IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION APPEAL NO.163/2008 IN NOTICE OF MOTION NO.4429/2007 IN SUIT NO.3221 OF 2007 M/s Universal Twin Labs 29 , Sahakar Niwas , Tardeo Road, Mumbai 400 034 , Also Administrative Office at 89 , Peerbhoy Building , Appellant/Ori. Mumbai 400 002. Defendant V/s Ranbaxy Laboratories Limited , A Public Limited Company Incorporated and registered Under the provisions of the Companies Act , 1956 and having its Corporate office at Plot no.90 Sector -32 , Gurgaon , Haryana Respondent / (Original Plaintiff ) Mr.V.R.Dhond with Mr.Ashish Kamath i/b M/s Bharat Shah and Co. for the appellant Mr.Ravi Kadam ,Advocate General with M/s Henal Vakharia ,Mr.H.P.Singh and Mr.T.N. Daruwalla i/b Ms.Henal Vakharia for the respondent 2 CORAM: S.B.Mhase , & Prasanna B.Varale , J.J. Judgment Reserved on-22/7/2008 Judgment Pronounced on-14/11/2008 ORAL J U D G M E N T (Per Prasanna B.Varale ) 1] An Appeal is directed against the order passed by this Court dt.30.1.2008 ( Hon.Dr.J.Chandrachud ) whereby notice of motion filed by the respondent-plaintiff was made absolute in terms of prayer clause (a) to (d) except the bracketed portion of prayer clause (c) . By consent of the advocates appearing for the parties the Appeal was heard for final disposal . The suit is filed by the plaintiffs seeking the prayer of injunction against the defendants in any manner manufacturing, marketing, selling offering for sale ,advertising directly or indirectly dealing in or using in respect of pharmaceutical and medicinal preparations bearing the mark VONIGEL or any other descriptively similar marks so as to infringe the plaintiff's registered trade mark ''VOLINI'' bearing no.609904.In the said suit Notice of Motion no.4429/2007 was filed by the plaintiff-respondent .The same was made absolute in terms of prayer clause (a) to (d) except bracketed portion. Thereafter the defendant-appellant has preferred this appeal . For the sake of convenience the appellant is referred to as defendant and the respondent is referred to as plaintiff. 2] The contention of the plaintiff is that the plaintiff is a 3 company duly registered under the Law viz .Ranbaxy Laboratories Ltd. It is further submitted that the plaintiff company is carrying out its business in relation to preparation of medicinal and pharmaceutical preparations as well as research work. It is further contended that the plaintiff company is having registered proprietary trade mark '' Volini '' bearing registration no.609904, which is a medicinal and pharmaceutical preparation and the same is an ointment to be used for relief from pain, swelling and inflammation. The said medicinal preparation/ ointment is marketed throughout India and the said mark is in continuous use since 1994 . The plaintiff company has undergone a long process to coin and promoting the word 'Volini' so as to have a unique feature and huge expenditure is incurred by the plaintiff company to launch the product in the market with effective promotion and the product has received tremendous reputation in the market and the public . The plaintiff submitted the sales figure of the product as well the promotional expenses incurred by the plaintiff for the product and the description such as colour combination , logo,words, get up of the product . It is the contention of the plaintiff that the plaintiff company is having exclusive right of the said product Volini, which is a popular product in the market , and deceptive use of the similar mark by any one else than the plaintiff would amount to violation of the plaintiff's legal rights. The further contention of the plaintiff is that the defendants have started manufacturing a product under the trade mark 'Voni Gel' which is similar or identical to the trade mark Volini and the mark Voni Gel of the defendant as well the 4 carton of the ointment Voni Gel is phoneticall,visually and structurally identical with the plaintiff's mark barring a few un-noticeable change of letters . The further contentions of the plaintiff are that by such act, the defendant, has copied the trade mark of the plaintiff and has prepared carton of the ointment in such a way that the product Voni Gel looks identical and similar to the product Volini and because of the overall effect of the said product Voni Gel an unwary customer is bound to be confused. The plaintiff has also given in detail the features such as diagram, colour scheme ,words of the product Volini of the plaintiff and product Voni Gel of the defendant.The plaintiff submits that by such dishonest adoption ,the defendants are causing not only confusion in the mind of public , but also causing damage to the plaintiff's business which is fairly well in the said medicinal and pharmaceutical preparation for the relief of pain and also damage to the goodwill and reputation earned by the plaintiff company. 3] The defendant resisted the claim of the plaintiff and submitted that the defendants have honestly conceived and adopted the trademark 'Voni Gel' some time in late 2005 . It was further submitted that on or about 10.3.2006, an application for registration of trade mark Voni Gel has been made by the defendants to the Registrar of Trade Marks under clause 5 and the same is pending for registration. It was further submitted by the defendant that a firm by name and style M/s Universal Twin Labs was carrying out the 5 business from 1992 to 2006 and because of the disputes and differences between the partners of the firm said firm M/s Universal Twin Labs was dissolved. The persons namely Satish Mehta and Jayesh Mehta who were and are the proprietors of the firm Universal Twin Labs were bearing trade mark Enac Gel Excel and the said product was being used having four diagrams appearing on the carton of the product for nearly 8 years. It was also submitted that copyrights of the product Enac Gel Excel were also registered in the name of and by the use of M/s Universal Twin Labs . The defendants further submit that because of the disputes