Z.S. Negi, Vice-Chairman

1. This application is filed for the removal of the trade mark 'PIOZULIN' under No. 985092 in class 5, registered in the name of Cadila Pharmaceuticals Limited, or rectification of the register under Section 47/ 57/ 125 of the Trade Marks Act, 1999 (hereinafter referred to as the).

2. It is averred that the applicant, a company incorporated under the Companies Act, 1956, is an established and reputed manufacturer and trader of medicinal and pharmaceutical preparations especially in the field of anti-diabetic medicines. The applicant has acquired immense reputation and goodwill due to superior quality and high efficacy of its medicinal and pharmaceutical preparations. The applicant in or about the year 2000 independently and honestly adopted the trade mark PIOZ in respect of medicinal and pharmaceutical preparations inter alia containing the generic drugs Pioglitazone Hydrochloride with a view to distinguish the said goods from those of others. Owing to long, open, continuous and extensive sales on a large scale and wide publicity given by the applicant to its aforesaid goods bearing the trade mark PIOZ, the said trade mark has become inalienably associated in the course of the trade with the applicant and none else. The registration of trade mark PIOZ in class 5 in respect of medicinal, pharmaceutical and veterinary preparations, infants and invalids foods was sought by the Aviat Chemicals Private Limited on 4.10.2000 under application No. 961032 and the said company assigned the trade mark with goodwill on 23.5.2002 to the applicant herein and the Registrar substituted the name of the applicant as subsequent proprietor thereof by advertising the said trade mark in the Trade Marks Journal No. Mega-4 dated 25.10.2003 at page 678 and the same is still pending for registration. On 18.12.2000, the applicant filed application No. 977709 for registration of trade mark PIOZ in class 5 in respect of medicinal, pharmaceutical and veterinary preparations, infants and invalids foods which is still pending for registration. The applicant has stated that it has launched its preparation/goods under the trade mark PIOZ throughout India in or about January, 2001 and has acquired very high reputation and goodwill for those goods under the trade mark PIOZ.

3. It is further averred that the respondent on 19.1.2001 applied for registration of trade mark PIOZULIN in class 5 on the proposed to be used basis and obtained certificate of registration dated 29.6.2004 under No. 985092 whereas the application Nos. 961032 and 977709 of the applicant are still pending for registration by the Trade Marks Registry. In the first week of December 2000, the applicant had came across the medicinal preparation bearing the trade mark PIOZULIN manufactured and marketed by the respondent and as the said trade mark was deceptively similar to the well-known trade mark of the applicant, the applicant filed a Suit No. 2566 of 2001 for passing off against the respondent and an application for interim relief in the High Court of Delhi and the said suit and application are pending. The applicant is always vigilant in protecting its trade mark PIOZ and has taken several actions against the unscrupulous parties who have used the trade marks PIOZED, PIOZIT and PIO and succeeded in restraining them from using such marks. The applicant, claiming to be the person aggrieved by the entry of the trade mark PIOZULIN in the register, has filed the present application for cancellation of registered trade mark of the respondent on various grounds, inter alia, that the entry relating to impugned trade mark PIOZULIN was made without sufficient cause and wrongly remains on the register; that the impugned mark was and is not distinctive nor was and is capable of or adapted to distinguish the goods of the respondent; that the respondent's trade mark is deceptively similar to the trade mark of the applicant and the goods for which the impugned mark has been registered are same or goods of same description for which the applicant's applications for registration are pending; that the applicant is prior adopter, prior user and prior applicant for registration of PIOZ to which the respondent's mark is deceptively similar; that the impugned registration have been obtained from the Registry of Trade Marks by practicing fraud, misrepresentation and concealment of facts; that the adoption of the impugned trade mark by the respondent was not honest and bonafide as it has not only copied the applicant's trade mark PIOZ but taken the whole trade mark of applicant in to its trade mark PIOZULIN; that the impugned trade mark of the respondent would otherwise be disentitled to protection in view of passing off and that the respondent is not the proprietor of the impugned trade mark. The applicant has made submission that this Appellate Board should cancel the impugned trade mark under Section 57 read with Sections 9, 11 and 18 of the.

