Corona Remedies Private Limited v. Franco-Indian Pharmaceuticals Private Limited

8 At the outset it was submitted by Ms. Gharat that Franco has submitted about 150 pages written submission and the court should consider that. We made it clear to Ms. Gharat that she will have to make her submissions before us, as it will not be possible to read entire 150 pages from Franco’s written submission and she has to point out how the judgment impugned in this appeal is sustainable.

9 Ms. Gharat submitted as under: (a) In view of the provisions of sub section 1 of section 28 of the Act, Franco being a registered proprietor of Trade Mark STIMULIV it has the exclusive right to use of the said Trade Mark and to obtain relief in respect of infringement of Trade Mark. Ms. Gharat, however, could not explain as to how in view of sub section 3 of section 28 of the Act, this action was maintainable against Corona. Ms. Gharat was also not able to point out as to why the observations of Full Bench and Lupin (Supra) were not applicable. (b) Ms. Gharat relied upon sections 34 and 124 of the Act to submit that this court will have jurisdiction and power to 7 2002 (25) PTC 747 (Bom) entertain suit for infringement against the registered proprietor and also grant injunction against the registered proprietor but she did not elaborate as to how those provisions are relevant particularly in view of sub section 3 of section 28 of the Act.

(c) Corona is estopped from contending that the mark of Franco is not distinctive, common to the trade etc. This is because Corona had made an application for registration claiming STIMULET is a mark and thereby asserted rights in the mark STIMULET. Corona represented to the Registrar that STIMULET is a distinctive mark. Corona had opposed registration of another trade mark STIMULS S[8] by another party. In our view none of these arguments will help Franco in view of provisions of sub section 3 of section 28 of the Act unless Franco could have made out a case against Corona within the window provided by Lupin (Supra).

(d) On the issue of passing off, the information on Corona’s product available on website has a warning that Corona’s medicine is not recommended for patients with liver injury and therefore, if the injunction was lifted and Corona’s product being a pharmaceutical product, it would cause harm and injury to the general public at large. (e) Even though the rival products have different composition both fall under the same clause being goods of the same description and confusion and deception is certain. It is settled proposition that especially in cases of medicinal and pharmaceutical products, higher degree of protection is called for and goes beyond the commercial aspect. Since Franco’s medication products are used for liver disorders and Corona’s products are used for breast cancer and infertility any confusion amongst members of trade and public consequent consumption of one product instead of other could lead to disastrous consequences. However, it was not explained as to how it could cause confusion and that why say this can be adduced from the picture of the rival products re-produced later.

FINDINGS

10 Having considered the impugned judgment, in our view, Corona is justified in impugning the same.

11 Before we proceed further, it will be necessary and essential to reproduce the rival products, Corona’s preparation sold in the form of tablets and Franco’s Ayurvedic preparation sold in the form of syrup and tablets. We must also state that all these judgments cited herein were all cited by Mr. Kamod.

12 Section 28(3) of the Act reads as under “Section 28. Rights conferred by registration. (3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor. ” Section 28(3) is very clear and the law is also well settled that once a trade mark is registered, remedy of infringement is not available against the registered proprietor.

13 The learned Single Judge has erred in observing that Corona, by adopting defence under section 28(3) of the Act, has admitted that the rival marks are similar. It was Franco that came to court saying the marks are similar or identical. In defence Corona’s case was, and rightly so, if it was similar / identical then under Section 28(3) of the Act, remedy of infringement was not available against Corona. If one goes forward with Franco’s case that Corona’s product is similar / identical to its product, section 28(3) grants Corona a statutory protection from an action of infringement against the use of its registered mark. This mandate of the said section 28(3) of the Act has been ignored and erroneously misconstrued to be an admission of similarity of rival marks.

