S.N Kapoor, J.— Heard learned counsel for the parties at length on the application.

2. Two crucial questions arise in this matter and they are as under:—

(i) Whether use of trade mark ‘BUPAR’ prima facie amounts to infringement of the trade mark ‘ZUPUR’?

(ii) What shall be the effect of grant of licence under the Drugs and Cosmetics Act, 1940 to the defendants for manufacturing the drug ‘BUPAR’ on 15.7.1988 and grant of licence to the plaintiff to manufacture ‘ZUPAR’ on 27.7.1989 on the trade mark ‘BUPAR’ and its use by the defendants?

3. The case of the plaintiff is that the plaintiff adopted the trade mark ‘ZUPAR’ in the year 1986 in respect of pharmaceutical, medicinal, veterinary preparations and sanitary substances. On 6th January, 1987, the plaintiff moved an application for registration and the said trade mark was duly registered under No. 465638 as of 6th January, 1987 in Class 5 in respect of pharmaceutical, medicinal, veterinary preparations and sanitary substances. The said product ‘ZUPAR’ is used in tablet form for the purpose of high fever. The product is being used in a distinctive packing material and strip. The plaintiff has spent considerable amounts by way of promotion, expenditure for popularising the said trade mark ‘ZUPAR’. The said trade mark acquired a distinctive connotation as being exclusively related to the goods of the plaintiff. During the first week of July 1996, the plaintiff came to know that the defendants are selling the pharmaceutical products under the trade mark ‘BUPAR’ for the same treatment. The plaintiff served a notice dated 25th July, 1996 to the defendants to desist from manufacturing, selling and advertising the said product under the trade mark ‘BUPAR’. But the defendants refused to comply the requirements of the notice dated 25th July, 1996. The adoption of the trade mark ‘BUPAR’ by the defendants is visually and phonetically deceptively similar to the registered trade mark ‘ZUPAR’ of the plaintiff in respect of the similar drug. Thus, the defendants are infringing the trade mark of the plaintiff. The trade mark ‘BUPAR’ is not registered. The defendants have only filed an application for registration. Defendant No. 1 filed a suit before the Civil Judge, Varanasi being Suit No. 811/96 under Section 120 of the Trade and Merchandise Marks Act, 1958 and that plaint was returned since the said suit was not maintainable. The defendant No. 1 thereafter filed a fresh suit before the District Judge, Varanasi for the same prayer. By filing the present suit, the said suit filed in the Court of District Judge, Varanasi has become infructuous. It is claimed that the plaintiff would suffer irreparable loss in case the injunction is not granted in respect of the plaintiff's trade mark No. 465638 ‘ZUPAR’.

From the side of the defendants, Sh. Ajay Sahni, Advocate appeared and argued the matter. In view of the urgency of the matter and seeing that at initial stages injunction was not granted, time to file reply was not given to avoid any deprivation of the plaintiff's right to get ad interim injunction.

4. Learned counsel for the defendant, Sh. Ajay Sahni, states that the defendant is claiming user since 1988 and application for registration of the trade mark ‘BUPAR’ is pending since 1995. ‘BUPAR’ is registered with the Drug Controller since 15.7.1988 while ‘ZUPAR’ was registered in the year 1989 (according to learned counsel for the plaintiff licence was given on 27.7.1990). Learned counsel for the defendant contends that Drugs and Cosmetics Act being special Act shall prevail over the general Act under the Trade Marks Act so far as registration of trade mark is concerned and nobody has a right to get a trade mark registered without using it for years together. The trade mark ‘ZUPAR’ amounts to mis-branding under the Drugs and Cosmetics Act and consequently, licence should not have been given to manufacture it. Both are Schedule “H” drugs. It is contended that admittedly the manufacturing licence of ‘BUPAR’ is later in date. It could not have been manufactured before the date of grant of licence i.e 25.7.1989 Besides, the present suit is liable to be stayed in view of the suit filed by the plaintiff. The suit filed at Varanasi under Section 120 of the Trade Marks Act is not a simple suit and it is the plaintiffs themselves who are passing off their goods by taking advantage of the well-established trade mark ‘BUPAR’ which hit the market at least one year earlier, if not more. The defendant has been using the trade mark ‘BUPAR’ which is combination or acronym of ‘BU’ of Ibuprofen and ‘PAR’ of Paracetamol. It is also contended that the trade mark ‘BUPAR’ is an abbreviation of the main ingredients of the drug. The plaintiff could not claim any exclusive right to use the letters ‘UPAR’. Consequently, the plaintiff do not have any exclusive right to use these letters of the ingredients of the tablets.

