http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 1 of 16  

CASE NO.: Appeal (civil) 2372  of  2001 Special Leave Petition (civil)  15994    of  1998

PETITIONER: CADILA HEALTHCARE LIMITED

       Vs.

RESPONDENT: CADILA PHARMACEUTICALS LIMITED

DATE OF JUDGMENT:       26/03/2001

BENCH: B.N.Kripal, Doraswamy Raju, British Kumar

JUDGMENT:

KIRPAL,J. L.....I.........T.......T.......T.......T.......T.......T.......J

     Leave granted.  Appellant and respondent are pharmaceutical companies manufacturing various pharmaceutical products.  The two companies had taken over the assets and business of the erstwhile Cadila  Group after its restructuring under Sections 391 & 394 of the  Companies  Act.   One  of the conditions in  the  scheme  of restructuring of the Cadila Group was that both the appellant and the  respondent  got  the  right to use the name  CADILA  as  a corporate name.

     The  present proceedings arise from the suit for injunction which  had been filed by the appellant against the respondent  in the  District Court at Vadodara.  The suit related to a  medicine being  sold  under  the brand name Falcitab by  the  respondent which,  according  to the appellant, was a brand name similar  to the drug being sold by it under its brand name Falcigo

     The  case  of  the appellant was that  its  drug  Falcigo contains  Artesunate  for  the   treatment  of  cerebral  malaria commonly  known as Falcipharum.  After the introduction of this drug,  the  appellant on 20th August, 1996 applied to  the  Trade Marks  Registry, Ahmedabad for registration in Part-A, Class-5 of the  Trade  and Merchandise Marks Act.  On 7th October, 1996  the Drugs  Controller  General  (India)  granted  permission  to  the appellant  to  market  the  said drug under  the  trade  mark  of Falcigo.   It  is,  thereafter, that since  October,  1996  the appellant  claimed  to have started the manufacture and  sale  of drug Falcigo all over India.

     The  respondent company is stated to have got permission on 10th  April,  1997 from the Drugs Controller General  (India)  to manufacture  a  drug containing Mefloquine Hydrochloride.   The respondent was also given permission to import the said drug from abroad.   According  to the appellant, it came to know in  April, 1998 that the said drug, which was also used for the treatment of Falcipharum Malaria, was being sold by the respondent under the trade mark of Falcitab.  The appellant then filed a suit in the

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 2 of 16  

District  Court  at  Vadodara   seeking  injunction  against  the respondent from using the trade mark Falcitab as it was claimed that  the same would be passed off as appellants drug  Falcigo for  the  treatment  of  the same disease in  view  of  confusing similarity  and  deception in the names and more so  because  the drugs were medicines of last resort.

     The  respondent company stated in the defence that the word Falci,  which is the prefix of the mark, is taken from the name of  the disease Falcipharum Malaria and it is a common practice in pharmaceutical trade to use part of the word of the disease as a  trade  mark  to indicate to the doctors and  chemists  that  a particular  product/drug  is meant for a particular disease.   It was  also  the  case of the respondent that  admittedly  the  two products  in  question were Schedule L drugs which can be  sold only  to  the  hospitals and clinics with the result  that  there could not even be a remote chance of confusion and deception.  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.

     The Extra Assistant Judge, Vadodara by his order dated 30th May,  1998 dismissed the interim injunction application.  He came to  the  conclusion that the two drugs Falcigo  and  Falcitab differed  in appearance, formulation and price and could be  sold only  to hospitals and institutions and there was, thus, no  case had been made out for grant of injunction and there was no chance of  deception or/of confusion specially as the drug was not meant to be sold to any individual.

     The appeal filed by the appellant before the High Court met with no success.  After discussing various cases which were cited before  it  and after verifying the cartoons and packings of  the respective  products, the High Court came to the conclusion  that it  could  not be said that there was a likelihood  of  confusion being  caused  to an unwary consumer in respect of  the  disputed marks.   It observed that there was little chance of any  passing off one product for the other product.

     When  the  special  leave  came up  for  hearing,  detailed arguments were heard and, for the reasons to be given, this Court did  not interfere with the orders passed by the courts below but gave  directions regarding expeditious disposal of the suit.   In this  judgment,  we give the reason for not interfering and  also set out the principles which are to be kept in mind while dealing with  an action for infringement or passing off specially in  the cases  relating  to  medicinal  products.   The  reason  for  not interfering with the order appealed against was that there may be possibility  of evidence being required on merits of the case and directions  were given for speedy trial of the suit.   Expression of  opinion on merits by this Court at this stage was not thought advisable.   We  now proceed to examine the principles  on  which these cases have been and are required to be decided.

