Sun Pharmaceuticals Ltd vs Macleods Pharmaceuticals Limited 304-3101

,,

The Rectification Application is filed under Section 57 of Trademark Act, 1999 for Removal of the Registration 838726 for OFLOMAC for",,

medicinal and pharmaceutical preparations falling in class 5 in the name of Respondent No.1. The application for the impugned registration has been,,

filed on 28.01.1999on a proposed to be used basis and the sealing date for the registration certificate is 12.12.2005.,,

The details of the Impugned registered Trade Mark are :,,

Trade Mark No           :          838726,,

Class   :          5,,

Trade Mark     :          OFLOMAC Date of Application :          28/01/1999,,

First Date of Use        Â:           proposed to beu sed Date of Advertisement   :         Â,,

30/03/2005,,

Date of Registration    :          12/12/2005 Valid Till    :          28/01/2029,,

Goods :          MEDICINAL AND PHARMACEUTICAL PREPARATIONS.,,

FACTS OF THE CASE,,

On merit, the facts are as follows:",,

About the Applicant,,

The former Applicant namely Ranbaxy Laboratories Limited was a company incorporated under the Companies Act, 1956 having its Registered",,

Office at A-11, Industrial Area Phase VIII-A, SahibzadaAjit Singh Nagar, Mohali â€" 160 071 (Punjab) and its head office at 12th Floor, Devika",,

Towers, 6 Nehru Place, New Delhi 0 110 019. The former Applicant was India’s largest pharmaceutical company, incorporated in 1961 and",,

which went public in 1973. The former Applicant was among the few Indian pharmaceutical companies in India to have started its research program,,

in the late 70’s, in support of its global ambitions. Aworld class R&D centre was commissioned in 1994. At the time of filing this rectification",,

petition, the former Applicant had multi-disciplinary R &D centres at Gurgaon, in India, with dedicated facilities for generies research and innovative",,

research. The R&D environment reflected its commitment to be a leader in the generics space offering value added formulations and development of,,

New Drug Applications (NDA), based on its Novel Drug Delivery System(NDDS) research capability. The former Applicant’s first significant",,

international success using the NDDS technology platform came in September 1999, when it out-licensed its first a day formulation a multinational",,

company.,,

The former Applicantwas as an integrated, research based, international pharmaceutical company, producing a wide range of quality, affordable",,

generic medicines, trusted by healthcare professionals and patents across geographies. It had a 14,000 strong workforce in 50 different nationalities.",,

The former Applicanthad a presence in 23 of the top 25 pharmaceutical markets of the world. The former Applicant had a global footprint in 65,,

countries, world-class manufacturing facilities in 8 countries and serves customers in over 125 countries. In 2011, Ranbaxy Global Consumer Health",,

Care, one of the sister concerns of the former Applicant, received the Pharma OTC Company of the year award.",,

The former Applicant, vide a duly approved Scheme of Arrangement â€" merged with and transferred all of its assets along with the intellectual",,

property thereof to Sun Pharmaceuticals Private Limited (the Applicant). The said scheme of arrangement between Ranbaxy and Sun Pharma was,,

approved and sanctioned by the High Court of Gujarat vide Order dated 24/12/2014 in Company Petition No. 219 of 2014, and by the High Court of",,

Punjab and Haryana vide Orders dated 09/03/2015 in Company Petition Nos. 132 of 2014 and 165 of 2014. By virtue of Clause 12 of the duly,,

approved Schema of Arrangement, the trademark OFRAMAX, the subject matter of the present proceedings, stands transferred in favour of Sun",,

Pharma, the Applicant herein.",,

About the Applicant’s Trademarks,,

One of the medicinal preparations manufactured by the Applicant is under the trade mark OFRAMAX which is used for the treatment of,,

respiratory tract infection, meningitis, pediatric infections and severe soft tissue infections. The said drug contains the salt namely Ceftriaxone.",,

The Applicant’s trademark OFRAMAX is an invented and coined mark, which was adopted in the year 1989 and enjoys inherent",,

distinctiveness indicating trade origin and source of medicinal preparations originating from the Applicant. The trademark OFRAMAX has been,,

extensively and commercially used by the Applicant in the course of trade of medicinal preparations since the year July, 1991, for treatment of",,

respiratory tract infection, meningitis, pediatric infections and severe soft tissue infections. On account of this it has acquired formidable goodwill and",,

reputation as a badge of quality for pain reliever originating from the Applicant.,,

The Applicant’s trade mark OFRAMAX is registered in Class 5 with Registration No: 315962 dated 30/08/1989 for pharmaceutical and,,

medicinal preparations for human and veterinary.,,

The facts of the Applicant’s case against the Respondent No.1,,

It was in 1999 that the Applicant found about the Respondent No.1 selling the products for treatment of respiratory tract infection and severe soft,,

tissue infections under the structurally, visually and phonetically similar mark OFLOMAC.",,

The Applicant served a Legal Notice dated 27/08/1999 on the Respondent No.1 to restrain it fromusing the deceptively similar impugned mark,,

OFLOMAC.Thereafter, the Respondent No.1 served a reply dated 22/09/1999 refusing to comply with the Applicant’s abovesaid legal notice.The",,

Applicant filed civil suit againstthe Respondent No.1 on May 8, 2000 being suit no. CS (Comm.) No.645/2018 (earlier CS (OS) 887/2000) before the",,

