Schering Corporation & Ors. vs Alkem Laboratories Ltd.

SCHERING CORPORATION & ORS. .....Appellants Through: Mr. Sachin Datta, Ms. Lakshmi Ramamurthy Ms. Shaila Arora, and Mr. Amit Mehta, Advocates

VERSUS

ALKEM LABORATORIES LTD. .......Respondent Through: Mr. Praveen Anand, Ms. Ishani Chandra and Ms. Vaishali Kakra, Advocates

AND 2. FAO(OS) 314 OF 2008

SCHERING CORPORATION & ORS. .....Appellants Through: Mr. Sachin Datta, Ms. Lakshmi Ramamurthy, Ms. Shaila Arora and Mr. Amit Mehta, Advocates

VERSUS

GETWELL LIFE SCIENCES INDIA PRIVATE LIMITED .......Respondent Through: Mr. Praveen Anand, Ms. Ishani Chandra and Ms. Vaishali Kakra, Advocates

CORAM: HON'BLE MR. JUSTICE MUKUL MUDGAL HON'BLE MR. JUSTICE VIPIN SANGHI

1. Whether the Reporters of local papers may No be allowed to see the judgment?

2. To be referred to Reporter or not? Yes

3. Whether the judgment should be reported Yes in the Digest?

FAO (OS) Nos.313/2008 & 314/2008 Page 1 of 64 VIPIN SANGHI, J.

1. The present appeals have been filed by the appellants

Schering Corporation, Schering-Plough Ltd. and Fulford (India) Ltd.

under Order 43 Rule 1(r) CPC. They are directed against the identical

orders dated 04th July, 2008 passed by the Learned Single Judge

dismissing the appellants'/plaintiffs' applications under Order 39 Rules

1 & 2 in the two suits CS (OS) No.730/2007 (out of which FAO(OS) No.

313/2008 arises) and CS(OS) No.361/2007 (out of which FAO(OS)

314/2008 arises) and vacating the ex parte ad interim orders of

injunction passed in the said suits.

2. These interim applications had been filed to seek grant of an

interim injunction to restrain the Respondent Alkem Laboratories Ltd.

(Defendant in CS(OS) NO. 730/2007) (hereinafter referred to as ALKEM)

and Getwell Sciences India Pvt. Ltd ( Defendant in Suit No. 361/2007)

(hereinafter referred to as GETWELL) from using the marks TEMOKEM

and TEMOGET respectively in relation to their pharmaceutical products

-- the active ingredient whereof is TEMOZOLOMIDE, a drug

administered for the treatment of brain cancer.

3. The appellants filed the aforesaid two suits to, inter alia, seek

permanent injunction to restrain infringement of registered

trademarks, copyright, passing off, dilution, unfair competition,

FAO (OS) Nos.313/2008 & 314/2008 Page 2 of 64 rendition of accounts of profits, deliver-up etc. against the aforesaid

respondents ALKEM & GETWELL respectively.

4. The appellants have disclosed the genesis of the

TEMOZOLOMIDE molecule and its marks TEMODAL and TEMODAR used

by the appellants. In 1984 one Professor Steven synthesized a

molecule and named it TEMOZOLOMIDE. In 1991 the Cancer Research

Campaign Technology Ltd., UK acquired rights to the TEMOZOLOMIDE

technology from its maker, Prof. Stevens. In 1992 the appellants

obtained worldwide license for TEMOZOLOMIDE technology from the

aforesaid Cancer Technology Ltd. and initiated their research and

development of a brain cancer drug. The drug was approved as a

medical drug for cancer treatment in 1999. The appellants then filed

for TEMODAL as their Trademark for their TEMOZOLOMIDE-based drug.

According to the appellants the drug is being sold in India ever since

17.01.2000. Even the mark TEMODAL was registered in India in favor

of the appellant vide registration no.687936 w.e.f. 23.11.1995 in class

5, which, inter alia, relates to pharmaceuticals including alkylating

cytotoxic agents for the treatment of various types of cancer.

Similarly, TEMODAR is registered in name of appellant no. 3 vide

registration no. 888816 w.e.f 29.11.1999.

5. The appellants claim that they are global science-based

health care business entities with leading prescription, consumer and

animal health products. The mark TEMODAL existed in the appellants'

portfolio since 1978 and was first applied by them for

FAO (OS) Nos.313/2008 & 314/2008 Page 3 of 64 ―Psychopharmaceutical Preparations‖ in Class 5 in Norway, Denmark

and Sweden. The appellants commenced sales in Europe and

thereafter in other parts of the world along with filing for registration of

the mark TEMODAL in those respective countries, which they

successfully acquired too.

6. The appellants claim to have came to know that the

respondent ALKEM was marketing and selling an almost identically

positioned drug (for treatment of brain cancer or glioblastoma

multiforme) under the mark TEMOKEM which, according to the

appellants, was phonetically, linguistically, textually, visibly,

manifestly, confusingly and deceptively similar to their marks

TEMODAL/TEMODAR. They also came to know that the respondent

ALKEM had submitted a ―Proposed to be used‖ application bearing

number 1348168 in class 5 for registration of the mark TEMOKEM and

the same was advertised in Trademark Journal no. 1335-0 dated

01.11.2006 made available to the public on 03.03.2007. In answer to

this, the appellants have filed a notice of opposition dated 23.03.2007

to the above application and the same is still pending.

7. The appellants alleged infringement of trademarks under

section 29 of the Trademarks Act, 1999 (hereinafter referred to as ‗The

Act') and also passing off against the respondent ALKEM, in their civil

suit, being CS(OS) No.730 of 2007 filed on the original side of this

Court.

FAO (OS) Nos.313/2008 & 314/2008 Page 4 of 64

8. It appears that the learned Single Judge passed an ex parte

ad interim order of injunction in favour of the appellants, and against

the respondent ALKEM on 23.04.2007 thereby restraining the

respondent ALKEM from launching/using, advertising, promoting,

stocking, offering for sale or distributing or otherwise using trademark

―TEMOKEM‖ or any other mark deceptively or confusingly similar to

that of the plaintiff's registered trademark ―TEMODAL/TEMODAR‖ as a

drug used especially for treatment of brain cancer. However, after

notice to the respondent ALKEM, and after hearing the parties the

learned Single Judge by the impugned order has vacated the aforesaid

order dated 23.04.2007 and dismissed the appellants' application

under Order 39 Rules 1 & 2 CPC being I.A. No.4555/2007 while allowing

respondent's application being I.A. No.6041/2007 filed under Order 39

Rule 4 CPC.

9. Similarly, in CS (OS) No.361/2007 wherein GETWELL is the

defendant, the appellants claimed that they came to know in

December, 2006 of the defendant/respondent marketing and selling an

identically positioned drug by GETWELL under the brand name

‗TEMOGET' in Delhi and also in other towns of India. The appellants

also stated that they had made enquiries with regard to the making of

an application for registration of the trademark ‗TEMOGET' by the

respondent GETWELL, but the search had produced no results.

10. The learned Single Judge initially passed an ex parte ad

interim injunction order on 27.02.2007 thereby restraining GETWELL

FAO (OS) Nos.313/2008 & 314/2008 Page 5 of 64 from advertising, promoting, stocking, offering for sale or distributing

or otherwise using trademark ―TEMOGET‖ or any other mark

deceptively or confusingly similar to that of the plaintiff's registered

trademark ―TEMODAL/TEMODAR‖ as a drug used especially for

treatment of brain cancer. After notice to and hearing the respondent

GETWELL the ex parte ad interim order of injunction was vacated by

the impugned order dated 04.07.2008 and the appellants application

under Order 39 Rule 1 & 2 CPC being I.A. No.2226/2007 was dismissed.

11. The learned Single Judge in his impugned orders observed

that the term ‗TEMO' used in the appellant's registered trademarks as

well as in the respondent's trademarks are derived from the name of

the chemical compound TEMOZOLOMIDE. To the said term ‗TEMO' the

appellants had added the suffix ‗DAL' and ‗DAR' to arrive at the

trademarks ‗TEMODAL' and ‗TEMODAR' respectively. On the other

hand, respondents had added the suffix ‗KEM' and ‗GET' which are the

parts of the respondent's company names, to arrive at the trademark

‗TEMOKEM' and ‗TEMOGET' respectively. The learned Single Judge

held that all the trademarks, as aforesaid, are portmanteau words. He

further held as follows:

―A portmanteau word is used to describe a linguistic blend, namely, a word formed by blending sounds from two or more distinct words and combining their meanings.

Examples of portmanteau words are - brunch (breakfast + lunch); Tanzania (Tanganyika + Zanzibar). As per the Wikipedia, portmanteaus can also be created by attaching a prefix or suffix from one word to give that association to

FAO (OS) Nos.313/2008 & 314/2008 Page 6 of 64 other words. For example, the suffix ‗holism' or ‗holic' taken from the word ‗alcoholism' or ‗alcoholic' can be added to a noun, creating a word that describes an addiction to that noun. For example, chocoholic means a person who is addicted to chocolate and workaholic means a person who is addicted to work and so on.

Portmanteau words can also be used to describe bilingual speakers who use words from both languages while speaking. For instance, a person would be considered speaking ‗Spanglish' if he is using both Spanish and English words at the same time. Similarly, the portmanteau word ‗Hinglish' would refer to the usage of Hindi and English words at the same time.‖

12. He held that the respondents were able to show the

derivation of the trademarks ‗TEMOKEM' and ‗TEMOGET' by employing

‗TEMO' from TEMOZOLOMIDE and ‗KEM' from the name of the

respondent ALKEM and, similarly, ‗GET' from the name of the

respondent GETWELL, respectively. The combined effect of ‗TEMO'

and ‗KEM' would be TEMOZOLOMIDE manufactured by Alkem

Laboratories. Similarly, the combined effect of ‗TEMO' and ‗GET' is

TEMOZOLOMIDE manufactured by Getwell.

13. The learned Single Judge relied on the decision of this court in

Kalindi Medicure Pvt. Ltd. Vs. Intas Pharmaceuticals Limited

and Anr. 2007 (34) PTC 18 (Del) wherein this Court had taken note of

the established practice that in pharmaceutical trade names of various

drugs are often almost similar to each other, having common prefixes

or suffixes, for the reason that the name of the drug conveys as to

which salt / compound it is a derivative of. In that case, while one of

FAO (OS) Nos.313/2008 & 314/2008 Page 7 of 64 the products was sold in the form of pills in aluminum foils, the other

competing product was sold in pre filled syringes. The price difference

in the competing products was also taken into account for vacating the

ex parte injunction granted in favour of the plaintiff in that case.

14. The learned Single Judge heavily relied on the Division Bench

Judgment of this Court in Astrazeneca UK Ltd. & Anr. Vs. Orchid

Chemicals & Pharmaceuticals Ltd. 2007 (34) PTC 469 (DB) (Delhi)

which concerned the claim for infringement of the plaintiffs/appellants

registered trademark ‗MERONEM' by the defendants/respondents use

of the trademark ‗MEROMER'. Both the products were derived from

the active ingredient ‗MEROPENEM'. The Division Bench of this Court

came to the conclusion that ‗MEROPENEM' is a molecule which is used

for treatment of bacterial infection and the term ‗MERO' being an

abbreviation of the generic term ‗MEROPENEM' was publici juris.

