IN THE HIGH COURT OF GUJARAT AT AHMEDABAD APPEAL FROM ORDER No. 29 of 2012 With CIVIL APPLICATION No. 952 of 2012 In APPEAL FROM ORDER No. 29 of 2012 For Approval and Signature:
HONOURABLE MR.JUSTICE J.C.UPADHYAYA =========================================================
1 Whether Reporters of Local Papers may be allowed to see the judgment ?
2 To be referred to the Reporter or not ?
3 Whether their Lordships wish to see the fair copy of the judgment ?
4 Whether this case involves a substantial question of law as to the interpretation of the constitution of India, 1950 or any order made thereunder ?
5 Whether it is to be circulated to the civil judge ?
========================================================= SUN PHARMACEUTICALS INDUSTRIES LTD - Appellant(s) Versus M/S WEST COAST PHARMACEUTICALS WORKS LTD & 1 -
Respondent(s) ========================================================= Appearance :
MR HARSHIT STOLIA with MR TEJAS S TRIVEDI for Appellant(s) : 1, MR SACHIN D VASAVADA for Respondent(s) : 1 - 2.
MR SAMRAT N MEHTA for Respondent(s) : 1 - 2. RULE SERVED BY DS for Respondent(s) : 2, ========================================================= CORAM : HONOURABLE MR.JUSTICE J.C.UPADHYAYA Date : 20/06/2012 CAV COMMON JUDGMENT :
The challenge in this Appeal From Order is to the order dated 23/1/2012 passed by the Ld. Chamber Judge, City Civil Court, Ahmedabad, in Notice of Motion Exhs. 6/7 and 16 in Civil Suit No. 2800/2011. The Ld. City Civil Judge [hereinafter referred to as 'the trial Court'] by impugned order dated 23/1/2012 dismissed the temporary injunction application filed by the appellant - original plaintiff and further ordered that the ad-interim relief earlier granted in the said matter stood vacated forthwith. Feeling aggrieved and dissatisfied with the impugned order passed by the trial Court, the original plaintiff preferred this appeal. Therefore, the appellant is original plaintiff and the respondents are original defendants and for the sake of convenience, the appellant and the respondents shall be hereinafter referred to as 'the plaintiff' and 'the defendants' in this judgment.
2. The plaintiff filed the above referred suit against the defendants seeking decree for permanent injunction as well as the decree for damages directing the defendants to give true and correct account of manufacturing and sale of the product under the trademark “ACICAL” to the trial Court and after verifying the details of account and the amount of profit earned by the defendants by sale of said product, order the defendants to pay the amount of profit earned by them with 18% interest from the date of the institution of the suit till the date of realization.
3. In the said suit, the plaintiff filed an application seeking temporary injunction order against the defendants to restrain the defendants, their agents, dealers, distributors, etc., from manufacturing and marketing their medicinal product under the trademark “ACICAL” and/or any other mark, which may be identical and/or similar to the trademark “ACUCAL” of the plaintiff and thereby to restrain the defendants from committing passing off the goods sold under the trademark “ACICAL”, till the pendency and final disposal of the suit. It appears that initially the trial Court granted ex-parte ad- interim injunction order, but after considering the submissions advanced on behalf of both the sides and considering relevant materials placed before it, the trial Court by virtue of the impugned order dated 23/1/2012 dismissed said application of the plaintiff and vacated the ad- interim injunction order earlier granted.
4. The case of the plaintiff, in nutshell, is that the plaintiff is a company incorporated under the Companies Act, 1956 and is engaged in the business of manufacturing and marketing of pharmaceutical medicinal preparations. The plaintiff company came into existence in 1993. The plaintiff has invented, coined and adopted various trademarks and labels for the medicinal preparations manufactured by it. The plaintiff manufactured a medicinal preparation under the trade name “ACUCAL” in tablet form which contains combination of Calcium Citrate and Vitamin D3, Magnesium Hydroxide since the year 2001. It is the case of the plaintiff that word “ACUCAL” had been coined/adopted from the words 'accuracy' and 'calcium'. It is the case of the plaintiff that plaintiff applied for registration of trademark 'ACUCAL' on 14/3/2001 and the same is pending for registration. The said application was advertised in the Trademark Journal on 4/10/2003. It is the case of the plaintiff that the defendants have not opposed the said advertisement.
