A.K. Sikri, J.

1. I.A. No. 12230/2000 is an application filed by the plaintiffs under Order XXXIX Rules 1 and 2 read with Section 151, CPC for grant of ad-interim injunction. In this application, order dated 9th February, 2001 has been passed restraining the defendant in terms of para 15 of the I.A. till further orders. I.A. No. 3035/2001 is filed by the defendant under Order XXXIX Rule 4, CPC for vacation of the order dated 9th February, 2001. Accordingly, both these applications were heard together and are disposed of by this common order.

2. Plaintiffs are the two companies incorporated under the Indian Companies Act which are carrying on business, inter alia, as manufacturers and dealers of pharmaceutical and medicinal preparations. Amongst other, one of the drugs of the plaintiff No. 1 is LIPICARD. It is stated in the plaint that in January, 1997 the plaintiff No. 1 had conceived and invented the tramde mark LIPICARD for its medicinal and pharmaceutical prepartions and filed application on or about 9th June, 1997 for registration of the trade mark LIPICARD under No. 742450 in respect of pharmaceutical preparations falling in Clause 5 of the Fourth Schedule of Trade Mark and Merchandise Marks Rules, 1959. This application is still pending. In June, 1998 the plaintiffs decided to manufacture and market the new drug in India for the first time. Hence, plaintiff No. 2 applied for permission to the Drug Controller General (India), New Delhi for import of the bulk drug Fenofibrate for the purpose of testing and carrying out formulation development. In November, 1999 the plaintiff No. 2 applied for permission to the Drug Controller General (India) for import and manufacture of Fenofibrate capsules. In December, 1999 the Drug Controller General granted permission to the plaintiff No. 2 for import of the said drug. Thereafter, the plaintiffs applied and were granted drug manufacturing licence on 4th February, 2000 by the Food and Drug Administration Authority permitting it to manufacture LIPICARD preparation. After taking further necessary steps, the plaintiff No. 2 manufactured the medicine under the trade mark LIPICARD in May, 2000 and started marketing this product. The plaintiff No. 1 has granted to plaintiff No. 2 a non-exclusive licence and rights to use the trade mark LIPICARD. It is also the case of the plaintiffs that owing to the excellence of the medicinal preparation sold under the trade mark LIPICARD and the superior efficacy thereof, it has been a runaway success and became highly popular amongst the doctors, chemists and public. It has enjoyed formidable reputation and goodwill and has been widely accepted all over the country. Its sales for the period upto October, 2000 were to the tune of about Rs. 1,34,51,000/-. The plaintiffs are also spending enormous money on publicity, advertisement and to promote the sale of this drug. The cause of action, according to the plaintiff, for filing the present suit arose when the plaintiff No. 1 came across in September, 2000 the medicinal preparation manufactured by defendant bearing the trade mark LIPICOR. The suit is filed for infringement of passing off action allegedly committed by the defendant by use of the trade mark LIPICOR in relation to its medicinal and pharmaceutical preparation and it is alleged that the trade mark LIPICOR is deceptively similar to the plaintiffs trade mark LIPICARD. Before filing the suit even legal notice dated 28th September, 2000 was served calling upon the defendant to stop manufacture and sale of its product under the trade mark LIPICOR but no reply was received nor defendant complied with the requirements stated in the legal notice. The plaintiffs have claimed prior user of the trade mark LIPICARD. The plaintiffs have also tried to contend that use of trade mark LIPICOR by the defendant in respect of same medicinal preparation is likely to cause confusion or deception because the competing trade marks when compared as a whole are likely to be confused by each other on account of imperfect regulation as the similarity between the two is in respect of prefix as well as suffix. It is submitted that consumers do not have advantage of side by side comparison of competing trade marks, and therefore, these similarities by adopting such mode of comparison should not be seen. It is the overall similarity which is basis for consideration as consumers who are having Average Intelligence and imperfect recollection are bound to get confused between the two products. It is further stated that in view of the judgment of Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd. reported as III (2001) SLT 225=JT 2001 (4) SC 243 [LQ/SC/2001/847] , the distinction between scheduled drug and non-scheduled drug has been dispensed with and as per this judgment, even if drugs are scheduled drugs, Court would apply stricter test of deceptive similarity and prohibits sale of any drugs which are marketed under the brand that will lead to confusion and deception.

