DR REDDYS LABORATORIES LIMITED v. SMART LABORATORIES PVT LTD

7. The suit is accompanied by the present application preferred by the plaintiff under Order XXXIX Rules 1 and 2 of the Code of Civil Procedure, 1908 (CPC), seeking interlocutory injunctive reliefs. On 17 October 2023, I issued notice on the present application to the defendant, calling on the defendant to file a reply with liberty to the plaintiff to file a rejoinder thereto.

8. The defendant has filed a reply to the present application. However, no rejoinder has been filed by the plaintiff. Mr. Ranjan Narula expressed his desire on the basis of the pleadings and material on record.

9. I have accordingly heard Mr. Ranjan Narula, learned counsel for the plaintiff and Ms. Archana Sahadeva, learned counsel for the defendant at considerable length. Rival Submissions Opening Submissions of Mr. Ranjan Narula

10. Mr. Ranjan Narula reiterated the submissions contained in the plaint and already noted hereinabove. Submissions of Ms. Archana Sahadeva in reply

11. Responding to the submissions of Mr. Narula, Ms. Sahadeva raises a preliminary objection to the maintainability of the present suit without exhausting the channel of pre-institution mediation envisaged by Section 12A (1)1 of the Commercial Courts Act, 2015. She relies, for the said purposes, on the recent decision of the Supreme Court in Yamini Manohar v T.K.D. Keerthi[2]. She submits that, even as per the assertions contained in paras 15 and 17 of the plaint, the plaintiff came to learn of the use, by the defendant, of the mark AZIWAKE, at least in or before August 2023. Ms. Sahadeva further seeks to point out that, in fact, the defendant had applied for registration of the mark AZIWAKE as far back as on 14 April 2022, as is acknowledged in the plaint. In such circumstances, she submits, relying on Patil Automation (P) Ltd v. Rakheja Engineers (P) Ltd[3], that the present case is not one in which the plaintiff should be granted exemption from the requirement of the pre-institution mediation.

12. Ms. Sahadeva further submits that the defendant had applied for registration of the mark AZIWAKE on 14 April 2022. Without even 12A. Pre-litigation Mediation and Settlement. – (1) A suit, which does not contemplate any urgent interim relief under this Act, shall not be instituted unless the plaintiff exhausts the remedy of pre-litigation mediation in accordance with such manner and procedure as may be prescribed by rules made by the Central Government. 2023 SCC OnLine SC 1382 issuing, to the defendant, any notice, requiring the defendant to cease and desist from using the mark AZIWAKE, the plaintiff has approached this Court belatedly by way of the present suit. The plaint seeks to aver that the plaintiff came to know of the defendant’s product in the third week of August 2023 and that, thereafter, on conducting the search in the records of the Trade Mark Registry, the plaintiff learned of the application, of the defendant, for registration of the mark AZIWAKE. She also submits that it is common practice, in the pharmaceutical trade, to name pharmaceutical products by abbreviating the name of the active ingredient, the organ which is targeted, or the disease which the preparation intends to cure. Thus, she submits that the AZI prefix, both in the plaintiff’s AZIWOK as well as the defendant’s AZIWAKE, stands, in each case, for azithromycin, which is the API. She submits that, on conducting a trademark search on the website of the Registry of Trade Marks, the plaintiff’s mark did not show up as a similar mark to the defendant’s AZIWAKE.

13. Apropos the note of caution sounded by the Supreme Court in its decision in Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd[4], Ms. Sahadeva submits that the principle would not apply in the present case, as the product being sold under each of the rival marks is azithromycin. The Supreme Court has advised adopting a more relaxed standard of deceptive similarity, where the Court was concerned with alleged passing off in the case of pharmaceutical preparations only so as to ensure that an erroneous drug was not prescribed, because of its name being similar to the registered trade mark of another. That principle, submits Ms. Sahadeva, applies where the two preparations are different, and not where they are the same, as in the present case. Besides, she points out that Cadila Health Care was a case which exclusively dealt with passing off and had no application, therefore, where the allegation was of infringement. Ms. Sachdeva also submits, relying on Kaviraj Pt Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories[5], that, where the rival marks are identical, the definitive tests for infringement and passing off coalesce. In this context, Ms. Sahadeva also cites para 91 of the judgment of the Supreme Court in Ramdev Food Products (P) Ltd v. Arvindbhai Rambhai Patel[6] and para 14 of the judgment of the Division Bench of this Court in Astrazeneca UK Ltd v. Orchid Chemicals & Pharmaceuticals Ltd[7]. Predicated on these decisions, Ms. Sahadeva seeks to contend that, even while dealing with a charge of infringement, the Court is required to examine the matter keeping in view all surrounding circumstances. She also cites, in this context, 2(A) of the judgment of the division Bench of this Court in Gufic Pvt Ltd v. Clinique Laboratories LLC[8].