DelhiHigh Court. On 29/05/2013, the Applicantfiled the present rectification petition against registration of thedeceptively similar impugned mark",,

OFLOMAC. Thereafter, the Applicant requested theDelhi High Court to stay the trial in the suit to await theoutcome of the rectification proceedings.",,

The Delhi HighCourt, through its order dated 08/04/2015, allowed the trial ofthe abovementioned suit to be stayed. On 22/05/2015, the Applicant",,

alsofiled the Miscellaneous Petition under Order 6 Rule 17 read withSection 151 CPC for amendment of the rectification petition inview of the,,

amalgamation of the company Ranbaxy LaboratoriesLtd. (former Applicant) with Sun Pharmaceutical IndustriesLtd. (the present Applicant). The,,

Delhi High Courthas passed an order dated 17/07/2017 directing the hearingsbefore Hon’ble IPAB to be expedited.,,

Judicial Decisions relied on by the Applicant,,

a. Cadila Healthcare Ltd. v. Shangri-la Corporation AIR 1960 SC 142 (paras 16, 22-25, 27, 32-33)",,

b. Amritdhara Pharmacy v. Satyadeo Gupta AIR 1963 SC 449 (paras 8-9),,

c. Corn Products v. Shangri-la Corporation AIR 1960 SC 142 (para 18),,

d. DurgaDutt Sharma v. Navaratna Pharmaceutical Labs AIR 1965 SC 980 (paras 28-29),,

Arguments advanced by the Applicant,,

Learned Counsel for the ApplicantMr. Hemant Singhargued that in the present case, the two marksare phonetically, structurally and visually similar,",,

the goods in question of both parties are the same goods. He argued that the claimed adoption of the impugned trade mark OFLOMAC by the,,

Respondent No. 1 in 1999 cannot be considered as honest or bonafide. It was argued that therefore the impugned registration is liable to be cancelled,,

lacking bona fide as well as on the ground of infringement, passing off and violation of Section 11(1) of the Trade Marks Act.",,

Learned Counsel for the Applicant further argued that the goodwill and reputation that the trademark OFRAMAX hasearned is evident from the,,

perusal of the statement of annual sales and promotional expenses incurred by the Applicant in respect thereof, the same was placed before us. The",,

invoices of sales of Ranbaxy for the period 2003 - 2013 are on record. However, on account of the fact that the predecessor company is no more in",,

existence, having amalgamated with the Applicant, the records of sale of drug pertaining to the period preceding 2003 are not available and therefore",,

could not be produced. However, the volume of sales of OFRAMAX certified by Ranbaxy for a period 2002 - 2013 have been placed on record.",,

Learned Counsel for the Applicant argued that on account of extensive commercial use of the trade mark OFRAMAX by the Applicant and its,,

predecessor in business and title, coupled with stringent quality control, the trade mark OFRAMAX has acquired tremendous goodwill and reputation",,

as a badge of quality for pain reliever originating from Sun Pharma. The goodwill and reputation that the trade mark OFRAMAX has come about to,,

acquire is evident from the fact that from the period 2002 to 2013, the total sales of OFRAMAX medicinal drug have been in excess of INR 3,064.04",,

Million. During the same period, Applicant spent more than INR 283.33 Million on promotion of OFRAMAX medicinal drug. Data has been placed on",,

record.,,

Learned Counsel for the Applicant further argued that pertinently, the trade mark OFRAMAX had already acquired significant goodwill and",,

reputation in the year 1999 which is evident from the sales figure of INR 5,01,96,000/- certified by IMS Health Information and Consulting Services",,

India Pvt. Ltd., the same was placed before us.",,

Learned Counsel for the Applicant argued that the impugned mark OFLOMAC is deceptively similar to the trade mark OFRAMAX on account of,,

overall structural, phonetic and visual similarity when “compared as a whole†and when examined from point of view of a man with “average",,

intelligenceâ€​ and “imperfect recollectionâ€​ not having the competing drugs for side-by-side comparison.,,

Learned Counsel for the Applicant argued that further, the impugned mark has been registered in respect of goods which are of a very similar",,

nature and belongs to the same genus i.e. “medicinal and pharmaceutical preparationsâ€. Hence, it is a case of similarity of trade marks and",,

identity of goods. Furthermore, the trade mark OFLOMAC is used for the treatment of the same ailment i.e. respiratory tract infection and severe",,

soft tissue infections that can also be administered in the form of injections, under a similar price point.This is admitted by the Respondent in paragraph",,

11 of reply to statement of case. Hence, even the use of competing trade marks are for identical, similar or allied ailments. It was argued that",,

Respondent No.1 is causing/abating confusion and deception amongst consumers, chemists and physicians who are likely to confuse one for another",,

on account of close phonetic and structural similarity leading to tort of passing off. The physicians are not immune to confusion or deception arising,,

from imperfect recollection. That being so, the use of the impugned mark in ordinary course of trade is likely to cause confusion and deception in the",,

minds of consumers at large and the members of the trade on account of imperfect recollection.,,

Learned Counsel for the Applicant submitted that manufacture and sale of any drug under the trade mark OFRAMAX or any other deceptively,,

similar trade mark is likely to cause confusion or deception in the trade and amongst consumers about the source and origin of the said drug. The,,