     Under  Section 28 of the Trade and Merchandise Marks Act on the  registration of a trade mark in Part-A or B of the register, a  registered proprietor gets an exclusive right to use the trade mark  in relation to the goods in respect of which trade mark  is registered and to obtain relief in respect of infringement of the trade  mark  in the manner provided by the Act.  In the  case  of un-registered  trade mark, Section 27(1) provides that no  person shall  be entitled to institute any proceeding to prevent, or  to recover  damages  for, the infringement of an unregistered  trade mark.   Sub-section (2) of Section 27 provides that the Act shall

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 3 of 16  

not  be deemed to affect rights of action against any person  for passing  off goods as the goods of another person or the remedies in  respect thereof.  In other words in the case of un-registered trade  marks, a passing off action is maintainable.  The  passing off  action depends upon the principle that nobody has a right to represent  his goods as the goods of some body.  In other words a man  is not to sell his goods or services under the pretence that they  are those of another person .  As per Lord Diplock in Erwen Warnink  BV  Vs.  J Townend & Sons, 1979(2) AER 927,  the  modern tort   of   passing   off  has   five  elements   i.e.    (1)   a misrepresentation  (2)  made by a trader in the course of  trade, (3)  to  prospective  customers of his or ultimate  consumers  of goods  or  services supplied by him, (4) which is  calculated  to injure  the business or goodwill of another trader (in the  sense that  this is a reasonably foreseeable consequence) and (5) which causes  actual damage to a business or goodwill of the trader  by whom  the  action  is brought or (in a quia  timet  action)  will probably do so.

     There  being an action alleging passing off in the  present case,  it  will  be  appropriate to  consider  a  few  decisions, specially  of  this  Court, which are relevant on  the  point  in issue.

     In National Sewing Thread Co.  Ltd., Chidambaram Vs.  James Chadwick  and Bros Ltd.  AIR 1953 SC 357, this Court was  dealing with a case where an application for registration of a trade mark had  been  declined by the Registrar who accepted the  objections filed  by  the  respondent to the application  for  registration. While  interpreting  Section  8  of the  Trade  Marks  Act  which provides  that  no trade mark nor part of a trade mark shall  be registered which consists of, or contains, any scandalous design, or  any  matter  the use of which would by reason  of  its  being likely  to  deceive  or  to cause confusion  or  otherwise,  be disentitled  to  protection in a Court of Justice ,  this  Court observed at page 363 as under:

     Under this Section an application made to register a trade mark  which is likely to deceive or to cause confusion has to  be refused  notwithstanding  the  fact that the mark might  have  no identity or close resemblance with any other trade mark..  What the  Registrar has to see is whether looking at the circumstances of  the  case a particular trade mark is likely to deceive or  to cause confusion.

     This Court elaborated this principle further at page 363 as under:

     The  principles  of  law  applicable  to  such  cases  are well-settled.   The burden of proving that the trade mark which a person  seeks  to register is not likely to deceive or  to  cause confusion  is  upon the applicant.  It is for him to satisfy  the Registrar   that  his  trade  mark   does  not  fall  within  the prohibition  of Section 8 and therefore, it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive  or  cause  confusion  that duty  is  not  discharged  by arriving at the result by merely comparing it with the trade mark which  is  already  registered and whose proprietor  is  offering opposition to the registration of the mark.  The real question to decide in such cases is to see as to how a purchaser, who must be looked  upon  as an average man of ordinary  intelligence,  would react  to a particular trade mark, what association he would form by  looking  at  the  trade mark, and in what  respect  he  would connect  the  trade  mark  with  the  goods  which  he  would  be purchasing.

