# CADILA HEALTH CARE LTD v. CADILAPHARMACEUTICALS LTD

- **Citation:** [2001] 2 S.C.R. 743
- **Court:** Supreme Court of India
- **Decided:** 2001-03-26
- **Bench:** B.N. Kirpal, Doraiswamyraju, Brijesh Kumar
- **Source:** https://unisonlegal.in/judgment/supreme-court-of-india/cadila-health-care-ltd-v-cadilapharmaceuticals-ltd-17913
- **Pages:** 26

## Headnote

B
Trade and Merchandise Marks Act, 1958-Sections 27 & 28-Trade
Mark-Medicinal Drugs-Appellant and respondent manufacturing and selling drug in the brand name of 'Falcigo' and 'Falcitab' respectively-Action
for passing off-Suit for injunction-Trial Coult dismissing interim injunction
C
applictition-Held, strict approach to judge the possibility of confusion should
be taken for medicinal drugs to avoid disastrous results./-F actors to be
considered in deciding action for passing off spelt out for the Trial Coult in
deciding the suit-Drugs and Cosmetics Act, 1940-Section 17B.
Practice and Pmcedure-Reliance of English Cases-Held, English cases
D
and principles cannot be applied to Indian conditions.
Appellant and respondent are pharmaceutical companies manufacturing various pharmaceutical products. The appellant filed a suit seeking
injunction against the respondent before Trial Court from using brand
name ''Falcitab" for its drug as it would be passed off as appellant's drug
''Falcigo" for treatment of same disease in view of confusing similarity and
deception in the names and package. Tbe Trial Court dismissed the application. The appeal filed by the appellant before High Court was also
dismissed.
In appeal to this Court, the appellant contended that there is a
likelihood of deception and confusion among the two drugs which can have
disastrous results; that the fact that the drug is sold only to hospitals or
clinics, cannot, by itself be considered a sufficient protection against confu.
sion; that physicians and pharmacists, though trained people, are not
infallible; and that there can be no provisions for mistake since a mistake
in medicines may prove to be fatal.
The respondent contended that the word ''Falci" is taken from the
-the name of the dicease ''Falcipharum Malaria"; that it is a common
practice in pharmaceutical trade to use part of the word of the disease as a
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SUPREME COURT REPORTS
[2001] 2 S.C.R.
trade mark to indicate that the drug is meant for a particular disease; that
the drugs e>f the appellant and respondent are Schedule ''L" drugs which
cannot he sold across the counter hut are sold only to hospitals and clinics;
and that there cannot be a remote chance of confusion and deception.
Disposing of the appeals, the Court
HELD : 1.1. One of the important tests which has to be applied in
each case is whether the misrepresentation made by the defendant is of
such a nature as is likely to cause and ordinary consumer to confuse one
product for another due to similarity of marks and other surrounding
factors. What is likely to cause confusion would vary from case to case.
Where medicinal products are involved, the test to be applied for adjudging
the violation of trade mark law may not be at par with cases involving nonmedicinal products. A stricter approach should be adopted while applying
the test to judge the possibility of confusion of one medicinal product for
another by the consumer. While confusion in the case of non-medicinal
products may only cause economic loss to the plaintiff, confusion between
the two medicinal products may have disastrous effects on health and in
some cases life itself. Stringent measures should be adopted specially where
such medicines are the medicines of last resort as any confusion in such
medicines may be fatal or could have disastrous effects. The confusion as
to the identity of the product itself could have dire effects on the public
health. [766-H; 767-A-C]
1.2. The drugs have a marked difference in the compositions with
completely different side effects. The test should be applied strictly as the
possibility of harm resulting from any kind of confusion by the consumer
can have unpleasant and disastrous results. The Courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is
meant for curing the same ailment as the plaintiff's medicine but the
compositions are different. The confusion is more likely in su

## Text

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CADILA HEALTH CARE LTD.
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v.
CADILAPHARMACEUTICALS LTD.
MARCH 26, 2001
[B.N. KIRPAL, DORAISWAMYRAJU AND BRIJESH KUMAR, JJ.]
