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Section 124 in The Trade Marks Act, 1999
Section 27(2) in The Trade Marks Act, 1999
Section 30(1) in The Trade Marks Act, 1999
Section 28(3) in The Trade Marks Act, 1999
Section 30 in The Trade Marks Act, 1999
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Delhi High Court
Astrazeneca Uk Ltd. And Anr. vs Orchid Chemicals And ... on 16 May, 2006
Equivalent citations: 2006 (32) PTC 733 Del
Author: A Kumar
Bench: A Kumar

JUDGMENT Anil Kumar, J.

1. This order shall dispose of plaintiffs' application under Order XXXIX Rules 1 and 2 read with Section 151 of Code of Civil Procedure seeking restraint against the defendant from using his registered trade mark 'MEROMER' alleged to be deceptively similar to the plaintiffs' trade mark 'MERONEM' and defendant's application under Order XXXIX Rule 4 read with Section 151 of Code of Civil Procedure to vacate the interim order dated 6th October, 2005 whereby defendant was restrained from selling, marketing or in any manner dealing with pharmaceutical product under the name 'MEROMER'.

2. Brief facts to comprehend the disputes between the parties are that plaintiffs filed the suit for permanent injunction seeking restraint of infringement of their trade mark and passing off of his products by the defendant as that of plaintiff contending that plaintiff No. 1, Astrazeneca U.K. Limited, is a company constituted under the laws of England having its registered office at London which was formed as a result of the merger of two world renowned pharmaceutical groups, namely, Astra AB incorporated in Sweden and its subsidiary Zeneca Ltd. incorporated in the United Kingdom. It was asserted that pursuant to merger of Astra AB and Zeneca, plaintiff No. 1 became the assignee of registered trade mark 'MERONEM' bearing registration No. 532328 in class 5 in India from Zeneca Limited. Zeneca Ltd. had obtained the registration in its name on 27th June, 1990 which is valid and subsisting till 26th June, 2014 and this was assigned by Zeneca Limited in favor of plaintiff No. 1 by deed of assignment dated 4th January, 2000. It was further stated that another deed of assignment dated 9th August, 2000 was executed by Zeneca Limited to facilitate formal registration of the assignment of several of Zeneca's trade marks including 'MERONEM' and this assignment deed dated 9th August, 2000 along with form TM 24 was lodged with the Registrar of trade mark by letter dated 28th March, 2001 and the application is pending with the trade mark Registry, Bombay. The plaintiff No. 1 thus claimed all the rights in respect of registered trade mark 'MERONEM' until 26th June, 2014. Plaintiff No. 2, AstraZeneca Pharma India Limited, is stated to be a company incorporated in India which entered into a license agreement dated 1st March, 2002 with plaintiff No. 1 to use the trade mark 'MERONEM'.

3. The plaintiffs contended that the drug under the brand name 'MERONEM' is marketed by plaintiff No. 1 since 1995-96 in over 89 countries. Drug of the plaintiffs 'MERONEM' is a pharmaceutical preparation of 'MEROPENEM' which is a sterile dry powder for intravenous injection or infusion which has to be reconstituted before injecting and/or infusing intravenously. This drug belongs to carbapenem group of antibiotics and is used for curing serious life threatening infections such as Pneumonias and Nosocomial Pneumonias; Urinary tract infections; Intra abdominal infections; Gynaecological infections such as endometrIT is and pelvic inflammatory disease; Skin and skin structure infections, meningitis, septicaemia and Empiric treatment for presumed infections in adult patients with febrile neutropema used as mono-therapy or used in combination with antiviral or antifungal agents.

4. The dosages and administration of the drug depends on the age of the patient and the type and severity of the infection and it is administered as an intravenous bolus injection or by intravenous infusion. For intravenous bolus injection, the solution is made with sterile water and for using intravenous infusion, it is constituted with compatible infusion fluids. It is a prescription drug largely available at hospital pharmacies.

5. M/s. Zeneca Limited had launched the plaintiffs' drug 'MERONEM' in the United Kingdom in 1995 and plaintiff No. 2 had introduced it in the Indian market in March 2000. It was stated by the plaintiffs that the drug sold by them in India has a shelf-life of four years. The plaintiffs stated that they have spent and continued to spend considerable amounts by way of promotional expenditure on their brand 'MERONEM'. According to plaintiffs the medical fraternity, trade and consumers throughout the world and more particularly in India associate the drug only with the registered trademark 'MERONEM' and this trademark of plaintiffs has clear distinctiveness and is associated with the plaintiffs exclusively in India and worldwide.

6. It was asserted that plaintiffs learnt about the launch of the defendant's drug `MEROMER' sometime in early 2005. Medicinal preparation of the defendant was stated to be identical to that of plaintiffs and is sold in India in vials of 500 miligrams and 1 gram. Plaintiffs were emphatic that the composition, dosage and antibacterial spectrum of the plaintiffs product and the defendant's products, sold under their respective mark are also more or less the same/identical. It was categorically pleaded that the stark difference between the drug sold by plaintiffs under the registered trademark 'MERONEM' and the drug sold by the defendant, under the mark 'MEROMER' is that while the plaintiffs drug has been approved for a shelf life of four years, the defendant's drug has been approved for a shelf life of only two years. On the basis of the difference of the shelf life it was contended that there is considerable higher possibility and likelihood of deception and confusion between the drugs sold under the plaintiffs registered trademark 'MERONEM' vis- a-vis the drug sold by the defendant under the mark 'MEROMER'.

7. The plaintiffs also challenged the sale of drug Meropenem by the defendant under the mark 'MEROMER' on the ground that the trade names of the plaintiffs and defendant are deceptively similar and the defendant is also resorting to the same colour scheme or blue and red. Allowing the defendant to continue the use of the trademark 'MEROMER' would create an impression amongst consumers in the trade that the trademark of the defendant is also connected with the plaintiffs and their business or that the goods sold by the defendant are being sold and manufactured under the sponsorship and with the approval of the plaintiffs. In the circumstances plaintiffs claim restraint against the defendant from using, selling, offering for sale, exporting, advertising, marketing and/or in any other manner dealing with any medicinal or pharmaceutical preparation or drug under the trademark 'MEROMER'.

8. On an interim application of the plaintiffs an ex-parte ad interim order was passed in favor of plaintiffs restraining the defendant from using the similar trademark 'MEROMER' which is deceptively similar to that of plaintiffs and the defendant was restrained from selling, marketing or in any manner dealing with the pharmaceutical products under the brand name 'MEROMER' by order dated 6.10.2005.

9. The defendant has contested the claim of the plaintiffs contending inter-alia that the trademark 'MEROMER' was adopted in an honest manner after taking all necessary safeguards prior to its adoption. It was pleaded that the defendant is in the business of manufacturing and selling various bulk drugs and formulations and had set up a plant at the cost of Rs. 1.68 crores to manufacture the molecule Meropenem. Before launching the formulation under the trademark 'MEROMER' a search was conducted at the office of the Trademark Registry and several pending trademark applications and registered trademarks with the prefix `MERO' were found and consequently defendant opted to register the trademark 'MEROMER' with prefix `MERO'. According to the defendant the prefix MERO is common to the trade and no single person or entity can claim exclusive rights to the same.

10. The defendant had also filed an application for registration of his trademark 'MEROMER' under number 1299987 dated 2.8.2004 in Class 5 and his application after due examination and in accordance with law is stated to have been allowed and a registration certificate dated 1.12.2005 was issued, a copy of which was filed by the defendant during the pendency of the case and consequent to the registration of the trademark of the defendant it has been asserted that the plaintiffs are not entitled for any relief on the basis of infringement of their registered trademark as the mark of the defendant is also registered and the trademark of the defendant shall relate back to the date of application which is prior to the date of institution of the suit. The defendant also contended that since plaintiffs and defendant are both having registered trademarks, the plaintiffs cannot exercise their rights on the basis of registered trademark against the defendant who also owns a registered trademark. It was further pleaded that the registration with respect to the trademark 'MEROMER' was completed on 30.8.2005 even prior to the institution of the suit. The mark of the defendant was stated to have been advertised in trademark journal No. 1328 Supplement 4 dated 28.2.2005 at page 329 and the time prescribed for filing opposition to the grant of registration on Form TM-5 expired on 30.8.2005 and no person including plaintiffs filed an opposition and, therefore, the mark 'MEROMER' for which an application for registration was filed was deemed to be registered on 30.8.2005 as no objection to the registration of the mark was filed by anyone including plaintiffs. Relying on the report of the Trademark Registry dated 20.9.2004 defendant contended that even an expert body like trademark Registry has not considered the trademark 'MEROMER' of the defendant as a conflicting mark in its examination report.

