Dr. Mukundakam Sharma, J.— This order shall dispose of the application filed by the plaintiff under order xxxix rules 1 and 2, cpc praying for a temporary injunction restraining infringement of trade mark of the plaintiff and also restraining passing of the goods of the defendant as that of the plaintiff.

2. The plaintiff herein is a manufacturer and merchant of Ayurvedic medicinal and pharmaceutical preparations. The plaintiff is the registered proprietor of various trade marks in India in respect of goods falling in Class 5. The registration of the aforesaid trade marks is also being renewed from time-to-time. During its course of business, the plaintiff is also manufacturing and marketing a product under the distinctive trade mark “M2 Tone” in a syrup base as well as in the form of tablets. The aforesaid trade mark “M2 Tone” of the plaintiff is registered in India since 1965 in respect of goods falling in Class 5. The said registration is renewed, valid and subsisting in the Register of Trade Marks. According to the plaintiff, the said trade mark is an invented word coined by Charak Pharmaceuticals in and about the year 1965 and has been in use since then as a registered trade mark. It is further stated that the medicinal preparation “M2 Tone” is used for normalising the menstrual flow by modulation and hence the plaintiff has named the product M2 which in fact is a condensed version for two M's signifying menstrual modulation which is used in combination with word Tone. The aforesaid trade mark was in the first instance registered in the name of Charak Pharmaceuticals, a partnership firm and sister concern of the plaintiff and subsequently assigned to the plaintiff by virtue of and pursuant to Deed of Assignment dated 1st May, 2002. A copy of the assignment deed is placed on record and a statement is made that the said assignment deed is pending registration with the Registrar of Trade Marks. The plaintiff has been using the aforesaid trade mark continuously, extensively and uninterruptedly and the year-wise sale figures has also been given by the plaintiff. It is alleged that some time in November, 2003 the plaintiff came to know that the defendant is also manufacturing and marketing a medicinal preparation under a deceptively similar and infringing trade mark “MV-Tone”. It is contended that the impugned trade mark is phonetically, structurally and visually confusingly and deceptively similar to the plaintiff's trade mark “M2 Tone”. It was pointed out that while adopting the aforesaid mark, all that the defendant has done is to substitute the second numeral “2” of the plaintiff's trade mark with the alphabet “V”. It is also alleged that the defendants after adopting the said trade mark of the plaintiff dishonestly have also applied for registration of the said trade mark in Class 5 with the Registrar of Trade Marks and that in order to protect its intellectual rights vested in the trade mark “M2 Tone” and to stop the defendant from getting registration of confusingly and deceptively similar trade mark “MV-Tone”, contested the proceedings also before the Registrar of Trade Marks by filing an opposition which is pending.

3. Summons and notices were issued to the defendant in the present case upon which the defendant appeared in this Court and has filed reply as also the written statement. I have perused the said pleadings of the parties and have also perused the documents placed on record to which specific attention was drawn by Counsel appearing for the parties during the course of their submissions. The two competing marks when considered and pitted against each other and looked at as a whole, it would be crystal clear that except for numeral 2 in the trade mark of the plaintiff, namely, “M2 Tone”, the rest of the alphabets are the same whereas the numeral 2 is replaced in the case of the trade mark of the defendant by alphabet “V” or Roman numeral “V”.

4. Counsel appearing for the defendant, however, submitted during the course of his submissions that the plaintiff does not have a valid and proper assignment, as the deed of assignment is not yet registered by the Registrar of Trade Marks in favour of the plaintiff. The aforesaid plea of the defendant was examined and scrutinised by me very minutely. The records disclose that the said trade mark was at the first instance registered in the name of Charak Pharmaceuticals, a partnership firm which is a sister concern of the plaintiff. The trade mark “M2 Tone” was subsequently assigned by Charak Pharmaceuticals to the plaintiffs by virtue of and pursuant to the Deed of Assignment dated 1st May, 2002. The plaintiff has also applied for registration of the aforesaid assignment to the Registrar, Trade Mark, Mumbai and the said application is still pending for consideration and no final order thereon has been passed till date.

5. The plaintiff on being assigned the aforesaid trade mark by virtue of Deed of Assignment has become the owner and the proprietor of the said trade mark “M2 Tone” with effect from 1st May, 2002 and, therefore, merely because its application is pending with the Registrar of Trade Marks and no order is passed by the Registrar of Trade Marks, the same would not deprive the plaintiff from exercising and establishing its intellectual property rights. This is, however, at this stage, a prima facie opinion and the real effect and implication of the provisions of Section 45 of the Trade Marks Act, 1999 shall have to be effectively considered as strong reliance on the said provision has been placed by Counsel appearing for the defendant. But the aforesaid issue shall have to be taken up during the trial and, at this stage, when the injunction application is being considered and argued, such a plea taken would not and could not be construed as a bar for considering as to whether or not a case for grant of temporary injunction is made out. In this connection, reference may be made to the decision of this Court in Modi Threads Limited v. Som Soot Gola Factory, AIR 1992 Delhi 4, wherein this Court has held that even though the application of the plaintiff for transferring the registered trade mark in its name in the office of the Registrar was still pending for consideration by the Registrar of the Trade Marks, it would not debar him to protect the violation of its trade mark at the hands of unscrupulous persons by filing an action in Court of law for injunction and, therefore, the defendants could not be allowed to make use of said trade mark in order to get themselves illegally enriched earning upon the reputation built up qua that trade mark by the predecessor-in-interest of the plaintiff.

