Apex Laboratories Ltd. vs Alkem Laboratories Ltd

K.N. Basha, J

This application is for the removal of trade mark ZINCOCET registered under trade mark No. 1052854 in Class 05 in the name of respondent.

2 . The applicant claimed that they are doing business in manufacturing and selling "Medicinal & Pharmaceutical Products" for a long time. It is stated that they are the prior user and adopter of the trade mark ZINCOVIT and got it registered on 16.03.1988. Thereafter, it is renewed periodically and the same is valid as on date. It is the case of the applicant that they are using the said trade mark for a continuous and uninterrupted period. In support of their claim they have also filed invoices and bills. Their case is that they are using the trade mark right from the year 1990.

3 . It is the further case of the applicant that the respondent had copied their well established registered trade mark 'ZINCOVIT' by adopting the identical word 'ZINCOCET' and such adoption of the trade mark ZINCOCET by the respondent i dishonest and the same is liable to be cancelled.

4 . The respondent filed their counter statement denying each and every allegations and claims of the applicants. It is state by the respondent that in the year 2001 they had honestly and independently coined and conceived for adoption of the mark ZINCOCET for use in respect of their pharmaceutical preparation. The mark ZINCOCE was coined by telescoping the prefix "ZINCO" from the said generic name ZINC GLUCONATE and adding the suffix "CET" from the generic name CETRIZINE thu coining a completely new brand name ZINCOCET and making a pronounceable word out of it. It is their case that they have adopted the impugned trade mark after a thorough search and also obtained official Search Report and thereafter they have filed application for registration No. 1052854 dated 18.10.2001. It is claimed that their mark has acquired reputation and goodwill. It is stated that the rival marks are phonetically structurally and visually distinct and different. It is further stated that suffix in their mark 'OCET' is completely different to the suffix 'OVIT' of the applicants. It is further submitted that the respondent mark has been rightly registered and rightly remain on the register.

Mr. Satish Kumar, the learned counsel for the applicant would vehemently contend that the applicant has made out a case for the removal of the impugned trade mark on the basis of voluminous documents of evidence produced by them before this hon'ble Bench by way of invoices and bills etc. It is his first and foremost contention that the applicant is the prior adopter and prior user and also they got the registration of their trade mark ZINCOVIT as early as in the year 1988 and whereas the respondent got the registration of their trade mark ZINCOCET only in the year 2001. The learned counsel would further contend that the impugned trade mark is phonetically similar to that of the trade mark of the applicant and as such the impugned trade mark is liable to be cancelled on the ground of deceptive similarity.

It is also contended that the respondent has not made out their case for rejection of this application and their objection to the effect that ZINCO is a common name to the trade, and as such the applicant cannot claim monopoly to the said name is unsustainable. It is pointed out by the learned counsel for the applicant that if such contention is accepted even the respondent cannot use the said generic word ZINC in respect of their trade mark namely ZINCOCET.

The learned counsel would further contend that the advertisement given in respect of the respondent trade mark in journal, it is stated only proposed to be used as on the date of application in the year 2001. Therefore, it is contended that the applicant is prior adopter and user and got their trade mark registered earlier cannot be disputed by the respondent. The learned counsel in support of his contentions would place reliance on the following decisions.

1 . AIR 2001 SC 1952 - Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.

AIR 1963 SC 449 - Amritdhara Pharmacy Vs. Satya Deo Gupta

AIR 1960 SC 142 - Corn Products Refining Co. Vs. Shangrila Food Products Ltd.

4 . 2010 (43) PTC 483(Mad.) (DB) - Sun Pharmaceutical Industries Limited Vs. Cadila Healthcare Ltd.

Per contra, Mr. Rashmin Khandekar, the learned counsel for the respondent would vehemently contend that the applicant has not at all made out any ground for the cancellation of the impugned trade mark. It is contended that the respondent has taken all precautions and also verified and ultimately obtained search report in respect of prior registration of similar trade marks and as per the search report of the examiner as per Exhibit-B, the name of the trade mark of the applicant was not found. It is strenuously contended that the impugned trade mark is not deceptively similar to that of the trade mark of the applicant. It cannot be contended by the applicant that the impugned trade mark is phonetically similar to that of the applicant as the suffix used in both the trade marks are entirely different, though the prefix is common in both the trade mark.

The learned counsel would further contend that in support of their claim relating to their continuous use they have filed voluminous documents by way of invoices and bills. The learned counsel would place strong reliance on the following decisions to substantiate his contentions.

2011(1) Bom. C.R. 89 - Schering Corporation & Anr. Vs. United Biotech (P) Ltd. & Anr.

2006 (33) PTC 492 (Mad.) (DB) - Apex Laboratories Ltd. Vs. Zuventus Health Care Ltd.

We have given our careful and thoughtful consideration to the rival contentions put forward by either side and thoroughly scrutinized the entire materials available on records.

