2016(7) ALL MR 390
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
S. C. GUPTE, J.
Indchemie Health Specialties Pvt.Ltd. Vs. Intas Pharmaceutical Ltd.
Notice of Motion (L) No.2540 of 2014,Suit No.175 of 2015
24th June, 2015.
Petitioner Counsel: Dr. VIRENDRA TULZAPURKAR, Sr. Adv. with Mr. MAHESH MAHADGUT with Ms. MILONI GALA
Respondent Counsel: Mr. VENKATESH DHOND, Sr. Adv. with Mr.ADHEESH NARGOLKAR, Mr. SHAILENDRA BHANDARE, Mr. RASHMIN KHANDEKAR, Mr. R.A. IYER and Ms.VIDHII PARTNERS i/b. M/s. KHAITAN & CO.
(A) Trade Marks Act (1999), Ss.2(zb), 29 - Trade mark - Registrability of - Depends on degree of its capability to distinguish goods of one trader from goods of others. (Para 4)
(B) Trade Marks Act (1999), Ss.2(zb), 29 - Trade mark - Goods which are liable to be registrable as trade mark - Stated.
As a matter of general principle, registrability of, and also corresponding protection afforded to, a trade mark depends on the degree of its capability to distinguish the goods of one trader from the goods of others. A generic or common descriptive term is one which is used as the name or description of the kind of goods. It obviously cannot become a trademark under any circumstances, since it fails altogether in distinguishing the goods of one trader from those of another. A merely descriptive term specifically describes one or other characteristic or ingredient of goods. Such a term is also ordinarily not registrable as trademark, unless it has, by acquiring a secondary meaning, i.e. becoming distinctive of the goods of the applicant for registration, become a valid trade mark. A suggestive term, unlike a descriptive term, suggests rather than describes an ingredient or characteristic of the goods. It still requires the observer or listener to use his own imagination and perception to determine the nature of the goods. Such a term is capable of being registered without proof of a secondary meaning. The Registrar may, however, put the applicant to certain terms as regards the user, or require a disclaimer from the latter, so far as a permissible descriptive or suggestive term is concerned. An arbitrary or fanciful term such as an invented word enjoys the fullest protection along the spectrum. It is most likely to distinguish the goods of the applicant from the goods of others and is the best placed of all terms as regards registrability. It is next to be noted that if a trademark, for which protection is sought to be claimed, lies at a particular place along the spectrum of trademarks referred to above, the applicant cannot successfully claim to alter that place (and put it on a higher end of the spectrum) by simply using a phonetic equivalent, say by misspelling it. A generic or common descriptive word, say 'table', cannot be misspelt as 'tabel' so as to rid the word of its quality of being a common descriptive or generic word. [Para 4,5]
(C) Trade Marks Act (1999), S.29 - Drugs and Cosmetics Act (1940), S.3(b) - Food Safety and Standards Act (2006), S.3(1)(x) - Trade mark - Infringement of - Trade mark "cheri" and "Multi cheri" - Plaintiff's goods "Cheri" are 'drugs' within meaning of Act (1940) - They are meant to be therapeutic in nature and basically used in pharmaceutical preparations - They are to be used "as directed by physician" - Defendant's products "Multi Cherry" are 'proprietary food' covered under Act (2006) and not 'drugs' as per Act (1940) - They are avowedly "not for medicinal use" - They are to be used 'as directed by dietician' - Prices of two products are different and so are their end uses - There is no concrete likelihood of deception or confusion in minds of user - No case made out of infringement of trade mark. (Paras 8, 12)
Miller Brewing Company Vs. G. Heileman Brewing Company, Inc, 561 F.2d 75, 195 U.S.P.Q. 281 [Para 4]
Henri’s Food Products Co. Inc. Vs. Tasty Snacks, Inc., 642 F. Supp.255, 231 U.S.P.Q. 481 : 642 F.Supp.255 [Para 5]
In re Joseph Crosfield & Sons Limited, 1910 1Ch.130 [Para 5]
Electrix Ltd. Vs. Electrolux Ltd., H.L. (E) 1959 (HOUSE OF LORDS) AND PRIVY COUNCIL 722 [Para 5]
James C. Ayer Vs. Federick V. Rushton, New York, February 1877 Court Of Common Pleas 9 [Para 5]
