Novarhs Ag v. Wanbury Ltd.

Pradeep Nandrajog, J.— I dispose of IA No. 3609/2005 filed by the plaintiff under order 39 rule 1 & 2, cpc praying that for the reasons stated in the affidavit accompanying the injunction application, the defendants, their representative, agents, assigns, successors, dealers, servants be restrained by an interlocutory injunction restraining them from manufacturing, packing, selling, distributing, marketing, dealing with any product bearing the trade mark CORIMINIC or any other trade mark deceptively similar to the plaintiff's trade mark TRIAMINIC and/or TRIOMINIC and from using a packaging/trade dress which is deceptively similar to the packaging/trade dress of the goods sold under the plaintiff's trade mark TRIAMINIC.

2. Plaintiff is a swiss company manufacturing and selling pharmaceutical preparations. First defendant is a company registered in India and upto 6.9.2004 was functioning as the distributor of the plaintiff in India. Second defendant, also a company registered in India is manufacturing a cough syrup for the first defendant. The syrup is being marketed under the trade mark CORIMINIC. Plaintiff is manufacturing and selling cough syrup under the trade mark TRIAMINIC and TRIOMINIC.

3. Case of the plaintiff is that the first defendant was a subsidiary and affiliated company of the plaintiff upto 1996 and was a licensed user of the trade mark TRIAMINIC. Post 1996, first defendant ceased to be a subsidiary of the plaintiff and the relationship between the two was purely contractual. Licence was valid upto 31.12.2001 In May 2001, plaintiff reminded first defendant that the licence agreement would come to an end on 31.12.2001 First defendant acted mala fide. It filed an application for removal of the plaintiff's registered trade mark at the office of the Registrar of Trade Marks at Mumbai and also introduced in the market an inferior product under the trade mark NUMINIC in a packaging which was deceptively similar to that of the plaintiff. Plaintiff filed a suit in this Court being suit No. 372/2002 praying that first defendant be restrained from infringing the plaintiff's registered trade mark. Parties entered into a settlement which resulted in the passing of a consent decree on 28.8.2002 As per the decree, first defendant agreed not to use the trade mark TRIAMINIC or any other mark deceptively similar thereto as also from using packaging material, label, wrapper or carton having same or similar getup, layout or colour combination as that of the plaintiff's. First defendant assigned the trade mark NUMINIC to the plaintiff. It also agreed to withdraw all litigations initiated by it. First defendant acknowledged plaintiff's proprietary right over the trade mark TRIAMINIC. Consent decree required first defendant to be appointed as a distributor and marketing agent of the plaintiff's products and accordingly plaintiff caused its subsidiary in India Novartis Consumer Healthcare Pvt. Ltd. to enter into a Distribution and Marketing Agreement on 19.12.2002 Alleging breach by the first defendant of the agreement dated 19.12.2002, plaintiff terminated the agreement on 6.9.2004 and sought execution of the consent decree.

4. It is further pleaded by the plaintiff that it's medicine under the trade mark TRIAMINIC are manufactured by M/s. Hi Tech Pharmaceuticals Pvt. Ltd. in Andhra Pradesh and M/s. Bangalore Pharmaceuticals and Research Pvt. Ltd. at Bangalore. First defendant caused a suit to be filed by its distributor, M/s. Vijay Sai Medical Distributors praying to restrain M/s. Hi Tech Pharmaceuticals Pvt. Ltd. from manufacturing or selling medicines under the trade mark TRIAMINIC. An ex parte ad interim injunction was obtained. M/s. Hi Tech Pharmaceuticals Pvt. Ltd. sought vacation of the ex parte order and in the meanwhile started manufacturing the medicine under the trade mark ‘T-MINIC’. M/s. Vijay Sai Medical obtained another order restraining M/s. Hi Tech Pharmaceuticals Pvt. Ltd. from manufacturing medicine under said trade mark. Plaintiff got the injunctions vacated. First defendant got filed another suit through another of its distributor at Chennai and obtained an injunction against the plaintiff's subsidiaries and M/s. Hi Tech Pharmaceuticals Pvt. Ltd. and M/s. Bangalore Pharmaceuticals & Research Laboratories from manufacturing and selling medicines under the trade mark TRIAMINIC and T-MINIC.

