ORAL JUDGMENT :-

1. This is an action for infringement and passing off.

2. The plaintiff is the registered proprietor of the word mark “SUSTEN”. The mark was registered with effect from 16.6.2000 under class 5. The defendant is the registered proprietor of the impugned mark “SUSTINEX”. The mark was registered with effect from 21.6.2001 also under class 5. The plaintiff has filed an application for rectification, which is pending.

3. As the defendant’s mark is also registered, the reliefs at this stage are based only on the ground of passing off. The plaintiff has used its marks since November, 2000, as is evident from the sales figures furnished in the plaint. The defendant used the impugned mark from 19.11.2010. The plaintiff therefore is admittedly the prior user of the mark.

4. The first question is whether the impugned mark is deceptively similar to the plaintiff’s mark. My first impression was that it was not. However, in view of the nature of the products, I was not satisfied at basing my judgment on a first impression. Although even at the end of the hearing my first impression remain unchanged, I reserved the judgment only to further consider this aspect. I thought it necessary to exercise this degree of caution before deciding whether the two marks are deceptively similar or not due to the nature of the products. The plaintiff’s product sold under its mark is progesterone in soft gelatin capsules prescribed for sustaining pregnancy in critical conditions, whereas the defendant’s product sold under the impugned mark is prescribed to male patients to treat pre-mature ejaculation. Whether or not male patients would suffer adverse consequences by consuming the plaintiff’s product, it is obvious that female patients who are prescribed the plaintiff’s product but consume the defendant’s product are bound to suffer disastrous consequences. Even if the defendant’s product does not affect the female patients who are required to use the plaintiff’s product per-se, such female patients will suffer disastrous consequences by not consuming the plaintiff’s products. This is obvious for female patients who are prescribed medication for sustaining pregnancy in critical conditions would suffer disastrous consequences by not consuming such products at all.

5. My view however remains unchanged although I went to the extent of straining to find a similarity between the two marks.

6. Visually the marks are not similar.

7. The plaintiff’s mark “SUSTEN” will in probability be pronounced as it is spelt. The pronounciation of the prefix “SUS” and “SUST” in both the marks will be the same. The suffix “TEN” in the plaintiff’s mark will be pronounced as the number “10”. It will not be pronounced as “TIN”. Even so had the impugned mark been “SUSTIN”, it would have been deceptively similar to the plaintiff’s mark.

The impugned mark “SUSTINEX” however, is phonetically not similar to the plaintiff’s mark “SUSTEN”. Even though it is likely to be pronounced as one word, there is a clear phonetic and audible divide between the prefix “SUSTI” and the suffix “NEX”. The prefix and suffix in the word “SUSTINEX” are equally prominent. I do not find the word capable of being pronounced by slurring over the suffix “NEX”. The suffix “NEX” is pronounced and distinct and has a significant independent phonetic existence in the mark. I cannot see a person hiving off and dropping the suffix and pronouncing the word “SUSTINEX” as “SUSTIN” or even “SUSTEN”.

8. It is not in every word that a prefix is phonetically prominent or dominant and the suffix is slurred over. There may well be words where the suffix is more prominent even phonetically than the prefix. These factors would depend upon the word.

9. The judgment of a learned single Judge of this Court in the case of Ranbaxy Laboratories Ltd. v. Indchemie Health Specialities Pvt. Ltd. (2002) 3 Bom.C.R. 186 relied upon by Mr.Tulzapurkar however does not support the defendant. The marks were different viz. “ZANOCIN” and “ZENOXIM”. The judgment does not lay down an absolute principle, that whenever the letter “X” is used in one mark and not in the other, the two marks cannot be said to be deceptively similar.

10. Mr.Tulzapurkar relied upon the following observations in the judgment of a Division Bench of this Court in Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Limited & Anr., AIR 1984 Bom. 281 [LQ/BomHC/1983/455] :-

