Notice of Motion No.4183 of 2007,Suit No.3054 of 2007

25th January, 2008

Petitioner Counsel: Mr. T. N. DARUWALA , Mr. DARIUS DALAL, Ms. HEMLATA MARATHE , Ms. RASHMI THAKUR
Respondent Counsel: Mr. V. R. DHOND , Mr. RAHUL KADAM , Mr. A. W. KANE

Cases Cited:
Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 [Para 6,9,12]
Pionotist's Case, 1906(23) RPC 774 [Para 9]
Amritdhara Vs. Lakshmandhara, AIR 1963 SC 449 [Para 9,11]
Ciba Ltd. Vs. M. Ramalingam, 1957(59) BLR 548 [Para 9]
Indchemie Health Specialities Pvt. Ltd. Vs. Naxpar Labs Pvt. Ltd., 2002(24) PTC 341 (Bom) [Para 9]
National Sewing Thread Co. Ltd. Chidambaram Vs. James Chadwick and Bros. Ltd., AIR 1953 SC 357 [Para 10]
Corn Products Refining Co. Vs. Shangrila Food Products Ltd., AIR 1960 SC 142 [Para 10,20]
Durga Dutt Sharma Vs. N.P. Laboratories., AIR 1965 SC 980 [Para 11]
F. Hoffmann-La Roche & Co. Ltd. Vs. Geofferey Manners & Co. Pvt. Ltd., AIR 1970 SC 2062 [Para 11,23]
S.M. Dyechem Ltd. Vs. Cadbury (India) Ltd., (2000)5 SCC 573 [Para 12]
Pidilite Industries Ltd. Vs. S.M. Associates, 2004(28) PTC 193 (Bom) [Para 22]
Remidex Pharma Pvt Ltd. Vs. Savita Pharmaceuticals P. Ltd., 2006(33) PTC 157 (Del.) [Para 22]
Glaxo Group Ltd. Vs. Vipin Gupta, 2006(33) PTC 145 (Del.) [Para 22]
Medley Laboratories (P) Ltd. Vs. Alkem Laboratories Ltd., 2002(25) PTC 592 (Bom) [Para 22]
M/s. Johann A. Wulfing Vs. Chemical Industrial & Pharmaceutical Laboratories Ltd., AIR 1984 Bom. 281 [Para 23]
SBL Ltd. Vs. Himalaya Drug Co., 1997(17) PTC 540 [Para 23]
M/s. Panacea Biotec Ltd. Vs. Recon Ltd., 1997 Delhi 244 [Para 23]
Griffon Laboratories (P) Ltd. Vs. Indian National Drug Co. P. Ltd., Suit No.399/1985 (Calcutta High Court) Order dt.18-9-1987 [Para 23]
Kalindi Medicure Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd., 2006(33) PTC 477 (Del) [Para 23]
Ranbaxy Laboratories Ltd. Vs. Indohemie Health Specialities Pvt. Ltd., 2002(24) PTC 510 (Bom) [Para 23]
Schering Corporation Vs. M/s. United Biotech (P) Ltd., Notice of Motion No.3459/2004 in Suit No.3419/2004, dt.14-7-2006 [Para 23]
Bal Pharma Ltd. Vs. Wockhardt Ltd., Appeal No.498/2002 in Notice of Motion No.725/02 in Suit No.1305/02, dt.12-6-2002 [Para 23]
Medley Pharmaceuticals Ltd. Vs. Khandelwal Laboratories Ltd., 2006(1) ALL MR 92 [Para 23]
Power Control Appliances Vs. Sumit Machines Pvt. Ltd., 1994(1) PTC 117 [Para 25]

JUDGMENT

JUDGMENT :- This order will govern the Plaintiffs' Motion for interlocutory relief in an action for passing off and infringement.

2. On 6th September, 1946, an application was made for the registration of the trade mark "FOLVITE" in class-5 in respect of "a nutritional factor of Vitamin B-Complex in the treatment and prevention of vitamin deficiencies and anemias". The mark was advertised in the Trade Marks Journal and came to be registered in class-5 on 28th April, 1949. The registration of the mark continues to be valid and to subsist. The First Plaintiff entered into a Registered User Agreement on 30th April, 1986 with Cyanamid India Limited. The name of Cyanamid India Limited was changed to Wyeth Lederle Limited with effect from 1st January, 1998. It is undisputed that the Plaintiffs are entitled to use and adopt the mark FOLVITE in a proprietary character.