3. The case of the defendant in the written statement, in I.A. No. 12230/2000 as well as in I.A. No. 3035/2001 is that the plaintiffs are not the proprietor of the trade mark in question. Plaintiffs have not invented any such word LIPICARD. In fact, according to the defendant, plaintiffs have themselves abbreviated the prefix of the mark LIPI from the generic term Lipid Correction i.e., management of Lipid abnormalities. There are various companies who are having registered trade mark/pending application and are using the prefix LIPI in relation to pharmaceutical preparation and many such instances are given by the defendant. On this basis it is stated that the plaintiffs are not the proprietors of the mark LIPICARD and the name is not distinctive for the goods of the plaintiffs only. The prefix LIPI is a generic word common to the trade and no one can have the monopoly/exclusive right of the same. It is also stated that the plaintiffs have not come to the Court with clean hands and have made certain false and misleading statements in relation to material particulars in the plaint and while obtaining an ex-parte injunction. It is also stated that both the parties launched their respective products around the same time i.e. June, 2000, and therefore, plaintiffs cannot claim prior user in respect of their product. Defendant has also tried to highlight the differences in the features of the two products and tried to make out a case that the two products are phonetically, structurally and visually dissimilar, and therefore, there is no question of any confusion. According to the defendant, it has also spent huge amount for promoting the sale of the product and its sale of the product under the trade mark LIPICOR are even more than that of the plaintiffs sale of product LIPICARD.

4. It may be pointed out that Counsel for both sides heavily relied upon the recent judgment of the Apex Court in the case of JT 2001 (4) SC 243 [LQ/SC/2001/847] . Reliance was placed on different observations of this judgment by both the Counsel in support of their respective submissions. This judgment deals with the law relating to passing off that too in the context of medicinal preparation or drugs. Therefore, needless to mention principles laid down by the Apex Court exhaustively dealing with the same subject matter would be far more relevant than in other case. The Honble Court broadly stated the following factors which are to be considered while dealing with an action for passing off on the basis of unregistered trade mark :

(1) The nature of the marks i.e. whether the marks are word marks of label marks or composite marks, i.e. both words and label works.

(2) The degree or resembleness between the marks, phonetically similar and hence similar in idea.

(3) The nature of the godos in respect of which they are used as trade marks.

(4) The similarity in the nature, character and performance of the goods of the rival traders.

(5) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods.

(6) The mode of purchasing the goods or placing order for the goods and.

(7) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

5. When the question of passing of action is to be decided in a case involving medicinal products, the Court pointed out that the test to be applied to adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. One can deduce the following particular principles/peculiar features which is to be kept in mind in such cases :

(i) The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The Courts need to be particularly vigilant where the defendants drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiffs medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of life or other serious health problems.

(ii) Although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision or physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.

(iii) Trade mark is essentially adopted to advertise ones product and to make it known to the purchaser. It attempts to portray the nature and, if possible, the quality of the product and over a period of time the mark may become popular. It is usually at that stage that other people are tempted to pass off their products as that of the original owner of the mark.

(iv) Public interest would support lesser degree of proof showing confusing similarity in the case of the trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospital, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.

(v) While dealing with cases relating to passing off, one of the important tests which was to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product or another due to similarity or marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at party with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal products may only cause economic loss to the plaintiff, confusion between the two medicinal products may have disastrous effects on health and in some cases itself. Stringent measures should be adopted specially where medicines are the medicines of last resort as any confusion in such medicines may be fatal or could have disastrous effects. The confusion as to the identity of the product itself could have dire effects on the public health. These principles are kept in mind while deciding these applications.

6. Admittedly, both the drugs are scheduled drugs. Both the drugs are lipid lowering drugs used in cardiac diabetes patients with elevated cholesterol level. Therefore, it is the word Lipid which is indicative of the use of both the drugs. In S.B.L. Ltd. v. Himalaya Drug Co. reported in 67 (1997) DLT 803 (DB)=AIR 1998 Delhi 126, the Division Bench of this Court held that nobody can claim exclusive right to use any word, abbreviation which has become publici juris. The Court observed that in the trade of drugs, it is a common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being publici juris or generic cannot be owned by any one for use as trade mark. In the instant case, as pointed out above, both the drugs use the prefix LIPI which is obviously taken from the word Lipid and this name is suggestive of the ailment which it treats. Defendant has, in its written statement made a specific averment that the prefix LIPI of LIPICARD is not indicative of plaintiffs product only because prior to launching the product LIPICARD in June, 2000 a number of companies have been marketing for 10-15 years and number of companies have got their registered trade mark even prior to the adoption of use of the mark by the plaintiffs. The defendant has quoted the following example in support which fact is not specifically denied by the plaintiffs :

Close MarksNumberStatusProprietor

LIPCID264556RegisteredImperial Chemical Industries Ltd.

