The main legal point established in the judgment is that the trade mark 'Parkitane' was deceptively similar to the registered trade mark 'Pacitane', and there was a likelihood of confusion in the market. The court also emphasized the prior and long use of the trade mark 'Pacitane' by the respondents and the overall similarity of the broad features of the marks.

JUDGMENT :

Anoop V. Mohta, J.

Introduction: The controversy in this appeal revolves around the conflict between two identical trade marks, "Pacitane" registered trade mark of the respondents and "Parkitane" unregistered trade mark of the appellants.

2. The appellants herein, (original defendants), are aggrieved and affected by the order dated 20.9.2003 in Notice of Motion No. 2138 of 2003, arising out of Suit No. 2299 of 2003, whereby, ad-interim relief in terms of prayer Clauses (a), (b), and (c), except bracketed portion, in favour of the respondents (original plaintiffs) herein, has been granted. Though by the impugned order, ad-interim order was granted, when the matter came up before us on 2nd December, 2003, the learned Senior Counsel appearing for parties agreed that the notice of motion be treated as having been disposed of by the impugned order. We ordered, thus, appeal to be heard finally at the admission stage.

3. Parties assertion: Respondent No. 1 (original plaintiff No. 1) known as Wyeth holding Corporation is a company, that formally known as American Cynamid Company, incorporated under the laws of the State of Maine, U.S.A., and having its principal office at Five Giralda Farms, Madison, New Jersey, 07940-08974, United State of America. Respondent No. 1 is a manufacture and doing business, inter alia, in medicinal and pharmaceutical preparations. Respondent No. 2, is a Company, incorporated under the Companies Act, having its registered office at R.B.C., Mahendra Tower, Worli, Bombay 400 080. Respondent No. 1 is a registered proprietor in India and abroad, of various trade marks in respect of medicinal, pharmaceutical and veterinary preparations. Respondent No. 1 is the registered proprietor in India of the trade mark "Pacitane" bearing No. 144173, dated 27th June, 1950, registered in respect of "Trihexylphenidyl, Anti Spasomodic Preparations", in Class-5, from the Registrar of trade marks. The said registration has been duly renewed and is valid and subsisting. The word "Pacitane" is said to be an invented word. Since 1955, Pharmaceutical preparations under the first respondent's registered trade mark "Pacitane" have been in use in India. The Drugs Controller, State of Bombay, on 20.11.1995, had issued manufacturing licences for the tablets, under the trade mark of "Pacitane" alongwith other drugs, to the predecessors-in title, of the second respondent.

4. The predecessors of the respondent No. 2 have been using the said trade mark as licensee of the respondent No. 1. The goods manufactured by the predecessors and by respondent No. 2 are claimed to be strictly in accordance with the formula and prescribed specifications by the respondent No. 1. The preparations in relation to trade mark "Pacitane" are manufactured and sold in the form of tablets.

5. Respondent No. 2 is claimed to have incurred considerable expenses in promoting their pharmaceutical preparations under the registered trade mark "Pacilane" all over India, in various media on a large and extensive sale. In support of annual advertisement, and formal expenditure incurred by the respondent No. 2, form the year 1996 to 2002, the statements duly certified by the Chartered Accountant, have been placed on the record.

6. Respondents, therefore, have asserted to have acquired tremendous goodwill and reputation of Pharmaceutical preparations under the trade mark "Pacitane". The claim that the members of the public and the trade in India, on looking at any anti-spasmodic preparation of "Trihexylphenidyl" bearing the trade mark "Pacilane" associate the trade mark "Pacitane" as emanating from the respondents, exclusively.

7. Sometime in February, 2000, it came to the knowledge, of the respondent No. 2 that the appellants started manufacturing and marketing a pharmaceutical preparation under the trade mark "Parkitane" and it was an infringement of respondent No. 1 is registered trade mark "Pacitane". The respondents took search at the trade marks Registry, Mumbai and