14. Ms. Sahadeva submits that AZIWAKE cannot be regarded as either visually or phonetically similar to AZIWOK. She has also drawn my attention to para 22 of the reply filed by the defendant to the present application, which compares the packs of the plaintiff’s

141 (2007) DLT 565 (DB) and defendant’s products thus: Defendant’s Trade Dress Plaintiff’s Trade Dress If one were to apply the following definitive test for phonetic similarity between competing word marks, enunciated in In re. Pianotist Co.’s application[9] and adopted by courts in this country times without number, Ms. Sahadeva submits that the competing marks in the present case cannot be regarded as phonetically similar: “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.” In this context, Ms. Sahadeva also relies on my decision in Elyon Pharmaceuticals Pvt. Ltd. v. Registrar of Trademarks 10 and para 5 of the judgment of the High Court of Bombay in Medley Pharmaceuticals Ltd v. Khandelwal Laboratories Ltd11. (1906) 23 RPC 774 2023 SCC OnLine Del 5153 (2006) 1 Bom CR 292

15. Mr. Sahadeva submits that there is no evidence of any use, by the plaintiff, of the mark AZIWOK prior to 2020. It cannot, therefore, be sought to contend that the mark AZIWOK has accumulated goodwill. Compared to the adoption of the mark AZIWOK by the plaintiff, the defendant’s use of the impugned mark AZIWAKE commenced in 2022.

16. Ms. Sahadeva submits that the AZI prefix is common to the trade in the context of pharmaceutical preparations containing azithromycin. Moreover, consumers who would purchase or consume azithromycin are discerning, and there is little chance of their confusing AZIWAKE for AZIWOK. She further submits that the adoption, by the defendant, of the WAKE suffix for the name of its product is arbitrary, the justification for which is to be found in para 7 of the reply filed by the defendant to the present application, thus: “Similarly, by adopting a similar practice, the Defendant honestly, bona fidely and independently coined and adopted the Impugned mark viz. AZIWAKE, which is meant to indicate to the public at the large, the presence of the salt Azithromycin in the product and “WAKE” is a fanciful and coined suffix which denotes the ability of the formulation to awaken the human body’s ability to fight the growth of bacteria and thereby preventing the infection from spreading any further, as Azithromycin is an antibiotic medication used for the treatment of a number of bacterial infections, including but not limited to middle ear infections, strep throat, pneumonia, traveler’s diarrhea, and certain other intestinal infections. Thus, the suffix “WAKE” was consciously adopted by the Defendant to denote to the relevant public the impact and utility and properties of Azithromycin.”

17. Ms. Sahadeva further submits that the considerations of balance of convenience and irreparable loss would also not justify injuncting the defendant from any further use of the mark AZIWAKE, as the mark has been in the market since July 2022. She cites, in this context, para 9 of the judgment of the Supreme Court in Wander Ltd v. Antox India (P) Ltd12:

Ms. Sahadeva submits that the plaintiff has concealed the fact that the defendant’s impugned product AZIWAKE has been in the market since July 2022. Even while referring to the defendant’s application for registration of the AZIWAKE trademark, Ms. Sahadeva submits that the plaintiff has not referred to the invoices attached to the said 1990 Supp SCC 727 application which disclosed user, by the defendant, of the AZIWAKE mark since July 2022.

18. On the aspect of infringement, Ms. Sahadeva further cites the judgment of a learned Single Judge of this Court in Schering Corporation v. Alkem Laboratories Ltd13. On the aspect of passing off, she relies on para 35 of the judgment of the Supreme Court in Cadila Health Care.

19. In conclusion, Ms. Sahadeva seeks to point out that the plaintiff had abandoned three AZIWOK label marks, which had been assigned to it by Wockhardt, by not renewing the marks. This fact, she submits, has been specifically averred in the reply filed by the defendant to the present application, to which there is no traversal in the rejoinder. Submissions of Mr. Narula in reply

20. Inasmuch as Ms. Sahadeva questioned the user, by the plaintiff, of the AZIWOK mark prior to 2020, Mr. Narula commenced his submissions by seeking to draw attention to evidence, on record, indicating prior user of the said mark. He points out that AZIWOK was registered as a trademark in 1994, and was assigned by Wockhardt to the plaintiff vide Assignment Deed dated 9 June 2020. The assignment was inclusive of the goodwill and reputation earned by the mark. He also drew attention to Certificate dated 22 August 2009 SCC OnLine Del 3886 2023 issued by the plaintiff’s Chartered Accountant (CA), which certifies that, in the financial years 2020-2021, 2021-2022 and 2022- 2023, sales of AZIWOK had earned ₹ 14,27,15,095/–, ₹ 21,62,34,124/– and ₹ 18,05,33,887/– respectively. He further submits that there is ample evidence of use of the AZIWOK mark by Wockhardt even prior to its assignment to the plaintiff. He refers, in this context, to Notice Inviting Tenders (NIT) dated 15 March 2017, issued by Bharat Heavy Electricals Ltd (BHEL) for various medicines manufactured by different vendors, in which AZIWOK 200 mg, manufactured by Wockhardt, was also included. Mr. Narula thereafter drew my attention, once again, to the various documents enumerated in para 4 supra which, too, he submitted, evidence use, by the plaintiff, of the mark AZIWOK at least since 2003.