3. The Defendant initially adopted the mark FOLCACID for its products. Subsequently, the mark was changed to FOL-V. Permission to do so was granted by the Drugs Control Authorities on 19th December, 2000. In May, 2000, the Defendant had filed an application for the registration of the mark FOL-V in respect of medicinal and pharmaceutical preparations falling in class-5. The Defendant stated that the mark was proposed to be used. Upon the mark being advertised, the Plaintiffs filed an opposition to the registration of the mark. On 15th December, 2006, an order was passed by the Registrar of Trade Marks refusing registration to the trade mark FOL-V of the Defendant. The principles grounds which weighed to the Registrar were thus:

-(i) The Defendant's mark FOL-V bears similarity to the earlier trade mark FOLVITE of the Plaintiffs and having regard to the similarity of the goods involved, there was a likelihood of confusion on the part of the public, particularly since it was established that the mark of the Plaintiffs had acquired a reputation in the Indian Market; (ii) Though the Defendant may be right in contending that the prefix FOL was common to the trade, the mere addition of the common alphabet 'V' which denotes 'Vitamin' cannot lend sufficient distinction to the mark of the Defendant from the mark of the Plaintiffs considered as a whole. There was an apparent danger of the public being confused and the use of the mark FOL-V would be detrimental to the distinctive character or repute of the mark of the Plaintiffs; (iii) The mark FOL-V adopted by the Defendant was visually and phonetically similar to the trade mark FOLVITE of the Plaintiffs; (iv) As a result of a long and extensive user, the mark of the Plaintiffs has acquired a tremendous reputation in the Indian Market and the user of a deceptively similar mark by the Defendant was likely to cause confusion in the mind of the public and the trade.

4. The Defendant has filed an appeal against the order passed by the Registrar refusing registration to the Intellectual Property Appellate Board. The appeal is pending.

5. The suit out of which these proceedings arise has been instituted for infringement and passing off.

6. In support of the application for injunction, it has been urged on behalf of the Plaintiffs that (i) The goods of the Plaintiffs and the Defendant are identical and the mark of the Defendant is visually and phonetically similar to the mark of the Plaintiffs. Comparing the mark as a whole, it is evident that the Defendant has adopted a mark which is deceptively similar to the mark of the Plaintiffs which consists of an invented word; (ii) There is a serious likelihood of confusion since both the marks are used for the same ailment, for the same purpose, and by the same type of customers or patients and the mark of the Defendant is deceptively similar; (iv) The adoption of the mark FOL-V by the Defendant is not honest and there is neither any explanation nor any traverse on affidavit of the reasons which led the Defendant to change over from the mark FOLCACID to FOL-V; (v) There is no delay or acquiescence on the part of the Plaintiffs in filing the suit and the conduct of the Plaintiffs in opposing registration of the Defendant's mark and other similar marks would be indicative of the fact that there was no abandonment by the Plaintiffs of their right to sue for infringement and passing off; (vi) The mark of the Plaintiffs was registered as a nutritional factor of the Vitamin B-Complex for the treatment of anemia and it is a misnomer to suggest that the mark as registered is confined to a folic acid preparation. FOLVITE is an invented word and so long as the registration continues to remain valid and the mark continues on the Register, the consequence of an infringement must follow; (vii) In view of the judgment of the Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 a deceptive similarity in the case of medicinal products must be dealt with by a great degree of strictness in order to protect the members of the public from the serious consequences that may ensue as a result of such confusion; (viii) The relevant date for the cause of action is the date on which the conduct of the Defendant commenced. In the present case, the Plaintiffs have established sales of Rs.9.89 crores in the year 2000-01 and Rs.60 crores between 1990 and 2001 in respect of the mark FOLVITE. The Defendant has adduced no proof whatsoever of the actual sales of the other products using the prefix FOL; (ix) The Plaintiffs had opposed the registration of similar marks Fulivit and FLUOVITE - one application was abandoned while the second was withdrawn; (x) Having filed an application for the registration of FOLVITE, the Defendant cannot be heard to say that their mark is not distinctive or that the word FOL represents Folic acid and 'V', Vitamin. The argument would be self defeating.