11. During the pendency of the present suit, the plaintiffs also filed a rectification application first before the Registrar and thereafter before the Appellate Board. Regarding the rectification proceedings initiated by plaintiff No. 1 before the Registrar of Trademarks and Intellectual Property Appellate Board it was pleaded by the defendant that the application has been filed by the plaintiff No. 1 without following the procedure. The application was alleged to be barred under Section 125 of the Trademarks Act, as when a suit is pending rectification application lies before the Intellectual Property Board and realizing his mistake the plaintiff No. 1 has filed yet another application before the Intellectual Property Appellate Board in contravention of procedure prescribed under Section 124 of the Trademarks Act and consequently no rectification application is pending as the plaintiffs were not entitled to file an application suo motto without the prima facie approval of the Court.

12. Regarding his mark 'MEROMER', the defendant contended that prefix `MERO' is common to the trade and cannot be appropriated by the plaintiffs alone. Relying on trade practices it was stated that as there are number of trademarks which are used in pharmaceutical industry with a common prefix derived from the generic name Meropenem, the defendant is entitled to use the mark `Meromer'. The plaintiffs and the defendant are marketing the molecule `meropenem' and the only difference between the two products is the shelf life and of course the price, as the drug marketed by the defendant is cheaper.

13. The defendant also refuted the allegations of the plaintiffs that they are the registered proprietors of trademark 'MERONEM'. It was stated that the certificate produced by the plaintiffs show that the mark 'MERONEM' is registered under number 532328 in Class 5 in favor of Zeneca Ltd which is not a party to the proceedings and the search conducted on 30.11.2005 shows that the mark is still registered in the name of Zeneca Ltd and, therefore, the plaintiffs are not the proprietors of the trademark 'MERONEM' and since neither of the plaintiffs are the registered proprietors of the trademark they are not entitled to institute the suit for infringement of the registered trademark. The defendant also highlighted the discrepancies in the statements made on behalf of plaintiffs in their pleadings. It was stated that the plaint is based on the merger of Astra AB incorporated in Sweden with its merger with Zeneca Ltd whereas in another affidavit the plea raised by the plaintiffs is that Astra AB of Sweden merged with Zeneca plc. Zeneca Ltd is not the Zeneca plc and in the pleadings in the plaint no mention of Zeneca plc was made. The assignment deed dated 4.1.2000 produced by the plaintiffs was also contended to be fabricated as assignment deed dated 4.1.2000 shows Zeneca Ltd. as an existing company which could not be after merger of Zeneca Ltd. with Astra AB.

14. Regarding the passing off action it was pleaded that added material is sufficient to distinguish the product of the defendant and so no passing off action can be taken against the defendant also on account of surrounding circumstances and the trade practices and trade channels through which the goods pass. According to defendant the mark 'MEROMER' and 'MERONEM' are not phonetically, visually or in any other manner deceptively similar to each other and their marketing is also done in different manner. Plaintiffs sell their product in beehive cartons of 10 vials and not in a carton for individual vial whereas the defendant sells the goods in mono cartons. The shape of the vials of the plaintiffs and defendant were also stated to be different as well as the colours used by them. The plaintiffs are stated to be using blue colour for its vial of 500 mg whereas defendant use red colour for 500 mg. For 1000 mg vial plaintiffs use red colour whereas defendant use blue and the style of writing adopted by plaintiffs and defendant are also stated to be different and the name of the manufacturer is clearly mentioned so as to lead to no confusion. Refuting the possibility of confusion it was stated that the drug is to be administered by trained professionals and there cannot be any confusion.

15. The emphasis was laid by the defendant on the price of the drug of the plaintiffs and the defendant. The only difference which has also been admitted by the plaintiffs is the shelf life. The shelf life of plaintiffs drug is four years whereas shelf life of defendant's drug is two years, however, the price difference is substantial. The price of plaintiffs drug is approximately Rs. 1200/- whereas the price of defendant's drug is about 2/3rd of the price of the plaintiffs.

16. The defendant has also sought vacation of the ex-parte ad interim order passed in favor of plaintiffs on the ground that plaintiffs were not the first manufacturer/marketer to adopt the prefix MERO and plaintiffs cannot allege that they have bonafide grievance against the defendant. The plaintiffs have mislead the Court and obtained the interim order by suppressing the facts. It is also contended that the balance of convenience is in favor of defendant as the defendant had already launched its goods in the market in November, 2004 and has invested 1.68 crores in setting up the manufacturing unit and the drugs of about 1.5 crores are in the stock to be marketed. The defendant also contended that interim injunction will cause irreparable loss and hardship as defendant is the largest pharmaceutical company in India which commenced business in 1992. The action of the plaintiffs have also been challenged on the ground that the plaintiffs have not taken any action against other persons and companies using the prefix MERO in their trade name and marketing the same drug.

17. I have heard the learned Counsels for the parties, Dr. Singhvi for the plaintiffs and Mr. Sundaram for the defendant, in great details for a number of days. The suit is at a stage when the existence of the rights of the plaintiffs and their violations are contested and uncertain. The rights of the plaintiffs are still to be established after the trial on evidence. Considering the magnitude of the sale of drug of both the parties the Court will have to go by the principle of `balance of inconvenience' which will be who will be more inconvenienced in case the injunction as prayed for by the plaintiff is granted or not granted and who will suffer irreparable loss. The principle enunciated by the Apex Court in the case of Wander Ltd. and Anr. v. Antox India (P) Ltd. be a guiding principle to resolve this controversy. In this case it was held by the Supreme Court as under:

'Usually, the prayer for grant of an interlocutory injunction is at a stage when the existence of the legal right asserted by the plaintiff and its alleged violation are both contested and uncertain and remain uncertain till they are established at the trial on evidence. The Court, at this stage, acts on certain well settled principles of administration of this form of interlocutory remedy which is both temporary and discretionary. The object of the interlocutory injunction, it stated:

...is to protect the plaintiff against injury by violation of his rights for which he could not adequately be compensated in damages recoverable in the action if the uncertainty were resolved in his favor at the trial. The need for such protection must be weighed against the corresponding need of the defendant to be protected against injury resulting form his having been prevented from exercising his own legal rights for which he could not be adequately compensated.

In the circumstances, this Court must weigh plaintiffs' need against the defendant's and determine where the 'balance of convenience lies and preserve the status quo in respect of rights of the parties which will appear on a prima facie case. This task is slightly more difficult because the defendant has already commenced his enterprise and production and substantial amount of his drug is in stock and in the market.

18. Broad similarities and dis-similarities between the products of the plaintiffs and defendant, who are marketing the same drug Meropenem which is used for curing life threatening infection, with only difference in their shelf life, are extracted in following table.

 COMPARISON OF PLAINTIFFS' AND DEFENDANT'S PRODUCTS WHO ARE MARKETING THE SAME
DRUG MEROPENEM, BELONGING TO CARBAPENEM GROUP OF ANTIBIOTICS

Sl. No.   PLAINTIFF'S PRODUCT                      DEFENDANT'S PRODUCT

1.        COMPOSITION:                             COMPOSITION:

          -Active ingredient: Meropenem            -Active ingredient: Meropenem
           trihydrate equivalent to anhydrous       trihydrate equivalent to anhydrous
           meropenem USP 1 gm/500 mg.               meropenem USP 1 gm/500 mg.

          -Buffering agent: Sodium Carbonate       -Buffering agent: Sodium Carbonate
           (1 gm formulation contains 90.2 mg of    (100 mg formulation contains 82 mg of
           sodium 500 mg formulation contains       sodium) 500 mg formulation contains
           45.1 mg of sodium)                       41 mg of sodium)

           Shelf life of the product (4 years)      Shelf life of the product (2 years).

2.        COLOUR COMBINATION:                       COLOUR COMBINATION:

          The Plaintiffs vials are sold in          The Defendant vials are also sold in
          quantity of 500 mg and                    the quantity of 500 mg and 1000mg/1gm
          1000 mg/1 gm quantity).                   quantity.

