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The Himalaya Drug Co. Vs. Warner-lambert Pharmaceutical Co. - Court Judgment

LegalCrystal Citation
CourtMumbai High Court
Decided On
Case Number O.C.J. Miscellaneous Petition No. 303 of 1968
Reported in(1970)72BOMLR528
AppellantThe Himalaya Drug Co.
RespondentWarner-lambert Pharmaceutical Co.
DispositionAppeal dismissed
.....two pharmaceutical preparations, one being a depressant having a registered trade mark 'nardyl' and the other a stimulant proposed to be registered with the trade mark 'nardelzine,' in respect of which marks it was found that there was no reasonable probability of confusion but there was a possibility of confusion occurring whereby dislastrous consequences to the public could follow, it was held that in the circumstances of the case, exercise of discretion against registration of the proposed trade mark 'nardelzine' was called for under section 18 of the trade and merchandise marks act, 1958.;in the matter of an application for a trade mark by lewis thomas edwards (1945) 63 b.p.c. 19, in the matter of an application by bayer products, ld., and in the matter of an..........of medicinal and pharmaceutical preparations.2. on 20th may, 1955 the petitioners' trade mark 'nardyl' was registered in respect of goods in class 5 of part a of the register. on 8th march, 1960 the respondent company filed an application before the registrar for registration of its trade mark 'nardelzine' in part a of the register in respect of goods in class 5. on 19th april, 1962 the petitioners filed a notice of opposition to the registration of the respondent's said mark. on 30th july, 1964, the assistant registrar dismissed the petitioners' opposition. on 21st october, 1964 the petitioners filed an appeal to this court. in that appeal a consent order was passed on 20th january, 1966 whereby the judgment of the assistant registrar was set aside and the matter was remanded.....

Mody, J.

1. By this petition the petitioners who are a firm have filed an appeal against the Judgment and Order of the Deputy Registrar dismissing the Opposition filed by the petitioners before him. The respondent is a Company incorporated in the State of New Jersey, U.S.A. Both the petitioners and the respondent carry on business as manufacturers of medicinal and pharmaceutical preparations.

2. On 20th May, 1955 the petitioners' trade mark 'NARDYL' was registered in respect of goods in Class 5 of Part A of the Register. On 8th March, 1960 the respondent company filed an application before the Registrar for registration of its trade mark 'NARDELZINE' in Part A of the Register in respect of goods in Class 5. On 19th April, 1962 the petitioners filed a Notice of Opposition to the registration of the respondent's said mark. On 30th July, 1964, the Assistant Registrar dismissed the petitioners' Opposition. On 21st October, 1964 the petitioners filed an appeal to this Court. In that appeal a Consent Order was passed on 20th January, 1966 whereby the Judgment of the Assistant Registrar was set aside and the matter was remanded back to the Registrar with certain directions.

3. After the remand, the petitioners amended their original Notice of Opposition and thereafter the respondent amended its Counter-Statement. The parties also led some further evidence. The Joint Registrar, after hearing the matter, gave his Judgment and Order dated 17th February, 1968. The petitioners' as well as the respondent's trade marks are word marks simpliciter. The Registrar in his judgment considered the principles to be followed and tests to be applied as laid down in decided cases, made a visual and phonetic comparison of the two marks, took into account the surrounding circumstances and held that there was no reasonable probability of any confusion between the two marks occurring on the ground that the two words were deceptively similar. He further held that, in view of that conclusion arrived at by him under Section 12(1) of the Trade Marks Act, the objections raised by the petitioners under Section 11, Clauses (a) and (e), would also have to be answered in the same way. He also held that there was no reason for him to exercise his discretion under Section 18 of the Trade Marks Act against registration of the respondent's trade mark as contended for by the petitioners. The petitioners having lost on all these counts have filed this appeal.

4. The petitioners use their mark in relation to a medicinal preparation belonging to the group of tranquillisers for the treatment of psycho-neurotic disorders, neuro circulatory asthenic, nervous tension, insomnia and like maladies. The clinical effect of the petitioners' preparation is to bring about a depression of over-activated nerves. The petitioner's preparation is, therefore, to put it briefly, a tranquilliser or depressant. The respondent's preparation is a psychic energizer and its clinical effect is to activate or stimulate sluggish nerves. Shortly stated, the respondent's preparation is a stimulant or energizer.