21. Mr. Narula submits that the structural and phonetic similarity between AZIWOK and AZIWAKE is so pronounced that there is clear likelihood of confusion as well as association, within the meaning of Section 29(2) of the Trade Marks Act. Relying on Amritdhara Pharmacy v. Satya Deo Gupta14, Mr. Narula submits that the rival marks are to be compared as wholes. When so compared, he submits that a consumer of average intelligence and imperfect recollection, who has once come across the plaintiff’s AZIWOK, and, at a later point of time, chances upon the defendant’s AZIWAKE, is bound to be placed in a state of wonderment as to whether he had seen the mark earlier. That would suffice to constitute likelihood of confusion within the meaning of Section 29(2). He submits that the AIR 1963 SC 449 likelihood of confusion would not be mitigated merely because of the class of consumers, in a case such as this. He draws attention to the reality that, today, even Schedule H drugs are sold over the counter. He relies on the note of caution sounded by the Supreme Court in Cadila Health Care while dealing with passing off in the case of pharmaceutical products, particularly emphasising the following passage of the said decision, which sets out the tests of passing off in the case of unregistered trademarks:

For the proposition that the likelihood of confusion of association cannot be said to be reduced in view of the category of consumers targeted by the rival marks, Mr. Narula places reliance on my decision in Zydus Wellness Products Ltd v. Cipla Health Ltd15 and para 32 of my decision in Mankind Pharma Ltd v. Novakind Bio Sciences Pvt Ltd16.

22. Insofar as para 5 of the judgment of the High Court of Bombay in Medley Pharmaceuticals is concerned, Mr. Narula submits that the reliance, by Ms. Sahadeva is on the observations relating to the earlier judgment of the Division Bench of the same High Court in Bal Pharma Ltd v. Wockhardt Ltd17, which was not forthcoming. Even otherwise, submits Mr. Narula, the said decision is distinguishable, as the rival marks in that case were AZIWOK and AZIWIN. The suffix “WAKE”, he submits, bears no similarity whatsoever to the suffix “WIN”. Besides, the defendant in that case had been found to be concurrently using the impugned mark since 1997.

23. Mr. Narula staunchly denies the allegation of concealment and suppression of fact, levelled by Ms. Sahadeva. He submits that the defendant had applied for registration of the mark AZIWAKE on “proposed to be used basis”. As such, the plaintiff did not feel any need to conduct further investigation or enquiry into the application for registration submitted by the defendant.

24. The explanation provided by the defendant for “coining” the mark AZIWAKE, submits Mr. Narula, is clearly fanciful and an afterthought.

25. Mr. Narula, therefore, reiterates his prayer for grant of an interlocutory injunction. Ms. Sahadeva’s submission in surrejoinder

26. Ms. Sahadeva, in surrejoinder, sought to distinguish the decisions in Amritdhara Pharmacy and Zydus on the ground that they did not deal with pharmaceutical products and that, therefore, the principle that, in the case of pharmaceutical products, the names were often derived from the compound constituting the API of the product, the disease that it sought to alleviate, or the organ that it sought to treat, did not apply. Analysis Preliminary objection predicated on Section 12A of the Commercial Courts Act

27. Section 12A of the Commercial Courts Act is worded in imperative terms. It ordains, mandatorily, that every suit, which does not contemplate any urgent interim relief, shall not be instituted without the plaintiff, in the first instance, exhausting the remedy of pre-institution mediation. The word “contemplate”, even by itself, accords pre-eminent place to the intention of the plaintiff. Plainly read, the decision of whether to require the plaintiff to exhaust the remedy of pre-institution mediation before instituting the suit has, as per Section 12A, to be taken on the basis of the averments in the plaint, and what is contemplated therein.

28. Patil Automation was the first decision in which the Supreme Court examined the scope and import of Section 12A of the Commercial Courts Act. The Supreme Court held, ultimately, that Section 12A was mandatory, and that any suit which was instituted violating the mandate of Section 12A had necessarily to be rejected under Order VII Rule 1118 of the CPC. However, the decision was made applicable prospectively, w.e.f. 22 August 2022. Even so, the Supreme Court, in Patil Automation, endorsed the principle that the requirement of the institution mediation would apply only where the plaintiff did not contemplate any urgent interim relief. In para 100, the Supreme Court observed thus:

29. A Division Bench of this Court, in Chandra Kishore Chaurasia v. R.A. Perfumery Works Pvt Ltd19, after noting the decision in Patil Automation, held thus:

35. This Court is of the view that the question whether a suit involves any urgent interim relief is to be determined solely on the basis of the pleadings and the relief(s) sought by the plaintiff. If a plaintiff seeks any urgent interim relief, the suit cannot be dismissed on the ground that the plaintiff has not exhausted the pre-institution remedy of mediation as contemplated under Section 12A(1) of the Commercial Courts Act, 2015.” (Italics in original)

30. In Yamini Manohar, the Supreme Court, having taken note of Patil Automation and Chandra Kishore Chaurasia, explained the legal position:

31. The Court has, therefore, while examining whether the plaintiff is required to exhaust Section 12A before instituting the plaint, to first examine whether the plaint contemplates any urgent interim relief. If it does not, the matter must rest there, as held in Patil Automation and the plaint, if it has been instituted without exhausting pre-institution mediation, has necessarily to be rejected under Order VII Rule 11 of the CPC. If, however, the plaint does contemplate, or envisage grant of urgent interim relief, the Court has then to satisfy itself that the plea is genuine, and that the plaintiff has not ingeniously engineered a situation in which it appears that urgent interim relief is needed, though the plaint, seen in the light of the facts and the documents accompanying the plaint, does not in fact disclose the need for any such urgent relief. If the plea for interim relief is genuine, the Court has necessarily to entertain the plaint without requiring the plaintiff to exhaust pre-institution mediation. In arriving at this decision, the Court is not concerned, in any way, with the merits of the plea for interim relief. All that the Court is required to determine is that the plea is genuine and bona fide.

