D.K. DESHMUKH, J.

1. This Notice of Motion has been taken out by the plaintiff. The plaintiff and the defendant are companies incorporated under the Companies Act and manufacture and market medical and pharmaceutical preparation. According to the plaintiff, the trade mark ZANOCIN was coined and invented by its employees. The said trade-mark has been used by the plaintiff for several years in respect of a broad spectrum antibacterial preparation. Zanocin contains as an active ingredient "Offoxacin". The trade-mark Zanocin is registered in Class 5 under the Trade and Merchandise Act as on 11-7-1988 in respect of pharmaceutical and medicinal preparations for human and veterinary use. The said trade-mark has been renewed and is valid and subsisting. The product has been widely promoted and has become very popular and the trade mark is associated with the plaintiff alone. The defendant has adopted a deceptively similar trade-mark ZENOXIM in respect of a medicinal preparation. The plaintiff on becoming aware of the adoption of the said trade mark by the defendant, issued ceased and desist notice dated 27-8-1999. The defendant has, thus, infringed the trade mark of the plaintiff; by dishonestly adopting a deceptively similar mark and has tried to pass off its goods as that of the plaintiff. The plaintiff, therefore, claims a decree of perpetual injunction restraining the defendant from using the trade mark Zenoxim. It claims temporary injunction in the same terms by this Notice of Motion. This Court by order dated 14-12-1999, has declined to grant ad interim injunction in favour of the plaintiff.

2.The Notice of Motion is opposed by the defendant. According to the defendant, it has adopted the trade-mark Zenoxim since February, 1999. It has coined the mark Zenoxim by taking the letter "Oxim" from the generic name "Cefuroxime". It is submitted that the plaintiff has also coined its mark by taking the suffix "O-cin" from the generic name "Ofloxacin" and adding the prefix "Zan" thereto. It is submitted that marks of the plaintiff and the defendant have been coined by deriving words from the basic drugs of both the products. It is denied that there is any similarity between the two marks. It is submitted that the defendant adopted the mark after taking search of the trade-mark registry to find out whether there are any conflicting marks. The adoption of the mark by the defendant is honest.

3.The defendant further submits that the defendants product ZENOXIM contains "Cefuroxime Axetil" as an active ingredient and belongs to "Cephalosporin" category of antibiotics. The plaintiffs product ZANOCIN contains "Ofloxacin" as an active ingredient and belongs to "Fluroquinolone" class of anti bacterial agents. The product ZENOXIM is intended for the treatment of respiratory infection where as the product ZANOCIN is for the treatment of urinary tract/skin infections. Therefore, the use of the rival products is totally different. Both the products are Schedule "H" drugs and are required to be sold against doctors prescription and only by licensed chemists. In the circumstances, the confusion in the course of trade between the rival products is impossible. The type of product, its get-up, packing, the requirement of Doctors prescription and all the relevant surrounding circumstances totally rule out any possibility or likelihood of confusion. In fact, there has not been a single instance of confusion in the course of trade as the defendants trade mark ZENOXIM is neither identical with nor deceptively similar to the trade mark ZANOCIN. The plaintiffs are selling their product under the trade mark ZANOCIN in carton/blister pack, where as the defendants are selling their product under the trade mark ZENOXIM in strips pack. The packing layout, letter press, design, get-up of the defendants product are also totally different. The added matters are sufficient to distinguish the defendants goods from the plaintiffs goods. The use of the mark ZENOXIM does not amount to misrepresentation in the course of trade so as to deceive or cause confusion to prospective consumers or ultimate consumers or calculated misuse the alleged business or goodwill or cause any damages to the plaintiffs business. Thus, the question of any passing off also does not arise. As the price of the defendants product is higher than that of the plaintiffs product this also rules out any confusion/deception or any intention to do so. The mark Zenoxim is phonetically, visually and structurally different from that of the plaintiffs mark Zanocin. The suffix "Cin" or "O-cin" is common to the trade and on the register of Trade Marks having the same suffix. The prefix "Zan" or "Zano" and the suffix "O-cin" or "Cin" are common to the trade and on the register of Trade Marks having the same prefix and suffix.

4.The learned Counsel for the plaintiff submits that the mark of the defendant is deceptively similar to the registered trade mark of the plaintiff both phonetically and visually. He submits that the enquiry in to the question whether the two marks are deceptively similar or not is to be made from the point of view of the purchaser of the product. He submits that an unwary purchaser of average intelligence and imperfect recollection would not split the name in to its component parts and consider the etymological meaning thereof. Relying on the judgment of the Supreme Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 P.T.C. 541(S.C.), he submits that in so far as the trade mark in respect of medicinal products are concerned, in public interest, lesser degree of proof showing confusing similarity is required.

