JUDGMENT
S.N. Kapoor, J.
1. Heard.
2. This appeal is directed against an order dated 7th October, 1999 passed by the Assistant Registrar of Trade Marks dismissing Opposition No. DEL 8597 of the appellant-M/s. Biochem Pharmaceutical Industries and allowing the registration of the trade mark BICILLIN in Class 5.
3. The trade mark of the appellant is ‘BIOCILIN’ while the trade mark of the respondent is ‘BICILLIN’. There is no dispute in between the parties about one aspect that ‘BIOCIIIN’ as well as ‘BICILLIN’ both have been used in respect of two drug components, namely, Bi means two, Ceillin standing a mixture of AMPICILLIN and CLOXACILLIN. In so far as ‘BIOCILIN’ is concerned, the appellants have acquired a reputation in the trade in respect of their trade mark.
4. The case of the respondent was and is that ‘BICILLIN’ is a composite word by using ‘BI’, meaning two and Ceillin stands for a mixture of AMPICILLIN and CLOXACILLIN.
5. Taking the cases of both the parties at their face value, the question is whether it is likely to cause confusion or deception to the purchasers when they go to market to purchase ‘BIOCILIN’ and instead get ‘BICILLIN’. It is also required to be seen: “Whether registration of “BICILLIN” would be in tune with clauses (d) and (e) of Section 9(1) and Section 11(a) and 12(1) of the Trade and Merchandise Marks Act, 1958 (in short ‘the Act’)?”
6. Before I proceed further, it would be beneficial to reproduce Section 9(1)(d) & (e), Section 11 and Section 12(1) of the Act, which read as under:-
“(9) Requisites for registration in Parts A and B of the register.–(1) A trade marks shall not be registered in Part A of the register unless it contains or consists of at least one of the following essential particulars, namely:-
(a) xxx
(b) xxx
(c) xxx
(d) one or more words having no direct reference to the character or quality of the goods and not being, according to its ordinary signification, a geographical name or a surname or a personal name or any common abbreviation thereof or the name of a sect, caste or tribe in India;
(e) any other distinctive mark;…………”
“”11. Prohibition of registration of certain marks.– A Mark-
(a) the use of which would be likely to deceive or cause confusion; or
(b) the use of which would be contrary to any law for the time being in force; or
(c) which comprises or contains scandalous or obscene matter; or
(d) which comprises or contains any matter likely to hurt the religious susceptibilities of any class or section of the citizens of India; or
(e) which would otherwise be disentitled to protection in a court;
shall not be registered as a trade mark.”
“12.Prohibition of registration of identical or deceptively similar marks.–(1) Save as provided in sub-section (3) no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods.”
7. In so far as the objection taken by learned counsel for the appellant relating to Section 9(1) is concerned, I do not think that anything would turn upon it, for two views are possible calling it an invented word by using the word ‘Bi’ and taking the word ‘Cellin’ from the two medicines, namely, AMPICILLIN and CLOXACILLIN.
8. In so far as clause (d) of Section 9 of the Act is concerned, neither the word ‘BIOCILIN’ nor the word “BICILLIN’ has any direct reference to the character or quality of goods excepting that it may be some drug, and therefore, this clause (d) of Section 9 is certainly not of any help to learned counsel for the appellant.
9. Now, coming to clause (e) relating to “any other distinctive mark”, the above observation applies equally to this argument as well and therefore, this will also be not of any help to learned counsel for the appellant.
10. Now, coming to Section 11(a), this appears to be the sheet-anchor of the argument of learned counsel for the appellant. In this regard, he relies upon Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 (21) PTC 300 (SC) and Medley Laboratories (P) Ltd. v. Alkem Laboratories Ltd., 2002 (25) PTC 592 (Bom) (DB). Learned counsel for the respondent wanted to cite some out-dated judgments much prior to the judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra)). I do not think that these judgments could be of any help to him, as would be evident hereinafter. In that case the question which came to be considered related to phonetic similarity between the two competing words ‘Falcitab’ and ‘Falcigo’. After considering the entire case law, the Supreme Court laid down the following test in paras 32, 33 and 35 of the judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra):-
“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, inform 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 purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effect. 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.”
33. The decisions of English courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions? We think not. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know, marks or the customer knowing about the distinguishing characteristics of the plaintiff’s goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spelling may sound phonetically the same. While dealing with the cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be on a 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 one another by the consumer. While confusion in the case of non-medicinal products 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 of such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health.
34. xxx
35. Broadly stated, in an action for passing-off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
a)The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both words and label works.
b)The degree of 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, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
f)The mode of purchasing the goods or placing orders for the goods.
g)Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”
11.There cannot be any doubt that these observations related to action of passing off. But at the same time, there cannot also be any doubt about one aspect. The words used in Section 11(a) “likely to deceive or cause confusion” would also mean the same thing. It may further be mentioned that in Section 2(i)(d) the term “deceptively similar” has been defined as under:-
“(d) deceptively similar”:–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.”
12. From the foregoing discussion it is apparent that there is a phonetic similarity and if the same word ‘BIOCILIN’ and ‘BICILLIN’ are spoken by persons belonging to different part of this country and other countries, difference of accent in pronouncing the words ‘BIOCELLIN’ and ‘BICILLIN’ would cause confusion. Leave aside general public, sometimes the doctors who write prescriptions themselves will not be able to read distinctly write them in a hurry; the chemist who sells the drug is surely bound to be confused. Many persons, who think faster than their hand moves, do suffer from missing a letter here and there, and in case the doctors innocently with the faster moving thought process and slow moving hand omits ‘o’, then instead of a medicine prescribed the other medicine is surely to be given. The plea that the drug being scheduled could be sold only on prescription has also been specifically rejected by the Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra) as has been mentioned hereinabove. Consequently, learned counsel for the appellant is right in his submission that clause (a) of Section 11 of the Act is attracted and the medicine ‘BICILLIN’ is likely to be confused for ‘BIOCILIN’ or vise versa. Consequently, this trade mark ‘BICILLIN’ could not have been registered.
