CHAPTER 8

CONCLUSION
CHAPTER 8 : CONCLUSION

8.1 INTRODUCTION

Pharmaceutical and Patents by Dr. Elizabeth Verkey Author reproduced

from the Law relating to Drugs and Cosmetics Act. “Intellectual Property
Rights is the right given to the intellectual creativity of an individual. In
every intellectual property right two conflicting interests are involved,
public and private. The inventor will always want to recoup has
investment. Unless there is an opportunity to recoup investment, there
will be no incentive to invest in creative effort. The private wants to
derive maximum economic advantage out of his invention while the
public wants access to the maximum possible inventions at the cheapest
price. Intellectual Property Rights is an attempt to balance the conflicting
interests of the public on the one hand and the private on the other. Patent
system offers a standard level of protection generating the resources
required to finance R&D and to protect investments. Patent rights help
the inventor to recoup his investment and are a tool to technical
progress”.
The aforesaid paragraph if we read in context of Trade Mark Act also,
then we can say that a manufacturer of Drugs and medicines does lot of
research innovation and hard work before it manufactures good drugs and
medicines. If some of the drugs are containing novelty then he gets patent
for his inventions. Sometime a drug many not contain enough novelty and
manufacturer may not be able to get patent. However, manufacture desire
to sell the goods and for selling that he gives a trade name, trading style
or a trade mark to the medicine with a view to see that he can able to sell
the medicine with that particular mark. There is conflicting interests are
involved - public and private. A manufacturer with a trade mark with
particular drug will always desire to recoup his investment. Unless there

537
is an opportunity to recoup investment, there will be no incentive to
invest in creative effort or obtaining trade mark and marketing the same
goods with trade mark. The private man desire to derive maximum
economic advantage out of his manufactured goods with the trade mark
while the public wants access to the maximum possible inventions at the
cheaper price. Intellectual Property Rights are an attempt to balance the
conflicting interests of the public on the one hand and the private on the
other. The trade mark system offers a standard level of protection
generating the resources required to finance R&D and its marketing
activity and to protect investments. Trade mark rights help the
manufacturer to recoup his investment and are a tool to technical
progress.

8.2 CONCLUSION (DROPOVIT AND PROTOVIT CASE)

1.1 In my Thesis, I have discussed the historical background of Trade
Mark, Law definition of Trade Mark and other concepts in the
Trade Mark, principle of passing off, and principle of infringement
under the Trade Mark Act. Researchers have also discussed some
of the decisions related to pharmaceutical product in connection
with the infringement and passing off. I have also discussed the
principle of rectification also.

As regards Researcher and conclusion and findings, though, all

these chapters have been discussed; researcher desires to discuss
some of the important Judgments of the Hon’ble Supreme Court in
relation to pharmaceutical as well as non-pharmaceutical products
in relation to infringement and passing off. researcher also desire to
discuss the critical examination of those Judgments and after
examining them, The researcher desire to express her humble
opinion of those aspects as follows.

538
1.2 The Researcher have also discussed earlier Judgment of the
Hon’ble Supreme Court in F.Hoffimann-LA Roche and Co. v.
Geoffrey Manners and Co.428 (hereinafter referred as ‘Dropovit’).

Protovit-Case In relation to pharmaceutical products, the Supreme

Court has held that both the ‘Dropovit’ and ‘Protovit’ are not
deceptively with similarity. On examining the Judgment, carefully
one finds that the Supreme Court has relied upon several English
Cases in this behalf. For arriving at the said conclusion, the
Supreme Court has laid down the principle that marks must appear
as a whole (para 11 on Page 2064 of the said Report). When one
goes through para 12 on page 2065 of the Report, the Supreme
Court has dissected the said word. In other words, they have
segregated both ‘Dropovit’ and ‘Protovit’ words one and ultimately
held that there is no reasonable probability of confusion between
the words either from the visual or phonetic point of view.

1.3 Other reasons which the Hon’ble Supreme Court has considered
are in para 13, page 2065, that from the nature of the goods, it is
likely that most of the customers would obtain a prescription from
a doctor and show it to the chemist before the purchase. In such a
case, except in the event of the handwriting of the doctor being
very bad or illegible, the chance of confusion is remote.

One another reason that the Supreme Court has given that two rival
trade marks would be sold by such a licensed dealer and would not
be available in any other shop. The fact that the vendor would be a
licensed dealer also reduced the possibility of confusion to a
considerable extent.

428 AIR 1970 SC 2062

539
1.4 If one examines the Judgment of Hon’ble Supreme Court, it
appears that the Supreme Court has relied upon some of the
English Cases. However, researcher I must point out that there are
previous Judgments of Supreme Court i.e.

(1) Amritdhara Pharmacy v. Satya Dev Gupta.429

(2) Kaviraj Pandit Drugs Dutt Sharma Vs. Navratna

Pharmaceutical Laboratories. These two Judgments are a Three
Judge Bench Judgment, dealing with pharmaceutical products. It
appears that the contention of the Supreme Court was not invited to
these binding decisions of the Supreme Court. (If one examines
Amritdhara Pharmacy Vs. Satya Dev Gupta case and Kaviraj
Pandit Drugs Dutt Sharma Vs. Navratna Pharmaceutical
Laboratories case).

Ratio of Amritdhara Case430

1.5 If one examines the Judgement of Amritdhara Pharmacy Vs. Satya

Dev Gupta case, then the Hon’ble Supreme Court has relied upon
some of the English Judgments and Kerly on Trade Marks and
earlier Judgment of Supreme Court on Com Products Refining Co.
Vs. Shangrila Food Products Ltd.* and ultimately the Supreme
Court in Amrathdhar case have held that “the question has to be
approached from the point of view of a man of average intelligence
and imperfect recollection. To such a man then overall structural
and phonetic similarity of the two names ‘Amritdhara’ and
‘Lakshmandhara ’ is, in our opinion, likely to deceive or cause
confusion. We must consider the overall similarity of the two
composite words Amritdhara and Lakshmandhara. We do not
429 AIR I960 SC 142
430 AIR 1960 SC 449

540
 think that the learned judges of the High Court were right in saying
that no Indian would mistake one for the other. An unwary
purchaser of average intelligence and imperfect recollection would
not, as the High Court supposed, split the name into its component
parts and consider the etymological meaning thereof or even
consider the meaning of the composite words as current of nectar
or current of Lakshman. He would go more by the overall
structural and phonetic similarity and the nature of the medicine
he has previously purchased or has been told about or about which
has otherwise learnt and which he wants to purchase. "(Para 8 P
455)431

1.6 In Amritdhara case, the Supreme Court further held that “A critical
comparison of the two names may disclose some point of
difference but an unwary purchaser of average intelligence and
imperfect recollection would be deceived by the overall similarity
of the two names having regard to the nature of the medicine he is
looking for with an some what vague recollection that he had
purchased a similar medicine on a previous occasion with a
similar name. ” (Para 9 P. 455)

1.7 This above principle has (Which was binding to SC) also not been
considered and followed by the Supreme Court in the case of
‘Dropovit’ and ‘ Protovit\

1.8 Researcher must consider the fact that the Supreme Court has held
that there is an overall similarity between two names in respect of
the same description of goods and likely to cause deception and
confusion within the provisions of the Trade Mark Act. Researcher

431 AIR 1965 SC 980 (Navratn Case)

541
 must also mention that case High Court Allahbad has held that both
are not deceptive similar and the Supreme Court has reverse the
view and held that both words are deceptively similar.

2 If one examines Navratna Pharmaceutical432 case, in that case

which also deal with pharmaceutical product, three Judge Bench of
Supreme Court, (wherein para 28 on Page 989 and 990) in
Navratna’s case, the Supreme Court has held that “where the
similarity between the plaintiffs and the defendant’s mark is so
close either visually, phonetically or otherwise and the court
reaches the conclusion that there is an imitation, no further
evidence is required to establish that the plaintiffs rights are
violated. Expressed in another way, if the essential features of the
trade mark of the plaintiff have been adopted by the defendant, the
fact that the get up, packing and other writing or marks on the
goods or on the packets in which he offers his goods for sale show
marked differences, or indicate clearly a trade origin different
from that of the registered proprietor of the mark would be
immaterial. ”

2.1 In para 29 on page 990, the Supreme Court has held that When
once the use by the defendant of the mark which is claimed to
infringe the plaintiffs mark is shown, to be ‘in the course of trade’,
the question whether there has been an infringement is to be
decided by comparison of the two marks. Where the two marks are
identical, no further questions arise, for then the infringement is
made out. When the two marks are not identical, the plaintiff
would have to establish that the mark used by the defendant so
nearly resembles the plaintiffs registered trade mark as is likely to

432 AIR 1965 SC 980

542
deceive or cause confusion and in relation to goods in respect of
which it is registered. A point has sometimes been raised as to
whether the words ‘or cause confusion’ introduces any element
which is not already covered by the words ‘likely to deceive’ and it
has some times been answered by saying that it is merely an
extension of the earlier test and does not add very materials to the
concept indicated by the earlier words ‘likely to deceive’ ‘But this
apart, as the question arises in an action for infringement the onus
would be on the plaintiff to establish that the trade mark used by
the defendant in the course of trade in the goods in respect of
which his mark is registered, is deceptively similar. This has
necessarily to be ascertained by a comparison of the two marks the
degree of resemblance which is necessary to exist to cause
deception not being capable of definition by laying down objective
standards. The persons who would be deceived are, of couse, the
purchasers of the goods and it is the likelihood of their being
deceived that is the subject of consideration. The resemblance may
be phonetic, visual or in the basic idea represented by the
palintiff s mark. The purpose of the comparison is for determining
whether the essential features of the plaintiffs trade mark are to be
found in that used by the defendant. The identification of the
essential features of the mark is in essence a question of fact and
depends on the judgment of the court based on the evidence led
before it as regards the trade. It should however be borne in mind
that the object of the enquiry in ultimate analysis is whether the
mark used by the defendant as a whole is deceptively similar to
that of the registered mark of the plaintiff

543
 “it should, however, be borne in mind that the object of the enquiry
in ultimate analysis is whether the mark used by the defendant as a
whole is deceptively similar to that of the registered mark of the
plaintiff.”

2,2 If one consider the aforesaid principles, then the aforesaid

principles have also not been considered and followed by the
Supreme Court in ‘Dropovit’ and ‘Protovit’ case. These were two
Judgments in relation to pharmaceutical product.

3 The Researcher may also state that over and above, there were also
other Judgments of the Supreme Court which have laid down
important principles of infringement and passing off under the
provisions of the Trade Mark Act, ie. Non-Pharmaceutical Product
viz. Com Products Refining Co. v. Shangrila Food products Ltd.433
hereinafter we consider it ‘Gluvita’ or ‘Glucovita’). There also, the
Supreme Court, after relying upon Kerly Trade Mark Law in para
17 on Page 147, has held that marks have been considered as a
whole.

The other principle has been stated in para 18 on Page 147 is that
“Again, in deciding the question of similarity between then two
marks we have to approach it from the point of view of a man of
average intelligence and of imperfect recollection. To such a man,
the overall structural and phonetic similarity and the similarity of
the idea in the two marks is reasonably likely to cause a confusion
between them.” “Again, in deciding the question of similarity of
similarity between then two marks we have to approach it from the
point of view of a man of average intelligence and of imperfect

433 AIR I960 SC 142

544
 recollection. To such a man, the overall structural and phonetic
similarity and the similarity of the idea in the two marks is
reasonably likely to cause a confusion between them”.

3.1 In para 21 on Page 148, it has been stated that “we are therefore of
opinion that the commodities concerned in the present ease are so
connected as to make confusion or deception likely in view of the
similarity of the two trade marks. We think that the decision of
Desai. J was right.”

3.2 If we examine the ‘Dropovit’ and ‘Protovit’ case, this principle has
also not been considered by the Supreme Court.

4 If we consider the Judgment of K.R. Krishna Chettiar Vs. Sri

Ambal and Co., 434 in that case, the Supreme Court was concerned
with the word ‘AndaP and ‘Shri Ambal’ in connection with the
non-pharmaceutical product (Snuff) There is a striking similarity
and affinity of sound between then words ‘AndaT and ‘Ambal’
Giving due weight to the judgment of the Registrar and bearing in
mind the conclusions of the learned single judge and the Division
Bench, we are satisfied that there is a real danger of confusion
between the two marks. In Para 10 Supreme court observed The
resemblance between then two marks be considered with reference
to the ear as well as the eye. There is a close affinity of sound
between Ambal and Andal

In that context, the Supreme Court held that the resemblance of

‘AndaT and ‘Ambal’. This principle has also not been considered
and followed by the Supreme Court in ‘Dropovit’ and ‘Protovit’
case.

434 AIR 1970 SC 146

545
5 Another judgment is in the case of Ruston and Horby v..
Zamindara Engg. Co.435 In that case, the Supreme Court was
concerned with Word ‘Ruston’ and ‘Rustam India’. There the
Supreme Court has held that “if the respondent’s trade mark is
deceptively similar to that of the appellant, the fact that the word
‘India’ is added to the respondent’s trade mark is of no
consequence and the appellant is entitled to succeed in its action
for infringement of its trade mark.” The Supreme court further In
an action for infringement where the defendant’s trarde mark is
identical with the plaintiffs mark, the Court will not inquire
whether the infringement is such as is likely to deceive or cause
confusion. But where the alleged infringement consists of using not
the exact mark on the register, but something similar to it the test
of infringement is the same as in an action for passing ff. in other
words, the test as to likelihood of confusuion or deception arisng
from similarity of marks is the same both in infringement and
passing off actions.”

5.1 If Researcher examine the ‘Dropovit’ and ‘Protovit’ case, all these
five Judgments which were available with the Supreme Court, the
attention of the Supreme Court was not invited to all these binding
decisions. The Researcher also pointed out the principles laid down
by the Hon’ble Supreme Court in all these cases. Were not
consider by SC in the ‘Dropovif and ‘Protovif. Word ‘Dropovit’
and ‘Protovit’ is not deceptive similar. With profound respect to
Supreme Court, if the Supreme Court would have assistance to all
these cases, in my humble view, the Supreme Court must have
decided differently. In my view, therefore, the decision of the

435 AIR 1970 SC 1649

546
 Supreme Court in ‘Dropovit’ and ‘Protovit’ case may be placed
before the larger bench so that the larger bench can consider all
these judgments and decide correctly, in light of previous
decisions.

6 Another aspect which we have to consider is that as far as the

‘Dropovit’ and ‘Protovit’ case is concerned, it was decided in
1970. Subsequently, we have another three judge judgments of the
Apex Court in the case of Cadila Healthcare v. Cadila
Pharmaceutical Laboratories a (three Judge bench judgment) of
Supreme Court, wherein the Supreme Court has considered as to
whether word ‘Falcitab’ was deceptively similar to word ‘Falcigo’.

In Cadila Health case Ltd v. Cadila Pharmaceuticals Ltd,436 The

question was that when the appellant filed suit against the respondent, the
medicine was sold under trade name Falcitab; whereas the medicine sole
by the respondent which according to the appellant, was under brand
name similar to the drug being sold by bit under its brand name ‘Falcigo’.
The trial court did not grant interim injunction. On appeal before the High
Court, High Court confirmed that view. This is how appeal was filed
before the Supreme Court. If we examine the judgment of the Supreme
Court, it has considered the judgment of the apex court in (National
Sewing Tread Co) 437in Para 12 (page 1956). In Para 13 ( page 1956), it
considered the judgment in Com Products,438 In Para 14 (page 1957), it
considered Amritdhara case. In Para 15(z) (page 1958), it considered the
Durgaprasad Dutt Sharma case. In Para 16 (page 1959), it considered the
case of F.Hoffmann-La Roche and Co. v. Geoffrey Manner and Co,439

436 AIR 2001 SC 1952.

437 AIR 1953 357
438 AIR 1960 SC 142.
439 SCC 716: AIR 1970 SC

547
(1969(2) 2062 and after considering that judgment, in Para 16 (page
1960), the apex court observed as under:

“On the facts of that case, this court came to the conclusion that
taking into account all circumstances, the words ‘Protovit’ and
‘Dropovit’ were so dissimilar that there was no reasonable
probability of confusion between the words either from visual or
phonetic point of view”.

