N.D. Vyas, J.
1. The present notice of motion is taken out by the plaintiffs for restraining the defendants from using their mark 'Medisprin' so as to infringe the plaintiffs' registered trademark 'Disprin' and so as to pass off their goods as the goods of the plaintiffs.
2. Briefly, the facts giving rise to the present notice of motion are :
The plaintiffs, manufacturers of medicinal and pharmaceutical preparations, are registered proprietors of a trademark 'Disprin' (word per se) in respect of analgestic preparations falling in Class 5 of the Schedule to the Trade Mark Rules. The defendants are also manufacturers of medical and pharmaceutical products and are proprietors of a trademark 'Medisprin Encotab' for the registration of which they have applied. According to the defendants, their product marketed under the said trademark is a coronary vasodilator and is a Schedule H drug which can be sold only by a licensed chemist and that too only against a medical prescription. According to the plaintiffs, their said trademark has been extensively used in India for more than 15 years; that they have spent considerable amounts by way of promotional expenses and that, therefore, their said mark 'Disprin' has come to be associated by the traders and members of public exclusively with the plaintiffs. In 1979, the plaintiffs also applied for and obtained registration of another mark, viz., `Disprin Junior' in respect of the same goods and the said mark is valid and subsisting. The said products of the plaintiffs are available in tablet form, are packed and sold in strips and are available across the counter as the same do not require doctor's prescription. The plaintiffs claim that in or about August 1989 they came across defendants' product sold in tablet form, packed in strips and marketed under the mark 'Medisprin'. The plaintiffs, through their trademark attorneys, served a cease and desist notice dated 12th August, 1989 on the defendants. The defendants, through their trademark attorneys' letter dated 5th September, 1989, replied to the plaintiffs' attorneys' said letter refusing to comply with the requisitions made by the plaintiffs. In these circumstances, the plaintiffs filed the present action for infringement and passing off and hence the present notice of motion.
3. Section 2(1)(d) of the Trade and Merchandise Marks Act, 1958 (hereinafter called `the Act') defines the phrase 'deceptively similar' as under :
'2(1). In this Act, unless the context otherwise requires,---...............................................................................................................
(d) 'deceptively similar' :---A mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion :'
4. The question to be considered in this matter is whether the word 'Medisprin' is deceptively similar to the word 'Disprin'. In other words, the question is whether the defendants' mark so nearly resembles the registered mark of the plaintiffs as to be 'likely to deceive or cause confusion'. It is not necessary that it should be intended to deceive or intended to cause confusion. It is its possible effect on the ordinary kind of customer that one has to consider.
5. In F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd., : 2SCR213 , the Supreme Court has, at page 2064, quoted with approval the following observations of Lord Denning :
'In Parker Knoll Ltd. v. Knoll International Ltd., 1962 R.P.C. 265, Lord Denning explained the words 'to deceive' and the phrase 'to cause confusion' as follows:
'Secondly, 'to deceive' is one thing. To 'cause confusion' is another. The difference is this :
When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.'
6. The tests for comparison of two word marks were formulated by Lord Parker in (Pianotist Co. Ltd.'s application), 1906(23) R.P.C. 774, as follows :
'You must taken the two words. You must judge of 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.'
Later case (see, for example, the judgment of Sargeant, J., in (Sandow Ltd.'s Application), 31 R.P.C. 205) have explained that among the surrounding circumstances to be taken into account one of considerable importance is the imperfect recollection a person is likely to have of a mark with which he is only vaguely acquainted. While approving the above tests for comparison of the two word-marks, the Supreme Court has held in F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Private Ltd., reported in : 2SCR213 , as follows:
'It is also important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing trade mark.'
Further, the Supreme Court has, in the same decision, cited with approval Lord Johnston's words in Lavroma case, Tokalon Ltd. v. Devidson and Co., 32 R.P.C. 133, viz.,---
'.......We are not bound to scan the words as we would in a question of compatriotic literarum. It is not a matter for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop.'
7. In the light of the above well settled position in law, with which none of the Counsel has any quarrel, I shall now examine their respective submissions.
