The Judgment of the Court was delivered by

Prabha Sridevan, J.:— O.A No. 95 of 2003 is an application for injunction restraining the respondent from dealing with medicinal and pharmaceutical preparations under the trademark PIO, PIO-15 and PIO-30, which are identical with or deceptively similar to the applicant's trademark PIOZ-15 and PIOZ-30, pending the suit, Since the second respondent is outside the jurisdiction of this Court, applicant prayed for leave to sue, which was granted on 22-01-2003. According to the applicant, the first respondent had its office within the jurisdiction of this Court and had effected sale of the products bearing the offending trademark within the jurisdiction of this Court.

2. Notice was ordered in the injunction on 28-01-2003. The first respondent filed its counter. The first respondent filed application No. 1396 of 2003 for issuance of notice to the applicants as to why they should not be prosecuted for their acts of perjury and for making false statements. Both the applications were taken up for hearing. According to the learned Senior Counsel for the applicant, Mr. P. Chidambaram, the words PIO and PIOZ have hardly any difference. The applicant had prior user, so the respondent must be injuncted from using the word PIO. The order dated 26-06-2002 in Application No. 230 of 2002 in C.S No. 234 of 2002 was produced. The same applicant had obtained an injunction against another person who marketed the medicine under the name PIOZED. The learned Senior Counsel would submit that the decision in the other case applies to the present one. After the injunction was granted against use of the trademark PIOZED the parties entered into a compromise. The defendant in that suit agreed to amend its trademark from PIOZED to PIOMED. According to the learned Senior Counsel the respondent herein should also amend its mark so that it is distinct from the applicant's.

3. He submitted that Cadila Healthcare Ltd. v. Cadila Pharmaceuticals Ltd., (2001) 5 SCC 73 : AIR 2001 SC 1952 : 2001 PTC (21) 300 (SC) squarely applies to this case. Himachal Pradesh Horticulture Produce Marketing and Processing Corporation Ltd. v. Mohan Meakin Breweries Limited, AIR 1981 P & H 117 : 1981 (1) PTC 74 (P & H) was relied on to show that in a suit for passing off, the cause of action will arise if the respondent is proved to have directly made sale of goods under the impugned trademark not to an individual consumer but to a distributor; wholesaler or a retailer and such a sale is on a commercial scale. In the case on hand, the address given in the plaint as the address of the first defendant belonged to the Consignee agent of the first defendant and therefore, sale on a commercial scale was clearly taking place. Therefore, cause of action arose within the jurisdiction of this Court. Section 20, CPC was referred to. It was submitted that the examples given in the said section would show that the place of operation of the agent was a place where cause of action arose. In answer to the respondent's charge of perjury, the learned Senior Counsel pointed out that the suit summons had been received at the address given in the plaint and the invoice at page No. 17 of the respondent's typed set showed that the address given therein was the address to which stock transfer was made. Therefore, Section 191, IPC was not attracted since neither was the statement false nor can it be said that the applicant knew or believed it to false. It was also submitted that this is not a proceeding under the Companies Act where the Company has to be served only at the registered address.

4. The learned Senior counsel for the respondent, Mr. Aravind Datar, would submitted that PIO is descriptive of the chemical, which is the main ingredient in the product and is publici juris and the applicant cannot claim any monopoly over the same. He also produced a copy of the Indian Drugs Report, which shows that there are several medicines in the market beginning with the word PIO. Merely because in another case the applicant had obtained injunction against another defendant it would not mean that injunction should automatically follow in this case. There, the offending trademark was PIOZED and the learned Judge held that ED was silent. So PIOZ or PIOZED virtually sounded the same and that reasoning will not apply here.

5. In the Cadila case, Supreme Court gave reasons why Courts should be careful where passing off is alleged in medicinal preparation. If a medicinal preparation is contra-indicative to the ailment for which another medicine is prescribed and both sound similar, it may lead to complications and sometimes it may even be fatal. It was submitted that in this case the words are not similar and both are prescribed for diabetes and contain the same ingredients. He also submitted that the balance of convenience is not in favour of granting injunction. Section 20, CPC has no applicability in the present case, since Section 120 of the Code of Civil Procedure provides that Section 20 is inapplicable to suits filed under the Original Side of the High Court. He referred to the Madras High Court O.S Rules and to show that unless leave was granted the applicant cannot sue the first defendant. He further submitted that the address for service on the applicant was not the registered address of the applicant and in fact, the applicant does not carry on business at the address given in the plaint. The applicant had knowingly and deliberately given a false address as the address of the first defendant. According to the learned Senior Counsel the consignee agent known as “Pride Remedies” carrying on business at the address given in the plaint as the first respondent's address, markets not only the respondent's products but also the applicant's products and various other pharmaceutical products. By no stretch of imagination can that the address be said to be the address of the first respondent or the address of the first respondent's branch office. He also referred to Order 16 Rule 14(a), CPC, which refers to the address where a Corporation sues or is sued.