In Para 19 (page 1961), the Supreme Court specifically disapproved the

view of Dyechem case. In para 20. (Page 1962), again the Supreme
Court considered Dyechem case and observed as under:

“20. These observations appear to us to be contrary to the decision of this

court in Amritdhara’s case, where it was observed that the products will
be purchased by both villagers and town folk, literate as well as illiterate
and the question has to be approached from the point of view of a man of
average intelligence and imperfect recollection. A trade may relate to
goods largely sold to illiterate or badly educated persons. The purchaser
in India cannot be equated with a purchaser of goods in England. While
we agree that in trade mark matters, it is necessary to go into the question
of comparable strength, the decision on merits in Dyechem case, does
not, in our opinion, lay down correct law and we hold accordingly”.

In Paras 21 to 35, the Supreme Court observed as under:

“21. It will be useful to refer to some decisions of American courts

relating to medicinal products. In the case of American Cynamid
Corporation v. Connaught Laboratories Inc.440, it was held as under:

440 231 USPQ 128 (2nd Cir 1986

548
“Exacting judicial scrutiny is required if there is a possibility of confusion
over marks on medicinal products because the potential harm may be far
more dire than that in confusion over ordinary consumer products’.”

“22. It may here be noticed that schedule 'H’ drugs are those which can
be sold by the chemist only in then prescription of the doctor but schedule
X’ drugs are not sold across the counter but are sold only to the hospitals
and clinics. Nevertheless, it is not uncommon that because of lack of
competence or otherwise, mistakes can arise especially where the
trademarks are deceptively similar. In Blanseti pharmaceuticals Co.v.
Carmike Laboratory Inc.44’it was held asunder:

‘Confusion and mistake is likely even for prescription drugs prescribed

by doctors and dispensed by pharmacists, where these similar goods are
marketed under marks which look alike and sound alike’.

“23. In the case of Glenwood Laboratories Inc. v. American Home

Products Corp,442 the Court of the United State had held that-

'The fact that confusion as to prescription drugs could produce harm a

contrast to confusion with respect to non-medicinal products as an
additional consideration of the Board as is evident from that portion of
the opinion in which the Board stated... ’ The products of then parties are
medicinal and applicant’s product is contraindicated for the disease for
which opponent’s product is indicated. It is apparent that confusion or
mistake in filling a prescription for either product could produce harmful
effects. Under such circumstances, it is necessary for obvious reasons, to
avoid confusion or mistake in the dispensing of the pharmaceuticals’.

441 25 USPQ, 2nd 1473, (TTAB 19930)

442 173 USPQ 189 (1972) 455 F. Reports 2d. 1384 (1972),

549
The Board’s view that a higher standard be applied to medicinal products
finds support in previous decisions of this Court, Cilliton v. Plough443
(‘It is necessary for obvious reasons, to avoid confusion in the dispensing
of pharmaceuticals’). Campbell Products Inc. v. John Wyeth and Bro.
Inc444 it seems to us that where ethical goods are sold and careless use is
dangerous, greater care should be taken in the use of registration of trade
marks to assure that no harmful confusion results’.)

“24. In the case of R.J.Stasenburgh Co. v. Kenwood Laboratories,

Inc.445 as noted in the decision of Morgensgtem Chemical Company’s
case (supra), it had been held that-

‘Physicians are not immune from confusion or mistake. Furthermore it is

common knowledge that many prescriptions are telephoned 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 filing the prescription if the marks appear
too much alike when handwritten or sound too much alike when
pronounced’.

“25. The drugs have a marked difference in the compositions with

completely different side effects, the test should be applied strictly as the
possibility of harm resulting from any kind of confusion by the
consumer can have unpleasant if not disastrous results. The courts need to
be particularly vigilant where the defendant’s drug, of which passing off
is alleged, is meant for curing the same ailment as the plaintiffs medicine
but the compositions are different. The confusion is more likely in such
case and the incorrect intake of medicine may even result in loss of life or

443 341, F.2d. 934,936,52,CCPA 1045,1047,(1965)

444 (143 F 2d 977,979,31 CCPA 1217 (1944)
445 (1955) 106 USPQ 379

550
other serious health problems. In this regard, reference may usefully be
made to the case of Glenwood Laboratories Inc. v. American Home
Products Corp.446 where it was held as under:

‘The products of the parties are medicinal and applicant’s product is

contraindicated for the disease for which opponent’s product is indicated.
It is apparent that confusion or mistake in filling a prescription for either
product could produce harmful effect. Under such circumstances, it is
necessary for obvious reasons, to avoid confusion or mistake in
dispensing of the pharmaceuticals’.

“26. It was further submitted on behalf of the appellant that although

then possibility of confusion in a drug being sold across the counter may
be higher, the fact that a drug is sold under prescription or only to
physicians cannot by itself be considered a sufficient protection against
confusion. The physicians and pharmacists are trained people yet they are
not infallible and in medicines, there can be no provisions for mistake
since even a possibility of mistake may prove to be fatal”.

“27. As far as present case is concerned, although both the drugs are
sold under prescription but this fact alone is not sufficient to prevent
confusion which is otherwise likely to occur. In view of the varying
infrastructure for supervision of physicians and pharmacists of medical
profession in our country due to linguistic, urban, semi urban and rural
divide across the country and with high degree of possibility of even
accidental negligence, strict measures to prevent any confusion arising
from similarity of marks among medicines are required to be taken”.

446 173 USPQ, 19 (1972) 455 F reported in 2d. 1384 (1972)

551
“28. Here, it will be useful to refer to the decision of Morgenstem
Chemical Company’s case (supra) where it has been held as under”

‘(5) In the field of medical products, it is particularly important that great

care be taken to prevent any possibility of confusion in the use of trade
marks. The test as to whether or not there is confusing similarity in these
products, even if prescribed and dispensed only by professionally trained
individuals does not hinge on whe3ther or not the medicines are designed
for similar ailments. The rule enunciated by Judge Helen in Cole
Chemical Co. v. Cole Laboratories,447 is applicable here:

‘Plaintiff and defendant are engaged in the sale of medical preparations.

They are for ultimate human consumption or use. They are particularly
all for ailments of the human body. Confusion in such products can have
serious consequences for the patient. Confusion in medicines must be
avoided.

‘Prevention of confusion and mistakes in medicines is too vital to be

trifled with’.

The observations made by Assistant Commissioner Leeds of the Patent

Office in R.J. Strasenburg co. v. Kenwood Laboratories Inc. 448 are
particularly apt, that-

‘Physicians are not immune from confusion or mistake. Furthermore it is

common knowledge that many prescriptions are telephoned 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 filing the prescription if the marks appear

447 D. C. Mo. 1954, 118F, Suppl, 612, 616,617,101, USPQ 44,47,48

448 1955, 106 USPQ 379, 380

552
too much alike when handwritten or sound too much alike when
pronounced’.

The defendant concedes that physicians and pharmacists are not infallible
but urges that the members of these professions are carefully trained to
detect differences in the characteristics of pharmaceutical products. While
this is doubtless true to dos not open the door to the adoption by
manufacturers of medicines of trademarks or names which would be
confusingly similar to anyone not exercising such great case. For
physicians and pharmacists are human and in common with the rest of
mankind are subject to human frailties. In the field of medicinal remedies
the courts may not speculate as to whether there is a probability of such
confusion in the case of medicines public policy requires that the use of
the confusingly similar name be enjoined (see Lambert Pharmacol Ltd
v. Bolton Chemical Corporation).449 “29. In the book titled as McCarthy
on Trade Marks, it is observed in the footnote at pages 23-70 as under:

‘Physicians and pharmacists are knowledgeable in their fields does not

mean they are equally knowledgeable as to marks and immune from
mistaking one mark from another’ (Schering Corp v. Alze Corp.450

“30. In the case of Syntex Laboratories v. Norwich Pharmacal Co. 451 it

is observed as under:

‘Stricter standard in order to prevent likelihood of confusion is desirable

where involved trademarks are applied to different prescription
pharmaceutical products and where confusion results in physical harm to
consuming public’.

449 DCNY 1915,219 F 325-326)’.

450 207 USPQ 504 (TTAAB 1980)
451 169 USPQ 1 (2nd Cr. 1971)

553
“31.Trade mark is essentially adopted to advertise one’s product and to
make it known to the purchaser. It attempts to portray the nature and, if
possible, the quality of the product and over a period of time the mark
may become popular. It is usually at that stage that other people are
tempted to pass off their products as that of the original owner of the
mark. That is why it is stated that in a passing off action, the plaintiffs
right is against the conduct of the defendant which leads to or is intended
or calculated to lead to deception. Passing off is said to be a species of
unfair trade competition or of actionable unfair trading by which one
person, through deception, attempts to obtain an economic benefit of the
reputation which other gas established for himself in a particular trade or
business. The action is regarded as an action for deceit, (see Wander Ltd
v. Antox India Pvt Ltd.)452

“32. Public interest would support lesser degree of proof showing

confusing similarity in the case of trade mark in respect of medicinal
product as against other non-medicinal products. Drugs are poisons, not
sweet. Confusion between medicinal products may, therefore, be life
threatening, not merely inconvenient. Nothing the frailty of human nature
and the pressures placed by society on doctors, there should be as many
clear indicators as possible to distinguish two medicinal products from
each other. It is not uncommon that in hospitals, drugs can be requested
verbally and/or under critical/ pressure situations. Many patients may be
elderly, infirm or illiterate. They may not be in a position to differentiate
between the medicine prescribed and bought which is ultimately handed
over to them. This view finds support from McCarthy on Trade Marks-
3rd edition, Para 23.12 of which reads as under:

452 1990 Suppl. SCC 727”.

554
“The tests of confusing similarity are modified when the goods involved
are medicinal products. Confusion of source or product between
medicinal products may produce physically harmful results to purchasers
and greater protection is required than in the ordinary case. If the goods
involved are medicinal products each with different effects and designed
for even subtly different uses, confusion among the products caused by
similar marks could have disastrous effects. For these reasons, it is proper
to require a lesser quantum of proof of confusing similarity for drugs and
medicinal preparations. The same standard has been applied to medical
products such as surgical sutures and clavicle splints”.

“33, The decisions of English courts would be relevant in a country

where literacy is high and the marks used are in the language which the
purchaser can understand. While English cases may be relevant in
understanding the essential features of trademarks law but when we are
dealing with the sale of consumer items in India, you have to see and bear
in mind the difference in situation between England and India. Can
English principles apply in their entirety in India with no regard to Indian
conditions? In a country like India where there is no single common
language, a large percentage of population is illiterate and a small
fraction of people know English, then to apply the principles of English
law regarding dissimilarity of the marks or the customer knowing about
the distinguishing characteristics of the plaintiffs goods seems to
overlook the ground realities in India. While examining such cases in
India, what has to be kept in mind is the purchaser of such goods in India
who may have absolutely no knowledge of English language or of the
language in which the trade mark is written and to whom different words
with slight difference in spellings may sound phonetically the same.
While dealing with cases relating to passing off, one of the important

555
tests which has to be applied in each case is whether the
misrepresentation made by the defendant is of such a nature as is likely to
cause an ordinary consumer to confuse one product for another due to
similarity of marks and other surrounding factors. What is likely to cause
confusion would vary from case to case. However, the appellants are
right in contending that where medicinal products are involved, the test to
be applied for adjudging the violation of trade mark law may not be at par
with case involving non-medicinal products. A stricter approach should
be adopted while applying the test to judge the possibility of confusion of
one medicinal product for another by the consumer. While confusion in
the case of non-medicinal products may only cause economic loss to the
plaintiff, confusion between two medicinal products may have disastrous
effects on health and in some cases life itself. Stringent measures should
be adopted especially where medicines are the medicines of last resort as
any confusion in such medicines may be fatal or could have disastrous
effects. The confusion as to the identity of the product itself could have
dire effect on the public health”.

“34. Keeping in view the provision of section 17B of the Drugs and
Cosmetics Act, 1940 which inter alia indicates as imitation or
resemblance of another drug in a manner likely to deceive being regarded
as a spurious drug, it is but proper that before granting permission to
manufacture a drug under a brand name the authority under that Act is
satisfied that there will be no confusion or deception in the market. The
authorities should consider requiring such an applicant to submit an
official search report from the Trade Mark office pertaining to the trade
mark in question which will enable the drug authority to arrive at a
correct conclusion”.

556
“35. Broadly stated in an action for passing off on the basis of
unregistered trade mark generally for deciding the a 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
trademarks.
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”.

In view of this judgment in Cadila case, it appears that decision in Cadila

case and the principle laid down therein though Dropovit and Protovit
case has not been reversed, in fact, the Supreme court in the facts of the
case held that words were not deceptively similar. But the principle on
which in F.Hoffmann’s case, it is held that Dropovit and Protovit are not

557
deceptively similar, they have dissected the words; whereas, the clear
principle is that you have to use the mark as a whole. Secondly, it has
been sold under doctor’s prescription. As far as doctor’s prescription is
concerned, Cadila case has clearly set out contrary to what is set out in
Dropovit and Protovit case. So, in that context, Dropovit and Protovit
case is partly over-ruled by Cadila case. This is one of the reasons why
Dropovit and Protovit case requires reconsideration.

Note: What is to be now consider?

Question will have be considered that in view of three judge Bench

judgment of the Supreme Court, whether the principle laid down in
F.Hofmann LA Roche case has to be considered good law.

The observations Cadila Case make it clear that the Supreme Court
has approved the principle of ‘Dropovit’ and ‘Protovit’ only factually
right. The legal principle laid down by the Supreme Court in ‘Dropovit’
and ‘Protovit’ has not been approved by the Supreme Court in Cadila
case and to that extent, one can say that the legal principle of ‘Dropovit’
and ‘Protovit’ have not been legally approved and accepted by the
Supreme Court in Cadila case.

The other important principle which the Supreme Court in

‘Dropovit’ and ‘Protovit’ case have decided that they are pharmaceutical
product and Schedule-H drug and they can be sold only by prescription of
the Doctor. Even manufacture of drugs can be only by Licensed Dealer.
These were two relevant factors on which the Supreme Court has held the
word ‘Dropovit’ and ‘Protovit’ were not deceptive in similarity.

In that context, if we examine the Cadila case, particularly when

Supreme Court has considered pharmaceutical product, the Supreme
Court has considered various English cases, American Cases and we have

558
started hearing the Cadila Case right from para
21,22,23,24,25,26,27,28,29,30,31 and 32, the Supreme Court has made
critical examinations and ultimately in para 32, the Supreme Court has
made this pertinent observation that “The tests of confusing similarity are
modified when the goods involved are medicinal products. Confusion of
source or product between medicinal products may produce physically
harmful results to purchasers and greater protection is required than in
the ordinary case. If the goods involved are medicinal products each with
different effects and designed for even subtly different uses. Confusion
among the products caused by similar marks could have disastrous
effects. For these reasons, it is proper to require a lesser quantum of
proof of confusing similarity for drugs and medicinal preparations. The
same standard has been applied to medical products such as surgical
sutures and clavicle splints. ”

These observations are also countarary to and inconstant with the

principle laid down by the Supreme Court in ‘Dropovit’ and ‘Protovit’
case. In the humble view of the Researcher also, the subsequent
judgments also, Researcher has to now consider that Judgment of
‘Dropovit’ and ‘Protovit’ may require reconsideration also at the same
judgment be placed before the larger bench for further consideration by
principle laid down by Cadila case.

