K. Ramamoorthy, J.:— The plaint was presented on 26.5.94 for injunction against the defendant for infringement and passing off. On 30th May 1994 ad-interim injunction was granted in the following terms:—
“I.A 5218/94
Notice for 13th July 1994. Meanwhile, defendant is restrained from manufacturing and selling the medicines under the trade name VOLTA-K. Compliance of Order 39 Rule 3 CPC shall be done within one week.”
2. On 27.8.94 the plaintiff amended the plaint. The plaintiff is a Company brought into existence under the provisions of laws of Switzerland having its principal place of business at 141, Klybeck Strasse, Basle, Switzerland.
3. It is stated in the plaint that the plaintiff is engaged in the business of marketing, medicinal and pharmaceutical preparations for several years. DICLOFENAC SODIUM is one of the original products of the plaintiff. Prior to 1960 the plaintiff adopted the trade mark VOLTAREN for the treatment of antirheumatic, anti inflammatory, antipretic product containing the drug DICLOFENAC SODIUM. In paragraph 3 of the plaint, it is stated that plaintiff is the registered proprietor of the trade mark VOLTAREN in India under the trade mark number 204862 with effect from 19th September 1961 in class 5 in respect of pharmaceutical preparations and substances for human and veterinary use. By virtue of the registration, the plaintiff is exclusively entitled to use the trade mark VOLTAREN. The plaintiff has stated in paragraph 4 about the sales figures. Paragraph 4 reads as follows:—
“That there has been world wide sales of pharmaceutical products under the trade mark VOLTAREN. The approximate sales figures in Rs. for the past three years of the trade mark VOLTAREN are as under:
YEAR SALES IN RUPEES 1991 3900 Crores 1992 3800 Crores 1993 3900 Crores”
4. In paragraph 5 the plaintiff has given the advertisement and marketing expenses in the following terms:—
“That there has been worldwide advertising and direct marketing expenses involved in the world wide efforts by the plaintiff to promote pharmaceutical products under the trade mark VOLTAREN. The approximate direct marketing expenses in Rs. for the past three years of the trade mark VOLTAREN are as under:
YEAR EXPS. IN RUPEES 1991 600 Crores 1992 580 Crores 1993 610 Crores”
5. It is the case of the plaintiff that the products of the plaintiff under the trade mark VOLTAREN have acquired a unique and enviable reputation and had generated a lot of goodwill. The plaintiff has also acquired a valuable common law right in the trade mark VOLTAREN. It is stated in that paragraph “The reputation and goodwill of the trade mark VOLTAREN extends throughout the WORLD including in India. There is no other well known pharmaceutical preparation commencing with the prefix VOLTA and the prefix VOLTA has come to be recognised as an abbreviation for the trade mark VOLTAREN.”
6. It is stated by the plaintiff that the use of the trade mark VOLTAREN or the prefix VOLTA by any other person, other than the plaintiff, will lead to confusion and deception amongst the purchasing public and also the medical profession and the trade. Paragraph 8(a) was introduced by the plaintiff in the amended plaint in the following terms:—
“That Hindustan Ciba Geigy Limited of 14 Jamshedji Tata Road, Bombay 400 020 is an associate company of the plaintiff. That by virtue of License agreement dated 9th April 1981 Hindustan Ciba Geigy Limited is the licensed user of the said registered Trade Mark VOLTAREN in India. That the plaintiff is also the registered proprietor of the trade mark VOLTAREN in India under number 195 739 in class 5 in respect of medicinal and pharmaceutical preparations and the trade mark SLOW-K under number 446207B in respect of preparations of Potassium Salts for pharmaceutical purposes.
The registration of the trade mark SLOW-K and VOVERAN are in force and Hindustan Ciba Geigy Limited are the Licensed users of the said trade marks VOVERAN and SLOW-K in India. In fact, Hindustan Ciba Geigy Limited is licensed to manufacture medicines containing Diclofenac Sodium in India by virtue of a manufacturing license issued by the Drugs Controller (India) dated 5th September 1985. Hindustan Ciba Geigy Ltd. is manufacturing medicines containing diclofenac sodium under the trade mark VOVERAN in India and the sales for the past three years are as follows:
YEAR SALES IN RUPEES 1991 126 Crores 1992 212 Crores 1993 242 Crores
Hindustan Ciba Geigy Limited is spending considerable sums in promoting medicines containing diclofenac sodium in India. The promotional material of Hindustan Ciba Geigy Limited for diclofenac sodium contain reference to both the trade marks VOLTAREN and VOVERAN. The promotional expenses in Rs. for the past three years incurred for diclofenac sodium are as under
YEAR EXPS. IN RUPEES 1991 ???,99 Crores 1992 1,2 Crores 1993 1.15 Crores
Internationally, the mark VOLTAREN is used for diclofenac sodium and the trade marks CATAFLAM/VOLTAREN RAPID are used for medicines containing diclofenac Potassium. The defendant has adopted the trade mark VOLTA-K combining VOLTA from VOLTAREN and-K from the plaintiff's produce SLOW-K.”
7. The plaintiff asserts that adoption of the trade mark VOLTA-K by the defendants is illegal. In paragraph 9 the plaintiff has referred to the notice issued and the reply from the defendants. Para 9 reads as follows:—
“That the defendant is marketing pharmecutical products and has adopted the trade mark VOLTA-K in respect of its product containing DICLOFENAC POTASSIUM. The defendant is selling its products in New Delhi. The defendant's product VOLTA-K is indicated as a rapid acting analgesic and anti inflammatory. The plaintiff first saw the introductory advertisements issued by the defendant appearing in the Hindustan Times New Delhi on 8 April 1994. Immediately on seeing the advertisement the plaintiff caused a letter to be issued to the defendant to cease and desist from using the trade mark VOLTA-K on 14 April 1994. The defendant replied through their attorney's letter dated 2 May 1994 that they did not admit the rights of the plaintiff and that the refuse to cease and desist from using the trade mark VOLTA-K.”