Consequently, the appellants/plaintiffs in that case were held not

entitled to claim exclusive rights to the use of the term ‗MERO' as a

constituent of the trademark in question as it was descriptive of the

appellants'/plaintiffs' drug. The Division Bench further held that the

common feature in both the competing marks ‗MERO' being

descriptive and publici juris, the customers would tend to ignore the

common feature and would pay more attention to the uncommon

features namely ‗MER' and ‗NEM', which were clearly dissimilar. The

following paragraph from the said decision of the Division Bench was

particularly referred by the learned Single Judge : FAO (OS) Nos.313/2008 & 314/2008 Page 8 of 64

―19. Admittedly, ‗Mero', which is common to both the competing marks, is taken by both the appellants/plaintiffs and the respondent/ defendant from the drug ―Meropenem', taking the prefix ‗Mero' which is used as a prefix in both the competing marks. Both the appellants/plaintiffs and the respondent/ defendant are marketing the same molecule ‗Meropenem'. Neither the appellants/plaintiffs nor the respondent/defendant can raise any claim for exclusive user of the aforesaid word ‗Meropenem'. Along with the aforesaid generic/common prefix, ‗Mero', the appellants/ plaintiffs have used the syllables ‗nem', whereas, the respondent/defendant has used the syllable ‗mer'. It is true that the aforesaid words/trade names cannot be deciphered or considered separately, but must be taken as a whole. But even if they are taken as a whole, the prefix ‗Mero' used with suffix in the two competing names, distinguishes and differentiates the two products. When they are taken as a whole, the aforesaid two trademarks cannot be said to be either phonetically or visually or in any manner deceptively similar to each other.‖

15. The learned Single Judge noted the view of the Division

Bench in Astrazeneca (supra) that in the trade of drugs it was a

common practice to name the drug by the name of the organ or

ailment which it treated or the main ingredient of the drug. The name

of such an organ, ailment or ingredient being publici juris or generic,

could not be claimed by anyone exclusively for use as a trademark. The argument of the appellant that it was the first to have adopted and

use the name ‗TEMO', and that the appellants had trans-border

reputation [which were claimed to be the distinguishing feature from

the Astrazeneca (supra) case] was rejected by the learned Single

Judge as the claim of the appellants was founded upon an alleged

FAO (OS) Nos.313/2008 & 314/2008 Page 9 of 64 infringement of registered trademark. It was also not a case where the

respondents had raised a defence of prior use under Section 34 of the

Act, where again, the question of ―who used the mark first‖ would be

relevant. The case of the appellants was one of infringement under

Section 29 of the Act and the only question which required

consideration was whether the respondent's trademarks were

deceptively similar to the appellants registered trademarks, which

could lead to confusion in the mind of the purchaser to purchase the

drugs of the respondents, while intending to purchase the appellants

drugs.

16. The learned Single Judge held that the present cases are

squarely covered by the decision of the Division Bench in

Astrazeneca (supra).

17. The learned Single Judge also took note of the decision in

Bhagwan Dass Gupta Vs. Shri Shiv Shankar Tirath Yatra

Company Pvt. Ltd. 93 (2001) DLT 406 wherein a learned Single Judge

of this court noted that the basic test to find out whether a trademark

is publici juris is whether the mark has come to be so public because of

its universal use that it does not confuse or deceive, by the use of it,

the purchasers of the goods of the original trader. The learned Single

Judge held that as TEMOZOLOMIDE is a generic word and is publici juris

and nobody can claim exclusivity in respect of the same.

Consequently, the clipped expression ‗TEMO' derived from clipping

FAO (OS) Nos.313/2008 & 314/2008 Page 10 of 64 word TEMOZOLOMIDE would also be publici juris over which no person

could claim exclusive proprietorship.

18. The learned Single Judge also placed reliance on another

decision of this Court in Cadila Laboratories Ltd. V. Dabur India

Ltd., 1997 PTC (17) 417. The competing marks considered in the said

case were `MEXATE' AND `ZEXATE'. The suffix `EXATE' was common

to both the marks, the only difference being in the prefix `M' & `Z'. It

was held in that case that where the suffix is common, prefix would

have to be compared to see whether the marks are deceptively similar. The following extract from Cadila (supra) was quoted by the learned

single Judge in the impugned order:

―As has been settled, while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the words of the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered.‖

19. The learned single Judge rejected the appellants reliance on

the decision of the Supreme Court in Milment Oftho Industries &

Ors V. Allergan Inc., 2004 (28) PTC 585 (SC) on the ground that the

said decision was rendered in a case of passing of and not in an action

for infringement of trade mark. The competing marks in the case of

Milment (supra) were identical. Both the plaintiff and the defendant

had adopted `OCUFLOX' as their trade mark. However, in the present

cases the marks of the appellants and the respondents are not

FAO (OS) Nos.313/2008 & 314/2008 Page 11 of 64 identical. For the same reason, the decision in Pfizer Ireland

Pharmaceuticals V. Intas Pharmaceuticals & Anr., (2004) 28 PTC

456 (Del) (The Lipitor v. Lipicor case) was distinguished.

20. Reliance placed by the appellants on the decision in Hoechst

Pharmaceuticals Ltd & Ors V. Government of India & Ors, 1983

PTC 265 (Del) (DB) was also rejected as it proceeded on the

assumption that the appellants products are superior to that of the

respondent. The said basis could not be accepted at the prima facie

stage, particularly, when the respondent had obtained drug licence

under the Drug and Cosmetics Act, 1940. For the same reason, the

learned Single Judge rejected the appellants reliance on the decision in

Ramdev Food Products (P) Ltd. V. Arvindbhai Rambhai Patel &

Ors., (2006) 8 SCC 726.

21. The learned single Judge also held that the trade marks

`TEMODAL' & `TEMODAR' of the appellants were not identical with the

trademarks TEMOKEM and TEMOGET. He held that there was no

phonetic or visual similarity between the marks. The Court prima facie

came to the conclusion that the suffix `KEM' and ‗GET' are entirely

different and distinct from the suffix `DAL' and ‗DAR' used in the

appellants trademarks. Prima facie the comparison of the competing

marks did not show phonetic or visual similarity between the

respondent's marks with the trademarks of the appellants and the

respondents' marks were not prone to deceive the consumers. He also

took into account the fact that TEMOZOLOMIDE is a schedule ‗H' drug

FAO (OS) Nos.313/2008 & 314/2008 Page 12 of 64 which could be sold in retail only on the prescription of a registered

medical practitioner. The same, though not sufficient to answer a case

of ―no deception‖, was an important factor considering the fact that

the product in question is a highly specialized drug and used for

specific treatment of a type of brain cancer. The Court also took notice

of the fact that in the case of both the respondents, their packaging of

the drugs contained the warning ―to be supplied against demand from

cancer hospitals, institutions and against the prescription of a cancer

specialist only."

22. The immense price difference between the products of the

appellants on the one hand and those of the respondents was also

taken note of by the learned single Judge. Whereas a set of 5 capsules

of 100 mg of TEMODAL/TEMODAR are sold for Rs.33,602/-, 5 capsules

of 100 mg each of TEMOKAM are sold for Rs.6,300/- and a set of 5

capsules of 250 mg each of TEMOGET sell for Rs.12,000/-.

23. For the aforesaid reasons, the learned single Judge dismissed

the interim injunction applications filed by the appellants in the two

suits.

24. Learned counsel for the parties have made elaborate

submissions in support of their cases.

25. As noted above, the learned Single Judge has held that the

present cases are covered by the Division Bench decision in

Astrazeneca (supra). We have, therefore, gone through the said

FAO (OS) Nos.313/2008 & 314/2008 Page 13 of 64 judgment. Before we proceed further, in our view it is essential for us

to deal with the appellants' submissions vis-à-vis Astrazeneca

(supra), as the scope of the parties' submissions which we need to

consider in this appeal would depend upon our understanding of the

said judgment.

26. In Astrazeneca (supra) both the appellant/plaintiff and the

respondent/defendant had got their marks registered, though the

appellant/plaintiff had moved an application for rectification in respect

of the respondents/defendants trade mark `MEROMER'. The appellant

had contended that since 1995-96, the drug under the brand name

`MERONEM' was being marketed by it in over 89 countries. On the

other hand, the respondent/defendant had launched their drug

`MEROMER' in India sometime in November, 2004 and they were

granted registration of the trade name `MEROMER' on the basis of

their application for registration filed on 2.8.2004 in Class 5. The

appellant/plaintiff had contended that the trade name `MEROMER' of

the respondent as a whole be compared with the trade mark of the

appellant/plaintiffs i.e. `MERONEM' and on such comparison it would be

clear that both are deceptively similar. On the other hand, the

respondent/defendant had contended that an action for infringement

was not maintainable in view of the provisions contained in Section 29

& 32(e) of the Act which provide, inter alia, that use of a mark by its

registered proprietor shall not constitute infringement. FAO (OS) Nos.313/2008 & 314/2008 Page 14 of 64

27. The learned single Judge held that the two trademarks are

phonetically not similar and that the two marks are distinct. He also

held that if an injunction as sought for is granted by restraining the

respondents/defendants from selling, marketing or in any manner

dealing with the drug `MEROPENEM' under the trade name `MEROMER'

there would be irreparable inconvenience caused to the

respondents/defendants, whereas the loss of the appellants/plaintiffs if

any, which is more financial in nature could be safeguarded by

directing the respondent/defendants to maintain accounts of sale

under the trade name `MEROMER'. The appellant/plaintiff in

Astrazeneca (supra) placed reliance on the decision of the Supreme

Court in Cadila Health Care Ltd. V. Cadila Pharmaceuticals Ltd.,

2001 PTC 541 (SC). The Division Bench in Astrazeneca culled out the

principles laid down by the Supreme Court which would be applicable

to a passing off action involving medicinal products. The Supreme

Court held that the test to be applied to adjudge the violation of trade

mark may not be at par with the case involving non- medicinal

products. The Division Bench then proceeded to take notice of an

earlier Division Bench judgment of this Court in SBL Limited. V.

Himalaya Drug company, 1997 PTC (17) 540 and quoted the

following observation of the Court:

―25.(3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris. In the 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 ingredient of the drug. Such an organ

FAO (OS) Nos.313/2008 & 314/2008 Page 15 of 64 ailment or ingredient being publici juris or generic cannot be owned by anyone for use as trade mark.‖

28. The Division Bench in Astrazeneca (supra) also referred to

two other decisions in M/s Biofarma V, Sanjay Medical Stores,

1997 PTC (17) 355 and Cadila Laboratories V. Dabur India

Limited, 1997 PTC (17) 417 wherein Dr. Mukundakam Sharma, J, as

his Lordship then was, had occasion to deal with the trade names

`TRIVEDON' and `FLAREDON' in the first case and `MEXATE' and

`ZEXATE' in the second case. The Division Bench culled out the

following extract from the decision in M/s Biofarma (supra):

―Section 2(d) of the Trade and Merchandise Marks Act 1958, (hereinafter referred to as the Act) defines the word ‗deceptively similar' as which would be deemed to be deceptively similar to another mark if it so nearly resembles that other mark so as likely to deceive or cause confusion. For deciding the question of deceptive similarity the Courts have laid down the following factors to be considered:

(a) The nature of the marks, i.e. whether the marks are world marks or level marks or composite marks, i.e. both world and level marks.

(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 to trade marks

(d) the similarity in the nature, character and performance of the goods of the rival traders.

FAO (OS) Nos.313/2008 & 314/2008 Page 16 of 64 (e) The class of purchasers who are likely to buy the goods bearing the marks they require on education and intelligence and a degree of care they are likely to exercise in purchasing the goods.