14 Courts in India have taken judicial notice of the fact that in the Pharmaceutical and medicinal industry parties often derive the name of their product from generic drug comprising therein or product’s effect or the ailments the product is used to treat. “STIMU” is a common prefix used in the industry which is derived from the words “STIMULATE”. Corona has placed on record detailed list of innumerable pharmaceutical products using the word prefix STIMU many of which are registered trade marks like STIMULAC or STIMULERE or STIMUVAY or STIMUGRAN or STIMUVAM or STIMULUS. Franco cannot be permitted to claim an absolute monopoly in the prefix “STIMU”. Both Franco and Carona can claim monopoly in their respective marks without violating one another’s rights. Courts have held that merely on the basis of prior user, a proprietor cannot claim exclusivity in his trade mark or in the name which is derived from the generic term. Franco can claim exclusivity only in the added features which differentiates its trade mark from the name of the generic term, i.e., “LIV”. Even when compared as a whole, rival trade marks are different. The rival goods, trade channels and consumers are also different. Unlike Franco’s product which can be sold over the counter, Corona’s product is a Schedule-H product which can only be sold by registered chemist on prescription from a qualified and registered medical practitioner. There are strict rules / curbs for distribution of Schedule H drugs. The rival products are used for different aliments. There is no possibility of confusion or deception caused by Corona’s use of its STIMU-LET trade mark.

15 It is an admitted position that Corona is a registered proprietor of the trade mark STIMU-LET and till date Franco has not filed any rectification proceedings challenging the said registration. Therefore, Corona’s trade mark registration is valid and subsisting. A bare perusal of section 28(3) makes it abundantly clear that the exclusive rights granted to Franco on the basis of its trade mark registrations cannot be exercised against Corona’s use of its registered trade mark. So long as Corona’s trade mark registration is valid and subsisting, no case for infringement can be made out against Corona.

16 The Hon’ble Supreme Court in Sulochanabai (Supra) held

17 The learned Single Judge has misapplied Sulochanabai (Supra) because the principle therein would not be applicable to the present case. The learned Single Judge has erred in not appreciating on the facts that in Sulochanabai (Supra), Plaintiff therein had brought an action of passing off against Defendant therein who was proprietor of a registered trade mark. In this context, the Apex Court in Sulochanabai (Supra) held that being a proprietor of a registered trade mark, Plaintiff therein could not have said that defendant therein had infringed its trade mark. Similarly, in the present case Corona is the proprietor of a registered trade mark and it cannot be said that it is infringing Franco’s registered trade mark.

18 The learned Single Judge also has not considered the law laid down by the Full Bench in Lupin (Supra). The observations in the said judgment show that a very small window has been left open for the Court to go behind the registration of a trade mark, i.e., in cases where the registration of the trade mark is ex-facie illegal or fraudulent or shocks the conscience of the Court. The relevant observations from the Full Bench’s judgment are reproduced below for reference:

19 Pertinently, the learned Single Judge has not made a single observation in the entire Impugned Order that he has gone behind Corona’s trade mark registration in view of the principles set out in the Lupin (Supra). There is no reference to the Full Bench’s aforesaid judgment in Lupin (Supra), or the principles set out therein. There is not even an observation that Corona’s mark is invalidly registered.

20 The learned Single Judge has made a stray observation that “It was not possible for the Defendant to obtain registration of such a similar mark in the face of Franco Indian’s prior registration.” The said observation cannot by itself meet the steep parameters for going behind Corona’s trade mark that must be shown as laid down by the Full Bench of this Hon’ble Court in Lupin Ltd. (Supra).

21 Now coming to the issue of passing off, Corona’s trade mark is a word coined from the words STIMULATE and LETROZOLE. The word “STIMULATE” is descriptive and / or suggestive of Corona’s product, whereas “LETROZOLE” is the name of the generic drug used as an ingredient in Corona’s product. Corona has merely dissected the prefixes of the two words and married them to coin its trade mark STIMU-LET. Similarly, Franco’s mark “STIMULIV” is fusion of the prefixes of the words “STIMULANT” and “LIVER”. The term “STIMU” is also descriptive and / or suggestive of Franco’s product, whereas “LIV” was adopted since Franco’s product is used for the treatment of liver disorders. It is a common practice in the pharmaceutical industry to use the initials of active drug in the trademark to increase its recall value amongst medical practitioners.

