JUDGMENT
D.K. Deshmukh, J.
1. This notice of motion is taken out by the plaintiffs. By this notice of motion, the plaintiffs seek various interim reliefs to restrain the defendants from using the word mark ‘EVACAL’ in relation to their product. The registered trade mark of the plaintiffs is ‘EVACUOL’.
2. According to the plaintiffs, in the year 1963, one Michel Postel had adopted this word mark ‘EVACUOL’ and applied for registration as trade mark in class 5 of Fourth Schedule under the Trade and Merchandise Marks Rules, 1959. The said mark was registered on 1st October 1963 in clause 5 in respect of pharmaceutical preparations being laxatives. The registration of trade mark has been renewed from time to time. This mark was assigned by the registered owner from time to time to Griffon Laboratories Pvt. Ltd. In the year 1994, the said trade mark was assigned in favour of plaintiff No. 1 alongwith goodwill by deed of assignment dated 10th October 1994. According to the averments in the plaint, the plaintiffs also applied for substitution of their name in the register maintained by the Registrar of Trade Marks, as the owner of the trade mark on the basis of the assignment. It appears that the name of the plaintiff No. 1 was not entered in the register on the basis of assignment in favour of plaintiff No. 1 when this suit was instituted. However, it is clear that by letter dated 27th April 2004, the Registrar of Trade Marks has informed the plaintiff No. 1 that on the basis of assignment in their favour, now they are shown as registered owners of the trade mark. According to the plaintiffs, they are manufacturing goods (pharmaceutical preparation) and marketing them since 1976 and they are using the trade mark ‘EVACUOL’ since 1976. According to the plaintiffs, they carry on their business of manufacturing and marketing the goods and they have spent considerable money for promoting sale. The plaintiffs then state that in or about November 2002, the plaintiffs came across defendants’ pharmaceutical preparation in the form of tablets bearing the mark ‘EVACAL’. The product ‘EVACAL’ is a calcium preparation. The plaintiffs found that the word mark ‘EVACAL’ is almost identical and deceptively similar to the registered trade mark of plaintiffs viz. ‘EVACUOL’. Therefore, the plaintiffs addressed a letter dated 23rd November 2002 calling upon the defendants to withdraw the mark ‘EVACAL’ for pharmaceutical and medicinal preparation. It was claimed that use of the word ‘EVACAL’ by the defendants amounts to infringement of the registered trade mark of the plaintiffs. There was no reply initially received by the plaintiffs from the defendants. Therefore, reminder dated 6th February 2003 was sent. Ultimately, the plaintiffs received reply from the defendants. The defendants did not accept the claim of the plaintiffs and contended that use of the mark ‘EVACAL’ does not amount to infringement of the registered trade mark of the plaintiffs. Thereafter, the suit was instituted by the plaintiffs on 27th February 2004. The plaintiffs, in this suit, pray for permanent injunction restraining the defendants from using the mark ‘EVACAL’. Some other reliefs are also claimed. This notice of motion is opposed by the defendants. According to the defendants, firstly the mark ‘EVACAL’ and the mark ‘EVACUOL’ are not phonetically similar, they are also not visually similar. According to the defendants, ‘EVACAL’ is a calcium preparation whereas ‘EVACUOL’ is a laxative. ‘EVACUOL’ is sold in granular form, in sachets whereas ‘EVACAL’ are tablets. It is submitted that therefore, there is no possibility of anybody getting confused or deceived. It is further submitted that adoption of the mark ‘EVACAL’ by the defendants is honest. It is submitted that the word ‘CAL’ is used because it is a calcium preparation and the word ‘EVA’ is used because it is a tablet, to be taken by women during pregnancy. Therefore, according to the plaintiffs, adoption of this mark by the defendants is bona fide and honest. It is also submitted that the word ‘CAL’ is used in relation to many drugs which contains calcium. It is also contended that though the plaintiffs had applied for substitution of the name of the plaintiff No. 1, the substitution was not entered in the register till the suit was filed, therefore, institution of suit itself is infirm. It is also submitted that though the defendants have informed the plaintiffs by its reply in February 2003 that they will continue to manufacture and sell the product, the plaintiffs did not take any action, thus permitted the defendants to spend money on promotion of the goods and therefore, the conduct of the plaintiffs amounts to acquiescence and therefore, the plaintiffs should be denied the reliefs of temporary injunction.
