IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL FROM ORDER No 280 of 1998 with CIVIL APPLICATION NO 5735 OF 1998 For Approval and Signature: Hon'ble MR.JUSTICE M.S.PARIKH ============================================================ 1. Whether Reporters of Local Papers may be allowed to see the judgements? 2. To be referred to the Reporter or not? 3. Whether Their Lordships wish to see the fair copy of the judgement? 4. Whether this case involves a substantial question 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? -------------------------------------------------------------- CADILA HEALTHCARE LIMITED Versus CADILA PHARMACEUTICALS LIMITED -------------------------------------------------------------- Appearance: MR RAVI KADAM learned Counsel with MR RR SHAH for and Mr HR Shah for the appellants. MR Bharatbhai J. Shelat, learned Sr.Counsel with MR YJ TRIVEDI and Mr.NN Prajapati for Respondent No. 1 -------------------------------------------------------------- CORAM : MR.JUSTICE M.S.PARIKH Date of decision: 14/07/98 ORAL JUDGEMENT The appellant who has been described as the plaintiff hereinafter has instituted Regular Civil Suit No. 7 of 1998 in the District Court, Vadodara against the respondents-original defendants for obtaining the permanent injunction restraining the defendants manufacturing, advertising or selling any medicinal or pharmaceutical product bearing impugned mark FALCITAB or any other mark deceptively similar to the plaintiff's trade mark FALCIGO so as to pass off or enable others to pass off the Defendants' goods as and for the goods of the plaintiffs. In the said suit, the plaintiffs prayed for like ad-interim relief at Exh. 5 which came to be heard by the learned Extra Assistant Judge, Vadodara who by his impugned order dated 30th May, 1998, refused to grant interim relief. That is how the plaintiffs have been before this Court in this appeal from order. 2. This appeal came to be placed for admission and interim relief but since there had been appearance of the respondents on caveat, the matter has been argued extensively. In that view of the matter, I propose to dispose of this matter finally instead of deciding only interim relief. FACTS IN BRIEF It is not in dispute that the plaintiff and the defendant are carrying on their activities in pharmaceutical products respectively in the name and style of "CADILA HEALTH CARE LIMITED" and "CADILA PHARMACEUTICALS LIMITED" with the word "CADILA" being common first name. It has been the case of the plaintiffs that it developed the formulation of drug of Chinese origin styled as "Artesunate" extracted and synthesized from a plant for treatment of the aggravated form of Malaria commonly known as FALCIPHARUM. The plaintiff introduced the product both in tablet and injection form under the brand name of 'FALCIGO' which according to the plaintiff, has proved effective in the treatment of FALCIPHARUM MALARIA. Necessary drug permission was granted by the authorities on 7.10.1996. The plaintiff also lodged its application for registration of FALCIGO as its trade mark on 20.8.1996 and in or around October,1996,the product was introduced in the market. It has been the case of the plaintiff that the product has been extensively marketed all over the country and it has acquired good reputation due to the quality and standard of the product and the sales promotion efforts of the Plaintiff Company. Its turn over during the last two years has exceeded Rs.386.96 lacs. As against this, the defendant recently introduced product under the brand name FALCITAB containing the drug 'Mefloquine'. According to the plaintiff, their product FALCIGO is very well known in the market and has been widely advertised and the defendant's mark FALCITAB is identical and/or deceptively and/or confusingly similar to and is a word per se colorable imitation of the plaintiff's said trademark FALCIGO. According to the plaintiff, the defendant has passed off and/or further threatened to pass off and/or is facilitating others to pass off the product of the defendant as and for the well known goods of the plaintiff by using the mark FALCITAB. This has resulted in serious injury to the plaintiff's reputation; besides, on account of common word "CADILA" as a part of corporate names of both the Companies, the defendants' trade mark FALCITAB and the plaintiff's trade mark FALCIGO would create lot of confusion in the market about the respective products. The plaintiff has, therefore, sought for interim relief as above. 