Dr. Mukundakam Sharma, J.:— This order shall dispose of the application registered as I.A 4626/2002, which is filed by the plaintiff under order 39 rules 1 & 2 of the code of civil procedure praying for grant of a temporary injunction in favour of the plaintiff and against the defendants restraining passing off of the goods of the defendants as that of the plaintiff under the trademark LIPICOR.
2. The plaintiff herein adopted the trademark LIPITOR for a pharmaceutical product containing atorvastatin calcium which is a synthetic lipid lowering agent and an important medicine for the treatment of cardio-vascular diseases especially for reducing cholestrol. The aforesaid trademark of the plaintiff is registered in several countries. The plaintiff is not so far in the Indian market with the aforesaid drug. It is, however, stated that although the plaintiff has not commenced marketing and selling its product LIPITOR in India yet by virtue of extensive use of the said drug under the trademark LIPITOR worldwide, the trademark LIPITOR has become very closely associated with the goods of the plaintiff by enjoying trans-border reputation. It is also contended that the application of the plaintiff for registration of the trademark LIPITOR in India is also pending for consideration and, therefore, there is every possibility of the plaintiff entering into the Indian market with the aforesaid drug in the near future.
3. The defendants have also introduced in the market a product under the name LIPICOR for treatment of similar disease and containing similar salt. According to the plaintiff, the aforesaid trademark LIPICOR of the defendants is deceptively and confusingly similar to the plaintiffs world-reknowned trademark LIPITOR and accordingly a notice was sent to the defendants, to which a reply was also sent by the defendants placing reliance on a suit instituted against them by M/s. Aviat Chemicals Private Limited, claiming to be proprietors of the trademark LIPICARD. As the defendants sought to defend their right by claiming exclusiveness to their trademark LIPICOR contending, inter alia, that there would be no confusion or mistake or deceit even if the defendants continue to use the trademark LIPICOR, the present suit was filed in this court praying for a decree of passing off and also for payment of damages etc. No ad interim injunction was granting while issuing notice on the injunction application.
4. The defendants have entered appearance and filed a reply to the injunction application. Pleadings being complete in the said injunction application, I also heard the learned counsel appearing for the parties. I have also perused the records and the various decisions which were placed before me by the counsel appearing for the parties.
5. Counsel appearing for the plaintiff has submitted that the two words, namely, LIPITOR and LIPICOR are phonetically similar to each other. According to him there is every likelihood of confusion on the ground that the both the marks are deceptively and confusingly similar to each other, the only difference being in replacing the alphabet ‘T’ with alphabet ‘C’ in their product. It was also submitted that the plaintiff adopted LIPITOR for its product in the year 1997 whereas the defendant adopted the trademark LIPICOR in India some time in June, 2000 and from February, 2001 to July, 2001 the defendant was under an order of injunction restraining the defendant from using the trade mark LIPICARD. It was also submitted by the counsel appearing for the plaintiff that since the trademark LIPITOR of the plaintiff has assumed trans-border reputation for its extensive use all over the world and since the application of the plaintiff for registration of the trademark LIPITOR in India is also pending, the defendants should be restrained from carrying on their business of manufacturing, marketing and selling the same product as that of the plaintiff under the trademark LIPICOR.
