S. Jagadeesan, J. (Chairman)

1. The appeal is directed against the order of the Assistant Registrar of Trade Marks, Ahmedabad, dated 17.7.1996.

2. The second respondent M/s. Cadila Chemicals Pvt. Ltd. filed an application No.493062 in class 5 of the Fourth Schedule of the Rules framed under the Trade and Merchandise Marks Act, 1958, on 20.6.1988 for registration of the trade mark STEMIZ word per se in respect of Pharmaceutical, Veterinary and sanitary substances, infants and invalid foods, plasters, material for bandaging, materials for stopping teeth, dental wax, disinfectants; preparations for killing weeds and destroying vermin claiming user of the mark as proposed to be used. The said mark was advertised in the Trade Marks Journal No.1089, dated 16.10.1994 at page 963. The appellants herein M/s. Ind Swift Ltd. filed their notice of opposition on 26.12.1994 stating that they are the registered proprietors in India of the trade mark consisting of word STEMIN in respect of Pharmaceutical and Medicinal preparations. The impugned mark is phonetically as well as visually similar to that of the mark of the second respondent and the goods are also of same nature, the registration of the impugned mark would cause confusion and deception and as such, it will be violative of Section 11(a), 11(e) and 12(1) of the said Act. They further stated that the registration would be violative of Section 9 and 18 (1). After the formalities were over, the matter was heard by the Assistant Registrar of Trade Marks and under the impugned order, the Assistant Registrar rejected the opposition No. AMD 846 of the appellant and accepted the application No.493062 of the second respondent under Section 12(3) of the said Act except for sale in the districts of Hoshiarpur (Punjab State), Jaipur, Udaipur, Bharatpur, Bikaner, Baran and Karouli (Rajasthan State), Indore (Madhya Pradesh State) and Ghaziabad (Uttar Pradesh State) and the Union Territory of Chandigarh and Panchkula (Haryana State), by way of filing a request on Form TM 16. This restriction was imposed on the ground that the appellant has established the trade and selling their products in the above mentioned districts.

3. Aggrieved by the same, the appellant preferred an appeal in Appeal No.12/1996 on the file of the High Court of Gujarat at Ahmedabad, which stood transferred to this Appellate Board in compliance of Section 100 of the Trade Marks Act, 1999.

4. At the outset, the learned counsel for the appellant contended that both the marks are similar and identical and there is every likelihood of creating confusion and deception by the registration of the impugned mark. Apart from that she also contended that the first respondents product is made of ASTEMIZOLE and the Central Government, by notification GSR 732 (E), dated 29.10.2002 has prohibited the manufacture, sale and distribution of the drug ASTEMIZOLE for human use with effect from 1.1.2003 and by virtue of the said notification, the second respondents product STEMIZ has been removed from the list of updated prescribers hand book. Consequently, at present the second respondent is not manufacturing any product under the disputed trade mark. But, however, she contended that the Appellate Board may consider the claim of the appellant on merits with regard to the similarity of the mark and give a decision on merits so that the second respondent can be prevented from using the mark in respect of other products.

5. The learned counsel for the second respondent, however, pleaded ignorance of the notification.

6. We have carefully considered the contentions of the learned counsel for the appellant. In view of the fact that the second respondent had been using the disputed mark STEMIZ which is almost identical to the mark of the appellant in respect of Pharmaceutical products, we are not inclined to go into the other details at this stage as we are of the view that it is totally unnecessary. The product of the appellant as well as the second respondent being pharmaceutical ones and the appellants apprehension with regard to the impugned trade mark being that the same would cause confusion and deception in the trade, we feel that we can confine with the issue involved in this case.

7. Now that, the second respondents medicinal product STEMIZ has become a banned item in view of the Government Notification No. GSR 732 (E), dated 29.10.2002, by virtue of the notification, the second respondent is effectively prevented from the manufacture of the medicinal product under the disputed mark STEMIZ. This will not absolve us from deciding the issue on merits because, if the Government withdraws the ban imposed under the said notification dated 29.10.2002, there is every possibility for the second respondent to continue the production in view of the mark being in existence in the registry of Trade Marks. Hence, it is for us to decide whether the second respondents disputed mark STEMIZ is similar to that of the appellants mark STEMIN and the same would cause confusion in the trade.

8. It is unnecessary for us to elaborate our discussion. The appellants mark is STEMIN and the second respondents mark is STEMIZ. Except the last letter Z in the disputed mark, the other letters are the same. So, how far the change in the last letter would make the product of the second respondent as distinctive and also how far it would not cause any confusion or deception in the trade. We would like to draw support from the judgment of the Supreme Court in the Cadila Health Care Limited v. Cadila Pharmaceuticals Ltd. reported in 2001 PTC 541, where it was held that the names Falcitab and Falcigo are similar and identical and the registration of the conflicting mark would cause confusion. The learned judges in the concluding paragraph of their judgment have held as under:

"35. 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 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 resembleness 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 a 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.".

9. On the above principle, if we have a look at both the marks, we are not able to differentiate to distinguish the second respondents impugned mark from that of the appellants mark. As already stated, except the last letter, the totality of the name is same. Phonetically, visually and also in writing nature, the impugned mark is identical with that the appellants mark. Both the marks being used in respect of medicinal products, no confusion or deception can be allowed however negligible it may be. The medicinal products being used for human beings in respect of their health, even the slightest confusion may become hazardous to ones life and as such, the danger is much more to human life.

10. In yet another case in Milment Oftho Industries v. Allergan Inc. reported in 2004 PTC 585, the Supreme Court has held as under:-

"9. We are in full agreement with what has been laid down by this Court. Whilst considering the possibility of likelihood of deception or confusion, in present times and particularly in the field of medicines, the Courts must also keep in mind the fact that nowadays the field of medicine is of an international character. The Court has to keep in mind the possibility that with the passage of time, some conflict may occur between the use of the mark by the Applicant in India and the user by the overseas company. The Court must ensure that public interest is in no way imperiled".

11. On the basis of the aforesaid principles and in comparison of the appellants mark with that of the impugned mark of the second respondent, we are of the view that both the marks are identical and hence the impugned mark of the second respondent cannot be registered.

12. Accordingly, the appeal is allowed. The application No.493062 of the second respondent is rejected with no order as to costs.