Astra-idl Limited v. Ttk Pharma Limited

S. M. Jhunjhunwala, J.

1. The Plaintiff has filed this suit against the Defendant for permanent injunction restraining the Defendant by itself, its servants, agents, distributors and representatives from infringing the Plaintiffs trade mark Betaloc registered under No. 326230 dated June 16, 1977 in Class 5 in respect of Pharmaceutical preparation by use of the impugned trade mark Betalong or any other trade mark deceptively similar to Plaintiffs said registered trade mark Betaloc in relation to pharmaceutical preparations and from manufacturing, selling, offering for sale or otherwise dealing in pharmaceutical preparations bearing the trade mark Betalong or any other mark deceptively similar to Plaintiffs trade mark Betaloc so as to pass of the Defendants goods as and for the goods of the Plaintiff or in any other manner whatsoever and for damages, costs and other reliefs as prayed for in the Plaint filed. The Plaintiff has taken out the present Notice of Motion for interim injunction in terms of permanent injunction prayed for in the Plaint filed.

2. As averred in the Plaint, the Plaintiff, a public limited company duly incorporated and registered under the provisions of the Companies Act, 1956

3. According to the Defendant, in the year 1986, the Defendant decided to manufacture and launch a new product for controlling hyper tension and treatment of angina pectoris and arrythanias. For that product the Defendant coined and selected the trade mark Betalong and in the month of March 1986 the Defendant applied for registration of that trade mark under the said Act. The application of the Defendant is filed under No. 451743 on March 31, 1986 and is still pending. The new product of the Defendant was marketed and sold under the trade mark Betalong and the first sale thereof took place on December 29, 1986. According to the Defendant, during the period between December 29, 1986 to May 31, 1987, the Defendant has sold the said product under the trade name Betalong of the aggregate value of Rs. 2, 90, 265.64 p. and during the period from June 1, 1987 to May 31, 1988, the Defendant has sold the said product under the said trade mark Betalong of the aggregate value of Rs. 3, 57, 994.30 p. During the period commencing from June 1, 1988 to November 18, 1988, the Defendant had sold the said products under the said trade mark Betalong of the aggregate value of Rs. 1, 31, 407-92 ps. Since November 18, 1988, in view of the ad interim order of injunction passed by this court has withheld the sale of the said product under the trade mark Betalong. It is the case of the Defendant that the said product Betalong has been continuously marked and sold all over India till November 18, 1988 and that the said product has been identified with the Defendant and has acquired good reputation and goodwill. It is the case of the Defendant that the said product Betalong is a drug which falls under Schedule H to the Drugs and Cosmetics Rules and as such can be sold only by a chemist holding appropriate licence under the said Rules and that too on the prescription of a registered medical practitioner. The Plaintiffs product Betaloc is also a drug falling under Schedule H to the said rules and as such the plaintiffs product Betaloc can only be sold by a chemist holding appropriate licence under the said Rules and that too on the prescription of a registered medical practitioner.

