1. The Plaintiff has filed the present Suit against the Defendants inter alia, for infringement of their registered trademark ANTI-THYROX and also, passing off in respect of their registered mark ANTI-THYROX and their unregistered trademark THYROX. By the present Notice of Motion, the Plaintiff has sought an order of injunction against the Defendants from manufacturing and marketing any medicinal preparation/product by using the mark LETHYROX.

2. Briefly set out, the facts in the matter are as under:

3. The Plaintiff is inter alia engaged in the business of manufacturing and sale of pharmaceutical preparations. According to the Plaintiff, the Plaintiff is a well known manufacturer of and dealer in pharmaceuticals and medicinal preparations and enjoys a very good reputation for its products because of its excellent quality and efficacy. The products manufactured by the Plaintiff enjoy and command a good reputation among the doctors, chemists and the public in general, and its products are sold all over the country. The products manufactured by the Plaintiff are also exported to many foreign countries. Thus the Plaintiff has acquired excellent popularity across the country, as well as throughout the world.

4. Defendant No.1 has claimed to be one of the fastest growing pharmaceutical companies in the domestic market, ranking 13th in the domestic formulations market, as per the Report of IMS Health India, Secondary Stockist Audit (SSA), December 2010. The Defendant No.1s success and incessant growth lies in clinical execution of successful and strategic moves made in the areas of manufacturing, R & D, Biotechnology and global operations over three decades. According to the Defendant No.1, it is one of the leading players in chronic therapy areas, also having its presence in the Central Nervous System (CNS), Cardiovascular System (CVS), diabetology, gastroenterology and pain management, gynaecology, infertility and respiratory care, etc. The Defendant No.1 is known in the market as one of the leaders in manufacture of medicinal and pharmaceutical products using state of the art manufacturing facilities and other infrastructure, having national and international accreditations such as USFDA, MHRA, MCC, TGA, etc. Defendant No.1 is having an approximate turnover of Rs. 1828 crores for the financial year ended 31st March, 2011. The Defendant No.1 holds more than 1250 + live trade mark registrations for its products in more than 50 countries across the globe with a strong presence in Latin America, USA, Canada, South Africa, Europe and Australia. On the domestic front, Defendant No. 1 has an extensive marketing and distribution coverage, through 33 exclusive and dedicated sales depots and has established relationships with more than 3600 stockists and more than 1,40,000 retailers. Defendant No.1 has a dedicated sales team of 2700 + covering more than 1,50,000 medical practitioners, including specialists from different therapy areas. Defendant No.1 has already launched 3 NDDS products in India using patented technology.

5. The composition of the Plaintiffs product THYROX includes Thyroxin Sodium. THYROX is used to treat a condition where the thyroid gland does not produce enough thyroid hormone and ANTI-THYROX is used in the management of thyroid disease. Both the products are used to treat thyroid related conditions.

6. According to the Plaintiff, in the year 1995, the Plaintiff honestly conceived and adopted the trade mark THYROX and ANTI THYROX for its medicinal preparations. The Plaintiff is the Proprietor of the trademarks THYROX and ANTI THYROX. The said trademarks have been continuously, extensively� nd exclusively used by the Plaintiff for their medicinal preparations under the marks THYROX and ANTI THYROX all over India and the world.

7. The Plaintiff has filed an application for registration of its trademark THYROX under No. 727722 on 19th September 1996 in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002 (“Rules”) read with the Trade Marks Act, 1999 (“the Act”). The said application is pending registration and the opposition is filed therein on 17th February, 2003. The Plaintiff has filed an application for registration of the trade mark ANTI THYROX under No. 1499142 on 27th October 2006 in Class 5 of the Fourth Schedule to the Rules read with the Act. The said trademark is registered on 21st December 2010.

