IN THE HIGH COURT OF JUDICATURE AT MADRAS

DATED: 31.07.2009

CORAM

THE HON'BE MR. JUSTICE V.PERIYA KARUPPIAH

M.P.No.1 of 2009

in

A.S.No.1007 of 2008

This petition has been filed by the petitioner/appellant seeking for an order of interim injunction restraining the respondent from in any manner infringing the petitioner's/appellant's registered trade mark CEFI-XL by any other marks or marks that are similar or identical with the registered trade mark CEFI-XL, pending disposal of the appeal.

2.The petitioner/appellant/plaintiff filed the plaint in O.S.No.76 of 2007 before the Principal District Judge, Thiruvallur, praying for permanent injunction restraining the defendants, their servants, agents, distributors, stockist, dealers or anyone claiming through them in any manner infringing the plaintiff's registered Trade Mark CEFI-XL or any other marks which are either similar or identical to the registered Trade Mark of the plaintiff and for a direction to the defendants to render a true and faithful account of the profits earned by them through the sale of the products sold under the infringed Trade Mark CEFOLAC-XL and directing them to pay such profits to the plaintiff for the infringement committed by the defendants and also for a direction directing the defendants to deliver to the plaintiff, for destruction of the cartons and materials of the defendants bearing the offending Trade Mark CEFOLAC-XL together with blocks and dyes and for costs. In the suit O.S.No.76 of 2007, the defendant had filed a petition in I.A.No.874 of 2007 praying for the rejection of the plaint filed by the plaintiff.

3.The lower Court, after giving due deliberations to the submissions made by both sides and after perusing the records, had allowed I.A.No.874 of 2007, thereby rejected the plaint in O.S.No.76 of 2007, which necessitated the plaintiff to prefer the appeal before this Court. This Miscellaneous Petition has been filed by the appellant/petitioner herein seeking for an order of ad-interim injunction pending disposal of the appeal.

4.The learned counsel for the appellant would submit in his argument that the appeal has been preferred by the petitioner/appellant against the order passed by the lower Court in rejecting the plaint and thereby to dismiss the suit filed by the appellant, as no opportunity was given to the plaintiff to prove his case and actually, the petitioner/plaintiff was the registered owner of the trade mark 'CEFI-XL' and the plaintiff had been using the said trade mark from the date of the registration and the petitioner had filed the suit before the lower Court for the infringement of trade mark within the jurisdiction of the lower Court and the petitioner obtained interim injunction and against which, the respondent had preferred a revision before this Court and there was a suspension of the interim injunction granted in favour of the respondent as per the order passed by this Court and thereafter, the revision was ordered with a direction to expeditiously dispose the IA for injunction with some other direction also. While passing the said order this Court had referred the point of jurisdiction as per the section 20(c) of the CPC that if any part of cause of action arise within the jurisdiction of the said Court, there cannot be any question of refusal of exercise of the jurisdiction. The learned counsel for the petitioner would further submit that the question of jurisdiction is not only the question of law, but the mixture of question of law and facts, and the lower Court was wrong in deciding the point of jurisdiction even without admitting any evidence in the suit is totally incorrect. He would further submit in his argument that the direction of this Court was followed by the lower Court which itself is per incuriam. He would further submit that the respondent without any justification is using a deceptively similar mark as 'CEFOLAC-XL", when their registered trademark would by only 'CEFOLAC". The said usage of the trademark in CEFOLAC-XL would certainly infringe the trade mark viz., CEFI-XL belonging to the petitioner. He would further submit that the name CEFi-XL was derived by taking the first four letters from the name of the drug CEFIXIME and the alphabet X from the name of the 2nd ingredient 'CLOXACILLIN' and the alphabet of 'L' from the name of the other ingredient 'LACTO BACILLUS SPOROGENES'. He would further submit that the alleged contention of the respondent to the effect that the mark XL will denote 'Extended Release' was not correct. However, the respondent had copied the prefix CEF and added to the English alphabet OLAC thereby making it as CEFOLAC XL, which is more similar to the trade mark of the petitioner/plaintiff. He would also submit that without obtaining the registration the respondent was trying to do the same unlawfully. He would further submit that the respondent had admittedly got a registration of trademark as 'CEFOLAC' only, and it had not obtained the registration as 'CEFOLAC-XL'. He would also submit that suffixing XL to the registered trade mark CEFOLAC is an offence under section 107 of Trade Marks Act for the claiming of the whole name CEFOLAC-XL as registered trade mark. He would also submit that the adoption of the trademark CEFOLAC-XL by the respondent in their pharmaceutical preparation was with an intention to infringe upon the goodwill and reputation belonging to the petitioner and if the respondent is allowed to continue do so, there will be monitory loss to the petitioner and to the general public and damage to the lives of innocent purchasers.