4. According to the Defendant, the human heart allows blood vessles (arteries) as Beta Receptors. Catecholomines which are a type of hormones act on these beta receptors and bring about a reaction which causes abnormal construction of the heart as well as of the blood vessels resulting in hyper tension. The Defendants said product taken in appropriate doses blocks the said action of Catecholomines on beta receptors and keeps the heart and the blood vessles in normal condition. This blocking effect of the Defendants product is of a longer duration. The Defendant, therefore, in coining the word trade mark for is said product took the word Beta as representing beta receptors and coined it with the word long representing the longer duration for which it blocks or controls the action of the said harmones of beta receptors. It is the case of the Defendant that said trade mark Betalong was coined and adopted by the Defendant for its said product without reference to the Plaintiffs alleged trade mark Betaloc. The Defendant was not aware of the Plaintiffs alleged trade mark Betaloc. The Defendants product is in the form of sustained release capsules which means that the requisite quantity of the drug in requisite doses is released into the system over a period of 24 hours so as to ensure longer protection. This distinguishing feature of the Defendants product is well appreciated by the medical practitioner and as such the medical practioner are not likely to be confused or deceived in selecting the right product by reason of the alleged similarly of the Plaintiffs mark with that of the Defendants said mark. It is further the case of the Defendant that there are a number of similar products in the market which are sold under the trade marks beginning which the word Beta. Some of these trade marks are Betabloc, Betadure, Betanole, Betacard, Betaspar and Betazin. The Defendant has denied that by virtue of long, exclusive and continuous use the Plaintiffs trade mark Betaloc is distinctive of or is exclusively identified with the Plaintiffs goods. Although according to the Plaintiff the annual sales of its product sold under the trade mark Betaloc for the period from July 1, 1987, to June 30, 1988 aggregated to Rs. 1, 72, 26, 000, the Defendant has denied the correctness of the said annual sales figures of the Plaintiff. According to the Defendant, its trade mark Betalong is not similar to the Plaintiffs trade mark Bealoc and the Beta being common in the trade, the Plaintiff cannot have any monopoly or exclusive right to the use of Beta or the right to prevent others from using that word. It is the case of the Defendant that the letters loc which form the other part of the Plaintiffs trade mark Betaloc do not convey any idea nor do they have any meaning in the English language. The pronunciation of the three letters loc taken together is short and terse and the sound thereof is soft. As against these features of the Plaintiffs trade mark, the word long which is the second part of the Defendants trade mark has a specific connotation, lengthy duration and the pronunciation of the word long is lengthened and not terse. Thus, according to the Defendant, taking Defendants trade mark as a whole, its prominent feature phonetically is the lengthy pronunciation with nasal sound having twang and connotation of a duration opposed to short ways and prominent feature phonetically of Plaintiffs trade mark taken as a whole is the short and terse pronunciation lacking nasal sound with no connotation. Hence, according to the Defendant, the two trade marks can by no means be called similar or deceptively or confusingly similar and as such the Plaintiff cannot in law have any grievance against or objection to the use by the Defendant of its trade mark Betalong.

5. Section 2(d) of the said Act reads as under :

"2. Definition and interpretation :

(d)" deceptively similar

"- A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion." *

6. Mr. Tulzapurkar, the learned Counsel for the Plaintiff, has submitted that for deciding the question of deceptive similarity, the courts have laid down that the following factors should be taken into consideration.

"(a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks i.e. both word and label marks;

(b) The degree of resemblance between the marks phonetically, visually as well as similarity in idea;

(c) The nature of the goods in respect of which they are used as trade marks;

(d) The similarity in the nature, character and purpose of the goods of the rival traders :

(e) The class of purchasers who are likely to buy the goods bearing the marks, their level of education and intelligence and the degree of care they are likely to exercise in purchasing the goods;

(f) The mode of purchasing the goods or placing orders for the goods; and

(g) Any other surrounding circumstances." *

7. Mr. Tulzapurkar has further submitted that weightage to be given to each of the aforesaid factors depends on facts of each case and the same weightage cannot be given to each factor in every case. In support of his submission, Mr. Tulzapurkar has relied upon the case of Amritdhara Pharmacy v. Satya Deo Gupta where it has been held that the said Act does not lay down any criteria for determining what is likely to deceive or cause confusion within the meaning of Section 8(a) and Section 10(1) and therefore every case must depend on its own particular facts and the value of the authority lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. In the case before the Supreme Court an application for registration of trade nameLakshaman dhara in respect of medicinal preparation for the alleviation of various ailments was opposed by the proprietors of the trade name Amritdhara which was already registered as trade name in respect of similar medicinal preparation of the opponents. On the question whether the trade name Laxmandhara was likely to deceive the public or cause confusion to trade, it was held that the question had to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man, overall structural and phonetic similarity of the two names Amritdhara and Laxmandhara was likely to deceive or cause confusion. It was further held that the overall similarity of the composite words Amritdhara and Laxmandhara had to be considered having regard to the circumstance that the goods bearing the two names are medicinal preparation of the same description. After considering various authorities cited before the Supreme Court, the Supreme Court has held as under:

"(9) We agree that the use of the word, dhara which literally means current or streams not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description. We are aware that the admission of a mark is not to be refused, because unusually stupid people, fools or idiots may be deceived. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The trade mark is the whole thing the whole word has to be considered. In the case of the application to register Erectiks (opposed by the proprietors of the trade mark Erector) Farwell, J. said in William Bailey (Birmingham) Ltd.s Application (1935 52 RPC 136)." *

I do not think it is right to take a part of the word and compare it with a part of the other word, one word must be. Considered as a whole and compared with the other word as a whole ... I think it is dangerous method to adopt to device the word up and seek to distinguish a portion of it from a portion of the other word.

