1. This appeal is directed against the order dated 9 August 2011 passed by the learned Single Judge of this Court allowing the Notice of Motion of the respondents-plaintiffs and restraining the appellants-defendants from using the mark OSTONAT. The learned trial Judge has held prima facie that there was violation of the plaintiffs'' registered trade mark OSTONAT. The suit was filed for infringement and passing off the plaintiffs'' trademark OSTONATE. The plaintiffs'' trademark was registered in 2005 with effect from 1997 when the application was made. The defendants applied for registration of its trademark OSTONAT in 2003. The plaintiffs have opposed the registration before the Registrar of Trademarks. The defendants have applied for rectification of the plaintiffs'' trademark in 2007. Both applications are pending. Plaintiff No. 1 licensed its trademark to plaintiff No. 2 in 2008. Plaintiff No. 2 is stated to have started the use of the trademark OSTONATE from January 2009. The defendants are stated to have used their trademark OSTONAT since 2003.
2. The trademarks relate to pharmaceutical products. The plaintiffs'' products are calcium supplements. The defendants'' products are kits containing certain alendronic acid tablets and calcium tablets.
3. The learned Judge has essentially considered the deceptive similarity between the two marks. He has observed that they are phonetically as well as visually similar. The similarity may be visual, phonetic or structural. Structural similarity is not seen in view of the fact that the aforesaid marks are in different alphabets and different sizes on the tablet packets. Whereas the defendants'' trademark OSTONAT is in block capitals, the plaintiffs'' trademark OSTONATE is in small cursive alphabet. Phonetically, they sound similar except for the broad and narrow pronunciation at the end of the word due to the addition of the letter ''E'' in the plaintiffs'' mark. Visually the similarity is even more apparent. Since they relate to pharmaceutical products, the learned Judge has rightly observed the need to exercise greater caution against deception as held in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 PTC 541 (SC).
4. Whereas the plaintiffs'' trademark is registered, the defendants'' is yet not'' registered. Consequent upon the registration the plaintiffs have obtained the statutory rights u/s 28(1) of the Trademarks Act, 1999 (the Act). Having the exclusive right to use the trademark in relation to the pharmaceutical products for which the trademark is allowed to be registered, such a trademark of the plaintiffs would be infringed by the defendants whose mark is not registered upon its use, if it is identical or similar to the plaintiffs'' registered trademark u/s 29 of the Act.
5. The defendants had applied for registration of its trademark 4 years after the plaintiffs'' application. The defendants are deemed to have taken search of the registry before choosing its mark for registration. The defendants have been using the mark ever since. The use may be dishonest or negligent. However once the plaintiffs'' mark is registered, an almost identical mark cannot be used by the defendants. Counsel on behalf of the defendants contends that the defendants'' use is neither dishonest nor negligent. It is the use of the term "OSTO" which is with reference to the condition "ostoporosis". The word NAT are the first letters of the defendant company''s name. The defendants have shown various certificates of registration containing the word NAT either as a prefix or suffix to its products. It may be mentioned that despite obtaining registration for a number of products between 2005 to 2008, the defendants failed to obtain registration for its products relating to acidity and calcium use despite its application since 2003.
6. Counsel on behalf of both the parties have relied upon various judgments before the learned single Judge as well as before us with regard to the similarity of use of trademarks and trade-names.
7. In the case of Pidilite Industries Ltd. v. S.M. Associates & Ors. 2004 (28) PTC 193 (Bom) the single Judge of this Court considered label marks "M-Seal" and "SM-Seal". The Court considered the colours of the cartons, colour of the box and the label, the bottom portion of the label, the words used on the label and concluded that the essential and substantial features of the plaintiff''s work constituting its copyright were incorporated in the defendants'' work satisfying the test of infringement of such copyright. In that case the cartons were essentially in black and red colours with a white strip. The words on the plaintiff''s label on the carton were "Seals", "Joins", "Fixes", "Builds" and the words on the defendants'' carton were "Seals", "Joins", "Insulates", "Builds" in identical manner. The learned Judge considered the similarities and disregarded the dissimilarities or variations. The variations were in the sizes and the colours as also the addition of the letter "S" before "M" in the Defendants'' product. The other variation was the addition of the word PIDILITE, which was a name of the Plaintiffs'' company which was absent in the Defendants'' product. The Court concluded that the two marks seen as a whole demonstrated a likelihood of confusion or deception in view of the similarity between the two. Since the essential features of the Plaintiffs'' trademarks were adopted by the Defendants, the Court issued an injunction against its use.