22 Thus, both Corona and Franco are using the non-distinct term “STIMU” which is indicative / suggestive of the properties of their products. In its Reply filed before the learned Single Judge, Corona had produced substantial evidence to show that not only the parties to the present action, but also several third parties are also using the prefix “STIMU” to indicate / suggest the properties of their respective products. A bare perusal of the pages annexed to the Appeal Paper Book will show that there are various third-party proprietors using marks bearing the prefix “STIMU” in respect of medicinal / pharmaceutical preparations. From the list there are various third parties’ trade marks on the Register of Trade Marks with the prefix “STIMU”. It can be seen that the mark “STIMUTERIN” is registered under No. 358981 in Class 5 in respect of pharmaceutical and medicinal preparations since 27th February 1980, STIMULEX is registered under No. 2201301 in Class 5 in respect of medicinal preparations with user since 01.01.1990, STIMULAC is registered under no. 2329800 in Class 5 for Ayurvedic Medicinal Preparation with user since 26.03.2003, STIMULERE is registered under no. 2338975 with user since 01.04.2009, STIMULUS is registered under no. 1006228 with user since 01.04.2000 etc. Similarly, from the years 1999 to 2010 there are at least 15 trademarks which have been registered with the prefix “STIMU” in Class 5 in respect of same / similar products. Corona has also shown that third-party products bearing marks containing the prefix “STIMU”, ie., STIMULITE- G, STIMULEX, STIMULAX, STIMULANT etc. are readily available in the market. Hence, from a perusal of these materials, it is evident that even at the prima facie stage Corona has produced substantial evidence to show that “STIMU” is a commonly used abbreviation in the medical and pharmaceutical industry to denote “stimulants”.

23 It is settled law that in such cases where the common element between the two rival trade marks is descriptive or common to the trade, greater regard has to be paid to the uncommon elements of the rival marks, which in the present case are “LIV” (of Franco) and “LET” (of Corona). The observations of the Hon’ble Supreme Court in F. Hoffmann-la Roche and Co. Ltd. vs. Geoffrey Manner and Co. Pvt. Ltd.8, are relevant. The Apex court held:

24 Similarly, the Division Bench of this Court in Schering Corporation vs. United Biotech (P) Ltd.9, has held as under: “11. After having heard the Learned Counsel appearing for both the sides in detail and after having gone through the judgments relied on by both the learned Counsels and the record, we find that disturbing the order passed by the learned Single Judge would not be proper. The trade mark of the Respondents NETMICIN is admittedly registered, and therefore, the Respondents have statutory right to use that trade mark. The Appellants have adopted their trade mark NETROMYCIN from the generic drug name Netilmicin. When a trade mark is found from the common generic name, no single proprietor can claim absolute monopoly in such name or trade mark. When a proprietor adopts a trade mark on the basis of name of generic drug or ingredient, it will be safe to assume that he is aware that the other proprietors are also likely to adopt and use similar marks in case their product is based on the same generic drug or ingredient. In such a case, the first user cannot claim exclusivity in his trade mark or in the name which is derived from the generic drug. At the most such proprietor can claim exclusivity in those added features which differentiates his trade mark from the name of the generic drug or ingredient. When two trade marks are coined from the same generic drug or ingredient, there are bound to be similarities between the two and in such a case, even if the differences between the two trade marks are minor or small, then also at least at the prima facie stage no injunction can be granted.” The rival products before the Division Bench of this Hon’ble Court in the aforesaid judgment were pharmaceutical / medicinal 9 2011 (1) Bom CR 89 products. It is also relevant to note that similar to the aforesaid case, in the present case the rival marks are coined from the same source / descriptive word, i.e., the word “STIMULATE”. In such circumstances there are bound to be similarities between rival marks. However, the Division Bench held that in such a case, even if the differences between the rival trade marks are minor or small, then also at least at the prima facie stage no injunction can be granted. The principles of the aforesaid judgment are squarely applicable to the present case.