4.1. It is the case of the plaintiff that considering the year-wise sales figures, it would make clear that the product sold under the trademark “ACUCAL” of the plaintiff has acquired very good reputation and goodwill and high demand in the market. In para. 7 in the plaint, the plaintiff has given details of promotional expenses of “ACUCAL” and year-wise sales figures of “ACUCAL” medicinal preparation.
4.2. It is the case of the plaintiff that it came to know very recently that the defendants are manufacturing and marketing the product under the trade name “ACICAL” which is identical and deceptively similar to the plaintiff company's trade name “ACUCAL” and the said product is recently available in the market. The defendants have used the trademark “ACICAL” which is nothing but imitation of the plaintiff's trademark “ACUCAL”, by replacing the letter “U” with “I”, and the trademark has been adopted with ulterior motive to take undue advantage from the reputation acquired by the plaintiff company. It is the case of the plaintiff that such imitation and adoption of deceptively similar mark by the defendants especially in medicinal preparation would not only deceive the public at large, but may prove to be hazardous to health and life of general public if the defendants are not restrained by temporary injunction in the passing off action.
5. The defendants resisted the suit of the plaintiff and the temporary injunction application filed by the plaintiff in the suit by filing written statement and the reply. Both the parties produced necessary documents before the trial Court. As stated above, initially at the time when the plaintiff filed the suit, the trial Court granted ex-parte ad-interim injunction order in favour of the plaintiff and against the defendants, but on 23/1/2012 by virtue of the impugned order, the trial Court dismissed the temporary injunction application and vacated the ad-interim injunction order.
6. Mr. HS Tolia, Ld. Advocate for the appellant – plaintiff, at the outset, submitted that the impugned order passed by the trial Court is contrary to law and facts on record. It is admitted that it is within the discretion of the trial Court either to grant temporary injunction order or to refuse to grant such order. However, it is submitted that where the discretion has been shown to have been exercised by the trial Court arbitrarily or capriciously or perversely or where the trial Court has ignored the settled principles of law regarding grant or refusal of interlocutory injunction, the appellate Court can interfere with such order passed by the trial Court. It is asserted that in the instant case, considering the impugned order passed by the trial Court, it clearly transpires that the trial Court has exercised discretion in refusing to grant interlocutory injunction, arbitrarily, capriciously and perversely by not following the settled principles of law in this respect.
6.1. Mr. Tolia, Ld. Advocate for the appellant - plaintiff, at the outset, submitted that a very material fact, which is not at all in dispute and which is admitted, is that the plaintiff is using the said mark 'ACUCAL” since 2001 and the defendants are using their mark “ACICAL” since 2011. It is, therefore, submitted that in passing off action, the prior user of the trade name is relevant and a trader who first goes to the mark with his product under a particular trademark or trade name as a distinctive mark, gets proprietary right to use that mark to the exclusion of others. It is further submitted that the over-all sales turnover of the plaintiff is about Rs.25 crore with sales promotional expenses of about Rs.6 crore, but the defendants have not given any such details in the written statement.
6.2. Mr. Tolia, Ld. Advocate for the appellant – plaintiff submitted that there is no dispute that the medical preparation manufactured by the plaintiff under the trade name “ACUCAL” is Schedule – H drug and there is no dispute that Schedule – H drug can be sold only on the basis of such drug having been prescribed by a registered medical practitioner. The trial Court, while dismissing the temporary injunction application of the plaintiff, placed much emphasis on this fact and came to the conclusion that therefore, there is no question that public at large is going to be deceived as without the medical prescription, such drug cannot be sold or purchased by the public. It is submitted that such observation made by the trial Court is quite contrary to the observation made by Hon'ble the Apex Court in Cadila Health Care Ltd. V/s. Cadila Pharmaceuticals Ltd., reported in AIR 2001 S.C. 1952. Relying upon Cadila's case, Mr. Tolia submitted that where medicinal products are involved, the test to be applied for adjudging the violation of trademark law may not be at par with cases involving non-medicinal products and stricter approach should be adopted while testing to judge the possibility of combination for one medicinal product to another by the consumer. Mr. Tolia, Ld. Advocate for the appellant – plaintiff relied upon certain decisions, which shall be discussed in this judgment at appropriate time.