"Mr. Tulzapurkar has also relied upon the case of Hiralal Parbhudas v. Ganesh Trading Company (Rep. in 1984 AIR(Bom) 218), where it has been held as under :

In deciding the question of similarity of two marks, the following well established principles are to be observed :- (i) marks are remembered by general impressions or by some significant detail rather than by a photographic recollection of the whole, (ii) overall similarity is the touchstone, (iii) marks must be looked at from the first impression of a person of average intelligence and imperfect recollection; (iv) overall structure, phonetic similarity and similarity of idea are important and both visual and phonetic tests must be applied, (v) marks must be compared as a whole, miscroscopic examination being impermissible, and (vi) the broad and salient features must be considered for which the marks must not be placed side by side to find out differences in design. In addition, the nature of the commodity, the class of purchasers, the mode of purchase and other surrounding circumstances must also be taken into consideration" *

8. Reliance has also been placed on behalf of the plaintiff on the case of Corn Products Refining Co. v. Shangrila Food Products Ltd. In this case it has been held that in deciding a question of similarity between the two marks the marks have to be considered as a whole. The Supreme Court has further held that in deciding the question of similarity between the two marks, the court has to approach it from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably likely to cause a confusion between them. The Supreme Court has further held that the absolute identity of the two competitive marks or their close resemblance is only one of the tests for determining the question of likelihood of deception or confusion. Trade connection between different goods is another such test. In the case before the Supreme Court respondent had applied for registration of the mark Gluvita used with reference to biscuits manufactured by it. The appellant, who had been using the registered mark Glucovita with reference to his glucose with vitamins opposed the application under Section 8(a) of the said Act. It was established that the applicants trade mark had acquired a reputation amongst the buying public. Applying the said test the Supreme Court held that the commodities concerned were so connected as to mark confusion or deception likely in view of the similarity of the two trade marks. It was further held that apart from the syllable co in the appellants marks, the marks were identical, that syllable was not such as would enable the buyers in our country to distinguish the one mark from the other. Hence, the respondents mark could not be registered. It is also held by the Supreme Court that mere existence of series of marks registered or unregistered having a common feature or a common syllable is by itself not sufficient. The applicant is required to prove that these series of marks have acquired a reputation by user in the market. The onus of proving such user is of course on the applicant who wants to rely on those marks. In the instant case, apart from the syllable ng in the Defendants mark, the two marks are identical. That syllable is not such as would enable the buyers in our country to distinguish the one mark from the other. Further, although the Defendant has stated that there are many marks with prefix Beta in existence and has also relied upon Indian Pharmaceutical Guide 1977 as also on Indian Pharmaceutial Guide 1990, the Defendant has not been able to prove that the said marks are in use. The Defendant has also not established that Beta in common to trade. No instance of the other marks being in use has been given by the defendant nor any invoice pertaining to availability of the product in the market has been relied upon by the Defendant.

9. Mr. Tulzapurkar has next relied upon the case, viz. In the matter of an application by Egg. Products Ltd. (Rep. in 1922 39 RPC 155). In this case an application was made to register the mark "Egall". The said application was opposed by the proprietors of a trade mark "Egrol". The Registrar having refused the application, the applicants appealed to the Chancery Division which was decided by Sargent J. In this case it has been held that in cases of alleged confusion, the interest of the public was more important consideration than the relevant rights of the parties. On the facts of that case, it was held that the first syllable Eg could not be disregarded because it had some relation to the nature of the goods but that in such cases the totality of the two marks must be considered, that "Egall" was so similar to "Egrol" as to make confusion likely. The appeal was thus dismissed.