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 4 of 16  

     In  Corn  Products  Refining Company  Vs.   Shangrila  Food Products Limited, 1960(1) SCR 968, this Court was again concerned with  an  appeal  arising out of the decision  of  the  Registrar pertaining to registration of a trade mark.  M/s.  Shangrila Food Products  had applied for registration of the mark Gluvita  and M/s.  Corn Products, who were the owners of registered trade mark Glucovita  filed  its  objections to the  registration  of  the respondents  mark.  The Deputy Registrar came to the  conclusion that  the two words Glucovita and Gluvita were not visually or phonetically  similar and that there was no reasonable likelihood of  any  deception being caused by or any confusion arising  from the  use of respondents proposed mark.  Against the decision  of the  Deputy  Registrar, the appellant filed an appeal before  the High  Court.  A Single Judge of the Bombay High Court came to the conclusion,   dis-agreeing  with  the   findings  of  the  Deputy Registrar,  that the two marks were sufficiently similar so as to be  reasonably/likely to cause deception/confusion.  The Division Bench,  on  an  appeal, however, set-aside the  decision  of  the Single  Judge and restored the decision of the Deputy  Registrar. While  allowing  the  appeal,  it was observed  at  page  977  as follows:

     We,  therefore,  think that the learned  appellate  Judges were  in  error  in deciding in favour of the  respondent  basing themselves  on  the series marks, having Gluco or Vita  as  a prefix or a suffix.

     Dealing  with  the  question  as   to  whether  there   was likelihood of confusion between the two marks, which was the view taken  by Desai, J.  of the Bombay High Court in that case  which was over-ruled by the Division Bench, this Court observed at page 978 as follows:

     We  think that the view taken by Desai, J., is right.   It is  well known that the question whether the two marks are likely to  give  rise  to  confusion  or not  is  a  question  of  first impression.   It  is  for  the court  to  decide  that  question. English  cases  proceeding on the English way of  pronouncing  an English  word by Englishmen, which it may be stated is not always the  same,  may  not  be of much assistance  in  our  country  in deciding   questions  of  phonetic   similarity.   It  cannot  be overlooked  that the word is an English word which to the mass of the  Indian people is a foreign word.  It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole.  So considered, we are inclined to  agree  with Desai,J., that the marks with which this case  is concerned  are  similar.   Apart from the syllable  co  in  the appellants  mark, the two marks are identical.  That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other. (emphasis added)

     In  Amritdhara Pharmacy Vs.  Satya Deo, AIR 1963 SC 449 the respondent  had  applied for the registration of the  trade  name Lakshmandhara  in  respect of a medicinal preparation  for  the alleviation  of  various  ailments.   This  was  opposed  by  the appellant   whose  trade  name   Amritdhara  had  already  been registered  in  respect  of similar medicinal  preparation.   The question,  which arose, was whether the name Lakshmandhara  was likely  to  deceive the public or cause confusion to  the  trade. While  interpreting Sections 8 & 10 of the Trade Marks Act,  this Court observed at pages 452-454 as follows:

     It will be noticed that the words used in the sections and relevant  for  our  purpose  are  likely  to  deceive  or  cause

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 5 of 16  

confusion.   The  Act  does  not   lay  down  any  criteria  for determining  what  is  likely  to  deceive  or  cause  confusion. Therefore,  every  case must depend on its own particular  facts, and  the  value  of authorities lies not so much  in  the  actual decision  as in the tests applied for determining what is  likely to  deceive  or cause confusion.  On an application to  register, the  Registrar  or an opponent may object that the trade mark  is not  registrable  by  reason  of  clause (a)  of  Section  8,  or sub-section  (1) of Section 10, as in this case.  In such a  case the  onus  is on the applicant to satisfy the Registrar that  the trade  mark  applied  for  is  not likely  to  deceive  or  cause confusion.   In cases in which the tribunal considers that  there is  doubt  as  to whether deception is  likely,  the  application should  be  refused.  A trade mark is likely to deceive or  cause confusion  by its resemblance to another already on the  Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market.  In considering the matter, all the circumstances of the case must be considered.  As was observed by Parker,J.  in Re Pianotist  Co.s  Application (1906) 23 RPC 774 which was also  a case of the comparison of two words

     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. (p.777)

     For deceptive resemblance two important questions are:  (1) who  are  the  persons  whom the resemblance must  be  likely  to deceive  or  confuse, and (2) what rules of comparison are to  be adopted  in  judging  whether  such resemblance  exists.   As  to confusion,  it is perhaps an appropriate description of the state of  mind  of  a  customer who, on seeing a mark  thinks  that  it differs  from  the mark on goods which he has previously  bought, but  is doubtful whether that impression is not due to  imperfect recollection.  (see Kerly on Trade Marks, 8th Edition, p.  400)

