Johann A. Wulfing v. Chemical Industrial And Pharmaceutical Laboratories Limited

Lentin, J:

1. Is the word CIPLAMIHA deceptively similar to COMPLAMINA Such is the essential nature of the controversy before us.

2. The appellants carry on business inter alia as manufacturers of medicinal and pharmaceutical preparations. One of their trade mark is COMPLAMINA registered on 5th May 1960 for a medicinal and pharmaceutical preparation which according to the appellants is sold in India since 1966 in the form of ampoules (under doctors prescription) and tablets (across the counter) for the treatment of vascular disorders. The registration is subsisting. On 17th July 1972, the 1st respondent-Company (referred to hereafter as the respondents) who carry on like business, filed an application for registration in their the mark CIPLAMINA proposed to be used by them in Part A Class 5 in respect of pharmaceutical and medicinal preparation. The appellants filed their notice of opposition inter alia on the ground that the respondents proposed mark was deceptively similar to their registered mark. The respondents filed their Counter-statement. Evidence by way of affidavits was filed by both parties. However, before us neither party relied on them and rightly so, because nothing really turns on them. By a speaking order, the Joint Registrar held inter alia that the respondents proposed mark was deceptively similar to the appellants registered mark. This finding was reversed by the learned single Judge. However, on Counsels statement made before him, the learned single Judge limited the registration of the respondents proposed mark to Part A class 5 in respect of pharmaceutical and medicinal preparations covered by Schedule H and L of the Drugs and Cosmetic Rules, 1945. Hence, the present appeal.

3. In inviting us to hold the respondents mark CIPLAMINA is deceptively similar to the appellants mark COMPLAMINA, it was urged by the appellants learned Counsel Mr. Tulzapurkar that the reversal of the Joint Registrars finding by the learned single Judge was totally unwarranted. According to Mr. Tulzapurkar, the learned single Judge had adopted a microscopic method of approach instead of considering the totality of marks and thereby did not apply the correct principle of comparison. Reliance was placed on Re: Bailey (1935) 52 R.P.C. 136, where it was held that before disturbing the Registrars decision, the Court must be satisfied that be acted on some wrong principle or took into consideration something which he ought not to have done or omitted to take into consideration what he should have done. It was further held that it was not permissible to divide and split up the words to ascertain similarity or to take part of the words and compare it with a part of the other word, each word must be considered as a whole and compared with the other word as a whole; it is wrong to take a portion of the word and the say because that portion differs from the corresponding portion of the other word, there is no sufficient similarity to cause confusion. According to Mr. Tulzapurkar, the learned single Judge had committed the very errors cautioned against in Re:Bailey. He also relied on the observation in Eno v. Dunn, (1890) 15 A.C. 252 at pp. 257-261, quoted with approval by the House of Lords in Aristoc v. Rysta (1975) 62 R.P.C. 65, 72 as under :

Little assistance, therefore, 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,

Reliance was also placed on Corn Product v. Shangrila A.I.R. (1960) Supreme Court 142, where holding that Glucovita and Gluvita were deceptively similar, it was observed that overall structural and phonetic similarity in the 2 marks must be considered the matter being one of first impression from the point of view of a person of average intelligence and imperfect recollection.

4. We are inn respectful agreement with the principles laid down by these decisions. But we do not subscribed to Mr. Tulzapurkars criticism of the principle applied by the learned single Judge. On the phonetic aspect this is what the learned single Judge says: -

In my view, CIPLAMINA is not phonetically similar to COMPLAMINA . In the pronunciation of the word COMPLAMINA two aspects assume significance: first, the C in COMPLAMINA is pronounced, as is a k and secondly, the MP is where the emphasis lies. The C in CIPLAMINA is pronounced cee and i should is soft. The probabilities are that the "i sound would not be misheard as an om sound.

The learned single Judge has thus endevoured to emphasis that the two words are in the normally was spoken and pronounced differently. The pronunciation of the prefix COM in COMPLAMINA is absolutely different from the pronunciation of the prefix CIP in CIPLAMINA, eradicating likelihood of deception or confusion. An average person asking for COMPLAMINA would in normal manner and without conscious effort emphasise the prefix CIP, whereas an average person asking for CIPLAMINA would is normal manner and without conscious effort emphasise the prefix CIP. The totally different manner in which these 2 words are pronounced in normal and natural way of speech, must necessarily eliminate any phonetic similarity between the two. More on this a little later when we come to the reasoning of the Joint Registrar.

5. Regarding the visual aspect, this is what the learned single Judge says ;

..The visual impression of COMPLAMINA is materially different from that of CIPLAMINA. The fact that the two words start with the letter C and end with the letters MINA does not make nay substantial difference to the fact that the dominant impression of the word the COMPLAMINA is the distinctive m of the first syllable which is Missing in the word CIPLAMINA.

We add a rider. The visual impression in totally different. No person, be he layman of average intelligence and imperfect recollection or a medical practitioner, is likely to confuse one for the other or be but in a state of wonderment. The visual impressions of the 2 words is not conductive to any such confusion. We say no, not by placing the 2 words side by side or by a microscopic examination of the 2 words but from purely a visual test of the 2 words seen as a whole on first impression. The salient feature is the distinctive COM and the distinctive CIP and not the words following them.