LIPID, IV497036PendingWockhardt Limited

LIPID, IV497065RegisteredWockhardt Limited

LIPID, IV481458RegisteredWockhardt Limited

LIPIDEX261510RegisteredMalabar Chemical Company

LIPIDYNE478240RegisteredMicro Labs Private Limited

LIPIDOZ497110ADVTWockhardt Limited

LIPIDSOL508886RegisteredAnuja Pharmaceuticals

LIPIDRIP509116RegisteredWockhardt Limited

LIPIDROP577954PendingSresan Pharm MFG.

LIPIDIP692028PendingNicholas Piramal India Ltd.

LIPIDOFF648663ADVTArya Vaidya Nilayam

LIPIGEM502332PendingThe Anglo Franch Drug Co. (Eastern) Ltd.

LIPIGEM504209PendingAlkem Labs Ltd.

LIPIGEM510688RegisteredTide Pharms Pvt. Ltd.

LIPIFRED519438PendingHaryana Drugs & Pharma Ltd.

LIPIKAD-12307552RegisteredM.M. Labs

LIPILON532856RegisteredKopran Limited

LIPILAK663645PendingShri Lakhavi Drugs Pvt. Ltd.

LIPINORM498835ADVTTorrent Pharmaceuticals Ltd.

LIPIODOL325182RegisteredLaboratoire Guerbet

LIPIMET606413RegisteredLaboratories Griffon Limited

LIPISORB647192PendingMead Johnson & Company

LIPIVAS287098RegisteredMerck & Co. Ltd.

LIPIVENOS457942RegisteredShree Krishnakeshar Labs Ltd.

LIPITO351214RegisteredInventa Labs Private Limited

LIPIZEM498836AdvertisedTorrents Pharms Pvt. Ltd.

LIPIZYL520404AdvertisedNicholas Labs India Limited





7. I am not quite convinced with the argument of the plaintiffs that list of aforesaid trade marks without any corroborative evidence of views cannot be relied upon as evidence in support of plea that LIPI is common to trade. It is also not a case of splitting the trade mark for purpose of comparison but a case where prefix LIPI which is generic word, has been used by not only both the plaintiffs and defendant but number of other such drug manufacturers.

8. In view of the aforesaid factual position as on the date, coupled with the fact that when even the plaintiffs launched their product LIPICARD there were number of drug manufacturers in respect of same medicinal preparation which were using the prefix LIPI, it is difficult to accept the submissions of the plaintiffs that trade mark LIPICARD adopted by them is an invented word. The word LIPI is a generic word common to the trade and already stands adopted by more than 20 companies and is in vogue for last number of years. In such circumstances by launching the product LIPICARD in June, 2000 the plaintiffs cannot claim monopoly over this name and restrain defendant from using the prefix LIPI. After all, admittedly we are dealing with the case of passing off and not that of infringement of the registered trade mark. In such cases when it is found that number of products with prefix LIPI are already in the market launched by various companies and in existence for more than 10-15 years, it is difficult to digest as to how plaintiffs can have superior claim over this product. The Division Bench judgment of this Court in SBL Ltd. (supra) squarely applies to this case as well. It would be appropriate to refer to the following observations :