3. While denying the allegations as aforesaid, the defendant has asserted that the defendant has been well established and fast blowing Pharmaceutical Company. It is denied that the word "FALCIGO' is a fanciful word or that the said word is a trademark as alleged. It is also denied that the product FALCIGO is continuously and extensively marketed as alleged. It is denied that the defendant's trade mark FALCITAB is identical and/or deceptively and/or confusingly similar to the plaintiff's mark FALCIGO. It is further denied that the trade mark FALCITAB is per se colorable imitation of the plaintiff's trade mark as alleged. It is denied that the defendant has passed off and/or threatened to pass off and/or is facilitating others to pass off the goods of the defendant as and for the goods of the plaintiff by using the word FALCITAB as alleged. It is submitted that the trade mark FALCITAB is not likely to cause confusion and deception in the course of trade and the plaintiff's reputation would not be seriously injured as alleged. It is submitted that after tremendous research work, it has invented "Mefloquine Hydrochloride" drug for the treatment of FALCIPHARUM MALARIA. It has been accorded the drug licence for the same on 3.7.1997. However, the tablet form of its product received accord on or around 10.4.1997 and the product under the brand name of FALCITAB has been in the market since then. It has been alleged that the plaintiff has chosen to initiate this action on account of some pending litigations between the parties with a view to harass the defendant. It is contended that 'FALCITAB' mark has been obtained by it as of right and its registration as trademark is pending before the authority under application dated 30th June, 1997 Both the marks are distinct and different in all respect. Both the marks are allowed to be sold and are supplied only to the hospitals, clinical institutions and nursing homes. Both are under a condition to print caution note " FOR HOSPITALS' USE ONLY' and both are strictly prohibited regarding sale through retail outlet. There is no question of unwary consumers getting confused in purchasing the products. 4. The learned trial Judge, after hearing both the sides and after considering the decisions cited before him, came to the conclusion that there is no likelihood of confusion resulting from the use of the respective marks since they cannot be said to be similar either phonetically or visually or with respect to their respective prices (the price of FALCIGO is not to exceed Rs. 60 for a strip of four tablets whereas the price of FALCITAB is Rs. 230/- for a strip of six tablets/ten tablets). SUBMISSIONS 5. I have heard the learned counsels appearing for both the sides. 6. Before the submissions made by the learned counsels are set out, it might be noted that this appeal deals with a discretionary order. It is a settled proposition of law that interference with such a discretionary order is permissible only if the order is shown to be arbitrary, perverse, capricious or in disregard of the legal principles. In so far as the present case is concerned, Mr. Kadam, learned counsel appearing for the plaintiff has pressed into service the cause of unwary consumers by reading the caution note and the side effects which have been set out by the defendant in respect of its product FALCITAB. Further, he has submitted that if the defendant's product FALCITAB is allowed to be marketed under the mark FALCITAB, there is likelihood of same being passed off for the plaintiff's product namely FALCIGO having no side effects and the ultimate sufferer would be the unwary consumer. It is in this sense that he pressed into service the public interest aspect of the matter and tried to show before this Court that the trial Court has fallen into error of law to this extent. He has made a specific reference to the fact that both are "Cadilas" and this common word "Cadila" as part of their company's name might tend to cause confusion in the mind of unwary consumers. He has relied upon number of decisions which will hereinafter be referred to. In reply, Mr. B. J. Shelat, learned counsel appearing for the respondent has made reference to the words used as marks by both the Companies and tried to point out that there is no possibility of any confusion in the mind of unwary consumers. According to his submission, even the scheme of strips as well as the packings in the context of the words printed or the signs used in so far as both the products are concerned are quite different. He has submitted that appearance of both the marks is also dissimilar so that there is no chance worth the name for unwary consumers to be taken by surprise while buying the product. He has pointed out from the packings of both the products that the word "CADILA" is used in different types and class of letters so that even from that point of view also, there is no likelihood or confusion resulting from respective marks