J.B. Goel, J.

1. This application (I.A. No. 1771/91) under Order 39, Rules 1 and 2 read with Section 151 of the Code of Civil Procedure has been filed by the plaintiff for temporary injunction for restraining defendants and their agents, etc. from selling or offering for sale pharmaceutical and medicinal preparation under the trade mark DICMOL or any other trade mark identical or deceptively similar to the plaintiffs trade mark DICLOMOL in a suit filed by it for permanent injunction restraining defendants from passing off their goods under the trade mark DICMOL and other ancillary reliefs. Ex parte ad interim injunction was granted on 7.2.1996.

2. The case of the plaintiff is that the plaintiff is a company incorporated under the Indian Companies Act, 1956, in the year 1981, and is engaged in the field of manufacturing, development and marketing of pharmaceutical and medicinal preparations; and due to large scale advertisement and other innovative promotional schemes and their medicines being of superior quality have acquired reputation in the market, medical circle and consumers. It is also alleged that the plaintiff inter alia are manufacturers of Anti-inflammatory and analgesic medicines in the form of Diclofenac Sodium and Paracetamol tablets, injections and gel which are sold under the trade mark DICLOMOL. The said medicine is used for treatment of various diseases like Rheumatoid arthritis, osteoarthritis, ankylosing spondylitis, cervical spondylosis, intervertebrae disc syndrome and sciatica, non-articular rheumatic conditions such as fibrositis, myositis, bursitis, lower back pain, soft tissue injuries, painful inflammatory conditions in gynaecology, post-operative and post-traumatic inflammation and swelling, pain and inflammation following dental surgery and acute attacks of gout. The plaintiff had adopted this trade mark on 1st September, 1988 and after obtaining approval from the Drugs authorities they launched the sale of the product under this trade mark in the Indian market on 25th July, 1989. Since then they have spent Rs. 92 lacs on publicity and due to wide publicity and their product being of high quality, the medicine has acquired a very good reputation in the market; their trade mark DICLOMOL appears in bold type face on a coloured strip having a half arrow head at its one end in an original artistic work, that their sales have increased from Rs. 27.63 lacs during the year 1989 to Rs. 346.11 lacs during the year 1994 and the audited figures for subsequent period were not readily available with them when the suit was filed. The plaintiff has also given three instances where the plaintiff had successfully injuncted infringers from passing off their product sold under the said trade mark.

3. It is then alleged that for the first time in the month of May, 1995 the plaintiff came to know that the defendant-No. 2 was also manufacturing similar pharmaceutical product which was being marketed by defendant No. 1 under the trade mark DICMOL; which is identical and deceptively similar to that of the plaintiffs trade mark DICLOMOL. The defendants were thereby passing off their goods as those of the plaintiff with the intention of encashing upon the goodwill and reputation of the plaintiff associated with the plaintiffs said trade mark. On coming to know of this, plaintiff by means of a legal notice dated 1st May, 1995 required the defendants to cease and desist from using the trade mark of DICMOL or any other mark which is identical or deceptively similar to the trade mark DICLOMOL of the plaintiff and to tender an undertaking to that effect but vide their reply dated 14th May, 1995 defendant No. 1 showed their unwillingness to this request of the plaintiff and declined to comply this. The plaintiff did not file the suit for some time as the goods of the defendants kept disappearing sporadically from the market until they were again noticed in the month of January, 1996. Plaintiff has accordingly filed the present suit for permanent injunction and sought interim injunction as aforesaid.

4. Only defendant No. 1 has filed the written statement and reply to the LA. and has contested the suit and the application of the plaintiff. It is not admitted that the plaintiff is the proprietor of the trade mark DICLOMOL or they adopted this trade mark on 1st September, 1988 or have been continuously using and marketing their products since 25th July, 1989, or that the trade mark of the plaintiff has acquired reputation and goodwill or their sales are of the extent as alleged. It is admitted that defendant No. 2 is a manufacturer and defendant No. 1 is marketing their similar medicinal product under the trade mark DICMOL since 25.11.1992 and it is alleged that their use is continuous, extensive, open and uninterrupted to the knowledge of the plaintiff. It is denied that the defendants sales had sporadically disappeared after the notice was sent by the plaintiff. It is also denied that the defendants trade mark DICMOL is identical or deceptively similar to the alleged trade mark DICLOMOL of the plaintiff. It is thus denied that the defendants are passing off their goods as those of the plaintiff by using trade mark DICMOL. It is also alleged that the suit is barred by principles of waiver, acquiescence, estoppel, laches and delay and is otherwise not bona fide, is false and liable to be rejected under Order 7 Rule 11, CPC. Plaintiff has filed replication denying the averments made by the defendant.