Applicant is the proprietor of the trade mark OFRAMAX under common law as well as under the applicable statute and is entitled to exclusive right to,,

use thereof or any other deceptively similar mark under the provisions of the Trade Marks Act, 1999.",,

It was also argued that the Applicant is the prior adopter and user of the trade mark OFRAMAX and has used the said trade mark for medicinal,,

and pharmaceutical preparations since the year 1991 in India. Being in pharmaceutical business, the Respondent No.1 was well aware of the",,

Applicant’s adoption and use of the trade mark OFRAMAX since the year 1991 and despite that, chose to adopt and use the impugned trade",,

mark OFLOMAC in January 1999 for the same ailment. Such adoption also amounts to unfair trade practice and unfair competition.The conduct of,,

the Respondent No.1 is unethical, unfair, lacks bonafide and is unlawful. Counsel therefore prayed that Respondent no. 2 be directed to remove the",,

impugned mark No: 838726 from the Register.,,

About Respondent No.1,,

The Respondent No. 1 was incorporated in 1986 and reported growing at an average growth rate of over 22% for the past 5 years. The,,

Respondent No. 1 has an asset of more than 10,000 professionally qualified employees across the globe and expertise in range of formulations ranging",,

from tablets to sterile dosage form and from inhalation to novel drug delivery system, the Respondent No. 1 is currently ranked 10th (on mat basis",,

source IMS) in Indian Pharmaceutical Industry and is recognized as one of the fastest growing pharmaceutical company in India. The Respondent,,

No. 1 has made pioneering efforts in providing medications for both chronic and acute therapy, with world- class state-of-the-art manufacturing",,

facilities approved by various regulatory authorities of many countries and well equipped R&D, analytical and bioequivalence center audited by various",,

regulatory authorities.,,

Contentions by Respondent No. 1,,

Respondent has honestly and bona fidely conceived and adopted the mark OFLOMAC in the year 1999 to treat the following ailments:,,

,Applicant’s Product,Respondent No. 1’s Product

Trade

Mark",OFRAMAX,OFLOMAC

Formulatio

n",Ceftriaxone,Ofloxacin

Dosage

Form","Injection dosage form / available

in vials",Tablets dosage form

Method of

use",Intramuscular and intravenous use,Oral

Indications,"Prescribed for severe medical

indications amongst hospitalized patients

and perioperative prophylaxis patients

for respiratory t r a c t infections,

meningitis, pediatric infections and soft

tissue infections.","Enteric respiratory tract infections,

meningitis, gram negative bacterial infections,

infections of tissues and skin, infections of

bones a n d joints, abdominal infections

including pelvis inflammation, infections of

kidney, UT, genital organs and gonorrhea.

Product

Packaging",,

Strengths,"250mg, 500mg and 1g","100mg, 200mg, 300mg and 400mg

Other

distinguish ing

factors","Applicant’s    Â

trade   name

prominently mentioned on the pack.","T he Respondent’s house mark viz.

MACLEODS is prominently mentioned o

the product.

Schedule

H",Yes,Yes

c) Sun Pharma v. IntasPharma; 2020 SCC Online Del 59 â€" Appellate Court (Paras 81- 95),,

d) Ajanta Pharma v. Zuventus Healthcare; CS (Comm.) No. 336/2019; Order dated May 06, 2020 (Para 12)",,

e) KalindiMedicure Pvt. Ltd. v. IntasPharma; 2006 SCC Online Del 1166; DHC (Paras 35-37),,

DISCUSSIONS,,

As already mentioned the impugned trade mark of the Applicant is OFRAMAX and that of the Respondent No. 1 is OFLOMAC .,,

While both marks have been filed on a proposed to be used basis, it is admitted position that while the Respondent No.1 has shown usage from",,

1999 onwards, the Applicant is the prior user, having already achieved sales figure of INR 5,01,96,000/-, in 1999 as per the data placed before us. It is",,

impossible that a product launched in 1999 or in a few years past would have achieved said sale figures, the logical assumption being that the",,

Applicant commenced use of the brand OFRAMAX sometime after the filing of its trademark in 1989 and well before achieving sales figure of INR,,

5,01,96,000/- in 1999.",,

It is an admitted fact that the parties trade in the same goods, both being medicines, the Applicant uses its trade mark OFRAMAX on an antibiotic",,

belonging to the cephalosporin group, which is used to treat bacterial infections in the body, including infections of the brain (e.g., meningitis), lungs",,

(e.g., pneumonia), ear, urinary tract, skin & soft tissues, bones & joints, blood and heart. while the Respondent No.1 uses the impugned trade mark",,

OFLOMAC on a combination medicine suspension and tablets that is used to treat diarrhea and dysentery and prevents the growth of microorganisms,,

to treat the infection, the sector, trade channels and consumer base all being the same.The chemical composition of the Applicant is Ceftriaxone and",,

that of the Respondent is Ofloxacin. There exists a likelihood of confusion on the part of the public, including the likelihood of association with the",,