B
Trade and Merchandise Marks Act, 1958-Sections 27 & 28-Trade
Mark-Medicinal Drugs-Appellant and respondent manufacturing and selling drug in the brand name of 'Falcigo' and 'Falcitab' respectively-Action
for passing off-Suit for injunction-Trial Coult dismissing interim injunction
C
applictition-Held, strict approach to judge the possibility of confusion should
be taken for medicinal drugs to avoid disastrous results./-F actors to be
considered in deciding action for passing off spelt out for the Trial Coult in
deciding the suit-Drugs and Cosmetics Act, 1940-Section 17B.
Practice and Pmcedure-Reliance of English Cases-Held, English cases
D
and principles cannot be applied to Indian conditions.
Appellant and respondent are pharmaceutical companies manufacturing various pharmaceutical products. The appellant filed a suit seeking
injunction against the respondent before Trial Court from using brand
name ''Falcitab" for its drug as it would be passed off as appellant's drug
''Falcigo" for treatment of same disease in view of confusing similarity and
deception in the names and package. Tbe Trial Court dismissed the application. The appeal filed by the appellant before High Court was also
dismissed.
In appeal to this Court, the appellant contended that there is a
likelihood of deception and confusion among the two drugs which can have
disastrous results; that the fact that the drug is sold only to hospitals or
clinics, cannot, by itself be considered a sufficient protection against confu.
sion; that physicians and pharmacists, though trained people, are not
infallible; and that there can be no provisions for mistake since a mistake
in medicines may prove to be fatal.
The respondent contended that the word ''Falci" is taken from the
-the name of the dicease ''Falcipharum Malaria"; that it is a common
practice in pharmaceutical trade to use part of the word of the disease as a
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trade mark to indicate that the drug is meant for a particular disease; that
the drugs e>f the appellant and respondent are Schedule ''L" drugs which
cannot he sold across the counter hut are sold only to hospitals and clinics;
and that there cannot be a remote chance of confusion and deception.
Disposing of the appeals, the Court
HELD : 1.1. One of the important tests which has to be applied in
each case is whether the misrepresentation made by the defendant is of
such a nature as is likely to cause and ordinary consumer to confuse one
product for another due to similarity of marks and other surrounding
factors. What is likely to cause confusion would vary from case to case.
Where medicinal products are involved, the test to be applied for adjudging
the violation of trade mark law may not be at par with cases involving nonmedicinal products. A stricter approach should be adopted while applying
the test to judge the possibility of confusion of one medicinal product for
another by the consumer. While confusion in the case of non-medicinal
products may only cause economic loss to the plaintiff, confusion between
the two medicinal products may have disastrous effects on health and in
some cases life itself. Stringent measures should be adopted specially where
such medicines are the medicines of last resort as any confusion in such
medicines may be fatal or could have disastrous effects. The confusion as
to the identity of the product itself could have dire effects on the public
health. [766-H; 767-A-C]
1.2. The drugs have a marked difference in the compositions with
completely different side effects. The test should be applied strictly as the
possibility of harm resulting from any kind of confusion by the consumer
can have unpleasant and disastrous results. The Courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is
meant for curing the same ailment as the plaintiff's medicine but the
compositions are different. The confusion is more likely in such cases and
the incorrect intake of .medicine may even result in loss of life or other
serious health problems. Although both the drugs are sold under prescription, this fact alone is not sufficient to prevent confusion which is otherwise
like 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
CADILA HEALTH CARE LTD. v. CADILA PHARMACEUTICALS LTD.
745
are required to be taken. (762-H; 763-A-B; E-FJ
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1.3. Trade mark is essentially adopted to advertise one's product and
to make it known to the purchaser. It attempts to portray the nature and
the quality or the product and over a period or time the mark may become
popular. lt is usually at that stage that other people are tempted to pass off
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their products as that or the original owner or the mark. [765-D-E]
1.4. 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 ar~ poisons, not
sweets. Confusion between medicinal products may, therefore, be life threatc
ening, not merely inconvenient. Noting the frailty of human nature and the
pressures placed by society on doctors, there should be as many clear
indicators as possible .to distinguish tW11 medicinal products from each
other. It is not uncommon that in hospitals, drugs can be requested verbelly and/or under critical/pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate
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between the medicine prescribed and brought which is ultimately handed
over to them. (765-G-H; 766-A-BJ
Wander Ltd v. Antox India Pvt. Ltd., (1990) Suppl. SCC 727, referred
to.
