V.S. AGGARWAL, J.

(1) MR. SAMI Khatib (Plaintiff No. 1) and Medley pharmaceuticals Limited, (Plaintiff No. 2) have filed this suit for permanent injunction, restraining the defendants (Seagull Labs (I) Pvt. Ltd. and Seagull pharmaceuticals Pvt. Ltd.) from infringement of the trademark, passing off, rendition of accounts of profits, damages and delivery of the goods.

(2) THE facts alleged are that plaintiff No. 1 has been trading in the name and style of M/s. Medley laboratories. Plaintiff No. 2 is a limited company, incorporated under the Companies Act. Plaintiff No. 1 is the Chairman and Managing Director of plaintiff no. 2. Plaintiff No. 1 alleges that he is the proprietor of trademark XYMEX, registered under the trade and Merchandise Marks Act, 1958 under Number 259627. The said trademark has been renewed and is stated to be valid. Plaintiff No. 2 is the permitted user of the said trade mark and has been using the same in relation to pharmaceuticals and medicinal preparations. Since 1976-77, plaintiff No. 2 is stated to be continuously and extensively using the trade mark referred to above in relation to pharmaceuticals and medicinal preparations, being a digestive enzyme and tonic. Plaintiff No. 2 also made efforts to popularize the same.

(3) IN October 1996, the plaintiffs came to know that defendant No. 1 is manufacturing and marketing a vitamin preparation under the trade mark XENEX and is thereby passing off an inferior quality preparation as and for the plaintiffs well known preparation. A notice was sent to defendant No. 1 and the plaintiffs were. called upon to furnish a copy of the latest renewal certificate. It was supplied. Despite that certain frivolous and untenable pleas were taken. It is asserted that defendants impugned trademark XENEX is visually as well. as phonetically deceptively similar to plaintiffs registered trademark. Both the trademark begin with the word x and end with the words ex. An ordinary customer can mistake one for the other. It is bound to create confusion. Hence the present suit has been filed.

(4) DURING the pendency of the suit ad interim injunction had been prayed vide I. A. No. 2716 of 1997. By this order, the said application can conveniently be disposed.

(5) IN the written statement filed by the defendants, the suit as well as the application has been contested. It is denied that the plaintiffs are competent to file the present suit. It is also denied that plaintiff No. 1 is the registered proprietor of trade mark No. 259627, referred to above. The right of plaintiff No. 2, to be having the permitted user of the said trademark, has been controverted. According to the defendants, the medicinal/pharmaceutical preparations in respect of which the alleged registration licence has been obtained, are digestive enzymes. The word xymex has been derived from descriptive enzymes. It is not distinctive. No monopoly can be granted for descriptive names. It is even denied that the word used by the defendants is phonetically or otherwise similar to that of the plaintiffs.

(6) DURING the course of submissions, learned counsel for the plaintiffs highlighted the fact that plaintiff has the registered trademark of the word xymex. The medicinal preparations are prepared. The word used for the said preparations by the defendants is similar. It infringes the rights of the plaintiff. On the contrary, the defendants pleas were that plaintiff No. 2 claims that he is having the permitted user of the licence of plaintiff No. 1 but no documents have been placed on record. There is no licence even under the Drugs and Cosmetics Act that has been shown. Furthermore, it was asserted that the user of plaintiffs No. 1 and 2 of the word XYMEX is not shown to be before 1996. Great stress was laid on the fact that in any case it was medicinal preparation. The word is derived from enzyme, which is a descriptive word and, therefore, defendants can also use the same.

(7) FOR purposes of the present application, indeed the court finds that it is totally unnecessary to ponder and go into the other controversies because in the facts of the present case, it would be apparent that both the plaintiffs as well as the defendants are using the words derived from the word "enzymes", which by itself is a descriptive word.

(8) IT is well known that where two marks (trademarks) are identical, no further question arise for that and infringement is made out. But where two marks are not identical, the plaintiffs would have to establish that the mark used by the defendants nearly resembles with the registered trademark of the plaintiffs and is likely to cause confusion and deceive to customers. The onus is always on the plaintiff. The Court has to compare the two marks. It would see the degree of resemblance, which is necessary to exist to cause deception. The purpose of the comparison is for determining whether the essential features of the plaintiffs trade mark are to be found used by the defendants. The ultimate test is whether the trademark used by the defendant is deceptively similar. The resemblance in this regard can be phonetically, visual or in the basic idea represented by the plaintiffs trademark.

(9) THE attention of the Court in this regard was drawn towards the decision of the Supreme Court in the case of CORN PRODUCTS REFINING CO. versus shangrila food PRODUCTS LTD. AIR 1960 SC 142 [LQ/SC/1959/182] . The Supreme court held that the question whether two marks are likely to create a confusion, is a question of first impression, while construing the said fact, two marks have to be considered as a whole. The Supreme Court was concerned with the marks "glucovita" and "gluvita". It was held that they will create confusion and deception and the findings returned were :

17. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding question of phonetic similarity.

(10) SIMILARLY in the case of AMRITDHARA PHARMACY versus SATYA DEO GUPTA AIR 1963 S. C. 449 the two words regarding which the question arose under the trade Mark Act, 1947, were Laxman Dhara and Amrit dhara. They were stated to be medicinal preparations in case of certain ailments. The Supreme Court held that the does not lay down any criteria for determining what is likely to deceive or cause confusion. Every case must depend on its peculiar facts. While construing the two words, referred to above, in paragraph 9 the Supreme Court has concluded:

9. we agree that the use of the word dhara, which literally means current or stream" is not by itself decisive of the matter. What we have to consider here is the overall similarity of the composite words, having regard to the circumstance that the goods bearing the two names are medicinal preparations of the same description, we are aware that the admission of a mark is not to be refused because unusually stupid people, "fools or Idiots", way be deceived. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average Intelligence and imperfect recollection would be deceived by the overall similarity of the two names having regard to the nature of the medicine he is looking for with a somewhat vague recollection that he had purchased a similar medicine on a previous occasion with a similar name.