          The Plaintiffs use a colour               The defendant also uses colour
          combination scheme (of reds and blues)    combination scheme of red and blue in
          in vial labels and the vial caps.         vial labels and vial caps.

          -For their 500 mg vial, the Plaintiffs    -For their 1000 mg vial it is a
          use a blue and red colour combination     blue-red combination-compare
          scheme, in which blue predominates.

          -For their 1 gm vial, the Plaintiffs      -For their 500 mg vial it is
          use a red and blue colour combination     red blue combination
          scheme, in which red predominates.

3.        LABEL BACKGROUND:                         LABEL BACKGROUND:

          White                                     White

4.        LABEL CONTENTS PLACEMENT:                 LABEL CONTENTS PLACEMENT:

          The label of each vial containing the     The label of each vial containing the
          Plaintiffs' product states above the      Defendant's product states above the
          trade mark 'meropenem for injection       impugned trade mark 'meropenem for
          USP' and below the trade mark, 'Powder    injection USP' and below the trade
          for intravenous injection or infusion     mark, 'Powder for intravenous
          Reconstitute before Use'.                 injection or infusion Reconstitute
                                                    before Use'

5.        SHAPE OF VIALS                            SHAPE OF VIALS

          The Plaintiff has adopted a shape of      The Defendant has also chosen a vial
          the vials                                 shape, however, it is slightly
                                                    different.

6.        PLAINTIFFS' TRADE MARK:                   DEFENDANT' TRADE MARK'

          Plaintiff's mark 'MERONEM'.               The Defendant's Mark is `MEROMER'

 

19. The defendant has produced a certificate of registration of his trade mark 'Meromer' which is dated 1st December, 2005 during the pendency of the case. His plea is that the registration will date back to the date of the application which is 2nd August, 2004 Perusal of the provision of the Trade Marks Act, 1999 demonstrate that the registration of the trade mark will relate back to the date of the application. Section 23 of the Trade Marks Act, 1999 is as under:

23. Registration. '(1) Subject to the provisions of Section 19, when an application for registration of a trade mark has been accepted and either-

(a) the application has not been opposed and the time for notice of the opposition has expired; or

(b) the application has been opposed and the opposition has been decided in favor of the applicant, the registrar shall, unless the Central Government otherwise directs, register the said trade mark and the trade mark when registered shall be registered as of the date of the making of the said application and that date shall, subject to provisions of Section 154, be deemed to be the date of registration.

(2) On the registration of a trade mark, the Registrar shall issue to the applicant a certificate in the prescribed form of the registration thereof, sealed with the seal of the Trade Marks Registry.

(3) Where registration of a trade mark is not completed within twelve moths from the date of the application by reason of default on the part of the applicant, the Registrar may, after giving notice to the applicant in the prescribed manner, treat the application as abandoned unless it is completed within the time specified in that behalf in the notice.

(4) The Registrar may amend the register or a certificate of registration for the purpose of correcting a clerical error or an obvious mistake.

20. Plaintiffs filed their suit on 4th October,2005 on the basis of registration of trademark in favor of plaintiff No. 1 and prior user of plaintiffs, claiming both infringement and passing off by the defendant. According to plaintiffs at the time of filing of the suit, the trade mark of the defendant was not registered and therefore, the plaintiffs shall also be entitled to maintain an action for the infringement of their registered trademark.

21. If according to the provisions of the Trade Marks act, 1999 the registration of the trademark will relate back to the date of the application which is 2nd August, 2004 in the present case, the plea of the plaintiffs that they shall still entitled to maintain the action of infringement of their registered trademark will not sustainable because the trade mark `Meromer' of the defendant will be deemed to be registered from 2nd August, 2004 according to Section 23(1)(b) of the act. Plaintiff also cannot sustain his action for infringement of his registered trademark on the ground that the cause of action had arisen in June-July, 2005. On the same reasoning the registration of the trademark of defendant shall relate back to 2nd August, 2004 when the application was made by the defendant for registration of his trademark, therefore even on the date when the cause of action is alleged to have arisen in favor of plaintiffs, the trademark of the defendant was registered and in the circumstances the plaintiffs cannot sustain their action against the defendant on the ground that their registered trademark has been infringed, as the trademark of the defendant was also registered.

22. The allegation of the plaintiff is that defendant's mark is identical or nearly resembles the mark of the plaintiff. If the marks of plaintiffs and defendant are identical or resemble and both are registered, then both of them are not entitled to exclusive right to use any of the registered trademark against each other. Section 28 of the Trade Marks Act,1999 is as under: 28. Rights conferred by registration.--

(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.

(2) The exclusive right to the use of a trade mark given under Sub-section (I) shall be subject to any conditions and limitations to which the registration is subject.

(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are 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 trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.

23. Therefore the plaintiffs can not contend that they have exclusive and registered trademark against the defendant nor can seek relief against the defendant on the ground that there is infringement of their registered trademark. The plaintiffs will not have a legal rights emanating from infringement of registered trade mark, as one registered trademark is not infringed by another registered trademark. The two marks `Meronem' and `Meromer' having `Mero' as common word will not infringe each other on account of their registration in the present facts and circumstances. The Act specifically enumerates the circumstances when a registered trade mark is not infringed. Section 30 of the Act is as under:

30. Limits on effect of registered trade mark.--(1) Nothing in Section 29 shall be construed as preventing the use of a registered trade mark by any person for the purposes of identifying goods or services as those of the proprietor provided the use--

(a) is in accordance with honest practices in industrial or commercial matters, and

(b) is not such as to take unfair advantage of or be detrimental to the distinctive character or repute of the trade mark.

(2) A registered trade mark is not infringed where--

(a) the use in relation to goods or services indicates the kind, quality, quantity, intended purposes, value, geographical origin, the time of production of goods or of rendering of services or other characteristics of goods or services;

(b) a trade mark is registered subject to any conditions or limitations, the use of the trade mark in any manner in relation to goods to be sold or otherwise traded in, in any place, or in relation to goods to be exported to any market or in relation to services for use or available or acceptance in any place or country outside India or in any other circumstances, to which, having regard to those conditions or limitations, the registration does not extend;

(c) the use by a person of a trade mark'

(i) in relation to goods connected in the course of trade with the proprietor or a registered user of the trade mark if, as to those goods or a bulk or which they form part, the registered proprietor or the registered user conforming to the permitted use has applied the trade mark and has not subsequently removed or obliterated it, or has at any time expressly or impliedly consented to the use of the trade mark; or

(ii) in relation to services to which the proprietor of such mark or of a registered user conforming to the permitted use has applied the mark, where the purpose and effect of the use of the mark is to indicate, in accordance with the fact, that those services have been performed by the proprietor or a registered user of the mark.

(d) the use of a trade mark by a person in relation to goods adapted to form part of, or to be accessory to, other goods or services in relation to which the trade mark has been used without infringement of the right given by registration under this Act or might for the time being he so used, if the use of the trade mark is reasonably necessary in order to indicate that the goods or services are so adapted, and neither the purpose nor the effect of the use of the trade mark is to indicate, otherwise than in accordance with the fact, a connection in the course of trade between any person and the goods or services, as the case may be;

(e) the use of a registered trade mark, being one of two or more trade marks registered under this Act which are identical or nearly resemble each other, in exercise of the right to the use of that trade mark given by registration under this Act.

(3) Where the goods bearing a registered trade mark are lawfully acquired by a person, the sale of the goods in the market or otherwise dealing in those goods by that person or by a person claiming under or through him is not infringement of a trade by reason only of

(a) the registered trade mark having been assigned by the registered proprietor to some other person, after the acquisition of those goods; or (b) the goods having been put on the market under the registered trade mark by the proprietor or with his consent.

(4) Sub-section (3) shall not apply where there exists legitimate reasons for the proprietor to oppose further dealings in the goods in particular, where the condition of the goods, has been changed or impaired after they have been put on the market.