6.3. Mr. Tolia, Ld. Advocate for the appellant – plaintiff asserted that in the impugned order, the trial Court committed serious illegality while comparing the wrappers of the two medicines and finding out certain dis-similarities in para.
18 in the impugned order. Mr. Tolia submitted that this is the basic error committed by the trial Court in the sense that in the case of Cadila Health Care [supra] Hon'ble the Apex Court, over-ruling earlier decision, clearly observed that though dis-similarities may be an essential feature, but the same cannot be given importance than similarities. It is, therefore, submitted that the approach of the trial Court is erroneous and illegal and contrary to the ratio laid down in Cadila's case. Mr. Tolia submitted that as a matter of fact, there are structural, phonetical and visual similarities, in the sense that ACUCAL and ACICAL each consists of six alphabetic letters and the middle letters “I” and “U” which are vowels, are only different, but suffixing letters and prefixing letters are the same. It is submitted that there are number of decisions which say that normally vowels like 'I' and 'U' are to be slurred – silent – ignored. It is asserted that the plaintiff used the mark ACUCAL since 2001 and the defendants illegally used the mark ACICAL since 2011 and considering the structural, phonetical and visual similarities, at this stage, it can be safely said that the intention of the defendants is malafide and fraudulent only with a view to ride on the goodwill of the plaintiff.
6.4. Mr. Tolia, Ld. Advocate submitted that though the defendants contend that their medical preparation ACICAL is for acidity, but basic ingredient used by the defendants in that tablet is calcium and it is surprising as to how calcium is a medical base to cure acidity. Mr. Tolia submitted that as observed by Hon'ble the Apex Court in Cadila's case [supra] and many other cases, whenever Court comes across a case involving passing off action especially in medical preparations, the approach of the Court should be very strict as in a passing off action, in ordinary commodity, there may not be the risk touching the health and life of its consumers, but if any medical preparation is passed off in place of any another medical preparation, it is most likely that there may be great risk to the health and even life to its consumer.
6.5. Mr. Tolia, Ld. Advocate for the appellant – plaintiff further submitted that merely because the medical preparations namely, ACUCAL and ACICAL are Schedule H drug, which cannot be sold across the counter by any Chemist without there being medical prescription of a registered medical practitioner, but that itself cannot be a ground to reject the request of the plaintiff for temporary injunction. In Cadila's case [supra] and in many other cases, it has been observed that doctors' handwritings are almost illegible and a Chemist is likely to commit error on account of confusion created by such handwriting. Even there are cases that such medicines are sold upon a demand made through telephone.
6.6. Mr. Tolia, Ld. Advocate contended that the trial Court erred in coming to the conclusion that the plaintiff prima-facie suppressed material facts in its pleadings. It is submitted that there is no dispute that in 2001 the plaintiff applied for registration of its trademark ACUCAL and said application is pending before the Registrar of Trade Marks. Pursuant to the advertisement issued about the registration application of the plaintiff, it is pertinent to note that the defendants did not lodge any objection. It is true that one Syntex Pharma AG have taken an objection on the ground of their mark ACULAR based on their proposed to be used mark and the plaintiff, though pleaded that the defendants did not file any objections, but in the plaint and in the application exh. 5, the fact regarding the objection raised by Syntex Pharma AG has not been pleaded. It is submitted that this cannot be said to be a material suppression. The suit of the plaintiff is based on common law remedy, namely challenging the passing off action on the ground of prior use of the trade name. Since the trade mark ACUCAL is not registered as yet, the suit is not based on infringement of the registered trade mark. It is, therefore, submitted that in passing off action, the question of registration itself is immaterial as even prior user of a trademark can restrain a registered owner of a trademark to use such trademark. Thus, the registration is completely irrelevant in action of passing off as held by Hon'ble the Apex Court in the case of Dhariwal Industries Ltd. v/s. M. S. S. Food Products reported in [2005] 3 S.C.C. 63. Mr. Tolia further submitted that viewing this from any angle, the trial Court erred in coming to the conclusion that the plaintiff suppressed material fact. Mr. Tolia submitted that since the application of the plaintiff for registration is pending before the Registrar of Trademark, the said authority shall take appropriate decision. Mr. Tolia vehemently submitted that if at all it is the defence of the defendants that they had coined and invented the word ACICAL, then till date why the defendants did not apply for registration of said mark is a moot question which the the trial Court should have taken into consideration. It is submitted that on one hand the defendant contends that both the words ACUCAL and ACICAL are generic words [publici juris] and on the other hand, it contends that the word ACICAL was coined by it and it can safely be said that the defendants themselves are not consistent in their defence. Mr. Tolia submitted that even as per the search report produced on record before the trial Court, it clearly transpires that the word ACICAL is phonetically similar to the word ACUCAL.