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American Cynamid Corporation v. Connaught Laboratories Inc., 231
USPQ 128 (2nd Cir. 1986); Blansett Pharmaceuticals Co. v. Carmick Laboratories Inc., 25 USPQ 2nd 1473 (TTAB 1993); Glenwood Laboratories, Inc. v.
American Home Products Corp., 173 USPQ 19 (1972) 455 F. Reports 2nd
1384 (1972); R.J. Strasenburgh Co. v. Kenwood Laboratories, Inc. 106 USPQ
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379; Morganstem Chemical Company; Syntex Laboratories Inc. v. Norwich
....
Pharmacal Co., 169 USPQ 504 (TTAB 1980), referred to .
McCarthy on Trade Marks, 3rd Edition, referred to.
2. In an action for passing off on the basis of unregistered trade
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mark generally for deciding the question or deceptive similarity the following factors are to be considered by the Trial Court in deciding the suit :
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(a) The nature of the marks i.e. whether the marks are word marks
or label marks or composite marks, i.e. both words and label works;
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(b) The degree of resemblances between the marks, phonetically
similar and hence similar in idea;
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( c) The nature of the goods in respect of which they are used as trade
marks;
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(d) The similarity in the nature, character and performance of the
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goods of the rival traders;
(e) The class of purchasers who are likely to buy the goods bearing
the marks they require, on their education and intelligence and a decree of
care they are likely to exercise in purchasing and/or using the goods;
(0 The mode of purchasing the goods or placing order for the goods;
and
(g) Any other surrounding circumstances which may be relevant in
the extent of dissimilarity between the competing marks.
(767-E-H; 768-A-B]
S.M. Dychem lJd. v. Cadbury (India) lJd., (2000] 5 SCC 573, overruled.
National Sewing Thread Co. lJd., Chidambaram v. James Chadwick and
Bros lJd., AIR (1953) SC 357; Com Products Refining Company v. Shangrila
Food Products Umited, [1960] l SCR 968; Amritdhara Phannacy v. Satya
Deo, AIR (1963) SC 449; Durga Dutt Shanna v. N.P Laboratories, AIR
(1965) SC 980; F Hoffmann-La Roche & Co. lJd. v. Geoffrey Manner & Co.
Pvt. lJd., [1969] 2 SCC 716, referred to.
Erwen Wamink BV v. J Townend & Sons, (1979] 2 AER 927, referred
to.
2. In a country like India where there is no single common language,
a large percentage of population is illiterate and a small fraction of people
know English, then to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing
characteristics of the plaintiff's goods seems to overlook the ground realities in India. While exami_ning such cases in India, it has to be kept in mind
that the purchaser of such goods in India who may have absolutely no
knowledge of English language or of the language in which the trade mark
CAD!LA HEALIB CARE LID. '- CAD!LA PHARMACEUTICALS LID. [KIRPAL, J.) 747
is written and to whom different words with slight difference in spellings
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may sound phonetically the same. (766-F-G]
CIVIL APPELLtXI'E JURISDICTION : Civil Appeal No. 2372 of 2001.
From the Judgment and Order dated 14. 7 .98 of the Gujarat High Court
in Appeal from Order No. 280 of 1998.
B
Ashok H. Desai, Siddharth Chowdhury, Ms. Kumud Singh and Bhargava
V. Desai for the Appellant.
R.P. Bhat, Y.J. Trivedi, Manmohan Singh, M.K. Choudhary, Ashutosh
Kumar and S.K. Verma for the Respondent.
c
The Judgment of the Court was delivered by
KIRPAL, J. Leave granted.
Appellant and respondent are pharmaceutical companies manufacturing
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various pharmaceutical products. The two companies had taken over the
assets and business of the erstwhile Cadila Group after its restructuring under
Sections 391 & 394 of the Companies Act. One of the conditions in the
scheme of restructuring of the Cadila Group was that both the appellant and
the respondent got the right to use the name "CADILA" as a corporate name.
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The present proceedings arise from the suit for injunction which had
been filed by the appellant against the respondent in the District Court at
Vadodara. The suit related to a medicine being sold under the brand name
"Falcitab" by the respondent which, according to the appellant, was a brand
name similar to the drug being sold by it under its brand name "Falcigo".