10. Mr. Tulzapurkar has rightly submitted that the question of likelihood of confusion had to be decided by comparison of marks as a whole. In support of his submission, Mr. Tulzapurkar had relied upon the case of F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd. In that case the appellants had applied for registration of the trade mark "Protovit". The application was granted and the appellants mark was registered in Class V in respect of pharmaceutical preparation for human use and for veterinary use, infants and invalids foods. The appellants thereafter used that mark on multi-vitamin preparations in liquid and tablet forms and their goods were sold under that mark since the year 1951. In January 1957, the respondents therein applied for registration of their mark Dropovit in respect of medicinal and pharmaceutical preparations and substances. The application was registered and since the advertisement of the respondents application escaped the notice of the appellants the, appellants did not oppose the registration. Thereafter, the appellants applied for rectification of the Register by removal therefrom of the respondents trade mark. The ground urged in support of the application was that the respondents mark so nearly resembled the appellants mark as to be likely to deceive or cause confusion. The appellants thereafter applied for amendment of the application and an additional ground was taken that Dropovit was not an invented word. The application for amendment was allowed by the Registrar. The amendment application was opposed by the respondents. The Joint Registrar rejected the application for rectification holding that Dropovit was not deceptively similar to Protovit and that the word Dropovit considered as a whole was not deceptive. The matter was taken in appeal to this court. The appeal was dismissed. The appellants then preferred an appeal under Letters Patent but the appeal was dismissed by the Division Bench of this court. Before the Supreme Court, the appeal was brought by certificate from the judgment of this court in the appeal. While considering the test for comparison of the two words marks formulated by Lord Parker in Pianotist Co. Ltd.s application (1908 23 RPC 774), the Supreme Court has held as under (at p 2065 of AIR) :

"It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.

11. Mr. Tulzapurkar has also relied upon the case of "Accutron" trade mark, reported in 1966 RPC 152. In that case an application to register the word Accutron in respect of clocks and watches was opposed by the registered proprietors of the marks Accurist registered in respect of wrist watches, and Accularm registered in respect of alarm clocks. The Registrar found that although the marks viewed side by side or compared phonetically were not confusingly similar, nevertheless there was a reasonable probability of confusion taking into account imperfect recollection, and the fact that both the applicants and the opponents marks would be used in very small letters on the faces of watches. Accordingly he refused registration. On appeal to the High Court the applicants contended that the opponents could not obtain any monopoly in the word accurate by means of their registration, and therefore distinctiveness of the opponents marks had to be found other than in first letters accu. High Court held :

(i) that as the mark applied for and the opponents marks were invented words, it was not proper to disregard such elements of the words which were deceptive and therefore the question of likelihood of confusion had to be decided by a comparison of the marks as a whole;(ii) that on comparison of the marks it appeared that there was a likelihood of confusion which the applicants who had not used their mark, had been able to dispel by evidence. The application was therefore rightly dismissed." *

12. In this connection, Mr. Patel, the learned Counsel appearing for the Defendant, has submitted that where there are several marks with common prefix proper attention should be given to the termination of the marks. In support of his submission, Mr. Patel has relied upon the case reported in 1978 RPC 406. In that case, the applicant sought to register "Rheumation" in class I in Part A of the register in respect of diagnostic laboratory reagents. Opponents objected on the ground that the mark did not meet the requirements of Ss. 9 and 10 of Trade Marks Act, 1938 and that the mark conflicted with their mark "Rheumanosticon" registered in Classes 1 and 5. It was, inter alia, held in that case that despite common prefix "Rheuma" there were special factors in that case which ruled out any likelihood of confusion, in particular the attention which laboratory staff would be likely to pay to the terminations of the marks when ordering diagnostic preparations.

13. Mr. Patel also relied upon the case of Aquasoutum v. Cohen and Wilks (Rep. in 1909 26 RPC 651). In that case, the plaintiffs who used "Acquasoutum" as the name of garments sold by them, brought an action to restrain the Defendants from passing off garments not of the plaintiffs manufacture as and for garments of such manufacture. The plaintiffs therein complained to the use of the name "Aquatite" by the defendants. Holding that what the defendants therein was doing was not, having regard to the surrounding circumstances calculated to deceive, the action of the plaintiffs therein was dismissed with costs.

14. Mr. Patel has also relied upon the case in the matter of the application of R. K. Dundas Ltd. for the registration of a trade mark reported in 1955 72 RPC 151. In that case Dundas Ltd. had applied to register the word Dustic" for adhesives for industrial purposes. The said application was opposed by B. B. Coy Ltd. on the grounds (inter alia) that the word "Dustic" was not an invented word, being merely a misspelling of "Does stick", that the word had direct reference to the character or quality of the goods; and that it was liable to be confused with other registered marks and in particular with the mark "Bostik" registered by the opponents therein for certain classes of adhesives. It was stated by the applicants therein and admitted by the opponents therein that the word "Dustic" was derived from the first two letters of Dundas and the termination stic or stik commonly used in names of adhesives. The Asst. Comptroller held that :

(i) the word Dustic was an invented word and has no reference to the character or to the quality of the goods;

(ii) it was not liable to be confused with opponents mark Bostik regard being had to the number of marks for adhesives ending in stic or a like termination :

(iii) that registration of the mark applied for should be allowed.

