Bombay High Court
Sun Pharmaceutical Industries Limited vs Meghmani Lifesciences Limited on 8 April, 2026
Author: Bharati Dangre
Bench: Bharati Dangre
2026:BHC-OS:9214-DB
J-ComsApeal-44382-2025.odt
rajshree
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL APPEAL (L) NO.42382 OF 2025
WITH
INTERIM APPLICATION (L) NO.42454 OF 2025
IN
COMMERCIAL APPEAL (L) NO.42382 OF 2025
WITH
COMMERCIAL APPEAL(L) NO.42382 OF 2025
IN
INTERIM APPLICATION (L) NO.9484 OF 2025
WITH
COURT RECEIVER REPORT NO.220 OF 2025
IN
COMMERCIAL IP SUIT (L) NO.9352 OF 2025
Sun Pharmaceutical Industries Ltd. .. Appellant
vs.
Meghmani Lifesciences Ltd. & Anr. .. Respondents
Mr.Hiren Kamod a/w Mr.Prem Khullar, Mr.Rahul Dhote,
Mr.Shwetank Tripathi, Ms.Radhika Mehta and Vidit Desai i/b
ANM Global, for the Appellant.
Mr.Rashmin Khandekar a/w Mr.Anand Mohan, Mr. Ashutosh
Kane, Ms.Vedangi Soman and Ms.Avani Panchabhai i/b W.S.
Kane & Co. for Respondent No.2.
Mr.Nitin Pawar, Court Receiver, present.
CORAM : BHARATI DANGRE &
MANJUSHA DESHPANDE, JJ
RAJSHREE
KISHOR
MORE
Digitally signed by
RAJSHREE KISHOR
MORE
Date: 2026.04.10
18:13:29 +0530
DATE : 8th APRIL 2026
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JUDGMENT (PER BHARATI DANGRE, J) :
1 Sun Pharmaceutical Industries Limited, Appellant/Plaintiff ,
a Public Limited Company incorporated under the Companies
Act, 1956, is engaged in the business of manufacturing, trading,
marketing, selling and/or distributing medicinal and
pharmaceutical preparations. It claims to be number one pharma
company in India with 8.3% market share and ranked no.1 by
prescription with 12 different classes of doctors. The Plaintiff’s
products claim to have the hallmark of technology-based
differentiation covering full range of dosage forms including
tablets, capsules, injectables, inhalers, ointments, creams and
liquids as it offer comprehensive product portfolio across various
therapeutic segments.
According to Sun Pharmaceutical Industries Ltd, it owns
large Intellectual Property portfolio containing various well-
known, distinctive and coined trademarks in relation to its
medicinal and pharmaceutical preparations and one such mark
which it claim has honestly, independently and bonafidely coined,
conceived and adopted is the trademark ‘RACIRAFT’ in January,
2022. It is the claim of the Appellant that the said trademark
was coined by combining the words ‘RACI’ (misspelling of the
word RACY which suggest “full of zest and vigour’ and the word
‘RAFT’ (meaning foam like formation caused by Sodium
Alginate).
Claiming that the trademark is a coined word and is
inherently distinctive and has been in use since June 2022 in
relation to a pharmaceutical product containing the molecules
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viz. Sodium Alginate, Sodium Bicarbonate and Calcium
Carbonate, and Calcium Carbonate, sold in form of oral
suspension/syrup being used in the treatment of heartburn and
indigestion, it has the quality of neutralizing the acid present in
the stomach and aiding proper digestion. The Appellant sought
registration of the said trademark in Class 05 on ‘proposed to be
used basis’.
The particulars of the registration of the trademark of the
Appellant are set out in the proceedings before us as below :-
Sr.No. Mark Application Date/User Class Status
Claim
1. RACIRAFT 17 January 5 Registered valid and
2022/Proposed to be subsisting
used2 Claiming that in or about 3rd week of February, 2025, the
team of the Appellant came across the Defendant’s
pharmaceutical product bearing the impugned mark ‘ESIRAFT’ ,
and they suspected that the Defendants are using the impugned
mark in relation to the identical goods containing identical
molecule for identical ailment, as that of the Plaintiff and as the
mark as virtually visual, structurally and phonetically has
deceptive similarity and substantially similar to the Appellant’s
prior adopted used and registered trademark. It was therefore
constrained to institute a Commercial Suit on the Commercial
Division of the High Court, seeking leave under Clause XIV of the
letters patent to combine the cause of action of infringement of
trademark and passing off and it sought a perpetual order and
injunction from infringing its registered trademark ‘RACIRAFT’3/42
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J-ComsApeal-44382-2025.odtin Class 5 by the use of the impugned mark ‘ESIRAFT’ and/or any
other trademark with the said word and/or any other mark
identical with or deceptively similar to the Plaintiffs’ trademark ,
in respect of the goods covered by its registration.
In the Suit, it also sought an injunction restraining the
Defendants from dealing with the impugned goods or any other
medicinal or pharmaceutical preparations identical with and/or
deceptively similar to the Plaintiff’s well-known trademark, so as
to pass off the Defendants impugned goods as and for the
Plaintiffs’ well-known goods, or in any other way.
3 In the aforesaid suit filed for infringement of trademark and
passing off, on 07/04/2025, ad-interim relief was granted in its
favour in terms of prayer clause (a) and (b) with the following
primary reasons being assigned while granting such relief.
“15. Having compared the two products and trade marks found on
the said products, it is found that a strong prima facie case is made out
in favour of the applicant. The defendants have used combination of
the expressions ‘Esi’ and ‘Raft’ in different colours, similar to the
manner in which the registered trade mark ‘RACIRAFT’ of the
applicant is depicted on its products. The explanation given in the reply
to the examination report by defendant No. I before the Registrar of
Trade Marks, as brought to the notice of this Court, shows that the
same can be said to be supporting the contention raised on behalf of the
applicant.
16. In any case, the expression ‘Raft’ prima facie does not appear
to be sourced from any molecule or chemical composition, which could
have led to a plausible defence on the part of the defendants. There is
substance in the contention raised on behalf of the applicant that its
registered trade mark “RACIRAFT” can be said to be a coined mark and
in that sense, an arbitrary mark enjoying higher protection in the trade
mark law.”
4 On 23/12/2025 Interim Application (L) No.9484/2025
came to be decided by the learned Single Judge, thereby vacating
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the ad-interim relief granted on 07/04/2025 and dismissing the
Interim Application filed by the Plaintiff by recording that it has
failed to make out prima facie case for infringement of trademark
and passing off and in absence of any deceptive similarity prima
facie being demonstrated, the Defendants cannot be restrained
from use of the impugned mark which has been adopted and in
use by it since July, 2024.
