T.S. Thakur, J.

1. Common questions arise for consideration in these two applications for ad interim injunction. The same were, Therefore, heard together and shall stand disposed of by this common order.

2. plaintiff No. 1 in both these suits is a US based company while plaintiff No. 2 is a leading global pharmaceutical enterprise. Both the plaintiffs boast of a long history of distinguished track record as research oriented pharmaceutical enterprises. plaintiff No. 3 in the two suits is a Indian Company originally incorporated under the name `Sealer (India) Ltd. subsequently changed to RPG Life sciences Limited. This company is a multi-product, multi-location and well-diversified company authorised to use LOMOTIL trademark and trade dress in India.

3. The defendants in the two suits are Indian companies. While defendant in CS(OS) 1004/2003 was for some time a distributor of the plaintiffs products including the medicine LOMOTIL, the defendant in CS(OS) 1630/2002 is engaged in manufacturing and marketing medicinal and pharmaceutical preparations. The plaintiffs case as set out in the two suits is that plaintiff No. 1 is the original proprietor of what is described as famous anti-diarrhoea drug LOMOTIL. This product is a mixture of two other drugs, i.e., atropine sulphate and diphenoxylate hydrochloride which together form an anti-diarrhoea medication. The trademark LOMOTIL is, according to the plaintiff, an invented word and unique and distinctive of the product it is associated with. The plaintiff alleges that the said trademark is derived from the term Low Motility because it controls diarrhoea by decreasing intestinal motility. The medicine is available in two forms, namely, tablets and syrup and is sold in a characteristic blue colour strip using a particular red coloured font and design. These features, according to the plaintiffs, form an important intellectual property and are integral in identifying the product. Together with the trademark LOMOTIL, the distinguishing features are the repository of the plaintiffs goodwill and reputation. The plaintiffs also claim a copyright in the layout, get up, packaging, colour scheme, lettering and all other artistic work in their product LOMOTIL.

4. The plaintiffs further case is that plaintiff No. 3 is authorised to use the trademark in India and is duly registered as such in the Trade Marks Registry. The requisite licenses from Governmental authorities have also been issued in favor of the said plaintiff, copies whereof have been enclosed with the plaint together with the user agreement executed between the plaintiffs. The plaintiffs allege that LOMOTIL has been manufactured and marketed in India since the year 1983-84 and that because of the effort made by the plaintiff over long years, LOMOTIL has come to be associated with the highest standards of quality control and effectiveness. The plaint goes on to state that because of the long standing and extensive use of the distinctive get up, packaging and colour scheme, LOMOTIL has colloquially come to be known as "neeli patti",

5. The plaintiffs grievance in the two suits is that the defendants have started manufacturing and marketing a deceptively similar product for alleviation of diarrhea with the same composition as that of the plaintiffs product. These products are being marketed by defendant in CS(OS) No. 1630/2002 under the trademark MICROTIL and under trademark MONOTIL by defendant in CS(OS) No. 1004/2003. The trade dress, get up, design, packaging, colour scheme, lettering and all other artistic work in respect of both these products, namely, MICROTIL and MONOTIL is, according to the plaintiff, so deceptive and similar to that of LOMOTIL, that customers of ordinary intelligence and education are bound to be deceived into believing that these products are the same as LOMOTIL manufactured and marketed by the plaintiffs. The adoption and user of what, according to the plaintiffs, is a deceptively similar trademark by the defendants is according to the averments made in the plaint, dishonest and fraudulent and meant to earn profits by passing off and enable others to pass off the products of the defendants as those of the plaintiffs. The plaintiffs argue that the defendants cannot on the well-settled principle of commercial law appropriate or take unfair advantage of the labour of the plaintiffs and the investment made by them in creating and building the asset. The defendants cannot without exerting their own labour climb on the shoulder of the plaintiffs and achieve a head start while causing injury to them. The fact that the drugs in question are Schedule-H drugs which can be sold only on a doctors prescription is, according to the plaintiffs, of little importance keeping in view the ground reality in this country that pharmaceutical preparations are freely available over the counter notwithstanding the fact that some of such preparations can be issued only on a doctors prescription or are meant for use only by hospitals.

6. The plaintiffs, have in the above backdrop, prayed for a decree for perpetual injunction restraining the defendants, their proprietors, distributors, licensees and franchises from using the impugned trademark MICROTIL or MONOTIL which according to the plaintiffs are deceptively similar to the trademark LOMOTIL of the plaintiffs. The plaintiffs have in both these suits filed separate applications for ad interim injunction in which by two different orders passed by this Court on 11th October, 2002 and 26th May, 2003, the defendants in the suits have been restrained from marketing, selling and distributing their pharmaceutical products under the trademarks MICROTIL and MONOTIL respectively.