8. According to the Plaintiff, on account of the intrinsic quality and efficacy of the said medicinal preparations bearing the Plaintiffs marks THYROX and ANTI THYROX, the care and skill used in marketing the same, the labour, efforts and money expended by it in promoting the sales, the Plaintiff has built up a large and valuable reputation for the aforesaid medicinal preparations sold under the trade mark THYROX and ANTI THYROX, and the same have come to be associated exclusively with the Plaintiff by the members of the trade and public. The sales figures of the products under the trademarks THYROX and ANTI THYROX for the period 2004-2005 to 2010-2011 are annexed as Exhibit-F to the Plaint.

9. According to the Plaintiff, in or about the last week of August 2010, for the first time the Plaintiff came across the medical preparation bearing the trade mark LETHYROX manufactured by the Defendants. According to the Plaintiff, the Defendants product LETHYROX and the Plaintiffs product THYROX is used for treating the same condition of thyroid glands.

10. The Plaintiff by its notice dated 31st August 2010, after placing on record the facts of the case, called upon the Defendants to forthwith cease and desist from using the trademark LETHYROX. The Defendant No.1 replied to the said notice by its letter dated 15th September 2010 and alleged that it had honestly conceived and adopted the trademark. In the said reply, the Defendant No.1 inter alia, stated that the products bearing the name THYROX and ANTI THYROX are generic and not at all distinctive, much less inherently distinctive, capable of distinguishing the same from the products of others. The letter also alleges that the Defendants have honestly adopted the mark LETHYROX and it is an inherent distinctive mark, capable of distinguishing it from other marks.

11. The Plaintiff therefore filed the present suit on 9th March 2011 for the reliefs set out hereinabove and also took out the above Notice of Motion seeking ad-interim and interim reliefs. By an ad-interim order dated 8th June 2011, injunction as prayed for was refused. An appeal was filed impugning the order dated 8th June 2011. The said Appeal was dismissed with a direction that the Notice of Motion be heard at an early date.

12. The Learned Advocate appearing for the Plaintiff has submitted that the Plaintiff has filed the present Suit, inter alia, for passing off against the Defendants and the question that arises for consideration in a passing off action is whether the Plaintiff has established (i) reputation, (ii) misrepresentation and (iii) damage or likelihood of damage. It is submitted that the Plaintiff has produced sufficient material by way of sales figures of the products sold under the trademarks THYROX and ANTI THYROX from 2004-2005 to 2010-2011 which shows that in the year 2010-2011, the sales are in excess of Rs. 16 crores as regards the product THYROX and more than One crore as regards the product ANTI THYROX, which establishes that the Plaintiffs marks THYROX and ANTI THYROX have acquired distinctiveness and reputation and have come to be associated by the traders and members of the public exclusively with the Plaintiff.

13. It is submitted on behalf of the Plaintiff that as regards the second requirement viz. misrepresentation, the same is established since the entire mark THYROX of the Plaintiff is incorporated by the Defendants in their mark LETHYROX. There is phonetic, structural and visual similarity between the Defendants mark LETHYROX and the Plaintiffs marks THYROX and ANTI THYROX. The word THYROX is the prominent and essential feature of the Plaintiffs mark as well as the Defendants mark. For considering the deceptive similarity, the essential features are required to be compared. In the instant case, the essential features are identical.

14. As regards the damage or likelihood of damage, it is submitted that it is a settled position in law that when the Defendant is a competitor of the Plaintiff, the damage is presumed. It is submitted that as the Defendants are in direct competition with the Plaintiff, this Court will readily infer likelihood of damage to the Plaintiffs goodwill. It is submitted that it is a settled position in law, that the law presumes that if goodwill in a mans business has been interfered with by the passing off of goods, damage results therefrom and that he need not wait to show that the damage has resulted because passing off is one of the class of cases in which the law presumes that the Plaintiff has suffered damage.