Applicant's earlier registered trademark. The impugned registration is in relation to goods that are similar to the Applicant's goods; and therefore, it",,

stands in violation of Sections 11(1), 11(2) and 11(3) of the Act.",,

Respondent No. 1 states that the impugned trade mark OFLOMAC is derived from an invented combination of the chemical composition and the,,

company name. It submits that the coined word is inherently distinctive as it has no dictionary meaning and was created by Macleods by juxtaposing,,

the first letters of its name “MAC†with an abbreviated version of the chemical compositionOfloxacin. Respondent No.1 attempted to point out,,

the non-similarity in the two trademarks by dissecting the various syllables in the impugned trademark. That as it may, the questions remains as to",,

whether the use of these two trademarks in the trade would causes confusion in the minds of the general public.,,

FINDINGS OF THIS BOARD,,

a) The Similarity between the two trademarks,,

Now, the first question to be considered about the similarity of the two rival marks and it is to be decided upon about the deceptive similarity",,

between the two marks. The competing trade marks are illustrated as under:,,

OFRAMAX OFLOMAC,,

It is found that the competing marks are phonetically deceptively similar and margin has to be given for imperfect or slurred pronunciation of marks.,,

The syllable stress during pronunciation of the two trademarks would be:,,

OFRAMAX OFLOMAC,,

The factors that would result in confusion and deception are:,,

• The competing marks i.e. OFRAMAX and OFLOMAC comprises of same number of letters i.e. total 7 letters.,,

• The competing marks comprises of the same sounding prefix starting with the same letters being ‘’OF’’.,,

• The substitution of the letter ‘’X’’ with a soft consonant ‘’C’’ does not change the overall sounding effect of the,,

suffix ‘’MAC’’ in OFLOMAC.,,

• The marks end with the syllable “MAX†and “MAC†respectively, and the pronunciation of both the endings is almost identical i.e. Maks",,

and Mak;,,

• The middle syllables in both the marks, being “RA†and “LO†are likely to be slurred over. The difference will not be sufficient to avert",,

likelihood of confusion on account of phonetic similarity along with margin to be kept for imperfect pronunciation and imperfect recollection in,,

multilingual society in India.,,

Therefore, such substitution of letters will not be sufficient to avert likelihood of confusion on account of phonetic similarity along with margin to be",,

kept for imperfect pronunciation and imperfect recollection in multilingual society in India.,,

In the landmark judgment of Cadila Health Care Ltd. v. Cadila Pharma Ltd., reported in 2001 (2) GLH 53, the dispute was between the two brand",,

names i.e. ""FALCITAB' and ""FALCIGO"". The Hon'ble Supreme Court deliberatedon the principles governing an action for passing off and made the",,

followingelucidations in para 35 :,,

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 ora composite marks, i.e. both words and label works.",,

(b) The degree of resemblence 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.""",,

Subsequently in para 36, it has also been stated that weight to be given to each of the aforementioned factors hinges on the facts of each case and",,

the same weightage cannot be given to each factor in each case.Once more, the remarks in para 33 are as follows:",,

The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser",,

can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale,,

of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in",,

their entirety in India with no regard to Indian conditions? We think not. In a country like India where there is no single common language, large",,

percentage of population is illiterate and a small fraction of people know English, then to apply the principle of English law regarding dissimilarity of the",,

marks or the customer knowing about the distinguishing characteristics of the plaintiff's goods seems to overlook the ground realities in India. While,,

examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English",,

language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically,,

the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the",,

misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to,,

similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in",,

contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law, may not be at 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 between the two medicinal products may have disastrous effects on health and in some cases life itself. Stringent measures should be,,

adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects.,,

The confusion as to the identity of the product itself could have dire effects on the public health.""",,

It is appropriate to go through the further decisions of the Hon’ble Supreme Court inAmritdhara Pharmacy v. SatyaDeo Gupta reported in,,

AIR 1963 SC 449, Parle Products (P) Ltd. v. J.P. & Co. reported in AIR 1972 SC 1359. In Amritdhara's case, the Hon’ble Supreme Court was",,

dealing with the words Amritdhara and Lakshmandhara and held that the words had overall structural and phonetic similarity. It was further held by,,

the Hon’ble Supreme Court in the said case that ""the trade mark is the whole thing-the whole word has to be considered"". In Parle Products (P)",,

Ltd's case the Hon’ble Supreme Court held that ""In order to come to the conclusion whether one mark is deceptively similar to another, the broad",,

and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design.""",,

But in all the above cases, phonetic similarity alone was not taken to be the sole deciding factor. On the other hand, the Supreme Court stressed the",,

need to apply the test of ""overall structural and phonetic similarity"" in Amridhara's case and ""visual and phonetic tests"" in Cadila's case. Similarly, the",,

Supreme Court applied the test of ""broad and essential features"" in Parle Products case.",,

In the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. (AIR 1960 SC 142). The dispute was pertaining to the two,,

preparations GLUVITA and GLUCOVITA. Para 18 illustratesthe following:,,

Again, in deciding the question of similarity between the two marks we have to approach it from the point of view of a man of average intelligence",,

and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks it reasonably,,

likely to cause a confusion between them.,,

The absolute identity of the two competing marks or their close resemblance is only one of the tests for determining the question of likelihood of,,

deception or confusion. Trade connection between different goods is another such test. Ex hypothesi, this latter test applies only when the goods are",,

different. These tests are independent tests. There is no reason why the test of trade connection between different goods should not apply where the,,

competing marks closely resemble each other just as much as it applies where the competing marks are identical. Whether by applying these tests in a,,

particular case the conclusion that there is likelihood of deception or confusion should be arrived at would depend on all the facts of the case.,,