(f) the mode of purchasing the goods or placing orders for the goods; and

(g) Any other surrounding circumstances.‖

29. In M/s Biofarma (supra) it was held that since the opening

syllable of the two competing trade marks in the said case are

completely different and distinct, and in pharmaceutical trade it is

natural to find names of various drugs almost similar to each other or

having the same prefix or suffix, the competing marks viz. ‗FLAREDON'

and ‗TRIVEDON' are dissimilar as the two marks start with distinct dis-

similarities so far as the first syllable is concerned. Similarly, in the

other decision namely, Cadila Laboratories v. Dabur India Limited

(supra) it was held that there is no possibility of ‗Mexate' being

pronounced and read as ‗Zexate'. It was also laid down that meticulous

comparison of words, letter by letter and syllable by syllable, is not

necessary and phonetic or visual similarity of the marks must be

considered.

30. The observation of the Division Bench in Astrazeneca

(supra) in paragraph 19 has been taken note of by the learned single

Judge and has been extracted by us above. The Division Bench also

took note of the fact that there are other similar names with the prefix

`MERO'. The Division Bench further observed: -

FAO (OS) Nos.313/2008 & 314/2008 Page 17 of 64

―20. ........................... In the decisions of the Supreme Court and this Court also, it has been clearly held that nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris. In the 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 ingredient of the drug. Such an organ ailment or ingredient being publici juris or generic cannot be owned by anyone exclusively for use as a trade mark. In the Division Bench decision of this Court in SBL Limited (supra) it was also held that possibility of deception or confusion is reduced practically to nil in view of the fact that the medicine will be sold on medical prescription and by licensed dealers well versed in the field and having knowledge of medicines. It was further held that the two rival marks, ‗Liv.52' and ‗LIV-T', contain a common feature, ‗Liv' which is not only descriptive, but also publici juris and that a customer will tend to ignore the common feature and will pay more attention to uncommon features i.e. '52' and 'T' and that the two do not have such phonetic similarity so as to make it objectionable.

21. In our considered opinion the facts of the said case are almost similar and squarely applicable to the facts of the present case.

'Meropenem' is the molecule which is used for treatment of bacterial infections. In that view of the matter, the abbreviation ‗Mero' became a generic term, is publici juris and it is distinctive in nature. Consequently, the appellants/plaintiffs cannot claim exclusive right to the use of ‗Mero' as constituent of any trademark. The possibility of deception or confusion is also reduced practically to nil in view of the fact that the medicine is sold only on prescription by dealers. The common feature in both the competing marks i.e. ‗Mero' is only descriptive and publici juris and, therefore, the customers would tend to ignore the common feature and would pay more attention to the uncommon feature. Even if they are expressed as a whole, the two did not have any phonetic similarity to make it objectionable. There are at least four other

FAO (OS) Nos.313/2008 & 314/2008 Page 18 of 64 registered users of the prefix ‗Mero' in India whereas the names of 35 companies using ‗Mero' trademarks, which have been registered or applied for registration, have been furnished in the pleadings.‖

31. The Division Bench held that the two names, namely,

‗MERONEM' and ‗MEROMER' were prima facie dissimilar to each other.

They were Schedule-H drugs available only on doctor's prescription.

The factum that the same were available only on doctor's prescription

and not as an over the counter medicine was also considered relevant

and it was held to have been rightly taken note of by the learned

Single Judge. The Division Bench also opined that in its opinion, where

the marks are distinct and the features are found to be dis-similar,

they are not likely to create any confusion. It was also admitted by the

parties that there was a difference in the price of the two products.

This fact was also considered relevant by the Division Bench. It was

held that the very fact that the two pharmaceutical products, one of

the appellants/plaintiffs and the other of the respondent/ defendant,

were being sold at different prices itself would ensure that there was

no possibility of any deception/confusion, particularly in view of the

fact that customer who came with the intention of purchasing the

product of the appellants/plaintiffs would never settle for the product

of the respondent/defendant which was priced much lower. The Bench

held that it was apparent that the trademarks of the two products in

question were totally dissimilar and different.

FAO (OS) Nos.313/2008 & 314/2008 Page 19 of 64

32. No doubt, in Astrazeneca (supra) the additional factor in

favour of the respondent/defendants that weighed in the mind of the

Court was that the mark of the respondent/defendant had also been

registered, in respect whereof the appellant/plaintiff had applied for

rectification. However, to us it is clear that the salient features which

led the Court to deny the grant of interim injunction to the

appellant/plaintiff were:-

a) The admission that `MEROPENEM' was the active

salt/drug in the medicines manufactured by both the

parties which was publici juris;

b) That nobody could claim exclusive right to use any

word, abbreviation, or acronym which has become

publici juris and which is used descriptively;

c) In the 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 ingredient of the drug. The name

of an organ, ailment or ingredient being publici juris

or generic if the use of the name is descriptive, the

generic name cannot be claimed by anyone for

exclusive use as a trade mark;

d) `MERO' which was common to both the competing

marks was taken from `MEROPENEM' in respect

whereof neither party could claim exclusive user for

‗MEROPENEM' based drug. Both the parties had used

FAO (OS) Nos.313/2008 & 314/2008 Page 20 of 64 three letter suffixes i.e. `NEM' had been used by the

appellant/plaintiff and `MER' had been used by the

respondent/defendant, which were distinct and not

deceptive;

e) Even if the competing marks were to be taken as a

whole, the suffixes ‗NEM' and ‗MER' distinguish and

differentiate the two products. When they are taken

as a whole, the aforesaid two trademarks could not

be said to be either phonetically or visually, or in any

manner deceptively similar to each other;

f) The possibility of deception or confusion is reduced

to practically `Nil' in view of the fact that the

medicine would be sold by medical prescription and

by licenced dealers well versed in the field and

having knowledge of medicines. When two rival

marks contain a common feature, which is not only

descriptive but also publici juris, the consumer will

tend to ignore the common feature and will pay more

attention to the uncommon feature (for example in

the case of Liv-52 V. Liv-T). If the uncommon

features do not have phonetic similarity, the

offending mark cannot be objected to. The drugs in

question are Schedule H drugs available only on

Doctor's prescription and are not over the counter

medicines;

FAO (OS) Nos.313/2008 & 314/2008 Page 21 of 64 g) There was a vast difference in the prices of the two

products. This fact by itself would ensure that there

is no possibility of any deception/confusion,

particularly, in view of the fact that the customer

who comes with the intention of purchasing the

product of the appellant/plaintiff would never settle

for the product of the respondent/defendant which is

priced much lower.

33. The fact situation in the two cases in hand are starkly similar

to the fact situation in Astrazeneca (supra). If one were to replace

‗MEROPENEM' with ‗TEMOZOLOMIDE', ‗MERO' with ‗TEMO', ‗MERONEM'

with ‗TEMODAL'/'TEMODAR', ‗MEROMER' with ‗TEMOKEM'/'TEMOGET',

‗NEM' with ‗DAL'/'DAR' and ‗MER' with ‗KEM'/'GET', and proceed on the

basis that ‗TEMO' is publici juris for TEMOZOLOMIDE, each of the

aforesaid factors (a) to (g) would hold true, in principle, in the present

cases as well.

34. Mr. Datta submits that the following are the distinguishing

features of the present appeals from the decision in Astrazeneca

(supra):

i. Plaintiff conceded in Astrazeneca (Supra) that they were not claiming monopoly over just ―mero‖. But the appellants herein are asserting their exclusive right to use ―TEM‖/ ―TEMO‖.

ii. Plaintiff did not specifically dispute that Mero was generic for Moroprenem-based drugs but

FAO (OS) Nos.313/2008 & 314/2008 Page 22 of 64 argued that even if so, Meronem be compared to Meromer, both as a whole. However, the appellants dispute that TEM/TEMO is publici juris for TEMOZOLOMIDE.

iii. Internationally a third party (other than plaintiff) had first adopted `Mero'. But in the present cases, it is the appellants alone who have adopted TEM/TEMO for their TEMOZOLOMIDE based drugs.

iv. No pleading of transborder reputation was made in Astrazeneca (supra). Not a single piece of evidence filed in this regard. But the appellants have not only pleaded, but also demonstrated their transborder reputation.

v. In Astrazeneca(supra), plaintiffs admitted that there were many other Meroprenem-based drugs incorporating `Mero' as part of the mark but took no action was taken against them. However, the appellants do not admit the use of TEM/TEMO for TEMOZOLOMIDE based drugs and have zealously protected their trademarks.

vi. Plaintiffs disentitled themselves from discretionary relief by filing rectification after filing suit without taking statutory S. 124 permission. However, that is not the case in hand.

vii. Court found that `Mero' was commonly used;

that `Mero' became publici juris for Meroprenem-based drugs. No such conclusion can be drawn in respect of TEM/TEMO for TEMOZOLOMIDE.

viii. Plaintiffs did not dispute that drugs are the same except only for shelf life owing to different buffering agent. No plea of superior formulation and better therapeutic effect was made in Astrazeneca (supra). However, the appellants' case is that their drug has a narrow therapeutic index and works differently than the products of the respondents.

ix. In Astrazeneca (supra), there was no recordal of assignment in favour of the

appellants/plaintiffs. So none of the Plaintiffs were the recorded proprietors of the registration of `Meronem'. There is no dispute

FAO (OS) Nos.313/2008 & 314/2008 Page 23 of 64 in the present cases with regard to the rights of the appellants to their trademarks.

x. In Astrazeneca (supra), plaintiffs disentitled themselves from discretionary relief by concealing facts/details of assignment of registration. There is no such allegation against the appellants.

xi. In Astrazeneca (supra), plaintiffs did not dispute that different formulations of the same molecule can be different in therapeutic value and thus legitimately different in price. Thus Cadila judgment was applicable. That is not the position in the present cases.

35. The differences enumerated at sl. Nos.(i), (ii) and (vii) pertain

to the appellants' submission that ‗TEM'/‗TEMO' are not publici juris.

We will deal with this submission of the appellants. However, the so

called differences at sl. Nos.(iii), (iv), (v), (vi), (viii), (ix), (x) and (xi)

above, in our view, are not material for the present purpose. These so

called differences, in fact, had no bearing on the decision in

Astrazeneca (supra), even if it is assumed that they existed, as they

did not form the basis of the decision in Astrazeneca (supra). Since in

Astrazeneca (supra) it was not asserted by the appellants/plaintiffs

that ‗MERO' is not publici juris, whereas in the present cases it is

asserted by the appellants that TEM/TEMO is not publici juris, and the

decision in Astrazeneca was primarily founded upon the premise that

‗MERO' is publici juris being an abbreviation of ‗MEROPENEM' (which

admittedly was generic), in our view that would be the only aspect

which would require our consideration to conclude whether or not the

decision in Astrazeneca (supra) would apply to the present case. If we

FAO (OS) Nos.313/2008 & 314/2008 Page 24 of 64 conclude that ‗TEM'/‗TEMO' is publici juris for TEMOZOLOMIDE, even

the so called differences at sl. Nos.(i), (ii) and (vii) above would not

survive and the decision in Astrazeneca (supra) would become

applicable squarely to the present cases.

36. We may note that the Division Bench decision in

Astrazeneca (supra) has also been followed in a recent decision of

this Court in the case of Rhizome Distilleries P. Ltd. and Ors. V.