15. It is next submitted on behalf of the Plaintiff that the Plaintiff is the prior adopter of the trademarks THYROX and ANTI THYROX. The Defendants have started use of the impugned trademark LETHYROX much later in 2010. The Defendants have alleged that they honestly adopted the trademark LETHYROX. It is submitted that the Defendants have not produced any material before this Court, which indicates that the Defendants took search in the Registry of Trademarks to ascertain whether the impugned mark is similar to any other existing mark. It is submitted that the Defendants adoption of the mark is not bona fide. Being in the same industry, the Defendants had actual and/or constructive notice of the Plaintiffs trade marks THYROX and ANTI THYROX, and the Plaintiffs valuable rights therein. Therefore, the use by the Defendants of the impugned trademark is dishonest and the Defendant has adopted the impugned trade mark with the deliberate object of making illegal profit and trading on the Plaintiffs reputation and goodwill.

16. In support of its contention that the impugned trademark LETHYROX is deceptively similar to the Plaintiffs trademarks THYROX and ANTI THYROX, the Plaintiff has relied on the decision of the Supreme Court in the case of CadilaHealth Care Ltd. vs. Cadila Pharmaceuticals Ltd. (2001 PTC 300 (SC)and the decisions in PidiliteIndustries Ltd. vs. S.M. Associates and others (2003 (28) PTC 193 (Bom); Pfizer Ireland Pharmaceuticals vs. Intas Pharmaceuticals and another (2004 (28) PTC 456 (Del) [LQ/DelHC/2004/311] ; GlaxoGroup Ltd. and another vs. Paun & Paum Chemicals (2003 (27) PTC 234 (Del) [LQ/DelHC/2003/823] ; Sun Pharmaceutical Industries Limited vs. Wyeth Holdings Corporation and another (2005 (30) PTC 14 (Bom) [LQ/BomHC/2004/56] (DB); Serum Institute of India Ltd. vs. Green Signal Bio Pharma Pvt. Ltd. and another (Notice of Motion No. 2696 of 2010 in Suit No. 2564 of 2010 dated 14th June, 2011)(which was upheld by the Division Bench in Appeal No. 431 of 2011 and subsequently stayed by the Honble Supreme Court of India).

17. The learned Advocate appearing for the Defendants has submitted that the Defendants products are sold under the trademark LETHYROX. The mark has been coined and adopted by Defendant No.1 from the name of the active ingredient molecule in the drug Levothyroxine/Thyroxine Sodium by deleting the letters vo and ine from the original molecule Levothyroxine. The said product is used to treat hypothyroidism.

18. It is submitted on behalf of the Defendants that when compared as a whole, the marks are not deceptively similar; the mark “THYRO” is publicijuris and there cannot be any monopoly on the use of the mark THYRO. In cases when the marks are evolved from generic drugs and/or parts of body organs, the emphasis is always on the other parts of the marks and the products are even otherwise clearly distinguishable and differentiable by their packaging, manner in which the same are written and sold etc. As regards the test for determination as to whether a mark is deceptively similar to another mark, the Learned Advocate appearing for the Defendants has relied on the decision of the Honble Supreme Court in the case of F. Hoffimannla Roche and Co. Ltd. vs. Geoffrey Manners and Co. Pvt. Ltd. (AIR 1970 SC 2062 [LQ/SC/1969/320] )and KavirajPandit Durga Dutt Sharma vs. Navratna Pharmaceuticals Laboratories (PTC (Supp) 2680 (SC). It is submitted that it is a well recognized principle that has to be taken into account in considering the possibility of confusion arising between any two trade marks, that where two marks, contain a common element, which is also contained in a number of other marks which are in use in the same market, such a common occurrence in the market tends to cause purchasers to pay more attention to the other features of the respective marks, and to distinguish between them by those marks. It is submitted that in various judgments, the Honble Supreme Court and also this Court has held that where a part of a mark is either descriptive or common to trade, greater regard is to be paid to the uncommon element in the two marks. In support of the submissions, the Learned Counsel for the Defendants has relied on the decisions in Corn Products Refining Co. vs. Shangrila Food Products Limited (AIR 1960 SC 142 [LQ/SC/1959/182] ), F. HoffmanLa Roche and Co. (supra); unreported judgment dated 12th June 2002 in the case of Bal Pharma Limited vs. Wockhardt Limited (Appeal No. 498 of 2002); J.R. Kapoor vs. Micronix India (1994 Supp (3) SCC 215).

