IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED: 02/12/2011 CORAM THE HON'BLE MR. JUSTICE VINOD K.SHARMA O.A.Nos.548 and 549 of 2011 in C.S.No.436 of 2011 ORDER The plaintiff / applicant has filed a suit under Order IV Rule 1 of the Original Side Rules r/w Sections 27, 134 and 135 of the Trade Marks Act, 1999, praying therein for grant of permanent injunction, restraining the defendant, its Directors, employees, agents, stockists, dealers or others directly or indirectly involved, from in any manner using in relation to any medicinal or pharmaceutical preparation, in manufacturing or marketing the pharmaceutical product bearing the trademark PANTODYN or any other trademark, which is deceptively or confusingly similar to the plaintiff's registered Trade Mark No.723200 in Class 05. 2. Injunction is also sought on the ground of passing with consequential prayer to direct the defendant to deliver to the plaintiff all the goods, dies, labels, wrappers, packages, cartons, boxes, articles, literature and all other materials bearing reference whatsoever with respect to the offending trademark PANTODYN. 3. Along with the suit, the applicant filed two application nos.548 and 549 of 2011, for interim injunction pending the suit, one for violating the Trade Mark and other for passing off. 4. It is pleaded that the applicant is a company, registered under the Companies Act with its registered Office at Ahmedabad, Gujarat. The applicant is a leading pharmaceutical company in India, engaged in manufacturing and marketing of various pharmaceutical, medicinal and health related products. The gross turnover of the plaintiff is Rs.3,600 crores. The applicant manufactures and markets pharmaceutical, nutraceuticals over the counter sold products, vaccines, diagnostics, Active Pharmaceutical Ingredients (API i.e. active drug used in preparation of what is generally known as formulations, i.e. ready to administer dosage forms like tablet, capsule or injections), cosmetics and healthcare products in India. 5. The applicant has state of the art manufacturing units at village Moraiya (Ahmedabad) and Ankleshawr, Gujarat, Baddi (Himachal Pradesh), Sikkim, Goa and at Rio De Janeiro, Brazil. The applicant exports its products to more than 30 countries, including USA, Japan, Brazil, Europe, South Africa etc. It has joint ventures and collaboration agreements with companies like Nycomed, Hospira and Bio Sidus. It also carries on research work and as to its credits, 400 patents related products and discoveries, drug delivery systems and also in the field of biotechnology products in India and abroad and 100 parent applications have been accepted and patent granted in various countries. 6. One such brand under which the plaintiff manufactures and markets regarding medicinal preparations, is called "PANTODAC". This trademark was adopted by the plaintiff in the year 1996, for pharmaceutical preparations, a medicine used for the fast and sustained control of Gastro Esophageal Reflux Disease (GERD), which is also used for the treatment of Acid related disorders, i.e. Peptic, Ulcer (duodenal and gastric ulcer), and Zollinger  Ellison Syndrome. 7. The drug pantoprazole was developed by Byk Gulden (Germany). The plaintiff entered into a joint venture strategic alliance and formed a joint venture company known as Zydus Byk Healthcare Ltd. The said company has sub-licensed the distribution right of the product Pantoprazole to the applicant and right to manufacture the bulk drug Pantoprazole. Initially, the product was marketed, but thereafter the applicant started manufacturing the finished formulations as well as the bulk drug Pantoprazole. 8. The permission to market was received by the applicant on 09.12.1998 and thereafter, permission was also received for manufacturing of Pantoprazole tablets, which are marketed as Trade Mark PANTODAC. 9. The applicant started marketing tablets PANTODAC only after 2003. The applicant also got the Trade Mark PANTODAC, registered, which is said to be still subsisting. 10. The applicant claims that Trade Mark "PANTODAC" has achieved reputation and goodwill among medical practitioners, trade and consuming public. The turn over of the drug is increasing over year. The case of the applicant is that recently, it has been noticed that respondent has applied for registration of the Trade Mark PANTODYN on 24.06.2008, which was also published on the Trade Marks Journal. The applicant has opposed grant of Trade Mark. 11. It is case of the applicant that the respondent has no right, title, authority or license to introduce, manufacture and sell medicinal preparation under the Trade Mark "PANTODYN", as the Trade Mark is a dishonest act of imitation and deceptively similar to the applicant's Trade Mark "PANTODAC". 12. The stand of the applicant is that the act of the respondent is deliberate, dishonest and fraudulent to trade upon the goodwill of the plaintiff's well known product to make illegal gains. The Trade Mark PANTODYN of the defendant is bound to deceive and cause confusion and it may help the defendant to pass off their goods as and for the plaintiff's goods so as to make illegal gains of applicant's reputation. Both the products are being used for the same. 13. In support of prayer in paras 16 & 17 of the affidavit, it is pleaded as under: "16. The Plaintiff's product sold under the trademark PANTODAC is used for the treatment of Acid related disorders eg. Peptic Ulcer (duodenal and gastric ulcer) and Zollinger  Ellison syndrome and the treatment for the same would continue for relatively long periods of time and therefore in such cases, the patients or their relatives would approach the chemists for periodic and repeated purchases and since in such cases when it is a common practice that no prescription is placed every time before the chemist, the same would lead to confusion due to incorrect recollection of the products' trademark by a consumer of ordinary prudence and imperfect memory. It may also happen that one product may be dispensed against the prescription of other product due to a hurriedly written prescription and the proverbially illegible handwritings of the doctors. In such circumstances, even when patients or their kith and kin approach the drug stores with prescription, lot of confusion amongst the chemists are most likely to occur as it is common knowledge that the prescription of Doctors are most of the times illegible. 