Pernod Ricard S.A. France and Ors, MANU/DE/2742/2009 in

FAO(OS) 484/2008 decided on 23.10.2008 by the Division Bench

comprising of Vikramajit Sen and V.K.Jain, JJ. In this decision, the

Division Bench observed as follows:-

―23. .............In Astrazeneca UK Limited v. Orchid Chemicals and Pharmaceuticals Ltd. 2007(34) PTC 469 another Division Bench was called upon to decide the dispute in the use of the trademarks MEROMER and MERONEM, in respect of which the learned Single Judge had vacated the ad interim injunction granted earlier. The Division Bench observed that MERO was generic in character and concluded that the suffix in both the rival trademarks were sufficient to draw a distinction between the two. The Bench drew support from the LIV-52 and LIV-T litigation to uphold the refusal of an interim injunction. We can do no better than reproduce a passage from SBL Limited v. Himalaya Drug Company 1997 (17) PTC 540 in which Justice R.C. Lahoti, as his Lordship Chief Justice of India then was, spoke for the Bench in these words - "Nobody can claim exclusive right to use any generic word, abbreviation, or acronym which has become publici jurisdiction. In the 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 ingredient of the drug. Such an organ ailment or FAO (OS) Nos.313/2008 & 314/2008 Page 25 of 64 ingredient being public jurisdiction or generic cannot be owned by anyone for use as a trademark". The jural message, therefore, is clear and unequivocal. If a party chooses to use a generic, descriptive, laudatory or common word, it must realize that it will not be accorded exclusivity in the use of such words.

At the most, it may bring a challenge in the nature of passing off and in such an event the Court would look at the rival labels/packagings/trade dresses in order to determine whether a customer possessing a modicum memory and ordinary intelligence may be so confused as to purchase one product believing it to be the other.‖

37. We are, therefore, of the view that to get out of the said

decision in Astrazeneca (supra), it is essential for the appellant to

establish that TEM/TEMO is not publici juris for TEMOZOLOMIDE.

38. There is one other submission urged by Mr. Datta, which we

would need to address even if we hold against the appellants that,

prima facie, ‗TEM'/'TEMO' are publici juris, and the decision in

Astrazeneca (supra) applies to and binds the appellants' cases. He

has submitted that even if ‗TEM'/‗TEMO' are considered publici juris for

TEMOZOLOMIDE, ‗TEM'/‗TEMO' have acquired a secondary meaning for

‗TEMODAL'/‗TEMODAR' on account of the registration and use of the

said marks in over 100 countries, and on account of the uninterrupted,

longstanding use by the appellants.

39. Mr. Datta submits that a word fragment of the word which

denotes the ingredient/pharmaceutical substance, may or may not be

generic or publici juris for that pharmaceutical substance. He submits

FAO (OS) Nos.313/2008 & 314/2008 Page 26 of 64 that even if the word fragment is publici juris, such word fragment may

acquire distinctiveness for that pharmaceutical substance in the

context of certain formulations containing that pharmaceutical

substance for certain indications i.e. for the particular goods, by

acquiring a secondary meaning from registrations and use, ceasing

thereby to be generic/publici juris for that pharmaceutical substance in

that limited context. He , therefore, argues that even if it is assumed

for the sake of argument that ‗TEMODAL' and ‗TEMODAR' were

originally generic/publici juris for TEMOZOLOMIDE, TEM/TEMO as

incorporated in ‗TEMODAL' and ‗TEMODAR' have since acquired

distinctiveness by acquiring secondary meaning through, registrations

and use of ‗TEMODAL' and ‗TEMODAR' in over 100 countries, and

thereby TEM/TEMO have ceased to be generic/ publici juris for

TEMOZOLOMIDE in the limited context of TEMOZOLOMIDE based brain

cancer drugs, and ‗TEM/‗TEMO' have acquired secondary meaning i.e.

as abbreviations for ‗TEMODAL' and ‗TEMODAR'. In support of this

submission, Mr. Datta cites example of ―Naukri.com‖, ‗Superflame' and

‗Ayur' and placed reliance on Glaxo Group Ltd. & Ors. v. Vipin

Gupta & Ors. 2006 (33) PTC 145 (Del). He also places reliance upon

Win-medicare Limited Vs. Somacare Laboratories 1997 (17) PTC

34 (Del), Orchid Chemicals and Pharmaceuticals Ltd. v. United

Bio-tech P. Ltd. 2008 (38) PTC 691 (IPAB), Wyeth Holdings

Corporation v. Burnet Pharmaceuticals P. Ltd. 2008 (36) PTC 478

(Bom), USV Ltd. v. Cadila Pharmaceuticals Ltd. 2008 (37) PTC 637

(IPAB), USV Ltd. v. IPCA Lab. Ltd. 2003 (26) PTC 21 (Mad), Corn

FAO (OS) Nos.313/2008 & 314/2008 Page 27 of 64 Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960

SC 142, Anglo French Drug Co. (Eastern) Ltd. (Bombay) v. Belco

Pharmaceuticals (Haryana) Sup. (2) PTC 452 (P&H) (DB), Water

Bush Well Ltd. v. Anil Arora & Others PTC Supp. (1) 849 (Del),

Beechem Group PLC v. SRK Pharmaceuticals 2004 (28) PTC 391

(IPAB), State of Maharashtra v. Jethmal Himatmal Jain &

Another 1993 (13) PTC 304 (Bom), Biochem Pharmaceutical

Industries v Astron Pharmaceuticals & Assistant Registrar Of

Trade Marks, Trade Marks Registry 2003 (26) PTC 200 (DEL),

Obsurg Biotech Ltd. v. East West Pharma 2008 (36) PTC 542

(IPAB), Lyka Labs Ltd. v. Tamilnadu Dadha Pharmaceuticals

Ltd. & Anr. 2006 (33) PTC 512 (IPAB), Baroda Pharma Pvt. Ltd. v.

Zeneca Limited UK 2007 (34) PTC 151 (IPAB), Torrent

Pharmaceuticals Limited v. The Wellcome Foundation Limited

2002 (24) PTC 580 (GUJ), Ranbaxy Laboratories Limited v. Vets

Pharma (P) Limited & Ors. 2005 (31) PTC 116 (IPAB), Orchid

Chemicals and Pharmaceuticals Ltd. Vs. United Biotech Pvt.

Ltd. and The Registrar of Trade Marks 2008 (38) PTC 691, Wyeth

Holdings Corporation and Anr. Vs. Burnet Pharmaceuticals

(Pvt.) Ltd. 2008 (36) PTC 478 (Bom), USV Limited Vs. Cadila

Pharmaceuticals Limited 2008 (37) PTC 637, Allergen Inc. vs. Sun

Pharmaceuticals Industries Ltd. 2006 (32) PTC 495 (CAL), Lyka

Labs Ltd. vs. Tamilnadu Dadha Pharmaceuticals Ltd. & Anr.,

2006 (33) PTC 512 (IPAB). Remidex Pharma Private Ltd. v. Savita

Pharmaceuticals P. Ltd. & Anr. 2006 (33) PTC 157, Pfizer Ireland

FAO (OS) Nos.313/2008 & 314/2008 Page 28 of 64 Pharmaceuticals v. Intas Pharmaceuticals & Anr. 2004 (28) PTC

456, Allergen Inc. v. Chetana Pharmaceuticals 2007 (34) PTC 267

(CAL), Corn Products Refining Co. v. Shangrila Food Products

Ltd. AIR 1960 SC 142, Ciba Geigy Limited & Hindustan Ciba -

Geigy Ltd. v. Croslands Research Laboratories Ltd. 1995 IPLR

375, Heinz Italia & Anr. v. Dabur India Ltd. 2007 VI A.D. (S.C.) 677,

Balsara Hygiene Products Ltd. v. Arm Chaudhury & Anr. 2005

(30) PTC 272 (CAL), Syncom Formulations (India) Ltd. v. SAS

Pharmaceuticals 2004 (28) PTC 632 (DEL).

40. Mr. Datta submits that even if the adoption of the

respondents marks is assumed to be honest, it can be injuncted if the

marks the appellants have acquired distinctiveness. He cites the

example of ―Dr. Reddy‖, which was protected in Dr. Reddy's Lab.

Ltd. v. Reddy Pharmaceuticals Ltd. 2004 (29) PTC 435. He submits

that a word-fragment that is generic/ publici juris for a word which is

descriptive for certain goods can and does sometimes acquire

distinctiveness as a source-cue for those goods. He refers to

Plastindia foundation v. Ajeet Singh 2002 (25) 71 (Del).

41. The appellants have also contended that TEMODAL and

TEMODAR are valid trademarks and their registrations do not in any

way, contravene Section 9 of the Act. It is contended that these

registrations are in accordance with the WHO recommendation that

the pharmaceutical trademarks ―should not be derived from‖ the INN

stems of the constituting chemical salts. It is argued that the marks in

FAO (OS) Nos.313/2008 & 314/2008 Page 29 of 64 question, TEMODAL and TEMODAR cannot be said to be derived from

the chemical TEMOZOLOMIDE because: -

a. They are not trivial modification of the word TEMOZOLOMIDE;

b. They are not obtained by the elision of a single syllable from the

word TEMOZOLOMIDE;

c. They are not substantially identical to the word TEMOZOLOMIDE;

d. They are not actually descriptive and not merely suggestive of

the word TEMOZOLOMIDE;

e. They are not the legal equivalent of the word TEMOZOLOMIDE;

f. They are not so utterly descriptive so as to be disqualified.

42. It is further submitted that the respondents have never filed

any rectification or opposition before the Registrar of Trademarks

questioning the registration of the appellants on the ground of they

being ―derived from‖ TEMOZOLOMIDE.

43. On the other hand, the respondents submit that they have

adopted the trademark TEMOKEM/TEMOGET bonafide and have merely

followed the practice of the pharmaceutical industry of deriving the

name of the medicine from its chemical molecule viz. TEMOZOLOMIDE,

which is obviously generic. It is, therefore, contended that the

abbreviation or word-fragment, that is, TEM/TEMO of that generic term

would also be generic.

44. The next line of argument of the respondent is that, as

provided for under Section 17 of the Act, registration of a trademark

FAO (OS) Nos.313/2008 & 314/2008 Page 30 of 64 confers on the proprietor an exclusive right to the use of the

trademark taken as a whole and not for parts or fragments of the

mark. So the appellants cannot claim exclusivity in respect of word-

fragments which are publici juris and descriptive of the generic

substance.

45. The respondents also contend that there is no likelihood of

confusion between the drugs in question because of the vast price

difference in the drugs of the appellants on the one hand, and of the

two respondents on the other hand. They also contend that the drugs

in question are Schedule-`H' drugs and that the drugs of the

respondents come with a medical warning that they are to be sold only

against demand from cancer hospitals, institutions and against the

prescription of a Cancer Specialist.

46. The respondents have sought to place reliance on various

decisions and upon various published articles and text books on the

relevant subject, which shall be referred to a little later.

47. We first proceed to deal with the submissions of Mr. Datta,

which relate to his argument that TEM/TEMO is not publici juris for

TEMOZOLOMIDE.

48. The crux of the appellants contention is that the word-

fragment TEM/TEMO of the word-name TEMOZOLOMIDE Is not generic/

publici juris, as it is not so recognized either by:

FAO (OS) Nos.313/2008 & 314/2008 Page 31 of 64

i) The WHO (in its notified list of INN-Stems or in its List of Radicals-Groups);

ii) A standard dictionary or medical dictionary;

iii) The market proliferation of brands of formulations of the pharmaceutical substance incorporating the word-fragment TEM/TEMO, which market proliferation is a) uncontested; b) longstanding (c) extensive and (d) significant.

