A.K. Sikri, J.

1. IA No. 1204/2006 is filed by the plaintiff under Order 39 Rules 1 and 2 of the Code of Civil Procedure seeking ad interim injunction. Vide order dated 2nd February, 2006 injunction in the following terms was granted:

After perusing the documents on record and comparing the two products of the plaintiff and that of the defendants, I am of the view that plaintiffs made out a case for ex parte ad interim injunction. The defendants, their directors, principal officers, servants, agents and representatives, etc. are restrained from manufacturing, selling, offering for sale advertising, directly or indirectly dealing in medical and pharmaceutical products BETAVAT, BETAVAT-N or CORINAL and SGS LOGO or under any other mark deceptively similar to the plaintiffs trade marks BETNOVATE, CROCIN and GSK LOGO till the next date of hearing.

On service of notice on the defendants the defendants has filed IA No. 4487/2006 under Order 39 Rule 4, CPC praying that the aforesaid injunction be vacated. That is why both the applications were heard together and are being disposed of by this common order.

2. The plaintiff has filed the instant suit for permanent injunction restraining infringement of trade mark, passing off, infringement of copyright, damages, delivery up, etc. against the defendants. The plaintiff submits that the present suit concerns the plaintiffs statutory and common law rights over the trade marks BETNOVATE and CROCIN, their packaging and the heart shaped device encompassing the letters GSK. The plaintiff has averred that the plaintiffs are the members of Glaxosmithkline group of companies of which Glaxosmithkline Plc. in conjunction with their affiliate and subsidiaries under the Glaxosmithkline group of companies, they are engaged in the business of manufacturing and marketing of a wide range of pharmaceutical and medicinal preparations and health care products of the highest quality. Some of the well known products are BETNOVATE, CROCIN, IODEX, ENO, ZINETAC, CEFTUM, etc. This suit involves two products, namely, BETNOVATE and CROCIN and in respect of both these products the plaintiffs are the owners of the registered marks. The defendants are manufacturing these very two products under the trade marks which are deceptively similar to the plaintiffs trade marks. As against BETNOVATE the defendants have adopted the mark BETAVAT. In respect of second product the defendants mark is CROCIN which is stated to be deceptively similar to that of the plaintiffs trade mark CROCIN. It is further averred that outer carton and tube packaging of BETNOVATE is also copied by the defendants in respect of its over all colour scheme and logo. Same is the position about the packaging of CORINAL which is similar to that of CROCIN in its packaging and colour.

3. The plaintiff submits that the plaintiff is the registered proprietor of the trade mark BETNOVATE bearing number 219258 in Class 5. It is stated that the mark BETNOVATE is an invented word having no dictionary meaning and thus having the highest degree of distinctiveness, connoting the goods of the plaintiffs exclusively. The details of the world-wide product sales for BETNOVATE product are mentioned in para 9 of the plaint. The sales figures of the plaintiffs BETNOVATE products in India and the statement of promotional expenses incurred by the plaintiff No. 2 which includes the mark BETNOVATE are mentioned in para 10 of the plaint. The plaintiffs sell six variants of BETNOVATE skin cream. The composition of the same are mentioned in para 12 of the plaint. The essential features of the outer packaging of BETNOVATE-N have been mentioned in para 13 of the plaint which are........

4. The plaintiff is also the registered proprietor of the trade mark CROCIN. The details of the CROCIN registrations in favour of the plaintiffs in respect of the mark CROCIN are mentioned in para 15 of the plaint. It is claimed that the mark CROCIN is an invented word, having no dictionary meaning and has the highest degree of distinctiveness. The sales figures and promotional expenditure for CROCIN 500 and CROCIN pain relief are mentioned in para 18 of the plaint. The essential features of the plaintiffs packaging bearing the mark CROCIN are narrated as under:

20. CROCIN Packaging:

To market its products, the plaintiffs have been using a blue blister pack with a silver foil reverse and a Swirl device around the initial C in the mark CROCIN. The blister pack bears the catch phrase Effective pain relief, gentle on stomach. Additionally the plaintiffs have been using a distinctive dispenser pack to market its products. Plaintiff No. 4 is the owner of the artistic work in the blue blister strip, dispenser pack and the Swirl device within the meaning of Section 2(c) of the Copyright Act, 1957.

