Boots Company Plc, England & Another v. Registrar Of Trade Marks, Mumbai & Another

ORAL JUDGMENT

1. This is an appeal under section 109 of the Trade and Merchandise Marks Act, 1958 (for short, the Act, 1958) challenging the order dated 27-3-1998 passed by the Assistant Registrar of Trade Marks allowing the application of the respondent No. 2 for registration of a trade mark of "CROFEN" and rejecting the opposition filed by the petitioners. The relevant facts in brief are as under.

2.The petitioner No. 1 is a company incorporated and registered under the laws of England carrying on business inter alia of manufacturing and marketing medicinal and pharmaceutical preparations throughout the world. The petitioner No.1 was the owner of the trade mark "BRUFEN" as on 25-7-1968, registered under No. 2506671 in Class 5 of Schedule IV of the Act, 1958. The petitioner No. 2 is a company incorporated and registered under laws of Germany also carrying on business inter alia of manufacturing and marketing pharmaceutical products. By a deed of assignment dated 9th August, 1995, the petitioner No. 1 has assigned some of its trade mark including the trade mark of "BRUFEN" to petitioner No. 2 and the said deed of assignment has been filed with the Registrar of Trade Marks. The said product "BRUFEN" is being exclusively sold in India since 1973 and it is the premier drug for the treatment of Rheumatoid Arthritis and other ailments.

3.By his application dated 9-8-1989, respondent No. 2 applied for registration of the mark "CROFEN" under No. 514802 in respect of medicinal, pharmaceutical and veterinary preparation contained in Class-5 of Schedule IV of the Act, 1958. The said mark was advertised in the Trade Marks Journal No. 1068 dated 1-12-1993. Upon learning of the said applications, petitioner No. 1 filed a notice of opposition on 2-3-1994 on the ground that petitioner No. 1 was the proprietor of the Trade Mark "BRUFEN" which product was being extensively sold all over India and that it had acquired a valuable reputation and goodwill. Petitioner No.1 also claimed that the mark "CROFEN" of respondent No. 2 was deceptively similar to the trade mark "BRUFEN" and that it would cause great confusion and deception in the minds of medical practitioners, chemists and general public. After considering the evidence, on record and after hearing both the parties, the Assistant Registrar of Trade Marks, by his order dated 27-3-1998 dismissed the petitioners opposition and allowed the applications of respondent No. 2 for registration of the trade mark "CROFEN". It is this order which is impugned in this appeal.

4.The opposition of petitioner No. 1 was on the ground that the registration of trade mark applied for is contrary to the provisions of Section 11(a), 11(e), 12(1) and 18(1) of the Act, 1958. The Assistant Registrar of Trade Marks however held that the mark applied for "CROFEN", is not identical with or deceptively similar to the petitioners registered trade mark "BRUFEN" and therefore, there is no question of causing any confusion or deception. The Assistant Registrar of Trade Marks further held that the two marks are not deceptively similar and the reasons given by them in arriving at this conclusion are - (1) they are structurally, visually and phonetically dissimilar, (2) that the goods are medicinal, pharmaceutical and veterinary preparation which are normally purchased after getting prescription from doctors and (3) that the goods are dispensed by the pharmacists, chemists who are well versed in their profession. He further pointed out that both the products contain IBUPROFEN as one of the active ingredients. According to the Assistant Registrar of Trade Marks, respondent No. 2 had honestly adopted the mark "CROFEN". In this view of the matter, the Assistant registrar of Trade Marks proceeded to dismiss the opposition of the petitioner and granted the application of respondent No. 2 for registration.