4. The respondent filed the counter-statement and affidavit dated 1.3.2005 of Mr. Sujay S. Upalkar, Vice President (Legal & IP Affairs) of the respondent denying or disputing the material averments in the application and thereafter the applicant filed reply to the counter-statement and affidavit dated 26.4.2005 of Mr. Rajesh Baxi, Head-Legal of the applicant denying each and every allegation and contention contained in the counter-statement.

5. The rectification application came up before us for hearing on 19.2.2008 at the Bench sitting at Ahmedabad when Dr. Rajeshkumar H. Acharya & Shri Bharat S. Shah, Advocates appeared on behalf of the applicant and Shri Y.J. Trivedi and Shri Ravi Karnavat, Advocates appeared on behalf of the respondent.

6. Dr. Acharya, learned Counsel for the applicant, submitted that the applicant is the person aggrieved within the meaning of Section 57 of theas the applicant has filed a suit before the High Court of Delhi against the respondent for restraining it from using the trade mark PIOZULIN and thus the applicant is some way or the other substantially interested in removing the registered trade mark PIOZULIN as it contains the entire trade mark PIOZ of the applicant. Both the applicant and the respondent are in the same trade by selling medicinal preparations goods in the same class; that the registration of the impugned trade mark of the respondent is in restraint of the legal rights of the applicant. If the trade mark of the respondent is not expunged from the register, the applicant will and is likely to suffer damage to its reputation and goodwill by reason of registration of trade mark of the respondent.

7. The learned Counsel contended that the mark of the respondent was not distinctive on the date of making application for registration as there was no user to acquire distinctive character specially when an identical mark for goods of similar description of the applicant was in use. The application of respondent for registration was on the basis of proposed to be used, which obviously means that there was no user to acquire a distinctive character by way of use of the mark on the goods of the respondent. The respondent has not only copied the applicant's mark but the whole mark of applicant has been taken in to the respondent's mark PIOZULIN and by merely adding suffix ULIN, the respondent's mark does not become distinctive and capable of distinguishing the goods of the respondent from that of the applicant's goods. The suffix ZULIN in the respondent's mark is bound to be slurred by the doctors even in writing the prescription. The learned Counsel contended that the Registrar without sufficient cause has wrongly allowed registration of the impugned mark and wrongly remains on the register.

8. Learned Counsel contended that the applicant is the prior adopter, prior user and prior applicant of the trade mark PIOZ. He drew our attention to copy of plaint of suit No. 2566 of 2001, for permanent injunction restraining the defendant from passing off, rendition of accounts, etc. filed by the applicant against the respondent, marked as Exhibit-A to reply to the counter-statement, wherein at para 4 it is stated that the plaintiff (applicant herein) in mid 2000, adopted the trade mark consisting of the word 'PIOZ' in respect of its product relating to Pioglitazone Hydrochloride tablets. After receipt of official search report dated 25.10.2000 from the Trade Marks Registry that the trade mark PIOZ is available for registration, an application for registration of the trade mark was filed on 18.12.2000. By pointing out at para 4.2 of the copy of reply of the defendant (respondent herein) in the suit which is annexed as Annexure-A to the counter-statement to the present application, the learned Counsel submitted that the respondent has stated therein that it applied for registration of the trade mark PIOZULIN on 19.1.2001. When the respondent applied for registration of trade mark, the goods or products bearing the trade mark POIZ of the applicant were already in the market. In support of his contention that the applicant is the prior user of the mark, he took us to the copies of the Trade Marks Journals furnished by the applicant containing applications of applicant and the respondent.

9. The learned Counsel contended that the plea of the respondent that the word PIO is common to trade is without any basis. The list of companies/persons alleged to be using the word PIO in any form to describe their medicinal and pharmaceutical preparations has no evidence to show their extensive user. It is not enough to mention the names of certain product or trade mark. There should be evidence before the tribunal that there is an extensive user of the prefix/suffix PIO and that this mark had acquired reputation by user in the market. In support of his contention, the learned Counsel relied upon the decision in the Anglo French Drug Co. (Eastern) Ltd. v. Hony-N-Bois and Anr. 1989 (9) PTC 289 (Bom) .