5.He would also cite a judgment of our Honourable Supreme Court in Cadilla Health Care Ltd., Vs. Cadilla Pharmaceuticals Ltd., reported in AIR 2001 SC 1952 for the principle that there would be confusion and mistake even for the prescription of drugs by Doctors and dispensing by pharmacists when two similar goods are marketed under the mark which look alike and sound alike.

6.He would also cite a judgment of this Court made in Wockhardt Ltd., Vs. M/s.Aristo Pharmaceuticals Ltd., reported in 1999 PTC 540 for the principle that when a number of marks have a common element, may it be prefix, suffix or root, i.e., essential part of the core of the mark, they may cause a indicative in the mind of the public that they come from the same source.

7.Again he would rely upon a judgment of our Honourable Apex Court made in F.Hoffman-la Roche & Co., Limited Vs. Geoffrey Manners & Co., reported in AIR 1970 SC 2062 to the principle that the marks must be compared as a whole and it would not be right to take portion of the word and say that because of the portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion.

8.And another judgment of the Honourable Apex Court made in Parle Products (P) Ltd., Vs. J. P. Co., Mysore, reported in AIR 1972 SC 1359 for the proposition that there would be a misleading of a person usually dealing with when the impugned mark appears orally similar with a registered trademark. Therefore, he would submit that the respondent has to be barred in view of Section 31 of the Trade Marks Act from infringing the trademark 'CEFI-XL' registered by the petitioner. Therefore, the balance of convenience is also in favour of the petitioner and the injunction may be granted.

9.The learned counsel for the respondent would submit in his argument that the respondent had coined and invented the word 'CEFOLAC' in the year 2000 and commenced the sale of its CEFOLAC Pharmaceutical products in the year 2001 and it had reached its high peak in the year 2006-07 and the said pharmaceutical products are sold all over India and it got substantial goodwill and reputation. He would further submit that the respondent introduced an extended release variant of CEFOLAC drug in the market in the year 2006 and the said drug will be releasing the dosage of mixing slowly and that will cause slow release in the human body system and therefore, instead of taking three times a tablet, a single tablet would be sufficient if taken in the morning. The extended release, Slow Release and Controlled Release have been indicated by the abbreviations 'XL', 'SR' and 'CR' in pharmaceutical industries world wide. He would further submit that since CEFOLAC drug is having the quality of extended release and it has to be mentioned XL at the tail of its registered trademark 'CEFOLAC'. He would further submit in his argument that the sales of 'CEFOLAC-XL' were from the year 2006 and it is not possible for the petitioner to say that the respondent had infringed the trade mark name of the drug CEFI-XL belonging to the petitioner. He would further bring it to the notice of this Court that there are various drugs, which would bear mark XL at its tail and to show its extended release for the extended relief. He would produce the relevant pages down loaded from internet from myphlip.pearsoncmg.com Prentice Hall Drug Guide Open Access; Drug-Related Tools, Drug Guide 2007, in order to show that 'XL' is a common abbreviation, world wide to indicate extended release on drugs, which was found in the typed set at page 22. He would further submit that in the said drug guide 'XL' has been mentioned as an abbreviation for extended release. He would also submit that he had obtained the licence from Drug Licensing Authority at Union Territory of Daman and Diu on 1.3.2006 for producing the products in the name of CEFOLAC-XL 50, CEFOLAC-XL 100, CEFOLAC-XL 200, and therefore, it could not been seen that the respondent was using his registered trade mark name CEFOLAC with XL in order to show its quality that the said drug would extend the release of its medicine, so as to give extended relief to the patients. Therefore, he would submit that there cannot be any infringement of trade mark belonging to the petitioner viz., CEFI-XL. He would submit that there are various drugs with the suffixing of XL as part of their name in the market, which could be seen in the receipt issued by Angle Medical and General Stores, available at page 168 of the typed set filed by the respondent. He would also submit that the use of registered trademark CEFOLAC by the respondent by suffixing XL, which is the abbreviation for qualifying the said drug, cannot be an infringement as per Section 32(e) of the Trademark Act. He would also submit that the word CEFI in the registered trade mark of the petitioner CEFI-XL is not identical with the CEFOLAC, the registered trademark of the respondent and therefore, the mere inclusion of XL with the brand name and registered trade mark of the respondent will not be an infringement as the petitioner had not registered XL separately as his registered trade mark and therefore, he cannot have the exclusive right over XL. He would also submit that the order passed by the Delhi High Court made in I.A.No.6867 & 7146 of 2001 in Suit No.12535 of 2001 has not been disclosed by the petitioner and in the said order it has been categorically found by the Delhi High Court that the petitioner cannot be the first user of the trademark CEFI. He would also submit that the mark CEFI and CEFOLAC are not similar both visually and phonetically and the adding of XL, an abbreviation form, for showing the extended release will not also make CEFOLAC-XL similar to CEFI-XL. Therefore, he would submit that there is no prima facie case established by the petitioner for the granting of interim injunction. He would also submit that in the revision preferred by the respondent, this Court had suspended the injunction and therefore, there was no injunction granted by the lower Court and the petitioner had no benefit of injunction till the dismissal of the suit filed by the petitioner. He would also submit in his argument that the balance of convenience is also in favour of the respondent since he has been using the CEFOLAC from the year 2001 and CEFOLAC-XL from 2006 onwards and the word XL is nothing but the abbreviation term of the extended release, which is commonly used for every drug, which is having such quality and therefore, the petitioner is not entitled for any relief of injunction as asked for.

