Torrent Pharmaceuticals Limited v. Wockhardt Limited

2 This appeal under section 13 of The Commercial Courts, Commercial Division, Commercial Appellate Division of High Courts Act, 2015 (for short "Act 4 of 2016") is directed against the judgment and order dated 15^thMarch, 2017, passed by the learned single Judge in Notice of Motion (L) No. 35 of 2017 in Commercial Suit (L) No. 32 of 2017. The appellant before us is the original plaintiff whereas the first respondent is the original defendant No.1 and the second respondent is the original defendant No.2. The parties shall be referred as plaintiff and defendants hereinafter.

3 The suit was filed by the plaintiff for a perpetual order and injunction to restrain the defendants, their servants, agents, officers and all persons claiming through or under them or controlled by them from using in any manner, directly or indirectly, the impugned mark 'CHYMTRAL FORTE' and / or 'CHYMTRAL' by itself or in conjunction with any word, mark, prefix, suffix, logo, label, sign or any other similar / deceptively similar mark thereto or any mark similar /deceptively similar to the registered 'CHYMORAL Marks' so as to infringe the Plaintiffs'

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registered trademark bearing registration numbers 868255, 979813, 2221513 and 2196721 respectively. By prayer (b), the following injunction was sought :

"(b) That the Defendants either by themselves, or their Directors, licensees, wholesalers, retailers, servants, agents, C and F agents/agents, stockists, and/or all other persons claiming through or under them or controlled by them be restrained by a perpetual order and injunction of this Hon'ble Court from using, in any manner, directly or indirectly, the impugned mark 'CHYMTRAL FORTE' and/or

'CHYMTRAL' by itself or in conjunction with any word, mark, prefix, suffix, logo, label, sign or any other similar/deceptively similar mark thereto or any mark similar/deceptively similar to the registered 'CHYMORAL Marks' so as to pass of or enable others to pass off the goods of the Defendants as and for the goods of the Plaintiffs or as being associated with or as emanating from or having any connection or association with the Plaintiff, or dilute the 'CHYMORAL Marks' in any manner whatsoever, or amount to unfair competition or taking unfair advantage of the reputation and goodwill acquired by the Plaintiff;s products under the 'CHYMORAL Marks' as vesting in the Plaintiff."

4 Thereafter, by prayer clauses (c) and (d) the damages

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in the sum of Rs.1 crore and a direction for delivering all the requisite materials has been sought by the plaintiff.

5 By clause (e) and (f), interim injunction in furtherance of the main relief has been sought and for which the plaintiff moved a Notice of Motion before the learned single Judge. The Notice of Motion proceeded on the footing that the mark of the defendant has been registered. Therefore, the surviving interim relief is in passing off. By the order under challenge, the learned single Judge has held that the three tests which are carved out and based on which the interim injunction of this nature can be claimed are not satisfied. Consequently, the Notice of Motion was dismissed. However, while dismissing the Notice of Motion, the defendants were directed to maintain accounts of their sales under the CHYMTRAL FORTE mark.

6 There was no direction to pay costs. It is this order which has been challenged.

7 Before we consider the rival contentions, it would be appropriate to refer to some of the averments in the plaint.

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8 A copy of the plaint has been annexed at page 241 of the appeal paper-book. The plaintiff states that it is a public limited company incorporated and registered under the erstwhile Indian Companies Act, 1956, having its registered office and branch office at the addresses mentioned in the cause title. The plaintiff is a public listed company. It is a flagship company of Torrent Group and is ranked amongst the top pharma companies in India. It has a strong presence in the therapeutic areas of cardiovascular and central nervous system and has achieved significant presence in gastro-intestinal, diabetology, anti- infective and pain management segments. The plaintiff has also entered in the therapeutic segments of nephrology and oncology while also strengthening its focus on gynecology and pediatric segments. The plaintiff highlights its manufacturing facilities and claims that it has six world class such facilities at its factories and plants in the State of Gujarat, Madhya Pradesh, Andhra Pradesh, Himachal Pradesh and Sikkim. The plaintiff also highlights the importance of its research and development. It is claimed that the plaintiff has a strong international presence spanning over forty countries with over 1200 product

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registrations. It has wholly owned subsidiaries in USA, UK, Germany, Brazil, Russia, Mexico, Phillipines and other major markets. The plaintiff has earned tremendous goodwill and reputation on account of its professionalism, integrity, high quality and reliability of its products and has been bestowed with several awards.

9 In the year 2014, the plaintiff acquired part of the branded domestic formulations business of Elder Pharmaceuticals Limited ("Elder" for short) in India and Nepal. The acquisition comprised of a portfolio of several market-leading brands in women's healthcare, pain management etc. The plaintiff states in paragraphs 10 and 11 that among the branded formulations from Elder, the plaintiff also acquired the renowned brands CHYMORAL and CHYMORAL FORTE. The aforesaid brands are used in respect of pharmaceutical substances / medicines prescribed to patients to alleviate inflammation, reduce edema and quicken the healing of wounds. Each tablet of the said brand is composed of proteolytic anti-inflammatory, enzymes, trypsin and chymotrypsin (active ingredient). The primary indications in respect of which the said products are

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prescribed include inflammatory diseases, accidental injuries, sprains, fractures etc.

10 In paragraph 11 the plaintiff highlights its rights over the marks CHYMORAL and CHYMORAL FORTE in the following terms:

"11 As stated hereinabove in Paragraph 9, the Plaintiff acquired the branded domestic formulations business (in India and Nepal) of Elder, in and around the year 2014. In furtherance of he aforementioned business transfer, Elder, inter alia, assigned all rights, title and interest in and to the following 'CHYMORAL' formative trademarks along with goodwill and benefits associated thereto, unto Plaintiff, by way of deed of assignment dated and effective June 27, 2014 for valuable consideration.

4 Chymoral Forte 2221513 October 18, Registered (device) 2011 and valid

upto

CHYMORAL October 18,

FORTE 2021

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11 Thereafter, in paragraph 13, it is stated that the plaintiff is the registered proprietor and owner of CHYMORAL marks and is entitled to the exclusive use of these marks, inter alia, in respect of medicinal and pharmaceutical preparations and substances. Consequently, it has also acquired, inter alia, the right to prevent third parties from using the marks or any marks deceptively/confusingly similar to their mark. The plaintiff is the present proprietor of the CHYMORAL Marks even under common law by virtue of prior adoption and long use thereof by Elder since the year 1988. Now, the plaintiff has acquired the rights from Elder. The plaintiff also, in paragraph 16, referred to the relevant applications filed with the statutory authorities to bring itself on record as the applicant in respect of the trade marks applications, as registered proprietors and pursuant to these applications and subsequent hearings before the Registrar of Trademarks, the plaintiff has been taken on record as the registered proprietor of the CHYMORAL marks and is currently reflected on the Register. The copies of the forms are annexed to the plaint.

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12 Thereafter, the use and reputation of the marks of CHYMORAL and CHYMORAL FORTE is highlighted from paragraphs 16 to 18 and then it is alleged that during the course of conducting its business under the brands CHYMORAL and CHYMORAL FORTE (label mark) Elder also applied for the additional trademarks as referred in paragraph 19 of the plaint. Thereafter, it is alleged that these marks were extensively and continuously used by Elder and from the date of acquisition of the same, have been adopted by the plaintiff. Thus, the predecessor in interest of the plaintiff is the earliest adopter of the trademark CHYMORAL in India with rights dating back to 1962 when the mark CHYMORAL was first coined and applied in respect of pharmaceutical preparations. The reputation built up by Elder of the products has then been highlighted in paragraphs 21 to 23 and it is submitted that CHYMORAL Marks include CHYMORAL,

CHYMORAL FORTE, CHYMORAL FORTE DS, CHYMORAL PLUS,

CHYMORAL-AP and CHYMORAL-BR. Exhibit-H is a copy of the colored photographs of the tablet strips and outer box carton of the plaintiff's products bearing the mark CHYMORAL FORTE. It is claimed that the reputation is established and evidenced by the sales of the products under the CHYMORAL marks to the tune of

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INR.5,952.30 lakes and INR 9,495.89 lakes for the period 2014- 15 and 2015-16. The Chartered Accountant's Certificate, copy of which is Exurban-I dated 15^thDecember, 2016, is highlighted.

13 The plaintiff has also highlighted the expenditure and efforts to market and promote the products and has even set out the figures of the amounts spent in Indian rupees for that purpose.

14 Thus, summarizing that both Elder and the plaintiff have extensively promoted the products under these marks through their Medical Representatives, use of visuals aids and also by conducting seminars, courses etc. once again the popularity and presence in the market is emphasized.

15 Thereafter, from paragraph 28, the description of the defendants is set out and the first defendant is in the business of marketing and selling pharmaceutical products under the impugned mark CHYMTRAL FORTE as manufactured by defendant No.2 at its manufacturing facility in the State of Uttarakhand.

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16 It is in or around June, 2016, that the plaintiff, through its marketing and distribution team, discovered that the first defendant was marketing, offering for sale and selling a product having a deceptively similar trade name to the plaintiff's mark CHYMORAL and CHYMORAL FORTE. That is the impugned mark CHYMTRAL FORTE. Paragraph 30 of the plaint alleges as to how the product of the defendant under the impugned mark had identical composition, apparently used and prescribed for identical indications and being a prescription drug similar to that of the plaintiff's product, was made available through identical trade channels as the product of the plaintiff. Thus, consumer consumption or likelihood of association with the plaintiff's products is inevitable.

17 Paragraphs 31 to 33 of the plaint read as under :

"31 The Plaintiff made further inquiries in the market and a search on the website of the Trade Marks Registry further revealed that defendant No.1 had also applied for registration of the impugned mark 'CHYMTRAL FORTE', being 'CHYMTRAL FORTE' under application number 1792581 on March 5, 2009on a 'proposed to be used basis' in respect of

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'Medicinal, Pharmaceutical and Veterinary Preparations''. In view thereof, it is submitted that the exact date of launch of Defendants' products bearing the impugned mark 'CHYMTRAL FORTE' is unclear.

32 Thereafter, it appears that Defendant No.1 has fraudulently and contrary to the provisions of the Trade Mark Act of 1999 and Rules framed there under, obtained registration of the mark 'CHYMTRAL FORTE' on February 9, 2011. Printout of the status extract of the e-register pertaining to the impugned mark 'CHYMTRAL FORTE' as appearing on the website of the TMR is annexed hereto and marked as Exhibit-M. Given that Defendant No.1 has no justification for adopting the impugned mark 'CHYMTRAL FORTE', and as the same has been wrongfully registered and is wrongfully remaining on the Register, the Plaintiff reserves the right to challenge the aforesaid registration of the impugned mark 'CHYMTRAL FORTE' obtained by Defendant No.1 before the appropriate forum on the grounds available under Section 57 of the Trade Marks Act of 1999, and/or any other grounds available under law.

33 The Defendants have deliberately adopted the impugned mark 'CHYMTRAL FORTE' which is quite obvious and apparent from the very structure of impugned trademark. Plaintiff submits that the dishonesty on the part of Defendant is writ

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large, on account of the fact that the difference between the rival marks is only one letter, as Defendant No.1 has merely substituted the letter 'O' appearing on the Plaintiff's mark 'CHYMORAL' with the letter 'T' and adopted the impugned mark CHYMTRAL which speaks volumes of the dishonest and fraudulent conduct of the Defendants of riding piggyback on the immense reputation and goodwill painstakingly acquired by the Plaintiff in respect of its Chymoral Marks. Further, as the combination of the terms 'CHYMORAL' and 'FORTE' coined by the Plaintiff is unique, Defendant No.1 has attempted to come as close as possible to the Plaintiff's reputed product 'CHYMORAL FORTE' by adopting the impugned mark 'CHYMTRA FORTE' which is

confusingly similar to the combination coined by the Plaintiff, and merely by substituting the letter 'O' in the Plaintiff's mark with 'T'. Therefore, the mark 'CHYMORAL FORTE' and the impugned mark

'CHYMTRAL FORTE' are deceptively similar due to their high degree of structural, visual and phonetic similarity. It is humbly submitted that combined with the fact that the said deceptively similar mark 'CHYMTRAL FORTE' is used on products identical to those of the Plaintiff, the likelihood of confusion and association by consumers having imperfect recollection is inevitable and imminent. This clearly shows the fraudulent and dishonest intent on the part of Defendants to take unfair advantage of and to ride upon the immense goodwill and reputation of the

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Plaintiff's 'CHYMORAL Marks'.