21. The plaintiffs re-designed the blue blister packaging (and dispenser packaging for CROCIN) in the year 2002 and launched CROCIN blue strip containing 15 tablets per strip. This was the first time a paracetamol preparation was launched in the markets containing 15 tablets per strip. A sample strip of plaintiffs new CROCIN blue blister packaging and dispenser packaging is being filed in these proceedings:

Essential features of CROCIN blister blue strip packaging

* Use of blue colour on front panel of the blue strip packaging.

* Use of blue and white colour combination on the back side of the strip packaging.

* Use of Swirl Crescent Device surrounding the alphabet C in the mark CROCIN; with the word Analgesic underneath it.

* Use of the catch phrase EFFECTIVE PAIN RELIEF, GENTLE ON STOMACH.

* Use of the GSK logo (GSK written in white within a heart-shaped device) alongside the mark CROCIN.

* Other general information on dosage, patient advice and precautions to be taken.

* Round shape of 15 tablets aligned in 3 x 5 formation.

In addition to being the licensed user of the registered trade mark CROCIN owned by plaintiff No. 3, plaintiff No. 4 is the owner of copyright in the artistic work comprising CROCIN blue blister packaging. The above device/label was created by the advertising agency, M/s. Ogilvy and Mather for and on behalf of plaintiff No. 4 in the month of July, 2002; for which they were appropriately remunerated.

5. The plaintiff also submits that in the course of its international business operations, the defendants, including their subsidiary and affiliate companies under the Glaxosmithkline group of companies, use the GSK logo (a heart shaped device with the alphabets GSK written in small letters within the device) to indicate the source and origin of their goods. The plaintiffs adopted the GSK logo in the year 2001.

6. The allegation is during the third week of November 2005, the plaintiffs were alerted to the sale of skin creams by the defendants under the mark BETAVATE-N in a packaging identical to that used by the plaintiffs in respect of their BETNOVATE product. It is claimed that the defendants also manufacture analgesic preparations under the mark CORINAL in a packaging that is indistinguishable to that used by the plaintiffs in respect of their CROCIN products.

7. It is also claimed that the defendants mark BETAVAT is deceptively similar to the plaintiffs well known and registered mark BETNOVATE. The defendants have removed the alphabet E and replaced the alphabets NO in the mark BETNOVATE with A to come up with the mark BETAVAT. It is submitted that the defendants use of a deceptively similar mark BETAVAT clearly amounts to infringement of the mark BETNOVATE registered under No. 219258. Following similarities in the plaintiffs and the defendants outer packaging are brought out:

(para 13 of the plaint).

8. It is further submitted that the defendants are also manufacturing and marketing preparations under a deceptively similar mark CORINAL along with a packaging that is virtually identical to the plaintiffs wellknown CROCIN preparations. The similarities in the plaintiffs CROCIN strip/packaging and the defendants packaging which are highlighted are:

Plaintiffs CROCIN PackagingDefendants CORINAL Packaging

Use of blue colour on the front side of the packaging.Use of blue colour on the front side of the packaging.

15 round tablets aligned in a 3 x 5 formation.15 round tablets aligned in a 3 x 5 formation.

Use of blue and white colour combination on the back side.Use of blue and white colour combination on the back side.

Use of the words PARACETAMOL TABLETS I.P. 500 mg in block letters in white colour in blue background.Use of the words PARACETAMOL TABLETWS I.P. 500 mg in block letters in white colour in blue background.

Use of the mark CROCIN with the Swirl Device above the word Analgesic.Use of the mark CORINAL with an inverted Swirl Device above the word Analgesic.