10. Dr. Acharya contended that the mark of the respondent is deceptively similar and the goods covered by both the marks are of the same classification and for the purpose of treatment of the same ailment. He contended that the use of registered trade mark of the respondent in relation to the respondent's pharmaceutical and medicinal preparation is likely to cause confusion or deceive public as to the trade origin having regard to the wide and immense reputation and goodwill earned by the applicant in its trade mark PIOZ which is used in relation to the pharmaceutical and medicinal preparations of the applicant. The respondent's mark cannot be registered as the nature of the said mark is such as to deceive the public or cause confusion amongst the unwary consumers. The confusion and deception between the goods of the applicant and the respondent has arisen and is bound to arise in the market and amongst the trade and public. In view of the decision of the Honb'le Apex Court in Cadila Healthcare Limited v. Cadila Pharmaceuticals Limited 2001 PTC 300 (SC), the respondent was not entitled to obtain registration of its impugned mark which is deceptively similar to the applicant's mark. He further contended that the respondent's mark would otherwise be disentitled to protection in a Court as its use by the respondent would tantamount to passing off its goods as well-known goods of the applicant. The learned Counsel in support of his submissions relied on the a number of cases, some of which are - (a) Ruston & Hornsby Ltd. v. Zamindara Engineering Co. PTC (Suppl) (1) 175 (SC), (b) USV Limited v. IPCA Laboratories Limited , (c) Bio-chem Pharmaceutical Industries v. Astron Pharmaceuticals and Anr., (d) Sanat Products Ltd. v. Glade Drugs & Nutraceuticals Pvt. Ltd. and Anr., (e) Horlicks Limited and Ors. v. Uttam Sadhukan, (f) Fena Private Limited v. Nipa Chemicals Pvt. Ltd. and Ors. 2004 (8) PTC 371 (IPAB), (g) American Home Products Corporation, New York v. K.V. Chennamallu 2004 (28) PTC 154 (IPAB) , (h) Ind Swift Ltd., v. Registrar of Trade Marks 2005 (30) PTC 646 (IPAB) , (i) Solvay and Cie v. Mexin Medicaments Private Limited and Ors. 2004 (29) PTC 654 (IPAB) , (j) Smithkline Beecham Pharmaceuticals (India) Ltd. and Ors. v. Prakesh Setia and Ors. 2002 (25) PTC 482 (Del) , (k) Ranbaxy Laboratories Limited v. V. Anand Prasad and 4 Ors. 2004 (28) PTC 438 (IPAB) and (I) Glaxo Group Ltd. v. Voltas Ltd and Ors. 2006 (32) PTC 562 (IPAB) .

11. Learned Counsel Dr. Acharya submitted that the adoption of impugned mark by the respondent is not honest and bonafide because when the respondent adopted, its mark, at that time the applicant's application was not only pending for registration but the goods or preparations of the applicant bearing the trade mark PIOZ was already in the market and the respondent was fully aware about the applicant's trade mark and its use. There is no explanation from the respondent as how it happened to adopt the impugned mark. As has been submitted earlier, the respondent has not only copied the applicant's mark but taken the respondent's mark in its entirety into its mark PIOZULIN. Relying the decision in Riverdale School Society v. Riverdale high School and Ors. 2008 (36) PTC 131 (IPAB) , the learned Counsel submitted that the respondent is not the proprietor of the impugned mark as it is necessary for the respondent, who has obtained registration of the trade mark, to establish its proprietary right but the respondent had failed to do so. The respondent has obtained the registration of trade mark without disclosing about the suit filed before the High Court of Delhi against the respondent and objections raised therein by the applicant the respondent wrongly pursued the matter with the Registrar of Trade Marks for obtaining registration of the impugned mark. As such, the impugned registration is obtained by practicing fraud, misrepresentation and concealment of facts from the Registrar of Trade Marks. Relying on the decision in G. Narayanaswamy Reddy v. Government of Karnataka and Anr.  and S.P. Chengalvaraya Naidu v. Jagannath, the learned Counsel submitted that the non-disclosure of fact of filing suit opposing the use of PIOZULIN by the respondent amounts to suppression of material fact and registration obtained on such basis has to be treated as a nullity by every court/tribunal.

