The main legal point established in the judgment is that the potential for confusion in the context of medicinal products and the public interest in avoiding such confusion are crucial factors in determining deceptive similarity under the Trade and Merchandise Marks Act, 1958.

JUDGMENT - J.A. PATIL, J.:---This is an appeal under section 109 of the Trade and Merchandise Marks Act, 1958 (for short, the Act, 1958) challenging the order dated 27-3-1998 passed by the Assistant Registrar of Trade Marks allowing the application of the respondent No. 2 for registration of a trade mark of 'CROFEN' and rejecting the opposition filed by the petitioners. The relevant facts in brief are as under.

2. The petitioner No. 1 is a company incorporated and registered under the laws of England carrying on business inter alia of manufacturing and marketing medicinal and pharmaceutical preparations throughout the world. The petitioner No. 1 was the owner of the trade mark "BRUFEN" as on 25-7-1968, registered under No. 2506671 in Class 5 of Schedule IV of the Act, 1958. The petitioner No. 2 is a company incorporated and registered under laws of Germany also carrying on business inter alia of manufacturing and marketing pharmaceutical products. By a deed of assignment dated 9th August, 1995, the petitioner No. 1 has assigned some of its trade marks including the trade mark of "BRUFEN" to petitioner No. 2 and the said Deed of assignment has been filed with the Registrar of Trade Marks. The said product "BRUFEN" is being exclusively sold in India since 1973 and it is the premier drug for the treatment of Rheumatoid Arthritis and other ailments.

3. By his application dated 9-8-1989, respondent No. 2 applied for registration of the mark "CROFEN" under No. 514802 in respect of medicinal, pharmaceutical and veterinary preparation contained in Class-5 of the Schedule IV of the Act, 1958. The said mark was advertised in the Trade Marks Journal No. 1068 dated 1-12-1993. Upon learning of the said applications, petitioner No. 1 filed a notice of opposition on 2-3-1994 on the ground that petitioner No. 1 was the proprietor of the Trade Mark "BRUFEN" which product was being extensively sold all over India and that it had acquired a valuable reputation and goodwill. Petitioner No. 1 also claimed that the mark "CROFEN" of respondent No. 2 was deceptively similar to the trade mark "BRUFEN" and that it would cause great confusion and deception in the minds of medical practitioners, chemists and general public. After considering the evidence on record and after hearing both the parties, the Assistant Registrar of Trade Marks, by his order dated 27-3-1998 dismissed the petitioner's opposition and allowed the applications of respondent No. 2 for registration of the trade mark "CROFEN". It is this order which is impugned in this appeal.

4. The opposition of petitioner No. 1 was on the ground that the registration of trade mark applied for is contrary to the provisions of sections 11(a), 11(e), 12(1) and 18(1) of the Act, 1958. The Assistant Registrar of Trade Marks however held that the mark applied for "CROFEN", is not identical with or deceptively similar to the petitioners registered trade mark "BRUFEN" and therefore, there is no question of causing any confusion or deception. The Assistant Registrar of Trade Marks further held that the two marks are not deceptively similar and the reasons given by them in arriving at this conclusion are (1) they are structurally, visually and phonetically dissimilar, (2) that the goods are medicinal, pharmaceutical and veterinary preparation which are normally purchased after getting prescription from doctors and (3) that the goods are dispensed by the pharmacists, chemists who are well versed in their profession. He further pointed out that both the products contain IBUPROFEN as one of the active ingredients. According to the Assistant Registrar of Trade Marks, respondent No. 2 had honestly adopted the mark "CROFEN". In this view of the matter, the Assistant Registrar of Trade Marks proceeded to dismiss the opposition of the petitioner and granted the application of respondent No. 2 for registration.

5. I have heard Shri Ravi Kadam, the learned Advocate for the petitioner and Shri Nair, for respondent No. 2.

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