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Judgment
K. Gnanaprakasam, J.—Application Nos. 1649 to 1654 of 1998 and O.A. Nos. 182 and 183 of 1998 in C.S. No. 246 of 1998.
The Petitioner/Plaintiff filed the suit for permanent injunction to restrain the defendant from manufacturing and selling pharmaceutical preparations
and substances under the impugned trademark ""SPASMO-FLEXON"" and for other reliefs. Application No. 182 of 1998 has been filed for the
grant of ad-interim injunction restraining the defendant and others from selling or otherwise dealing with the pharmaceutical preparations and
substances under the trademark named as ""SPASMO-FLEXON"".
Application No. 183 of 1998 has been filed for the grant of ad-interim injunction restraining the defendant and others from selling or dealing with
the pharmaceutical preparations and substances under the trademark ""SPASMO-FLEXON"" as the same is ""identical or deceptively phonetically
similar to the Plaintiff a trademark ""SPASMO-FROXYVON"".
By an order dated 16.4.1998, this Court granted ad-interim injunction. Aggrieved by the said ex-parte order, the Respondent/Defendant has
filed Application No. 1654 or 1998 to suspend the exparte order in O.A. Nos. 182 and 183 of 1998 and also to permit the Respondent to
complete the preparation of the ""SPASMO-FLEXON"" drug and to dispose of the manufactured drugs and also the unsold drugs of the
Respondent, pending disposal of the applications.
The case of the Plaintiff/Petitioner as it could be gathered from the affidavit, is that the Petitioner/Plaintiff adopted the trademark ""SPASMO-
PROXYVON"" in respect of their pharmaceutical products and the same was also registered on 4.8.1977 under the provisions of the Trade and
Merchandise Marks Act, 1958. The registered number of the trade mark is 327582 in part ''A'' and in class-5. The said trademark was advertised
in the Trade Mark Journal No. 706 at page 612. The Registration of the same was notified in Trade Mark Journal 750 at page 450 and the said
trade mark was renewed till the period of 4.8.1998, and the same is notified in Journal No. 1014 at Page 763. The Petitioner/Plaintiff was also
applied for the renewal of the said mark for a further period of seven years.
Now, the Petitioner/Plaintiff came to know that the defendant has introduced a pharmaceutical product, bearing a deceptively similar trademark,
SPASMO-FLEXON"", a drug for relieving pain as the same preparation, that of the plaintiff''s ""SPASMO-PROXYVON"" and the same would
mislead the people in buying the drug.
The Petitioner/Plaintiff has further averred that the drug ""SPASMO-FLEXON"" is deceptively, phonetically similar to or a colourable imitation of
the plaintiff''s trademark ""Spasmo-Proxyvon"" and therefore prayed that the respondents/ defendant has got to be restrained from using the trade
mark and passing off the goods.
The Respondent/Defendant has filed counter wherein it is stated that in October 1997, the defendant company decided to launch a new drug as
a by product of the ""Flexon"" drug. While the ""Flexon"" drug treats all muscular pains, the new drug would be used to treat spasms of the soft
muscles of the stomach and intestines, which are one particular type of muscular ailment/pain. As per the common established practice in the
pharmaceutical Industry, the brand name ""SPASMO-FLEXON"" was therefore coined, by combining the generic/ descriptive name of the ailment
i.e. ""Spasm"" along with the defendant Company''s famous brand name ""Flexon"".
There can be no objection to the defendant company, adopting and using the trade mark Spasmo-Flexon since the word ""Spasmo"" is a
common generic description of the ailment being treated and the word ""Flexon"" had been used by the defendant company for the past ten years
and the defendant company has established clear ownership/property rights in the same. It is further stated that the pharmaceutical manufacturers in
general use a two part trademark, with the first part being the generic / descriptive word spasm or spasmo etc., and the latter part being the
distinctive name used to different the drug of one manufacturer from the other. For example, some of the brand names of the drugs used to treat
muscular spasms, at present, are given below : -
SPASMINDON.
SPASMODOL FORTE.
SPASMOL.
SPASMOVAN.
SPASMO-FLEXON.
SPASMOCIN.
SPASMOCIN FORTE.
SPASMOLAR.
SPASMIZON-K.
SPASMO-PROXYVON.
It is stated that the adoption and use of the trade mark ""Spasmo-Flexon"" by the defendant company was in line with the common established
industry practices and norms, and the defendant has no intention to infringe or to pass off the goods in the name of the Plaintiff.