24. Section 28(3) and 30(1)(d) deal with the rights of the registered proprietors of similar trade marks and bar action of infringement against each other as their reading show that the proprietor of registered trade mark can not file an infringement action against a proprietor of an identical or similar trade mark. However, Section 27(2) deals with passing off action and the rights for passing off are not affected by Section 28(2) and Section 30(1)(d). This position can not be disputed in view of N.R. Dongre and ors. v. Whirlpool Corporation and Ors. holding:

A reading of Section 28(3) with Section 30(1)(d) shows that the proprietor of a registered trademark can not file an infringement action against a proprietor of an identical or a similar trademark. While Section 28(3) and 30(1)(d) on the one hand deal with the rights of registered proprietors of identical trade marks and bar action of infringement against each other. Section 27(2) on the other hand deals with the passing off action. The rights of action under Section 27(2) are not affected by Section 28(3) and Section 30(1)(d). Therefore, registration of a trade mark under the Act would be irrelevant in an action for passing off. Registration of a trade mark in fact does not confer any new rights on the proprietors thereof then what already existed at common law without registration of the mark. The right of goodwill and reputation in a trade mark was recognised at common law even before it will subject of statutory law. Prior to codification of trademark law there was no provision in India for registration of a trade mark. The right in the trademark was acquired only by their use. This right has not been affected by the act and is preserved and recognised by Sections 27(2) and 33.

25. Plaintiffs also seek action for infringement of their registered trademark on the ground that they have challenged the registration of the trademark of the defendant by filing the required application for rectification and removal before the appellant board under Trade Marks Act, 1999. This is refuted by the defendant contending that plaintiff No. 1 had filed an application for removal and rectification of the trademark of the defendant before the trade mark registry which was barred under Section 125 of the act, as the said section of the Act contemplates that in case of a suit pending, the application will be before the intellectual property appellate board. The fact that the application for removal and rectification of the trade mark was filed by the plaintiff No. 1 before the Trade Mark Registry is not denied. What is contended by the plaintiff No. 1 is that the application was filed before the trade mark registry which was withdrawn and the application thereafter was then filed before the Appellate Board for Intellectual Property which is still pending and consequently the plaintiffs can invoke their registered trade mark.

26. Admittedly the rectification application for the registered trade mark `Meromer' of the defendant was filed after the institution of the present suit. Whether this application could be filed without prima facie satisfaction of the Court about tenability of the plea of the invalidity of the defendant's mark with the Appellate Board or pending adjudication of his plea of invalidity of the defendant's mark, the plaintiffs can enforce their rights for infringement of their trade mark'

27. Since the application for rectification of defendant's mark filed by the plaintiffs is pending, mere pendency of their application will not give any right to the plaintiffs to sustain their action for infringement of their registered trade mark. Mere filing of the application for invalidity of the trade mark of the defendant does not ipso facto results into stay of the registration or putting of any fetters on the rights of the registered owner of the trade mark flowing from the registration of the mark. If the rights of a registered owner of the trade mark are not clouded on account of pendency of the application of rectification, a fortiori the applicant for rectification also can not maintain action for the infringement of his registered trade mark against another person having a similar registered trade mark in accordance with Section 30 of the Act.

28. Section 124 of the act contemplates stay of proceedings where the validity of registration of the trademark is in question. Said Section 124 of the Act is as under: 124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.--

(1) Where in any suit for infringement of a trade mark-

(a) the defendant pleads that registration of the plaintiffs trade mark is invalid; or

(b) the defendant raises a defense under Clause (e) of Sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mark, the court trying the suit (hereinafter referred to as the court), shall,--

(i) if any proceedings for rectification of the register in relation to the plaintiffs or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings;

(ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party concerned to apply to the Appellate Board for rectification of the register.

(2) If the party concerned proves to the court that he has made any such application as is referred to in Clause (b) (ii) of Sub-section (I) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification proceedings.

(3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case.

(4) The final order made in any rectification proceedings referred to in Sub- section (1) or Sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark.

(5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit.

29. The said provision envisages two eventualities in case the defendant has raised a defense under Section 30 of the Act and the plaintiff has pleaded invalidity of the registration of the defendant's trade mark, one where the application seeking rectification is already pending and the other where the application is to be filed seeking rectification. In the present case the application for rectification is filed after the institution of the suit which fact has not been denied.

30. Under Section 124(b) if the application for rectification is already pending the suit can be stayed pending final disposal of such proceedings. In case the application for rectification or any such proceeding is not pending, then a party seeking rectification can apply for rectification subject to prima facie satisfaction of the Court regarding invalidity of the registration of the mark of the opposite party. In the present case the plaintiffs, however, have sought rectification of the trade mark of the defendant by filing an application first to the Registrar and thereafter to the Appellate Board without seeking prima facie satisfaction of this Court.

31. On plain reading of this provision, it is apparent that the plaintiffs could not file the application for rectification without showing and obtaining prima facie satisfaction of the Court about their plea of the invalidity of the registration of the mark of the Defendant. Section 124 of the Trade Marks Act, 1999 is similar to the Section 111 of the Trade and Merchandise Marks Act,1958. Under the Trade and Merchandise Marks Act,1958 in , Kedar Nath v. Monga Perfumary and Flour Mills, this Court had held that an application could not be filed subsequent to the institution of the suit under Section 111(1)(i) of the earlier Act. The Learned Single Judge had held as under:

19. The defendant can not file an application subsequent to the institution of the suit under Section 111(1)(i) and claim that the plaintiff suit for infringement must be stayed. If not proceeding for rectification of the register is pending on the date of the institution of the suit by the plaintiff then Section 111(1)(ii) is attracted and the Court may adjourn the case for a period of three months in order to enable the defendant to apply to the High Court for rectification of the register. In that case the court must be satisfied that the contention as to validity of the defendant's registration is bona fide and prime facie sustainable. In the present case I am not satisfied that the contention as to validity and raised by the defendant is bona fide and prima facie sustainable. No material has been placed on the record to prove a prime facie case that the plaintiff's registration is invalid or that the defendant has been carrying on business since 1952 as alleged by him.' Reliance can also be placed on Patel Field marshal Agencies v. P.M. Diesels Ltd. 1999 IPLR 1425 where it was held that if the proceedings are not pending and the plea regarding invalidity of registration of the mark is raised, the Court trying the suit is to be prima facie satisfied about tenability of the issue. The Division bench of the Gujrat High Court had held:

10. As we notice, under Section 107, it has been provided that on such plea being raised, the plea can be decided only in an appropriate rectification proceedings. In conformity with that provision, Section 111 envisages that if proceeding for rectification of the register in relation to plaintiff or defendant's trademark, as the case may be, are pending before the registrar or the High Court, further proceedings in the suit shall be stayed, until final disposal of rectification proceedings. If proceeding are not pending, and the plea regarding invalidity of registration of concerned mark is raised, the Court trying the suit is to be prima facie satisfied about tenability of the issue, and if it is so satisfied, it shall frame an issue to that effect and adjourn the case for three months, from the date of framing of the issue, in order to enable the party concerned to apply to the High Court for rectification of register. The consequences of the raising of issue are two fold. In case, the party concerned, makes an application for rectification within the time allowed, under sub Clause (ii) of sub Clause (b) of sub section (1), whether originally specified or extended later on, the civil Court trying the suit has to stay the further proceedings of the suit until disposal of the rectification proceeding. At the same time, if no such application is made within the time allowed, the party, has raised the plea of invalidity of the opponent's registered mart, is deemed to have abandoned the issue. This provision permitting raising of an issue only on prima facie satisfaction of the Court, with further requirement that the party, at whose instance an issue has been framed, is to apply for rectification before the High Court concerned, and failure to make such application within the time allowed results in deemed abandonment of plea, leads us to conclude that once a suit has been filed, the rectification proceedings at the instance of either party to the suit against the other, must take the course and envisaged under Section 111, that is to say, if proceedings for rectification are already pending before raising the plea of an invalidity, that is to say, the attention of an appropriate forum having already been invited to that issue, those proceedings must first be continued, decision thereon to be obtained and then civil suit for infringement can proceed in the light of that decision. In case, no such proceedings for rectification are pending at the time of raising the plea of invalidity, the prosecution of such plea by the reason raising it depends on prima facie satisfaction of the Court, about the tenability of this plea. If the plea has been found to be prima facie tenable and an issue is raised to that effect then the matter is to be adjourned for three months at least to enable the person raising such plea to approach the High Court concerned, with a rectification application. In case, the rectification proceedings are not already pending, and the Court is not even prima facie satisfied about the tenability of the plea raised before it, the matter rests there.

