M.K. Chawla, J.
(1) The plaintiff No. I is a Corporation organized and existing under the laws of the State of Delaware, United States of America and inter alias carrying on the business of manufacturing and selling of medicinal and pharmaceutical preparations. Plaintiff No. 2 is also a company incorporated under the Indian Companies Act and carrying on the business as manufacturers of bulk drugs, pharmaceutical and medicinal preparations. The defendant firm is also dealing in the same line. The plaintiffs have filed the present suit seeking the relief of perpetual injunction restraining the defendants, their servants and agents from manufacturing and sale of any pharmaceutical or other preparations of strips bearing the design, layout, colour scheme and get up hereto or any other strip or the words 'POWER 555' so as to infringe the plaintiff No. 1's registered trade mark No. 316130 in respect of the label mark containing the words 'VICKS Action 500'.
(2) As per the ferments plaintiff No. 1 is the registered proprietor of the label mark containing the words 'VICKS Action 500' wherein the word 'ACTION' and the numeral '500' have been disclaimed. The plaintiffs have been marketing the product in a foil strip packing having a distinctive design, lay out, get up and colour scheme. The said trade mark consists of strips with a silver backgfound,and green rectangles as well as a green and a read triangle. The words 'ACTION 500' are printed in red prints and other letters 'VICKS' and 'COLDS MEDICINE' in blue print. The strips also contain yellow unique shaped tablets. Plaintiff No. 2 has been permitted by plaintiff No. I to use the said registered trade mark subject to the supervision and control of the standards prescribed by plaintiff No. 1. The plaintiff No. 2 has been extensively and exclusively marketing, offering for sale the said product since the year 1976. The strip in fact represents an original artistic and literal works in respect of which plaintiff No. 1 is entitled to a subsisting copyright. The sale figure of this product in the year 1983-84 was to the extent of Rs. 99.04.000.00 . The plaintiff No. 2 has also been advertising their product in various media and have been using the slogan 'DOUBLE Power Vicks Action 500'. in connection with this produce since July, 1981 on which about Rs. 11 lakhs have been speat. The plaintiff's trade mark 'VICKS Action 500' is easily recognised and identified by the distinctive design, lay out> colour scheme and get up of the strip and it has come to connote and denote exclusively with the plaintiff's product.
(3) The plaintiff No. 2 sometime in the month of July, 1984 has come to know that the defendants were marketing their product under the name 'POWER 555' in strips with a design, :lay out, colour scheme and get up and other features which were identical with or deceptively and/or confusingly similar to the strips of those used by the, plaintiff in respect of their product 'VICKS Action 500'. The defendants infact have taken the word 'POWER' from the plaintiff's advertisements which is the synonym of the word 'action' and connotes and denotes the same concept and idea. The (defendants are also using a foil strip packings having a silver background and green rectangles and the tablets of the same colour. By using the said strips the defendants are passing off their goods as and for the goods of the plaintiff. With a view to restrain such blatant unlawful activities on the part of the defendants, the plaintiffs served the defendants with a legal notice calling upon them to desist forthwith from manufacturing, marketing, selling, offering for sale their product under the mark 'POWER 555' in strips bearing the design lay out, get up, colour scheme and other features identical with or deceptively or confusingly similar to the strips of the plaintiff's product.
(4) In reply the defendants have claimed that they have been using their strips from the year 1982, which defense is false to the knowledge of the plaintiff. The defendants have not desisted from infringing the plaintiff's registered trade mark No. 316130 and as such are liable to be restrained and injuncted from the use of their strip.
(5) Along with this suit the plaintiff also filed an application (I.A. No. 1073/1985) under Order 39 Rules 1 & 2 Civil Procedure Code . praying for the issuance of an ad interim injunction as prayed for in the main suit.
(6) After hearing the learned counsel for the plaintiff and after going through the pleadings and the documents placed on record the ad interim injunction as prayed for was granted. Immediately after the service of the summons of the suit and the restraint order the defendants not only filed the reply to the plaintiff's application (I.A. No. 1073/1985) but also preferred to move an application (I.A. No. 1663/85) under Order 39 Rules 4 Civil Procedure Code . praying for the vacation of the ex parte ad interim restraint order. By this order I propose to dispose of both these applications.
(7) In brief the case set up by the defendants is that the suit and the injunction application are had on account of misguide and non-joinder of necessary parties and causes of action: that the plaintiffs have knowingly suppressed material facts and details relevant for the decisions of the case ;that the suit for passing off and infringement is not tenable as the plaintiff's trade mark is registered with disclaimer of word 'ACTION' and numeral '500' ; that this court has no territorial jurisdiction to entertain the present suit and the application ; that even otherwise the trade mark 'VICKS Action 500' and the trade mark 'POWER 555' are distinctive and different in all respects i.e. phonetically, visually and otherwise, the details of which are given in the application under Order 39 Rule 4 Civil Procedure Code .; that the suit and the injunction application are liable to be dismissed on the ground of delay, laches and acquiescence and estoppel on the part of the plaintiff; that the plaintiff No. 2 does not appear to be the registered proprietor of the said trade mark ; that the colour scheme and get up of the foils, strips, packing of the plaintiffs are very common in respect of similar product to which the plaintiff cannot claim to be the exclusive owner. The plaintiffs have never advertised their product by using the slogan 'Double power Vicks 500' since July, 1981 as alleged. In fact the defendants have honestly adopted the trade mark 'POWER 555' for its medicinal preparations since January 1982 and have obtained the necessary permission and use the same openly, extensively, continuously and un-interruptedly ; that there is no chance of passing off any goods or medicines of the defendants bearing the trade mark '555' for the product 'VICK.S Action 500' of the plaintiff; the defendants are the originator, author and owner of the artistic design of 'Power 555' and have already applied for the registration of their mark before the Registrar (Copyright). In fact no grounds have been made out by the plaintiffs for the grant/confirmation of the ex parte ad interim injunction. The same is liable to be dismissed.
