the second was withdrawn; (x) Having filed an application for the registration of FOLVITE, the Defendant cannot be heard to say that their mark is not distinctive or that the word FOL represents Folic acid and 'V', Vitamin. The argument would be self defeating. 7. On the other hand, it has been urged on behalf of the Defendant that (i) There has been a delay on the part of the Plaintiffs in moving the Court in circumstances in which an inference can be drawn that there has been an acquiescence in the conduct of business by the Defendant with the use of the offending mark. There is a distinction between registration and use of a mark and while the 7 Plaintiffs were opposing the registration of the mark, they consciously made a decision not to oppose the use of the mark, allowing the business of the Defendant to be built up over a period of seven years; (ii) The judgment of the Supreme Court in Cadila Health Care which holds that a stricter test should be applied in the case of pharmaceutical products, should not be applied to all classes of medicines but only to those cases where both the drugs are meant for curing the same ailment but the compositions are different; (iii) There is no phonetic or structural similarity between the two marks. Under Section 30(2)(a) of the Trade Mark Act, 1999, a registered trade mark is not infringed where the use in relation to goods or services indicates inter alia the kind, quality, intended purpose or other characteristic of the goods and services; (iv) The abbreviation FOL stands for FOLICACID, while the abbreviation VIT stands for Vitamin, both of which are generic descriptions common to the trade. When a word consists of a common element, greater emphasis must be laid on the uncommon elements. Consequently, in assessing where there is deceptive similarity, both sets of letters viz., “FOL” and “VIT” must be excluded. The 'e' is all that remains in the mark of the Plaintiffs. 8 8. At the outset, it would be necessary to advert to the relevant provisions of the Trade Marks Act, 1999. Section 28(1) of the Act confers upon the registered proprietor of a trade mark, the exclusive right – upon a valid registration – to the use of the trade mark in relation to goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement in the manner provided by the Act. Section 29(1) provides 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 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. The expression “deceptively similar” is defined in Section 2(1)(h): “A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.” Section 30 of the Act defines limits on the effect of a registered trade mark. Sub-section (2) of Section 30 provides for certain situations in 9 which a registered trade mark is not infringed. Among them is a situation in which a mark is used in relation to goods or services to indicate inter alia the kind, quality, intended purpose, value, geographical origin or other characteristics of the goods or services. 9. The principles which must guide the Court in determining whether the Defendant's mark is deceptively similar to the mark of the Plaintiffs were enunciated in the judgment of Mr.Justice Parker in the Pionotist Case:2 “You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion – that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods – then you may refuse the registration, or rather you must refuse the registration in that case.” The dictum of Justice Parker has been cited with approval in the 2 1906(23) RPC 774 10 judgments of the Supreme Court in Amritdhara vs. Lakshmandhara,3 (at para 7) and more recently in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (supra). The judgments of the Division Bench of this Court in Ciba Ltd. vs. M. Ramalingam,4 and Indchemie Health Specialities Pvt. Ltd. vs. Naxpar Labs Pvt. Ltd. ,5 follow the dictum. 10. Since the judgment of the Supreme Court in National Sewing Thread Co. Ltd. Chidambaram v. James Chadwick and Bros. Ltd.,6 it is a settled principle of law that the Court must assess each matter from the position of a purchaser “who must be looked upon as an average man of ordinary intelligence”. For it is such a purchaser whose reaction to a particular trade mark has to be considered and what association he would form, by looking at the trade mark and in what respect he would connect the mark with the goods he would be purchasing. In Corn Products Refining Co. vs. Shangrila Food Products Ltd.,7 the mark of the appellant, 3 AIR 1963 SC 449 4 1957 (59) BLR 548 5 2002(24) PTC 341(Bom) 6 AIR 1953 SC 357 7 AIR 1960 SC 142 11 “Glucovita”, was registered. The Respondent applied for the registration of the mark “Gluvita”. The Deputy Registrar held that the mark proposed to be registered by the Respondent was not visually and phonetically similar. A Learned Single Judge of this Court held that the two marks were sufficiently similar so as to be reasonably likely to cause deception and confusion and held that the Respondent's mark could not be registered. A Division Bench on appeal held inter alia that there were a series of marks in which the prefix or suffix 'Gluco' or 'Vita' occurred and it could not be said that these common features were only associated with the appellant's case. The judgment of the Learned Single Judge was set aside. The Supreme Court set aside the judgment of the Division Bench of this Court and restored the order of the Learned Single Judge. The Supreme Court dealt with the finding of the Division Bench that trade marks with the prefix or suffix 'Gluco' and 'Vita' were common features of the trade and could not be associated only with the appellant's product, and observed thus: “The second point on which the learned appellate Judges based themselves in arriving at the conclusion that there was no reasonable apprehension of confusion or deception was, as we have earlier stated, that there were various 12 trade marks with a prefix or suffix 'Gluco' or 'Vita' and that made it impossible to say that the common features 'Glu' and 'Vita' were only associated with the appellant's products. This view was founded on a passage which the learned appellate Judges quoted from Kerly on Trade Marks, 7th Edn., p.624. That passage may be summarised thus: Where there are a “series of marks, registered or unregistered, having a common feature or a common syllable, if the marks in the series are owned by different persons, this tends to assist the applicant for a mark containing the common feature. This statement of the law in Kerly's book is based on In