Sun Pharmaceuticals vs Wyeth

7/24/12 CDJLawJournal

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This Product is Licensed to Mr. V. Ponnusamy, Advocate, Karur

Citation :- CDJ 2004 BHC 2324

Court : High Court of Judicature at Bombay

Case No : Appeal No. 1005 of 2003 in Suit No. 2299 of 2003

Judges: THE HONOURABLE MR. JUSTICE R.M. LODHA & THE HONOURABLE MR. JUSTICE J. ANOOP V. MOHTA

Parties : Sun Pharmaceutical Industries Limited Versus Wyeth Holdings Corporation

Appearing Advocates : For the Appearing Parties: Janak Dwarkadas, V.R. Dwarkadas, V.R. Dhond, Shantilal, Virendra Tulzapurkar, T.N.

Daruwalla, Darius Dalal, Jehangir, Gulabbhai, Billimoria, Daruwalla, Advocates.

Date of Judgment : 14-01-2004

Head Note :-

Cases Referred:

Anglo Grench Drugs And Industries Ltd. V. Eisen Pharmaceutical Co. , 1998 0 Ptc 692

Hindustan Pencils Pvt. Ltd. V. India Stationary Products , Air 1980 Del 19

S.B.L. Ltd. V. Himalaya Drug Co , 1997 0 Ptc 17

Schering And Fulford V. Perk Pharmaceutical Services , 1993 0 Ptc 304

Schering Corporation V. Kilitch Co. , 1994 0 Iplr 1

Wander Ltd. V. Antox India (P) Ltd , 1990 Supp Scc 727

William Bailey (Brimingham) Ltd To Registrar A Trade Mark , 1935 52 Rpc 136

Astra Idl Limited Vs Ttk Pharma Limited , 1992-Ptc-12-137

Medley Laboratories (P) Limited Vs Alkem Laboratories Limited , 2002-Ptc-25-592

Bal Pharma Ltd. Vs Centaur Laboratories Pvt. Ltd. , 2002-Ptc-24-226

Printers Private Limited Vs Pothan Joseph , 1960-Myslj(Sc)-0-807

Corn Products Refining Company Vs Shangrila Food Products Limited , 1960-Air(Sc)-0-142

Power Control Appliances Vs Sumeet Machines Private Limited , 1994-Scc-2-448

Laxmikant V.Patel Vs Chetanbhat Shah , 2002-Air(Sc)-0-275

Cadila Health Care Limited Vs Cadila Pharmaceuticals Limited , 2001-Air(Sc)-0-1952

Comparative Citation:

2005 (30) PTC 14

Judgment :-

Anoop V. Mohta, J.

( 1. ) Introduction: The controversy in this appeal revolves around the conflict between two identical trade marks, "Pacitane"

registered trade mark of the respondents and "Parkitane" unregistered trade mark of the appellants.

( 2. ) The appellants herein, (original defendants), are aggrieved and affected by the order dated 20/9/2003 in Notice of Motion No.

2138 of 2003, arising out of Suit No. 2299 of 2003, whereby, ad-interim relief in terms of prayer clauses (a), (b), and (c), except

bracketed portion, in favour of the respondents (original plaintiffs) herein, has been granted. Though by the impugned order, ad-

interim order was granted, when the matter came up before us on 2nd December, 2003, the learned Senior Counsel appearing for

parties agreed that the notice of motion be treated as having been disposed of by the impugned order. We ordered, thus, appeal to

be heard finally at the admission stage.

( 3. ) Parties assertion: Respondent No. 1 (original plaintiff No. 1) known as Wyeth holding Corporation is a company, that formally



known as American Cynamid Company, incorporated under the laws of the State of Maine, U.S.A., and having its principal office at

Five Giralda Farms, Madison, New Jersey, 07940-08974, United State of America. Respondent No. 1 is a manufacture and doing

business, inter alia, in medicinal and pharmaceutical preparations. Respondent No. 2, is a Company, incorporated under the

Companies Act, having its registered office at R.B.C., Mahendra Tower, Worli, Bombay 400 080. Respondent No. 1 is a registered

proprietor in India and abroad, of various trade marks in respect of medicinal, pharmaceutical and veterinary preparations.

Respondent No. 1 is the registered proprietor in India of the trade mark "Pacitane" bearing No. 144173, dated 27th June, 1950,

registered in respect of "Trihexylphenidy1, Anti Spasomodic Preparations", in Class-5, from the Registrar of trade marks. The said

registration has been duly renewed and is valid and subsisting. The word "Pacitane" is said to be an invented word. Since 1955,

Pharmaceutical preparations under the first respondent's registered trade mark "Pacitane" have been in use in India. The Drugs

Controller, State of Bombay, on 20.11.1995, had issued manufacturing licences for the tablets, under the trade mark of "Pacitane"

alongwith other drugs, to the predecessors-in title, of the second respondent.

