Ranbaxy Laboratories Limited vs V. Anand Prasad And 4 Ors.

T.R. Subramanian, Technical Member

This is an appeal against the order of the Deputy Registrar of Trade Marks, Chennai dated 19th day of July, 1999 dismissing the Opposition No.

MAS/2644 filed by the appellants opposing the registration of the respondents trade mark Application No. 477462.

The respondents M/s. Pharman Laboratories hereinabove had filed Trade Mark Application No. 477462 on 26th August, 1987 at the Trade Marks

Registry, Chennai for ""registering the trade mark QSTWIN word per se in class 5 in respect of pharmaceutical and medicinal preparations. The said

mark was proposed to be used on the date of the application. The application was accepted and advertised in the trade marks journal dated 16.12.91.

On 17th February I992 M/s. Ranbaxy Laboratories hereinabove filed a notice of opposition opposing the registration of the respondents' mark under

Sections 9, 11(a), 11(e), 12(1) and 18(1) of the Trade and Merchandise Marks Act, 1958 mainly claiming that the appellants are the registered

proprietors of the trade mark FORTWIN under trade mark No. 297761 in class 5 in respect of medicinal and pharmaceutical preparations for human

use. The respondents filed their counter state merits denying the allegations of the opponents. The appellants filed their evidence in support of the

opposition. The respondents filed their evidence in support of their application. The appellants filed their evidence in reply. The case was heard by the

Deputy Registrar of Trade Marks on 16th December, 1998. By his order dated 19th July, 1999 the Deputy Registrar dismissed the opposition on the

ground that the rival marks are not deceptively similar.

The appellants filed an appeal TMA 4/99 before the Hon'ble High Court of Chcnnai which was transferred to the IPAB. The appeal was heard by

IPAB on 23rd December, 2003.

At the hearing Mr. M.K. Rao, Advocate appeared for the respondent and Shri A.A. Mohan, Advocate appeared for the appellants. As regards

Section 12(1) of the Act Shri A.A. Mohan, the learned counsel for the appellant submitted that the rival goods are identical as they are pharmaceutical

and medicinal preparations. He also submitted that the respondents mark OSTWIN is deceptively similar to the appellants registered trade mark

FORTWIN. He contended that the respondents have not filed any evidence in support of their contention that WIN is a common suffix in the

pharmaceutical trade. He submitted that an average person with imperfect recollection would get confused while buying medicines bearing the

respondents trade mark. He further submitted that as the doctors' hand-writing are not very legible it would also cause confusion to the pharmacists,

who dispense the medicines. He further submitted that as the respondent's medicine is not a prescription drug, it could be ordered over telephone. In

view of the phonetic similarity between the rival marks there will be confusion and deception between the rival marks. He also referred to the

judgment of the Supreme Court in Cadita Health Care Limited v. Cadila Pharmaceuticals Limited, AIR 2001 SC 1952, and submitted that the Supreme

Court held FALCTAB was similar to FALCIGO, the goods being medicines. He submitted that in case of medicines and drugs even a possibility of

confusion would have disastrous effect and hence use of confusingly similar marks should not be allowed to be registered.

He also referred to the following cases in support of his contention that the rival marks are deceptively similar AIR 1960 SC 142 (Glucovita Mark),

AIR 1963 SC 449 (Lakshmandhara mark), 2002 (25) PTC (Bom) DB (SPOXIN Mark), 1996 (21) IPLR 61 (Rolac mark) 2002 (24) PTC (Guj),

(ZOVIREX mark), AIR 1974 Madras 7 (Sri Andal mark).

In reply Shri M.K. Rao, the learned counsel for the respondents submitted that the rival marks are different as the' prefixes are completely

different. He contended that WIN as a prefix is also quite common in the trade and cited two cases WINOLATE (Application No. 373412) and

WINTOSIN (Application No. 380941) advertised in the trade marks journal numbers 882 and 842 respectively in support of his contention. He

contended that the first impression while comparing the rival marks is very important and especially as the prefixes FORT and OST of the rival marks

are different, there cannot be any confusion or deception. He referred to para 17,34 of the book ""Law of Trade Marks and passing off by Sri P.

Narayanan and stressed that the first syllable is more important in determining the similarity between the marks in case of short words.

We will now consider the question whether the appellants mark FORTWIN is deceptively similar to the respondents mark OSTWIN both being

used for pharmaceutical and medicinal preparations. The counsel for the appellant had relied upon various cases in support of his contention: The cited

cases, no doubt, lay down some principles of comparison. However, each trade mark case is unique by itself and the matter has to be decided on the

basis of facts and evidences filed by the parties in each case.

In the decision of the Hon'ble Supreme Court relied upon by the learned counsel for the appellants in Cadila Health Care Ltd. v. Cadila

Pharmaceuticals, AIR 2001 SC 1952 the learned Judges of the Supreme Court considered the various earlier decisions on the question of deceptive

similarity and on para 35, has held as under:

Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the

following factors to 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 resemblances 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 when may be relevant in the extent of dis-similarity between the competing marks.

Also while dealing with deceptive similarity with respect to pharmaceuticals and medicines with respect to the earlier decision of the Supreme

Court the learned Judges, in the Cadila Health Care case had made some observations. From this, it can be concluded that among other things, the

following factors have to be considered in deciding similarity between the marks:-

1) The class of purchasers and in case of medicines, it is purchased by both literate and illiterate residing in villages and towns and also by a man of

average intelligence and imperfect recollection.

2) Potential harm may be far more serious in case of medicines than in the case of other consumable products.