5. Learned senior counsel for the plaintiff, Sh. Mukul Rohtagi, in reply to the arguments by learned counsel for the defendants, has firstly very fairly conceded that the drug licence for manufacturing ‘BUPAR1 was prior in time to the licence granted to manufacture ‘ZUPAR’. However, he submits that it is of no consequence, for firstly, like Press and Registration of Books Act, Drugs Act does not provide for any registration of the trade mark on trade name and, therefore, the Drugs Act would have no obligation relating to the trade mark. Learned counsel for the plaintiff refers to Sections 29(1) and (2) of the Trade and Merchandise Marks Act, 1958 (hereinafter called the Trade Marks Act for short). They read as under:—

“29. Infringement of Trade marks.-(1) A registered trade mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of a trade mark, which is identical with, or deceptively similar to the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark.

(2) In an action for infringement of a trade mark registered in Part B of the register an injunction or other relief shall not be granted to the plaintiff it the defendant establishes to the satisfaction of the Court that the use of the mark of which the plaintiff is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some persons having the right, either as registered proprietor or as registered user, to use the trade mark.”

It is also submitted that it is very much apparent that the trade mark ‘BUPAR’ is deceptively similar to the trade mark of the plaintiff ‘ZUPAR’. Nothing more is required by the plaintiff to establish his prima facie case.

6. Learned counsel for the plaintiff, Sh. Mukul Rohtagi, relies upon American Home Products Corpn. Wyeth Laboratories Ltd. V. LUPIN Laboratories Ltd. In that case, the plaintiffs were using the trade mark ‘ROLAC’ for pharmaceuticals of therapeutic value while the defendants were using ‘TOROLAC’ for analgesic (pain-killing) preparation. In the suit for infringement and on application for interim injunction, it was held by the Bombay High Court that there were deceptive and confusing similarities in the rival trade marks and there was likelihood of disastrous consequences arising out of a patient's imperfect recollection or illegibly written doctor's prescription. Prima facie case had been made out by the plaintiffs. Serious issues were involved meriting consideration during regular trial. Balance of convenience was in plaintiffs' and pecuniary compensation was not adequate held after several years. Consequently, interim injunction was granted. But in this judgment none of the points, which have been argued, were dealt with in the judgment. Learned counsel also referred to Castrol Ltd. v. A.K. Mehta, 1997 PTC (17) (DB). In that case while the plaintiffs trade mark was ‘CASTROL’, defendants were using container with mark ‘BESTROL’ which was deceptively similar to the trade mark of the plaintiff ‘CASTROL’ having the same colour scheme etc. On account of deceptive similarity the plaintiff was held entitled to relief. That case did not relate to any medicine and it was not based on any abbreviation of main ingredients of the drug, therefore, despite same phonetic similarity that judgment cannot be followed in this case.

7. Learned counsel for the plaintiff Shri Mukul Rohtagi relied upon the case Amitdhara Pharmacy v. Satyo Deo Gupta, AIR 1963 SC 449. In support of his contention that in term Amritdhara and Lakshmandhara, the Supreme Court made following observations.

13. On a consideration of all the circumstances, we have come to the conclusion that the overall similarity between the two names in respect of the same description of goods was likely to cause deception or confusion within the meaning of Section 10(1) of the Act and the Registrar was right in the view he expressed. The High was in error in taking a contrary view.

In this case also, the ingredients of the drug, the letters of the ingredients of a contention of drug were not used in preparing the medicine and it was also not a scheduled drug. Thus, there is a distinction between the case of Amritdhara Pharmacy v. Satya Deo Gupta , (supra) ‘ZUPAR’ and ‘BUPAR’, as would be evident hereinafter.