Cadbury India Limited Vs. S M Dyechem Limited, 1999 PTC 617 [Para 5]
Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., (1955) 2 SCR 252: AIR 1955 SC 558 [Para 7]
British Sugar PLC Vs. James Robertson & Sons Ltd., Chancery Division (No.9)  R.P.C. 281 [Para 10]
Uniroyal Vs. Max Pharma, 1984 IPLR 161 [Para 11]
Invicta TM,  RPC 541 [Para 11]
Cadila Chemicals Pvt.Ltd. Vs. Acilla Pharmaceuticals Pvt.Ltd., 1986(6)PTC310 (Reg) [Para 11]
JUDGMENT :- This Motion is taken out in a trade mark infringement and passing off suit with leave under clause XIV of the Letters Patent. The Motion cannot be taken up for final hearing for two reasons, one, because the Plaintiffs cannot press their interlocutory application in the passing off action in view of the order passed by the Appeal Court in the Defendants' appeal from the order granting leave to the Plaintiffs under Clause XIV and secondly, due to the application of the Defendants for framing and deciding a preliminary issue under Section 9A of the Code of Civil Procedure. This order accordingly disposes of the Plaintiffs' ad-interim application in the infringement action.
The Plaintiffs manufacture and deal in pharmaceutical and medical preparations and market their products under various distinctive trade marks and cartons/labels/packings/trade dress. The Plaintiffs are registered proprietors of the trade mark 'CHERI', with registration as of 14 May 1987, in respect of pharmaceutical preparations falling in Class 5 of the Fourth Schedule. Pharmaceutical preparations under the trade mark 'CHERI', which are haematinic preparations used for iron deficiency, are sold by the Plaintiffs in the form of syrup, tablets and capsules. The various 'CHERI' range of products sold by the Plaintiffs include CHERI syrup, CHERI-XT tablets, NEW CHERI capsules and CHERI-FOL capsules. The Plaintiffs claim to have used the trade mark 'CHERI' since 1987 throughout most of India continuously and extensively. The Plaintiffs have produced their sales turnover figures, invoices, promotional material, and promotional expenses to claim extensive reputation and goodwill enjoyed by their trade mark 'CHERI'. In June 2011, the Plaintiffs came across a product marketed under the mark 'CHERRY FOL' by Defendant No. 1 and sent a cease and desist notice to the latter. In reply, Defendant No.1, whilst claiming that the word 'CHERRY' was common to the trade, offered nevertheless to desist from using the mark 'CHERRY FOL'. It is the Plaintiffs' case that in January 2014, the Plaintiffs found that Defendant No. 1, along with Defendant No. 2, had launched a product known as 'MULTI CHERRY'. Once again the Plaintiffs sent a cease and desist notice. The Defendants, however, refused to comply and instead defended their use of the words MULTI CHERRY for their multivitamin syrup. The Plaintiffs' case is that user of the mark 'MULTI CHERRY' by the Defendants constitutes infringement of their registered trade mark 'CHERI'. The Plaintiffs submit that such user also leads to passing off of the Defendants' goods as goods of the Plaintiffs. Hence the suit and the interlocutory application.
(i) The Plaintiffs' original application for registration of the trade mark 'CHERI' was in respect of 'medicinal and pharmaceutical preparations' in Class 5. The application was objected to by the Registry on the ground that the mark was descriptive of the goods and not distinctive if the same was meant to be used generally for medicinal preparations. The mark was, therefore, agreed to be advertised in the trade mark journal subject to the Plaintiffs amending the specification of goods merely to read as 'pharmaceutical preparations'. The Plaintiffs thereupon agreed to limit their application for registration only in respect of pharmaceutical preparations, by dropping 'medicinal preparations' from the description of goods. In view of this exclusion, the Plaintiffs cannot claim monopoly over the use of the word 'CHERI' in respect of medicinal preparations generally.
(ii) The Defendants' product is not a pharmaceutical preparation, but is a mere dietary supplement intended to supplement normal diet. It is a proprietary food not meant for medicinal use, but to be used as per a dietician's recommendation.