Similarly the dropovit & protovit case has be placed before the
larger bench.

559
CONCLUSION: AIR/2000 SC 2114 SM Dyehem Case (Arising out of
Gujarat High Court Judgement 2000(1) GLR 680

The facts of S.M. Dyechem Ltd. are (taken from High Court Judgement)-

1. “Plaintiff, S.M. Dyechem Limited, is a Public Limited Company

incorporated under the provisions of the Companies Act and is
carrying on their business of manufacturing and marketing of
chemicals and chemical products and food products, including
ready-to-eat snacks, such as potato crisps, potato chips, potato
wafers, com puffs, preparations made from rice and rice flour,
preparations made from cereal, etc.”
1.1 “Defendant, Cadbury India Limited, is also a Public Limited
Company incorporated under the provisions of the
Companies Act and is carrying on business of manufacturing
and selling chocolate preparations/wafer biscuits, snacks,
etc.”

1.2 “In 1988, the plaintiff started business in the field of

processing of food products, more particularly known as
ready-to-eat snacks as mentioned hereinabove in their food
division known as “SM Foods”. In 1989, the plaintiffs said
division developed and adopted a trade mark, in the name
and style of “PIKNIK", in relation to ready-to-eat snacks
processed by them.”

1.3 “After adoption of the said trade mark “PIKNIK”, the

plaintiff commenced use of the said trade mark in relation to
ready-to-eat snacks processed by them and marketed the
goods in the name and style of “PIKNIK”.”

560
1.4 “The plaintiff is the lawful proprietor of the said trade mark
since February, 1989 and, therefore, on 17.2.1989 the Food
Division of the plaintiff applied for registration of a label
mark, containing the word “PIKNIfC\ under the Act, in
Class 29 in respect of preserved, dried and cooked fruits and
vegetables, etc. under Application No. 50553IB. The
plaintiff also applied for registration of the said trade mark
in Class 30 in respect of tea, coffee, etc. under Application
No. 505532. The plaintiff also applied for registration of the
said trade mark in Class 32 in respect of beverages, beers,
mineral and aerated waters, soda water, etc. under
Application No. 505533.”

1.5 “The aforesaid three applications were processed and

pursuant to the orders passed by the Registrar of Trade
Marks, the plaintiff became the registered proprietor of said
trade mark “PIKNIfC' under Nos. 50553IB, 505532 and
505533 in Classes 29, 30 and 32 respectively. Since the
plaintiff became the proprietor of the said trade mark, they
are entitled to use exclusively the said trade mark in relation
to the aforesaid goods and the plaintiff has a right to restrain
others from using the same and/or similar trade mark.”

1.6 The plaintiffs attention was drawn on a food product, being

a chocolate preparation/wafer biscuits, snacks marketed
under the trade mark “PICNIC” purported to be
manufactured by the defendant i.e. Cadbury Ltd. As the
trade mark used in respect of the goods being an eatable and
was similar to the plaintiffs trade mark, which was also used
for eatables, and the same was violating the rights of the

561
plaintiff in respect of the said trade mark “PIKNIK”, the
plaintiff, through their trade mark attorney, caused a letter
dated 16-3-1998, to be addressed to the defendant, recording
some of the above said facts and calling upon the defendant
to cease and desist from the use of the trade mark ‘PICNIC5
in relation to the impugned goods forthwith. The plaintiff
also informed that the plaintiff is the registered proprietor of
the said trade mark “PIKNIK” in relation to chocolate,
biscuits and other foods products and, therefore, the use of
the trade mark “PICNIC” by the defendant in respect of
their chocolates, etc. was infringing the rights of the plaintiff
in respect of the said trade mark “PIKNIK”. The plaintiff
also called upon the defendant to pay Rs.3 crores towards the
damages in addition to the notice charges.

In spite of the plaintiff calling upon the defendant to

discontinue the use of the impugned trade mark, the
defendant has continued to use the same and the defendant
has failed and neglected to comply with the requisitions
contained in the letter dated 16.3.1998 issued by the
plaintiffs trade mark attorney and they have continued to
openly advertise and sell the impugned goods under the
plaintiffs trade mark.

In view of the same, the plaintiff filed a suit for perpetual

injunction to restrain the defendant from in any manner
using the trade mark “PICNIC” in relation to chocolates,
chocolate preparation, etc. or any other trade mark which is
deceptively or confusingly similar in the manner whatsoever
to the plaintiffs trade mark “PIKNIK” so as to infringe the

562
 plaintiffs trade mark “PIKNIK” registered under No.
505532.

1.8 The defendant hotly defended to file the said suit filed by
Plantiff.

1.9 The learned Trial Court Judge, after considering the

submissions advanced by learned advocates for both the
parties and after appreciating the documents produced before
him and on the facts emerging from the record of the case so
also considering the case law relied upon by the learned
advocates for both the sides, has allowed the application
No.6, notice of motion, by granting injunction as prayed for
in favour of the plaintiff by holding that the plaintiffs trade
mark is registered, the plaintiff has a prima facie case and
balance of convenience also tilted in favour of the plaintiff
and if the injunction as prayed for is not granted the plaintiff
is likely to suffer irreparable loss and its reputation and
resultantly the learned trial Judge has restrained the
defendant by issuing temporary injunction from using the
plaintiffs trade mark in relation to the chocolate, chocolate
preparations, etc., so that there may not be any infringement
to the plaintiffs trademark “PIKNIK” and also restrained
the defendant from passing off the defendant’s goods as and
for that of the plaintiff. It is this finding and resultant order
which is now impugned before Gujarat High Court at the
instance of the defendant.

1.10 Being aggrieved and dissatisfied with the said order,

Cadbury India Limited filed an appeal from Order No.203 of

563
1999 with Civil Application Nos. 4743 and 7428 of 1999 for
stay of the Trial Court Order before Gujarat High Court.

The said appeal order was heard by the learned single Judge
of Gujarat High Court (A.M. Kapadia, Judge). The learned
single Judge, after going through all these findings on
record, pleased to observe as under:

The Judgment learned single Judge is reported in 2000(1)

GLR 680.

The Learned Judge had (Para 18 on 691) “There cannot be

two opinion with regard to the proportion of law that while
comparing mark essential feature must be seen and so far as
the plaintiffs trade mark is concerned, the word PIKNIK
cannot be called essential feature. It is the script of a word
along with a caricature of a little boy which is the essential
feature of the trade mark, and the therefore, the plaintiff
cannot place reliance on the mere word PIKNIK and claim
infringement. In the caseof Corn Products (supra), which is
relied upon by learned advocate Mr. Vakil, the Hon’ble
Supreme Court has held that it is well recognized that in
deciding a question of similarity between two marks, the
marks have to be considered as a whole. ”

In para 20 on page 692, “The plantiff s trade mark is a label

having script PIKNIK with caricature of alittle boy above it
and it is marketing the goods i.e., potato chips and potato
wafers in a polythene pouch. The plaintiff has registered the
trade mark under Class 30 and chocolates are also included
under the said class. Defedant in marketing Cadbury

564
 chocolates are also included under the said class. Defedant in
marketing Cadbury chocolates under the trade label
Cadbury’s PICNIC and marketing the same in polythene
pouch. It is, therefore, clear that both the articles are
different. It is also equally true that the defendant is not
using their label, that is, having a caricature of a little boy.
Therefore, there is absolutely no similarity in product, label
and the pouch of plaintiff and defendant which is likely to
deceive or cause confusion in the mind of common buyer.
Therefore, no action of infringement of the plaintiffs Trade
Mark is committed by the defendant.

(Para 40 of page 699 of GLR)

1.11 In view of the discussion made in the foregoing paragraphs,

following aspects are high-lighted:

(i) Plaintiffs trade mark having a label containing the word

‘PIKNIK’ written in a particular script and manner with a
caricature of a little boy above it though registered having a
phonetic similarity to the word found in dictionary word
picnic
(ii) The word PIKNIK on that label is neither invented nor
distinctive word and it is also not an essential feature of the
plaintiffs trade mark which is a label. Therefore, no action
for infringement against the defendant can lie.
(iii) Since registration which is granted to the plaintiff is a label
mark such registration does not prevent any one from using
the dictionary word Picnic with respect to its goods and
therefore also no action of infringement would take place.

565
(iv) The articles manufactured and marketed by both the plaintiff
and defendant are different and therefore also no action of
infringement would arise.
(v) So far as passing off is concerned, both the products are
different, labels are different and, therefore, no scope of
confusion or deception in the mind of common buyer.
Therefore, there is no scope ofpassing off the goods of the
defendant as andfor that of the plaintiff.
(vi) Since there is no infringement, there is no prima facie case.
(vii) In view of the new formula elucidated in the case of
American Cyanamid (supra) balance of convenience is tilted
in favour of the defendant. If it appears that the damages
awarded at the trial will adequately compensate the plaintiff
and the defendant is likely to be able to pay, then,
interlocutory should not normally be granted. Applying this
principle to the present case, it appears to me that to grant
an injunction will be to cut off for good the road to
commercial success of a business competitor. In the event of
the plaintiff’s success damages will be an adequate remedy.
The defendant’s financial position to pay damages has not
been questioned before me and they are prepared to give an
undertaking. Therefore, the balance of convenience lies in
favour of refusing the interlocutory relief that is sought.
1.12 Since Researcher is of the opinion in view of the discussion
made hereinabove, that there is no infringement action of the
trade mark of the plaintiff and no question of passing off the
goods of the defendant as and for that of the plaintiff and on
the facts and in the circumstances of the case no other
conclusion can be arrived at except the one reached by me,

566
 plaintiff is not entitled to discretionary remedy of injunction.
Seen in the above context, the conclusion arrived at by the
learned trial Judge is erroneous which is required to be
quashed and set aside by refusing injunction as prayed for
by the plaintiff

1.13 Being aggrieved and dissatisfied of the said Order, S.M.

Dyechem Limited filed an appeal before the Supreme Court
of India. The appeal was heard by the two Judge Bench of
the Apex Court.

2. The Hon’ble Supreme Court has dismissed the appeal of the S.M.
Dyechem Ltd. and pleased to confirm the judgment of the Gujarat
High Court. Judgment is reported in AIR 2000 SC 2114. However,
raised certain questions in para 10 on page 2118.
2.1 In para 21 on page 2121, the Hon’ble Supreme Court has
considered some of the English Judgments and observed as
under:

“Therefore, in trade mark matters, it is now necessary to go

into the question of ‘comparable strength’ of the cases of
either party, apart from balance of convenience. Point 4 is
decided accordingly.”

2.2 In para 31 on page 2123, the Supreme Court has also

considered some of the English Judgments. The Supreme
Court in para 31 on page 2123 has observed as under:

“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.

567
 Halsbury (3rd Ed. Para 992) also says: where there are

common elements to two or more marks, more regard mast

be paid to the parts that are not common parts cannot be
dis-regarded. (Coca Colal Co. of Canada Ltd. v. Pepsi Cola
Co. of Canada Ltd., (1942) 1 All ER 615 (PC.”

Thereafter, in para 33, the Supreme Court considered earlier

Supreme Court Judgments in Com Products Refining Co.v.
Shangrila Food Products Ltd., AAIR 1960 SC 142, Parle
Products (P) Ltd. v. J.P. and Co., Mysore, AIR 1972 SC
1359, and Ruston and Hornsby Ltd. v. Zamindara
Engineering Co., (1969) 2 SCC 727 : (AIR 1970 SC 1649)
and ultimately in para 34, the Supreme Court observed as
under:

“Broadly, under our law as seen above, it can be said that

stress is laid down on common features rather than on
differences on essential features, except for a passing
reference to a limited extent in one case.'’’’

2.4 In para 35 on page 2124 also, the Supreme Court observed

as under:

“It appears to us that this Court did not have occasion to

decide, as far as we are able to see, an issue where there
were also differences in essential features nor to consider the
extent to which the differences are to be given importance
over similarities. Such a question has arisen in the present
case and that is why we have referred to the principles of
English Law relating to differences in essential features

568
 which principles in our opinion are equally applicable in
our country.''''

2.5 Thereafter, the Supreme Court considered that if differences

in the two features are relevant, the next question is as to
what is the position on facts. In para 37 on page 2124, in
para 38 and para 39 on page 2125, the Supreme Court has
held as under:

(Para 37 p.2124) “The first question therefore is as to what,

on the facts, are the essential features of the plaintiffs mark?
It is clear that apart from the word PIKNIK, the essential
features are also the special script of these words in block
letters and the curve in which those words are inscribed and
the caricature of the boy with a hat occurring between the
words K and N on the plaintiffs mark. On the other hand,
the defendant’s mark contains the words PICNIC in a
straightline, the script is normal and the words ‘Cadbury’ are
written above the words PICNIC. Neither the peculiar script
nor the curve nor the boy with a hat are found in the
defendant’s mark. It is true that there is phonetic similarity
and use of the word PICNIC. But what is the effect of the
dissimilarities? ”

(Para 38 P2125) “This is the crucial part of the case. It is

here that sufficient care is to be taken in applying the
principles. In our opinion, in the present case, three tests to
which reference has been made above have to be applied.
The first one is this: Is there any special aspect of the
common feature which has been copied? The second test will

569
 be with reference to the mode in which the parts are put
together differently? That is to say whether the dissimilarity
of the part or parts is enough to mark the whole thing
dissimilar (Kerly Para 17.17 referred to above). The third
test is whether when there are common elements, one should
not pay more regard to the parts which are not common,
while at the same time not disregarding the common parts?
What is the first impression? ”

(Para 39 on P. 2126) “As to the first test, whether there are

any peculiar features of the common part which have been
copied, it is seen that the peculiar aspects of the common
features of PIKNIK namely the peculiar script and the curve
have not been copied; then, as to the second test, we have to
see the dissimilarity in the part or parts and if it has made the
whole thing dissimilar. Absence of the peculiar script in the
letters, the curve and the absence of the caricature of the boy
with a hat, in our view, have made the whole thing look
dissimilar. Then, as to the third test, the above three
dissimilarities have to be given more importance than the
phonetic similarity or the similarity in the use of the word
PICNIC for PIKNIK. That is how these three tests have to be
applied in this case. On first impression, we are of the view
that the dissimilarities appear to be clear and more striking
to the naked eye than any similarity between the marks.
Thus, on the whole, the essential features are different. ”

2.6 Thereafter, the Supreme Court considered the principle

regarding deceives and confusion, (Para 41, P.2125) also
considered the point of differences of the principles of

570
passing of an infringement, (Para 41, P.2126) also principle
regarding buyers’ ignorance and chances of deceives (Para
53, P.2127) as under:

(Para 53, P.2127) “As to scope of a buyer being deceived, in

a passing of action, the following principles have to be borne
in mind. Lord Romer, LJ has said in Payton & Co. v.
Snelling Lampard & CO., (1900) 17 RPC 48 that it is a
misconception to refer to the confusion that can be created
upon an ignorant customer. The kind of customer that the
courts ought to think of in these cases is the customer who
knows the distinguishing characteristics of the plaintiffs
goods, those characteristics which distinguish his goods
from other goods in the market so far as relatels to general
characteristics. If he does not know that, he is not a customer
whose views can properly be regarded by the Court. (See the
cases quoted in N.S. THREAD & Co. v. Chadwick & Bros.
AIR 1948 Madras 481, which was a passing off action). In
Schweppes’ case, Lord Halsbury said, if a person is so
careless that he does not look and does not treat the label
fairly but takes the bottle without sufficient consideration
and without reading what is written very plainly indeed up
the face of the label, you cannot say he is deceived.”