6. Various decisions were relied on in which Courts have laid down the guidelines for granting injunction in the case of medicinal preparations. He also referred to cases where injunction was denied because there was a suppression of facts.

7. Sections 15 to 25, CPC deals with the place of suing. The applicant relied on Section 20 to show that the suit can be instituted within the legal limits of whose jurisdiction any of the defendants where there are more than one actually and voluntarily resides or carries on business. Section 120 of the Code of Civil Procedure states that Sections 16, 17 and 20 will not apply to the High Court in the exercise of its original jurisdiction. So we then look to the Letters Patent for guidance. Clause 12 of the Letters Patent provides that:

“this Court in exercise of its ordinary original civil jurisdiction shall be empowered to receive, try and determine suits of every description if in the case of suit for land or other immovable property such land or property shall be situated or in all other cases if the cause of action shall have arisen either wholly or in case, the leave of the Court shall have been first obtained in part within the local limits of the ordinary original jurisdiction of the Court or if the defendant at the time of the commencement of the suit shall dwell or carry on business or personally work for gain within such limits….”.

8. Order 3 of the Original Side Rules provides for leave to sue. Order 5 deals with issue and service of summons. Order 6 Rule 14(a) of the Code of Civil Procedure deals with the address for service of notice and deals with the consequences if the Court finds that the registered address of a party is discovered to incomplete, false or fictitious, in the case where the party furnishing his address as the defendant. Order 29 of the Code of Civil Procedure deals with suits by or against Corporation. Rule 2 of the said order is relevant

“Service on corporation.— Subject to any statutory provision regulating service of process, where the suit is against a corporation, the summons may be served—

(a) on the secretary, or on any Director, or other principal officer of the corporation, or other principal officer of the corporation, or

(b) by leaving it or sending it by post addressed to the corporation at the registered office, or if there is no registered office then at the place where the corporation carries on business.”

9. In this case, the applicant has given the address of the 1st respondent as Sys-topic Laboratories Limited, N. First Stree, Railway Colony, Mehta Nagar, Chennai- 29 represented by its Director. The long cause title states that the first defendant is a Company incorporated under the Companies Act, 1956 having its office at the same address. It is admittedly the address of one “Pride Remedies”. The applicant definitely knew that this was not the registered address of the first respondent. The sale of the respondent's product was taking place at Chennai on a commercial scale. Therefore, the applicant would have had no difficulty in obtaining leave to sue the respondents 1 and 2. But for reasons best known to the applicant, the applicant obtained leave to sue the second defendant alone stating that the first defendant was having its address within the jurisdiction of this Court. The learned Senior counsel for the applicant would submit that in the first respondent's website there is a map of India showing the Systopic presence and it includes Chennai and therefore, the cause of action arose at Chennai. I do not think much weight can be given to this submission because even if the first respondent's presence is all over India what we are concerned with is whether sale of this product was carried on at Chennai and whether the address for service of summons to the first respondent is the address that is given. As already seen the fact that the applicant has shown that the respondent's products are being sold at Chennai even without the aid of the website, the explanation for not giving the address of the first respondent is far from satisfactory. The registered address of the first respondent is evident to any person, who would care to look at the carton in which the respondent's product is sold. It passes comprehension as to why the applicant would choose to ignore this and give as the address for service on the Corporation an address where the consignee agent is carrying on business. The applicant may have given the correct registered address and also stated that the Chennai address is that of the consignee agent. In the counter, the applicant casually says that only now the applicant came to know that the address given in the plaint was that of the Commission Agent. The applicant does not explain why the correct address, which is known to the applicant was not given.

10. In Shalimar Rope Works Ltd. v. Abdul Hussain H.M Hasan Bhai Rassiwala, (1980) 3 SCC 595 : AIR 1980 SC 1163 which was a suit against the Company, the Supreme Court dealt with the mode of service of summons and the Supreme Court held that,

“The words “leaving the summons at the registered office” under Cl. (b) do not mean that the summons can be left anywhere uncared for in the registered office of the company. These words have to be read in the background of the provision contained in Order 5, Rule 17 of the Code. In other words, if the serving peon or bailiff is not able to serve the summons on the Secretary or any Director or any other Principal Officer of the Corporation because either he refuses to sign the summons or is not to be found by the serving person even after due diligence then he can leave the summons at the registered office of the company and make a report to that effect.”