of both the products. In so far as the tablets are concerned, the plaintiff company has been using the strip of four tablets whereas the defendant company has been using the strip of six/ten tablets. In respect of the drugs, the plaintiff company has been using the 'artesunate' as a source of its drug while the source of drug of the defendant's product is "Mefloquine Hydrochloride". Therefore, both the sources are different and are discernible on the face of them. It has been submitted by the learned counsel for the respondent that the most important distinguishing feature is with regard to the display of caution note and the side effects by the defendant Company in respect of its product FALCITAB. That has been unnecessarily highlighted for canvassing the alleged public interest. According to his submission, the defendant's product is a medicine and not the product which per se would cause injury to human health. It is meant for arresting deadly disease known as FALCIPHARUM MALARIA. Under such circumstances, even on the question which has been sought to be raised by the learned counsel for the appellant, the order impugned herein needs no interference by this Court. 7. It is no doubt, true that the interest of unwary consumer and, therefore, interest of public is required to be taken into consideration while dealing with the grant of injunction. In this connection, reference has been made to the decisions of the Hon'ble Supreme Court in Corn Products v. Shangrila Food Products, AIR 1960 SC 142 and of this Court in Simatul Chemical Industries v. Cibatul Ind, 19 GLR 315 and in Appeal from Order No. 84 of 1973 between Macwell Engineering Works Ahmedabad versus Divya Industries, Rajkot decided on 18th November, 1974 (Coram: M. P. Thakkar, J. as His Lordship then was).It has been observed in the Macwell Engineering Works' case that it ought to be realised that it was not merely a case of protecting the right of the plaintiffs, the Court was also concerned with protecting the unwary consumers. It was evident that having regard to the similarity in the names an innocent purchaser would have been misguided and would have taken the engines manufactured by the plaintiffs. It is no doubt true that His Lordship was concerned with the names "Macwell" and "Macweel" with regard to which it was observed that there was apparent confusion likely to be caused in the mind of innocent purchaser. Suffice it to say that in a given case where the marks are shown to be so similar as to cause confusion in the mind of unwary consumer, the Court is required to take care of such interest. Reference in this connection has also been made to a decision of the Bombay High Court in the matter of Nucron Pharmaceuticals Pvt. Ltd. and another vs. International Pharmaceuticals reported in IPLR 1994 Vol.19 (1-2)page 56. In that case, the plaintiffs were selling their antibiotic preparation under the mark SEPMAX for various types of infections since 1991 which had become well known. In December, 1992, the plaintiffs found that defendants were marketing their product under the trademark SELMAX for treatment of parkinsonism neurological disease. During the course of hearing, the defendants contested that their brand was distinguishable from plaintiffs' SEPMAX on account of differences in colour and manner of packing, whereas in the civil suit at Ahmedabad, their contention was that the plaintiffs' mark was deceptively similar to their SELMAX! In the back ground of the nature of two products, learned Single Judge of the Bombay High Court held that the defendants had no convincing explanation as to how they came to adopt the trademark SELMAX. He held that the defendants' contention that their drug was available only on doctor's prescription was not acceptable since it is well known that even in large cities, Schedule 'H' drugs are sold by chemists without the doctor's prescription and that the mark was deceptively similar to the plaintiff's mark and was likely to lead to serious consequences in view of the fact that while the plaintiffs' preparation was a broad based Antibiotic,the defendants' drug was used for a nenurological disease i.e.Parkinsonism. and if drug is administered for the other drug. It is under such circumstances that the Bombay High Court was required to take care of the consumers' interest while dealing with the interim relief aspect. Reference has also been made to another judgment of the Bombay High Court in the matter of Astra-IDL Ltd.vs.TTK Pharma Ltd. in AIR 1992 Bombaay pg. 35.In the said matter, the marks under dispute were "BETALONG' & "BETALOC" used in connection with Pharmaceutical preparations. It has been observed by the Court that in the present day circumstances, doctor's