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The case of the appellant was that its drug "Falcigo" contains Artesunate
.,..
for the treatment of cerebral malaria commonly known as 'Falcipharum' .
After the introduction of this drug, the appellant on 20th August, 1996 applied
to the Trade Marks Registry, Ahmedabad for registration in Part-A, Class-5
of the Trade and Merchandise Marks Act. On 7th October, 1996 the Drugs
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Controller General (India) granted permission to the appellant to market the
said drug under the trade mark of "Falcigo". It is, thereafter, that since
October, 1996 the appellant claimed to have started the manufacture and sale
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of drug "Falcigo" all over India .
The respondent company is stated to have got permission on 10th April,
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1997 from the Drugs Controller General (India) to manufactnre a drug
containing "Mefloquine Hydrochloride". The respondent was also given
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permission to import the said drug from abroad. According to the appellant,
it came to know in April, 1998 that the said drug, which was also used for
the treatment of 'Falcipharnrn Malaria', was being sold by the respondent
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under the trade mark of "Falcitab". The appellant then filed a suit in the
District Court at Vadodara seeking injunction against the respondent from
using the trade mark "Falcitab" as it was claimed that the same would be
passed off as appellant's drug "Falcigo" for the treatment of the same disease
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in view of confusing similarity and deception in the names and more so
because the drugs were medicines of last resort.
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The respondent company stated in the defence that the word "Falci",
which is the prefix of the mark, is taken from the name of the disease
'Falcipharum Malaria' and it is a common practice in pharmaceutical trade
to use part of the word of the disease as a trade mark to indicate to the doctors
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and chemists that a particular product/drug is meant for a particular disease.
It was also the case of the respondent that admittedly the two products in
question were Schedule "L" drugs which can be sold only to the hospitals
and clinics with the result that there could not even be a· remote chance of
confusion and deception. It may here be noticed that Schedule "H" drugs are
those which can be sold by the chemist only on the prescription of the Doctor
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but Schedule "L" drugs are not sold across the counter but are sold only to
the hospitals and clinics.
The Extra Assistant Judge, Vadodara by his order dated 30th May, 1998
dismissed the interim injunction application. He came to the conclusion that
the two drugs "Falcigo" and "Falcitab" differed in appearance, formulation
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and price and could be sold only to hospitals and institutions and there was,
thus, no case had been made out for grant of injunction and there was no
chance of deception or/of confusion specially as the drug was not meant to
....
be sold to any individual.
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The appeal filed by the appellant before the High Court met with no
success. After discussing various cases which were cited before it and after
verifying the cartoons and packings of the respective products, the High
Court came to the conclusion that it could not be said that there was a
likelihood of confusion being caused to an unwary consumer in respect of
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the disputed marks. It observed that there was little chance of any passing
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off one product for the other product.
CADILA HEALTil CARE LID. v. CADILA PHARMACEUTICALS LID. [KIRPAL. I.]
749
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When the special leave came up for hearing, detailed arguments were
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heard and, for the reasons to be given, this Court did not interfere with the
orders passed by the courts below but gave directions regarding expeditious
disposal of the suit. In this judgment, we give the reason for not interfering
and also set out the principles which are to be kept in mind while dealing
with an action for infringement or passing off specially in the cases relating
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to medicinal products. The reason for not interfering with the order appealed
against was that there may be possibility of evidence being required on merits
of the case and directions were given for speedy trial of the suit. Expression
of opinion on merits by this Court at this stage was not thought advisable.
We now proceed to examine the principles on which these cases have been
and are required to be decided.
