2010 (10) TMI 1171

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....ants. The Appellants had also prayed for permanent injunction restraining the Respondents from infringing the copyright of the Appellants in the literary work of the package insert, as according to the Appellants, the Respondents had copied the same. The Appellants had prayed for interim reliefs in the Notice of Motion in the similar terms. At the hearing of the Notice of Motion, however, as the Respondents had contended that their mark was also registered, the relief in relation to passing of only was pressed by the Appellants. The learned Single Judge by her order impugned in the Appeal, rejected the Notice of Motion holding that (i) the Appellants have failed to prove distinctiveness of their mark or packaging; (ii) Two marks viz. NETROMYCIN and NETMICIN are not deceptively similar; (iii) there is no possibility of any confusion as the Respondents goods were purchased in bulk by the hospitals and that the same were not sold over the counter, whereas the Appellants ig goods were sold over the counter and that the purchasers of the Defendants goods have requisite knowledge and technical expertise in dealing with the drugs; (iv) the essential features of the Appellan....

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.... or syllable by syllable, and the overall effect of the two words is required to be considered. It is submitted that the learned Judge erred in making a microscopic examination. It is further submitted that the goods can be ordered on telephone and therefore, the printing of the words on the carton in a slightly different manner in two cases will not make any difference at all. It is submitted that the argument that the goods of the Respondents are sold in bulk to the hospitals and that the Appellants product is sold over the counter would rule out the possibility of confusion is not a factor which can be taken into account in view of the decision of the Supreme Court in Cadila Case referred to above and in the said decision, the Supreme Court referred to various authorities in which it was categorically observed that the physicians and pharmacists are not immune from mistaking one mark for another. 3. It is further submitted that the learned Single Judge erred in refusing injunction on the ground that the essential features on the Plaintiffs mark are different from the Defendants. It is submitted that it is necessary to consider the essential features of the word marks which....

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....the marks Netromycin and Netmicin are derived from the common generic name Netilmicin Sulphate and therefore, there is no likelihood of confusion. It is submitted that the aforesaid contention cannot be countenanced in the present case for the following reasons:- (a) the Respondents having obtained registration of the mark containing Net and Mycin and pleading registration as a defence to the Appellants action for infringement of registered trademark, are reiterating the position that the mark Netmycin is distinctive and it distinguishes Respondents mark Netmycin from all other marks containing Mycin, Micin and Cin. It is further submitted that the Respondents are, therefore, estopped by their conduct from raising the aforesaid contention and in this regard, reference may be made to the decision in Automatic Electric Ltd. Vs. R.K.Dhawan & Anr, (1999) OTC 81, and in the said case the Defendant had got its trade mark Dimmer Dot registered in Australia and it was observed that the fact that the Defendant itself had sought to claim trade proprietary right and monopoly in Dimmer Dot , it did not lie in its mouth to say Dimmer in the Plaintiffs trademark Dimmer Stat is a generic expressi....

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.... 3 and the last 5 letters of the said generic name, and both have done so with a view to indicate the contents of the injection upon and in relation to which the respective trade marks are used. It is submitted that the said injection is consumed mostly by hospitals and medical institutions and is administered by doctors only after carrying out culture sensitivity test and the said injection is an expensive drug and the price of the 1st Respondent s drug is higher than the price of the Appellants drug. It is submitted that the suffixes Micin , Mycin in the rival trade marks are common to the trade and this fact is not disputed by the Appellants. It is submitted that the 1st Respondent has also secured registration of its trade mark Netmicin . It is submitted that though the 1st Respondent had not conducted official search of the Register of Trade Marks prior to the adoption of the trade mark Netmicin, it had requested its Trade Mark Agent to conduct personal search at the Trade Mark Registry to ascertain availability of inter alia the trade mark Netmicin and the said Trade Mark Agent had advised the said Respondent after conducting such search that the trade mark Netmicin can be ad....

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....k on the basis of name of generic drug or ingredient, it will be safe to assume that he is aware that the other proprietors are also likely to adopt and use similar marks in case their product is based ig on the same generic drug or ingredient. In such a case, the first user cannot claim exclusivity in his trade mark or in the name which is derived from the generic drug. At the most such proprietor can claim exclusivity in those added features which differentiates his trade mark from the name of the generic drug or ingredient. When two trade marks are coined from the same generic drug or ingredient, there are bound to be similarities between the two and in such a case, even if the differences between the two trade marks are minor or small, then also at least at the prima facie stage no injunction can be granted. 12. It has come on record that the other manufacturers and traders of medicinal goods have also adopted trade marks with prefix NET to indicate the drug name Netilmicin Sulfate and the suffix MICIN/MYCIN is common to pharmaceutical trade. Both the trade marks are used in respect of Netilmicin Sulfate and both the trade marks owe their origin to the said medicine name.....