5.I have heard Shri Ravi Kadam, the learned Advocate for the petitioner and Shri Nair, for respondent No. 2. Shri Kadam, submitted before me that the Assistant Registrar of Trade Marks was in error in holding that both the marks were structurally, visually and phonetically dissimilar. According to him, the Assistant Registrar failed to apply correct principles of comparison and test for ascertaining the similarities or otherwise. Shri Kadam further submitted that the burden of proving the fact that the mark applied for is not likely to cause any confusion or deception lies on the respondent No. 2 and according to him respondent No. 2 has failed to discharge that burden. Shri Kadam further submitted that the fact that both the products are prescriptive medicines is not a relevant factor. It is submitted that it is the Courts duty to protect the public interest against daily confusion or deception which is likely to cause on account of similarity of the two marks. Shri Nair, the learned advocate for respondent No. 2 on the other hand pointed out that the respondent No. 2 is using the trade mark since 1988 and that no suit was ever filed by the petitioners to restrain the respondent No. 2 from using that mark. Shri Nair further pointed out that there are several medicinal preparations having the suffix FEN. He further submitted that there is no similarity visual or phonetical in the two words and therefore, no confusion is possible. Shri Nair emphasised the fact that the first letters of the two words BRUFEN and CROFEN are different. He pointed out that the prefix CRO in the word CROFEN is derived from the word Cronic. Shri Nair lastly submitted that once the Assistant Registrar has come to the conclusion that both the marks are dissimilar then there is no reason to interfere with the discretion used by him.

6.Section 11 contemplates certain grounds which prohibit registration of certain marks. For our purpose the grounds in Clauses (a) and (e) are relevant and the same read as under:

"A mark (a) the use of which would be likely to deceive or cause confusion or;

(b) .........

(c) .........

(d) .........

(e) which would otherwise be disentitled to protection in a Court, shall not be registered as a trade mark."

Section 12 prohibits the registration of identical or deceptively similar trade marks. Sub-section 1 thereof reads as under:

"Section 12(1) - Save as provided in sub-section (3) no trade mark shall be registered in respect of any goods or description of goods which is identical with or deceptively similar to a trade mark which is already registered in the name of a different proprietor in respect of the same goods or description of goods."

Section 2(d) defines the term "deceptively similar" as: "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." Sub-section 3 of Section 12 is in the nature of an exception to sub-section (1) and it reads as under:

"Section 12(3) - In case of honest concurrent use or of other special circumstances which in the opinion of the Registrar, make it proper so to do, he may permit the registration by more than one proprietor of trade marks which are identical or nearly resemble each other (whether any such trade mark is already registered or not) in respect of the same goods or description of goods subject to such conditions and limitations, if any, as the Registrar may think fit to impose."

Section 18 deals with an application for registration. Sub-section (1) states that any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark either in Part A or in Part B of the register. Sub-section 4 of section 18 states that subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit. It is in the light of these provisions of the Act, 1958 that the petitioners challenge to the impugned order has to be considered.

7.In N.S. Thread Co. vs. James Chadwick and Bros. AIR 1953 SC 357 [LQ/SC/1953/56] , it was observed that the real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. In that case, the Supreme Court was dealing with two marks, one of Eagle and other of Vulture. The Supreme Court held that camouflaging an Eagle into a Vulture by calling it such was likely to cause confusion especially when it did not represent a vulture or look like a vulture of any form or shape. In Ciba Ltd. vs. M. Ramalingam AIR 1958 Bombay 56, the Division Bench of this Court was considering the question whether the mark Cibol was deceptively similar to the registered trade marks of Ciba, Cibalgin, Cibazol and Cibalbumin holding that the mark Cibol was deceptively similar, it was observed that in trade mark cases and specially when the Court has to compare two different words. The matter in the ultimate analysis must depend upon first impression. It was further observed that "the resemblance between the two words may be visual or phonetic and the only test that has to be applied when the Court is considering a case falling under the Section 10 of the Trade Marks Act, 1940 is the test of identity or resemblance. It was further observed that the two words must be taken and judged by their look and sound in relation to the goods to which they are to be applied. The nature and kind of customer who would be likely to buy those goods and the surrounding circumstances and the likely result 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, must all be considered and if on such consideration, that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but there will be a confusion in the mind of the public which will lead to confusion in the goods, then the registration must be refused."