18 Then, the plaintiff alleges that there is similarity between the written spelling (visual) and the phonetics (aural) of the plaintiff's mark and the first defendant's impugned mark. It is so high that doctors are likely to confuse between the two marks and misspell them and given the well known challenges in understanding the handwriting of doctors, chemists are further likely to confuse between them. Furthermore, consumers with prescriptions who orally place their orders with chemists are also highly likely to mispronounce the two marks and/or be perceived by chemists incorrectly. The wide spread practice prevalent in India of ordering prescription medicines over the telephone, wherein the chemist may not have access to the prescription is bound to cause confusion in view of the visual, structural and phonetic similarity between the rival marks. Moreover, due to high degree of similarity, the chemist may be encouraged and lured towards substituting the products of the plaintiff as prescribed to the consumer to that of the defendant knowing fully well that the consumer will be unable to discern the difference between the two products, thereby causing undue loss to the

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plaintiff's business. The price comparable with that of the plaintiff's products substantially heightens the possibility and likelihood of confusion and substitution. Thereafter, it is alleged that this impugned mark closely resembles and clearly reminds one of the plaintiff's prior registered mark and prior used CHYMORAL mark especially it's mark CHYMORAL FORTE.

19 It is in these circumstances that from paragraph 36 to 39 it is claimed that the consequences, particularly on patients would be enormous. The extensive and continuous use of CHYMORAL marks was to the express knowledge of the defendants and the defendants always had express and/or constructive notice of the plaintiff's statutory and common law rights. The plaintiff purchased samples of the defendant's product under the impugned mark against an invoice dated 13^th June, 2016, at Andheri, Mumbai and thereafter, on 29^thAugust, 2016, at Santacruz (East), Mumbai, copies of which are Exhibits- N and N-1 to the plaint. The outer box carton of the product revealed that the same was manufactured by defendant No.2 in the State of Uttarakhand. In paragraph 41, it is alleged that on reviewing the tablet strips inside the carton, the similarities as

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highlighted in that paragraph were noticed. Once again, the practice prevailing between the chemists are highlighted in paragraph 42 and copies of the coloured photographs of the tablet strips and outer box are annexed as Exhibits-O and P to the plaint. Thus, the impugned mark is alleged to be intentionally coming as close as possible to the trading style, get-up, dimensions and shape of packaging, trademarks, colour combination and overall trade dress of the plaintiff's products. This is an act of deliberate misrepresentation as to the source of origin of the goods to confuse unwary consumers and cause damage and losses to the plaintiff's business. This amounts to passing off the defendant's products as those of the plaintiff. It is based on this specific allegation that the main relief and the interim injunction has been sought.

20 There are usual averments in the plaint and to be found in paragraphs 44 to 48.

21 It is not denied that the first defendant filed caveats before this Court and several other courts in India, including courts at Bangaluru, Kolkata, Ahmedabad and Delhi, but the

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caveat in this court appears to have expired as of October, 2016.

22 Based on the above allegations and averments, the reliefs have been sought.

23 The Notice of Motion was moved in the above suit with appropriate prayers. It was supported by an affidavit.

24 Upon being duly served with a copy of the plaint together with its annexures, a copy of this Notice of Motion and the affidavit-in-support, the defendant No.1 proceeded to file a detailed affidavit-in-reply. That affidavit-in-reply is affirmed by its Assistant Manager (Legal) and a copy of the same is at page 110 of this paper-book. The stand of the first defendant is that the suit is bad for no action of infringement can lie once the mark of the defendant No.1 is registered and, therefore, it relied upon its registration since 5^thMarch, 2009 (registration of CHYMTRAL

FORTE).

25 The surviving relief was, therefore, of passing off and in relation to that, the stand of the first defendant No.1 is that its

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adoption of the mark CHYMTRAL FORTE is honest and bona fide. It has said that consistent with the practice prevalent in the pharma industry and trade the mark is coined by putting together the alphabets 'CHYM' from CHYMOTRYPSIN and 'TR' from TRYPSIN and 'AL' to give it loudable phonetic sound. Defendant No.1 also has two other marks with the suffix 'RAL' being 'MYCORAL' and 'AMFURAL'.

26 Thus the active ingredients in the products of the plaintiff under the trademark CHYMORAL and those of the defendants under their trademark CHYMTRAL FORTE are derived from common ingredients being chymotrypsin and trypsin. Once these are medicines prescribed for treating the active inflammatory edema (swelling) and associated with the post surgical wounds etc., then, there is no possibility of any drastic consequences on a patient if one drug is administered in place of the other. Then the argument is CHYMO or CHYM are publici juris and/or common to the trade.

27 Thereafter, the reply raises another plea and that no objection was taken by the plaintiff or its described predecessor

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when the defendant proceeded to register its mark. It is in these circumstances the application for registration dated 5^thMarch, 2009, and the registration dated 9^thFebruary, 2011, is relied upon to urge that the registration was obtained after the mark was duly established. There was an opportunity for the aggrieved parties to object, but nobody including the present plaintiff raised any objection and, therefore, there is an open, extensive use by these defendants of its mark since April 2009. The present plaintiff has come into picture only in June, 2014, when its predecessor in interest one Elder allegedly assigned all rights, title and interest in and to CHYMORAL to the plaintiff. The plaintiff nor its predecessor have raised any objection to the adoption and use by the first defendant of its mark CHYMTRAL FORTE until the alleged cause of action, narrated in the plaint. The plaintiff has, therefore, caused considerable delay in filing the present proceedings and in the meantime, defendant No.1 has altered its position in terms of the increasing sales to such an extent that it would be inequitable to grant interim relief to the plaintiff to stop the defendant No.1 from using its registered trademark.

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28 What has been throughout emphasized in this reply is that "plaintiff stood by knowingly and let the defendant No.1 build up its trade significantly". The conduct of the plaintiff is inconsistent with its claim. The reliefs sought in the Notice of Motion are not bona fide and the plaintiff is merely using the present suit as an arm-twisting tactic to pressurize defendant No.1 to give up its registered trademark. An argument was build on this throughout that a proprietor of a trademark who knowingly watches his competitor grow in the market and takes no action can claim no exclusivity in his own trademark.

29 The said argument is then elaborated with reference to the public knowledge from the date or the first defendant's application and at least since 17^thMay, 2010, which is the time subsequent to the advertisement by the Registrar of Trademarks. In this lengthy reply, therefore, what we have summarized is the proprietorship of defendant No.1 in the mark and for that purpose reliance is placed on the sales figures and such other materials.

30 There was a rejoinder affidavit filed by the plaintiff to

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this affidavit-in-reply and while reiterating the contents and paragraphs of the plaint what the rejoinder affidavit seeks to do is to meet the stand and argument of the first defendant that there is no question of standing by, allowing the first defendant to build its reputation, far from acquiescence or consenting to the wrongful acts of the first defendant. The stand of the plaintiff is that there is no question of the mark being generic and publici juris. For all these reasons it was reiterated by the plaintiff that the interim relief deserves to be granted, particularly because of the above stand of the first defendant.

31 It is on the above materials that the learned single Judge proceeded to hear the parties and, by the impugned order which is fairly lengthy, he held that the first defendant has been able to convince him that there is not only mere delay but acquiescence and that operates where one person sits by and allows another to invade his rights and spend on the doing of that invasion, its conduct is incompatible with exclusivity claims. By so observing, the Motion came to be dismissed. It is this view of the learned single Judge which is assailed in this appeal.

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32 Mr. Tulzapurkar, learned senior counsel appearing for the plaintiff would submit that the impugned order is contrary to law. It is wholly vitiated, in the sense the learned single Judge approached the matter from an angle which is not permissible in law. The law has not laid down the principle as was projected before the learned single Judge and which finds acceptance by him. In other words, none of the facets of the issue and controversy highlighted above could have been prevailed upon the learned single Judge to deny the interim reliefs and all the more when the essential requisites and parameters for granting of the same are fully satisfied.

33 Mr. Tulzapurkar has submitted that the learned single Judge failed to apply the settled principles and, with great respect, has unsettled them totally in arriving at an erroneous conclusion. Mr. Tulzapurkar was at pains to point out that once the plaintiff has established and proved its prima facie case, then, there was no question in the facts and circumstances of the present matter to deny the interim injunction, all the more when the learned single Judge does not disbelieve the plaintiff's case, but upholds it as far as passing off and its ingredients are

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concerned. Mr. Tulzapurkar would submit that the defences raised by the first defendant are without any basis and substance. The arguments are raised only on presumption. Such arguments which have the effect of taking away the prior vested and subsisting statutory and common law rights of the plaintiff in its reputed and well established marks CHYMORAL and CHYMORAL FORTE cannot be considered only on presumption.

34 Mr. Tulzapurkar highlights what he terms as the admitted facts. Then, it is submitted by him that the very adoption ab initio of the impugned mark by the first defendant is dishonest. There is no justification of whatsoever nature for the adoption of the mark by the first defendant when the plaintiff's mark CHYMORAL was already in the market. Mr. Tulzapurkar submits that both products are schedule H drugs. The rights are flowing in favour of the plaintiffs since 2014. Mr. Tulzapurkar invites our attention to the Exhibits D, E and E-1 to the plaint and to the sales figures so also paragraph 23 of the plaint which would, according to him, establish the plaintiff's reputation in the market. Then, he relies upon the Chartered Accountant's certificate, copy of which is at page 329 of the paper-book. Mr.

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Tulzapurkar submits that the learned single Judge has not disbelieved the plaintiff's version that the marks are identical, the get-up is identical. The first defendant claims ownership of the marks whereas the second defendant is the manufacturer of the products under the first defendant's marks. The entry of the mark of the first defendant itself is of 2016, though the application may have been made on 5^thMarch, 2009. Earlier, the marks were proposed to be used, but it is the actual user and not the obtaining of registration which will enable the plaintiff to claim the reliefs. The learned single Judge, therefore, should have not applied the wrong tests and parameters, but the correct and applicable principles. There are tests which are evolved and settled by binding judgments. It is these tests which have to be applied. The likelihood of deceit is sufficient.

35 Mr. Tulzapurkar has then taken us through the pleadings and extensively to contend that the learned single Judge has, on the point of prima facie case, entirely agreed with the plaintiff. In that, our attention has been invited to the conclusions as also the preceding observations in the learned single Judge's reasons. The learned single Judge has not

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disbelieved the plaintiff's case. Yet, while appreciating and appraising the materials, the learned single Judge, with great respect, according to Mr. Tulzapurkar, discarded these tests and arrived at an erroneous conclusion. Mr. Tulzapurkar submits that the admitted facts, based on the dates and events, are not disputed.

36 On those undisputed facts, all that the learned single Judge is required to consider is whether the requisite tests are satisfied, enabling the plaintiff to claim interim relief. In considering this, the learned single Judge, down the line, notes certain defences of the defendant No.1 and proceeds to accept some of them, though they have not been substantiated even prima facie. In that regard, the learned senior counsel submitted that the defence was that the adoption of the impugned mark by defendant No.1 is honest and bona fide. The mark was adopted consistent with the prevalent practice in the industry of incorporating the generic name of a drug's active ingredient. The impugned mark is a combination of CHYM and TR from the active ingredients of the drug that is TRYPSIN - CHYMOTRYPSIN and AL has been suffixed to give a loudable phonetic sound.