prescription factor has lost its importance since the reality of the situation cannot be ignored. In India, scheduled drugs which are to be sold under doctor's prescription are even sold without production of doctor's prescription and as such, reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The marks "Betaloc" and "Betalong" being visually, phonetically and structurally similar and so close to each other that it outweighs the weightage to be given to the factor that the goods are schedule 'H' drugs. It was observed that the medicines could also be available across the counter in the shops of various chemists and the test to be adopted is not only of the doctor giving prescription but was whether unwary customer who went to purchase the medicine could make mistake or not. Said concept was high lighted by the Delhi High Court in the matter of Ranbaxy Laboratories Ltd. v.Dua Pharmaceuticals Pvt.Ltd. reported in AIR 1989 Delhi 44, while dealing with the marks "CALMPOSE' and "CALMPROSE". The learned counsel has then made a reference to the decision of this Court in the matter of CIBA-GEIGY LTD.V. TORRENT LABORATORIES PVT.LTD. & ANOTHER reported in 1993(1) GLR 325. This he did with a view to explain the decision of the Hon'ble Supreme Court in Roche & Co. v. G. Hanners & Co. AIR 1970 SC 2062 where the apex Court held that the marks "Dropovit" and "Protovit" could not be said to be deceptively similar. He read before this Court the observations appearing in paragraph 11 of the citation which might be excerpted: "11. Reliance was placed by Mr. Shah on the decision of the Supreme Court in Roche & Co. (supra) in support of his submission that there was no likelihood of any deception or confusion in the case of medicinal preparations because they were required to be sold by a licensed dealer and on medical prescription. The Supreme Court was considering the question as to whether the word "DROPOVIT' was deceptively similar to the word "PROTOVIT". It will be noticed from the decision that it does not rest simply on the ground that there was no likelihood of any deception or confusion in respect of medicinal preparations which were required to be sold under Doctor's prescription by a Chemist. The Supreme Court, in fact, compared both these words laying down the test for such comparison. Paragraph 12 of the judgment indicates the careful manner in which these words were compared by the Supreme Court. The Supreme Court traced the uncommon element in these words and found that the common syllable 'VIT' in the two marks was both descriptive and common to the trade. It also made phonetic comparison and found that there was no reasonable probability of confusion between the words either from visual or phonetic point of view. If the Supreme Court intended to lay down the proposition of law that whereever the medicinal preparations are to be sold by a Chemist on Doctor's prescription, there was no likelihood of any deception or confusion, it would not have undertaken any exercise of comparing the words nor would it have laid down the test for comparison in the context of such medicinal preparations. The Supreme Court, in fact, held that the question of deceptive similarity must be decided on the cases of class of goods to which the two trademarks applied. The observations of the Supreme Court that, from the nature of the goods, it was likely that most of the customers would obtain a prescription from a Doctor and show it to the Chemist before they purchase and in such a case except in the event of hand writing of the Doctor being very bad or illegible, the chance of confusion is remote, cannot, therefore, be so construed as to lay down a proposition that there was no likelihood of any deception or confusion in respect of medicinal preparations required to be sold by a Chemist on Doctor's prescription. No such absolute proposition was at all intended by the Supreme Court since as observed above, the Supreme Court itself undertook the task of comparison of the impugned mark and the registered trademark to find out whether there was any probability of confusion. The deception or confusion in such cases would be of the public and not of an expert Doctor or a specialized chemist dealing in the medicinal preparations. One cannot ignore the fact that when a mark likely to deceive or cause confusion is to be used by a person, he will strive to find those who join him in his design and an obliging doctor and a conniving chemist will be the integral part of the design to practice deception and cause confusion. The question of likelihood of deception of those who help in practicing deception cannot really arise and it is the likelihood of the deception of their victims, i.e., the unwary purchaser