The opponents in that case appealed to the Cours and Justice Lloyd Jacob, held that :

(i) "Dustic" was an invented word :

(ii) the decision of the Asstt. Comptroller to the effect that it was not liable to cause confusion was correct;

(iii) the appeal was dismissed.

15. Mr. Patel has further submitted that visually also the mark Betalong is different from the mark Betaloc. He has further submitted that the syllable g in the mark Betalong trailed below and as such the Betalog is visually different than the mark Betaloc.

16. As held in the case (Supra) the totality of the mark is required to be considered to hold as to whether or not the mark is deceptively similar.

17. In the instant case in deciding whether the word Betalong is deceptively similar to the word Betaloc, each of the two words must, therefore; be taken as a whole word. The words are so similar that there is reasonable probability of confusion between the words both from the visual and phonetic point of view. It is not a matter for microscopic in spection, but to be taken from the general and even casual point of view of a customer walking into a shop. As observed above in the instant case, apart from the syllable ng in defendants mark, the two marks are identical. Even if proper attention is paid to the termination of the marks, the likelihood of confusion being caused cannot be ruled out. The mark Betaloc is too near and so similar to the mark Betalong as to make the confusion likely. In my view, Mr. Tulzapurkar has rightly placed reliance upon the case of Ranbaxy Laboratories Ltd. v. Dua Pharmaceuticals Pvt. Ltd. decided by B. N. Kirpal, J. on July 22, 1988 in I.A. No. 8967/87 in suit No. 2614/87 in the High Court of Delhi support of his submission that even phonetically the two marks Betaloc and Betalong are similar. In that case, the plaintiffs who were registered proprietors of the trade mark Calmpose for medicinal preparation field a suit for infringment and passing off against the defendants therein who commenced manufacturing and marketing a single medicinal preparation under the trade mark Calmprose and applied for an ex parte ad interim injunction. In its reply the defendants therein contended that the two trade marks Calmpose and Calmprose were phonetically different and that in any case since the medicine could be sold by chemists only on the written prescription of a registered medical practitioner, there could be little likelihood of deception or confusion arising by the use of the marks. While making absolute the ad interim injunction, the Delhi High Court held that the marks Calmpose and Calmprose were phonetically similar. According to Mr. Patel, the said decision has no applicability to the facts of the present case, I see no reason why the said decision has no applicability to the facts of the present case.

18. In my view in the instant case, phonetically visually and structurally both the marks are similar, Actual deception is not necessary to be proved. What is material in the circumstances is likelihood of deception.

19. Mr. Patel has submitted that since medicines could be sold by the chemists only on written prescription of a registered medical practitioner, there is no likelihood of confusion or deception by use of both the said mark. In support of his submission. Mr. Patel has relied upon an unreported decision of this Court in the case of Parke Daxis and Co. v. Onyx Laboratories Pvt. Ltd. (Suit No. 749/71 delivered on 13-7-1972 (Bom)). In that case a notice of motion was taken out by the plaintiffs who are a very wellknown company manufacturing drugs for an injunction restraining the defendants therein pending the hearing and final disposal of the suit, from using in relation to certain pharmaceutical and medical preparations labels and cartons deceptively similar to the articles and cartons of the plaintiffs so as to pass off the defendants goods and products as and for the goods and products of the plaintiffs, as well as for an interlocutory injunction restraining the defendants from printing and using the said labels and cartons so as to constitute an infringement of the plaintiffs copyright in the artistic work contained in their correspondence. Mr. Patel has then submitted that the class of persons to use the goods and the nature of goods as also the mode of purchase are the factors which are to be taken into consideration in deciding as to likelihood of confusion or deception being caused by the use of the marks. He has further submitted that from the nature of the goods, both being medicines for treatment of heart ailment it is likely that customers would obtain prescription from a doctor and show it to the chemist before the purchase. In such a case, in the submission of Mr. Patel the chance of confusion is remote. In support of his this submission, Mr. Patel has put reliance on the case of F. Hoffimanna-La Roche & Co. Ltd. (Supra).