5. Plaintiff further pleads that the first defendant has now started selling cough syrup which is manufactured by the second defendant under the impugned trade mark CORMINIC. It is stated that the said product is being sold in a trade dress which is deceptively similar to the trade dress under which plaintiff is selling its goods under the trade mark TRIAMINIC. In paras 31 to 34 of the plaint, plaintiff has pleaded as under:

“31. The trade mark TRIAMINIC is registered in India under number 536819 in Class 5 and TRIOMINIC is registered in India under No. 189455 Class 5 in respect of medicinal preparations of all kinds.

32. The trade mark CORIMINIC is deceptively similar to the trade marks TRIAMINIC and TRIOMINIC and is an infringement of the aforesaid registered trade marks.

33. The packaging, getup, labels of goods sold under the trade mark CORIMINIC is deceptively similar to the packaging, getup and labels of the plaintiff's products sold under the trade mark CORIMINIC and amounts to passing off of the defendants products as and for the plaintiff's products.

34. The use of the trade mark CORIMINIC and the deceptively similar packaging by the first defendant is in violation of the terms of the Consent Decree.”

6. Defence of the defendants is that it is the plaintiff which is in breach of the consent decree. In any case, the trade mark CORIMINIC is distinct from the trade mark TRIAMINIC and TRIOMINIC. It is further pleaded that the trade dress of the two products is distinct and dissimilar. Defendants deny having anything to do with the two suits filed in Andhra Pradesh and at Chennai, reference whereof has been made by the plaintiff in the plaint. It is further pleaded that the first defendant had sought registration of the trade mark CORIMINIC on 25.2.2000 vide application No. 905998 at Mumbai and the mark was advertised in the T.M Journal in March 2003 to the plaintiff's knowledge. It is further pleaded that first defendant has been selling medicine under the trade name Coriminic-X since the year 2000 to the knowledge of the plaintiff. It is stated that defendant No. 1 has only now marketed a brand extension of CORIMINIC in March 2005 as Coriminic Syrup, Coriminic Drops and Coriminic Tablets.

7. Post completion of the pleadings, defendants filed an affidavit stating as under:

“3. I say that the word “Coriminic” is derived from two words viz.,

CORYZA—means in English language COLD (Copy of an extract from MedTerms Medical Dictionary)

MINIC—is derived from the word AMINE (PHENIRAMINE) meaning this ingredient mimics certain functions of the central nervous system. In medical terms therefore, called as SYMPATHOMIMETIC DRUGS.

Thus the word MINIC is a general word but coined with different words such as CORIMINIC, TRIAMINIC, etc.

4. I further say that Minic is used in large number of drugs whose trade marks are duly registered such as:

DIOMINIC

DEXAMINIC

BETAMINIC

PARAMINIC

COLDAMINIC

OMINIC

AMINIC

NUMINIC

SUDOMINIC

IOMINIC

5. I say that “Minic” is a common/descriptive/generic/non-proprietary word over which the plaintiff cannot claim monopoly.

6. I say that the contention that the plaintiff was not aware of Coriminic being marketed since the last 5 years i.e since the year 2000 is absolutely false. The defendant No. 1 is filing herewith separately additional documents, which would demonstrate beyond an iota of doubt that the plaintiff being a well known large Multinational Company was fully aware of the existence of Coriminic brand since March-April 2000.