It would be noted that the aforesaid Judgments of Supreme

Court was again reconsidered by the Hon’ble Supreme Court
in the case of Cadila Health Care Ltd. v. Cadila
Pharmaceuticals Ltd. AIR 2001 SC 1952. In that case, the
question as to whether Trade Mark ‘Falcigo’ was
deceptively dissimilar to ‘Faleitab’.

571
2.7 In that context, the Supreme Court has laid down several
principles. However, for critical examination of S.M.
Dyechem Ltd.’s case, the Researcher is only confining the
observations made by the Hon’ble Supreme Court in
connection with the S.M. Dyechem’s case.

2.7 (a) In para 17 on page 1960, the Supreme Court has

considered S.M. Dyechem’s case. Particularly it has also
refereed to para 21, of all the S.M. Dyechem’s case, para 31
of S.M. Dyechem’s case, para 34 of S.M. Dyechem’s case
and para 35 of S.M. Dyechem’s case which researcher has
already produce earlier.

2.7 (b) After referring to those paras, Supreme Court in Para

18, P. 1961 of Cadila Case observed as under, “we are
unable to agree with the aforesaid observation in Dyechem’s
case (supra). As far as this Court is concerned, 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. This is
evident from the decisions of this Court in the cases of
National Sewing Thread Co. Ltd. ’s case (AIR 1953 SC 357)
(supra), Com Products Refining Company’s case (AIR 1960
SC 142) (supra). Having come to the conclusion, in our
opinion incorrectly, that the difference in essential features
is relevant, this Court in Dyechem’s case (supra) sought to
examine the difference in the two marks “Piknic” and
“Picnic”. It applied three tests, they being 1) is there any
special aspect of the common feature which has been

572
 copied? 2) mode in which the parts are put together
differently i.e. which the parts are put together differently i.e.
whether dissimilarity of the part or parts is enough to make
the whole thing dissimilar and 3) whether when there are
common elements, should one not pay more regard to the
parts which are not common, while at the same time not
disregarding the common parts? In examining the marks,
keeping the aforesaid three tests in mind, it came to the
conclusion, seeing the manner in which the two words were
written and the peculiarity of the script and concluded that
“the above three dissimilarities have to be given more
importance than the phonetic similarity or the similarity in
the use of the word PICNICfor PIKNIK?\

2.8 (in Para 19, P.1961 of Cadila) With respect, we are unable to
agree that the principle of phonetic similarity has to be
jettisoned when the manner in which the competing words
are written is different and the conclusion so arrived agt is
clearly contrary to the binding precedent of this Court in
Amritdhara’s case (AIR 1963 SC 449) (supra) where the
phonetic similarity was applied by judging the two
competing marks. Similarly, in Durga Dutt Sharma’s case
(AIR 1965 SC 980) (supra), it was observed that “in an
action for infringement, the plaintiff must, no doubt, make
out that the use of the defendant’s mark is likely to deceive,
but where the similarity between the plaintiffs and the
defendant’s mark is so close either visually, phonetically or
otherwise and the Court reaches the conclusion that there is

573
 a limitation, no further evidence is required to establish that
the plaintiffs rights are violated

2.9 Thereafter, in para 20, the Supreme Court has again referred
to para 53 of S.M. Dyechem’s case, which the Researcher
has already quoted earlier, after quoting that in para 20 on
page 1962.

2.9 (a) (Para 20, P.6192) Supreme Court observed as under “These
observations appear to us to be contrary to the decision of
this Court in Amritdhara’s case (AIR 1963 Sc449) (supral)
where it was observed that the products will be purchased by
both villagers and townfolk, literate as well as illiterate and
the question has to be approached from the point of view of
a man of average intelligence and imperfect recollection. A
trade may relate to goods largely sold to illiterate or badly
educated persons. The purchaser in India cannot be equated
with a purchaser of goods in England. While we agree that
in trade mark matters, it is necessary to go into the question
of comparable strength, the decision on merits in Dyechem’s
case, 2000 AIR SCW 2172: AIR 2000 SC 2114:2000 CLC
1338) (supra) does not, in our opinion, lay down correct law
and we hold accordingly.”

2.10 As far as the other observations are made, the Researcher

does not discuss the same in the present context, while
critically examining the S.M. Dyechem’s case. The
Researcher is of the view that in this case, the Trial Court
has granted injunction in favour of the plaintiff of S.M.
Dyechem’s case.

574
2.11 However, the first objection is that the Trial Court has
granted injunction in favour of plaintiff and against the
defendant, the Gujarat High Court while reversing the
judgment of the Trial Court did not properly exercise the
appellate Court Power has lade down by Supreme Court in
WANDER LTD. Vs. ANTOX INDIA P. LTD. 1990 (Supp)
Supreme Court Cases 727. In that case Supreme Court on
Para 14 on P.733 lade down principal regarding appellate
Court power which is as follows:

“The appeals before the Division Bench were against the

exercise of discretion by the Single Judge. 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 or 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 the court below if 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 could reasonably and in a judicial
manner the fact that the appellate court would have taken a

575
 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 (SCR 721)

“These principles are well established, but as has been

observed by Viscount Simon in Charles Osenton & Co. v.
Jhanaton2 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 is an
individual case” The appellate judgment does not seem to
defer to this principle.

In Researcher humble view, the Gujarat High Court has not

considered above principle, while reversing the Order of the
Trial Court Judge.

2.12 Second submission by the Researcher is that the Supreme

Court in three bench Judgment of the Apex Court in Cadila
Case has expressively overruled the observation made by
S.M. Dyechem in para 21, para 31, 34, and 35. In para 13
and 19 of Cadila’s case, it is also overruled in para 53, in
para 20 of the Cadila case.

2.13 The Researcher finds that in some case before the Trial
Court as well as High Court, the learned advocate cites the
judgment of the S.M. Dyechem’s case. At the same time, the
other side Advocate may not site Cadila case and thereafter,
the learned Trial Court as well as the learned High Court

576
 Judges relied upon S.M. Dyechem’s case and principle laid
down therein.

2.14 In that case, what will be the legal position of the said
Order? Secondly, same time the other side advocate sites
Cadila case. Therefore, the advocate for the said submission
that as far as S.M. Dyechem’s case is concerned, the
Supreme Court has only overruled para 31 to 35 of S.M.
Dyechem’s case and para 53 of the S.M. Dyechem’s case.
Therefore, other principles still good law and therefore, the
Trial Court and the High Court is duty bound to follow other
principles. In this situation there is a lot of confusion takes
place before the Trial Court as well as the High Court.

2.15 The Researcher is, therefore, of the view, if S.M. Dyechem’s

case may be placed before the larger bench of Supreme
Court, the larger bench of Supreme Court can consider all
the earlier judgments of Supreme Court as well as Cadila
case and settle the law as to whether still S.M. Dyechem’s
case is good law in part and bad in part to remove the
confusion, which is better that S.M. Dyechem’s case to be
placed before the larger bench.

8,3 SUGGESTION
The Supreme Court has partly reversed the judgment in the case of
S.M.Dyechem. Some of the observations in S.M.Dyechem case are also
contrary to the earlier judgments of the Supreme Court. In that context, is
it not possible to contend that S.M.Dyechem case as a whole impliedly
over-ruled?

577
 In the aforesaid matter I have discussed the matter in length,
narratted the facts of the case as well as the Trial Court findings, High
Court findings, points which the Hon. Supreme Court had to determine
and thereafter findings of the Hon. Supreme Court. It may be noted that it
is a Two Judge Bench of the Supreme Court whereas subsequently a
Three Judge Bench of the Hon. Apex Court (Coram: Hon. Mr. Justice
B.N. Kripal (as he was then), Hon. Mr. Justice Doraiswamy Raju, and
Hon. Mr. Brijesh Kumar, JJ) in the matter of Cadila Health Care Ltd Vs.
Cadila Pharmaceuticals Ltd AIR 2001 Supreme Court 1952 equivalent to
2001 PTC 541 (SC) has considered the aforesaid judgment. Thre Three
Judge Bench of the Apex Court considered the earlier judgment of the
Apex Court also, some of the judgments of the English Court, some of the
judgements of the American Court, Kerly on Trade Mark and also the
Mecarthy on Trade Mark. It has also considered the judgement of Hon.
Supreme Court in F. Hoffmann-La Roche & Co. Ltd v. Geoffrey
Mamnmer & Co. P. Ltd (Protovit and Dropovit) AIR 2001 Page 1952.

In para 17 (AIR Page 1960 and 1961) they have already considered
para 34 and 35 they have considered the judgment of S.M. Dyechem Ltd
and thereafter they have stated that observation made by Hon. Supreme
Court in para 34 and 35 in S.M. Dyechem does not lay down correct
principles. Similarly para 18 on page no. 1961 the Supreme Court also
considered some of the observations in S.M. Dyechem and held that
"having come to the conclusion, in our opinion incorrectly, that the
difference in essential features is relevant, this Court in Dyechem's case
sought to examine the difference in the two marks "Piknic" and "Picnic".
It applied three tests, they being (1) is there any special aspect of the
common feature which has been copies? (2) mode in which the parts are
put together differently i.e. whether dissimilarity of the part or parts is

578
enough to make the whole thing dissimilar and (3) whether when there
are common elements, should one not pay more regard to the parts which
are common, while at the same time not disregarding the common parts?,
then Supreme Court observed that after examining the mark keeping the
aforesaid three tests in mind, the Supreme Court came to the conclusion,
seeing the manner in which the two words were written and the
peculiarity of the script and concluded that "the above three
dissimilarities have to be given more importance than the phonetic
similarity or the similarity in the use of the word PICNIC OR PKNIK.

(Para 19 Page 1961) This observation has been made by Dyechem

in para 39 of the Judgment of Supreme Court on page 2125. In para 19 of
the Cadila case on page 1961 Supreme Court has expressly disapproved
the said observation.

Thereafter the Supreme Court also considered in Dyechem case

particularly para 53, in the S.M. Dyestuff case, the Supreme Court also
expressly disapproved the said observation in para 20 on page 1962 of
Cadila Health Care Ltd.

It may be noted that the Supreme Court has also made certain more
observations particularly regarding prima facie case, balance of
convenience, Trading issue, Operative strength of a case on question of
infringements, the issue regarding temporary injunction treating the suit
as passing off section in relative strength of the case and whether there
was a unreasonable delay on the part of plaintiff in filing the suit and
whether High Court was interfering in appeal in interlocutory order. In
my humble view the Supreme Court has not properly considered its
earlier Three Judge Bench of the Apex Court as well as the Constitution
Bench Judgment of the Supreme Court particularly Wander Ltd Vs.

579
Antox India (P) Ltd, 1990 Supp. SCC 727, Amritdhara Pharmacy Vs.
Satya Deo, AIR 1963 SC 449, Com Products Refining Company Vs.
Shangrila Food Products Ltd AIR 1960 SC 142, and also other
judgements of Supreme Court and whether Supreme Court has
considered the principle of passing of infringement. In my humble view
though Supreme Court in Cadila case has expressly partly overruled the
judgment, in my view the Supreme Court must consider the Three Judge
Bench of the Apex Court and should expressly whole heartedly overrule
the judgement of S.M. Dyechem because some of the principles of S.M.
Dyechem are factually incorrect and in view of the same, unfortunately b-
mistake in relying upon incorrect judgement of S.M. Dyechem, ignored
other binding judgment of Supreme Court which unfortunately the
Lawyers and Judges have not understood.

580
 QUESTIONNAIRE TOPIC

While critically examinee the my subject the researcher has

formulated certain questionnaire. Researcher has sent those questionnaire
to various Senior Advocate of SC Guj. HC and Bombay HC.

The Researcher had received replies from certain advocate the

Researcher is reproducing the replies from the different advocate so that
different view point can be a certain.

Replies from

1. Shree Sureshbhai Shelat, Senior Advocate Former Advocate

General of Gujarat HC.
2. Shree Saurabh Soparkar, Senior Advocate
3. Dr. Rajesh Acharya
4. Shree Y.J. Trivedi
5. Mrs. Manish Lav Kumar
8.4 REPLY OF QUESTIONNAIRE

8.4.1 Reply by Shri. Surehbhai Shelat, Senior Advocate. Gujarat

High Court (Re: Hoffman Case)

1 Whether the Supreme Court decision in the case of F. Hoffmann-

LA Roche and Co. vs. Geoffrey Manners and Co.453, wherein it
decided that words 'Dropovit’ and "Protovit’ are not deceptively
similar, is correctly decided?

a. The Hon’ble Supreme Court in the case of F. Hojfmann-La

Roche and Co Ltd v/s Geoffrey Manners and Co Pvt Ltd
reported in AIR 1970 SC 2062 was mainly deciding whether
or not DROPOVIT could remain on the Register of Trade

453 AIR 1970 SC 2062 (DB)

581
 Marks on Appellant’s Application for rectification under S.
56(1) of the Trade and Merchandise Marks Act, 1958. See
Para 4 of the judgment.

b. In Para 10 of the said judgment, the Hon’ble Supreme Court

has stated

The first question to be considered in this appeal is whether

the word "DROPOVIT" is deceptively similar to the word
"PROTOVIT" and offends the provision of Sec. 12 (1) of the
Act. In other words, the question is whether the respondent’s
mark so nearly resembles the registered mark as to be
"likely to deceive or cause confusion". It is not necessary
that it should be intended to deceive or intended to cause
confusion. It is its probable effect on the ordinary kind of
customers that one has to consider.

c. In Para 12 of the said judgment, the Hon’ble Supreme Court

has stated

In order to decide whether the word “DROPOVIT” is

deceptively similar to the word “PROTOVIT”, each of the
two words must, therefore, be taken as a whole word.

d. In said Para 12 of the said judgment, the Hon’ble Supreme

Court noted that there were about 57 trade marks on the
Register having common suffix “VIT” indicating Vitamin
preparations. The Hon’ble Supreme Court stated that it was
apparent that the terminal syllable “VIT” in the two marks
was both descriptive and common to the trade. The Hon’ble
Court then stated that if greater regard was paid to the
uncommon element in these two words, it was difficult to

582
 hold that one would be mistaken for or confused with the
other. The Hon’ble Supreme Court in the said comparison
compared the two words and not parts of the words. In other
words, the comparison was not of parts of the words, it was a
comparison of the two words as a whole. “VIT” being
descriptive and common to the trade, consumers would have
greater regard for the uncommon elements. That being so,
there was no possibility of confusion. Additionally, the
Hon’ble Supreme Court held in the said Para 12 that the
words were so dissimilar that there was no reasonable
probability of confusion between the words either from the
visual or phonetic point of view. In other words, the
conclusion arrived at was in line with the settled principle
that while comparing to trade marks, they should be
compared as a whole.

e. In Para 13 of the said judgment, the Hon’ble Supreme Court

has stated that the question of deceptive similarity must be
decided on the basis of the class of goods to which the two
trademarks apply. In the matter before the Hon’ble Supreme
Court, it was held that from the nature of the goods, it was
likely that most of the customers would obtain a prescription
from a Doctor and show it to the Chemist before the
purchase and, therefore, except in the event of the
handwriting of the Doctor being very bad or illegible, the
chance of confusion was remote. The Hon’ble Supreme
Court also noted that as many as 57 trade marks were on the
Register of Trade Marks, with the suffix “VIT”, and
therefore, It was held that even an average customer would