19. It is submitted that there are various manufacturers of the Thyroxine Sodium drug in the said business, and each one of them has been using or has registered or applied for registration or is using its respective marks incorporating therein the letters THYRO. Few examples of the same are illustrated along with the name of the companies which manufacture or market the said drug at pages 14 to 16 of the affidavit-in-reply. Thus the trademark containing the letters THYRO are commonly, extensively and openly used by various manufacturers in the trade and consequently no one can claim any exclusivity in the letters THYRO, nor can the said letters be the exclusive monopoly of the Plaintiff, for the letters THYRO are derived, adopted and taken from the word Thyroid. Therefore, the word THYRO is not indicative of the origin or a product of the Plaintiff alone, but is indicative of the generic molecule and/or the part of the body for which the said drug is used.

20. It is submitted on behalf of the Defendants that even otherwise there is no likelihood of confusion. Even from the manner of representation of the rival cartons and labels, which is the main source of identifying the goods, there is no likelihood of confusion whatsoever. This is an important aspect for consideration particularly in the context of a passing of action. Even in the decision in the matter of CadilaHealth Care Ltd. (supra), the Court has not held that all these aspects are irrelevant. In fact, in the concluding paragraph of the judgment in Cadila Health Care, the Court has while setting out the various factors to be considered, also mentioned the mode of purchasing the goods and “any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks as relevant factors” for consideration. It is submitted that there is no material to suggest that the word/mark THYROX has acquired sufficient goodwill or reputation or has become distinctive of or associated exclusively with the Plaintiff. Since the ingredient of the Plaintiffs product sold under THYROX is the same as that of the Defendants product, there cannot be any disastrous consequences. There is no misrepresentation of any sort by the Defendant. There are no instances of complaints suggesting any confusion having been caused. The packaging, cartons, etc. also reduce any chances of confusion. It is submitted that the Defendant is an established player of high repute in pharmaceutical preparation and not a fly by night operator seeking to trade upon any alleged goodwill of the Plaintiff. The Defendants have been using the mark openly, honestly and bona fide.

21. It is next contended on behalf of the Defendants that the ingredients of passing off have not been established by the Plaintiff except for adducing copies of merely two invoices, both of the year 1996, no evidence of sales has been furnished by the Plaintiff. Even the Plaintiffs figures of sales produced from the year 2004 are neither certified by a Chartered Accountant nor by any authorized signatory and are not even on the Plaintiffs letterhead, thereby giving reason to doubt the credibility of the same. It is submitted that such material is therefore insufficient to prove the Plaintiffs reputation. It is submitted that the sales figures of Thyrox set out at page 33 of the Plaint are hardly substantive so as to generate any goodwill. The Defendants in support of their submissions also relied on the decisions in Schering Corporation and another vs. Messrs. United Biotech (P) Ltd. and another (Appeal No. 548 of 2007 dated 8th October 2010); Ranbaxy Laboratories Limited vs. Indohemie Health Specialities Pvt. Ltd. (2002 (24) PTC 510 [LQ/BomHC/2001/1117] ); Medley Pharmaceuticals Ltd. vs. Khandelwal Laboratories Ltd. (2005 (31) PTC 515 (Bom) [LQ/BomHC/2005/1635] ; Reckitt & Coleman of India Ltd. vs. Medicross Pharmaceuticals Pvt. Ltd. (PTC (supp) (1) 284 (Bom); SBL Limited vs. Himalaya Drug Co. (1997 PTC (17) (DB) Delhi 540); Unichem Laboratories Ltd. vs. Ipca Laboratories Limited and another (2011 (45) PTC 488 [LQ/BomHC/2011/170] ); Astrazeneca UK Limited and another vs. Orchid Chemicals & Pharmaceuticals Ltd. (2007 (34) PTC 469 (DB) (Del); and Biofarma vs. Sanjay Medical Stores (1997 PTC (17) 355 (Del).