5 Being aggrieved by the aforesaid order, the Appellant has
approached this Court by alleging that the impugned order is ex-
facie perverse and contrary to the settled principles of trademark
especially in relation to pharmaceutical product. The Single
Judge’s finding that that Respondent No.1’s impugned mark
‘ESIRAFT’ and the opponent’s trademark ‘RACIRAFT’ are
dissimilar/not deceptively similar is urged to be contrary to the
settled said test of deceptive similarity laid down by the Apex
Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. 1
as well as the following decisions which were specifically invoked
before the learned Single Judge :-
1. Medley Laboratories (P) Ltd. vs. Alkem Laboratories Ltd.2;
2 Macleods Pharmaceuticals Ltd. vs. Union of India3;
3 Boots Company PLC vs. Registrar of Trade Marks,4;
4 Encore Electronics Ltd. vs. Anchor Electronics & Electricals Pvt. Ltd.5;
5 Lupin Ltd. vs. Eris Lifesciences (P) Ltd.6 ;
6 Wyeth Holdings Corporation vs. Burnet Pharmaceuticals (Pvt. Ltd.)7;
7 Glenmark Pharmaceuticals Ltd. vs. Sun Pharma Laboratories Ltd.8.
1 (2001) 5 SCC 73
2 2002 SCC OnLine Bom 444 (DB)
3 2023 SCC OnLine Bom 408 (DB)
4 2002 SCC OnLine Bom 300
5 2007 SCC OnLine Bom 147
6 2015 SCC OnLine Bom 6807
7 2008 SCC OnLin Bom 76
8 2024 SCC OnLine Del 27075/42
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6 We have heard the learned counsel Mr.Hiren Kamod for the
Appellant, who would place reliance upon the aforesaid decisions
and submit that the the approach of the learned Single Judge in
comparing the rival trademark is contrary to the well settled
principles of comparison laid down and the impugned order has
failed to consider the settled principle of deceptive similarity, as
the order has failed to appreciate the visual and phonetic
structure of the trademark and when the phonetics is to be looked
into, the sound which accompanies the pronunciation of the
trademark is the sound of the mark when ordinary purchaser,
bereft of the niceties of language.
According to Mr.Kamod, the learned Single Judge has failed
to appreciate the anti deception rule, which stipulate that marks
cannot be deceptive into their constituents parts for the purpose
of comparison and has overlooked the applicability test i.e. not to
place two marks side by side to identify dissimilarities , but to
determine whether the impugned mark, when viewed
independently, is likely to create an impression of association of
common origin, in the mind of an average consumer. He would
submit that the learned Judge has erred in holding that
Respondent No.1’s trademark ‘ESIRAFT’ is not deceptively
similar to the Appellant’s trademark ‘RACIRAFT’ and has
disregarded the fact that the Appellant is prior and continuous
user of the trademark ‘RACIRAFT’. According to him, the
impugned mark is visually and phonetically similar to the mark
of the Appellant, and merely because the two letters are written
in capital and others are in small letters do not make it visually
or structurally dissimilar to the Appellant’s mark.
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As per Mr.Kamod, the learned Single Judge has failed to
apply the decision of this Court in Lupin Ltd. vs. Eris Lifesciences
(P) Ltd (supra) , where it is held that meticulous comparison of
rival trademarks is not permissible and the rival trademarks
cannot be compared word by word and syllable by syllable ,
pronounced with clarity to be expected from a teacher of
elocution and the Judge has failed to appreciate the principle in
law that phonetic similarity test is crucial and is the principle
determinative test.
7 Mr.Kamod by inviting our attention to the pleadings in the
Plaint would submit that the Plaintiff has conceived and adopted
the trademark ‘RACIRAFT’ and it is also registered proprietor of
the mark ‘RACIPER’ and its variants and it is inherently
distinctive. He would submit that the rival marks when
compared as whole are identical and/or deceptively similar to
each other and the Plaintiff sought relief in the Suit on the basis
of overall structural, phonetic and visual similarities between
the rival marks ‘RACIRAFT’ and ‘ESIRAFT’.
According to him, Defendant No.1 who is his own
manufacturer , would have very well adopted any other
trademark with the use of ‘RAFT’ as a part, but it has chose to
use ‘ESIRAFT’ which is nearly identical with and/or deceptively
similar to its mark ‘RACIRAFT’ coupled with the fact that it is
using ‘ESI’ in different colour and ‘RAFT’ in different colour, using
the same style of the Appellant using ‘RACI’ in different colour
and ‘RAFT’ in different colour, which according to Mr.Kamod is
reflective of its dishonesty.
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According to him, Defendant No.1 had dishonestly filed an
Application on 21/03/2024 for registration of its mark in relation
to impugned goods under Class 5 on ‘proposed to be used basis’
which is presently pending and is clearly reflective that it is the
Appellant who is prior adopter and user of the trademark. When
specifically asked whether the Appellant has raised any objection,
Mr. Kamod submit that since it is not yet advertised , and hence
no objection is raised.
It is also the contention of Mr. Kamod that in the past
Defendant No.1 competed with one ‘EASYRAFT’, but clarified that
it is ‘ESIRAFT’.
He has invited our attention to a reply filed to the
Examination Report in respect of the Application for trademark
‘ESIRAFT’ where it is stated that the trademark ‘ESIRAFT’ has
a unique structure and pronunciation that set it apart from cited
trademark ‘ESYRAFT’ AND ‘EASYRAFT’ and that the mark
should be viewed as a composite whole and, therefore, it is
evident that the trademark possesses its own distinctive
character.
8 Mr.Kamod would place reliance upon the following
decisions:-
1. Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd. (supra);
2. Medley Laboratories (P) Ltd. vs. Alkem Laboratories Ltd. 9;
3 Macleods Pharmaceuticals Ltd. vs. Union of India10;
4 Boots Company PLC England & Anr. vs. Registrar of Trade Marks,
Mumbai11;
9 2002-3 MHLJ 546
10 2023 SCC OnLine Bom 408
11 2002 SCC OnLine Bom 300
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5 Encore Electronics Ltd. vs. Anchor Electronics & Electricals Pvt. Ltd.12;
6 Wyeth Holdings Corporation & Anr. vs. Burnet Pharmaceuticals (Pvt.
13
Ltd. ) ;
7 Glenmark Pharmaceuticals Ltd. vs. Sun Pharma Laboratories Ltd.14;
8 Schering Corporation & Ors.vs.Kilitch Co. Pharma Pvt. Ltd. 15;
9 Cadila Pharmaceuticals Ltd. vs. Sami Khatib of Mumbai16;
10 Pidilite Industries Ltd. vs. S.M. Associates & Ors.17;
11 Dr.Ashok M. Bhat vs. Sandeep UdaiNarain Gupta & Anr.18;
12 Dr.Reddys Laboratories Limited vs. Smart Laboratories Pvt. Ltd.19.
9 Bring critical of the impugned order, it is the submission of
Mr.Kamod that insofar as pharmaceutical products are
concerned, the test to be applied should be more stringent as
public interest would support lesser degree of proof showing
confusing similarity in the case of trademark in respect of
medicinal products as against other non medicinal products, as
confusion between medicinal products, may be life threatening
and not mere inconvenience. He would submit that for applying
visual and phonetic test, if the sound of one word resembles too
nearly to the sound of other, the test for likelihood of confusion
shall be applied, as it is a person who only knows one word and
has perhaps an imperfect collection of it who is likely to be
deceived or confused.
It is his submission that the court must be careful to make
allowance for imperfect recollection as the effect of careless
pronunciation in speech on the part not only of the person
seeking to buy under trade description, but also of the shop
12 2007 SCC OnLine Bom 147
13 2008 SCC OnLine Bom 76
14 Delhi HC CM Appl.36508/2023
15 1990 SCC OnLine Bom 425
16 2011 SCC OnLine Bom 484
17 2003 SCC OnLine Bom 143
18 2025 SCC OnLine Bom 2177
19 2023 SCC OnLine Del. 7276
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assistant catering to that person’s wants.
According to him, the true test is, whether the totality of
proposed trademark is such that it is likely to cause deception or
confusion or mistake in the mind of persons accustomed to the
existing mark and it is not a matter of microscopic inspection,
but it has to be taken from the general and even casual point of
view of the customer visiting the shop for purchase of the
product.
