Madan B. Lokur, J.

1. The Appellant is dissatisfied with an order dated 24th February, 2004 whereby an application filed by the Respondent for grant of an injunction under Order XXXIX Rules 1 and 2 of the CPC was allowed and an application filed by the Appellant under Order XXXIX Rule 4 of the CPC was dismissed.

2. The Respondent says that it is a partnership firm carrying on business since 1990 in the name of SAS Pharmaceuticals. It manufactures and markets various medicinal and Ayurvedic preparations, one of them being REGULIN. It is the registered proprietor of its carton REGULIN and REGULIN FORTE under the provisions of the Copyright Act. This design was conceived in 1990 and in the carton the word REGULIN and REGULIN FORTE have been in use for a long time. The trademark REGULIN has a unique getup, design, placement of words, colour scheme, etc. It has a high degree of recognition, reputation and goodwill and sales of this Ayurvedic medicine runs into lakhs of rupees. It is a medicine for curing menstrual disorders in ladies.

3. The allegation against the Appellant was that it has adopted a similar or identical trademark REGU-30 for the same type of medicine with a similar carton and design of packing. The intention of the Respondent, it is said, is to confuse and deceive unwary consumers by passing off its goods as those manufactured by the Respondent. In view of this, the Appellant should be injuncted from marketing REGU-30, which is deceptively similar to the Plaintiffs trademark and label REGULIN.

4. An ad interim ex parte injunction was granted by the learned trial Judge and thereafter the Appellant filed an application under Order XXXIX Rule 4 of the CPC for having the ex parte ad interim injunction vacated. By the impugned order, the application for grant of injunction as well as the application for vacation of the ex parte ad interim injunction were disposed of.

5. It was submitted by learned Counsel for the Appellant that the Respondent had sent a lawyers notice to the Appellant on or about 26th December, 2001 requiring the Appellant to cease and desist from passing off its goods as those of the Respondent. This notice was replied to by the Appellant on 4th January, 2002 denying any wrong doing. Thereafter, according to the Appellant, the Respondent kept absolutely silent until the present suit was filed on or about 13th October, 2003. The first contention of learned Counsel for the Appellant, therefore, is that because of the delay, the Respondent has given up its claim of the alleged passing off the mark REGU-30 by the Appellant.

6. The second contention of learned Counsel for the Appellant was that there was no question of passing off the goods of the Appellant as those of the Respondent. It was submitted that the cartons are completely different and there is no similarity between the words REGU-30 used by the Appellant and the words REGULIN FORTE used by the Respondent.

7. Insofar as the first submission is concerned, I think the issue is no longer res integra.

Effect of delay

8. In Dr. Ganga Prashad Gupta & Sons v. S.C. Gudimani, 1986 PTC 17 the plaintiff came to know in 1977 that the defendant was passing off its goods as those of the plaintiff. Accordingly, an appropriate notice was issued to the defendant in July 1977, but a suit for perpetual injunction was filed only in March 1980. Adverting to the delay, it was held that this might be a factor disentitling the plaintiff from obtaining a relief of rendition of accounts. However, insofar as the defendant was concerned, if he still chose to continue using the offending trademark, it was at his own risk and responsibility. In other words, delay was held as not fatal for the grant of an injunction.

9. In Hindustan Pencils Pvt. Ltd. v. India Stationery Products Co., 38 (1989) DLT 54=AIR 1990 Delhi 19 it was held that even in a case of honest concurrent user by the defendant, inordinate delay or laches may defeat a claim for damages or rendition of accounts, but the relief of injunction cannot be refused. This is because the interests of the general public have also to be kept in mind. The Court may, in appropriate cases, allow some time to the defendant to sell off its stocks of goods, but an injunction should not be denied. (I am not going into the question of acquiescence by the Respondent or dishonest user by the Appellant because both these issues were not argued in the present case, and indeed may not even arise).

10. In Colgate Palmolive Company v. Anchor Health and Beauty Care Pvt. Ltd., 107 (2003) DLT 51 [LQ/DelHC/2003/1284] =2003 (27) PTC 478 (Del.) [LQ/DelHC/2003/1284] , a notice was issued to the defendant in July 1998 but an action was brought only in 2003. It was held that delay simplicitor is not a defence; it may be relevant so far as damages are concerned and may, at the most, defeat a claim for rendition of accounts, but it cannot stand in the way of an injunction. It was said that the affected party is not supposed or expected to rush to Court immediately.

11. Reliance placed by learned Counsel for the Appellant on Aviat Chemicals Pvt. Ltd. v. Magna Laboratories (Gujarat) P. Ltd., 96 (2002) DLT 841 [LQ/DelHC/2002/168] =2002 (24) PTC 231 (Del) [LQ/DelHC/2002/168] is misplaced. In that case, the defendant had been granted a non-exclusive licence and right to use the trademark of the plaintiff. The licence was terminated in January 1999 but the defendant continued using the trademark. The plaintiff issued an appropriate notice to the defendant, but it was subsequently withdrawn after some discussions. A suit for injunction was filed in May 2001. On these facts it was held that delay defeated the right of the plaintiff to an injunction. The conclusions of the Court were based, as is apparent from the discussion in the judgment, on the principles of acquiescence and not delay and laches per se.