7. The defendants have filed their written statements and also applications for vacation of the injunction granted ex-parte. The defendants case in essence is that the trademarks being used by them for marketing their products do not have any similarity with the trademark of the plaintiffs, nor is there any question of their products being passed off as that of the plaintiffs. The trademarks are, according to the defendants, phonetically different and since the drugs in question are all Schedule-H drugs which can be sold only in retail on the prescription of a registered medical practitioner, the question of any deception on account of the similarity and colour combination or other features does not arise. The allegation that the adoption of the trademarks by the defendants is dishonest or fraudulent has been stoutly denied.

8. I have heard learned counsel for the parties at some length and perused the record. The short question that falls for determination at this stage is whether there is any deceptive similarity between LOMOTIL manufactured and marketed by the plaintiffs on the one hand and MICROTIL and MONOTIL manufactured and sold by the defendants on the other. The test to be applied in such cases are fairly well-settled by a long line of the decisions of the Supreme Court. It is, in my opinion, unnecessary to burden this judgment with references in detail to all such decisions. Reference to the decision of the Apex Court in F. Hoffimann-LA Roche and Co. Ltd. v. Geoffiey Manners and Co. Pvt. Ltd., : [1970]2SCR213 , Com Products v. Shangrila Food Products, : [1960]1SCR968 should suffice. Reference may also be made to Raghuvir v. Saraswati, : AIR1984Bom284 .

9. In Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., : [2001]2SCR743 , the Supreme Court reviewed the entire case law on the subject and identified the factors that need to be considered in an action for passing off. The Court observed:

"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 are 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 resemblance 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 the 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.

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

10. Let us apply the above test in the instant cases. Similarity in the nature, character and performance of the product is a factor that is relevant upon which considerable emphasis was laid by counsel for the plaintiffs. It is true that the composition of the products manufactured by the parties, their character and performance may subject to minor variations, be similar. In fairness to counsel for the plaintiff, it must be stated that there was no real grievance made in regard to the quality of the products manufactured by the defendants nor is there any basis for this Court to hold that the products manufactured by the defendants regardless of the trade name/mark under which it is sold are in any manner inferior to that of the plaintiff. That there is a similarity in the nature, character and performance of the products in these cases is, Therefore, a factor that can be said to have been established. That, however, is not the solitary factor or test to be applied in cases of passing off. What is the nature of the market and how similar are the products to each other in terms of their resemblance phonetically or otherwise is also to be seen. The plaintiffs case in this regard is that LOMOTIL is an invented word with its genesis in Low Motility. The argument is that since the drug decreases intestinal motility, any medication that causes such decrease in motility could be given a short name LOMOTIL. The defendants have, on the other hand, explained the reason for their products being sold under the trademark MICROTIL and MONOT1L. MICROTIL is a trademark which, according to the defendant in CS(OS) No. 1630/2002 is relatable to the defendants name out of which the first five syllables have been taken and joined with three syllables, namely, til taken from motility to invent the trademark MICROTIL.

11. Insofar as defendant in CS(OS) No. 1004/2003 is concerned, the trademark MONOTIL was conceived and invented by the said defendant and is in the process of being registered with the Registrar of Trade Marks.

12. All the three parties in these two suits rely upon Motility as the basis for the use of three syllables til at the end of their trademark. Just as the plaintiff claims that the term til in EOMOTIL has relevance or reference to Motility, so also the defendants in the two suits rely upon use of the said three syllables as an Explanation for use in their trademarks. The similarity in the last three syllables, Therefore, loses its significance for it cannot be said that anyone can acquire any right over the use of the said three syllables which are themselves derived from Motility and which expression, in turn, refers to the movement of bowels.

13. This is so particularly because a large number of drugs in the market use the suffix til such a Maxitil, Loftil, Peristil, Zemetil, Tobitil, Cortil, Stemitil and Otil. This makes it clear that the suffix til cannot be the deciding factor for deciding whether or not Microtil, Monotil and Lomotil are similar. What we are then left with is the use of Mono in one case and Micro in the other as against Lomo in the trademark used by the plaintiffs. There is no phonetic or other similarity in these three words much less a similarity that is deceptive and capable of creating any confusion. The test for determining the similarity in two words relevant to an infringement action was first stated by Parker, J in Pianotist application (1906) 23 RPC 774, in the following words, which were approved by the Supreme Court in Amritdhara Pharmacy v. Satya Deo Gupta, : [1963]2SCR484 :

"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."

14. Reference may also be made at this stage to the decision of the Supreme Court in Roche & Co. v. G. Mannaers & Co., : [1970]2SCR213 where the question was whether Dropovit and Protovit were deceptively similar. The Supreme Court held that vit is a well-known abbreviation used in pharmaceutical trade to denote vitamin preparation and that the terminal syllable vit in the two marks was both descriptive and common to trade. The Court observed:

"If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the others. The letters D and P in DROPOVIT and the corresponding letters P and T in PROTOVIT cannot possibly be slurred over in pronunciation and the words are so dis-similar that there is no reasonable probability of confusion between the words either from visual or phonetic point of view."