7. On the other hand, it has been urged on behalf of the Defendant that (i) There has been a delay on the part of the Plaintiffs in moving the Court in circumstances in which an inference can be drawn that there has been an acquiescence in the conduct of business by the Defendant with the use of the offending mark. There is a distinction between registration and use of a mark and while the Plaintiffs were opposing the registration of the mark, they consciously made a decision not to oppose the use of the mark, allowing the business of the Defendant to be built up over a period of seven years; (ii) The judgment of the Supreme Court in Cadila Health Care which holds that a stricter test should be applied in the case of pharmaceutical products, should not be applied to all classes of medicines but only to those cases where both the drugs are meant for curing the same ailment but the compositions are different; (iii) There is no phonetic or structural similarity between the two marks. Under Section 30(2)(a) of the Trade Marks Act, 1999, a registered trade mark is not infringed where the use in relation to goods or services indicates inter alia the kind, quality, intended purpose or other characteristic of the goods and services; (iv) The abbreviation FOL stands for FOLICACID, while the abbreviation VIT stands for Vitamin, both of which are generic descriptions common to the trade. When a word consists of a common element, greater emphasis must be laid on the uncommon elements. Consequently, in assessing where there is deceptive similarity, both sets of letters viz., "FOL" and "VIT" must be excluded. The 'e' is all that remains in the mark of the Plaintiffs.

8. At the outset, it would be necessary to advert to the relevant provisions of the Trade Marks Act, 1999. Section 28(1) of the Act confers upon the registered proprietor of a trade mark, the exclusive right - upon a valid registration - to the use of the trade mark in relation to goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement in the manner provided by the Act. Section 29(1) provides that a registered trade mark is infringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which is identical with, or deceptively similar to the trade mark in relation to goods or services in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. The expression "deceptively similar" is defined in Section 2(1)(h) :

"A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion."

Section 30 of the Act defines limits on the effect of a registered trade mark. Sub-section (2) of Section 30 provides for certain situations in which a registered trade mark is not infringed. Among them is a situation in which a mark is used in relation to goods or services to indicate inter alia the kind, quality, intended purpose, value, geographical origin or other characteristics of the goods or services.

9. The principles which must guide the Court in determining whether the Defendant's mark is deceptively similar to the mark of the Plaintiffs were enunciated in the judgment of Mr. Justice Parker in the Pionotist Case, 1906(23) RPC 774 :

"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. 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."

The dictum of Justice Parker has been cited with approval in the judgments of the Supreme Court in Amritdhara Vs. Lakshmandhara, AIR 1963 SC 449 (at para 7) and more recently in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (supra). The judgments of the Division Bench of this Court in Ciba Ltd. Vs. M. Ramalingam, 1957(59) BLR 548 and Indchemie Health Specialities Pvt. Ltd. Vs. Naxpar Labs Pvt. Ltd., 2002(24) PTC 341 (Bom) follow the dictum.

10. Since the judgment of the Supreme Court in National Sewing Thread Co. Ltd. Chidambaram Vs. James Chadwick and Bros. Ltd., AIR 1953 SC 357 it is a settled principle of law that the Court must assess each matter from the position of a purchaser "who must be looked upon as an average man of ordinary intelligence". For it is such a purchaser whose reaction to a particular trade mark has to be considered and what association he would form, by looking at the trade mark and in what respect he would connect the mark with the goods he would be purchasing. In Corn Products Refining Co. Vs. Shangrila Food Products Ltd., AIR 1960 SC 142 the mark of the appellant, "Glucovita", was registered. The Respondent applied for the registration of the mark "Gluvita". The Deputy Registrar held that the mark proposed to be registered by the Respondent was not visually and phonetically similar. A Learned Single Judge of this Court held that the two marks were sufficiently similar so as to be reasonably likely to cause deception and confusion and held that the Respondent's mark could not be registered. A Division Bench on appeal held inter alia that there were a series of marks in which the prefix or suffix 'Gluco' or 'Vita' occurred and it could not be said that these common features were only associated with the appellant's case. The judgment of the Learned Single Judge was set aside. The Supreme Court set aside the judgment of the Division Bench of this Court and restored the order of the Learned Single Judge. The Supreme Court dealt with the finding of the Division Bench that trade marks with the prefix or suffix 'Gluco' and 'Vita' were common features of the trade and could not be associated only with the appellant's product, and observed thus:

"The second point on which the learned appellate Judges based themselves in arriving at the conclusion that there was no reasonable apprehension of confusion or deception was, as we have earlier stated, that there were various trade marks with a prefix or suffix 'Gluco' or 'Vita' and that made it impossible to say that the common features 'Glu' and 'Vita' were only associated with the appellant's products. This view was founded on a passage which the learned appellate Judges quoted from Kerly on Trade Marks, 7th Edn., p.624. That passage may be summarised thus: Where there are a "series of marks, registered or unregistered, having a common feature or a common syllable, if the marks in the series are owned by different persons, this tends to assist the applicant for a mark containing the common feature. This statement of the law in Kerly's book is based on In re: an Application by Beck, Koller and Co. (England) Ltd., (1947)64 R.P.C. 76. It is clear however, from that case, as we shall presently show, that before the applicant can seek to derive assistance for the success of his application from the presence of a number of marks having one or more common features which occur in his mark also, he has to prove that these marks had acquired a reputation by user in the market." (emphasis supplied)

The Supreme Court cited with approval the judgment in re: Harrods Application and the principle therein that the character comprising of a common element should be established to be in fairly extensive use. The Supreme Court observed thus :

"(15) The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course on the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either 'Gluco' or 'Vita' as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly p.507 & Willesden Varnish Co. Ltd. Vs. Young & Marten Ltd., (1922)39 RPC 185 at p.289." (emphasis supplied).

The Supreme Court noted that the Court would have to give due regard to the position that the word was an English word and was a foreign word to the mass of the Indian people and observed that in deciding a question of similarity between two marks, the marks have to be considered as a whole. Again, the question has to be approached "from the point of view of a man of average intelligence and/or imperfect recollection". To such a person, the structural and phonetic similarity and the similarity of the idea underlying the two marks was held to be reasonably likely to result in confusion.

11. The same principles were reiterated by the Supreme Court in Amritdhara Pharmacy (supra) and in Durga Dutt Sharma Vs. N.P. Laboratories, AIR 1965 SC 980 In F. Hoffmann-La Roche & Co. Ltd. Vs. Geofferey Manners & Co. Pvt. Ltd., AIR 1970 SC 2062 the question was as to whether the mark 'Dropovit' of the Respondent was deceptively similar to the registered mark 'Protovit' of the Appellant so as to warrant a removal from the register. The Joint Registrar had dismissed an application for rectification of the Register made by the Appellant, for the removal of the Respondent's mark and the decision was affirmed by a Learned Single Judge and a Division Bench of this Court. The Supreme Court observed that the affidavits of the Appellant itself indicated that the last three letters 'VIT' constituted a well known abbreviation in the pharmaceutical trade to denote vitamin preparations. The abbreviation 'vit' in both the marks was regarded as being descriptive and common to the trade. The Supreme Court held that if greater regard was to be had to the uncommon element, it was difficult to hold that the prefix 'Dropo' would be confused with 'Proto'. The Supreme Court reiterated the test that the two marks would have to be compared as a whole and little assistance would be obtained from a meticulous comparison, letter for letter. The Court would have to make an allowance for a person with imperfect recollection. Thus considered the word Dropovit was held not to be deceptively similar to Protovit.

12. In Cadila Health Care (supra), the Supreme Court revisited the entire issue of deceptive similarity in the context of pharmaceutical preparations. About a year before the decision in Cadila, there was an earlier decision of the Court in S.M. Dyechem Ltd. Vs. Cadbury (India) Ltd., (2000)5 SCC 573 in which it was observed that where common marks are included in rival trade marks, more regard was to be paid to the parts not common and the proper course was to look at the marks as a whole, but at the same time not to disregard the parts which are common. The Court had observed that dissimilarities in essential features in devices and composite marks are more important than some similarity. The Supreme Court disapproved of the formulation of legal principle in S.M. Dyechem and observed that decisions of the Court over four decades had laid down that what was required to be analysed in an action for passing off was the similarity between the competing marks and the likelihood of deception. The factors which were enunciated by the Supreme Court in deciding the issue of deceptive similarity are as follows :

"(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 marks;

b) The degree of resemblance 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, or 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."

13. The Supreme Court emphasized the need of a stricter standard in matters of infringement and passing off involving pharmaceutical products in Cadila, At paragraph 32 page 1964 :

"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 product. Drugs are poisons, not sweets. Confusion between medical products may, therefore, be life threatening, not merely inconvenient."

14. But the Defendant in the present case has submitted that the observations of the Supreme Court in Cadila must be confined to those cases where the competing marks are used in drugs with different compositions and in support of this submission, reliance has been placed on the following observations contained in paragraph 25 of Cadila :

"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 defendant's drug, of which passing of 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."