By relying upon the test of ‘possibility’ of confusion in
medicinal preparation as held by the Apex Court in Cadila Health
Care Ltd. (supra) and despite the Court declaring to take special
care in such cases where the confusion may harm and result in
unpleasant consequences if not disastrous results, Mr.Kamod
would submit that the learned Single Judge has not applied the
said test and, therefore, the impugned order deserve to be set
aside.
10 Opposing the Appeal, the learned counsel Mr.Rashmin
Khandekar, at the outset has urged before us that the scope of
inquiry to entertain an Appeal from a interlocutory order
passed in exercise of discretion is extremely limited and
circumscribed and well defined and he would place reliance upon
the decision of this Court in case of Wander Ltd. & Anr. vs. Antox
India P. Ltd.20 and submit that an Appeal against exercise of
discretion lies, only ‘on principle’ and the burden on the Appellant
is much heavier than that before the Trial Court.
20 1990(Supp)SCC 727
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According to him, in an Appeal it is not merely enough to
demonstrate that a view and conclusion different from that of the
learned Single Judge is possible, as if the Appellant seek
interference, he must demonstrate that it is the only possible
view and no other view is possible. According to Mr.Khandekar,
in an attempt to raise challenge to the impugned order, Mr.Kamod
had argued the Appeal as if this Court was the Court of first
instance and not an Appellate Court.
Defining the prism through which the Appeal has to be
examined, the learned counsel would submit that unless and until
it is established that the impugned order is arbitrary, capricious
or in the legal understanding of the term ‘perverse’, then in an
Appeal there shall be no interference as the Appellate Court
cannot substitute the order impugned.
11 Apart from the aforesaid objection, Mr.Khandekar would
submit that a specific concession is given by the Plaintiff in the
Plaint itself that it was not claiming any monopoly in protection
of the term ‘RAFT’ per se as the term has specific meaning in the
context of the specified goods/drugs and in the context of
medicinal preparation. ‘RAFT” refers to the foam like formation
caused by Sodium Alginate and more particularly it refers to a
process where a viscous, cohesive gel forms a continuous layer or
‘raft’, on top of gastric fluids in the stomach primarily used in
gastroretentive drug delivery systems and for treating
gastroesophageal reflux. From the pleadings of the Plaintiff, it is
the contention of Mr.Khandekar that the Plaintiff itself did not
claim any monopoly over ‘RAFT’ and rather has pleaded as
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below:-
“The Plaintiff coined the said Trade Mark by arbitrarily combining the
words ‘RACI’ (misspelling of the word ‘RACY’ which suggest ‘full of zest
and vigour’ and ‘RAFT’ (which means foam like formation caused by
Sodium Alginate).”
He would submit that the Plaintiff had clearly admitted in
Para 24 of the Plaint that Defendant No.1 would have very well
adopted any other trademark even if it wanted to use ‘RAFT’ as
part of it and relying upon the aforesaid pleadings of the Plaintiff,
it is the case of the Defendant that no monopoly can be claimed
or is being claimed over the suffix ‘RAFT’.
12 Inviting our attention to the Reply filed the Defendant,
Mr.Khandekar would submit that it has placed on record not less
than 32 other brands/marks in the market and more than 100
entries/marks with Registry of Trademarks which has used non
distinctive term ‘RAFT’ as a part of the mark and in the
Plaintiff’s Affidavit in Rejoinder also according to Mr.Khandekar ,
the Plaintiff has made it abundantly clear that the Plaintiff has
no problem with the usage of the word ‘RAFT’ per se.
It is therefore, the submission of Mr.Khandekar that in the
backdrop of the admitted position between the parties and the
factor that has weighed with the learned Single Judge in
assessing the similarity between the rival mark ‘RAFT’, per se is
an unprotected element being generic and nobody can claim
monopoly over ‘RAFT’. The concession granted on behalf of the
Plaintiff, according to Mr. Khandekar, lead to a legal consequence
as it is settled position that when a mark consist of a word , on
which no monopoly is claimed and it is generic and/or non
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distinctive, greater regard is to be given to the balance part of the
mark in the over all assessment of the rival marks.
He would invoke the principle of law laid down by the Apex
Court in F. Hoffmann- La Roche & Company v. Geoffrey Manners
and Company Pvt. Ltd.21 , where the rival marks were ‘DROPOVIT’
and ‘PROTOVIT’, ‘vit’ being a non distinctive/generic/common
reference to vitamin. He would invoke the following observation
from the said decision, as it bear relevance to the issue in the
present case and we reproduce the same as below :-
“8. In order to decide whether the word “Dropovit” is deceptively
similar to the word “Protovit” each of the two words must, therefore, be
taken as a whole word. Each of the two words consists of eight letters,
the last three letters are common, and in the uncommon part the first
two are consonants, the next is the same vowel ‘O’, the next is a
consonant and the fifth is again a common vowel ‘O’. The combined
effect is to produce an alliteration. The affidavits of the appellant
indicate that last three letters “Vit” is a well known common
abbreviation used in the pharmaceutical trade to denote vitamin
preparations. In his affidavit, dated January 11, 1961 Frank Murdoch,
has referred to the existence on the register of about 57 trade marks
which have the common suffix “Vit” indicating that the goods are
vitamin preparations. It is apparent that the terminal syllable “Vit” in
the two marks is both descriptive and common to the trade. If greater
regard is paid to the uncommon element in these two words, it is
difficult to hold that one will be mistaken for or confused with the other.
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.”
With the aforesaid observation, it is submitted by
Mr.Khandekar that having taken into account all circumstances,
the Apex Court expressed that the High Court and Joint
Registrar of Trademarks were right in holding that there was no
21 1969 (2) SCC 716
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real tangible danger of confusion if respondent’s trade mark was
allowed to continue to remain on the Register and the application
for rectification made by the appellant should be dismissed.
According to Mr.Khandekar , the Judgment in Cadila Health
Care (supra) relied upon by Mr.Kamod, specifically notices F.
Hoffman La Roche & Company (supra) in Para 16 and has
confirmed the same and it is his submission that a series of
Division Benches of our Court has followed the dictum
consistently and has referred to Cadila Health Care (supra) and
has confirmed that when a trademark contains a part which
otherwise cannot be monopolised , this aspect of industry
practice needs to be factored while assessing overall similarity
and the balance part of the mark is to be given greater weightage
in the overall assessment..
Mr.Khandekar would place reliance upon the following
following decisions of the Bombay High Court :-
iii) Macleod Pharmaceuticals Ltd. vs. Swisskem Healthcare24;
iv) Corona Remedies vs. Franco Indian Pharmaceuticals Pvt. Ltd.25.
13 Relying upon the propositions flowing from the aforesaid
pronouncements of this Court, Mr.Khandekar would submit that
when a trademark is formed out of the common generic name, no
single proprietor can claim absolute monopoly in such name or
trademark, as when a Proprietor adopts a trademark on the basis
of name of the generic drug or ingredient or molecule, it will be
safe to assume that he is aware that the other proprietors are also
22 Appeal No.498.2002
23 2011(1)BomCR 89
24 2019 SCC OnLine Bom 1186
25 MANU/MH/0410/2023
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likely to adopt and use similar marks in their products based on
the same generic drug or ingredient. In such a case, the first user
cannot claim exclusivity in its trademark or the name which is
derived from a generic drug and at the most a proprietor can
claim exclusivity in those added features, which differentiates his
trademark from the name of a generic drug or ingredient.