6.7. Mr. Tolia, Ld. Advocate for the appellant plaintiff ultimately submitted that the appeal may be allowed.
7. Mr. Sachin Vasavada, Ld. Advocate for the respondents – defendants, fully supporting the impugned order passed by the trial Court and vehemently opposed this appeal. It has been submitted that the instant appeal is under Order 43 rule 1[r] of the CPC and the powers of the appellate Court in appeal from order are very limited. This Court can only interfere with discretionary order passed by the trial Court if the appellate Court comes to the conclusion that the order passed by the trial Court is capricious, arbitrary, perverse and contrary to a settled principle of law regarding grant or refusal to grant temporary injunction. It is submitted that the appellate Court, in such appeal, cannot re-assess the evidence placed before the trial Court and to come to its own conclusion as if the appellate Court is a trial Court. Thus, the appellate Court cannot substitute its own view or contrary view than the view taken by the trial Court. It is submitted that in the instant matter, considering the impugned order passed by the trial Court, the trial Court has elaborately discussed the case of the plaintiff as well as the defence of the defendants and has prima-facie come to the conclusion that the plaintiff was not entitled to any discretionary order of injunction.
7.1. Mr. Vasavada, Ld. Advocate submitted that at the outset, it is amply clear that the plaintiff suppressed material facts of the objection raised by Syntex Pharma AG against registration of its trademark ACUCAL. Mr. Vasavada submitted that there is no dispute that the instant suit is not based upon infringement of registered trademark, but the suit is directed against the alleged passing off action. It is submitted that there cannot be any dispute that basically in passing off action, the question of registration is not of utmost importance, but in the instant case, considering the peculiar facts and circumstances, the facts suppressed by the plaintiff regarding the objection raised by the company are very relevant in the sense that even as per the case of the plaintiff, its application for registration of its trademark ACUCAL is pending since last more than 10 years before the Registrar of Trademarks and in that background, the fact that Syntex Pharma AG raised the objection on the ground of their mark ACULAR is very relevant as considering the relevant provisions under the Trade Marks Act, the word ACUCAL is a generic word [publici juris] and in a medical field, it is very common that trademarks for a medicinal preparation is adopted on the basis of the name of the organ of body for which the preparation is meant, ailment for which the medicine is meant, so also on the basis of the material or ingredients used in such medicine. It is submitted that the medicinal preparation ACICAL is basically meant for therapeutic use and it is antacid as well as calcium supplement for acidity and, therefore, the prefix letters ACI are derived from acidity and the suffixing letters CAL are derived from the ingredients calcium. It is submitted that admittedly the plaintiff's medicine is basically meant for pregnant ladies and the tablet is gulpable;
whereas defendant's medicine is meant for curing acidity and it is chewable. Thus, one is acid based and another is alkaline based and, therefore, it cannot be said that basically both the medicines are for curing a common disease. Mr. Vasavada submitted that in this appeal, for the first time the contention is raised by the appellant that the calcium cannot be used for curing acidity, which is a strange and novel contention and admittedly since the year 2006 the defendant was permitted by appropriate drug authority to manufacture the drug.
7.2. Mr. Vasavada submitted that in the above view of the matter, in the aforementioned two medicinal preparations, ingredients are different, use is different, effect is different and even the price is different and in that background, it is required to be considered that both are Schedule H drug which cannot be sold across a counter by a Chemist without there being written prescription of a registered medical practitioner. It is, therefore, submitted that not only both the names are phonetically and visually dis-similar, but even there is no reason that there would be any confusion in the two names. Mr. Vasavada submitted that considering search report Annexure-E produced before the trial Court, it clearly transpires that there are so many pharmaceutical companies manufacturing almost identical drugs in the names of ACULAR, ACUVIN, YUCAL, RADICAL, etc., and thus, the plaintiff cannot claim any monopoly over the word ACUCAL.