6. Counsel appearing for the defendants, however, submitted that there is no question of any confusion between the two trademarks LIPITOR (of the plaintiff) and LIPICOR (of the defendants) as according to him both the aforesaid marks are not deceptively or confusingly similar. The counsel submitted that even if there be any phonetic similarity between the two words, no injunction could be granted as in similar cases injunctions were refused amidst alleged phonetic similarity, instances of which are cited by the counsel appearing for the defendants to the following effect:—
PLAINTIFF'S DEFENDANT'S CASE LAW PRODUCT PRODUCT CITATIONS FALCIGO FALCITAB JT 2001 (4) SC 243 THEOMIDON THEOMINAL 1975 RPC 545 MENSCUROL MENSCUREL 1996 PTC 501 SPASMO FLEXON SPOSMO PROXYVON 2001 PTC 139 DROPOVIT PROTOVIT AIR 1970 SC 2062 DANOL DE-NOL 1979 RPC 1645 PRILEX PILEX AIR 1992 BOM 35 DOLOGEL DONNAGEL 2000 PTC 60 LIPICARD LIPICOR 2001 PTC 601 (DEL)
7. It was submitted that no case for interim injunction is made out against LIPICOR by the user of LIPITOR since the word ‘LIPI’ is a generic word common to trade and stands adopted by many companies and that no one could have any exclusive monopoly over such words which have become “ publici juris”. It was also submitted that the words ‘TOR’ and ‘COR’ are not phonetically similar.
8. Counsel also sought to submit that no injunction could be granted in a matter of this nature when it is found that ‘TOR’ and ‘COR’ are not similar and that the price of LIPITOR is 12-15 more than times that of LIPICOR and that LIPITOR has not even entered the Indian market. Counsel strongly relied upon the decisions of this court in Pfizer Products Inc.…Plaintiff; v. B.L & Company & Ors.…Defendants., 2002 (25) PTC 262 (Del) and a decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.., 2001 PTC 300 (SC). Reliance was also placed by the counsel for the defendant in the decision of this court in Aviat Chemicals Pvt. Ltd. & Anr.…Plaintiffs; v. Intas Pharmaceuticals Ltd.…Defendant., 2001 PTC 601 (Del).
9. In the context of the aforesaid submissions, I may now proceed to deal with the rival contentions of the leaned counsel appearing for the parties. The trademark, as against which protection is sought for by the plaintiff, is LIPITOR, which is a drug used for treatment of cardio-vas-cular diseases especially for reducing cholestrol. The said trademark was adopted by the plaintiff in the year 1997 and since then the plaintiff has been manufacturing, marketing and selling the said drug under the trademark LIPITOR all over the globe. The application of the plaintiff for registration of the said trademark LIPITOR in India was filed on 19.2.97 and is pending for consideration. The defendant has adopted the trademark LIPICOR for similar drug, which is being manufactured and marketed in India by the defendants since June, 2000. However, in between the defendants were also under an injunction from using the trademark LIPICOR. However, admittedly the plaintiff has not commenced marketing and selling its product LIPITOR in India. Therefore, one of the questions which arises for my consideration is whether the plaintiff has attained any trans-border reputation so far LIPITOR product is concerned and, if so, its effect on the issues involved in the present case.
10. The next thing which is to be considered and answered is whether the two trademarks LIPITOR (of the plaintiff) and LIPICOR (of the defen dants) is phonetically similar and if so whether or not the plaintiff is en titled to an injunction. To answer the aforesaid issues, it would be necessary to look into some of the decisions which were relied upon by the counsel appearing for the parties and are also relevant for the purpose of deciding the present case. In N.R Dongre and Others v. Whirlpool Corporation and Another, (1996) 5 SCC 714, the Supreme Court while dealing with a passing off action held that a mark in the form of a word, which is not a derivative of the produce, points to the source of the product and that the mark/name ‘WHIRLPOOL’ is associated for long, much prior to the defendant's application in. 1986 with the Whirlpool Corpora tion/plaintiff and, therefore, in view of prior user of the mark by the plaintiff its trans-border reputation extending to India, the trademark ‘WHIRLPOOL’ gives an indication of the origin of the goods as emanating from or relating to the Whirlpool Corporation/plaintiff. It was also held that the fact that the cost of the defendant's washing machine is 1/3rd of the cost of the plaintiffs' washing machine itself supports the