12. Frankly, I do not see the need to multiply citations and authorities on this subject. Suffice it to say that the accepted position in law is that delay or laches in approaching a Court for an injunction in a case of passing off is not fatal at best, the plaintiff may not be entitled to a relief of damages or rendition of accounts, but he may still be entitled to the grant of an injunction, even in a case of an honest concurrent user. A defence of estoppel by acquiescence is to be distinguished from a defence that by delay the mark has become publici juris (Kerlys Law of Trade Marks and Trade Names, Thirteenth edition, page 391 paragraph 13.157). One of the factors that may tilt the scales in favour of a grant of a temporary injunction in such cases would be, as pointed out by McCarthy in Trade-marks and Unfair Competition, the protection required to be given to the general public who have a right not to be deceived or confused. This is only a factor to be considered by a Court and is not an absolute proposition; otherwise, in cases of acquiescence, it may be interpreted to mean that the contesting parties have acquiesced in deceiving or confusing the general public, which obviously cannot be accepted. Consequently, the contention of learned Counsel for the Appellant based on delay is rejected.

Question of passing off

13. The meat of the matter really is whether REGU-30 can be passed off as REGULIN FORTE. According to learned Counsel for the Respondent, the answer to this must be in the affirmative and he places reliance on a series of orders passed by this Court in suits instituted by his client against other parties in which the use of deceptively marks was injuncted as per the table below:

Name of DefendantSuit No. Offending Trade MarkEx partejunction onFinal result

Dawn Pharmaceuticals1107/2000 REGULANE-FORTE25.5.2000 Consent decree on14.9.2000

Supermax Pharma1425/2000 REGULARINE 6.7.2000 Consent decree on 25.8.2000

Ancient Herbs Ltd.1759/2000 REGULAR 10.8.2000 Consent decree on 13.9.2001

Pee Kay Pharma1806/2000 REGULINE 18.8.2000 Consent decree on 29.4.2003

Trishul Ayurvedic Pharma2059/2000 REBULIN 15.9.2000 Decreed on 21.10.2003

Eastern Health Care708/2003 REGULAR M - FORTE - 28.3.2003 Pending

Push Pharmaceuticals1822/2003 REZOLIN 28.10.2003 Pending





14. Learned Counsel also placed reliance on a series of decisions of various Courts, including the Supreme Court, where a trademark of a medicinal preparation of the defendant was held to be deceptively similar to that of the plaintiff, as per the table below.

Plaintiffs mark Defendants mark Decision Citation

Glucovita

Gluvita

Corn Products Refining Co.v. Shangrila Food Products Ltd., 1960 (1) SCR 968 [LQ/SC/1959/182]

Amritdhara

Lakshmandhara

Amritdhara Pharmacyv. Satya Deo, AIR 1963 SC 449 [LQ/SC/1962/200]

Calmpose

Calmprose

Ranbaxy Laboratoriesv. Dua Pharmaceuticals, 36 (1988) DLT 133 [LQ/DelHC/1987/543] =AIR 1989 Delhi 44

Diclomol

Dicamol

Win-Medicare Ltd.v. Dua Pharmaceuticals, 69 (1997) DLT 755=1998 PTC (18)

Pioz

Piozed

USV Ltd.v. IPCA Laboratories Ltd., 2003 (26) PTC 21 (Mad.) [LQ/MadHC/2002/583]

Biocillin

Bicillin

Bio-chem Pharmaceutical Industriesv. Astron Pharmaceuticals, 102 (2003) DLT 840 [LQ/DelHC/2003/45] =2003 (26) PTC 200 (Del.) [LQ/DelHC/2003/45]

Voveran

Noveran

Novartis AGv. Ishwar Lal Jain, 2003 (26) PTC 226 (Del.) [LQ/DelHC/2002/1996]

Trovirex

Zovirex

Torrent Pharmaceuticalsv. The Wellcome Fundation Ltd., 2002 (24) PTC 580 (Guj.) [LQ/GujHC/2001/425]

Destrol

Destro

Vijay Groverv. Biocure Laboratories, 95 (2002) DLT 614 [LQ/DelHC/2001/2034] =II (2001) CLT 124 (SC)==2002 (24) PTC 438 (Del.) [LQ/DelHC/2001/2034]

Efacid

Efcid

Strassenburg Pharmaceuticals Ltd.v. Himalay Drug Co., 2002 (24) PTC 441 (Cal.)

Spoxin

Supaxin

Medley Laboratoriesv. Alkem Laboratories, 2002 (25) PTC 592 (Bom.) [LQ/BomHC/2002/573] (DB)

Refirm

Reform

Sanat Products Ltd.v. Glade Drugs & Nutraceuticals Pvt. Ltd., 2003 (27) PTC 525 (Del.) [LQ/DelHC/2003/1325] .