7.3. Mr. Vasavada, therefore, submitted that there is no substance in the appeal and it deserves dismissal.
8. I have taken into consideration the submissions advanced on behalf of both the sides, so also the paper book supplied containing copies of the documents produced by both the parties before the trial Court in the suit.
9. At the outset, it is pertinent to note that the instant appeal is filed under Order 43 Rule 1[r] of the CPC challenging the discretionary order passed by the trial Court. It is well settled that the powers of the appellate Court in appeal from order are very limited and only under limited circumstances the appellate Court may interfere with the discretionary order passed by the trial Court either granting temporary injunction or refusing to grant the same. In the case of Matrix Telecom Pvt. Ltd. v/s. Matric Cellular Services Pvt. Ltd., reported in 2011 [3] G.L.R. 1951, this aspect is discussed by this Court in para. 6 as well as para. 6.1 in the said decision, which run as under:
“6. Before proceeding further it is required to be noted that the present appeal is against the rejection of interim relief and the main suit is still pending. If this court elaborately deals with the matter on merits it is likely that the same would prejudice the case of either side. Therefore, it is well settled law that this Court is not required to go into the merits of the entire matter at this stage and what is required to be seen is whether the appellant-plaintiff has made out a prima facie case or not for grant of interim injunction.
6.1 It is required to be noted that it is well settled law that the Appellate Court may not interfere with the exercise of discretion of the court of first instance and substitute its own discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the court had ignored the settled principles of law regulating grant or refusal of interlocutory injunctions. An appeal against exercise of discretion is said to be an appeal on principle. The Appellate Court will not reassess the material and seek to reach a conclusion different from the one reached by the court below if the one reached by the court was reasonably possible on the material. The appellate court would normally not be justified in interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it would have come to a contrary conclusion.”
10. While arriving at above conclusion, this Court took into consideration certain decisions rendered by Hon'ble the Apex Court, so also other High Courts and more particularly the decision of Hon'ble the Apex Court in the case of Wander Ltd. v/s. Antox India P. Ltd., reported in 1990 [Supp] S.C.C. 727. Thus, it is elaborately clear that if the appellate Court, in appeal from order, comes to the conclusion that the discretionary order passed by the trial Court is perverse or capricious or arbitrary and contrary to the settled principle of law regarding grant or refusing to grant temporary injunction, the appellate Court may interfere with such order of the trial Court. It is further clear that it is not the function of the appellate Court in appeal from order to re-assess the evidence adduced by both the sides at this stage in the suit. It is again not the function of the appellate Court to come to any different conclusion than the one arrived at by the trial Court as if the appellate Court is a trial Court once the appellate Court prima-facie finds that the discretion exercised by the trial Court is not arbitrary exercise of powers and the order under appeal is prima-facie legal and valid. It is again not in the interest of parties if the Court elaborately deals with the matter on merits at this stage as it is likely that the same would prejudice the case of either side.
11. Keeping the above principle in mind, if the impugned order passed by the trial Court is considered, it transpires that the trial Court took into consideration all the relevant contentions and arguments advanced on behalf of both the sides, so also took into consideration various decisions cited on behalf of both the sides as well as took into consideration the relevant evidence and documents produced by both the sides. There is no dispute that the instant suit is not aimed complaining infringement of any registered trademark as it is clear that the application filed by the plaintiff in the year 2001 for registration of its trademark ACUCAL is still pending with the Registrar of Trademarks. Even the defendant till date did not apply for registration of its trademark ACICAL. Thus, virtually, at this stage, the instant suit is filed by the plaintiff for getting common law remedy regarding passing off action. Again there is no much dispute that the plaintiff marketed the medicinal preparation in the name of ACUCAL in the year 2001. There is no dispute that one of the important factors in passing off action is prior use of the mark. As per the defence of the defendants, the defendants obtained drug licence to manufacture medicine ACICAL in the year 2006, but according to the plaintiff, the defendants marketed the drug in the open market in the year 2011. Under such circumstances, the plaintiff launched its products ACUCAL first in point of time. However, at the same time, it is pertinent to note that here is not a case wherein the defendants marketed and launched its product in the same name i.e. ACUCAL. Under such circumstances, while dealing with the issue of user of the mark first in point of time, the fact that the plaintiff marketed the product in the name of ACUCAL and the defendants marketed their product in the name of ACICAL is required to be kept in mind.