32. These principles would apply as much to intellectual property suits, as to others. After Yamini Manohar, however, it is quite clear that commercial courts cannot presume that every intellectual property suit, necessarily and ipso facto, requires urgent interim relief. The plea for urgent interim relief, if raised, has to be examined on the touchstone of the above principles.

33. That said, it is significant that, even in Yamini Manohar, the Supreme Court held, in para 6, as under:

Thus, the Supreme Court found, on facts, that the plaint in Yamini Manohar did satisfy the requirement, contained in Section 12A of the Commercial Courts Act, of contemplated urgent interim relief and that, therefore, the decision of the learned Single Judge of this Court, upholding the dismissal, by the learned Commercial Court, of the defendant’s application under Order VII Rule 11 of the CPC, was in order.

34. It is instructive, therefore, to examine the basis on which the learned Single Judge, in his decision in Yamini Manohar v. T.K.D. Keerthi20, found the case to be one which contemplated urgent interim (2023) 95 PTC 328 relief and, therefore, justify dispensation with the requirement of preinstitution mediation. Paras 17 to 19 of the judgment of the learned Single Judge, which contain the reasons for his decision, read thus:

35. In my opinion, in understanding the scope and impact of the decision in Yamini Manohar, in the context of the requirement of exhausting of pre-institution mediation in intellectual property suits, para 6 of the report from the judgment of the Supreme Court, vis-à-vis the afore-extracted passages from the judgment of the learned Single Judge of this Court, are of considerable significance. The learned Single Judge upheld the decision of the learned Commercial Court exempting the plaintiff from the requirement of pre-institution mediation solely on the ground that, in the plaint, the plaintiff had averred that the adoption, by the defendant, of any infringing mark, would damage the goodwill and reputation of the plaintiff and result in brand dilution, the consequent loss and injury as a result of which could not be compensated in monetary terms. The Supreme Court has, therefore, lent its imprimatur, in Yamini Manohar, to the position that, in intellectual property suits, where the plaintiff avers that the defendant’s mark is infringing in nature, and that said infringement would damage the plaintiff’s goodwill and reputation which was not capable of being monetarily compensated, urgent interim relief would, ipso facto, stand contemplated in the plaint.

36. The note of caution sounded in para 10 of Yamini Manohar has, therefore, to be understood in the light of para 6, read with the judgment of the learned Single Judge of this Court, from which the appeal before the Supreme Court emanated. The general principle that, in intellectual property suits involving infringement or passing off, continuation of the alleged infringement would result in loss and injury which cannot be compensated in monetary terms and that, therefore, the suit could be instituted without, in the first instance, exhausting the remedy of pre-institution mediation under Section 12A of the Commercial Courts Act, continues, therefore, to hold the field. The limited caveat that the Supreme Court has, in Yamini Manohar, entered, in this regard, is that commercial courts cannot blindly, or mechanically, allow requests for dispensation with the requirement of pre-institution mediation, and are required, in every case, to examine the merits of the request individually. This is essentially so as to prevent misuse of Section 12A by creating artificial grounds of urgency where none exist. Again, such cases would normally be cases in which the plaintiff practices deception or falsehood. In cases where the request for urgent interim relief, as contained in the plaint, is not tainted or artificial, ordinarily the Court must defer to the perception, of the plaintiff, that it is in need of urgent interim relief.

37. That, in my respectful considered opinion, is how the judgment of the Supreme Court in Yamini Manohar is required to be understood and applied.

38. Applying Yamini Manohar, thus understood, to the facts of the present case, one finds the following assertions, in paras 7 to 10 of the present application:

39. Quite clearly, the assertions regarding urgency and the necessity of immediate interim relief, as contained in the present application, are far more detailed and comprehensive then were forthcoming before the learned Single Judge of this Court in Yamini Manohar. The averments regarding urgency in Yamini Manohar having been found, by the Supreme Court, to justify dispensation with the requirement of pre-institution mediation, the plaintiff in the present case would certainly be entitled to similar relief.

40. I do not, therefore, find substance in the objection, raised by Ms. Sahadeva, predicated on Section 12A of the Commercial Courts Act. The objection is therefore rejected. Difference between infringement and passing off

41. The following passages from the celebrated decision in Kaviraj Pt Durga Dutt Sharma classically identify the main ingredients of the torts of infringement and passing off, as well as the differences between them:

29. When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be “in the course of trade”, the question whether there has been an infringement is to be decided by comparison of the two marks. Where the two marks are identical no further questions arise; for then the infringement is made out. When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered (Vide Section 21). A point has sometimes been raised as to whether the words “or cause confusion” introduce any element which is not already covered by the words “likely to deceive” and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words “likely to deceive”. But this apart, as the question arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar. This has necessarily to be ascertained by a comparison of the two marks — the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards. The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration. The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark. The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.” These two passages from Kaviraj Pt Durga Dutt Sharma condense, in themselves, the wisdom of the ages, where trademark infringement, or passing off, is concerned. As many as eighteen stellar principles, which have withstood the ravages of time since they were enunciated, emerge from these two passages. They may thus be enumerated, without any substantial alteration in the language used by the Supreme Court itself:

(i) Dissimilarity of the packing in which the goods of the two parties were vended, the difference in the physical appearance of the two packets by reason of the variation in the colour and other features and their general get-up together with the circumstance that the name and address of the manufactory of the appellant was prominently displayed on its packets and these features were all set out for negativing the respondent's claim that the appellant had passed off his goods as those of the respondent, are matters which are of the essence of the cause of action for relief on the ground of passing off play but a limited role in an action for infringement of a registered trade mark.

