S. Usha, Member (T)

1. Appeal No. 1 of 2000 filed before the High Court of Gujarat, Ahmedabad has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999 and has been numbered as TA/278/2004/TM/AMD.

2. The appellant filed an application for registration of the trade mark TENOREX' in respect of pharmaceutical and medicinal preparations under application No. 531033 on 13.4.1990 as proposed user. The said application was accepted under Section 20 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the said Act) and advertised in the Trade Marks Journal No. 1094 dated 1.1.95 at page 1378. The first respondent took out the notice of opposition to the registration of the application. The appellant had filed their counter statement. After completion of the formal procedures the matter was set down for hearing before the Assistant Registrar.

3. Learned Assistant Registrar heard the matter and decided the issues under Sections 9, 11(a), 11(e), 12(1) and 18(1) of the said Act. Learned Assistant Registrar rejected the first respondent's contention that the trade mark 'TENOREX' has no direct reference to the character and quality of goods under Section 9 of the said Act. Learned Assistant Registrar also found that Section 11(a) and 11(e) of the can be applied as the first respondent's mark had been substantially in use and the first respondent's mark was registered in India and that there was every possibility of confusion being caused if the appellant's mark was registered. Learned Assistant Registrar also held that as the marks are deceptively and phonetically similar and that there was substantial chance of a conflict between the rival marks and the first respondent's objection under Section 12(1) of the said Act sustains. Learned Assistant Registrar finally held that as the appellant had been using a different mark earlier and had now changed to 'TENOREX' and as such the adoption was dishonest and upheld the objection under Section 18(1) of the said Act. In view of the above the learned Assistant Registrar had allowed opposition No. AMD 900 and had refused registration of application No. 531033. Aggrieved by the said order the appellant preferred the above appeal.

4. The appeal was taken up for hearing in the Circuit Bench at Ahmedabad on 25.7.2006. Learned Counsel Dr. R.H. Acharya appeared for the appellant and learned Counsel Shri Rakesh Gupta and Shri Abhishek Mehta appeared for the first respondent.

5. Learned Counsel for the appellant vehemently argued that the word TENOR in the trade mark 'TENOREX' and 'TENORMIN' was common and that there were so many others using the word TENO as prefix to their trade mark. He argued that there was no similarity between the two marks and that possibility of confusion or deception does not arise. Learned Counsel for the appellant further argued that the first respondent has not been using the trade mark 'TENORMIN' in India even at the time of opposition proceedings before the Registrar.

6. Learned Counsel for the appellant relied on various judgments in support of his claim that the rejection of his application for registration is bad in law and also for his contention that the prefix TENOR is a generic one. In support of his contention he relied on;

Regency Sanitary Ware Pvt. Ltd. v. Madhusudan Industries Ltd. 2001 PTC 422 (Guj); J.R. Kapoor v. Micronix India 1994 PTC 260; S.B.L. Limited v. Himalaya Drug Co. AIR 1998 DELHI 126; Parle Products Limited v. Bakemans Industries Limited 1998 PTC 18; Indo-Pharma Pharmaceutical Works Limited v. Citadel Fine Pharmaceuticals Ltd. 1998 PTC 18 and Novartis AG v. Wanbury Limited 2005 31 PTC 75 (Del) .
7. Learned Counsel for first respondent mainly argued that the adoption of the mark TENOR by the appellant was not honest as they were using the trade mark NORMTEN initially and now the appellants had changed to TENOREX, for which no reason has been given. Learned Counsel for the first respondent also submitted that they are the registered proprietors of the trade mark 'TENORMIN' and that they had gained good reputation and goodwill among the public. Learned Counsel also drew our attention to the annual sales figures and the promotional expenses incurred by their company.

8. Learned Counsel for the first respondent contended that they were prior users of the trade mark 'TENORMIN' and as registered proprietors they had valid right and title over the trade mark and also pointed out that the appellants had only proposed to use the mark on the date of application.

9. Learned Counsel for the first respondent also submitted that various decisions relied on by the appellant were of no relevance to the case on hands as the judgments were given at the interim stage and were not a final order.