8. The plaintiff asserts that the publicity material used by the defendants would show the mala fide intentions of the defendants. It is stated by the plaintiff that in the publicity material the defendant has stated the drugs which is widely used worldwide is diclofenac sodium and the defendant's product is Diclofenac Potassium and Diclofenac Potassium is pharmaceutically superior to Diclofenac sodium. It is submitted by the plaintiff that defendant's adoption of the trade mark is mala fide and fraudulent. The chemical symbol for potassium is K and, therefore, the product of the defendant will be perceived as a potassium (K) version of the well known VOLTAREN products. The only reason for the adoption of the VOLTA-K by the defendants is to attempt to sell under the flag as VOLTAREN and, therefore, the defendant's product is an instrument of fraud in the hands of the retail chemists. The use of the word VOLTA-K by the defendant is deceptively similar to the trade mark of the plaintiff. The overall impression created by the defendants' product is that it is associated with the plaintiff or its product VOLTAREN. The defendants are trying to take advantage of tremendous goodwill and reputation generated by the tremendous publicity made by the plaintiff at a very heavy cost. The plaintiff has referred to in paragraph 11(a) about the defendant using the trade mark of the plaintiff EMULGEL about which proceedings are pending in the High Court of Madras. The plaintiff has further stated in the following terms in paragraph 11(a):—
“Further in the promotional material used for the product VOLTA-K, the defendant has deliberately adopted motifs like the green apple concept, poses of models, graphs, lay outs, charts, textual matter including phrases, clauses, sentences and whole paragraphs which are straight lift offs or adaptations from advertisement material used by the plaintiff for promoting their medicines under their trade marks, VOLTAREN/VOLTAREN RAPID/CATAFLAM/VOLTAROL (variation of the VOLTAREN used in the U.K) Still further, at the time of selling the product VOLTA-K to doctors, the representatives of the defendant are trained to tell the doctor that VOLTA-K is a research product of the plaintiff and these representatives are keen handing out to doctors abstracts of trials done on the plaintiff's product CATAFLAM as if these trials were in fact, conducted on the defendant's medicine under the trade mark VOLTA-K. An impression is sought to be created that medicines under the trade mark VOLTA-K is in some way related to VOLTAREN or the plaintiff. Not only has the defendant used data generated in respect of the plaintiff's product to obtain permission for selling its product but it has also distorted this data to suit itself, pass off its product as that of the plaintiff and is able to sell its product at a price almost three times the price at which the plaintiff's associate company is selling the comparable product under the trade mark VOVERAN in India.”
9. It is asserted by the plaintiff that by reason of wrongful and illegal use of the trade mark VOLTA-K the defendant has been passing off and/or likely to pass off his goods. In paragraph 18 the plaintiff has prayed for the following reliefs:—
“a) An order for permanent injunction restraining the defendant, its directors, servants, agents, dealers and distributors as the case may be, and retail chemists from carrying on any business under or by reference to the trade mark VOLTA-K or any other trade mark or trade name which is identical to and/or deceptively similar or so resembling the plaintiff's trade mark VOLTAREN or containing the expression VOLTA and therefore infringe plaintiff's statutory rights in their registration of the trade mark VOLTAREN under the trade mark registration number 204862.
b) An order for permanent injunction restraining the defendant, its directors, servants, agents, dealers and distributors as the case may be, and retail chemists from carrying on any business, manufacturing, selling, marketing, offering for sale, advertising any product particularly a medicinal or pharmaceutical product under or by reference to the name “VOLTA-k” or any other trade mark/name which is identical to and/or deceptively similar or so resembling the plaintiff's trade mark “VOLTAREN” or containing the expression VOLTA as is likely to deceive or cause confusion and from in any other manner passing off or attempting to pass off or enabling or assisting others to pass off any similar goods not being the plaintiff's goods as or for the goods connected with the plaintiff.
c) An order of rendition of accounts of profits illegally earned by the defendants on account of the use of the impugned trade marks/trade name and a decree for the amount so found due be passed in favour of the plaintiff.
d) An order for delivery up of all impugned advertising, packaging, material or any other material including dies, blocks, negatives etc, to the plaintiff for the purpose of destruction/erasure bearing the mark “VOLTA-k”.
e) An order for costs in the proceedings.”
10. The plaintiff has filed about 23 documents. The first document is the certificate of registration issued by the Registrar of Trade Marks on 10.9.1968 stating that the trade mark Voltaren has been registered in part A of the Register in the name of CIBA Ltd., Switzerland in Clause V as of the date 19th of September 1961 in respect of pharmaceutical preparations and substances for human use and veterinary use. The second document is dated 4.9.68 by the Trade Mark Registry to the plaintiff that the Registration of Trade Mark in Clause V is renewed for 7 years from 19th September 1968. The third document is dated 25.2.1975 from the Trade Mark Registry stating that the Registration of the Trade Mark has been renewed for a period of 7 years from 19th of September 1975. The 4th document is again certificate from the Trade Mark Registry that the Registration of the Trade Mark has been renewed for a period of 7 years from 19th of September 1982 5th document is again certificate from the Trade Mark Registry stating that the Registration of the Trade Mark of the plaintiff has been renewed for a period of 7 years from 19th of September 1989. 6th document is a list of countries where the trade mark is registered and the particulars of the renewal of the trade mark. 7th document is advertisement by Ciba Geigy (Pakistan) Limited mentioning the trade mark Voltaren. 8th document at page 42 of the documents also shows the trade mark Voltaren. The 9th document at page 44 is a Journal called Post Graduate Medicine wherein also this trade mark Voltaren is mentioned.
This is an advertisement by the plaintiff in that Magazine. Document No. 10 is the copy of the Journal Arthritis & Rheumatism by the American College of Rheumatology i.e Volume 36, No. 5 May 1993. There also Voltaren is mentioned. Document No. 11 is a Journal of the American Medical Association JAMA dated May 12, 1993. There also we see the advertisement Voltaren. Document No. 12 is again a copy of the Journal Arthritis & Rheumtism by the American College of Rheumatology, Volume 36, No. 11 November 1993 wherein also we find the advertisement Voltaren. Next document 13 is extract from the book by Goodman and Gilman's title. The Pharmacological Basis of Therapeutics. At page 57 the name Voltaren is mentioned. It is stated in that book that Voltaren is available as 25-, 50- and 75- mg. enteric-coated tablets and it is also stated that Diclofenac is approved in the United States for the long-term symptomatic treatment of rheumatoid arthritis, osteoarthritis, and ankylosing spondylitis. Next document is a publication by Mr. G.F.B Birdwood, London and Mr. J.V Gantmacher, Basle under the caption “Further Experience with Voltaren”.