The judgment of the Supreme Court in Cadila has to be read in its entirety. The width and ambit of the test laid down by the Supreme Court cannot be restricted by an artificial process of construction which focuses attention only upon the observations contained in the aforesaid extract. In fact, in a subsequent part of the judgment, Supreme Court held thus :

"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 effect 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 effect on the public health."

14-A . As a matter of principle, it would be inappropriate for the Court to apply a stricter standard only to a particular class of medicinal preparations. If the Court were to do this, it would have to make artificial distinctions from case to case based on whether or not the Court considers that a confusion arising out of the medicinal product in issue may or may not have disastrous effects on health and life. Such an approach is impermissible. An ostensibly innocuous medicinal preparation taken for an affliction which is not life threatening may yet result in a serious danger to life and health, where the drug is not manufactured under correct conditions. A consumer who desires to obtain a medicine even for an ordinary ailment is entitled to be sure that the drug that he purchases is of an assured character and quality. A manufacturer builds up a reputation for quality and standards assiduously over a length of time and an established mark assures to the consumer that the medicine which he has purchased is of a requisite quality that is associated with the mark. A less than strict standard cannot be applied on the hypothesis that the ailment which the drug is intended to treat is not life threatening, nor for that matter can the application of a lower standard be justified merely on the ground that the composition of the Plaintiff's product is the same as that of the Defendant and the confusion caused by mistaking one for the other would not result in a danger to health. Undoubtedly, where the competing drugs are meant to cure the same ailment but the compositions are different, mistaking one for the other may result in deleterious consequences. But, merely because the two competing marks are used for drugs with the same composition that would not justify applying a lower standard of scrutiny. For, even in such a case, the public interest lies in protecting the consumer against an unwary purchase of a deceptively similar product. The consumer must be protected against a reasonable possibility of confusion arising out of a deceptively similar mark. The attempt, therefore, to read down Cadila is impermissible.

15. The Plaintiffs are proprietors of the mark Folvite of which registration dates back to 1946. The Plaint contains a disclosure of the sales and the sales promotion expenses since 1981. The sales for the years 1999-2000 and 2000-01 were Rs.9.28 crores and Rs.9.89 crores respectively. Between 1980 and 2001, the Plaintiffs had total sales of Rs.60 crores. The relevant date for determining whether the Plaintiffs have an established reputation or goodwill is the date of commencement of the conduct complained of. Narayanan on Trade Marks, 6th Edition page 728. The sales figures disclosed by the Plaintiffs for the relevant years prima facie demonstrate an established reputation and goodwill associated with the mark FOLVITE.

16. The Defendant commenced the use of the mark in December, 2000. It is an undisputed position before the Court that the Defendant had originally adopted the mark FOLCACID. To the adoption of that mark the Plaintiffs had no objection. This brand name was changed to FOL-V for which the Drugs Control Authorities signified their permission of 19th December, 2000. The Defendant sought registration of the mark in an application of 31st May, 2000 which reflected that the mark was proposed to be used. In seeking the registration of mark FOL-V, the Defendant could not have been unaware of the existence on the Register of the mark of the Plaintiffs. A search of the Register would reveal that the mark FOLVITE had remained on the Register since 1946. The Defendant has furnished no cogent explanation before the Court in altering the mark under which their product was being sold and for the adoption of the new mark. The Plaintiffs contend that the adoption of the mark FOL-V by the Defendant was neither bona fide nor honest and in the absence of a cogent explanation, the challenge of the Plaintiffs must be regarded as possessing substance.

17. In considering the question of deceptive similarity, the two marks have to be considered as a whole. The structure of the mark visually and phonetically must be borne in mind. The image which the Court must have is that of the quintessential common man. When the Judge looks at phonetics, the sound which accompanies the pronunciation of the mark is the sound of the mark to an ordinary purchaser bereft of the niceties of language. Structurally and phonetically FOL-V falls within that perilous zone where approximation to the mark of the Plaintiffs is close enough to be deceptively similar. It is to my mind, no answer to state that the Plaintiffs intend that the VITE in their mark is to be so pronounced as to rhyme with 'Vite' while the Defendant intends that the "V" in their mark has to be so pronounced as to rhyme with the 'V' in 'victory' and to then make a distinction between VITE and the V. The ordinary customer goes to a small shop of a Chemist and to him the distinction between FOLVITE on the one hand and FOL-V on the other is so thin as to almost be lacking in significance. It may well be that the manner in which the mark of the Plaintiffs is written in Devnagari may make the VITE in the mark resemble 'white'. But every customer in a multi lingual country such as India is not conversant with that script. An average consumer who asks for FOLVITE would fail to gauge the distinction when he is given a strip of tablets of FOL-V and that is what matters on the question of deceptive similarity.