8.In Corn Products Refining Co. vs. Shangrila Food Products Ltd. AIR 1960 SC 142 [LQ/SC/1959/182] , the question was whether the mark Gluvita was deceptively similar with the registered trade mark Glucovita. The Supreme Court laid down that the question whether the two marks are likely to give rise to confusion or not is a question of first impression and it is for the Court to decide that question. It was further observed that in deciding the question of similarity between the two marks, the marks have to be considered as a whole. It was further observed that in deciding the question of similarity of two marks the approach should be from the point of view of a man of average intelligence and of imperfect recollection. In F. Hoffimann-La Roche and Co. Ltd. vs. Geoffrey Manners and Co. AIR 1970 SC 2062 [LQ/SC/1969/320] , question of deciding similarity or otherwise of marks arose in relation to two pharmaceutical products Protovit and Dropovit. It was observed:

"The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Act, 1938, must nearly always depend on first impression, for obviously a person who is similar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused..... The Court must be careful to make allowance for imperfect recollection and the effect careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person s wants."

9.It was held that 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. In Astra-IDL Limited vs. TTK Pharma Limited, AIR 1992 Bombay 35, the learned Single Judge of this Court considered the two marks Betalong and Betaloc used in connection with the pharmaceutical preparation and held that the mark Betalong was deceptively similar to the mark Betaloc. The learned Judge observed that the question of likelihood of confusion has to be decided by comparison of marks as a whole.

10.In Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., 2001 PTC S41 (SC), while considering the question of deceptive similarity in passing off action, the Supreme Court observed in para 33 of its judgment as follows:

"In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know, English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiffs goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spelling may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has 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 for another due to similarity of 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 par 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 life 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."

11.In a very recent decision in Mahindra and Mahindra Paper Mills Ltd. vs. Mahindra and Mahindra Ltd., 2001 AIR SCW 4679 while upholding the decision of a division bench of this Court in an action for passing-off, the Supreme Court observed that whether there is likelihood of deception or confusion; that all factors which are likely to create or allay deception or confusion must be considered in combination and that broadly speaking, factors creating confusion would be, for example, the nature of the market, itself, the class of customers, extent of reputation the trade channels, the existence of any connection in course of trade, and others.

12.Thus on consideration of the above mentioned decisions, it is clear that there are three tests which have to be considered for deciding the question whether the trade mark is deceptively similar to the other mark or not and they are (1) the mark has to be considered as a whole, (2) it is a question of first impression and (3) the question has to be considered from the view point of a man of average intelligence. Applying these 3 tests, I am of the opinion that the mark applied for i.e. "CROFEN" is deceptively similar to the registered trade mark of the petitioner i.e. "BRUFEN". The words "BRUFEN" and CROFEN both are six lettered words having common suffix FEN. The prefixes of both these words consist of 3 letters one of which i.e. R is common. The same is preceded by different syllable and followed by different vowels. Visually there is some dissimilarity in both the prefixes and phonetically also there is dissimilarity, since the first letters of both these words are different but the vowels u and o which follow the letter R are apt to be slurred over. The hurried and fast utterance of the word CROFEN may sound as BRUFEN, while that of CROFEN as BRUFEN. It is common knowledge that in this country pronouncement defers from person to person. For instance, some people pronounce school as eschool, para as pera, bank as baink, report as repot and so on. English not being the mother tongue of the people in this country, English words are pronounced in different manners and with a distortion. Therefore, it is not unlikely that the word CROFEN when pronounced hurriedly or fastly may slur over and pass as BRUFEN and vice versa. I cannot say whether this is a possibility or probability but it cannot be ignored that it is a fact which is likely to occur. The question which therefore, arises is as to what is the test for assessing whether there is deceptive similarity or not in the two words of mark.