On applying the principles as above, the finding was recorded as follows:",,

The respondent applied for registration of the mark 'Gluvita' used with reference to biscuits manufactured by him. The appellant who had been using",,

the registered mark, 'Glucovita' with reference to his glucose with vitamins opposed the application under section 8(a). It was established that the",,

appellants' trade mark had acquired a reputation among the buying public.,,

Held applying the above tests that the commodities concerned were no connected as to make confusion or deception likely in view of the similarity of,,

the two trade marks. Apart from the syllable 'co' in the appellant's mark, the two marks were identical. That syllable was not such as would enable the",,

buyers in our country to distinguish the one mark from the other. Hence the respondents' mark could not be registered.""",,

In Astra-Idl Limited vs TTKPharma Limited, AIR 1992 Bom 35, BETALOC and BETALONG were the two brand names that clashed. It was",,

found that when the two names are visually and phonetically similar, when looked as a whole, there is a judicious likelihood of confusion and hence",,

injunction ought to be issued. It has also been perceived that the two words are so similar that, there is reasonable confusion between the two. That,",,

there is no question of microscopic examination but an overall or casual view from the customer's point of view betaken. That actual deception is not,,

necessary. Ensuing observations were as follows:,,

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

(b) The degree of resemblance between the marks phonetically, visually as well as similarity 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 purpose of the goods of the rival traders;",,

(e) The class of purchasers who are likely to buy the goods bearing the marks, their level of education and intelligence and the degree of care they are",,

likely to exercise in purchasing the goods;,,

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

(g) Any other surrounding circumstances.""",,

In Ranbaxy Laboratories Ltd. vsDua Pharmaceuticals Pvt. Ltd. , AIR 1989 Delhi 44, the two trade marks in question were CALMPOSE and",,

CALMPROSE. It was maintained that the two words are phonetically similar and that addition of a single letter without altering its phonetic sound,,

does not make it dissimilar. The Delhi High Court held that -,,

The test to be adopted is not the knowledge of the doctor, who is giving the prescription. The test to be adopted is whether the unwary customer, who",,

goes to purchase the medicine can make a mistake"".",,

The judicial precedents have thus been consistent in observing that difference in the composition or ailments or mode of administration would not,,

be factors preventing likelihood of confusion if the competing trade marks are otherwise similar, either visually or phonetically or structurally. Margin",,

has to be given for illegible handwriting, multilingual consumers, imperfect recollection, and lack of expertise of salesmen manning the pharmacy",,

counters even if the pharmacy shop is approved in the name of a pharmacist. The fact that the drugs in question may be Schedule drugs is not,,

sufficient to prevent likelihood of confusion or deception as it is a fact of which judicial notice has been taken that Schedule drugs are dispensed even,,

without prescriptions in day to day business. Even otherwise, the fact that drugs in question are Schedule drugs cannot be a factum which will prevent",,

the likelihood of confusion or deception as the physicians are not infallible to imperfect recollection and may commit an error in recalling the brands,,

accurately. The said ground realities have been given judicial recognition by the Hon’ble Apex Court in the judgments cited hereinbelow:,,

• Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd 2. (AIR 2001 SC 1952) â€" (Paras 22, 24 and 27)",,

• MilmentOftho v. Allegran 2004 (28) PTC 585 (SC) - (Para 8),,

• Himalaya Drug Co. v. SBL Ltd. 2013 (53) PTC 1 (Del)(DB) â€" (Para 51),,

• Novartis AG v. Crest Pharma 2009 (41) PTC 57 (Del.) â€" (Paras 21 and 22),,

Applying the aforesaid judicial pronouncements to the present case, clarity can be achieved on several levels. Firstly the primary defense raised by",,

the Respondent that the competing trade marks and the competing goods are not similar is without merit, when a plain visual and phonetic application",,

of the two trademarks is riddled with similarity on the face of it and resultant confusion. Reliance is placed on:,,

• KR Chinna Krishna Chettiar v. Sri Ambal& Co. â€" AIR 1970 SC 146 (para 9),,

• RT Engineering & Electronics Co. â€" AIR 1972 Bom. 157 (Para 3),,

• Origin Natural Resources v. Origin Clothing Ltd. [1995 FSR 280] (pg. 284),,

Secondly, even if the ailments are not the same or mode of administration of the drugs are different, the competing goods cannot be considered as",,

“not similarâ€. Hence, even if not identical, they fall within the scope of Section 11(1) and Section 29(1) and (2) of the Act, and hence not",,

registerable.,,

Thirdly Macleods’s reliance on letters issued by the doctors and chemists stating there is no confusion between OFRAMAX and,,

OFLOMACisirrelevant to the present matter. As the Hon’ble Supreme Court has held, the issue of deceptive similarity is a matter of judgment on",,

part of the Courts and not dependent on testimony of any witness. Reliance is placed on:,,

• Mahendra&Mahendra Paper Mills v. Mahindra & Mahindra Ltd. AIR 2002 (SC) 117 â€" Para 15,,

b) Claim of “useâ€​ by the Respondent No.1,,

The defence of prior use under Section 34 is not available to Macleods as its adoption of the impugned trade mark is of 1999, whereas the trade",,

mark registration of the Appellant is of 1989. Further, the use of the Appellant’s trade mark also precedes the adoption of the impugned trade",,

mark by the Respondent. The IMS data placed before us establishes that the sale of OFRAMAX in the year 1999 was INR 5.01 crores and the said,,

brand was well established with significant goodwill in the market.,,

It is a judicially establishednorm that no amount of use can render adoption of deceptively/ phonetically similar mark to be legitimate. In the case of,,