5. Both the parties have relied on a number of case law in support of their contentions, plaintiff claiming that the trade mark of the defendant is identical or deceptively similar whereas learned Counsel for the defendant has contended that the two marks are not identical or deceptively similar and otherwise also the plaintiff had taken the trade mark from the generic words Diclofenac Sodium and PARACETAMOL which is basic medicinal product; first 5 letters are from Diclofenac and last three letters are the last three letters of the word PARACETAMOL. This is descriptive of the name of the medicines to which it relates and plaintiff has got no exclusive right to use such descriptive marks. He has also contended that the plaintiff is guilty of delay, laches and acquiescence and for these reasons the plaintiff is not entitled to the injunction interim or perpetual.

6. Both the trade marks in question are not registered ones. In a case of action for passing off when the marks of two traders are identical or deceptively similar priority in adoption and use is the determining factor and in order to succeed at this stage plaintiff is required to establish user of its mark prior in point of time than the impugned user of the defendant.

7. The plaintiff has placed on record copy of letter dated 7.1.1989 from the Drugs Controller, U.P., Lucknow addresed to it in reply to their two letters dated 22.9.1988 and 6.10.1988 whereby permission to manufacture inter alia the drug, namely, DICLOMOL tablets was granted and this medicinal product was allowed to be added on the existing Drug Manufacturing Licence; the plaintiff has also placed on record copies of Invoices showing their sales under this mark since 25.7.1989. Photo copies of some advertisements of the product under the Trade Mark DICLOMOL, of the publication in the India Pharmaceutical Guide, 1995, Retail Store Audit and Retail Market Report for Pharmaceutical Formulations in India conducted by the Operations Research Group giving technical details of the product, have also been placed on record. This material prima facie shows that the plaintiff had adopted the trade mark DICLOMOL in respect of pharmaceutical and medicinal product Diclofenac Sodium and Paracetamol in the form of tablets in the year 1988; the sale of the product under the trade mark DICLOMOL was started on 25th July, 1989. The plaintiff claims to have incurred expenditure amounting to Rs. 92 lacs towards publicity of this product and their sales of this product have increased from Rs. 27.63 lacs during the year 1989 to Rs. 346.11 lacs during the year 1994. Prima facie this material shows that the plaintiff is the actual user of the trade mark DICLOMOL since 1989.

8. Only defendant No. 1 is contesting the suit. As already noticed the case of the defendant No. 1 is that defendant No. 2 is manufacturing the product while defendant No. 1 is selling their product under the trade mark of DICMOL since November 25, 1992.

9. It is thus the plaintiff who had adopted first and is the prior user of the trade mark DICLOMOL in respect of the aforesaid medicinal preparations.

10. Now the question is whether the trade mark DICMOL of defendant is identical or deceptively similar to that of the plaintiffs mark DICLOMOL.

11. Reliance has been placed on the following case law.

12. In M/s. Panacea Biotec Ltd.v. M/s. Recon Ltd.,(16) 1996 PTC 561 the plaintiff who were manufacturing NIMESULIDE TABLETS under the brand name NIMULID, a preparation for treatment of inflammatory conditions and similar other bodily ailments, filed a suit for passing off against defendant who was likely to introduce similar medicine under the brand name REMULIDE. The learned Judge after referring to (1) Griffin Laboratories (P) Ltd.v. Indian National Drug Co. P. Ltd.,1989 IPLR (Vol. 14) page 9, and (2) In re: Orlwoola 1909-1910 RPC (Vol. 26-27) 850 laid down the following principles:

...Where a party uses a discriptive and generic term for its trade mark it cannot be given sole right to use the same to the exclusion of other traders. Commonly used words in trade and descriptive of the nature or colour or laudatory of the quality of the goods cannot be permitted to be monopolised. Similarly, in the case of a medicine, if a manufacturer uses the name of the basic drug of which it is constituted, no monopoly can be claimed by him in regard to the use of the same as his trade mark.

and held that as plaintiffs trade mark NIMULID is a short form of the basic drug NIMESULIDE, first three letters and the last four letters were taken from this main generic word by skipping the letters es and e and this could be termed as a misspelling of the word NIMESULIDE. Plaintiff could not claim exclusive right in a mark having generic or basic name of the drug. As observed below this is not so in the case in hand.