12. Shri Y.J. Trivedi, learned Counsel for the respondent submitted that the respondent has coined, invented and adopted the mark PIOZULIN and the application for registration was accepted and registration granted as no opposition has been filed by any person. The entry made on the register is on the basis of application of the respondent and the respondent has used and is using the mark openly, extensively and continuously in respect of pharmaceutical products and has incurred substantial expenses on promoting sale of such products. The mark of the respondent is capable to distinguishing its goods from goods of the others. When both marks are compared as a whole, the suffix ZULIN of the mark is capable to distinguish the respondent's product in the market. The respondent had applied for registration of the mark with definite intention to use the mark PIOZULIN. The applicant is not the person aggrieved to file the present application as the applicant has failed to put forward any statement supported by proper materials and details that it is the person aggrieved to file this rectification application and unless the applicant establishes the said grounds with material fact, the present application is not maintainable and deserves to be dismissed with cost.

13. Shri Trivedi submitted that the applicant's claim that it is the prior adopter and prior user is false because of the fact that the two marks are different to each other. The mark of the applicant is not an invented word and is containing prefix PIO which is a prominent word derived from PIOGLITAZONE Hydrochloride- the name of the drug and, therefore, this prefix is indicative of the drug and it is a common practice in the pharmaceutical field to use such words and, as per the knowledge of the respondent, PIO is used as a prefix by more than 17 companies and a list of such companies is available on the record as Annexure-A to the applicant's affidavit filed in suit No. 2566 of 2001 before the High Court of Delhi. Relying on the decisions in SBL Ltd. v. Himalaya Drug Co. 1997 PTC (17) (DB), J.R. Kapoor v. Micronix India 1994 Supp (3) SCC 215, Corn Products Refining Co. v. Shangrila Food Products Ltd. and Avial Chemicals Pvt. Ltd. and Anr. v. Intas Pharmaceuticals Ltd. 2001 (21) PTC 601 (Del) , the learned Counsel submitted that in medicinal products the basic drug or ointment being the base of many of the products, the word like PIO has much relevance in describing the products. The respondent's products/goods is sold in packing material which is different, in colour and getup and having different monogram, from that of the applicant's packing, getup and colour, hence there is no possibility of causing any confusion or deception in the trade. To substantiate his submission that there will be no likelihood of confusion, the learned Counsel took us to Annexure-C, which contains photocopies of cartons and strips of products of different companies using the word PIO filed in the aforesaid suit before the High Court of Delhi.

14. The learned Counsel submitted that it is already averred in the counter-statement that the respondent has coined, invented and adopted the mark and got registration. The prefix of the mark has been taken from the main ingredient of the respondent's product and as such no question of dishonesty or malafide arise in such adoption. The contention of the applicant that the respondent has obtained registration by practicing fraud, misrepresentation and concealment of facts from the Registrar of Trade Marks is baseless in the absence of any particulars thereof. The respondent is the proprietor of the mark as the application for registration was made with definite intention to use the same and respondent is accordingly using the mark.

15. After hearing the arguments of both the sides and on perusal of records, the first question to be considered by us is as to whether the applicant is the person aggrieved to file the present application. The Courts have given liberal construction to the expression person aggrieved. The test to determine person aggrieved is the one propounded in Powell's Trade Mark (1894) 11 RPC 4. A person aggrieved includes the rivals in the same trade who are aggrieved by the entry of the rival's mark in the register or person whose legal rights would or might be limited if the mark remains on the register, he could not lawfully do that which, but for the existence of the mark on the register he could lawfully do. The applicant in the present case is in the business of manufacturing and trading in medicinal and pharmaceutical preparations like the respondent. The registration of trade mark obtained by the respondent is in restraint to the legal rights of the applicant and is causing embarrassment to the applicant. Applying the above referred propounded test, the applicant is the person aggrieved.