(iii) The Plaintiffs cannot prevent the Defendants' use of the mark 'MULTI CHERRY' for such dietary supplement on the basis of their registration of the mark 'CHERI' restricted particularly to pharmaceutical preparations.
(iv) Having regard to the difference in description, and uses, of the rival products and other attending circumstances, there is no real likelihood of deception or confusion between the two marks CHERI and MULTI CHERRY.
(v) The Defendants' goods with the mark 'MULTI CHERRY' have been in the market since November 2012 and enjoy an extensive reputation. The balance of convenience weighs in favour of the Defendants.
4. As a matter of general principle, registrability of, and also corresponding protection afforded to, a trade mark depends on the degree of its capability to distinguish the goods of one trader from the goods of others. This degree of capability to distinguish can be seen, as the American case of Miller Brewing Company Vs. G. Heileman Brewing Company, Inc, 561 F.2d 75, 195 U.S.P.Q. 281. eloquently puts it, on a "spectrum which ranges through (1) generic or common descriptive and (2) merely descriptive to (3) suggestive and (4) arbitrary or fanciful. As the ease with which hues in the solar spectrum may be classified on the basis of perception will depend upon where they fall in that spectrum, so it is with a term on the trademark spectrum". A generic or common descriptive term is one which is used as the name or description of the kind of goods. It obviously cannot become a trademark under any circumstances, since it fails altogether in distinguishing the goods of one trader from those of another. A merely descriptive term specifically describes one or other characteristic or ingredient of goods. Such a term is also ordinarily not registrable as trademark, unless it has, by acquiring a secondary meaning, i.e. becoming distinctive of the goods of the applicant for registration, become a valid trade mark. A suggestive term, unlike a descriptive term, suggests rather than describes an ingredient or characteristic of the goods. It still requires the observer or listener to use his own imagination and perception to determine the nature of the goods. Such a term is capable of being registered without proof of a secondary meaning. The Registrar may, however, put the applicant to certain terms as regards the user, or require a disclaimer from the latter, so far as a permissible descriptive or suggestive term is concerned. An arbitrary or fanciful term such as an invented word enjoys the fullest protection along the spectrum. It is most likely to distinguish the goods of the applicant from the goods of others and is the best placed of all terms as regards registrability.
5. It is next to be noted that if a trademark, for which protection is sought to be claimed, lies at a particular place along the spectrum of trademarks referred to above, the applicant cannot successfully claim to alter that place (and put it on a higher end of the spectrum) by simply using a phonetic equivalent, say by misspelling it. A generic or common descriptive word, say 'table', cannot be misspelt as 'tabel' so as to rid the word of its quality of being a common descriptive or generic word. Lord Harschell's note of caution sounded in connection with 'invented words' in In re "UNEEDA" (TRADE-MARK) (1898 A.C. 581),1901 Chancery Division Page 550 is apposite in this context. The learned Judge put it thus:
" An invented word is allowed to be registered as a trade-mark, not as a reward of merit, but because its registration deprives no member of the community of the rights which he possesses to use the existing vocabulary as he pleases. It may, not doubt, sometimes be difficult to determine whether a word is an invented word or not. I do not think the combination of two English words is an invented word, even although the combination may not have been in use before; nor do I think that a mere variation of the orthography or termination of a word would be sufficient to constitute an invented word, if to the eye or ear the same idea would be conveyed as by the word in its ordinary form."