According to Mr.Khandekar when two trademarks are
coined from the same generic drug or ingredient, there is bound
to be closeness between the two and in such case even if
difference between the two trademarks is minor or small, then
even in that case at prima facie stage no injunction can be
granted. It is his contention that a part of a mark which is
generic/ non distinctive must be discounted in over all
assessment with the focus being on the distinctive/non generic
part and this proposition is in tune with the fundamental
principle that trademark law protect ‘source’ indicators and are
not intended to create any overboard or absolute monopoly over
common matters.
14 Taking us through the impugned order passed by the
learned Single Judge it is the submission of Mr.Khandekar that
the learned Judge has referred to the relevant test which ought
to have been applied based on the well settled legal principles
evolved from the authoritative pronouncements and he has
drawn an inference that the mark is not similar.
Mr. Khandekar also submit that applying the well settled
principles which govern the field while assessing the rival marks
as regards the anti deception rule, view point of an average
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consumer with imperfect recollection, holistic comparison and
the likelihood of confusion of the competing marks, prima facie
viewed the marks visually and phonetically were found to be
dissimilar and no capable of creating any confusion in the minds
of customers.
He do not dispute the proposition that even the slightest
possibility of confusion must lead to restrain on use of impugned
mark, but according to him only upon holistic comparison of
rival marks, if there is any possibility of confusion, then a
restraint order can be passed. It it, therefore, contended by
Mr.Khandekar that the learned Single Judge has rightly applied
and took into consideration the anti-deception rule as well as the
relevant test namely overall comparison from the view point of
an average consumer with imperfect collection, taking into
account visual, structural and phonetic similarity and has
rendered a finding that, ‘RAFT’ was admittedly not the subject of
monopoly / proprietorship of the Plaintiff and, therefore, mere
presence of such shared / generic word cannot justify a finding of
deceptive similarity.
Apart from this, he would submit that both the marks
which contain the word ‘RAFT’ which has an indicator of the
products molecule properties, combined by the Plaintiff in its
distinctive prefix ‘RACI’ and by the Defendant with its distinctive
prefix ‘ESI’ is honest and bonafide and established in conformity
with industry practice in pharmaceutical trade. The finding that
the prefixes ‘RACI’ and ‘ESI’ being completely different in the
manner of their pronunciation and even making an allowance of
mis-pronunciation, according to the learned Judge has made it
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difficult to hold that the marks are deceptively similar. It is
submitted that the learned Judge has taken into consideration
the diphthong and has arrived at the conclusion that there is
no possibility of confusion , in E versus R and the use of two
colour combination or packing which was sought to be invoked to
establish similarity was of no consequence.
Relying upon the principle in Cadilla Health Care (supra) to
the effect that weightage must be given to different factors
depending upon the facts of each case and the same weightage
cannot be given to each factor in every case, he would submit
that the exercise of discretion based upon the weightage to each
of the factors noted by the learned Judge is unimpeachable and
the injunction has been rightly refused by the learned Single
Judge on the conclusion of no similarity.
Apart from this, according to Mr.Khandekar the added
matter is only relevant for an action of passing off and the
comparison required is only qua the words other than the
generic word and since in both the molecule ‘RAFT’ was identical,
the Judge has arrived at a conclusion that there is no visual and
phonetic similarity and no likelihood of confusion based on the
guiding judicial pronouncements and therefore, according to him,
the order passed by the learned Single Judge must be upheld.
He would also distinguish the Judgment relied upon by
Mr.Kamod in case of Macleods Pharmaceuticals Ltd. (supra) in
respect of trademark ‘OFRAMAX’ and the mark ‘OFLOMAC’ as it
is his submission that in the said case, it was specifically held that
the main ingredient of the product of Respondent No.4 is
‘CEFTRIAXONE’, whereas the main ingredient of the product of
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the Petitioner was ‘OFLOXACIN’ and the two products defer in
its method of use, dosage form and indications. With the
formulation of both the products being distinct, it was specifically
noted that in a medicinal or pharmaceutical product it is the duty
of the Court to take utmost care to prevent any possibility of
confusion in the use of trademarks as in case of non-
pharmaceutical product the result may be every economic loss to
the person, but on the other hand, a confusion in terms of
medicinal product or pharmaceutical product may have
disastrous effect on the health.
Holding that it is proper to require a lesser quantum of proof
of confusing similarity for such products, the decision relied upon
wherein there was presence of a common molecule in the two
products, were held not to be relevant and in comparing the two
marks based on the phonetic similarity it was held that the
impugned trademark of the Petitioner was of such a nature so as
to deceive the public or cause confusion with respect to the
trademark of Respondent No.4 as envisaged under Section 9(2)
(a) and Section 11(1)(b) of the Act of 1999.
15 The test of determining the deceptive similarity and the
factors relevant for its determination was and is the subject
matter of various authoritative pronouncements, as this issue has
come up for consideration time and again, while deciding the
cases for infringement of the registered trademark as well as in
an action of passing off, both under the Trade and Merchandise
Marks Act, 1958 as well as the Trade Marks Act, 1999.
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Trademark is essentially adopted to advertise one’s
product and to make it known to the purchaser and ‘mark’
includes a device, brand, heading, label, ticket, name, signature,
word, letter, numeral, shape of goods, packaging or combination
of colours or any combination thereof., as per Section 2(m) of the
Act of 1999.
A mark attempt to portray the nature and at times the
quality of the product and on passage of time and its continuous
usage the mark becomes synonymous with the product and a
registered trademark deserve protection as the registered
proprietor of the trademark has the exclusive right to use the
mark in relations to the goods or services in respect of which it is
registered and is entitled to obtain relief in respect of
infringement of the trademark as provided under Section 29 of
the Act of 1999.
A registered trademark is infringed by a person who, not
being a registered proprietor or a person using by way of
permitted use, uses the same in course of trade, a mark which a)
is identical with or similar to the registered trademark, b) is used
in relation to the goods or services which are not similar to those
for which the trademark is registered and C) the registered
trademark has a reputation in India and, the use of the mark
without due permission taking unfair advantage of or is
detrimental to the distinctive character or repute of the
registered trademark.
The protection, however, is not available to a unregistered
trademark, but in the wake of Sub Section (2) of Section 27, it will
not affect the right of action against any person for passing off
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goods or services as the goods of another person or as services
provided by that person or the remedies in respect thereof. The
said provision, thus, recognises the common law rights of the
trademark owner to take action against any person for passing
off the goods as the goods of another person. The passing off
action has its source in the principle that nobody has a right to
represent his goods as the goods of somebody.
16 In an action for the infringement it is imperative to make
out that the use of the Plaintiff’s mark by the Defendant is likely
to deceive, but where the similarity between the Plaintiff and
Defendant’s mark is so close either visually, phonetically or
otherwise, the relief sought alleging infringement and passing off
shall be granted.
In an action for passing off the similarity between the
competent marks is crucial and the Court should determine
whether there is likelihood of deception or cause of any confusion.
As far as drugs and pharma products are concerned, the Courts
have treated them on a different pedestal and have directed
application of the test of ‘possibility’ of harm strictly resulting
from any kind of confusion by the consumer since it would give
rise to disastrous results.
In Cadila Health Care (supra), the Court applied the test for
similarity/dissimilarity by applying distinct parameters as it was
conscious of the fact the drugs are meant for curing some
ailment and the cure lies in its composition, coupled with the side
effects and it is possible that the drugs are sold not only under
prescription, but over the counter and the similarity or deceptive
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similarity in the products would cause confusion, which would
result in health hazardous.
