Order

1. This is an appeal preferred by original plaintiffs to challenge the order dated December 18, 1989 passed by learned Single Judge on Notice of Motion No. 2909 of 1989. By the impugned order, the learned Judge declined to grant interim relief. The facts which gave rise to the filing of the suit are as follows:

2. Appellant No.1 are a Corporation organised under the laws of United States of America and are carrying on business as manufacturers of and dealers in medicinal and pharmaceutical preparations. The appellant No. 2 are a limited Company incorporated under the Indian Companies Act and appellant No.1 is the largest single holder of appellant No. 2. Appellant No. 2 carry on business as manufacturers of and dealers in pharmaceutical and medicinal preparations. In September, 1965, appellant No.1 applied for and obtained registration of the trade mark GARAMYCIN in Class 5 in respect of pharmaceutical and medicinal preparations. The registration of the mark has been renewed from time to time and is valid and subsisting. In March 1971, the appellant No. 2 introduced into the market a pharmaceutical product under the trade mark GARAMYCIN and the product has since then been continuously and widely sold and marketed in India. The product is a single ingredient injectable consisting of GENTAMYCIN. The appellant also introduced in February, 1982, eye and ear drops bearing the trade mark GARAMYCIN and which is sold in bottle and carton. By a deed of assignment dated February 26, 1974, all the right, title and interest in the registered trade mark has been assigned by appellant No.1 to appellant No. 2. The mark was reassigned on April 9, 1979 by appellant No. 2 to appellant No.1 and again assigned in favour of appellant No. 2 on April 10, 1989.

3. The appellant claim that with the dishonest object of trading upon the reputation and goodwill of the appellants in the product sold under the trade GARAMYCIN the respondents started manufacturing, marketing and selling identical products under the trade mark GAMAMYCIN which is identical with or deceptively similar to the appellants trade mark. The appellants claim that because of the distinctive trade mark, colour scheme, lettering, layout and get-up of the appellants mark the products have come to be identified by the trade and members of the public exclusively with the appellants and that the use of identical or deceptively similar trade mark by the respondents inevitably will deceive and confuse the public. The appellants lodged a criminal complaint against the respondents and a general search warrant for the search of the premises and factory of the respondents was issued. The appellants instituted Suit No. 3079 of 1989 on September 12, 1989 for perpetual injunction restraining the respondents from manufacturing, selling, offering for sale, advertising or otherwise dealing in any pharmaceutical or medicinal product under the trade mark GAMAMYCIN or any other name deceptively similar so as to infringe the appellants registered trade mark GARAMYCIN.

4. The appellants took out Notice of Motion for grant of interim relief pending the disposal of the suit. In answer to the claim for interim relief, the respondents claimed that the trade mark GAMAMYCIN was coined in the year 1980 and a licence for manufacture of the drug was also secured. The respondents claim that the actual manufacture commenced in the year 1986. The respondents claimed that the word GAMAMYCIN was invented and Gama means power. The respondents further pleaded that the mark is distinct and does not infringe upon the appellants trade mark. The learned trial Judge by the impugned order heavily drew upon the observations made in AIR 1984 Bombay 218 (M/s. Hiralal Prabhudas Vs. M/s. Ganesh Trading Company) and then concluded by holding that the products manufactured by the respondents are phonetically, visually and structurally dissimilar and there is no likelihood of any deception or confusion and particularly so as the products were scheduled drugs and can be had only on a doctors prescription. The order of the learned single Judge is under challenge.

5. Shri Tulzapurkar learned counsel appearing on behalf of the appellants, submitted that the impugned order is entirely unsustainable. The learned counsel urged that at the time of admission of the appeal, Division Bench of the Court by order dated February 8, 1990 granted interim relief sought by the appellants after recording a finding that prima facie, the mark of the respondents is deceptively similar to the appellants trade mark. Shri Tulzapurkar urged that the learned trial Judge overlooked that there is no material to establish that the offending mark was used by that respondents from year 1980 onwards. Shri Tulzapurkar also pointed out that the explanation given by the respondents as to how the word was invented is entirely frivolous and the user of the mark is not bona fide. The learned counsel urged that a look at the figures given by the respondents about the quantum of the sale established that the products alleged to have been sold are of an extremely negligible amount and it is obvious that the respondents were desirous of trading upon the reputation of the appellants. Shri Warekar learned counsel appearing on behalf of the respondents, on the other hand, urged that the order of the learned single Judge is not required to be disturbed on the facts and circumstances of the case. We are unable to accede to the submission urged by Shri Warekar.