15. The principles laid down in these (and other) decisions were revisited by the august Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., III (2001) SLT 225=(2001) 5 SCC 73 [LQ/SC/2001/847] with particular reference to medicinal products. In that case, the two competing products were Falcigo and Falcitab. The august Supreme Court declined to interfere with an order refusing to grant an injunction because there may be possibility of evidence being required on merits of the case and directions were given for speedy trial of the suit. However, the august Supreme Court laid down the factors to be considered while deciding the question of deceptive similarity of goods. These were:

(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 (sic) 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.

16. The august Supreme Court analysed its previous decisions, namely, National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd., AIR 1959 SC 357; Corn Products Refining Co. v. Shangrila Food Products Ltd., 1960 (1) SCR 968 [LQ/SC/1959/182] ; Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 [LQ/SC/1962/200] ; Durga Dutt Sharma v. Navaratna Phamaceutical Laboratories, AIR 1965 SC 980 [LQ/SC/1964/275] ; F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. (P) Ltd., (1969) 2 SCC 716 [LQ/SC/1969/320] and S.M. Dyechem v. Cadbury (India) Ltd., V (2000) SLT 44=III (2000) CLT 11 (SC)=(2000) 5 SCC 573 [LQ/SC/2000/941] in arriving at the above conclusions.

17. Learned Counsel for the Appellant relied upon F. Hoffmann-La Roche wherein it was held that DROPOVIT is not deceptively similar to PROTOVIT. I am afraid this decision does help learned Counsel for several reasons. What weighed with the august Supreme Court in arriving at the conclusion that it did were several factors, none of which are present in the case under discussion:

The last three letters VIT are a well-known and common abbreviation used in the pharmaceutical trade to denote vitamin preparations.

There is no visual or phonetic similarity between the two competing words.

Since the goods are sold on a prescription, the chance of confusion is remote the vendor being a licensed dealer of the goods.

There re as many as 57 trademarks in the Register of Trade Marks with the suffix VIT making it publici juris.

The offending mark DROPOVIT is not a descriptive word but an invented word.

18. Learned Counsel also placed reliance on S.B.L. Ltd. v. Himalaya Drug Co., AIR 1998 Delhi 126 in which the competing marks were Liv 52 of the plaintiff and LIV-T of the defendant. The factors taken into consideration (all, except some dissimilarity in the cartons, are not present in the instant case) while declining an injunction were:

There are about 100 drugs in the market using the abbreviation Liv of the word liver (an organ of the body) as a constituent name of medicinal or pharmaceutical preparations either as a suffix or a prefix.

Liv is a generic term and publici juris. It is descriptive in nature and common in usage.

There is no phonetic similarity between the competing marks.

Customers can distinguish the names of the medicines by ignoring Liv and assigning weight to the suffix or prefix so as to associate the name with the manufacturer.

The medicine is sold on prescription and by licensed dealers, well versed in the field and having knowledge of medicines.

The cartons and packaging of each of the two products has unique placement of lettering and other distinguishing features constituting an original artistic work.

19. Applying the law laid down and considering the Cadila factors in relation to the facts of the present case, it will be seen that there is some visual and phonetic similarity between the words REGULIN FORTE and REGU-30. It is not as if the competing marks are identical in fact they need not be identical; all that is required to confuse or mislead an unwary customer is a deceptively similar mark. The commonality, both visual and phonetic of the first four letters of both words is enough to confuse or mislead an unwary customer. These letters do not form a word that is publici juris or is invented. The similarity is not coincidental. It is true that the cartons of both products are dissimilar, both in size and design, though the wheel which is prominently inscribed in REGU-30 is identical to the wheel prominently inscribed in REGULIN FORTE (and this is now admitted); the price of the goods is also not comparable; but as pointed out by the august Supreme Court in Cadila (paragraph 32 of the Report):

Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products.

20. In the present case, the drug is meant for curing menstrual disorders in ladies, not only in cities but also in the villages. The trade channels are the same as are consumers of the product. The class of purchasers includes semi-literate or illiterate ladies who may confuse one product with the other. I was informed by learned Counsels that this product does not require a prescription for its purchase. Consequently, the medicine can easily be purchased from over the counter. Additionally, there is material to show, prima facie, that the goods of the Respondent entered the market earlier than the goods of the Appellant. From the number of proceedings that the Respondent has had to initiate to fend off market predators, it is quite clear that the goods of the Respondent are popular and have a ready and apparently large market share, tempting others to pass off their goods as those of the Respondent. This should be discouraged.

21. On an overall consideration of the relevant factors, I am not inclined to disturb the rather well considered order of the learned Additional District Judge. A strong prima facie case of passing off has been made out by the Respondent. The balance of convenience, therefore, lies in favour of the prayer of the Respondent being granted. Since the goods are a medicinal preparation, irreparable damage may be caused not only to the Respondent but also to an unwary customer by the use of REGU-30.

22. The appeal is accordingly dismissed. The Respondent will be entitled to costs of Rs. 10,000/-.