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Under Section 28 of the Trade and Merchandise Marks Act on the
registration of a trade mark in Part - A or B of the register, a registered
proprietor gets an exclusive right to use the trade mark in relation to the goods
in respect of which trade mark is registered and to obtain relief in respect
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of infringement of the trade mark in the manner provided by the Act. In the
case of un-registered trade mark, Section 27(1) provides that no person shall
be entitled to institute any proceeding to prevent, or to recover damages for,
the infringement of an unregistered trade mark. Sub-section (2) of Section 27
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provides that the Act shall not be deemed to affect rights of action against
any person for passing off goods as the goods of another person or the
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remedies in respect thereof. In other words in the case of un-registered trade
marks, a passing off action is maintainable. The passing off action depends
upon the principle that nobody has a right to represent his goods as the goods
of some body. In other words a man is not to sell his goods or services under
the pretence that they are those of another person . As per Lord Diplock in
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Erwen Wamink BV v. J Townend & Sons, (1979) 2 AER 927, the modem
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tort of passing off has five elements i.e. (I) a misrepresentation (2) made by
a trader in the course of trade, (3) to prospective customers of his or ultimate
consumers of goods or services supplied by him, (4) which is calculated to
injure the business or goodwill of another trader (in the sense that this is a
reasonably foreseeable consequence) and (5) which causes actual damage to
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a business or goodwill of the trader by whom the action is brought or (in
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a quia timet action) will probably do so.
There being an action alleging passing off in the present case, it will
be appropriate to consider a few decisions, specially of this Court, which are
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relevant on the point in issue.
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SUPREME COURT REPORTS
[2001] 2 S.C.R.
In National Sewing Thread Co. l.Jd, Chidambaramv. James Chadwick
and Bros l.Jd, AIR (1953) SC 357, this Court was dealing with a case where
an application for registration of a trade mark had been declined by the
Registrar who accepted the 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:
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"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 docs not fall
within the prohibition of Section 8 and therefore, i: 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 a.;; 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."
.·
In Com Products Refining Company v. Shangrila Food Products
Limited, [1960] I SCR 968, this Court was again concerned with an appeal
arising out of the decision of the Registrar pertaining to registration of a trade
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mark. Mis. Shangrila Food Products had applied for registration of the mark
CADILA HEALTI! CARE LTD. v. CADILA PHARMACEUTICALS LTD. [KIRPAL, l.] 751
"Gluvita" and Mis. Corn Products, who were the owners of registered trade
mark "Glucovita" filed its objections to the registration of the respondent's
mark. The Deputy Registrar came to the conclusion that the two words
"Glucovita" and "Gluvita" were not visually or phonetically similar and that
there was no reasonable likelihood of any deception being caused by or any
confusion arising from the use of respondent's proposed mark. Against the
decision of the Deputy Registrar, the appellant filed an appeal before the High
Court. A Single Judge of the Bombay High Court came to the conclusion,
dis-agreeing with the findings of the Deputy Registrar, that the two marks
were sufficiently similar so as to be reasonably/likely to cause deception/
confusion. The Division Bench, on an appeal, however, set-aside the decision .
of the Single Judge and restored the decision of the Deputy Registrar. While
allowing the appeal, it was observed at page 977 as follows:
"We, therefore, think that the learned appellate Judges were in error
in deciding in favour of the respondent basing themselves on the
series marks, having "Gluco" or "Vita" as a prefix or a suffix".
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
!he 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 proceeding on the English way
of pronouncing an English woni 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 woni is an English woni which to the mass of the
Indian people is a foreign woni. it is well recognised 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."
(emphasis added)
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SUPREME COURT REPORTS
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In Amritdhara Pharmacy v. Satya Deo, AIR (1963) SC 449 the
respondent had applied for the registration of the trade name "Lakshrnandhara"
in respect of a medicinal preparation for the alleviation of various ailments.
This was opposed by the appellant whose trade name "Amritdhara" had
already been registered in respect of similar medicinal preparation. The
qnestion, which arose, was whether the name "Lakshrnandhara" was likely
to deceive the public or cause confusion to the trade. While interpreting
Sections 8 & 10 of the Trade Marks Act, this Court observed at pages 452454 as follows:
"It will be noticed that the words used in the sections and relevant
for our purpose are "likely to deceive or cause confusion". The Act
does not Jay down any criteria for determining what is likely to
deceive or cause confusion. Therefore, every case must depend on its
own particular facts, and the value of authorities lies not so much in
the actual decision as in the tests applied for determining what is
likely to deceive or cause confusion. On an application to register, the
Registrar or an opponent may object that the trade mark is not
registrable by reason of clause (a) of Section 8, or sub-section (1) of
Section 10, as in this case. In such a case the onus is on the applicant
to satisfy the Registrar that the trade mark applied for is not likely
to deceive or cause confusion. In cases in which the tribunal considers
that there is doubt as to whether deception is likely, the application
should be refused. A trade mark is likely to deceive or cause
confusion by its resemblance to another already on the Register 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. As was observed by Parker,J. in Re Pianotist Co. 's
Application, (1906) 23 RPC 774 which was also a case of the
comparison of two words"
"You must take the two words. You must judge them, both by their
look and by their sound. You must consider the goods to which they
are to be applied. You must consider the nature and kind of customer
who would be likely to buy those goods. In fact you must consider
all the surrounding circumstances; and you must further consider
what is likely to happen if each of those trade marks is used in a
normal way as a trade mark for the goods of the respective owners
of the marks." (p.777) .