20. Mr. Patel has also placed reliance on the case of M/s. Johann A. Wulfing v. Chemical Industrial and Pharmaceutical Laboratories. Ltd. (Rep. in 1984 AIR(Bom) 281) where the question of mode of purchase has been considered for deciding as to likelihood of causing confusion by use of the marks. In that case, the trade mark Complamina of M/s. Johann A. Wulfing was registered for a medicinal and pharmaceutical preparation and was sold in the form of ampoules and tablets for the treatment of vascular disorders. M/s. Chemical Industrial and Pharmaceutical Laboratories Ltd. who were carrying on like business filed an application for registration their name the mark Ciplamina proposed to be used by them in respect of pharmaceutical and medicinal preparation. The said application was opposed on the ground that the proposed mark was deceptively similar to the said registered mark. On the facts of the said case it was held that there was no deceptive similarity between the said two marks. No person, be he a layman of average intelligence and imperfect recollection or a medical practitioner, is likely to confuse one for the other. The visual impression of the two words is not conducive to any such confusion. It was also held in that case that there was phonetic dissimilarity between the two words. So far as the instant case is concerned, as observed hereinabove, phonetically, visually and structurally both the marks are similar.

21. While putting reliance on the case of Sterwin A.G. v. Brocades (Great Britain) Ltd. (1970 RPC 481) Mr. Patel submitted that doctors and pharmacists were trained to take very great care in their work and if in doubt, to check before acting and since the medicines are to be dispensed on medical preparations, there is no likelihood of any confusion being caused in the Sterwins case the likelihood of any confusion being caused was held not to be there in relation to the two products as them marketed, viz, Danol (for suppresion of menstrual cycle in capsul form) and De-nol (for ulcer in liquid form). When the defendants in that case wished to introduce a solid presentation of De-nel the plaintiffs therein having become aware of the defendants intention sought an injunction to restrain passing off on a quia-timet basis. It was urged that if De-nol was sold in a solid form there would be substantial likelihood of confusion with plaintiffs products Danol. The defendants therein while admitting the likelihood of confusion and deception, sought analogus injunctive relief against the plaintiffs It was held :(i) that in relation to the two products as presently marketed there had been no actual confussion and there was no likelihood of confusion as doctors and pharmacists were trained to take very great care in their work and if in doubt to check before acting.

(ii) that a real likelihood of confussion would only arise if the defendants produced and marketed a solid formulation of their product;

(iii) that the defendants might produce a solid formulation of De-nol was, when the plaintiffs introduced their products, no more than a limited possibility. The plaintiffs course of action with regard to choice of mark had therefore been reasonable.

(iv) Accordingly the plaintiffs were entitled to judgment, but, since there was no immediate market threat, this was an inappropriate case for injunctive relief.

22. Mr. Tulzapurkar has submitted that although the medicines are dispensed on medical prescription the marks being visually, phonetically and structurally similar, the likelihood of confusion being caused is greater. In support of his/this submission, Mr. Tulzapurkar has rightly relied upon the case of Burroughs Welcome (India) Ltd. v. G. K. Sharma and King Scientific Research Centre (Rep. in 1989 14 (2) 1 PLR 60). In that case the plaintiffs were the proprietors of the trade mark Septran registered in 1969 and in continuous use since 1974 for a medicinal preparation in liquid and tablet form for treatment of respiratory and urinary ailments. The plaintiffs were selling Septran tablets in stritps packing and these strips were in turn packed in cartons. The plaintiffs claimed to be the owners of copyright in Septran strips and Septran cartons as original artistic works and had obtained registration of the artistic work on cartons under the Copyright Act in the year 1974. The defendant No. 1, was carrying on business in the name and style of King Scientific Research Centre at Kandivli, Bombay and also at Kota, Rajasthan. Defendant No. 2 King Scientific Research Centre was a firm carrying on manufacture and business of medical preparations at Kota Rajasthan with an office in Kandivali, Bombay. The plaintiffs found that the defendants were selling tablets under the mark Cetran in strips and cartons identical with those of the plaintiffs. The suit was therefore filed by the plaintiffs for infringement and application for ad-interim injunction was therein made which was granted. The Court, inter alia, held that :(i) the defendants mark was deceptively similar to plaintiffs registered trade mark and the get-up colour scheme, etc. of the rival strips and cartons were identical.