49. The expression "publici juris" is defined in Black's Law

Dictionary (Eighth Edition ) as-

‖of public right; of importance to or available to the public <a city holds title to its streets as property publici juris> <words that are in general or common use and that are merely descriptive and publici juris and cannot be appropriated as a trademark>.‖

50. The concept of ‗public', for the purpose of determining

whether a word is publici juris for an article or thing would depend on

what that article or thing is. For example, if the article or thing is one

typically belonging to the field of aeronautics, the knowledge of the

general public i.e. the common man on the street, of the meaning of

the word would not be relevant. The meaning of the word would have

to be gathered from the knowledge of the ‗public' knowledgeable in

the field of aeronautics, to determine whether the word is publici juris

for the article or thing for which it is claimed to be publici juris.

Similarly, to determine whether ‗TEM'/‗TEMO' is publici juris for

TEMOZOLOMIDE, the query would have to be directed to those who

would normally be expected to have knowledge of what

FAO (OS) Nos.313/2008 & 314/2008 Page 32 of 64 TEMOZOLOMIDE and ‗TEM'/‗TEMO' mean. If people engaged in the

treatment of, and research in the field of brain cancer use the word

‗TEM'/‗TEMO' for TEMOZOLOMIDE, in our view, it would be fair to

conclude that ‗TEM'/‗TEMO' are publici juris for TEMOZOLOMIDE.

51. The submission of the appellants that ‗TEM'/‗TEMO' is not

generic/ publici juris for TEMOZOLOMIDE because it is not notified as a

INN STEM or is not listed as one of the radical groups by the WHO; that

it is not so mentioned in a standard dictionary or medical dictionary is

fallacious, as it proceeds on the assumption that for a medicine related

word/term to become publici juris, it must either to listed as an INN

Stem or a radical group by the WHO or by a standard dictionary or

medical dictionary. There is nothing to suggest that these sources are

exhaustive of medical terms which are publici juris. Whether or not a

medical term is publici juris is an issue of fact, which would have to be

established at the trial of the suits. At this stage only a prima facie

view has to be formed, which is not the final view. Therefore, if there

is some material available to show that TEM/TEMO has been used to

describe TEMOZOLOMIDE or any other chemical compound, TEM/TEMO

would, prima facie, be publici juris.

52. The respondents have placed on record a medical study

published in the journal of nuero-oncology by the Duke University,

wherein TEMO has been used for TEMOZOLOMIDE. There is another

article on the subject of ―Synthesis and antibacterial activity of dual-

action agents of a β-lactam antibiotic with cytotoxic agent

FAO (OS) Nos.313/2008 & 314/2008 Page 33 of 64 mitozolomide or TEMOZOLOMIDE, wherein TEMOZOLOMIDE has been

denoted by TEMO.

53. It is also interesting to note from the above mentioned latter

article that there is another chemical compound by the name of

MITOZOLOMIDE. The extension ‗ZOLOMIDE' itself appears to be publici

juris for a group of chemical compounds having some common

features/properties. Therefore, it appears to be quite natural to refer

to TEMOZOLOMIDE as ‗TEMO' just as MITOZOLOMIDE is described as

‗MITO'.

54. We may also take note of the fact that on the website

www.allacronyms.com on keying the abbreviation ‗TEM', the same

leads to, inter alia, TEMOZOLOMIDE. On the website

www.medilexicom.com a search for medical abbreviation ‗TEM', inter

alia, results in ‗TEMOZEPAM' and TEMOZOLOMIDE. We are not

suggesting that these instances establish that ‗TEM'/'TEMO' are publici

juris for TEMOZOLOMIDE. But these are instances, which establish that

the materials and documents produced by the appellants, to show that

‗TEM'/‗TEMO' refer to TEMODAL and/or TEMODAR are not exhaustive to

conclude, at this interlocutory stage, that ‗TEM'/'TEMO' is not publici

juris for TEMOZOLOMIDE, and that they necessarily refer exclusively to

TEMODAL and TEMODAR.

55. McCarthy in Trademarks and Unfair Competition, inter

alia, states:

FAO (OS) Nos.313/2008 & 314/2008 Page 34 of 64

―Clearly, one seller cannot appropriate a previously used generic name of a thing and claim exclusive rights in it as a ―trademark‖ for that thing. Similarly, if one seller develops trademark rights in a term which a majority of the relevant public then appropriates as the name of a product, the mark is a victim of ―genericide‖ and trademark rights may cease.‖

―An abbreviation of a generic name which still conveys to the buyer the original generic connotation of the abbreviated name is still generic.‖

56. The Madras High Court in Indo-Pharma Pharmaceuticals

Works Ltd., Mumbai v. Citadel Fine Pharmaceuticals Ltd.,

Madras 1998 (18) PTC (DB) (Mad) while dealing with two marks

‗Enerjex' and ‗Enerjase' held that the abbreviation of a generic word

will also be generic. Reliance was placed on the aforesaid extract from

McCarthy in Trademarks and Unfair Competition. Since the

components ‗Jase' and ‗Jex' were completely dissimilar, injunction was

refused by the Court to the plaintiff. The Madras High Court held as

follows:

―The two rival marks ‗ENERJEX' and ‗ENERJASE' contain the common feature ‗ENERJ' which is not only descriptive but also publici juris. Therefore a customer will tend to ignore the common feature and will pay more attention to uncommon features i.e `JEX' and `JASE'. These two cannot be said to have such phonetic similarity so as to make it objectionable.‖

―So the word `ENERG/J' used as a prefix in both the trade names is the abbreviation of the generic term of the English word `energy'. As such, it is descriptive in nature and common in usage. Nobody can claim an exclusive right to

FAO (OS) Nos.313/2008 & 314/2008 Page 35 of 64 the use of the word `ENERG/J' as the constituent of any trademark.‖

57. In The Cellular Clothing Company (supra), the Court held

the following:-

―If a man invents a new article and protects it by a patent then during the term of the patent, he has of course a legal monopoly, but when the Patent expires all the world may make the article, and for that purpose use the name which the Patentee has attached to it during the time when he had the legal monopoly of the manufacture. But my Lords, the same thing in principle must apply where a man has not taken out a Patent, as in the present case, but has a virtual monopoly because other manufacturers, although they are entitled to do so, have not in fact commenced to make the article.‖(emphasis supplied).

58. The argument of the appellants that to establish that the

term TEM/TEMO is publici juris, there should be market proliferation of

various brands of ‗TEMOZOLOMIDE' incorporating the word fragment

TEM/TEMO, which market proliferation is un-contested, longstanding,

extensive and significant, cannot be accepted in our view, particularly

in the light of the fact that the products of the appellants' enjoyed a

patent and, consequently, the appellants enjoyed a statutory

monopoly. It is only on account of the fact that the product patent in

this country was not protected till the amendment in the law in 2005,

that the respondents' have been able to manufacture the said drug.

FAO (OS) Nos.313/2008 & 314/2008 Page 36 of 64 Obviously, during the tenure of the said statutory monopoly, none

could validly manufacture and sell the said drug by whatever name.

59. Therefore, merely because the molecule TEMOZOLOMIDE

may have been patented and commercially pioneered by the

appellants, they do not become entitled, on the statutorily protected

monopoly disappearing, to prevent others from calling, what the

molecule is, by its generic name, and such other names which are

―publicly‖ known to describe and denote it.

60. In McCain International Limited (supra), the Court held:

―Here the plaintiffs have brought the article oven chips before the world, they have given it a name descriptive of that article, they have had a monopoly in it before other persons have entered into competition with them and they cannot now claim a monopoly of that name. All they can claim is that other person who make the same article shall distinguish their products by the appropriate means, which the defendants have adopted in this case, of making it quite clear that the products they produce come from County Fair and Birds Eye respectively.‖

61. TEMO has been used for TEMOZOLOMIDE by several parties

apart from the respondents, namely, Cipla Limited, who use the brand

name ‗TEMOSIDE', Netco Pharma Limited, who use the brand name

‗TEMONET' and Dabur Pharma Limited, who use the brand name

‗TEMOZEM'. There are a number of other similar marks with the prefix

TEM/TEMO for drugs, which are present in the market. The appellants

FAO (OS) Nos.313/2008 & 314/2008 Page 37 of 64 have themselves pointed out that TEM/TEMO is contained as a part of

the trade mark of a variety of different pharmacological groups, such

as (i) TEMSIROLIMUS (an anti kidney-cancer agent); (ii) TEMOPORFIN (a

photosensitizing anti cancer agent like TEMOZOLOMIDE); (iii)

TEMOCILLIN (antibiotic); (iv) TEMOCAPRIL (anti hypertensive). We may

also notice that from the documents filed by the appellants it appears

that there are various other drugs having the prefix TEM/TEMO such as

TEMARIL- trademark for preparations of trimeprazine tartrate;

TEMAZEPAM- a benzodiazepine used as a sedative and hypnotic in the

treatment of insomnia, administered orally; TEMEFOS- USAN for

temephos; TEMEPHOS- an organophosphorous insecticide used a a

larvicide for control of mosquitoes and blackflies and as a veterinary

ectoparasiticide; TEMODOX- a veterinary growth stimulant; TEMOVATE-

trademark for preparations of clobetasol propionate.

62. It has been repeatedly recognized that in the trade of drugs it

is a common practice to name a drug on the basis of the name of its

active chemical compound or salt, or the disease it seeks to remedy, or

the particular organ it is intended to treat. The name of such an

ingredient or compound, ailment or organ being in the public domain

and of generic nature, which has been used descriptively, cannot be

claimed by anyone for use exclusively as only his/her trademark.

63. From the materials produced by the respondent, it is evident

that TEM/TEMO have been employed in place of TEMOZOLOMIDE or as

abbreviations for certain other medicines. No doubt TEM/TEMO have

FAO (OS) Nos.313/2008 & 314/2008 Page 38 of 64 also been used in place of ‗TEMODAL' and ‗TEMODAR'. However, there

is nothing to suggest that TEM/TEMO mean, and only mean,

TEMODAL/TEMODAR and nothing else. Even when TEM/TEMO is used

in relation to ‗TEMODAL' and ‗TEMODAR', the reference is actually to

the chemical compound TEMOZOLOMIDE, which is the active

ingredient in ‗TEMODAL' and ‗TEMODAR'.

64. Consequently, in our view, prima facie the word fragment

TEM/TEMO is publici juris and also generic for and descriptive of the

chemical compound, TEMOZOLOMIDE, and, therefore, the appellants

cannot claim the exclusive right to use thereof. The decision in

Astrazeneca (supra) has rightly been held to apply on all fours to the

cases in hand.

65. As the appellants have chosen to brand their product with a

generic and descriptive prefix ‗TEMO', any other person entering the

market would be entitled to use the said term to identify the product in

question. If the appellants were desirous of avoiding such a situation

they should have branded their drug with a unique name instead of a

descriptive name. [see Rhizome Distilleries P. Ltd. (supra)]

66. We now proceed to consider the second plea of Mr. Datta,

that assuming that ‗TEM'/‗TEMO' are publici juris for TEMOZOLOMIDE,

‗TEM'/‗TEMO' have acquired a secondary meaning for TEMODAL and

TEMODAR for the reasons stated by him and that, therefore, the

appellants alone are entitled to the exclusive use of the same. Since

FAO (OS) Nos.313/2008 & 314/2008 Page 39 of 64 various cases have been cited in this regard, we proceed to deal with

each one of them.