12. Seen in the above context, considering the impugned order passed by the trial Court, so also the relevant material placed on record, it transpires that prima-facie both the drugs, namely ACUCAL and ACICAL are useful in different area of diseases, namely the ACUCAL is for high calcium need and lactation during the pregnancy; whereas the ACICAL is for supplement of calcium in general and more particularly used in acidity and heart burns. Even the relevant material and ingredients are different in the sense that in ACUCAL the chemical compound calcium citrate, vitamin D-3 and magnesium are used as per the wrapper; while in ACICAL, as per wrapper, calcium carbonate tablet USP is written. Moreover, the ACICAL is chewable table, while ACUCAL is gulpable tablet. Thus, ACUCAL is supplementary for calcium; whereas the ACICAL is therapeutic drug and is antacid. In the impugned order, the trial Court dealt with this aspect at length. Apart from the above fact, the trial Court took into consideration the size and shape of both the tablets, price factor as well as over-all printing on wrappers of both the tablets.
13. In above background, the trial Court observed that prima-facie it can be said that so far as both the drugs are concerned, ingredients are different, their use is different and their effect and price are different.
14. Considering impugned order passed by the trial Court wherein certain decisions cited on behalf of both the sides are dealt with by the trial Court and prima-facie it is clear that to coin or invent a name of any medicinal preparation, generally the organ of the body for which said preparation is manufactured as well as the ailment for which the same is manufactured or in some cases, names of the ingredients used in said product are taken into consideration. In the instant case, prima-facie it transpires that as per the case of the plaintiff, the word ACUCAL is derived from accuracy as well as calcium; whereas the word ACICAL is derived from acidity and calcium. It is further pertinent to note that both are Schedule H drugs and in the impugned order, the trial Court took into consideration this aspect of the matter and has come to prima- facie conclusion that the drug is not such which can be freely sold across the counter by any Chemist. To purchase such drug, the medical prescription of a registered medical practitioner is must and even as per the relevant rules, Chemist cannot sell such drug without there being such prescription.
15. On behalf of the appellant – plaintiff, much emphasis was placed upon the case of Cadila Health Care Ltd., v/s. Cadila Pharmaceutical Ltd., reported in AIR 2001 S.C. 1952. The said decision was also relied upon before the trial Court and the trial Court has elaborately taken into consideration the ratio laid down by Hon'ble the Apex Court in the said decision. The ratio laid down in the said decision has been elaborately discussed by other High Courts as well as by this Court in various decisions. In the case before Hon'ble the Apex Court, the controversy was about two medicinal preparations namely FALCITAB and FALCIGO. The trial Court dismissed temporary injunction application filed by the appellant – plaintiff and even the plaintiff was unsuccessful before High Court. The order of High Court was challenged before Hon'ble the Apex Court. Hon'ble Apex Court, in the said decision, took into consideration various earlier decisions of the Apex Court and more particularly in the case of S.M. Dyechem Ltd. v/s. Cadbury [India] Ltd., reported in AIR 2000 S.C. 2114 and observed that in passing off action, the principle of dissimilarity may not be relevant, but what is required to be considered is the factor of similarity. About Schedule H drug, it has been observed that mere fact that a particular drug cannot be sold to a common-man across the counter by Chemist without there being written prescription of a registered medical practitioner itself may not be relevant factor to deny the remedy of injunction to the plaintiff. It has been observed that in most of the cases, the handwritings of doctors are almost illegible creating confusion and there are cases that even such drugs are sold when the demand is placed on telephone. However, Hon'ble the Apex Court ultimately did not interfere with the order of the High Court and reasons are assigned as to why no interference was warranted in the order of High Court. It is pertinent to note that ingredients in both the drugs FALCIGO and FALCITAB were common and both the drugs were manufactured for the treatment of cerebral malaria commonly known as Falcipharum. Ultimately in para. 35 in the said decision, following guidelines are issued by Hon'ble the Apex Court.
“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 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.”
