T.R. Subramanian, Technical Member

1. This is an appeal against the order of the Assistant Registrar of Trade Marks, Chennai dated 15th October 1999 dismissing the Opposition No. MAS 3400 filed by the appellants opposing the registration of the respondents Application No. 470136 in Class 5.

2. The respondents hereinabove had filed Trade Mark Application No. 470136 on 1st April 1987 at the Trade Marks Registry, Chennai for registering their trade mark LYMOXYL in respect of pharmaceutical and medicinal preparations in Class 5. The respondents have stated that they have been using the mark since January 1984. The application was ordered to advertise with the amendments of the goods to read as "Medicinal preparations being Schedule H drug to be sold by retailers on the written prescription of registered medical practitioners only". The application was advertised in the Trade Marks Journal on 1st September 1995.

3. On 27th October 1995, the appellants hereinabove filed a notice of opposition opposing the registration of the respondents mark under Sections 9, 11(a), 11(e), 12(1), 12(3) and 18(1) of the Trade and Merchandise Marks Act, 1958 mainly claiming that the impugned mark LYMOXYL is deceptively similar to their registered trade mark AMOXIL registered under No. 279428 dated 10.4.72 in Class 5 in respect of pharmaceutical preparation and substances for human use and for veterinary use and hence the same is prohibited from registration.

4. The respondents filed their counter statement denying all the allegations and contentions stated in the notice of opposition and contended that the suffix MOXIL or MOXIN is common to a number of marks registered in respect of AMOXYCILLIN preparations in the name of different manufacturers and that AMOXIL is an abbreviation form of AMOXICILLIN and being a generic term the opponents cannot claim its exclusive rights. They also claimed that they had adopted the trade mark since January 1984 and they are eligible for registration under Section 12(3) of the. The appellants filed their evidence which was followed by the evidence filed by the respondents. Appellants thereafter filed their reply evidence. The case was heard by the Deputy Registrar of Trade Marks on 19th July 1999 and 9th September 1999 and by his order dated 15th October 1999 had dismissed the opposition. He had directed that the specification of goods should read as Pharmaceutical preparation being Schedule H drug to be sold by retail on written prescription of registered medical practitioners only to make it in conformity with the label originally filed for registration. He has held that the rival marks are not similar even if the rival goods are goods of the same description. He has also held that the respondents are eligible for registration under Section 12(3) of thekeeping in view of the fact that it is a case of honest concurrent use of the mark by the respondents as they have been using it from 1984 whereas the appellants has been using their mark only from August 1990.

5. The appellants filed an appeal (TMA 6 of 2000) before the Honble High Court of Madras, which was transferred to the Intellectual Property Appellate Board (IPAB) which is the present appeal, which was heard by IPAB on 24.12.2003.

6. At the hearing, Ms Gladys Daniel, Advocate appeared for the appellants. None appeared for the respondents.

7. The leaned counsel for the appellants Ms Gladys Daniel submitted that the Deputy Registrar of Trade Marks has erred by deciding that the rival marks are not deceptively similar. She further submitted that the respondents had not submitted sufficient evidence regarding use of their mark from 1984 and hence Registrars decision of allowing the registration of the respondents mark on the basis of honest concurrent user under Section 12(3) of theis not proper. She referred to Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., : AIR 2001 SC 1952 wherein it was held that in case of medicines and drugs, even a possibility of confusion and not probability of confusion would have disastrous effect and hence the use of confusingly similar marks should not be allowed. She submitted that the suffixes of the two marks MOXIL and MOXYL are similar and that there is only a slight difference in the prefixes, and that if the marks are compared as a whole they are deceptively similar. She also submitted that even if the respondents medicines are sold under prescription then also there are chances of confusion between the rival marks.

8. As regards the use and reputation of the mark under Section 11(a) of the Act, she submitted that opponents have been using their mark from 1975, which is much earlier to the date of the application filed by the respondents, that is 1.4.1987. She contended that the opponents mark has been registered in various countries and that they have submitted the sales turnover for the period 1975 to 1997. The Deputy Registrar in his order has discussed the evidences filed by the opponent. He has held that no documentary evidence has been produced for the period from April 1975 to March 1990 and obviously there have been no sales of the good under the mark by the opponents during that period and it is apparent from the above that the opponent have started using their trade mark AMOXIL only from August 1990. He has also held that from the records and evidences filed by the applicants, they have been using the trade mark LYMOXYL in respect of their medicinal products from 1.4.1986. The respondents have claimed that they have been using this trade mark from January 1984. However, the same has not been proved by evidence. From the daily stock account etc. it is observed that the applicants have been using the mark since 1.4.1985. This is supported by the fact that the respondents have given their sales figures from 1985-86 onwards. The applicants have claimed that they are entitled to registration of the mark under Section 12(3) of the. On the other hand the opponents have started using the trade mark "AMOXIL through their registered trade mark user M/s German Remedies Ltd. only. In the affidavit filed by Shri D.N. Murthy, General Manager (Sales) of M/s, German Remedies Ltd., he had deposed that they have been selling the product under the trade mark AMOXIL in India from October 1989 and had given sales figures from May 1990 to October 1997. The earliest of the invoices which was enclosed was dated 18.8.1990. In view of this, it can be inferred that the opponents have been using the mark from 18.8.1990 in India. Compared to this, the applicants have been using their mark from 1st April 1985, which is a date prior to the opponents use of trade mark in India which is 18.8.1990. Hence, we are of the opinion that the appellants have not established the use and reputation of their mark on the date of application filed by the applicants on 1st April 1987.