13. In M/s. Johnn A Wulfingv.C.I. and P. Laboratories Ltd., AIR 1984 Bombay 281 (DB) the appellant as registered proprietor of the registered trade mark COMPLAMINA for medicinal and pharmaceutical preparations since 1966 in the form of Ampules (under Doctors prescription) and tablets (across the counter) filed objections against the application of respondent for registration of the mark CIPLAMINA in respect of similar medicinal preparation. Joint Registrar held that the respondents mark was deceptively similar to the appellants registered mark. This was reversed by the learned Single Judge who held that phonetically CIPLAMINA is not similar to COMPLAMINA as pronouncement of the prefix COM in COMPLAMINA is absolutely different from that of the prefix CIP in CIPLAMINA eliminating likelihood of deception or confusion.

14. Regarding the visual aspect also the learned Single Judge said that the two are materially different inasmuch as first letter C and last 4 letters MINA which were common do not make any substantial difference as the dominating impression of the word COMPLAMINA is the distinctive M in the first syllable which is missing in the word CIPLAMINA. The Division Bench agreeing with the learned Single Judge that the two marks were not similar observed that though two words have strong resemblance and they differed in minor respects in that in place of OM in COMPLAMINA the letter is I in CIPLAMINA but in both these words it is not the suffix that is the controlling sound but the disparate prefix COM in one and GIF in the other which do not have the same sound, one is pronounced as KOM or K whereas the other as Cee which make all the difference and thus there was no real tangible danger of confusion in the mind of the public.

15. In this case reliance was inter alia placed to the following factor emphasised in Kerlys Law of Trade Marks, (IIth Edition Page 416), viz., the first syllable of a word mark is generally the most important as there is a tendency of persons using the English language to slur the termination of the words. Thus in this case visually and phonetically the two words were found to be dis similar. This case is not of any help and is distinguishable because in the marks DICLOMOL and DICMOL both prefix DIC and suffix MOL are common.

16. In F. Hoffimann-La Roche and Co. Ltd.v. Geoffery Manners and Co. Private Ltd., AIR 1970 SC 2062 [LQ/SC/1969/320] the appellant was a registered proprietor of the trade mark PROTOVIT in respect of pharmaceutical preparations. Later on respondent got registration of its mark DROPOVIT in respect of medicinal and pharmaceutical preparations and substances. On their attention being drawn, the appellant applied for rectification/removal from the Register of the latters mark on the ground that it resembled their mark and was likely to deceive or cause confusion. The Joint Registrar rejected it. Learned Single Judge of the Bombay High Court dismissed the appeal. Letters Patent Appeal was also dismissed by a Division Bench. In appeal the Supreme Court referred to the tests for comparison of the two marks as formulated in Pianotist Co. Ltd.s application (1906) 23 RPC 774; Aristoc v. Rysta Ltd.,1945 RPC 65 and Tokalan Ltd.v.Davidson and Co.,32 RPC 133 and it was held: in order to decide whether the word DROPOVIT is deceptively similar to the word PROTOVIT each of the two words must be taken as a whole word. It was found that though the suffix VIT is common word indicating that the goods are Vitamin preparations and thus was both discriptive and common to the trade; but in the uncommon first part, the letters D and P in DROPOVIT and the corresponding letters P and T in PROTOVIT cannot possibly be slurred over in pronunciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view. Visually and phonetically the two marks were thus held to be not similar. This is not the position in the case in hand. To that extent this authority is not of any help. In that case contention was raised for the appellant that the word DROPOVIT was a combination of three common words DROP OF VITAMIN and was a descriptive word and in English language cannot be said to be an invented word. This was not accepted and it was held as under:

It is true that the word DROPOVIT is coined out of words commonly used by and known to ordinary persons knowing English. But the resulting combination produces a new word, a newly coined word which does not remind an ordinary person knowing English of the original words out of which it is coined unless he is so told or unless at least he devotes some thought to it. It follows that the word DROPOVIT being an invented word was entitled to be registered as a trade mark....

17. Reliance was placed in this case as to the meaning of invented word as explained by Parker J. in Re.: Diabolo (1908) 25 RPC 265 (which was also approved in Cordovav. Vick Chemical Co., (1951) 68 RPC 103) as under:

To be an invented word within the meaning of the a word must not only be newly coined, in the sense of not being already current in the English language, but must be such as not to convey any meaning, or at any rate/any obvious meaning to ordinary Englishmen. It must be a word having no meaning or no obvious meaning until one has been assigned to it.

18. Learned Counsel for the defendant has contended that in the mark DICLOMOL prefix DICLO has been taken from DICLOFENAC SODIUM and suffix MOL has been taken from Paracetamol which are basic drugs and as such the mark is a descriptive mark and the plaintiff has no exclusive right for its use.

