TaxTMI 
TaxTMI 
2011 (8) TMI 1291
X X X X Extracts X X X X
X X X X Extracts X X X X
.... manufacturing and marketing a drug under the trademark „NIFTAS‟ which is alleged to be similar/identical with the trademark „NIFTRAN‟ of the plaintiff. „NIFTAS‟ also is prescribed in the treatment of urinary tract infection. The case of the plaintiff is that the trademark „NIFTAS‟ has been adopted by the defendant with the intention of encashing upon the goodwill and reputation in the trademark „NIFTRON‟ and is bound to cause confusion and deception amongst the purchasing public in the trade, which would be induced into believing that the products being sold by the defendant also originates from the plaintiff company. IA No. 10148/2009 has been filed by the plaintiff seeking interim injunction against use of the mark „NIFTAS‟ by defendants during pendency of the suit. 2. Defendant No. 1 has contested the suit and has claimed that the trademarks „NIFTRAN‟ and „NIFTAS‟ are based on the drug NITROFURANTOIN, the words „NIFTRAN‟ and „NIFTAS‟ representing the molecule or drug represented by the names and no one can claim a monopoly over these names. It is also alleged....
X X X X Extracts X X X X
X X X X Extracts X X X X
....e subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trademarks. 5. Thus, no infringement on the part of defendant No.1 is made out on account of use of the trade mark „NIFTAS‟ by it and the case of the plaintiff is based on passing off alone. In a case of infringement, if it is found that the defendant has adopted the essential features of the registered trade mark of the plaintiff, he would be liable even if he is able to establish that on account of packaging, get up and other writings on his goods or on the container in which the goods are sold by him, it is possible to clearly distinguish his goods from the goods of the plaintiff. On the other hand in a case of passing off if it is shown that on account of these factors it is very much possible for the purchaser to identify the origin of the goods and thereby distinguish the goods of the defendant from the goods of the plaintiff, the defendant may not be held liable. As observed by the Supreme Court in Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 195....
X X X X Extracts X X X X
X X X X Extracts X X X X
....us effects. Taking note of the fact that in our country, there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, the Court was of the view that in our context, to apply the principles of English law regarding dissimilarity of the marks or the customer knowing about the distinguishing characteristics of the plaintiff's goods seems to overlooking the ground realities in India. It was also observed that 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 trademark is written and to whom different words with slight difference in spellings may sound phonetically the same. Noticing that Schedule "H" drugs are to be sold by the chemist only on the prescription of the Doctor but Schedule "L" drugs are not sold across the counter but are sold only to the hospitals and clinics, Supreme Court observed that it was not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trademarks are deceptively similar. 8. A comp....
X X X X Extracts X X X X
X X X X Extracts X X X X
....age since, the difference between the packaging of „NIFTAS‟ and „NIFTRAN‟ coupled with the fact that „NIFTRAN‟ is sold as capsule whereas „NIFTAS‟ is sold as a tablet by itself would make him aware that the drug being sought to be sold to him by the chemist was not the drug which he intends to purchase. If, however, the customer is not carrying a medical prescription, and orally tells chemist that he wants to purchase „NIFTRAN‟ there is very little likelihood of the chemist misunderstanding the name of the drug and mistaking „NIFTRAN‟ as „NIFTAS. If the chemist has „NIFTRAN‟ as well as „NIFTAS‟ with him, he would have no reason to pass on „NIFTAS‟ as „NIFTRAN to the customer. If he does not have „NIFTRAN‟ in his stock, he is likely to ask the customer whether a substitute of the drug would be acceptable to him, instead of passing off „NIFTAS‟ as „NIFTRAN‟, without disclosing it to the customer. If the customer agrees, he may sell not only INTAS, but any other substitute as well, depending upon what is available with him, and in ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....ine being advised, without the patient visiting the doctor, and in that case, he will get a written prescription, which he will take to the chemist. A doctor may possibly advise this medicine, on telephone, to a well- educated patient, but he will not do it to a person, who is not proficient in English and cannot write down the medicine, when advised on telephone. If the patient is well- educated, there is no reasonable possibility of his mistaking „NIFTRAN‟ as „NIFTAS‟. Such a patient will not only note down the spelling, but would also compare it with the product sold to him. 12. The mark „NIFTAS‟ and „NIFTRAN‟, in my view, cannot be said to be phonetically or visually similar. The only similarity in the two marks is use of the letters "NIFT" which are common to both of them, but the pronunciation of „NIFTAS‟ is altogether different from that of „NIFTRAN‟. Visually also, „NIFTAS‟ and „NIFTRAN‟ cannot be said to be similar marks. 13. In an affidavit filed on 03rd August, 2011, defendant No. 1 has claimed that there are many drugs in the market other than „NIFTRAN‟....