16. It is evident from the records that the applicant is the first in point of time to adopt and use the mark PIOZ. When it is so, the respondent's mark cannot be capable of distinguishing its goods from that of applicant's goods which was already in market. The exception carved out of Sub-section (1) of Section 9 of thewill not be available in the present case as the mark applied for was on the basis of proposed to be used and as such there was no user to acquire a distinctive character. If it is found that the nature of the mark of the respondent is such as to deceive public or cause confusion owing to similarity of mark and the goods covered by the earlier mark, which we will discuss a little later, the respondent's mark will not be registrable as the provisions of Clause (a) of Sub-section (2) of Section 9 and Sub-section (1) of Section 11 of thewill hit the mark of the respondent. Similarly, the respondent's mark will not be registrable as it attracts the relative grounds of refusal contained in Sub-section (2) of Section 11 if the respondent's mark is proved to be detrimental to the distinctive character or repute of the applicant's mark. The plea of PIO being common to trade is not acceptable as there is no evidence that the list of marks furnished with the word PIO are in extensive use. Out of the list, only two marks are registered and rest is advertised before acceptance and there is no evidence of extensive user of those registered marks consisting of prefix or suffix PIO. The averment of the respondent that its mark was coined and invented is half truth as the mark is not invented. In the case Anglo French Drug Co. (Eastern) Ltd., the appeal was preferred against the order of Joint Registrar ordering registration of trade mark consisting of the word HEPAX as distinctive and rejecting the opposition of registered proprietor of trade mark HEPASYP. One of the pleas raised was that the mark HEPAX is invented word. The court at para 6 observed thus: 'I have also come to the conclusion that the word "HEPA" cannot be said to be an invented word. If that is so, the respondent could not have applied for registration of their mark in all probability it could be said that they have sought to copy the petitioner's mark. Regarding the plea that there are series of marks with the prefix "HEPA", the court observed thus: 'In the present case, the Applicants/Respondents had no evidence as to the user of the marks with the common element. The learned Registrar just took note of those products and apparently was satisfied with the same but I am afraid that in the absence of any evidence of extensive user of those products it is not permissible to draw any inference as to their user from the presence of the mark on the register.' The cases of SBL Ltd. and J.R. Kapoor as cited by the respondent in support of its contention that PIO is common to trade will not be of any help as they are distinguishable. In the first case Liv was found not only descriptive but also publici juris and there were about 100 drugs in the market using the abbreviation Liv and in the second case the word Micro was found to be descriptive of micro-technology used in production of many electronic goods which daily come to market and two marks were phonetically totally different and even the visual impression were different. Similarly, the statement of law from In re: Harold's Application, (1935) 52 RPC 65 cited with approval by the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd. (supra) it was stated therein that "This principle clearly requires that the marks comprising the common element shall be in fairly extensive use and I have mentioned in use in the market in which the marks under consideration are being or will be used." with the condition that the common elements which is also contained in a number of other marks. Also, in Aviat Chemicals Pvt. Ltd. & Anr. (supra) both the drugs were Scheduled drugs and the prefix LIPI, a generic word was common to trade and being used for several products of same nature by more than 20 companies for number of years even prior to adoption and use by the plaintiffs and hence the Court viewed that the plaintiffs cannot have superior claim over the product.

17. A trade mark is not registrable if the use of such mark is likely to cause deception or confusion among the public. While considering the question whether the two matters Falcigo and Falcitab are likely to give rise to confusion or not in the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra), the Apex Court has observed at page 305 as under:

Dealing with the question as to whether there was likelihood of confusion between the two marks, which was the view taken by Desai, J. of the Bombay High Court in that case which was over-ruled by the Division Bench, this Court observed at page 978 as follows:

We think that the view taken by Desai, J., is right. 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 proceedings 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 questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word. It is well recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai. J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.
The Supreme Court while dealing with a case where an application for registration had been declined and accepted the opposition to the application held that what the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or to cause confusion has emphasized the principle laid down in the National Sewing Thread Co. Ltd.'s case by quoting the principle at page 304 of the judgment in the Cadila Health Care Ltd. as under:

In National Sewing Thread Co. Ltd., Chidambaram v. James Chadwick and Bros Ltd., this Court was dealing with a case where an application for registration of a trade mark had been declined by the Registrar who accepted that objections filed by the respondent to the application for registration. While interpreting Section 8 of the Trade Marks Act which provides that no trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would by reason of its being 'likely to deceive or to cause confusion' or otherwise, be disentitled to protection in a "Court of Justice", this Court observed at page 363 as under:

Under this Section an application made to register a trade mark which is likely to deceive or to cause confusion has to be refused notwithstanding the fact that the mark might have no identity or close resemblance with any other trade mark. What the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or to cause confusion.
This Court elaborated this principle further at page 363 as under:

The principles of law applicable to such cases are well-settled. The burden of proving that the trade mark which a person seeks to register is not likely to deceive or to cause confusion is upon the applicant. It is for him to satisfy the Registrar that his trade mark does not fall within the prohibition of Section 8 and therefore, it should be registered. Moreover in deciding whether a particular trade mark is likely to deceive or cause confusion that duty is not discharged by arriving at the result by merely comparing it with the trade mark which is already registered and whose proprietor is offering opposition to the registration of the mark. The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing.
The Hon'ble Court further observed at pages 715, 316 and 317 in the Cadila Health Case Ltd. Judgment as under:

As far as present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.
Here, it will be useful to refer to the decision of Morgenstern chemical Company's case (supra) where it has been held as under:

5. In the field of medical products, it is particularly important that great care be taken to prevent any possibility of confusion in the use of trade marks. The test as to whether or not there is confusing similarity in these products even if prescribed and dispensed only by professionally trained individuals does not hinge on whether or not the medicines are designed for similar ailments. The rule enunciated by Judge Helen in Cole Chemical Co. v. Cole laboratories D.C. Mo. 1954, 118F, Supp. 612, 616, 617, 101, USPQ 44, 47, 48 is applicable here:

Plaintiff and defendant are engaged in the sale of medical preparations. They are for ultimate human consumption or use. They are particularly all for ailments of the human body. Confusion in such products can have serious consequences for the patient. Confusion in medicines must be avoided.

Prevention of confusion and mistakes in medicines is too vital to be trifled with

The observations made by Assistant Commissioner Leeds of the Patent Office in R.J. Strasenburgh Co. v. Kenwood Laboratories, INC. 1955, 106 USPQ 379, 380 are particularly apt. that

Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filing the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced.
Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may therefore be life threatening not merely inconvenient. Nothing the frailty of human nature and the pressures placed by society on doctors there should be as many clear indictors as possible to distinguish two medicinal products from each other. It is not uncommon that in hospitals drugs can be requested verbally and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them. This view finds support from McCarthy on Trade marks, 3rd Edition para 23.12 of which reads as under:

The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required then in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medicinal products such as surgical sutures and clavicle splints.
In Ruston & Hornsby Ltd. (supra) the High Court of Madras has found that there is deceptive resemblance between the word RUSTON and the word RUSTAM and therefore the use of the bare word RUSTAM constituted infringement of plaintiff's trade mark RUSTON. On appeal, the Supreme Court held that if the respondent's trade mark is deceptively similar to that of the appellant the fact that the word INDIA is added to the respondent's trade mark is of no consequence and the appellant is entitled to succeed in its action for infringement of trade mark. In USV Ltd. the issue of deceptive similarity between the marks PIOZ and PIOZED was considered by the High Court of Madras and the Court held thus: "The pronouncing of the word PIOZ and PIOZED will be one and the same since 'ED' in PIOZED will have no sound effect at the time of pronouncing it. The prescription given by the Doctors for purchase of medicines PIOZ or PIOZED will be in scribbling and the spelling normally written by Doctors could not be read by common man, more particularly English knowing literates also. The Chemist in drug stores will also be in the same position to find a distinction between PIOZ and PIOZED scribbled by the Doctors in their prescription. If that is the position even for English knowing literates and chemist in drug stores, it need not be elaborated with regard to the illiterate persons who are taking treatment for the disease diabetic.

The trade mark name of the respondent PIOZED is deceptively similar and will also create confusion in the mind of the customers purchasing medicine of the applicant, who is manufacturing medicine under the trade mark name PIOZ and will also cause loss in the business thereby causing damage.

The applicant has made out a prima facie case in his favour for grant of ad-interim injunction. The loss of reputation or damage to be caused to the business of the applicant cannot be compensated by money value.

There will be no difference in pronouncing the words PIOZ and PIOZED in English and the word PIOZED is deceptively similar and will create confusion in the mind of the consumers of the medicine manufactured under the trade mark name PIOZ by the applicant. The trade mark name of the respondent is also phonetically similar.

The respondent is having four manufacturing industries in medicine and is also manufacturing several other medicines by having market in about 80 countries in abroad. The fact of granting ad-interim injunction against the respondent in manufacturing the medicine under the trade mark name PIOZED, the respondent is not going to close down the factories or its business in medicine referred to above. The respondent can very well manufacture the very same medicine in some other name which is not offending the trade mark name of the applicant PIOZ."