This paper was presented at the conference held in Bangkok in 1984. Next document is the packaging material of the plaintiff in which product is sold. Next document is plaintiff's information manual mentioning about the products. Next document is packaging material used by the defendants under the name Volta-K. Next document is the defendant's medicine strips. Next document is a receipt issued by Khemsons (Pharmaceutical Distributors) for the defendant Company and other Companies at Delhi. The receipt is dated 9.5.94 for the sale of Volta-K. Next document is defendant's advertisement made in Hindustan Times dated 8.4.94 stating that for the first time in India the medicine Volta-K is introduced by the defendant Company. Next document is an advertisement made by the defendant in Business Standard dated April 10, 1994. Next is the letter issued by the Company Secretary of the plaintiff to the defendant stating that use of the trade mark Volta-K in respect of medicine preparations of any description by the defendant will be in violation of the statutory common law vested in the plaintiff and, therefore, use of the trade mark Volta-K by the defendant would amount to an infringement and passing off. Next document is reply by the defendant dated 30.4.94 to the plaintiff. It is necessary to notice the reply wherein it is stated thus:—
“Before our clients can be in a position to send you a considered reply to your above mentioned letter, they must have certain particulars, noted below, which they would be obliged to receive from you at the earliest:
1. The precise nature of the formulation and indications pertaining to the mark VOLTAREN.
2. A specimen of the carton/label/foil pertaining to the said trade mark.
3. The year since which VOLTAREN preparations have been marketed in India.
From this it is clear that for the first time the defendant wants us to believe it had come to know about Voltaren.
11. Next document is the power of attorney issued by the plaintiff in favour of the Company Secretary.
12. The main contention of the defendant is that the name Volta is adopted by the defendant because Volta is a unit of power and that is to apprise the public that the medicine is as effective as electrical energy and the drug would give immediate relief. On 31.8.94 Mr. Madhusudan Nair has filed an affidavit stating inter-alia defendant has got a sophiscated plant and manufacturing facility at Jejuri, District Pune, Maharashtra; that the defendant Company incorporated in 1984, commenced business in 1986, that as a result of research and development on 13.1.94 the defendant made an application to the Drug Controller of India under the Drugs and Cosmetic Act, 1940, and the rules thereunder for permission to manufacture and market Diclofenac, Potassium 50 mg. sugar quoted tablets; that the defendant undertook an Open Multi-Centre Study and about 600 doctors were approached throughout the country, that selected patients were supplied with necessary dosage of Diclofenac Potassium tablets - Volta-K. The defendant has also filed a copy of the application for permission to manufacture and market Diclofenac Potassium, as annexure A to the affidavit.
It is stated by the deponent of the affidavit that the product was introduced in or about March 1994. It is also stated in the affidavit that the defendant has filed an application for rectification for expunging the plaintiff's mark VOLTAREN on the ground of non use and the mark has never been used in India as the plaintiff does not possess necessary import licence or manufacturing licence tinder the Drugs Act for manufacture or for sale and/or distribution of the product Diclofenac Potassium in India. In the application to the Drug Controller, which is dated 13.1.94, the defendant has referred to the plaintiff Ciba Geigy and the medicine manufactured by the plaintiff under the name ‘Cataflam 50 Geigy’. At the concluding paragraph, what is stated, is relevant and it reads as follows:—
“The bioavailability of Diclofenac potassium 50 mg tablets test formulation of Croslands Res. Lab. Ltd., was satisfactory and comparable with Diclofenac potassium 50 mg tablets standard formulation of Ciba-Geigy, Switzerland.
Finally we conclude that Diclofenac potassium 50 mg tablets manufactured by Croslands Res. Labs. Ltd., showed comparable and satisfactory bioequivalence profile in comparison with Diclofenac potassium 50 mg tablets (CATAFLAM) of Ciba-Geigy.”
13. Therefore, even in January 1994 the defendant was well aware of the product of the plaintiff. Not only this Cataflam but also about the other products of the plaintiff. As noticed above, in the reply to the letter sent by the Company Secretary by the plaintiff the defendant innocently asked for the details as if the defendant was not aware of the products of the plaintiff. At this stage itself, I may note that the learned counsel for the defendants submitted that under Rule 122-B of the Drugs Cosmetic Rules under the Drugs Act, 1940, it is incumbent upon the applicant before the Drug Controller to mention about the product that is existing in the market for the ailments for which the applicant wants to manufacture a drug.
14. The defendants filed about 10 documents. The first document is dated 15.6.94, a certificate issued by its Chartered Accountant stating that the defendant Company had despatched for sale 12,78,500 strips of Volta-K from 31.3.94 to 3.6.94, valued at Rs. 1,84,91,133/- to various depots and stockists. The next document is dated 15.6.94 This is also a certificate issued by the Chartered Accountant of the defendant stating that the defendant had incurred an expense of Rs. 25,11,240/- and plus parties orders pending receipt of bills for Rs. 4,80,000/- in respect of the product of Volta-K. The next document is a brochure relating to Volveran Emulgel issued by Hindustan Ciba Geigy Limited. The next document is the product manufactured by the defendant Co.
Next document is brochure issued by the defendant Co. about its progress in the manufacture of medicines. In this document no reference is made to Volta-K. Next document is product manual relating to Volta-K. Next document is the brochure issued by the defendant about the effect of Volta-K. Next document is 10th Annual Report of the defendant Co. Next document is the advertisement in the paper Hindu dated 7.4.94 relating to Volta-K. Next is a book called Integral Physicians Digest. It is stated that it gives comprehensive information for clinical practice i.e the issue of April - May 94. On the second page advertisement for Volta-K is found. Next is issue of April 94 of Indian Journal of Clinical Practice. Here also we see the advertisement for Volta-K. Next document is an issue of the Journal Medicine Update of May 94. I do not find anything relevant to the case. The defendants counsel did not refer this document at the time of argument. The next document is an issue of the Journal Post Graduate Update. I find an advertisement relating to Volta-K. Next document is the issue of drugs upto date. I do not find anything relevant to the case. Next document is a letter from Delhi State Chemists Association to the defendant. It is dated 9.6.94 The Chemists Association had requested the defendant to inform them about the withdrawls of the stocks from the market consequent on the order passed by this Court.