( 4. ) The predecessors of the respondent No. 2 have been using the said trade mark as licensee of the respondent No. 1. The goods

manufactured by the predecessors and by respondent No. 2 are claimed to be strictly in accordance with the formula and prescribed

specifications by the respondent No. 1. The preparations in relation to trade mark "Pacitane" are manufactured and sold in the form

of tablets.

( 5. ) Respondent No. 2 is claimed to have incurred considerable expenses in promoting their pharmaceutical preparations under the

registered trade mark "Pacitane" all over India, in various media on a large and extensive sale. In support of annual advertisement,

and formal expenditure incurred by the respondent No. 2, form the year 1996 to 2002, the statements duly certified by the Chartered

Accountant, have been placed on the record.

( 6. ) Respondents, therefore, have asserted to have acquired tremendous goodwill and reputation of Pharmaceutical preparations

under the trade mark "Pacitane". The claim that the members of the public and the trade in India, on looking at any antispasmodic

preparation of "Trihexylphenidyl" bearing the trade mark "Pacitane" associate the trade mark "Pacitane" as emanating from the

respondents, exclusively.

( 7. ) Sometime in February, 2000, it came to the knowledge, of the respondent No. 2 that the appellants started manufacturing and

marketing a pharmaceutical preparation under the trade mark "Parkitane" and it was an infringement of respondent No. 1 is

registered trade mark "Pacitane". The respondents took search at the trade marks Registry, Mumbai and found that the appellants

have also applied for registration of the trade mark "Parkitane" under application No. 834465 in Class- 5, in respect of the medicine

and Pharmaceutical preparations and substances. The appellant's trade mark has not yet been advertised in the trade marks journal

to invite opposition proceedings. The appellants have given intimation to the Registrar, of their intention to oppose the aforesaid

application.

( 8. ) The respondents, have set up the case that the use by the appellants of the word mark "Parkitane" is visually, phonetically,

structurally and deceptively similar to the registered trade mark "Pacitane" of the respondents, bearing No. 144713 dated 27th June,

1950, and that the appellant passing off their goods "Parkitane" as the goods of the respondents. Respondents also found that the

use, by the appellants of the trade mark "Parkitane" constitutes and infringement of their statutory and proprietary rights, of the

respondent No. 1.

( 9. ) Respondents have asserted that the 1st syllable and the last syllable are identical in both the marks. The letter 'i' is important and

emphatic, structurally and visually the marks are similar. There is a great overall similarity, notwithstanding presence of the letters 'r'

and 'k' in the appellants mark. The letter 'r' can be slurred over. Therefore, the adoption and use by the appellants of the word mark

"Parkitane" in relation to an identical pharmaceutical preparations, having the same composition (Trihexylphenidy 1 Bydrochloride),

as that of respondents pharmaceutical preparations, under the trade mark "Pacitane" is fraudlent and dishonest. Respondents

asserted that it is inconceivable that the appellants were not aware of the famous trade mark "Pacitane" of the respondents, when

they fraudulently and dishonestly adopted the trade mark "Parkitane". The respondents further averred that by reason of extensive use

of the word "Pacitane" it associates the public, exclusively, with that of respondents. Appellants would threat and or encroach upon

the reputation and the goodwill acquired by the respondents. It would cause a confusion and or a deception in the field and amongst

the public. Appellants are passing off and/or likely to pass off or enable others to pass off, appellants pharmaceutical preparations,

as and for those of respondent's pharmaceutical preparations.

( 10. ) The respondent No. 2, issued a "cease and desist" notice dated 11th February, 2000, to the appellants and called upon, them

to desist from using the mark "Parkitane". Respondent No. 2, also averred that they did not receive reply from the appellants, to their

above said letter dated 11th February, 2000. Respondent No. 2, however, found in May 2002, a spurt in the infringing activities of the



appellants, and therefore, released another identical 'cease and desist notice' to the appellant on 14th May, 2002. The appellants by

letter dated 5th June, 2003, replied to the said 'cease' and desist notice and explained that "Parkitane" is different from "Pacitane"

as required to be dispensed only on an advice of and by medical Practitioner and hence there is no question of confusion and

deception. The applicants enclosed the various materials, referring to the various applications for registration of trademark having

prefix "Paci", "Park" and "Tane" as suffix and contended that those prefixes are common and the respondents, therefore, could not

claim any proprietary right in the whole or part of their registered trade mark "Pacitane".

( 11. ) The respondents found that the case made out by the appellants in their reply dated 6th June, 2002, was contrary, inconsistent

and without any basis. The respondents, therefore, after receipt of the reply dated 6th June, 2003, filed the present Suit 2299 of 2002,

on 17th July, 2003. The respondents have filed an affidavit in support of their say and also taken out Notice of Motion in question i.e.