“7. This method of approach is to start with, the microscopic method of comparison with the marks placed side by side. Such approach has repeatedly been condemned in various decisions, F. Hoffmann v. Geoffrey Manners, AIR 1970 SC 2062 [LQ/SC/1969/320] , being one, where the Supreme Court rejected the contention that “Dropovit” and “Protovit” were likely to deceive or cause confusion. In the present matter, the Joint Registrar’s emphasis on the starling letter “C” in both the words, does not take into account the total phonetic dissimilarity between the 2 words, namely that the very same “C” is pronounced entirely differently in both the words, inasmuch as in COMPLAMINA the starting “C” is pronounced “K” unlike in CIPLAMINA where the starting “C” is pronounced as written. In both the words, it is not the suffix that is the controlling sound. It is the disparate “COM” and and “CIP” (the one pronounced “KOM”and the other as written) that is the controlling sound and it is that which makes all the difference. “The first syllable of a word mark is generally the most important”. As there is a “tendency of person using the English language to slur the termination of words”. (Kerly’s Law of Trade Marks, 11th Ed. Page 416). In Re: Bayer Products, (1947) 64 RPC 125, it was held that “Diasil” and “Alasil” were not deceptively similar or likely to cause confusion. Where the first two syllables are different, there is little likelihood of confusion. So was it observed by the Division Bench of the Madras High Court in Mount Mettur v. Ortha Corporation, AIR 1975 Mad. 74 [LQ/MadHC/1974/91] , while holding that UTOGYNOL and ORTHOGYNOL were not deceptively similar.”

I do not read the judgment to hold that the suffix is always unimportant and insignificant while considering the question of phonetic similarly. The decision of the Division Bench was obviously based on the marks in that case. Moreover the observation is that “the first syllable of a word mark is generally the most important” (emphasis supplied) and not that it is always the most important.

11. Although the considerable differences in the colour, size and shape of the plaintiff’s capsules and the entire get up of the strip/packaging in which they are contained, may not by themselves make a difference they together with the above finding further reduce the possibility of deception in the facts of the present case.

12. The application for interim reliefs is therefore, liable to be rejected on the ground that the marks are not deceptively similar.

13. Mr.Tulzapurkar, further submitted that in a passing off action the plaintiff must establish that its products sold under its mark have developed the requisite reputation and goodwill on the date on which the defendant adopted the mark and not the date on which the defendant used the mark. In the present case, the defendant’s mark was registered with effect from 21.6.2001. The defendant used the mark only from 19.11.2010. Thus though the defendant used the mark from 19.11.2010, it adopted the mark with effect from 21.6.2001. According to him therefore the plaintiff must establish that its products sold under its mark had acquired reputation and goodwill to an extent sufficient to maintain successfully an action for passing off as on 21.6.2001 and not as on 19.11.2010.

14. The submission is not well founded. The mere fact of registration has no relevance to the issue. A party can adopt a mark in various ways and not merely by having the same registered. A party may even intend using the mark without applying to have it registered. An application for registration may well be rejected. In an action for passing off, the plaintiff must demonstrate a misrepresentation by the defendant to the public leading or likely to lead the public to believe that the goods or the services offered by him are the goods or services of the plaintiff. The plaintiff must establish that it has suffered or is likely to suffer by the misrepresentation. It is the misrepresentation to the public that the defendant’s goods are actually those of the plaintiff that is actionable and an essential pre-requisite in a passing off action. A plaintiff is not likely to suffer damages merely by the defendant adopting a deceptively similar mark. There can be no misrepresentation as required in a passing off action unless the mark is put to use. It is the use thereof in the course of trade that constitutes to misrepresentation which in turn results in damage to the plaintiff. It follows then that the mere adoption of a mark by a party does not furnish a cause of action to seek a relief against the tort of passing off.

15. The plaintiff may file a suit to prevent passing off as a quiatimet action, if he is apprehensive that the mark is likely to be used. The registration of a mark does not by itself predicate an intention to use it although for a mark to be validly registered, it is necessary for a party to indicate that it uses or intends using the mark.

Section 18 of the Act reads as under:-

“18. Application for registration.—(1) Any person claiming to be the proprietor of a trade mark used or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the prescribed manner for the registration of his trade mark. ”

Indeed one of the grounds for challenging a registration is that a mark was never intended to be used by a party in whose favour it was registered. Thus although the intention to use the mark is a prerequisite for a valid registration, it does not necessarily follow that the registration of a mark establishes an intention to use the same. The plaintiff can always rely upon a registration of a mark by the defendant as evidence of an admission by the defendant of its intention to use the mark and thereby maintain a quiatimet action to prevent passing off. Even in a quiatimet action, the relief that can be sought and granted is not to restrain a party from merely adopting the mark but to prevent its use in the course of trade, for it is that which causes damage to the plaintiff. The mere intention to use the mark by itself does not lead to misrepresentation and consequently does not result in any damage to the proprietor of the mark.