Focusing on this aspect, the Apex Court observed thus :
“22. 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 but
Schedule ‘L’ drugs are not sold across the counter but are sold only to
the hospitals and clinics. Nevertheless, it is not uncommon that
because of lack of competence or otherwise, mistakes can arise
specially where the trade marks are deceptively similar. In Blansett
Pharmaceuticals Co. v. Carmick Laboratories Inc. it was held as under:
“Confusion and mistake is likely, even for prescription drugs
prescribed by doctors and dispensed by pharmacists, where these
similar goods are marketed under marks which look alike and sound
alike.”
23. In the case of Glenwood Laboratories, Inc. v. American Home
Products Corpn. the Court of the United States had held that:
“The fact that confusion as to prescription drugs could produce
harm in contrast to confusion with respect to non-medicinal products is
an additional consideration for the Board as is evident from that
portion of the opinion in which the Board stated: “The products of the
parties are medicinal and the applicant’s product is contraindicated for
the disease for which the opposer’s product is indicated. It is apparent
that confusion or mistake in filling a prescription for either product
could produce harmful effects. Under such circumstances, it is
necessary for obvious reasons, to avoid confusion or mistake in the
dispensing of the pharmaceuticals.’The board’s view that a higher standard be applied to medicinal
products finds support in previous decisions of this Court, Clifton v.
Plough (it is necessary for obvious reasons, to avoid confusion in the
dispensing of pharmaceuticals’), Campbell Products, Inc. v. John Wyeth
& Bro. Inc. (‘it seems to us that where ethical goods are sold and
careless use is dangerous, greater care should be taken in the use of
registration of trade marks to assure that no harmful confusion
results’).”
17 The Apex Court also did not rule out the possibility when
the physicians themselves would be subjected to confusion or
mistake as many a time the prescriptions are telephoned to the
pharmacists and others are hand-written and frequently
handwriting is not unmistakably legible and it was observed
thus :-
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“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.”
It is also noted that although the drugs are sold under
prescription this fact alone is not sufficient to prevent confusion
which is otherwise likely to occur.
The peculiarity of this country was specifically focused
upon when their Lordships observed thus:-
“27. As far as the 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.”
18 Confusion between medicinal products, therefore is
considered to be life threatening and not merely resulting into
inconvenience and in the wake of a phenomenon that is common
in hospital, drugs can be requested verbally and /or under critical
or pressure situations with participation of many patients who
are elderly, infirm or illiterate, when they may not be in a position
to differentiate between medicines prescribed and brought, which
is ultimately handed over to them , the Apex Court applied the
test from McCarthy on Trade Marks, 3rd Edition Para 23.12 as
below :
“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 than 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. For22/42
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confusing similarity for drugs and medicinal preparations. The same
standard has been applied to medical products such as surgical sutures
and clavicle splints.”
19 In an action for passing off on the basis of unregistered
trademark, for deciding the question of deceptive similarity the
following factors are directed to be considered :
“35. Broadly stated, in an action for passing-off on the basis of
unregistered trade mark generally for deciding the question of
deceptive similarity the following factors are to be considered:
(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.
(b) The degree of resembleness between the marks, phonetically
similar and hence similar in idea.
(c) The nature of the goods in respect of which they are used as trade
marks.
(d) The similarity in the nature, character and performance of the
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 degree of
care they are likely to exercise in purchasing and/or using the goods.
(f) The mode of purchasing the goods or placing orders for the goods.
(g) Any other surrounding circumstances which may be relevant in the
extent of dissimilarity between the competing marks.”
It is further clarified that weightage shall be given to each
of the aforesaid factors depending upon facts of each case and
the same weightage cannot be given to each factor in every case.
20 In F.Hoffmann-La Roche & Co. Ld. vs. Geoferey Manner &
Co. Pvt. Ltd. (supra) , when the contest was between the
Appellant’s mark ‘Protovit ‘ registered under Class V in respect of
‘pharmaceutical preparations for human use and for veterinary
use, infants’ and invalids’ foods’ and the mark was used on multi-
vitamin preparations in liquid form and tablet, the goods being
sold since the year 1951, the Respondent applied for registration
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of its mark ‘Dropovit’ in respect of ‘medicinal and pharmaceutical
preparations and substances’. The Application was registered
which escaped the notice of the Appellant who filed an
application for rectification before the Register on the ground
that the mark of the Respondent nearly resemble its mark, as to
be likely to deceive or cause confusion.
21 The question that felt for consideration was whether the
word ‘Dropovit’ is deceptively similar to word ‘Protovit’ and
offends the provision of Section 12(1) of the Act and the precise
question formulated was, whether the Respondent’s mark so
nearly resemble the registered mark, as to ‘likely to deceive or
cause confusion’.
The test for comparison of the two words mark formulated
by Lord Parker in Pianotist Co. Ltd.26 was gainfully reproduced to
resolve the issue before the Court:-
“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 categorically held that the marks must be compared as
a whole and it is not right to take a portion of the word and say
that because that portion of the word differs from the
26 23 RPC 774 at 777
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corresponding portion of the word in other case there is no
similarity sufficient enough to cause confusion.
The true test evolved is, whether the totality of the
proposed trademark is such that it is likely to cause deception
or confusion or mistake in the minds of persons accustomed to
the existing trademark.
In the facts of the case, it was held thus :-
“8. In order to decide whether the word “Dropovit” is deceptively
similar to the word “Protovit” each of the two words must, therefore, be
taken as a whole word. Each of the two words consists of eight letters,
the last three letters are common, and in the uncommon part the first
two are consonants, the next is the same vowel ‘O’, the next is a
consonant and the fifth is again a common vowel ‘O’. The combined
effect is to produce an alliteration. The affidavits of the appellant
indicate that last three letters “Vit” is a well known common
abbreviation used in the pharmaceutical trade to denote vitamin
preparations. In his affidavit, dated January 11, 1961 Frank Murdoch,
has referred to the existence on the register of about 57 trade marks
which have the common suffix “Vit” indicating that the goods are
vitamin preparations. It is apparent that the terminal syllable “Vit” in
the two marks is both descriptive and common to the trade. If greater
regard is paid to the uncommon element in these two words, it is
difficult to hold that one will be mistaken for or confused with the other.
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.”
22 In Encore Electronics Ltd. vs. Anchor Electronics &
Electricals Pvt. Ltd. (supra), the Division Bench of Bombay High
Court was dealing with an Appeal against interlocutory order of
injunction granted by the Single Judge as the Suit sought
injunction restraining use of the mark ‘Encore’ or any other
deceptively similar mark in relation to electrical or electronic
goods including dish antennae. The action was based on the case
of infringement and passing off.
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The Plaintiff, Proprietor of various trademarks sought
registration of the trade mark ‘Anchor’ in Class 9 and 11 of IVth
Schedule in relation to large number of electrical appliances and
electronic goods, the mark being adopted for the first time in the
year 1963 by the predecessor of the Plaintiff. Setting out the
details about the volume of sales in respect of electrical and
electronic goods on which the mark was advertised, it was urged
that the trade mark of the Plaintiff had become ‘a household
word’ and the products of the Plaintiff together with the
associated mark are utilised in various locations.
The Plaintiff pleaded that the use of the mark ‘Encore’ by
the Defendant is deceptively similar to its registered mark, being
used in respect of the same goods. It was also pleaded that when
the mark ‘Anchor’ is pronounced or written in Gujarati or
Devnagari script, it appears ‘very close’ to the registered trade
mark of the Plaintiff and the use of the corporate name ‘Encore
Electronics Ltd.’ by the Defendant is misleading, being deceptively
similar and is liable to cause confusion.