8. In the case of Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. 2001 PTC 541 (SC) the two trade names were of pharmaceutical products, "Falcitab" and "Falcigo" used as a cure against Falcipharum Malaria. In an action for infringement and passing off the Court considered the phonetic similarity and the confusion it would cause to a purchaser who may be a villager or a townsfolk, literate or illiterate. The Court observed that the question had to be approached from the point of view of a man of average intelligence and imperfect recollection as held in a number of cases earlier. The Court held that a stricter approached should be adopted for medicinal products in view of its disastrous effects as against the use of non-medicinal products causing only economic loss. The Supreme Court laid down the tests in any action for passing off even on the basis of unregistered trademark relating to the nature of the marks, the degree of resemblance, the nature of the goods, as also the nature and performance of the goods of the rival traders, the class of purchasers, the mode of purchasing and other surrounding circumstances.
9. The Supreme Court overruled the observation of the trial Court as well as the Appeal Court of lack of any chance of any deception as the two products differed in appearance, formula and price and directed the matter to be heard keeping in view the aforesaid factors set out. The Supreme Court did not find that the word "Falci" related only to a disease and, therefore, would not constitute a part of a trademark.
10. Counsel on behalf of the Appellants drew our attention to further judgments of similar word names or trademarks. In the case of
11. In the case of Canon Kabushiki Kaisha v. B. Mahajan & Ors. 2007 (35) PTC 265 (Del) the Court considered the use of the trademark "CANON" and "CANON-HOLD" upon an action for infringement and passing off. The Court did not issue injunction as the products of the parties were entirely different and the use of the word "CANON" was a common term found in the dictionary with various meanings. Whereas the Plaintiff used the trademark "CANON" for Imaging Equipment and Information Systems, the Defendant used the mark "CANON-HOLD" for nuts, bolts and expansion fasteners. Despite the fact that the word CANON was more prominent than the word HOLD and the depiction in identical and similar artistic and stylising form by the Defendant as in the Plaintiff''s mark, the blanket injunction granted by the trial Court was modified by the High Court. A partial order was granted because the Plaintiff, despite registration of the mark had not started the use of the mark and hence the Defendant''s contention that the Plaintiff held on to the mark merely to the block the adoption by the Defendant was required to be considered.
12. In the case of
13. What emerges from the aforesaid observation is a question of fact. The learned Judge has considered in detail the similarities in the products of the Plaintiffs and the Defendants in this case as per the tests laid down by the Supreme Court in the case of Cadila. The learned Judge has considered the various similarities disregarding the dissimilarities as per the principles of such tests laid down in various judgments of the Supreme Court. The learned Judge has also considered the generic term as well as the similarity in the non generic term. It may be mentioned that the case of "MICROTEL" and "MICRONIX" can be distinguished because only the prefix which was a generic term was the same in the two names. A lot of dissimilarities made the Court view the similarities in the generic name as of little consequence. It is not so in this case. Except for the addition of letter "E" and the different alphabets the two words are visually and phonetically similar. Similarly the watering down of the injunction in the case "CANON" and "CANON-HOLD" was because the 2 products were entirely different and the Plaintiffs did not use the trademark which was registered in its name which was prima facie seen to be motivated to block the Defendants use of its mark. The refusal to grant injunction in the case of "OXYCOOL" and "OXYRICH" was because aside from the generic prefix the other name was entirely different.
14. The other aspect which has been adjudicated in this case relates to the prior use of the trademark. Counsel on behalf of the Defendant-Appellant contended that the Plaintiffs'' use was only since 2009 upon Plaintiff No. 1 licensing the trade name to Plaintiff No. 2. The Defendants'' use is claimed to be at least since 2003 when the application for registration was made. This would essentially be an aspect requiring oral evidence before the Registrar and based upon which the Defendants'' application for registration as also the Plaintiffs'' rectification application could be considered.