15. The defendant had filed the strips in and by which the Volta-K is sold. Next document is the packaging material used by the defendant. Next document is strip by the defendant in and by which their product Mobinak SR is sold (Diclofenac Sodium Tablets). The defendant has also filed the strip wherein Voveran is sold by the Hindustan Ciba Geigy Ltd. offered in his Diclofenac Sodium.
16. The defendant has filed this document to show that the Diclofenac Sodium is sold in India under the trade mark Voveran and the defendant is selling Volta-K (Diclofenac Potassium) and, therefore, there is no likelihood of any confusion.
17. The learned senior counsel Mr. Mukul Rohtagi for the plaintiff submitted that the plaintiff is a leader in the field and has established a goodwill all over the world; (2). the trade mark VOLTAREN is registered in several countries including India and it is an invented word not coined from generic description of drugs or any known medicinal preparation; (3) the mark Volta-K now used by the defendant is phonetically similar and the defendant is infringing the trade mark of the plaintiff and is passing off the goods of the plaintiff; (4) the plaintiff has shown a prima facie strong case and the balance of convenience is in favour of the plaintiff.
18. The learned senior counsel for the defendant Mr. Arun Jaitley submitted that the plaintiff is not carrying on business in India under the trade mark VOLTAREN and the plaintiff cannot rely on its trans-border reputation; (2) the trade mark Volta-K issued by the defendant representing the unit of power volt indicating its efficacy and it is not phonetically similar to VOLTAREN. In the field of medicine such prefixes are common and when the scheduled drugs are sold under the prescription of doctors there is no likelihood of deception or confusion.
19. The position of the plaintiff in the field of medicine and the volume of the business done by the plaintiff all over the world are not disputed by the defendant.
20. Before adverting to the principles enunciated in various decisions, it is better to notice the relevant statutory provisions in the Trade & Merchandise Act, 1958. Section 29 of the Act defines what is an infringement and that section reads as follows:—
“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 if the defendant establishes to the satisfaction of the court that the use of the mark of which the plaintiff complaints 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 person having the right, either as registered proprietor or as registered user, to use the trade mark.”
21. Section 2(d) of the Act gives the definition of what is deceptively similar. That section reads as follows:—
“2(d) “deceptively similar”:— A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion.”
22. The documents filed by the plaintiff would show that it has extensive business in several countries and the volume of its business is very huge and it has carved a niche for itself in the field of medicine and has earned a great reputation and goodwill. I do not refer to the supporting affidavits filed by the plaintiff as the question cannot be decided on the basis of these affidavits.
23. The documents filed by the defendant would show that it has started its business only in 1994 and it is trying to improve its business.
24. Several decisions were cited by the learned senior counsel for the parties. Though the main question posed in each of the cases was simple, Judges have been cudgelling their brains in applying the principles to the facts on hand. Though it is said “Each case must be decided on the basis of fairness, justice and common sense in relation to the whole of the issues on facts and law which are relevant to the particular case,” earlier cases invariably are referred to for arriving at a decision on the given state of facts.
25. 114 years ago in the year 1881 Lord Longdale in Jongston Co. v. Archipol Orrewing, 17 A.C 219 observed that “no man can allow to use names, marks, letters or other indicia by which he may induces purchasers to believe that the goods which he is selling are the manufacture of another person.”
26. It was also expressed in several cases that the imitation of man's trade mark in a manner plll” liable to mislead the unwary, cannot be justified showing either that the device or inscriptive upon the imitated mark is ambiguous and capable of being understood by different persons in different ways or that a person who carefully or negligently examined and studied he might not be misled.
27. If a particular word was not applied to any known product or substance other than articles manufactured and sold by the person claiming proprietory interest therein, no one else can use it. The fact about the user of the mark for manufacture by the defendant is a material circumstance to be considered. In James Crossley Eno v. William George Dunn, (1890) 15 A.C 252 the House of Lords considered the aspect of user. In the case before the House of Lords the appellant was manufacturing Eno's fruit salt which is consumed for easy digestion. The respondent therein applied for registration as a trade mark a label representing a woman holding up a dish of cakes, with the words “DONN's” fruit salt baking powder. The use of the word fruit salt was objected to by the appellant because that is infringing the rights of the appellant. The House of Lords granted injunction restraining the respondent from using the fruit salt though the words fruit and salt are common in English language.
28. Coming to the facts in the intant case, the word VOLTAREN is a word invented by the plaintiff. And that is so, is not disputed by the defendant. The defendant has chosen to use the name Volta-K. As I had already mentioned the reason why the defendant adopt this mark, the reason is not correct for, unit of power is ‘watts’, volt is the S.I unit of electro metric force. ‘Watt’ is a unit of electrical power represented by a current of 1 ampere flowing through a potential difference of one volt.
29. In the written notes submitted by the defendant it is stated that the word Volta is derived from Alssaundro Volta, the man who discovered the first electric battery.
30. The question is not how the defendant came to use the name Volta-K but the question is whether Volta-K is deceptively similar to Voltaren. The plaintiff might have coined the word Voltaren from different words. That is a different matter. If that is so, then the case has close resemblance to Eno's case, (1890) 15 A.C 252 where injunction was granted by the House of Lords.
31. The uncandid statement made by the defendant about the selection of the word makes me infer that the defendant has done it with deliberate intention of obtaining pecuniary advantage from the wide reputation of the plaintiff's business all over the world. As I had noticed above, the defendant gives different reasons for the adoption of the word Volta.