re: an Application by Beck, Koller and Co. (England) Ltd., (1947) 64 R.P. C. 76. It is clear however, from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these marks had acquired a reputation by user in the market.” (emphasis supplied) The Supreme Court cited with approval the judgment in re: Harrods Application and the principle therein that the character comprising of a common element should be established to be in fairly extensive use. The Supreme Court observed thus: “(15) The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had 13 happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p. 507 & Willesden Varnish Co. Ltd. v. Young & Marten Ltd., (1922) 39 RPC 185 at p. 289.” (emphasis supplied) . The Supreme Court noted that the Court would have to give due regard to the position that the word was an English word and was a foreign word to the mass of the Indian people and observed that in deciding a question of similarity between two marks, the marks have to be considered as a whole. Again, the question has to be approached “from the point of view of a man of average intelligence and/or imperfect recollection”. To such a person, the structural and phonetic similarity and the similarity of the idea underlying the two marks was held to be reasonably likely to result in confusion. 11. The same principles were reiterated by the Supreme Court in Amritdhara Pharmacy (supra) and in Durga Dutt Sharmav. N.P. Laboratories.8 In F. Hoffmann-La Roche & Co. Ltd. vs. Geofferey 8 AIR 1965 SC 980 14 Manners & Co. Pvt.Ltd.,9 the question was as to whether the mark 'Dropovit' of the Respondent was deceptively similar to the registered mark 'Protovit' of the Appellant so as to warrant a removal from the register. The Joint Registrar had dismissed an application for rectification of the Register made by the Appellant, for the removal of the Respondent's mark and the decision was affirmed by a Learned Single Judge and a Division Bench of this Court. The Supreme Court observed that the affidavits of the Appellant itself indicated that the last three letters 'VIT' constituted a well known abbreviation in the pharmaceutical trade to denote vitamin preparations. The abbreviation 'vit' in both the marks was regarded as being descriptive and common to the trade. The Supreme Court held that if greater regard was to be had to the uncommon element, it was difficult to hold that the prefix 'Dropo' would be confused with 'Proto'. The Supreme Court reiterated the test that the two marks would have to be compared as a whole and little assistance would be obtained from a meticulous comparison, letter for letter. The Court would have to make an allowance for a person with imperfect recollection. Thus considered the word Dropovit was held not to be deceptively similar 9 AIR 1970 SC 2062 15 to Protovit. 12. In Cadila Health Care (supra), the Supreme Court revisited the entire issue of deceptive similarity in the context of pharmaceutical preparations. About a year before the decision in Cadila, there was an earlier decision of the Court in S.M. Dyechem Ltd. v. Cadbury (India) Ltd., 10 in which it was observed that where common marks are included in rival trade marks, more regard was to be paid to the parts not common and the proper course was to look at the marks as a whole, but at the same time not to disregard the parts which are common. The Court had observed that dissimilarities in essential features in devices and composite marks are more important than some similarity. The Supreme Court disapproved of the formulation of legal principle in S.M. Dyechem and observed that decisions of the Court over four decades had laid down that what was required to be analysed in an action for passing off was the similarity between the competing marks and the likelihood of deception. The factors which were enunciated by the Supreme Court in deciding the issue of deceptive similarity are as follows : 10 (2000) 5 SCC 573 16 “(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 marks; b) The degree of resemblance 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, or 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.” 13. The Supreme Court emphasized the need of a stricter standard in matters of infringement and passing off involving pharmaceutical products in Cadila:11 “Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal product. Drugs are poisons, not sweets. Confusion 11 At paragraph 32 page 1964 17 between medical products may, therefore, be life threatening, not merely inconvenient.” 14. But the Defendant in the present case has submitted that the observations of the Supreme Court in Cadila must be confined to those cases where the competing marks are used in drugs with different compositions and in support of this submission, reliance has been placed on the following observations contained in paragraph 25 of Cadila: “The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The Courts need to be particularly vigilant where the defendant's drug, of which passing of is alleged, is meant for curing the same ailment as the plaintiffs medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems.” The judgment of the Supreme Court in Cadila has to be read in its entirety. The width and ambit of the test laid down by the Supreme Court cannot be restricted by an artificial process of construction which focuses attention only upon the observations contained in the 18 aforesaid extract. In fact, in a subsequent part of the judgment, Supreme Court held thus: “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 the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effect on health and in some cases life itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effect on the public health.” 14A. As a matter of principle, it would be inappropriate for the Court to apply a stricter standard only to a particular class of medicinal preparations. If the Court were to do this, it would have to make artificial distinctions from case to case based on whether or not the Court considers that a confusion arising out of the medicinal product in issue may or may not have disastrous effects on health and life. Such an approach is impermissible. An ostensibly innocuous 19 medicinal preparation taken for an affliction which is not life threatening may yet result in a serious danger to life and health, where the drug is not manufactured under correct conditions. A consumer who desires to obtain a medicine even for an ordinary ailment is entitled to be sure that the drug that he purchases is of