The American case of Henri's Food Products Co. Inc. Vs. Tasty Snacks, Inc., 642 F. Supp.255, 231 U.S.P.Q. 481 (Cite as : 642 F.Supp.255) is another case in point. Henri's manufactured and marketed a pourable salad dressing using the designation "Henri's TAS-TEE Dressing". Initially, when Henri's sought to register the designation as a trademark, the United States Patent and Trademark Office refused the registration, considering the mark to be highly descriptive. Subsequently, Henri's disclaimed the word 'TAS-TEE' apart from the mark and then the mark was registered. Henri's again applied after a number of years to register the mark "TAS-TEE". This time the US Office proceeded to register it. Subsequently, Tasty Snacks started selling pourable dressings and mayonnaise under the designation "tasty". Their dressings included "tasty" mayonnaise, "tasty" Russian dressing, "tasty" Italian dressing, etc. Henri's alleged infringement of their registered trade mark and also a common law violation. The cause of action was based upon Henri's claim to the exclusive right to the mark 'TAS-TEE', now registered as a trade mark. Tasty snacks, in defence, maintained that Henri's was not entitled to exclusive use of the word "tasty", even if misspelt as "TAS-TEE", because it is a generic or common descriptive term not protectable under the US Federal, State or common law. Secondly, Tasty Snacks claimed that even if Henri's had the right to use "TAS-TEE" as a trade mark, it could not enlarge that right to claim exclusive use of a common descriptive word "tasty". After noticing the four categories of terms presented for trademark protection, referred to above, namely, generic or common descriptive, merely descriptive, suggestive and arbitrary or fanciful, the US District Court of Wisconsin rejected Henri's claim for a preliminary injunction, holding as follows:
"Because "tasty" is a generic or common descriptive term, its phonetic spelling "tas-tee" is also generic or commonly descriptive. The Seventh Circuit in Miller Brewing Co. held that "light" was generic, and therefore, the word misspelled as "lite" was also generic. 561 F.2d at 81. A generic term cannot be appropriated through the device of misspelling it."
A number of English and Indian cases have reaffirmed this point. In re Joseph Crosfield & Sons Limited,  1 Ch.130, the Chancery Division held that "orlwoola" was merely a misspelling of "all wool"; that if the goods to which the word was applied were entirely composed of wool, the word was descriptive, and, if not, was deceptive. The Court accordingly ordered the mark to be expunged. In Electrix Ltd. Vs. Electrolux Ltd., H.L. (E) 1959 (HOUSE OF LORDS) AND PRIVY COUNCIL 722, the House of Lords held that as the word "Electrics" was inherently incapable of registration (for electrical apparatus), the word "Electrix" was also unregistrable. The rationale applied by the Court was that trade marks appeal to the ear as well as to the eye and the objection (whatever it might be) to the registration of a word in its proper spelling applied equally to a word which was merely its phonetic equivalent. Then we have, almost by a startling coincidence with our case, the case of a mark with the word "Cherry" forming an essential part of it, "Cherry Pectoral". The Plaintiff, on the basis of his trade mark "Ayer's Cherry Pectoral", was denied injunction to restrain the defendant's use of the title and name "Cherry Pectoral" in connection with a medicinal preparation. The Court held as follows (James C. Ayer Vs. Federick V. Rushton, NEW YORK - FEBRUARY, 1877 - COURT OF COMMON PLEAS Page 9):
"The word "cherry," indicating an ingredient, or the sole or chief ingredient, as an extract or tincture of wild cherry in a medicine, cannot become the exclusive property of any person, to describe the medicine in the compounding of which it is used. The same must of course be said of a descriptive term made up of the two words "cherry" and "pectoral," used to describe the ingredients and use of the compound."
So also, the word "Lactel" being merely a misspelling of "Lacteal" brought about by a 'mere variation' of the termination of the word, was denied registration in respect of "milk and milk products included in Class 29". In the case of Cadbury India Limited Vs. S M Dyechem Limited, 1999 PTC 617, on the basis of the registration of the label mark 'PIKNIK', the plaintiff, manufacturing potato chips and wafers, was denied injunction against the defendant's use of 'Cadbury's PICNIC' for chocolates by Gujarat High Court. The Court held that the word 'PIKNIK' cannot be separated from the label mark and on the basis of that word alone, the plaintiff cannot claim action against the defendant using a common dictionary word PICNIC prefixed by the name of the company 'Cadbury'.