Use of the expression EFFECTIVE PAIN RELIEF. GENTLE ON STOMACH in block letters.Use of the expression EFFECTIVE PAIN RELIEF. GENTLE ON STOMACH in block letters.

Use of bar-codes with the number to indicate the origin of goods from the plaintiffs.Unauthorised use of identical bar codes without the number.

Other declarations, advice precautions and general information.Virtually identical declarations, advice precautions and general information.

Use of the GSK logoUse of virtually identical logo with the words SGS written within a heart-shaped device.

Use of the mark CROCIN written in silver colour over a white background on the back side.Use of the mark CORINAL written in silver colour over a white background on the back side.

9. It is claimed that the defendants have also copied the plaintiffs GSK logo and have written the alphabets SGS within a heart shaped device, which is found on the back side of the CORINAL packaging. This is also virtually identical to the plaintiffs GSK logo (SGK within a heart shaped device) which is placed on the back side of the CROCIN packaging. The grievance of the plaintiff is that use of the mark BETAVAT-N by the defendants in respect of skin creams, that too in a packaging identical to that used by the plaintiff in respect of their BETNOVATE product amounts to infringement of plaintiffs trade mark. It is also contended that adoption of the mark CORINAL in respect of analgesic preparations by the defendant in a packaging that is indistinguishable to that used by the plaintiff in respect of the plaintiffs CROCIN product also amount to infringement of the plaintiffs trade mark CROCIN.

10. The defence of the defendants, on the other hand, is that the defendant No. 2 is a company which was incorporated under the Companies Act on 8th May, 2001 and right from its incorporation, it is engaged in the business of manufacturing and marketing of wide range of pharmaceuticals and medical preparations as well as health care products. It has been manufacturing and marketing various pharmaceutical products in India and amongst its various products BETAVAT, BETAVAT-N and CORINAL are the leading products which constitute almost 50% of its total turnover. Trade names of these products have been adopted bona fide without any intention of passing off their goods as that of the plaintiffs. It is the submission of the defendants that the brand name BETAVAT being used by the defendant No. 2 company for its products is neither deceptively similar nor related in any manner whatsoever with the plaintiffs mark BETAVAT and the applicant/defendants are not passing off their product as that of the plaintiffs as has been alleged by the plaintiffs. It is submitted that the defendant No. 2 company has bona fidely adopted the said word/brand. It is submitted that the word BETAVAT has been invented by the defendant No. 2 on the basis of the medical components used in the preparations, as the base ingredient comprised BETAMETHASONE VALERATE IP. It is submitted that the defendant No. 2 has adopted first four alphabets of BETAVAT i.e. BETA from BETAMETHASONE and last three alphabet i.e. VAT from VALERATE IP, which indicates key ingredients of its product. It is contended that it is the common practice in medical science for adopting the words for medicines as brand name which indicate the key ingredients used in their preparation and the defendant No. 2 company has also followed the same practice prevailing in markets in the pharmaceutical and medical field by adopting the word BETAVAT invented from the ingredient of the products for its skin cream as such the allegations made by the plaintiffs are baseless. The said word has not been adopted for passing off their goods as that of the plaintiffs company. Clarification sought to be given is that the defendant No. 2 has adopted this brand name of its product to represent the component, key ingredients in the preparation of the said cream, as two basic ingredients of the said cream are Betmethasone Valerate IP and Neomycin Sulphate IP. It is also submitted that the outer packaging used by the defendant No. 2 is entirely different from the one used by the plaintiff for its products and the following essential features of the packaging of this product are highlighted:

* The overall colour scheme is that of a white base with a combination of brand name and description matters appearing in white and black.

* The defendant No. 2 corporate name SGS appears in large bold white capital letters against a green right angled triangular background on the right hand side and placed at the bottom of the packaging. Prior to this oblique the weight of the tube appears in black in manner "15 g".