2138 of 2003. The relevant prayers are reproduced as under;

(a) that pending the hearing and final disposal of the suit the Defendants by themselves, their servants, agents, distributors and

stockists be restrained by an order and interim injunction of this Hon'ble Court from using in relation to Trihexylphenidyl and or

Antispasmodic preparations falling in class-5 or manufacturing, exporting selling or distributing the said goods under the trade mark

"Parkitane" or under any other trade mark which is an infringement of or deceptively similar to the registered trade mark "Pacitane" of

the 1st plaintiffs bearing No. 144731 falling in class 5;

(b) that pending the hearing and final disposal of the suit the Defendants by themselves, their servants, agents, distributors and

stockists be restrained by an order and interim injunction of this Hon'ble Court from directly or indirectly, using in relation to

Trihexylphenidyl and or Antispasmodic preparations or in relation to any other medicinal and pharmaceutical preparations or

manufacturing, and or antispasmodic preparations or any other medicinal preparation under the trade mark "Parkitane" or under any

other trade mark deceptively similar to the trade mark "Pacitane" of the plaintiffs so as to pass off or likely to pass of and/or enable

others to pass off the defendants pharmaceutical preparations as and for those of the plaintiffs.

(c) that pending the hearing and final disposal of the suit, the Court Receiver/Commissioner or such other fit and proper person as

this Hon'ble thinks fit be appointed with all powers under or XL Rule 1 of the Civil Procedure Code, 1908 to attend at the Defendants

premises and/or at the premises of the Defendants exporters or distributors and stockists, to make inventories of the pharmaceutical

preparations bearing the infringing trade mark "Parkitane" complained of including tables and the like and cartons, blister packings

and other goods and materials bearing the trade mark complained of and the Defendants by themselves, their servants, agents,

distributors and stockists be ordered and directed to deliver up for cancellation or destruction the aforesaid goods, tablets, blister

packings, cartons, labels, pamphlets, literature, blocks, dyes and instruments complained of and other goods and materials

complained of bearing the infringing trade mark named above to the Court Receiver or to such other fit and proper person as this

Hon'ble Court thinks fit."

( 12. ) The appellants, resisted the Notice of Motion, by filing Affidavit in reply dated, 8th August, 2003. Inter-alia, they set up the plea

that the proceedings suffer from gross delay, laches and acquiescence. The appellants asserted that, in fact by 2nd March, 2000,

itself, resisted ceased and desist notice of respondents, dated 11th February, 2000. The respondents, therefore, were fully aware of

the activities and action of the appellants. The respondents in-spite of this, did not take any action. The appellants, therefore,

continued to use the said trade mark and have been marketing the said products, with full promotional activities. The appellants,

resisted the second notice of respondents, dated, 14th May, 2003, and denied the allegations of respondent No. 2. The appellants

have also asserted the case of bona fide adoption of the trade mark "Parkitane" and contended that the same was distinct and

dissimilar to the respondents trade mark "Pacitane". The appellants, averred that the rival prefixes were distinct and dissimilar and

commonly used and easily identifiable and were well recognized distinctive prefixes. In support of the same, the appellants placed

material on record. The appellants pleaded that they were using the said trade mark "Parkitane" since 1999 or at least from the date

of first knowledge to the respondents i.e. 11th February, 2000. The respondents/plaintiffs filed the suit in July 2003, after a period of 3

years and therefore, respondents were not entitled for any interim or ad interim relief at this stage. The appellants also placed on

record the statement of accounts for the period 1999 to 2002. The appellants asserted, to have earned the reputation and the

goodwill of its trade mark "Parkitane". Their application for registration of the said trade mark "Parkitane" is said to be still pending.

According to the appellants the balance of convenience was heavily in their favour. The appellants submit that the respondents are

not entitled for any interim order as they have not come with clean hands and made false and misleading statements and therefore,

disentitled themselves from any discretionary relief.

( 13. ) The respondents, filed affidavit in rejoinder, dated 30th August, 2003, and reiterated their case as per its plaint and Notice of

Motion and further clarified and resisted the defence of the appellants. The respondents denied that there was any case of delay or

acquiescence or publici juris or common to the trade, as alleged, by the appellants.



( 14. ) The appellants by further Affidavit dated 11th September, 2003, placed on record more material to support their defence of

sales of some of the products with prefix "Paci" and "Parki" and the suffixes "Tane", "Tan", "Ten" etc. and also placed on record sale

figures and reiterated their defence as set out in their affidavit. The case of impeccable reputation and goodwill in the trade mark and

public, also averred.

( 15. ) Impugned Interim Order: Hon'ble Singh Judge, after hearing both the parties and after going through the material on record,

passed the interim order on September 30, 2003, in terms of prayer clauses (a), (b) and (c) (except bracketed portion), OS already

noted above. The original defendants, therefore being aggrieved and affected by the same, have preferred this Appeal.

( 16. ) The appellant's submissions: The respondent's conduct and action is hit by delay, latches and above all, doctrine of

acquiescence. The appellants honest and bona fide adoption on the trade mark "Parkitane" cannot be faulted with. The appellants

trade mark "Pacitane" cannot be considered to be deceptively similar to the respondents trade mark "Parkitane". The prefix "Paci",

"Pace", "Par", "Parki" and suffixes "Tane", "Tan", "Ten", "Tene" are common to the trade. Those marks are being published and/or

common in trade cannot be said to be deceptively similar or cannot claim distinctiveness. Therefore, interim relief in terms of prayer

clauses (a), (b) and (c) of Notice of Motion ought not to have been granted.