15. In Biofarma and Anr. v. Sanjay Medical Store and Anr. 1998 (18) PTC 671 (Del) , a Division Bench of this Court was examining whether Trivedon and Flavedon were deceptively similar. Lahoti, J. as this Lordship then was held that since the opening syllables of the two competing trademarks were completely different and distinct, the degree of resemblance between Trivedon and Flavedon phonetically and visually was also dissimilar. Reference was also made to the fact that several drugs ended with suffix Vedone/Vidone which showed that the use of such suffixes is common in trade.

16. In G.D. `Sealer & Co. v. Medigraphs Pharmaceuticals Pvt. Ltd. 1998 (18) PTC 634, the plaintiff had sought an injunction against an anti-diarrhoea medicine sold under the trademark Slotil on the ground that the same was deceptively similar to its product Monotil. The Bombay High Court refused an injunction on the ground that while the suffix til was common between the two trademarks and number of other medicinal preparations in the market, the comparison between Lomo and Slo did not show any similarity so as to be legally actionable.

17. It is, in the light of the above decisions, reasonable to hold that there is no phonetic or visual similarity between Lomotil, trademark of the plaintiff and Microtil and Monotil used by the defendants in the two suits.

18. The mode of purchasing the medicines is also a significant aspect that needs to be borne in mind while deciding the question of injunction. The drugs in question are all Schedule-H drugs which can be sold across the counter only on the prescription of a registered medical practitioner or meant for use in hospitals. If that be so as it indeed is, the possibility of any confusion or deception taking place has to be viewed from a different standpoint altogether. The chances of a medical practitioner getting misled or deceived by the so called deceptive trademarks used by the manufacturers are very remote. So also a druggist qualified to sell drugs and other medicinal preparations cannot pass off one drug for the other contrary to what the doctor has prescribed. The chances of one preparation being passed off for the other thus get considerably reduced in the process which fact has to be taken into consideration while examining whether a case for injunction is made out.

19. Learned counsel for the plaintiff all the same argued that the ground realities in a country like India must be taken into consideration while applying the principles enunciated by the pronouncements by both English Courts as well by those in this country. He urged that looking to the prevailing illiteracy in the country, it may not be realistic to apply the principles of English law regarding dissimilarity of marks or the customers discerning the distinguishing characteristics. In support, he placed considerable reliance upon the following passage appearing in the Judgment of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., : [2001]2SCR743 :

"The decisions of English Courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India, you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to Indian conditions

We think not. 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 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, 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 spellings may sound phonetically the same. While dealing with cases relating to passing off, once 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 tests to be applied for adjudging the violation of trademark law may not be on a 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."

(emphasis supplied)

20. It was contended by learned counsel for the plaintiff that the copyright and the layout, get up, packaging, colour scheme, lettering and all other artistic work in the product Lomotil vested in the plaintiff company which the defendants had adopted in each and every detail, thereby creating a situation where an ordinary consumer possessed of ordinary intelligence and education was bound to be deceived into believing that the medicine that he is purchasing is Lomotil manufactured by the plaintiff. The least which the defendants were required to do, Therefore, was to ensure that the layout, get up, packaging, colour scheme lettering and other artistic work in their product is not copied or made to look deceptively similar as that used in the plaintiffs product.

21. There is considerable merit in the submission made by the plaintiff. The ground realities in a country like ours cannot be lost sight off. The illiteracy prevailing in the country and the fact that medicines are often purchased and sold across the counters even without proper prescriptions from the doctors is a phenomenon that cannot be denied. It is also not possible to deny that the get up, layout, trade dress, packaging, colour scheme, lettering, font size of the defendants products are similar to that of the plaintiffs product. The possibility of defendants products being sold and purchased as that of the plaintiffs cannot Therefore be excluded leave alone with any amount of certainty. Confronted with its position, learned counsel for the defendants in CS(OS) No. 1004/2002 submitted that the injunction already granted by this Court could be modified to the extent that defendants could market their goods under their respective trademarks without making use of trade dress, colour scheme, packaging, lettering and other artistic work used by the plaintiff for its product Lomotil. Learned counsel for the defendant in the connected suit, when asked to make a similar statement, was unable to do so immediately and had sought time to seek instructions. No statement, however, has been made by the said defendant on the subject which may imply that the said defendant is not ready to agree to the said condition. Keeping, however, the similarity in the matter of layout, get up, packaging, colour scheme, font size of the letters and other artistic work in the plaintiffs product Lomotil and that of the defendants in both the cases the manufacturer and sale of the laters product should be subject to their modifying the trade dress of their products so that the same do not look deceptively similar to that of the plaintiffs product.

22. In the result, the interim orders of injunction already issued shall stand modified to the extent that the defendants shall be free to manufacture and market their products under the trademarks Microtil and Monotil, subject to the condition that the said defendants do not adopt for their products a trade dress, including lay out, get up, packaging colour scheme and lettering that is identical or deceptively similar to that used by the plaintiff for its product.

23. IAs No. 5302/2003 in CS(OS) No. 1004/2003 & 9470/2002 in CS(OS) No. 1630/2002 are with the above order disposed of and the interim orders already issued modified to that extent.