Prabha Sridevan, J.

The plaintiff is the appellant. The suit was filed for an injunction restraining the respondents from infringing the registered trade-mark VENIZ by use of deceptively similar trademark VENZ or any mark deceptively similar to that of the plaintiff and for other reliefs.

2. The plaintiff carries on the business of manufacturing medicinal preparations. It is an established and well known pharmaceutical company marketing drugs and formulations since 1983. According to the plaintiff, such preparations are sold all over the country on an extensive scale. The plaintiff claims that in the speciality therapy areas like Psychiatry, Neurology and Cardiology, it is one of the top three companies. The plaintiff manufactures medicines for treatment of major depressive, generalize anxiety, social anxiety, panic disorders and various other disorders requiring antidepressant medicines. In the year 2000, the plaintiff had applied to the Drug Controller for permission to manufacture Venlafaxine Extended Release (XR) Capsule for treatment of major depression disorders under the trademark VENIZ. Upon receipt of license, the plaintiff commenced manufacture of the medicinal and pharmaceutical preparations under the trademark VENIZ XR for 37.5 mg and 75 mg, which are sold in strips in varying strengths. The plaintiff also acquired drug license for manufacture of medicinal preparations under the mark VENIZ XR for 150 mg. The plaintiff became the registered proprietor of the mark VENIZ XR under No.949364 dated 28. 2000 in respect of medicinal and pharmaceutical preparations and substances. The registration contains the condition and limitation that the trademark VENIZ XR shall give no right to the exclusive use of the word XR, since terminologies such as XR, OD, SR, etc., refer to the characteristics of the drug, viz. Extended Release (XR), once a Day (OD), Sustained Release (SR) etc. the plaint gives the details of the sale turnover of the plaintiff for the period 2000-2001 to 2008-2009. According to them, the long and continuous use of the trademark VENIZ in respect of medicinal preparations has come to be identified only with the plaintiff.

3. In or about 2009, the plaintiff came across the defendants’ preparation bearing the mark VENZ-OD. On enquiry, they found that the tablets contain Desvenlafaxine, which is the major active metabolite of the antidepressant Venlafaxine and is used in treatment of major depressive disorders and other psychotic disorders. Therefore, they issued a legal notice on 28. 2009 asking the defendants to cease and desist. Since the defendants refused, and since according to the plaintiff, the defendants’ mark VENZ is prima facie visually, phonetically and structurally similar to the plaintiff’s registered trademark VENIZ, the suit was filed and interim injunction was sought for.

4. The defendants filed a counter wherein they raised the question of territorial jurisdiction. With regard to trademark, it was stated that they coined and adopted the trademark VEN-OD for its product Venlafaxine by adopting VEN from the name of the drug and OD to signify ONCE A DAY and launched the product in September, 2001. When they decided to launch a new product with the active ingredient Desvenlafaxine, which is an isomer of Venlafaxine, having better efficacy and less side effects, which they developed after undertaking toxicology studies, clinical trails and bioequivalence study, they decided to modify their mark VEN and took the first letter Z from the defendants’ housemark ZYDUS and coined the trademark VENZ for the product Desvenlafaxine. Thus, this was the reason for their launching the mark VENZ on 8. 2009.

5. According to the defendants/respondents, for the purpose of infringement or passing off, the rival trademarks VENIZ-XR and VENZ-OD need to be considered and compared for any alleged similarity or alleged confusion. According to them, there is clearly no similarity between VENIZ-XR and VENZ-OD vis