( 17. ) The Senior Counsel Mr. Janak Dwarkadas, relied on the following authorities in support of high contentions. (I) The Judgement

of Division Bench of this Court in case of Bal Pharma Ltd. v. Wockhardt Ltd. and others (Appeal No. 498/2002 in Notice of Motion

No. 225/2002 in Suit No. 1305/2002) decided on 12-6-2002; (II) 1997 PTC (17) (DB) High Court of Delhi in case of S.B.L. Ltd. v.

Himalaya Drug Co; (III) 2001 PTC 300 (SC) Supreme Court of India in case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals

Ltd., and (IV) 1990 (Supp) Supreme Court Cases 727 in case of Wander Ltd. and Another v. Antox India P. Ltd; Mr. Dwarkadas also

relied upon the extract from book "The Law of Passing-Off" by Chirstopher Wadlow, paragraph 7.22 and 7.23 (2nd edition).

( 18. ) The Senior Counsel Dr. Virendra Tulzapurkar submitted that this Appeal being against the interlocutory order and as discretion

has been exercised properly and not unreasonably, capriciously or ignoring the relevant facts or record and therefore, there is no

case of interference with the reasoned order of the learned Single Judge. He submitted that the mark "Parkitane" is deceptively

similar, to the mark "Pacitane" and causes confusion in the minds of the people at large or at least there is a likelihood of a

confusion, and, therefore, the order passed by the learned Judge, therefore, needs no interference. There was no acquiescence,

delay or laches, as alleged. He, therefore, submitted that the order passed by the learned single Judge be maintained. He relied on

following authorities:

(I). Cadila Health Care Ltd. v. Cadila Pharmaceuticals, AIR 2001 SC 1952; (II). Printers (Mysore) Pvt. Ltd. v. Pothan Jeseph, (1960) 3

SCR 713; (III). Wander Ltd. and Anr. v. Antox India (P) Ltd, 1991 PTC 1; (IV). Pianotist's case- (1906) 23 RPC 774; (V). Medley

Laboratories Pvt. Ltd. v. Alkem Laboratories, 2002 (25) PTC 592; (VI). Astra-IDL v. TTK Pharma Ltd. (Betaloc Case) AIR 1992 Bom.

35; (VII). Hindustan Pencils Pvt. Ltd. v. India Stationary Products, AIR 1980 Del. 19; (VIII). Wilmott v. Barber, 15 Ch.D. 95 (1879); (IX).

Bal Pharma v. Centaur Laboratories Pvt. Ltd., 2002 (24) PTC 226 (Bom) DB; (X). Bal Pharma v. Wockhardt Ltd. (unreported) In

Appeal No. 498 of 2002 decided on 12th June 2002; (XI). Schering Corporation v. Kilitch Co., 1994 IPLR 1; (XII). Nucron Pharma v.

International Pharmaceuticals, 1994 IPLR 56; (XIII). Corn Products v. Shangrila Products, AIR 1960 SC 142; (XIV). In the matter of

"An Application by William Bailey (Brimingham) Ltd to Registrar A Trade Mark" -(1935) 52 RPC 136; (XV). 'ACCUTRON Trade

Mark- (1996) RPC 152; (XVI). Schering and Fulford v. Perk Pharmaceutical Services, 1993 PTC 304; (XVII). Anglo Grench Drugs

and Industries Ltd. v. Eisen Pharmaceutical Company Pvt. Ltd., 1998 PTC 692; (XVIII). Laxmikant Patel v. Chetanbhat, Shah AIR

2002 SC 275.

( 19. ) Statutory Provisions: - The trade and Merchandise Marks Act, 1958 (for short Act of 1958) and Trade and Merchandise Rules,

1959, (for short Rules, of 1959) contain some concerned statutory provisions. S.2 (d) "deceptively similar"-a mark shall be deemed to

be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion;

Section 11. Prohibition of Registration to certain marks. Section 12. Prohibition of registration of identical or deceptively similar trade

marks, Section 27. No action for infringement of unregistered trade mark, Section 28. Rights conferred by registration. Section 29.

Infringement of trade marks. Section 30. Acts not constitution infringement, Section 31. Registration to be prima facie evidence of

validity. Section 33. Saying for vested rights. Section 105. Suit for infringement etc to be instituted before District Court. Section 106.

Reliefs in suits for infringement or for passing of.

( 20. ) Power of the appellate Court to interfere with the interim order: Recently in Appeal No. 691 of 2002, M/s. Welset Engineers v.