18. The contention of the Defendant is that the mark FOLVITE is a combination of FOL which stands for folic acid and VIT which is an abbreviation for Vitamin. The theory propounded by the Defendant is that the Plaintiffs cannot assert a monopoly over folic acid on the one hand and Vitamin on the other by adding an "e" to an abbreviation of the two words. This argument of the Defendant clearly misses the point and there are several reasons why it cannot be accepted. First and foremost, the word FOLVITE has absolutely no meaning in the English language. It is an invented word. As the Supreme Court observed in Cadila, it is not right to take a part of a word and compare it with a part of another. Each word must be taken as a whole and compared as a whole with the other: "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."

19. Secondly, it is a settled principle of law that so long as a mark continues on the Register, it is not open to the Defendant in an action for infringement to question the validity of the registration. Sub-section (1) of Section 31 postulates that in all legal proceedings relating to a trade mark registered under the Act, the original registration of the trade mark and of all subsequent assignments and transmissions of the mark shall be prima facie evidence of the validity thereof. The sequitur of the submission of the Defendant is that the mark of the Plaintiffs comprises of a generic description of two elements, namely, folicacid and Vitamin, resulting thereby in the mark losing its distinctive character. During the course of the submissions, however, Mr. Dhond, the Learned Counsel appearing on behalf of the Defendant who argued the case with felicity, submits that the Defendant does not question the distinctive character of the mark of the Plaintiffs or the validity of the mark. The mark of the Plaintiffs constitutes a composite invented word and it would not be open to the Defendant by a process of breaking down the mark to claim that it is only a combination of common elements. Such an exercise would be impermissible and so long as the mark continues to borne on the Register of Trade Marks, the validity of the mark cannot be questioned.

20. Thirdly, before the Court can accept that the words incorporated in a mark are elements which are common to the trade or business, certain essential ingredients must demonstrably be established. The judgment of the Supreme Court in Corn Products (supra) categorically lays down the principle of law that before an applicant can assert the presence of a number of marks having one or more common features in the trade "he has to prove that these marks had acquired a reputation by user in the market". The onus of establishing this lies on him who asserts the existence of such other mark. The judgment in Corn Products emphasizes that the presence of a mark in the Register does not prove its use and it is quite possible that the mark may have been registered but not used. Now, from this stand point if the material which is produced by the Defendant is assessed, the Defendant relies upon a Continuous Prescription Report of a Calcutta based agency, C.Marc. The parameters on the basis on which the survey was carried out have not been set out. The period of the report is between September and October, 2007 which is irrelevant to the period when the cause of action arose. The relevant date for determining whether the Plaintiffs have established a reputation and goodwill is the date of the commencement of the action complained of. The relevant date for determining whether the conduct of the Defendant amounts to passing off is when the conduct commenced. The relevant period for which material ought to have been produced is the year 2000-01. No proof has been produced of the actual sales of those other products or that the sales were extensive. The same position holds in respect of the issue of the Current Index of Medical Specialities which is for the period July to October, 2007 and of the periodical Drug Today which is for July to September, 2007.

21. Fourthly, the mark of the Plaintiff has been registered as a nutritional factor of the Vitamin B-complex in the treatment and prevention of vitamin deficiencies and anemias. Butterworths Medical Dictionary (2nd edition p.1822) identifies the factors of the vitamin B complex as :

"1. Thiamine ... 2. Riboflavine ... 3. Pyridoxine ... 4. Folic acid ... 5. Biotin ... 6. Aminobenzoic acid ... 7. Vitamin B12 ... 8. Nicotinic acid, pyridine B-carboxylic acid ... 9. Pantothenic acid ... 10. Inositol ... 11. Choline."

Therefore, it would in the nature of things be impermissible to equate the registration of the mark of the Plaintiff for a preparation involving folic acid alone.