67. In Glaxo Group (supra), the court was dealing with the

plaintiff's marks ‗BETNOVATE' and ‗CROCIN' on the one hand and

‗BETAVAT' and ‗CORINAL' on the other hand. The court held on a

comparison of the various features in the get up of the competing

products, that the products of the defendants could be passed off as

that of the plaintiff. The court held that the mark ‗CORINAL' does not

appear to be deceptively or confusingly similar to the trademark

‗CROCIN', but confusion is sought to be created by adopting similar

strip/packaging as that of the plaintiff. The defendant was found to be

using the logo ‗SGS' in the same manner as the plaintiff's logo ‗GSK'

within a heart shaped device. The court found that even though the

competing marks were not identical, the marks used by the defendants

so nearly resembled the plaintiff's trademarks as was likely to deceive

or cause confusion in relation to the similar goods, on account of the

adoption of the similar getup by the defendant in respect of its

products. The above was the basis for the grant of injunction by the

Court in favour of the plaintiff.

68. This decision does not advance the proposition canvassed by

the appellants that even if TEM/TEMO were originally generic/publici

juris for TEMOZOLOMIDE, TEM/TEMO as incorporated in ‗TEMODAL' and

‗TEMODAR' have since acquired distinctiveness and that TEM/TEMO

have acquired a secondary meaning through registration and use of

FAO (OS) Nos.313/2008 & 314/2008 Page 40 of 64 ‗TEMODAL' and ‗TEOMDAR' in over hundred countries and thereby

ceased to be generic/publici juris for TEMOZOLOMIDE in the context of

TEMOZOLOMIDE based brain cancer drugs. The position in the

following cases cited by the appellants is the same, which are

discussed below in paragraphs 69 to 88. The grant of injunction in all

these cases, it would be seen, was, inter alia, either on account of

similar get up or on account of minimal difference in the trade name

leading to structural and/or phonetic and/or visual similarity in the

competing marks, and not on account of the Court allowing

appropriation of a term which is publici juris by the plaintiff on the

ground that the publici juris term has acquired a secondary meaning to

denote the product of the plaintiff alone.

69. In Win-medicare Limited (supra) the plaintiff had brought

the action for passing off. The competing trademarks were

‗DICLOMOL' of the plaintiff and ‗DICMOL' of the defendant. It was not

an action founded upon Section 29 of the Act for infringement of

registered trademark. Neither of the two trademarks in question in

that case were registered. The court concluded that the two marks

were structurally and phonetically similar which gave the impression

that the defendant had copied the mark of the plaintiff. It was on this

basis that the court had granted the injunction. The difference in

‗DICLOMOL' and ‗DICMOL' was only that the two letters ‗LO' had been

removed from the plaintiff's mark by the defendant while coining its

FAO (OS) Nos.313/2008 & 314/2008 Page 41 of 64 own mark ‗DICMOL'. On account of the structural and phonetic

similarity the court had granted the injunction.

70. Similarly, in Wyeth Holdings (supra) while considering

whether the mark ―FOLV' of the defendant was deceptively similar to

the mark ‗FOLVITE' of the plaintiff, the court held that the two

competing marks have to be considered as a whole. The structure of

the mark visually and phonetically must be borne in mind. The image

that the court must have is that of the quintessential common man. It

was held: "when the Judge looks at phonetics, the sound which

accompanies the pronunciation of the mark is the sound of the mark to

an ordinary purchaser bereft of the niceties of language." Neither the

term ‗FOL' derived from ‗FOLIC ACID'; nor the term ‗VITE' derived from

‗VITAMIN' were treated as being the proprietary of the plaintiff and that

was not the basis of the said decision.

71. In USV Ltd. v. Cadila Pharmaceuticals Ltd (supra) the

Intellectual Property Board was considering the two competing marks

‗PIOZULIN' and ‗PIOZ'. Both were held to be structurally one and the

same and they even looked alike. It was for this reason that the

Appellate Board declared the registration obtained by the respondent

to be invalid.

72. In USV Ltd. v. IPCA Lab. Ltd. (supra) the Madras High

Court was considering the two competing marks namely, ‗PIOZ' of the

plaintiff and ‗PIOZED' of the defendant. Since they were found to be

FAO (OS) Nos.313/2008 & 314/2008 Page 42 of 64 phonetically similar and were drugs intended to be used for the same

disease, the court injuncted the defendant from adopting the mark

‗PIOZED'. The active ingredient in the two drugs in question was

‗PIOGLITAZONE HYDROCLORIDE'. It was held that the prescription

given by the doctors for purchase of medicines ‗PIOZ' or ‗PIOZED' will

be in scribbling and the spelling normally written by doctors may not

be read by common man and even by the English knowing literates.

Even the chemists in the drug stores may not be able to make out a

distinction between the ‗PIOZ' and ‗PIOZED' scribbled by the doctors.

It was on this account that the court granted injunction in favour of the

plaintiff. The court even in this case did not hold that the plaintiff was

entitled to the exclusive use of the abbreviated version of the generic

active compound in the medicine namely ―PIOGLITAZONE

HYDROCLORIDE‖.

73. In Anglo French Co. (supra) the Punjab and Haryana High

Court was concerned with the plaintiffs registered mark ‗BEPLEX' and

the defendant's mark ‗BELPLEX' being used for vitamin ‗B COMPLEX'

tablets. Even in this case the court concluded that there was

deceptive similarity both phonetic and visual in the goods

manufactured by the parties which is likely to cause confusion and

deception in the minds of the purchasers. On this account the court

granted injunction in favour of the appellant/plaintiff. This decision

also, therefore, is of no avail to the appellants.

FAO (OS) Nos.313/2008 & 314/2008 Page 43 of 64

74. In Water Bush Well (supra) a learned Single Judge of this

court was dealing with a claim for infringement of trademark ‗AMCLOX'

of the plaintiff, by the defendant who had adopted ‗AMPCLOX'. The

court granted injunction on the ground that ‗AMCLOX' and ‗AMPCLOX-

500' were both visually and phonetically similar to deceive and to

cause confusion amongst the buyers of the products. The court also

took into account that the mere insertion of the letter ‗P' in the

defendant's mark would not make a difference while hearing the name

of the mark. The court also compared the colour combination of the

capsules. No doubt, the argument that the drug was a Schedule-H

drug was advanced by the defendant, and the same was rejected by

the court on the ground that for a minor complaint or indisposition one

does not always go to the medical practitioner and the same medical

preparation (even though they are Schedule H drugs) would be

administered by a patient/person by directly approaching the chemist,

in our view the said distinction cannot be held good in the present case

as we are dealing with a drug meant for treating brain cancer which,

by no means, can be described as a minor complaint or indisposition.

As noticed by the learned Single Judge the medicines/drugs in question

contain a warning that the same can be sold only on the prescription of

not just any ordinary medical practitioner, but on the prescription of

only a Cancer Hospital or Cancer Specialist. We may hasten to add

that we are not commenting on the view of the learned Single Judge,

as aforesaid, one way or another, as it is not necessary for us to do so

FAO (OS) Nos.313/2008 & 314/2008 Page 44 of 64 in view of the materially different factual context. This decision also,

therefore does not support the appellants cases.

75. In Biochem Pharmaceuticals Limited (supra) the learned

Single Judge of this Court was concerned with the trademarks

‗BIOCILIN' and ‗BICILLIN' in respect of the same drug. Once again the

court concluded that there was phonetic deceptive similarity in the two

marks which is likely to lead to confusion and deception. Though the

relief of injunction was granted, it was not on the basis that the

appellant was entitled to appropriate the generic name of the two

drugs in question namely ‗AMPICILLIN' and ‗CLOXACILLIN'. In this case

both the parties were manufacturing the drug by combining

‗AMPICILLIN' and ‗CLOXACILLIN'. The appellant had used the mark

‗BIOCILLIN' as it was a combination of two drugs. Consequently, ‗Bio',

of which ‗Bi' means two, was used as a prefix to coin the word

‗BIOCILLIN'. The respondent had done the same and had merely

dropped the letter ‗O' and introduced an extra ‗L' in the trademark

adopted by it. This case, therefore, has no relevance.

76. Beecham Group PLC (supra) is a decision of Intellectual

Property Board, Chennai in respect of the application made by the

applicant for registration of the mark ‗LYMOXYL'. The trademark

‗AMOXIL' belonged to the objector. Once again the court held that the

mark adopted by the applicant was phonetically, structurally and

deceptively similar to that of the objector. The only difference in the

applicants trade name was the employment of the letters ‗LY' and ‗M'.

FAO (OS) Nos.313/2008 & 314/2008 Page 45 of 64 Like the earlier decisions this decision does not advance the

proposition propounded by the appellants, and is, therefore, of no

relevance.

77. In Obsurge Biotech Limited (supra) the common

trademark was ‗SERADIC'. Since the two marks were identical in

respect of medicinal preparations, the rectification application was

allowed. This case has absolutely no relevance for our purpose.

78. Lyka Labs (supra) also is a decision of IPAB, Chennai dealing

with the marks ‗TAMIACIN' and ‗TAMNIFO' on the one hand and the

mark ‗TAMIN' on the other hand. The Appellate Board was examining

whether ‗TAMIN' is deceptively similar to the registered marks

‗TAMIACIN' and ‗TAMNIFO'. The Board held that the mark ‗TAMIN' was

phonetically, visually or structurally similar to the respondents mark

‗TAMIACIN'. Once again this decision did not proceed on the basis that

a party could appropriate to itself the generic name or the abbreviation

of the chemical active compound in a drug.

79. Baroda Pharma Private Limited (supra) is also a decision

of the IPAB, Chennai dealing with the mark ‗TENOREX' and

‗TENORMIN'. ‗TENOREX' was not permitted to be registered on the

opposition of the proprietor of the mark ‗TENORMIN' on the ground of

deceptive and phonetic similarity which was likely to cause confusion.

We find that though the argument of publici juris in respect of the

FAO (OS) Nos.313/2008 & 314/2008 Page 46 of 64 prefix ‗TENOR' did arise, the same was not gone into by the Appellate

Board. Consequently, this decision does not help the appellants.

80. Torrent Pharmaceuticals Limited (supra) is a decision of

the Gujarat High Court dealing with the mark ‗TROVIREX', which was

objected to by the proprietor of the mark ‗ZOVIREX'. The registration

of ‗TROVIREX' was denied on the ground that ‗TROVIREX' had the

highest degree of resemblance, visually and phonetically and the same

was likely to deceive or cause confusion in the minds of the purchasers

of the drug. The Gujarat High Court does not appear to have gone into

the issue of publici juris in respect of the concerned active chemical

compound, disease, organ on the basis of which the drug ‗ZOVIREX'

might have been named. This judgment is, therefore, of no assistance

to the appellants.

81. Ranbaxy Laboratories (supra) is also a case decided by the

IPAB, Chennai. The trademark under examination was ‗LEVASOL', in

respect whereof opposition was filed by the proprietor of the

trademark ‗LEMASOL'. ‗LEVASOL' was a veterinary medicine, whereas

‗LEMASOL' was a pharmaceutical preparation for human use. The IPAB

held that there was phonetic and visual identity, inasmuch as, for the

letter ‗M' in the objector's drug, the letter ‗V' had been substituted by

the applicant. The drug of both the parties fell within the same class 5

and the distribution channel of the goods being the same, there was

likelihood of confusion. This case also does not throw any light on the

FAO (OS) Nos.313/2008 & 314/2008 Page 47 of 64 generic chemically active compound on which either of the two drugs

were based. It has absolutely no relevance to the cases in hand.