M/s. Vikas Auto Industries, decided on 4th December, 2003 we observed, thus; "Before we proceed further we remind ourselves of

the observations made by the Supreme Court in N.R.Dongre v. Whirlpool Corporation about the interference in the appeal arising out



of discretionary order of the temporary injunction. In para 9 of the report the Supreme Court indicated that interference in such appeal

would be called for only if conclusion is reached that the exercise of discretion by the trial court is contrary to the settled principles for

the grant of a temporary injunction or that it is arbitrary or perverse. In para 9 of the report, the Supreme Court quoted with approval its

earlier judgement in Wander Ltd. and another v. Antox India P. Ltd., 1990 (Supp) SCC 727 and held thus-

"9. We must indicate at this stage that interference in this appeal would be called for only if we reach the conclusion that the exercise

of discretion in favour of the plaintiffs is contrary to the settled principles for the grant of a temporary injunction or that it is arbitrary or

perverse. In Wander Ltd. and Anr. v. Antox India P. Ltd., 1990 (Supp.) SCC 727, the factors to be considered for grant of an

interlocutory injunction in a passing-of action and the scope of interference by appellate court with the exercise of discretion of court

of first instance, were summarised and reiterated as under: "

...In such appeals, the appellate court will not interfere with the exercise of discretion of the court of first instance and substitute its own

discretion except where the discretion has been shown to have been exercised arbitrarily, or capriciously or perversely or where the

court had ignored the settled principles of law regulating grant of refusal of interlocutory injunctions. An appeal against exercise of

discretion is said to be an appeal on principle. Appellate court will not reassess the material and seek to reach a conclusion different

from the one reached by that court was reasonably possible on the material. The appellate court would normally not be justified in

interfering with the exercise of discretion under appeal solely on the ground that if it had considered the matter at the trial stage it

would have come to a contrary conclusion. If the discretion has been exercised by the trial court reasonably and in a judicial manner

the fact that the appellate court would have taken a different view may not justify interference with the trial court's exercise of

discretion. After referring to these principles Gajendragadkar, J. in Printers (Mysore) Private Ltd. v. Pothan Joseph, 1960 (3) S.C.R.

713 at 721.

"...The principles are well established, but as has been observed by Viscount simon in Charles Osenton and Co. v. Jhanaton... the

law as to the reversal by a court of appeal of an order made by a Judge below in the exercise of his discretion is well established,

and any difficulty that arises is due only to the application of well settled principles in an individual case."

( 21. ) The Supreme Court in case of Cadila Health Care Ltd. (supra) stated that, the factors to be considered in deciding the

question of deceptive similarity thus;

"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: (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 resemblances 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.

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. The Hon'ble Apex Court in case of Laxmikant Patel v. Chetanbhai Shah, 2002 (3) SCC 65, in relation to

the injunction in passing off action held as under: 13. In an action for passing-off it is usual, rather essential to seek an injunction,

temporary or ad interim. The principles for the grant of such injunction are the same as in the case of any other action against injury

complained of. The plaintiff must prove a prima facie case, availability of balance of convenience in his favour and his suffering an

irreparable injury in the absence of grant of injunction. According to Kerly (ibid, para 16.16) passing-off cases are often cases of

deliberate and intentional misrepresentation, but it is well settled that fraud is not a necessary element of the right of action, and the

absence of an intention to deceive is not a defence, though proof of fraudulent intention may materially assist a plaintiff in establishing

probability of deception. Christopher Wadlow in Law of Passing-off (1995 Edn. at P.306) states that the plaintiff does not have to

prove actual damage in order to succeed in an action for passing-off. Likelihood of damage is sufficient. The same learned author

states that the defendant's state of mind is wholly irrelevant to the existence of the cause of action for passing-off (ibid, paras 4.20

and 7.15). As to how the injunction granted by the Court would shape depends on the facts and circumstances of each case. Where a

defendant has imitated or adopted the plaintiff's distinctive trade mark or business name, the order may be an absolute injunction that

he would not use or carry on business under that name (Kerly, ibid,

para 16.97)

( 22. ) Acquiescence, delay and/or laches Deceptively similar and dishonest adoption and use a Senior Counsel Mr. Dwarkadas



relied on the extract from "The law of passing off, by Christopher Wadlow (Second edition) para 7.20. He contended that the

respondents have filed the suit, practically after 3 years, from the date of knowledge, that the appellants, were using the trade mark

"Parkitane" in relation to Pharmaceutical preparation, since 1999 or at least from February, 2000, on which date the respondents had

issued a notice of "cease and desist". The respondents failed to take immediate preventive action against the appellants. The

appellants, therefore, acquired rights, as they have been selling their products without any interruption since 1999, in the same

market. Their products in question is distinctive. There was no likelihood of confusion. The respondents therefore, encouraged and

allowed the appellants to continue to market and sell and promote their products in the same field. Therefore, at the interlocutory

stage the Learned Single Judge ought not to have granted the interim order in favour of the respondents. He contended that the

action the respondents suffered from delay, laches and acquiescence also. He further contended that the appellants, by its reply,

dated 2nd March, 2000, to "Cease and desist" notice, dated 11th February, 2000, denied the allegations of deceptive similarity of

the goods. During this period the appellants have incurred huge amount towards publicity and promotion of the said goods in

question. They have earned the reputation and goodwill of the said product in the market. Their application for registration of the said

trade mark "Parkitane" is also pending. Therefore, if such interim order is continued, it will cause great harm and injury to the

appellants. The balance of Convenience, and equity lies in favour of the appellants and not in favour of the respondents.

