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High Court of Judicature at Bombay
S.J. VAZIFDAR
Sun Pharmaceuticals Industries Limited
Versus
Emcure Pharmaceuticals Limited
NOTICE OF MOTION NO.174 OF 2011 IN SUIT NO.164 OF 2011
Decided on : 09-01-2012
In an action for passing off, the plaintiff must demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or the services offered by him are the goods or services of the plaintiff. The plaintiff must establish that it has suffered or is likely to suffer by the misrepresentation. It is the misrepresentation to the public that the defendant’s goods are actually those of the plaintiff that is actionable and an essential pre-requisite in a passing off action.
A plaintiff is not likely to suffer damages merely by the defendant adopting a deceptively similar mark. There can be no misrepresentation as required in a passing off action unless the mark is put to use. It is the use thereof in the course of trade that constitutes to misrepresentation which in turn results in damage to the plaintiff. It follows then that the mere adoption of a mark by a party does not furnish a cause of action to seek a relief ag ainst the tort of passing off.
Trade Marks Act, 1999 - Section 29 - Passing off. - To prevent passing off, a suit may be filed as a quia timet action, if plaintiff is apprehensive that mark is likely to be used. The plaintiff may file a suit to prevent passing off as a quia timet action, if he is apprehensive that the mark is likely to be used. The registration of a mark does not by itself predicate an intention to use it although for a mark to be validly registered, it is necessary for a party to indicate that it uses or intends using the mark.
Indeed one of the grounds for challenging a registration is that a mark was never intended to be used by a party in whose favour it was registered. Thus although the intention to use the mark is a prerequisite for a valid registration, it does not necessarily follow that the registration of a mark establishes an intention to use the same. The plaintiff can always rely upon a registration of a mark by the defendant as evidence of an admission by the defendant of its intention to use the mark and thereby maintain a quia timet action to prevent passing off. Even in a quia timet action, the relief that can be sought and granted is not to restrain a party from merely adopting the mark but to prevent its use in the course of trade, for it is that which causes damage to the plaintiff. The mere intention to use the mark by itself does not lead to misrepresentation and consequently does not result in any damage to the proprietor of the mark.
1. This is an action for infringement and passing off.
2. The plaintiff is the registered proprietor of the word mark “SUSTEN”. The mark was registered with effect from 16.6.2000 under class 5. The defendant is the registered proprietor of the impugned mark “SUSTINEX”. The mark was registered with effect from 21.6.2001 also under class 5. The plaintiff has filed an application for rectification, which is pending.
3. As the defendant’s mark is also registered, the reliefs at this stage are based only on the ground of passing off. The plaintiff has used its marks since November, 2000, as is evident from the sales figures furnished in the plaint. The defendant used the impugned mark from 19.11.2010. The plaintiff therefore is admittedly the prior user of the mark.
4. The first question is whether the impugned mark is deceptively similar to the plaintiff’s mark. My first impression was that it was not. However, in view of the nature of the products, I was not satisfied at basing my judgment on a first impression. Although even at the end of the hearing my first impression remain unchanged, I reserved the judgment only to further consider this aspect. I thought it necessary to exercise this degree of caution before deciding whether the two marks are deceptively similar or not due to the nature of the products. The plaintiff’s product sold under its mark is progesterone in soft gelatin capsules prescribed for sustaining pregnancy in critical conditions, whereas the defendant’s product sold under the impugned mark is prescribed to male patients to treat pre-mature ejaculation. Whether or not male patients would suffer adverse consequences by consuming the plaintiff’s product, it is obvious that female patients who are prescribed the plaintiff’s product but consume the defendant’s product are bound to suffer disastrous consequences. Even if the defendant’s product does not affect the female patients who are required to use the plaintiff’s product per-se, such female patients will suffer disastrous consequences by not consuming the plaintiff’s products. This is obvious for female patients who are prescribed medication for sustaining pregnancy in critical conditions would suffer disastrous consequences by not consuming such products at all.
5. My view however remains unchanged although I went to the extent of straining to find a similarity between the two marks.
6. Visually the marks are not similar.
7. The plaintiff’s mark “SUSTEN” will in probability be pronounced as it is spelt. The pronounciation of the prefix “SUS” and “SUST” in both the marks will be the same. The suffix “TEN” in the plaintiff’s mark will be pronounced as the number “10”. It will not be pronounced as “TIN”. Even so had the impugned mark been “SUSTIN”, it would have been deceptively similar to the plaintiff’s mark.
The impugned mark “SUSTINEX” however, is phonetically not similar to the plaintiff’s mark “SUSTEN”. Even though it is likely to be pronounced as one word, there is a clear phonetic and audible divide between the prefix “SUSTI” and the suffix “NEX”. The prefix and suffix in the word “SUSTINEX” are equally prominent. I do not find the word capable of being pronounced by slurring over the suffix “NEX”. The suffix “NEX” is pronounced and distinct and has a significant independent phonetic existence in the mark. I cannot see a person hiving off and dropping the suffix and pronouncing the word “SUSTINEX” as “SUSTIN” or even “SUSTEN”.
8. It is not in every word that a prefix is phonetically prominent or dominant and the suffix is slurred over. There may well be words where the suffix is more prominent even phonetically than the prefix. These factors would depend upon the word.
9. The judgment of a learned single Judge of this Court in the case of Ranbaxy Laboratories Ltd. v. Indchemie Health Specialities Pvt. Ltd. (2002) 3 Bom.C.R. 186 relied upon by Mr.Tulzapurkar however does not support the defendant. The marks were different viz. “ZANOCIN”
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