that is material for the purpose of deciding whether the mark should be registered or not in view of the provisions of section 11(a) of the Act. The real question is whether it is likely that the mark proposed is capable of being used for causing deception or confusion by those who are mindful of propagating it for their self-aggrandizement by using it for taking advantage of the reputation of the registered mark. If the mischief is potential, the registration ought to be refused." No doubt, the aforesaid paragraph which has been canvassed in this case makes an excellent exposition of legal position in a given set of circumstances. The basic aspect which can even be noticed from the aforesaid paragraph is whether the two marks are so similar as to cause confusion in the mind of unwary consumers. Therefore, the exercise obviously is first to find out whether the marks are primarily and basically similar both phonetically as well as visually. If that is not so, there is no question of any confusion in the mind of unwary consumer. Therefore, there can be no debate on the question of propositions emerging from the above observations except that in case of medicinal preparations, the doctor's prescription aspect cannot be said to be wholly irrelevant as can be seen from what has been said by the Hon'ble Supreme Court in the case of Roche & Co. (supra). In the above case, the question was with regard to the registration of a trade mark with the letters 'CEBA" as a part of the mark, The Court considered the fact that the use of the word "CEBA" in the mark could create confusion in the mind of public and could pass off as the trade mark of the earlier registered trade mark. Therefore, in the facts before the Court, while bearing in mind the proposition appearing in paragraph-11 quoted above, this court came to the conclusion that there was likelihood of deception being caused in the mind of public. Then there is a reference to one more decision of this Court endorsing the aforesaid view.That is in the case of CADILA PHARMACEUTICAL LTD. VS. TORRENT PHARMACEUTICALS LTD. (APPEAL FROM ORDER NO 275 OF 1996) decided by this Court (Coram : N. N. Mathur, J.) on 11th June,1996. The marks which were for consideration of the Court were ALPRAX and ALREX and this Court refused to interfere with the interim injunction granted by the trial Court on the ground that there was apparent similarity between two marks which would have caused confusion in the mind of unwary purchasers. Mr. Kadam, learned counsel also placed reliance upon the passage of Whitford,J. in the matter of Stuart Pharmaceuticals Limited v. Rona Laboratories Ltd. reported in FSR [1981] at page 20. The marks which were for consideration were 'SORBISLO' and 'SORBITRATE'. Following observations appearing at para 22 were pressed into service : "It is I think on the evidence quite plain that at the moment what I think are described as over the counter-sales are relatively rare but they do take place and that is a factor which I must bear in mind for it may not always be easy to know when over the counter sales may not increase. At any rate the bulk of the sales at the moment are sales on prescription. So that what has to be considered is whether the use of these names is likely to cause confusion among doctors writing prescriptions, among dispensers dispensing prescriptions, and to some extent, among the public who might, though in a very small number of cases as things are going at present, make purchases over the counter. So far as the dispensed product is concerned, once it is in the hands of the member of the public who is taking the drug, all opportunity for confusion has passed, if he has obtained it on the prescription." The Court was dealing with the registered trademark of the plaintiff 'Sorbitrate' against the proposed newly introduced trade mark of the defendant namely ' Sorbisol'. In the back ground of the facts set out at length, it was found that there was prima-facie case for the plaintiffs whose trade mark was registered long back to succeed in the suit so as to make available for the plaintiffs interlocutory injunction. Mr. Kadam, learned counsel for the appellant, by way of summarising the submissions, referred to the Division Bench Judgment of the Bombay High Court in the case of M/s. Hiralal Parbhudas v. M/s. Ganesh Trading Co. and others reported in AIR 1984 Bombay 218 where the Bench summarized the propositions regarding the question of deceptive similarity between two marks in paragraph-5 as under : "In deciding the question of similarity of two marks, the following well established principles are to be observed:- (i) marks are remembered by general impressions or by some significant detail rather than