plaintiffs' plea that the defendant's washing machines are not of the same engineering standard and are inferior in quality to the washing machine of the plaintiffs. Considering the said factors, the order of injunction passed by the trial court was upheld by the Supreme Court. In Times Warner Entertainment Company, L.P v. A.K Das, 1997 PTC (17) 453 this court held that if the presence of the plaintiff in India is recognised holding that it has acquired a trans-border reputation and if it is found that the trademark sought to be adopted by the defendant is to deceive, the same would definitely lead to erosion of the reputation of the plaintiff in view of the fact that the plaintiff has already acquired a world-wide reputation. Reference may also be made to the decision of Yahoo!, Inc.…Plaintiff; v. Akash Arora & Anr.…Defendants., 1999 (2) AD Delhi 229 this court has held that if the plaintiff is well-known and has registration of the trademark, then its reputation could be recognised even in India on the ground that the said trademark has assumed a trans-border reputation and on that count an injunction could be granted. To the similar effect is the Division Bench decision of this court in Nectar (U.K) Ltd.… v. Herbs Shop India Ltd. & Ors.…, 93 (2001) DLT 383 (DB). Therefore, in the context of the aforesaid decisions of this court, it is to be examined whether the plaintiff could be said to have enjoyed a trans-border reputation in respect of the aforesaid trademark LIPITOR. The plaintiff has placed on record documents indicating that the plaintiff had introduced the aforesaid drug under the trademark LIPITOR in the year 1997 and that through the years i.e from 1997 to 2001 there has been a marked increase in their worldwide sale revenue. In the 5th year of its introduction, the aforesaid drug under the trademark LIPITOR was sold for US $6.419 billion. It is also pointed out that the said drug is registered in many countries like; USA, South Africa, Sweden, Australia, Canada and is also extensively advertised. Therefore, it is prima facie established that through the sales and the advertisement, for which documents are available on record, the aforesaid trademark LIPITOR of the plaintiff has assumed a trans-border reputation. International journals and magazines, which are published from different places contain the advertisements issued by the plaintiff. Copies of the said journals in the usual course come to India as reading materials for medical professionals in India. Information in respect of the aforesaid drug and the trademark are available through internet as also through other media. Accordingly, it must be held, which of course is a prima facie opinion at this stage, that the drug of the plaintiff has assumed a trans-border reputation.
11. Having decided the said issue in the aforesaid manner, I proceed to decide the next relevant issue as to whether or not the two marks are phonetically similar and whether or not an injunction as sought for could be granted. We are here concerned with a pharmaceutical drug and a medicinal product. The Supreme Court in the case of Cadila Healthcare (supra) considered a similar issue with regard to two drugs, namely, ‘FALCIGO’ and ‘FALCITAB’. In the said decision also although the products in question were Schedule-L Drugs, which could be sold only to the hospitals and clinics with the result that there could be not even a remote chance of confusion and deception. In the said decision the reason for not interfering in the order appealed against were given and directions were given by the court for expediting the trial of the suit. However, in the said decision the Supreme Court laid down certain guidelines and the criterion as to how the issue of phonetic similarity should be considered by the courts. In the said decision the Supreme Court held that public interest would support lesser degree of proof showing confusing similarity in the case of trademark in respect of medicinal product as against other non-medicinal products. It was further observed as follows:—
“Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely incon venient “
It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.
12. It was also held that while examining such cases in India, what has to be kept in mind is that the purchaser of such goods in India, who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may so'ugh phonetically the same. In the said decision the Supreme Court has laid down that in drug cases all confusion should be avoided and that the test of likelihood of confusion should be more strict.