6. Now the immediate question that arises for the consideration of the Court in the present Motion is, how does the word 'Cheri' fair as a registered trade mark, that is to say, its place on the spectrum described above. It is firstly to be noted that it is nothing but a phonetic equivalent of a common dictionary word "Cherry" and arrived at by misspelling the latter word, i.e. by a mere variation of the termination of the word. It must, therefore, take its place on the spectrum according to the word "Cherry", as explained above, when we consider goods of Class 5. "Cherry", if it indicates an ingredient such as an extract of the fruit 'cherry' in medicines or dietetic substances adopted for medical use, both of which fall within Class 5, is surely a descriptive term. No one can possibly claim an exclusive property in the word to describe such medicines or dietetic substances. Ditto for the word "Cheri". It was because of this difficulty, inherent as it was in the registration of that word in respect of medicinal preparations, that the Registry insisted, in the first place, to restrict the Plaintiffs' application for registration to only pharmaceutical preparations, and not extend the same to medicines or medicinal preparations generally. The Registry, whilst so insisting, clearly opined that (if not so restricted) the word "Cheri" was descriptive and not capable of distinguishing goods. The Plaintiffs, thereupon, agreed to amend their specification of goods for which registration was sought. This is an admitted position.
7. Let us next consider, what is the effect of this restriction. The Registrar of Trade Marks has a discretion to refuse registration or to register subject to conditions or limitations. Section 18 (4) of the present Act, just as Section 18 (4) of the 1958 Act (under which the mark 'Cheri' in the present case was registered), provides for this discretion as follows:
"18(4)Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit."
This discretion implies that even if a trade mark is otherwise qualified for registration under the Act, the Registrar may still refuse registration or allow it subject to conditions, etc. It is needless to add that such discretion must always be exercised on reasonable grounds and not capriciously. If the Registrar is of the opinion that use of the mark for particular goods within a class may be descriptive, whilst the mark may well be able to distinguish other goods within that class, he may certainly put the applicant to such restriction inter alia by requiring the latter to modify his application or putting a condition restricting the registration to the latter category of goods. In Registrar of Trade Marks Vs. Ashok Chandra Rakhit Ltd., (1955) 2 SCR 252: AIR 1955 SC 558, the Supreme Court observed as follows:
"As we have already stated the possibility of the proprietor attempting to expand the operation of his trade mark cannot be ignored or overlooked. It is a thing which must be taken into consideration by the Tribunal be it the Registrar or the Court - in deciding upon the way it should exercise the discretionary power conferred on it. Reference has been made by the High Court to the observations of Eve, J. in the A.B.C. case referred to above and the question has been posed as to whether any good cause had been shown for the necessity of disclaimer in this case. The High Court answers the question immediately by saying that it did not think that any cause had been shown beyond the desirability of having a uniform practice. This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resisting the disclaimer in this particular case was that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of this case, give it a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration. This aspect of the matter does not appear to have been pressed before or adverted to by the High Court."
Thus the possibility of an extravagant or untenable claim may call for a restriction and the restriction may well come in the form of a disclaimer for the purpose of defining the rights granted by the registration, as held by the Supreme Court in the case noted above, or by an amendment of the application including the product specification as in our case. In our case, it is clear that the Registrar considered the possibility of the Plaintiffs extending their rights to even medicinal preparations where the use of the word "Cheri" could be merely descriptive and therefore, thought it fit to require the Plaintiffs to amend the product specification by deleting the words 'medicinal preparations' from it.
8. If the Plaintiffs have got protection for a narrow class of goods, it is only fair that they ought to be restricted to that narrow class and not be permitted to extend the protection to other goods for which the protection was not, in the first place, meant to be. The Plaintiffs cannot extend such protection to medicinal or dietetic substances adopted for medical use or meant for general well being. It is clear that the product, namely, the multi-vitamin and multi-mineral syrup marketed by the Defendants is a health supplement. It can be termed as a dietetic substance meant for general well being or health or, at the highest, one adopted for medical use. There are many indicia for this. In the first place, it is meant merely as a dietary supplement terming the same as "health supplement" or "nutritional food supplement" and not meant for "therapeutic use". In other words, it supplements a normal diet or has health benefits. The packaging makes it clear that the product "is not intended to diagnose, treat or cure or prevent any disease". Secondly, the product information makes it clear that the recommended dosage is "as directed by the Dietitian". Even in law, the Defendants' product is a proprietary food product under the (Indian) Food Safety and Standards Act, 2006 and not 'drug' under the (Indian) Drug and Cosmetics Act, 1940. The product has a licence under the former Act. Pharmaceutical preparations, on the other hand, are drugs intended for human or veterinary use in their finished dosage form and meant for therapeutic use. The Plaintiffs' application for registration being restricted to 'pharmaceutical preparations' and particularly being inapplicable to "medicinal preparations", the Plaintiffs cannot claim to prevent the use by the Defendants of the word "Cherry" with respect to the latter goods.