The undisputed fact remains that in both the trade marks of the applicant and the respondent the prefix namely ZINCO is one and the same. However, the suffix used in respect of the applicants trade mark namely VIT and in respect of the impugned trade mark CET are entirely different. Such being the position, we find it difficult to accept the contention of the learned counsel for the applicant to the effect that the impugned trade mark is deceptively similar to that of the applicant's trade mark. We can also safely come to the conclusion that by no stretch of imagination, it could be stated that the impugned trade mark ZINCOCET is phonetically, structurally or visually/deceptively similar to that of the applicants trade mark ZINCOVIT.

In respect of the usage, it is seen that the applicant and as well as the respondent filed documents of invoices. Though the respondent has pointed out by the learned counsel for the applicant has obtained their registration only in the year 2001, the applicant has got registration in the year 1998, it is pertinent to note that the applicant has filed the invoices only from the year 2001, though claimed to have been used from the year 1999. Therefore on the ground of prior use or prior registration, the applicant cannot seek the cancellation of the registration of the impugned trade mark.

1 3 . The learned counsel for the respondent rightly placed strong reliance on the Division Bench decision of the Hon'ble High Court of Madras Apex Laboratories Ltd. Vs. Zuventus Health Care Ltd. reported in 2006 (33) PTC 492 (Mad.) (DB) wherein, the applicant is one of the party and the hon'ble division bench considered the applicants trade mark ZINCOVIT vs. ZINCONIA in the said decision, the division bench considered the following decisions of the hon'ble Apex Court.

"In Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd. (AIR 2001 SC 1952) : 2001 PTC (21) 300 (SC), The supreme court held 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. In view of the varying infrastructure for supervision of physicians and pharmaceuticals 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 measure to prevent any confusion arising from similarity of marks among medicines are required to be taken." and for deciding the question of deceptive similarity, the following factors must be considered-

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

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

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

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

(e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(f) The mode of purchasing the goods or placing orders for the goods, and

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

Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case."

In Corn Products Refining Co. Vs. Shangrila Food Products Ltd., (AIR 1960 SC 142) : PTC (Suppl)(1) 13(SC) it was held:

"The question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing and English word by English men, which is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It is well recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole."

In J.R. Kapoor Vs. Micronix India,: (1994 Supp (3) SCC 215) : 1994 (14) PTC 260 (SC) the two trade marks in question were 'MICRONIX' and 'MICROTEL'. The Supreme Court held that those who are familiar with the use of electronic goods are not likely to be misguided or confused merely by the "MICRO? in the trade name, since "CRO? is the descriptive of the micro technology used for production of many electronic gods which daily come to the market and no one can claim monopoly over the use of the said word. The Supreme Court held that the two names are not only phonetically different, even their visual impression of them are different. Therefore, it was held that there was not even the remotest chance of the buyers and users being misguided or confused.

In SBL Ltd. Vs. Himalaya Drug Co.1997 (17) PTC (DB), the marks were 'Liv.52' and 'LIV-T'. The division Bench of the Delhi High Court held that the word 'Liv' is a generic term and public juris and no one can claim an exclusive right and that as regards the two rival marks 52 and T which contain a common feature 'LIV' that customer will not consider the common feature and pay more attention to the descriptive features.

Similarly, in Roche & Co. Vs. G. Manner & Co., AIR 1970 SC 2062) where the question was whether DROPOVIT and PROTOVIT were deceptively similar, the Supreme Court held that 'VIT' is a well known abbreviation used in pharmaceutical trade to denote vitamin preparation and it was both descriptive and common to the trade and if attention is paid to the uncommon element in the two words, there is not scope for mistake or confusion.

In the case of hand, both the medicine preparations contain Zinc and therefore the word Zinc is common to the trade and is publici juris. The appellant cannot claim ownership over the said word. Further, it would be dangerous to split the word into two and grant injunction merely because both the trade names contain the word Zinc. In William Bailey (Birmingham) Ltd's application (1935 (52) RPC 136) Farewell, J. Said.

"I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole ... I think it is dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word."

It is no doubt, true, when prescriptions are telephonic or handwriting, the chances of confusion or mistake cannot be ruled out if the marks appear too much alike when handwritten or sound too much alike when pronounced.

But as regards 'Zincovit' and 'Zinconia', the two words are phonetically dissimilar and the visual impression of the said names are also different and hence, are hardly likely to cause confusion in the mind of a common consumer."

The principles laid down in the decision cited supra by the hon'ble division bench of the High Court of Madras following the hon'ble Apex Court decisions are squarely applicable to the issue involved in the instant case. In the said case, the division bench has categorically held ZINCOVIT and ZINCONIA are phonetically dissimilar an even the visual impression of the said name are also different. Even in respect of the case on hand, we are of the considered view that the impugned trade mark ZINCOCET cannot be stated to be phonetically, structurally or deceptively similar to the applicants trade mark. In view of the same, we are constrained to reiterate that the applicant has miserably failed to make out case of phonetical, structural and visual similarity or deceptive similarity in respect of the impugned trade mark. The decisions relied by the learned counsel for the applicant is not applicable to the facts and issues involved in the instant case.

In view of the aforesaid reasons, the application is hereby dismissed.