7. I say that from the records of defendant No. 1, the following is statement of sales of Coriminc-X brand:

YEAR QUANTITY VALUE (Rs. in lacs approx. March 2000 to March 2001 395830 118.04 April 2001 to March 2002 481381 143.55 April 2003 to March 2003 235715 70.27 April 2003 to March 2004 307376 91.92 April 2004 to February 2005 279515 87.76

8. I say that amongst the list of additional documents filed by defendant No. 1 is a report of the Operation Research Group (ORG), Baroda, which is a joint venture of Pharmaceutical Division of CAN-ielsen ORG Marg Research Ltd. and Health. The said ORG report is subscribed by all pharmaceutical companies. The report gives a variety of information such as date of launch, market share, sales volume, etc. covering the entire country zone wise. The report for the period Jan-March 2000 mentions the product “Coriminic” brand and “Triaminic” Brand in the same page. Defendant No. 1 has filed herewith separately a representative's sample of the ORG report for the year 2000, which may kindly be referred to and relied upon. It is inconceivable that the plaintiffs would not have had an opportunity to scan through the report where their product's name is mentioned and also of Coriminic.

9. I say that the trademark “Coriminic” and “Triaminic” are entirely different. The packaging, color, style, fonts, type phase, letters, composition, presentation, etc. is entirely different from that of Triaminic. There is also no phonetic similarity between the two. A perusal of the packaging of the product would corroborate the contention of Defendant No. 1.”

10. Since issue whether the first defendant is or is not in breach of the consent decree passed in suit No. 372/02 will be decided in the proceedings initiated by the plaintiff for execution of the decree and since admittedly the distribution agreement between the parties is no longer operative, learned Counsel for the parties restricted arguments in the present proceedings for disposal of the injunction application limited to the question whether there was an infringement of the registered trademarks TRIAMINIC and TRIOMINIC of the plaintiff and in the context of the trade address adopted by the defendants for the product CORIMINIC whether said defendants were attempting to pass off their goods as that of the plaintiff.

11. Mr. P.V Kapoor, learned Senior Counsel appearing for the plaintiff urged the following points:

(i) That the word CORIMINIC is phonetically similar with the word TRIAMINIC and/or TRIOMINIC and applying the test of an ordinary buyer with the usual imperfect memory, since both products were cough syrups, plaintiff had a strong prima facie case. There was every likelihood of deception and confusion and therefore, lest injury be caused to the public, balance of convenience lay in granting the injunction. Counsel urged that plaintiff had spent considerable sum of money in publicity of its products and as a consequence irreperable loss and injury would be caused to the plaintiff if injunction was refused.

(ii) Denying that the defendant was selling its product under the trade mark CORIMINIC since 2000 as claimed by the defendant No. 1, Counsel urged that assuming said defendant was selling its product under the trade mark CORIMINIC since the year 2000 as claimed by it, since adoption of the name/mark was dishonest and was during the period defendant No. 1 was bound by the non-compete Clause No. 11 of the consent agreement between the parties, defendants were not entitled to any benefit on said account.

(iii) That the issue had to be dealt with in the overall perspective being the phonetic similarity of the trade marks, that the products were pharmaceutical preparations for the cure of cough and the overall perview of the label of the bottle and the packaging material in which the bottle was put and offered for sale. Elaborating in the context of the packaging material in which the bottle was put and offered for sale, Mr. P.V Kapoor, learned Senior Counsel brought out the undernoted features in the packaging material of the plaintiff and the defendants for the syrup TRIAMINIC and CORIMINIC—

(a) Both packaging materials had a white backdrop with bands in orange colour.

(b) Type face in which printing was effected in the packaging material was identical.

(c) The general data and style of the two packaging material was common from the point of view of a common man having seen the plaintiff's packaging material and having an imperfect recollection thereof viewing/seeing the packaging material of the defendant and from memory linking the same to that of the plaintiff.