13. Counsel appearing for the plaintiff also drew my attention to the decision of this court in Ranbaxy Laboratories Ltd.…Plaintiff; v. Dua Pharmaceuticals Pvt. Ltd.…Defendant., AIR 1989 Delhi 44. In the said decision this court held that the two drugs, namely, “CALMPOSE” and “CALMPROSE” are not only phonetically similar but are also visually similar only difference being the defendant had inserted letter ‘R’ in the middle of the word and converted “CALMPOSE” to “CALMPROSE”. It was held that the intention of the defendant clearly is to cash in on the reputation which has built up by the plaintiff over the years in the sale of its medicine “CALMPOSE”., the turnover of which is over Rs. 40 crores. This court further held that the aforesaid two drugs are supposed to be sold on Doctor's prescription but it is not unknown that the same are also available across the counters in the shops of various chemists and that it is also not uncommon that the chemists who may not have “CALMPOSE” may pass off the medicine “CALMPROSE” to an unwary purchaser as the medicine prepared by the plaintiff. The test, which was laid down in the said decision, to be adopted is not the knowledge of the Doctor, who is giving the prescription but it is knowledge of the unwary customer who goes to purchase the medicine.
14. Counsel appearing for the defendant, however, strongly relied upon the decision of this court relating to “LIPICAED” and “LIPICOR” (Aviat Chemicals Pvt Ltd. supra). In the said decision it was also held that both the drugs use the prefix LIPI, which is obviously taken from the word Lipid and this name is suggestive of the ailment which it treats. In the said decision it was held that the word LIPI is a generic word common to the trade and already stands adopted by more than 20 companies and is in vogue for last number of years and in such circumstances by launching the produce LIPICARD in June, 2000, the plaintiffs cannot claim monopoly over this name restrain defendant from using the prefix LIPI. It was also held that having regard to more than 20-25 products of the same nature with prefix LIPI already in the market, there is a practice in the trade of drugs in naming the drug by name of ailments which it treats and that the word prefix LIPI is taken from Lipid which is a generic word, one cannot think that the use of trade mark LIPICOR by the defendant is likely to cause confusion or deception.' Counsel appearing for the defendant also relied upon the decision of this court in PFIZER PRODUCTS INC (supra) wherein it was held that the trademarks “VIAGRA” and “PENEGRA” are not phonetically similar and, therefore, there is no likelihood of confusion and no case for passing off was made out. Ad interim injunction in the said case was refused on the ground of non-presence of the plaintiff in the Indian market and that the case was filed belatedly.
15. I have considered the proposition of law laid down in the aforesaid decisions. In order to distinguish between the two products, the defendant has also placed on record a comparison chart in its written statement, which is reproduced as under:—
PLAINTIFF'S LIPITOR DEFENDANT'S LIPICOR Marketing/Selling outside India Marketing/Selling only in India Launched in USA in 1997 Launched in Ahmedabad in 2000 Lipid lowering drugs Lipid lowering drugs Sold on Doctor's prescription Sold on Doctor's prescription Sold on strips containing 7 capsules Sold on strips containing 10 capsules Strips contain 7 tablets Strips contain 10 tablets Name Parke-Davis is printed prominently Name INTAS is printed on each packing and marketed by SUPRIMA Off white colour strips Yellow colour strips Priced in foreign currency Priced in Indian currency 10 mg priced at USD. 163 for 90 tablets in USA (each tablet costs approx Rs. 90/-) 10 mg priced at Rs. 62.50 for 10 tablets (L.T Extra) in India (each tablet costs approx Rs. 6/-) 20 mg priced at USD 250 for 90 tablets in USA (each tablet costs approx Rs. 140/-) 20 mg priced at Rs. 119.50 for 10 tablets (L.T Extra) in India (each tablet costs approx Rs. 12/-)
After referring to the same, counsel appearing for the defendant also referred to various pharmaceutical products, a list of which is given in the foregoing paragraph wherein also injunction was refused although even phonetic similarity in the name of the said products was alleged.