5.The learned Counsel for the defendant, on the other hand, submits that it is not even the case of the plaintiff that the two marks are identical, but according to the plaintiff the mark of the defendant is deceptively similar to the trade mark of the plaintiff, therefore, the question that arises is whether the defendant is selling his goods so marked as to be designed or calculated to lead purchaser to believe that they are the plaintiffs goods. He submits that the very fact that the two medicines are used for treating different ailments, both the names are derived from the basic drugs used and that both the drugs are schedule "H" drugs and can be sold by persons or institution which are licenced under statute to dispense drugs rule out any possibility of there being any design or calculation on the part of the defendant to confuse the purchaser while adopting the mark. He relies on the judgment of the Supreme Court in the case of Rustom and Hornby Ltd. v. Zamindara Engineering Co., A.I.R. 1970 S.C. 1649 the judgment of the Delhi High Court in the case of S.B.L. Limited v. Himalaya Drug Co., A.I.R. 1998 Delhi 126, two judgments of this Court in the case of Chemical Industrial and Pharmaceutical Laboratories Ltd. v. A. Wulfing and another, 1979 I.P.L.R. 193 and J.A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Ltd. 1984 I.P.L.R. 26 and a judgment of the Delhi High Court in the case of M/s. Panacea Biotec Ltd. v. M/s. Recon Ltd., 1996 P.T.C. 16.

6.He further submits that the defendant has produced material on record to show that these marks are common to the trade, therefore, the plaintiff cannot claim exclusive right. The get up of the carton, in which the two medicines are packed, are different, the size and other features of the medicines are different. The price of the medicines of the defendant is much higher than that of the plaintiff. All these differentiate features clearly rule out any possibility of confusion or deception.

7.The learned Counsel for the plaintiff submits that though both the marks have some letters from the name of the basic drug, the name of the basic drugs are substantially different from the two marks. He submits that the defendant has not produced any evidence on record to establish that the marks which are relied on by the defendant to content that the mark of the plaintiff is common to the trade. He relies on a judgment of the Supreme Court in the case of Corn Products Refining Co. v. Shangrila Food Products Ltd., A.I.R. 1960 S.C. 142.

8.Now, the products to which this suit relates are medicinal preparations. It is common ground that the composition of the two products is totally different. They are prescribed for treating different ailments. Therefore, any intention or design on the part of the defendant to so name its product as can be passed of as the product of the plaintiff has to be ruled out. Still, an enquiry has to be made, whether, due to the similarity in the two marks, the purchaser is likely to be confused. Thus, the first question to be considered is whether there is deceptive similarity in the two marks. So far as this aspect of the matter is concerned, in so far medicinal preparations are concerned, the judgment of the Supreme Court in the case of Cadila Health Care referred to above has brought about a marked change in the existing law about the approach that the Court has to adopt. Following observations from the judgment are pertinent:-

"26. It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal.

27. As far as the present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.

28. .............The defendant concedes that physicians and pharmacists are not infallible but urges that the members of these professions are carefully trained to detect difference in the characteristics of pharmaceutical products. While this is doubtless true it does (sic) not open the door to the adoption by manufacturers of medicines of trade marks or names which would be confusingly similar to anyone not exercising such great case. For physicians and pharmacists are human and in common with the rest of mankind are subject to human frailties. In the field of medicinal remedies the courts may not speculate as to whether there is a probability of confusion between similar names. If there is a possibility of such confusion in the case of medicines public policy requires that the use of the confusingly similar name be enjoined.

32. 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. Drugs are poisons, not sweets, confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Nothing the frailty of human nature and the pressures placed by society on doctors, there should be as many clear indicators as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals, drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade Marks, 3rd Edn. para 23.12 of which reads as under :-

"The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints."

33. The decision of English courts would be relevant in a country where literacy is high and the marks used are in the language which the purchaser can understand. While English cases may be relevant in understanding the essential features of trade mark law but when we are dealing with the sale of consumer items in India you have to see and bear in mind the difference in situation between England and India. Can English principles apply in their entirety in India with no regard to India conditions We think not. In a country like India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiffs goods seems to overlook the ground realities in India. While examining such cases in India, what has to be kept in mind is the purchaser of such goods in Indian who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the defendant is of such a nature as is likely to cause an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case."

9.It is clear from the observations of the Supreme Court quoted above that the test to be adopted by the Court in considering the question whether the two competing marks are deceptively similar or not is whether an ordinary consumer would be confused to take one product for the other because of the similarity of the marks and other surrounding factors. The Supreme Court has also observed that the Court has to keep in mind that an ordinary Indian consumer may have absolutely no knowledge of English language. It is, therefore, obvious that as both the marks are written in English language and Roman script, visual similarity or absence of visual similarity of the two marks is not of much consequence. So far as the aspect of phonetic similarity is concerned, the mark of the plaintiff is Zanocin and the mark of the defendant is Zenoxim. Now comparing these two marks phonetically, so far as the prefix "Zan" and "Zen" are concerned, they appear to be phonetically similar, however suffix "Ocin" and "Oxim" can not be said to be so. The distinguishing feature, in my opinion, is the sound of the letter "C" in the mark of the plaintiff and the sound of the letter "X" in the mark of the defendant. The letter "C" in the mark of the plaintiff is pronounced as "Cee" or like letter "CEE" in Devnagri script and the letter "X" in the mark of the defendant is pronounced as letter "JHA" or "SHRA" in Devnagri script. The sound of the two crucial letters in the two marks are distinct and different. It is to be seen that a learned Single Judge of this Court in the judgment in the case of Chemical Industrial referred to above considered the phonetic similarity between two marks "Ciplamina" and "Complamina" and though the letter "C" was common in both the marks it was held that due to the manner in which that letter is pronounced the possibility of any phonetic similarity was ruled out. In an appeal from that judgment the Division Bench of this Court has observed thus:-

"4. We are in respectful agreement with the principles laid down by these decisions. But we do not subscribe to Mr. Tulzapurkars criticism of the principles 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 pronounciation 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 sound is soft. The probabilities are that the i sound would not be misheard as an om sound".

