IMPORTANT POINT
Triple tests for deciding passing off discussed and applied.

JUDGMENT :

R.F. Nariman, J.

1. Leave granted.

2. The present Appeal arises from a Suit that was filed based on both infringement and passing off. However, at the time of the argument on the interim injunction before the learned Single Judge, the arguments were confined to passing off only.

3. The skeletal facts necessary to decide this Appeal are that the Plaintiff/Respondent has a trade mark called “CHYMORAL” and “CHYMORAL FORTE”, which is a drug administered post-surgically for swellings that may arise and/or wounds that may arise. It is interesting to note that the expression “CHYMO” comes from the generic name of the drug which is CHYMOTRYPSIN-TRYPSIN. The learned Single Judge ultimately found, after a copious reference to the facts and case law, as follows:-

“45. In the present case, I am not satisfied that any of these tests are met. Reputation as to source is not sufficiently demonstrated. The rival products have long co-existed and I cannot and will not presume misrepresentation by Wockhardt as to source, even assuming there is similarity. There is no explanation at all for Torrent’s past conduct and the inaction with knowledge, or deemed knowledge, of Wockhardt’s trade mark registration application, its advertisement and subsequent registration, with not a single objection from Torrent or is predecessor-in-title. There is no answer about the caveats or about the coexistence of other players in the market. There is simply no misrepresentation shown as required by law, at this prima facie stage. There being no prima facie case made out, I cannot grant the injunction. The balance of convenience seems to me to favour entirely the Defendants; after all, to the Plaintiff’s knowledge, they have had their product in the market for a very long time, at the very least for five years, possibly more, and an injunction at this stage is far removed from the prima facie status quo that Wander v Antox tells us is the primary objective. There is no injury, let alone an irreparable one, to the Plaintiff that I can tell if an injunction is refused. It has not had one all this time while the Defendants’ business has grown into crores. To grant the injunction would be unfairly monopolistic.”

4. The Division Bench, in an order of reversal, ultimately found that each one of the triple tests for passing off had been made out on the facts, namely, the establishment of reputation, misrepresentation as understood in law and likelihood of injury or damage caused to the Plaintiff. On the first count, the Division Bench held that the Plaintiff had obtained the mark by way of assignment in the year 2014, from one Elder and Company, which, in turn, had obtained the said mark from one Armour Pharmaceutical Company. The user that is claimed on behalf of the Plaintiff is at least from the year 1988 as and when Elder Pharmaceuticals Ltd. actually sold drugs under the two trade names as aforesaid. The Division Bench also referred to the Plaint which, in turn, referred to sales figures of Rs. 59 Crores and Rs. 95 Crores for the years 2014-15 and 2015-16 respectively. Having thus found, the Division Bench then went on to state that it is clear that reputation has been established. When it came to misrepresentation, the Division Bench found that confusion was likely to ensue despite the fact that the purchasers of the drug, which is a Schedule-H Drug, may be persons who are Doctors and other patients who are literate. It found that the substitution of the letter ‘T’ for the letter ‘O’ is the only difference between the two trade names, and therefore, found that, in law, since confusion on the ground of deceptive similarity would ensue, misrepresentation in law is also made out. On the third count, it said, undoubtedly, there would be likelihood of damage to the Plaintiff.

5. The Division Bench interfered with the conclusion of the learned Single Judge by ultimately finding that wrong tests had been applied in law as a result of which the judgment was “vitiated by