16. It is by now a settled law that when similarity, whether visually or phonetically is judged and considered, the entire word has to be taken as a whole. The word cannot be disected for considering as to whether or not the said word is visually and phonetically similar. It is true that the word LIPI is a generic term but what is to be considered in this case is whether two words, which are the trademarks, namely, “LIPITOR” and “LIPICOR” could be said to be visually or phonetically similar. The same is also to be considered in the context of Indian conditions and also in the context of unwary and illiterate customers of India. So far the words MEXATE-ZEXATE, FALCIGO — FALCITAB, PROTOVIT — DROPOVIT and others referred to in foregoing paragraph 6 are concerned, there is a marked phonetical difference in such competing marks, either in the prefix or suffix which differentiate the two marks. In Cadila Laboratories Ltd. & Another…Plaintiffs; v. Dabur India Limited…Defendant., 1997 PTC (17) 417 this court held that the importance of the prefix of the word should be taken due weightage and importance in case where the suffix is common and that where the suffix of the word is common, regard must be had to the earlier portion of the word which distinguishes one from the other. It was also held that where the suffix is common, the earlier portion of the word is the natural, necessary and, in fact, the actual mark of distinction. It was further held in the said decision that there is no possibility of ‘MEXATE’ being pronounced and/or read as ‘ZEXATE’ under any circumstances. The settled law propounded by the various decisions of the Supreme Court and the High Courts was reiterated in the said decision when in was held that 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 and that meticulous comparison of words letter by letter and syllable by syllable is not necessary and phonetic or visual similarity of the marks must be considered. In the aforesaid context, MEXATE-ZEXATE, PROTOVIT — DROPOVIT, VIAGRA-PENEGRA etc. will be distinguished and on that light it could be held that they are not phonetically similar. In the present case, what the defendant has done is to insert the letter “C” instead of “T” in the middle of the word and converted the same from LIPITOR to LIPICOR. Where the two competing marks of the present case are considered as a whole and pronounced accordingly, a case of phonetic similarity is made out in the context of Indian conditions. The plaintiff is in the global market, although not specifically trading in India, from the year 1997 and its application seeking for registration under the aforesaid trademark LIPITOR is also pending in India. The sale figure of the plaintiff also indicates that it has a wide market and the said figure also suggests that it has an established reputation worldwide. The defendant by changing only one letter in the said trademark is trying to cash on the reputation which has been built up by the plaintiff over the years in the sale of its medicine LIPITOR, the turnover of which in the year 2001 was US $6.419 billion. Therefore, in my opinion, it is an attempt by the defendant to deceive the plaintiff.
17. The fact that the price of the medicine of the defendant is much lower than that of the plaintiff and the trademark LIPITOR of the plain tiff is not even in the Indian market, would not be material and would not change the situation. The case of Whirlpool is a case in pointer in that regard. In Cadila Healthcare Ltd. v. Cadila Pharmaceuticals (supra), the Supreme Court has categorically held that courts need to be particularly vigilant where the defendant is trying to pass off its medicine as plaintiffs medicine. In the said decision it was also held that a stricter approach should be adopted while applying the test to judge the possibility of con fusion of one medicinal product for another by the consumer. It was also held that while confusion in the case of non-medicinal product may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases life it self. The very fact that the plaintiff manufactured and marketed the aforesaid product under the trademark “LIPITOR” after a great deal of re search whereas nothing is stated in the written statement or reply filed to the injunction application that any research was done by the defendant before manufacturing, marketing and selling the aforesaid product in the market. As there is no specific pleading of the defendant in that regard, it is assumed that the defendant did not incur any expenses towards re search of the aforesaid drug and, therefore, it is possible for the defendant to manufacture, market and sell the same at a cheaper price than that of the plaintiff. However, it is always possible for the plaintiff to be in India in the future as its application for registration is still pending in India.
18. Considering the aforesaid circumstances, in my considered opinion, this is a fit case where an injunction, as sought for, is required to be granted. Accordingly, a temporary injunction is granted in favour of the plaintiff and against the defendant restraining the defendants, their Directors, partners distributors, stockists, retailers and all others acting on their behalf from manufacturing, marketing, selling, offering for sale, advertising etc. the product under the trademark LIPICOR or any other mark which could said to be confusingly or deceptively similar to the trade mark LIPITOR of the plaintiff, till the disposal of the suit. In terms of the aforesaid order, the application stands disposed of.
C.S(OS) No. 939/2002
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