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37 In that regard, our attention has also been invited to one of the defences that the prefixes CHYM and CHYMO are publici juris and common to the trade and, therefore, the plaintiff cannot claim any exclusive rights over them. That is especially in view of the number of third parties using Chym or Chymoformatic marks. Mr. Tulzapurkar submits that there is absolutely no substance in these defences. Firstly, these defences are on some general presumptions which are rebuttable and the materials in that behalf would have to be tested on the facts and circumstances of each case. Once it is admitted that the plaintiff is the prior user of the marks, they were registered in the name of the predecessor in title of the plaintiff almost a decade prior to the application for registration of the impugned mark, then, the learned single Judge was obliged to consider as to whether the defence raised has any merit. Mr. Tulzapurkar submits that even in March, 2009, the defendant No.1 applied on a 'proposed to be used basis". The plaintiff's right in the mark through its predecessor in interest dates back to 1962. When the defendant No.1 made an application for registration of the impugned mark, the product of the plaintiff had a prominent presence in the

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market. There was, prima facie, strong material which would indicate that the plaintiff had earned a reputation by the exclusive use of this mark. The marks were also on the Trademark Register. That is how Mr. Tulzapurkar relies on paragraphs 22 to 26 of the plaint to submit that the plaintiff's trademark had acquired tremendous reputation and good will. Then, he relies upon the Chartered Accountant's Certificate and the extensive promotional efforts. He, therefore, submits that the plaintiff is the sole and exclusive proprietor of its mark and the first defendant cannot claim proprietorship of the same. This fact has been ignored by the learned single Judge. There is no answer by the first defendant to the proprietorship of the mark of the plaintiff. Once there is a proprietorship, either by way of prior use or prior registration on record, then, the use of the deceptively similar impugned mark by the first defendant ought to be restrained.

38 Then, Mr. Tulzapurkar submits that there was ample material on record to indicate dishonest adoption of the impugned mark by the first defendant. There is no justification of whatsoever nature for the adoption of the impugned mark by

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the first defendant when the plaintiff's trademark CHYMORAL was already in the market with a prominent presence and on the Trademark Register. The first defendant had express and/or constructive knowledge both of the use of the mark in the market and its registration. Mr. Tulzapurkar submits that in a pharma industry, possibly every player had knowledge of each other's products, their combinations, their usage, their presence in the market as also the reputation and goodwill. Therefore, the presumption that the first defendant, prior to making an application for registration of its mark, had ample opportunity and occasion to inspect the Register whereupon he would have definitely found the details of the plaintiff's registration. None would presume and easily that any pharma entrant as the first defendant would proceed without ascertaining the details of any prior registration. If it has acted contrary to this settled practice, then, it is at its own risk and peril. It cannot enter the market, start using the same mark, cash on it and then complain that the established brand or players in the market are objecting to the first defendant's use. It is in these circumstances that Mr. Tulzapurkar would submit that all the settled tests would disable the first defendant from raising a defence claiming a substantive

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right in the impugned mark. It is in these circumstances that Mr. Tulzapurkar submits that the learned single Judge should have not allowed the first defendant to raise such a defence which was, ex facie, frivolous and vexatious. Secondly, looked at in the light of the settled tests and standards, the impugned mark is deceptively similar to the plaintiff's mark. There need not be much argument according to Mr. Tulzapurkar for everything in relation to these marks right from their name is identical. There is absolutely no doubt that there would be a high probability of confusion. It is not the actual deceit, but a high probability and likelihood of confusion and deceit which is sufficient. Thus, there is no substance in the defence that the first defendant did not misrepresent at all or there was no misrepresentation. The very fact that the first defendant had adopted the impugned mark which is deceptively similar and placed the goods in the market bearing the said impugned mark is in itself an act of misrepresentation.

39 Mr. Tulzapurkar then submits that as far as the medicinal products are concerned, public interest is the paramount consideration. The learned single Judge has ignored

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this very vital aspect of the matter by accepting an argument which, in law, has no basis. The only argument canvassed was that there is no likelihood of deception when both products have existed side by side in the market for a fairly long period of time. Mr. Tulzapurkar submits that by accepting such a sweeping submission and that too, in relation to a medicinal product, the learned Judge has diluted the tests which are fairly well settled and departed from the principles which have to be applied in passing off action.

40 Apart therefrom, Mr. Tulzapurkar submits that there is no material which would enable the learned single Judge to conclude that there was any acquiescence on the part of the plaintiff. If the adoption of the impugned mark by the first defendant is dishonest, then, the plea of acquiescence cannot be raised. The first defendant has adopted the impugned mark much later in time to the adoption and use of the plaintiff's mark and with an express and/or constructive notice of the plaintiff's statutory and common law rights in the same. The defence of acquiescence has its roots in equity and if the adoption of the mark itself is dishonest then such a defence is incapable of

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acceptance according to Mr. Tulzapurkar. The first defendant's conduct is entirely dishonest and disentitles it from raising a defence of acquiescence.

41 Then, Mr. Tulzapurkar submits that the plea of acquiescence was raised very casually. There is no material, even prima facie, which would indicate that there was any positive act of the plaintiff resulting in abandonment of the trademark which is already on register. Rather, there is evidence to the contrary. Secondly, the first defendant has failed to bring on record any fact or proof which establishes that the plaintiff or its predecessor in title had any notice of the application for registration of the impugned mark or that there was a commencement of user by the first defendant. This plea cannot be raised on a presumption that the plaintiff had knowledge of the first defendant's trademark application for use. The knowledge has to be expressly established by the first defendant. If that is not established, then, the plea of acquiescence ought to be rejected.

42 Assuming and without admitting that the first

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defendant establishes express knowledge of the trademark application and use by the first defendant, it will still have to establish that the plaintiff has committed some positive acts so as to abandon its rights in the marks in which the plaintiff enjoys significant goodwill and reputation. That is not even, prima facie, established.

43 Once, mere assertions, but without any material on record cannot be accepted, then, the defence of acquiescence should have been rejected outright.

44 Mr. Tulzapurkar submits that if such defence is allowed, it takes away the existing substantive and common law rights of the parties like the plaintiff in the reputed trademarks. If such plea is allowed, then, there will be two marks which are deceptively similar in the market and confusion and deception will be inevitable. That would be contrary to public interest. Thus, mere delay, silence or inaction does not amount to acquiescence.

45 Mr. Tulzapurkar then seeks to controvert this

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submission of the first defendant raised before the learned single Judge that once there are positives acts which would collectively imply consent on the part of the plaintiff, prima facie, then, no amount of sales figures would suffice. What the plaintiff has placed on record was the awareness and knowledge of the first defendant's user and from June, 2016. There is nothing on record to establish that the plaintiff had knowledge of the existence of the defendant No.1's product in the market under the impugned mark prior to June, 2016.

46 The first defendant has not provided any such proof which would clearly establish an abandonment on the part of the plaintiff. Once that has not been brought, then, what is urged on the basis of mere inaction or delay in bringing the suit, if at all, can be of no avail. Mr. Tulzapurkar then contended that the mere submission that the rival marks have co-existed harmoniously for five years is nothing but a presumption. Even that would be required to be established. For that, some delay on the part of the plaintiff would not suffice.

47 Mr. Tulzapurkar submits that mere failure to oppose

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or sue ought not be considered as acquiescence or an abandonment of the right to exclusivity as even statutory law provides for a mechanism for rectification of trademarks post registration. If mere failure to oppose or sue is considered acquiescence, then, the remedy of initiating a rectification / cancellation provided by the Trademark statute would be rendered meaningless. That would lead to absurd consequences.

48 Mr. Tulzapurkar then criticized the test which was, according to him, applied and erroneously. That is, according to Mr. Tulzapurkar, that goodwill and reputation in the mark is different from the goodwill, reputation and confusion as to the source, that is the maker of the product. According to Mr. Tulzapurkar, the learned Judge has taken a view which requires the plaintiff in a passing off action to establish goodwill and reputation of the mark at the source and also the confusion and deception as to the source. Mr. Tulzapurkar submits that there is no warrant for applying such a test. If the awareness of the source, that is the maker of the product, in addition to the awareness of the mark by the public is required to be established and proved, then, the very function of the trademark, which is to

35

act as the indication of origin will be rendered nugatory. It is in these circumstances that Mr. Tulzapurkar criticizes the order of the learned single Judge. He would submit that the law of passing off requires the plaintiff to prove likelihood of confusion or deception. It does not require actual confusion, deception or actual damages. The action of passing off is an action in deceit. The primary function of a trademark is the indication of an origin. Once the mark is established in the market and earns goodwill and reputation which is not denied in this case, but accepted, then, there is no need to establish that there is separate goodwill, reputation and deception as to the source, namely, the maker. Thus, the test and requirement of proof demanded by the learned single Judge is contrary to well established principles of law. Then, the mark will have no function at all. The goods in the market are identified by the customers / consumers by the marks affixed on them. The consumers need not even know the name of the maker of the goods. Therefore, when the goods enter the market bearing a mark, the mark itself, rightly referred to as the badge of origin, is the identification and the source or the maker of the goods are not relevant. Mr. Tulzapurkar, therefore, submits that there was no requirement to bring in such materials.

36

There is no need to establish misrepresentation independently once it is shown that the rival marks are deceptively similar which, in turn, itself leads to the likelihood of confusion.

49 In concluding his arguments, Mr. Tulzapurkar would submit that the view taken by the learned single Judge that there is simply no misrepresentation shown as required by law at this, prima facie, stage runs contrary to the materials on record as also the settled tests. The high degree of similarity between the impugned mark and the plaintiff's trademark itself, along with the identical get up of the respective products, clearly amounts to misrepresentation. Mr. Tulzapurkar, therefore, would submit that the learned single Judge has applied wrong principles and tests. The tests applied are contrary to well established principles of law of passing off which are well settled by several judgments of the Hon'ble Supreme Court and the High Courts. Mr. Tulzapurkar would submit that none of the defences, including that the impugned mark or part thereof is a generic, common to trade, has any substance. These defences raised by a party who himself claims distinctiveness of the mark and gets it registered. It is common ground that the first defendant also

37

applied for registration. As there was commonality or the mark was common to the trade, the mark or part thereof is generic and several traders are using the same, then, there is no justification for claiming distinctiveness as is done by the first defendant. Thus, this is a very casual plea raised. The first defendant has to prove that the mark has lost its distinctiveness and that burden is very high. If such pleas are accepted without any proof of a bona fide and honest user by the first defendant, then, no party like the plaintiff would succeed. Mr. Tulzapurkar also highlighted some of the findings of the learned single Judge and criticized them as contradictory.

50 Lastly, he would submit that none of the judgments cited by the first defendant were applicable to the facts and circumstances of this case. Once the prima facie case, balance of convenience and irreparable injury are the settled tests, which have to be satisfied, then, they are more than adequately satisfied in this case enabling the plaintiff to seek an injunction. Hence the appeal must succeed.

51 Mr. Tulzapurkar would rely upon the following

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judgments in support of his contentions :

i 1969 (2) SCC 727 Ruston and Hornsby Ltd vs The Zamindara Engineering Co.

ii (2004) 6 SCC 145, Satyam Infoway Ltd vs Sifynet Solutions (P) Ltd.

iii 2002 (3) Mh LJ 546 Medlye Laboratories (P) Ltd., Mumbai vs Alkem Laboratories Limited. iv Cadila Pharmaceuticals Ltd. vs Sami Khatib of Mumbai & Ors. 2011 SCC Online Bombay 484;

v (2001) 5 SCC 73 Cadila Health Care Ltd. vs Cadila Pharmaceuticals Ltd.

vi 2001 SCC Online Bombay 1176 Bal Pharma Ltd. vs Centaur Laboratories Ltd. & Anr.

vii Judgment of the House of Lords - Viscount Haldane LC, Lord Atkinson, Lord Parker of Waddington, Lord Suimner and Lord Parmoor.

viii AIR 1980 Delhi 254 Ellora Industries, Delhi vs Banarasi Dass Goela.

ix (2002) 3 SCC 65 Laxmikant V. Patel vs. Chetanbhai Shah & Anr.

x 2005 (30) PTC 14 (Bom) Sun Pharmaceuticals Industries Ltd. vs Wyeth Holdings Corporation & Anr.

xi (1963) 2 SCR 484 : AIR 1963 SC 449, Amritdhara Pharmacy vs Satya Deo Gupta.

xii Online citation of 2014 SCC Online Bom 1064 : (2015) 1 Bombay CR 197 Emcure Pharmaceuticals Ltd. vs Corona Remedies Pvt. Ltd.

xiii Copy of Order dated 16.09.2014 of the learned single Judge (Coram: G.S. Patel, J) in Notice of Motion (L) No.827/2014 in Suit (L) No.336/2014.