CADILA HEALTH CARE LID. '· CADILA PHARMACEUTICALS LID. [KIRPAL, I.] 753
"For deceptive resemblance two important questions are:(!) 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 a 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 Marks,
8th Edition, p. 400)
Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names 'Amritdhara' and
'Lakshmandhara' are in use in respect of the same description of
goods, namely, a medicinal preparation for the alleviation of various
ailments. Such medicinal preparation will be purchased mostly by
people who instead of going to a doctor wish to purchase a medicine
for the quick alleviation of their suffering, both villagers & townsfolk,
literate as well as illiterate. As we said in Corn Products Refining Co.
v. Shangrila Food Products l.Jd., [1960] l SCR 968 : AIR (1960) SC
142, 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 and phonetic similarity of the two names
'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to
deceive or cause confusion. We must consider the overall similarity
of the two composite words 'Amritdhara' and 'Lakshmandhara'. We
do not think that the learned Judges of the High Court were right in
saying that no Indian would mistake one for the other. An unwary
purchaser of average intelligence and .;mperfect recollection would
not, as the High Court supposed, split the name into its component
. parts and consider the etymological meaning thereof or even consider
the meaning of the composite words as 'current of nectar' or 'current
of Lakshman'. He would go more by the overall structural and
phonetic similarity and the nature of the medicine he has previously
purchased, or has been told about, or about which has otherwise learnt
and which he wants to purchase. Where the trade relates to goods
largely sold to illiterate or badly educated persons, it is no answer to
say that a person educated in the Hindi language would go by the
etymological or ideological meaning and see the difference between
'current of nectar' and 'current ofLakshman'. 'Current of Lakshman'
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in a literal sense has no meaning; to give it meaning one must further
make the inference· that the 'current or stream' is as pure and strong
as Lakshrnan of the Ramayana. An ordinary Indian villager or
townsman will perhaps know Lakshman, the story of the Ramayana
being familiar to him; but we doubt if he would etymologise to the
extent of seeing the so-called ideological difference between
'Amritdhara' and 'Lakshmandhara'. He would go more by the
similarity of the two names in the context of the widely known
medicinal preparation which he wants for his ailments.
We agree that the use. of the word 'dhara' which literally means
'current or stream' is not by itself decisive of the matter. What we
have to consider here is the overall similarity of the composite words,
having regard to the circumstance that the goods bearing the two
names are medicinal preparations of the same description. We are
aware that the admission of a mark is not to be refused, because
unusually stupid people, "fools or idiots", may be deceived. A critical
comparison of the two names may disclose some points of difference
but an unwary purchaser of average intelligence and imperfect
recollection 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 purchased a similar
medicine on a previous occasion with a similar name. The trade mark
is the whole thing - the whole word has to be considered. In the case
of the application to register 'Erectiks' (opposed by the proprietors
of the trade mark "Erector") Farwell, J. said in William Bailey
(Binningham) Ltd. 's Application, (1935) R.P.C. 136."
"I do not think it is right to take a part of the word and compare
il 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."