between the partners there is proceeding pending before this High Court and as the proceeding is pending ,the defendants started using the trade mark Voni Gel Excel having similar carton of four diagrams, colour scheme ,design and get up which is appearing on Enac Gel Excel . The defendants have taken an objection on the ground that though the defendant is using the trade mark Voni Gel some time in the year 2005 , the plaintiffs have filed suit in the year 2006 and as such the product Voni Gel openly and extensively available in the market in the year 2005 and the defendants have also spent considerable amount for advertisement and promotional expenses .The plaintiffs were also aware that the defendant is using the trade mark VONI GEL EXCEL since the year 2005 . The plaintiffs after over period of 16 months filed suit which makes the plaintiff guilty of acquiescence to the defendant's use of trade mark VONIGEL . It was also submitted by the defendant that there is no similarity on the label/cartons of their product VONIGEL 6 and the product of plaintiff VOLINI . These two products are altogether different and distinct and as such the plaintiff cannot claim any exclusive right . The defendant further submitted that the colour combination / diagram /symbol picture on the carton of the product are also different and distinct . The defendant submitted that it was the honest and bonafide creation of the product VONIGEL EXCEL by the defendant which is unique and distinctly separate from the product VOLONI. The defendant further submitted that there are certain other products in the market which have expression '' for quick relief from pain, swelling and inflamation '' and expression '' multi action topical gel '' by various companies and it is available in the market,but the plaintiff has not taken any objection to the other products. 4] The learned counsel for the defendant Shri.Dhond submitted that the defendant company is in receipt of registration certificate in favour of defendant company for the product VONIGEL and as such the controversy about using the product without valid registration is not available with the plaintiff. The learned advocate Shri.Ravi Kadam appearing for the plaintiff fairly conceded to this fact . Now, in view of this position the controversy revolves around the issue which can be summarised as ''passing off'' issue . 5] The learned counsel Shri.Kadam has submitted that the defendant is using product viz.VONIGEL and carton of the product 7 VONIGEL is strikingly similar to the product of the plaintiff viz.VOLINI.The four diagrams having caption 'low back pain,joint pain, sprains and strains, muscular pain '' , caption '' for quick relief from pains, swelling and inflammation '' and the colour combination appearing on the carton with a logo of running man whereas the carton of the defendant's product VONIGEL is having four diagrams captioned as '' muscular pain, joint pain,sprains, strains, low back pain, the colour combination on the carton and logo of dancing figure and the caption '' quick relief from pains, swelling and inflammation'' is strikingly similar with the product VOLONI. The learned advocate Shri.Kadam further submitted that an unwary customer or a customer of reasonable understanding can easily be misguided with VONIGEL, product of the defendant , and product of the plaintiff VOLINI . Learned counsel Shri.Kadam further submitted that apart from the financial loss to the plaintiff the plaintiff is concerned with damage to the reputation and goodwill earned by the plaintiff company . In contrast to the arguments advanced by the learned counsel Shri.Kadam, Shri.V.R.Dhond learned counsel appearing for the respondent has submitted that the defendant is using name VONIGEL and the carton having colour combination and the graphics since 2006 which are having a different and distinct characteristics from the product VOLINI and as such there is no likelihood of either any confusion or deception or passing off . 6] Both the advocates have relied on the judgments 8 to substantiate their arguments. 7] Advocate Shri.Ravi Kadam has strongly relied on a decision of the Apex Court in case of Cadila Health Care Ltd. reported in 2001 ,Supreme Court ,1952 . The Hon. Apex Court in the said judgment while referring to the earlier judgment of the Apex Court in Amritdhara's case reported in AIR 1969 ,SC 449 wherein it was observed by the Apex Court thus:- '' The product will be purchased by both villagers and townfolk,literate as well as illiterate and the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. A trade may relate to goods largely sold to illiterate or badly educated persons. 8] Learned counsel Shri.Kadam by pressing reliance on the observations submitted that by mere perusal of the product and the product being strikingly similar to each other there is every possibility that an unwary customer having average intelligence may be misguided by the product VONIGEL and its packing which is strikingly similar to the product VOLINI of the plaintiff. The Apex Court has further observed by referring to a judgment in the case of Morgenstem Chemical Company that : In the field of medical product it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade mark . The test as to whether or not there is confusing similarity in these products even if prescribed and dispensed only 9 by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. 9] It is interesting to refer the observations in the matter of Cadila Health Care Ltd. wherein the Apex Court has observed that - 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 products. Drugs are poisons , not sweets .Confusion between medicinal products may ,therefore, be life threatening , not merely inconvenient. (Emphasis supplied ). 