8.1 In support of his contention that the trade mark of the defendant is deceptively similar to the trade mark of the plaintiff, learned counsel for the plaintiff has also referred to the following cases:—

1. Bristol-Myers Company & Ors. v. Bristol Pharmaceutical Co. Ltd., 1968 RPC 259.

2. Wyeth Lab. Ltd., 1996 IPLR 61.

3. Castrol Ltd. v. A.K Mehta, 1997 PTC (17) (DB).

4. Anglo-French Drugs & Industries Ltd. v. Eisen Pharmaceutical Co. Pvt. Ltd., 1997 IPLR 260.

5. Pidilite Industries Pvt. Ltd. v. M/s. Mittees Corporation and Anr., AIR 1989 Delhi 156.

6. M/s. Ciba Geigy Ltd. v. Torrent Laboratories Pvt. Ltd and Anr., 1992-1993 IPLR 137.

7. M/s. Atlas Cycle Industries Ltd. v. Hind Cycles Ltd., ILR (1973) I Delhi 393.

8. Aristoc Ltd. v. Rysta Ltd., 1962 RPC 65.

9. De Cordowa and Ors. v. Vick Chemical Coy, 1968 RPC 103 & 106.

10. Tata Iron & Steel Co. Ltd. v. Mahavir Steels and Ors., 47 (1992) DLT 412.

11. Tata Oil Mills Co. Ltd v. M/s. Wipra Ltd. and Anr., AIR 1986 Delhi 345.

In case we just go by the phonetic similarity, there may be some substance but this alone by itself would not be sufficient to decide prima facie case in favour of the plaintiff.

8.2 Learned counsel for the plaintiff has also submitted that under Section 23(1)(b) the trade mark so registered shall be effective from the date of making the said application and the said dale, subject to the provisions of section 131, shall be deemed to be the date of registration. The date of registration accordingly is 6th January, 1987. This date is certainly earlier than the date of permission of the defendant. According to learned counsel for the plaintiff, it is immaterial if the plaintiff has obtained the permission to manufacture the said drug subsequent than the defendant as for taking an action for infringement the user of the trade mark may not be required. Learned counsel for the plaintiff has also referred to M/s. Avis International Ltd. v.M/s. Avi Footwear Industries and Anr., AIR 1991 Delhi 22 in support of his contention that since in the present case no rectification of the said trade mark has been filed by the defendant and the trade mark has become an old trade mark under Section 32 of the Trade and Merchandise Marks Act, 1958. But before accepting or rejecting the contention of learned counsel for the plaintiff, it is desirable to refer to Section 32 of the Trade and Merchandise Marks which reads as under:—

32. Registration to be conclusive as to validity after seven years.—Subject to the provisions of Section 35 and Section 46 in all legal proceedings relating to a trade mark registered in Part A of the register (including applications under Section 56), the original registration of the trade mark shall after the expiration of seven years from the date of such registration, be taken to be valid in all aspects unless it is proved—

(a) that the original registration was obtained by fraud; or

(b) that the trade mark was registered in contravention of the provision of section 11 or offends against the provision of that section on the date of commencement of the proceedings; or

(c) that the trade mark was not, at the commencement of the proceedings, distinctive of the goods of the registered proprietor. (Emphasis supplied)

8.3 The conclusive nature of the registration of any trade mark is dependent on the language of Section 32 referred to above. In this case, it is evident that the trade mark was not distinctive of the goods of the registered proprietor at the commencement of the proceedings for registration reason being that t'e plaintiff had not started manufacturing the goods. Therefore, it is not possible to accept the contention of learned counsel for the plaintiff that the registration of the trade mark was conclusive under Section 32 of the Trade and Merchandise Marks Act. It is also apparent that it would not be immaterial as would be evident from the submission and facts emerging from the conduct of the parties. Learned counsel for the plaintiff also referred to M/S, Hindustan Radiators Co.…Plaintiff v. M/S. Hindustan Radiators Ltd.…Defendant, AIR 1987 353 in support of his contention that the mere fact that the defendant has got his name approved from the Registrar of Companies would not go against the claim of the plaintiff in any manner whatsoever.