5. I will first deal with the position arising under Sub-section (I) of Section 12 which lays down a bar to registration. The test for deciding whether there is deceptive similarity is well established. It is that there should be no likelihood of deception or confusion among a substantial number of persons if the second mark seeking registration is registered and used normally and fairly in respect of the goods in respect, of which it is registered. Authorities equally clearly lay down that the onus lies upon the applicant to establish that there is no likelihood of deception or confusion occurring. When the rival marks are word marks, the test for judging whether there is deceptive similarity has been laid down in the leading case of In the Matter of an Application by the Pianotist Company Ld. for the Registration of a Trade Mark (1900) 23 R.P.C. 774. What has to be borne in mind is to apply both visual and phonetic tests to both the marks and also to consider the surrounding circumstances which would include the nature and kind of customers who would be likely to buy goods under those two marks, whether they would be sold at the same place side by side and whether after goods are obtained by the customer there is likelihood of the customer making a mistake by the goods of both the marks being stored together in his house.

6. The two marks in this case are 'NARDYL', which is a word of six letters and 'NARDELZINE' which is a word of ten letters. The visual test can be applied when both the marks appear in print or in type or in handwriting. The difference between the two word marks is such that there is hardly any probability of the two causing any confusion as judged by the application of the visual test.

7. The position on the application of the phonetic test may be considered. The word 'NARDYL' and the first six letters 'NARDEL' of the mark 'NARDELZINE' are fairly similar. The learned Joint Registrar has reached the conclusion that only the first four letters 'NARD' are similar. I am of the opinion that the letter 'E' in 'NARDELZINE' is likely to be pronounced by some people as the pronouncing of the second letter 'i' in 'Bill.' If it is so pronounced, phonetically 'NARDYL' and 'NARDEL' in 'NARDELZINE' are identical. But even if the fifth letter 'E' in 'NARDELZINE' is pronounced in the same way as the second letter 'e' in 'Bell', the pronouncement of the whole word 'NARDEL-ZINE' in actual conversation would make its first six letters 'NARDEL' sound fairly similar to, or at least not very distinguishable from, 'NARDYL.' But, even so, the presence of the last four letters 'ZINE' makes the two words phonetically distinctive and it. is highly probable that the dissimilarity would be noticed by even persons who are not familiar with the two words. lam, therefore, of the opinion that the dissimilarity between the two word marks, phonetically speaking, is such as to prevent them from being deceptively similar. But none-the-less, in my opinion, the distinctiveness is not so pronounced as is put by the learned Joint Registrar in his judgment. In other words, the probability of confusion occurring cannot be completely ruled out. But yet, reasonable probabilities are that there would be no confusion which would make the two word marks deceptively similar.

8. Now, so far as the surrounding circumstances are concerned, there is no dispute that the respondent's goods are a drug falling within Schedule 'L' to the Drugs and Cosmetics Rules framed under the Drugs Act. By reason of the operation of the said Rules the respondent's product cannot be obtained except upon the prescription of a qualified medical practitioner in writing over his usual signature with date and the name and address of the person for whose treatment it is prescribed and the prescription shall also indicate the total amount of the medicine to be supplied and the doses to be taken. It is highly unlikely that any doctor desiring to prescribe 'NARDELZINE' would make a mistake between the two drugs and wrongly write down 'NARDYL' in his prescription. It is likewise highly improbable that an experienced chemist would supply 'NARDYL' when it is the other drug which has been prescribed by the doctor in his prescription. But so far as the supplier is concerned there is some probability of the chemist's assistants, who may not be very experienced or educated, making a mistake in supplying 'NARDYL' when it is 'NARDELZINE' which is prescribed or asked for. The other argument urged on behalf of the petitioners was that both the drugs may be found together in the family medicine cupboard and one may be taken instead of the other. Now, as seen earlier, one drug is a stimulant, whereas the other is a depressant, the two meant for treatment of exactly opposite maladies and there is, therefore, no reasonable probability of both the drugs existing side by side in the family cupboard. The principles for judging probabilities are well established and are to be found in the leading case of In the Matter of an Application by Bayer Products, Ld., and in the Matter of an Opposition by A. Wander, Ld. (1947) 64 R.P.C. 125. It was held in that case that when deciding the case under Section 12(7) it is not for the Court to construct imaginary and unlikely cases. It is impossible to exclude entirely the risk of confusion, but what the Court should be concerned with are not unlikely cases which may happen once in one hundred years, but only reasonable probabilities. Judged by these standards it must be concluded that there is no reasonable probability of confusion between the two marks.