22. The Learned Advocate appearing for the Defendants distinguished the judgments relied upon by the Plaintiff as follows:

(i) The decision in the case of PidiliteIndustries Ltd. (Supra) relates to infringement of copyright in addition to infringement of trade mark and it was the similarity of the rival artworks which weighed heavily in the Learned Judges mind in holding dishonesty in adoption and granting injunction.

(ii) The decision in the case of Pfizer Ireland Pharmaceuticals (Supra) pertains to a case of an internationally renowned trade mark wherein the Plaintiff had established international transborder reputation. There was difference of only one alphabet found within the rival marks. Both the marks began with the same letter and ended with the same. There were no prefix additions which had a prominent pronunciation such as Le in the present case. The same is not the position in the present case.

(iii) The facts in the case of GlaxoGroup Ltd. (Supra) are different to the extent that there the Court was finally deciding a suit wherein the Defendant had been proceeded ex parte and the averments made in the Plaint were not rebutted by the Defendant therein.

(iv) The decision in the case of Sun Pharmaceutical Industries Ltd. (Supra) has no application to the facts of the present case as there the learned Judges held in para 30 of the said judgment that there was structural and visual similarity in the rival marks PACITANE and PARKITANE. The learned Judges also held that the first syllable and the last syllable were identical in both the marks. This is clearly not the case in the present case. Further, there was no prefix with a prominent and distinguishable pronunciation Le as in the present case.

(v) The facts in the case of Serum Institute of India (Supra) enumerated by the Plaintiff in para 2.6.10 of its submissions are not applicable to the present case for there the marks were identical viz. ONCO BCG and BCG ONCO. Same is not the position herein. Also the Defendant in that case failed to furnish evidence of common usage of the word ONCO by others in the trade.

23. The learned Advocate appearing for the Defendants therefore submitted that the Notice of Motion be dismissed with costs.

24. In rejoinder, the Learned Advocate appearing for the Plaintiff has denied and disputed the submissions advanced on behalf of the Defendants. The learned Advocate appearing for the Plaintiff has distinguished the judgments relied upon by the Defendants as follows:

(i) The decision in the case of Schering Corporation and Anr vs. United Biotech (P) Ltd. (Supra) (Unreported judgment of this Court in Appeal No. 548 of 2007 in Notice of Motion No. 3459 of 2004 in Suit No. 3419 of 2004) pertains to drugs which are purchased in bulk by the hospitals and not by common consumers. They are therefore not sold over the counter. What weighed with the Court was the fact that the drug is administered by doctors, and only after carrying out sensitivity culture test. Therefore that was enough to rule out any possibility of confusion. However, in the present case the products are sold over the counter.

(ii) The decision in the case of UnichemLaboratories Ltd. vs. Ipca Laboratories Ltd. & Anr. (Supra) is in a case of passing off. Also, the Court had taken into consideration that the Plaintiff had suppressed vital facts from the Court.

(iii) In the case of Ranbaxy Laboratories ltd. vs. Indohemie Health Specialities Pvt. Ltd. (Supra), the basis is that the trademark has to be seen as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing mark.

(iv) In the case of Medley Pharmaceuticals Ltd. vs. Khandelwal Laboratories Ltd. (Supra), the suit filed was for passing off. Also, with respect, the Learned Judge failed to consider that the Defendant had not produced material to show that the other marks were in extensive use in the market.

(v) In the case of Bal Pharma Ltd. vs. Wockhardt Limited (Supra), the composition of both the rival products in that suit was the same. However, in the present case the composition of LETHYROX and ANTI THYROX is different. Also, the Plaintiff in that suit had made false statements.