In Bio-chem Pharmaceutical Industries (supra), the question of deceptive similarity between the appellant's trade mark BIOCILIN and respondent's trade mark BICILIN was considered by the High Court of Delhi wherein the Court held as under:

It is apparent that there is a phonetic similarity and if the same word 'BIOCILIN and 'BICILLIN' are spoken by persons belonging to different part of this country and other countries, difference of accent in pronouncing the words 'BIOCELLIN' and 'BICILLIN' would cause confusion. Leave aside general public, sometimes the doctors who write prescriptions themselves will not be able to read distinctly write them in a hurry; the chemist who sells the drug is surely bound to be confused. Many persons, who think faster than their hand moves, do suffer from missing a letter here and there, and in case the doctors innocently with the faster moving thought process and slow moving hand omits 'o', then instead of a medicine prescribed the other medicine is surely to be given.
Counsel for the appellant is right in his submission that Clause (a) of Section 11 of theis attracted and the medicine 'BICILLIN' is likely to be confused for 'BIOCILIN' or vise versa. Consequently, this trade mark 'BICILLIN' could not have been registered.

The High Court of Delhi in the case of Sanat Products Ltd. (supra) held that the mark REFORM is deceptively, constructively and phonetically similar to FEFIRM and it may or likely to cause deception and confusion in the minds of consumers, the dealers and the medical practitioners who issue prescription and nurses who administer to it the patient. Similarly, this Appellate Board in the cases of Fena Private Ltd. (supra) held that NIPA is deceptively similar to NIP and goods are also of same description; in Ranbaxy Laboratories Ltd. (supra), the mark OSTWIN was held to be phonetically and structurally deceptively similar to FORTWIN and even if the rival goods are for curing same ailment, the drug may have a marked difference in composition with completely different side effects and as such there is possibility of harm resulting from any kind of confusion causing unpleasant if not disastrous results; in American Home Products Corporation (supra), it was held when the rival marks are compared as a whole, they are phonetically and structurally deceptively similar and keeping in view this PREXMIN is deceptively similar to PREMARIN more so as the goods are pharmaceutical goods; in Ind Swift Ltd. (supra) it was held that the proposed mark STEMIZ is similar to that of the appellant's mark STEMIN and the same would cause confusion in the trade; in Solvay and Cie (supra) it was held that the mark of the appellant SOLVAY as well as the first respondent's mark SOLVIN are similar to each other and as such, the appellant's mark SOLVAY cannot be permitted to be registered and in Glaxo Group Ltd. (supra) it was held by confirming the order of the Registrar that the applicant's mark Volmax and opponent's mark Voltas, Volfruit and Volfarm were not having much difference when viewed from the perspective of common man and that there is likelihood of causing confusion in the mind of consumer.

By applying the above principles on the present case, PIOZ and PIOZULIN when compared as a whole are so closely resembling that when casually looking at them, the first impression one gets is that both are structurally one and the same as they look alike. Without close scrutiny or inspection one may not at the first sight distinguish the respondent's mark from the applicant's mark. In the two rival marks PIOZ is a common feature and we have already come to the conclusion that the respondent's plea that PIO is common to trade is not acceptable; the only uncommon feature is ULIN and it would be illogical to presume that customer may tend to ignore PIOZ and will pay attention to the suffix of respondent's mark. Moreover, it would be dangerous to split the word PIO + Z and PIO + ZULIN and to compare the part of word PIOZ with the part of PIOZULIN. The trade mark is the whole thing the whole word has to be considered. In the case of the application to register 'Erectiks' Farwall, J. in William Bailey (Bingingham) Ltd's Application, (1935) RPC 136 said thus: "I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared with the other word as a whole.... I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word." As the Supreme Court has said in the Corn Products Refining Co. v. Shangrila Food Products Ltd., that the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural similarity of PIOZ and PIOZULIN is, in our opinion, likely to deceive or cause confusion. The goods covered by both the marks are of similar description (except the applicant's mark is in respect of veterinary preparations also) that is to say medicinal and pharmaceutical preparations and they are for the treatment of similar ailment. Even though both the medicinal preparations are for the treatment of similar human ailment, there is possibility of harm resulting from any kind of confusion and the consumer can have unpleasant if not disastrous results. Specially the consequences can be disastrous if veterinary preparation is administered to human being. In case of medicine, it is purchased by both literate and illiterate residing in villages and towns and also by man of average intelligence and imperfect recollection. We are inclined to agree with the applicants averment, which has not been rebutted or contradicted by the respondent, that the suffix ZULIN in the respondent's mark is bound to be slurred by the doctors even in writing prescription. As the High Court of Delhi in Bio-chem Pharmaceutical Industries (supra) has said that many persons, who think faster than their hand moves, do suffer from missing a letter here and there, and in case the doctors innocently with the faster moving thought process and slow moving hand omits 'o' then instead of a medicine prescribed the other medicine is surely be given. Generally, Doctors write first or few letters of medicine name legibly and rest they scribble which make it difficult even for English knowing person to read. As has been observed by the Madras High Court in the applicant's earlier case (supra) that the spelling normally written by Doctors could not be read by common man, more particularly English knowing literates also; the drug stores will also be in the same position to find a distinction between PIOZ and PIOZED scribbled by the Doctors in their prescription and if that is the position even for English knowing literates and chemist in drug stores, it need not be elaborated with regard to the illiterate persons who are taking treatment for the diabetic. Since the marks are in respect of medicinal products, a stricter test has to be applied in the present case to obviate any possible harm to human health or life. Having regard to these factors, we are of the opinion that the respondents mark is likely to cause confusion and deception among the substantially large number of public and in these premises, we hold that the impugned mark of respondent is deceptively similar to applicant's mark and is hit by the provisions of Sections 9 and 11 of the.