12. Per contra, Dr. Abhishek Manu Singhvi, learned Senior Counsel appearing for the defendants urged the following:

(i) That the word CORIMINIC was not phonetically similar to the words TRIAMINIC and TRIOMINIC. The word CORIMINIC was derived from two words, viz. CORYZA and MINIC; the former meaning cold and the latter being a derived word from the word AMINE (PHENIRAMINE), meaning this ingredient minutes certain functions of the central nervous system. Counsel urged that in medical terms these drugs were called SYMPATHOMIMETIC DRUGS. Elaborating, Dr. Singhvi submitted that the word MINIC is a generic word, coined with different words such as CORIMINIC, TRIAMINIC, DIOMINIC, DEXAMINIC, BETAMINIC, PROMINIC, SUDOMINIC, NUMINIC, OMINIC, PARAMINIC, etc. Counsel urged that MINIC is used in a large number of drugs as a part of their trademark/name such as DIOMINIC, DEXAMINIC, BETAMINIC, TRIAMINIC, PARAMINIC, OMINIC, NUMINIC, SUDOMINIC, IOMINIC, PROMINIC, PRIAMINIC, WELMINIC, ATMINIC, RHIMINIC, SWIMINIC, DIMINIC, AMINIC, CORIMINIC, COLDAMINIC, MICNICS, CORIMINIC, MINICLIN, MINICYCLIN, MINICLYSS, MINICYCLINE, MINICEFAORY SYRUP, MINICORT, NUMINIC SYRUP, MINICARE, MINICOLD, MINICITIZOL, RHINOMINIC SYRUP, DOMINICKS, MINICAL, MINISEC, MINICYCLIN.

(ii) Plaintiff's syrup contained the formulation CHLOR PHENIRAMINE MALEATE PHENYLEPHRINE HYDROCHLORIDE but that of the defendant contained the formulation PSEUDOEPHEDRINE HYDROCHLORIDE CHLOR PHENIRAMINE MALEATE MENTHOL. Counsel further urged CORIMINIC was alcohol free and could be used by adults as well whereas TRIAMINIC was meant only for children below the age of 12 years. Counsel submitted that this was a relevant consideration to decide the issue of injunction.

(iii) Relying upon popular medical journal and magazines such as Indian Drug Review Volumes VIII and DC, May-June, 2002 and Volume X January-February, 2004, Drug Today April/June, 2002, Counsel pointed out that the defendants products “CORIMLNIC-X” was listed in the said journals as a product available in India. Reliance was also placed on a report compiled by Operation Research Group pertaining to information such as date of launch, market share, sales, etc. of pharmaceutical preparations for the period January-March, 2000 which showed sale of CORIMINIC-X and also TRIAMINIC by the defendant. Reliance was also placed on the trade mark journal where, on 13.11.2003, the trade mark CORIMINIC was advertised pursuant to application by the defendant seeking registration, inviting opposition, if any. It was urged that these publications are popular in the pharmaceutical industry and are subscribed by all pharmaceutical companies and it was therefore inconceivable that the plaintiff was not aware of the product “COROMIC-X”. Counsel urged that for the purposes of interim relief, defendant was entitled to a presumption that the plaintiff has either acquiesced or waived its rights if any. In any case, there was a delay by the plaintiff in approaching the Court and having allowed the defendants to sell the product for so many years and allowed the defendants to build its reputation, on grounds of delay and laches injunction should be refused.

(iv) Counsel urged that the packaging, colour, style, fonts, type face, letter composition, etc. of the product TRIAMINIC and CORIMINIC are wholly different. Following features, stated to be reflecting sharp distinction between the two were pointed out:

CORIMINIC SYRUP

TRIAMINIC SYRUP

Composition of CORIMINIC-X and COROMINIC syrup are totally different. No Anti-Pyretic effect.

(i) TRIAMINIC syrup has a different composition.

(ii) TRIAMINIC Plus has Anti-Pyretic effect in addition to other symptoms.

The writing style of CORIMINIC Syrup is in Orange coloured letters with a white background.

The writing on TRIAMINIC is in stern black with a background of a dark orange band.

The pictorial description indicating running nose, stuffy nose are totally different.

Any common man can distinguish this difference.

Claims to cure condition like common cold, allergic rhinitis, sinusitis in adults and children.

Claims to cure common cold, hay fever, sinusitis and upper respiratory track disorders and fever in case of TRIAMINIC Plus.

There is an indication that it is alcohol free.

There is no such indication.

The depiction of trade mark are totally different. It is indicated in small circle above the letter ‘C’ with ‘TM’.

It is indicated in a small circle with the word ‘R’.

The caution note is very short.

The caution note is very elaborate.

The dosage indication that it is also applicable to adults.