583
 know that in respect of Vitamin preparations, the word
“VIT” occurred in large number of trademarks and because
of this, he would naturally be on his guard and takes special
care against making a mistake. The Hon’ble Supreme Court
also held that question of confusion had to be determined on
the basis that the goods with one of the two rival trademarks
would be sold only by a licensed dealer and would not be
available in any other shop. It was therefore, held that the
possibility of confusion was reduced to a considerable
extent. In Para 14 of the said judgment, the Hon’ble
Supreme Court taking into account all circumstances of the
matter concluded that there was no real tangible danger of
confusion if the respondent’s trade mark was allowed to
continue to remain on the register.

f. The Hon’ble Supreme Court had considered the judgment in

the case of Parkar Knoll Ltd. Vs. Knoll International Limited
reported in 1962 RPC 265 before arriving at the conclusion.

g. In view of the above, the Hon’ble Supreme Court, while

refusing the application for rectification, did not deviate
from the settled law:

(i) that while comparing two trade marks for deceptive

similarity, the trade marks should be compared as a
whole,

(ii) in the matter, average customer was not likely to be

confused

2 When once goes through the aforesaid decision, it appears that the
Supreme Court has neither referred to nor discussed the earlier

584
 judgments of the Supreme Court in the case of Amritdhara
Pharmacy vs. Satya Dev Gupta454, which deals with
pharmaceutical products wherein the words 'Amritdhara’ and
'Laxmandhara’ are held to be deceptively similar.

a. The Hon’ble Supreme Court in the case of Amritdhara

Pharmacy Vs. Satya Deo Gupta reported in AIR 1963 SC
449 was deciding an appeal arising out of opposition
proceedings wherein application for registration of
‘Lakshmandhara’ was opposed on the basis of registration of
‘Amritdhara’ by the Appellant before the Hon’ble Supreme
Court.

b. As recorded in the last part of para 3 of the said judgment,

the respondent had admitted before the Registrar of Trade
Marks that his goods were sold mainly in Uttar Pradesh and
taking such circumstance into consideration, the Registrar
had passed an order allowing registration of
‘Lakshamandhara’ for sale in the State of Uttar Pradesh only.

c. In Para 7 of the said judgment, the Hon’ble Supreme Court

has held that the Act (The Trade Marks Act, 1940) did not
lay down any criteria for determining what was likely to
deceive or cause confusion and therefore, every case
depended on its own particular facts and the value of
authorities lay not so much in the actual decision as in the
tests applied for determining what was likely to deceive or
cause confusion. It was also held “a trade mark is likely to
deceive or cause confusion by its resemblance to another

454 AIR 1963 SC 449. (A 3 judge bench judgment)

585
 already on the register if it is likely to do so in the course of
its legitimate use in a market where the two marks are
assumed to be in use by traders in that market. In considering
the matter, all the circumstances of the case must be
considered.”

d. In Para 8 of the said judgment, the Hon’ble Supreme Court

has stated -

“it is not disputed before us that the two names

‘Amritdhara ’ and ‘Lakshmandhara ’ are in use in
respect of the same description ofgoods namely, a
medicinal preparation for the alleviation of
various elements. Such medicinal preparation will
be purchased mostly by people who instead of
going to a Doctor wish to purchase a medicine for
the quick alleviation of their suffering, both
villagers and townsfolk, literate as well as
illiterate. ”

e. It is true, that the said judgment was neither referred to nor

discussed in the judgment in the case of F. Hoffimann;
however, Hon’ble Supreme Court did not deviate from the
settled law that:

(i) The overall similarity of the two composite words

‘Amritdhara and ‘Lakshmandhara’ had to be
considered.

(ii) The question has to be approached from the point of

view of a man of average intelligence and imperfect
recollection.

586
2.1 Similarly, there is another judgment of the Supreme Court in the
case of Kaviraj Pandit Durga Dutt Sharmja vs. Navratna
Pharmaceutical Laboratories,455 wherein the Supreme Court has
held that respondent’s mark 'Navratna Pharmaceutical
Laboratories’ is deceptively similar to the appellant’s trade mark
'Navratna Kalpa pharmacy’. This judgment also deals with
pharmaceutical product.

2.2 Both the above judgments have not been referred to F.Hoffmann’s
case. Whether F.Hoffmann’s case, to that extent, is per incuriam?

a. No, for the following reasons: -

i. In the case of Kaviraj Pandit Durga Dutt Sharma Vs.

Navratna Pharmaceutical Laboratories reported in
AIR 1965 SC 980, the Hon’ble Supreme Court was
deciding two appeals, one arising out of Rectification
Proceedings and another arising out of a Suit for
Infringement and passing off (See Paras 5 & 6 of AIR
1965 SC 980)

ii. The Hon’ble Supreme Court, in Para 29 of AIR 1965

SC 980 has dealt with likelihood of deception or
confusion. The Hon’ble Supreme Court has held that
deceptive similarity has to be necessarily ascertained
by a comparison of two marks - the degree
resemblance, which is necessary to exist to cause
deception not being capable of definition by laying
down objective standards. The persons, who would be
deceived, are, of course, the purchasers of the goods

455 AIR 1965SC 980 (A 3 judge bench judgment)

587
 and it is the likelihood of their being deceive that is
the subject of consideration. The resemblance may be
phonetic, visual or in the basic idea represented by the
plaintiffs mark. The purpose of the comparison is for
determining whether the essential features of the
plaintiffs trade mark are to be found in that used by
the defendants. The identification of the essential
features of the mark is in essence a question of fact
and depends on the judgment of the Court based on
the evidence led before it as regards the usage of the
trade.

iii. The Hon’ble Supreme Court, in Para 29 of AIR 1965

SC 980 has held “where common marks are included
in the trade marks to be compared or in one of them,
the proper course is to look at the marks as whole and
not to disregard the parts which are common.”

iv. From the above, it is clear that the Hon’ble Supreme

Court, in all the above mentioned judgments, has
compared the trade marks in question as a whole and
has decided the question of deceptive similarity from
the point of view of a person with average intelligence
and imperfect recollection considering other facts and
circumstances of the matter. The Hon’ble Supreme
Court, in the case of F. Hoffmann may not have
discussed the other two judgments; however, there is
no deviation from the settled law based on which all
the three cases were decided. Therefore, the judgment

588
 in the case of F. Hoffmann cannot be said to be per
incuriam.

2.3 In F.Hoffman’s case, the Supreme Court considered some of the

English cases like Parker Knoll Ltd v. Knoll International Ltd;
Aristoc Ltd v. Rysta Ltd and Pianotist Co Ltd. wherein the
Supreme Court has correctly appreciated those decisions?

a. Yes. In the case of Parkar Knoll Ltd. Vs. Knoll International

Limited reported in 1962 RPC 265, the case of Pianotist Co.
Ltd.’s application reported in (1906) 23 RPC 774 was
considered. In the case of Pianotist Co. Ltd. the following
guidelines were laid down:

“You must take the two words. You must judge of them,
both by their look and their sound. You must consider the
goods to which they are to be applied. You must consider the
nature and the kind of customer who would be likely to buy
those goods. In fact, you must consider all the surrounding
circumstances and you must further consider what is likely
to happen if each of those trademarks are used in a normal
way as a trade mark for the respective owner of the marks. If
considering all those circumstances, you come to the
conclusion that there will be a confusion - that is to say, not
necessarily that one man will be injured and the other will
gain illicit benefit, but that there will be a confusion in the
mind of the public which will lead to confusion in the goods
- then you may refuse the registration, or rather you must
refuse the registration in that case.”

589
 b. In the case of Parker Knoll, relying on the case of Pionotist
Co. Ltd., it was held “it is also important that the marks must
be compared as a whole. It is not right to take a portion of
the word and say that because that portion of the word
differs from the corresponding portion of the word in the
other case there is no sufficient similarity to cause confusion.
The true test is whether the totality of the proposed trade
mark is such that it is likely to cause deception or confusion
or mistake in the minds of persons accustomed to the
existing trade mark.”

c. In view of the above, the Hon’ble Supreme Court in the case

of F. Hoffimann has correctly appreciated the two English
cases.

3 In the aforesaid F.Hoffmann case, in para 12, while deciding that

'Dropovif is not deceptively similar to 'Protovit’, the Supreme
Court has dissected both the words.. It was also held in the above
decision that if greater regard is paid to the uncommon element in
these two marks, it is difficult to hold that one will be mistaken for
or confused with the other. It is also held that letters D’ and 'P’
in Dropovit and the corresponding letters 'P’ and 'T’ in Protovit
cannot possibly be slurred over in pronunciation and the words are
so dissimilar that there is no reasonable probability of confusion
between the words either from the visual or phonetic point of view.
The Supreme Court has also considered the provisions of the Drug
and Cosmetic Rules and held that most of the customers would
obtain a prescription from a doctor and show it to the chemist
before the purchase. In such a case, except in the event of the
handwriting of the doctor being very bad or illegible, the chance of

590
 confusion is remote. After referring to the Drug and Cosmetic
Rules, it is also observed that the goods with one of the two rival
trademarks would be sold only by such a licensed dealer and would
not be available in any other shop. The fact that the vendor would
be a licensed dealer also reduces the possibility of confusion to a
considerable extent.

5. Whether all these grounds and reasons are germane to holding that
Dropovit is not deceptively similar to Protovit?

a. Yes, for the following reasons: -

(i) The Hon’ble Supreme Court has not dissected the

words.

(ii) In Para 12 of the said judgment, the Hon’ble Supreme

Court has stated “In order to decide whether the word
“DROPOVIT” is deceptively similar to the word
“PROTOVIT”, each of the two words must, therefore,
be taken as a whole word.” and that is what was done.

(iii) The Hon’ble Court then stated that if greater regard

was paid to the uncommon element in these two
words, it was difficult to hold that one would be
mistaken for or confused with the other. The Hon’ble
Supreme Court in the said comparison compared the
two words and not parts of the words. In other words,
the comparison was not of parts of the words, it was a
comparison of the two words as a whole.

(iv) The Hon’ble Supreme Court also noted that as many

as 57 trade marks were on the Register of Trade

591
 Marks, with the suffix “VIT”, and therefore, It was
held that even an average customer would know that
in respect of Vitamin preparations, the word “VIT”
occurred in large number of trade marks and because
of this, he would naturally be on his guard and takes
special care against making a mistake.

6. It may be noted that the Supreme Court (three judge bench) in the
case of Cadila Healthcare Ltd vs. Cadila Pharmaceuticals Ltd,456
held that while considering deceptive similarity and test of
comparison, dissimilarity in essential features cannot be given
importance than similarities. The Supreme Court further held as
under:

In Para 18 page 1961, “As far as this court is concerned, 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.”

In Para 20 on page 1962, after referring to Dyechem Case, the

Supreme Court observed as under, “these observations appear to us
to be contrary to the decision of this Court in Amritdhara’s Case
(AIR 1963 SC 449) (supra) where it was observed that the products
will be purchased by both villagers and townfolk, literate as well as
illiterate and the question has to be approached from the point of
view of a man of average intelligence and imperfect recollection. A
trade may relate to goods largely sold to illiterate or badly educated

AIR 2001 SC 1952

592
persons. The purchaser in India cannot be equated with a purchaser
of goods in England.”

In Para 25 on page 1963, “the drugs have a marked difference in

the compositions with completely different side effects, the test
should be applied strictly as the possibility of harm resulting from
any kind of confusion by the consumer can have unpleasant if not
disastrous results. The Courts need to be particularly vigilant where
the defendant’s drug, of which passing of is alleged, is meant for
curing the same ailment as the plaintiffs medicine but the
compositions are different. The confusion is more likely in such
cases and the incorrect intake of medicine may even result in loss
of life or other serious health problems.

In view of the aforesaid observations of judgment in Cadila

Healthcare Case, whether judgment of F.Hoffman case is required
to be placed before the larger bench of the Supreme Court to
reconsider the same?

a. No, for the following reasons: -

i. The question of likelihood of confusion or deception

has to be decided by comparing the trade marks in
question as a whole and for that overall similarity has
to be looked at.

ii. Additionally, likelihood of confusion or deception,

view point of a man with average intelligence and
imperfect recollection has to be considered.

iii. There is no inconsistency between the decision in the

case of Cadila Health Care Ltd. Vs. Cadila

593
 Pharmaceuticals Ltd., reported in AIR 2001 SC 1952
and the ease of F. Hoffmann.

7. It is well recognized that in deciding a question of similarity of two

marks, marks have to be considered as a whole.457 So when the
Supreme Court in Hoffman Case in Para 12 dissected two words
“Protovit” and “Dropovit”, whether the Supreme Court has applied
the correct test?

a. Yes. In para 12 of the said judgment, the Hon’ble Supreme

Court has stated “In order to decide whether the word
“DROPOVIT” is deceptively similar to the word
“PROTOVIT”, each of the two words must, therefore, be
taken as a whole word.” The Hon’ble Supreme Court held in
the said para 12 that the words were so dissimilar that there
was no reasonable probability of confusion between the
words either from the visual or phonetic point of view. In
other words, the conclusion arrived at was in line with the
settled principle that while comparing to trade marks, they
should be compared as a whole.

8. It is no doubt true that case of F.Hoffman case was referred to by

the Supreme Court in Cadila Case in Para 16 page 1959 and 1960)
discussed English Cases referred to therein. And in the end
observed “on the facts of that case this Court came to the
conclusion that taking into account all circumstances the words
“Protovit” and “Dropovit” were so dissimilar that there was no
reasonable probability of confusion between the words either from
visual or phonetic of view.” So Supreme Court in Cadila did not

457 See AIR 1960 SC 142 (para 17 page 145)

594
 endorse the view of Hoffman Case. So whether F.Hoffman case can
be reconsidered by larger Bench?

a. No. There is no inconsistency between the decision in the

case of Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals
Ltd., reported in AIR 2001 SC 1952 and the case of F.
Hoffimann. (See para 18 of AIR 2001 SC 1952.

Re: S.M.Dvechem Case

10. Whether the decision of the Supreme court in S.M. Dyechem India
Ltd. Vs. Cadbury India Ltd,458 (two judge bench judgment) is
correctly decided when the judgment of the Supreme Court in
Dyechem case is partly reversed by three judge bench of the
Supreme court in Cadila Healthcare case459 ?. What is the true
ratio of S.M.Dyechem case? Paras 34 and 35 of Dyechem case
have been reversed in Cadila healthcare case in para 18 (page
1961). Paras 38 to 46 in Dyechem case have been reversed by the
Supreme court in Cadila Health care case in paras 18 and 19
(page 1961). Para 53 of Dyechem case is reversed by the Supreme
Court in Cadila Health care case in para 20 (page 1962).

a. In the case of M/s. S.M. Dyechem Limited Vs. M/s. Cadbury

(India) Ltd., reported in AIR 2000 SC 2114, the Hon’ble
Supreme Court considering the following three tests held
that dissimilarities have to be given more importance than
the phonetic similarity or the similarity in the use of the
words: -

458 AIR 2000 SC 2114.

459 Re: Cadila case

595
 i. Is there any special aspect of the common feature
which has been copied?

ii. Mode in which the parts are put together differently,

i.e. whether dissimilarity of the part or parts is enough
to make whole thing dissimilar and

iii. Whether when there are common elements, should

one not pay more regard to the parts which are not
common, while at the same time, not disregarding the
common parts?

b. In Para 19 of the judgment in the case of Cadila, the Hon’ble

Supreme Court held that the principle of phonetic similarity
cannot be jettisoned relying on the binding precedent in the
case of ‘Amritdhara’ and in the case of ‘Durga Dutt
Sharma’.

c. In the case of M/s. S.M. Dyechem, the Hon’ble Supreme

Court had relied on the observations made in the case of
“Payton & Co. Vs. Snelling Lampard & Co. reported in
(1900) 17 RPC 48, in which the English Court held that
views of a customer who does not know the distinguishing
characteristics or those characteristics which distinguish
goods in the market so far as relating to general
characteristics cannot be a person, whose views can properly
be regarded by the Court.

d. The Hon’ble Supreme Court, in the case of Cadila, in the

later part of para 20, held that the above observations in the
case of S.M. Dyechem were contrary to the decision in the
case of ‘Amritdhara’. The Hon’ble Supreme Court held that

596
 a purchaser in India cannot be equated with a purchaser of
goods in England.

e. The ratio in the case of S.M. Dyechem to give more

importance to dissimilarities was reversed in the case of
Cadila.