3. The learned counsel appearing for plaintiffs relies on the provisions of Section 29 of the Act and submits that both the trade marks relate to pharmaceutical preparation, they are phonetically and visually similar and therefore, as the plaintiff No. 1 is registered owner of the trade mark ‘EVACUOL’, use of the word mark ‘EVACAL’ by the defendants amounts to infringement. The learned counsel submits that for the purpose of Section 29 of the said Act, pharmaceutical preparations are to be treated as one class. He relies on a Judgment of the Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 541 (SC) and submits that for the purpose of infringement of trademark, the Supreme Court, has held that the pharmaceutical preparations are to be treated as one class and in public interest, lesser degree of proof showing confusing similarity is required. The learned counsel appearing for plaintiffs, relying on the observations of the Division Bench in Appeal No. 1005 of 2003 in Suit No. 2299 of 2003 in the case of Sun Pharmaceutical Industries Ltd. v. Wysth Holdings Corporation and Anr., decided on 14th January 2004 states that mere delay in instituting a suit does not amount to acquiescence and therefore, there is no question of plaintiffs being denied interim relief-to which they are otherwise entitled only because of alleged delay in institution the suit.
4. The learned counsel appearing for defendants firstly submits that there is no similarity, phonetically and visually between the two marks. He submits that the product of the plaintiffs is a laxative whereas the product of the defendants is a calcium preparation. The plaintiffs’ product is sold in a sachet in granular form whereas the defendants’ product are capsules. Therefore, there is no possibility of there being any confusion. In support of his submission, the learned counsel relies on a Judgment of the Division Bench of this Court in the case of Medley Laboratories (P) Ltd., Mumbai and Anr. v. Alkem Laboratories Ltd., 2002 (25) PTC 592(Bom)(DB), the Judgment of the learned Single Judge of this Court in the case of Ranbaxy Laboratories Ltd. v. Indohemie Health Specialities Pvt. Ltd., 2002 (24) PTC 510 (Bom). The learned counsel also relies on a Judgment of the Appeal Court in Appeal No. 498 of 2002 in the case of Bal Pharma Ltd. v. Wockhardt Ltd. and Anr., decided on 12th June 2002. The learned counsel then relying on a Judgment of the learned Single Judge of this Court in the case of Cott Beverage Inc. v. Silvassa Bottling Co., 2004 (2) All ER 440, submits that as on the date on which the suit was instituted, the plaintiffs were not holders of the registered trade mark, the suit itself was not maintainable and therefore, in any case, the plaintiffs are not entitled to any interim relief.
5. The Supreme Court in its Judgment in the case of Cadila Pharmaceuticals Ltd. (supra) has laid down the considerations that the Court has to keep in mind while considering the possibility of deception due to phonetic and/or visual similarity of trade mark in relation to pharmaceutical products. The Supreme Court observes thus :-
“31. Trade mark is essentially adopted to advertise one’s product and to make it known to the purchaser, it attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing-off action, the plaintiff’s 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 another has established for himself in a particular trade or business. The action is regarded as an action for deceit.” (See Wander Ltd. v. Antox India (P) Ltd., 1990 (Supp) SCC 727 : 1991 SCC (Cri.) 145, (SCC P. 734, para 16).
32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely’ inconvenient. Nothing 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 Edn., 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 purchases 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.”