11. Similarly it appears to me that the address for service on a Corporation cannot be just any place where the products of the defendant are sold but the registered address of the Company or it may be served in the manner laid down in Order 29.

12. In (1980) 3 SCC 595 : AIR 1980 SC 1163 (cited supra) that case, the summons was served on an employee who was an Office Assistant sitting in the registered office of the Company. Even though it was served at the registered address it was held to be not an valid service of summons. This is referred only to show the importance of proper service of summons. The fact that “Pride Remedies” had received the notice calling itself as the Commission Agent will not help the applicant. The verification of pleadings by the Manager (Legal) that this information given is true to his knowledge, information and belief is difficult to accept.

13. If the stand of the applicant is to be accepted, then the big soap and detergent giants whose products are sold all over the country may be sued at the address of any little grocery shop in any small village in this vast country. Merely because the proceedings do not arise under the Companies Act, the applicant cannot be excused for not giving the registered office of the Corporation which is sought to be sued and which was within the applicant's knowledge. It must have taken some investigative skill to locate the address of the Commission Agent and to give the same as the address for service on the defendant. The applicant wants an equitable relief and should show that he has come with a bona fide case. We do not know with what intent, the applicant has given deliberately the address of the Commission Agent of the respondent when he cannot plead ignorance of the registered address of the defendant. This reason alone is enough to deny the relief in favour of the applicant. The learned Senior Counsel would submit that the provisions regarding the registered address of the Corporation would apply only to proceedings under the Companies Act and not to any other proceedings. This submission has to be rejected.

14. In Jute and Gunny Brokers Ltd. v. The Union of India, AIR 1961 SC 1214 the question of validity of service of summons came to be considered and the Supreme Court examined whether service on the managing agents was service on “other principal officer”. It was contended before the Supreme Court that the definition of an officer given in the Companies Act is an artificial definition and only for the purpose of the Companies Act and not for the Code of Civil Procedure. The Supreme Court observed that,

“That Appellate Court did not accept this contention and was of the opinion that the definition of an officer given in the Companies Act can also be utilised for the purpose of the Code of Civil Procedure and we think that that view is correct.”

15. The Supreme Court there observed that Order XXXIX, R. 2, CPC is subject to any statutory provision regulating service of process. The only other statutory provision was held to be that in, Section 148 of the Companies Act which is similar to Section 51 of the Companies Act, 1956. So summons can be served either in accordance with the provisions of the Companies Act or the provisions of Order 29 Rule 2 of the Code of Civil Procedure. The applicant cannot pull out an address acted to the best of his knowledge and belief.

16. The applicant also has not obtained leave to sue the first defendant who obviously carries on business outside the jurisdiction of this Court. Unless leave to sue the first defendant is obtained no interim order can be granted against the first defendant.

17. Now (sic) come to the merits of the case. The cartons of the applicant and the respondent's products are not identical. The copy of the Indian Drug Report would show that most of the drugs which use the chemical pioglitazone hydrochloride use the word PIO and the list of those drugs have also been enclosed in the typed set filed by the respondent. It has been held that it is not a defence in a passing off action to state that other medicine manufacturing companies are using similar sounding words and no action has been taken against them.

18. In fact in Indian Shaving Products Ltd. v. Gift Pack, 2000 CLC 183 : 1998 PTC (18) 698 (Del) the Delhi High Court held that the allegation that some other manufacturers are also using the said trademark, is not available to the defendants as the Court is concerned with the parties concerned before it only. However, the reference to the other companies using the similar name is referred to only for the purpose of showing that the word PIO is indicative of the basic ingredient and it cannot be said to belong to the applicant alone. In fact the applicant had himself stated in the counter filed in the other suit which is filed in the paper book, that the grievance is against the use of the word PIOZ as a whole and not PIO as such. I am not saying that the applicant is estopped from seeking injunction because of that statement. It is only to demonstrate that the applicant is aware, it cannot claim ownership over the word PIO. PIO sounds different from PIOZ. It cannot be said that the two are identical and in any case the applicant cannot object to the use of the word PIO.

19. The decision in Cadila case was relied on by both the parties. In that case the plaintiff was selling a tablet under the trade name “Falcigo”. The defendant was marketing the drug by name “Falcitab”. “Talcigo” was for treatment of cerebral malaria and “Flacitab” was for falcipharum malaria, but the basic ingredient was different. The defence taken was that the word, “Falci” which is the prefix of the mark was taken from the name of the disease and that it is common practice in pharmaceutical trade to use part of the word of the disease to the product to indicate of the Doctors that the particular product is meant for the particular disease. As far as the medicinal products are concerned the name may be based on the three factors, (a) Generic term or ailment as in the case of FALCI case; or (b) it can refer to organ or part of body as in LIV.-52; or (c) it may refer to ingredients of medicine as in PIO for Pioglitazone Hydrochloride.