9. There yet remains one argument of Mr. Shah for consideration. There is no dispute that 'NARDELZINE' can be supplied only on a doctor's prescription, as stated earlier. It cannot therefore be supplied to a person demanding 'NARDYL'. But what of a converse case Would a person requiring 'NARDELZINE' be given 'NARDYL' This aspect has not been considered by the Joint Registrar as probably it was not argued before him. If a person requiring 'NARDELZINE' happens to go to the chemist without the necessary prescription and orally asks for 'NARDELZINE,' there is some chance of 'NARDYL' being supplied to him. To this argument Mr. Mehta replied that it is not likely to so happen because even 'NARDYL' is supplied on a doctor's prescription. He drew attention to the affidavits of Lajpat Rai, a chemist and druggist, and G. Thiruvengandum, also a chemist and druggist, which state that 'NARDYL' is purchased by the public only on a prescription from a doctor. He also drew my attention to a similar statement contained in the affidavit of V. R. K. Swami, who was a member of a firm who were the authorised distributors of the petitioners. He also drew my attention to the affidavit of Mohomed Manal who also states that both the respondent's and the petitioners' products will be prescribed by doctors. He pointed out that all these four affidavits were filed by the petitioners themselves as their evidence. In this connection, however, I must also refer to the affidavit of Keshavlal Raichand who also is a chemist and druggist, and he states that the members of the public purchased 'NABDYL' mostly on a doctor's prescription. The word 'mostly' must be noted. It does not say or convey that 'NARDYL' would be purchased invariably or only on a doctor's prescription, i.e. not without it. Mr. Shah has strongly relied on the affidavit of J. B. Saxena who is the general manager of the petitioners. He has stated that 'NARDYL' can be had even without a doctor's prescription. The conclusion which can be reached on this evidence is that 'NARDYL' is very often, in practice, though not so required by any law like the Drug Rules, purchased and supplied on a doctor's prescription. There, therefore, does exist a probability, though not a reasonable probability of 'NARDYL' being supplied and used instead of 'NARDELZINE.'

10. Mr. Mehta contended that there is evidence on record and that too filed by the petitioners themselves, to show that 'NARDELZINE' was taken by doctors and chemists to be 'another product' of the petitioners themselves. He invited attention to the affidavits of Dr. P. R. Gadgil, Dr. C. P. Chakrapani and Dr. S. Natrajan all the three being medical doctors, and of the said Lajpat Rai and the said G. Thiruvengandum both being chemists and druggists, and of the said V. R. K. Swami, the petitioners' own distributor. He emphasised the words 'another product' in support of his contention that 'another' clearly negatives that 'NARDELZINE' was confused for 'NARDYL.' This evidence does show that under certain circumstances such as on receiving for the first time the literature as regards 'NARDELZINE' these six persons took 'NARDELZINE' to be 'another product' of the petitioners. But it is also necessary to see the context in which these persons have made that statement. Their evidence was produced by the petitioners to show that 'NARDELZINE' was taken to be a product of the petitioners and confusion was caused, the confusion being, not between the two products, but as to the proprietor whose products they were. This factor does not totally eliminate all probabilities of confusion, but it must be held that there are no reasonable probabilities of such confusion occurring.

11. Mr. Mehta also contended that products with both the marks have circulated side by side, but the petitioners have not been able to show a single instance where confusion in fact occurred. He invited attention to the amended counter-statement of the respondent wherein it has been stated that they did not encounter the petitioners' trade mark 'NARDYL' until after they had encountered a French Company's trade mark 'NARDYL' and in the countries where the trade mark 'NARDYL' of the petitioners was first encountered, namely, Kenya and Tanganyika, the Registrars saw fit to accept 'NARDELZINE' for registration side by side to the prior registration of 'NARDYL' of the petitioners and further that the petitioners were unable to prove any confusion in Tanganyika and Kenya where the petitioners' and the respondent's marks were sold. He also pointed out the statement of Robert B. Clerk, a Senior Vice-President of the respondent, made in para. 6 of his affidavit, that he was not aware of any confusion having occurred anywhere where NARDYL or NARDIL and NARDELZINE had been sold side by side as in fact they had been so sold. Now, in neither of the above two statements the period or the extent of the sale side by side has been stated. It could be a very short period or a small turnover so as to enable no reliable inference to be drawn that though the two marks circulated side by side no confusion was, in fact, caused. Nor can, in my opinion, much reliance be placed on the fact that the petitioners have not led evidence of any confusion having in fact been caused, because so far as India is concerned the respondent's application itself shows that it was for registration of their mark which was ''proposed to be used,' which means that it was in fact not in use and could therefore not be in circulation side by side with the petitioners' mark. So the only circulation of the two marks side by side stated by the respondent is confined to Kenya and Tanganyika, but, as stated earlier, not much reliance can be placed on that fact without knowing the period or the extent of such circulation. Because of these factors the absence of the petitioners proving actual confusion does not, to my mind, help the Court in reaching the conclusion one way or the other.