8. Mr. Tulzapurkar, the learned Counsel appearing for the plaintiffs, submitted that 'Medisprin', the mark of the defendants, was visually, phonetically and structurally similar to 'Disprin', the trade mark of the plaintiffs, inasmuch as the last syllable, viz., 'Disprin' would be remembered, and letters 'Me' which are prefixed do not displace 'Disprin'. It was, thus, submitted by Mr. Tulzapurkar that `Disprin' is the essential feature of the trade mark and the defendants have infringed the mark by selling their product under 'Medisprin'; for the letters 'Me' prefaced to 'Disprin' are insufficient to dissolve the confusion that is bound to arise from associating the defendants' goods with a word so distinctive as `Disprin'. In support of this submission Mr. Tulzapurkar relied on a decision of the Privy Council in De Cordova and others v. Vick Chemical Cov., reported in 68 R.P.C. 103. The Privy Council, while considering whether the mark 'Karsote Vapour Rub' was deceptively similar to trade mark 'Vapo Rub', inter alia, held -
'It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.'
Mr. Tulzapurkar also relied on the decision of the Supreme Court in Ruston and Hornby Ltd. v. Zamindara Engineering Co., reported in : 2SCR222 . The Supreme Court, while considering whether the mark 'Rustam India' was deceptively similar to the trade mark 'Ruston', held that the addition of the word 'India' to the trade mark was of no consequence. Mr. Tulzapurkar further submitted that the defendants' mark had completely absorbed plaintiffs' mark and, thus, 'Medisprin' contained the entire trade mark, viz., 'Disprin'. Thus, it was obvious that the plaintiffs' mark was infringed.
9. Mr. Patel, the learned Counsel for the defendants, submitted that the mark 'Medisprin' consists of two syllables, 'Medi' and 'Sprin', that 'Medi' is taken from defendants' own name and 'Sprin' is derived from the ingredient 'Aspirin' and that the 'Medisprin' was neither visually nor phonetically nor structurally similar to 'Disprin' inasmuch as 'Medisprin' begins with 'Me' and 'Disprin' begins with 'Di', thus, both are visually and structurally different. Even phonetically they are different. Reliance was placed on a Division Bench decision of this Court in M/s. Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Limited and another, reported in : AIR1984Bom281 , wherein the two rival marks were 'Complamina' and 'Ciplamina'. Mr. Patel also relied on the Supreme Court decision in F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners & Co. Private Ltd., : 2SCR213 , where the rival marks were Dropovit/Protovit. It was submitted that the first syllable or the first word is the most important and that being 'Medi' in 'Medisprin' and 'Dis' in 'Disprin', the marks were not at all similar. He relied on the decision in the Application of (Raver Products Ltd.), reported in 64 R.P.C. at page 125, where the dispute was in respect of two marks, viz., 'Diasil' and 'Alasil', and it was, inter alia, held that the first syllable of a word-mark is generally the most important. Further, reliance was also put on the decision in M/s. Johann A. Wulfing v. C.I. & P. Laboratories Ltd., (supra) where the Division Bench, inter alia, cited with approval a passage from Kerly's Law of Trade Marks, 11th Edition, page 416, to the effect that the first syllable of a word-mark is generally the most important as there is a tendency of a person using the English language to slur the termination of words. Mr. Patel further submitted that the principle that the prefix/first syllable is by far the most important equally applies in cases where one of the marks is incorporated in the other like the present case. It was submitted that the mark 'Medisprin' has been coined by taking prefix 'Medi' from defendants' corporate name Medicrose Private Limited and telescoping it with the suffix 'Sprin' which is taken from the ingredients of the drug 'Aspirin'. In support of his submission, Mr. Patel relied on the decision in the Application of (Hans Emanuel Enumann Enoch), reported in 64 R.P.C. 119. In the said matter, the impugned mark 'Vivicillin' incorporated the whole of the rival mark 'Cyllin'. It was held that the two marks were neither phonetically nor visually similar