The learned Single Judge on appreciation of the prima facie
case granted interlocutory injunction by expressing that both
the words were phonetically as well as visually similar to the
mark of the Plaintiff and both in Gujarati and Devnagari scripts
the word ‘Encore’ is written in the manner similar to the word
“Anchor’.
The Division Bench compared the two marks and noted
phonetic similarity between the two. Recording that the two
marks are phonetically, visually and structurally similar, it was
found that the overall impression conveyed by a mark as a whole,
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has to be assisted in evaluating the deceptive similarity. The
Division Bench observed thus :–
“8. The phonetic structure indicates how the rival marks ring
in the ears. Courts in a country such as ours whose culture is enriched
by a diversity of languages and scripts have to consider how the rival
marks are spelt that pronounced in languages in which they are
commonly used. Counsel for the defendant submits before the Court
that while ‘Encore’ is a word of French origin, ‘Anchor’ is a word of
English usage and the pronunciation of the two words must differ.
The submission misses the point. The case before the Court is not
about how an Englishman would pronounce ‘Anchor’ or a Frenchman
would pronounce ‘Encore’. The Court must consider the usage of
words in India, the manner in which a word would be written in Indian
languages and last but not least, the similarity of pronunciation if the
rival marks were to be pronounced in languages prevalent in the
country where the marks are used. The manner in which ‘a’ as in
‘anchor’ is pronounced by an Englishman on Notting Hill may well
appear to a discerning traveller to be distinct from a Frenchman’s
pronunciation of the ‘e’ in ‘encore’ on a fashionable by lane near
Champs Elysees. That is no defence to an action in our courts for
passing off: For the ordinary consumer in Ahmedabad and her
counterpart in Mumbai’s shopping streets, the ‘a’ in ‘anchor’ and the
‘e’ in ‘encore’ are perilously and deceptively similar. The Court must
ass the make up of an Indian consumer and, associated with that, the
cultural traits that underlie the spelling and pronunciation of words.
The case of the plaintiff is that in Gujarati as well as in Hindi, there is
not even a subtle distinction between the manner in which ‘Anchor’
and ‘Encore’ would be pronounced and we find merit in the
submission.”.
Apart from the aforesaid finding it is also held that the
overall impact in terms of phonetical usage is one of striking
similarity and the most relevant observation in the decision
reads thus :-
“The test is not whether a customer who wishes to buy the product of
the plaintiff is likely to end up buying the product of the defendant. The
test is whether the ordinary customer is likely to be led to believe that
‘Encore’ is associated with the mark and the trading style of the
plaintiff. The phonetical, visual and structural get up of the two words
is so strikingly similar as to lead to a likelihood of deception. The
question of deception is a matter for the Court to determine,
particularly, at the interlocutory stage. The judgment of the learned
Single Judge has been criticized on the ground that the Court
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the present case is to compare the two rival marks and to emphasize a
striking similarity between the marks with reference to the common
features of the rival words.”
Reliance was placed upon the decision in Cadila Health Care
(supra), which had disapproved the view in S.M. Dyechem Ltd.
vs. Cadbury (India) Ltd. 27 holding that the principle of phonetic
similarity has to be jettisoned when the manner in which the
competing words are written is different.
Concluding that the Plaintiff had established prima facie
case as the essential requirement in action for passing off have
been duly established, the balance of convenience was held to be
in favour of the Plaintiff and the Appeal came to be dismissed.
23 In yet another decision on which Mr. Kamod has placed
reliance in case of Boots Company PLC vs. Registrar of Trade
Marks (supra), the two marks involved a pharmaceutical
product being ‘CROFEN’ and ‘BRUFEN’ a registered trade mark
expensively sold in market and having acquired a valuable
reputation and goodwill.
In an Appeal under Section 119 of the Trade and
Merchandise Act, 1958, the order passed by the Assistant
Registrar of Trade Marks allowing the application for registration
of trade mark ‘CROFEN’ and detecting the opposition, the
Appeal was filed.
Referring to the authoritative pronouncements, the learned
Single Judge of this Court held thus :
” It is thus clear that there are three tests which have to be considered
27 (2000) 5 SCC 573
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to the other mark or not and they are (1) the mark has to be
considered as a whole, (2) it is a question of first impression and (3)
the question has to be considered from the view point of a man of
average intelligence. Applying these 3 tests, I am of the opinion that
the mark applied for i.e. “CROFEN” is deceptively similar to the
registered trade mark of the petitioner i.e. “BRUFEN”. The words
‘BRUFEN” and “CROFEN” both are six lettered words having common
suffix ‘FEN’. The prefixes of both these words consist of 3 letters one of
which i.e. ‘R’ is common. The same is preceded by different syllable and
followed by different vowels. Visually there is some dissimilarity in
both the prefixes and phonetically also there is dissimilarity, since the
first letters of both these words are different but the vowels ‘u’ and ‘o’
which follow the letter ‘R’ are apt to be slurred over. The hurried and
fast utterance of the word ‘CROFEN’ may sound as ‘BRUFEN’, while
that of ‘CROFEN’ as ‘BRUFEN’. It is common knowledge that in this
country pronouncement defers from person to person. For instance,
some people pronounce ‘school’ as ‘school’, ‘para’ as ‘pera’, ‘bank’ as
‘baink’, report as ‘report’ and so on. English not being the mother-
tongue of the people in this country, English words are pronounced in
different manners and with a distortion. Therefore, it is not unlikely
that the word ‘CROFEN’ when pronounced hurriedly or fastly may slur
over and pass as ‘BRUFEN’ and vice versa. I cannot say whether this is
a possibility or probability, but it cannot be ignored that it is a fact
which is likely to occur. The question which therefore, arises is as to
what is the test for assessing whether there is deceptive similarity or
not in the two words or mark.”
In light of the aforesaid observations, holding that it would
not be proper to allow any scope for the possibility or probability
of any confusion being caused between the two marks ‘BRUFEN’
and ‘CROFEN’ it was held that the Assistant Registrar was not
right in allowing the Application for registration of trade mark
‘CROFEN’.
24 The test to be applied while comparing the similarity in
pharmaceutical/medicinal products, has received a different
consideration as the possibility of confusion over marks on
medicinal products may not only result in some financial loss or
gain, but it has the potential to cause more harm than in case of
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any ordinary customer product. Confusion and mistake is not
unlikely while prescribing the drugs by doctors and its
dispensation by Pharmacists being similar goods are marketed
under marks which look alike or sound alike.
In given situation, it is possible that the confusion or
mistake in prescribing the actual drug may have disastrous
consequences and it is, therefore, necessary to avoid any
confusion or mistake in pharmaceutical products. Even the
doctors prescribing the drugs can also commit mistake and
specifically when the prescriptions are telephoned to the
pharmacists or hand written and if the same is not legible, there
is scope of confusion and possibility of intake of incorrect
medicine which may result in loss of life or cause serious health
hazardous.
25 In this background, in Cadila Health Care (supra), the
Apex Court relying upon the rule enunciated by Judge Helen in
Cole Chemical Co. v. Cole Laboratories, DC Mo 1954, 118 F Supp
612, took note of specific observation to the following effect :-
“Confusion in medicinal preparations can have serious consequences
for the patient. Prevention of confusion and mistakes in medicine is too
vital to be trifled with.”
Taking into consideration the ground realities in a country
like India with multiple languages, different dialects being
invoked and this being juxtaposed with a large chunk of
population being illiterate, non conversant with English
terminology and again with varied pronunciation of an English
name, the test laid down for adjudging the violation of Trade
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Mark law in medicinal products is different than applicable in
non medicinal products. The Apex Court, therefore, cautioned
that a strict approach should be adopted while applying the test
to judge the possibility of confusion of one medicinal product for
another by the consumer, as the confusion as to the identity of
the product itself could result in direct effect on public health.