Laxmikant Patel vs. Chetan Bhai Shah AIR 2002 SC 275, the Supreme Court observed as under: ‘A person may sell his goods or deliver his",,

services such as in the 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 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 anyone 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,,

associated therewith. It does not matter whether the latter person does so fraudulently or otherwise’. Even if the mark is honestly adopted by the,,

Respondent No.1, the same is not allowed as per this judgment.",,

It was held by Courts in various judgments such as in Jolen Inc. vs. Doctor & Co. 2002 (25) PTC 29 (Del) the Delhi High Court held that the,,

advertisements and sales figures of the defendant are of no relevance if the adoption of trade mark is subsequent, tainted and dishonest. In such a",,

case even long user, reasonable reputation and goodwill of the trade mark cannot vest the right in the defendant to protect it. In Aktibolaget SKF vs.",,

Rajesh Engineering Corp. 1996 PTC 160 DEL it was held that if adoption of the trade mark is dishonest â€" the use of trade mark for a long period is,,

of no consequence and in Tube Investments of India Ltd. vs. Tata Engineering and Locomotive Company Ltd. 2001 (21) PTC 562 (Reg) (Mad)., the",,

court held that where the marks are deceptively similar, the adoption is considered to be dishonest and an application for registration of the same is",,

liable to be dismissed. In this case, even though the goods were different, it was held that use of the impugned label mark would lead to confusion and",,

deception.,,

c) Derivation of the Mark by Respondent No.1 and the Anti Dissection Rule,,

The real test for determining whether a pharmaceutical trade mark is descriptive is to ask whether an ordinary man or even a medical man will be,,

in a position to say that the mark is so composed unless he is so told. Reliance is placed on the judgment of the Delhi High Court in Win-Medicate v.,,

Somacare Laboratories (1997 PTC (17) 34). It was held that: “18. Learned counsel for the defendant has contended that in the mark DICLOMOL,,

prefix DICLO has been taken from DICLOFENAC SODIUM and suffix MOL has been taken from Paracetamol which are basic drugs and as such,,

the mark is a descriptive mark and the plaintiff has no exclusive right for its use. The mark may have been so formed but it cannot be said that an,,

ordinary person or even a medical man will be in a position to say that this mark is so composed unless he is so told. The mark in itself does not,,

convey the idea that it is descriptive of the said basic drugs not has any dictionary meaning. Moreover, the mark has to be considered as a whole.",,

Applying the test laid down in Dropovit’s case (supra) as noticed above, in my view the mark DICLOMOT is not a descriptive word not a generic",,

word but an invented word.â€​,,

In Sun Pharma Laboratories Limited V Agila Specialties Private Limited, ORA/55/2015/TM/MUM , decided on 18th DAY OF JUNE, 2020, we",,

expounded on the Anti Dissection Rule, applied in India by Hon'ble Supreme Court in Corn Products Refining (supra), Amritdhara Pharmacy (supra)",,

and KavirajPanditDurgaDutt Sharma (supra). We held that:,,

23.15 Comparing Marks: Differences v. Similarities",,

[1] The Anti-Dissection Rule,,

[a] Compare composites as a Whole Conflicting composite marks are to be compared by looking at them as a whole, rather than breaking the marks",,

up into their component parts for comparison. This is the ""antidissection"" rule. The rationale for the rule is that the commercial impression of a",,

composite trademark on an ordinary prospective buyer is created by the mark as a whole, not by its component parts. However, it is not a violation of",,

the anti-dissection rule to view the component parts of conflicting composite marks as a preliminary step on the way to an ultimate determination of,,

probable customer reaction to the conflicting composites as a whole. Thus, conflicting marks must be compared in their entireties. A mark should not",,

be dissected or split up into its component parts and each part then compared with corresponding parts of the conflicting mark to determine the,,

likelihood of confusion. It is the impression that the mark as a whole creates on the average reasonably prudent buyer and not the parts thereof, that is",,

important. As the Supreme Court observed: ""The commercial impression of a trademark is derived from it as a whole, not from its elements separated",,

and considered in detail. For this reason it should be considered in its entirety."" The antidissection rule is based upon a common sense observation of",,

customer behavior: the typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall,",,

general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory,,

observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as",,

expressed in carefully weighed analysis in legal briefs. In litigation over the alleged similarity of marks, the owner will emphasize the similarities and",,

the alleged infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences,",,

for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are more important that minor points of",,

difference. A court should not engage in ""technical gymnastics"" in an attempt to find some minor differences between conflicting marks. However,",,

where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate. The rationale of",,

the anti-dissection rule is based upon this assumption: ""An average purchaser does not retain all the details of a mark, but rather the mental impression",,

of the mark creates in its totality. It has been held to be a violation of the anti-dissection rule to focus upon the ""prominent"" feature of a mark and",,

decide likely confusion solely upon that feature, ignoring all other elements of the mark. Similarly, it is improper to find that one portion of a composite",,

mark has no trademark significance, leading to a direct comparison between only that which remains.""",,