(8) The plaintiffs filed the rejoinder to the defendants' reply as well as the application under Order 39 Rule 4 Civil Procedure Code . by giving minute details of the circumstances under which the defendants came into the market with the impugned trade maik and the label of the strips. They also drew the distinction and confirmed having taken appropriate action against the other parties responsible for the use of the strip as that of the plaintiff.
(9) I have heard the arguments of the learned counsel for the parties and with their help gone through the record carefully.
(10) The controversy between the parties revolves round a very narrow compass. There is no dispute that the plaintiffs are the registered proprietors of the label mark containing the words 'VICKS Action 500' in Class V in respect of medicinal and pharmaceutical preparations under the Trade and Merchandise Marks Act since 1976. The words 'ACTION' and the numeral '500' have been disclaimed as per the certificate issued by the Registrar of Trade Marks. The plaintiffs started advertising their product as 'DOUBLE Power Vicks Action 500' from July, 1981. The defendants have started the manufacture and sale of their product under the trade name 'POWER 555* since 1984. According to the learned counsel for the plaintiff the strips used by the defendants with the design, layout, colour scheme and get up and other features are identical with or deceptively similar and/or confusingly similar to the strips used by the plaintiff in respect of their preparations. in the other hand the case of the respondents is that the two trade marks are quite distinct and difference in all respects i.e. phonetically, visually and otherwise as is illustrated in their reply to the plaintiff's application. No doubt it is a case of passing off and the two marks have to be compared as a 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 when there is no sufficient similarity to cause confusion. The true test in these cases is whether the totality of the proposed trade mark is such that it is likely to cause disbelief or confusion or mistake in the minds of persons accustomed to the existing trade mark. The distinction in between the two strips which is sought to be brought out by the learned counsel for the defendant is in respect of the name, numerals, the colour scheme of the strip, colour of the monogram, shape of the green portion, writings and the get up in as much as the strips of the plaintiff available in the market are bearing the words 'NEW Vicks And Colds MEDICINE' in blue colour whereas the words 'ACTION 500' are printed in bold red colour letters and a square printed on the other side of the writings and a green triangle having a small white triangle in which another small triangle with red colour is shown in the strip. In the strip of the defendants the words 'POWER 555' are in blue colour with two strips of the same colour with green rectangle having rounded corners on its two sides. After carefully perusing the two strips I am of the prima facie opinion that the lay out, colour scheme, and get up of the two strips is almost similar and there is every possibility of the defendants passing off their goods as those of the plaintiff. The background of the two strips is in silver colour. There are green rectangles on both the strips except the minor difference of the two strips in blue colour on the silver portion of the defendants strip. There is no other distinction which can catch the eye in between the two strips.
(11) It may be that many other manufacturers, the details of which are mentioned in Annexure I to the reply of the defendants in I.A. No. 1073/1985 are using such like strips for their product with different names, but that fact by itself is not enough to allow the defendants to carry on their activity to the detriment of the plaintiffs trade. The plaintiffs, according to the learned counsel, have already taken action against the two of the eight dealers and few of them have already stopped the manufacture and sale of their product after the service of the notice by the plaintiffs. I also agree with the submission of the learned counsel for the plaintiff that after the advertisement of their mark as 'DOUBLE Power Action 500', the words 'DOUBLE POWER' may not be written on the strips, but the defendants cannot be allowed to sell their product under the words 'POWER' with a different numeral, which also appears to be similar to that of the plaintiff's product. In order to support their contention about the dissimilarity of the two marks, the learned counsel for the defendants relied upon the judgment reported as Mount Mettur Pharmaceuticals Pvt. Ltd- v. Dr. A. Wander, : AIR1977Mad105 where the dissimilarity of the two products known by the name of 'ASTHMIX' and 'ASMAC' was brought out from their looks and sound, even though the petitioners were the registered proprietors of their medicinal preparation 'AS MAC' prior in time as that of the defendants. Learned counsel for the plaintiff on the other hand has drawn a good distinction in the said judgment which is not applicable to the facts of the present case. In the Madras case it was observed that these medicines were Schedule 'H' drugs and could only be dispensed on the prescription the medical practitioner. Here is not a case of the preparations falling under schedule 'H' drugs. Even a lay man can straightaway approach a Chemist and ask for the plaintiff's medicine for curing his colds, cough and other fevers. The defendants' preparations can easily be passed off to such a customer who has an average memory with its usual imperfections and is unable to distinguish the essential particulars or features of the two labels. The plaintiff in this case has been able to prima facie establish on record that the essential particulars of his trade mark have been occupied by the defendants. I he plaintiff's being in this trade much prior to the date of the defendant's coming into the market with almost similar design of their strip, are entitled to the confirmation of the ad interim injunction which was granted in their favor on 20.2.1985. On the same analogy the defendants will not suffer any irreparable injury in case they are restrained from using the strip as they have yet to establish themselves in this trade. The balance of convenience also lies in favor of the plaintiffs.
(12) With these observations the ad interim injunction granted in favor of the plaintiff on 20.2.1985 is hereby confirmed. I.A. No 1073/85 and 1663/1985 are disposed or accordingly.
(13) For filing the written statement the case now to come up on 29-7-1985.