The dosage indicates applicable to only upto the children of 6 years old.

CORIMINIC contains PSEUDOEPHEDRINE which falls under the category of NARCOTIC DRUGS.

There is no such drug component in TRIAMINIC.

There is a band on the top of the carton with different colour shades (vignette).

There is no such band with different coloured shades.

(v) The pharmaceutical preparations are not sold like general merchandise and are sold by Chemists on prescription by doctors and therefore the test of a common man getting deceived cannot be applied as applicable to general merchandise. Under the law of the land, eligibility for licence to carry on trade as a Chemist is a degree in Pharmacy and therefore Chemists would know the difference between the two cough syrups.

13. In rejoinder, Mr. P.V Kapoor, learned Senior Advocate stated and argued that the defendants have consciously not placed on record any material to show that they had incurred any expenditure for publicity of their cough syrup and that sales, if any, in the past were surreptitious. Qua the report of Operations Research Group relied upon by the defendants, Counsel argued that admittedly defendant No. 1 was selling pharmaceutical preparation under the trademark NUMINIC as evidenced by the settlement arrived at between the parties, which pharmaceutical preparation was not listed in the report relied upon. It was urged that this showed that the report could not be relied upon and authenticity of information contained therein was doubtful. Qua the other journals relied upon, Counsel contended that the information contained therein never came to the notice of the plaintiff. Counsel reiterated the submissions made in the opening arguments. On the issue of acquiescence and delay and laches, Counsel urged that if the adoption was dishonest, acquiescence and delay as also laches could not stand in the way of the plaintiff.

14. On the issue of phonetic similarity and dissimilarity, learned Counsel for the parties referred to various judgments to bring home the point as to which words were found to be phonetically similar and which were found to be otherwise. I need not recap all the decisions inasmuch as a learned Single Judge of this Court A.K Sikri, J. in the decision 2002 (25) PTC 262 (Pfizer Products Inc.…Plaintiff; v. B.L & Company & Ors.…Defendants., while dealing with the words ‘viagra’ and ‘penegra’ has catalogued the various decisions where it was found that there was no phonetic similarity, and another learned Single Judge of this Court, M.B Lokur, J. in the judgment 2004 (v) Syncom Formulations…Petitioner v. Sas Pharmaceuticals…, has listed the decisions where phonetic similarity was found.

15. Since I am dealing with the issue at an interlocutory stage, I would be transgressing my jurisdiction if I travel beyond the well settled principle of law that at interlocutory stage matter has to be considered only from prima-facie point of view.

16. Section 2(h) of the Trade Marks Act, 1999 defines the words “deceptively similar” as under:

“deceptively similar” a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles the other mark as to be likely to deceive or cause confusion.”

17. Few judgments catalogued in the two decisions of A.K Sikri, J. and M.B Lokur, J. noted in para 11 above determined the issue by examining the similarities in the competing marks as also the dissimilarities. This approach of looking at the essential features by taking into account differences as well was affirmed by their Lordships of the Supreme Court in the decision (2000) 5 SCC 573, S.M Dyechem Ltd. v. Cadbury (India) Ltd. page 596 of the report it was observed as follows:

“It appears to us that this Court did not have occasion to decide, as far as we are able to see, an issue where there were also differences in essential features nor to consider the extent to which the differences are to be given importance over similarities. Such a question has arisen in the present case and that is why we have referred to the principles of English Law relating to differences in essential features with which principles, in our opinion, are equally applicable in our country.”

18. A subsequent three Judges Bench decision took a contrary view. The decision is 2001 PTC 300 (SC), Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd.. page 312 of the report, after noting the passage quoted above in the judgment in S.M Dyechem's case (supra), Their Lordships of the Supreme Court observed:

“We are unable to agree with the aforesaid observations in Dyechem's case (supra). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception or causing confusion.”