19. The mark may have been so formed but it cannot be said that an ordinary person or even a medical man will be in a position to say that this mark is so composed unless he is so told. The mark in itself does not convey the idea that it is descriptive of the said basic drugs nor has any dictionery meaning. Moreover the mark has to be considered as a whole. Applying the test laid down in Dropovits case (supra) as noticed above, in my view the mark DICLOMOL is not a descriptive word nor a generic word but an invented word.

20. InJ.R. Kapoorv.Micronix India, 1994 (Supp.) (3) SCC 215, plaintiff and defendant were formerly doing business in partnership under the name of M/s. MICRONIX INDIA, manufacturing and selling electric and electronic products since 21.9.1977 and using trade MICRONIX and logo IM Ibeing shown in the well of M. The partnership was dissolved on 14.2.1992 and the respondent started his separate business under the name and style of M/s. Microtelmatix using the trade mark MICROTEL with simple M as his logo in respect of the same description of goods. The plaintiff filed the suit and sought injunction against the use of trade name MICROTEL with letter M. Learned Single Judge granted injunction and the Division Bench dismissed summarily the appeal filed against the same. On further appeal in Supreme Court it was held that the word MICRO being descriptive of the micro technology used for production of many electronic goods no one can claim monopoly over the use of the said word and there being no phonetic or visual resemblance between the words TEL and MIX, users of such products are not likely to be misguided or confused, and accordingly the appeal was allowed and injunction issued by the High Court was set aside. This case is also of no help as two marks were found to be not similar:

21. In Amritdhara Pharmacyv. Satya Dev Gupta,AIR 1963 SC 449 [LQ/SC/1962/200] , it was laid down that (1) every case must depend on its own particular facts, and the value of the authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion;

(2) A trade mark is likely to deceive or cause confusion by its resemblance to another (mark) if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. In considering the matter, all the circumstances of the case must be considered.

(3) For deceptive resemblance two important questions are : (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopted in judging whether such resemblance exists. As to confusion it is perhaps an appropriate description of the state of mind of a customer, who, on seeing the mark, thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection (see Kerly on Trade Mark 8th Edition P.40).

(4) the question has to be approached from the point of view of a man of average intelligence and imperfect recollection who 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 puchased a similar medicine on a previous occasion with a similar name. He would consider the word as a whole without splitting the name into its component parts and not going to its etymological meaning.

22. In Corn Products Refining Co.v. Shangrila Food Products Ltd.,AIR 1960 SC 142 [LQ/SC/1959/182] , the two marks Glucovita and Gluvita which had trade connection between them, except the syllable COin appellants mark, were identical and because of their overall structural and phonetic similarity the two marks were held to be likely to cause confusion and deception to a man of average intelligence and of imperfect recollection and that the syllable CO was not such as would distinguish one from the other to a buyer in our country.

23. The ratio of this case applies to the present case.

24. In the present case, the two marks are used in respect of the same or similar medicinal preparations, overall pattern of the cartons used are similar. Both the marks are in capital letters of same size, shape and colour and are identical except the extra syllable LO in plaintiffs mark. There is not much emphasis on this syllable in pronunciation. They have thus overall structural and phonetic similarity and, therefore, likely to cause confusion and deception to a man of average intelligence and of imperfect recollection, the medicinal product being used for alleviation of various ailments, will be purchased mostly by people in villages and towns, literate as well as illiterate.

25. Learned Counsel for the defendant has also contended that the medicinal product in respect of which these marks are used are scheduled medicines which are sold on the prescription of a doctor and there is no possibility of confusion in that case.

26. Such a contention was also raised in Ranbaxy Laboratories Ltd. v.Dua Pharmaceutical Pvt. Ltd., 36(1988)DLT 133=AIR 1989 Delhi 44, where the competing marks were CALMPOSE and CALMPROSE which was disposed of as under:

....It is true that the said drugs are supposed to be sold on doctors prescription, but it is not unknown that the same are also available across the counters in the shops of various chemists. It is also not unknown that the chemists who may not have CALMPOSE may pass off the medicine CALMPROSE to an unwary purchaser as the medicine prepared by the plaintiff. The test to be adopted is not the knowledge of the doctor, who is giving the prescription. The test to be adopted is whether the unwary customer who goes to purchase the medicine can make a mistake.

27. Such plea for similar reasons was also not accepted in the case of Ciba Geigy Ltd. v. Cross Lands Research Laboratories Ltd., (16) 1996 PTC (Delhi) by K. Ramamoorthy, J.

