(Prayer: Original Side Appeals filed under Order XXXVI Rule 9 of the O.S. Rules read with Clause 15 of Letters Patent against the common order dated 06.07.2012 made in O.A.Nos.428 of 2011 and 14 of 2012 in C.S.No.334 of 2011.)

Common Judgment:

M.M. Sundresh, J.

1. These two Original Side appeals have been preferred by the applicants in O.A.Nos.428 of 2011 and 14 of 2012 in C.S.No.334 of 2011 being the plaintiffs challenging the common order of dismissal passed by the learned single Judge dated 06.07.2012.

2. The appellants herein are the plaintiffs in the suit. The first appellant is the manufacturer of various drugs and the second appellant is the licencee/permitted user of the trade mark "TOBA". The predecessor of the first appellant adopted the mark "TOBA" in the year 1995 for Ophthalmic preparation. It is the specific case of the first appellant that in pursuant to the various constitutional changes, the trade mark "TOBA" became its property as the sole Proprietor. In the year 2008, the first appellant had also applied for the registration of trade mark "TOBA".

3. In the month of October, 2010, the appellants came across the trade mark journal advertisement for the mark "TOBAEYE". The first respondent/first defendant has also applied for registration. The appellants/plaintiffs came to know that the second respondent/second defendant is involved in the manufacture of medicinal preparation with the mark "TOBAEYE". The first respondent/first defendant is marketing the same all over the India including the City of Chennai. According to the appellants, the mark "TOBA" and "TOBAEYE" are phonetically, visually and structurally similar. The appellants have earned the goodwill in the market, apart from a good reputation. As the appellants are having registered trade mark in the mark "TOBA" and the defendants are indulging in passing off the product of the appellant, a suit has been laid for the relief of permanent injunction, damages, ` of accounts and for delivery of the materials used by the defendants. The suit was also laid after exchange of notices between the parties as the defendants refused to change the mark from "TOBAEYE".

4. The respondents/defendants contended that the mark "TOBAEYE" has been in existence in the month of February, 2010. The trademark "TOBA" has become publicijuris and therefore, the appellants cannot claim monopoly/exclusive right of trade mark "TOBA". The name "TOBA" come from Tobramycin. The word Tobramycin is a generic term derived from the chemical element. The data base of the register of trade mark would show that there are more than 127 marks having similar prefix "TOBA". The goods are used for different treatment and therefore, there is no question of passing off. The trade mark data also shows that there are almost 49 marks, which start with the mark "TOBA". These applications are also liable to be dismissed for the delay and laches. Further more, there is a clear phonetic, visual and structural dissimilarity between the appellants/plaintiffs mark and that of the respondents/defendants. The goods are handled under due prescription of the specialised physician. Therefore, there is no material to show the loss caused to the appellants by the mark of the respondents/defendants. Hence, these Original Side Appeals will have to be dismissed.

5. The learned single Judge, upon consideration of the submissions made by both sides, was pleased to dismiss the applications. While dismissing the applications, the learned single Judge was pleased to observe that the mark "TOBA" has been derived from Tobramycin and hence, it is generic in nature. Apart from coming under publicijuris, the carton belonging to both the products have different colour scheme. The symbol of both the products are also dissimilar. The bags of "TOBA" are in the colour scheme of blue and white, while the "TOBAEYE" bags in the colour scheme of brown and white. It has also been held that both the products are sold under prescription by the specialised Doctors in the field of Ophthalmology. Therefore, considering the abovesaid facts, the learned single Judge dismissed the applications. Being aggrieved against the same, the present Original Side Appeals have been filed.

6. Mr.A.A.Mohan, learned counsel appearing for the appellants, has contented that there is a phonetical similarity between both the products. The appellants have been using the product for the quite number of years. The mark of the appellants has been registered. A mere delay by itself cannot be a ground to reject an application for injunction. Even assuming a product can only be purchased on prescription, the same by itself cannot be a ground to decline the relief of injunction pending suit. Therefore, considering the abovesaid facts, the appeals will have to be allowed. In support of his contention, the learned counsel for the appellants has made reliance upon the following judgments.