10.He would also draw the attention of this Court to the Judgment of the Delhi High Court reported in 1997(17) PTC 540 (DB) in between SBL Ltd., Vs. Himalaya Drug Co., to the effect that the trade practice of naming the drug after Organ, ailment or ingredient cannot be taken as infringement of the trade mark. Similarly, he would also draw the attention of the Court to the Judgment of this Court reported in 1998 PTC 18 (DB) between Indo Pharma Pharmaceutical Works Ltd., Vs. Citadel Fine Pharmaceuticals Ltd., to the principle that nobody can claim exclusive right to the use of such an abbreviation. He also cited a judgment of the High Court of Delhi reported in 2001(21) PTC 864 between Khandelwal Laboratories Ltd., Vs. FDC Limited, in which the petitioner, a party in the said case, was not granted injunction for the trade mark 'CEFI'. He would also draw the attention of this Court that the petitioner has suppressed the said case in the suit and therefore, he is not entitled to the injunction on that aspect also. Apart from that, the learned counsel for the respondent would also cite the judgment of Bombay High Court reported in 2005(31) PTC 515 between Medley Pharmaceuticals Ltd., Vs. Khandelwal Laboratories Ltd., in which the suit filed against the petitioner by another company against the use of 'CEFI' and 'CEFI-DT' was dismissed with a finding that the plaintiff had not established that he had exclusive right to use the trademark CEFI, CEFO-DT and CEFO-P which are commonly used names by many companies. He would submit that in the said Judgment the claim of the other companies against the petitioner was not considered as those names held by the said companies were commonly used words. Therefore, he would submit that the respondent is at liberty to use the registered trade mark CEFOLAC suffixing an abbreviation XL and therefore, there cannot be any injunction against the respondent. He would further submit that the respondent has got large business and if any injunction is granted against him, it would cause irreparable loss and that cannot be compensated. Therefore, the balance of convenience is also in favour of the respondent and not in favour of granting injunction. Therefore, he would also request the Court to dismiss the injunction petition.

11.I have given anxious thoughts to the arguments advanced on either side. According to the submissions, the petitioner and the respondent are pharmaceutical companies, manufacturing the drugs in the name of the CEFI-XL and CEFOLAC-XL respectively. It is an admitted fact that the name CEFI-XL is a registered trade mark of the petitioner and the name CEFOLAC is the registered trade mark of the respondent. The claim of the petitioner is that the respondent is using XL with the drug name CEFOLAC for which he has not got a registration as 'CEFOLAC-XL' and the usage of such XL along with the name CEFOLAC would cause confusion in the minds of the customers and the reputation and goodwill earned by the petitioner would be jeopardized due to the infringement of the trade mark 'CEFI-XL' belonging to the petitioner. Apart from that, the name of the drug CEFOLAC-XL is visually and phonetically similar to that of CEFI-XL, a registered trade mark of the petitioner and therefore, the respondent should be injuncted from using the said name.

12.According to section 30(2)(e) of Trade Mark Act, a person, who has got registered trade mark of his own, cannot be considered as infringing the other trade mark, which is identical or nearly resembling each other, in the exercise of the right to the use of the trade mark given by registration under this Act. Section 30(2) (a) & (e) of the Trade Mark Act, would run as follows:-

30.Limits on effect of registered trade mark_

(1)...........