17. If the Defendant is permitted to market their product under the trade name PANTODYN or any other Brand name which is identical or deceptively similar or which closely resembles plaintiff's registered Trade Mark PANTODAC, the plaintiff's exclusive statutory right in its mark PANTODAC will be violated and the plaintiff company will suffer irreparable loss and loss of reputation unless the Defendant is restrained by an injunction of this Hon'ble Court from committing the act of infringement and passing off by using the mark PANTODYN for their product. The malafide act of the Defendant leads to infringement of the plaintiff's trademark PANTODAC under the Trade Marks Act, 1999. The Plaintiff has a strong prima facie case against the Defendant for grant of an appropriate injunction restraining the Defendant from copying / imitating the plaintiff's trademark PANTODAC. Hence it is absolutely necessary that the Defendant is restrained permanently from committing the act of passing off by an injunction order of this Hon'ble Court. If the Defendant is restrained by an Injunction of this Hon'ble Court from manufacturing and marketing their product under the brand name PANTODYN or any other similar brand name, Defendant is not going to suffer any injury or monetary loss." On the averments made herein above, the applicant submits that it is entitled to temporary injunction, as prayed for. 14. The applications are opposed by respondent / non applicant, by submitting that the suit filed by the applicant is gross misuse of process of Court and is liable to be dismissed. It is pleaded that the suit has been filed only to harass the respondent and to extract money from the respondent to claim undue monopoly. The allegations made in the plaint have been denied. 15. The stand of the defendant / respondent is that it is a company, registered under the Companies Act and earned high reputation, which markets and trades the goods in respect of medicinal and pharmaceutical preparations and substances. It is in business over a decade and the company's products are well established reputation in the medical fraternity. The respondent has several Trade Marks specially designed by the respondent after conducting market research and survey besides satisfying themselves that there has been no structural, phonetic, deceptive or confusing similarity with any other brands existing in the market. 16. The stand of the defendant / respondent is that the trade mark adopted by respondent is "PANTODYN", which has been conceived and adopted honestly and being used continuously without any interruption, since its adoption. It is the case of the defendant / respondent that it has already conceived and adopted DYN series of trademarks ever since the inception, which comprises DYN as a suffix and DYN as essential features with all their products. The defendant / respondent have various applications bearing Trade Mark DYN as suffix. 17. The details of Trade Marks of defendant / non applicant are as under: Sl.No. Trade Mark Status 1. CEFIDYN REGISTERED 2. KALPADYN REGISTERED 3. GESTODYN NEW APPLICATION 4. PANTODYN PENDING 5. PREGADYN NEW APPLICATION It is the case of the respondent, that the respondent have honestly and bonafidely coined, conceived and derived the Trade Mark PANTODYN, by taking "PANTO" from the ingredient of the drug PANTOPRAZOLE and DYN has been added as suffix, being essential feature of the company. It has also obtained drug permission in 2004 for manufacturing of pharmaceutical preparation "PANTODYN". 18. It is the case of the defendant / respondent that the suit has been filed to monopolize the word "PANTO", even though the word forms a part of the ingredients PANTOPRAZOLE, and there are multiple users of the said word all over the world. 19. On the pleadings referred to above, it is prayed that applications be dismissed. 20. Learned counsel for the applicant / plaintiff, in support of the applications, vehemently contended, that use of Trade Mark PANTODYN, by the respondent, is deceptively similar to PANTODAC, which cannot be said to be honest. The applicant / plaintiff is a well established company in the field of medicine. That in case of medicinal products, strong view is required to be taken to protect the right of registered owner. Learned counsel for the applicant placed reliance on the judgment of the Hon'ble Supreme Court in the case of Cadila Health Care Limited vs. Cadila Pharmaceuticals Limited, wherein, the Hon'ble Supreme Court was pleased to lay down as under: "15. It will be useful to refer to some decisions of American Courts relating to medicinal products. In the case of American Cynamid Corporation Vs. Connaught Laboratories Inc., 231 USPQ 128 (2nd Cir. 1986), it was held as under: "Exacting judicial scrutiny is required if there is a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products." 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 un-common that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar. In Blansett Pharmaceuticals Co. Vs. 