(i) CADILA HEALTH CARE LTD. V. CADILA PHARMACEUTICALS LTD., ((2001) 5 Supreme Court Cases 73) [LQ/SC/2001/847] ;

(ii) CADILA HEALTH CARE LTD., V. AUREATE HEALTHCARE PVT. LTD., & ANOTHER - I.A.Nos.800/2011 and 4580/2011 in CS (OS)No.123 of 2011 dated 30.07.2012 (High Court of Delhi);

(iii) MIDAS HYGIENE INDUSTRIES (P) LTD., AND ANOTHER V. SUDHIR BHATIA AND OTHERS ((2004) 3 Supreme Court Cases 90) [LQ/SC/2004/103] ; and

(iv) M/S MAXHEAL PHARMACEUTICALS (INDIA) AND ANOTHER V. SHALINA LABORATORIES PVT LTD., AND OTHERS – APPEAL NO.88 OF 2004 (Bombay High Court).

7. In this case, it is to be seen that the word "TOBA" has been derived from the chemical molecule Tobramycin. Therefore, we can safely conclude that it is generic in nature and publicijuris. The appellants have not disputed the contentions raised by the respondents before the learned single Judge that there are 49 marks found in the Indian trade mark data base, which start that the mark "TOBA" and 116 marks contained the word "TOBA". The learned single Judge took pains to go through the documents filed with reference to the carton and bag of both the products. A factual finding has been given about the dissimilarity in the colour scheme of both carton and the bag. The learned single Judge has also correctly held that there is dissimilarity in the symbols apart from the fact that there is a difference in the price of both the products. Therefore, considering the said findings of fact, we do not find any ground to allow these appeals.

8. The learned counsel appearing for the appellant would acknowledge the fact that both the products are used for different treatments. Although both the products are used for treating the eye, they are used for different purposes. It is nobodys case that these drugs can be purchased from the medical shop without prescription. Further more, we are of the view that these drugs stand on the different footing than the normal drugs as they are usually sold under prescriptions by the specialised Doctors in the field of Ophthalmology. We do not find any similarity between both the products to the extent of causing confusion in the mind of the common person. Likewise, we do not find any deceit of wilful action on the part of the respondents. Further, it is settled proposition of law that marks are to be compared as a whole.

9. In so far as the question of passing off is concerned, we do not find any materials to hold that the respondents are guilty of passing off. As discussed above, there is no material to hold that the respondents are trying to sell their product as that of the appellants. Therefore, we find substance in the order passed by the learned single Judge that the element of confusion and deception are not available in the case on hand. As discussed above, there is absolutely no materials to implicate the respondents/defendants to misrepresentation, by which, injury is caused to the goodwill of the appellants or that will be likely to be caused.

10. The judgments relied upon by the learned counsel for the appellants, in our considered view, cannot be made applicable to the case on hand. The learned counsel appearing for the appellants made substantial reliance upon the judgment of the Honourable Apex Court in CADILA HEALTH CARE LTD. V. CADILA PHARMACEUTICALS LTD., ((2001) 5 Supreme Court Cases 73) [LQ/SC/2001/847] . In the said case, the Honble Apex Court did not grant the order of injunction, but did give certain guidelines to decide cases pertaining to infringement of a trade mark and passing off. The Honble Apex Court was pleased to observe that in a case dealing with drugs, the paramount interest should be that of the public. Because, the possibility of harm resulting from any kind of confusion, more so, when composition of the drugs being different for curing the same ailment, is involved. The Honble Apex Court has also observed that the confusion made in a given case resulted either in loss of life or other serious problems. In the case on hand, as discussed earlier, the purpose of usage of both the products are different. It is nobodys case that the product of the respondents would cause dangerous effect. Even according to the appellants, both the drugs are used for different purposes. It is not their case that the respondents drug is used for the purpose for which the appellants drugs are meant for. Further more, even according to the learned counsel for the appellants, the compositions are one and the same. Therefore, the question as to whether the appellants drug would have better result for the particular ailment for which it is meant for or the respondents drug would have better result for the ailment for which it is meant is not in dispute is not before this Court and in any case it is not for us to decide.

11. The other judgments relied on by the learned counsel for the appellants are also not applicable to the facts of the present case. We have no difficulty in appreciating the fact that, in a suit for infringement of trade mark and passing-off, the delay by itself cannot be a ground to reject an interlocutory application for temporary injunction. However, the appellants/ plaintiffs will have to make out a prima facie case. We do not find any prima facie case made out and neither the balance of convenience is in favour of the appellants nor any irreparable loss is shown to have resulted. The Original Side Appeals are liable to be rejected.

12. Accordingly, both the Original Side Appeals are dismissed. However, we make it clear that the discussions and observations made both by the learned single Judge as well as by us are confined to the applications alone and the same shall not have any bearing on the main suit. Considering the facts and circumstances of the case, we request the learned single Judge dealing with the suits to expedite the main suit. No costs.