32. The Learned counsel for the plaintiffs has tried to distinguish these cases. According to him on the date of filing of the present suit, no application seeking invalidity of the registration of the defendant's trade mark was pending as the trade mark of the defendant has been registered during the pendency of the suit and the certificate of registration was issued after filing of the suit and therefore, the application for rectification could not be filed prior to the institution of the suit. The plea of the plaintiffs therefore, is that their application for rectification filed before the Appellate Board is maintainable without prima facie satisfaction of the tenability of their plea by the Court. If the application for rectification of the defendant's trade mark is maintainable without prima facie satisfaction of this Court, then this suit is also liable to be stayed as claimed by the plaintiffs under Section 124(b) of the Act, though under Section of 124(5) of the Act, the application for injunction and for vacation or modification of an ex parte order can be considered and decided by this Court. The distinction between Section 124(b)(i) and 124(b)(ii) is on the basis of pendency of the proceedings for rectification of the register and not on the basis of whether the party initiating the proceedings for rectification could initiate such proceedings before the institution of the suit or not. There can be other eventualities under which a party may not be able to initiate the proceedings for rectification before the institution of the suit, but that will not give them a right to circumvent the prima facie satisfaction of his plea for invalidity, by the Court. The distinguishing feature of the two sub clauses is only pendency of the proceedings and nothing more can be read into them. The plea of substantial compliance of the requirement of Section 124 by the plaintiffs is also not sustainable. Either there is compliance of the said provision or non compliance in the facts and circumstances. Compliance will be when after the institution of the suit, if an application for rectification is to be filed, prima facie invalidity of the opposing mark is to be demonstrated to the Court. The fact that the application could not be filed prior to the institution of the suit, will not entitle a party to circumvent the prima facie satisfaction of the Court. Consequently the proceedings for rectification of the defendant's mark could not be initiated by the plaintiffs without the prima facie satisfaction of their plea by this Court nor this case is liable to be adjourned or stayed for three months in terms of Section 124(b)(i) of the Act to await the outcome of the rectification proceedings initiated by the plaintiffs before the Appellate Board.

33. Whether the plaintiff No. 1 is the assignee of the trade mark and its registered proprietor. The plaintiff first contended that Astrazeneca U.K. Limited, is a company constituted under the laws of England having its registered office at London which was formed as a result of the merger of two world renowned pharmaceutical groups, namely, Astra AB incorporated in Sweden and its subsidiary Zeneca Ltd. incorporated in the United Kingdom. Pursuant to merger of Astra AB and Zeneca, plaintiff No. 1 became the assignee of registered trade mark 'MERONEM' bearing registration No. 532328 in class 5 in India from Zeneca Limited. Zeneca Ltd. had obtained the registration in its name on 27th June, 1990 which is valid and subsisting till 26th June, 2014 and this was assigned by Zeneca Limited in favor of plaintiff No. 1 by deed of assignment dated 4th January, 2000. Another deed of assignment dated 9th August, 2000 was also stated to be executed by Zeneca Limited to facilitate formal registration of the assignment of several of Zeneca's trade marks including 'MERONEM' and this assignment deed dated 9th August, 2000 along with form TM 24 was lodged with the Registrar of trade mark by letter dated 28th March, 2001 and the application is pending with the trade mark Registry, Bombay.

34. After the above stated plea in the plaint, in the replies to the applications filed by the defendant and the written statement, it was pleaded by the plaintiffs that the trade mark belonges to Zeneca Ltd. which was wholly owned subsidiary of Zeneca Group PLC. Astra, AB Sweden merged with Zeneca from 6th April,1999 and its name became Astra Zeneca PLC and continued its existence as the same company. Zeneca Ltd. also continued its existence after the merger of Astra Sweden with Zeneca and remained a wholly owned subsidiary of Astra Zeneca Plc. Plaintiff No. 1 stated to be incorporated under the laws of England is wholly owned subsidiary of Astra Zeneca Plc and claims rights in the trade mark `Meronem' by deeds of assignment dated 4th January, 2000 and 9th August,2000 whereby Zeneca Ltd.. assigned its rights in the trade mark in favor of the plaintiff No. 1. Though there are variations in the contentions of the plaintiffs in the plaint and subsequently in the replies filed to the applications of the defendant, however, considering the entirety of the plea, it can not be inferred that even prima facie the plaintiffs have not been able to show assignment of trade mark `Meronem' in favor of plaintiff No. 1. The trade mark is registered in the name of Zeneca Ltd. and copies of the assignment deeds executed by the Zeneca Ltd. have been filed by the plaintiffs. Though the plaintiffs ought to have given the appropriate particulars about assignment of trade mark in favor of plaintiff No. 1 in the plaint itself, however, giving correct particulars and details in subsequent replies and variance between the two, will not negate their rights emanating from the assignment of rights in the trade mark by virtue of assignment deeds.

35. The defendant has challenged the right of the plaintiffs in the trade mark also on the ground that the trade mark `Meronem' is still registered under No. 532328 in class 5 in favor of Zeneca Ltd. and therefore the plaintiffs are not the proprietor of the said trade mark and the suit could be filed by the registered proprietor and suit will not lie on account of an unregistered trade mark under Section 27(2) of the Act in favor of plaintiff No. 1 and that the plaintiffs have also admitted on their cartons for the sale of `Meronem' that the mark is yet to be recorded in their favor. The plaintiffs have filed the form TM-24 with the Registry of Trade Mark, Mumbai. The letters filed by the plaintiffs with Trade Marks registry have also been filed and it is also contended that formal registration takes a number of years and during this period, an assignee can not be denied his rights in the assignment of the trade mark.

36. The application for registration of trademark in favor of plaintiff No. 1 is still pending with the Registrar of trademarks. During the interregnum the rights emanating from the assignment cannot be denied to the plaintiffs on account of non-registration by the Trademark registry. The plaintiffs have filed the appropriate application and form and have also filed the copies of the correspondence with the Trademark Registry in this Court to show that their application for registration is still pending. Prima facie it can not be inferred that the application for registration of trade mark on the basis of assignment of the plaintiffs is not pending. Registration/ recordal of the name of the proprietor does not confer title but is merely an evidence of title. The rights in the trademark have come to the plaintiffs on the basis of assignment deeds which cannot be denied, prima facie in the facts and circumstances. Reliance can be placed on Grandlay Electricals (India ) Ltd. and Ors. v. Vidya Batra and Ors. 1998 PTC (18) 646 (Del) and Modi Threads Limited v. Sam Soot Gola Factory and Anr. . The learned judge in M/s Mode Threads (supra) while dealing with the said proposition opined in the following words:

It is true that the plaintiff's application for getting transferred the registered trademark in its name in the office of the registrar is a still pending but that does not debar the plaintiff to protect the violation of the aforesaid trademark at the hands of unscrupulous persons by filing an action in court of law for injunction. It is, prima facie, clear to me that during the interregnum period when the application of the plaintiff is Pending for consideration by the registrar of trademarks, the dishonest persons cannot be allowed to make use of the said trademark in order to get themselves illegally enriched earning upon the reputation built up qua that trademark by the predecessors-in-interest of the plaintiff.

Thus the plaintiffs cannot be denied the rights in the trademark which they have got on the basis of assignment deeds in their favor on the ground that in the records of the Registrar of trademark, the trademark is a still shown in the name of assignor. The interim order granted in favor of plaintiffs, therefore, cannot be vacated on this ground.

37. The defendant has also sought vacation of interim order in favor of plaintiffs and dismissal of their application for injunction on the ground that the plaintiffs have instituted the suit without a power of attorney to institute the same on account of passing off and therefore the suit has not been properly instituted and plaintiffs are not entitled to an order of interim injunction. The power of attorney in favor of Mr. S.K. Guha and Mr. B.V. Iyer by plaintiff No. 1 has been filed by the plaintiffs which authorize the attorneys to continue the proceedings in the present suit for infringement and passing off of trade Mark `Meronem' and to do execute and perform all or any acts, deeds matters and things necessary or required for the purpose of continuing and pursuing the suit. Therefore, it can not be inferred that the suit has not been filed by authorized attorneys. In these circumstances, prima facie, the interim order passed in favor of plaintiffs cannot be vacated nor their application for interim injunction can be dismissed on this ground.