82. Allergen Inc. v. Sun Pharmaceuticals Industries Ltd.

(supra) is the decision of the Calcutta High Court. The suit had been

filed alleging passing off of the ophthalmic solution under the

trademark name ‗OCUFLOX'. The defendant was also marketing its

product, which could be used both for treatment of eyes as well as

ears with the same tradename ‗OCUFLOX'. It was for this reason, the

Court had granted the injunction. This case, therefore, has absolutely

no bearing on the present appeals.

83. Allergen Inc. v. Chetana Pharmaceuticals (supra) is a

case decided by the Calcutta High Court in respect of the trademark

‗OXYLINE'. The plaintiff was the proprietor of the said mark in relation

to a drug for ophthalmic use. The defendant used the identical mark in

relation to its drug i.e. nasal drops. Since the marks were identical,

injunction followed. This case too has no bearing on the issue in hand.

84. Remidex Pharma Private Ltd. (supra) is a decision of a

learned Single Judge of this Court. The competing marks were ‗ZEVIT'

and ‗EVIT'. The defendant had adopted ‗EVIT' in respect of its vitamin

tablets. The defence of the defendant was that the clipping ‗VIT' had

been taken from word vitamin and was, therefore, generic. Since the

product of the defendant was vitamin E tablets, the defendant claimed

bonafide adoption of the mark ‗EVIT'. The learned Single Judge while

FAO (OS) Nos.313/2008 & 314/2008 Page 48 of 64 confirming the injunction in favour of the plaintiff observed that on

comparison of ‗ZEVIT' with ‗EVIT', the prefixes ‗ZE' and ‗E' of ‗ZEVIT'

and ‗EVIT', respectively, are phonetically similar. It was, on this

account that the Court held that the mark ‗EVIT' is deceptively similar

to the registered mark ‗ZEVIT' of the plaintiff. It is not that the Court

proceeded on the basis that the plaintiff had the right to appropriate to

itself the generic and phonetic term ‗VIT' derived from vitamin.

Consequently, this case too does not advance the case of the

appellants.

85. In Pfizer Ireland Pharmaceuticals (supra) the Court was

dealing with the passing off action. The court found that there was

phonetic and visual similarity between ‗LIPITOR' and ‗LIPICOR',

inasmuch as, only one letter i.e. ‗T' had been replaced by ‗C'. It was,

on this account, that the Court had granted the requisite injunction in

favour of the plaintiff.

86. In Heinz Italia & Anr. (supra) the Supreme Court was

dealing with the marks ‗GLUCON-D' of the appellant/plaintiff and

‗GLUCOSE-D' of the respondent/defendant. The injunction granted in

this case was, again, not founded upon the recognition of any

exclusive right of the plaintiff to appropriate the word ‗GLUCOSE' which

is generic. The injunction was granted on the basis that ‗GLUCON-D'

and ‗GLUCOSE-D' appear to have phonetic similarity. The color

scheme in the packaging of the two competing products was also

found to be more or less identical. The court found that the packaging

FAO (OS) Nos.313/2008 & 314/2008 Page 49 of 64 and getup of the two competing products was almost identical. It was

on this basis that the injunction was granted.

87. The decision in Balsara Hygiene Products Ltd. (supra) is

also of no use to the appellants. The court while recognizing the legal

principle that a party cannot have any monopoly right to use a generic

word, concluded in the facts of that case that the plaintiff had not used

a generic word and on that basis the defence of the defendant was

rejected in respect of the defendant's marks ‗ODOJA' in comparison

with the plaintiff's registered trademarks ‗ODONIL', ‗ODOPIC' and

‗ODOMOS'. The Court held that ‗ODO' was an adoption and/or coinage

of the plaintiff and was not a dictionary word. Consequently, the court,

in fact, rejected the argument that ‗ODO' was publici juris for ‗ODOUR'.

This case too has no application in the facts of the present cases.

88. Syncom Formulations (India) Ltd. (supra) was a case of

passing off in respect of the plaintiff's trademark ‗REGULIN FORTE' by

the defendant who adopted the mark ‗REGU-30'. This Court dismissed

the first appeal preferred by the defendant against the grant of

injunction by the Trial Court in favor of the plaintiff. In the facts of that

case the Court found that the mark of the defendant was confusing

and deceptively similar to that of the plaintiff and the product of the

defendant could be passed off as that of the plaintiff. This case also

has absolutely no bearing on the present appeals.

FAO (OS) Nos.313/2008 & 314/2008 Page 50 of 64

89. The decision in Ciba Geigy Ltd.(supra), in our view, is also

of no assistance to the appellants, as this case proceeded on the

foundation that the medicine vendor may not know the difference, and

he may unknowingly give the product of the defendant (‗VOLTA-K' in

this case) in place of the product of the plaintiff i.e. ‗VOLTAREN'. In the

facts of the present cases, considering the nature of the drug, the

warning endorsed on the drugs of the respondents, and the price

difference in the drugs of the appellants on the one hand and those of

the respondents on the other hand, in our view, there is no scope for

any such confusion, and this decision has no bearing on the present

appeals.

90. Corn Products Refining Co. (supra) was a case where the

Supreme Court was concerned with the claim for registration made in

respect of the mark ‗GLUVITA' in respect of the biscuits made by the

respondent. The appellant before the Supreme Court had got the mark

‗GLUCOVITA' registered in respect of ‗DEXTROSE', a substance used as

food or as an ingredient in food; glucose and food. This is not a

decision dealing with medicines/drugs. The relief granted to the

appellant in the said case was primarily founded upon the similarity in

the marks in question namely ‗GLUVITA' and ‗GLUCOVITA'. The letters

`CO' alone had been dropped by the respondent from the mark of the

appellant to coin the mark `GLUVITA'. It does not advance the

submission of the appellants, as the ratio of this decision is not to the

effect that the word fragment of a generic/publici juris word can be

FAO (OS) Nos.313/2008 & 314/2008 Page 51 of 64 appropriated by the person who may have used the word fragment as

a part of a descriptive trademark.

91. The State of Maharashtra v. Jethmal Himatmal Jain

(supra) is not a case dealing with infringement of trademark or even

with passing off. The same is, therefore, of no relevance whatsoever.

92. The appellants have relied upon the decision Plastindia

Foundation (supra) in support of their submission that a word

fragment of a word that is generic/publici juris which is descriptive of

certain goods, can and does sometimes acquire distinctiveness as a

source que for those goods. In Plastindia Foundation (supra) the

plaintiff had adopted the name ‗Plastindia Foundation' for its trust,

which was an apex body of associations of all the leading organizations

and institutes concerned, directly or indirectly, with the manufacture,

sale or promotion of plastics in India. The defendant adopted the same

mark ‗PlastIndia' for their magazine. The court granted an injunction in

favour of the plaintiff and against the defendant from using the said

mark on the basis that the adoption of ‗PlastIndia' by the defendant

may lead to the confusion that the magazine ‗PlastIndia' has its source

at, or that it has connection with Plastindia Foundation i.e. the plaintiff.

93. We do not see the relevance of this decision in the present

context. Plastindia was a coined word derived from generic words

Plastic and India. The Court did not hold that the Plaintiff alone was

entitled to appropriate ‗Plast' or ‗India', which are publici juris/generic.

FAO (OS) Nos.313/2008 & 314/2008 Page 52 of 64 Pertinently, the Court permitted the defendant to use, inter alia,

―PLAST WORLD‖ and ―WORLD PLAST‖. It follows that others too would

be entitled to use these generic and descriptive words. However, that

does not mean that another person can use the identical or

deceptively similar name/mark which is likely to cause confusion and

deception. Because the Court found that the defendants mark was

more or less identical with that of the plaintiff, and could lead to

confusion and deception with regard to the source of the defendants'

magazine, the Court granted the injunction in favour of the plaintiff.

Pertinently, this is also not a case relating to drugs.

94. TEMOZOLOMIDE is a generic word. TEM/TEMO, as we have

already seen, is publici juris for TEMOZOLOMIDE. TEM/TEMO is not

generic for the trademarks ‗TEMODAL' and ‗TEMODAR' of the

appellant, but for TEMOZOLOMIDE. The use of TEM/TEMO in

TEMODAL/TEMODAR is descriptive of ‗TEMOZOLOMIDE'. The use of the

marks TEMOKEM and TEMOGET by the respondents, therefore, possibly

cannot lead to the inference that TEMOKEM and TEMOGET have been

sourced from the manufacturers of TEMODAL and TEMODAR i.e. from

the appellants. Such a conclusion is also contra-indicated by the vast

difference in price of the products of the appellants and the

respondents.

95. The SUPERFLAME case (Globe Super Parts v. Blue Super

Flame Industries AIR 1986 DELHI 245) was a passing off action by

the plaintiff who was the proprietor of the unregistered mark

FAO (OS) Nos.313/2008 & 314/2008 Page 53 of 64 ―SUPERFLAME‖. The defendants were using the mark ―SUPERFLAME‖

for the same articles, namely, gas appliances. The Court held that the

mark ―SUPERFLAME‖ was a coined word. It was held that

―SUPERFLAME‖ was not descriptive of gas stoves. For this reason, the

Court granted permanent injunction to restrain the defendants from

using the word ―SUPERFLAME‖, as the plaintiff was the prior user of the

said coined word. Such is not the claim in the present appeals.

96. Dr. Reddy's Laboratories Ltd. v. Reddy

Pharmaceuticals Ltd. 2004 (29) PTC 435 (Del) was a case of passing

off. The Court came to the conclusion that the adoption of the mark

―REDDY‖ by the defendant was fraudulent to encash upon the trade

reputation and goodwill of the plaintiff built over two decades. The

Court found that there was phonetic similarity between ―DR. REDDY‖

and ―REDDY‖ capable of creating confusion. The Court also found

deceptive similarity in the names and packaging of the drugs of the

defendant with those of the plaintiff. It is for this reason that the Court

had granted injunction. The Court did not declare that ―REDDY‖ could

not be used by another person by that name bonafide, even if such

user is not deceptively similar to that of the plaintiffs. This case,

therefore, has no relevance in the present context.

97. Ayurherbs Pharmaceuticals Private Limited v. Three-N-

Products Private Limited 2007 (35) PTC 261 (Del) was a case where

the plaintiff, the proprietor of the mark ―AYUR‖ initiated an action

against the defendant, who had adopted a business/tradename

FAO (OS) Nos.313/2008 & 314/2008 Page 54 of 64 ―Ayurherbs Pharmaceuticals Private Limited". The defendant was also

in the same trade, namely, manufacture and sale of ayurvedic

products, as the plaintiff, who was selling its ayurvedic products under

the trademark ―AYUR‖. The Court dismissed the defendant's first

appeal against the grant of injunction by the trial Court, on the premise

that the use of the name ―AYUR‖ by the appellant is likely to cause

confusion in the mind of the ordinary purchaser and, consequently, it

was held that the adoption of the name ―AYUR‖ by the appellant in its

trade name amounts to passing off. In this case the Court did not hold

that ―AYUR‖ was publici juris for ayurveda or that the plaintiff was

exclusively entitled to appropriate to itself the use of the generic term

ayurveda or its abbreviation ―AYUR‖.

98. The second ‗Ayur' case reported as Three-N-Products

Private Ltd. v. Karnataka Soaps & Detergents Ltd. & Anr. 2007

(34) PTC 515 (Cal) was also a passing off action. As the plaintiff was

the prior user of ―AYUR‖, the defendant was injuncted from using the

said mark for soaps. This case too is of no relevance for our purpose.