(11) LEARNED counsel for the plaintiff further referred to the decision In the case of PARLE PRODUCTS (P) LIMITED versus V. J. /p. and COMPANY. MYSORE AIR 1972 s. C. 1359. Once again the Supreme Court laid similar guidelines and held :

9. It Is therefore clear that In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side tor find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him.

(12) IT Is abundantly clear that all these precedents pertain to matters Where the two names were phonetically similar and the court came to the conclusion that an ordinary person would be misled. The matter would be different in case of generic names. If they flow from a generic name and names are not even identical, the position would be different.

(13) IN this connection, the Court can refer with advantage to the Division Bench decision of this Court in the case of SBL LIMITED versus HIMALAYA DRUG CO. 1997 the PATENTS AND TRADEMARKS CASES (VOL. 17) 540. The question in consideration before the Court was pertaining to the preparation and manufacture of the trademark "liv 52" and "liv-T". The court drew distinction in cases of medicines and pharmaceuticals, which are sole on prescription by doctors, having special means of knowledge. In paragraph 10, this Court has drawn the following guidelines :

(1) whether the two marks are Identical, no further questions arise for, then the infringement is made out; (2) 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; (3) The onus would be on the plaintiff; (4) The Court has to compare the two marks -the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standard. 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 for consideration. The purpose of the comparison is for deter milling whether the essential features of the plaintiffs trade mark are to be found used by the defendant. The ultimate test is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff; (5) The resemblance may be phonetic, visual or In the basic Idea represented by the plaintiffs mark; (6) 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 evidence led before it as regards the usage of the trade.

(14) SIMILAR was the conclusion of this Court in the case CADILA LABORATORIES LTD. versus DABUR INDIA limited 1997 THE PATENTS AND TRADEMARKS CASES (VOL. 17)417, The plaintiff, in the cited case, had registered itself as the owner of the mark "mexate". The defendants medicine was "zexate". Both the medicines were schedule H drugs and for cancer treatment. They were to be sold by qualified chemists, this court rejected the contention for an ad interim stay and held :

"in the present case, competing trade marks "mexate" and "zexate" have different and distinguished prefix, one having syllable "m" and the other having "z". There is no possibility of "mexate" being pronounced and/or read as "zexate" under any circumstances. As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to disect the words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered. The two marks "fleboline" and "bionoboline" was held to be not similar by the Bombay High Court in johann A. Wulfing Vs. Chemical Industrial and pharmaceutical Laboratories Ltd. and Another (supra) as the terminology "boline" cannot be an exclusive monopoly of the respondents and that the cumulative effect of the two words did not produce the same impression. Even phonetically the two marks were held to be not closely similar. In the present case, since the two marks are different as the opening syllables of both the rival marks are completely different and distinct and the two drugs are schedule H drugs of a specialised nature which could only be purchased on showing a prescription from a cancer specialist, the two competing trade marks appear to be prima facie entirely different and dissimilar. "

(15) SIMILAR was the decision in the case of kopran CHEMICAL CO. LTD. versus SIGMA LABORATORIES 1993 THE PATENTS AND TRADEMARKS CASES 245 where the trade marks in question were ATEN and BETAN. It was held that no ad interim injunction could be granted. This court, once again, in the case of AJENDRA KUMAR aggarwal versus KRUZER HERBALS 1996 PTC (16) 501, while dealing with the plaintiffs trademark MENSUROL and defendants mark MENSURE held that prominent part of the mark is the suffix which is quite distinctive. Keeping in view the same, ad interim in Junction was vacated. Identical was the view from the Madras High court in the case of INDO-PHARMA PHARMACEUTICAL WORKS ltp. MUMBAI versus CITADEL FINE PHARMACEUTICALS LTD. , madras 1998 PTC (18) MADRAS 775.

(16) IT is, thus, clear from what has been reproduced above, that if it is a generic name confined to a particular type of product in the form of a medicine, in that event, certain other distinctive factors also must come into play. When it is simply descriptive in nature, as in the present case, something more than mere phonetic similarity has to be shown.

(17) BOTH the products of the plaintiffs as well as of the defendants are concerned with enzymes. Once it is so, if they use the word near to enzymes and both are to be taken as a medicine, the necessary consequence would be that merely If there is a little phonetic similarity concerning with the word enzymes, it is not enough. Normally a person would purchase product XYMEX or XENEX on a prescription and advice of the doctor. They would know what is to be advised and the patient would know what has to be purchased. The necessary corollary, therefore, would be that it can not be taken that an ordinary person is likely to be deceived or taken stray in the first impression. This conclusion is basically further from the fact that one product is in liquid and the other In capsule form. With little scope of confusion, indeed the plaintiff is not entitled to the ad interim injuction. Therefore, the application filed under Order XXXIX rules 1 and 2 of the Code of Civil Procedure, must fail and is dismissed. However, it is subject to the condition that the defendants shall furnish an undertaking to pay damages to the plaintiffs in case the plaintiffs suit is decreed. The defendants shall maintain accounts for sale and submit the same every quarterly to this Court till the disposal of the suit.