6. We do not agree with the Joint Registrar when he says, (a) that the two words have a strong visual resemblance as they both being with the identical letter C and have the identical dominant 7 lettered suffix PLAMINA and differ only in a minor respect viz. that in the place of the letters OM in COMPLAMINA the letter I is in CIPLAMINA, (b) that the cumulative effect is that these 2 words produce the same optical and mental impression, (c) that even phonetically the 2 words are closely similar as the long suffix PLAMINA which is common to them controls the sound of both of them, and (d) people do not always speak in a distinct manner.

7. The method of approach is, to start with, the microscopic method of comparison with the marks, placed side by side. Such approach had repeatedly been condemned in various decisions F. Hoffmann v. Geoffrey Manners, A.I.R. 1970 Supreme Court 2062, being one, where the Supreme Court rejected the contention that Dropovit and Protovit were likely to deceive or cause confusion. In the present matter, the joint Registrars emphasis on the starting letter C in both the words, does not take into account the total phonetic dissimilarity between the 2 words, namely that the very same C is pronounced entirely differently in both the words, inasmuch as in COMPLAMINA the starting C is pronounced K unlike in CIPLAMINA where the starting C is pronounced as written. In both the words it is not the suffix that is the controlling sound. It is the dispute COM and CIP (the one pronounced KOM and the other as written) that is the controlling sound and it is that which makes all the difference. The first syllable of a word mark is generally the most important, as there is a tendency of person using the English language to slur the terminations of words. (Kerlys Law of Trade Marks, 11 Edition page 416). In Re: Bayer Products (1947) 64 R.P.C. 125, it was held that Diasil and Alasil were not deceptively similar or likely to cause confusion where the first two syllables are different there is little likelihood of confusion. So was it observed by the Division Bench of the Madras High Court in (Mount Mettur v. Ortha Corporation A.I.R. 1975 Mad 74 [LQ/MadHC/1974/91] . While holding that UTOGYNOL and ORTHOGYNOL were not deceptively similar.

8. The court is not concerned with hypothetical possibilities but with the ordinary practical business probabilities having regard to the circumstances of the case. (F. Hoffmann Roche v. Sanitex Chemical Industries, 67 BomLR. 729) [LQ/BomHC/1962/168] . In the present case all things considered, (visually and phonetically), we do not see any real tangible danger of confusion in the mind of the public which will lead to confusion in the goods. (Pianotist case, 23 R.P.C. 774 at p. 777).

9. Mr. Tulzapurkar urged that even if the marks are held not to be deceptively similar, discretion must under section 18(4) be exercised against the respondent as they have not disclosed for what purpose they will use the mark, On behalf of the respondents a statement was made by their learned Counsel that the mark will be used for pharmaceutical and medicinal anti-leprosy preparation in any form covered by Schedule H of the Drugs and Cosmetic Rules, 1945 to that Mr. Tulzapurkar raises a query. What happens, he asks if the respondents market their antileprosy preparation in capsule form and confusion is caused with the appellants tablets which are sold across the counter or the appellants ampoules which are sold on doctors prescription Would not, he asks, the respondents anti-leprosy preparations be confused for the appellants preparations of vascular disorders To that and, reliance was placed by Mr. Tulzapurkar on Himalaya Drug Co. v. Warner-Lanbert, 73 Bom.L.R. 528 and Sterwin v. Brocade Ltd. (1979) R.P.C. 481.

10. The apprehensions voiced by Mr. Tulzapurkar are somewhat strained and his reliance on those cases misplaced. In Himalaya Drug case, in the peculiar circumstances of that case, discretion under section 18 was exercised because the 2 pharmaceutical preparations were an antithesis of each other, one being a depressant and the other a stimulant resulting in possibility of confusion of the public mind. In the Sterwin case while there was no actual likelihood of confusion in relation to the 2 product as presently marketed, viz. DANOL (for ulcers in liquid form), there was on the defendants own admission a likelihood of confusion and deception resulting from misreading or misspelling the 2 words DANOL and DE-NOL when the letter product was marketed in solid form. There was also evidence that if the wrong prescription was supplied to the patient the effect on him might be extremely serious.

11. In the present case, firstly there is no deceptive similarity between the 2 marks. And the statement made by the respondents learned Counsel must surely place any apprehension, real of fancied, beyond the pale of controversy.

12. It is alleged that doctors are notoriously lax in their calligraphy. Perhaps Mr. Tulzapurkar might care to attribute to the medical and allied fraternity a greater sense of responsibility than what he is instructed to give them credit for.

13. In the result the appeal is dismissed with costs.

14. The respondents shall use their mark CIPLAMINA for pharmaceutical and medicinal anti-leprosy preparations in any form covered by Schedule H of the Drugs and Cosmetic Rules, 1945. The registration of the respondents proposed mark shall be limited to Part A Class 5 in respect of pharmaceutical and medical anti-leprosy preparations in any from covered by Schedule H of the Drugs and Cosmetic Rules, 1945.

15 The Prothonotary and Senior master is requested to send a copy of this Judgment to the Registrar for requisite a ction.

16. On Mr. Tulzapurkars application operation of the order stayed for a period of 6 weeks from today.