     Let us apply these tests to the facts of the case under our consideration.   It is not disputed before us that the two  names Amritdhara  and  Lakshmandhara are in use in respect  of  the same  description  of goods, namely, a medicinal preparation  for the  alleviation of various ailments.  Such medicinal preparation will  be  purchased  mostly by people who instead of going  to  a doctor  wish to purchase a medicine for the quick alleviation  of their  suffering, both villagers & townsfolk, literate as well as illiterate.   As  we  said  in Corn Products  Refining  Co.   Vs. Shangrila  Food  Products Ltd., (1960) 1 SCR 968:  (AIR  1960  SC 142)  the question has to be approached from the point of view of a  man  of average intelligence and imperfect  recollection.   To such  a man the overall structural and phonetic similarity of the two  names  Amritdhara and Lakshmandhara is, in our  opinion, likely  to  deceive  or cause confusion.  We  must  consider  the overall  similarity  of the two composite words Amritdhara  and Lakshmandhara.   WE do not think that the learned Judges of the High  Court were right in saying that no Indian would mistake one for  the other.  An unwary purchaser of average intelligence  and imperfect  recollection  would not, as the High  Court  supposed, split  the  name  into  its  component  parts  and  consider  the etymological  meaning thereof or even consider the meaning of the composite  words as current of nectar or current of Lakshman. He  would  go  more  by   the  overall  structural  and  phonetic

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 6 of 16  

similarity  and  the  nature of the medicine  he  has  previously purchased,  or has been told about, or about which has  otherwise learnt  and which he wants to purchase.  Where the trade  relates to goods largely sold to illiterate or badly educated persons, it is  no answer to say that a person educated in the Hindi language would  go by the etymological or ideological meaning and see  the difference between current of nectar and current of Lakshman. Current of Lakshman in a literal sense has no meaning;  to give it  meaning one must further make the inference that the current or stream is as pure and strong as Lakshman of the Ramayana.  An ordinary  Indian villager or townsman will perhaps know Lakshman, the story of the Ramayana being familiar to him;  but we doubt if he  would  etymologise  to  the extent of  seeing  the  so-called ideological  difference between Amritdhara and Lakshmandhara. He  would  go  more  by the similarity of the two  names  in  the context  of the widely known medicinal preparation which he wants for his ailments.

     We  agree that the use of the word dhara which  literally means  current  or  stream  is not by itself  decisive  of  the matter.   What we have to consider here is the overall similarity of  the  composite words, having regard to the circumstance  that the goods bearing the two names are medicinal preparations of the same  description.  We are aware that the admission of a mark  is not  to  be refused, because unusually stupid people,  fools  or idiots, may be deceived.  A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by  the overall similarity of the two names having regard to  the nature  of  the medicine he is looking for with a somewhat  vague recollection  that  he  had  purchased a similar  medicine  on  a previous  occasion  with a similar name.  The trade mark  is  the whole  thing - the whole word has to be considered.  In the  case of  the  application  to  register  Erectiks  (opposed  by  the proprietors  of  the trade mark Erector) Farwell, J.   said  in William  Bailey  (Birmingham) Ltd.s Application,  (1935)  R.P.C. 136:

     I  do not think it is right to take a part of the word and compare  it  with  a part of the other word;  one  word  must  be considered  as  a  whole and compared with the other  word  as  a whole..I  think it is a dangerous method to adopt to divide  the word up and seek to distinguish a portion of it from a portion of the other word.

     Another case relating to medicinal product is that of Durga Dutt  Sharma  Vs.  N.P.  Laboratories, AIR 1965 SC 980.  In  that case the respondent, who manufactured medicinal products, had got the  word Navaratna registered as a trade mark.  The appellant, who  was carrying on the business in the preparation of Ayurvedic pharmaceutical  products  under  the name  of  Navaratna  Kalpa applied  for  registration  of the words Navaratna Kalpa  as  a trade  mark for his medicinal preparations.  The objection of the respondent  to the proposed registration prevailed.  This led  to proceedings  which culminated in the appeals to this Court.   The observations  by  this Court on two aspects are  very  pertinent. Firstly  with  regard  to the difference between  an  action  for passing  off  and  action  for infringement  of  trade  mark,  it observed at page 990 as follows:

     While  an  action for passing off is a common  law  remedy being  in substance an action for deceit, that is, a passing  off by a person of his own goods as those of another, that is not the gist  of an action for infringement.  The action for infringement is a statutory remedy conferred on the registered proprietor of a