18. A trader or manufacturer acquires a right of property in a distinctive mark merely by using it upon or in connection with its goods irrespective of the length of such user and the extent of its trade. Where the mark is not distinctive owing to already existing similar or identical mark of some other person in use, in such case the trader/manufacturer has to prove it's honest and bonafide adoption and concurrent user. As between the two competitors, like in the present case, it is entirely a question of who gets there first. Where an applicant before applying for registration of a proposed to be used mark makes an application to the Registrar for official search report to ascertain existence of any conflicting mark, whether registered or pending registration, and applies for registration after obtaining 'nil' report, his bonafide is established. In the present case the respondent has neither obtained any search report nor claimed that it has made any market research to ascertain any conflicting mark is in use. It is also not the case of respondent that it had no knowledge at the time of its adoption of the mark that applicant's mark in respect of similar description of goods was in use. In such circumstances, the possible inference that can be drawn is that the adoption of the mark PIOZULIN by the respondent is not honest and bonafide. Further, the respondent made application for registration of the mark on 19.1.2001 and the applicant filed suit for passing off against the respondent in 2001. The respondent in the counter-statement at para 10 has baldly denied the averment of applicant of practicing fraud and misrepresentation and concealment of facts. Likewise, in para 16, the respondent has stated thus: "With regard to Ground 11, we deny for want of notice that the applicant of the present rectification has filed application for rectification of the registration of the trade mark PIOZ under No. 961032 on 4/10/2000 and 977709 on 18/12/2000 in class 5 for the same goods, as alleged. We are not aware about the said marks for applicant of the present rectification is advertised in the trade mark journal, as alleged." It is noticed at para 4 of the copy of plaint of suit annexed as Annexure-A to the reply to counter statement that the plaintiff (applicant herein) mentioned the details of its application for registration and filed copies of numbered representation of trade mark PIOZ under No. 977709, copy of permission granted by the Drug Controller General (India) for manufacture of the formulation, Drug License issued by the Food and Drug Administration, etc. along with the plaint. The details mentioned here before show that with the service of copy of plaint the respondent herein had come to know of the said details and as such the denial made in March 2005 in regard to pending application of applicant is unbelievable. The respondent obtained certificate of registration dated 29.6.2004 without disclosing that the applicant's application dated 18.12.2000 for registration of its mark is pending and it has filed suit for passing off against the respondent. Had these vital facts been disclosed to the Registrar, the Registrar would have satisfied itself about the registrability of the mark of the respondent by requiring the respondent to prove its ownership and entitlement to the mark applied for, the distinctiveness of its mark and that the mark will not cause any confusion or deception on the part of public.

19. We are therefore, of the view that the registration of the respondent's mark is made without sufficient cause and wrongly remaining on the Register. Further, the registration obtained by the respondent by concealing the vital facts to the decision making of the Registrar, which decision affect the interest of the society at large/purity of register, the registration obtained by the respondent is liable to be expunged from the register.

20. In view of the above, the rectification application is allowed and the Registrar is directed to expunge the trade mark No. 985092 from the register. However, there is no order as to the costs.