16. In the above view of the matter, even taking into consideration the ratio laid down by Hon'ble the Apex Court in Cadila Health Care's case [supra], the various factors as enumerated above, are required to be taken into consideration in passing off action. Thus, applying the ratio laid down in the above decision, the trial Court at this stage, prima- facie observed that there are no such similarities in both the drugs, namely ACUCAL and ACICAL so that any confusion is likely to arise either in the mind of a Chemist or the consumer. I need not repeat the entire above discussion made in this judgment, but suffice it to say that the basic ingredients, use of the drugs, effect, performance and price of the drugs are different. The aspect of the matter regarding Schedule H drugs has been elaborately dealt with by this Court way back in 1992 in the case of M/s. Ciba Geigy Ltd. v/s. M/s. Sun Pharmaceutical Industries Ltd., reported in 1992 [2] G.L.R. 1053. This Court also took into consideration the arguments advanced regarding bad handwriting of medical practitioner. Ultimately, this Court came to the conclusion that in such cases the fact regarding the drug being Schedule H drug and its availability only on the prescription by a doctor cannot be completely ignored and, therefore, the possibility of confusion is very remote. In the case of Cadila Healthcare Ltd., v/s. Swiss Pharma Pvt. Ltd., reported in 2002 [2] G.L.R. 1734 again this Court had occasion to consider the effect of drug being Schedule H and Schedule L drug. Before this Court almost similar argument was advanced regarding bad handwriting of medical practitioners and thereby the mistake which was likely to be committed by Chemist. In para. 19 in the said decision, this Court considered the aspect to the effect that if the mistake is committed on account of the handwritings of the doctor, then for such mistake, similarity in name is not necessary. In that case, mistake cannot be attributed to the similarity in the names of the two medicines.
17. In above view of the matter, in light of the above discussion, when in both the medicinal preparations basic ingredients are not almost similar, use and effect are not almost similar and they are not used for a similar disease or ailment, in that background when the trial Court took into consideration the factor of Schedule H drug, at this stage, it cannot be said that the discretion exercised by the trial Court is perverse, capricious or arbitrary. Under such circumstances, it is not necessary for this Court to substitute a different view of the matter. Under such circumstances, the trial Court, therefore, prima-facie rightly observed that mere fact that the plaintiff marketed its drug ACUCAL first in point of time, itself may not be of much relevance. Even before the trial Court, search details from inter-net came to be produced and it transpires that there are various drugs having prefix “AC” or suffix “CAL”. In that background though the defendants have raised a contention that the word ACUCAL is generic in nature [publici juris] and, therefore, the plaintiff cannot claim any monopoly over the said word. However, this Court is of the opinion that this aspect of the matter should not be dealt with on merits at this stage for the simple reason that the evidence is yet to be recorded in the suit and the application filed by the plaintiff for registration of its trade mark is pending with the Registrar of Trademarks since last about more than 10 years. However, suffice it to say that though in passing off action, the question of registration of trademark may not be relevant factor, but the hard reality that even the application filed by the plaintiff for registration has remained pending since last more than 10 years is a factor which cannot be ignored by this Court along with over-all aspect of the matter.
18. There is no dispute that as held by Hon'ble the Apex Court in the case of Laxmikant V Patel v/s. Chetanbhai Shah reported in [2002] 3 S.C.C. 65, so also in Cadila Health Care's case [supra], in a passing off action about medical preparation, a strict view of Court is required than in any ordinary case of passing off action regarding other commodity. There cannot be any dispute that a mistake or error committed by a Chemist in supplying a wrong medicine on account of confusion in name may create a health problem to its consumer or even some time his life may be endangered. However, in the instant matter, I need not here repeat again the above discussion made in this judgment about various differences in ingredients or basic materials of both the drugs, so also their use, effect and price. Moreover, coupled with above facts, one another factor, namely it is Schedule H drug, is required to be seen and in the above view of the matter, the trial Court, assigning cogent and clear reasons, has prima-facie observed that the possibility of any mistake or error is almost nil.