(ii) While an action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another, that is not the gist of an action for infringement.

(iii) The action for infringement is a statutory remedy, provided for the vindication of the exclusive right, vested in the proprietor of the registered trademark, to the use of the trade mark in relation to those goods.

(iv) The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement.

(v) Where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases.

(vi) In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant's mark is likely to deceive, but where the similarity between the plaintiff's and the defendant's mark is so close either visually, phonetically or otherwise and the court reaches the conclusion that there is an imitation, no further evidence is required to establish that the plaintiff's rights are violated.

(vii) Expressed in another way, if the essential features of the trade mark of the plaintiff have been adopted by the defendant, the fact that the get-up, packing and other writing or marks on the goods or on the packets in which he offers his goods for sale show marked differences, or indicate clearly a trade origin different from that of the registered proprietor of the mark would be immaterial; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff.

(viii) When once the use by the defendant of the mark which is claimed to infringe the plaintiff's mark is shown to be “in the course of trade”, the question whether there has been an infringement is to be decided by comparison of the two marks.

(ix) Where the two marks are identical no further questions arise; for then the infringement is made out.

(x) When the two marks are not identical, the plaintiff would have to establish that the mark used by the defendant so nearly resembles the plaintiff's registered trade mark as is likely to deceive or cause confusion and in relation to goods in respect of which it is registered.

(xi) A point has sometimes been raised as to whether the words “or cause confusion” introduce any element which is not already covered by the words “likely to deceive” and it has sometimes been answered by saying that it is merely an extension of the earlier test and does not add very materially to the concept indicated by the earlier words “likely to deceive”.

(xii) Where the question of deceptive similarity arises in an action for infringement the onus would be on the plaintiff to establish that the trade mark used by the defendant in the course of trade in the goods in respect of which his mark is registered, is deceptively similar.

(xiii) This has necessarily to be ascertained by a comparison of the two marks — the degree of resemblance which is necessary to exist to cause deception not being capable of definition by laying down objective standards.

(xiv) The persons who would be deceived are, of course, the purchasers of the goods and it is the likelihood of their being deceived that is the subject of consideration.

(xv) The resemblance may be phonetic, visual or in the basic idea represented by the plaintiff's mark.

(xvi) The purpose of the comparison is for determining whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant.

(xvii) The identification of the essential features of the mark is in essence a question of fact and depends on the judgment of the Court based on the evidence led before it as regards the usage of the trade. (xviii)It should, however, be borne in mind that the object of the enquiry in ultimate analysis is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff.

42. Interestingly, while the Supreme Court has, in Kaviraj Pt Durga Dutt Sharma, noted the fact that there exists a point of view that the words “or cause confusion” merely extend the concept of likelihood of deception and do not substantially add to the concept, it has demurred from expressing any final view thereon. By noting the point, however, the Supreme Court has clearly, albeit by implication, indicated that the point of view has substance. In fact, in my considered opinion, it is not possible to vivisect Section 29(2) of the Trade Marks Act and compartmentalise, as it were, the concepts of confusing and deceptive similarity, and likelihood of confusion or association. Significantly, though the Trade Marks Act uses “confusion” and “deception” which are, etymologically, distinct expressions with their own connotations, Section 2(1)(h) dovetails, in a manner of speaking, the two concepts into one another, by defining the expression “deceptively similar” thus: “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.” While the concluding words of the definition, “deceive or cause confusion”, seem to indicate that “deception” and “confusion” are recognised as distinct concepts, this impression stands dispelled by the fact that, whether the mark deceives, or confuses, it is “deemed to be deceptively similar”. Not much, therefore, would turn on the etymologically understood difference between “confusion” and “deception”. In either case, the mark would be regarded as deceptively similar.

43. On the aspect of phonetic similarity, the Pianotist test has, as Ms. Sahadeva correctly submits, come to be regarded as the gold standard, having been followed and adopted in, among others, the decisions of the Supreme Court in Amritdhara Pharmacy, Khoday Distilleries Ltd v. Scotch Whisky Association22 and Cadila Health Care and by the Division Bench of this Court in J & P Coats Ltd v. Popular Thread Mills23, apart from numerous decisions of other High Courts and of learned Single Judges of this Court. The Pianotist test requires the Court to consider

(i) the look and the sound of the competing words,

(ii) the goods to which they are applied,

(iii) the nature and kind of customer who would be likely to buy those goods, and

(iv) what is likely to happen if each of the marks is used in the normal way as a trade mark for the goods of their respective owners.

44. The competing words are, in the present case, “AZIWOK” and “AZIWAKE”. There is no real distinction between their “look” and “sound”, especially as the plaintiff holds a word mark registration for the word “AZIWOK”. Though, to my mind, it is obvious that AZIWAKE is phonetically similar to AZIWOK, as they sound deceptively alike to the ear, one may, if it is necessary to pare the issue to its essentials, explain why the two words are phonetically similar, thus:

(i) Each word consists of three syllables.

(ii) Of the three syllables, the first and second syllables in each word are the same; “a” and “zi”.

(iii) The third syllable which, therefore, would be determinative in examining phonetic similarity, is “wok” in one case and “wake” in the other.

(iv) The third syllable in each case has, therefore, three distinct sounds, with an initial and the terminal consonant sound and an intervening vowel sound.