(vi) The decision of the Honble Supreme Court in KavirajPandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories Ltd. (Supra) in fact supports the Plaintiffs case that in a suit for infringement, the Plaintiff must no doubt show that the use of the Defendants mark is likely to deceive, but where there is similarity then no further evidence is required.

(vii) The decision of the Honble Supreme Court in Corn Products Refining co. vs. Shangrila Food Products (Supra) also supports the Plaintiffs case that the Defendant is required to show extensive use of the other marks, which are present in the market.

25. The learned Advocate appearing for the Plaintiff has therefore reiterated that the above Notice of Motion be made absolute with costs.

26. I have considered the submissions and the case law advanced by the Learned Advocates appearing for the parties. The Plaintiff has a registration only in respect of the mark ANTI THYROX and not the word / mark THYROX. The Defendants products are sold under the mark LETHYROX. The mark has been coined and adopted by Defendant No.1 from the name of the active ingredient molecule in the drug Levothyroxine/ Thyroxine Sodium by deleting the letters vo and ine from the original molecule Levothyroxine. Since the year 2010, LETHYROX tablets of Defendant No.1, bearing the different potencies are being sold and the Defendant No.1 has done substantial business under the said trademark LETHYROX, as can be seen from Exhibit-D at page 33 of the affidavit-in-reply filed by Defendant No.1 dated 25th April 2011.

27. The Plaintiff has contended that the mark LETHYROX used by the Defendant No.1 is deceptively similar to their marks THYROX and ANTI THYROX which they have been using since 1996, whereas the Defendant No. 1 has stoutly denied the said allegation and has submitted that the test for determination of deceptive similarity is that the marks must be compared as a whole. It is also submitted that the mark THYRO is publicijuris and there cannot be any monopoly on the use of the mark THYROX. In cases when the marks are evolved from generic drugs and/or parts of body organs, the emphasis is always on the other parts/features of the marks. In various judgments, the Honble Supreme Court and also this Court has held that where a part of a mark is either descriptive or common to trade, greater regard is to be paid to the uncommon element in the two marks.

28. The Honble Supreme Court in the case of F. Hoffmann-La Roche and Co. vs. Geoffrey Manners and Co. (supra) has laid down the following tests to determine whether a mark is deceptively similar to another mark:

“The marks must be compared as a whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade marks is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.”

In the above case, the Honble Supreme Court cited with approval the following test formulated by Lord Parker in Pianotist Co. Ltd.s application (1906) 23 RPC 774).

“You must take the two words. You must judge of them, both by their look and 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 owner of the marks. By considering all those circumstances, you come to the conclusion that there will be 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 confusion in the mind of the public which will lead to confusion in the goods then you may refuse the registration, or rather you may refuse the registration in that case.”

29. In KavirajPandit Durga Dutt Sharma vs.Navaratna Pharmaceutical Laboratories (supra) the Honble Supreme Court has set out extensively the test to be applied while comparing two marks and the same reads thus:

“28. When once the use by the defendant of the mark which is claimed to infringe the plaintiffs mark is shown to be "in the course of trade” the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the, plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiffs registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words "or cause confusion" introduce any element which is not already covered by the words "likely to deceive" and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words "likely to deceive". But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiffs mark. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.