6. Reference may also be made to the decision of the Division Bench of this Court in State Trading Corporation of India Limited v. Government of People's Republic of Bangladesh, 63 (1996) Delhi Law Times 971 (DB) wherein it was held that by the time disputed jurisdictional facts come to be tried and determined the Court is not powerless to entertain a prayer for the grant of interim relief for by the time the issue relating to jurisdiction may come to be tried and decided, the plaintiff may have suffered irreparably; nay his suit may have been rendered infructuous. Thus, the jurisdiction to grant an interim relief is there, though the jurisdictional competence of the Court to try a suit may itself be under challenge. In my considered opinion, therefore, the plea for grant of temporary injunction, at this stage, could be decided and disposed of leaving the parties to fight out the question of jurisdiction and locus standi during the trial of the present suit.

7. Now coming to the question of similarity between the two competing marks, let me examine the plea of the defendant that both the marks are dissimilar particularly in view of the fact that both the marks target at different clientele and patients. According to the defendant, the product under the trade mark “MV-Tone” is only a tonic which could be sold over the counter whereas the product of the plaintiff under the trade mark “M2 Tone” is a product for Gynaecological problem and could be sold only upon a prescription given by the Doctor. The aforesaid contention is misplaced in the context of Indian market. In this connection, reference may be made to the decision of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.., (2001) 5 SCC 73. In the aforesaid decision of the Supreme Court, the question that was raised and decided was whether the mark “Falcigo” and “Falcitab” were deceptively similar. The Supreme Court held that in a passing off action in deciding the question of deceptive similarity, the following factors have to be taken into consideration:

“(a) The nature of the marks i.e whether the marks are word marks or label marks or composite marks i.e both words and label works;

(b) The degree of resembleness between the marks, phonetically similar and hence similar in idea;

(c) The nature of the goods in respect of which they are used as trade marks;

(d) The similarity in the nature, character and performance of the goods of the rival traders;

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, their education and intelligence and the 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;

(g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”

8. It was further held in the said decision that in respect of medicinal products exacting judicial scrutiny is required if there is a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products. It was held that even though certain drugs cannot be sold across the counter, nevertheless it was not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar. The Supreme Court went on to hold that confusion and mistakes could arise even for prescription drugs where similar goods are marketed under marks which look alike and sound alike. It was also held that physicians are not immune from confusion or mistake and it was common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten and frequently handwriting is not unmistakably legible which enhance the chances of confusion or mistakes by the pharmacists in filling the prescription if the marks appear too much alike.

9. The statement that was made by Counsel appearing for the defendant, therefore, is clearly contrary to what has been laid down by the Supreme Court in the aforesaid decision. Therefore, if on analysis it is found that the two competing marks are similar either phonetically or visually, in that event temporary injunction should be granted immediately. As stated hereinabove, except for “V” replacing 2, the rest of the alphabets are the same and, therefore, both the competing marks are phonetically as also visually similar.

10. When the facts of the present case are tested by the touchstone of the factors laid down in the decision of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.. (supra), it would also be, prima facie, established that there is a degree of resembleness between the two competing marks. The nature of the goods in respect of which they are used as trade mark is also similar and the class of purchasers who are likely to buy the goods bearing the marks they require is also similar. The mode of purchasing the goods is also similar and, therefore, when weightage is given in the light of the aforesaid decision of the Supreme Court, I am of the considered opinion that both the competing marks are deceptively and confusingly similar to each other and, therefore, I am of the considered opinion that the plaintiff has been able to make out a strong case for the grant of temporary injunction in his favour and that any delay in granting the same would prejudicially affect the case of the plaintiff.

11. Accordingly, temporary injunction is granted in favour of the plaintiff and against the defendants, their servants, agents, distributors, stockists or anyone acting on their behalf from in any manner manufacturing, marketing, distributing or offering for sale any product under the trade mark “MV Tone” or any other deceptively and confusingly similar trade mark of the plaintiff, namely, “M2 Tone” till the disposal of the suit.

12. In terms of the aforesaid order, the application of the plaintiff under order xxxix rules 1 and 2, cpc stands disposed of.

C.S(OS) No. 352/2004

13. The suit be renotified on 9th August, 2004 for trial.

Application disposed of.