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xiv (1994) 2 SCC 448 M/s. Power Control Appliances and Ors. vs Sumeet Machines Pvt. Ltd.

xv (1994) The Weekly Law Reports 1564 Hodgkinson and Corby Ltd. vs Wards Mobility Services Ltd. xvi Online copy of judgment 1961 SCC Online Bom 55 : (1964)

66 Bom LR 612 Consolidated Foods Corporation vs Brandon and Co. Pvt. Ltd.

xvii 2011 (5) Bombay CR 588 Ultra Tech Cement Ltd. vs Alaknanda Cement Pvt. Ltd. & Anr.

xviii Online copy of judgment 2011 SCC Online Bombay 1487 :

(2012) 1 Bom CR 519 Alaknanda Cement Pvt. Ltd. & Anr. vs Ultra Tech Cement Ltd.

xix Online copy of judgment 2015 SCC Online Bombay 531:

(2015) 4 AIR Bombay R 272 Jagdish Gopal Kamath & Ors. vs Lime and Chilli Hospitality Services.

52 On the other hand, Mr. Dwarkadas, learned senior counsel appearing for the first defendant would submit that the plaintiff has come on the scene only in June, 2014 and to be precise from 27^thJune, 2014. Its predecessor in title did not object to the application for registration / user by the first defendant. Mr. Dwarkadas relying upon a list of dates tendered by him would submit that until the assignment in plaintiff's favour there was no challenge to the registration and user by the first defendant of the impugned mark. In such circumstances, the first defendant was entitled to assume that there is no

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opposition or objection. There was no action for four to five years. This is not a plea of mere inaction or silence of the plaintiff, but this is a positive act, in the sense, it is the plaintiff who comes on the scene to object to the user and from June, 2014. Mr. Tulzapurkar's arguments conveniently overlook the conduct of the plaintiff's predecessor. If these facts are brought on record, how could the conduct of the party claiming injunction in this case can be termed as irrelevant. Mr. Dwarkadas has, therefore, submitted that if the defences of the first defendant are seen in this light, they are worthy of acceptance.

53 He would rely upon the provisions of the Trademarks Act, 1957, and the present Trademarks Act, 1999, to submit that sections 9 to 20 and 23 would indicate that no wrong principle of law has been applied by the learned single Judge. There is absolutely no material to indicate any deceptive similarity. In the present case, there is a high burden on the plaintiff. The plaintiff does not bring materials to indicate that such confusion, as is sought to be pleaded would lead to deception. The marks co- existed for decades together and, therefore, the plaintiff must show how injunction can be granted despite this position. Our

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attention has been invited to page 34 of the paper-book in this regard by Mr. Dwarkadas. He would submit that the learned Judge in paragraph 2 of the impugned order itself summed up the issues and correctly. Mr. Dwarkadas submits that we should not then be impressed by the criticism of Mr. Tulzapurkar. Mr. Dwarkadas submits that if the registration was applied for by the first defendant on 5^thMarch, 2009, sales were launched in April, 2009, then, the data which has been placed on record would indicate that there was a firm presence of the first defendant in the market much before the plaintiff came on the scene. Mr. Dwarkadas has taken us through the pleadings in the plaint to submit that the first defendant has only taken the active ingredients of the drug and there are similar marks currently in the market taken from this active ingredient. Mr. Dwarkadas invites our attention to different brands of TRYPSIN- CHEMOTRYPSIN prevalent in the market. Mr. Dwarkadas then submits that these are the materials which would completely belie the case of the plaintiff. Mr. Dwarkadas submits that the pleadings itself would indicate that the first defendant is a reputed and credible pharmaceutical company. In that, our attention is invited to the fact that it is present in the

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pharmaceutical market for the past five decades. It is also the registered proprietor of over one thousand trademarks and the proprietor of several other marks for which the application for registration is pending. It employs five thousand personnel of which more than one thousand are based in international markets. After highlighting all this, he would submit that the first defendant is a bona fide conceiver, adopter and user of the trademark which is registered, namely, CHYMTRAL FORTE and is entitled to use the same. After pointing out as to how the adoption has been done and by taking into consideration the active ingredients, Mr. Dwarkadas would submit that there is a long prevalent practice in the pharma industry where trademarks are often conceived and wired from and based on the name of its active ingredient. It is in that sense that the position in law is settled that if the part of the mark is derived from the active / generic ingredient it is publici juris. It is very clear from the materials that the registration was granted on 9^thFebruary, 2011, but effective from the date of application dated 5^thMarch, 2009. The first defendant already commenced manufacture and export of its product under the marks CHYMTRAL FORTE and currently manufactures and sells tablets under the trademark

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CHYMTRAL FORTE. These may be medicinal products, but there is an open, extensive and uninterrupted use since 2009. There are no objections and when the rival products are sold openly and through the same trade channels, then, it is inconceivable that all concerned were not aware of the first defendant's mark. It is in these circumstances and after eight years of the first defendant's product being in the market, that this suit was filed. The interim injunction was pressed and when such interim injunction was pressed, obviously the admitted facts and circumstances were brought on record by the first defendant. About these facts and circumstances, there was never any dispute. It is only on such materials that the submissions were canvassed and Mr. Tulzapurkar does not dispute that they can be based and canvassed on these admitted or undisputed facts and circumstances. Hence, the burden has been completely discharged. Mr. Dwarkadas firstly submitted that in generic name, there is no absolute monopoly. Then, he would submit that there is phonetic dissimilarity. Even if the suffix is the same, customers will concentrate on the dissimilar portion and, in any event, this is a commonality in the market. Mr. Dwarkadas has, therefore, submitted that there was much substance in the

44

defence and particularly of acquiescence which is a facet of delay. Then, Mr. Dwarkadas sought to distinguish deceit and confusion and submitted that deceit cannot be assumed from similarity. Thus, there is a distinction between confusion and deception. The passing off action is one in deceit or deception and not confusion. It is in these circumstances that Mr. Dwarkadas heavily relied upon certain judgments which, according to him, would indicate as to how there was no public injury or public interest involved. The public by now having been made sufficiently aware and conscious, moved to buy goods by source / related to source or maker. It is in these circumstances that Mr. Dwarkadas would submit that there is a requirement in law now that the mark is required to be identified with the source.

54 Finally, Mr. Dwarkadas would submit that the rival marks CHYMORAL and CHYMTRAL are visually, phonetically and structurally dissimilar and the question of confusion, deception or passing off does not arise.

55 For the above reasons, he would submit that there is no merit in the appeal and it must be dismissed.

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56 Mr. Dwarkadas relied upon the following judgments to support his submissions :

i 2005 SCC Online Bombay 1160 Medley Pharmaceuticals Ltd. vs Khandelwal Laboratories Ltd.

ii Order dated 22^ndDecember 2005 in Appeal No.1118 of 2005 by the Hon'ble Division Bench of this Court (Coram: R.M. Lodha and D.G. Karnik, JJ.)

iii 2010 (7) Maharashtra Law Journal 611 Schering Corporation and Anr. vs United Biotech (P) Ltd. and Anr. iv Online copy of judgment 2001 SCC Online Bom. 906 Ranbaxy Laboratories Ltd. vs Indchemic Specialities Pvt. Ltd. v 1994 Supp (3) Supreme Court Cases 215 J.R. Kapoor vs Micronix India

vi AIR 2008 SC 2737 Khoday India Ltd. vs Scotch Whisky Association and Ors.

vii 2011 (45) Patents and Trademarks Cases 488 (Bombay) Unichem Laboratories Ltd. vs Ipca Laboratories and Anr.

57 For properly appreciating the rival contentions, firstly it will have to be noticed as to how the learned single Judge approached the matter, how did he arrive at his prima facie conclusions and by applying what tests and finally whether they are germane, relevant and correct. The pleadings have been referred by us in extenso only to indicate that Mr. Dwarkadas may argue that the learned single Judge did not accept the

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plaintiff's case even prima facie, but that is not borne out from the record and from the learned single Judge's order. The learned single Judge was aware that this is an action in passing off. The plaintiff is seeking an interim injunction. The learned Judge premises or bases his order clearly on the footing that there is an interesting point about the scope of the common law remedy and whether a restraint order must follow as a matter of course if similarity is shown. This presupposes that there is a similarity in his opinion.

58 Then, in paragraph 21, the learned single Judge refers to two issues. He takes the facts before him as to registered proprietors, the plaintiff being the earlier, the marks being taken to be sufficiently similar for the issue to be stated, though not identical. Further, the learned single Judge leaves aside for the present the parallel arguments about adaptation from the names of generics.

59 The learned single Judge then refers to the first defendant's case that to the plaintiff's knowledge, it has used its own registered mark for nearly a decade before the suit is

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brought. In that time, it has grown its business substantially. There is an earlier notice, but one issued several years earlier. In the intervening period, there is not a single instance of any confusion or of mistaking the first defendant's product for that of the plaintiff. This is, therefore, not a quia timet action. However, the learned Judge then accepts that this is an action in passing off and, therefore, in deceit but can confusion, deception and deceit be simply presumed and must an injunction in passing off automatically follow ? Thus, dissimilarity means deception must be presumed or do intervening periods of co-existence without any confusion or deception count for nothing ?

60 However, we must highlight the fact that the learned single Judge was aware of the settled law for he refers to it and holds that actual proof of confusion or deception is not necessary in the grant of an injunction in a passing off action. However, according to the learned single Judge is not the plaintiff still required to move with acceptable despatch ? Even if there is no acquiescence, is not the plaintiff's passivity for long sufficient to denude its claim for interim relief ?

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61 Such being the issues raised and the learned Judge directing his order essentially on them, that it becomes imperative for us to reproduce paragraphs 2 and 3 of the impugned order :

"2 There are two issues, perhaps best illustrated thus: the two opposing parties are both registered proprietors of their respective marks. The claimant is the earlier one of the two. The marks may, for the purposes of this statement of the issue, be taken to be sufficiently similar, though not identical, and I will leave aside for the present the parallel argument about adaptation from the names of generics. The opponent has, to the claimant's knowledge, used its own registered mark for nearly a decade before the suit is brought. In that time, the opponent has grown its business quite substantially. There is an earlier notice, but one issued several years earlier. In the intervening period, there is not a single instance of any confusion or of mistaking the opponent's product for that of the claimant. This is, therefore, not a quia timet action. Given that an action in passing off is an action in deceit, that is to say, the opponent attempts to masquerade his products as those manufactured by or originating from the claimant, can confusion, deception and deceit be simply presumed, and must an injunction in passing off automatically follow? To put it another

49

way, shown similarity, is deception always to be presumed? Do intervening periods of co- existence without any confusion or deception count for nothing? Settled law tells us that actual proof of confusion or deception is not necessary in the grant of an injunction in a passing off action. Does this principle posit, a priori, that the claimant moves with acceptable despatch? Even if there is no 'acquiescence' by the claimant in the sense that word is now understood in this branch of the law, is not the claimant's passivity for a long time sufficient to denude its claim for interim relief of the equity that must be shown to obtain a restraint order? Is there not a difference between proof of actual deception and confusion — which is what settled law tells us — and proof (even prima facie) of the likelihood of such deception and confusion? The way it has been placed before me suggests that, shown some similarity, in a passing off action deception and confusion are virtually irrebuttable presumptions. All other factors fall into irrelevance. Not only must actual deception and confusion be assumed, but so must their likelihood.

3 This is the second part of the so-called 'classical trinity' in passing off action, viz., the question of misrepresentation. The first part speaks to the plaintiff's goodwill and reputation. The question is always whether high sales or volumes establish the

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necessary reputation for a passing off action or whether something more must be shown; more precisely, whether it must be shown that there is identification in the public eye, consciousness or awareness of the goods with the plaintiff? After all, passing off is an action in deceit and deception — the defendant stands accused of attempting to 'pass off' his products or wares or services as those of the plaintiff. This seems to postulate that the mark sought to be protected must be used on goods 'bought by source': a camera or computer, say, by one particular named manufacturer, for instance; or, in other words, goods of a defined brand. Reputation and goodwill, the law seems to suggest, is not a generalized market presence, however strong, for the purposes of passing off. The product must be shown to be linked in the public mind to its maker, and to none other."