13.Shri Nair relied upon the decision of a Division Bench of this Court in M/s Johann A. Wulfing vs. Chemical Industrial and Pharmaceutical Laboratories Ltd. 1984 PTC 81, wherein the question of similarity or otherwise in respect of two marks CIPLAMINA and COMPLAMINA was considered and it was held that the mark CIPLAMINA was not deceptively similar to the mark COMPLAMINA. However, this decision will not be of such use to Shri Nair for the apparent dissimilarity in the two marks as observed by the learned Judges. The starting letter C in both the words is pronounced entirely differently. Inasmuch as in COMPLAMINA starting C is pronounced as K while in CIPLAMINA starting letter C is pronounced as C. Shri Nair also cited the decision in M.M.P. Ltd. vs. O. P. Corporation, AIR 1975 Madras 74, wherein the contest was between the two trade names Ortho-gynol and utogynol, the Court held that orthographically and phonologically the prefix Ortho and uto are strikingly dissimilar and even making allowance for the mispronounciation of illiterate customers and the illegibility of doctors prescriptions, there is little likelihood of any one confusing between these two words. This is however not so with regard to the trade marks in the case on hand.

14.One of the reasons given by the Assistant Registrar, Trade Mark, for allowing the application for registration of respondent No. 2 is that the goods are medicinal and pharmaceutical veterinary preparation which are available on prescription from doctors and that the same is dispensed by pharmasists, chemists who are well verse in their profession. Shri Nair emphasised this fact and submitted that there is no possibility or probability of any confusion or deception being caused to common customer. He pointed out that the division bench in the case of M/s Johanan A. Wulfing (supra) while rejecting their argument, that prescriptions given by the doctors are generally illegible, observed - "It is alleged that doctors are notoriously lax in their calligraphy. Perhaps Mr. Tuljapurkar might care to attribute to the medical and allied fraternity a greater sense of responsibility than what he is instructed to give them credit for. "However, it may be pointed out that this aspect was considered by the learned Single Judge in the case of Astra-IDL Ltd. (supra) who observed:

"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 the above mentioned case of Cadila Health Care, the Supreme Court observed that physicians and pharmacists are trained people yet they are not infalliable and in medicines there can be no provisions for mistake since even a possibility of mistake may prove to be fatal. It was further held that in the field of medicinal remedies Courts may not speculate as to whether there is probability of confusion between the similar names. If there is possibility of confusion in the case of medicines, public policy requires that use of confusingly similar name be enjoined. The Supreme Court proceeded to observe in para-32 as under:

"Public interest would support lesser degree of proof showing confusing similarity in the case of 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 hospitals, 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."

Thus having regard to the above observations, it would not be proper to allow any scope for any possibility or probability of any confusion being caused between the two marks "BRUFEN" and CROFEN". To allow such confusion to occur will be against the public interest. As observed by Chagla, C. J. in the case of Ciba Ltd., the object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is therefore, essential that the register should not contain trade marks which are identical or which closely resemble each other that any purchaser may be likely to be deceived by thinking that he is buying goods of a particular person or a particular form or particular industry whereas he is buying the goods of another person or firm or industry. It was emphasised that the duty of the Court must always be to protect the public. All the hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause in future. Shri Nair pointed out that the respondent No. 2 has been using his trade mark "CROFEN" since 1988 and even though the petitioners have got their trade mark "BRUFEN" registered, they did not take any action so far to restrain the respondent No. 2 from using the trade mark "CROFEN". Registration of trade marks does give a party a legal right to bring such action but the failure on the part of the said party to bring an action for infringement of its trade mark cannot be a ground for allowing the impugned trade mark to be registered. Therefore, I do not find any merit in the submission of Shri Nair.

15.In view of the above discussion, I am of the opinion that the Assistant Registrar of Trade Mark was not right in allowing the application of respondent No. 2 for registration of the trade mark of "CROFEN" and disallowing the opposition filed by the petitioner. The impugned order therefore, deserves to be quashed and set aside. In the result, the petition is allowed and the impugned order dated 27-3-1998 passed by the Assistant Registrar, Trade Marks in Application No. 514802 is hereby quashed and set aside and the opposition No. BOM-9415 filed by petitioner is allowed.