9. Dr. Tulzapurkar, however, submits that whatever may be the position under the 1958 Act under which the mark 'Cheri' was registered, the legislature has now thought it fit to extend the rights conferred by law so as to cover even similar goods or services. The argument goes like this: The Plaintiffs' mark was registered under the 1958 Act; the 1958 Act provided (Section 29) that a registered trademark was infringed by use of the mark "in relation to any goods in respect of which the trade mark is registered"; under the present Act, i.e. 1999 Act, a registered trade mark is infringed by means of use of the mark, which is likely to cause confusion or have an association with the registered trade mark, because of not just the identity but even of "similarity of the goods or services covered by such registered trade mark"; medicines or dietetic substances adopted for medical use or even those meant for general well being are nothing but 'similar goods' to pharmaceutical preparations; and in the premises, there is an infringement of the Plaintiffs' mark 'Cheri' by the Defendants' use of the word "Multi Cherry" even if the goods are dietetic or food supplements meant for general health or well being. The argument satisfies logic, but merely in form. In substance, it disregards something vital. For the rub lies in how one defines 'similarity' of goods. In the present case, the registration was meant only with reference to a narrow and more sharply defined class of goods. In that context, 'similarity' must also be understood in a more restricted sense. In a case where goods are generally described as 'all goods covered in Class 5' (which in terms include dietetic substances adopted for medical use or food for babies) or even as 'pharmaceutical and medicinal preparations', it is possible to include a health supplement or nutritional food supplement as a similar good even if it is not meant for therapeutic use. But in a case where the words 'medicinal preparations' are deliberately omitted from the product specification because 'Cherry' as a fruit has medicinal values and for a dietetic substance adopted for medical use, indeed could be a descriptive term, it is unfair to include a health supplement or nutritional food supplement, and one with a stated cherry flavour at that, as a similar good for trade mark protection. If the protection is deliberately meant to be for a narrow class of goods, namely, pharmaceutical preparations, it would be wrong to extend such protection in practice to a wider range of goods for which it was certainly not meant.
10. The question simply is how should the Court approach the question of similarity in the present case. The English case of British Sugar PLC Vs. James Robertson & Sons Ltd., Chancery Division (No.9)  R.P.C. Page 281 throws abundant light on the question and in quite apposite here. In that case, the mark 'Treat' was registered for "dessert sauces and syrups; all included in Class 30". The plaintiff, British Sugar PLC, who was the registered proprietor, used the mark in connection with syrups of different flavours. The defendant, James Robertson's & Sons Ltd., was using 'Robertson's' for a range of jams and preserves. It proceeded to device a new kind of sweet spread. It was a toffee flavoured spread, which came in an oval jam jar and was marketed with a label, the key wording of which was "Robertson's Toffee Treat". The plaintiff objected to the use of the word "Treat", claiming it to be an infringement of its registered trade mark "Treat". The question before the Chancery Division was: Does the Robertson product fall within the specification of goods for which the mark is registered? British Sugar argued that the Robertson product was indeed a "dessert sauce or syrup". They relied on the dictionary meaning of the word of "sauce", viz: "any preparation, usually liquid or soft, intended to be eaten with food as relish". The Robertson product, they argued, was nothing but 'sauce' so defined and could well be used with a dessert, never mind its other uses. The Court rejected this argument. It held:
"No-one would describe a jam as a "dessert sauce" in ordinary parlance, yet it too can be used on a dessert and everyone knows and sometimes does that. Supermarkets regard the product as a spread. The jam jar invites use as a spread. When it comes to construing a word used in a trade mark, specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade. After all a trade mark specification is concerned with use in trade. The Robertson product is not for the purpose of trade, a dessert sauce."