28. This contention thus also has no force.

It is then contended that plaintiff is guilty of delay, laches and acquiescence because the defendant is using his trade mark since November, 1992 and objection was taken only on May 1, 1995 when the desist notice was given, even after refusal by the defendant to comply in their reply dated May 14, 1995 the plaintiff did not act till February, 1996 i.e. for about nine months.

29. In the case of Shri Gopal Engineering and Chemical Worksv. M/s. Pomx Laboratories,AIR 1992, Delhi 302, relied on behalf of the defendant, it was found as a fact that the defendant was selling their product under the impugned trade mark since 1983 to the knowledge of the plaintiff. The plaintiff had given notice on June 14, 1990 to desist and thereafter the suit was filed on September 15, 1991 after 14/15 months. The injunction was refused inter alia on account of open and concurrent user since the year 1983 apart from the fact that after the notice defendant had been expanding their business and advertising vigorously in newspaper twice a week.

30. In M/s. Hide Sign v.M/s. HI-DESIGN Creations,43 ( 1991) DLT 653 [LQ/DelHC/1991/7] =AIR 1991 Delhi 243 the Court condoned the delay of three years as it was held that the plaintiff did not encourage either expressly or tacitly in using the impugned mark and there was no acquiescence on their part.

31. Plaintiff has denied knowledge of use of mark by defendants before May, 1995. The invoices produced by defendant show that these were made from Lucknow. There is no material placed on record to show that the defendant had advertised their products and if so when and how. Acquiescence cannot be pleaded where the plaintiff is ignorant of the infringement. The notice given by the plaintiff on May 1, 1995 should put defendant to caution from using the said trade mark thereafter and in such circumstances the delay, if any, in instituting the suit after notice will not debar the plaintiff from getting injunction as held in Ganga Prasadv. Gudimani, 1986 PTC 17. Mere delay on the part of the plaintiff in bringing the action does not debar him from suing for an injunction but he may be debarred from recovering the damages for the past. One must look at the circumstances of each case and see whether the conduct of the party complaining has been such as to debar him from enforcing his rights and it will depend on the facts of each case.

32. In the present case there is nothing to show that the plaintiff had encouraged the defendant to use the impugned mark by any overt or covert act. The plaintiff has also given explanation that after the notice dated May 1, 1995 was given the sale of the product of the defendant had sporadically fallen. The defendant has not placed on record the sale figures of the product in question after May 1, 1995. Thus in the circumstances it cannot be said that the plaintiff is guilty of laches, delay or acquiescence or estoppel.

33. The two marks have structural and phonetic similarity giving the impression that the defendant has copied the mark of the plaintiff. The Court will be justified in such a case in arriving at a prima facie view that the conduct of the defendant is not bona fide and that the defendant wanted to cash in on the plaintiffs name and reputation as its sole motive. The burden is cast on the defendant to show that any concurrent user on his part was honest and to the knowledge of the plaintiff. The plaintiff cannot be deemed to have known any such user. In such circumstances plea of delay and laches would be of no avail. (Hindustan Pencil Ltd. v.India Stationery Products, AIR 1990 Delhi 19=38 (1989) DLT 54.

34. In granting or not granting injunction, it is settled law that three factors have to-be kept in view, namely, the establishment of a prima facie case, balance of convenience and whether, if the interim injunction is not issued, it will cause irreparable injury to the applicant.

35. Prima facie case is made out in favour of the plaintiff by adoption and actual user of the mark by the plaintiff on the medicinal preparations as noticed above and it is also established that the plaintiff is the prior user of this mark than the defendant. The trade mark is a kind of property. A trader claims right of property under a distinctive mark by using it upon or in connection with the goods and this right of property is the right to goodwill attached to his business. Passing off by the defendant of his goods as the goods of the plaintiff injures that right. This right is entitled to be protected otherwise irreparable loss will be caused to the plaintiff. The balance of convenience also lies in favour of the plaintiff.

36. Learned Counsel for defendant, however, contended that sale of the defendants are confined to the territory of State of U.P. whereas the plaintiffs products are marketed in North Eastern States as appears from the invoices placed on record. No such plea has been taken either in the written statement or in the application and this plea has been taken in arguments. This plea is an afterthought and cannot be said to be bona fide. In the circumstances, the plaintiff is entitled to protection during the pendency of the suit by way of interim injunction. The interim injunction granted on February 7, 1996 is acccordingly confirmed till the disposal of the suit.

37. Nothing mentioned herein will be considered as expression of opinion on merits of the case which will be decided on trial of the suit.