Badar Durrez Ahmed, J.

1. The question that arises for consideration in the present application under Order 39 Rules 1 and 2, CPC is whether the plaintiff is entitled to an interim order of injunction, inter alia, restraining the defendant from using the mark EVIT in respect of its pharmaceutical products. The plaintiffs case is that the defendants trademark EVIT is deceptively similar to the plaintiffs registered trademark ZEVIT.

2. The plaintiffs trademark ZEVIT is registered under Registration No. 452526 on 16.4.1986 in respect of pharmaceuticals, veterinary and sanitary preparations and substances. The original registration was in the name of Eskayef Ltd.The name of that company was changed to Smithkline Beecham Pharmaceuticals (India) Ltd. in the year 1994. By a Deed of Assignment dated 19.1.1998, the said registered trademark was assigned by the said Smithkline Beecham Pharmaceuticals (India) Ltd in favour of the plaintiff. It is the plaintiffs case that the trademark ZEVIT is an invented word having no dictionary meaning and thus has the highest degree of distinctiveness connoting the plaintiffs goods exclusively. According to the plaintiff, the trademark ZEVIT has been used by the plaintiff continuously, regularly and without any hindrance for the last number of years. A sample of the product was annexed as Annexure-B. It indicates that the plaintiffs product ZEVIT is a formulation which contains Zinc Sulphate Monohydrate, Vitamins B1, B2, B6, B12, Nicotinamide, Calcium Pantothenate and Vitamin C. Essentially, it is a vitamin formulation.

3. It is alleged in the plaint that sometime in November, 2002, the plaintiff became aware that the defendant was manufacturing, marketing and selling the vitamin capsules under the trademark EVIT.

4. As per the written statement filed by the defendants, the products marketed by them under the trademark EVIT are nothing but vitamin E tablets. As per the defendants, the product is a single ingredient vitamin drug. The defendants drugs are allegedly marketed under the trademark EVIT which, according to the defendants, is derived from and adopted to identify the generic name of the drug, namely, Vitamin E. According to the defendants, the suffix VIT is common to the pharmacy trade indicating vitamin preparations.

5. From these brief facts, it is apparent that the plaintiff is the proprietor of the registered trademark ZEVIT. It is also apparent that the plaintiff has also been continuously using the same. The defendants mark EVIT is not a registered mark. The defendant has been using this mark in respect of its Vitamin E formulations. When this plaint was filed, this Court passed an ex parte ad interim order in favour of the plaintiff on 13.2.2003 injuncting the defendants from manufacturing, selling and offering for sale or advertising or directly or indirectly dealing in pharmaceutical preparations under the trademark EVIT. This ex parte interim order has continued till date. The plaintiff seeks confirmation of this order and the defendants pray for vacation of the same.

6. The case of the plaintiff is that the registration of a trademark, by virtue of Section 28 of the Trademarks Act, 1999 (hereinafter referred to as the said Act) gives to the registered proprietor of the trademark the exclusive right over the trademark in relation to the goods or the services in respect of which the trademark is registered and to obtain relief in respect of infringement of the trademark in the manner provided by the said Act. Infringement of registered trademarks has been specified under Section 29 of the said Act. It is the plaintiffs case that in view of the provisions of Section 29 of the said Act, infringement is established if it can be shown that the infringing trademark is identical or deceptively similar to the registered trademark in such a manner as to render the use of the mark likely to be taken as being used as a trademark. It is further the case of the plaintiff that in terms of Section 31 of the said Act, registration of a trademark is prima facie evidence of its validity. In support of his contention that the registration of a trademark gives valuable rights to its owner/proprietor, the learned Counsel for the plaintiff referred to the following decisions:

(i) National Bell Co. v. Metal Goods Manufacturing Co. (P.) Ltd and Another, AIR 1971 SC 898 [LQ/SC/1970/152] ;

(ii) American Home Products Corporation v. Mac Laboratories Pvt. Ltd and Another, AIR 1986 SC 137 [LQ/SC/1985/319] ;

(iii) Durga Dutt Sharma v. N.P. Laboratories, AIR 1965 SC 980 [LQ/SC/1964/275] ;

(iv) M/s. Avis International Ltd v. Avi Footwear Industries & Another, 42 (1990) DLT 397 [LQ/DelHC/1990/337] =AIR 1991 Delhi 22.