8.4 The aforesaid submission could be accepted by this Court if the registration has become conclusive under Section 32 by manufacturing the drug under the registered trade name. It also does not appear that K.G Khosla Compressors Ltd. v. Mis. Khosla Extraktions Ltd. and Ors., AIR 1986 Delhi 181 is of any assistance to the plaintiff.

8.5 Learned counsel for the plaintiff has also contended that if the drug being Schedule “H” drug sold under doctor's prescription but it is also available without doctor's prescription and this aspect was noted in this Astra-IDL Ltd. v. TTK Pharma Ltd., AIR 1992 Bombay 35, Ranbaxy Laboratories Ltd.…Plaintiff; v. Dua Pharmaceuticals Pvt. Ltd.…Defendant., AIR 1989 Delhi 44 and Ciba Geigy Ltd. v. Crosslands Research Laboratories Ltd., 1996 PTC (16) 1.

8.6 Learned counsel for the plaintiff has also claimed that the trade mark ‘ZUPAR’ is an invented word and the justification given by the defendant to adopt ‘BUPAR’ has no substance as the trade mark has to be compared as a whole. Consequently, the defendant is guilty under the Trade and Merchandise Marks Act. In this connection, learned counsel for the plaintiff referred to Amritdhara Pharmacy v. Satya Deo Gupta , AIR 1963 SC 449 and Corn Products Refining Co. v. Shangrila Food Products Ltd , AIR 1960 SC 142 and in an action for infringement of a trade mark it is immaterial if the packing is different on the basis of the authority of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 at page 982. Had it not been a case of acronym of ingredients of the drug, there might have been a little difficulty in accepting the contention learned counsel for the plaintiff. But as it Would be evident, the plaintiff cannot monopolise the letters of ingredients of the drug.

9.1 On the other hand learned counsel for the defendant has referred to Section 33 of the Trade Marks Act, which reads as under:—

“33. Saving of vested rights.- Nothing in this Act shall entitle the proprietor or a registered user of a registered trade mark to interfere with or restrain the use by any person of a trade mark identical with or nearly resembling it in relation to goods in relation to which that person or a predecessor-in-title of his has continuously used that trade mark from a date prior—

(a) to the use of the first-mentioned trade mark in relation to those goods by the proprietor or a predecessor-in-title of his; or

(b) to the date of registration of the first-mentioned trade mark in respect of those goods in the name of the proprietor or a predecessor-in-title of his;

Whichever is the earlier, and the Registrar shall not refuse (on such use being proved) to register the second-mentioned trade mark by reason only of the registration of the first-mentioned trade mark.” (Emphasis supplied)

9.2 In view of the provisions of section 33, though it is evident on the admitted facts that the defendant has been using the trade mark identical with or nearly resembling in relation to his tablets ‘BUPAR’ from a date prior to the use of the trade mark of the plaintiff in relation to his tablets ‘ZUPAR’. The defendant cannot take advantage of Section 33 in view of prior registration of the trade mark. However, seeing the manufacturing licence of the plaintiff under the Drugs Act, it appears that virtually the plaintiff has given up the idea to use the registered trade mark ‘ZUPAR’. The plaintiffs right to interfere with or restrain the use of the trade mark ‘BUPAR’ by the defendants and in the above mentioned circumstances becomes doubtful.

10. It is further submitted that in a case for infringement of this nature where the abbreviation or the acronym of the main ingredients of the drug is used nobody can claim any exclusive right to use the letters, abbreviation or acronym which has become publici juris. In Himalayan Drug Company v. SBL Ltd., FAO (OS) 301/96 decided on 15.7.1997, a Division Bench of this Court observed as under:—

“(3). 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 organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being public juris or generic cannot be owned by anyone for use as trade mark.”