It is clear from the above quoted observations of the Supreme Court that for the purposes of finding out possibility of deception due to similarity in the two trade marks, the Court has treated medicinal products as one class. The Supreme Court has also laid it down that the Court while considering trade marks in relation to any other goods, considers whether there is probability of confusion and/or deception but, insofar as medicinal preparations are concerned, the Court has to see whether there is a possibility of confusion or deception. The Supreme Court has observed that many . patients may be elderly, infirm or illiterate, they may not be in a position to distinguish between two medicinal preparations. If one compares the registered trade mark of the plaintiffs ‘EVACUOL’ with the word mark of the defendants ‘EVACAL’, it is clear that there is both, phonetic and visual similarity between the two marks. It is also not disputed that both are medicinal preparations. Therefore, applying the standards laid down by the Supreme Court referred to above, in my opinion, possibility of confusion and/or deception cannot be ruled out. Though it was submitted by the learned counsel appearing for defendants that the observations of the Supreme Court in Cadila Pharmaceuticals Ltd. ‘s case are too wide and that merely because the two goods involved are medicinal preparations, one cannot loose sight of the fact as to how the drug is to be administered, in what shops the drug is sold, for what ailment the drug is prescribed. However, considering the direct observations that have been made by the Supreme Court, it is -not possible for this Court to deviate from the law that has been laid down by the Supreme Court. So. far as the reliance placed by the learned counsel on the Judgment in the case of Ranbaxy Laboratories Ltd. (supra) is concerned, the observations regarding other surrounding circumstances to be considered by the Court in the matter of sale of the drug, size of the tablet etc. are after the Court recorded the finding that there is no phonetic similarity in the two trade marks. Therefore, those aspects were taken into consideration as additional facts for not granting an order of temporary injunction but once the Court comes to the conclusion that there is phonetic and visual similarity between the two marks, the Court cannot decline to grant injunction only because they are sold in different form, their wrappers are different and that they are prescribed for two different ailments. So far as the Judgment of the Division Bench relied on by the learned counsel for defendants in Medley Laboratories (P) Ltd. ‘s case is concerned, in my opinion, that Judgment cannot read to be laying down different law that the one laid down by the Supreme Court in Cadila’s case as that Judgment has been referred to by the Division Bench. Once it is found that there is real possibility of there being deception because of the visual and phonetic similarity, in my opinion, the fact that the defendants might have adopted its trade mark honestly and bona fide, loses its significance. Even where the adoption, is honest and bona fide, but if it is likely to cause deception, then in my opinion, that the fact that the adoption was bona fide and honest would not come in the way of the Court granting temporary injunction in favour of the plaintiffs to prevent possibility of deception and/or confusion.
6. I find that the Division Bench of this Court in the case of Indchemie Health Specialities Pvt. Ltd. v. Naxpar Labs. Pvt. Ltd. and Anr., 2002(1) LJ 1004, after referring to the Judgment of the Supreme Court in Cadila Health Care Ltd. ‘s case, has said that the test to be applied in relation to medicinal product is totally different than the test that is to be applied in relation to other products. So far as the objection as to the maintainability of the suit because on the date on which the suit was instituted the plaintiff No. 1 was not registered owner of the trade mark is concerned, in my opinion, the objection loses significance because before this Court considered the application for temporary injunction, the plaintiff No. 1 admittedly has been shown as the registered owner of the trade mark and therefore though the institution of the suit may be improper, the defect is curable, now the defect is cured as the name of the plaintiff No. 1 is shown as registered owner.
