IN THE HIGH COURT OF JUDICATURE AT BOMBAY ORDINARY ORIGINAL CIVIL JURISDICTION NOTICE OF MOTION NO.212 OF 2009 IN SUIT NO.47 OF 2009 Glenmark Pharmaceuticals Ltd. ... Plaintiffs V/s. Bal Pharma Ltd. & Anr. ... Defendants Mr. V. R. Dhond, a/w. Mr. M.A. Mahadgut for the Plaintiffs Mr. R.V. Govilkar, for the defendants CORAM : A.V. NIRGUDE, J. DATE : 4TH APRIL, 2009. P.C.:- 1. Heard. 2. The Plaintiff- a pharmaceutical company took out this Notice of Motion for preventing the Defendants' use of certain trade mark for their product. The case of the Plaintiffs is as under: . The Plaintiff- company adopted trade mark "kefpod" for use in respect of its pharmaceutical preparation. In 2001 they got the said word registered as trade mark as well as label mark under the provisions of Trade Marks Act, 1999. In July, 2001 they started manufacturing and selling their product by name "kefpod". Thereafter, they continued the sale all over India. It is said that their product has reputation and goodwill. The Plaintiffs then came across in September, 2008, the Defendants' mark "zefpod". They found it similar to their mark and so on 19th September, 2008 they sought to stop the Defendants from using the mark "zefpod". But, the Defendant No.1 refused to do so. In view of this the suit came to be filed and this Notice of Motion is taken out. 3. It is common ground that the products of both the parties are medicinal preparation containing inter alia an antibiotic drug by name "cefpod oxine proxefil". In reply to the Notice of Motion, the Defendant No.1 denied that the name and label of their mark is similar or identical to the Plaintiffs' mark. They also asserted that part of the plaintiff's mark "kefpod" is derived from the generic name of the medicine contained in it and so there is nothing distinctive in it. They asserted that if the products are prescribed in writing, there would be no confusion for the users. They added that they submitted applications for registration of their mark "zefpod" on 30th April, 2008 and 15th October, 2008 and that they are pending. They further stated that they had no knowledge whatsoever about the Plaintiffs' trade mark and they said that they conceived, invented and used their mark "zefpod" honestly. They also stated further that after they started using this particular mark, they took search in the record of trade mark register for availability of the mark "zefpod". They said they even conducted a market survey and got themselves satisfied that no medical or pharmaceutical product of similar description was available bearing the trade mark "zefpod". They then said that the prefix "z" to the generic name of the medicine makes their mark unique. They said they have family of trade marks beginning with letter "z". The Defendant No.1 also pointed out that the packaging and art work of the products is different and so there would be no confusion between the two marks. They pointed out that there are numbers of other products containing the same antibiotic "cefpodoxine proxetil" which has similar trade mark giving list of eleven marks. 4. The first question that is required to be decided is whether the two marks are similar. This question must be answered in the light of following observations of Lord Parkar in the judgment of the Pianotist Company Ltd.'s application reported in 1906 (23) RPC 774. His Lordship formulated the test for comparison of the two words “marks” as under:- . “ You must take the two words. You must judge of 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 trademark for the goods of the respective owners of the marks. If, considering all these 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.” 5. Applying this test to the words in this case, it must be said that they are similar, the product to which they are applied is almost identical. Since the goods are identical it is obvious that the nature and kind of customer who would likely to buy these goods would also be similar. In this case it is necessary to apply both the visual and phonetic test. The words “kef pod” used by the plaintiff and the word “zef pod” are in my view phonetically similar. While pronouncing both these words the assent and stress is naturally on the syllable “ef”. If one replace the letter “k” in word “kef pod” with letter “t”, the word “tef pod” would still have pronounced use of syllable “ef”. I have therefore no hesitation to record my prima facie finding that the mark of the defendant is to the similar to the mark of the plaintiff. 6. In an action for infringement of registered trade mark the Court has to compare the marks decide whether the rival trade marks are deceptively similar. The Court in such case need not go into the other circumstances such as, confusion deception packaging prices, customers etc. The action for infringement is statutory remedy conferred on a proprietor of a registered trademark for vindicating his exclusive right to use the trademark in relation to his goods. 