38. The plaintiffs have also claimed action for passing off against the defendant on the ground that plaintiffs are prior user and can fully maintain an action for injunction against the defendant for passing of his goods on the basis of deceptively similar trade mark. The plaintiffs have stated that `Meronem', was launched globally in 1995 and in India in 2000. The Astra Zeneca Group's sales turnover in US was 340 million in 2004 and in India the sales for the years 2002,2003,2004 are Rs. 184.07 million, Rs. 368.51 million and Rs. 445 million respectively and they have incurred huge amounts on the promotional expenses. They contended that they are not claiming monopoly over word `Mero' which may be descriptive or generic but on the entire trade mark `Meronem'. Whether the word is generic/public juris/common to the trade is a question of fact and is to be decided on its own facts. According to the plaintiffs only six companies are using the word `Mero' as a part of their trade name of which two are plaintiffs and defendant. The applications of other traders with the prefix Mero in their trade name pending with the trademark registry do not confer any rights capable of protection prior to the registration of the mark and mere presence of marks on the trademark register does not prove user thereof. It was claimed by the plaintiffs that even a generic/descriptive mark can by long user become associated as the trademark of the product with a particular manufacturer and the use of a deceptively similar trademark would cause irreparable loss and injury to the manufacturer concern. Plaintiffs claimed that even if ' Mero ' is held to be a generic word, the injunction cannot be denied to the plaintiff against the defendant as he is using a deceptively similar mark, which is both phonetically and visually similar, to the plaintiffs' mark. The added matter as contended by the defendant are not sufficient to distinguish the marks of plaintiffs and the defendant. As the products of the plaintiffs and the defendant are medicine, stricter approach was canvassed for medicinal preparation relying on Cadilla Health Care Ltd. v. Cadilla Pharmaceuticals Ltd. . It was held that where medicinal products are involved, the test applicable to judge violation of trademark is not at par with the cases involving non medicinal products. Plaintiffs relied on the test of one of possibility and not one of probability or confusion. Regarding the drug marketed by the plaintiffs and the defendant being schedule ' H ' drug being sold under prescription and the same being injectable or administered by professionals, it was submitted that even they are not immune from mistakes when confronted with deceptively similar marks. Plaintiffs asserted that in India it is not always necessary to have a prescription in order to obtain a prescription medicine. Relying on 2004 (29) PTC 421 (Del), Glaxo SmithKline Pharmaceuticals Ltd. and Anr. v. Naval Kishore Goyal and Ors it was contended that even if the word ' Mero ' is held to be generic, what is to be seen is what would remain in the memory of the customer. Reliance was also placed on USV Limited v. IPCA Laboratories Limited 2003 (26) PTC 21; Sun Pharmaceuticals Industries Ltd. v. Wyeth Holdings Corporaton and Anr. 2005 (30) PTC 14; Boots Company Plc v. Registrar of Trade Marks, Mumbai 2002 (25) PTC 784; Medley Laboratories (P) Ltd. Mumbai and Anr. v. Alkem Laboratories Limited (2002) (25) PTC 592 and Elofix Industries (India) v. Steel Bird Industries and Ors. AIR 1985 Delhi 258 to confirm the interim order dated 6th October,2005 already passed in favor of the plaintiffs.

39. Per contra, the defendant pleas for even declining the relief of passing of to the plaintiffs are that prefix MERO is common to the trade and cannot be appropriated by the plaintiffs alone. Relying on trade practices it was stated that there are number of trademarks which are used in pharmaceutical industry with a common prefix derived from the generic name and so the plaintiffs can not claim exclusive rights and therefore, the defendant is entitled to use the mark `Meromer'.

40. The plaintiffs and the defendant are marketing the molecule `meropenem' and the only difference between the two products is the shelf life and of course the price as the drug marketed by the defendant is much cheaper. Relying on Section 144 of the Act it was contended that trade practices have also to be taken into consideration. Referring to added material it was pleaded that there is no likelihood of passing off. According to defendant marks `Meronem' and 'Meromer' are not phonetically, visually or in any other manner deceptively similar to each other. The defendant sells the goods in mono cartons whereas plaintiffs sell their goods in beehive cartons of 10 vials. The goods of the plaintiffs are made available to the purchaser in the vials as such without any cartons for the individual vial. Shapes of vials were also stated to be different as plaintiffs' vial is narrow and the defendant's vial is broad and from the bottom tapers towards the neck. Colures used on different vials were also stated to be different as well as the style of writing. The goods of the plaintiffs and defendant are schedule `H' drug and are sold on prescription and therefore the confusion between the two trademarks is almost none. The defendant highlighted the difference in price of the products of the plaintiffs and the defendant. It had been contended that the plaintiffs are also liable to provide the medicine at price at which it is marketed by the defendant. Denying any trans-border reputation, it was contended that the plaintiffs have not made any averments regarding trans-border reputation. Referring to the judgment of the Apex Court in Whirlpool (supra) it was stated that the trans-border reputation applies with respect to marks that are not derivative of the products.

41. Referring to admission of the plaintiffs that four more companies are manufacturing `Meropenem' molecule with the prefix `Mero' it was emphasised that no action is initiated by the plaintiffs against these other companies and therefore even against the defendant they cannot have any legitimate grievance for use of mark 'Meromer'. The plaintiffs had not even filed the objection against the registration of trademark `Meromer' when it was advertised. According to the defendant the genesis of the plaintiffs' complaint is the perception of threat by them to their business on account of low price of the defendant's product and present action has been initiated in order to stifle competition in the market. Contending that balance of convenience is in favor of defendant, it was stated that the defendant has already launched its goods in the market in November,2004 and has already invested 1.68 crores in setting up the manufacturing unit. It is stated that goods worth about rupees 1.5 crores has been held up and in case injunction is not vacated, the defendant's goods may perish and will cause greater inconvenience and irreparable loss and hardship to the defendant. Relying on Novartis AG v. Wanbury Ltd. 2005 DLT 316; East African Remedies Pvt. Ltd. v. Wallace Pharmaceuticals 2003 (27) PTC 18; J.R. Kapoor v. Micronix India (1994) Supp 3 SCC 215; F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co Pvt. Ltd., ; SBL Ltd. v. Himalaya Drug Co. 1997 PTC (17) 540; Indo Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceuticals Ltd. AIR 1988 Madras 347; USV Ltd. v. Systopic Laboratories Ltd. 1004 (1) CTC 418; Aviat Chemicals Pvt. Ltd. v. Intas Pharmaceuticals Ltd. 2001 PTC 601 and Regency Sanitary Ware Pvt. Ltd. v. Madhusudhan Industries Ltd. 2001 PTC 482, it was contended that the interim order be vacated and the application for interim injunction filed by the plaintiffs be dismissed.

42. The counsels for both sides have referred to and relied on various observations of the decision of the Apex Court in case of Cadila Health Care Ltd. (supra). The Supreme Court dealt with passing off of medicinal preparation and drugs in this case. Principles laid down by the Apex Court exhaustively deal with the passing off the drugs and therefore this judgment is very relevant. Following factors are relevant for consideration while dealing with an action for passing off of similar trade marks for drugs and medicine:

(1) The nature of the marks i.e. whether the marks are word marks of label marks or composite marks, i.e. both words and lable marks.

(2) The degree or resembleness between the marks, phonetically similar and hence similar in idea.

(3) The nature of the goods in respect of which they are used as trade marks.

(4) The similarity in the nature, character and performance of the goods of the rival traders.

(5) 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.

(6) The mode of purchasing the goods or placing order for the goods and.

(7) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.

43. In the Cadilla Health Care Ltd. (supra) the Apex Court also held that when the question of passing of action is to be decided in a case involving medicinal products, the test to be applied to adjudge the violation of trade mark law may not be at par with cases involving non-medicinal products. Following principles/peculiar features can be highlighted :

(i) 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 plaintiff's 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.

(ii) 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 of supervision or 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.

(iii) 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.

(iv) Public interest would support lesser degree of proof showing confusing similarity in the case of the trade mark in respect of medicinal product as against other non-medicinal products. Drugs are poisons, not sweets. 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 hospital, 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.

(v) While dealing with cases relating to passing off, one of the important tests which was 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 or another due to similarity or marks and other surrounding factors. What is likely to cause confusion would vary from case to case.