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 7 of 16  

registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods (Vide S. 21  of  the Act).  The use by the defendant of the trade mark  of the  plaintiff is not essential in an action for passing off, but is  the  sine qua non in the case of an action for  infringement. No  doubt, where the evidence in respect of passing off  consists merely  of  the  colourable use of a registered trade  mark,  the essential  features  of  both the actions might coincide  in  the sense  that what would be a colourable imitation of a trade  mark in  a  passing  off action would also be such in  an  action  for infringement   of   the  same  trade   mark.    But   there   the correspondence  between  the  two  ceases.    In  an  action  for infringement, the plaintiff must, no doubt, make out that the use of  the  defendants  mark is likely to deceive,  but  where  the similarity between the plaintiffs and the defendants mark is so close  either  visually, phonetically or otherwise and the  court reaches  the  conclusion that there is an imitation,  no  further evidence is required to establish that the plaintiffs rights are violated.   Expressed in another way, if the essential  features of  the  trade  mark of the plaintiff have been  adopted  by  the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for  sale  show marked differences, or indicate clearly  a  trade origin  different  from that of the registered proprietor of  the mark  would  be immaterial;  whereas in the case of passing  off, the  defendant may escape liability if he can show that the added matter  is sufficient to distinguish his goods from those of  the plaintiff.

     Secondly,  while  dealing  with the question of  burden  of proof  in an action for infringement of trade mark, this Court in Durga Dutt Sharmas case (supra) held as under:

     When  once  the use by the defendant of the mark which  is claimed  to infringe the plaintiffs mark is shown to be in  the course  of  trade,  the  question  whether  there  has  been  an infringement  is  to be decided by comparison of the  two  marks. Where  the  two marks are identical no further  questions  arise; for  then  the infringement is made out.  When the two marks  are not  identical,  the plaintiff would have to establish  that  the mark  used  by the defendant so nearly resembles the  plaintiffs registered  trade mark as is likely to deceive or cause confusion and  in  relation to goods in respect of which it  is  registered (Vide  S.  21).  A point has sometimes been raised as to  whether the words or cause confusion introduce any element which is not already  covered by the words likely to deceive and it has some times  been answered by saying that it is merely an extension  of the  earlier test and does not add very materially to the concept indicated  by  the earlier words likely to deceive.   But  this apart,  as the question arises in an action for infringement  the onus  would be on the plaintiff to establish that the trade  mark used  by  the  defendant in the course of trade in the  goods  in respect  of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks   the degree of resemblance which is necessary to exist to cause  deception  not being capable of definition by laying  down objective  standards.  The persons who would be deceived are,  of course,  the purchasers of the goods and it is the likelihood  of their  being deceived that is the subject of consideration.   The resemblance  may  be  phonetic,  visual  or  in  the  basic  idea represented  by  the  plaintiffs  mark.    The  purpose  of  the comparison  is for determining whether the essential features  of the  plaintiffs  trade mark are to be found in that used by  the defendant.   The identification of the essential features of  the mark is in essence a question of fact and depends on the judgment

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 8 of 16  

of  the Court based on the evidence led before it as regards  the usage  of  the trade.  It should, however, be borne in mind  that the  object  of the enquiry in ultimate analysis is  whether  the mark  used by the defendant as a whole is deceptively similar  to that of the registered mark of the plaintiff.

     Dealing  once again with medicinal products, this Court  in F.   Hoffmann-La  Roche & Co.  Ltd.  Vs.  Geoffrey Manner  &  Co. Pvt.   Ltd.,  1969(2) SCC 716 had to consider whether  the  words Protovit  belonging  to the appellant was similar to  the  word Dropovit  of  the respondent.  This Court, while  deciding  the test to be applied, observed at page 720 as follows:

     The  test  for  comparison  of the  two  word  marks  were formulated by Lord Parker in Pianotist Co.  Ltd.s application as follows:

     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 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.