12. Under the circumstances, so far as Section 12(1) is concerned, it must be generally concluded that there does exist some possibility of confusion occurring, that that possibility does not amount to what may be called a reasonable probability and that therefore the bar against registration of the respondent's mark 'NARDELZINE' is not attracted.

13. The petitioners have not pressed and have, as a matter of fact, not even argued their contentions under Section 11, Clause (a) or Clause (e).

14. That leaves for consideration Mr. Shah's contention that the discretion under Section 18 ought to have been exercised and ought to be exercised against registration of the respondent's mark, although the bar under Section 12 be held not to be applicable. It is not disputed-and, indeed, it cannot be disputed in law-that such a discretion vests under Section 18 in the Registrar and therefore also in the Court. Mr. Shah contended that in refusing to exercise his discretion against registration the Joint Registrar has failed to properly consider the circumstances of the case in all their aspects. He argued, and Mr. Mehta did not dispute, that the consequences of a confusion occurring either way, i.e., NARDELZINE being supplied and used in place of NARDYL or NARDYL being supplied and used in place of NARDELZINE, would be very serious and may even be fatal. In para. 8B of the amended Opposition filed by the petitioners it has been stated that although the respective preparations of the parties are both pharmaceutical preparations they have exactly opposite clinical effects and the administration of one when the other is indicated would have disastrous, if not fatal, results. This particular statement made on behalf of the petitioners has not been denied in the amended counter-statement filed on behalf of the respondent. But even apart from this statement and the absence of its denial, it is obvious even to a layman what the effect would be if a person requiring a stimulant takes a depressant or conversely if a person requiring a depressant takes a stimulant. The result would certainly be disastrous to the person who happens to do so.

15. I have held earlier that NARDELZINE being a schedule 'L' drug is not likely to be supplied for NARDYL, but that there is a fair degree of probability of NARDYL being supplied and taken for NARDELZINE when the supply is asked for without production of a doctor's prescription. Of course, an experienced chemist may not make such a mistake, but the chemist's assistants may not be very experienced or very literate and in their case the probability of such a mistake occurring cannot be totally ruled out. The degree of such probability is not so high that it can be said to be a reasonable probability. But none-the-less the degree of such probability is such that it cannot be totally ignored when considering the question of the exercise of discretion. As a matter of fact, it is only when registration cannot be refused under Section 12 as a result of a finding that there is no reasonable probability of confusion occurring by reason of the rival marks being deceptively similar that the question of exercising discretion under Section 18 against registration can and would arise. The question of probabilities is a question of difference in degrees. There is no exact yard-stick for measuring probabilities. If probabilities of confusion are not so large as to be classified as reasonable, registration cannot be refused under Section 12 (/). But yet, if the probability is appreciable and not such as, one would say, 'one in a million' or 'too fanciful' or 'too remote,' such probability can be taken into account when considering the question of the exercise of discretion under Section 18 against registration. But a mere existence of such probability would not, by itself, justify the exercise of discretion against registration. Something more must co-exist along with such probability. In the present case such an additional factor does exist. That additional factor is the disastrous consequences which would follow if a confusion does occur. After all, the goods to which both the rival marks are to apply are drugs or pharmaceutical products and not articles like toys or combs or shoes or the like, in which cases confusing one mark for the other would not result in some appreciable harm, if any at all. The discretion has been granted by the statute for the protection of the public. In the case of drugs and pharmaceutical products the public, the ailing public, requires a very great degree of protection and particularly so when the result of a confusion occurring would be disastrous. This principle can be found from the judgments in In the Matter of an Application for a Trade Mark by Lewis Thomas Edwards (1945) 63 B.P.C. 19. In the matter of an Application by Bayer Products, Ld., and in the Matter of an Opposition by A. Wander, Ld., and In the Matter of the Trade Marks Act, 1938, and in the Matter of Vitamins Ld.'s Application for a Trade Mark [1956] R.P.C. 1. These circumstances therefore call for the exercise of discretion against the registration of the respondent's trade mark.

16. Under the circumstances, I allow the appeal, reverse the judgment relating to exercise of discretion and set aside the order of the learned Joint Registrar and refuse the respondent's application for registration. The respondent shall pay the petitioners' costs of this Petition.

17. [The rest of the judgment is not material to this report.] Appeal allowed.

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