Another case relating to medicinal product is that of Durga Dutt
Shanna v. NP. Laboratories, AIR (1965) SC 980. In that case the respondent,
who manufactured medicinal products, had got the word "Navaratna" registered as a trade mark. The appellant, who was carrying on the business in
the preparation of Ayurvedic pharmaceutical products under the name of
"Navaratna Kalpa" applied for registration of the words "Navaratna Kalpa"
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CADILA HEAL1H CARE LID. v. CADILA PHARMACEUTICALS LID. [KIRPAL, !.] 755
as a trade mark for his medicinal preparations. The objection of the respondent to the proposed registration prevailed. This led to proceedings which
culminated in the appeals to this Court. The observations by this Court on
two aspects are very pertinent. Firstly with regard to the difference between
an action for passing off and action for infringement of trade mark, it
observed at page 990 as follows:
"While an action for passing off is a common law remedy being in
substance an action for deceit, that is, a passing off by a person of
his own goods as those of another, that is not the gist of an action
for infringement. The action for infringement is a statutory remedy
conferred on the registered proprietor of a registered trade mark for
the vindication of "the exclusive right to the use of the trade mark
in relation to those goods" (Vide S. 21 of the Act). The use by the
defendant of the trade mark of the plaintiff is not essential in an action
for passing off, but is the sine qua non in the case of an action for
infringement. No doubt, where the evidence in respect of passing off
consists merely of the _colourable use of a registered trade mark, the
essential features of both the actions might coincide in the sense that
what would be a colourable imitation of a trade mark in a passing off
action would also be such in an action for infringement of the same
trade mark. But there the correspondence between the two ceases. In
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an action for infringement, the plaintiff must, no doubt, make out that
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the use of the defendant's mark is likely to deceive, but where the
similarity between the plaintiffs and the defendant's mark is so close
either visually, phonetically or otherwise and the court reaches the
conclusion that there is an imitation, no further evidence is required
to establish that the plaintiffs rights are violated. Expressed in
another way, 'if the essential features of the trade mark of the
plaintiff have been adopted by the defendant, the fact that the get-up,
packing and other writing or marks on the goods or on the packets
in which he offers his goods for sale show marked differences, or
indicate clearly a trade origin different from that of the registered
proprietor of the mark would be immaterial; whereas in the case of
passing off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the
plaintiff. "
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Secondly, while dealing with the question of burden of proof in an
action for infringement of trade mark, this Court in Durga Dutt Shanna's case
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(supra) held as under:
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"When once the use by the defendant of the mark which is claimed
to infringe the plaintiffs mark is shown to be "in the course of lrade'',
the question whether there has been an infringement is to be decided
by comparison of the two marks. Where the two marks are identical
no further questions arise; for then the infringement is made out.
When the two marks are not identical, the plaintiff would have to
establish that the mark used by the defendant so nearly resembles the
plaintiffs registered lrade mark as is likely to deceive or cause
confusion and in relation to. goods in respect of which it is registered
(Vide S. 21). A point has sometimes been raised as to whether the
words "or cause confusion" introduce any element which is not
already covered by the words "likely to deceive" and it has some
times been answered by saying that it is merely an extension of the
earlier test and docs not add very materially to the concept indicated
by the earlier words "likely to deceive". But this apart, as the question
arises in an action for infringement the onus would be on the plaintiff
to establish that the !rade mark used by the defendant in the course
of trade in the goods in respect of which his mark is registered, is
deceptively similar. This has necessarily to be ascertained by a
comparison of the two marks - the degree of resemblance which is
necessary to exist to cause deception not being capable of definition
by laying down objective standards. The persons who would be
deceived are, of course, the purchasers of the goods and it is the
likelihood of their being deceived that is the subject of consideration.
The resemblance may be phonetic, visual or in the basic idea
represented by the plaintiffs mark. The purpose of the comparison
is for determining whether the essential features of the plaintiffs !rade
mark are to be found in that used by the defendant. The identification
of the essential features of the mark is in essence a question of fact
and depends on the judgment of the Court based on the evidence led
before it as regards the usage of the lrade. It should, however, be
borne in mind that the object of the enqniry in ultimate analysis is
whether the mark used by the defendant as a whole is deceptively
similar to that of the registered mark of the plaintiff."
Dealing once again with medicinal products, this Court in F. HoffmarmH
La Roche & Co. l.Jd v. Geoffrey Manner & Co. Pvt. l.Jd, (1969) 2 SCC 716
..