... Whether such feature is publici juris or generic is a question of fact... here are about 100 drugs in the market using the abbreviation `LIV made out of the word Liver....LIV has become a generic term and publici juris. It is descriptive in nature and common in usage. Nobody can claim an exclusive right to the use of `LIV as a constituent of any trade mark....the possibility of deception or confusion is reduced practically to nil in view of the fact that the medicine will be sold on medical prescription and by licensed dealers well versed in the field and having knowledge of medicine. The two rival marks LIV 52 and LIV-T contain a common feature LIV which is not only descriptive but also publici juris; a customer will tend to ignore the common features and will pay more attention to the uncommon features i.e. 52 and T. The two do not have such phonetic similarity as to make it objectionable.....LIV 52 is in a carton with a colour scheme consisting of dark brown, dark yellow and white. On the dark brown background LIV.52/drops 60 ml. are printed in white colour...the other matter is dark brown on yellow background... the size of the presentation is less than half of the size of the defendants presentation... the pacing cartons including the distinctive features of the defendant-appellant is entirely different. The colour scheme is light yellow/single colour scheme whereon the entire matter is printed in black.... the respective packings prominently contain the names of the two contesting parties.... each of the two cartons has unique placement... having examined the two cartons we are clearly of the opinion that there is no possibility of one being accused of deceptively similar with the other and the likely customer mistaking one with other, even by recollecting faint impression... we are therefore unhesitatingly of the opinion that the proprietor of LIV 52 was not entitled to the grant of an injunction restraining the use of LIV-T.

9. As already pointed above, Lipid is a fat or fatlike substance which causes diabetes and cardiac problems. These drugs are lipid lowering drugs used in cardiac and diabetes patients with elevated cholesterol level. The products are meant for Lipid Correction and Protection i.e. for Lipid Reducing Therapy. The Director of Drug Control Authority, Gujarat has granted permission to the defendant as well, for manufacturing and marketing of the product under Licence No. G/1339 on 7th June, 2000 for the purpose of the said product. Therefore, there is nothing unique or distinctive if plaintiffs are given the permission by the Drug Controller Authority for manufacturing and marketing of their products. (AIR 1970 SC 2062 [LQ/SC/1969/320] , F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd. and AIR 1984 Bombay 281, M/s. Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Limited & Anr.)

10. From documents on record, one also notices that both plaintiffs and defendant launched their respective products almost around the same time. No doubt proprietary right in a trade mark is acquired by mere prior use and launch of user is irrelevant as contended by the plaintiffs relying upon the Division Bench judgment of this Court in the case of Century Traders v.Roshan Lal Duggal & Co. & Ors. reported in 15 (1979) DLT 269 [LQ/DelHC/1977/59] =AIR 1978 Delhi 250, but one cannot lose sight of the stark reality in the instant case where the products launched by both the parties almost simultaneously and also that the same products with prefix LIPI have been in use by other companies for a number of years and much earlier to that of the plaintiffs product. Although the plaintiffs have tried to give certain dates prior to June, 2000 when they applied for drug licence etc., however, as per the plaintiffs own showing they commenced production and marketing of this product on 27th May, 2000. On the other hand, the defendant launched its product in June, 2000. It cannot be said that the plaintiffs had acquired any reputation of their product within few days when the defendant had launched this product. This is an important factor which goes against the plaintiffs when the question of passing off is to be determined as acquiring a reputation of the mark is a sine qua non in passing off the trade mark. (See JT 2001 (4) SC 243 [LQ/SC/2001/847] ). The question of deception damages arise subsequently. One also cannot ignore the figures of the sales of two products. Whereas the plaintiffs claim that till October, 2000 they had sold the goods worth Rs. 1,34,000 lacs (although denied by the defendant as according to it, in ORG report, the total figure upto December, 2000 is Rs. 97,58,000/-), the sale figures of the defendant upto February, 2001 is Rs. 2,06,00,000/- appro. This shows as of today that the product of the defendant has also got same reputation, if not more.

11. There is another reason to deny the injunction to the plaintiffs. Having regard to more than 20-25 products of the same nature with prefix LIPI already in the market, there is a practice in the trade of drugs in naming the drug by name of ailments which it treats and that the word prefix LIPI is taken from Lipid which is a generic word, I do not think that the use of trade mark LIPICOR by the defendant is likely to cause confusion or deception. The defendant has tried to contend that two products are phonetically, structurally and visually dissimilar and the suffix CARD and COR do not sound similar. Following differences projected by the defendant in the two products relating to colour combinations and other features can also not be lose sight of :

Plaintiffs LIPICARDDefendants LIPICOR

Sold on Doctors prescriptionSold on Doctors prescription.

Contains Drug FenofibrateContains Drug Atorvastatin

Sold on round stripSold on square strip

Sold in capsulesSold in tablets.

Contains 7 capsules eachContains 10 tablets.

indicated by name of week days.

Packing is yellow and redPacking is silver and golden.

Sold at Rs. 49/- for 7 capsulesSold at Rs. 197/- for 10 tablets or

Rs. 115/- for 10 tablets.