62 With great respect to the learned single Judge, we find that it is when the plaintiff came on the scene, the action was taken, but nothing being done by its predecessor in title has considerably influenced the view taken by the learned single Judge. Secondly, the first defendant making an application for registration, obtaining it before the plaintiff came on the scene and on that basis using the mark, trading and selling in the same

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goods in the market would, according to the learned single Judge, require him to consider such issues. With greatest respect to the learned single Judge, this is not what the law requires and demands. Quite contrary, the law requires the settled tests to be applied and to the facts and circumstances of each case. In that regard, therefore, we must refer to these settled principles for, down the line, we do not wish that the same error which the learned Judge has, with great respect, committed should be perpetuated.

63 The earliest decision in point of time to which our attention has been invited is reported in (1969) 2 SCC 727 in the case of Ruston & Hornsby Ltd vs The Za.indara Engineering Co. After referring to the provisions of the Trademarks Act, 1940 and the facts this is what the Hon'ble Supreme Court holds :

"2. The appellant is a limited liability company incorporated under the English Companies Act with its registered office at Lincoln, England. It carries on business in the manufacture and sale of diesel internal combustion engines and their parts and accessories. Ruston Hornsby (India) Ltd., a company registered in India under the Companies Act, 1956 is a subsidiary of the appellant. The respondent is a firm

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carrying on business in the manufacture and sale of diesel internal combustion engines and their parts. The appellant was a registered proprietor of the registered trade mark Ruston being registration No. 5120 in Class 7 in respect of internal combustion engines. Ruston and' Hornsby (India) Ltd., is the registered user of the said trade mark and manufactures in India and sells in India internal combustion engines under the trade mark "RUSTON".

Sometime in June, 1955 the appellant came to learn that the respondent was manufacturing and selling diesel internal combustion engines under the trade mark "RUSTAM". On July 8, 1955 the appellant wrote through its attorneys a letter to the respondent and called upon it to desist from using the trade mark

"RUSTAM" on its engines as it was an infringement of the registered trade mark "RUSTON". The defendant replied that "RUSTAM" was not an infringement of

"RUSTON" as the words "RUSTAM INDIA" was used. On February 17, 1956 the appellant instituted a suit praying for a permanent injunction restraining the respondent and its agents' from infringing the trade mark "RUSTON". On January 3, 1958 the Additional District Judge, Meerut, dismissed the suit holding that there was no visual or phonetic similarity between "RUSTON" and "RUSTAM". The appellant took the matter in appeal in the Allahabad High Court. By its judgment dated November 23, 1965 the High Court held that the use of the word RUSTAM by the respondent constituted infringement of the

53

appellant's trade mark "RUSTON" and the respondent should be prohibited from using the trade mark

"RUSTAM". But the High Court proceeded to hold that the use of the words "RUSTAM' INDIA" was not an infringement because the plaintiff's engines were manufactured in England and the defendant's engines were manufactured in India. The suffix "India" would be a sufficient warning that the engine sold was not a

"RUSTON" engine manufactured in England and the respondent may be permitted' to use the combination

"RUSTAM INDIA".

Section 21 of the Trade Marks Act, 1940 states:

"Subject to the provisions of section 22, 25 and 26 the registration of a person in the register as proprietor of a trade mark in respect of any goods shall, give to that person the exclusive right to the use of the Trade mark in relation to those goods and, without prejudice to the generality of the foregoing provision, that right shall be deemed to be infringed' by any person who, not being the 'proprietor of the trade mark or a registered user thereof using by way of the permitted use, uses a mark identical with it or so nearly resembling it as to be likely to deceive or cause confusion, in the course of trade, in relation to any goods in respect of which it is registered, and in such manner as to render the use of the mark likely to be taken either-

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(a) as being used as a trade mark; or

(b) to import a reference to some person having the right either as a proprietor or as registered user to use the trade mark or to goods with which such a person as aforesaid is connected in the course of trade."

3. The distinction between an infringement action and a passing off action is important. Apart from the question as to the nature of trade mark the issue in an infringement action is quite different from the issue in a passing off action. In a passing off action the issue is as follows: .

"Is the defendant selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ?"

But in an infringement action the issue is as follows:

"Is the defendant using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark ."

4. It very often happens that although the defendant is not using the trade mark of the plaintiff, the get up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get up of the defendant's goods

55

may be so different from the get up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark.

5. The action for infringement is a statutory right. It is dependent upon the validity of the registration and subject to other restrictions laid down in Sections 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his goods as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods has become distinctive of them and that there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. At common law the action was not maintainable unless there had been fraud on A's part. In equity, however, Lord Cottenham L.C. in Millington v. Fox held that it was immaterial whether the defendant had been fraudulent or not in using the plaintiff's trade mark and granted an injunction accordingly. The common law courts, however, adhered to their view that fraud was necessary until the Judicature Acts, by fusing law and equity, gave the equitable rule the victory

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over the common law rule. [Underlining ours]

6. The two actions, however, are closely similar in some respects. As was observed by the Master of the Rolls in Saville Perfumery Ltd. v. June Perfect Ltd.:

"The Statute- law relating to infringement of trade marks is based on the same fundamental idea as the law relating to passing-off. But it differs from that law in two particulars, namely

(1) it is concerned' only with one method of passing-off, namely, the use of a trade mark, and

(2) the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor. Accordingly, in considering the question of infringement the Courts have held, and it is now expressly provided by the Trade Marks Act, 1938, section 4, that infringement takes place not merely by exact imitation but by the use of a mark so nearly resembling the registered mark as to be likely to deceive."

7 In an action for infringement where the defendant's trade mark is identical with the plaintiff's

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mark, the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. In other words, the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions."

[Underlining ours]

64 Thus, throughout the Hon'ble Supreme Court has been emphasizing that the elements of passing off itself suggests that it is to restrain the defendant from passing off its goods or services to the public as that of the plaintiff. It is an action, not only to preserve the reputation of the plaintiff, but also to safeguard the public. The defendants must have sold its goods or offered its services in a manner which has deceived or would be likely to deceive the public into thinking that the defendant's goods or services are those of the plaintiff. The second element, according to the Hon'ble Supreme Court, which must be established by a plaintiff in a passing off action is misrepresentation by the defendant to the public. In that, what has to be established is the likelihood of confusion in the minds of the public, the word public

58

being understood to mean actual or potential customers or users and that there is likelihood of they being confused that the goods or services offered by the defendant are the goods or services of the plaintiff. In assessing this likelihood of confusion, what the Courts must allow is the imperfect recollection of a person of ordinary memory. The third element of a passing off action is loss or the likelihood of it.

65 The Hon'ble Supreme Court clarifies that prior user of a trademark is not necessary. This is an action available to the person of a distinctive trademark and the person who, if the word or name is an invented one, invents and uses it. If two trade rivals claim to have individually invented the same mark, then, the trader who is able to establish prior user will succeed. Who gets it first is material and it is not essential for the plaintiff to prove long user to establish reputation in a passing off action. It would depend upon the volume of the sales and extent of advertisement. Thus, the misrepresentation does not mean that the plaintiff has to prove any mala fide intention on the part of the defendant. Of course, if the misrepresentation is intentional, it might lead to an inference that the reputation of the plaintiff is

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such that it is worth the defendant's vile to cash in on it. An innocent misrepresentation will be relevant only on the question of the ultimate relief which would be granted to the plaintiff [Satyam Infoway Limited vs Sifynet Solutions Pvt. Ltd. (2004) 6 SCC 145 paras 13 to 15].

66 In the context of medicinal preparations and drugs, we have an authoritative pronouncement of the Hon'ble Supreme Court in the case of Cadila Health Care Limited vs Cadila Pharmaceutical Limited reported in (2001) 5 SCC 73. The Hon'ble Supreme Court brought about the distinctive features and when the action relates to medicinal / pharmaceutical preparations and drugs. In paragraphs 21 to 32, the Hon'ble Supreme Court held as under :

"21. It will be useful to refer to some decisions of American Courts relating to medicinal products. In the case of American Cynamid Corporation Vs. Connaught Laboratories Inc., it was held as under:

"Exacting judicial scrutiny is required if there is a possibility of confusion over marks on medicinal products because the potential harm may be far more dire than that in confusion over

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ordinary consumer products."

22 It may here be noticed that Schedule H drugs are those which can be sold by the chemist only on the prescription of the doctor but Schedule L drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not un- common that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar. In Blansett Pharmaceuticals Co. Vs. Carmick Laboratories Inc., it was held as under:

"Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed under marks which look alike and sound alike."

23. In the case of Glenwood Laboratories, Inc. Vs. American Home Products Corp., the Court of the United States had held that:

"The fact that confusion as to prescription drugs could produce harm a contrast to confusion with respect to non-medicinal products as an additional consideration of the Board as is evident from that portion of the opinion in which the Board stated: The products of the parties are medicinal and applicants product is

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contraindicated for the disease for which opposer's product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals. The boards view that a higher standard be applied to medicinal products finds support in previous decisions of this Court, Clifton Vs. Plough (it is necessary for obvious reasons, to avoid confusion in the dispensing of pharmaceuticals), Campbell Products, Inc. Vs. John Wyeth & Bro. Inc, (it seems to us that where ethical goods are sold and careless use is dangerous, greater care should be taken in the use of registration of trade marks to assure that no harmful confusion results).

24. In the case of R.J. Strasenburgh Co. Vs. Kenwood Laboratories, Inc., as noted in the decision of Morgenstern Chemical Co. case, it had been held that:

"Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably

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legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced."

25. The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems. In this regard, reference may usefully be made to the case of Glenwood Laboratories, Inc. Vs. American Home Products Corp., where it was held as under:

[Underlining ours]

"The products of the parties are medicinal and applicants product is contraindicated for the disease for which opposer's product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the

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pharmaceuticals."

26. It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal.

27. As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. 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 measurers to prevent any confusion arising from similarity of marks among medicines are required to be taken.

28. Here, it will be useful to refer to the decision of Morgenstern Chemical Co. case where it has been held as under:

"(5) In the field of medical products, it is

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particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. The test as to whether or not there is confusing similarity in these products even if prescribed and dispensed only by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. The rule enunciated by Judge Helen in Cole Chemical Co. Vs. Cole Laboratories is applicable here: [Underlining ours] The plaintiff and the defendant are engaged in the sale of medical preparations. They are for ultimate human consumption or use. … They are particularly all for ailments of the human body. Confusion in such

products can have serious consequences for the patient. Confusion in medicines must be avoided.

* * *

Prevention of confusion and mistakes in medicines is too vital to be trifled with. The observations made by Assistant

Commissioner Leeds of the Patent Office in R.J. Strasenburgh Co. Vs. Kenwood Laboratories Inc., are particularly apt, that:

"Physicians are not immune from confusion or mistake. Further more it is common knowledge

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that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced."

The defendant concedes that physicians and pharmacists are not infallible but urges that the members of these professions are carefully trained to detect differences in the characteristics of pharmaceutical products. While this is doubtless true to dos (sic) not open the door to the adoption by manufacturers of medicines of trade marks or names which would be confusingly similar to anyone not exercising such great care. For physicians and pharmacists are human and in common with the rest of mankind are subject to human frailties. In the field of medicinal remedies the courts may not speculate as to whether there is a probability of confusion between similar names. If there is any possibility of such confusion in the case of medicines public policy requires that the use of the confusingly similar name be enjoined (See Lambert Pharmacol Ltd. Vs. Bolton Chemical Corporation.)" [Underlining ours]

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29. In the book titled as McCarthy on Trade Marks, it is observed in the footnote at page 23-70 as under:

"Physicians and Pharmacists are knowledgeable in their fields does not mean they are equally knowledgeable as to marks and immune from mistaking one mark from another. (Schering Corp .Vs. Alza Corp.)"

30. In the case of Syntex Laboratories Inc. Vs. Norwich Pharmacal Co., it is observed as under:

"Stricter standard in order to prevent likelihood of confusion is desirable where involved trade marks are applied to different prescription pharmaceutical products and where confusion could result in physical harm to consuming public."

