2001 Supreme(Bom) 951

IN THE HIGH COURT OF BOMBAY
D.K. Deshmukh, J.
Ranbaxy Laboratories Ltd. .... Plaintiff.
Versus
Indchemie Health Specialities Pvt. Ltd..... Defendant.
Notice of Motion No. 3729 of 1999 in Suit No. 6724 of 1999, decided on 12-10-2001.
Advocates appeared :
R.M. Kadam with Gajaria i/b Gajaria and Co., for plaintiff.
Virag Tulzapurkar with Rahul Chitnis i/b V.S. Hegde, for defendant.

Headnote:Trade and Merchandise Act, 1958 - Sections 6 and 7 - Passing off - Medical preparations - Two medi- cines made up of same ingredients - Meant for different ailments - Held - Part of names of medicines derived from name of basic drug - Names descriptive in nature - Passing off illegal - One company cannot have right to sole use of same. - One more aspect that, is to be considered is that the basic drug used by the plaintiff is "Ofloxacin". Their mark is "Nonocin", it is clear that the mark of the plaintiff is substantially derived from name of the basic drug used by them. Similarly, the basic drug used by the defendant is "Cefuroxime". Their mark is "Zenoxim". It is the case of the defendant that its mark is substantially derived from the name of the basic drug used by it. Thus, the marks adopted by both the parties are derived from the name of the basic drug that is used by them. The marks are thus, descriptive in nature being indicative of the composition of the medicine.

       Trade and Merchandise Act, 1958 - Sections 6 and 7 - Passing off - Medicines - Similarly in two marks - Medical preparations - Made out of same ingredients - For different ailments - Causing confusion to purchaser - Deceptive similarity - One mark is "Zenocin" - Another is "Zenoxim" - Held - Use of medicines different - Intended passing off not possible - Sound of two crucial letters "Ocin" and "Oxim" distinct and different - Marks not deceptively similar. - Now, the products to which this suit relates are medicinal preparations. It is common ground that the composition of the two products is totally different. They are prescribed for treating different ailments. Therefore, any intention or design on the part of the defendant to so name its product as can be passed of as the product of the plaintiff has to be ruled out. Still, an enquiry has to be made, whether, due to the similarity in the two marks, the purchaser is likely to be confused. Thus, the first question to be considered is whether there is deceptive similarity in the two marks. So far as this aspect of the matter is concerned, in so far medicinal preparations are concerned, the judgment of the Supreme Court in the case of Cadila Health Care referred to above has brought about a marked change in the existing law about the approach that the Court has to adopt.

       It is clear from the observations of the Supreme Court quoted above that the test to be adopted by the Court in considering the question whether the two competing marks are deceptively similar or not is whether an ordinary consumer would be confused to take one product for the other because of the similarity of the marks and other surrounding factors. The Supreme Court has also observed that the Court has to keep in mind that an ordinary Indian consumer may have absolutely no knowledge of English Language. It is, therefore, obvious that as both the marks are written in English language and Roman script, visual similarity or absence of visual similarity of the two marks is not of much consequence. So far as the aspect of phonetic similarity is concerned, the mark of the plaintiff is Zonocin and the mark of the defendant is Zenoxim. Now comparing these two marks phonetically, so far as the prefix "Zan" and "Zen"are concerned, they appear to be phonetically similar, however suffix "Ocin" and "Oxim" can not be said to be so. The distinguishing feature, in my opinion, is the sound of the letter "C" in the mark of the plaintiff and the sound of the letter "X" in the mark of the defendant. The sound of the two crucial letters in the two marks are distinct and different. It is to be seen that a learned Single Judge of this Court in the judgment in the case of Chemical Industrial referred to above considered the phonetic similarity between two marks "Ciplamina" and "Complamina" and though the letter "C" was common in both the marks it was held that due to the manner in which that letter is pronounced the possibility of any phonetic similarity was ruled out

       Trade and Merchandise Act, 1958 - Sections 6 and 7 - Passing off - Medicines - Similarly in two marks - Medical preparations - Made out of same ingredients - For different ailments - Causing confusion to purchaser - Deceptive similarity - One mark is "Zenocin" - Another is "Zenoxim" - Held - Use of medicines different - Intended passing off not possible - Sound of two crucial letters "Ocin" and "Oxim" distinct and different - Marks not deceptively similar. - Now, the products to which this suit relates are medicinal preparations. It is common ground that the composition of the two products is totally different. They are prescribed for treating different ailments. Therefore, any intention or design on the part of the defendant to so name its product as can be passed of as the product of the plaintiff has to be ruled out. Still, an enquiry has to be made, whether, due to the similarity in the two marks, the purchaser is likely to be confused. Thus, the first question to be considered is whether there is deceptive similarity in the two marks. So far as this aspect of the matter is concerned, in so far medicinal preparations are concerned, the judgment of the Supreme Court in the case of Cadila Health Care referred to above has brought about a marked change in the existing law about the approach that the Court has to adopt.

       It is clear from the observations of the Supreme Court quoted above that the test to be adopted by the Court in considering the question whether the two competing marks are deceptively similar or not is whether an ordinary consumer would be confused to take one product for the other because of the similarity of the marks and other surrounding factors. The Supreme Court has also observed that the Court has to keep in mind that an ordinary Indian consumer may have absolutely no knowledge of English Language. It is, therefore, obvious that as both the marks are written in English language and Roman script, visual similarity or absence of visual similarity of the two marks is not of much consequence. So far as the aspect of phonetic similarity is concerned, the mark of the plaintiff is Zonocin and the mark of the defendant is Zenoxim. Now comparing these two marks phonetically, so far as the prefix "Zan" and "Zen"are concerned, they appear to be phonetically similar, however suffix "Ocin" and "Oxim" can not be said to be so. The distinguishing feature, in my opinion, is the sound of the letter "C" in the mark of the plaintiff and the sound of the letter "X" in the mark of the defendant. The sound of the two crucial letters in the two marks are distinct and different. It is to be seen that a learned Single Judge of this Court in the judgment in the case of Chemical Industrial referred to above considered the phonetic similarity between two marks "Ciplamina" and "Complamina" and though the letter "C" was common in both the marks it was held that due to the manner in which that letter is pronounced the possibility of any phonetic similarity was ruled ou