This test received application from time to time in respect
of medicinal products and though it is held that as regards the
base drug being used in the product the Plaintiff cannot claim any
monopoly over a word, which may be indicative of the active
ingredient used in the product or in cases where there is presence
of a component which is generic, but in cases where there is
phonetic similarity, there is more chance of confusion as one
product may be taken as a prescribed medicine, but it may not
give the desired result.
26 In Maclods Pharmaceuticals Limited (supra), while
accepting the principle that nobody can claim exclusive right to
use any generic word, abbreviation or acronym which has become
publici juris it is noted that in trade of drugs it is common
practice to name a drug by the name of the organ or ailment
which it treats or the main composition of the drug. The Court
was dealing with ‘CEFTRIAXONE’, as the main ingredient of the
product being ‘OFLOXACIN’. The drug being prescribed for
hospitalized patients and for treating respiratory tract
infections, meningitis, pediatric infections etc. In contrast to this,
the product of the Petitioner was prescribed for enteric
respiratory tract infections, gram-negative bacterial infections,
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infection of tissue in skins, infection of bones and joints, pelvic
inflammation, infection of kidney, genital organs and gonorrhea.
In such a scenario, it is the Court’s primary duty to take
care to prevent any such possibility of confusion in the use of
trade marks and a medicinal product would require lesser
quantum of proof of confusing similarity.
27 When the Court dealing with medicinal products fail to
apply the test of ‘possibility of confusion’ as laid down in Cadila
Health Care (supra) to determine whether there was likelihood or
in any case, possibility of consumer being confused so as to make
the Plaintiff entitled for interim injunction, in Medley
Laboratories (P) Ltd. (supra) it was held that, ‘SPOXIN’ and
‘SUPAXIN’ are visually, phonetically and structurally similar
and though the drugs were sold under prescription that itself
was held to be not sufficient to prevent confusion , likely to arise.
Reiterating that the test of possibility of confusion in relation to
medicinal preparations, as declared by the Apex Court in Cadila
Health Care (supra) ought to have been strictly applied and
injunction ought to have been granted, the Division Bench,
intervened when the Single Judge did not apply the correct test of
possibility of confusion, rather than requiring proof of actual
confusion to be brought on record by placing necessary material.
28 The decision in case of Wyeth Holdings Corporation (supra)
is also placed before us where the Plaintiff’s Motion for
interlocutory relief in an action of passing off or infringement
was revolved around registration of trade mark ‘FOLVITE’ in
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Class V in respect of a nutritional factor of Vitamin B complex in
treatment and prevention of Vitamin deficiency and anemia and
while the registration mark subsisted, the Defendant adopted
mark ‘FOLCACID’ for its product which was then changed to ‘FOL-
V’. The Plaintiff filed an Application opposing the registration
and the registration was refused for trademark ‘FOL-V’ on the
basis that it bear similarity to the earlier trade mark ‘FOLVITE’ of
the Plaintiff and having regard to the similarity of the goods
involved, there is a likelihood of confusion on part of the public
and there was an apparent danger of public being confused and
the use of mark ‘FOL-V’ would be detrimental to the distinctive
character and reputation of the marks of the Plaintiff.
With reference to the decision in Cadila Health Care (supra),
when the Supreme Court had revisited the issue of deceptive
similarity in the context of pharmaceutical preparations , the
learned Single Judge, observed thus :-
“14A. As a matter of principle, it would be inappropriate for
the Court to apply a stricter standard only to a particular
class of medicinal preparations. If the Court were to do this, it
would have to make artificial distinctions from case to case
based on whether or not the Court considers that a confusion
arising out of the medicinal product in issue may or may not
have disastrous effects on health and life. Such an approach is
impermissible. An ostensibly innocuous medicinal preparation
taken for an affliction which is not life threatening may yet
result in a serious danger to life and health, where the drug is
not manufactured under correct conditions. A consumer who
desires to obtain a medicine even for an ordinary ailment is
entitled to be sure that the drug that he purchases is of an
assured character and quality. A manufacturer builds up a
reputation for quality and standards assiduously over a length
of time and an established mark assures to the consumer that
the medicine which he has purchased is of a requisite quality
that is associated with the mark. A less than strict standard
cannot be applied on the hypothesis that the ailment which
the drug is intended to treat is not life threatening, nor for
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J-ComsApeal-44382-2025.odtmerely on the ground that the composition of the Plaintiffs
product is the same as that of the Defendant and the confusion
caused by mistaking one for the other would not result in a
danger to health. Undoubtedly, where the competing drugs are
meant to cure the same ailment but he compositions are
different, mistaking one for the other may result in
deleterious consequences. But, merely because the two
competing marks are used for drugs with the same
composition that would not justify applying a lower standard
of scrutiny. For, even in such a case, the public interest lies in
protecting the consumer against an unwary purchase of
deceptively similar product. The consumer must be protected
against a reasonable possibility of confusion arising out of a
deceptively similar mark. The attempt, therefore, to read
down Cadila is impermissible.”
29 In considering the the question of deceptive similarity, it is
held that the two marks shall be considered as a whole and the
structure of the mark visually and phonetically must be borne in
mind and the image of the Court should have in mind of a quick
essential common man.
In specific words the Court applied the following test, ” the
ordinary man goes to a small shop of a chemist and to him the
distinction between ‘FOLVITE’ on one hand and ‘FOL-V’ on other
is so thin as to almost be lacking any significance. It may well be
that the manner in which the mark of the Plaintiff is written in
Devnagari, may make the ‘VITE’ in the mark resembling ‘VIT’.
But every customer in multilingual country, such as India, is not
conversant with that nuance. An average consumer who ask for
‘FOLVITE’ would fail to capture the distinction, when he is given
a strip of tablets of ‘FOL-V’ and that is what matters on the
question of deceptive similarity”.
30 The ultimate test to be applied being, it is not right to take
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part of a word and compare it with part of another or as
Mr.Kamod has argued ‘syllable by syllable’. Each word must be
taken as a whole and compared as a whole and it is not
appropriate to take a portion of a word, dissect it and then
compare the balance with the another word and then conclude
that there is no cause for confusion.
In Schering Corporation vs. United Biotech (P) Ltd. 28
(supra), the Defendant’s mark ‘NETMICIN’ was compared with
the Plaintiff’s mark ‘NETROMICIN’, and it was noted that there
was no possibility of confusion, because Defendant’s product was
purchased in bulk by hospitals and Plaintiff’s product was sold
over the counter. Since the area of the usage of the product and
the manner of its sale was different, the test of similarity was not
applied.
31 Recently, the Delhi High Court in Dr.Reddys Laboratories
Limited (supra) was dealing with trade mark ‘AZIWOK’
registered under Section 23 of the Trade Marks Act, 1999
covering medicinal, pharmaceutical and veterinary preparations
and sanitary substances.
‘AZIWOK’ being a portmanteau of ‘AZI’ and ‘WOK’ ; ‘AZI’
being abbreviation of azithromycin, the active pharmaceutical
ingredient in the product, whereas, ‘WOK’ is an abbreviation for
‘WOCKHARDT’, which was assigned the registration of mark
‘AZIWOK’ in the past.