11. In this connection, learned counsel for the defendants, Sh. Ajay Sahni, has also referred to two judgments. In Cadila Laboratories Ltd. v. Dabur India Ltd., 1997 PTC (17) 417. ‘Mexate’ and ‘Zexate’ were the two competing trade marks. It was held as under;

“5. …since except for one syllable, the base drug is being used for the trade name ‘Mexate’, the plaintiffs cannot claim any monopoly with regard to the word ‘exate’ which is taken from the word ‘methotrexate’ which is the active ingredient used in the product.

7. …It is also held in M/s. Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Ltd. & Anr. reported in AIR 1984 Bombay 281 and American Home Products Corporation v. Mac Laboratories Pvt. Ltd. & Anr. reported in AIR 1986 Supreme Court 137 that the marks are different and not similar medicines considering the prefix. In the present case, competing trade marks ‘Mexate’ and ‘zexate’ have different and distinguished prefix, one having syllable ‘M’ and the other having ‘Z’. There is no possibility of ‘Mexate’ being pronounced and/or read as ‘zaxate’ under any circumstances. As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to disect the words of the two marks. It is also held that the meticulous comparison of words, letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered. The two marks ‘Fleboline’ and ‘Bionoboline’ was held to be not similar by the Bombay High Court in Johann A. Wulfing v. Chemical Industrial and Pharmaceutical Laboratories Ltd. & Anr. (supra) as the terminology ‘boline’ cannot be an exclusive monopoly of the respondents and that the cumulative effect of the two words did not produce the same impression. Even phonetically the two marks were held to be not closely similar. In the present case, since the two marks are different as the opening syllables of both the rival marks are completely different and distinct and the two drugs are schedule ‘H’ drugs of a specialised nature which could only be purchased on showing a prescription from a cancer specialist, the two competing trade marks appear to be prima facie entirely different and dissimilar.”

12. Another judgment of this Court relied upon by learned counsel for the defendant is Panacea Biotec Ltd… v. Recon Ltd…, 1996 PTC (16) 561. In that case the plaintiff was using ‘NIMULID’ for its medicinal preparation. Apprehending that defendant was likely to introduce medicine under the brand name ‘REMULIDE’, the plaintiff sought injunction against the defendant. A Single Judge of this Court after referring to numerous cases held as under—

“14. In the instant case the position is that the plaintiff has adopted the trade mark ‘NIMULID’ as a short form of the word ‘Nimesulide’ which is the name of the basic drug. As already seen, the first three letters of the plaintiffs' trade mark serving as its prefix are clearly derived from the name of the drug ‘Nimesulide’. Again the next four letters of the plaintiff's trade mark ‘ULID’ have also been bodily lifted from the name of the same drug. The only distinction between the trade mark of the plaintiff and the name of the basic drug has been achieved by skipping the three letter ‘es’ and ‘e’ in the trade name ‘NIMULID’ which occur in the name of the basic drug. This could be clearly termed as a mis-spelling of the word ‘NIMESULIDE’. The trade mark of the medicine in question is a pointer to the drug from which it is manufactured. When a name is derived or coined from the name of the principal ingredient utilised in the manufacture of a medicine no distinctiveness or exclusiveness can be claimed by a manufacturer or trader in respect of the part of the name taken by him for his trade mark.”

13. It is further required to be seen as to whether the action of the defendant in the manufacture of ‘BUPAR’ tablet amounts to infringement.

14. Learned counsel for the defendant had also argued that the defendant has been using the trade mark BUPAR and the first sale of the tablets BUPAR took place on 15th October, 1988. On that date, ZUPAR was not in market. Thus, BUPAR had already hit the market. The licence under Drugs Act was given to the plaintiff to manufacture ZUPAR on 27th July, 1989. The defendant continued to manufacture BUPAR and after 9 years, the present suit has been filed and this suit has been filed with mala fide intention as a counter blast to the suit filed at Varanasi by the defendant.