10] Mr.Dhond tried to place reliance on the judgment of Apex Court in case of F.Hoffimann La Roche and Co.Ltd. Vs. Geoffry Manners and Co.Pvt.Ltd.reported in 1982 -PTC-335 .It was in case that one trade mark was Dropovit and the other trade mark of Protovit. w Learned advocate Shri.Dhond placing reliance on the said judgment and more particularly placing reliance on the observations at para -12 wherein it was observed that the words Dropovit and Protovit are so dis-similar that there is no reasonable probability of confusion between the word either from visual or phonetic point of view . Placing reliance on the said judgment Mr.Dhond submitted that same is the case at hand as the words VOLINI and VONIGEL are different in letters and in pronounciation and as such there is no probability of confusion . We are unable to accept the contentions of Advocate Mr.Dhond . In our considered view we see no reason that 10 the words VOLINI & VONIGEL are as similar to the words DROPOVIT AND PROTOVIT .As stated above there is every possibility that an unwary customer and a person having average intelligence may not be able to distinguish the phonetic difference between the products of the plaintiff and the defendant and there is every possibility that an unwary purchaser will be misguided. 11] Mr.Dhond also placed reliance on rulings - M/s Power Control Appliances and others Vs. Sumeet Machines Pvt.Ltd. ,reported in (1994 ) 2 SCC ,448 and Colgate Palmolive (India ) Ltd. Vs.Hindustan Lever Ltd., reported in (1999) 7 SCC -1 . As far as Colgate Palmotive case is concerned in our considered view the Apex Court has opined about the discretionary powers of MRTP Commission and section 12-A of Monopolies and Restrictive Trade Practices Act ,1969 in regards to the interim order of injunction and in our considered view the facts of the case are different from the facts of the case at hand . Same is the case of the ruling Power Control Appliances (supra). 12. Both the learned counsel have drawn our attention to authority Wander Ltd.and Another Vs.Antox India (P) Ltd. reported in 1999 SCC ,728 =1991 The Patents and Trade Marks Cases ,Vol.XI PTC-1. 13] As we have mentioned earlier that the controversy revolves 11 around passing off and we may lend support from the said authority and more particularly para 15 which reads as follows . An infringement action is available where there is violation of specific property right acquired under and recognised by the statute . In a passing off action , however, the plaintiff's right is independent of such a statutory right to a trade mark and is against the conduct of the defendant which lends to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person , through deception , attempts to obtain an economic benefit of the reputation which another has established for himself in a particular trade or business . The action is regarded as an action for deceit. The tort of passing off involves a misrepresentation made by a tr5ade to his prospective customers calculated to injure, as a reasonably foreseeable consequence , the business or goodwill of another which actually or probably ,causes damage to the business or goodwill of the other trade. 14] Learned counsel Shri .Ravi Kadam submitted that because of the action of the respondent by using trade name similar to the trade name of the plaintiff as well the carton and the graphic design, colour combination and the words appearing alongwith figures on the carton are of such nature that there is every possibility that the unwary customer being misled by the product of the respondent which will lead to financial loss to the plaintiff company as well as damage to the reputation and good will earned by the plaintiff company . 15] Mr.Dhond submitted list of some of the products available in the market against which no action is taken by the plaintiff . In our 12 view this stand is not helpful for the defendant and more particularly in view of the fact that the respondent has not given any details so as to show that what efforts were taken by the respondents to promote their product in the market. As far as the arguments of Shri.Dhond that no action was taken by the plaintiff against some other companies who were dealing in products of similar name is concerned ,we lend support from the judgment of this High Court in Pidilite Industries reported in 2003(5) Bom.C.R.295 wherein similar stand was taken and it is observed in para 59 thus - ''The argument was that if the Plaintiffs have not objected to these two marks the Plaintiffs are disentitled from objecting to or at any rate securing interim relief against the Defendants mark Coriderm. We find no substance in the plea. Apart from producing tubes and cartons and some bills the Defendants have not shown the extent of the sales of these products. Indeed, at the most it can be assumed that two similar products are in the market in January,1990. That will not, in our opinion , non-suit the Plaintiffs or disentitle them to interim relief against the Defendant .'' 16] Similar is the case at hand .The defendants have not given any details . We are not impressed with the arguments advanced by learned advocate Shri.Dhond . In our considered view the plaintiff has sufficiently placed on record material and we are satisfied that the contentions raised by the petitioner are justified in view of the facts of the matter. 17] After hearing both the counsels at length and on perusal of 13 the product (of the plaintiff )viz.Volini and product (of the defendant) viz.Voni Gel it was noticed that caption ''for quick relief from pains,swelling and inflamation '', pictures and figures having caption '' low back pain,joint pain, sprains and strains, muscular pain '' ,the component and sequence of the component, colour combination at the background and letters are having vast similarity . Though it was tried to be contended that by the respondent that the colour of the product VONIGEL differs from the colour combination of the product VOLINI we find that there is no such difference.On the contrary the colour combination is having vast similarity . We confirm the order of Single Judge .Therefore,we dismiss the appeal . Appeal is dismissed. (Prasanna B.Varale ,J.) (S.B.Mhase , J.)