20. The Trial Court in the Cadila case dismissed the injunction application on the ground that the two drugs differed in appearance, formulation and price and could be sold only to hospitals and no chance of deception or/of confusion was likely. The appeal also was dismissed and therefore, the manufacturer of “Falcigo” went before the Supreme Court. It is relevant to note that the Supreme Court did not interfere with the decision not to grant injunction. However, the Supreme Court examined the principles on which these cases have been or are required to be decided. The Supreme Court also observed that when the drugs have a marked difference in the composition and/or have completely different side effects, the tests should be applied strictly as the possibility of confusion of one medicinal product for another could have disastrous results. The Supreme Court also said that the Courts need to be particularly vigilant where the defendant's product of which passing off is alleged is meant for curing the name ailment but the compositions are different. In the present case, admittedly the medicinal products of the two parties are marketed in the same two strengths viz. 15mg and 30mg. Both contain Pioglitazone Hydrochloride.

21. Several judgments were cited to show how Courts have dealt with applications under Order 39, Rules 1 and 2, CPC in passing off action. The drugs were Dropvit and Protovit, Nimulid and Remulide, Rechlor and Curechlor, Dispirin and Medisprin, Sorbilene and Sorbitone, Mexate and Zexate, Lipicard and Lipicor, Menscure and Mensurol, Liv-52 and Liv-T, Micronix and Microtel, Cera and Re cera vitreous. In the Lipicor case the applicant pressed into use the judgment of the Supreme Court in Cadila case, and the learned Judge of the Delhi High Court deduced some principles as the tests for deciding a passing off action in medicinal problems which may not be applicable in non-medicinal problems.

22. When the drugs have completely different side effects the tests should be applied strictly and the Courts need to be particularly vigilant. Even if both drugs are sold under prescription, strict measures to prevent confusion arising from similarity of marks must be adopted. Public interest would support lesser degree of proof for showing confusing similarity in the case of trademarks in respect of medicinal products as against non-medicinal products since drugs are poisons and not sweets. In LIPICOR case, both the drugs were lipid lowering drugs used in Cardiac diabetics and the learned Judge held that the word LIPI is publici juris and cannot be owned by anyone for use as trademark and the learned Judge also referred to the use of the word LIPI in several products.

23. Injunction is not granted; because the word PIO is publici juris and the applicant has no monopoly over it; because many products using the same ingredient for treatment of diabetes use the word PIO for their trademark; because the names of the two products are not identical; the applicant has not obtained leave to sue the first applicant; and because with oblique motive the applicant did not give the correct address of the first respondent which was within the applicant's knowledge.

24. If the ailment for which PIO is prescribed is contra-indicated in the ailment for which PIOZ is prescribed-both are prescribed for diabetes; or if the two products are marketed in different strengths-they are marketed in the two same strengths 15 and 30; or if they contain different ingredients-both contain pioglitazone hydrochloride, then the decision may have been different. But here the lesser degree of proof, or the more stringent test is not necessary. Public interest also does not suffer.

25. The injunction application O.A No. 95 of 2003 is therefore, dismissed with costs. The application 457 of 2003 is closed.

26. Application No. 1396 of 2003:

In the counter to this application, the applicant (who is the respondent in the application) has stated that no prejury has been committed by them and any discrepancy in the address is due to the bona fide mistake of fact and that the deponent, believed that the applicant/first defendant had an office at the address given in the plaint and that however, later when the applicant/first defendant filed their counter, the deponent came to know that the address that was that of the consignee agent of the applicant/first defendant. In the leave to sue application the applicant stated that the cause of action arose at Chennai “where the first defendant is located”, In the apply to the counter filed in O.A No. 95 of 2003 they had stated that the first respondent has a consignee agent at Chennai and carries on business at Chennai. This reply is sworn to on 08-03-2003, the notice in Application No. 1396 of 2003 was served on the applicant 18-03-2003 and in the counter, in that application the deponent has stated that he came to know that he was a consignee agent only from the endorsement in the receipt of the notice. It is rather unfortunate that ambivalent statements are being made to suit the occasion.

27. While the burking of the registered address of the first respondent-Corporation and furnishing the address of a stray dealer throws enough doubt on the bona fides of the applicant deny the equitable remedy of injunction it may not be sufficient to warrant initiating criminal proceedings. So no orders are necessary in this application.