inasmuch as that the first syllable in the two marks, viz., 'Vivi' and 'Cy' were totally different. Further, reliance was placed on the decision in the Application of (London Lubricants '1920' Limited), reported in 42 R.P.C. 264. In the said matter also, although the impugned mark `Tripcastroid' incorporated major portion of the rival mark 'Castrol', it was held that the two marks were neither phonetically nor visually similar because the first syllables in the two marks, viz., 'Trip' and 'Cas', were totally different and that prefix 'Trip' was so completely amalgated in the word 'Tripcastroid' that there was no reason for coming to the conclusion that the syllable 'Trip' would in ordinary use be dropped. Lastly, reliance was placed on the decision in E.R. Suibb & Sons Inc. v. Curewel India Ltd., reported in : AIR1987Delhi197 . In this matter, although the mark CURECHLOR incorporated the rival mark RECLOR, it was held that the two marks were neither phonetically nor visually similar because the first syllables in the two marks, viz., CURE and REC, were totally different. It was further held that the adoption of the mark CURECHLOR was bona fide as it was coined by taking the prefix CURE from the corporate name of the defendant and was combined with the suffix CHLOR which was taken from the ingredient of the drug, viz., Chloramphenicol, and that this was a normal practice in the pharmaceutical industry. Relying on 1990 Edition of the Indian Pharmaceutical Guide, it was submitted that there are several pain relieving drugs in the market sold under names or marks ending with 'Spirin' or 'Sprin' and the use of these words was common to the trade and some of such names or marks are 'Calcisprin, Minispirin, Nyspirin, Espirin, Winsprin, Lasprin and Thombosprin. It was, thus, submitted on behalf of the defendants that suffix 'Sprin' or 'Prin' in both the marks having been taken from the ingredient of the drug `Aspirin', there is no distinctiveness or uniqueness in the suffix and reliance was placed on a Division Bench decision of this Court in Indo-Pharma Pharmaceutical Works Pvt. Ltd. v. Farbenfabriken Bayer Ag., reported in (1975) R.P.C. 545.
10. In the words of Parker, J., in 23 R.P.C. 774 (supra)-
'This is just one of those cases where it is perfectly possible that another mind, if brought to bear on the subject, might take another view. It always is so in cases of this sort where you cannot really test whether a confusion has arisen, but only have to Judge from the general appearance or sound of the two words whether confusion is likely to arise.'
In the instant case, while comparing the marks 'Medisprin' with 'Disprin' in order to find out whether the former is deceptively similar to the latter and whether it is likely to deceive or cause confusion, each of the two words must be taken as a whole. The comparison has not to be microscopic but general and casual as that of a customer walking into a shop. On such comparison, I find the mark 'Medisprin' to be dissimilar to 'Disprin'. Visually and structurally compared, the impugned mark is different. 'Medisprin' has more letters than 'Disprin'; it starts with a totally different consonant and, although followed immediately by a vowel, viz., 'e', is again followed by 'd' and 'i', thus making it totally different. Phonetically also, the impugned mark is different. Any word starting with `Me' and immediately followed by a consonant, a vowel and again a consonant, e.g., 'd', 'i' and 's', as in the case of the impugned mark, will be pronounced as 'Medi' as in the case of 'Medication', 'Medicare', 'Medical' and 'Meditation'. Only when 'Medi' is not followed by a consonant but by a vowel, 'Me' will be pronounced as 'Mi' as in the case of 'Mediation', 'Media' and 'Medieval'. The word `Medisprin', when pronounced, cannot be mistaken for 'Disprin' as it is thus phonetically different although the entire word 'Disprin' is absorbed by it. The prefix 'Medi' in relation to sickness and drugs has been always a popular prefix and much older in usage than the plaintiffs' mark. Thus, 'Medisprin' is visually, phonetically and structurally different than 'Disprin' and it is, thus, neither deceptively similar nor the use thereof is likely to deceive or cause confusion.