99. In Indo Edge (India) Pvt. Ltd. & Anr. v. Shailesh Gupta

& Anr. 2002 (24) PTC 355 (Del) the plaintiff had developed the domain

name ―NAUKRI.COM‖ used to provide job placement services and

employment with the peculiarity that the plaintiff had adopted a Hindi

word with English script. It was held on the basis of press reports and

write ups that the domain name of the plaintiff is unique and distinct

which has a distinctive character and which has assumed a reputation

FAO (OS) Nos.313/2008 & 314/2008 Page 55 of 64 in the market. The defendant, who had a similar business with the

domain name ―jobsourceindia.com‖, had also adopted ―naukari.com‖.

The Court held that ―If a product of a particular character or

composition is marketed in a particular area or place under a

descriptive name and gained a reputation thereunder, that name

which distinguished if from competing products of different

composition, the goodwill in the name of those entitled to make use of

it there was protected against deceptive use there of the name by

competitors‖. The Court referred to McCarthy on Trademarks and

Unfair Competition Vol.2, 3rd Edition, wherein in para 12.5(2) it was

stated that in order to obtain some form of relief on a ―passing off‖

claim, the user of the generic terms must prove some false or

confusing usage by the newcomer above and beyond mere us of

generic name. The only difference between the plaintiff's and the

defendant's domain names was the insertion of the letter ‗A' between

the letters ‗K' and ‗R' in the word ―Naukri‖. It was further held that

even if ―Naukri‖ is assumed to be a generic word, the adoption of a

similar mark by the defendant, when the plaintiff's mark had attained

distinctiveness and was associated with the business of the plaintiff for

a considerable time, was dishonest and in bad faith. It is for these

reasons that the Court had granted the injunction in favour of the

plaintiff. In our view, this decision does not advance the case of the

appellants, as, in our opinion, the marks of the appellants on the one

hand and those of the respondents on the other hand are not phonetic

and visually similar.

FAO (OS) Nos.313/2008 & 314/2008 Page 56 of 64

100. In Cadila Health Care Ltd. V. Cadila Pharmaceuticals

Ltd. (supra) the two competing trademarks were ‗FALCIGO' of the

plaintiff and ‗FALCITAB' of the defendant. Both the drugs were meant

to cure cerebral malaria commonly known as ―falcipharum‖. The drugs

were schedule ‗L' drugs which means, that the drugs were not at all

available for sale in retail and could be supplied only to hospitals and

clinics. Consequently, there was even stricter regime for the sale of

such drugs when compared to Schedule ‗H' drugs. There was also

substantial price difference in the two drugs. The Trial Court as well as

the High Court (in First Appeal) found that the packaging and getup of

the two products was not deceptively similar or confusing. The extra

Assistant Judge, Vadodra declined the interim injunction sought by the

plaintiff. This order was upheld in First Appeal. The Supreme Court

also declined to interfere with the order. The reasons given by the

Supreme Court for its decision, and the principles to be kept in mind

while dealing with an action for infringement or passing off, specifically

in the cases relating to medical products, were subsequently set out by

the Supreme Court in the aforesaid judgment. The Court did not grant

the interim injunction for the reason that it felt that there was

possibility of evidence being required on merits of the case. The Court

felt that expression of opinion on merits of the case by the Supreme

Court at the interlocutory stage would not be advisable.

101. In the above decision, the action was brought by the plaintiff

alleging passing off. It appears that the same was not an action for

FAO (OS) Nos.313/2008 & 314/2008 Page 57 of 64 infringement of trademark under Section 29 of the Act. The Supreme

Court in this decision overruled its earlier decision in S. M. Dyechem

Ltd. v. Cadbury (India) Ltd. (2000) 5 SCC 573 in so far as it has

been held in S.M. Dyechem (supra) ―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 whole,

but at the same time not to disregard the parts which are common.‖

The Supreme Court held that "............the decisions in the last four

decades have clearly laid down that what has to be seen in the case of

a passing off action is the similarity between the competing marks and

to determine whether there is likelihood of deception or causing

confusion............Having come to the conclusion, in our opinion

incorrectly, that the difference in essential features is relevant, this

Court in Dyechem case (supra) sought to examine the difference in the

two marks "PIKNIK" and "PICNIC"......................‖.

102. The Supreme Court then proceeded to refer to American

Court's decisions relating to medicinal products. In paragraphs 35 and

36 the Supreme Court laid down the factors to be considered by the

Court in an action for passing off on the basis of unregistered

trademark. The said paragraphs reads as follows:

―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 to be considered:

FAO (OS) Nos.313/2008 & 314/2008 Page 58 of 64 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 resemble ness 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 and

g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

36. Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case.‖

103. As we have already noticed, the present is an action for

infringement under Section 29 of the Act and not an action for passing

off. In any event, on consideration of the various factors set out by the

Supreme Court, as aforesaid, to us it is clear that keeping in view the

nature of the marks-which are word marks; the lack of resemblance

between the marks-phonetic or otherwise; the fact that the word

fragment ‗TEMO' is publici juris for the generic term TEMOZOLOMIDE,

which is the active ingredient in the appellants drugs and the use of

FAO (OS) Nos.313/2008 & 314/2008 Page 59 of 64 ‗TEMO' is, therefore, descriptive; the fact that the appellants cannot

appropriate to themselves the exclusive use of a generic term which is

publici juris and descriptive; the fact that the drugs in question are

Schedule-H drugs and that there are vast price differences, we are of

the view that the injunction earlier granted in favour of the appellants

in the two cases have rightly been vacated by the learned Single

Judge.

104. Learned counsel for the appellants has also sought to urge

that the trademarks of the appellants are valid, and the respondents

have not challenged the registration of the appellants' marks by

seeking rectification.

105. The issue before us is not with regard to the validity of the

appellants' trademarks TEMODAL and TEMODAR. Merely because the

said trademarks may be valid and legally registered and their

registrations may not contravene Section 9 of the Act, it does not

necessarily lead to the conclusion that the appellants would be entitled

to claim proprietary over a word fragment of their marks, particularly

when the said word fragment is publici juris for a generic compound

TEMOZOLOMIDE, and is used descriptively for the active chemical

compound in the appellants products and is descriptive in nature.

106. Mr. Datta submits that the appellants would fail in their

action only if the appellants trademarks are a trivial modification of the

word TEMOZOLOMIDE; the appellants' trademarks are obtained by

FAO (OS) Nos.313/2008 & 314/2008 Page 60 of 64 elision of a single syllable from the word TEMOZOLOMIDE; the

appellants' trademarks are substantially identical to the word

TEMOZOLOMIDE; the appellants' trademarks are legal equivalent of

the word TEMOZOLOMIDE.

107. These may be some of the grounds for the appellants to fail

in their action against the respondents, but these are not the only

grounds why the Court would deny interim relief of injunction in cases

like these. For the appellants to succeed, they must also establish that

the respondents have no right to use the generic name/abbreviation of

the compound ‗TEMOZOLOMIDE' in their drugs, and that the appellants

have an exclusive right in this regard. This, unfortunately for the

appellants, they have failed to show. In our view, for the appellants to

fail it is enough that the appellants' trademark have been coined by

combining the publici juris abbreviation TEM/TEMO for TEMOZOLOMIDE

with the suffix ‗DAL' in one case and ‗DAR' in the other case, the marks

of the appellants are descriptive, and the marks of the respondents do

not bear phonetic or visual similarity which could be said to be

deceptive or confusing for the purchasers of the drugs in question.

108. The registration of the appellants marks is in respect of

TEMODAL and TEMODAR. By virtue of Section 17 of the Act, it is the

said marks and not parts of the said marks, which stand protected.

Consequently, TEM/TEMO cannot be claimed to enjoy protection by

virtue of Section 17 of the Act. Section 17 of the Act confers on the

proprietor the exclusive right to the use of the trademark as a whole.

FAO (OS) Nos.313/2008 & 314/2008 Page 61 of 64 It provides: "Notwithstanding anything contained in sub-section (1)

when a trademark contains any matter which is common to the trade

or is otherwise of a non-distinctive character, the registration thereof

shall not confer any exclusive right in the matter forming only a part of

the whole of the trademark so registered" (See Section 17 (2) (b)).

109. The packaging in which the products of the appellants,

namely, ‗TEMODAL' is marketed and the products of the respondents'

ALKEM and GETWELL are marketed, have been placed on record.

‗TEMODAL' is marketed in 20 mg tablets, each bottle containing 5

tablets. On the other hand ‗TEMOKEM' is marketed in an aluminum

strip of five tablets and the potency of the tablets is 100 mg. There is

absolutely no similarity in the getup of the packaging adopted by the

appellants and the respondents. Similarly, ‗TEMOGET' is sold in an

aluminum strip of five capsules of either 20 mg or 250 mg. The colour

of the capsules of the appellants is green for the 5 mg capsule, brown

for the 20 mg capsule, blue for the 100 mg capsule and black for the

250 mg capsule. The product of the respondent GETWELL is sold in

capsules of 20 mg of blue colour, 100 mg in while colour and 250 mg in

green colour. Therefore, there is no similarity in the getup of either the

packaging or the product itself.

110. In our view, the factors that the products of the respondent

contain the warning ―To be supplied against demand from cancer

hospitals, institutions and against a prescription of a cancer patient

only" and the huge price difference (about 600%) in the product of the

FAO (OS) Nos.313/2008 & 314/2008 Page 62 of 64 appellants on the one hand, and the respondents on the other hand,

are extremely germane considerations to rule out the possibility of any

confusion or deception in the minds of the purchasers of the drugs in

question.

111. The drugs of the respondents can be bought only against

prescriptions from cancer hospitals, institutions and cancer specialists

and not otherwise. The appellants have not produced any credible

material to show actual confusion or that their product is, in any way,

superior to that of the respondents which could be relied upon at this

stage of the proceedings.

112. The aforesaid trademarks cannot be deciphered or

considered separately i.e. by fragmenting them, but must be taken as

a whole. But even if they are taken as a whole, the prefix TEMO used

with suffix KEM and GET in the two competing names distinguish and

differentiate the products of the appellants from those of the two

respondents. When they are taken as a whole, the aforesaid two

trademarks of the two respondents cannot be said to be either

phonetically or visually or in any manner deceptively similar to the

trademarks of the appellants i.e TEMODAL and TEMODAR.

113. The common feature in the competing marks i.e. TEMO is

only descriptive and publici juris and, therefore, the customers would

tend to ignore the common feature and would pay more attention to

FAO (OS) Nos.313/2008 & 314/2008 Page 63 of 64 the uncommon feature. Even if they are expressed as a whole, the two

do not have any phonetic similarity to make them objectionable.

114. Consequently, we find no infirmity with the findings arrived at

by the learned Single Judge at this stage. The learned Single Judge was

justified in not continuing the temporary injunction in favour of the

appellants/plaintiffs. We, therefore, dismiss these appeals but with no

orders as to costs. However, we direct the respondents Alkem and

Getwell in the two appeals to maintain detailed accounts of the sales of

their respective drugs ‗TEMOKEM' and ‗TEMOGET' and to regularly file

half yearly statements in the suit, till the disposal of the suit. It goes

without saying that any observation made by us on the merits of the

cases of either party is only tentative, and the learned Single Judge

shall decide all issues arising in the suit without being influenced one

way or another by our said findings.

(VIPIN SANGHI) JUDGE

(MUKUL MUDGAL) JUDGE DECEMBER 01, 2009 as/rsk/dp

FAO (OS) Nos.313/2008 & 314/2008 Page 64 of 64