7. These decisions need not be examined in detail inasmuch as the position is clear and inescapable that the registration of a trademark gives to the proprietor thereof valuable and exclusive rights as indicated in Section 28 of the said Act. The only question that needs to be considered in the present case is whether the trademark ZEVIT and EVIT are deceptively similar or not. It has been contended by the learned Counsel for the defendant that both the marks can be broken down into two components each. One component is common to both and those are the letters VIT. According to the defendants, this portion, i.e., VIT, is common to the trade and is of a generic nature inasmuch as it is normally used for vitamin formulations. Therefore, what needs to be compared are the non-generic parts of the marks. The prefix ZE as used by the plaintiff and the prefix Eas used by the defendant. According to the learned Counsel for the defendants, these are dissimilar and cannot be confused for one another. Therefore, ignoring the comparison of the generic portions, there is enough dissimilarity to take the case of the defendants mark out of the expression deceptively similar used in Section 29 of the said Act.

8. For this proposition, the learned Counsel for the defendants relied upon the case of F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt. Ltd. AIR 1970 SC 2062 [LQ/SC/1969/320] . In that case, the Supreme Court was faced with the comparison of the trademarks DROPOVIT and PROTOVIT. In paragraph 12 of the said decision, the Supreme Court observed that in order to decide whether DROPOVIT is deceptively similar to the word PROTOVIT each of the two words must, therefore, be taken as a whole word. According to the Supreme Court, each of the two words consists of eight letters, the last three letters are common, and in the uncommon part the first two are consonants, the next is the same vowel o, the next is a consonant and the fifth is again a common vowel o. The Supreme Court further observed that the combined effect of these was to produce an alliteration. The Supreme Court also noted that the affidavits of the appellant indicated that the last three letters VIT is a wellknown common abbreviation used in the pharmaceutical trade to denote Vitamin preparations. In this view, the Supreme Court observed that it is apparent that the terminal syllable VIT in the two marks is both descriptive and common to the trade and the Supreme Court further held that if greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The Court further held that the letters D and P in DROPOVIT and the corresponding letters P and T in PROTOVIT cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view. The learned Counsel for the defendants placed great reliance on this decision of the Supreme Court to contend that the suffix VIT is (a) generic in nature and used for vitamin formulations; (b) to be ignored for comparing the marks; (c) that the prefixes ZE and E used in the case of the plaintiffs trademark and the defendants trademark respectively are entirely dissimilar and, therefore, on a comparison of the prefixes alone, it cannot be said that the defendants mark was deceptively similar to the mark used by the plaintiff. A host of other judgments were cited by the Counsel for the plaintiff as well as the Counsel for the defendants, but I need need examine those judgments as the principles are clear from the aforesaid decision itself. The principles being that the words must be compared as wholes and while comparing the marks, greater regard should be paid to the uncommon element in the two marks and upon such comparison if it is found that the uncommon elements are so dissimilar as cannot be confused with each other, then the conclusion would be that the marks are not deceptively similar. Putting this proposition conversely, it becomes clear that if a comparison of the uncommon elements reveals that there is a likelihood of deception and or similarity and/or confusion, then it can be clearly established that the marks are deceptively similar. Although the learned Counsel for the plaintiff submits that the decision in F. Hoffimann-La Roche and Co. Ltd. (supra) would not be applicable to the facts of the present case inasmuch as that was a case concerned with a dispute qua registration, whereas the present case is one of infringement of a registered trademark, I feel that the principles with regard to the question of deceptive similarity are quite well laid out in the said decision of the Supreme Court and are equally applicable in relation to an action on infringement. But, the decision in F. Hoffimann-La Roche (supra) does not militate against the plaintiff in the facts of the present case.

9. Comparing the marks ZEVITand EVIT, I find that the prefixes ZE and E are phonetically quite similar. The suffix VIT is common to both the marks and is, indeed, identical. The marks taken as a whole, therefore, include identical suffixes and quite similar prefixes, therefore, in my view, the inescapable conclusion is that the mark EVIT is deceptively similar to the registered trademark ZEVIT of which the plaintiff is the proprietor. The plaintiff, therefore, has been able to establish a good prima facie case and the balance of convenience is also in its favour. If the order prayed for is not granted, it would suffer irreparable harm and injury.

10. The defendants have raised a plea of delay, however, I am not much concerned with such a plea inasmuch as the present action is more of one of infringement of a registered trademark than one of passing off where such considerations as delay and acquiescence have relevance.

11. Accordingly, the ex parte ad interim order dated 13.2.2003 is confirmed till the disposal of the suit.

This application stands disposed of.