K. S. GUPTA, J.

(1) THIS order will govern the disposal of las. 6522/96 and 7562/96.

(2) SUIT for permanent injunction and damages etc. was filed, inter alia, alleging that. one of the pharmaceutical preparations, namely ALSAREX manufactured and sold by the plaintiff is meant to heal ulcers and check recurrence of ulcers which normally occur in stomach, duodenum, oesophagus and Meckels diverticulum. Plaintiff got the trade mark ALSAREX registered under No. 231783 as on 18th October, 1965 in clause 5 and the registration is valid upto 17th October, 2000. Plaintiff has spent considerable sum on promotional literature in respect of the said trade mark and the year-wise sales figure thereof for the period 1983-84 to 1993-94 are as under :- YEAR AMOUNT

1983-84 6,51,19300

1984-85 9,65,26200

1985-86 12,02,50600

1986-87 13,35,29600

1987-88 16,20,63700

1988-89 14,08,28900

1989-90 20,97,33200

1990-91 23,65,04500

1991-92 28,17,120. 00

1992-93 37,22,573. 00

1993-94 49,19,139. 00

(3) IT is stated that defendant applied for registration of trade mark ULCEREX for pharmaceutical formulations vide application No. 467638. In the application defendant has claimed to have used the above trade mark ULCEREX since 9th July, 1985. Said application was advertised in the Trade Marks Journal No. 1062 dated 1st September, 1993 at page 494. Under Section 21 of the Trade and Merchandise Marks Act, 1958 (for short the Act) the plaintiff opposed the application vide opposition No Del-8256. On completion of pleadings and evidence and hearing the parties, the Assistant Registrar of Trade Marks by the order dated 22nd March, 1986 allowed the plaintiffs opposition and refused the defendants said application for registration mainly on the following grounds:-

(1) That the plaintiffs and the defendants medicines are for curing same disease or disorder and they are sold through the same trade channel and that the defendants trade mark ULCEREX so nearly resembles the plaintiffs trade mark ALSAREX whereby there will be dangerous consequences to the patients health. Hence, under Sections 11 (a) and 12 (1) of the Act, registration of ULCEREX trade mark is prohibited,

(2) That the defendant cannot claim proprietorship of ULCEREX trade mark, under Section 18 (1) of the Act, due to the reason that although the defendant has claimed to have used that trade mark since 9. 7. 1985 yet, its evidence of use relates only to. the years 1990-91 and 1991 -92.

(3) That adoption of the defendants trade mark ULCEREX was dishonest and that the defendant applied for registration of ULCEREX trade mark on 13. 2. 1987; but, it failed to prove use of that trade mark, on the date of the application. Hence, it is not registrable under Section 12 (3) of the Act.

(4) IT is further alleged that aforesaid trade mark of the defendant is not only visually and phonetically similar but is also deceptively equivalent to the plaintiffs said trade mark ALSAREX. Defendant has thus infringed the plaintiffs aforesaid registered trade mark within the meaning of Section 29 (1) of the Act.

(5) ALONGWITH suit aforementioned IA No. 6522/96 under Order XXXIX Rules 1 and 2 read with Section 151 Civil Procedure Code was filed by the plaintiff on which by the order dated 18th July, 1996 defendant was restrained from manufacturing, selling, offering for sale, advertising, directly or indirectly dealing in pharmaceutical preparations under the trade mark ULCEREX or any other trade mark which may be identical or deceptively similar to the plaintiffs trade mark ALSAREX till the next date of hearing and this order continues to operate till date.

(6) IN the written statement defendant has alleged that it is the proprietor of trade mark ULCEREX in respect of pharmaceutical preparations and the same was adopted by it on 9th July. 1985: Defendant has been continuously using the trade mark till this date. It is stated that the defendant holds the registration for the aforesaid trade mark in various other countries as per details given below:- COUNTRY registration NO. DATE