31. Trade mark is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark. That is why it is said that in a passing off action, the plaintiffs right is

"against the conduct of the defendant which

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leads to or is intended or calculated to lead to deception. Passing off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which other has established for himself in a particular trade or business. The action is regarded as an action for deceit. (See Wander Ltd. Vs. Antox India Pvt Ltd.)"

32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edition, para 23.12 of which reads as under:

"The tests of confusing similarity are modified

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when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."

67 Thus, the Hon'ble Supreme Court held that when medicinal products are involved, the test to be applied for adjudging the violation of the trademark law may not be on par with cases involving non medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non medicinal products may only cause economic loss to the plaintiff, confusion about the two medicinal products may have disastrous effects on the health

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and, in some cases, life itself. In the circumstances, the confusion as to the identity of the product itself could have dire effects on public health.

68 The questions raised in an action for passing off on the basis of unregistered trademark would have to be decided on the basis of the tests laid down in paragraph 35 of Cadila decision.

69 We have also been taken through the decisions of the English Courts, but when there is an action of this nature what is to be decided is, whether the tendency to mislead or confuse which forms the gist of the action posits the plaintiff to establish fraud or that anyone was actually deceived or that he actually suffered damage. This is a tort actionable per se. As is put succinctly, the law in passing off arose to prevent unfair trading and protects the property rights of a trader in his goodwill. We need not multiply the decisions. True it is that in Laxmikant V Patel vs Chetanbhai Shah & Anr. reported in (2002) 3 SCC 65, the Hon'ble Supreme Court held that in passing off if an injunction is claimed, the plaintiff must prove prima facie, balance of convenience in his favour and his suffering an irreparable injury

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in the absence of grant of injunction, but the tests are fairly well settled. The Hon'ble Supreme Court clarified in this case that mere entry into the market, using of the mark in that case as a part of the trade, it cannot be assumed that the temporary injunction should be denied. If the plaintiff has commenced the business in the name or mark and it has come into existence prior to the commencement of the user by the defendant and whether it had acquired a goodwill creating a property in the name of the plaintiff so as to restrain the use of the word mark, in that case, in the business name of a similar trade by a competitor. With regard to the name, other observations may have been made, but the Hon'ble Supreme Court reemphasizes that action for passing off will then lie wherever the defendant company's name or its intended name is calculated to deceive and so to divert business from the plaintiff or to occasion a confusion between the two businesses. In paragraphs 10, 11 and 13 of this decision, the Hon'ble Supreme Court reiterated the settled tests :

"10. A person may sell his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property

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which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury.

11 Salmond & Heuston in Law of Torts (Twentieth Edition, at p.395) call this form of injury as "injurious falsehood" and observe the same having been "awkwardly termed" as "passing off" and state:

"The legal and economic basis of this tort is to provide protection for the right of property which exists not in a particular name, mark or style but in an established business, commercial or professional reputation or goodwill. So to sell merchandise or carry on business under such a

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name, mark, description, or otherwise in such a manner as to mislead the public into believing that the merchandise or business is that of another person is a wrong actionable at the suit of that other person. This form of injury is commonly, though awkwardly, termed that of passing off ones goods or business as the goods or business of another and is the most important example of the wrong of injurious falsehood. The gist of the conception of passing off is that the goods are in effect telling a falsehood about themselves, are saying something about themselves which is calculated to mislead. The law on this matter is designed to protect traders against that form of unfair competition which consists in acquiring for oneself, by means of false or misleading devices, the benefit of the reputation already achieved by rival traders."

….. …. ….

13. In an action for passing off it is usual, rather essential, to seek an injunction temporary or ad- interim. The principles for the grant of such injunction are the same as in the case of any other action against injury complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing off cases are often cases of deliberate and intentional misrepresentation, but it is well-settled

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that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence though proof of fraudulent intention may materially assist a plaintiff in establishing probability of deception. Christopher Wadlow in Law of Passing Off (1995 Edition, at p.3.06) states that the plaintiff does not have to prove actual damage in order to succeed in an action for passing off. Likelihood of damage is sufficient. The same learned author states that the defendants state of mind is wholly irrelevant to the existence of the cause of action for passing off (ibid, paras 4.20 and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a defendant has imitated or adopted the plaintiffs distinctive trade mark or business name, the order may be an absolute injunction that he would not use or carry on business under that name. (Kerly, ibid, para 16.97)."

70 There has been a reference made also to earlier decisions, but what we find is that throughout in the impugned order, the learned single Judge had no doubt at all about the case of the plaintiff. The learned single Judge proceeds to apply a test and that is that the Court must first arrive at a conclusion that what the opponent attempts is deception. That means even if the

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plaintiff knew of the defendant's adoption, he allowed it to proceed to registration, to grow his business and if the rival products under the competing marks co-existed for many years, can still the Court hold that the defendant is straining every nerve to deceive ? According to the learned single Judge on this issue turns this matter.

71 The other question is where equity and balance of convenience lies. The learned single Judge then refers to the facts and from paragraph 7 onwards in his detailed order, he does not then say that there is no likelihood of deception. What the learned single Judge holds is that there is similarity and in that background he refers to the facts.

72 The learned single Judge then proceeds to analyze the submissions. He then refers to the rival contentions and, somewhere in the midst of noting them, holds that from similarity one cannot assume deceit. There must be some material to show actionable misrepresentation by a defendant in attempting to parade his goods as those of the plaintiff. Though Wockhardt - defendant No.1 does not concede that there is a

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similarity, but assuming there is one, there is nothing at all to show they, at any time, attempted to dupe or deceive anyone into believing CHYMTRAL FORTE was a Torrent product. Thus, there was a co-existence of the two products side by side in the market for a length of time and material to show that the plaintiff knew of the defendant's product and did nothing to stop the defendant. This is enough to unseat an action in passing off and might even constitute acquiescence, in the sense of tacit encouragement or at any rate non-discouragement. That is a separate question not to be confused with the cause of action in deceit. There must be some material to evince misrepresentation. This, along with proving reputation, according to the learned single Judge, are the first two of the three crucial tests.

73 We are of the clear opinion that what has weighed throughout with the learned single Judge and his ultimate conclusion is the existence of the impugned mark in the market and prior to the plaintiff entering the scene. Thus, he assumes confusion, but not deceit or deception. The learned single Judge holds that because an injunction in infringement was inevitable, it did not follow that an injunction in passing off ought also to be

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granted. Fair enough, but does this clinch the matter ? We do not think that the learned single Judge was right in refusing to apply the settled tests. What then the learned single Judge does is to refer to a judgment of the English Court reported in 1994 1 WLR 1564 Chancery Division and quotes extensively from the same. The learned single Judge holds that whether the public is moved in any degree to buy the articles because of its source and what are the features by which it distinguishes that source is the question. Unless the plaintiff can answer this question, he can take no step forward, no degree of imitation of detail is actionable in its absence. Thus, the learned single Judge assumes that the public cares who makes the goods and not merely for their appearance and structure. In other words, is the public moved to buy by source. We do not think that in the present case this is a correct legal test to apply. We do not think that the learned single Judge understood and, with great respect, Cadila. It is not one passage or one line or one sentence which would clinch the issue once there are settled tests. If, according to the learned single Judge, it is not enough for the plaintiff to show volumes of sales, but he must prove goodwill and reputation of a certain kind, that is understandable, but thereafter the learned single Judge says

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and, with greatest respect, erroneously that the plaintiff must show the association of the product with its source or maker. That is essential if the first of the classic trinity tests is to be met. The learned single Judge holds that there is nothing approaching this level of proof even prima facie. Thus, from the sales invoices and brochures, it cannot be assumed that the plaintiff has established and proved goodwill and reputation of a certain kind. If there is a proof of the reputation and goodwill, but not associated as to source, that would not suffice. According to the learned single Judge, association with the source has to be demonstrated.

74 We do not think that the learned single Judge was justified in evolving these principles and in the process ignoring binding precedents. Even on the point of delay and acquiescence, the learned single Judge records a opinion that mere delay is inconsequential but then says acquiescence is a facet of delay. May be true. However, in the absence of any materials, the learned single Judge holds that if one person sits by and allows another to invade his rights and spend on the doing of that invasion, is the conduct to be ignored and still the relief granted ?

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In evolving that test, the learned single Judge, with great respect, deviates from the necessity of a proof of a positive act attributable to the plaintiff. Inaction and delay cannot be connected or confused with acquiescence. Then what is acquiescence and the learned single Judge from paragraph 35 onwards till paragraph 38 applies a test that because there was a failure to object to the trademark application registration prior to the plaintiff entering the scene, he can presume acquiescence. The learned single Judge also faults the plaintiff for lack of even prima facie proof of misrepresentation. Merely because there was no objection raised to the advertisement of Workhardt's application or when Workhardt brought the product to the market or others were trading in the same name does not mean that the plaintiff's case that the goods themselves prove falsehood and that they tell the lie was without any merit.

75 The learned single Judge then in paragraph 39 holds as under :

"39 Mr Tulzapurkar relies on Laxmikant V Patel v Chetanbhai Shah & Anr, (2002) 3 SCC 65, but this does not, I think, serve his cause very well. The law does not permit, the Supreme Court said, anyone to

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do business by deluding customers or clients into mistaking his goods are those of another or vice versa. Fraud is immaterial, and so is the defendant's state of mind. That only tells us that the misrepresentation may be unintentional. From this, the factum of misrepresentation cannot simply be presumed in every single case; and we must distinguish between likelihood of misrepresentation and likelihood of damage. Actual damage need not be proved; its likelihood is enough. When the Supreme Court said that the goods are in effect telling a falsehood about themselves, something calculated to mislead, what is it those goods are saying? Only that those goods are so designed or put into sale to convince consumers the goods originated from a source other than the one from which they did."

76 To our mind, even this aspect of the matter has not been approached by applying the correct legal tests.

77 Finally, we find that even in the case of public injury, the learned single Judge fell into error. Raising the bar on vigilance by the prior user, according to the learned single Judge, is relevant since the price of success in passing off is eternal vigilance. With great respect, that means even if there is a deliberate or intentional act of a party like the first defendant and

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there is likelihood of public injury, an adverse impact on public interest, still the injunction should be refused by applying the principles culled out from the decisions by the learned single Judge and summarized in paragraphs 40 to 42 of the judgment.

78 We have made a detailed reference to the allegations in the plaint, the annexures to the plaint and the affidavits filed in reply and rejoinder. As far as the basic requirements are concerned, in the order under appeal, the learned single Judge does not question the entitlement of the plaintiff to seek or obtain interim relief, otherwise than for the reasons assigned by him. The plaintiff had pointed out as to how the acts of the defendants are wrongful. They have adopted and used the impugned mark in relation to pharmaceutical products. The frame of the suit was clear. The impugned marks "CHYMTRAL FORTE' and/or 'CHYMTRAL" were alleged to be deceptively similar to the plaintiffs registered and prior used trademarks inter alia CHYMORAL AND CHYMORAL FORTE. The plaint allegations as also the assertions in the affidavit in support of the notice of motion were not denied, in the sense that the defendants emphasized throughout that their use was open and extensive

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since 2009. They highlighted the fact that there is a considerable delay in filing the present proceedings and in the meantime, defendant no. 1 has altered their position in terms of the increasing sales. That is to such an extent that it would be inequitable to grant interim relief to the plaintiff to stop defendant no. 1 from using its registered trademark. The conduct of the plaintiff was highlighted by urging that the plaintiff stood by knowingly and let the defendant No.1 build up its trade significantly. In para 14 of the affidavit in reply, a specific plea was raised of acquiescence by the plaintiff in the present case, which tantamounts to consent. Thus, the conduct of the plaintiff is inconsistent with its claim. Finally, the assertion is that a proprietor of a trademark, who knowingly watches his competitor grow in the market and takes no action can claim no exclusivity in his own trademark.

79 One more case that was set up is that the term CHYMO OR CHYM is being used for the chymotrypsin by several parties. It is stated that there are about 122 trademark applications registered/pending for registration in respect of medicines, which contain the prefix Chym or Chymo before the

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Trademark Registry.

80 The name of the defendants' product was derived from its active ingredient or active chemical compound or the disease it seeks to remedy or the particular organ it is intended to treat. Therefore, it is in public domain. One more interesting assertion was that the plaintiff must establish that the mark is associated by the public at large with its maker, in the sense it originates from it.