11. When the Supreme Court by three judge Bench judgment in Cadila
Healthcare case has partly reversed expressly Dyechem case,
whether now Dyechem case may be placed before a larger bench of
the Supreme Court to reconsider the said case?

a. No. As stated in para 18 in the case of Cadila, the Hon’ble

Supreme Court while over-ruling the decision in S.M.
Dyechem, relied on the judgments and decisions taken by
the Hon’ble Supreme Court in the four decades prior to the
decision in S.M. Dyechem. The Hon’ble Supreme Court had
relied on the clear ratio laid down during those four decades
that what has to be seen in the case of a passing off action is
the similarity between the competing marks to determine
whether there is likelihood of deception or causing
confusion.

12. In Dyechem case, plaintiff had trade mark 'Piknik’ for class 30
(Which includes chocolate). Defendant Cadbury used the mark
'Picnic’ for chocolate. Once there is phonetic similarity between
'Piknik’ and 'Picnic’, and when the Trial Court has held that there
was deceptive similarity between the two words and that confusion
would be created in the mind of the purchaser because marks were
similar, visually or and phonetically and essential features of the
trade marks were similar. Whether the Gujarat High court while

597
hearing an appeal from an order against the aforesaid judgment and
order, was justified in reversing the judgment of the trial court
without expressly deciding that Trial Court has erred in arriving at
incorrect principle of law. And whether the Supreme Court was
justified in these circumstances, to confirm the view of the High
Court while dismissing the appeal from that judgment?

a. The Hon’ble Gujarat High Court, while hearing the Appeal

from Order was not justified in reversing the judgment of the
Trial Court.

i. Para 6 of the judgment in the case of S.M. Dyechem

has recorded the finding of the Trial Court, which held
that the defendant’s trade label ‘Cadbury’s PICNIC’
for chocolates was deceptively similar to the
plaintiffs trade mark label which included the word
‘PIKNIK’ written in peculiar script in a curved
fashion with the caricature of a little boy with a hat in
between the letters ‘K’ and ‘N’. The Trial Court had
held that confusion could be created in the minds of
purchasers because the marks were visually or
occularly or phonetically similar. The essential
features of the trade marks were held to be similar by
the Trial Court and there was clear phonetic
resemblance.

ii. In appeal, the Hon’ble High Court of Gujarat held that

the word PIKNIK could not be called an essential
feature of the plaintiffs label. Additionally, the
Hon’ble High Court held that the products were

598
 different and because of the well known word
“Cadbury” was used by the defendant there could be
no infringement or passing off as there was absolutely
no scope of deception. The Hon’ble High Court also
observed that the defendant was not using the
plaintiffs label with the caricature of a boy. In other
words, the Hon’ble High Court erroneously reversed
the decision of the Trial Court relying on
dissimilarities in the two labels.

b. The Hon’ble Supreme Court was not justified to confirm the

view of the Hon’ble High Court of Gujarat as the Hon’ble
Supreme Court erroneously held that dissimilarities had to
be given more importance than the phonetic similarity or the
similarity in the use of the words. i.

13. It may be noted that so far as Dyechem case is concerned wherein

two judge Bench of the Supreme Court has properly appreciated
binding decision of the three judge bench of the apex court in
Amritdhara Pharmacy case460 ‘Kaviraj Pandit Durga Dutt case461
and subsequent judgment of the Supreme Court in Parle case462 and
Rostan and Rustam463 and other cases, has the Supreme Court
properly appreciated the ratio of these decisions? On that ground
also, whether Dyechem case should be reconsidered by a larger
bench of the Supreme Court.

a. The Hon’ble Supreme Court in the case of Amritdhara

Pharmacy Vs. Satya Deo Gupta reported in AIR 1963 SC

460 AIR 1963 SC 449

461 AIR 1965 SC 980
462 AIR 1960 SC 142
463 AIR 1970 SC 1649

599
449 has recorded in the last part of para 3 of the said
judgment, the respondent had admitted before the Registrar
of Trade Marks that his goods were sold mainly in Uttar
Pradesh and taking such circumstance into consideration, the
Registrar had passed an order allowing registration of
‘Lakshamandhara’ for sale in the State of Uttar Pradesh only.
In para 7 of the said judgment, the Hon’ble Supreme Court
has held that the Act (The Trade Marks Act, 1940) did not
lay down any criteria for determining what was likely to
deceive or cause confusion and therefore, every case
depended on its own particular facts and the value of
authorities lay not so much in the actual decision as in the
tests applied for determining what was likely to deceive or
cause confusion. It was also held “a trade mark is likely to
deceive or cause confusion by its resemblance to another
already on the register if it is likely to do so in the course of
its legitimate use in a market where the two marks are
assumed to be in use by traders in that market. In considering
the matter, all the circumstances of the case must be
considered.” In para 8 of the said judgment, the Hon’ble
Supreme Court has stated -

“it is not disputed before us that the two names ‘Amritdhara ’

and ‘Lakshmandhara’ are in use in respect of the same
description ofgoods namely, a medicinal preparation for the
alleviation of various elements. Such medicinal preparation
will be purchased mostly by people who instead ofgoing to a
Doctor wish to purchase a medicine for the quick alleviation

600
 of their suffering, both villagers and townsfolk, literate as
well as illiterate. ”

b. The HoiTble Supreme Court, in para 29 of the case of

Kavira] Pandit Durga Dutt Sharma Vs. Navratna
Pharmaceuticals Laboratories reported in AIR 1965 SC 980
has dealt with likelihood of deception or confusion. The
Hon’ble Supreme Court has held that deceptive similarity
has to be necessarily ascertained by a comparison of two
marks - the degree resemblance, which is necessary to exist
to cause deception not being capable of definition by laying
down objective standards. The persons, who would be
deceived, are, of course, the purchasers of the goods and it is
the likelihood of their being deceive that is the subject of
consideration. The resemblance may be phonetic, visual or
in the basic idea represented by the plaintiffs mark. The
purpose of the comparison is for determining whether the
essential features of the plaintiffs trade mark are to be found
in that used by the defendants. The identification of the
essential features of the mark is in essence a question of fact
and depends on the judgment of the Court based on the
evidence led before it as regards the usage of the trade.

c. In the case of Parle Products (P) Ltd. Vs. J.P. & Co.
reported in AIR 1972 SC 1359, in para 9, the Hon’ble
Supreme Court has held “It would be enough if the
impugned mark bears such an overall similarity to the
registered mark as would be likely to mislead a person
usually dealing with one to accept the other if offered to
him.” This was a case of infringement action and the

601
 Hon’ble Supreme Court concluded that there was
infringement considering the broad and essential features of
the two trademarks.

d. In the case of Ruston and Hornby Limited Vs. Zamindara

Engineering Co. reported in AIR 1970 SC 1649, the Hon’ble
Supreme Court held that the High Court had found that there
was deceptive resemblance between the word ‘RUSTON’
and the word ‘RUSTAM’, and therefore, the use of the bare
word ‘RUSTAM’ constituted infringement the plaintiffs
trade mark ‘RUSTAM’. In para 7 of the said judgment, the
Hon’ble Supreme Court relied on the settled principle that
the test as to likelihood of confusion or deception depended
on similarity of marks.

e. In view of the above, the Hon’ble Supreme Court, in the case

of S.M. Dyechem, did not properly appreciate the ratio in the
above mentioned decisions and, therefore, the said judgment
in the case of S.M. Dyechem has been rightly over-ruled in
the judgment in the case of Cadila.

8.4.2 Reply of Shri Saurabhbhai Soparkar. Senior Advocate. Gujarat

High Court.

(Re: Hoffman Case)

1 Whether the Supreme Court decision in the case of F.Hoffmann-

LA Roche and Co. vs. Geoffrey Manners and Co.464, wherein it
decided that words ‘Dropovif and “Protovif are not deceptively
similar, is correctly decided?

464 AIR 1970 SC 2062 (DB)

602
 In my considered view the decision of F. Hoffmann case is rightly
decided. It is well settled that every judgment has to be read in the
context offacts and circumstances in which it was rendered.

In this case Hon ’ble Supreme Court correctly set out the
Parameter for determining the deceptive similarity between two
products. The Hon’ble Court after considering various English
decisions went on to hold that following factors should be taken
into consideration for determining deceptive similarity i.e. visual
or phonetic similarity taking into consideration the word or phrase
as a whole, goods to which they are to be applied, nature and kind
of customer who would be likely to buy those goods, mode of
purchasing the goods or placing orders for the goods.

Thereafter the Court applied this test to the facts and

circumstances of that particular case and held words ‘Dropovit’
and ‘ ‘Protovit ’ were not deceptively similar taking into
consideration various facts and circumstances related to case.

2 When once goes through the aforesaid decision, it appears that the
Supreme Court has neither referred to nor discussed the earlier
judgments of the Supreme Court in the case of Amritdhara
Pharmacy vs. Satya Dev Gupta465, which deals with
pharmaceutical products wherein the words ‘Amritdhara’ and
‘Laxmandhara’ are held to be deceptively similar.

2.1 Similarly, there is another judgment of the Supreme Court in

the case of Kaviraj Pandit Durga Dutt Sharmja vs. Navratna
Pharmaceutical Laboratories,466 wherein the Supreme Court
has held that respondent’s mark ‘Navratna Pharmaceutical

465 AIR 1963 SC 449. (A 3 judge bench judgment)

466 AIR 1965SC 980 (A 3 judge bench judgment)

603
 Laboratories’ is deceptively similar to the appellant’s trade
mark ‘Navratna Kalpa pharmacy’. This judgment also deals
with pharmaceutical product.

2.2 Both the above judgments have not been referred to

F.Hoffmann’s case. Whether F.Hoffmann’s case, to that
extent, is per incuriam?

A decision of the Court is divided into two portions namely

obiter dicta and ratio decidendi. The obiter dicta is general
discussion by the Court in the judgment and potion of the
judgment containing obiter dicta is not a law laid down by
Supreme Court and hence it is not considered as precedent
within the meaning of Article 141 of Constitution of India.
On the other hand ratio decidendi i.e. rationale behind the
judgment is a law declared by Supreme Court and it is a
precedent within the meaning of Article 141 of Constitution
ofIndia. Therefore a decision of the Supreme Court becomes
per incuriam only when it fails to refer the ratio decidendi in
the earlier decision and not otherwise.

In this background when we examine the decision ofHon ’ble

Supreme Court in case of Amritdhara Pharmacy vs. Satya
Dev Gupta, there is no ratio laid down in the said judgment.
In the said judgment Hon’ble Court has arrived at the
Conclusion that the words ‘Amritdhara ’ and ‘Laxmandhara ’
are deceptively similar on the facts and circumstances of
that particular case after taking into consideration the fact
that the product was to be sold to illiterate village people
who were not expected to appreciate the difference between

604
two words. It must be appreciated that it was a decision
rendered on the facts and circumstances of that particular
case and no ratio was laid down by the Hon’ble Supreme
Court except for approval of test laid down by Parker J. in
Pianotist Co’s case for determining deceptive similarity. The
said test laid down by Parker J. in Pianotist Co's has been
duly discussed in F. Hoffmann-LA Roche and Co. vs.
Geoffrey Manners and Co case. Therefore, in my considered
opinion, decision in case of F. Hoffmann cannot be said to
be per incuriam merely because it fails to give reference to
case of Amritdhara Pharmacy vs. Satya Dev Gupta.

Similarly when we examine the decision in case of Kaviraj

Pandit Durga Dutt Sharmja vs. Navratna Pharmaceutical
Laboratories, it must be appreciated that the primary issue
before the Hon ’ble Supreme Court was completely different
as compared to the issue in F. Hoffman’s Case. In that case
the Hon ’ble Court was primarily concerned with Section 6 of
the Trade Marks Act, 1940 which dealt with positive
qualifications for registrability of trade mark. The primary
issue before the Hon’ble Court was that with regard to
registrability of Trade mark. It is true that Hon ’ble Supreme
Court has also held that ‘Navratna Pharmaceutical
Laboratories’ is deceptively similar to ‘Navratna Kalpa
pharmacy’ and for the purpose of determining deceptive
similarity the mark should be examined as a whole.
Therefore only ratio laid down in this case is that while
determining deceptive similarity the trademark should be
considered as a whole. Now coming to the case of F.

605
 Hoffman’s Case the Hon’ble Supreme Court has duly
appreciated the said principle and hence the same cannot be
said to be per incuriam merely because it fails to refer this
case. As far as ratio laid in this case is rightly acknowledged
in subsequent cases it cannot be said that subsequent
decision is per incuriam merely because it fails to refer to
previous cases.

2.3 In F. Hoffman’s case, the Supreme Court considered some of

the English cases like Parker Knoll Ltd v. Knoll
International Ltd; Aristoc Ltd v. Rysta Ltd and Pianotist
Co Ltd. wherein the Supreme Court has correctly
appreciated those decisions?

3 In the aforesaid F. Hoffmann case, in Para 12, while deciding that

‘Dropovit’ is not deceptively similar to ‘Protovit’, the Supreme
Court has dissected both the words. It was also held in the above
decision that if greater regard is paid to the uncommon element in
these two marks, it is difficult to hold that one will be mistaken for
or confused with the other. It is also held that letters SD’ and ‘P’
in Dropovit and the corresponding letters ‘P’ and ‘T’ in Protovit
cannot possibly be slurred over in pronunciation and the words are
so dissimilar that there is no reasonable probability of confusion
between the words either from the visual or phonetic point of view.
The Supreme Court has also considered the provisions of the Drug
and Cosmetic Rules and held that most of the customers would
obtain a prescription from a doctor and show it to the chemist
before the purchase. In such a case, except in the event of the
handwriting of the doctor being very bad or illegible, the chance of
confusion is remote. After referring to the Drug and Cosmetic

606
 Rules, it is also observed that the goods with one of the two rival
trademarks would be sold only by such a licensed dealer and would
not be available in any other shop. The fact that the vendor would
be a licensed dealer also reduces the possibility of confusion to a
considerable extent.

5 Whether all these grounds and reasons are germane to holding that
Dropovit is not deceptively similar to Protovit?

(Answering Question No. 2.3, 3 and 5 together)

In judgment of F. Hoffman the Hon’ble Supreme Court has

referred to some of the English decisions namely Parker Knoll Ltd
v. Knoll International Ltd; Aristoc Ltd v. Rysta Ltd and Pianotist
Co Ltd. for the purpose of ascertaining test for determining
deceptive similarity. All these decision, together, lay down a
comprehensive test for determining deceptive similarity between
two words. Therefore Hon ’ble Supreme Court is, in my considered
view, justified in referring to the above quoted English decisions.

Now coming to the question of appreciating those decisions, it can

be said that the Hon ’ble Supreme Court, with all due respect, erred
in correctly applying those decisions on one aspect i.e. reading of
word as a whole. After appreciating the fact that for the purpose of
determining deceptive similarity the word must be considered as a
whole, Hon’ble Supreme Court itself dissected both words and
arrived at a conclusion that there was no deceptive similarity.
Therefore it can be said that the Hon ’ble Court erred in applying
this test. It must, however, be appreciated that all other factors
were rightly considered by Hon ’ble Supreme Court while deciding
the issue on hand.

