JUDGMENT
Vikramajit Sen, J.
IA No. 8382/2003
1. This application has been filed by the Plaintiff for exemption from carrying out the second Local Commissioner ordered on 11.7.2003. Allowed, subject to all just exceptions.
IAs No. 7017/2002 & 9293/2003
2. By these Orders 1 shall dispose of the Plaintiffs application for an ad interim injunction (IA No. 7017/2002) and 1A No. 9293/2003 (Order XXXIX Rule 4) filed by the Defendant.
3. On the first date of hearing, on 11.7.2003, the defendants, their directors, officers, servants, agents and representatives had been restrained from manufacturing, selling, and offering for sale pharmaceutical preparations under the trademark FENTEL or any other mark which may be deceptively similar to the Plaintiffs trademark ZENTEL.
4. Learned counsel for the Plaintiff has reiterated the submission that the trademark ZENTEL is an invented word, having no dictionary meaning, and thus possession a highly distinctive character. ZENTEL has been registered in the name of the Plaintiff since May 14, 1980. It is a pharmaceutical preparation exclusively for human use, to be sold on written prescription by a registered medical practitioner (that is Schedule- H Drug). It is not controverter that ZENTEL is sold across the globe. The averments in the Plaint disclose that the sales of ZENTEL between 1992 and 1999 aggregate several crores of rupees and that several crores of rupees have been spent on its sales promotion also. ZENTEL is being used in India by the Plaintiff since 1986 in respect of Albendazole tablets and syrups meant for de-worming of humans. The Plaintiff states that it learnt of the Defendant’s product marketed under the name FENTEL only in March 2003. Learned counsel for the Defendant has strongly refuted the assertion and has contended that the Defendant had advertised its product in Medical Journals Along with the Plaintiffs advertisement since January, 2000 and, therefore, the latter could not but have been fully aware of the Defendant’s product. Whereas the Plaintiff has described ZENTEL as containing the compound Albendazole the Defendant has described FENTEL by use of the term “ENTEROBIASIS”. It has also been asserted by learned counsel for the Defendant that licenses have been granted by the Government since July 2001. The argument is that since the Suit has been filed in July 2003, the principles of estoppel are attracted and the Defendant ought not to be injuncted.
5. Even assuming that the Plaintiff were aware of the use of the Mark FENTEL since the year 2000, this does not detract or dilute from its rights to pray for an injunction as has been observed in Shri Swaran Singh Trading as Appliances Emporium v. M/s. Usha Industries (India) New Delhi and Anr., by the Division Bench in the following words:-
7. There is then the question of delay. Learned counsel of the respondents had urged that the delay is fatal to the grant of an injunction. We are not so satisfied. A delay in the matter of seeking an injunction may be a ground for refusing an injunction in certain circumstances. In the present case, we are dealing with a statutory right based on the provisions of the Trade and Merchandise Marks Act, 1958. An exclusive right is granted by the registration to the holder of a registered trade mark. We do not think that statutory rights can be lost by delay. The effect of a registered mark is so clearly defined in the Statute as to be not capable of being misunderstood. Even if there is some delay, the exclusive right cannot be lost. The registered mark cannot be reduced to a nullity. The principles governing other types of injunctions are not to be readily applied to a case like the present. Of course, if it was a case of a similar mark as opposed to the same mark, the concurrent user coupled with delay might be a ground for refusing an injunction. However, when the same mark is being used, in a sense, the public is deceived into purchasing the defendant’s goods on the belief that they are the plaintiffs goods, so a registered trade mark is a casualty, it is the duty of the Court to protect the registered mark. That is the whole concept of registration. So, we cannot refuse an injunction even if there is some delay especially when the mark is the same. To refuse the injunction would tantamount to permit a fraud being practiced on unwary customers. This is a matter of principle on which the Court cannot refuse the injunction.
6. Although it is true that there is a difference in the first consonant of the names, it is too much to expect the public in India to keep this distinction in mind and be able to distinguish between the two drugs, I would lay greater stress on the likelihood of deception into purchasing the Defendant’s goods believing them to be that of the Plaintiff’s, as the preeminent test. Support for this approach can be found in the decision of the Hon’ble Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., 2001 PTC 300 (SC).