We went on to refer to the recent judgment given by the Division Bench of the Delhi High Court comprising A.K. Sikri, Hon'ble Acting Chief",,

Justice and Rajiv SahaiEndlaw, J. in the case of United Biotech (P) Ltd. (supra) in which law pertaining to anti-dissection rule as well as the test of",,

deceptively similarity have been dealt with in great detail. The Division Bench has also laid down the rules of comparison in Para 32 of the judgment.,,

Two rival trademarks in the matter decided by the Division Bench were ORZID and FORZID and it was held that two trademarks are visually and,,

phonetically similar and would cause deception in the minds of the consumer in relation to medicine. The relevant paras of the said judgment read as,,

under: ""30. The law on this aspect, where the Courts are called upon to consider the deceptive similarity between the two marks is firmly engraved in",,

a series of judgments pronounced by the Courts in the last half century or more. Many are cited by the learned counsel for the appellant, note whereof",,

is taken above. Judgment of Supreme Court in the case of Cadila Health Care Limited (supra), which deals with pharmaceutical preparations, is a",,

milestone on law relating to drugs. Application of the principles laid down in this judgment can be found in scores of subsequent judgments of this,,

Court and other High Courts. The position which emerges from the reading of all these judgments can be summarized in the following manner: In such,,

case, the central issue is as to whether the Defendant's activities or proposed activities amount to a misrepresentation which is likely to injure the",,

business or goodwill of the Plaintiff and cause damage to his business or goodwill. To extend this 26 | P a g e use to answer this, focus has to be on",,

the aspect as to whether the Defendant is making some representation in course of trade to prospective customers which is calculated to injure the,,

business or goodwill of the Plaintiff thereby causing damage to him. In the process, difference between the confusion and deception is to be",,

understood. This difference was explained by Lord Denning in ""Difference: Confusion &Deception"" in the following words: ""Looking to the natural",,

meaning of the words, I would make two observations: first, the offending mark must “so nearly resemble the registered mark as to beâ€likely to",,

deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the,,

mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt if you find that he did,,

intend to deceive or cause confusion, you will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to",,

deceive or cause confusion. But if he had no such intention, and was completely honest, then you will look carefully to see whether it is likely to",,

deceive or cause confusion before you find him guilty of infringement.,,

It would be pertinent here to refer to the leading treatise McCarthy on Trademarks and Unfair Competition J Thomas McCarthy, IV Ed., Clark",,

Boardman Callaghan 2007] under the sub-heading ""Comparing Marks: Differences and Similarities‟. The book states: ""23.15 .... The typical shopper",,

does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the",,

composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or,,

will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal",,

briefs."" ""In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged infringer will emphasize the",,

differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average",,

purchaser views the marks. To the average buyer, the points of similarity are the more important that minor points of difference. A court should not",,

engage ""technical gymnastics"" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities",,

and differences in the marks, there must be weighed against one another to see which predominate.""",,

Therefore, it is not a valid defence by the Respondent No.1 to first split the mark in question portion-wise and then give its justification for adoption",,

and use of similar mark of the other party.In the case of Corn Products (Supra) it was held that in deciding a question of similarity between two,,

marks, the marks have to be considered as a whole. Similarly, in the case of Amritdhara (supra) it was observed that the trade mark is the whole",,

thing. The whole word has to be considered. Also in the case of KavirajPanditDurgaDutt Sharma Vs. Navaratna Pharmaceutical Laboratories, AIR",,

1965 SC980) the Apex Court held that where common marks are included in the trade marks to be compared, or in one of them, the proper course is",,

to look at the marks as whole and not to disregard the parts which are common.,,

In the case of RemidexPharmaPvt Ltd v. Sarita Pharmaceuticals, 2006(33) PTC 157, the mark of the plaintiff and defendant was Zavit and Evit",,

and the objection was raised by the defendant that the suffix of the mark VIT is adopted from the generic name vitamin and is common in use by,,

other manufacturer and traders, therefore, the mark was not a distinctive. However, the injunction was granted. In another case reported in Sun",,

Pharma Industries Ltd v. Wyeth Holdings Corporation &Anr, 2005(3)PTC 14 where the mark of the parties were Parkitane and Pacitane, the parties",,

were using the mark in respect of the disease like Parkinson. While comparing the mark as a whole, the court granted the injunction. In the case",,

reported of SmithklinePharma India Limited v. PrakashSetia&Ors, 2002 (25) PTC 482 Del where the marks in question were Alben and Aben, the",,

mark Alben, was derived by the plaintiff from the generic name, the court granted the injunction against the defendant.Therefore it is not permissible",,

to dissect portion of the impugned trade mark when comparing the two. This argument of respondent No.1 is misconceived and without any merit.,,

The comparison for purposes of Section 11(1) and Section 29(1) & (2) have to be made by applying the test of “notional use†of the registered,,

trade mark in relation to the goods for which the mark is registered.,,

Wefurther do not accept the submission of the learned counsel for Respondent No.1 regarding the different usage of the two drugs concerned. In,,

fact it would be more fraught with peril if the pharmaceuticals products bearing the same mark is used for different purposes for the same ailment or,,

even otherwise. There being no confusion if the product contain different chemical composition is unsustainable. Using the same or similar trade mark,,

for different ailments would be more hazardous than usual. The Apex Court has also stated inCadila Healthcare Ltd. Vs. Cadila Pharmaceuticals,",,