( 23. ) He, find from the record that the Pharmaceutical preparation of the respondents registered trade mark "Pacitane" have been in

use, in India, since 1955, with the relevant licensees, under the drug control authorities. The respondents pharmaceutical preparation

under the trade mark "Pacitane" used by the Predecessors-in-title of the Respondent No. 2, since 1985. The said pharmaceutical

preparations have been manufactured and sold by respondent No. 2 on a very large and extensive scale. This is supported by

Charted Accountant's certificate from the year 1986 till year 2002. The statement of annual advertisement and promotional expenses,

incurred by Respondent No. 2, from 1986 to 2002 is also on record, apart from advertisement, and promotional expenses details.

There is no doubt, therefore, in view of the above, as well as, other materials on record, that the respondents are using continuously,

the said products "Pacitane" prior in time. The respondents have earned goodwill and reputation of the said Pharmaceutical

preparation. Such a long exclusive use of the said products in the market, definitely acquire the goodwill and the reputation and

association of the said trade mark with the respondents- company. Prima facie, the respondent's cannot be held guilty of

acquiescence, as alleged by the appellants Counsel. It cannot be overlooked that the respondents immediately after having

knowledge of appellant's illegal action of adoption of alleged trade mark "Parkitane," resisted by "cease and desist" notice, dated

11th February, 2000. The same was duly within the knowledge of appellants, as appellants themselves contended that they had

replied the said notice dated 11th February, 2000 by their reply dated 2nd, March 2000. It is also clear from the record that the

respondents by their second notice again objected the action of the appellants. Therefore the appellants were fully aware of the

existing product of the respondents in the market. However, in spite of said objections, they continued to adopt or use the trade mark

"Parkitane" for the pharmaceutical preparations, and acted with full knowledge and consequences. There cannot be claim of equity in

their favour. The appellants action in the facts and circumstances of the case amounts to dishonest, adoption of the trade mark

"Parkitane".

( 24. ) The relevant para of the judgment cited by the Senior Counsel Dr. Tulzapurkar, reported in case of Willmott v. Barber Vol IX

Chancery Division, page 97, is reproduce, as under;

"It has been said that the acquiescence which will deprive a man of his legal rights must amount to fraud, and in my view that is an

abbreviated statement of a very true proposition. A man is not to be deprived of his legal rights unless he has acted in such a way as

would make it fraudulent for him to set up those rights. What, then, are the elements or requisites necessary to constitute fraud of that

description? In the first place the plaintiff must have made a mistake as Go to his legal rights. Secondly, the plaintiff must have

expended some money or must have done some act (not necessarily upon the defendants land) on the faith of his mistaken belief.

Thirdly, the defendant, the possessor of the legal right, must know of the existence of his own right which is inconsistent with the right

claimed by the plaintiff. If he does not know of it he is in the same position as the plaintiff and the doctrine of acquiescence is founded

upon conduct with knowledge of your legal fights. Fourthly, the defendant, the possessor of the legal right, must know of the plaintiffs

mistaken belief of his rights. If he does not, there is nothing which calls upon him to assert his own rights. Lastly, the defendant, the

possessor of the legal right, must have encouraged the plaintiff in his expenditure of money or in the other acts which he has done,

either directly or by abstaining from asserting his legal right. Where all these elements exist, there is fraud of such a nature as will

entitle the Court to restrain the possessor of the legal right from exercising it, but, in my judgment, nothing short of this will do".

( 25. ) It is relevant to refer to 25 of the report AIR 1990 page 19, (Hindustan Pencils Pvt. Ltd. and Another v. India Stationery Products

Co. and Another) which reads as under:

"However, if defendant acted fraudulently or with knowledge of plaintiffs rights then relief by injunction is accorded, even though



latches and acquiescence bar the recovery of damages or profits... The Courts have been very reluctant to deny injunctive relief

because of plaintiffs delay when it appears that defendant knowingly and deliberately adopted the mark which is an infringement. If

such facts are shown, only in an exceptional case will latches bar injunctive relief. In Anheuser-Buseh v. Du Bois Brewing Co., 175

F2d 370 the Court referred to "the doctrine that a fraudulent infringer cannot expect tender mercy of Court of equity so that mere delay

by the injured party in bringing suit would not bar injunctive relief.

( 26. ) The judgment of Bombay High Court, reported in, 2002 (24) P.T.C. 226 (Bombay) (D.B.) Bal Pharma Ltd. v/s. Centaur

Laboratories Pvt. Ltd. and Another, in paragraph 9 reads thus:

9. Then we turn to the question of delay and acquiescence. Mr. Tulzapurkar, learned Counsel appearing for the Respondent cites the

judgment of the Supreme Court in Power Control Appliances and Others v. Sumeet Machines Pvt. Ltd., 1994 (2) SCC 448 wherein

the Supreme Court approvingly referred to the judgment of the Appeal Court in England in Electrolux LD v. Electric and quoted a

passage therefrom in paragraph 34 of it judgment. Our attention was also drawn to the judgment in Electrolux itself. Reference to the

judgment in Electrolux shows that there is no hard and fast rule that delay per se would defeat an application for interlocutory injection.

