2014 Supreme(Bom) 129

IN THE HIGH COURT OF JUDICATURE AT BOMBAY
S.J. KATHAWALLA, J.
Charak Pharma Pvt. Ltd.
Vs.
Glenmark Pharmaceuticals Ltd.
Notice of Motion No. 2529 of 2007 in Suit No. 1851 of 2007
Decided on : 21st January, 2014

Headnote:Trade Marks Act, 1999 - Section 9 - Infringement of trade mark. - Where notice of motion taken up for final hearing after 6 months therefore relief to plaintiff cannot be denied merely because interim relief application could not be heard earlier. - The defendant has in its affidavit in reply contended that since the plaintiff was not granted any Advocate Appeared :-interim relief, no interim relief ought to be granted. The said contention was not advanced during arguments. However, the plaintiff has correctly submitted that the plaintiff was not granted Advocate Appeared :-interim relief on the ground of delay of just one year in the initiation of Court proceedings. It would therefore not follow that the plaintiff is not entitled to even interim relief on that ground. In any case, in a case of an infringement action, in the absence of establishing acquiescence, mere delay is never a defence. It is true that the Notice of Motion is taken up for final hearing after six years but the plaintiff cannot be denied relief merely because the interim relief application could not be heard earlier.

       Trade Marks Act, 1999 - Sections 9 and 11 - Infringement of trademark. - Bona fides and honesty of adoption of deceptively similar trademarks is completely irrelevant to avoid liability of infringement of trademarks. - The plaintiff has denied and disputed the aforestated contentions of the defendant and has submitted that applying the aforesaid test and considering the defendant’s mark as a whole, it is apparent that the defendant’s mark is deceptively similar to the plaintiff’s mark. From a look at the aforestated rival marks which are placed side by side, it is clear that both the marks are similar, visually and structurally. Both are seven letters words beginning with "E" and ending with "NOVA". As correctly submitted by the plaintiff, visually a man of average intelligence and imperfect recollection would have to really strain to identify the differences. Phonetically also both the marks are similar in a manner which is likely to deceive the consumer. Both the words begin with the letter "E" which has a very emphatic and prominent sound particularly in the manner in which it is pronounced by most Indians. The first syllable in both the marks being "E"; it is incorrect on the part of the defendant to contend that the first syllables are "EVA" and "ECO". Since both the marks begin with the prominent sound of "E" and end with the common word "NOVA", there is a great likelihood and in any case a possibility of the middle words to be slurred over.

       The plaintiff is correct in its submission that while considering the aspect of deceptive similarity, the Court would have to bear in mind that these products will be purchased by both villages and townsfolk, literate as well as illiterate. While examining cases of pharmaceutical preparations and deceptive similarities in their context, the ground realities in India cannot be overlooked and what has to be kept in mind is the purchaser of the goods in India who has absolutely no knowledge of the English language and to whom different words with slight difference in spellings may sound phonetically similar. Many patients may be elderly, infirm or illiterate and may not be in a position to differentiate between the medicine prescribed and bought and which is ultimately handed over to them. In the present case, the pharmaceutical preparations relate to gynecological issues. Considering the ground reality of a high rate of illiteracy amongst women in India and more particularly in the villages, there is an extremely strong likelihood and in any case a possibility of confusion between the rival marks.

       The said argument completely overlooks the fact that the present suit is one not merely of passing off but also of infringement. The plaintiff’s mark is a coined phrase and the plaintiff has an absolute statutory right to use the plaintiff’s mark to the exclusion of all the others. In these circumstances, once the defendant’s mark is found to be deceptively similar to the plaintiff’s mark, all other factors relied upon by the defendant completely pale into insignificance. In any case, as held by the Hon’ble Supreme Court in the case of Cadila (supra), very often, the drugs are ordered on telephone and depending on the doctor’s handwritten prescription. A person who goes to buy the drug for the first time would not know what the price, or packaging of the one drug shall be as distinguished to the other.