7. The defendant's counsel Shri Govilkar placed reliance on two judgments. The first one is the judgment of the Division Bench of this Court in M/s. Johlann A.Wulfing V/s Chemical Industrial & Pharmaceutical Laboratories Ltd., reported in AIR 1984 Bombay 281. . In this judgment it was held that the trade mark Complamina was not similar to Ciplamina. I think this judgment has on facts no application to the case in the hand. Mr.Govilkar, has placed reliance on following observations in this judgment, I think is also not proper. . “.The court has not considered that mark Dropovit and Protovit to ordinary business propriety having regard to the circumstances of the case.” . I will discuss in further paragraphs as to how this statement of law is no more available in support of the defendant's case. I would discuss the judgment of the Supreme Court in the case of Cadila Health Care Ltd. V/s Cadila Pharmaceuticals Ltd. Reported in (2001) 5 Supreme Court Cases 73 . 8. Mr. Govilkar, then asserted that both the marks have been derived from generic name of the drug which is common to both the products namely Cepodoxime Proxetial. He said, prominent part of the name of the drug namely EFPOD is being utilised in both the marks. He said, this part of the marks is common to the trade. He said, there is nothing distinctive in the plaintiff's mark. This argument is also not available to the defendant in the light of the observations of the Supreme Court in the well known case of Cadila Health Care Ltd. V/s Cadila Pharmaceuticals Ltd. (supra). It is settled law that the marks must be compared as whole. There is sufficient similarity to cause confusion. The true test is whether the totality of mark is such that it is likely to cause deception or confusion or mistake in the mind of the person accustomed to the existing trademark. 9. In Cadila Health Care Ltd.'s case the Supreme Court on this subject observed as under:- . “22. It may here be noticed that schedule `H' drugs are those which can be sold by the chemist only on the prescription of the doctor but schedule `L' drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trademarks are deceptively similar. In Blansett Pharmaceuticals Co. v. Carmick Laboratories Inc. it was held as under: . “ Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists , where these similar goods are marketed under marks which look alike and sound alike.” . “25. The drugs have 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 needs to be particularly vigilant where the defendant drugs, of which passing- off is alleged, is meant for curing the same ailment as the plaintiff's 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.” . “27. As far as the present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi- urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.” . “32. Public interest would support lesser degree of proof showing confusing similarity in the case of trademark in respect of medicinal products as against other non- medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Nothing the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.” I . These observations thus would apply to this case because the products of the parties are medicinal. 10. In this case, it is common ground that the plaintiff on one hand adopted and started manufacture of the products way back in 2001 and they have been selling the goods extensively throughout the country, comparatively the defendants product with the impugned mark admittedly came to market recently in 2008. The trademark of the plaintiff thus was adopted to let the consumer know the nature of the product over a period of time. The plaintiffs mark and the product has gained popularity. It is usually at this stage other persons are tempted to pass-off their products as that of the plaintiffs. The defendants action smacks of this dishonesty. The defendant tried to explain that they have a series of products having names starting from letter “Z” so they say when they decided to manufacture this particular product they used letter “Z” as prefixed to the common generic name “ef pod”. It is rather unconvincing that while doing so the defendants were not aware of the product of the plaintiff. As said above, the main ingredients of the product is common in both the medicinal proportion. The defendant must have taken search in the market as to how many other products of identical composition are available in the market. The defendant must have come across the plaintiffs product and so the defendant cannot plead ignorance of the plaintiff's products with the registered trademark. The explanation of the defendant is thus not convincing. 11. The defendant then tried to show that there are other marks in the market similarly sounding to that of the plaintiff's mark. The defendant tried to suggest that these similar marks are in extensive use. But to what extent the products under such similar marks are having market share has not been properly put on record and so this objection of the defendant is not persuasive. Another lame excuse of the defendant was that they took search and obtained report of search and found that the plaintiff's product was not mentioned in the search report. Admittedly this search was taken after the defendant started using the impugned mark. Such search, thus would lose it's relevance. It was necessary for the defendant to take search before launching the product with the impugned mark. As such, I have discussed above as to how the defendants could not have lost sight of the plaintiff's mark which has sizable share in the market. 12. In view of this the plaintiff shall succeed and the motion is made absolute in terms of prayer clause (a) and (d). (A.V. NIRGUDE, J.)