7. So far as the objection as to delay in institution of the suit from February 2003 to February 2004 is concerned, in my opinion, the objection has no force. In my opinion, the learned counsel appearing for plaintiffs has rightly relief on the observations of the Division Bench in its Judgment in the case of Sun Pharmaceutical Industries Ltd. in paragraphs 23 and 24 which read as under:-
“23. Acquiescence, delay and/or latches deceptively similar and dishonest adoption and use :- Senior Counsel Mr. Dwarkadas relied on the extract from The Law of Passing Off’ , by Christopher Wadlow (Second Edition) para 7.20. He contended that the respondents have filed the suit, practically after 3 years, from the date of knowledge, that the appellants, were using the trade mark ‘Parkitane’ in relation to pharmaceutical preparation, since 1999 or at least from February 2002, on which date the respondents had issued a notice of ‘cease and desist’. The respondents failed to take immediate preventive action against the appellants. The appellants, therefore, acquired rights, as they have been selling their products without any interruption since 1999, in the same market. Their products in question is distinctive. There was no likelihood of confusion. The respondents therefore encouraged and allowed the appellants to continue to market and sell and promote their products in the same field. Therefore, at the interlocutory stage the learned Single Judge ought not to have granted and interim order in favour of the respondents. He contended that the action the respondents suffered from delay, latches and acquiescence also. He further contended that the appellants,. by its reply dated 2nd March 2000, to ‘cease and desist’ notice dated 11th February 2000 denied the allegations of deceptive similarity of the goods. During this period the appellants have incurred huge amount towards publicity and promotion of the said goods in question. They have earned the reputation and goodwill of the said product in the market. Their application for registration of the said trade mark ‘Parkitane’ is also pending. Therefore, if such interim order is continued, it will cause great harm and injury to the appellants. The balance of convenience and equity lies in favour of the appellants and not in favour of the respondents.
24. We find from the record that the pharmaceutical preparation of the respondents registered trade mark ‘Pacitane’ have been in use in India since 1955, with the relevant licences under the Drug Control Authorities. The respondents’ pharmaceutical preparation under the trade mark ‘Pacitane’ is used by the predecessor-in-title of the respondent No. 2 since 1986. The said pharmaceutical preparations have been manufactured and sold by respondent No. 2 on a very large and extensive scale. This is supported by Chartered Accountant’s certificate from the year 1986 till year 2002. The statement of annual advertisement and promotional expenses, incurred by respondent No. 2 from 1986 to 2002 is also on record, apart from advertisement and promotional expenses details. There is no doubt therefore in view of the above as well as other material on record that the respondents are using continuously the said product ‘Pacitane’ prior in time. The respondents have earned goodwill and reputation of the said pharmaceutical preparation. Such a long exclusive use of the said product in the market has definitely acquired the goodwill and the reputation and association of the said trade mark with the respondent Company. Prima facie, the respondents cannot be held guilty of acquiescence as alleged by the appellants’ counsel. It cannot be overlooked that the respondents immediately after having knowledge of appellants’ illegal action of adoption of alleged trade mark ‘Parkitane’ resisted by ‘cease and desist’ notice dated 11th February 2000. The same was duly within the knowledge of appellants, as appellants themselves contended that they had replied the said notice dated 11th February 2000 by their reply dated 2nd March 2000. It is also clear from the record that the respondents by their second notice again objected the action of the appellants. Therefore, the appellants were fully aware of the existing product of the respondents in the market. However, inspite of the said objections, they continued to adopt on use the trade mark ‘Parkitane’ for the pharmaceutical preparations and acted with full knowledge and consequences. There cannot be claim of equity in their favour. The appellants’ action in the facts and circumstances of the case amounts to dishonest adoption of the trade mark ‘Parkitane’.”
It is thus clear that after giving notice to the defendants, if there is some delay on the part of the plaintiffs, it does not create any equity in favour of the defendants. Therefore, in my opinion, the plaintiffs have established that they have a strong prima facie case. I find that the grant of temporary injunction in favour of the plaintiffs would be in public interest as the products are pharmaceutical preparations and I find that there is really a possibility of there being confusion. Considering the plaintiffs’ reputation and use of the trade mark for more than 30 years the aspect of balance of convenience is also in favour of the plaintiffs. Taking overall view of the matter therefore, in my opinion, notice of motion requires to be granted in terms of prayer clauses (a) and (b). It is accordingly so ordered. Notice of motion is disposed of.
8. At the request of the learned counsel appearing for defendants, it is directed that for a period of six weeks from today, the defendants are permitted to sell their products which they have already manufactured. However, the defendants shall not undertake any manufacturing of the product under the word ‘EVACAL’, which is the subject-matter of this notice of motion.
Parties to act on the copy of this order duly authenticated by the Associate/Personal Secretary of this Court as true copy.
Certified copy expedited.