22. This principle was followed in a judgment of a Learned Single Judge (S. J. Vazifdar, J.) in Pidilite Industries Ltd. Vs. S.M. Associates, 2004(28) PTC 193 (Bom) and by the Delhi High Court in Remidex Pharma Private Limited. Vs. Savita pharmaceuticals P. Ltd., 2006(33) PTC 157 (Del.) and Glaxo Group Limited Vs. Vipin Gupta., 2006(33) PTC 145 (Del.). A Division Bench of this Court consisting of Chief Justice C. K. Thakker (as His Lordship then was) and Mr. Justice S. Radhakrishnan in Medley Laboratories (P) Ltd. Vs. Alkem Laboratories Limited, 2002(25) PTC 592 (Bom) considered the question of deceptive similarity in an action for infringement and passing off where the Defendant started selling a pharmaceutical preparation under the mark 'Supaxin' which was claimed to be deceptively similar to the Plaintiff's registered mark 'Spoxin'. The medicinal preparation of the Plaintiffs contained a generic drug Sparfloxacin. The Defendant used the mark Supaxin for its preparation based on Ofloxacin. A Learned Single Judge of this Court had declined ad interim relief holding that the explanation of the Defendant for the adoption of the mark was plausible and the marks were not phonetically similar. Relying on the judgment of the Supreme Court in Cadila, the Division Bench, while allowing the appeal set aside the order declining adinterim relief and observed thus :

"The case of the appellants is that suffix 'XIN' being common to both the drugs, there is likelihood of confusion. The mark of the plaintiffs is registered, and, hence, it has statutory protection. It relates to a medicinal preparation. In the circumstances, in our opinion, the test of 'possibility' laid down in Cadila Healthcare Ltd. would apply. Applying the said test, there is likelihood, or in any case, possibility of consumer being confused, and the plaintiffs were entitled to interim injunction. Moreover, SPOXIN and SUPAXIN are visually, phonetically and structurally similar. No doubt, both the drugs are sold under prescription, but that fact alone is not sufficient to prevent confusion which is likely to arise."

23. A large number of authorities have been cited by Learned Counsel appearing for the contesting parities. Once the principle which forms the basis for adjudication is formulated, the outcome of each case necessarily turns on the application of the principle to the facts of that case. The Defendant relied upon a judgment of the Division Bench in M/s. Johann A. Wulfing Vs. Chemical Industrial & Pharmaceutical Laboratories Limited, AIR 1984 Bom. 281 where the Court held that visually and phonetically, the marks Complamina and Ciplamina were as a matter of first impression not deceptively similar. The judgment of the Supreme Court in F. Hoffimann-La Roche (Supra) involved a fact situation where the marks Dropovit and Protovit were held not be deceptively similar. Affidavits were filed before the Supreme Court by the appellants themselves who were aggrieved by the rejection of an application for rectification of the register, that there were as many as 57 trade marks registered with the suffix 'VIT' which denoted vitamin preparations. The Supreme Court held that the marks would have to be considered as a whole and the different prefixes of the two marks belied the claim of deceptive similarity. The prefix 'Dropo' was sufficiently distinguished from the prefix 'Proto'. In the judgment of the Delhi High Court in SBL Ltd. Vs. Himalaya Drug Co., 1997(17) PTC 540 the word 'LIV' was regarded as a generic abbreviation of 'Liver' so as to afford the Defendant a valid defence in an action for infringement and passing off. The decided cases furnish other instances. Among them is a judgment of the Delhi High Court where a trade mark of a medicinal preparation (Nimulid) is wholly derived from the principal drug used in its manufacture (Nimesulide). (M/s. Panacea Biotec Ltd. Vs. Recon Ltd., AIR 1997 Delhi 244). Griffon Laboratories (P) Ltd. Vs. Indian National Drug Co. P. Ltd., Order dated 18-9-1987 in Suit 399/1985 (Calcutta High Court) was a decision of the Calcutta High Court where both the preparations - Sorbiline and Sorbitone were derived from the drug Sorbitol used in the preparation. Reference may also be made to the decisions in Kalindi Medicure Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd., 2006(33) PTC 477 (Del) and Ranbaxy Laboratories Ltd. Vs. Indohemie Health Specialities Pvt. Ltd., 2002(24) PTC 510 (Bom) Several of these cases turn on the application of the principle to the facts of each case. In certain decisions which were rendered before the decision of the Supreme Court in Cadila, the approach of the Court may now need to be reconsidered in view of the principle of strict scrutiny enunciated in Cadila. For instance, in the Liv 52 case (supra), an important consideration which weighed with the Delhi High Court was that the sales of medicinal preparations were made only by authorised or licenced vendors and a purchaser would normally have a Doctors' prescription, the purchasers continuing to remain in touch with the Doctors. Learned Counsel for the Defendant fairly did not therefore, rely on this part of the reasoning of that decision. The same reasoning forms the basis of the judgment of a Learned Single Judge of the Calcutta High Court in Griffon Laboratories (supra) where the Court held that medicines are either advertised in Special Journals or are prescribed by doctors and the prescriptions are served by registered Chemists. The Calcutta High Court observed that the public does not enter into the picture at all, in the selection of the product for after all it is the doctor who knows what is good for the heart and good for the liver. This line of reasoning is inconsistent with the law laid down by the Supreme Court in Cadila. A Learned Single Judge of this Court held in Schering Corporation Vs. M/s. United Biotech (P) Ltd. Notice of Motion No.3459/2004 in Suit No.3419/2004, dated 14-7-2006 that the Defendants' mark 'Netmicin' did not infringe the mark 'Netromycin' of the Plaintiffs or amount to passing off. The Learned Judge was of the view that the Plaintiffs had not been able to establish the distinctiveness of their mark and the words Netmicin and Netromycin were not phonetically similar. There was no possibility of confusion because while the Defendants' product was purchased in bulk by hospitals, the Plaintiffs' product was sold over the counter. Moreover, the Learned Single Judge accepted the claim that there were several other pharmaceutical products being traded in the market, ending with the letters MYCIN, MICIN and CIN. In Bal Pharma Ltd. Vs. Wockhardt Limited, Judgment dated 12-6-2002 in Appeal 498/2002 in Notice of Motion 725/02 in Suit 1305/02 the mark AZIWOK was regarded as distinct from as AZIWIN. The Division Bench accepted the contention of the appellant that various brands of Azithromycin in the tablet and syrup form were being marketed by pharmaceutical Companies and AZI was an abbreviation for the generic name of the drug. There were thirteen other Companies which were using the prefix AZI. It was in these circumstances, that the word AZI was regarded as not being distinctive but as common to the trade. The suffixes WOK and WIN were regarded as dissimilar. The judgment of a Learned Single Judge in Medley Pharmaceuticals Ltd. Vs. Khandelwal Laboratories Ltd., Judgment dated 27-9-2005 in Notice of Motion 2808/02 in Suit 3323/02 (since reported in 2006(1) ALL MR 92) holds that the mark CEFO of the Plaintiff and CEFI of the Defendant used for the manufacture and sale of Cefixime were not deceptively similar. In affirming the view of the Learned Single Judge, the Division Bench in the judgment in appeal (Appeal 1118 of 2005, decided on 22nd December, 2005) held that there were cefixme preparations available in the market, using the prefix CEF and sales of those products were in millions of rupees. The finding of the Trial Judge that the Plaintiff had failed to establish the distinctiveness of his mark was, therefore, held not to suffer from any infirmity.

