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1999 Supreme(Mad) 85
High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE C. SHIVAPPA
Wockhardt Limited - Appellant
Versus
Aristo Pharmaceuticals Limited - Respondents
O.S.A. Nos. 132 and 133 of 1998 and C.M.P. Nos. 11157, 11158 and 11159 of 1998
Decided On : 30 January 1999
Headnote:
The court held that the offending mark was deceptively similar to the appellant's trade mark and granted an injunction restraining the respondent from using the mark.
Fact of the Case:
The appellant, a pharmaceutical company, had registered the trade mark 'SPASMO-PROXYVON' for its drug. The respondent, another pharmaceutical company, launched a new drug under the trade mark 'SPASMO-FLEXON'. The appellant filed a suit for infringement of trade mark and passing off.
Finding of the Court:
The court held that the two marks were deceptively similar and that there was a likelihood of confusion in the minds of the public. The court noted that the marks had the same prefix 'SPASMO' and that the remaining parts of the marks were also similar in sound and appearance. The court also considered the fact that the goods were sold over the counter and that many consumers would not be aware of the difference between the two marks.
Issues: Whether the offending mark was deceptively similar to the appellant's trade mark.
Ratio Decidendi: The court applied the following principles in reaching its decision: * The registered proprietor of a trade mark has the exclusive right to use the trade mark in relation to the goods in respect of which the trade mark is registered. * A trade mark is infringed by a person who uses a mark that is identical with or deceptively similar to the registered trade mark. * A mark is deceptively similar to another mark if it is so nearly resembles that other mark as to be likely to deceive or cause confusion. * In determining whether two marks are deceptively similar, the court must consider the marks as a whole, taking into account the overall impression that they create in the minds of the public.
Final Decision: The court allowed the appeal and granted an injunction restraining the respondent from using the mark 'SPASMO-FLEXON'.
C. SHIVAPPA, J.
These two appeals are directed against the order dated 2-6-1998, passed on O.A. Nos. 182 and 183 of 1998 on the Original Civil Jurisdiction of this Court, vacating the ex parte interim injunction granted on 6-4-1998.
2. Original Application Nos. 182 and 183 of 1998 was filed for grant of ad interim injunction restraining the respondent and others from use or otherwise dealing with the pharmaceutical preparations and substances under the trade mark "SPASMO-FLEXON". O.A. Nos. 183 of 1998 was for grant of ad interim injunction restraining the respondent and others from passing off the goods under the trade mark "SPASMO-FLEXON", on the ground that the same is identical or deceptively/phonetically similar to the appellant's trade mark "SPASMO-FLEXON".
3. In the suit, the trial Judge by an Order dated 16-4-1998 granted adinterim injunction ex parte. Against the said order, the respondent herein filed Application Nos. 1650 to 1654 of 1998 to vacate the ex parte, order passed on O.A. Nos. 182 and 183 of 1998 and also to permit the respondent to complete preparation of the "SPASMO-FLEXON" drug and to dispose of the manufactured drugs and also the unsold drugs of the respondent pending disposal of the applications. The learned single Judge allowed those applications and vacated the ex parte order of interim injunction holding that both the plaintiff and the defendant should maintain their respective structure and colour of the drugs. Aggrieved by the said common order, the appellant is now before us.
4. The case of the appellant/plaintiff is that it adopted the trade mark "SPASMO-PROXYVON" in respect of its pharmaceutical products and the said trade mark was also registered on 4-8-1997 under the provisions of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as 'The Act' for short) and the registered number is 327582. The said trade mark was advertised in the Trade Mark Journal No. 706 at page No. 612, and the registration of the same was notified in Trade Mark Journal No. 750 at page No. 450. Thereafter, it was renewed upto 4-8-1998 and that fact was also notified in Trade Mark Journal No. 1014 at page No. 763. Subsequently, the appellant/plaintiff had also applied for renewal of the said trade mark for a further period of 7 years.
5. The appellant came to know that the respondent herein has introducing a pharmaceutical product under the trade mark "SPASMO-FLEXON". A drug for relieving pain, with almost same preparation and bearing a deceptive similarity to that of the appellants trade mark "SPASMO-PROXYVON", and, hence there is every possibility for the public being mislead in buying it. In other words, the trade mark "SPASMO-FLEXON" is deceptively and phonetically similar to that of the appellant's trade mark "SPASMO-PROXYVON" and also having colourable imitation that led to filing of suit and interlocutory applications pertaining to use of trade marks and passing off goods.
6. The respondent-Company has filed a counter-affidavit stating that it was founded in or around the years 1972 and for the past 25 years, it has built up a reputed business in the pharmaceutical industry and is presently among the top 15 pharmaceutical companies in India. The respondent-Company has around 22 branches and more than 1000 stockists spread out all over India. The annual sales turn over of the respondent-Company is presently around Rs. 160 crores. In the year 1986, the respondent-Company adopted the invented word "FLEXON" as a trade mark called a pain relieving drug meant for muscles in the human body. The "FLEXON" drug of the respondent-Company gained huge success and sales have been growing steadily over the past 12 years and presently having a turn over of more than Rs. 10 crores. The trade mark "FLEXON" is associated exclusively with the respondent-Company. It is submitted that in the field of medicine and pharmaceuticals, it is a common and established practice that a part of the brand name of a drug contai