The judgment indicates that in a situation where the defendant to an action has been using the mark, even it concurrently, without

making himself aware of the fact as to whether the same mark is the subject-matter of the registration and belongs to another person,

the first person cannot be heard to complain for he has been using it negligently inasmuch as he has not taken the elementary

precaution of making himself aware by looking at the public record of Registrar as to whether the mark in question is the property of

another. If, however, he had taken search and, knowing full well that the mark was the property of another person, continues to use the

mark, then he runs the risk of a registered proprietor challenging his action for infringement and merely because it is done at a

subsequent stage, he cannot be heard to complain on the ground of delay. Further discussion in the judgement shows that in order to

deny an interlocutory injunction, the delay must be such as to have induced the defendant or at least to have lulled him into a false

sense of security to continue to use the trade mark in the belief that he was the monarch of all he surveyed. In our judgment, such are

not the circumstances here. We are not satisfied from the record that a search was taken of the registry by the Appellant to assure

itself that there was no other person who owned the mark "MICRODINE". Assuming that the search was taken, and the Appellant has

done it consciously, then the Appellant has to thank itself for having gambled by investing large amounts in a risky venture. Either way,

we do not think that the defence can succeed, at this stage, at least.

( 27. ) Prior and long use of trade mark in pharmaceutical business by the respondents is "prima facie, sufficient to pass appropriate

interim order against the appellants. 29. Publicia Juris and generic or common trade, distinctiveness overall similarity of broad

features: Mr. Dwarkadas, Senior Counsel appearing for the appellants contended that the rival trade mark "Pacitane" and

"Parkitane" are totally dissimilar to each other. The rival prefixes of the marks are admittedly different. There are several medicines,

in the market for long time, with prefixes "Pace", "Pace", "Par" and "Paki" and there are several medicines which are sold in the

market having suffixes "Tan," "Thane", "Ten" and "Teen". The learned Counsel supported the said contention with various

advertisements and materials of the several medical journals. It is sufficient to observe at this stage that said prefixes and suffixes

used in respect of medicinal and pharmaceutical preparations and therefore, are easily identifiable and distinguishable. According to

us. It need detail, evidence to dislodged the case of respondents. The appellants, as alleged, falsely adopted and coined the said

trade mark and using openly and extensively only since 1999. The learned Single Judge after considering the materials and affidavit

filed by the parties on record and after comparison of marks goods and other circumstances held that the appellants trade mark

"Parkitane" is deceptively similar to the respondents' registered trade mark "Pacitane" and further observed that the suffix is same.

( 28. ) In the facts and circumstances referred above, the mark 'Parkitane' is visually, phonetically, structurally and deceptively similar

to the registered trade mark "Pacitane". The first syllable and last syllable are identical in both the marks. The letter small "i" is

important and emphatic. Structurally and visually the marks are similar and there is great overall similarity notwithstanding the

presence of the letter "i" and "a" in the appellants mark. The letter "i" can be slurred. Those assertion of respondents, at this stage,

prevail over the case of appellants.

( 29. ) The learned Counsel, Mr. Dwarkadas, also relied on the judgment 1997 PTC (17) (DB) Delhi High Court, in case of SBL Ltd. v.

Himalaya Drug Co. wherein the issue of word "Liv.52" with "LIV-T" were considered. In our view the judgment of Apex Court reported

in Cadila (supra) referred above, which was also based on pharmaceutical preparation sufficiently justify the interim order, at this

stage.

( 30. ) The materials on record indicate that the respondents are registered owner of the trade mark "Pacitane" since 1950 and they

are prior user of the said mark. There is no perversity or unreasonableness pointed out by the appellants. Question of likelihood of a

deception and the nature of reputation earned by the respondents in respective field and activity and the manner in which the

particular trade is being carried on and other surroundings circumstances, are relevant. We find no merit in the contentions advanced



by the appellants counsel. We are of the view that unless, sufficient and more evidence and material placed on record, interim order,

already granted in favour of the respondents does not deserve to be vacated, merely on the contentions raised by the appellants, on

the foundation of "publicia juris" or generic" as observed in 1997 PTC (19) (supra). In Delhi case trademarks' were in operation in

two different field i.e. Ayurvedic and Homeopathic.

( 31. ) Identical trade marks with common "materia medica" and its effect: We find that both the marks are quite similar, its

composition is comparatively same and both the pharmaceutical preparation in question is for the treatment of the disease

"Parkinson". The medical market is also same. The learned Single Judge while rejecting the case of the appellants and while

granting interim order in favour of the respondents, relied on the following cases: 1. Pianotist's case - (1906) 23 RPC 774. 2. A.I.R.

2001 S.C. 1952 : 2001 P.T.C. 300 (Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd.) 3. 2002 (25) P.T.C. 592, Medley

Laboratories (P) Ltd. and Another v. Alkem Laboratories Ltd.