24. All these are cases where there was ample and demonstrable material before the Court to hold that there was a substantial sale involving competing products using a generic description of the bulk drug from which a preparation was manufactured. That is the distinguishing feature in the decided cases.

25. Counsel appearing on behalf of the Defendant has submitted that the Plaintiffs must be regarded as having acquiesced in the use of the mark by the Defendant for seven years. There is no merit in the contention. The ingredients spelt out in the judgment of the Supreme Court in Power Control Appliances Vs. Sumit Machines Pvt. Ltd., 1994(1) PTC 117 to establish acquiescence are lacking. In the present case the conduct of the Plaintiffs shows that immediately after the application of the Defendant for the registration of the mark was advertised, the Plaintiffs opposed the registration by adopting due process of law. Similarly, material has been placed before the Court to indicate that the Plaintiffs had pursued similar cases involving infringements of their mark by others. An application for the registration of a trade mark FULVIT was withdrawn on 9th March, 2006, the application having been made by Cadila Pharmaceuticals Ltd. Similarly, an application for the registration of the mark FOLIVIT was abandoned and an order was passed by the Deputy Registrar, Chennai on 17th October, 2007. The Plaintiffs have been vigilant to protect themselves against infringing marks by opposing these registrations.

26. The Plaintiffs have established a prima facie case for the grant of interim relief. The Plaintiffs are the proprietors of the mark Folvite of which the registration dates back to 1946. Associated with the mark, is a reputation and goodwill which has been built up over the last 60 years. The Defendant has no cogent explanation for changing the mark FOLCACID to FOL-V. The mark of the Defendant is deceptively similar. The balance of convenience in a case such as the present is in favour of the grant of an interim injunction. Irreparable harm would be caused to the Plaintiffs if an injunction were not to be granted.

The Motion is made absolute in terms of prayer clauses (a), (b), (c-1) and (c-2).

Notice of motion allowed.