The defendants further stated that they have their head office at Bombay and the Plaintiff Company also has its head office at Bombay. The
launch of the Defendant Company a drugs Spasmo-Flexon in October 1997 was well publicised and was obviously very well known to the
Plaintiff company in Bombay as the drug companies keep a close watch on the products of rivals. The defendant company was therefore shocked
to know about the exparte order of interim injunction obtained by the plaintiff from this Court, restraining them from the use of the trade mark
Spasmo-Flexon.
The defendant averred that the exparte order has caused massive disruption of business and loss to the defendant company. The word
Spasm"" is common generic descriptive name of an ailment and the defendant had already been selling the drug ""Flexon"". The defendant''s drug
Spasmo-Flexon"" is neither similar nor deceptive as that of the Petitioner''s drug ""Spasmo-Proxyvon"" and they can easily be pronounced and can
be identified individually without any difficulty. As Spasmo is a common generic descriptive name and it can easily be understood and therefore,
there is no infringement nor passing off as alleged by the Plaintiff.
I heard the respective submissions of the learned advocates for the petitioner and also the Respondent.
For the purpose of convenience, the parties would be referred as they are referred in the plaint.
The learned Senior Advocate Thiru T.V. Ramanujam for the Petitioner/Plaintiff has submitted that the Petitioner/Plaintiff adopted the trademark
Spasmo-Proxyvon"" in respect of their pharmaceutical products and the same was also registered under the provisions of the trade and
Merchandise Marks Act, 1958. That in the third week of March 1998, the Petitioner/Plaintiff noticed the products of the defendant, bearing the
impugned trademark ""Spasmo-Flexon"", which is identical or deceptively or phonetically similar to that of the Petitioner/ Plaintiff''s product
Spasmo-Proxyvon"" and thereby, the Respondent/Defendant infringed the various provisions of the Trade and Merchandise Marks Act, 1958.
The Respondent/Defendant is neither entitled to manufacture nor to sell or deal with the said product, in any manner, as it would spill the goodwill
and the name of the Petitioner''s/ Plaintiff''s Company. The learned Senior Advocate also took me to several provisions of the Act and pointed out
that carrying on the business with false trade mark, is an offence. u/s 78 of the Act and the concerned person is also liable for imprisonment.
The Petitioner has also pointed out that the drug manufactured and sold by the Petitioner/Plaintiff is earlier in point of time and no doubt, the
defendant is trying to sell the drug in the same name, which is deceptively and phonetically similar to that of the Petitioner''s/Plaintiff''s product and
therefore, the Respondent/Defendant is not entitled to manufacture and sell the said drug and the order of interim injunction granted by this Court,
has got to be made absolute.
It is further submitted on behalf of the Petitioner that usually in the case of this nature, structural and phonetic similarity have got to be taken into
account. According to him, the name of the defendant''s drug is deceptively and phonetically similar to the product of the plaintiff''s and that
therefore, the defendant has got to be restrained from using the impugned trade mark and manufacturing and selling the same. To substantiate his
submission, he relied upon the case of Ciba Geigy Limited and Hindustan Ciba Geigy Limited v. Crosslands Research Laboratories Limited (1995
I.P.L.R. 378) wherein the Division Bench of this Honorable Court had an occasion to deal with the case, under Trade and Merchandise Marks
Act 1958.
Per contra, Thiru P. Chidambaram, Learned Senior Advocate for the defendant has not chosen to divulge much on the factual aspects of the
case, as the manufacture and sale of the product by the defendant in the name of ""Spasmo-Flexon"" is not in dispute. He therefore endeavoured to
establish that the drug manufactured and sold by the Plaintiff is definitely different from the drug that of the defendant on various aspects and
therefore, the plaintiff cannot make a complaint, that the defendant has infringed the trade mark of the Plaintiff''s drug and also committed an
offence.