* The essential ingredients of the cream BETAMETHASONE VALERATE AND NEOMYCIN are printed in large capital letters in black at the very top of the front of the packaging. Underneath this the words `SKIN CREAM appear in smaller capital letters in black.

* Below this in large, bold, black and capital letter appears the brand name of the product i.e. BETAVAT-N.

11. It is the case of the defendants that the defendant No. 2 has been given drug licence under the brand name BETAVAT and BETAVAT-N. Further, the defendant No. 2 is using alphabet SGS as its trade mark in all the products which indicate the first word of the trade name, i.e. SGS Pharmaceuticals Pvt. Ltd. On the basis of the aforesaid submissions it is sought to explain that there is no question of infringement of trade mark or passing off as there would not be any confusion in the minds of the public as the two products of the plaintiff and that of the defendant No. 2 are entirely different.

12. At the time of arguments whereas the learned Counsel for the plaintiff, highlighting the similarities between the two products, sought to argue that the defendants were infringing trade mark of the plaintiffs product as well as copyright and it was also a case of passing off, the learned Counsel for the defendants, on the other hand, pointed out the differences in the two products on the basis of which his submission was that the case filed by the plaintiff was totally misconceived and was an attempt to wreck the business of the defendants and create its own monopoly over these two products.

13. It is not in dispute that the plaintiff is using the mark BETNOVATE in respect of skin creams for treating skin disease and related disorders for number of years and is the market leader in respect of its product. The plaintiff sells six variants of BETNOVATE skin cream with composition as outlined below:

BETNOVATEComposition

VARIANT

BETNOVATEBetamethasone Valerate

BETNOVATE-SBetamethasone Valerate and Salicylic Acid

BETNOVATE-NBetamethasone Valerate and Neomycin

BETNOVATE-CBetamethasone and Clioquinol

BETNOVATE-GMBetamethasone Valerate, Gentamicin and Niconazole Nitrate

BETNOVATE-M. . . . .

14. These variants are sold in a particular packaging. Getup, colour scheme and arrangement of features of BETNOVATE-N is as under:

Essential features of outer packaging for BETNOVATE-N

* The overall colour scheme is that of a pale green base with a combination of trade marks and descriptive matters appearing in a dark green, white and black.

* The plaintiffs corporate name Glaxosmithkline appears in large bold white letters against a dark green right-angled triangular background on the right hand side and placed at the bottom of the packaging. At the beginning of this oblique appears SGK logo (GSK written in white encompassed within an orange coloured heart-shaped device).

* The essential ingredients of the cream BETAMETHASONE VALERATE AND NEOMYCIN are printed in large dark green letters at the very top of the front of the packaging. Underneath this, the words SKIN CREAM appears in smaller dark green letters.

* Below this, in large, black letters appears in the name of the product and the trade mark BETNOVATE-N.

Essential features of BETNOVATE-N tube

* The overall colour scheme comprises a white background with a combination of trade marks and descriptive matters appearing in white, green and black.

* The plaintiffs corporate name Glaxosmithkline appears in large bold white letters against a green right-angled triangular background at the right hand side and places at the bottom of the tube in an oblique angle.

* BETAMETHASONE VALERATE AND NEOMYCIN are printed in large green letters (in bold) at the very top of the tube. Underneath this in smaller green letters appear the words SKIN CREAM (in bold).

* Below this, in large, black bold letters is written the name of the product BETNOVATE-N.

* The plaintiffs corporate name Glaxosmithkline appears in large bold letters against a dark green background on the right hand side placed at the bottom of the tube. At the beginning of the green triangle appears GSK logo (GSK written in white encompassed within a heart-shaped device).