16. It is necessary therefore, for the plaintiff to establish that the products sold by it under the mark “SUSTEN” had acquired the requisite goodwill and reputation by 19.11.2010 i.e. the date on which the defendant used that impugned mark. This is the plaintiff has done.

17. In five months, between November, 2000 to March, 2001, the plaintiff sold the goods valued at Rs.1.42 crores bearing the said mark. The volume of sales increased rapidly over the years. By the time the defendant used the impugned mark in November, 2010, the annual sales had increased to over Rs.52.00 crores. The promotional expenses during this period increased from over Rs.7.34 crores to over Rs.45.20 crores. The same establishes that by the time the defendant used the mark in the course of its trade, the plaintiff’s products sold under the said mark “SUSTEN” had acquired an enormous goodwill and reputation.

18. Even assuming that the relevant date for ascertaining whether the plaintiff’s products sold under the said mark had acquired such goodwill and reputation is 21.6.2001 i.e. the date on which the defendant adopted the mark, it would make no difference. Between November, 2000 and March, 2001, the plaintiff sold the products under the said mark of a value of over Rs1.42 crores. It is true that up to the date of the defendant’s adoption of the mark, the plaintiff had used its mark for only about seven to eight months. It is significant to note however, that the defendant itself contended in paragraph 7 of its affidavit in reply dated 22.2.2011 that during a shorter period of three months from November, 2010 till January, 2011, the sales of its products under the impugned mark were about Rs.95,68,900/- and it had thereby acquired a very good reputation of its own and that thereby the impugned mark was associated exclusively with the defendant by the trade, the public and the medical profession. Thus at least in the facts of this case, it is the defendant’s case that products such as these sold under the said marks can and do acquire reputation and goodwill even though they have been sold for a duration as short as three months. It is not open therefore to the defendant, when it comes to the plaintiff, to contend otherwise.

19. The contention that the purpose of this suit is to prevent competition is not well founded. The mere fact that the plaintiff intends manufacturing products for similar use, does not lead to this conclusion. There is nothing to suggest that the plaintiff intends manufacturing and selling products similar to the defendant’s product under a similar mark.

20. Mr.Tulzapurkar also submitted that there are several marks registered and unregistered in the pharmaceutical market with the prefix “SUST” and that such marks are applied to products sold for different ailments. He does not contend that the plaintiff is not entitled to an injunction on account thereof on the ground that the plaintiff’s mark is common to the trade. He contends that in view of the same prefix having been used in various other marks, the trade as well as the consumers would be prone to scrutinizing the products with greater care before purchasing them.

21. Although Mr.Tulzapurkar denied it, this submission is really based on the “series” argument. This is clear from paragraph 8-b of the affidavit in reply, the first sentence whereof itself states that there are a “series” of marks registered and/or unregistered in the pharmaceutical market similar to the plaintiff’s mark. Mr.Kane’s reliance upon a judgment of the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 [LQ/SC/1959/182] , also establishes the same.

The Supreme Court in paragraph 14 held as under :-

“14. We may also refer to In re: Harrods Application, (1934) 52 R.P.C. 65 mentioned in the quotation from Beck, Koller and Co.’s case, (1947) 64 R.P.C. 76, set out in the preceding paragraph. It was there said at p. 70:

“Now it is a well recognised principle, that has to be taken into account in considering the possibility of confusion arising between any two trademarks, that, where those 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 and to distinguish between them by those features. This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and, as I have mentioned, in use in the market in which the marks under consideration are being or will be used”.

22. In any event whether the submission is based on the “series” argument or not is of no consequence for the defendant has failed to establish its case on facts. In the affidavit in reply, the defendant has relied upon the sales figures in respect of the products sold under the mark “SUSTANON”. These sales figures however pertain to the period 2007 onwards. As stated earlier, the plaintiff used its mark from the year 2000. The contention in the affidavit in reply that the mark “SUSTANON” was used before 2007 is not even sought to be corroborated.

23. The defendant has also referred to the marks “SUSTACAL”, “SUSTAMET” and “SUSTENT”. Even in respect of these products, the sales figures have been furnished only for the years 2008, 2009 and 2010 onwards respectively. The same therefore, do not support the defendant.

24. The notice of motion is therefore, dismissed, but with no order as to costs.