30. In my view, when compared as a whole, the trademark LETHYROX of the Defendants is distinct and different visually, phonetically and structurally from the Plaintiffs registered trademark ANTI THYROX or the Plaintiffs mark THYROX. The Plaintiffs registered trademark ANTI THYROX when written, pronounced or even when referred to, is capable of being distinguished and differentiated from the trade mark LETHYROX of the Defendant No.1. They start with different letters. While speaking there is a great deal of emphasis on Anti in the Plaintiffs mark and Le” in the Defendants mark which clearly distinguish one from the other. Neither of the distinctive prefixes can be slurred over. As regards the Plaintiffs trade mark THYROX (which is not a registered trademark), the whole of the said trademark is taken from the ingredient molecule Thyroxine Sodium. Apart from the fact that the Plaintiff cannot have a monopoly over the words Thyro , the distinctive letters Le in the prefix of the Defendants mark LETHYROX clearly distinguishes it from the Plaintiffs mark THYROX. The word Thyro emantes from the molecule Sodium Thyroxine and also the part of the body thyroid for which the drugs are meant. The word thyro has become publicijuris and the material produced by the Defendant No. 1 shows that the market is flooded by various products incorporating the words “Thyro. As per the tests set out above, the emphasis is then on the other parts of the trademark other than the word Thyro. In view thereof, the Defendant’s trademark LETHYROX cannot be said to be identical/deceptively similar to either of the Plaintiff’s marks ANTITHYROX or THYROX. While the Defendant’s mark is a coined and an invented word independently adopted, the Plaintiffs marks ANTI THYROX and THYROX are both suggestive of the ingredient molecule Thyroxine Sodium and the ailment that it seeks to cure. The rival marks being distinguishable from each other, no cause or likelihood of any confusion or deception can ever arise by such use.

31. Similar situations were considered by various judgments of this Court, some of which are set out hereunder. As submitted by Defendant No.1, all these judgments are judgments post the judgment of the Honble Supreme Court in the case of CadilaHealth Care Ltd. (supra), relied upon by the Plaintiff and after duly considering the same.

31.1 In Bal Pharma Ltd. vs. Wockhardt Ltd. (supra), the Court while considering the case of infringement and passing off of a mark “AZIWOK” as against another mark “AZIWIN” rejected the same. The Court held that “AZI” was derived from the generic product Azithromycin and therefore other words “WOK” and “WIN” ought to be considered. On comparing the marks as a whole, the court found no deceptive similarity.

31.2 In Schering Corporation vs. M/s. United Biotech (P) Ltd. (supra), the Court while considering two marks “NETROMYCIN” and “NETMICIN” held that both the marks were derived from the common generic name Netilmicin Sulphate. It was also held that there were various other products with Mycin, Kicin and Cin. The Court rejected the challenge. The Court also held that, “When a proprietor adopts a trade mark on the basis of name of generic drug or ingredient, it will be safe to assume that he is aware that other proprietors are also likely to adopt and use similar marks in case their product is based on the same generic drug or ingredient. In such a case, the first user cannot claim exclusivity in his trade mark or in the name which is derived from the generic drug. At the most such proprietor can claim exclusivity in those added features which differentiates his trade mark from the name of the generic drug or ingredient. When two trade marks are coined from the same generic drug or ingredient, there are bound to be similarities between the two and in such a case, even if the differences between the two trademarks are minor or small, then also at least at the prima facie stage no injunction can be granted.” This judgment in paragraph 12 also deals with and distinguishes the judgment in Cadila. The clear dictum of the said judgment on law cannot be diluted by the fact that in that case the drugs were bulk drugs and administered by doctors. This was only an additional factor considered.

31.3 In Ranbaxy Laboratories Ltd. vs. Indohemie Health Specialities Pvt. Ltd. (supra), the Court while considering the case of infringement and passing off of pharmaceutical products marketed under the mark “ZANOCIN” as against another mark “ZENOXIM” rejected the same. The Court held that the marks were derived from the name of a basic drug and that when compared as a whole, the marks were not deceptively similar. The Court also considered the colour, size of tablets, wrappers and cartons to hold that there was no possibility of confusion being caused.

31.4 In Medley Pharmaceuticals Ltd. vs. Khandelwal Laboratories Ltd. (supra), the Court while considering the rival marks “CEFI” and “CEFO” held that they are derived from the drug Cefixime and also that “Cef” was common to trade. On the consideration of the same, the Court held that there was no deceptive similarity.

31.5 In Reckitt & Coleman of India Ltd. vs. Medicross Pharmaceuticals Pvt. Ltd. (supra), the rival marks were DISPRIN and MEDISPRIN. The Honble Court held that on the basis of the prefix ME, the product is capable of being distinguished from the other. The marks were held to be visually, phonetically and structurally different from one another.