The Court, then, proceeded to consider the question of extending the protection to similar goods. It observed as follows:
"How then is the court to approach the question of similarity? Neither the Act nor Directive (save in the case of the latter for the somewhat cryptic recital I have quoted) provide assistance. Given that is so I think I must consider the matter as a matter of principle. First it should be noted that the wider the scope of the concept, the wider the absolute scope of protection of a mark may be. In effect a registration covers the goods of the specification plus similar goods. No one may use the registered mark or a similar mark for any of those goods unless he has some other defence. This suggests caution. Otherwise, however narrow a specification, the actual protection will be wide. In particular this would be so in the important sort of case where a mark owner only got registration on the basis of actual distinctiveness for a narrow class of goods. It would surely be wrong that he should then in practice get protection for a wide range of goods. If a man wants wide protection he can always ask for it and will get it only if his claim is justified. The old rule that you could not infringe if your goods were even just outside a specification was too rigid. It meant (to use a classic example of Mr TA Blanco White Q.C.) that a registration of a mark for "3-holed razor blades imported from Venezuala" could not be infringed by use of the mark on a 2-holed razor blade so imported. But I do not think that the introduction of infringement for similar goods has vastly widened the scope of potential protection."
11. Various factors need to be considered whilst deciding whether the goods are of the same description or similar. They include the nature and composition of goods, their respective uses and functions, and the trade channels through which they are bought and sold, etc. No single one of those factors is conclusive on the point. The question is rather of judgment and degree, regard being had to all surrounding circumstances. Vitamin B complex injections and fungicides, disinfectants, etc. were held to be goods of different description in Uniroyal Vs. Max Pharma, 1984 IPLR 161. Fungicides included in pharmaceutical preparations and fungicides for use in agriculture were held to be different products in Invicta TM,  RPC 541. TINIBA for a schedule drug (tinidazole) was held to be not similar to TINIVIT (Vitamin preparation) in Cadila Chemicals Pvt.Ltd. vs. Acilla Pharmaceuticals Pvt.Ltd., 1986(6) PTC 310 (Reg).
12. In the present case, the Plaintiff's goods are 'drugs' within the meaning of Drugs & Cosmetics Act, 1940. They are meant to be therapeutic in nature and are basically pharmaceutical preparations. They are to be used "as directed by the physician". The Defendants' products, as noted above, are 'proprietary food' covered under the Food Safety and Standards Act and not 'drugs' as per the Drugs & Cosmetics Act. They are avowedly "not for medicinal use". They are to be used 'as directed by the dietician'. The prices of the two products are different and so are their end uses. Considering these factors, there is no concrete likelihood of deception or confusion in the minds of the user. After all, similarity of goods for the purposes of Section 29 of the Act is to be considered from the standpoint of deception or confusion on the part of the public. Dr. Tulzapurkar argues that the trade channels though which the goods are sold are the same. That may be so, but, as noted above, that by itself is not determinative of the issue. On the other hand, it is possible to say that the goods being sold through chemists implies that the goods are dispensed by knowledgable people, and in the Plaintiffs' case as directed by the physician and in the Defendants' case as directed by the dietician. Thus, considering the narrow class of goods for which the Plaintiffs hold registration and considering the Defendants' goods to be dissimilar with reference to such narrow class, there is no case made out of infringement of the Plaintiffs' mark 'Cheri' by reason of the Defendants' use of the mark 'Multi Cherry' in connection with their goods.
13. In view of my findings as above, I have not considered the other arguments, namely, the Plaintiffs' argument that the adoption of the whole of the Plaintiffs' registered mark within the Defendants' mark constitutes an infringement or the Defendants' argument that there are other marks with the words 'Cherry' or 'Cheri' forming part of them.
14. Lastly, it must be noted that the balance of convenience in this case is clearly in favour of the Defendants. Defendant No. 1 has been openly, honestly, continuously and extensively marketing its 'MULTI CHERRY' products since 2012. Sample invoices and sales figures as well as promotional literature in this behalf are produced on record. The Defendants can be said to have acquired a sizeable reputation and goodwill in 'MULTI CHERRY' products. If the Defendants are now asked to discontinue the use of 'MULTI CHERRY' in connection with their products, it will work an irreparable prejudice to them. If, on the other hand, the Plaintiffs eventually succeed at the trial, an appropriate order of damages can very well be passed in that case against the Defendants.