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. In the case of Glenwood Laboratories, Inc. Vs. American Home Products Corp, the Court of the United State had held that: The fact that confusion as to prescription drugs could produce harm a contrast to confusion with respect to non-medicinal products as an additional consideration of the Board as is evident from that portion of the opinion in which the Board stated: The products of the parties are medicinal and applicants product is contraindicated for the disease for which opposers product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals. The boards view that a higher standard be applied to medicinal products finds support in previous decisions of this Court, Clifton Vs. Plough 341, F.2d 934, 936, 52, CCPA 1045, 1047 (1965) ("It is necessary for obvious reasons, to avoid confusion in the dispensing of pharmaceuticals"), Campbell Products, Inc. Vs. John Wyeth & Bro. Inc, 143, F. 2d 977, 979, 31 CCPA 1217 (1944) it seems to us that where ethical goods are sold and careless use is dangerous, greater care should be taken in the use of registration of trade marks to assure that no harmful confusion results". In the case of R.J. Strasenburgh Co. Vs. Kenwood Laboratories, Inc. reported in 106 USPQ 379, as noted in the decision of Morgenstern Chemical Companys case (supra), it had been held that: "Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced." 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 defendants drug, of which passing off 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. In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. Vs. American Home Products Corporation (supra), where it was held as under: "The products of the parties are medicinal and applicants product is contraindicated for the disease for which opposers product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals." It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal. 16. As far as 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 measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken. Here, it will be useful to refer to the decision of Morgenstern Chemical Company's case (supra) where it has been held as under: "(5) In the field of medical products, it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. The test as to whether or not there is confusing similarity in these products even if prescribed and dispensed only by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. The rule enunciated by Judge Helen in Cole Chemical Co. Vs. Cole Laboratories D.C. Mo. 1954, 118F. Supp. 612, 616, 617, 101, USPQ 44,47,48, is applicable here: "The Plaintiff and defendant are engaged in the sale of medical preparations. They are for ultimate human consumption or use.* * *They are particularly all for ailments of the human body. Confusion in such products can have serious consequences for the patient. Confusion in medicines must be avoided." *** "Prevention of confusion and mistakes in medicines is too vital to be trifled with." The observations made by Assistant Commissioner Leeds of the Patent Office in R.J. Strasenburgh Co. Vs. Kenwood Laboratories, Inc. 1955, 106 USPQ 379, 380 are particularly apt, that "Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced." The defendant concedes that physicians and pharmacists are not infallible but urges that the members of these professions are carefully trained to detect differences in the characteristics of pharmaceutical products. While this is doubtless true to dos not open the door to the adoption by manufacturers of medicines of trade marks or names which would be confusingly similar to anyone not exercising such great care. For physicians and pharmacists are human and in common with the rest of mankind are subject to human frailties. In the field of medicinal remedies the courts may not speculate as to whether there is a probability of confusion between similar names. If there is any possibility of such confusion in the case of medicines public policy requires that the use of the confusingly similar name be enjoined (See Lambert Pharmacol Ltd. Vs. Bolton Chemical Corporation DCNY 1915, 219 F. 325.326. In the book titled as McCarthy on Trade Marks, it is observed in the footnote at page 23-70 as under: "Physicians and Pharmacists are knowledgeable in their fields does not mean they are equally knowledgeable as to marks and immune from mistaking one mark from another. (Schering Corp Vs. Alza Corp reported in 207 USPQ 504 (TTAB 1980). In the case of Syntex Laboratories Inc. Vs. Norwich Pharmacal Co. reported in 169 USPQ 1(2nd Cr. 1971), it is observed as under: "Stricter standard in order to prevent likelihood of confusion is desirable where involved trade marks are applied to different prescription pharmaceutical products and where confusion result in physical harm to consuming public." Trade mark is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiffs right is against the conduct of the defendant which leads 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 other has established for himself in a particular trade or business. The action is regarded as an action for deceit. (See Wander Ltd. Vs. Antox India Pvt Ltd., 1990 Suppl. SCC 727. 18. 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. Noting 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. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under: "The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints." The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions? We think not. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiffs goods seems to over look the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. 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 effects 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 effects on the public health." 21. Learned counsel for the applicant has also placed reliance on the following interim orders passed by the High Courts of Gujarat and New Delhi, granting interim injunction against use of the respective words: Sr.No. Case No. Name of High