32. We have to remember the celebrated words of Lord Macnaughten “Eversince the Courts of equity have interfered to protect traders in the exclusive of marks and words which they have lawfully appropriated for the purpose of distinguishing the goods, it has become an established principle that this protection is not to be extended to persons whose case is not founded on truth.” The learned Judge had also observed “Unfortunately in the competition for business a trader not unfrequently endeavour to attract customer, by representing that the goods which he offers for sale are different in origin, compensation or character from what they really are. The public are constantly tempted to buy one thing when they think they are buying another.”
33. It is quite interesting to notice a case reported in 1935 R.P.C 136. This is a case decided in Chancery Division by Farwal J. Bily manufacturers of Toys applied to register the word ERECTIKO in clause 49. Gillbet & Co., makers of toys and owners of trade mark ERECTOR opposed the application. The learned Judge dealt with the approach of the Asstt. Registrar of the Trade Mark who allowed the registration of the mark and the learned Judge observed
“There are two other matters in the decision of the Asstt. Registrar which appear to me to indicate that in dealing with this question he dealt with it not quite on the right lines. He takes the two words ERECTOR and ERECTIKO and divides them into two; he eliminates ERECT from the two words and then proceeds to compare the suffix, ‘OR’ all that the suffix, ‘IKO’ and points out that there is a great difference between OR and IKO. In my judgment that is a wholly wrong attitude to adopt in considering a case of this kind. I do not think that it is right to take a part of the word and compare with a part of other word; one word must be considered as a whole and compare with the other word as a whole. In my judgment, it is quite wrong to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. There may be two words in their component parts or widely different but which read or spoken together it represents something which is so similar as to lead inevitably to confusion. I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.”
34. About the function of a trade mark, comparing ARISTOC with RYSTRA in Aristoc Ltd. v. Rystra Ltd., 1945 A.C 68 : 62 RPC 65, the House of Lords approved the statement of law by Luxmoore, LJ in the Court of Appeal, which was subject of appeal before the House of Lords. Luxmoore, LJ said “The House of Lords approved of what Bown Lord Justice said about trade mark in ‘Inrepowlls’ trade mark 1893, 2 Chancery Division 388 where he said, it seems to me the answer is to be given by the simplest consideration of what is really the function of a trade mark. The function of a trade mark is to give an indication to a purchaser or possible purchaser as to the manufacture or quality of goods to give an indication to his eye of the trade sources from which the goods come or the trade hands through which they pass on their way to the market.”
35. The learned senior counsel for the plaintiff referred to a number of cases to bring home his point that Volta-K is phonetically similar to Voltaren and, therefore, it is deceptively similar and defendant by adopting the word Volta-K is guilty of infringement and passing off.
36. The learned senior counsel for the plaintiff relied upon the following decisions:—
1. Astra-IDL Limited, Plaintiff v. TTK Pharma Limited, Defendant, AIR 1992 Bombay 35.
2. Amba SLal Sarabhai Enterprises Ltd. v. Sara Pharmaceuticals, 1982 PTC 214.
3. Amritdhara Pharmacy v. Satya Deo Gupta , 1963 S.C 449.
4. Atlas Cycle Industries Ltd. v. Hind Cycle Limited, ILR (1973) I 393
5. Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 S.C 980.
6. Ranbaxy Laboratories Ltd.…Plaintiff; v. Dua Pharmaceuticals Pvt. Ltd.…Defendant., Defendant, AIR 1989 Delhi 44.
7. Pidilite Industries Pvt. Ltd. v. Mittees Corporation, AIR 1989 Delhi 157.
8. Corn Products Refining Co. v. Shangrila Food Products Ltd , Respondents, AIR 1960 S.C 142.
9. Aristoc, LD. v. Rysta, LD., 1945 (62) RPC 65.
10. B.K Engineering Company, Delhi, Appellant v. U.B.H.I Enterprises (Regd.) Ludhiana, AIR 1985 Delhi 210.
11. Avis International Ltd. petitioner v. Avi Footwear Industries, AIR 1991 Delhi 22.
12. Plaza Chemical Industries, petitioners v. Kohinoor Chemical Co. Ltd., Respondents, AIR 1973 Bombay 191.
13. Apple Computer Inc.…Plaintiff; v. Apple Leasing & Industries…Defendant., 1991 (2) Delhi Lawyer 319.
14. William Grant & Sons Ltd. v. McDowell & Co. Ltd., 1994 III Apex Decision (Delhi) 65.
15. Anglo-French Drug Co. (Eastem) Ltd. (Bombay), Appellants v. Belco Pharma (Haryana), Respondent, AIR 1984 Punjab & Haryana 430.
16. Hindustan Embroidery Mills Pvt. Ltd. v. K. Ravindra & Co., 76 Bombay Law Report 146.
17. Jagan Nath Prem Nath… v. Bharttya Dhoop Karyalaya…, ILR (1975) II 225.
18. Kedar Nath…Plaintiff; v. Monga Perfumery & Flour Mills. Delhi-6…Defendant., Delhi-6, Defendant, AIR 1974 Delhi 12.
19. Gold Star Co. Ltd. v. Gold Star Industries, 1995 PTR 78.
20. Souza Cruz v. Shri N.K Jain, 1995 PTR 97.
21. de Cordova v. Vick Chemical Coy., 1951 (68) RPC 103.
37. Learned senior counsel for the plaintiff referred to the decision reported in AIR 1994 Calcutta 43 about non user. A Division Bench of the Calcutta High Court after noticing the fact that the English Trade Marks Act, 1938 and the Indian Trade Marks Act, 1958 are in pari materia in respet of availability of a defence of special circumstances in the matter of an application for removal of a registered mark from the Register of Marks. This case is not of any assistance to the plaintiff.
38. The learned senior counsel for the defendant relied upon the following cases:—
1. J.R Kapoor v. Micronix India., 1994 (3) Scale 141.
2. 64 RPC 125 In the Matter of an Application by Bayer Products Ltd. and. In the Matter of an Opposition by A. Wander Ltd.
3. 70 RPC 224, In the Matter of Automotive Products Co. Ltd.'s Application to Register a Trade Mark.
4. 33 RPC 320, In the Matter of an Application by F.W Waid & Co. Ltd. to Register a Trade Mark.