15. Likewise, the plaintiff is using the mark CROCIN in respect of PCM tablets and suspension meant for analgesic and antipyretic purposes. This trade mark has five registrations and nine applications for registration with the Trademark Registry in Class 05 are pending. To market its products, the plaintiffs have been using a blue blister pack with a silver foil reverse and a Swirl device around the initial C in the mark CROCIN. The blister pack bears the catch phrase Effective pain relief, gentle on stomach. Additionally the plaintiffs have been using a distinctive dispenser pack to market its products. Plaintiff No. 4 is the owner of the artistic work in the blue blister strip, dispenser pack and the Swirl device within the meaning of Section 2(c) of the Copyright Act, 1957.

16. The defendant could not dispute that both the words BETNOVATE as well as CROCIN are invented words having no dictionary meaning. The plaintiff has produced documents to show long user and huge advertisement and substantial sales. Prima facie is, thus, clear that these trade marks have come to be associated with the plaintiffs and have become extremely popular all over India. Same is the position in respect of its GSK logo which is a heart shaped device with the alphabet GSK written in small letters within the device to indicate the source and origin of their goods, Glaxosmithkline Group.

17. Under Section 28 of the Trade Marks Act, 1999, a person who is the registered owner of the trade mark has the exclusive right to use the said mark and he can obtain relief in respect of infringement of trade mark in the manner provided by this Act. Section 29 of thestipulates that infringement is established if the other side uses either an identical or deceptively similar mark to the registered trade mark in such a manner as to render the use of the mark likely to be taken as being used as a trade mark. As per Section 31 of the Trade Marks Act, 1999 registration is the prima facie evidence of validity. The definition of Trade Mark is given in Section 2(m). Reading this provision with Section 2(z)(b) would clearly indicate that any word in relation to goods for the purpose of indicating a connection in the course of trade can become a trademark.

18. For comparison of the two marks, following test was approved as formulated by Lord Parker in F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manner and Co. Pvt. Ltd., reported as 1969 (2) SCC 716 [LQ/SC/1969/320] :

The test for comparison of the two word marks were formulated by Lord Parker in Pianotist Co. Ltd.s applications as follows

You must take the two words. You must judge of 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.

19. While comparing the two words on the touchstone of phonetic similarity, the answer to the question would depend on first impression for obviously a person who is familiar with both words would 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. Therefore, the little assistance is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable pronounced with the clarity to be expected from a teacher of elocution. The two marks are to be compared in totality. Stress is to be laid on common features rather than on differences in essential features, except for a passing reference to a limited extent in one case. In Cadila Health Care Ltd. (supra), the Supreme Court specifically disapproved the following observations in its earlier Two-Bench Judgment in S.M. Dyechem Ltd. v. Cadbury (India) Ltd., reported as V (2000) SLT 44=III (2000) CLT 11 (SC)=(2000) 5 SCC 573 [LQ/SC/2000/941] :

It appears to us that this Court did not have occasion to decide, as far as we are able to see, an issue where there were also differences in essential features not to consider the extent to which the differences are to be given importance over similarities. Such a question has arisen in the present case and that is why we have referred to the principles of English Law relating to differences in essential features which principles, in our opinion, are equally applicable in our country.

and in the process, remarked:

We are unable to agree with the aforesaid observations in Dyechems case (supra). As far as this Court is concerned, the decisions in the last four decades have clearly laid down that what has to be seen in the case of a passing off action is the similarity between the competing marks and to determine whether there is likelihood of deception of causing confusion. This is evident from the decisions of this Court in the cases of National Sewing Thread Co. Ltd.s case (supra), Corn Products Refining Companys case (supra), Amritdhara Pharmacys case (supra), Durga Dutt Sharmas case (supra), Hoffmann-Le Roche & Co. Ltd.s case (supra). Having come to the conclusion, in our opinion incorrectly, that the difference in essential features is relevant, this Court in Dyechems case (supra), sought to examine the difference in the two marks Piknic and Picnic. It applied three tests, they being (1) is there any special aspect of the common feature which has been copied (2) mode in which the parts are put together differently i.e. whether dissimilarity of the part or parts is enough to make the whole thing dissimilar, and (3) whether when there are common elements, should one not pay more regard to the parts which are not common, while at the same time not disregarding the common parts In examining the marks, keeping the aforesaid three tests in mind, it came to the conclusion, seeing the manner in which the two words were written and the peculiarity of the script and concluded that the above three dissimilarities have to be given more importance than the phonetic similarity or the similarity in the use of the word Picnic or Piknik.