607
 It must be appreciated that visual or phonetic similarity is not a
sole criteria for determining deceptive similarity. Though it is most
important consideration while determining deceptive similarity it is
has to be borne in mind that there are other factors which are also
required to be examined while determining deceptive similarity
such as goods to which they are to be applied, nature and kind of
customer who would be likely to buy those goods, mode of
purchasing the goods or placing orders for the goods etc.
Therefore all the factors quoted by Hon’ble Supreme Court are
germane to holding that Dropovit is not deceptively similar to
Protovit.

6 It may be noted that the Supreme Court (three judge bench) in the
case of Cadila Healthcare Ltd vs. Cadila Pharmaceuticals Ltd,467

held that while considering deceptive similarity and test of

comparison, dissimilarity in essential features cannot be given
importance than similarities. The Supreme Court further held as
under:

In Para 18 page 1961, “As far as this Court is concerned, 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.”

In Para 20 on page 1962, after referring to Dyechem Case, the Supreme

Court observed as under, “these observations appear to us to be contrary
to the decision of this Court in Amritdhara’s Case (AIR 1963 SC 449)
(supra) where it was observed that the products will be purchased by both

467 AIR 2001 SC 1952

608
villagers and townfolk, literate as well as illiterate and the question has to
be approached from the point of view of a man of average intelligence
and imperfect recollection. A trade may relate to goods largely sold to
illiterate or badly educated persons. The purchaser in India cannot be
equated with a purchaser of goods in England.”

In Para 25 on page 1963, “the drugs have a marked difference in the

compositions with completely different side effects, the test should be
applied strictly as the possibility of harm resulting from any kind of
confusion by the consumer can have unpleasant if not disastrous results.
The Courts need to be particularly vigilant where the defendant’s drug, of
which passing of is alleged, is meant for curing the same ailment as the
plaintiffs medicine but the compositions are different. The confusion is
more likely in such cases and the incorrect intake of medicine may even
result in loss of life or other serious health problems.

In view of the aforesaid observations of judgment in Cadila Healthcare

Case, whether judgment of F. Hoffman case is required to be placed
before the larger bench of the Supreme Court to reconsider the same?

It must be noted that the test for determining deceptive similarity in F.

Hoffman’s case has been quoted in Cadila Healthcare Ltd vs. Cadila
Pharmaceuticals Ltd judgment at Para No. 16. and thereafter Hon ’ble
Supreme Court has observed that “on the facts of that case this Court
came to the conclusion that taking into account all the circumstances the
words ‘Protovit’ and ‘Dropovit’ were so dissimilar that there was no
reasonable probability of confusion between the words either from visual
or phonetic point of view. “ Thus the test laid down in F. Hoffman’s case
for determining deceptive similarity has been approved by Hon’ble
Supreme Court in Cadila’s Case. The only point of difference between

609
two judgments pertains to the mode of sale of the product and degree of
care required in pharmaceutical products. While in F. Hoffman’s case
the Hon ’ble Supreme Court has held that

“The question f deceptive similarity must therefore be decided on

the basis of the class of goods to which the two trademarks apply
subject to the limitation agreed to by the respondent. From the
nature of the goods it is likely that most of the customers would
obtain a prescription from a doctor and show it to the chemist
before the purchase. In such a case, except in the event of the
handwriting of the doctor being very bad or illegible the chance of
confusion is remote. As we have already observed the evidence
shows that there are as many as 57 trade marks in the Register of
Trade Marks with the suffix "VIT". Therefore, even an average
customer would know that in respect of Vitamin preparations the
word "VIT" occurs in large number of trademarks and because of
this he would naturally be on his guard and' take special care
against making a mistake. In this connection the provisions of the
Drug Rules, 1945 are also relevant. Under r, 61(2) vitamin
preparations would be covered by item 5 in Schedule C-( 1) to the
Rules and a license would be required to stock such vitamin
preparations and to sell them retail. The question of confusion
must hence be determined on the basis that the goods with one of
the two rival trademarks would be sold only by such 'a licensed
dealer and would not be available in any other shop. ”

Whereas in Cadila’s Case Hon ’ble Supreme Court held that

The tests of confusing similarity are modified when the goods

involved are medicinal products. Confusion of source or product

610
 between medicinal products may produce physically harmful
results to purchasers and greater protection is required than in the
ordinary case. If the goods involved are medicinal products each
with different effects and designed for even subtly different uses,
confusion among the products caused by similar marks could have
disastrous effects. For these reasons, it is proper to require a
lesser quantum of proof of confusing similarity for drugs and
medicinal preparations. The same standard has been applied to
medical products such as surgical sutures and clavicle splints.

Therefore in Cadila’s case the Hon ’ble Supreme Court has held
that test while determining deceptive similarity between
pharmaceutical products should be stricter as compared to
ordinary products. To this extent Hon ’ble Supreme Court differs
from the Judgment in F. Hoffman’s case. And a larger bench of the
Supreme Court can be formed to address this limited issue.

7. It is well recognized that in deciding a question of similarity of two

marks, marks have to be considered as a whole. So when the
Supreme Court in Hoffman Case in Para 12 dissected two words
“Protovit” and “Dropovit”, whether the Supreme Court has applied
the correct test?

The Supreme Court in case of F. Hoffman’s case has quoted the

correct test but, with respect, applied it wrongly in the facts of that
case. The Supreme Court arrived at a conclusion that word
‘Protovit ’ and ‘Dropovit ’ are not deceptively similar on the basis
offacts and circumstances of this case.

468 See AIR 1960 SC 142 (Para 17 page 145)

611
8. It is no doubt true that case of F.Hoffman case was referred to by
the Supreme Court in Cadila Case in Para 16 page 1959 and 1960)
discussed English Cases referred to therein. And in the end
observed “on the facts of that case this Court came to the
conclusion that taking into account all circumstances the words
“Protovit” and “Dropovit” were so dissimilar that there was no
reasonable probability of confusion between the words either from
visual or phonetic of view.” So Supreme Court in Cadila did not
endorse the view of Hoffman Case. So whether F. Hoffman case
can be reconsidered by larger Bench?

Yes, F. Hoffman’s case can always be reconsidered by larger bend

for the purpose of addressing the point of difference between two
decisions.

Re: S.M. Dvechem Case

10 Whether the decision of the Supreme Court in S.M. Dyechem

India Ltd. Vs. Cadbury India Ltd,469 (two judge bench judgment)
is correctly decided when the judgment of the Supreme Court in
Dyechem case is partly reversed by three judge bench of the
Supreme Court in Cadila Healthcare case470 ?. What is the true
ratio of S. M. Dyechem case? Paras 34 and 35 of Dyechem case
have been reversed in Cadila healthcare case in Para 18 (page
1961). Paras 38 to 46 in Dyechem case have been reversed by the
Supreme Court in Cadila Health care case in Paras 18 and 19
(page 1961). Para 53 of Dyechem case is reversed by the Supreme
Court in Cadila Health care case in Para 20 (page 1962).

469 AIR 2000 SC 2114.

470 Re: Cadila case

612
 In S. M. Dyechem’s case Hon ’ble Supreme Court held that true test
for determining deceptive similarity is as follows:

“The first one is this: Is there any special aspect of the

common feature which has been copied? The second test
will be with reference to the ‘mode in which the parts are
put together differently? That is to say whether the
dissimilarity of the part or parts is enough to mark the whole
thing dissimilar (Kerly Para 17.17 referred to above). The
third test is whether when there are common elements; one
should not pay more regard to the parts which are not
common, while at the same time not disregarding the
common parts? What is the first impression? ”

This is the ratio laid down in S. M. Dyechem’s case that the test for
determining deceptive similarity is not based on visual or phonetic
similarity, goods to which they are to be applied, nature and kind of
customer who would be likely to buy those goods, mode ofpurchasing the
goods or placing orders for the goods etc but based on above stated
criteria.

However the said decision is no more a good law in light of the fact that
the test laid down in S. M. Dyechem is overruled by Hon ’ble Supreme
Court in Cadila’s case.

11 When the Supreme Court by three judge Bench judgment in Cadila

Healthcare case has partly reversed expressly Dyechem case,
whether now Dyechem case may be placed before a larger bench of
the Supreme Court to reconsider the said case?

No, now the decision of S. M. Dyechem cannot be placed before

larger bench once it is overruled by the larger bench.

613
12 In Dyechem case, plaintiff had trade mark ‘Piknik’ for class 30
(Which includes chocolate). Defendant Cadbury used the mark
‘Picnic’ for chocolate. Once there is phonetic similarity between
‘Piknik’ and ‘Picnic’, and when the Trial Court has held that there
was deceptive similarity between the two words and that confusion
would be created in the mind of the purchaser because marks were
similar, visually or occularly and phonetically and essential
features of the trade marks were similar. Whether the Gujarat High
Court while hearing an appeal from an order against the aforesaid
judgment and order, was justified in reversing the judgment of the
trial Court without expressly deciding that Trial Court has erred in
arriving at incorrect principle of law. And whether the Supreme
Court was justified in these circumstances, to confirm the view of
the High Court while dismissing the appeal from that judgment?

In my considered view the decision rendered by Hon ’ble Supreme

Court and Hon ’ble Gujarat High Court were contrary to settled
principles of law. It failed to take into consideration well
established test laid down in catena of decisions of Hon ’ble
Supreme Court for determining deceptive similarity between two
products.

13 It may be noted that so far as Dyechem case is concerned wherein

two judge Bench of the Supreme Court has properly appreciated
binding decision of the three judge bench of the apex Court in
Amritdhara Pharmacy case471 ,Kaviraj Pandit Durga Dutt case472
473
and subsequent judgment of the Supreme Court in Parle case

471 AIR 1963 SC 449

472 AIR 1965 SC 980
473 AIR 1960 SC 142

614
 and Rostan and Rustam474 and other cases, has the Supreme Court

properly appreciated the ratio of these decisions? On that ground

also, whether Dyechem case should be reconsidered by a larger
bench of the Supreme Court.

As stated above S. M. Dyechem case cannot be reconsidered by the

larger bench in view of the fact the said judgment is overruled by
Hon’ble Supreme Court in Cadila’s Case. Now the decision of
Hon ’ble Supreme Court in Cadila ’s case is law of the land and it
continues to govern testfor determining deceptive similarity.

8.4.3 Reply From:- Dr. Rajesh Acharya Advocate

With due respect of Hon’ble Supreme Court we will not criticize the
authority passed by the Hon’ble Apex Court. However, with respect to
your request we talks about your question. Without prejudice to the views
and law laid down by the Hon’ble Apex Court we discussed as below:

With reference to your question, we discussed as below:

A two judge Bench of Supreme Court laid down certain significant

principles with regard to trademarks of medicinal products in Hoffmann-
La Roche & Co. Ltd. V Geoffrey Manner & Co. (P) Ltd., (1969) 2 SCC
716. The issue was whether the mark of the respondent DROPOVIT was
deceptively similar to the registered mark PROTOVIT of the
appellants. The court held that in deciding whether the respondent’s
mark is likely to deceive or cause confusion, it is the probable effect of
the mark on the average consumer that has to be considered. It is
necessary to apply both visual and phonetic tests. It is important that
marks must be compared as a whole. It is not right to take a portion of

474 AIR 1970 SC 1649

615
the word and to say that because that portion of the mark differs from the
corresponding portion of the other mark, there is no sufficient similarity
to cause confusion. The Court observed in Tokalon Ltd., V Davidson &
Co. (1906) 23 RPC 774 at P. 777, that the Court is not bound to scan the
words as in comparation literarum. The true test is whether the totality of
the proposed trademark is such that it is likely to cause deception or
confusion or mistake in the minds or persons accustomed to the existing
trademark.

In order to decide whether DROPOVIT is deceptively similar to

PROTOVIT, the two words must be compared as whole. Each of the two
words consists of eight letters, the last three letters are common and in the
uncommon part the first two are consonants, the next is the same vowel
“o” the next is a consonant and the fifth is again a common vowel ‘O’,
the combined effect is to produce alliteration. The last three letters VIT is
a well known abbreviation used in the pharmaceutical trade to denote
vitamin. The Court noted the existence of about 57 trademarks in the
Register which have the common suffix VIT indicating the goods are
vitamin preparations. It is apparent that the terminal syllable VIT in the
two marks is both descriptive and common to the trade and also
describing the type of medicine. If greater regard is paid to the
uncommon elements in these two words it will be difficult to believe that
one will be taken for or confused with the other.

The question of deceptive similarity has to be decided on the basis of

class of goods to which the marks apply. Both are medicinal preparations
containing vitamins. From the nature of the goods it appears that most of
the customers would obtain a prescription from a doctor and show it to
the chemist before purchase. In such a case, except where the handwriting
of the doctor is very bad or illegible the chance of confusion is very

616
remote. The fact that Drug rules 1945 mandate that these drugs could be
soild only by a licensed dealer reduces the possibility of confusion to a
considerable extent.

As there are about 57 trademarks in the Register with suffix, VIT, even
an average customer would know that in respect of vitamin preparations,
the word VIT occurs in a large number of trademarks and because of this
he would naturally be on his guard and take special care against making a
mistake.

Having regard to all these circumstances, the Court held that the marks
Protovit and Dropovit are not deceptively similar and that there was no
reasonable probability of confusion of the words.

In Amritdhara Pharmacy V Satya Deo Gupta AIR 1963 Sc 449, the

respondent had applied for registration of the mark
‘LAKSHMANDHARA’ in respect of a medicinal preparation for the
alleviation of various aliments. This was opposed by the appellant whose
mark ‘AMRITDHARA’ was already registered for similar medicinal
preparation. The question was whether the mark Lakshmandhara is
deceptively similar to Amritdhara. The contention of the applicant was
that the two names are distinctively. The court held that a trademark is
likely to deceive or cause confusion by its resemblance to another during
its legitimate use in the market. The use of the word DHARA which
means current or stram by itself is not decisive of the matter. What is to
be considered is the overall similarity of the composite words having
regard to the fact that both are medicinal preparations of the same
description. A critical comparison of the two marks may disclose some
points of difference but an unwary purchaser of average intelligence and
imperfect recollection would be deceived by the overall similarity of tow

617
names. Both Amritdhara and Lakshmandhara are medicinal preparation
which will be purchased across the counter both by townsfolk and
villagers, literate and illiterate. To the customers of average intelligence
and imperfect recollection the overall structural and phonetic similarity
of two marks is likely to cause confusion. An \unwary purchaser of
average intelligence would not split the name into its component parts
and consider the meaning of composite words as current of Lashman
(Lakshmandhara) or current of nectar (Amritdhara). A critical
comparison of the two marks may disclose some points of difference but
an unwary purchaser would go more by similarity of the two names in
the context of the widely known medicinal preparation he wants for his
ailments. The trademark is a whole thing - the whole is to be considered.

In Durga Dutta Sharma v Navaratna Pharmaceutical Laboratories AIR

1965 SC 980, the respondent who manufactured medicinal products had
got the mark NAVRATNA registered while the appellant had applied
for registration of NAVRATNA KALPA. The Court held that in an
action for infringement of a registered trademark, if essential feature of
the trademark of the plaintiff have been adopted by the defendant, the fact
that the get up, packing or other writing show marked differences or
indicate clearly a trade origin different from that of the registered
proprietor of the mark would be immaterial. However, in the case of
passing off, the defendant may escape liability if he can show that the
added matter is sufficient to distinguish his goods from those of the
plaintiff. Where a defendant uses a mark identical to a registered
trademark no further question arise and infringement is made out. When
two marks are not identical, the plaintiff would have to make out that the
mark used by the defendant so nearly resembles the plaintiffs trademark
as is likely to deceive or cause confusion. This has to be ascertained by a

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comparison of the two marks. The degree of resemblance necessary to
cause deception is not capable of definition by laying down objective
standards. The purpose of comparison is to see if the essential features of
the trademark of the plaintiff are found in the mark of the defendant. The
identification of essential feature of the mark is a question of fact based
on evidence and depends on state judgment of the Court. The
resemblance between the marks may be phonetic, visual or in the basic
idea of the plaintiffs mark. The ultimate analysis is whether the mark
used by the defendant as a whole is deceptively similar to the registered
mark of the plaintiff.