Name USV Ltd. is printed in bold letters.Name INTAS is placed on eachpacking and strip.





12. It is thus observed that one product is red and yellow, the other is silver and golden. One is pasted on round shaped paper, the other is pasted on a square shaped paper. Prices are different. One costs Rs. 49/- for 7 capsules, the other costs Rs. 198/- for 20 mg. or Rs. 115/- for 10 mg. The shape of the boxes are vastly varying. These have to be necessarily routed and sold through prescription of doctors being Schedule H drugs products. Therefore, the use and sale of the products are through well qualified persons, and there is no chance of any confusion or deception. It is not as if any consumer would walk into a chemist and buy an item. He will simply not be permitted to do so. He will first have to go to a doctor and obtain a prescription.

13. In view of the aforesaid magnitude of the sale of the drug by the defendant as well it would be improper to restrain the defendant from marketing the product under the trade mark LIPICOR. One has to go by the principle of balance of inconvenience in contrast to balance of convenience as propounded by the Supreme Court in such cases. Going by this principle also, the ex-parte order dated 9th February, 2001 warrants to be vacated. It may also be useful to refer to the judgment of the Supreme Court in the case of Wander Ltd. & Anr. v. Antox India (P) Ltd. reported in 1990 (Supp.) SCC 727. Following observations show the path to be taken in considering such matters.

Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The Court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The objection of the interlocutory injunction, it it stated :

... is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favour at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting from his having been prevented from exercising his own legal rights for which he could not be adequately compensated.

The Court must weigh one need against another and determine where the balance of convenience lies.

The interlocutory remedy is intended to preserve in status quo, the rights of parties which may appear on a prima facie case. The Court also, in restraining a defendant from exercising what he considers his legal right but what the plaintiff would like to be prevented, puts into the scales, as a relevant consideration whether the defendant has yet to commence his enterprise somewhat different from those that apply to a case where the defendant is yet to commence his enterprise, are attracted.

14. In view of these glaring facts of this case, judgments cited by the plaintiffs have no application in the present case. Certain cases cited by the plaintiffs are those where two trade marks were held to be deceptively similar. Like :

1. AIR 1963 SC 449 [LQ/SC/1962/200] (Amritdhara : Lakshmandhara

2. AIR 1970 SC 146 [LQ/SC/1969/167] (Ambal : Andal)

3. 35 (1988) DLT 64 (Shapola : Saffola)

4. 36 (1988) DLT 417 (Harrison : Haricon)

5. 1992 (16) ARB.L.R. 297 (Betaloc : Betalong)

6. 1989 IPLR 194 (Sephan : Cetian)

7. 13 (1988) IPLR 194 (Hepasyp : Hepax)

8. AIR 1958 Bom. 56 [LQ/BomHC/1957/83] (Ciba : Cibol)

9. 1977 IPLR 235 (Naprocid : Naprosyn)

10. (17) 1997 PTC 34 (Diclomol : Dicmol)

11.= 36 (1988) DLT 133 [LQ/DelHC/1987/543] =AIR 1989 Del 44 [LQ/DelHC/1988/201] (Camlpose : Calmprose)

15. However, these judgments have no relevance in the instant case in view of the reason explained above, particularly when in the instant case word prefix LIPI in the two products is a generic word referring to the ailment which it treats and there being number of products already in the market using the prefix LIPI. For same reason, the judgments cited by the plaintiffs, namely, AIR 1963 SC 449 [LQ/SC/1962/200] ; Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1940 SC 142; Corn Products Refining Co. v. Shangrila Food Products Ltd., and AIR 1972 SC 1359 [LQ/SC/1972/67] ; Parle Products (P) Ltd. v. J.P. & Co., Mysore, in support of his contention that the trade marks LIPICARD and LIPICOR are deceptively similar, are not applicable in the instant case.

16. In view of the aforesaid discussion, order dated 9th February, 2001 warrants to be vacated and injunction application filed by the plaintiffs merits rejection. IA No. 12230/2000 filed by the plaintiffs is accordingly dismissed and IA No. 3035/2001 filed by the defendant is hereby allowed. The interim order dated 9th February, 2001 stands vacated.

17. Needless to mention the entire matter is examined on the touchstone of Order XXXIX Rules 1 and 2 dealing with the application for grant of ad interim injunction, and therefore, views expressed above are tentative and prima facie conclusions which shall not be treated as any final expression on the merits of the case.