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High Court of Judicature at Madras
THE HONOURABLE MR. JUSTICE M. KARPAGAVINAYAGAM & THE HONOURABLE MR. JUSTICE SHIVARAJ V. PATIL
Indo-Pharma Pharmaceutical Works Limited Mumbai - Appellant
Versus
Citadel Fine Pharmaceuticals Limited, Madras - Respondents
O.S.A. Nos. 230 and 231 of 1997 and C.M.P. Nos. 10483-84 of 1997
Decided On : 19 June 1998
TRADEMARK - INFRINGEMENT - PASSING OFF - DECEPTIVE SIMILARITY - PHONETIC SIMILARITY - COMMON PREFIX - GENERIC TERM - PUBLIC JURIS - VISUAL IMPRESSION - BALANCE OF CONVENIENCE - INTERIM INJUNCTION - DISCRETION OF TRIAL COURT - APPELLATE REVIEW.
Fact of the Case:
The appellant, a manufacturer of infant and invalid food products under the trade mark 'ENERJEX', filed a suit for permanent injunction restraining the respondent from infringing the appellant's registered trade mark by using the offending trade mark 'ENERJASE' or any other trade mark deceptively or phonetically similar to the appellant's trade mark. The appellant also sought an injunction restraining the respondent from selling or dealing in food articles as those of the appellant by using the expression 'ENERJASE' or any other trade name deceptively and phonetically similar to those of the appellant's trade name/trade mark 'ENERJEX'. The trial court dismissed the appellant's applications for interim relief, holding that the appellant did not make out a prima facie case of infringement and passing off. The appellant challenged the trial court's order by way of appeals.
Finding of the Court:
The court held that the trial court did not err in dismissing the appellant's applications for interim relief. The court found that the appellant's trade mark 'ENERJEX' and the respondent's trade mark 'ENERJASE' were not deceptively or phonetically similar. The court noted that the products of the appellant and the respondent were different, both in form and character, and that the containers of the products were also different. The court further noted that the appellant's product was an allopathic medicine, while the respondent's product was an Ayurvedic medicine. The court also found that the appellant had not established that the respondent's use of the trade mark 'ENERJASE' was likely to cause confusion or deception among consumers.
Issues: 1. Whether the appellant's trade mark 'ENERJEX' and the respondent's trade mark 'ENERJASE' were deceptively or phonetically similar? 2. Whether the appellant had established a prima facie case of infringement and passing off?
Ratio Decidendi: 1. In determining whether two trade marks are deceptively or phonetically similar, the court must consider the following factors: (a) the visual impression of the marks; (b) the phonetic similarity of the marks; (c) the nature of the goods or services in respect of which the marks are used; (d) the degree of resemblance between the marks; (e) the extent to which the marks are likely to cause confusion or deception among consumers. 2. In the present case, the court found that the appellant's trade mark 'ENERJEX' and the respondent's trade mark 'ENERJASE' were not deceptively or phonetically similar. The court noted that the products of the appellant and the respondent were different, both in form and character, and that the containers of the products were also different. The court further noted that the appellant's product was an allopathic medicine, while the respondent's product was an Ayurvedic medicine. The court also found that the appellant had not established that the respondent's use of the trade mark 'ENERJASE' was likely to cause confusion or deception among consumers.
Final Decision: The appeals were dismissed.
M. Karpagavinayagam, J.
For the Is the word 'ENERJASE' word deceptively similar to the word 'ENERGEX' ? This is the question posed before us.
2. The appellant, Indo-Pharma Pharmaceutical Works Ltd., having its office at Ahmedabad, who is engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the plaintiff. The respondent, Citadel Fine Pharmaceuticals Ltd., having its office at Chennai, who is also engaged in the business of manufacturing and selling pharmaceutical medicinal preparations, is the defendant.
3. The appellant filed the suit for permanent injunction restraining the respondent from infringing plaintiff's registered trade mark in respect of infants and invalid foods by use of the offending trade mark "ENERJASE" or any other trade mark which is deceptively or phonetically similar to the plaintiff's trade mark 'ENERJEX'. In the said suit, it is also requested for grant of a permanent injunction restraining the respondent from selling or dealing in food articles as those of the appellant by the use of expression "ENERJASE" or any other trade name deceptively and phonetically similar to those of the appellant's trade name/trade mark "ENERJEX" or in any other manner to pass of whatsoever.
4. In the original suit C.S. No. 4 of 1997, the appellant filed two applications, viz., O.A. Nos. 4 and 5 of 1997 before the learned Single Judge requesting for the grant of interim reliefs. After hearing the parties, these applications were dismissed by the learned Single Judge by the common order dated 25-4-1997. Hence, these appeals.
5. The case of the plaintiff is this :
"This plaintiff is the manufacturer of the infants and invalid food products and the said products are sold under the trade mark "ENERJEX". The trade mark "ENERJEX" is associated with the plaintiff for the past 15 years. The defendant is using the trade mark ENERJASE for manufacturing and marketing a similar product of medicinal preparation which is nothing but an infringement of the plaintiff company's trade mark. The defendant's mark is an imitation of the plaintiff's mark. The same is confusingly and deceptively similar to the trade mark used by the plaintiff. The adoption of the mark "ENERJASE" by the defendant is neither accidental nor coincidental, but a deliberate act, hence the suit."
6. The case of the defendant as stated in the counter is given below :
"The defendant carry on an established business as manufacturers and traders in medicinal and pharmaceutical products and have been in business for the last 30 years. They are the manufacturer of the product in Ayurvedic medicine under the trade mark "ENERJASE" in capsules form as an energiser and antistress formula. The trade mark "ENERJASE" was allotted to the company for the pharmaceutical and medicinal products. The plaintiff trade mark "ENERJEX" has been registered in respect of the goods for infants and invalid foods, dietory food products and protein food concentrate. The products of the plaintiff being Allopathic are sold in the form of syrup in the bottle for pregnant women, convalescing patients and children. But the product of the defendant is energy capsules for stress relief and it is an Ayurvedic proprietary medicine. This medicine has been sold only capsule form put in the strips and cartons. Since the products are entirely different both in form and character and there is no similarity. The applications are liable to be dismissed."
7. After having considered the submissions made by the counsel for the parties in the light of the respective pleadings, the learned single Judge dismissed the applications holding that the appellant/plaintiff did not make out a prima facie case of infringement and passing off.
8. Mr. U. N. R. Rao, the learned senior counsel for the appellant, and Mr. K. Venkatasubramanian, the learned counsel for the respondent would put for before this court with vehemence the respective plea pointing out various aspects of the matter an
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