(2)A Registered trade mark is not infringed where_

(a)the use in relation to goods or services indicates the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

(b).................

(c).................

(d)................

(e)the use of a registered trade mark, being one of two or more trade marks registered under this Act are identical or nearly resemble each other, in exercise of th right to the use of that rade mark given by registration under this Act.

Even as per Section 30(2)(a) of the Trade Marks Act, the quality intended for the purpose of rendering service or other characteristics of goods may not be considered as infringing the trademark of any person. According to the submission of the learned counsel for the petitioner, the suffixing of the word XL with the mark of the respondent trade mark CEFOLAC is the infringement of the petitioner's trade mark, apart from the visual similarity of those words CEFI and CEFOLAC. But the learned counsel for the respondent had produced the Drug Guide-2007 to the effect that the word XL is the abbreviation for showing the quality of the drug CEFOLAC as it has the extended release quality and it can also be evidenced by the drug licence given by the Authority concerned on 1.3.2006, which is available in the typed set of the respondent at page 29. It could also be seen from the invoice produced in page 168 of the respondent's typed set that number of drugs have been purchased, which would also bear the name of the drug suffixed by the word XL. The copies of the Trade Mark Journal in the pages 121 to 156 of the typed set of the respondent would go to show that various types of drugs have been found in the mark with the suffixure of the word XL. Therefore, it could be prima facie seen that the suffixure of word XL with the registered trade mark of the respondent CEFOLAC would certainly come under the provision of Section 30(2)(a) of Trade Marks Act as the word XL will denote the abbreviation of extended release, to explain about the character of the said drug. Therefore, the suffixure of XL in the respondent's trade mark CEFOLAC cannot be 'prima facie' seen an infringement put forth by the petitioner.

13.Now the point for consideration is_

whether the trade mark of the petitioner viz., CEFI is visually and phonetically similar to that of the trade mark of CEFOLAC?

14.In the Judgment of the Bombay High Court reported in 2005(31) PTC 515 between Medley Pharmaceuticals Ltd., Vs. Khandelwal Laboratories Ltd., in which the petitioner was the defendant, it had been categorically found that the word CEFI & CEFI-DT belonging to the petitioner (Defendant in that suit) are commonly used under the various brand names, marks of some nature and the trade mark CEFO, CEFO-DT, CEFO-P are not similar to those words as they are also commonly used under various brand name and marks of similar nature.

15.Similarly, the judgment of Delhi High Court made in 1997(17) PTC 540 (DB) in between SBL Ltd., Vs. Himalaya Drug Co., would also be helpful in this regard. The relevant passage would run as follows:-

"(1)The crucial tests to be applied for judging an infringement action or a passing off action in the field of medicine and pharmaceutical preparations remain the same as are applicable to other goods. However, in the case of preparations trading whereof is governed by the statutory rules or regulations, additional considerations become relevant. They are (i) the manner in which the trade is carried on, such as sales being made only by authorised or licensed vendors who will be educated also having special knowledge of medicines and pharmcy; (ii) the class of persons who would be the purchasers; whether they would be accompanied by doctor's prescription and would in all probability remain in touch with doctor while consuming the medicine purchased. The Court would ask  Is there such a similarity between the wo trade marks that a doctor or a chemist or the both by some carelessnss in expression, some obscurity in handwriting, some slip of recollection or some careless mistake not expected of a trained professional like doctor of chemist mught lead to the one being confused for the other? Regard shall be had not to the hypothetical possibilities but to ordinary practical business probabilities as applied to the circumstances of an individual case. (2)The decision on the question of likelihood of deception is to be left to the Court.

(3)Nobody can claim exclusive 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 juris or generic cannot be owned by anyone for use as trade mark.

(4)Whether such feature is publiei juris or geric is a question of fact.

(5)If the two trade marks by two competing traders use a generic word or an expression publici juris ommon to both the trade marks it has to be seen if the suztomers 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 he 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." According to the said judgment, the decision regarding the likelihood of deception is left to the discretion of the Court.

16.The Judgment of our Honourable Apex Court as cited by the learned counsel for the petitioner made in 2001(21) PTC 300 SC in between Cadila Health Care Ltd, S. Cadila Pharmaceuticals Ltd., is important to note the point for deciding the deceptive similarity. It runs thus:-

"In an action for passing off on the basis of unregistered trade mark, generally for deciding the question of deceptive similarity, the following factors are to be considered;

a)The nature of the marks ie., whether the marks are word marks or label marks or composite marks, ie., 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 purchases 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."

In the aforesaid judgment it has been dealt with unregistered trade mark, which is said to have been infringed by usage of the trade mark of another person.