44. While confusion in the case of non-medicinal products may only cause economic loss, confusion between the two medicinal products may have disastrous effects on health and life. 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 effects on the public health. Therefore, these principles are to be kept in mind while deciding these applications, according to the judgment of the Apex Court and in case of confusion what will be the result. The emphasis is on whether on confusion the effect would be disastrous and its effect on the life. These tests are applicable for medicines for the same ailments and similar products and medicine because different medicines may have profound effect on the human body. But can these test be applied for same medicine which are marketed in different names by different persons and companies. If the same medicine is used by two different competitors having the common name of the drug as their prefix, the tests for passing off as enumerated hereinabove may not be applicable as the effect of two medicines will be the same. The Apex Court was concerned about the drugs and pharmaceutical preparations which are similar but which may have profound different effects on the human body and not with the same drug. The tests laid down by the Apex Court are in context of different medicine, howsoever slight may be the difference, on account of deceptively similar trade names and not for the same medicine. One of the test laid down is about the similarity in the nature, character and performance of the goods of the rival traders. In case of same medicine or drug this test which is the basis for considering the effect on the health and life will be redundant. Same drug having same composition will not have different side effects leading to any disastrous results. The difference in shelf life of the drug on account of different content of buffering agent will not make the drug having different shelf life different.

45. Regarding use of descriptive word or use of part of the name of the common medicine, no one can claim monopoly over the use of the said word. The Apex Court was concerned with the use of `Micro' in Micronix and Microtel in J.R. Kapoor v. Micronix India 1994 Supp (3) SCC 215 and it observed as under:

6 Thus micro-chip technology being the base of many of the products, the word 'micro' has much relevance in describing the products. Further, the word 'micro' being descriptive of the micro technology used for production of many electronic goods which daily come to the market, no one can claim monopoly over the use of the said word. Anyone producing any product with the use of micro- chip technology would be justified in using the said word as a prefix to his trade name. What is further, those who are familiar with the use of electronic goods know fully well and are not likely to be misguided or confused merely by, the prefix 'micro' in the trade name. Once, therefore, it is held that the word 'micro' is a common or general name descriptive of the products which are sold or of the technology by which the products are manufactured, and the users of such products are, therefore, not likely to be misguided or confused by the said word, the only question which has to be prima facie decided at this stage is whether the words 'tel' and 'nix' in the trade names of the appellant and the respondent are deceptive for the buyers and users and are likely to misguide or confuse them in purchasing one for the other. According to us, phonetically the words being totally dissimilar are not going to create any such confusion in the mind of the users.

After comparing added information of the two marks Micronix and Microtel, the Apex Court held that there was no chance of users being misguided or confused. The Supreme Court observed:

... This being the case, we are of the view that there is not even the remotest chance of the buyers and users being misguided or confused by the two trade names and logos. Same is the case with the carton which merely reproduces both the trade names and the logos.

46. The argument of the Learned counsel for the plaintiffs that even if the word 'Mero' is descriptive, the plaintiff is not claiming monopoly over `Mero' but on `Meronem', is not logical. If `Mero' is on account of common name of medicine which are marketed by both the parties and if it can be used by either of the parties and no party can claim exclusive rights, then the comparison should be of `Nem' and 'Mer'. Phonetically both the words are very different and distinct. The argument of the plaintiffs' counsel that in these two suffixes one alphabet is different i.e `N' and `R' is a feeble attempt to ignore the distinctiveness in them. In a word, placement of letters is very material. In the two suffixes `Mer' and`Nem' the placement of letters are different which creates a very pronounced distinctiveness.

47. The test for comparison of the two word marks was formulated by Lord Parker in Pianotist Co. Ltd.'s application 23 RPC 774 as follows: 'You must take the two words. You must judge them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider 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 trade marks is used in a normal way as a trade mark for the goods of the respective owners 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.'

48. In F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manner and Co. (P) Ltd., the Apex Court had considered `Dropovit' and `Protovit' holding that `Vit' indicated that the goods were Vitamin preparation and terminable syllable is both descriptive and common. Paying greater regard to the uncommon elements, it was held that it is difficult that one will be mistaken for or confused with the other. The 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 had held:

8. 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. 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 an alliteration. The affidavits of the appellant indicate that last three letters 'Vit' is a well known common abbreviation used in the pharmaceutical trade to denote vitamin preparations. In his affidavit, dated January 11, 1961 Frank Murdoch, has referred to the existence on the register of about 57 trade marks which have the common suffix 'Vit' indicating that 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. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The 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.

49. The non descriptive words `NEM' and ' MER' in two trademarks of the plaintiffs and defendant cannot be slurred over in pronunciation and there is no reasonable possibility of confusion. As already observed in order to assess the similarity and dissimilarity in words, not only the letters but their placement is also relevant and material. In the circumstances, the submission of the plaintiffs that in two non-descriptive words `NEM' and `MER' the difference is in letters `N' and `R' and the letters `E' and `M' are common, does not reflect similarities because the placement of letters has not been considered. In my view the non descriptive words `NEM' and 'MER` are distinctly dissimilar.

50. Proprietor of Liv-52 was held not entitled for interim injunction against the use of Liv-T, by a division bench of this Court in (DB) S.B.L. Ltd. v. The Himalaya Drug Company. It was held that no body can claim exclusive right to use any word, abbreviation, or acronym which is publici juris. The practice to name a drug by the name of the organ or ailment is common practice. The Court had held:

The decision on the question of likelihood of deception is to be left to the Court. (3) Nobody can claim exclusive right to use any word, abbreviation, or acronym which has become publici juris. In the trade of drugs it is common practice to name a drug by the name of the organ or ailment which it treats or the main ingredient of the drug. Such organ, ailment or ingredient being publici Jurisdiction or generic cannot be owned by anyone for use as trade mark; (4) Whether such feature is publici Jurisdiction or geric is a question of fact; (5) If the two trade marks by two competing traders use a generic word or an expression publici Jurisdiction common to both the trade marks it has to be seen if the customers who purchase the goods would be guided by the use of such word or expression or would ignore it and give emphasis to prefixes or suffixes or words used in association therewith. The primary question to be asked is What would remain in the memory of customer' The surrounding circumstances such as the presentation of goods, colour scheme and lettering style etc. used on the packing also assume significance.

51. The name `Mero' is from the common name of the drug, Meropenem and the defendant and the plaintiffs both can not claim exclusive right to the same. The non descriptive words `Nem' and `Mer' of the two trade names are distinct. This distinction coupled with others, colour scheme and shape of the vial, which have been perused by me, demonstrate quite dis-similarities between the two products, which is the same medicine, marketed under the different trade names. The only difference is the shelf life which can be ascertained from the date of expiry and the price, as the drug marketed by the plaintiffs is costlier than the same drug marketed by the defendant. The principals laid down by the Apex Court in Cadilla do not overrule most of the ratios of S.B.L Ltd. (supra) and therefore the distinction carved out by the learned Counsel for the plaintiffs can not sustain the pleas of the plaintiffs. Even if the entire trade mark is to be considered, for various factors as detailed herein above the two trade marks will be essentially different. The reliance of the plaintiffs on Corn Products Refining Co. v. Shangrila Food Products Ltd. also does not support their pleas. In Corn Products (supra) the two marks were `Glucovita' and `Gluvita' which were held to be dis-similar by the Registrar on the ground that word `co' between the prefixes and suffixes was sufficient to distinguish the two marks. The Apex Court however, did not agree that word `co' will distinguish two trade marks with prefixes and suffixed being same. The Supreme Court had held:

18 ...Apart from the syllable 'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other.

52. A division Bench of Madras High Court in AIR 1998 Madras 347, Indo Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceutical Ltd. had found words `Enerjex' and `Enerjase' dissimilar as the suffixes of both the words `jex' and `jase' were found to distinguishable and dissimilar and holding that these words will not create confusion. The plea of the counsel of the plaintiffs that in contradistinction the words` NEM' and `MER' are quite phonetically similar is not acceptable. Both the words are quite distinct and the similarity between the two is aberration of their perception.

53. Dissimilarities in `Meronem' and `Meromer' can further be perceived on the basis of principles enunciated in Aviat Chemicals Pvt. Ltd. v. Intas Pharmaceuticals Ltd. PTC 601 (Delhi) contending that Lipicard and Lipicor are dissimilar; Novratis AG v. Wanbury Ltd. and Anr. inferring that Coriminic viz a viz Triaminic/Triominic are quite dissimilar and distinquishable and Kaviraj Pandit Durga Dutt Sharma v. Navratna Pharmaceuticals Laboratories finding Navaratna and Navaratna Kalpa different and dissimilar.