Note:- From the above para we can conclude that as per the decision in
the 1997 Biofarma decision the Delhi High Court observed that while
deciding the similarity or otherwise in the names of pharmaceutical
products different courts have taken different views. Moreover, it is also
laid down by the Hon’ble Apex Court in various cases that each case has
different facts and circumstances. Subsequent to the Supreme Court set
out the broad principles relating to trademark law in pharmaceutical
products holding them as a class.

But the settled law is that a mark should be regarded as a whole. It is

pertinent to note that in Hoffmann La Roche, the two judge bench of the
Supreme Court stated this principle explicitly and went on to dissect
PROTOVIT and DROPOVIT (Supra). The Court noted the existence of
a large number of marks with common suffix VIT indicating vitamin
preparations. The Court then placed greater regard to uncommon
elements.

The High Courts which noted the fact that suffix or prefix may be same
in a large number of pharma trademarks, have also observed that the

619
common part which is public juris cannot be appropriated as proprietary
right.

It discussed the principles laid down and overruled the decision of Single
Bench in S M Dyechme Ltd V Cadbury (India) Ltd. (2000) 5 SCC 573.
It was a passing off action where the plaintiffs mark was PIKNIK and
defendant’s mark was PICNIC for chocolates. The single judge bench of
the Supreme Court held that where common feature are included in rival
trademarks, more regard is to be paid to the parts not common and the
proper course is to look at the marks as a whole, but at the same time not
to disregard the parts which are common. The Court applied the principle
that dissimilarity in essential feature in devices and composite marks are
more important than some similarity. The Court ruled that the
dissimilarities of he marks have to be given more importance than
phonetic similarity or similarity in use of the word Picnic or Piknik. This
decision was overruled by the Division Bench stating that it was unable to
agree with the principle that phonetic similarity has to be jettisoned when
the manner in which the marks are written is different as it is against the
decision of Amritdhara case, the products will be purchased by both
village and townsfolk, illiterate and literate and that the question was to
be approached from the point of view of a man of average intelligence
and imperfect recollection.

The decisions of English Court may be relevant (S M Dychem ruling was

based on English decisions) in a country where literacy is high and the
marks used are in the language which the purchaser can understand.
While English cases may be relevant in understanding he essential
features of trademark law, while dealing with the sale of consumer items
in India, the courts have to bear in mind the difference in situation
between England and India. Courts have to keep in mind that the

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purchaser of the goods in India may have absolutely no knowledge of or
the language in which the trademark is written and to whom different
words with slight difference in spelling may sound phonetically the same.
In passing off cases what is to be seen is whether the misrepresentation
made by the defendant is of such nature as is likely to cause an ordinary
consumer to confuse one product for another due to similarity of marks
and other surrounding factors.

In Cadila, the defendant had raised the plea that the world “Falci”in the
competing marks indicates the disease. The Court did not dwell on the
bublici juris aspect but laid down stricter standards for pharmaceutical
products on public interest need to protect the public from deception or
confusion in medicinal products. It should be noted that the Court did not
give a finding whether Falcitab and Falcigo are deceptively similar
stating that such finding require evidence.

That suit related to medicines sold under the brand name “FALCIGO” by
the plaintiff appellant and “ FALCITAB” by the respondent defendant.
Both the medicines were used for the treatment of Falciparum Malaria.
The appellant’s Falcigo contained Artisinuate while defendant’s Faclitab
contained Melfloquine Hydrochloride. Both druge had the approval of
Drug Controller General (India) for the treatment of Falciparum Malaria.

The respondent’s defence was that world “ Falci” , the prefix of he mark
is taken from the name of the disease Falciparum malaria. It is a common
practice in pharmaceutical trade to use part of the word of the disease in
the trademark to indicate to doctors and chemists that a particular product
/ drug is meant for a particular disease. The two products in question were
Schedule L drugs which can be sold only to hospitals and clinics with the
result that there could not even be a remote chance of deception and

621
conclusion. Unlike Schedule H drugs which are sold by the chemists only
on prescription of the doctors, Schedule L drugs are sold only to hospitals
and clinics and not to customers.

The plaintiff sought an interim injunction pending the disposal of the suit.
In this application, the District Court came to the conclusion that the two
drugs, Falcigo and Falcitab differed in appearance, formulation and price
and as the drugs were not meant to be sold to an individual there is little
chance of deception or confusion. On appeal the High Court agreed with
these findings. On appeal to the Supreme Court, the Court did not
interfere with the order refusing interim injunction but gave directions for
expeditious disposal of the suit as the Court felt that evidence may be
required to decide on the merits of the case, But the Supreme Court set
out the principles on which such cases are required to be decided.

8.4.4 Reply from Mr. Y.J. Trivedi Advocate Regarding question

No.l

In a case of F. Hoffmann - La Roche and Co. Vs. Geoffrey Manners

and Co. (Air 1970 SC 2062) the Hon’ble Supreme Court correctly
decided that the word ‘dropovit’ is not deceptively similar to the word
‘protovif on the basis that the prefix ‘d’ and ‘p’ are, when pronounced,
the two words which will not be mistaken for or confused with other
because ‘p’ and ‘d’ can not possible slurred over in pronunciation and the
words are so similar that there is no resemble possibility of confusion
between the words and the suffix ‘vif is used by more than 57 persons as
a trade mark to indicate vitamin and other special circumstances all
considered in the facts of the present case is the Drug Rule 1945 under
Rule 61(2) vitamin preparation would be covered by item (5) in schedule
‘C’ (1) to the Rules and a license would be required to stock such vitamin

622
preparation and to sell them in retails and the goods are only sold by
such license dealer hence vendor would be a licence dealer also reduced
possibility of confusion to a considerable extend therefore looking to the
facts of that case. Hon’ble SC was correct in holding that there is no
deceptively similarity in trade marks ‘deopovit’ and and ‘ protovit’.

Regarding Amritdhara Pharmacy Vs Satva Dev Gupta (AIR 1963

SC 449)

The Hon’ble Sc considered the mark deceptively similar, looking to the

commodity for which the products sold are purchased by illiterate and
badly educated persons and there is no case about the use of prefix by
number of persons and there is no restriction for sale of product as
considered by SC in dropovit case and further another distinguishing
element is that there is an acquiesce of use without any instance of
confusion and therefore when both the goods are sold in different
territory to different people where goods of Amritdhara which was
registered but use in only particular territory whereas the product of
Laxmandhara was available in different territory and therefore without
any instance of confusion, mark used in the market and therefore as per
the provisions of the Act the registration was allowed on the ground of
concurrent use and hence the Hon’ble Court though considered similarity
of the marks as the registration was allowed on the basis of honest
concurrent use.

With reference to point nos, 2.1, 2.2 & 2.3

The Hon’ble SC has not considered that said referred judgment in case of
F. Hoffmann as the case is required to be considered on the basis of
facts of each case.

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With reference to point no. 3

In the dropovit case of F. Hoffmann, the SC has rightly considered the

facts of the said case which reduced the chance of confusion and
deception.

With reference to point no. 5.

Looking to the facts and circumstances of the case, the Hon’ble SC was
correct in considering the wortd ‘dropovit’ was not deceptively similar to
the word ‘ protovit’

With teferenee to point no. 6

In the case of Cadila, the Hon’ble Sc was pleased to consider various

factors and has discussed about the new development of communications,
the effect of deception or confusion which causes disaster effect to the
life of human being and what is the change in market the goods are even
purchased by phone, all these circumstances and development in
marketing system and purchasing system and effect of drug to a human
body, all factor are considered and therefore the Hon’ble SC insisted and
suggested the Courts to be more vigilant while considering the issue of
deceptively similarity in respect of pharmaceutical products and the
Hon’ble Sc was pleased to consider the case of Durgadatta Sharma of
Navranta Pharmacy. F. Hoffmann La Roche V. Geoffrey Manners and
Co. S.M.Dychem and Amritdhara case and after considering all these
various judgments, the SC has given a direction to the Courts to be more
vigilant where medicines case is required on the paramount consideration
of public health and therefore the Hon’ble SC was pleased to consider
the cases of dropovit, Lammandhara, Navranta Pharmacy and S.M.
Dychem and there is no need for reconsideration of the said cases before
a larger bench, this comment, therefore, covers issue nos. 6,7,8 & 9.

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With reference to point nos. 10.11 & 12

The Hon’ble SC differs with the Judgment of S.M. Dychem more

particularly on the basic fault on issue that added matter or dissimilar
matter should not be considered but similarity of element of registered
trademark is required to be considered because as per the provisions of
section 28 of the Trade Marks Act 1999, right conferred to the registered
proprietor as per the ambit of registration, therefore, if the element of
right conferred by registration is taken by the Defendant which amounts
to an infringement but by adding out side the mark is not required to be
considered which is very well considered by SC in judgment of 1972 SC
1359 Parle case, out side the mark, any addition or alteration is not
relevant in infringement proceeding but it may help in passing off action
because added matter can distinguish the origin of the product and remote
the chance of passing off as observed by SC in 1965 discussing the
distinction between infringement and passing off action.

8.4.5 Reply from Manisha Lavkumar Advocate

Answers to the question raised by you:

I. In the dceision of F. Hoffmann- LA Roche and Co. v. Geoffrey

Manners and Co., I believe that the Apex Court made a fine
distinction between the deceptive and non-deceptive trademarks by
giving significance to the drug being a schedule H drug. Also while
comparing 'Dropovit' and (Protovit', the Supreme Court considered
the nature and kind of customer who would be likely to buy those
goods. In fact you must consider all the surrounding circumstances;
and you must further consider what is likely to happen if each of
those trademarks is used in a normal way as a trade mark for the
goods of the respective owners of the marks.Therefore, the

625
 Supreme Court was apt in deciding in the matter of F. Hoffmann -
LA Roche and Co. v. Geoffrey Manners and Co.

2. The Supreme Court in the same case has referred to certain English
cases and not the earlier judgement of the same court as the case of
Amritdhara Pharmacy v. Satya Dev Gupta. The above act of the
Supreme Court is very well justified as in the Amritdhara case
where the Court held the mark 'Amritdhara' and 'Laxmandhara' as
deceptively similar can be distinguished from the issue in F.
Hoffman case, on the ground of its usage. The product in
Amritdhara case could be sold directly to the customer without any
prescription and therefore there was a greater chance of its
customers being confused.

2.1. The principle governing suits for infringement was laid down in
KavirajPanditDurgaDutt Sharma v Navaratna Pharmaceutical
Laboratories (AIR 1965 SC 980) as follows:

"In an action for infringement the onus would be on the plaintiff to

establish that the trademark used by the defendant in the course of
trade in the goods in respect of which his mark is registered is
deceptively similar. This has neeessarily to be ascertained by a
comparison of the two marks - the degree of resemblance which is
necessary to exist to cause deception not being capable of
definition by laying down objective standards."

I believe the above case the marks were held deceptive as the
circumstances of the case were such. There is a need to distinguish
this judgement from the F. Hoffman case, as stated earlier the court
in F. Hoffman case has emphasised on the fact of drug being a
Schedule-H drug. In the both cases mentioned by you the

626
 distinction lies in the manner in which the product is to be supplied
in the market.

2.2. For the already mentioned reasons above, I do not believe that the
decision in F. Hoffman case is per incuriam.

2.3. I would answer this question in positive.

3. I would disagree on the point when you say that Supreme Court
has dissected both the words. This is because by merely comparing
the two words by considering it in bits does not mean dissecting.
The Supreme Court has very validly and the method adopted is
completely reasonable. However the reasoning given by the Court
is flawed at eertain point. For instance, when it takes the point of
handwriting of the doctor being illegible.

4. According to my understanding, the grounds and reasons for

holding Dropovit and Protovit deceptive is completely relevant and
germane.

5. With regard to the judgement of Cadila Healthcare Case, I believe

that the judgement delivered very well explained the concepts and
cases relating to the matter. However, as submitted earlier, I do not
believe that the judgement delivered in F. Hoffman is flawed. Also
Supreme Court in certain judgement post the F. Hoffman case has
decided in a manner supporting the judgement in the Hoffman
case.

You must look into certain eases as follows:

• The first ease — AstraZeneca UK Ltd v Orchid Chemicals &

Pharmaceuticals Ltd — the marks in dispute were MERONEM

627
(owned by AstraZeneca) and MEROMER (owned by Orchid), both
derived from the active ingredient meropenem. The Division
Bench of the Delhi High Court concluded that meropenem is a
molecule used to treat bacterial infection, and the term 'mero' is an
abbreviation of the generic term 'meropenem' and therefore
considered in the public domain. Consequently, AstraZeneca was
held to not be entitled to claim exclusive rights to use of the term
'mero', as it was descriptive of the drug. The Division Bench
further held that because 'mero' was descriptive and in the public
domain, customers would tend to ignore it and pay more attention
to the uncommon features, namely 'me and 'nem', which were
clearly dissimilar. The court therefore refused to restrain Orchid
Chemicals from using the mark MEROMER.

The second case — Schering Corporation v Alkem Laboratories

Ltd — the marks in dispute were TEMODAL and TEMODAR
(Schering), TEMOKEM (Alkem) and TEMOGET (Getwell
Sciences India Pvt Ltd). All four marks derived from the active
ingredient temozolomide. The two judge bench agreed with the
rationale of the AstraZeneca decision and dismissed Schering's
argument that the term 'tem' or 'tern' had acquired secondary
meaning as a result of its registration of the TEMODAL and
TEMODAR marks in over 100 countries and its longstanding and
uninterrupted use of the marks. The court took the view that
"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'

628
 known to describe and denote it". The court held that TEMOKEM
and TEMOGET could not be said to be either phonetically,
visually or in any other manner deceptively similar to the
appellant's TEMODAL and TEMODAR trademarks. Therefore,
there is no need to revise the judgement delivered in F. Hoffman
case.

6. Certainly, consider the already mentioned reasons.

7. This question has already been answered.

8. The court in Cadila Healthcare Case has very well overturned the
judgement of Dyechem case at various instances. I completely
agree to the act of court, therefore, I believe that the judgement
delivered in Dyechem case is flawed.

9. Dyechem case may certainly be placed before a larger bench.

10. The High Court and the Supreme Court were not justified in the
case of Dyechem case, as the two words Picnic' and Piknic' were
clearly deceptive.

11. The Supreme Court has clearly cither misunderstood or misapplied

the ratios of the cases mentioned by you. Hence Dyechem Case
may certainly be placed before a larger bench for reconsideration.

629
CONCLUSION

The branding of pharmaceutical products is an area where industry

practices, trademark principles and public interest interact. The public
interest involves in providing affordable healthcare and in removing
confusion from the market place. A survey of the judicial
pronouncements shows a complex number of issues are placed before the
Court. Though Cadila is a seminal decision of the Supreme Court
probably due to the complexity of issues involved, the decisions on
pharma brands have not been uniform even after the Cadila decision. The
Supreme Court may have to look at all the issues comprehensively when
an opportunity presents itself to bring in predictability in the market.

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