X X X X Extracts X X X X
X X X X Extracts X X X X
.... even though delay of this order has no effect on the plaintiff's rights at trial. Unlike many of the issues which can arise on motion, the existence of delay does not normally admit or much argument. Delay, if present, is therefore a short, safe and simple basis for refusing relief. This means that applications for interlocutory injunctions in which there is significant delay are unlikely even to get as far as a hearing, and those that do are quite likely to be refused without going into the merits or the balance of convenience." 15. He has also relied upon Power Control Appliances vs Sumeet Machines Pvt. Ltd 1995 PTC 165, wherein Supreme Court extracted the following observations made in the case of K.E. Mohammed Aboobacker v. Nanikram Maherchand and another 1957 (II) Madras Law Journal 573: "It is necessary that an application for interlocutory injunction should be made immediately after the plaintiff becomes aware of the infringement of the mark. Improper and unexplained delay is fatal to an application for interlocutory injunction. The interim injunction will not be granted if the plaintiff has delayed interfering until the defendant has built up a large trade....
X X X X Extracts X X X X
X X X X Extracts X X X X
....1 was ready to keep accounts of the sales made and profit earned by defendant No. 1 from the manufacture and sale of the drug „NIFTAS‟ and was also willing for a fast-track trial of the case by appointing a Local Commissioner at the cost of defendant No. 1, to record evidence of the parties in a time-bound manner. 17. The learned counsel for the plaintiff has relied upon Wyeth Holdings Corp vs Sun Pharmaceuticals 2004 (28) PTC Page 423( Bom). In that case the plaintiff was using the mark PACITANE, whereas the defendant was using the mark PARKITANE. Both the products were medicinal preparation for treatment of Parkinson‟s disease. Noticing that in the two marks, one has the prefix PAC, whereas the other had the prefix PARK, suffix being the same in both the cases, the Court was of the view that the mark PARKITANE was deceptively similar to the mark PACITANE. A perusal of the judgment does not indicate that the trademark being used by the defendant in that case was a registered trademark. Moreover, the mark PACITANE definitely appears to be phonetically similar to the PARKITANE. This judgment, therefore, is of no help to the plaintiff. 18. The learned counsel for ....
X X X X Extracts X X X X
X X X X Extracts X X X X
....as strong phonetic similarity in the two marks. Moreover, in that case, the defendant had applied for registration of the mark GLUVITA, whereas in the case before this Court, the defendant No. 1 has not only been granted registration of the mark „NIFTAS‟, it has actually been using the same. In the case of Pfizer Pharmaceuticals (supra), plaintiff‟s mark was LIPITOR, whereas the defendant‟s mark was LIPICOR and the two marks were phonetically similar. In the case of Anglo French Drugs Co (supra), the mark of the plaintiff was BEPLEX, whereas the mark of the defendant was BELPLEX, again a case of phonetic similarity. Similar was the position in the case of Ranbaxy (supra), where the mark of the plaintiff was CALMPOSE whereas the mark of the defendant was CALMPROSE. The case of Alcon Lab (I) Pvt Ltd (supra) was the case of infringement. The case of Strassenburg Pharmaceuticals (supra) was a case of infringement as well as passing off and the plaintiff was using the mark EFACID, whereas the defendant was using EFCID-CA. Unlike the case before this Court, the trademark of the defendant was not a registered trademark. In the case of Indian Shaving Products Ltd (s....