(ii) that the defendants were using the infringing mark and deceptive cartons with a view to trading on the plaintiffs reputation and their contention that there could not be any deception since the medicines needed doctors prescription was not acceptable as the defendants mark and phonetically similar to the plaintiffs mark.

23. Mr. Tulzapurkar also relied upon the case of Ranbaxy Laboratories Ltd. (Supra). In that case the Delhi High Court while holding that the marks Calmpose and Calmprose were phonetically similar also held that it was not unknown that the medicines were also available across the counter in the shops of various chemists and that the test to be adopted is not only of the doctor who is giving the prescription but was whether an unwary customer who went to purchase the medicine could make a mistake. In my view, in the present circumstances, doctors prescription factor has lost its importance since the reality of the situation cannot be ignored. In India scheduled drugs which are to be sold under doctors prescription are even sold without production of doctors prescription and as such reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The Court cannot close its eyes to the existing circumstances and judicial notice of the factual aspects in existence has to be taken. In case where the fact of the medicines being sold on doctors prescription has been taken into consideration for deciding that there was no likelihood of confusion being created, the marks were not visually phonetically and structurally similar. In the instant case the two marks Betaloc and Betalong being visually, phonetically and structurally similar and so close to each other that it outweighs the weightage to be given to the factor that the goods are scheduled drugs. The two marks are to be compared as a whole and the prefix Beta cannot be ignored in the matter of such comparison.

24. Mr. Patel has then submitted that even if the defence of the medicines being available on doctors prescription is ignored, the two marks are not similar. Mr. Patel has put reliance in the matter of application by Bayer Products Ltd., and in the matter of opposition by A. Wander Ltd. (Rep. in 1947 64 RPC 125) In that case an application to register Diasil for pharmaceutical preparations for internal and external use was opposed by the proprietors of marks Alasil registered in respect of same description of goods. On the facts of that case, the court of Appeal held that the likelihood of confusion between the marks if the applicants marks were registered and used in respect of sulphadiazine preparations was too remote to justify refusing the registration. The possibility of a person confusing the opponents and applicants preparations on his own medicine table rested on the assumption of a number of coinciding circumstances, all of which were unlikely to occur simultaneously. In that case on the facts thereof, the court took the view that neither of the initial syllable Di or Al has any characteristic or distinctive feature anything forcefully or emphatically that will leave such an impression on the hearers mind as will entirely outweigh the fact that the last two syllables of the words are identical and will enable it to remember the one word so clearly and distinctively that he would not be likely to confuse it with the other word. As observed earlier, in the instant case, the two marks are so close and so nearer and visually and phonetically and structurally similar that the likelihood of confusion is greater.

25. Mr. Patel has also relied upon the case of Himalaya Drug Co. v. Hindustan Antibiotics Ltd. (Misc. Petn. No. 159 of 1987 decided on 22.3.1990 (Bom)) Misc Petn. No. 159 of 1987 decided on March 22, 1990 by Variava, J. of this court. The petitioners in that case have been manufacturers and dealers in medicinal and pharmaceutical preparations and registered owners of trade mark Pilex. The said mark is used in respect of ayurvedic preparation for treatment of piles in the form of ointments and tablets. The 1st respondent filed an application for registration of the trade mark consisting of the word Prilex in class 5 in respect of antibiotic medicinal preparations. The petitioners opposed the said application. The Registrar ordered registration of 1st respondents trade mark Prilex and being aggrieved from the said order the said Misc. Petition by way of appeal was filed by the petitioners. In that case the registration of the trade mark Prilex was allowed since the petitioners product Prilex is an ayurvedic product and the 1st respondents products Prilex is an allopathic product and that the 1st respondents product being schedule-H drug could only be available against prescription under the Drugs Rules. In the circumstances of the case it was held that there was no possibility of confusion and/or deception.