81 Then, there are without prejudice statements made in the affidavit in reply, but a perusal of all the materials does not lead, according to the learned Judge himself to the fact that the plaintiff is otherwise dis-entitled to the injunction. More so, when the three requirements in law are fulfilled and satisfied by them.

82 It is thus apparent that the learned Judge sums up the case by referring to these facts and holds specifically that there must be some material to show actionable misrepresentation by a defendant in attempting to parade his goods as those of the plaintiff. Where a defendant is able to show that even assuming

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there is similarity, there is nothing at all to show that it at any time attempted to dupe, deceive or delude anyone into believing CHYMTRAL FORTE was a Torrent product, then, according to the learned Judge, can it be truly said that the defendant is selling CHYMTRAL in a manner calculated to lead purchasers to believe it is the plaintiff's product and this cannot be said, regard being had to all the circumstances, no injunction can or ought to be granted. This, according to the learned Judge is a compelling submission. This conduct may not defeat an action at the final stage, but surely cannot be ignored at this prima facie stage of the notice of motion. Thus, the plaintiff was aware of the presence of the defendant's, it sat by and allowed the first defendant to increase its sale. This is surely enough to deny the plaintiff any relief. Then, the learned Judge seeks to justify this conclusion by reiterating that confusion may be assumed, but not deceit or deception. The learned Judge himself holds in another case of Sun Pharma Laboratories Ltd. vs. The Madras Pharmaceuticals and Anr. 2016 (68) PTC 543 (Bom.) that he declined relief in passing-off, though on slightly different considerations. Thus, this order or view was distinguishable and on the own showing of the learned Single Judge. However, as Mr. Tulzapurkar rightly

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says that the apprehension is that the learned Judge's assumption in law may continue or may be followed in further cases of identical or similar nature for the learned Single Judge holds that because an injunction in infringement was inevitable, it do not follow that an injunction in passing-off ought to also be granted. May be this is correct, but partially and one has to go by a case to case basis.

83 The more fundamental error, with respect, in the order of the learned Single Judge is when he says that the reputation that is required to be established is whether the goodwill of the plaintiff is such that the public is moved by his goods by source. We find that when the learned Single Judge in para 30 sums up his conclusion that it Is not enough for a plaintiff to only show volumes and sales, but he must prove his goodwill and reputation of a certain kind, namely, the association of that product with its source or market. That he understood to be the requirement for satisfying the first of the Classical Trinity tests. The learned Single Judge holds that there must be an identification in the public eye, consciousness or awareness of the goods with the plaintiff and this seems to postulate that the

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marks sought to be protected must be used on goods by source. He gives an illustration of a camera or computer, say, by one particular named manufacturer, for instance; or, in other words, goods of a defined brand. Reputation and goodwill, the law seems to suggest, is not a generalized market presence, however strong, for the purposes of passing off. The product must be shown to be linked in the public mind to its maker, and to none other. Once this is the understanding of the law and which to our mind and as observed above in the foregoing paragraphs is, with respect, incorrect, then, interference by the appellate court is necessary.

84 For such an understanding of the law, the learned Judge has taken assistance of an English judgment. We would have to refer to it in some details. In the case of Hodgkinson and Corby Ltd. (supra), the facts were a little peculiar. An injunction was claimed by Hodgkinson trading as Raymar and Roho Inc. a company incorporated under the laws of lilinois, against the defendant, Wards Mobility Service Ltd. restraining them from passing-off or attempting to pass off air flotation cushions as of the first plaintiff's and for air floation cushions of the second plaintiff's manufacture.

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85 The article is one of pure and great utility. It is a cushion used on wheelchairs by the permanently immobile to prevent or aid in the care of pressure sores. Such sores cannot only cause great pain to sufferers, they can endanger health to the extent of being life threatening. The cushion was devised by the President of Roho Inc., namely the second plaintiff. His research interest in devices for pressure sores for many years resulted in a patent (United States Patent in 1971) for the general idea behind the present article and how to make it. The patent since expired. There was never a United Kingdom patent. The witnesses may think that there had been such a patent, but Roho started selling cushions in accordance with the invention by the President of Roho and they have maintained the process of constant research and improvement much to the benefit of users. The cushion is known by the trademark "Roho". Then, its peculiarity and functions are mentioned so also its price. The cushions may or may not be used with covers.

86 The defendant Wards sells a variety of equipment for the disabled. Its managing director Mr. McGregor has had a lot of

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experience in the health care product supply industry. Wards are reasonably well known and have recently set up national distribution. They are rather less well known than Raymar, but also employ a sales force and currently one physiotherapist. The cushion intended to be sold by Wards is made by a French company, Askle. Askle were the Roho French distributors. They have produced a near copy of the Roho. Apparently, they sell in the France under the trade mark R'KO. Wards do not intend to use that in United Kingdom and never did so intend. An example of what now they intend to sell in United Kingdom was before the Chancery Division and that is the Ward's trademark "Flo'Tair".

The mark is printed prominently on the underside of the cushion. It may also appear on the upper side of the edge of the base. The matter was decided on the basis of the materials placed by both, including evidence. Then, the law was considered and it was emphasised that the law does not prohibit competition. At the heart of passing-off is deception or its likelihood, deception of the ultimate consumer in particular. The foundation of the plaintiff's case before the court must, therefore, lie in deception. The case law from United Kingdom courts decisions and thereafter the ingredients of passing-off, namely classical trinity are referred.

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In that case, the court found that it is not good enough for the plaintiff to show that his article is widely recognised, has the reputation in that general sense but he must show that members of the public who buy the goods do so because they know of or have any interest in the particular source of the goods or they are attracted to buy those goods because of their knowledge or belief that they emanate from the particular source, a particular maker. The court found that it is this requirement which the plaintiff must satisfy for that is of significance as far as the principles laid down by English courts. If the plaintiffs have to prove that the shape of their cushion is the crucial point of reference for those who want specifically a Roho cushion and have they proved that persons wishing to buy a Roho cushion are likely to be misled into buying the Flo'Tair. It is in that context it is said that every watch must have a maker. In that sense, every manufactured article conveys a representation that it had a maker. Where an article has a readily distinguishable appearance and there has only one maker, once the article becomes well known in the market, consumers when they see an article like that may assume that it is made by the same maker as he who made the articles of that individual appearance which

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they have seen before. It is, therefore, almost all those who casually saw the Flo'Tair cushion reacted by saying "that is a Roho". The court observed that this evidence alone can seldom, if ever satisfy the legal test for passing-off. It does not prove that anyone relies upon the appearance to get the product of the maker they want. Then, a passage from Lord Oliver in the JIF Lemon case B(1990) 1 W. L. R. 491 was referred.

87 The context in which all these observations are made and as rightly emphasised by Mr. Tulzapurkar ought to be seen. One cannot assume that in cases of pharmaceutical products and in terms of the law laid down by the Hon'ble Supreme Court, this will, with great respect, be the applicable test. We would then be, with great respect, rewriting the trinity. The case of Hodgkinson (supra) is thus distinguishable on facts. There, the shape of the goods was really in issue. The products in dispute were identified with the respective marks, which were totally distinct being Roho and Flo'Tair. They were distinctive of the respective products and therefore, it was held that consumer does not identify the product complained of by the shape of the goods, which were cushions. The court came to the conclusion that there is no

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passing-off with reference to the shape of the goods. We are dealing in this case with the mark and trademark. It is apparent that this principle is contrary to the well settled principles of law laid down by the Indian courts. We do not think that the learned Single Judge was right in taking assistance of this decision. Pertinently, after this decision is referred, the learned Single Judge promptly refers to the decision in the case of Cadila (supra) of our Hon'ble Supreme Court. He has reproduced a passage from that judgment, but we find from a complete reading of not only that passage, but the entire judgment that it does not suggest that the plaintiff is obliged to prove goodwill and reputation of a certain kind, namely, the association of that product with its source or maker. With great respect, the learned Single Judge totally erred in importing the Hodgkinson principles and applying them to the facts and circumstances of the present case so also in importing those principles into Indian law. The learned Single Judge has referred to all the binding judgments, but has not been able to cull out, with respect, anything from the binding judgments of Indian courts on the lines as indicated in Hodgkinson (supra). When all facts and circumstances of the case indicate that trinity is satisfied in the backdrop and context

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of Indian law, then, there was no obligation on the learned Single Judge to have applied an inapplicable principle to the facts and circumstances of the present case and refuse the interim injunction as prayed by the plaintiff. Thus, the learned Judge has fallen in grave error in taking assistance of Hodgkinson (supra).

88 Equally, the learned Single Judge was wrong in refusing the injunction on the ground of delay and acquiescence. It was conceded by Mr. Dwarkadas before the learned Single Judge and before us as well that mere delay is inconsequential. Acquiescence is a facet of delay. However, the defence of acquiescence can succeed when the plaintiff assents to or lays by wholly to the acts of another person. The learned Single in para 34 correctly notes down the principle that mere silence or inaction of the kind involved in laches cannot be, therefore, laying by. The former principle, namely, sitting by or laying by is involved in laches and that means that the claimant knew of the invasion of his rights and did nothing about it. This conduct of the plaintiff is inconsistent with the claim of exclusivity. The learned Judge holds in this case that there is a refusal or failure to act on the part of the plaintiff despite knowledge of invasion

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and opportunity to stop it. The learned Judge says that this is not a case of pure delay or being late in coming to the court, but of tardiness with knowledge. When, the learned Judge says that acquiescence demands a positive act and nothing further, then, the aspect of delay or being late in coming to the court is not a positive act. It does not mean a letter of approval either. Acquiescence is the species of estoppel and therefore, rule of evidence and rule of equity. It essentially means an assent to an invasion of rights. Then, he culls out this principle and applies it to the faces and circumstances of the case.

89 The learned Judge then attributes acquiescence to the plaintiff. The plaintiff's predecessor in title did not object to the trademark registration application. It allowed others to do so and it is the plaintiff's failure to bring a suit on service of a caveat. Thus, there is no objection from the plaintiff. It only means that the plaintiff kept quiet when the application for registration was made by the defendant. They failed to object to the advertisement of the defendant's application or when the defendant brought its project in market. They did not object to other entities introducing their products in the market either.

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This is enough to assume acquiescence. We do not think this to be the position on facts and in law. A plea of acquiescence to be raised in defence so as to succeed ought to be supported by weighty materials to that effect. Since the learned Single Judge has referred to the judgment of the Hon'ble Supreme Court in the case of M/s. Power Control Appliances and Ors. vs. Sumeet Machines Pvt. Ltd. (1994) 2 SCC 448, we would refer to it in some details. Paras 4, 5, 7, 11, 12, 13, 14, 15 and 16 of this judgment were heavily relied upon by Mr. Tulzapurkar. In that, the facts and the submissions are sumarised. Then, in para 20, the argument of the respondent before the Hon'ble Supreme Court was set out. In paras 27, 28, 29 and 30, the English judgments were noted and up to para 31. Thereafter, the decisions rendered by our Hon'ble Supreme Court and other courts have been noted.

90 We are in agreement with Mr. Tulzapurkar that even at this prima facie stage stage, there is no positive act which can be attributed to the plaintiff so as to deny the relief. There is no acquiescence and which can be culled out. Beyond referring to some general principles, we do not find any material placed

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before the learned Single Judge from which an inference of acquiescence can be drawn. Mr Dwarkadas has, on this point, relied upon certain judgments and even in the written submissions, there is reference to general principles. All that the first defendant says is as under:-

"(ii) The defence of the acquiescence is available to Respondent No. 1 since the plaintiff was aware of its right and the defendant was ignorant of its own right and despite the same, the plaintiff assents to or lays by in relation to the acts of the defendant and in view of the same, it would be unjust in all circumstances to grant the relief of injunction to the plaintiff. It is submitted that the requirements stand duly fulfilled and on the above set of facts where from 2009/11, the Appellant/its predecessors are duly aware of Respondent No. 1's trademark; the use of Respondent No. 1's mark openly and on an extensive scale; and at no point for over 7 years did the Appellant or its predecessors contest the same. On the contrary, the Appellant's 2014 acquisition of the trademark is with full notice of the adoption and use and registration of Respondent No. 1's trademark. As

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such, the principles of acquiescence and waiver apply with full vigour.