(v) The initial and terminal consonant sounds are the same in both the words, namely “w” and “k”.

(vi) The only difference between the two words AZIWOK and AZIWAKE is, therefore, in the intervening vowel sound (1996) 30 DRJ 686 (DB) between the consonants forming part of the third syllable (“wok” and “wake”) in each word. In AZIWOK, the intervening sound is “o” and, in AZIWAKE, it is “ay”.

(vii) This minuscule difference between the two words is too

┌───────────────────────────────────────────────────────────────────────────────────────────┐
│                          slight to detract from the overall phonetic similarity between   │
│                          them.                                                            │
│                          (viii) To the ear of the consumer of average intelligence and    │
│                          imperfect recollection, it is, therefore, clear that the words   │
│                          “AZIWOK” and “AZIWAKE” are phonetically deceptively              │
│                          similar.                                                         │
└───────────────────────────────────────────────────────────────────────────────────────────┘

45. Both the marks are used for the same pharmaceutical preparation, namely, azithromycin. Insofar as the consumers who would be dealing with the marks are concerned, the pharmaceutical preparations in question would initially be prescribed by doctors and, thereafter, dispensed by dispensing chemists and purchased by the consumer/patient. It would be unrealistic to expect that every doctor would be aware of the distinction between AZIWOK and AZIWAKE, especially when both marks are used in regard to azithromycin. Even if it were to be so assumed, confusion could always take place at the end of the dispensing chemist, or the purchasing customer. It is a dispensing reality, these days, that not every chemist insists on a prescription before dispensing azithromycin. In such circumstances, the possibility of a customer being dispensed AZIWAKE when, in fact, he wants AZIWOK, cannot be discounted.

46. Moreover, the existence, or otherwise, of confusion is required to be assessed at the “initial interest” stage, i.e., at the time when the consumer of average intelligence and imperfect recollection first chances upon the defendant’s mark. If, at that time, he is immediately likely to wonder whether the mark is the same as the mark of the plaintiff, which he has seen earlier, or whether the two marks are associated in some way, likelihood of confusion or association, within the meaning of Section 29(2)(b) ipso facto exists. The fact that, with the acquisition of more information, he may become disillusioned, is irrelevant. What matters is the impression which is formed in his psyche at the initial interest stage. Applying the initial interest test, a consumer of average intelligence and imperfect recollection, who has once come across the plaintiff’s AZIWOK product and, later, comes across the defendant’s AZIWAKE product, has every chance of being placed in a state of wonderment or confusion as to whether he has seen the mark earlier. That, by itself, is sufficient to result in “likelihood of confusion” within the meaning of Section 29(2)(b).

47. In the context of the present dispute, and especially in view of the submissions advanced by Ms. Sahadeva, the judgment of the Supreme Court in Cadila Health Care assumes importance, in understanding the concept of “deceptive similarity” in the context of pharmaceutical preparations. Though, it is true, Cadila Health Care involved only passing off, and not infringement, the concept of deceptive similarity, with likelihood to confuse, is not different in infringement, as compared to passing off24. The rival marks, in that Refer para 91 of Ramdev Food Products (SC) case, were “Falcigo” of the plaintiff, Cadila Health Care Ltd (“CHC”, hereinafter) and “Falcitab” of the defendant, Cadila Pharmaceuticals Ltd (“CPL”, hereinafter). CHC’s “Falcigo” mark was not registered under the Trade and Merchandise Marks Act, 1958 (“the TMMA”), though its application for registration was pending. CHC and CPL had both been granted permission by the Drugs Controller General to manufacture the rival products, Falcigo and Falcitab. Both the products were used for treating falciparum malaria.

48. On the ground of priority of user, CHC sued CPL and sought an injunction against the use, by CPL, of the “Falcitab” mark, contending that the use of the mark would enable CPL to pass off its “Falcitab” as CHC’s “Falcigo”. An application for interlocutory injunction was also preferred. CPL contended, in response, inter alia, that the prefix “Falci” was merely an abbreviation for “falciparum malaria”, and that it was common to the pharmaceutical trade to abbreviate the names of the compounds contained in the product, or the ailment or the organ that it was intended to treat, so as to indicate, to the doctor or chemist, the disease which the preparation was intended to combat. It was further contended that both products were Schedule “L” drugs, which could be sold only to hospitals and clinics, so that there was no chance of confusion or deception.

49. CPL’s contentions were accepted by the learned Trial Court, which consequently dismissed the application for interim injunction. The learned Trial Court held that the products differed in appearance, formulation and price and that, as could be sold only to hospitals and institutions, there was no chance of deception or confusion. An appeal, preferred against the said decision by CHC, was also dismissed by the High Court. CHC appealed further to the Supreme Court.

50. The Supreme Court noted the principle, enunciated in its earlier decision in Corn Products Refining Co. v. Shangrila Food Products Ltd25 that “the question whether the two marks are likely to give rise to confusion or not is a question of first impression” and that “it is for the court to decide the question”. Further applying the principle that the rival marks were to be compared as whole marks, the Supreme Court, in Corn Products, held that the marks “Glucovita” and “Gluvita” were deceptively similar, as the only difference between the marks was the central “co” syllable, which was present in one and absent in the other.

51. If “Gluvita” is deceptively similar to “Glucovita”, I fail to see, at least prima facie, how it can be said that AZIWAKE is not deceptively similar to AZIWOK.