9. As regards comparison of the marks LYMOXYL and AMOXIL which are used for pharmaceutical and medicinal preparations, the learned counsel for the appellants referred to the judgment of the Honble Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., : AIR 2001 SC 1952 . In this case the learned Judges of the Supreme Court has considered the various earlier decisions of the same court on the question of deceptive similarity and on para 35 and held as under:-

"35. 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 the marks i.e. whether the marks are word 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 the goods in respect of which they are used as trade marks.

d) The similarity in the 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."

10. Also while dealing with deceptive similarity with respect to pharmaceuticals and medicines with respect to the earlier decisions of the Supreme Court, in Cadila Health Care case the learned Judges had made some observations. Further, 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 town 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.

11. The Honble Supreme Court in the CADILA Health Care case has referred to various decisions of the Indian, US and UK Courts where it has been held that serious consequences may result in cases of pharmaceuticals or medicines where the rival marks are similar or deceptively similar and, therefore, a higher and stricter standard should be applied in deciding cases to prevent possibility of confusion in the minds the public. There should be clear indicators as possible to distinguish the two medicinal products from each other and that drugs are poisons and not sweets. It was also held that exacting judicial scrutiny is required if there is possibility of confusion over marks, which are applied to medicinal products because of potential harm.

12. The Honble Supreme Court of India, in the above case, has also observed that the courts have to apply higher and stricter standards in deciding the question of deceptive similarity between rival marks in case of medicines. Even if there is possibility of confusion, it may result in disastrous consequences.

13. It has been stressed that the question whether the two marks are likely to give rise to confusion or not is a question of first impression (Corn Products Refining Co. v. Shangrila Food Products Ltd., : AIR 1960 SC 142 ).

14. It is also a well settled proposition that the marks have to be compared as a whole. Also to determine whether the two marks are deceptively similar the test of an average person with imperfect recollection has to be applied. The authority has to visualize, if a customer who may be an ordinary citizen and who may want to purchase a medicine would get confused.

15. The rules for comparison of words have been laid down by Lord Parker in Pianotist Company Limiteds application, (1906) 23 RPC 774 at p. 777, which is as follows:-

"You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks. If considering all those circumstances, you come to the conclusion that there will be a confusion - that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you must refuse the registration in that case".

16. As pointed out in Simatul Chemical Industries (P) Ltd. v. Cibatul Ltd., 19 GLR 315 , deception between two trade marks is not only concerned with the concerned two parties but is concerned with the consumers and the interest of the general public will also have to be seen. The applicants/respondents mark is LYMOXYL and the opponents/appellants mark is AMOXIL. The suffix MOXYL and MOXIL are more or less similar. The only difference is in the prefix LY and M. When the rival marks are compared as a whole, we are of the opinion that the rival marks are phonetically and structurally deceptively similar. More so, as the goods are pharmaceutical goods. We, therefore, agree with the contention of the counsel for the appellants that the mark is prohibited for registration under Section 12(1) of the.

17. As regards Section 12(3), the learned counsel for the appellant submitted that the respondent is nor eligible for registration of their mark as they have not honestly and concurrently used the mark. Section 12(3) is an exception to Section 12(1) of theeven if an opponent succeeds under Section 12(1) then also the applicant can succeed under Section 12(3) provided he can prove through evidence that he has honestly and concurrently used the mark. Also where the applicants date of commencement of use is prior to the opponents use and date of registration, the provision of Section 33 of theallows for registration of the applicants mark. In fact the word other special circumstances in Section 12(3) include any circumstances peculiar to the subject matter of the application and this includes use by an applicant of his mark before the conflicting mark was registered or used (London Rubber Co. Ltd. v. Durex Products, : AIR 1963 SC 1882 ). In the present case the first relevant date is the date of use of the mark by the applicants. The applicants have proved through evidence that they have been using the mark from 1st April 1985. The next relevant date is the date of use of the mark by the opponents. The opponents have through evidence proved that they have been using the mark in India since 18.8.1990. The next relevant date is the date of registration of the opponent trade mark AMOXIL which as per the record is 10th April 1972. In order to come under the purview of Section 12(3) the applicant has to prove through evidence that they have been using the mark prior to the use of the mark by the opponent or prior to the registration of the marks of the opponent whichever is earlier. It is seen that the applicant has been using the mark since 1st April 1985 where as the opponents have been using their mark from 18.8.1990. The opponents have registered their mark with effect from 10th April 1972 under No. 279428. The earliest of the date between the use by opponents and registration of the opponent mark is 10th April 1972. As the applicants have been using their mark from 1st April 1985 which is a date later than the date of registration of their mark by the opponents that is 10th April 1972, the applicant cannot claim the benefit of Section 12(3) read with Section 33 of the. Hence, the applicants are not entitled for registration under Section 12(3) of the.

18. As regards Section 18(1) of the Act, the counsel for the appellants contended that the respondents have not honestly adopted the mark. She referred to the decision of the Bombay High Court in : AIR 1958 Bom. 56 and submitted that the respondents are not eligible for registration of their mark under Section 18(1) of thebecause of dishonest adoption. It is seen from the records that the respondents have adopted the mark LYMOXYL on 1st April 1987 honestly presuming may be that it is different from the opponent mark AMOXIL and have started using the mark from 1st April 1985. On the other hand the opponents have started using the mark through their registered user from 18.8.1990. Hence, it cannot be said that the respondents have copied the mark of the appellants.

19. Taking into consideration that above, we allow the appeal. There is no order for the costs.