10. Learned Counsel for the first respondent relied on the following judgments in support of his claim that the marks were deceptively and phonetically similar and as the goods were medicines and it was the duty of the court to approach the issue from the point of view of a man of average intelligence and imperfect recollection:

Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 (21) PTC 541 SC; Biochem Pharmaceutical Industries v. Astron Pharmaceuticals 2003 (26) PTC 200 (Del) ; The Anglo French Drug (Eastern Ltd.) v. Honey-N-Bois 1989 (9) PTC 289 (Bom) ; Ind Swift Ltd. v. Registrar of Trade Marks 2005 (30)PTC 646 (IPAB) ; Solvay & Cie v. Mexin Medicaments Pvt. Ltd. 2004 (29) PTC 654 (IPAB) ; American Home Products Corporation, New York v. K.V. Chennamallu 2004 (28) PTC 154 (IPAB) and Apple Laboratories Ltd. v. Boots Company Plc 2004 (29) PTC 265 (IPAB)
11. We have carefully considered the arguments of both the counsel. The impugned mark as on the date of application was proposed to be used. Hence the question of having acquired distinctiveness does not arise. Even on merits it can be seen that both the marks are deceptively and phonetically similar and as such the mark of the appellant is similar to that of the first respondent's mark on the Register. From the normal pronouncement of the mark there will be confusion as both the marks are similar. Hence it cannot be said that the appellant's mark is deceptively and phonetically not similar.

12. Though the learned Counsel for the appellant contended that the marks are not similar, did not elaborate much by pointing out the dissimilarity between the two marks. Hence we are of the opinion that both the marks are similar and thus there is every possibility of confusion and deception being caused among the public.

13. For considering the similarity between two trade marks, especially in pharmaceutical preparations the Hon'ble Supreme Court in the case of Cadila Health Care v. Cadila Pharmaceuticals Limited 2001 21 PTC 546 held as follows:

Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered:

a) The nature of marks i.e. whether the marks are work marks or label marks or composite marks, i.e. both words and label works.

b) The degree of resemblances between the marks, phonetically similar and hence similar in idea.

c) The nature of goods in respect of which they are used as trade marks.

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

e) 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.

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

g) Any other surrounding circumstances when may be relevant in the extent of dissimilarity between the competing marks.

Also while dealing with deceptive similarity with respect to Pharmaceuticals and medicines with respect to the earlier decisions of the Supreme Court the learned Judges, in the Cadila Healthcare case had made some observations. From this, it can be concluded that among other things, the following factors have to be considered in deciding similarity between the marks:

1) The class of purchasers and in case of medicines, it is purchased by both literate and illiterate, residing in villages and towns and also by a man of average intelligence and imperfect recollection.

2) Potential harm may be far more serious in case of medicines than in the case of other consumable products.

3) Even in case of prescription drugs prescribed by doctors and dispensed by chemists, confusion and mistakes are likely when marks which look like and sound like are marketed.

4) Medicines are sometimes ordered over telephone. Hence, if there is phonetic similarity, it enhances the chances of confusion or mistake by the pharmacists. Sometimes, in hospitals, drugs may be requested verbally under critical conditions to treat patients.

5) Prescriptions are handwritten and many times it is not unmistakably legible if the rival marks appear too much alike then there are chances of confusion or mistake by the pharmacists while dispensing the medicine.

6) The drugs have a marked difference in the composition with completely different side effects. Even if the rival drugs are for curing the same ailment, there is possibility of harm resulting from any kind of confusion and the consumer can have unpleasant if not disastrous results.

7) Even though the physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provision for mistake since even a possibility of mistake may prove to be fatal.

8) In case of medicines, whether there is any probability of confusion should not be speculated, but that if there is any possibility of confusion the use of confusingly similar marks should be enjoined.

9) Confusion by the use of similar marks which are used for different diseases for medicinal products could have disastrous effect on health and in some cases life itself.

10) In a country like India, where a small fraction know English and for whom different words with slight difference in spelling may sound phonetically same and who cannot pronounce the marks correctly, the use of deceptively similar marks could cause confusion.

14. Based on the above principles we are of the view that it is the duty of the Court to approach the issue from the point of view of a man of average intelligence and imperfect recollection. We are, therefore, unable to agree with the arguments of the learned Counsel for the appellant that the suffix is totally different in view of the judgment of the Apex Court in the Cadila case. As held by the apex court, courts must be careful in finding the dissimilarity, especially in medicinal products as human life is in danger if any mistake happens in a decision.

15. In view of the above, we have no hesitation in holding that the learned Assistant Registrar was correct in allowing the opposition No. AMD - 900 and rejecting application No. 531033. Considering the fact that the marks are similar and the appellant's mark 'TENOREX' cannot be permitted to be registered, we dismiss the appeal and confirm the order of the Assistant Registrar of Trade Marks. However, there shall be no order as to costs.