The Plaintiff''s drug ""Spasmo-Proxyvon"" is consisting of three ingredients viz. 1) Dicyclomine Hydrochloride, 2) Dextropropoxyphene, 3)
Acetaminophen. But, whereas the Defendant''s drug ""Spasmo-Flexon"" is consisting of only two ingredients viz. 1) Paracetamol, 2) Dicyclomine
Hydrochloride. Both the products contain Dicyclomine Hydrochloride and Paracetamol in common. Acetaminophen is the scientific name of
Paracetamol. The one more ingredient in the Plaintiff''s drug is Dextropropoxyphene, which is an opioid analgesic given by mouth usually, with
paracetamol or Aspirin for the control of mild to moderate pain. However, over dosage of this drug would cause serious problem and has proved
fatal as per the information given in the book ""Martindale the Extra Pharmacopoeia"", published by the Royal Pharmaceutical Society. It is therefore
submitted on behalf of the defendant that the drug manufactured and sold by the defendant is mild in nature and it will not cause any untoward
effect to patient. Even assuming without admitting that if the patient purchases the drug of the defendant believing the drug of the Plaintiff, the result
would be less, but definitely will not be disastrous. But, on the other hand, if a person instead of purchasing the defendant''s drug ""Spasmo-
Flexon"", purchases ""Spasmo-Proxyvon"" which is having more powers it may at any time, cause serious result. As such, the drug of the defendant
will not at all cause any ill name or effect to the plaintiff to any extent. But, on the other hand, the misconception of the drug, if any, would give
serious result, only by the plaintiff''s and therefore there is absolutely no necessity for the plaintiff to have any fear or apprehension whatsoever as
against the drug of the defendant.
The learned Senior Advocate for the defendant has further urged that both the plaintiff and the defendant have added on the descriptive generic
terms ""Spasmo"" to the main drug viz., ""Proxyvon"" and Flexon"" which is an established practice in the pharmaceutical industry. The word ""Spasmo
is a common generic word used by the Plaintiff as well by the defendant and that therefore, the Plaintiff cannot have any grievance or objection as
far as the first part of the drug viz., ""Spasmo"". The second part of the drug is ""Proxyvon"" and ""Flexon"". If these two words are pronounced
property, it will not definitely have the same phonetic. In fact, the first two letter in Proxyvon i.e. ""P"", ""R"" are of strong sound, that of the two letters
F"", ""L"" in ""Flexon"" in the defendant''s drug, which are having soft sound. Except the two letters in the end viz., ""O"" and ""N"" in the plaintiff''s drug
and the defendant drug, all other letters differ and that therefore, the plaintiff cannot at all be heard to say that both these words ''Proxyvon"" and
Flexon"" are similar or deceptively in phonetic. Therefore submitted that as far as, the similarity in phonetic of these words are concerned, the
plaintiff cannot sustain his case.
In this connection, it has got to be borne in mind that the drugs manufactured by the plaintiff and the defendant are scheduled drugs and they
cannot be and should not be sold without the prescription from a qualified Doctor, who would definitely understand and differentiate the plaintiff''s
drug ""Spasmo-Proxyvon"" and the defendant''s drug ""Spasmo-Flexon"". In fact, the public are not entitled to purchase these drugs without
prescription, as such, it would not at all cause any confusion in the mind of unwary public.
The learned Advocate for the defendant, further submitted that the drug manufactured by the defendant by name ""Spasmo-Flexon"" is having
white colour tablet and the plaintiff''s drug by name ""Spasmo-Proxyvon"" is having blue colour capsule. Common unwary public, if at all purchase
the drugs would go mainly by the colour and not by the name, of course with exceptions. As such, the colour and structure of the drug are also an
important factor and as long as the colour and stautem of the drug are not changed, it will not cause any confusion in the minds of the illiterate
public. In the said circumstances, I feel that a direction may be given to the plaintiff as well as the defendant that they should not change the colour
and structure of the drug as on date, without further order of the court, that would also meet the ends of justice. It may also be observed that in
due course, the common public would get familiar with the names. To cite an example, the pain relieving drugs which are commonly used for head
ache, tooth ache and body ache are 1) Analgin and 2) Novolgin. Though it may appear to be deceptive in phonetic they are not so. The last three
letters in these drugs viz. ""Gin"" are common. But, however, people in the long run, have been able to purchase the drugs of their own choice, even
without getting the prescription from medical practitioner. When such is the case, it cannot be said that the drug manufactured and sold by the
defendant under the name ""Spasmo-Flexon"" would cause danger of the drug of the plaintiff. ""Spasmo-Proxyvon"". As has already been pointed out
that ""Spasmo"" is a common generic term, and no one can prevent the other from using the common generic term, and in fact, several drugs have
been sold in the market under the name ""Spasmo"". It is the case of the defendant that ""Flexon"" is a drug manufactured and marketed all over India
by them for the past more than 10 years and the same was also widely advertised in medical journals, they have no-infringed the right of the
plaintiff.
The learned Senior Advocate for the defendant also relied upon the judgments reported in Hoffmam Da Roche and Company Limited v. V.