7. The contention of learned counsel for the Defendant that it has applied for registration of its trademark is of little consequences. In Metro Playing Card Co. v. Wazir Chand Kapoor, the Division Bench had opined that- “till registration is granted there can be no doubt that the respondent’s trade mark is infringed by the appellant and the statutory right which the respondent has under Section 28 of the Act is violated. Inasmuch as registration of the trade mark is pritna facie evidence of its validity and the appellant has not challenged the validity of the registration of the respondent’s trade mark it is not open to the appellant at this stage, to plead Section 12(3) of the Act”. At the threshold and the preliminary stage of a Suit the holder of a registered trademark must be accorded the jural protection. Till date it is the admitted case the publication of the Defendant’s proposed trademark has not been published.
8. In cases where a party decides to adopt a trademark or name which is similar to or is a derivative or acronym or anagram of a generic term, it would not be heard to complain if another party adopts a name closely similar to it. In the present case the Plaintiff contends that the trademark is a coined word. The Chemical compound avowedly is Albendazole. An ingenious argument has been put forward by learned counsel for the Defendant that in fact both the trade names are generic in character in that ‘ENT’ refers to ENTERIKOS which is the Greek word for intestines and ‘EL’ is drawn from the compound Albendazole. The reference to intestine is far too fanciful for acceptance and ‘EL’ is not found in that exact form or sequence in the said compound. The argument is, therefore, rejected. In SBL Ltd. v. Himalaya Drug Co., 1997 PTC (17) (DB) Hon’ble Mr. Justice R.C. Lahoti, as his Lordship then was, had observed for the Division Bench of this Court that – “Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris. In the trade of drugs it is common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being publici Jurisdiction or generic cannot be owned by anyone for use as trade mark”. In the case in hand the trademark ZENTEL does not fall into any of these categories. Even in such cases his Lordship was quick to observe that- “If the two trade marks by two competing traders use a generic word or an expression publici Jurisdiction common to both the trade marks it has to be seen if the customers who purchase the goods would be guided by the use of such word or expression or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. The primary question to be asked is– “What would remain in the memory of customer? The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc. used on the packing also assume significance”.
9. I find it difficult to accept that a party could have adopted a trade name strikingly and deceptively similar to another trade mark which has been in the market for several years and is a commercial success purely by chance or coincidence, or in order to describe their product. The Defendant was very well aware that the trademark ZENTEL had carved out a niche for itself as a de-worming drug. The Defendant’s adoption of the trade name FENTEL for a similar or identical medical remedy must be viewed as dishonest. It has been suggested by learned counsel for the Defendant that the colour scheme of the packaging is different and, therefore, no confusion is likely. De-worming medicine is not used frequently and it is too much to expect that the respective packaging shall be indelibly imposed on a person’s memory. The argument that the medicine in question is a Schedule-H drug should not cloud or outweigh the effect of an intended deception of the public into purchasing the Defendant’s products as that of the Plaintiffs. A product which has captured a market share because of its intrinsically beneficial/remedial qualities and has thus become a personal preference, will invariably dictate its purchase by a rough recollection of the name. Once it is clear that a person requires de-worming, he/she would prefer to use a drug/medicine which has gained the market’s respect. It would be sanguine to hold that the choice of a visual and phonetically similar product is innocuous or coincidental. The argument predicated on Schedule-H has been specifically rejected in the Cadila’s case (supra).
10. In the Cadila’s (supra) the Hon’ble Supreme Court had crystalised the law in this matter- “Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:
(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works.
(b) the degree of resembleness between the marks, phonetically similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade marks.
(d) The similarity in the nature, character and performance of the goods of the rival traders.
(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods, and
(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.
Weightage to be given, to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case”. The Plaintiff has succeeded in disclosing the existence of these factors in its favor.
11. In conclusion I am satisfied that the Plaintiff has established a prima facie case justifying the issuance of an ad interim injunction as prayed for. The interim Orders passed on 11.7.2003 are accordingly confirmed and made absolute. The Defendant’s Application under Order XXXIX Rule 4 is dismissed.
12. Parties to bear their respective costs.