RUSSIA P-8-242-00611 20 30. 05. 95

KYRGYSTAN 000119 21. 11. 94

UZBEKISTAN PROTG COL FK No. 5 25. 05. 95

BELORUSSIA B-2-LC No. 980/95 06 01. 95

UKARAINE 856 17. 03. 94

(7) IT is further pleaded that the defendants preparation is allopathic while that of the plaintiff ayurvedic. Preparation of the defendant is schedule h drug which can only be sold on Doctors prescription. There is thus an inherent difference between the two preparations of the parties. It is denied that trade mark of the defendant is deceptively or phonetically similar to the trade mark of the plaintiff as alleged. However, it is not disputed that the application filed by the defendant seeking registration of the aforesaid trade mark ULCEREX was opposed by the plaintiff and the opposition was allowed by the Assistant Registrar of Trade Marks vide order dated 22nd March, 1996. Defendant has preferred an appeal under Section 109 of the Act against the said order in this Court and a show cause notice has been issued to the plaintiff. It is denied that the plaintiff invented, adopted and has been using the trade mark ALSAREX in respect of its preparations since 1965 as alleged.

(8) DEFENDANT filed aforementioned IA No. 7562/96 under Order XXXIX Rule 4 read with Section 151 Civil Procedure Code for vacating the ex parte order of injunction dated 18th July, 1996. In addition to what is pleaded in the written statement, it is stated in the application that the use by the defendant of the trade mark ULCEREX is mainly for export purpose.

(9) PLAINTIFF has contested the said IA by filing reply primarily on the pleas taken by it in the plaint.

(10) SUBMISSION advanced by Sh. S. K. Bansal appearing for the defendant was mainly two-fold. First, that the medicine manufactured by the defendant under the trade mark. ULCEREX is allopathic while the plaintiffs preparation under the trade mark ALSAREX is ayurvedic. Medicine of the defendant is schedule h drug which can only be sold on Doctors prescription by chemist (s) which is not the case in respect of the medicine of plaintiff. It is not in dispute that both the said medicines are meant for treatment of ulcer. Further, that the trade marks ALSAREX and ULCEREX are phonetically similar. It is not uncommon that both allopathic and ayurvedic medicines are available across the same counter in various shops of the chemists and even schedule drugs are sold by some chemists without prescription slips of the Physicians. Thus, an unwary customer who goes to purchase medicine can make mistake in purchasing the medicine of the defendant under the aforesaid trade mark as that of the plaintiff because of phonetical similarity between the said two trade marks. Therefore, the distinction pointed out by Sh. Bansal is of little help to the defendant.

(11) IN IA -No. 7562/96 filed for vacation of the ex parte ad interim injunction, defendant has alleged that the medicine prepared by it under the said trade mark is mainly for export purpose. During the course of arguments Sh. Bansal extended the offer that the defendant is even ready to give an undertaking that it will not sell the said product in India. Submission made by Sh. Bansal further was that as the circulation of the plaintiffs said pharmaceutical preparation is limited to India, no deception or confusion is likely to be caused in the course of trade with respect to the sales effected outside India by the defendant. This submission, however, completely ignores the provisions contained in Section 55 (1) of the Act. Under this Section, even user of a mark in relation to goods to be exported from India is to be deemed to constitute trade mark user in India. Plaintiff, amongst others, has placed on record photostat copy of the Registration Certificate of aforesaid trade mark ALSAREX under No. 231783 as on 18th October, 1965 in clause 5. It has further filed certificate of Renewal dated 2nd December, 1986 which indicates that the said trade mark is valid for a period of 7 years beyond 18th October, 1986. Indisputably, in the application for registration of trade mark ULCEREX which came to be dismissed by the order. dated 22nd March, 1986, defendant has claimed to have used the said trade mark since 9th July, 1985 which user is much later in point of time compared to the user of trade mark ALSAREX by the plaintiff. All medicines whether they may be allopathic, ayurvedic or homeopathic are goods of the same description under the Act. Thus, the defendant by using the trade mark ULCEREX has prima facie infringed the plaintiffs registered trade mark ALSAREX within the meaning of Section 29 (1) of the Act and the plaintiff has, therefore, made out a strong prima facie case for confirming the order dated 18th July, 1996. Non-confirmation of the said order is likely to cause irreparable injury to the plaintiff. Obviously, balance of convenience in the matter too lies in favour of the plaintiff.

(12) FOR the foregoing discussion, IA No. 7562/96 is dismissed. IA no. 6522/96 is allowed and the said order dated. 18th July, 1996 is made absolute. No order as to costs.