5. Standmed (P) Ltd. v. Hind Chemicals, AIR 1965 Punjab 17.
6. Amritdhara Pharmacy v. Satga DCO Gupta, AIR 1963 S.C 449
7. Ruston and Hornby Ltd. v. Zamindara Engineering Co., (1969) 2 SCC 727 : AIR 1970 S.C 1649.
8. Geigy A.G v. Chelsea Drug and Chemicals Co. Ltd., (1966) RPC 64.
9. Mount Mettur Pharmaceuticals (P) Ltd. v. Dr. A. Wander, AIR 1977 Madras 105.
10. American Cyanamid Company v. Ethicon Limited, (1975) RPC 513.
11. Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Limited, AIR 1984 Bombay 281.
12. E.R Squibb & Sons Inc.…Plaintiff v. Curewel India Limited…Defendant, AIR 1987 Delhi 197.
13. R.J Reynods Tobacco Company v. I.T.C Ltd., (1987) DLT 177.
14. Reckitt & Colman of India Limited v. Medicross Pharmaceuticals Private Limited, 1992 (3) Bom.C.R 408.
15. Griffon Laboratories (P) Ltd. v. Sindian National Drug Co. P. Ltd., 1989 IPLR 9 (Calcutta)
16. ROCHE & Co. v. G. MANNER & Co., (1969) 2 SCC 716 : AIR 1970 S.C 2069 : 1970 (2) ACR 213.
(On comparison of the trade mark ‘DROPOVTT and’ PROLOVIT, it was held that they were not deceptively similar.)
39. I have gone through all these cases and the principles emerging is the same, namely it is the duty of the Court to compare the words as a whole and considering the question of similarity in the context of the practice in the trade in question.
40. Having regard to the totality of the circumstances, including the business of the applicant Company even if the argument that the plaintiff is not carrying on any business in India cannot be correct because as submitted by the learned senior counsel for the plaintiff the plaintiff has been supplying medicines in India on various occasions and the transborder reputation cannot be likely ignored. The Madras High Court in 1995 Ahuja Intellectual Property Cases page 82 has held that there is no need that there should be actual business in India and the goodwill or reputation does not depend the availability in a particular country. The Madras High Court has referred to Daimler Benz Aktien-gesellschaft v. Hybo Hindustan, AIR 1994 Delhi 239.
41. The fact that the plaintiff has registered the trade mark in India cannot be disputed. It cannot be said on the facts and circumstances of this case that the plaintiff has not been using the trade mark in India. The words Voltaren and Volta-K are phonetically similar and they are likely to be misunderstood by all persons concerned in the field.
42. The argument that ‘K’ represents potassium and Voltren the composition is sodium and, therefore, the doctors are not likely to be misled is an argument which cannot be accepted in the light of the reputation of the plaintiff and the introduction of the word Volta-K by the defendant in 1994.
43. Learned senior counsel for the defendant relied upon a judgment of a learned Single Judge of the Madras High Court in Hindustan Geigy Ltd. v. Crosslands Research Laboratories Limited, where the question was whether the defendant was using the name of the plaintiff therein by causing deception or confusion to the plaintiff's product Emulgel. The learned Single Judge held that there was no likelihood of any confusion and dismissed the petition for declaration. By judgment dated 25.8.95 a Division Bench of the same High Court had reversed the decision of the learned Single Judge.
44. We have to remember what learned Halsbery L.C had said in Reddaway v. Banham, 1896 AC 199 “What in each case or in each trade will produce the effect intended to be prohibited is a matter of which must depend upon the circumstances of each trade and the peculiarities of each case. It will be very rash a priori to say how far thing might or might not be described without being familiar with the technology of a trade.
45. In the mark relating to sale of medicinal preparations, the distributors have a vital role to play. The manufacturers depend on the wholesale distributors and the retail medical shops. There are lakhs of primary health centres all over India and where-ever there are primary health centres there are medical shops and invariably in the medical shops a man is Incharge, who is not very much qualified except that he undergoes a certificate course knowing about the names of medicines. The wholesale distributors in their turn depend upon medical representatives. These representatives are not qualified in medicines but they take instructions from the manufacturing Co. and the wholesale distributors to inform the doctors and the medical shops.
The medical representatives of established manufacturers visit the doctors and the medical shops on regular intervals but the manufacturers who have entered the field afresh makes visits to the doctors and medical shops very frequently to improve their sales. The doctors in the primary health centres act on the representations made by the medical representatives and they often go by the words of the medical shops in their locality; The doctors in the towns and the Metropolitan Cities are very busy and they depend upon the junior doctors for writing the prescription and we have come across cases where doctors giving wrong prescriptions without knowing the exact composition of the medicines and the manufacturers of the medicines.
I do not for a moment state that the doctors do not know the difference between VOLTAREN and Volta-K. But when the life has become very busy one is apt to commit an error and at the time of prescription one cannot expect a doctor, however, eminent he might be, to know the exact manufacturer of a product. The doctors often go by the manufacture made by leading Companies in the world. Therefore, they have always in their minds only big Companies manufacturing medicines and the new Companies take a long time to get into the minds of doctors. What happens is when a doctor gives a prescription, say VOLTAREN i.e taken to the medial shop and the medical shop tells the patient that Volta-K is available in his shop and it is the same as Voltaren. The medical shop man also does not know the difference and he may unknowingly say Volta-K thinking that is the product of the plaintiff Co. That is where the confusion would arise. Therefore, the argument that the scheduled drugs are sold only on prescription and, therefore, there is no scope for any confusion cannot at all be advanced.
Having regard to the globisation of the economy, when several drugs are coming into the market from the manufacturers abroad and here, the persons in the market are apt to get misled by the trade marks. Therefore, while deciding the question whether Volta-K is phonetically similar to Voltaren and, therefore, its deceptiveness has to be considered on the words used and not on any another considerations. The adding of the word ‘K’ at the end of the word Volta are mentioning it as K-Volta, does not make any difference. In K.R Chinnikrishna Chetty & Co. v. Sri Ambal & Co., AIR 1970 A.C 146, the Supreme Court considered whether the trade mark ‘Sri Andal’ was deceptively similar to ‘Sri Ambal’. The respondent before the Supreme Court was the proprietor of the registered trade mark ‘Sri Ambal’ trading in snuff. The appelant started doinng the same business under the trade name ‘Sri Andal’ the argument was that Sri Ambal was a Vishna-white lady incornation of the concert of Lord Vishnu and Sri Andal used to devote the concert of Lord Shiva and, therefore, there was no likelhihood of any confusion in the purchases.