11. This brings me to the next factor, viz., the nature of the products. Merck's Index at Item 874 deals with 'Aspirin', the main ingredient in plaintiffs' drug 'Disprin', and is shown to be an analgesic, antipyretic, antirheumatic and anticoagulant. Because of its last property, viz., 'anticoagulant', it is also shown to reduce the risk of recurrence of transient is chemical attacks and strokes in persons who have previously suffered an attack. In other words, it affects the quality of the blood, making it clot free and, thus, preventing a stroke. Although the plaint proceeds only on the basis of 'Disprin' being an analgesic, in affidavit in rejoinder the properties and usages of 'Disprin' are given. However, it is registered in Class 5 under the Act as an analgesic. On the other hand, as far as 'Medisprin' is concerned, although in the plaint it is described as an analgesic, Merck's Index at Item 3366 shows 'Dipyridamole', the main ingredient in 'Medisprin', to be a coronary vasodilator, i.e., a drug which dilates blood vessels. Because of the said drug's these properties, combined with Aspirin, it is claimed by the defendants that their drug reduces the risk of thrombi-embolic events as such found in Coronary Heart Diseases, Cerebrovascular, Disorders, Cardiac Surgery and Peripheral Vascular Disorders, and further that because of the special coating, simultaneous release of Dipyridamole and Aspirin in the stomach is avoided. The word `Encotabs' is because of this. It is true that 'Medisprin', as it contains Aspirin, would also be an analgesic, but the drug Dipyridamole makes it a drug mainly for heart patients and patients with vascular problems, and, therefore, Medisprin taken for relieving pain or as an palliative would, because of Aspirin contained therein, act as a pain reliever but would certainly cause other and much more serious complications because of its other main property, i.e., dilator of blood vessels. Thus, it would be seen that although both the drugs have 'Aspirin', 'Medisprin' because of 'Dipyridamole' makes it a special drug for heart patients. Thus, both are different. 'Disprin' can be taken even without medical advise for common ailments like headache or a toothache but 'Medisprin' can be taken only if so advised and not otherwise. 'Medisprin' is a cardio vasodilator and is for treatment of cerebrovascular and heart ailments which by their very nature are such ailments that only upon medical advise it is to be taken.
12. The next two factors, viz., the class of people dealing with the products and the mode of sale, can be conveniently considered together. It was submitted by Mr. Tulzapurkar, the learned Counsel for the plaintiffs, that both the products were being sold in tablet form and in strip packing and that both were sold by chemists shops. Mr. Patel, on the other hand, submitted that it was true that defendants' product was being sold in tablet form and in strip packing but relied on the strip packing of defendants' product to show that the entire design, get up, and even the size of the strip packing were totally different, and moreover the price at which 'Medisprin' is being sold is about five times more than 'Disprin'. I was shown the strips of 'Medisprin' and also of 'Disprin' and Mr. Patel is right in his submission that they are totally different, thus, obviating confusion. The price factor is also not disputed on behalf of the plaintiffs. As far as the sale at chemists' shop is concerned, the defendants have stated on affidavit that 'Disprin' is sold not only by chemists but also at pan-beady shops. The plaintiffs have filed their rejoinder and this statement is not traversad. Even at the hearing, availability at pan-beady shops was not denied. Mr. Patel strenuously argued that 'Medisprin' being a Schedule 'H' drug under the Drugs and Cosmetics Act and Rules, is being sold by only licensed chemists and only against doctor's prescription and, therefore, there was no likelihood of confusion. He relied on the Supreme Court decision in P. Hoffmann-La Roche & Co. Ltd. (supra) wherein, while considering two rival word-marks, protovit and Dropovit, it was, inter alia, held-
'The question of confusion must hence be determined on the basis that the goods with one of the two rival trade marks would be sold only by such a licensed dealer and would not be available in any other shop. The fact that the vendor would be a licensed dealer also reduces the possibility of confusion to a considerable extent.'
Further, reliance was also placed by Mr. Patel on the Division Bench decision of this Court in Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Ltd., (supra) wherein in respect of two rival word-marks relating to pharmaceutical products the proprietors of the impugned mark stated before the Court that they would use their mark for pharmaceutical preparations in any form covered by Schedule 'H' of the Drugs and Cosmetics Rules, 1945, and accordingly having found this to be a sufficient protection, suitable directions to the said effect were given. Mount Metter Pharmaceuticals (P) Ltd. v. Dr. A. Wander : AIR1977Mad105 , was also cited in support of this proposition. Lastly, Mr. Patel relied on an unreported decision of this Court (Variava, J.) in Misc. Petition No. 159 of 1987 decided on March 22, 1990 in the matter of The Himalaya Drug Company v. Hindustan Antibiotics Ltd. and another, in which the decision of the Supreme Court in F. Hoffmann-La Roche (supra) and the Division Bench decision of this Court in Johann A. Wulfing (supra) were followed.