The learned Single Judge has thus endeavoured to emphasise that the two words are in the normally way, spoken and pronounced differently. The pronounciation of the prefix "COM" in COMPLAMINA is absolutely different from the pronounciation 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 "COM", whereas an average person asking for CIPLAMINA would in 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."

In my opinion, therefore, in the present case it can safely be said that phonetically the two marks cannot be said to be deceptively similar.

10.The Supreme Court in its judgment in the case of Cadila referred to above, has also laid down that while considering the possibility of the mark of the defendant causing confusion in the mind of an ordinary consumer, other surrounding factors are also be taken in to account. To my mind, these factors would be the colour, size and shape of the tablets, the colour, size and shape of the wrappers used and the colour, size and shape and design of the cartons used by the two parties. The plaintiff is selling its product under the trade-mark "Zanocin" in carton/blister pack, whereas, the defendant is selling its product under the trade-mark "Zenoxim" in strip pack. The size of the tablets of the parties is totally different. The packing that is used by the two parties is totally different and the difference is such as would be obvious even to a person of average intelligence and imperfect recollection. The design, colour combination and size of the cartons in which the two medicines are sold are also totally different. It is common ground before me that there is a vast difference in the price of the two medicines. The surrounding factors thus indicate that there is no possibility of any confusion being caused.

11.One more aspect that, in my opinion, is to be considered is that the basic drug used by the plaintiff is "Ofloxacin". Their mark is "Zanocin". It is clear that the mark of the plaintiff is substantially derived from name of the basic drug used by them. Similarly, the basic drug used by the defendant is "Cefuroxime". Their mark is "Zenoxim". It is the case of the defendant that its mark is substantially derived from the name of the basic drug used by it. Thus, the marks adopted by both the parties are derived from the name of the basic drug that is used by them. The marks are thus, descriptive in nature being indicative of the composition of the medicine. The Delhi High Court has considered this aspect in its judgment in the case of M/s. Panacea Biotec Ltd. v. M/s. Recon Ltd., 1996 P.T.C. 16 and has observed thus :-

"6. From a comparison of the two it is clear that the first three letters of the trade mark of the plaintiff have been taken from the name of the drug "Nimesulide". Suffix of the trade mark of the plaintiff consists of four letters which are ULID and the same have also been taken from the last but four letters of the name of the same drug. It appears that the plaintiff has adopted trade mark NIMULID in view of its new similarity or resemblance with the name of the basic drug Nimesulide. In fact NIMULID can be taken as short from for the generic name of the drug Nimesulide. The trade mark of the plaintiff is descriptive in nature indicate of the composition of the medicine. It is well settled that no person can claim exclusive use of the descriptive and generic terms. It would be highly undesirable to confer on one trader proprietary right over the use of an ordinary, descriptive or a generic word indicative of the nature, composition and quality of the goods as that would give him complete monopoly to exploit the word to the exclusion of others. A word which can qualify as an exclusive mark of a trader must be distinctive so as to distinguish his goods from those of the other persons.

10. Having regard to the aforesaid decisions, I am of the opinion that where a party uses a descriptive and generic term for its trade mark it cannot be given sole right to use the same to the exclusion of other traders. Commonly used words in trade and descriptive of the nature or colour or laudatory of the quality of the goods cannot be permitted to be monopolised. Similarly, in the case of a medicine, if a manufacturer uses the name of the basic drug of which it is constituted, no monopoly can be claimed by him in regard to the use of the same as his trade mark."

I find myself in respectful agreement with the above view.

12.For all these reasons, I do not find, at least prima facie, that the defendant has either infringed the registered trade mark of the plaintiff or that it has tried to pass off its product as that of the plaintiff. The defendant has been marketing its product from February, 1999. From the material produced on record, it appears that the sale of the product is extensive and considerable. The plaintiff has not produced any material on record to show that from February 1999 till today there has been a single case of actual confusion caused by the mark of the defendant. Taking overall view of the matter, in my opinion, therefore, it will not be in the interest of justice to grant interim injunction, which the plaintiff seeks by this Notice of Motion. The learned Counsel for the defendant has stated that the defendant is willing to keep accounts of the impugned mark. The Notice of Motion is disposed of. The defendant is directed to maintain accounts of the manufacture and sale of the product which is subject matter of the suit, during the pendency of the suit.

Certified copy expedited.