The Defendant, had applied for registration of the mark
‘AZIWAKE’ on the proposed to be used basis in the year 2022 and
28 2011(1) BomCR 89
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therefore, the Plaintiff instituted a Suit alleging that the brand
name ‘AZIWAKE’ is deceptively similar to the Plaintiff’s registered
trade mark ‘AZIWOK’ as both marks are used for azithromycin
and there is every chance or likelihood of confusion as well as
likelihood of association between the two marks in the mind of
the consumer of average intelligence and imperfect recollection.
On behalf of the Defendant, a stand was adopted that
‘AZIWAKE’ cannot be regarded as visually or phonetically similar
to ‘AZIWOK’ and the competing marks where the words are
phonetically similar and the test in the Re Pionotist Company’s
application and adopted by the Court in the country on several
occasions was pressed into service.
The test being ” You must take the two words. You must
judge them, both by their look and 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. You must consider all the surrounding
circumstances and consider what is likely to happen if each of
those trade marks is used in a normal way as a trade mark for
the respective goods of the respective owners of the marks.”
32 On consideration of the counter submissions, the Delhi High
Court concluded thus :-
“54 The competing words are, in the present case, “AZIWOK”
and “AZIWAKE”. There is no real distinction between their “look”
and “sound”, especially as the plaintiff holds a word mark
registration for the word “AZIWOK”. Though, to my mind, it is
obvious that AZIWAKE is phonetically similar to AZIWOK, as
they sound deceptively alike to the ear, one may, if it is
necessary to pare the issue to its essentials, explain why the two
words are phonetically similar, thus:
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(i) Each word consists of three syllables.
(ii) Of the three syllables, the first and second syllables in each
word are the same; “a” and “zi”.
(iii) The third syllable which, therefore, would be determinative
in examining phonetic similarity, is “wok” in one case and “wake”
in the other.
(iv) The third syllable in each case has, therefore, three distinct
sounds, with an initial and the terminal consonant sound and an
intervening vowel sound.
(v) The initial and terminal consonant sounds are the same in
both the words, namely “w” and “k”.
(vi) The only difference between the two words AZIWOK and
AZIWAKE is, therefore, in the intervening vowel sound between
the consonants forming part of the third syllable (“wok” and
“wake”) in each word. In AZIWOK, the intervening sound is “o”
and, in AZIWAKE, it is “ay”.
(vii) This minuscule difference between the two words is too
slight to detract from the overall phonetic similarity between
them.
(viii) To the ear of the consumer of average intelligence and
imperfect recollection, it is, therefore, clear that the words
“AZIWOK” and “AZIWAKE” are phonetically deceptively similar.
Noting that the marks are used for the same
pharmaceutical preparation and it would be unrealistic to expect
that every doctor would be aware of the distinction between
‘AZIWOK’ and ‘AZIWAKE’, it was held that the possibility of a
customer being dispensed ‘AZIWAKE’ when he want ‘AZIWOK’ ,
cannot be discounted and by applying the the test laid down in
Cadila Health Care (supra) it was also noted that if a physician
desire his patient to be treated with ‘AZIWOK’ , the patient must
not end up taking ‘AZIWAKE’ because of the confusion caused by
similar name/mark.
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In light of this, the Defendant as well as others acting on his
behalf were restrained from using mark ‘AZIWAKE’, with or
without any prefixes or suffixes in respect of pharmaceutical
preparations or for any other allied of cognate goods or services.
33 Being guided by the abovesaid authoritative
pronouncements, when we applied the test laid down in Cadila
Health Care (supra), we find substance in the arguments
advanced by Mr.Kamod, about the phonetic similarity in
‘RACIRAFT’ AND ‘ESIRAFT’; ‘RAFT’ being the common word
indicative of Sodium Alginate i.e. foam.
When the Defendant competed with ‘EASYRAFT’ it clarified
that its mark is ‘ESIRAFT’ and that ‘RAFT’ is generic and there
is no similarity between ‘RACIRAFT’ and ‘ESIRAFT’.
A perusal of the impugned Judgment would reveal that the
learned Single Judge has considered the marks syllable by
syllable; ‘ECI-ACI’, which in the wake of the settled proposition in
law, is not permissible to be compared as the word has to be
picked up as a whole and when the comparison is to be made, the
apparent phonetic similarity between the two products is
striking.
In the wake of the test repeatedly laid down , the mark has
to be considered as a whole. The impression that is gathered
from reading of the two words must be striking feature for
considering the similarity or dis-similarity. The mere existence
of the slightest possibility of confusion in case of medicinal
product marks would warrant use of such marks to be
restrained. The degree of resemblance in the two marks must be
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taken into consideration while deciding the similarity and
phonetic similarity or similar pronunciation itself can be a cause
for confusion amongst the public.
The test laid down being, the confusion from the point of
view of an ordinary common man of average intelligence instead
of a specialized medicinal practitioner when the two products
‘RACIRAFT’ and ‘ESIRAFT’ are compared, it definitely resonate
similarity and since the words are to be considered as a whole and
not by exclusion of ‘RAFT’ and when a comparison should be
drawn between ‘RACI’ AND ‘ESI’, in our view the Single Judge
has mis-applied the test in Cadila Health Care (supra). Whenever
while comparing the two marks, there is likelihood of confusion
on account of phonetic similarity alongwith margin to be kept for
imperfect pronunciation and imperfect recollection in multi-
lingual society in India, coupled with illiteracy, difference in the
pronunciation, in our view the two marks are capable of creating
a confusion, as one product may be taken for other and probably
being medicine, if consumed it may not give the desired result
and that is what must be avoided.
34 Though an attempt is made by Mr.Khandekar to establish
the colour theme and the difference in the manner in which the
product is described, we may not go by the packaging of the
product, but by the very pronunciation of the marks ‘RACIRAFT’
and ‘ESIRAFT’, which in our view has the potential of confusion
and which is a real test to determine the similarity in the two
products.
The learned Single Judge has referred to the decision in
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Cadila Health Care (supra), but in Paragraph 18 and 19, returned
a finding that the actual distinction would be decided at the time
of trial. Whereas, in our view the test is prima-facie
appearance/impression created by the two marks to be compared
and with the phonetic similarity, amongst two, we are of the clear
view that mis-pronunciation or hurried or fast utterance of the
word with a silent use of the word ‘R’ and mis-reading of the word
A/E there is every possibility of creation of confusion or
deception. The test to determine whether the trade mark is
deceptively similar being, consideration of the mark as a whole,
by gathering first impression and the likelihood of confusion from
the view point of a man of average intelligence, the product of
Defendant is likely to cause confusion.
35 By applying the two tests, in our view ‘RACIRAFT’ is
deceptively similar to ‘ESIRAFT’ of the Respondent and though
visually there may be dis-similarity in their prefixes, the
phonetic similarity and the possibility of confusion on its mis-
pronunciation , satisfy the test of deceptive similarity. To allow
any such confusion to continue shall be against public interest
and in the wake of aforesaid reasoning, we disagree with the
findings rendered by the learned Single Judge and deem it
appropriate to set aside the impugned order as the learned Single
Judge has failed to apply the test for granting injunction by
applying the similarity test applicable to pharmaceutical products
and since there is a failure to apply the said test at the stge of
grant of injunction, according to us, an illegality has occasioned,
and in an attempt to set aside the order, we are not adopting a
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merely possible view, but our view is based upon the test laid
down in Cadila Health Care (supra), and, therefore, by setting
aside the impugned Judgment/Order dated 23/12/2025, we allow
the Appeal filed by the Appellant.
Pending Interim Applications, if any, stand disposed of.
[MANJUSHA DESHPANDE, J.] [BHARATI DANGRE, J.]
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