With respect, we are unable to agree that the principle of phonetic similarity has to be jettisoned when the manner in which the competing words are written is different and the conclusion so arrived at is clearly contrary to the binding precedent of this Court in Amritdharas case (supra) where the phonetic similarity was applied by judging the two competing marks. Similarly, in Durga Dutt Sharmas case (supra), it was observed that in an action for infringement, the plaintiff must, no doubt, mark out that the use of the defendants mark is likely to deceive, but where the similarity between the plaintiffs and the defendants mark is so close either visually, phonetically or otherwise and the Court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiffs rights are violated.

20. In Cadila Health Care Ltd. (supra), it also negatived the contention based on the ground that in a Schedule H drug which can be sold only on the prescription of Doctor, there would be no scope of confusion while making following pertinent observations:

It may here be noticed that Schedule H drugs are those which can be sold by the chemist only on the prescription of the Doctor but Schedule L drugs are not sold across the counter but are sold only to the hospitals and clinics. Nevertheless, it is not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar. In Blansett Pharmeceuticals Co. v. Carmick Laboratories Inc. 25 USPQ 2nd, 1473 (TTAB 1993), it was held as under

confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed under marks which look alike and sound alike.

21. Viewing the matter in the light of aforesaid principles, I am of the prima facie view that the adoption of the trade mark BETAVAT by the defendants with substantially similar feature in respect of getup, etc. is clearly mala fide and prima facie it appears that intention was to ride on the goodwill created by the plaintiff in respect of its products BETNOVATE. Not only the adoption of name is quite similar, with substantial copy of the getup, etc., is likelihood of confusion that this product of the defendant is passed off as that of the plaintiffs. Insofar as trade mark CORINAL is concerned, the name does not appear to be confusing similar to the trade mark CROCIN, but confusion is sought to be created by adopted similar strip/packaging as that of the plaintiff. Infringement is compounded by using the logo SGS in the same manner as the plaintiffs logo GSK within a heart shaped device. Defendant No. 2 was incorporated few years ago only, i.e. in the year 2001. As per the defendants own submission, the sale of the three products which are impugned constitutes 50% of its total sale. Why the defendants would adopt as many as three trade marks, which are so clearly resembling with that of the plaintiffs and are used for same purpose, is the poser It cannot be by sheer coincidence but with obvious motive to adopt the trade marks which have close resemblance with that of the plaintiffs trade mark. Though the two marks are not identical, the plaintiff has been able to establish, prima facie, that the mark used by the defendants so nearly resemble the plaintiffs registered trademarks as is likely to deceive or cause confusion which is in relation to same goods.

22. In view of the above so-called dissimilarities which were pointed out by the defendants Counsel would be of no avail. If the two trade marks are quite similar to each other which may cause confusion in the mind of the consumer, the Court will frown at the attempt of the defendants in trying to project the dissimilarities in order to confuse the Court in believing that the two marks are different.

23. Ex parte ad interim injunction dated 2nd February, 2006 is accordingly confirmed till the disposal of the suit. It is, however, specifically added that the observations made in this judgment are tentative in nature and prima facie and shall not be taken into consideration at the time of trial of the suit. It is, however, clarified that insofar as the defendants trade mark CORINAL is concerned, it shall be entitled to use the same provided the packaging, strip and getup of the product is materially altered so as not to confuse it with the plaintiffs product CROCIN. Similarly the defendant would be entitled to use its logo/mark SGS if it changes its present manner and style which is the copy of the plaintiffs logo GSK used in a heart shaped device.

24. These applications are disposed of in the aforesaid terms.