15. In this connection, it is notable that before 27th July 1989, the manufacturers of the plaintiffs Kenwell Private Limited obtained permission for the manufacture of Ibuprofen and Paracetamol capsules under the trade name ROFEN-P and that was cancelled by the letter excepting the additional product Zupar under manufacturing licence in form 25 bearing No. NB-31/62. This document was produced by the learned counsel for the plaintiff. It means that the plaintiffs had virtually given up the registered trade mark Zupar and they were not inclined to manufacture the paracetamol and Ibuprofen tablets under the name of Zupar. In such circumstances, it is not possible to accept that defendants were using the trade mark BUPAR fraudulently, in order to deceive or confuse the plaintiffs before the plaintiff put their product in the market under the trade name Zupar in the year 1991 and the defendants are entitled to protection to use it under the provisions of sub-section (3) of Section 12 of the Trade and Merchandise Marks Act. Sub-section (3) of Section 12 of the Act reads as under:

12. Prohibition of registration of identical or deceptively similar trade marks—(3) In case of honest concurrent use or of other special circumstances which, in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the registrar may think fit to impose.

16.1 Learned counsel for the plaintiff has himself filed a copy of the plaint of the suit filed in the Court of District Judge, Varanasi indicating that a similar plea of estoppel was taken by the defendant. In this regard, I find that there is lot of force in the submissions of the learned counsel for the defendant especially in view of the foregoing prima facie facts. In Amritdhara Pharmacy v. Satya Deo Gupta (supra), the Supreme Court quoted with approval the following observations in Halsbury's Laws of England Vol. 32 (2nd Edition) 656 in para 14:

(14) We now go to the second question, that of acquiescence. Here again we are in agreement with the Registrar of Trade Marks, who in a paragraph of his order quoted earlier in this judgment has summarised the fact and circumstances on which the plea of acquiescence was based. The matter has been put thus in Halsbury's Laws of England, Vol. 32 (second edition) pages 656-657, paragraph 966.

“if a trader allows another person who is acting in good faith to build up a reputation under a trade name or mark to which he has rights, he may lose his right to complain, and may even be debarred from himself using such name or mark. But even long user by another, if fraudulent, does not affect the plaintiffs right to a final injunction; on the other hand prompt warning or action before the defendant has built up any goodwill may materially assist the plaintiff s case.”

We do not think that there was any fraudulent user by the respondent of his trade names ‘Lakshmandhara’. The name was first used in 1923 in a small way in Uttar Pradesh. Later it was more extensively used and in the same journals the two trade marks were published. The finding of the Registrar is that the appellant and its agents were well aware of the advertisements of the respondent and the appellant stood by and allowed the respondent to develop his business till it grew from a small beginning in 1923 to an annual turnover of Rs. 43,000/- in 1949. These circumstance establish the plea of acquiescence and bring the case within sub-section (2) of Section 10, and in view of the admission made on behalf of the respondent that his goods were sold mainly in Uttar Pradesh, the Registrar was right in imposing the limitation which he imposed.

16.2 The abovesaid observations aptly aptly apply on the present case and it appears difficult to accept the proposition that defendant should be restrained as prayed for.

17. For the foregoing reasons, I feel that the plaintiff does not have a prima facie case. In view of the foregoing circumstances of continuous sale for more than 9 years, the balance of convenience is also not in favour of the plaintiff. As regards the irreparable loss, the learned counsel for the plaintiff Shri Mukul Rohtagi relies upon Ciba Gaigy Ltd. & Anr. v. Sun Pharmaceutical Industries Petition to Special Leave to application No. 6032/1992 and submits that the plaintiffs are willing to give an undertaking to compensate the defendants, and ultimately the injunction was vacated. It may be mentioned that simply because the plaintiff company is a bigger company in the sale of drugs, would not be sufficient to say that they are entitled to grant injunction on this ground in the absence of prima facie case and balance of convenience. However, the principles laid down in the aforesaid judgment of the Supreme Court has to be followed even while rejecting the application. Accordingly, I direct the defendants to furnish an undertaking to the following effect:

a) that they will regularly file the statement of the present stock, the quantity manufactured in the quarter, the quantity sold and the sales thereof, every quarterly.

b) that they will furnish an undertaking that in case the suit is decreed ultimately, then they will compensate the plaintiff, within a period of eight weeks.

18. I.A No. 8159/97 is disposed of accordingly.