26. Mr. Patel has then submitted that the mark Betalong has been honestly adopted by the defendants and as such there is no question of defendants being injuncted from using the said mark. Mr. Tulzapurkar has submitted that the alleged honestly in adoption of the mark Betalong by the Defendants is irrelevant in an action for infringement and passing off and the absence of an intention to deceive is not a defence. In this respect Mr. Tulzapurkar has relied upon para 16-16 at page 357 of Kerlys Law of Trade Marks and Trade Names (12th Edition), which reads as under -" *

Passing-off cases are often cases of deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the absence of an intention to deceive is not a defence. Moreover, literal truth is not necessarily innocent of misrepresentation.

If a man makes a statement which is true, but which carried with it a false representation and induces the belief that his goods are the plaintiffs goods, he will be restrained by injunction. He cannot rely on the fact that his statement is literally and accurately true if, notwithstanding the truth, it carries with it a false representation.

Proof of fraudulent intention may, however, materially assist a plaintiff in establishing probability of deception."

27. Mr. Patel has then submitted that the totality of factors should be looked into and if the plaintiff has reasonable chance of success in the suit at the final hearing, then only the plaintiff should be granted the relief in the present Notice of Motion. In support of his/this submission Mr. Patel has put reliance on the case of Biddle Sawyer Pvt. Ltd. v. Lords Homeopathic Laboratory (In appeal 244 of 1989 decided on 15.3.1989 (Bom)). In that case the appellants sought an injunction to restrain the respondents from using the trade mark Slimex. The appellants trade mark is Slimerax. The appellants products consisted of tablets used for the purpose of reducing obesity. The respondents product is a homeopathic medicine which is available in liquid form. It is available in bottles. On the facts of that case it was held that the two trade marks Slimex and Slimerax did not appear to be deceptively similar and as such certain conditions like filing accounts every six months by the respondents were imposed since it was doubtful as to whether the appellants had reasonable chance of succeeding in the suit at the final hearing. So far as the facts of the instant case are concerned, as observed hereinabove, the two marks are visually, phonetically and structurally similar and the impugned mark of the Defendant is so near and close to the registered mark of the Plaintiff that it is likely to cause confusion if the Defendant is permitted to use the said mark Betalong. On the facts of the case and looking to the totality of factors, I am satisfied that the plaintiff has reasonable chance of success in the suit at its final hearing.

28. Applying the three-fold tests of phonetic, visual and structural similarity and considering the various authorities cited and referred hereinabove, I am of the opinion that the Plaintiff has made out a very strong prima facie case for grant of interlocutory reliefs as prayed for in the Notice of Motion.

29. Mr. Patel has lastly submitted that the Defendant is in the market since this year 1986 and the suit has been filed by the Plaintiff on September 30, 1988 and as such, the plaintiff is guilty of gross delay in approaching this court and therefore not entitled to any interim relief from this court. According to Mr. Tulzapurkar, the Plaintiff is not guilty of any delay in approaching this court. Immediately on acquiring knowledge of any the Defendant marketing its product Betalong, the Plaintiff had served notice upon the Defendant on November 18, 1987 which was replied by the Defendant on January 4, 1988 to which a rejoinder was given by the Plaintiff on January 28, 1988. Since there was no compliance by the Defendant, a further notice by way of reminder was served upon the Defendant on March 17, 1988 and the suit was thereafter filed. Accordingly there is no delay on the part of the Plaintiff in approaching this court. Even assuming that there has been some delay on the part of the Plaintiff in approaching this court as contended by the Defendant, firstly the question of delay has to be balanced against the likelihood of the Plaintiffs ultimately succeeding in the action and where the strength of the Plaintiffs prima facie case is very strong, the Plaintiffs delay in filing the action would not disentitle the Plaintiff to relief and it would be right to grant rather than to withhold the interlocutory injunction prayed for. As stated above, in my opinion, the Plaintiff has made out a very strong prima facie case for grant of interlocutory relief and under the circumstances I hold that delay, if any, on the part of the Plaintiff in filing the suit does not disentitle it to interlocutor relief on this Motion. Moreover, as held by the High Court at Delhi in the case of Hindustan Pen-Pencils Pvt. Ltd. v. India Stationery Products Co., even where there is an honest concurreut user by the Defendant then inordinate delay or laches may defeat the claim of damages or rendition of accounts but the relief of injunction should not be refused. This is so because it is in the interest of general public, which is the third party in such cases, which has to be kept in mind.

30. In the circumstances the Notice of Motion is made absolute in terms of prayers (a) and (b). The defendant is directed to pay the costs of the Notice of Motion to the Plaintiff.