(supra) that :,,

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. 173 USPQ",,

19(1972) 455 F.Reports 2d, 1384(1972), where it was held as under:",,

The products of the parties are medicinal and applicant's 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 pharmaceuticals.""",,

The other argument of the counsel for the Respondent No.1 is that the Respondent No.1’s product is available in tablets and oral suspension,,

form and the Applicant’s product is available in injection form. This argument does not hold water since the companies are producing,,

pharmaceuticals products in various forms i.e. tablets, suspension or as injection under the same trade mark. As is establishedclearly by the courts, the",,

actual confusion and deception is not required in order to prove the case of passing off even if the defendant has adopted the mark innocently and the,,

court comes to the conclusion that the two trade marks are deceptively similar, injunction under the said circumstances has to be granted. Actual",,

deception is not required in an action of passing off. Century Traders vs. RoshanLalDuggar& Co., AIR 1978 (Del) 250.",,

In the case of Laxmikant V. Patel Vs. Chetanbhat Shah &Anr., (2002)3SCC65 the Hon’ble Supreme Court has dealt with the various facets",,

of this issue in paras 8 and 9 which reads as under :,,

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 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 Wad low 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,,

defendant's 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,,

plaintiff's 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)""",,

Also in the case of Ranbaxy Laboratories Ltd. Vs. Dua Pharmaceuticals Pvt. Ltd., AIR1989Delhi44 in para 6 it was held as under :",,

(6) It was then contended by the learned counsel for the defendant that the said medicines can only be sold on the doctor's prescription and,",,

thereforee, there can be little likelihood of confusion. It is true that the said drugs are supposed to be sold on doctor's prescription, but it is not unknown",,

that the same are also available across the counters in the shops of various chemists. It is also not unknown that the chemists who may not have,,

CALMPOSE"" may pass off the medicine ""CALMPROSE"" to an unwary purchaser as the medicine prepared by the plaintiff. The test to be adopted",,

is not the knowledge of the doctor, who is giving the prescription. The test to be adopted is whether the unwary customer, who goes to purchase the",,

medicine can make a mistake.""",,

As discussed above, and after having gone through the material placed on record and the decisions referred, it is clear that none of decisions relied",,

upon on behalf of Respondent No.1 is applicable to the facts and circumstances of the present case, given that the Applicant is the prior user of its",,

trade mark. The reasons are given as:,,

a) Astrazeneca UK Limited v. Orchid Chemicals; ILR(2007) I Delhi 874 â€" DHC â€" DB (Paras 19-22)â€" It discusses the situation where,,

according to plaintiffs at the time of filing of the suit, the trade mark of the defendant was not registered and therefore, the plaintiffs shall also be",,

entitled to maintain an action for the infringement of their registered trademark. The same is not the fact situation here,,

b) Sun Pharma v. Anglo French Drugs & Industries; 2014 SCC Online Del 4716 â€" DHC â€" DB (Paras 18-20) â€" The judgment relied on Cadila,,

(supra) to the detriment of the Respondent No. 1 . Further, the two drugs is the said matter were used for totally different purposes, as OXETOL is",,

used as an anti-convulsant for mood stabilizing whereas EXITOL is used as a laxative. The respondent's product EXITOL can be administered only to,,

patients admitted in the hospital and thus it has to be prescribed by trained doctors and administered by trained nurses. Again the prefix in both,,

trademarks were different. A parallel cannot be drawn to the instant fact situation.,,

c) Sun Pharma v. IntasPharma; 2020 SCC Online Del 59 â€" Appellate Court (Paras 81-95) â€" The two trademarks in consideration BEVETEX and,,

BEVETAS were considered to be not rhyming and phonetically dissimilar, the same is not the position here.",,

d) Ajanta Pharma v. Zuventus Healthcare; CS (Comm.) No. 336/2019; Order dated May 06, 2020 (Para 12) - Defendant had given its explanation as",,

to why it coined the word ANADAY taking the first three letters of the molecule ANASTROZOLE and since once a day tablet is required to be,,

administered, thereby coining the word ANADAY. The same is not relevant to the present matter, given that the Applicant is the prior user by almost",,

a decade.,,

e) KalindiMedicure Pvt. Ltd. v. IntasPharma; 2006 SCC Online Del 1166; DHC (Paras 35-37) â€" Method of comparison and mode of administration,,

are discussed, with no cogent support of the Respondent No. 1’s case here.",,

According none of the decisions will help the case of the Respondent No.1.,,

It is admitted position that the Respondent No.1 is the subsequent in adoption and user. It is also admitted position that not a single third party is the,,

earlier user than the Applicant. The Applicant has filed sufficient documentary evidence to prove its prior adoption and use of the OFRAMAX trade,,

mark/ name.,,

In the light of above the Petition is allowed and Respondent No.2 is directed to delete the entry of registered Trade mark Registration No. 838726,,

for OFLOMAC for medicinal and pharmaceutical preparations falling in class 5 in the name of Respondent No.1from the Register under the,,

provisions of Section 57 of the Trade Marks Act, 1999. Copy of order be sent to the parties as well as Respondent No.2 who is directed to remove",,

the said mark from the Register.,,

There shall be no orders as to the Costs.,,