54. The plaintiffs have tried to distinguish the case of Liv-52 (supra) on the ground that in that case it was found that about hundred drugs in the market were using the abbreviation `Liv' from liver, an organ of human body as constituent of names of medicinal preparations meant for treatment of ailments and diseases associated with liver where as in the case of plaintiffs there are only six companies, two of which are plaintiffs and defendant. Regarding 30 to 35 applications, contended by the defendant with the registrar of trademarks with the prefix `Mero' , plaintiffs stated that the presence of a mark on the register does not prove its user and consequently the plea of the defendant that `Mero' is commonly used in the trade is not sustainable.

55. This submission of the plaintiffs is based on their own assumption. At the interim stage 30 to 35 application with the registrar of trademarks with the prefix ' mero ' will rather demonstrate that the word `Mero' emanating from the common name of the medicine Meropenem, is commonly used. In any case even the plaintiffs have admitted that four more persons/companies are also marketing the drug `Meropenem' with the trademarks having prefix `Maro'. No hard and fast rule can be laid down as to how many more persons or companies should be using a particular name so as to infer its commonality. In my opinion it will depend on the product and trade and in some cases even if only one more company is using a similar trade name, it may show the commonality of the name. The plaintiffs have admitted that four more companies are marketing the same drug having prefix `Maro' and no action has been taken against them. I am not quite convinced with the argument of the plaintiffs that list of trade marks given by the defendant without any corroborative evidence of views cannot be relied upon as evidence in support of plea that `MERO' is common to trade. The trade marks of the plaintiffs and the defendant have not been spilt for purpose of comparison but because both of them have prefix MERO which is generic word. This generic word is used not only by the parties to the suit but by a number of other such drug manufacturers. In the circumstances, action of infringement and passing off only against the defendant, prima facie also points towards other factors. In the circumstances the plea of the defendant that the present action is being initiated against him to wipe off the competition raised by the defendant, on account of marketing the same drug at a much lower price becomes significant in order to a ascertain the balance of convenience between the parties.

56. The ratio of the judgments relied on by the plaintiff do not support their pleas and contentions and they are clearly distinguishable. In 2005(30) PTC 14 (BOM), Sun Pharmaceutical Industries Ltd. v. Wyeth Holdings Corporation and Anr., a division Bench of Bombay High Court had declined to interfere with the discretion exercised by the Single Judge in granting injunction in similar trade marks 'Pacitane' which was a registered trade mark and ' Parkitane' which was not a registered trade mark. Relying on the observation in N.R. Dongre v. Whirlpool Corporation (supra) and Printers (Mysore) Private Ltd. v. Pothan Joseph about the interference in the appeal arising out of discretionary order of the temporary injunction, it was held that the interference in appeal will be called for only if the conclusion reached is that the exercise of discretion by the trial judge was contrary to the settled principles for the grant of temporary injunction or that it is arbitrary or perverse. Similarly in the , Glaxo Smithkline Pharmaceuticals Ltd. and Anr. v. Naval Kishore Goyal and ors the defendant's proposed trade mark had not been published and therefore at the threshold and a preliminary stage of a suit, the holder of registered trade mark was accorded jural protection. In , Sanat Products Ltd. v. Glade Drugs and Nutraceuticals Pvt. Ltd. and anr the drugs `REFORM' and `REFIRM' were found to be deceptively similar but these names did not have any common prefixes based on some ailment, organ of the body or on the name of common medicine in contradistinction to the present case. The case of the SPOXIN and SUPAXI, 2002 (25) PTC 592 (Bom) (DB) is also clearly distinguishable on the same principle and does not support the contentions of the plaintiffs. These two trade marks were deceptively similar but the drugs were quite different and in case of confusion could lead to disastrous results in contradistinction to the plaintiffs' and defendant products which are the same drug marketed under the different names. The drug marketed by the parties to the suit is same except the content of buffering agent used by them which makes the shelf life different, shelf life is four years of plaintiffs' drug and two years of defendant drug.

57. Essential description and characteristics of the two medicines of plaintiffs and defendants are given herein before in a table. A mere look at them reveals that there is no difference in the properties of the two medicines except the shelf life and of course the price. The same drug is being marketed by the plaintiffs and the defendant. The price of the drug marketed by the defendant is cheaper to the drug marketed by the plaintiffs. The composition of the drug of the plaintiffs and the defendant is same except the content of buffering agent. As there is slight difference in the content of the buffering agent, that makes the shelf life different i.e the dates of expiry of the drug will be different for the drug of the plaintiffs and the defendant. The shelf life of the drug of the plaintiff is four years whereas in case of defendant it is two years. In the peculiar circumstances of the present case even if the of deceptive similarity is assumed between the trade marks of the plaintiffs and of the defendant, there will not be any disastrous or any harmful effect inasmuch as the drug is the same. The plea of the plaintiffs that the difference in shelf life shall lead to disastrous effect, seem to be hypothetical and assumptive and more of an attempt to some how discredit the product of the defendant. This acquires more significance because when the product of the defendant was advertised in trademark journal, no opposition was filed by the plaintiffs. Admittedly the drug Meropenem is marketed by others using the name with prefix `Mero' and no action has been taken by the plaintiffs against the manufacturers of such other companies. Date of expiry of every medicine is given on packing. It will be too much to assume that in case of the product of the plaintiffs before its administration by the qualified persons, they will be presume it to be four years without looking at the date of manufacture and date of expiry. Whether the shelf life of plaintiffs product is four years or two years in case of defendant, before administration by the qualified personals, the date of expiry will be checked and therefore it cannot be inferred that on account of difference in shelf life between the products of the plaintiffs and the defendant, will cause disastrous results or confusion which will result in loss of life or other serious health hazard.

58. Considering the averments made by the parties, it is difficult to infer at this stage that the adoption of the trademark` Meromer' by the defendant is with the intention to pass off his product as that of plaintiffs. The defendant has spent considerable amount in setting up the plant. The plaintiff was not the first to adopt and use the prefix ' MERO ' as trademark MEROCEL was registered in favor of M/s Merrel Dow Pharmaceuticals Inc. No. 2110 East Galiraith Raod, Cincinnati, Ohio, U.S.A which fact can not be denied by the plaintiffs. There are other companies marketing the same drug, Meropenem, with the trade names having prefix `Mero'. Perusal of the plaint also reveals that the plaintiffs did not make any averment regarding trans border reputation. No material as has been relied on or produced by the plaintiffs to show its trans border reputation which were noticed by the Apex Court in N.R. Dongre v. Whirlpool Corporation .

59. Defendant is one of the companies in India which is marketing the drug `Meropenem' which is essentially the same as that marketed by plaintiff but at a cheaper price. The defendant had launched his drug in November, 2004 after investing considerable amount in setting up its unit for the manufacture of the said drug. The trademark of the defendant was advertised in the trademark journal but no opposition to it was filed by the plaintiffs. After the institution of the suit, the rectification proceedings were initiated first before the Registrar and thereafter before the Appellate Board without seeking prima facie satisfaction of this Court regarding invalidity of the registration of the defendant's mark. In the plaint and the application for interim injunction, correct particular and facts about the assignment of trade mark in favor of the plaintiffs were not given. The plaintiffs though have admitted that other companies are also marketing the same medicine with different trade marks having common prefix `Mero' and no action has been initiated by the plaintiffs against such other companies. In the entirety of the facts and circumstances, if the defendant shall be restrained from selling, marketing or in any manner dealing with the pharmaceutical drug Meropenem under the trade name 'MEROMER ' the of the inconvenience caused to the defendant shall be much more. Public interest will also support availability of same drug at a cheaper price. So prima facie, in my opinion the balance of convenience is in favor of the defendant. Any interim injunction in the facts and circumstances may also cause irreparable loss to the plaintiffs. The loss of the plaintiffs seems more to be financial which can be safeguarded by directing the defendant to maintain accounts of sale of the drug Meropenem under the trade name `Meromer' and submit the accounts regularly to this Court every half yearly.

60. For the foregoing reasons the order dated 6th October, 2005 needs to be vacated and injunction application filed by the plaintiffs merits rejection and therefore, I.A. No. 8078/2005 filed by the plaintiffs is accordingly dismissed and IA No. 8561/2005 filed by the defendant is hereby allowed. The interim order dated 6th October, 2005 is vacated. The defendant is, however, directed to maintain the account of sale of drug under the trade name `Meromer' which shall be submitted to this Court every half yearly.

61. Needless to mention, the views expressed above are tentative and prima facie conclusions which shall not be treated as expression of any final opinion on the final merits of the case.