13. In Medley Laboratories (P) Ltd. v. Alkem Laboratories Ltd. (supra) the Trade marked ‘SUPAXIN’ and ‘SPOXIN’ were held to be deceptively similar in clause (d) of sub-section (1) of Section (2) of the Act and it was held that if such mark is likely to deceive or cause confusion it could not be registered. The question in that case related to ‘SUPAXIN’ and ‘SPOXIN’. It was held that:
“It is visually, phonetically and structurally very close to the appellant’s mark ‘SPOXIN’. Once mark is identical or deceptively similar to the other, viz. packing being different, number of tablets contained in the competing package is not the same, price are not identical and/or the goods being sold on doctor’s prescription are altogether irrelevant and immaterial.
14. The learned Assistant Registrar of Trade Marks had also ignored the fact that ‘BIOCILIN’ has acquired reputation as has been mentioned hereinabove.
15. Now, coming to the other argument relating to Section 12 of the Act, since there is phonetic deceptive similarity in the two trade marks and it could justifiably be not a case of concurrent user under sub-section (3) of Section 12 of the Act, the trade mark ‘BICILLIN’ could not be registered for description is deceptively phonetically similar. Consequently, sub-section (1) of Section 12 of the Act is also attracted prohibiting registration of the trade mark ‘BICILLIN’.
16. Learned counsel for the appellant has further submitted that the word ‘BICILLIN’ could not have been registered in view of the provisions of Section 17(b) of the Drugs and Cosmetics Act. In this connection, he relied upon para 34 of the judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra) which reads as under:-
“34. Keeping in view the provisions of Section 17-B of the Drugs and Cosmetics Act, 1940 which inter alia indicates that a limitation or resemblance of another drug in a manner likely to deceive being regarded as (sic) spurious drug it is but proper that before granting permission to manufacture a drug under a brand name the authority under that Act is satisfied that there will be no confusion or deception in the market. The authorities should consider requiring such an applicant to submit an official search report from the Trade Marks Office pertaining to the trade mark in question which will enable the Drug Authority to arrive at a correct conclusion.”
17. It is submitted that in terms of the judgment in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra) trade mark should not have been registered.
18. Before parting with this judgment, in order to avoid such situation directions may also be given to the Registrar of Trade Marks as well, as were given to the Drug Authorities by the Supreme Court. The Supreme Court directed that the Drug Authorities should consider requiring such an applicant to submit Official Search Report from the Trade Marks Office pertaining to the trade mark in question which will enable the drug authorities to arrive at a correct conclusion. It would not be out of place to mention that different Acts like Drugs and Cosmetics Act, 1940, Food Adulteration Act, Trade and Merchandise Marks Act, Copyright Act, Designs Act etc. have made numerous provisions to protect the consumers. But as is bound to happen in impending legislative explosion following globalisation and numerous existing Acts, different authorities act differently. Such an approach is bound to create much more confusion and is sure to result in the problem like the present one. To avoid this, similar direction is required to be issued to the Registrar of Trade Marks so that right hand knows what the left hand is doing and there is no conflict and any problem of this kind is sorted at the very initial stage. It is also notable that the Drug Authorities do not have any centralized office system of allotting names and they are generally working in different State capitals. If similar directions are issued, some Drug Controllers may respond while others may sleep over the matter. But it would not be difficult to get the requisite information in case they are inter-connected through internet and the information is made available by all the Drug Controllers; the Registrar of Trade Marks and similar other Authorities to each other on internet itself to avoid such a situation. One has to look to the problem from the point of saving time, energy and money not only of the parties but of different offices of the Government and the Courts by undertaking few minutes exercise before accepting a trade mark after making a search. That will save hundreds of hours of several authorities. This exercise appears to be essential from another point of view. If the drug is spurious and the offence is punishable to sell the spurious drugs, then the Drug Controllers in absence of information may not take appropriate steps for prosecution of the guilty and the person who adopt this kind of trade mark innocently do not suffer prosecution for criminal offence. Ignorance would again lead to unnecessary wastage of time, energy and money of the State and innocent accused who fail to make any search about similar trade mark and the graph of ever increasing social cost in the shape of time, energy and money of the public officers and the Courts would continue to rise causing loss to national exchequer.
19. In view of the above, it is appropriate that that trade marks authority shall also take precautions by calling an Official Search Report from the Drug Controllers pertaining to a particular trade mark relating to medicine. The Law Commission and the Ministry of Law may also consider making necessary amendments for furnishing information on internet in various Acts and Rules made there under for the aforesaid purpose.
20. For the aforesaid reasons, the appeal is accepted and the impugned order dated 7th October, 1999 passed by the Assistant Registrar of Trade Marks is set aside. Objection No. DEL 8597 is accepted and application No. 453962 for registration of the trade mark ‘BICILLIN’ in clause 5 is rejected. CM 184/2000 for stay also stands disposed of.
21. In the peculiar facts and circumstances of the case, parties are left to bear their own costs. However, the cost of Rs.5,000/- which was imposed earlier shall remain recoverable.
22. A copy of this judgment may be sent to the Secretary in the Ministry of Law and to the Secretary, Law Commission, for their information and consideration.
