Dr. M.K. Sharma, J.

1. According to the plaintiffs, in the year 1989, the first plaintiff coined a unique and unusual trade mark Mexate in respect of its methotrexate sodium injections used in the treatment of various types of cancers. According to the plaintiffs, the said trade mark is an invented word of the first plaintiff and has no meaning whatsoever. It is stated that the plaintiff No. 1 is also a registered proprietor of the said trade mark Mexate having been granted registration on 5.12.1989 and registered in Class V. The trade mark Mexate, according to the plaintiffs, is being extensively used by the plaintiffs since as far back as in August 1991. It is stated that the plaintiffs received information around January, 1996 that the defendant has recently introduced in the market a product under the brand name zexate and the only difference between the plaintiffs registered trade mark Mexate and the defendants trade mark zexate is the letter M replaced by the letter Z, and therefore, it is apparent that the defendant had adopted zexate only to take advantage of the goodwill and reputation of the plaintiffs product Mexate which acquired a reputation in the market.

2. According to the plaintiffs, the trade mark zexate of the defendant is deceptively and confusingly similar to the plaintiffs registered trademark Mexate. Mr. Lal, the Counsel appearing for the plaintiffs submitted that the defendants trade mark is phonetically, visually and structurally identical to the first plaintiffs registered mark Mexate and use of the same by the defendant amounts to a violation of the statutory rights which exist in favour of the first plaintiff.

3. Mr. Anand, the Counsel appearing for the defendant, on the other hand, admitted that the claim of the plaintiffs mark Mexate is coined, invented, unique and unusual is baseless. It as stated that the defendant is a reputed manufacturer of pharmaceuticals amongst other products and adopted the mark zexate in the year 1995 which also contains methotrexate sodium as the active ingredient and is a drug for treatment of cancer disease. It is stated that the suffix exate is common to both the plaintiffs and the defendants marks which is the base product and the same constitutes 5/6th of the entire mark. It is stated that while the plaintiffs have chosen to add M to have their brand read as Mexate, the defendant has independently opted for 2 which is a highly distinct letter amongst all the syllables of English language. Besides, there are other pharmaceutical companies, namely, M/s. Biomem Industries, Bombay and M/s. Biddle Sawyer whim are using the brand names Biotrexate and Neotrexate respectively with the suffix trexate or exate and therefore, the two competing drugs in the present case are neither similar, both visually or phonetically.

4. Section 2(d) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) defines the word deceptively similar as which would be deemed to be deceptively similar to Another mark if it so nearly resembles that other mark so as to likely to deceive or cause confusion. For deciding the question of deceptive similarity, the Courts have laid down the following factors to be considered:

(a) The nature of the marks, i.e., whether the marks are word marks or level marks or composite marks, i.e., both word and level marks.

(b) The degree of resembleness between the marks, whether they are phonetically, visually or structurally 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.

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

(g) Any other surrounding circumstances.

It is also settled that weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.

In this context, it would be necessary to examine the two rival marks taking into consideration the aforesaid factors as far as they are applicable.

5. It is the admitted position that the two drugs are common for treatment of cancer which is a deadly disease. Therefore, both the drugs are Schedule H drugs and since they are required for treatment of a very serious disease, the same, in all cases, expected to be purchased on the basis of a doctors prescription being Schedule H drugs. Since except for one syllable, the base drug is being used for the trade name Mexate, the plaintiffs cannot claim any monopoly with regard to the word exate which is taken from the word methotrexate which is the active ingredient used in the product.

6. The product of the plaintiffs and the defendant is used for the treatment of cancer and the said medicinal preparation is prescribed by a physician only after careful examination of the patient and after conducting series of medical tests. The said medicine is a Schedule H drug whid1 is also to be sold by the qualifying dispensing chemist/druggist on production of a prescription of a physician. Both the products of the plaintiffs and the defendant cannot be expected to be sold over the counter as it is a specialised drug for treatment of cancer.

7. According to the decisions laid down by the various Courts, the importance of the prefix of the word should be taken due weightage and important in case where the suffix is common. Where the suffix of the word is common, regard must be had to the earlier portion of the word which distinguishes one from the other. Where the suffix is common, the earlier portion of the word is the natural necessary and, in fact, the actual mark of distinction. It is also held in M/s. Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Ltd. & Another reported in AIR 1984 Bombay 281 and American Home Products Corporation v. Mac Laboratories Pvt. Ltd. & Anotherreported in AIR 1986 Supreme Court 137 that the marks are different and not similar medicines considering the prefix. In the present case, competing trade marks Mexate and zexate have different and distinguished prefix, one having syllable M and the other having Z. There is no possibility of Mexate being pronounced and/or read as zexate under any circumstances. As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to disect the words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered. The two marks Fleboline and Bionoboline was held to be not similar by the Bombay High Court in Johann A. Wulfing. v. Chemical Industrial & Pharmaceutical Laboratories Ltd. & Another (Supra) as the terminology boline cannot be an exclusive monopoly of the respondents and that the cumulative effect of the two words did not produce the same impression. Even phonetically the two marks were held to be not closely similar. In the present case, since the two marks are different as the opening syllables of both the rival marks are completely different and distinct and the two drugs are Schedule H drugs of a specialised nature which could only be purchased on showing a prescription from a cancer specialist, the two competing trade marks appear to be prima facie entirely different and dissimilar.

8. Considering the overall position and taking into consideration the entire principles and factors laid down for the purpose by the various decisions, as referred to, I am of the considered opinion that no temporary injunction, as sought for by the plaintiffs, is required to be granted in the present case pending disposal of the suit.

9. Accordingly, the application of the plaintiffs stands rejected, subject to the condition that the defendant shall maintain accounts of the sale of the product and submit the same half yearly to this Court and furnish an undertaking within six weeks from today that if in case on merits subsequently it is found that the plaintiffs are entitled to the perpetual injunction, as prayed for in the suit, the defendant would pay damages as is ascertained by the Court.

10. With the aforesaid direction and observation, this applications stands dismissed.