17.The judgment of our Honourable Apex Court cited by the petitioner's counsel reported in AIR 1970 SC 2062 in between F.Hoffmann-la Roche & Co. Ltd., VS. Geoffery Manner & Co., Pvt. Ltd., would show that causing any confusion would be sufficient for the deceptive similarity. The relevant passage runs as follows:-

"Secondly, 'to deceive' is one thing. To 'cause confusin' is another. The difference is this; When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth Known to him or because he may not even take the trouble to do so." In the aforesaid Judgment we can see that the element deception is not necessary for the purpose of infringement, but if the confusion is there in between two marks, it could be taken as infringement.

18.In the judgment referred by the learned counsel for the petitioner reported in AIR 1972 SC 1359 in between Parle Products (P) Ltd., Vs. J.P. and Co., Mysore, it has been categorically stated as to how it could be concluded regarding infringement of two marks. The said passage would runs as follows:-

"Two marks, when placed side by side, may exhibit many and various differences vet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted. Thus, for example, a mark may represent a game of football; another mark may show players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football. It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might well be supposed by customers to hav ebeen made by the owners of the trade mark they are already acquainted with for reasons of their own." Therefore, for comparison of the two marks, it should not be placed side by side and the decision may not be reached by such comparison.

19.According to the aforesaid judgments cited on either side, we could see that the principles of law enunciated in those judgmetns cannot be questioned. There is no dispute that the trade mark of the respondent viz., CEFOLAC and the trade mark of the petitioner CEFI-XL are promptly registered with the authority concerned as we have already seen that the word XL is an abbreviation form of the extended release and therefore, there cannot be any bar for using the said word along with the brand name or registered trade mark by anybody in the course of their business.

20.Now the only point before me is is as to whether there is a prima facie case of infringement as put forth by the petitioner?

21.According to the Delhi High Court judgment, the words CEFO, CEFI-DT are all common names utilized by various manufactures of drug for the purpose of selling their products. When the name CEFI is compared with CEFOLAC, certainly it is not phonetically similar when it is pronounced by anybody. On its visual appearance the word CEFI contains only four letters, whereas the word CEFOLAC contains seven letters. Therefore, there cannot be any visual similarity also. In this circumstance, we cannot see any prima facie case for deception or confusion in the minds of the purchasers. Moreover, both the trade mark names are in respect of the drug and it cannot be bought directly from the pharmaceutical shops without any prescription of the doctor or a chemist. Therefore, there cannot be any deception or probabilities of committing infringement of the trade mark of the product of the petitioner would be possible. Even there cannot be any mistaken note due to some obscurity in handwriting because the word CEFI contains only four letters and the CEFOLAC contains seven letters. Recollection of those words by the doctor or chemist also not confusable because the word CEFI pronounced with the ending of the letter 'I', whereas the word CEFOLAC ends with the pronouncement of the letter 'C'. Therefore, I can primia facie see there is no similarity in respect of the trademark belonging to the parties of the case. Even if there is any similarity, we have already seen applicability of provisions for the registered trade marks under Section 30(2)(e) of the Trade Marks Act, there cannot be any infringement . The trade mark of the respondent viz., CEFOLAC is being used with the abbreviation 'XL' and according to the said section 30(2)(a) of the Act it cannot infringe another registered trade mark viz., the petitioner's trade mark 'CEFI-XL'.

22.The respondent is stated to have vast sale of the said drug all over India and if any injunction is granted, the entire business of the respondent would affected, which cannot be compensated. Therefore, in the event of grant of injunction in favour of the petitioner the respondent would be irreparably prejudiced. On the other hand the petitioner has sought for accounting relief in the suit. Therefore, the petitioner has got the opportunity for claiming damages if really he sustained loss due to any infringement of his trademark. Therefore, I could see the balance of convenience is also in favour of the respondent, only.

23.In view of my finding of the prima facie case that the respondent's trade mark is neither deceptive nor confusingly similar to the petitioner's trade mark, the case for granting of injunction has not been made out. It has been also shown to the Court that the respondent was carrying on with the product CEFOLAC-XL from the year 2006 onwards, but the petitioner has brought the action only now. On that ground of laches on the part of the petitioner also, he is not found entitled to have a temporary injunction. Therefore, I am not inclined to grant an order of injunction as prayed for by the petitioner. However, the refusal to grant temporary injunction till the disposal of the appeal shall not influence the Court while disposing the appeal on a full-fledged hearing along with other grounds. With the above observation, this Miscellaneous Petition is dismissed. No costs.

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