13. Mr. Tulzapurkar, on the other hand, submitted that the factor relating to a drug being a Schedule 'H' drug is one of the factors and no over-importance should be given to this factor. He relied on a decision of this Court (Pendse, J.) in Borroughs Wellcome (India) Ltd. v. G.K. Sharma and King Scientific Research Centre, reported in 1989 (14) I.P.L.R. 60. He further relied on a decision of this Court (Jhunjhunuwala, J.) in Astra-IDL Ltd. v. TTK Pharma Ltd., reported in : AIR1992Bom35 . In this decision it was, relying on the case of Ranbaxi Laboratories Ltd., reported in : AIR1989Delhi44 , inter alia, held :
'In my view, in the present circumstances, doctord's prescription factor has lost its importance since the reality of the situation cannot be ignored. In India scheduled drugs which are to be sold under doctor's prescription are even sold without production of doctor's prescription and as such reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The Court cannot close its eyes to the existing circumstances and judicial notice of the factual aspects in existence has to be taken.'
14. I do not agree with the abovementioned view of Jhunjhunuwala, J. To my mind, it is clear that when the rival marks were found deceptively similar and where the drugs and their packing were also found similar, the factor regarding a drug being a Schedule `H' drug has been ignored. This can be seen from the cases cited at the bar, viz., Burroughs Wellcome (India) Ltd. (supra), Ranbaxy Laboratories Ltd., reported in : AIR1989Delhi44 , unreported decision of a Division Bench of this Court (Mrs. Sujata Manohar and Kenia, JJ.) in Notice of Motion No. 314 of 1990 in Appeal No. 52 of 1990 decided on February 8, 1990 in the matter of Schering Corporation & another v. Messrs Park Pharmaceutical Services, and unreported decision of this Court (Bharucha, J.) in Notice of Motion No. 2307 of 1987 in Suit No. 2600 of 1987 decided on October 11, 1988 in the matter of Kopran Chemical Co. Ltd. v. Kent Pharmaceuticals (India) Pvt. Ltd. On the other hand, where the marks and also other factors like the product and packing have been found not to be similar and not likely to create confusion and where the impugned mark related to Schedule `H' drug, the factor of the product being sold only by a licensed chemist and that too against a doctor's prescription was given due weightage. This is evident from : 2SCR213 (supra), A.I.R. 1984 Bom (supra), The Himalaya Drug Co.'s case (supra). In all the abovementioned cases the product being a Schedule 'H' drug is considered as it has a direct nexus with the important factors, viz., the class of people dealing with the products and the mode of sale. Only when other factors like deceptive similarity of marks, products and the packing are considered and answered in favour of the complaining party that the same is ignored. In the present case, I have already come to the conclusion that the impugned mark 'Medisprin' is not deceptively similar, that products are also not similar and that the packing and pricing are also not similar and, therefore, not likely to create confusion, the defendants' drug being a Schedule 'H' drug is a relevant factor, enabling me to answer in favour of the defendants.
15. It was next submitted by Mr. Tulzapurkar, relying on the decision of the Supreme Court in Corn Products Refining Co. v. Shangrila Food Products Ltd., : 1SCR968 , that it was defendants' submission that their mark contained a common element because of their drug containing Aspirin and that there were series of marks in extensive use in the market and, therefore, the onus of proving such extensive user was on defendants who wanted to rely on such marks. This onus, according to Mr. Tulzapurkar, is not discharged. Mr. Patel, in reply, submitted that the said decision which requires evidence of use of the marks having common prefix was rendered on and would be applicable to a matter decided on final hearing after evidence is led. Thus, according to him, at the interim stage it would be prima facie sufficient to show that marks with suffix 'Sprin' are in use with reference to Indian Pharmaceutical Guide and that in the instant case the defendants were not merely referring to the marks on the Trade Mark Register but to marks of products which are in use as indicated in the said Guide. I see considerable force in Mr. Patel's submission. Prima facie, I am satisfied that several products containing Aspirin and having their trade marks with a suffix of 'Sprin' are in use. Moreover, the fact of such products marketed under such marks is not disputed. In these circumstances, I reject Mr. Tulzapurkar's submission.
16. In these circumstances, taking into consideration the factors to be considered and the surrounding circumstances, prima facie, it appears to me that the impugned mark is neither structurally nor phonetically or visually similar to 'Disprin' and that neither the products are same nor the packaging or mode of marketing the same are similar or likely to created confusion.
17. In the result, the notice of motion is dismissed with costs.