3) Even in case of prescription drugs prescribed by doctors and dispensed by chemists, confusion and mistakes are likely when marks which look like

and sound like are marketed.

4) Medicines are sometimes ordered over telephone. Hence if there is phonetic similarity, it enhances the chances of confusion or mistake by the

pharmacists. Sometimes, in hospitals, drugs may be requested verbally under critical conditions to treat patients.

5) Prescriptions are handwritten and many times it is not unmistakably legible if the rival marks appear too much alike then there are chances of

confusion or mistake by the pharmacists while dispensing the medicine.

6) The drugs have a marked difference in the composition with completely different side effects. Even if the rival drugs are for curing the same

ailment, there is possibility of harm resulting from any kind of confusion and the consumer can have unpleasant if not disastrous results.

7) Even though the physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provision for mistake

since even a possibility of mistake may prove to be fatal.

8) In case of medicines, whether there is any probability of confusion should not be speculated, but that if there is any possibility of confusion the use

of confusingly similar marks should be enjoined.

9) Confusion by the use of similar marks which are used for different diseases for medicinal products could have disastrous effect on health and in

some cases life itself.

10) In a country like India, where a small fraction know English and for whom different words with slight difference in spelling may sound phonetically

same and who cannot pronounce the marks correctly, the use of deceptively similar marks could cause confusion.

The Hon'ble Supreme Court in the CADILA Health Care case has referred to various decisions of the Indian, US and UK Courts where it has

been held that serious consequences may result in cases of pharmaceutical or medicines where the rival marks are similar or deceptively similar and,

therefore, a higher and strict standard should be applied in deciding cases to prevent possibility of confusion in the minds of the public. There should be

clear indicators as possible to distinguish the two medicinal products from each other and that drugs are poisons and not sweets. It was also held that

exacting judicial scrutiny is required if there is possibility of confusion over marks, which are applied to medicinal products because of potential harm.

The rules for comparison of words has been laid down by Lord Parker in Pianotist Company Limited's application, (1906) 23 RPC 774 at p. 777,

which is as follows:-

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be

applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding

circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the

goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion - that is

to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public

which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case"".

It has been stressed that the question whether the two marks are likely to give rise to confusion or not is a question of first impression (Corn

Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142).

It is also a well settled proposition that the marks have to be compared as a whole. Also to determine whether the two marks are deceptively similar

the test of an average person with imperfect recollection has to be applied. The authority has to visualize, if a customer who may be an ordinary

citizen and who may want to purchase a medicine would get confused.

As pointed out in Simatul Chemical Industries (P) Limited v. Cibatul Limited, 19 GLR 31,5 deception between two trade marks is not only

concerned with the concerned two parties but is concerned with the consumers and the interest of the general public will also have to be seen.

The Hon'ble Supreme Court in Cadila Health Care case AIR 2001 SC 1952) observed that the courts have to apply a higher and strict standard in

deciding the question of deceptive similarity between rival marks in case of medicines. Even if there is possibility of confusion it may result in

disastrous consequences. It was also held that 'FALICTAB' was similar to 'FALCIGO'. Also the Hon'ble High Court of Bombay has held ZEEPLEX

to be deceptively similar to BEPLEX (1998) PTC 692.

The appellants mark is FORTWIN and the respondents mark is OSTWIN. The prefixes are FORT and OST, and both the marks end with the

suffix WIN. If the marks are compared as a whole and keeping in view that the purchase would be done by an average person with imperfect

recollection and also while ordering the medicine over phone there is a possibility of confusion as there is some phonetic similarity, we feel that the

rival marks are phonetically and structurally deceptively similar. Furthermore, we are of the opinion that as the rival goods are pharmaceuticals goods,

serious consequences may happen if there is deception or confusion in the minds of the public.

As regards Section 11(a) the learned counsel for the appellant submitted that the appellants have adopted their trade mark FORTWIN in 1974 and

that they have been manufacturing pharmaceutical preparations under the above trade mark since November, 1975. He referred to the affidavit of

Mr. M.R. Luthra, Secretary of M/s. Ranbaxy Laboratories Limited and submitted that they have given sales figure from 1983 to 1992 and the sales

promotional expenses from the year 1986 to 1992 and that their first invoice having reference to the trade mark FORTWIN is dated 29.1.1987. The

counsel for the respondents in reply submitted that the appellants have not filed any evidence of any actual deception between the rival goods in the

market. It is seen from the records that even though the appellants have claimed that they have been manufacturing pharmaceutical goods under the

trade mark FORTWIN since 1975, they have in fact produced evidence of marketing the goods only from 29.1.1987. On the other hand, the

respondents have filed their trade mark application on 26th August, 1987 claiming that they proposed to use the mark on the date of the application.

The appellants have filed sufficient evidence in support of their contention that they have been using the mark before the date of filing of the trade

mark application by the respondents. We have also held earlier that the rival marks are phonetically and structurally deceptively similar. Hence, we

are of the view that the appellants have established the ground under Section 11(a) of the Act. During the hearing, the counsel for the appellants

submitted that their goods are analgesic composition for, orthopedic use. The counsel for the respondents also submitted that their pharmaceutical

composition is in respect of treatment of bones. It is seen from the above that the rival goods are for the treatment of bones. We are of the opinion

that even if the rival goods are for curing the same ailment, the drugs may have a marked different in composition with completely different side

effects. There is possibility of harm resulting from any kind of confusion and the same can have unpleasant if not disastrous results.

For the foregoing reasons, in our opinion, the appeal deserves to be allowed and is accordingly allowed. There is no order for costs.