46. The Registrar of Trade Marks held as under:—
“The words, Ambal and Andal, have such great phonetic similarity that they are undistinguishable having the same sound and pronoundation. In whatever way they are uttered or spoken slowly or quickly, perfectly or imperfectly, meticulously or carelessly and whoever utters them, a foreigner or a native of India, wherever they are uttered in the noisy market place or in a calm and secluded area, over the phone or in person the danger of confusion between the two phoneticaly allied names is imminent and unavoidable.”
47. This was accepted by the Division Bench of the Madras High Court. The Supreme Court held as under:—
“The vital question in issue is whether, if the appelant's mark is used in a normal and fair manner in connection with the snuff and if similarly fair and normal user is assumed of the existing registered marks, will there be such a likelihood of deception that the mark ought not to be allowed to be registered (see. In the matter of Broadhead's Application for registration of a trade mark). ((1950) 57 R.P.C 209, 214) It is for the Court to decide the question on a comparison of the competing marks as a whole and their distinctive and essential features. We have no doubt in our mind that if the proposed mark is used in a normal and fair manner the mark would come to be known by its distinguishing feature “Andal”. There is a striking similarity and affinity of sound between the words “Andal” and “Ambal”. Giving due weight to the judgment of the Registrar and bearing in mind the conclusions of the learned Single Judge and the Divisional Bench, we are satisfied that there is a real danger of confusion between the two marks.”
48. It was brought to the notice of the Supreme Court that the appellant had effected some change in the trade mark. The Supreme Court noticed the arguments in the following terms:—
“We are informed that the appellant filed another application No. 212575 seeking registration of labels of which the expression “Radha's Sri Ambal Madras Snuff forms a part. The learned Registrar has disposed of the application in favour of the appellant. But we understand that an appeal is pending in the High Court. It was argued that there was no phonetic similarity between Sri Ambal and Radha's Sri Andal and the use of the expression Radha's Sri Andal was not likely to lead to confusion. The Divisional Bench found force in this argument. But as the matter is subjudice we express no opinion on it.”
49. The matter again was considered by the Division Bench of the Madras High Court after the change was made by the appellant before the Supreme Court in the earlier case. The judgment of the Division Bench is reported in K.R Chinnikrishna Chetty v. K. Venkatesa Mudaliar, AIR 1974 Madras 7 : 1973 (2) M.L.J 98. The Division Bench held as under:—
“The question for consideration now will be whether by the addition of the word ‘Radha’ to the objected legend makes a vital difference. When the two marks are compared side by side the question will be whether the addition of the word will make any vital difference. As observed by Stamp J. in 1969 RPC 102 at p. 109, “Where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion.” We are of opinion that the combination of the two words “Radha's Sri Andal” is likely to be taken by snuff users as the snuff manufactured and marketed by the appellant originally as “Sri Andal”.
50. The appellants' learned counsel sought to distinguish the above three cases on the ground that in the aforesaid decisions the new word sought to be added was only the name of the country of manufacture while in the present case, the addition of th word ‘Radha’ to the legend ‘Sri Andal’ is a combination which has nothing in common with the respondents' legend ‘Sri Ambal’. We are unable to accept the ground of distinction made by the learned counsel. We are of opinion that there is a tangible danger that a substantial number of persons will confuse the appellants' ‘Radha's Sri Andal’ mark applied for with the respondents' legend ‘Sri Ambal snuff’.
51. This view was affirmed by the Supreme Court. Therefore, in my view, the addition of the word ‘K’ is of no moment. We are to take into consideration the trade practice and how the medicines manufactured by the manufacturers get into the market at the selling point. 11 years ago when the Central Government had not thought of glaciations in a discussion abroad under the Trade Names and Generic Names: Problems for Prescribing Physicians the problem was realised and it is stated as follows:—
“In many countries drugs are marketed by both generic and trade names. To determine whether this dual name system causes problems to physicians, the authors asked 102 Finnish Physicians if they recalled the composition of combination drugs and if they connected the corresponding generic and trade names. The generic name corresponding to the given trade name was known on average by 83% of the physicians who had recently prescribed them, but knowlede of the combination drugs was poor. When generic names were given, on average only 9% of the physicians who had prescribed them could mention the corresponding trade names.
This survey showed deficiencies in physicians' knowledge of the components and names of drugs. It confirmed the hypothesis that physicians often do not know the generic equivalents of trade names, and vice versa. In particular, the components of combination preparations, and even the combination status itself, were poorly known. Thus, there may be a gap in the knowledge required to prescribe by trade names and the knowledge acquired from non-commercial sources of drug information that use generic names. This information gap and the confusion caused by the multitude of names may have clinical consequences.
Evidently physicians cannot remember all the different names of a drug. The problems are greatest for general practitioners who handle the largest variety of patients and drugs. It is likely that there is also confusion among other health professionals and among patients.”