52. Specifically on the aspect of deceptive similarity and likelihood of confusion in the case of pharmaceutical preparations, the Supreme Court explained the legal position thus, in para 27 to 32 of the report:

29. In the book titled as McCarthy on Trade Marks, it is observed in the footnote at pp. 23-70 as under: “Physicians and pharmacists are knowledgeable in their fields does not mean they are equally knowledgeable as to marks and immune from mistaking one mark from another.” (Schering Corpn. v. Alza Corpn.30 )

30. In the case of Syntex Laboratories Inc. v. Norwich Pharmacal Co.31 it is observed as under: “Stricter standard in order to prevent likelihood of confusion is desirable where involved trade marks are applied to different prescribed pharmaceutical products and where confusion could result in physical harm to the consuming public.”

31. 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. That is why it is said that in a passing-off action, the plaintiff's right is “against the conduct of the defendant which leads to or is intended or calculated to lead to deception. Passing-off is said to be a species of unfair trade competition or of actionable unfair trading by which one person, through deception, attempts to obtain an economic benefit of the reputation which another has established for himself in a particular DCNY 1915, 219 F 325.326 207 USPQ 504 (TTAB 1980) 169 USPQ 1 (2nd Cir 1971) trade or business. The action is regarded as an action for deceit”. [See Wander Ltd. v. Antox India (P) Ltd.]

32. Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products. Drugs are poisons, not sweets. Confusion between medicinal products may, therefore, be life threatening, not merely inconvenient. Noting 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 hospitals, 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. This view finds support from McCarthy on Trade Marks, 3rd Edn., para 23.12 of which reads as under: “The tests of confusing similarity are modified when the goods involved are medicinal products. Confusion of source or product between medicinal products may produce physically harmful results to purchasers and greater protection is required than in the ordinary case. If the goods involved are medicinal products each with different effects and designed for even subtly different uses, confusion among the products caused by similar marks could have disastrous effects. For these reasons, it is proper to require a lesser quantum of proof of confusing similarity for drugs and medicinal preparations. The same standard has been applied to medical products such as surgical sutures and clavicle splints.”

53. After Cadila Health Care, the plea that the likelihood of confusion between similar marks used for pharmaceutical products is lessened because they are prescribed by doctors and dispensed by chemists who are supposed to know the difference between one drug and another, no longer remains available.

54. Ms. Sahadeva sought to distinguish Cadila Health Care on the ground that, in that case, the competing products were different and that, therefore, the possibility of adverse consequences resulting, were the wrong drug to be administered, stood exacerbated, whereas, in the present case, AZIWOK and AZIWAKE are both used for azithromycin, and, therefore, it cannot be said that the administration of AZIWAKE to a patient instead of AZIWOK could be injurious to his health. The submission ignores the ground reality that every formulation of an API may not be equally efficacious. It is well known that physicians choose to prescribe drugs manufactured by particular manufacturers based on their perceived efficacy. As to whether this perception is correct, or justified, or not, this Court is illequipped to speak on; the perception, nonetheless, exists. The need to avoid confusion between pharmaceutical preparations, caused by similar trade marks or brand names, is not, therefore, limited to cases in which the rival marks are used for preparations containing different APIs, but also extends – though, arguably, to a slightly lesser extent – to cases in which the two marks are used for preparations containing the same API.

55. In plain terms, if a physician desires his patient to be treated with AZIWOK, the patient must not end up taking AZIWAKE because of the confusion caused by the similar names/marks. The note of caution sounded in Cadila Health Care would equally apply to such a case.

56. Turning, now, to Ramdev Food Products, Astrazeneca and Gufic, on which Ms. Sahadeva placed reliance.

57. From Ramdev Food Products, Ms. Sahadeva cites para 91, which reads as under:

59. As in the case of Ramdev Food Products, there can be no cavil with the legal propositions elucidated in AstraZeneca. The distinction – which makes all the difference – between Astrazeneca and the case at hand is that, while the rival suffixes, in AstraZeneca, were “MER” and “NEM”, the rival suffixes in the present case are “WOK” and “WAKE”. There can obviously be no absolute guidelines on the basis of which it can qualitatively, or quantitatively, be determined whether two marks are phonetically similar. Ultimately, it is a call which the Court has to take on its own perception of the rival marks, keeping in mind the principle that deceptive similarity has to be examined from the point of view of a consumer of average intelligence and imperfect recollection. Thus examined, though the suffix “MER” may not have been regarded as deceptively similar to the suffix “NEM”, I am unable to convince myself that the same position would obtain in respect of “WAKE”, vis-à-vis “WOK”. The degree of similarity between “WAKE” and “WOK”, with the same initial and terminal consonant sounds, in my considered opinion, makes the mark AZIWAKE phonetically deceptively similar to AZIWOK, even if MEROMER was not regarded as phonetically deceptively similar to MERONEM.

60. AstraZeneca, therefore, in my opinion, cannot come to the aid of the defendant.

61. Gufic is even more distant, on facts, from the present case, as the rival marks in that case were “Clinique” and “Skin Cliniq Stretch Nil”. Besides, the Division Bench, in Gufic, also relied on the fact that the style, manner of writing and packaging of the two products were different and the products catered to different customer segments, as one was an Ayurvedic cream, whereas the other was not.

