Apex Laboratories Ltd. vs Zuventus Health Care Ltd.

Prabha Sridevan, J.—Apex Laboratories Limited, the appellant herein are the manufacturers of pharmaceutical products and have adopted

the trademark ""Zincovit"" on 16.03.1988 for their product viz., syrup and tablets and have also applied for its registration as a proposed mark and

obtained registration of the Trade mark, which has been renewed and is in force. It is claimed that they have filed a number of suits against

infringement of their trademark ""Zincovit"" and have also obtained injunction orders. Sometime during February, 2006, it came to the knowledge of

the appellants that the respondents are manufacturing and selling pharmaceutical products under the trade mark ""Zinconia"". The appellant''s claim is

that the respondents are guilty of infringement of the trademark and also of passing off. Therefore, they filed C.S. No. 216 of 2006 and applied for

injunction in O.A. Nos. 244 and 245 of 2006.

The respondents resisted the application claiming that there are several registered owners of trade mark containing the word ""Zinco"" and the

appellant is not the exclusive proprietor of the word ""Zinco"". It is also claimed that the marks are visually and phonetically dissimilar and there are

no oral, visual or conceptions] similarities and the essential features in both the marks i.e., colour combination, scheme of writing are entirely

different. Interim injunction granted ex parte was vacated by the learned Single Judge holding that there is no likelihood of causing confusion in the

mind of the purchaser and there is no similarity and deceptivenes in the names ""Zincovit"" and ""Zinconia"" and further that ""Zinc"" is the common name

in trade. Against this order, the appeal has been filed.

The learned Counsel for the appellant relied on several decisions to support the case for injunction. The learned Counsel for the respondent

produced the card-board cartons to show the dissimilarities and stated that there was no way the consumer could be deceived into thinking that

the respondent''s product is actually the appellant''s product.

Several decision were relied on by the learned Counsel.

(i) In Ciba Geigy Limited & Hindustan Ciba-Geigy Ltd. v. Croslands Research Laboratories Ltd. 1995 IPLR 375, the Division Bench of this

Court held that EUGEL was strikingly similar to EMULGEL and the products were sold identically in hand designed cartons and tubes and,

therefore, injunction must necessarily be granted.

(ii) In Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., , 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 prescriptionor 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 measures 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.

(iii) In Corn Products Refining Co. Vs. Shangrila Food Products Ltd., 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 recognised that in deciding a question of similarity between

two marks, the marks have to be considered as a whole.

(iv) In J.R. Kapoor Vs. Micronix India, the two trademarks in question were ''MICRONIX'' and

MICROTEK�. 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 tradename, since ''MICRO'' is the descriptive of the micro technology used for production of many electronic

goods 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.

(v) In SBL Ltd. v. 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 publici 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.

(vi) Similarly, in F. Hoffmann-la Roche and Co. Ltd. Vs. Geoffrey Manner and Co. Pvt. Ltd., where the question was whether DROPOVIIt 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 on 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 Farwell, 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 a dangerous method to adopt to divide the word up and seek to distinguish a portion of it

from a portion of the other word.

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 phoneticaly 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 learned Judge was right in vacating the order of interim injunction and we are not interfering with the same. The appeal is therefore,

dismissed. No order as to costs. The connected miscellaneous petitions are also dismissed.