1. This Notice of Motion is for an injunction in a passing off action. There is, in the Notice of Motion, a prayer based on infringment. However. Mr. Tulzapurkar has very fairly not pressed, at this stage, that prayer as the Plaintiffs' application for registration of their mark “ATEN” is still pending.
2. The Plaintiffs claim that they have been using the mark “ATEN” since 1985. The figures of sales are in Ex. E to the Plaint and the amounts spent in advertisements is in Ex. D to the Plaint. Mr. Tulzapurkar submits that immediately on coming to know of Defendants' use of mark “BETEN”, they gave notice on 22nd January, 1990 and then filed this suit. An ad-interim injunction was granted on 9th April, 1990. It was however stayed by the Appellate Court and I am informed that the Defendants' Appeal was finally allowed.
3. Mr. Tulzapurkar submits that the two marks “ATEN” and “BETAN” are both visually and phopetically similar. He submits that both are for the same ailment. He submits that the mark “BETEN” has been adopted with knowledge of Plaintiffs'mark. He submits that this is clear because the Defendants, who are in the same field, were bound to know that the Plaintiffs are using the mark. He submits that there is likelihood of confusion and deception. He submits that merely, because both these products are only available on doctor's prescription does not mean that there would be no confusion???r deception.
4. I am unable to accept the submissions of Mr. Tulzapurkar. In my view, the Defendants have satisfactorily explained how they arrived at the mark “BETEN”. In my veiw, the phonetical and visual impact of the two marks are such that they are not likely to cause confusion or deception. Plaintiffs' mark starts with the letter “A”. Phonetically this is completely different and separate from the letter “B” with which the Defendants' mark starts. Thus Plaintiffs' mark will be pronounced “A-ten”. Even if the second “e” in Defendants' mark is not significantly pronounced, still the pronunciation of Defendants' mark will be “B-ten” Even visually, apart from the fact that Plaintiffs' mark starts with an “A” and Defendants' mark starts with a “B” the two ma???ks are not identical or similar.
5. Apart from the above, it is clear that the Plaintiffs' mark as well as Defendants' and other marks set out hereafter are preparations from “Atenlol”. In the market there are other products like “Atelol”, “Atenil”, “Athelin”, “Alii”, “Atnol”, “Atenex”, etc. Most of these have been shown to me Mr. Tulzapurkar relying upon the case af Corn Products Refining Co. v. Shangrila Food Products Ltd reported in AIR 1960 SC 142 submits that before any reliance can be placed on the fact that there are series of marks, the user and extent of user of these marks must be first proved. Before the Supreme Court the case was in respect of an Application for registration of a ma???k. In support of the application for registration, the fact of their being a series of mark wag sought to be relied upon. The Supreme Court was considering the case after its final disposal, where no evidence of user of extent of user of different marks had been led. It is in that context the Supreme Court held that the person who wants to rely on a series of marks, must show that these marks had acquired a reputation by user in the market. This principle therefore applies to the final hearing. At this interim stage, the Court is bound to and must take note of the fact that in the market there are a series of other marks In this view, I am supported by an unreported Order dated 21st April 1992 in Notice of Motion No. 1636 of 1990 in Suit No. 1856 of 1990 (RECKITT & COLMAN OF INDIA LTD. v. REDICROSS PHARMACEUTICALS PRIVATE LTD.)
6. Further I have seen the packings. Both the products are sold in strips, the get up of which are different Also in my view, the fact that both the product are available only on a doctor's prescription must be taken in account for the purposes of this Order.
7. Lastly in my view, balance of convenience also requires that no injunction be passed at this stage.
8. The Defehdants have been selling since 1987. Grave prejudice would be caused to them, if an injunction is issued at this stage. On the other hand the Plaintiffs can be adequately protected by the following Order
9. Lastly though not conclusive by itself, in my view, it is relevant that in all these years the Plaintiffs have not been able to show actual confusion or deception. I hasten to add that this does not mean that Plaintiffs must show actual confusion or deception. I only say that where both products have been in use for a number of years simultaneously Courts can consider relevant, the fact that there are no instances of actual confusion or deception.
10. Accordingly the only Order on the Notice of Motion is that the Defendants will continue to file in this Court every quarter in a sealed envelope the figures of sale of the products “BETEN”. There will be no Order as to costs.
11. I also clarify that all my above mentioned observarions are prima facie observations. They in no way should affect the Plaintiffs' Application for registration, which application must be decided on its merit.
12. I also clarify that in the event of Plaintiffs being registered in respect of the mark “ATEN”, they will be entitled to apply for an injunction on the bosis of inf???irgement which application will undoubtedly be considered on its merit.