Geoffery Manners and Company Private Limited (A.I.R. 1970 S.C. 2062), Mount Mettur Pharmaceuticals Private Limited, v. Dr. A. Wander
(A.I.R. 1977 Madras 105), Mount Mettur Pharmaceuticals Limited, v. Ortho Pharmaceuticals Corporation (A.I.R. 1975 Madras 74), SBL
Limited v. Himalaya Drug Company, (1997 PTC 540) where, in all cases, it has been held that the words are dissimilar and it would not cause
confusion and there is no similarity in sound or visual and there is no confusion deception.
Much emphasis was made by the learned Senior Advocate for the defendant to the case of Hoffmann La Roche and co. Ltd. v. Geoffrey
Manners and Company, Private Limited (A.I.R. 1970 S.C. 2062) wherein, the Supreme Court held that:
In order to decide whether the word ""DROPOVIT"" is similar to the word ''Protovif"" each of the two words must, therefore, be taken as a whole
word. Each of the two words consists of eight letters the last three letters are common, and in the uncommon part the first two are consonants, the
next is the same vowel ''O'' the next is a consonant and the fifth is again a common vowel ''0'' The combined effect is to produce an alliteration. The
affidavits of the Appellant indicate that the last three letters ""VIP'' is a well known common abbreviation used in the pharmaceutical trade to denote
Vitamin preparations. In his affidavit dated January 11, 1961 Frank Murdoch, has referred to the existence on the Register of about 57 trade
marks which have the common suffix ""VIT"" indicating that the goods are vitamin preparations. It is apparent that the terminal syllable ""VIT"" in the
two marks is both descriptive and common to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold
that one will be mistaken for or confused with the other. The letter ''D'' and ''P'' in ""DROPOVIT'' and the corresponding letters ''P'' and ''T'' in
''PROTOVIT'' cannot possibly be allured over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion
between the words either from the visual or phonetic point of view"".
But, however, the said view was not accepted by the Division Bench of this Hon''ble Court in the case of Ciba Geigy
Limited and Hindustan Ciba Geigy Limited v. Croblande Research Laboratories Limited, (1995 IPLR 378) by placing reliance upon the judgment
of three judges Bench of the Supreme Court in the case of Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories (A.I.R.
1965 S.C. 980) wherein it has been held that:
When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be ""in the course of trade"", the
question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical, the plaintiff
would have to establish that the mark used by the defendant so nearly resembles the plaintiff''s registered trade mark as is likely to deceive or
cause confusion and in relation to goods in respect of which it is registered (vide S. 21). A point has sometimes been raised as to whether the
words ""or cause contusion"" introduce any element which is not already covered by the words ""likely to deceive"" and it had sometimes been
answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words
likely to deceive"". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade
mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessary
to be ascertained by a comparison of the two marks, the degree of the resemblance which is necessary to exist to cause deception not being
capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is
the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic ideal represented
by the Plaintiff''s mark. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade mark are to be found
in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of
the court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry
in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to the registered mark of the Plaintiff''.
We have absolutely no objection in following the guidelines and the principles set forth in the judgment reported in AIR 1965 S.C. 680 which
runs as follows :
The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff''s mark. The purpose of the comparison is for
determining whether the essential features of the plaintiff''s trade mark are to be found in that used by the defendant. The identification of the
essential features of the mark is in essence a question of fact and depends on the Judgments of the Court based on the evidence led before it is
regards the usage of the trade. It should, however, the borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by
the defendant as a whole is deceptively similar to the registered mark of the plaintiff"".
In our case, we have already pointed out that the defendant has been manufacturing and marketing the drug ""Flexon"" and now the word
Spasmo"" alone was prefixed and the said drug which is in question is not at all deceptive either in structure or by phonetic or in colour. In fact,
colour also plays a predominant part in these two drugs. The drug manufactured by the plaintiff is blue colour capsule and the drug manufactured
by the defendant is white colour tablet, which can easily be distinguished even by a common man and therefore, I come to the conclusion that the
defendant has neither infringed the trade mark, nor the patent right of the plaintiff''s right.
In the said circumstances, I come to the conclusion that the defendant has neither infringed the trade mark right of the plaintiff nor committed an
offence of passing off. But, I wish to give a direction to both the plaintiff and the defendant that they should maintain the respective structure and
colour of the drugs which plays a predominant role in this case, for ever, and they should not change the structure and colour of the drug without
the permission of the court. By the use of the word ""Structure"" and colour it is meant that the Plaintiff''s in a capsule and the defendant in the Tablet.
In the result, the exparte order of interim injunction granted in Application Nos. 182 and 183 of 1998 is hereby vacated and the Application Nos.
1650 to 1654 of 1998 are allowed. The respective parties shall bear their own costs.