6. In the first instance, it is necessary to examine whether the user of the mark of the respondents is bona fide and, prima facie, we are satisfied that it is not so. We enquired from Shri Warekar as to how the word GAMA was coined and the answer was that the word GAMA indicated power. The learned counsel could not point out from any dictionary, Medical or English, to indicate that the word GAMA is understood as power. We are also not, prima facie, satisfied that the claim of the respondents that the product was sold under the trade mark GAMAMYCIN from the year 1986 is genuine. Shri Warekar invited our attention to the invoices but we are not prepared to place any reliance thereupon because the respondents are manufacturers of several medical products and in the invoices, only the products sold under the mark GAMAMYCIN are type-written, while the others are hand-written. The complaint of the appellants that the type-written words were inserted subsequently cannot be straightaway rejected. Turning to the quantum of sales, it is obvious that in the year 1986, the sales turn-over is shown to be Rs.40,235/-. By year 1989, it has steadily grown to Rs.3,05,000/-. The respondents admit that no amount on publicity expenses were shown in the first three years, i.e. 1986, 1987 and 1988 the expenditure in the year 1989 is Rs.1,75,000/- on giving samples and Rs.50,000/- on literature. It is impossible to place any reliance upon the sales figures. It is difficult to believe that the respondents would spend on publicity an amount of Rs.2,25,000/- when the sales turnover was only Rs.3,05,000/-. Shri Warekar tried to explain that the expenditure is not only on the advertisement of the mark GAMAMYCIN but in respect of the advertisement of other medicinal products manufactured by the respondents. If the contention is correct, then it is obvious that the sales turnover is also not limited to the products sold under the offending trade mark. We enquired from the learned counsel as to what is the break-up and how much is the turnover in respect of the products sold under offending mark and the counsel was unable to give any satisfactory answer.

7. Shri Warekar then submitted that even assuming that the offending trade mark is deceptively similar to the registered trade mark of the appellants, suit it is not necessary to pass interim relief in favour of the appellants. The learned counsel urged that the medicinal products manufactured by the respondents and sold under the offending mark are not likely to cause any deception or confusion because the goods are scheduled drugs and they are not available across the counter but can only be secured on medical prescription. Shri Warekar urged that the factor is enough to deny the grant of interim relief to the appellant. We are afraid we cannot accede to the submission. It is now well settled by catena of decisions of this Court that the fact that the products are scheduled drugs and can be had only on doctors prescription is not enough and cannot lead to the denial of reliefs to the plaintiffs. The fact that the scheduled drugs are available on doctors prescription is a relevant circumstances but is not necessarily a conclusive one. It is necessary for the Court to bear in mind that even in respect of scheduled drugs, there is likelihood of deception and confusion. As the respondents mark GAMAMYCIN and the appellants registered mark GARAMYCIN are deceptively similar, there is every likelihood that the chemist who reads the doctors prescription may misunderstand the drug prescribed. It also cannot be overlooked that the products manufactured are not merely injections but are also ear drops and eye ointments. It is not a secret that ear drops and eye ointments are available across the counter. On the facts and circumstances of the case, the learned single Judge was clearly in error in not granting interim relief. We are in respectful agreement with the observations made by the Division Bench on February 8, 1990 while granting interim relief on admission of the appeal. Shri Warekar referred to some observations in Kerlys Law of Trade Marks and Trade Names to suggest that where two marks contain a common element which is also contained in a number of other marks 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. Reference is made to this observation to contend that there are several marks in the market with the use of expression MYCIN. We are unable to find any substance in the submission. The Supreme Court observed in the decision reported in AIR 1965 Supreme Court 142 (Sales Tax Officer Jodhpur and another Vs. M/s. Shiv Ratan C. Mohatta) that the mere fact that similar registered marks are on register is not enough but the user must be established before relief is denied. There is no evidence whatsoever to indicate user in respect of other marks in our judgement, the order of learned single Judge is required to be set aside.

8. Accordingly, appeal is allowed and the order dated December 18, 1989 passed by the learned single Judge on Notice of Motion No. 2909 of 1989 is set aside and the Motion is made absolute in terms of prayers (a) and (b), The respondents shall pay the costs throughout.