(1986 Year Book of DRUG THERAPY BY HOLLISTER & LASAGNA)
52. Mr. Arun Jaitley, learned senior counsel submitted a list of medicines with some (common) suffixes and prefixes. The list is as follows:—
“BRAND NAMES WITH COMMON PREFIX & SUFFIX
1. Fortagesic
2. Ibugesix
3. Pyrigesic
4. Promagesic
5. Walagesic
6. Garamycin
7. Ipcacin
8. Kanamycin
9. Lintodn
10. Thromvcin
11. Tyotocin
12. Walamycin
13. Supradyn
14. Supraflox
15. Supramox
16. Surfaz
17. Surfaz-SN
18. Tenofed
19. Tenolol
20. Tenoric
21. Tenormin
22. Tenoate
23. Theo PA.
24. Theo Asthalil
25. Theo Brie
26. Trisulfa.
27. Tricaina-MPS.
28. Tricloryl.
29. Tricombil
30. Tricox
31. Tridaxole
32. Trifural
33. Trigal
34. Triglob
35. Triphen
36. Tripres
37. Tristina
38. Winhydran
39. Winstrin
40. Wintomylol
41. Wintrolipos
42. Winofit
43. Probofex
44. Proctinal
45. Proctosedyl
46. Prodep
47. Profasi
48. Proflos
49. Proloid
50. Prlyte
51. Promalgin
52. Promolan
53. Proshot
54. Prosoyal
55. Prostamid
56. Prostodin
57. Proxytab
58. Proxyvon
59. Protinex
60. Protinules
53. He submitted though the prefixes in the two cases may be similar does not likely to cause any confusion. According to me, it is a non-secquitor. It has not been shown that whether there is a litigation with reference to those trade marks. It is not shown whether the trade names are invented names or taken from generic words. I cannot decide the issue only on the basis of the list given by the learned senior counsel for the defendant.
54. In 1947 (64) RPC 125 following 42 RPC 264, it was held that first syllable in a word representing a trade mark is very important. I do not want to assume that syllable in a word is very important and, therefore, there is likelihood of confusion. According to me, we have to consider the whole word along with the word about which complaint is made.
55. In Corn Products Refining Co. v. Shangrila Food Products Ltd , Respondents, AIR 1960 Supreme Court 142 at page 146 paragraph 15, the Supreme Court had considered this aspect in the following words:—
“The series of marks containing the common element or elements therefore only assist the applicant when these marks are in extensive use in the market. The onus of proving such user is of course of the applicant, who wants to rely on those marks. Now in the present case the applicant, the respondent before us, led no evidence as to the user of marks with the common element. What had happened was that the Deputy Registrar looked into his register and found there a large number of marks which had either ‘Gluco’ or ‘Vita’ as prefix or suffix in it. Now of course the presence of a mark in the register does not prove its user at all. It is possible that the mark may have been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. If any authority on this question is considered necessary, reference may be made to Kerly. 507 & Wilesden Varnish Co. Ltd. v. Young & Marten Ltd., (1922) 39 RPC 285 at p. 289. It also appears that the appellant itself stated in one of the affidavits used on its behalf that there were biscuits in the market bearing the marks ‘Glucose Biscuits’, ‘Gluco biscuits’ and ‘Glucoa Lactine biscuits'. But these marks do not help the respondent in the present case. They are ordinary dictionary words in which no one has any right. They are really not marks with a common element or elements. We, therefore, think that the learned appellate Judges were in error in deciding in favour of the respondent basing themselves on the series marks, having ‘Gluco’ or ‘Vita’ as a prefix or a suffix.”
56. It is well settled proposition of law that proof of a fraudulent intention is not a necessary element in a cause of action for passing off. The relevancy of fraud to such an action is simply with the intention to deceive is found, it will be readily inferred that the deception will result. Who knows better than the trader the mysteries of his trade?
57. The learned senior counsel for the plaintiff submitted that the consideration on the question of prefix or suffix would apply only to the words which are derived from generic words and that would not apply to invented words. This contention, prima fade, appears to me to be correct.
58. The learned senior counsel for the parties made their submissions with admirable skill and ability. The exposition of law was fine and the analysis of facts was superb. I was greatly benefitted by their arguments with forensic skill.
59. I recollect the observations of the House of Lords in (RECKITT & COLMAN PRODUCTS LTD. v. BORDEN, 1990 RPC 341) that the at the end of the day the question of likelihood of confusion is a matter for the eye of the Judge. The question is not whether the Judge himself would be deceived by the defendant's get up; the question is whether in the light of whole admissible evidence the Judge is persuaded that an average shopper, shopping in the places in which the article is available for purchase and under the usual conditions in which such a purchase is likely to be made is likely to be deceived.
60. I would add whether the doctors would be remembered to remember the trade names and distinguish between the product of the plaintiff and the defendant in the instant case. I answer the question in favour of the plaintiff and say that the doctors would not be able to distinguish and would be under the impression that Volta-K is a product from CIBA Geigy.
61. For all these reasons, I have no hesitation to hold that the plaintiff has succeeded in establishing the infringement and passing off. The plaintiff has made out a, prima fade, strong case for the grant of injunction.
62. On the balance of convenience, I do not find any difficulty in holding in favour of the plaintiff.
63. The defendant as yet has not made any dent in the market and the defendant is not prevented from running its business of manufacturing medicine and if the defendant succeeds it can resume of the name. If the defendant is allowed to establish itself in the market and if the doctors, medical representatives and medical shops got used to the products during the pendency of the suit without any distinction it be commercially difficult for the plaintiff to have the benefit of the decree that may be passed in case the plaintiff succeeds in the suit. Therefore, there shall be an injunction
a) restraining the defendant, its directors, servants, agents, dealers and distributors as the case may be, and retail chemists from carrying on any business under or by reference to the trade mark Volta-K or any other trade name which is identical to and/or deceptively similar or so resembling the plaintiff's trade mark VOLTAREN as is likely to deceive or cause confusion and, therefore, infringe plaintiff's statutory rights in their registration of the trade mark VOLTAREN under the trade mark registration number 204862;
b) restraining the defendant, its directors, servants, agents, dealers and distributors as the case may be, and retail chemists from carrying on any business, manufacturing, selling, marketing, offering for sale, advertising any product particularly a medicinal or pharmaceutical product under or by reference to the trade mark VOLTA-K “or any other trade mark/name which is identical to and/or deceptively similar or so resembling the plaintiff's trade mark “VOLTRAREN” as is likely to deceive or cause confusion and from in any other manner passing off or attempting to pass off or enabling or assisting others to pass off any similar goods not being the plaintiff's goods as or for the goods connected with the plaintiff until further orders pending the disposal of the suit. There shall be no order as to costs.
64. Post the case for admission/denial before Joint Registrar on 16th of February 1996. List the case for framing of issues on 24th of May 1996 and for trial of the case on 17th of March 1997. The trial will be on day to day basis.
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