(iii) Acquiescence is a species of estoppel and therefore both a rule of evidence and a rule in equity. It is an estoppel in pais: a party is prevented by his other own conduct from enforcing a right to the detriment of another who justifiably acted on such conduct.

(iv) The 'positive act' as referred to in the decision of the Hon'ble Apex Court in M/s. Power Control Appliances and Ors. V. Sumeet Machines Pvt. Ltd. reported in (1994) 2 SCC 448 (relied upon by the Appellant) cannot mean that the plaintiff 'green-lighting' the defendant's action only to later complain of it. The 'positive act' is the 'sitting by' or 'laying by' i.e. not mere silence or inaction but a refusal or failure to act despite knowledge of invasion and opportunity to stop it. In the present case, from 2009, the Appellant and/or its predecessors have been at notice of Respondent No. 1's adoption, use and registration of its trademark

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and against that there has been a complete failure to register any protest or objection. In 2014, the Appellant acquired the trademark with full notice of Respondent No. 1's registration and use of the trademark "CHYMTRAL". This qualifies for both acquiescence and estoppel defences."

91 Thus, the attempt is to equate delay with acquiescence and which is not correct. We do not think that because the appellants stepped in in the year 2014 with notice of the first respondent's registration and use of the mark that means the appellant-plaintiff has acquiesced in the same. That is not a positive act and which is required to deny the relief on the ground of acquiescence.

92 We may now refer to certain judgments which have been cited by Mr. Dwarkadas. Mr. Dwarkadas firstly relies upon the judgment of a learned Single Judge in the case of Medley Pharmaceuticals Ltd. (supra). The suit was filed for passing-off. The plaintiff adopted a distinctive trademark CEFO for its use in relation to a medicinal and pharmaceutical preparation containing the drug "Cefixim" to be marketed by it. The plaintiff states that after considerable time, efforts and

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reputation was built, it came to know that there is a mark deceptively similar to the plaintiff and used by the defendant in relation to the similar drug formulation. Based on these assertions, the arguments were canvassed on an application for interim relief. The learned Single Judge held that even on merits, the plaintiff has no case. The prefix 'Cef' with almost identical mark of the plaintiff is already in the market and sold by various parties. The learned Single Judge referred to several publications, including Indian Drug Review and found that similar products with the same prefix are available in the market. Thus, marks of both, the plaintiff and the defendant were in that sense already in public domain. There was nothing exclusive in relation to the same. It is in these circumstances and purely on facts, the injunction was denied. At the same time, the learned Single Judge was aware of the principle that merely because the mark has been used by various other companies in the market is not sufficient to deny injunction in favour of the plaintiff, but the defendant must also establish that the parties using the similar mark in the market have huge market share and that their sale is of substantial amount. In that case, even on that score, the defendant was able to

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establish from the materials produced that there are various companies in the market selling similar product and using similar mark and their sales are substantial. Thus, this judgment is clearly distinguishable on facts.

93 Then, Mr. Dwarkadas relied upon an order of the Division Bench, which upheld this view of the learned Single Judge. There as well, the Division Bench found that there are preparations available in the market with the same prefix and marks are derived from the chemical found "Cefixime". The sales of these products are in millions of rupees. It is in these circumstances and also on the ground, namely, there is no phonetic similarity in the mark 'CEFO' and 'CEFI' that the appeal was dismissed.

94 In the case of Schering Corporation (supra), the facts are peculiar. The order of the learned Single Judge held that "Netromycin" and "Netmic In" are not deceptively similar. The learned Single Judge held that the appellants have failed to prove distinctiveness of their mark by packaging and the two marks are not deceptively similar and hence there is no possibility of any confusion. The Division Bench heard both

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sides and held that the marks were adopted from the generic name "Netilmicin". It was argued that the suffixes "Micin",

"Mycin" in the rival trade marks are common to the trade and this fact is not disputed by the appellants. It is in these circumstances that the argument based on the principle that when the mark is found from common generic name, no single proprietor can claim absolute monopoly on trademark, was accepted. In such a case, the first user cannot claim exclusivity in the trademark. We do not see how this judgment also has any application in the facts and circumstances of the present case. The plaintiff has pointed out from the materials placed on record that the mark of the appellant is not common to the trade, the mark or part thereof is not derived from a generic word and several traders may be using the same. However, the burden is on the defendants and they have to prove that there are substantial sales. Even otherwise, as is rightly pointed out by Mr. Tulzapurkar, the learned Single Judge has rendered contradictory findings. In para 2 of the impugned order, the learned Single Judge holds that the marks may, for the purpose of this case, be taken to be sufficiently similar, though not identical, but in para 8, he says that "I do not think Torrent's

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reputation admits of any doubt at this stage". We find from a reading of the impugned order and in its entirety that the learned Single Judge has not denied the relief to the plaintiff on above counts. There is also merit in the argument of Mr. Tulzapurkar that while arguing as noted above, the first defendant does not deny that it has also made an application for registration of its own mark. It is difficult to then reconcile his stand as noted by us. We also find that there is no evidence on record, to conclude even prima facie that there are third parties in the market and substantially selling goods under a generic name.

95 The respondent no. 1 then relied upon the order of a learned Single Judge in the case of Ranbaxy Laboratories Ltd. (supra). There, on facts, it was found that the marks in question with suffix are common to the trade and other registered trademarks. Further, the composition of the two products was found to be different. They were prescribed for treating different ailments. The learned Single Judge found that the test to be adopted in considering the question was whether the two marks are deceptively similar or not and

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whether a ordinary consumer would be confused to take one product for the other because of the similarity in the marks and other surrounding factors. We do not find any such features and as rightly urged by the plaintiff, even this judgment is of no assistance.

96 Then, the learned senior counsel Mr. Dwarkadas relied upon a judgment of the Hon'ble Supreme Court in the case of J.R.Kapoor (supra). There as well, the Hon'ble Supreme Court found that there are various products manufactured and with a micro-chip technology being the base. The word "micro"

being descriptive of the micro technology used for production of many electronic goods, which daily come to the market, no one can claim monopoly over the use of the said word. Secondly, it was held that phonetically, the words are totally dissimilar and not going to create any such confusion in the mind of the users. Even visual impression of the mark is different. Thus, this decision is rendered on facts.

97 The learned senior counsel has also relied upon a Hon'ble Supreme Court judgment in the case of Khoday India Ltd. (supra) on the principle of acquiescence. The principle is

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discussed by the Hon'ble Supreme Court from paragraph 61 onwards and it held that Delay would be a valid defence where it has caused a change in the subject matter and action or brought about a situation in which justice cannot be done. Thus, mere delay was not held to be of great significance. On the plea of waiver as well, the Hon'ble Supreme Court referred to the settled tests. The emphasis by Mr. Dwarkadas on paragraphs 34 to 36, 42 and 43 must be seen in the backdrop of ultimate conclusion on facts. The conduct of the person in the background of rectification proceedings was thus highlighted. We do not see how we can take assistance of this judgment and these principles when the nature of the proceedings is totally distinct.

98 Finally, the learned senior counsel has relied upon a judgment and order rendered by one of us (S. C. Dharmadhikari, J.) in the case of Unichem Laboratories Ltd. (supra). There, the factual position was noted and from paragraphs 5, the stand of the defendant is also set out and particularly of suppression of material facts. (see para 7). Then, the records of the trademark registry indicating number

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of registrations/applications for registration of "LORAM"

and/or LORAM formatives in the names of different entities. It is in these circumstances that the rival contentions led the court to conclude that the observations in the case of Khoday India Ltd. (supra) would apply. Thus, on facts, the plea of delay and acquiescence was accepted. Even this judgment is clearly distinguishable. There, the plaintiff had approached this court with unclean hands.

99 As a result of the above discussion, we find that the reliance by Mr. Tulzapurkar on the judgments, particularly on the case of Cadila Health Care Ltd. (supra), Bal Pharma Ltd. (supra) and Ellora Industries (supra) is well placed.

100 Thus, being aware of the settled principles, what the learned single Judge has done is not to apply them only because of the first defendant's presence in the market prior to the plaintiff's entry on the scene. Secondly, the non objection or no opposition raised to the application for registration made by the first defendant. Thirdly, the plaintiff's failure in making out a case of confusion as to the source. Thus, the conclusions which have been summarized by the learned single Judge in paragraph

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44 by referring to the tests required to be met are also not accurate for the learned single Judge varies them in that process. The learned single Judge has not reiterated the well settled principles and by applying them to the facts and circumstances of the present case refused the interim injunction. Instead, he has laid down new tests and principles by referring to English judgments and some of our Courts. However, with great respect, he has not correctly read the binding judgments of our Courts. What they hold is quite the opposite to how they are read. It is from the beginning, the learned single Judge fell in error. He ought to have applied the binding judgments for they lay down the guiding principles to the facts and circumstances of the present case. We do not think that there was any justification and in law for refusing the relief that the plaintiff was claiming. It is merely because the rival goods have remained for a long period of time in the market, the action is not quia timet, then, accepting a proof of misrepresentation may be unrealistic is the learned single Judge's erroneous view. It is in these circumstances, what the learned Judge terms as mere assertions of the plaintiff, but without materials is once again an error. That is of not proceeding on the admitted facts.

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101 In paragraph 45, therefore, the learned single Judge concluded and, with great respect, erroneously as under :

"45 In the present case, I am not satisfied that any of these tests are met. Reputation as to source is not sufficiently demonstrated. The rival products have long co-existed and I cannot and will not presume misrepresentation by Wockhardt as to source, even assuming there is similarity. There is no explanation at all for Torrent's past conduct and the inaction with knowledge, or deemed knowledge, of Wockhardt's trade mark registration application, its advertisement and subsequent registration, with not a single objection from Torrent or its predecessor-in- title. There is no answer about the caveats or about the co-existence of other players in the market. There is simply no misrepresentation shown as required by law, at this prima facie stage. There being no prima facie case made out, I cannot grant the injunction. The balance of convenience seems to me to favour entirely the Defendants; after all, to the Plaintiff's knowledge, they have had their product in the market for a very long time, at the very least for five years, possibly more, and an injunction at this stage is far removed from the prima facie status quo that Wander v Antox tells us is the primary objective. There is no injury, let alone an irreparable one, to the Plaintiff that I can tell

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if an injunction is refused. It has not had one all this time while the Defendants' business has grown into crores. To grant the injunction would be unfairly monopolistic."

102 After referring to the order of the learned single Judge, in the backdrop of the settled principles, we are of the view that it is vitiated by errors of law apparent on the face of the record. The impugned order is, ex-facie, erroneous and illegal. It ignores admitted factual materials and settled tests while denying relief to the appellant-plaintiff. For these reasons it is unsustainable and we have no alternative, but to quash and set aside the same. It is, accordingly, quashed and set aside.

103 In the result, we pass the following order :

O R D E R :

(a) The impugned order dated 15^thMarch, 2017, is quashed and set aside. The plaintiff's Notice of Motion is made absolute.

(b) There will an interim injunction against the defendants and in favour of the plaintiff in terms of prayer clause

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a(ii) of the Notice of Motion.

(c) In the circumstances of the case, there will be no order as to costs.

104 After the judgment and order was pronounced, Mr. Dwarkadas, learned senior counsel, seeks stay of this operative order granting interim injunction in terms of prayer clause a(ii) of the Notice of Motion on the ground that there has never been any ad-interim or interim injunction running against the defendants. Hence, the operation of this judgment and order be stayed so as to enable the appellant to either challenge this in the higher Court or take appropriate steps.

105 The request is opposed by the plaintiff on the ground that the products are medicinal and if any liberty is granted to continue the same, not only there would be a confusion, but there is likelihood of spurious goods being dumped in the market.

106 After having heard both sides on this point, we are of the view that the request of the defendants to stay the operation

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of this judgment and order for a few weeks deserves to be granted. The operation of the judgment and order is stayed for twelve (12) weeks. However, it would be entirely at the risk of the defendants. No equities can be claimed.

PRAKASH D. NAIK, J. S.C. DHARMADHIKARI, J.

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