62. My earlier decision in Elyon Pharmaceuticals, too, in my view, cannot help Ms. Sahadeva. The rival marks in that case were ELMENTIN and ELEMENTAL. The degree of phonetic similarity between the two marks, if any, is clearly far lesser than the degree of similarity between AZIWAKE and AZIWOK. The number of syllables in the two words were also different. Besides, while ELMENTIN was a coined and arbitrary mark, ELEMENTAL was a common English word having a definite etymological connotation. These features are completely absent in the present case. The “common to the trade” plea

63. The “common to the trade” submission of Ms. Sahadeva is also, in my considered opinion, misconceived. Ms. Sahadeva sought to contend that the prefix “AZI” was common to the trade when used for pharmaceutical preparations containing azithromycin. Even if it were to be so assumed, it cannot, in my view, make any difference, as the plaintiff is not claiming exclusivity for the prefix “AZI”. (Indeed, Mr. Narula, tongue firmly in cheek, offered the suggestion that the defendant could change its mark to AZISMART.) AZIWAKE is not phonetically deceptively similar to AZIWOK merely because of the common “AZI” prefix, but because the two marks, seen as a whole, are phonetically similar. The fact that the “AZI” prefix may be common to the trade when used for azithromycin does not, therefore, dent the case of the plaintiff to any appreciable extent. Justification for adoption of the mark AZIWAKE

64. Insofar as the justification provided, in para 7 of the defendant’s reply to the present application, for adoption of the mark AZIWAKE, is concerned, Mr. Narula submits that it is far-fetched and, prima facie, I am somewhat inclined to agree. That said, I am not inclined to express any further opinion on this aspect, as it is simply not necessary. If the defendant’s mark is not deceptively similar to the plaintiff’s, the use of the defendant’s mark cannot be injuncted, and the logic for its coinage hardly matters. In the present case, however, the defendant’s AZIWAKE is, in fact, phonetically deceptively similar to the plaintiff’s AZIWOK, especially as both marks are used for Azithromycin and, therefore, an injunction must follow. Reliance on the decision in Wander

65. Para 9 of Wander, too, cannot come to the aid of the defendant. The user, by the defendant, of the impugned mark, is only of 2022 vintage, whereas the AZIWOK mark stands registered in favour of Wockhardt in 1994 and there is evidence of user of the mark, by Wockhardt and thereafter by the plaintiff, at least since 2003. The user scales, too, therefore, are tilted heavily in favour of the plaintiff and against the defendant. The sequitur

66. A clear prima facie case of infringement, by the defendant’s AZIWAKE mark, of the plaintiff’s AZIWOK is, therefore, made out. When assessing infringement, the comparison has to be on mark-tomark basis. Added matter, or attendant circumstances, cannot mitigate infringement where, on mark-to-mark basis, it is seen that there is deceptive similarity between the marks, and likelihood, as a result, of confusion, or of a consumer of average intelligence and imperfect recollection associating the mark of the defendant with the mark of the plaintiff, is seen to exist.

67. Where such a case of infringement exists, the Supreme Court has clearly held, in Midas Hygiene Industries (P) Ltd v. Sudhir Bhatia33, that, “normally an injunction must follow”. The Supreme

Court has further clarified, in the said decision, that “mere delay in bringing action is not sufficient to defeat grant of injunction in such cases”. In the present case, given the fact that the defendant has been using the impugned AZIWAKE mark only since 2022, it cannot even be said that the plaintiff is guilty of any inordinate delay in approaching the Court. Considerations of balance of convenience and irreparable loss

68. As the defendant has been using the impugned mark only since 2022, whereas the plaintiff’s user of its AZIWOK mark dates back to 2003, continuing infringement, by the defendant, of the plaintiff’s mark, is likely to dilute its brand value, and would also result, therefore, in prejudice to the plaintiff which cannot be compensated in monetary terms. The recent decision of the Supreme Court in Yamini Manohar also recognises the fact that, where the trademark is infringed, irreparable loss results, which cannot be compensated in monetary terms.

69. Further, given the fact that the defendant has been using the impugned mark only since 2022, and, even if injunction was granted, would only be required to adopt a non-infringing mark, the balance of convenience is also in favour of grant of injunction. No loss can be said to ensue to the defendant, were injunction to be granted. The defendant would only be required to change its mark to something other than AZIWAKE, which does not infringe the plaintiff’s AZIWOK mark. Comparing the inconvenience that would result to the defendant, who has been using AZIWAKE only since 2022, with the prejudice that the plaintiff would suffer if the defendant’s infringing mark continues to remain in use, coupled with the continued likelihood of one preparation being mistakenly prescribed, dispensed, or taken instead of the other, the balance of convenience would also dictate grant, rather than refusal, of interim injunction as sought. Conclusion

70. Resultantly, the following directions are issued:

(i) The defendant, as well as all others acting on its behalf shall stand restrained, pending disposal of the suit, from using the mark AZIWAKE, with or without any prefixes or suffixes, in respect of pharmaceutical preparations, or for any other allied of cognate goods or services.

(ii) However, I am not inclined to pass any injunction in respect of batches of AZIWAKE (with or without any suffixes) which already circulating in the market, or which are manufactured and available in stock with the defendant. Insofar as existing stock, which is yet to expire, is concerned, therefore, the defendant may sell the stock in the market, after, however, a priori filing an affidavit before this Court, within 5 days, providing the batch numbers and dates of expiry of the said stock. Copies of the invoices whereunder the said stock is sold shall also, consequent on their sale, be placed on affidavit, by the defendant, in the present proceedings.

71. IA 20597/2023 stands disposed of accordingly.