     It  is  necessary  to apply both the  visual  and  phonetic tests.   In Aristoc Ltd.  v.  Rysta Ltd.  the House of Lords  was considering  the resemblance between the two words "Aristoc  and Rysta.   The view taken was that considering the way the  words were pronounced in English, the one was likely to be mistaken for the  other.  Viscount Maugham cited the following passage of Lord Justice  Lukmoore in the Court of Appeal, which passage, he said, he completely accepted as the correct exposition of the law:

     The  answer to the question whether the sound of one  word resembles  too  nearly  the sound of another so as to  bring  the former  within  the limits of Section 12 of the Trade Marks  Act, 1938,  must  nearly  always  depend   on  first  impression,  for obviously  a person who is familiar with both words will  neither be  deceived  nor confused.  It is the person who only knows  the one  word and has perhaps an imperfect recollection of it who  is likely to be deceived or confused.  Little assistance, therefore, is  to be obtained from a meticulous comparison of the two words, letter  by  letter and syllable by syllable, pronounced with  the clarity  to  be expected from a teacher of elocution.  The  Court must  be careful to make allowance for imperfect recollection and the  effect of careless pronunciation and speech on the part  not only  of  the person seeking to buy under the trade  description, but  also  of  the shop assistant ministering  to  that  persons wants.

     It  is important that the marks must be compared as wholes. It  is  not  right  to take a portion of the word  and  say  that because  that portion of the word differs from the  corresponding portion  of  the  word in the other case there is  no  sufficient similarity  to  cause  confusion.  The true test is  whether  the

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 9 of 16  

totality  of the proposed trade mark is such that it is likely to cause  deception or confusion or mistake in the minds of  persons accustomed to the existing trade mark.  Thus in Lavroma case Lord Johnston said:

       we are not bound to scan the words as we would in a question  of  comparatio  literarum.   It is  not  a  matter  for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop."

     On the facts of that case this Court came to the conclusion that  taking into account all circumstances the words  Protovit and  Dropovit  were so dissimilar that there was no  reasonable probability  of confusion between the words either from visual or phonetic point of view.

     Our  attention was drawn to a recent judgment of this Court in  S.M.   Dyechem Ltd.  Vs.  Cadbury (India) Ltd.  (2000) 5  SCC 573  where  in  a passing off action, the  plaintiff,  which  was carrying on the business under the mark of Piknik, filed a suit for  injunction against the defendant which was using the mark of Picnic for some other chocolates sold by it.  On the allegation that  the  defendants  mark was deceptively similar,  the  trial court  had  issued an injunction which was reversed by  the  High Court.   On appeal, the decision of the High Court was  affirmed. One  of the questions, which this Court considered, was that  for grant  of  temporary  injunction,  should the  Court  go  by  the principle of prima facie case, apart from balance of convenience, or  comparative  strength  of the case of either  parties  or  by finding out if the plaintiff has raised a triable issue.  While considering  various decisions on the point in issue, this  Court rightly concluded at page 591 as follows:

     Therefore,  in trade mark matters, it is now necessary  to go  into  the question of comparable strength of the  cases  of either party, apart from balance of convenience.

     On merits of the case, this Court took note of some English decisions and observed in Dyechems case (supra) at page 594 that where  common marks are included in the rival trade marks,  more regard  is  to  be paid to the parts not common  and  the  proper course  is to look at the marks as a whole, but at the same  time not  to disregard the parts which are common.  This Court sought to  apply the principle that dissimilarity in essential  features in  devices  and  composite marks are more  important  than  some similarity.   This  Court,  after considering  various  decisions referred  to  hereinabove, observed in Dyechems case (supra)  at page 596 as follows:

     Broadly,  under our law as seen above, it can be said that stress is laid down on common features rather than on differences in  essential  features,  except  for a passing  reference  to  a limited extent in one case.

     Notwithstanding  the  aforesaid observations this Court  in Dyechems case (supra) proceeded to observe as follows:

     It  appears to us that this Court did not have occasion to decide,  as far as we are able to see, an issue where there  were also differences in essential features nor to consider the extent to  which  the  differences  are  to  be  given  importance  over similarities.  Such a question has arisen in the present case and that  is  why we have referred to the principles of  English  Law relating  to differences in essential features which  principles,

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 10 of 16  

in our opinion, are equally applicable in our country.

     We  are unable to agree with the aforesaid observations  in Dyechems  case (supra).  As far as this Court is concerned,  the decisions  in  the last four decades have clearly laid down  that what  has  to be seen in the case of a passing off action is  the similarity  between the competing marks and to determine  whether there  is likelihood of deception or causing confusion.  This  is evident from the decisions of this Court in the cases of National Sewing  Thread  Co.  Ltd.s case (supra), Corn Products  Refining Companys case (supra), Amritdhara Pharmacys case (supra), Durga Dutt  Sharmas case (supra), Hoffmann-La Roche & Co.  Ltd.s case (supra).   Having  come  to  the   conclusion,  in  our   opinion incorrectly,  that  the  difference  in  essential  features   is relevant,  this Court in Dyechems case (supra) sought to examine the  difference  in  the  two marks Piknic  and  Picnic.   It applied three tests, they being 1) is there any special aspect of the  common feature which has been copied ?  2) mode in which the parts are put together differently i.e.  whether dissimilarity of the  part  or parts is enough to make the whole thing  dissimilar and 3) whether when there are common elements, should one not pay more  regard to the parts which are not common, while at the same time  not  disregarding  the common parts ?.   In  examining  the marks,  keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and  the peculiarity of the script and concluded that  the above three  dissimilarities have to be given more importance than  the phonetic  similarity  or  the similarity in the use of  the  word PICNIC for PIKNIK.