15. In the case of Kamat Hotels (India) Limited v. Royal Orchid Hotels Limited 2011 (13) BOM. L.R. 1248 in an action for infringement and passing off the prior use was inter alia seen. It was held that such use had to be continuous and not stray, isolated or disjointed. The single Judge of this Court observed that in that case the Plaintiff used the mark since 1997 but obtained registration in 2004. The Defendant used the mark from 1999 after the use by the Plaintiff commenced. The documentary evidence produced by the parties with regard to the user does not show continuous prior use by the Defendant. In paragraph 14 the Court observed thus:
the mark in respect of which protection is sought must have been used from a date prior to the use of the registered trade mark or the date of registration of the registered trade mark whichever is earlier. Hence, as an illustration, if the user by the Plaintiff is prior to registration, then the use by the Defendant must be established to be prior to the use by the Plaintiff. If the Plaintiff has not used the mark prior to the date of registration, the use by the Defendant has to be prior to the date of registration of the Plaintiff''s mark.
The Court also laid down the test of such use thus:
Section 34 thus provides for specific requirements which relate to (i) the nature of the goods or services in relation to which the mark is used; (ii) the nature and character of use; (iii) the person who must use; and (iv) the date from which the mark should have been used
In this case the registration of the Plaintiffs'' trademark is with effect from 1997. The Defendant has not shown the use of its trademark prior to that date. In fact the Defendants have not shown the positive case of continuous prior use by itself, but has alleged a negative case of the lack of use by the Plaintiffs until 2009. The evidence to prove prior use would be led before the Registrar in the pending application. The Defendants have not shown and substantiated their specific sales figures which is observed to be the cogent material for proof of prior continuous use.
It would, therefore, be improper to allow the Defendant to use the trademark until the issue of fact is settled before the competent authority.
In the case of Bal Pharma Ltd. v. Centaur Laboratories Pvt. Ltd. 2002 241 PTC 226 (Bom) (DB) this Court held that the Plaintiff must show its user prior to the user of the Defendant. In that case the Court observed investment of considerable amount by the Defendant who honestly used the mark "MICRODINE". The Plaintiff did not use its mark "MICROLABS" though registered in 1982 until 1998 during which the Defendant used its mark freely and openly and to the knowledge of all in the trade. It was held that the Plaintiff allowed grass to grow under its feet and had not shown its user prior to the Defendant''s use. However the Court observed the ruling in the case of
16. In the case of L.D. Malhotra Industries v. Ropi Industries 1976 ILR Del 278: PTC (Suppl) (2) 564 (Del) to which our attention has been specifically drawn by Counsel on behalf of the Appellants the consideration of prior use by the Defendants has been specifically seen. In that case the word "KISMAT" was claimed by the parties. The Plaintiff registered its mark in 1967. The Defendants made its application for registration in 1969 upon the use of the mark since 1963. The Plaintiff opposed the application. The Defendants showed their sales figures as also the number of its mark. Upon observing that there was ample evidence of prior use by the Defendants since 1963 and the Plaintiff''s use of the mark since 1967 with no claim to prior user, the Court had to consider the dates of application for registration as well as user in an appeal against rectification.
In this case the application for rectification itself is pending as also the opposition of the Plaintiffs to the Defendants'' registration of its mark. The evidence of user can be best adduced in the rectification application. Pending such application in the suit filed by the Plaintiff the Defendants'' negligent or dishonest use by a patently similar mark of the Plaintiff alone would have to be considered.
17. Hence upon hearing the learned Counsel for the parties and the aforesaid precedents we are of the view that interim injunction granted by the learned trial Judge during the pendency of the suit cannot be faulted. We, therefore, dismiss the appeal.
18. At this stage the learned Counsel for the appellant defendant prays that the stay granted by the learned trial Judge may be continued for some time to enable the appellant to take further recourse.
19. In the facts and circumstances of the case and having regard to the fact that the appellant defendant has been using the offending trade mark since 2003, we continue the ad-interim stay granted by the learned trial Judge for two months from today. Also having regard to the fact that the rectification application filed by the appellant-defendant is pending since 22 November 2007 and that the appellant-defendant''s application for registration of the trademark is pending since 7 July 2003 to which the respondent plaintiff has filed opposition, in suo motu exercise of our jurisdiction under Article 227 of the Constitution, we direct that both the applications shall be heard and decided by the concerned authorities within two months from the date of receipt of this order.