CADILA HEALTII CARE LTD. v. CADILA PHARMACEUTICALS LTD. [KIRPAL, I.] 757
had to consider whether the words "Protovit" belonging to the appellant was
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similar to the word "Dropovit" of the respondent. This Court, while deciding
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the test to be applied, observed at page 720 as follows:
"The test for comparison of the two word marks were formulated by
Lord Parker in PiGJzotist Co. l.Jd. 's application as follows:
"You must take the two words. You must judge of them, both
by their look and by their sound. You must consider the goods to
which they are to be applied. You must consider the nature and kind
of customer who would be likely to buy those goods. In fact, you must
consider all the surrounding circumstances; and you must further
consider what is likely to happen if each of those trade marks is used
in a normal way as a trade mark for the goods of the respective owners
of the marks. If, considering all those circumstances, you come to the
conclusion that there will be a confusion, that is to say, not necessarily
that one man will be injured and the other will gain illicit benefit. but
that there will be a confusion in the mind of the public which will
lead to confusion in the goods-then you may refuse the registration,
or rather you must refuse the registration in that case."
It is necessary to apply both the visual and phonetic tests. In
Aristoc l.Jd. v. Rysta l.Jd. the House of Lords was considering the
resemblance between the two words" Aristoc" and "Rysta". The view
taken was that considering the way the words were pronounced in
English, the one was likely to be mistaken for the other. Viscount
Maugham cited the following passage of Lord Justice Lukmoore in
the Court of Appeal, which passage, he said, he completely accepted
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as the correct exposition of the law:
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"The answer to the question whether the sound of one word
resembles too nearly the sound of another so as to bring the former
within the limits of Section 12 of the Trade Marks Act, 1938, must
nearly always depend on first impression, for obviously a person who
is familiar with both words will neither be deceived nor confused. It
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is the person who only knows the one word and has perhaps an
imperfect recollection of it who is likely to be deceived or confused.
Little assistance, therefore, is to be obtained from a meticulous
comparison of the two words, letter by letter and syllable by syllable,
pronounced with the clarity to be expected from a teacher of
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elocution. The Court must be careful to make allowance for imperfect
recollection and the effect of careless pronunciation and speech on the
part not only of the person seeking to buy under the trade description,
but also of the shop assistant niinistering to that person's wants".
It is important that the marks must be compared as wholes. It
is not right to take a portion of the word and say that because that
portion of the word differs from the corresponding portion of the
word in the other case there is no sufficient similarity to cause
confusion. The true test is whether the totality of the proposed trade
mark is such that it is likely to cause deception or confusion or
mistake in the minds of persons accustomed to the existing trade
mark. Thus in Lavroma case Lord Johnston said:
" ............... we are not bound to scan the words as we would in
a question of comparatio literarum. It is not a matter for microscopic
inspection, but to be taken from the general and even casual point of
view of a customer walking into a shop."
On the facts of that case this Court came to the conclusion that taking into
account all circumstances the words "Protovit" and "Dropovit" were so
dissimilar that there was no reasonable probability of confusion between the
words either from visual or phonetic point of view.
Our attention was drawn to a recent judgment of this Court in S.M.
Dyechem ud. v. Cadbury (India) l.Jd., (2000) 5 SCC 573 where in a passing
off action, the plaintiff, which was carrying on the business under the mark
of "Piknik", filed a suit for injunction against the defendant which was using
the mark of "Picnic" for ;ome other chocolates sold by it. On the allegation
that the defendant's mark was deceptively similar, the trial court had issued
an injunction which was reversed by the High Court. On appeal, the decision
of the High Court was affirmed. One of the questions, which this Court
considered, was that for grant of temporary injunction, should the Court go
by the principle of prima facie case, apart from balance of convenience, or
comparative strength of the case of either parties or by finding out if the
plaintiff has raised a "triable issue". While considering various decisions on
the point in issue, this Court rightly concluded at page 591 as follows:
"Therefore, in trade mark matters, it is now necessary to go into the
question of "comparable strength" of the cases of either party, apart
CAD!LA HEALIB CARE LTD. '· CAD!LA PHARMACEUTICALS LTD. [KJRPAL, I.) 759
from balance of convenience''.
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On merits of the case, this Court took note of some English decisions
and observed in Dyechem's case (supra) at page 594 that "where common
marks are included in the rival trade marks, more regard is to be paid to the
parts not common and the proper course is to look at the marks as a whole,
but at the same time not to disregard the parts which are common".