     With  respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the  competing words are written is different and the  conclusion so  arrived  at is clearly contrary to the binding  precedent  of this  Court  in  Amritdharas  case (supra)  where  the  phonetic similarity  was  applied  by  judging the  two  competing  marks. Similarly,  in Durga Dutt Sharmas case (supra), it was  observed that  in  an  action for infringement, the  plaintiff  must,  no doubt, make out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants  mark  is so close either visually,  phonetically  or otherwise  and the court reaches the conclusion that there is  an imitation,  no further evidence is required to establish that the plaintiffs rights are violated.

     Lastly,  in Dyechems case (supra), it was observed in para 54 as under:

     As  to  scope of a buyer being deceived, in a  passing-off action,  the following principles have to be borne in mind.  Lord Romer,  L.J.  has said in Payton & Co.  Vs.  Snelling, Lampard  & Co.   (1900) 17 RPC 48 that it is a misconception to refer to the confusion  that can be created upon an ignorant customer that the courts ought to think of in these cases is the customer who knows the  distinguishing  characteristics  of the  plaintiffs  goods, those  characteristics  which  distinguish his goods  from  other goods in the market so far as relates to general characteristics. If  he  does not know that, he is not a customer whose views  can properly be regarded by the Court.  (See the cases quoted in N.S. Thread & Co.  Vs.  Chadwick & Bros.  AIR 1948 Mad 481 which was a passing-off  action.)  In Schweppes Case (1905) 22 RPC  601  (HL) Lord  Halsbury said, if a person is so careless that he does  not look  and  does not treat the label fairly but takes  the  bottle without  sufficient  consideration  and without reading  what  is written  very plainly indeed up the face of the label, you cannot

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 11 of 16  

say he is deceived.

     These  observations  appear  to us to be  contrary  to  the decision  of this Court in Amritdharas case (supra) where it was observed  that  the products 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.  The purchaser in India cannot be equated with a purchaser of goods in England.   While  we  agree  that in trade mark  matters,  it  is necessary  to  go into the question of comparable  strength,  the decision  on  merits in Dyechems case (supra) does not,  in  our opinion, lay down correct law and we hold accordingly.

     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., 25 USPQ 2nd, 1473 (TTAB 1993), 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 reported in 173 USPQ 19(1972) 455 F.  Reports 2d, 1384(1972), 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

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 12 of 16  

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 Corp., 173  USPQ 19(1972)  455  F.Reports  2d, 1384(1972), 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.

     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  Companys 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

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 13 of 16  

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:

     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

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 14 of 16  

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.

     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

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 15 of 16  

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.

     Keeping in view the provisions of Section 17-B of the Drugs and  Cosmetics Act, 1940 which inter alia indicates an  imitation or  resemblance  of  another drug in a manner likely  to  deceive being  regarded  as a spurious drug it is but proper that  before granting  permission to manufacture a drug under a brand name the authority  under  that  Act is satisfied that there  will  be  no confusion  or  deception in the market.  The  authorities  should consider requiring such an applicant to submit an official search report from the Trade Mark office pertaining to the trade mark in question  which  will  enable the drug authority to arrive  at  a correct conclusion.

     Broadly stated in an action for passing off on the basis of unregistered  trade  mark generally for deciding the question  of deceptive similarity the following factors to be considered:

     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 works.

     b)   The   degree  of   resembleness  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,   on  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.

     Weightage  to  be  given to each of the  aforesaid  factors depends  upon facts of each case and the same weightage cannot be given to each factor in every case.

http://JUDIS.NIC.IN SUPREME COURT OF INDIA Page 16 of 16  

     The  trial  court will now decide the suit keeping in  view the observations made in this judgment.  No order as to costs.

     Appeal is disposed of.