19. The decisions noted by Their Lordships of the Supreme Court in Cadila Health Care case (supra) for arriving at the conclusions aforenoted are (i) AIR 1953 SC 357, National Sewing Thread Co. Ltd., Chidambaram v. James Chadwick & Bros. Ltd., (ii) 1960 (1) SCR 968, Corn Products Refining Co. v. Shangrila Food Products Ltd , (iii) AIR 1963 SC 449, Amritdhara Pharmacy v. Satya Deo Gupta , (iv) AIR 1965 SC 980, Durga Dutt Sharma v. N.P Lavoratories and; (v) (1969) 2 SCC 716, F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manner & Co. Pvt. Ltd.

20. Further, in Cadila Health Care case (supra), at page 314 of the report, Their Lordships held that a higher standard has to be applied to medicinal products and that the Courts need to be particularly vigilant where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. Further, at page 315 of the report, Their Lordships, dealing with the argument that medicines are sold by Chemists who are trained persons and are less likely to be deceived, observed as under:

“In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.”

21. Their Lordships noted with approval the observations made by Assistant Commissioner, Leeds of the Patent Office in R.J Strasenburgh Co. v. Kenwood Laboratories INC.; 1955, 106 USPQ 379 as under:

“Physicians are not immune from confusion or mistake. Furthermore it is common knowledge that many prescriptions are telephoned to the pharmacists and others are hand written, and frequently handwriting is not unmistakenably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescriptions if the marks appear to much alike when handwritten or sound too much alike when pronounced.”

22. The decision in Cadila Health Care case concludes with the following guidelines for deciding the question of deceptive similarity:

“(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, 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.”

23. Submissions made by Dr. Singhvi that composition of the two cough syrups are different and that they are sold under medical prescription and therefore on said counts injunction should be refused, run contrary to the decision in S.M Dyechem's case.

24. Mere delay in brining an action for infringement of a trade mark or for passing off is no ground for refusing an injunction. The grant of injunction becomes necessary if it prima facie appears that the adoption of the mark was dishonest. See 2004 (28) PTC 121 (SC), Midas Hygiene Industries Pvt. Ltd. v. Sudhir Bhatia

25. Acquiescence by itself is also no ground to non suit a plaintiff, if otherwise his claim is found to be genuine. In Willmott v. Barber, (1880) 15 Ch.D 96 Fry, J. said:

“It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud and in my views this is an abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as would make it fraudulent for him to set up those rights.”

26. Acquiescence is nothing but one facet of delay. If a plaintiff stands by knowingly and lets a defendant build up an important trade until it has become necessary to crush it, the plaintiff would be stopped by acquiescence. It would be a fraudulent conduct to allow knowingly somebody to spend money to build a reputation and then try and crush it.

27. It is important to distinguish between mere negligence and acquiescence as was observed by Sr. John Romilly in HarCourt V White 28 Bear 303. As explained in Power Control Appliances v. Sumeet Machines Pvt. Ltd., J.T 1994 (2) SC 70 (Para 29), acquiescence is sitting by when another is invading the rights and spending money on it. It is a course of conduct inconsistent with the claim for exclusive rights in a trade mark. It implies positive acts, not mere silence or inaction such as is involved in laches. The observations are another form of knowingly sitting idle.

28. Where defence of delay, laches or acquiescence is put forth, another consideration needs to be put in the scale to see where it tilts. As observed by Romer J. in the matter of an application brought by J.R Parkington and Co. Ltd., (1946) 63 RPC 171, the circumstances which attend the adoption of a trade mark in the first instance are of considerable importance and honesty of user is of importance. If the user in its inception was tainted it would be difficult in most cases to purify it subsequently. Reasons for this stand explained by B.N Kirpal J. (as His Lordship then was) in the decision AIR 1990 Delhi 19, Hindustan Pencils Pvt. Ltd. v. India Stationary Products Co. In para 31, it was observed:

“Even though there may be some doubt as to whether laches or acquiescence can deny the relief of a permanent injunction, judicial opinion has been consistent in holding that if the defendant acts fraudulently with the knowledge that he is violating the plaintiff's rights then in that case, even if there is an inordinate delay on the part of the plaintiff in taking action against the defendant, the relief of injunction is not denied. The defence of laches or inordinate delay is a defence in equity. In equity both the parties must come to the Court with clean hands. An equitable defence can be put up by a party who has acted fairly and honestly. A person who is guilty of violating the law or infringing or usurping somebody else's right cannot claim the continued misuse of the usurped right.”