( 32. ) The comparison of trade marks as laid down in Pianotist's case (supra) and as observed by the Single Judge at page 238,

has also been reflected in 2001 PTC 300 (S.C.) in case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. (supra) Cadila

has been followed by the Division Bench in Medley Laboratories (P) Ltd. v. Alkem Laboratories Ltd. (supra). In the facts and

circumstances of the case, the principles laid down in Medley Laboratories (supra) are applicable. In the present case, admittedly,

the pharmaceutical products are similar, the marks are similar, the purchasers are same, the composition of the product are same

and being prescriptive drug, there is a possibility of a deception and a confusion. Merely because the present pharmaceutical

preparation has no disastrous consequence, even if, it is prescribed by the Doctor, we are afraid, that itself cannot be the reason to

interfere with the impugned order.

( 33. ) Two relevant paragraphs from Cadila (supra) are referred. In Blansett Pharmaceuticals Co. v. Carmick Laboratories Inc., 25

USPQ 2nd 1483 (TTAB 1993), it was held as under:

"Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these

similar goods are marketed under marks which look alike and sound alike." In the case of R.J. Strasenburgh Co. v. Kenwood

Laboratories, Inc., 106 USPQ 379, as noted in the decision of Morgenstern Chemical Company's case (supra), it had been held that:

"Physicians are not immune from confusion or mistake. Further more it is common knowledge that many prescriptions are telephone

to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the

chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or

sound too much alike when pronounced."

( 34. ) If goods are deceptively similar, usable by similar customers are saleable in the same pharmaceutical market, the composite

of the such products, if are saleable and usable for the similar disease like "Parkison", there is more likelihood of a deception or a

confusion. If the product and the trade in question, falls within the protection of common law rights and the Act of 1958, then, there is

no reason to refuse the interim order or any preventive order against infringer or any such person.

( 35. ) Merely pharmaceutical prescriptions of infringer, like respondents, are not a danger or fatal or contra-indicate, to public at

large, it cannot be said that the judgment of Apex Court in Cadila (supra) is distinguishable or does not apply. The principles noted in

para 35 of the Cadila case (Supra) are definitely guiding factors, for cases of identical trade marks disputes.

( 36. ) "Materia Medica" of two pharmaceutical prescriptions in question are comparatively similar and/or common, and are operating

in the same field and market, usable by some customer for "Parkison" disease, and having regard to the judicial opinion, expressed

by the Hon'ble Supreme Court, in the cases referred above, and also in the later cases, we are of the view that, the principal of public

"publicia juris" or and acquisition or delay, that itself cannot be sufficient reason to vacate the preventive or protective interim order

passed in the matter. We cannot overlook, at this stage, the settled law with regard to points like: "registered trade mark or

proprietary right" prima-facie effect of registration", prior or long and continuous use', "deceptive or, "dishonest use" or "deception or

confusion" in the mind of "general consumers", "concurrent use or permissible use" and "whole circumstances of the case", specially

while granting or refusing or vacating the interim protective order in infringement and or passing of suits. On the contrary, there is

sufficient reason to pass such protective order, if above elements, are available and made out on record, at prima-facie stage, and

unless these issues are proved otherwise or contradicted in trial, there is no reason to depart from the view taken by the learned

Single Judge.

( 37. ) The senior Counsel Mr. Dwarkadas, strongly relied on the Judgment in Appeal No. 498 of 2002 dated 12.6.2002, delivered by

the Division Bench of this Court, in the case of Bal Pharma Ltd. v. Wackhardt Ltd., and contended that this Court refused to grant

interim relief in an identical case. He contended that the case of Cadila (Supra) is not applicable to the present case. We are of the



opinion that each case has to be decided on its own facts and the Judgment in Bal Pharma Ltd. (supra) relating to trade marks

"AZIWOK" AND 'AZIWIN'. is distinguishable.

( 38. ) We are of the opinion, that there is common field of activity, common field and procedure for selling such pharmaceutical

medicines, and above all "materia medica" is common or composition of such product is common, there is more possibility of

deception and confusion and infringers actions, definitely cause damage to the goodwill and the reputation of the trade mark of

parties like respondents herein. The factual and actual material including roaring sale in the market and continuous use and

marketing of the product of respondents entitled them to protective or preventive order, against appellant's fraudulent or dishonest

use of the trade mark, i.e. "Parkitane," The equity and the balance of convenience, in such cases, lies in favour of the affected parties

and not in favour of the infringers. Appellants plea of acquiescence or publicia juris is devoid of substance as their own action, is not

in good faith and appears to be deceitful. We, therefore, find no justifiable reason to disturb the order of the learned Single Judge.

( 39. ) We accordingly, dismiss the appeal. No order as to costs. The learned Counsel for the appellants prayed for continuation of

stay which was granted, initially, by the learned Single Judge on 30.9.2003, of not giving the effect to the order for eight of weeks and

thereafter, granted by the Division Bench on 2nd December, 2003. We, accordingly, direct that the impugned order shall not be given

effect to for a further period of Six weeks from today.

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