31.6 In F. Hoffmann-La Roche & Co. Ltd. vs. Geoffrey Manners & Co. (P) Ltd. (supra), the Supreme Court while considering the marks Dropovit and Protovit held that “Vit being descriptive, considering Dropo & Proto”, the marks were not deceptively similar.

31.7 In SBL Limited vs. Himalaya Drug. Co. (supra), the Court while considering an action for infringement and passing off of the mark “LIVT” by the rival mark “LIV.62” held that LIV was an abbreviation for liver and had been used in various products for the treatment of liver related ailments and therefore LIV had become publicijuris. The challenge was rejected.

31.8 In J.R. Kapoor vs. Micronix India (supra), the Honble Supreme Court while dealing with the rival marks MICROTEL” and “MICRONIX” held that the word “Micro” is descriptive of microchip technology and that the word “tel” and “nix” being totally dissimilar are not likely to cause any confusion. The Court also considered the manner in which the names were written and the other surrounding circumstances.

31.9 In UnichemLaboratories Ltd. vs. Ipca Laboratories Ltd. and another (supra), the Court while considering the rival marks LORAM” and “SALORAM” held that there was no likelihood of deception. The Court also held that the word “LORAM” was derived from its main molecule. The test of deceptive similarity would still be relevant in the present case irrespective of whether the said case was one for passing off action. Further, in the present case, the Plaintiffs have also based their case on passing off.

31.10 In the case of AstrazenecaUK Ltd. and another vs. Orchid Chemicals & Pharmaceuticals Ltd. (supra), the Honble Supreme Court while dealing with the rival marks MEROMER and MERONEM held that the prefix “Mero” was publicisejuris since it arose from the generic drug and comparing the marks as a whole, the Court found that they were not deceptively similar.

31.11 In Biofarmavs. Sanjay Medical Stores (supra), the Delhi High Court while dealing with the rival marks trivedon and flaredon held that since the marks start with distinct dissimilarities so far as the first syllable is concerned, there was no similarity between the mark.

32. In the above circumstances, I am of the view that the mark LETHYROX of Defendant No.1 is not deceptively similar to the Plaintiffs marks THYROX and ANTI THYROX. The Defendants having coined and invented their mark from the invented molecule, the adoption of the said mark by the Defendants appears to be honest, independent and bona fide.

33. Apart from the fact that the marks are distinct and different, even otherwise the Plaintiffs have not established the ingredients of passing off action. Except for adducing copies of only two invoices, both for the year 1996, no evidence of sales has been furnished by the Plaintiff. As submitted on behalf of the Defendant No. 1, even the Plaintiffs figures of sales produced from the year 2004 are neither certified by a Chartered Accountant, nor by any authorized signatory, and are not even on the Plaintiffs letterhead. The sales figures of THYROX set out at page 33 of the Plaint are hardly substantive so as to generate any goodwill. No case of misrepresentation of any sort by the Defendant No. 1 is also established. The rival packets placed for consideration before the Court also do not make out any case for confusion. There are no instances of any complaints being made suggesting any confusion having been caused. Since the ingredients of the Plaintiffs products sold under THYROX is the same as that of the Defendant’s products, there cannot be any disastrous consequences. The submission of the Plaintiff that the Defendants have not established extensive use of the other products is also incorrect. The same is set out extensively in the affidavit in sur-rejoinder read with Exhibit-M at page 197, wherein the sales figures of various other products derived from a licensed software IMS Plus have been set out. The case law relied upon by the Plaintiff is also as set out hereinabove, correctly distinguished on behalf of the Defendant No.1.

34. In the circumstances, no interim relief as sought by the Plaintiff in the Notice of Motion is granted and the Notice of Motion is dismissed. However, the hearing of the Suit is expedited. The Defendants to file their Written Statement on or before 15th June 2013. Place the matter for framing of issues on 18th June 2013.