29. Defendants have not brought on record any publicity material to show that they had been widely advertising their product. Assuming that they were manufacturing and selling cough syrup since 2000 and some journals and publications had recorded the existence of the cough syrup CORIMINIC-X, in the absence of any material to show that plaintiff was aware of its existence, on the principles of law noted above, it cannot be said that plaintiff knowingly sat quiet and allowed the defendants to build a reputation.

30. That takes me to the real issue debated at the Bar. Is the word CORTMINIC phonetically similar to either the word TRIAMINIC or the word TRIOMINIC so as to cause confusion?

31. Principles to be kept in mind while deciding on the resemblance or not, and the legal pronouncements have been noted by me in paras 13 to 19 above. One factor stands omitted and I note the same. In re: Harrods’ Application, (1934) 52 R.P.C 65 (at page 70), it was held:

“Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that, where those two marks contain a common element which is also contained in a number of other marks in use in the same market such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used.”

32. Prima facie MINIC is a generic word. It is a part of the trade name of various drugs referred to by Dr. Singhvi as noted in para 9(i) above. Used with a few alphabets in the prefix, various trade names exist, having MINIC as the suffix. This is a relevant circumstance to judge the conflict between the plaintiffs marks and the defendants. Let me split the three words, CORIMINIC, TRIAMINIC and TRIOMINIC into prefix and suffix:

Prefix Suffix CORI MINIC TRIA MINIC TRIO MINIC

33. I see no phonetic similarity between CORI and TRIA or TRIO. Merely because MINIC is common to all three makes no difference. I find no phonetic similarity. The words cannot be slurred over in pronunciation. I see no likelihood of deception when the three words are written for the reason, the letters ‘RI’ in the prefix are the last two letters in the prefix CORI and the middle two letters in the prefix TRIA and TRIO. I see no likelihood of confusion or mistake if the prescriptions are telephoned to the pharmacist or are handwritten (situations contemplated in the decision in R.J Strasenburgh Co. v. Kenwood Laboratories (supra).

34. It is not a case that plaintiff is the only person selling pharmaceutical preparations using the word MINIC. If that was so, it was perhaps arguable from the side of the plaintiff that on account of wide sale of medicines using the word MINIC, public associates MINIC as a series of plaintiff's medicines.

35. Visually seen, CORIMINIC cannot be said to be deceptively similar to the words TRIAMINIC or TRIOMINIC.

36. In para 3 of their affidavit filed, defendants have explained how they coined the word CORIMINIC. I have noted the contents in para 7 above. I need not repeat. Defendants have prima facie not copied from the plaintiffs, much less dishonestly.

37. On the issue of the label and the carton; no copyright has been claimed by the plaintiff in the design thereof. Plaintiff can have no monopoly over the orange colour. Trade dress similarity was alleged by the plaintiff qua the packaging material used by the plaintiff for its product TRIAMTNIC syrup. Orange band is used by the plaintiff on roughly 1/6th of the packaging paper. The band is about 3 mm from the top edge of the packaging paper. The words ‘Triaminic Syrup’ are printed in black colour on the orange strip. Defendants packaging paper has an orange strip at the top edge with 4 shades of the colour virtually constituting 4 rectangles of different orange shades. The width of the strip is half that of the plaintiff i.e is on roughly 1/12th of the packaging paper. Beneath the orange strip the words ‘Coriminic Syrup’ are printed in deep orange colour. Both packaging papers are otherwise in white colour. On the white part of the paper various informations on all 4 sides are given. I find no similarity thereon.

38. Plaintiff having failed to establish a prima facie case, I decline the relief prayed for. However, defendants shall keep a separate record of Coriminic Syrup manufactured and sold by them for the reasons, should plaintiff succeed, post evidence, said sales would be relevant.

39. I.A No. 3609/2005 is dismissed.

40. No costs.

IA dismissed.