19. On behalf of the respondents – defendants, not only before the trial Court but even before this Court, it has been emphatically argued that the plaintiff suppressed material facts in its pleadings. Considering the impugned order passed by the trial Court, it transpires that in the plaint as well as in the application for temporary injunction, the plaintiff pleaded that it has filed application for registration before the Registrar of Trade Marks and when the said application came to be published, the defendants have not filed any objection or opposition. It is further pleaded that, therefore, the plaintiff is certain to get its trade mark registered. However, what is not pleaded is the fact that one American comnpany named Syntex Pharma AG has taken an objection on the ground of its mark “ACULAR” based on their proposed to be used mark. It is, therefore, the defence of the defendants that the plaintiff has suppressed such material fact. However, both the sides relied upon number of decisions on this aspect before the trial Court as well as before this Court, and ultimately the trial Court, in the impugned order, observed that the plaintiff has suppressed this fact, which is essential, in its pleadings. As a matter of fact, at this stage, this Court is of the opinion that it is not necessary to consider conclusively this aspect of the matter as at the fag end of trial, the trial Court may come to legitimate conclusion on the basis of evidence. However, suffice it to say that in the instant matter, the fact that one American company claiming the mark “ACULAR” has objected the registration of the plaintiff's mark, is prima-facie relevant in the sense that since last more than 10 years the plaintiff's application for registration has remained undecided before the competent authority. Only for that purpose, prima-facie, at this stage, the opposition lodged by the American company may carry some weight. However, no final conclusion is required to be arrived at for the simple reason that even if it is observed that there is no material suppression in the plaint, yet in light of the entire above discussion, it cannot be said that the trial Court committed any error in not granting temporary injunction order in favour of the plaintiff at this stage. In the impugned order, in para. 8, the trial Court took into consideration various decisions pertaining to the trade names of various other medicines and then took into consideration the case of the plaintiff and the documents relied upon on behalf of both the sides and ultimately came to the prima-facie conclusion that the plaintiff was not entitled to claim discretionary relief of injunction. On behalf of the appellant – plaintiff, reliance was placed upon a case of T.V. Venugopal v. Ushodaya Enterprises Ltd., reported in 2011 AIR SCW 1742, wherein it has been observed that merely because no action is taken against certain other parties, it does not mean that the plaintiff is not entitled to take action against the defendants. There cannot be any dispute regarding the principle established, but in the facts and circumstances of the instant case, this decision is not useful to the plaintiff. Reliance was also placed upon the case of Shree Sainath Industries v/s. Sainath Auto Industries reported in 2004 [3] G.L.H. 27, wherein in para. 20 in the said decision, considering earlier decision of Kerala High Court, this Court observed that for a temporary order in an action in passing off, the plaintiff need not in general show a strong prima-facie case and even if the chance of success at the trial is only 20 per cent, the interim relief is required to be granted. In the facts and circumstances of said case, ultimately the temporary injunction order was granted in favour of the appellant – plaintiff. However, the facts and circumstances of the instant case on hand are completely different and in light of the entire above discussion, there is nothing that the order passed by the trial Court can be labeled as arbitrary, perverse or capricious so that the interference in the said order by this Court is warranted. Moreover, the submission advanced on behalf of the appellant – plaintiff that till date why the defendants did not apply for registration is a material question, which should have been considered by the trial Court, but the trial Court failed to consider it, if seen in its proper perspective, then such submission is not required to be undergone at this stage on its merits for the simple reason that even as submitted on behalf of the appellant – plaintiff, the instant suit is filed to challenge the passing off action wherein the factor of registration or no registration is immaterial. Secondly, the full fledged evidence is yet to be recorded and ultimately on the basis of the evidence on record, the trial Court may come to any just conclusion.
20. The appeal, therefore, lacks merits and deserves to be dismissed. No interference is required in the impugned order passed by the trial Court.
21. For the foregoing reasons, the appeal stands dismissed. There shall be no order as to costs. However, it is hereby made clear that whatever observation is made by this Court in the instant judgment shall be confined only to this appeal from order and shall not have any bearing whatsoever at the time when the trial Court shall decide the suit in accordance with law on the basis of evidence that shall be led before it. Considering the facts and circumstances of the case, it would be in the interest of justice for both the sides, to direct the trial Court to expedite the trial of the suit and shall dispose of the suit in accordance with law at the earliest, preferably on or before 31/12/2012.
Since the Appeal From Order stands disposed of, Civil Application for stay loses its survival value and accordingly it stands disposed of.
(J.C.UPADHYAYA, J.) * Pansala.