25 In the case of Ranbaxy Laboratories Ltd. vs. Indohemie Health Specialities Pvt. Ltd.10, this Court observed as under:

26 Similarly in Bal Pharma Ltd. vs. Wockhardt Ltd. and Anr.11, this Court observed as under:

27 Further, in the case of Macleods Pharmaceuticals Ltd. vs. Swisskem Healthcare and Ors.12, this Court has observed that:

28 Also, in the case of Ayushakti Ayurved Pvt. Ltd. and Ors. vs. Hindustan Lever Limited13, this Court was considering the similarity between the marks AYUSH and AYUSHAKTI. The court held:

29 There is no visual or structural or phonetic similarity between the suffixes / syllables “LIV” and “LET”. Due to the presence of the syllable “T” at the end of Corona’s mark and the hyphen between “STIMU” and “LET”, in our view, there is no possibility of slurring over the suffix in pronunciation. In the case of Franco Indian Pharmaceuticals Pvt. Ltd. vs. Lupin Ltd. and Anr.14, the addition of the hyphen in the mark of defendant therein was a relevant factor for the learned Single Judge of this Court to conclude that the rival marks therein were not similar. The relevant excerpt from the judgment is reproduced below: “3. As regards the infringement of trade mark " Dexorange" learned counsel for the defendants states that it would not use the old mark " Hepporange " for further but, use the mark "Hepporange" as is shown in packaging Exhibit X. Prima facie, the two marks do not appear to be visually or phonetically similar....” When compared as a whole, the rival marks “STIMULIV” and “STIMU- LET” are dissimilar.

30 The learned Single Judge’s observation that once Corona filed its trade mark application, it was not possible for it to contend that Franco’s mark was non-distinctive is not correct. Firstly, it is extremely pertinent to note that the rival marks of Corona and Franco are not

14 Order dt. 25th February 2006 in Notice of Motion No. 263 of 2005 in Suit No. 288 of 2005. identical. The trade mark registration/application of Corona is not in respect of the mark “STIMULIV”.

31 There can be no quarrel with the principle that in an action for passing off, it is incumbent on plaintiff to show that he has acquired goodwill and reputation in respect of his goods and / or services for which his mark is used. However, it is also a settled principle of law that in determining this question it must be proved that plaintiff had acquired such goodwill and reputation when defendant began use of its trade mark. Observations of the Calcutta High Court in Honda Motor Company Limited vs. Kewal Brothers and Ors.15, and of the Bombay High Court in Sun Pharmaceuticals Industries Limited vs. Emcure Pharmaceuticals Limited16, are as under: Honda Motor Company (Supra) “36. Both Mr. Gupta and Mr. Chakraborty very fairly agree to one point and I also accept that the relevant date for determining question of passing off is the date of commencement of adoption of the mark by the defendant and this has been really settled and decided by decision of the Judicial Committee of the Privy Council in case of Cadbury Schweppes Pvt. Ltd. v. The Pub Squash Co. Ltd.17.” Sun Pharmaceuticals Industries (Supra) “16. It is necessary therefore, for the plaintiff to establish that the products sold by it under the mark "SUSTEN" had acquired the requisite goodwill and reputation by 19.11.2010 i.e. the date on which the defendant used that impugned mark. This is the plaintiff has done.”

16 2012 (2) Mh.L.J. 37 17 1981 RFC 429 at page 494 32 The indisputable position is that Corona is openly and extensively using its registered trademark STIMU-LET since the year

2010. Applying the aforesaid principle to the present case, the relevant date for determining passing off in the recent action has to be the year

2010. Thus, this Court must determine whether Franco had such goodwill and reputation at the time when Corona started using its trade mark would amount to passing off, i.e., in the year 2010. Perusal of the documents relied upon by Franco, in our view, does not pass this test. (a) Franco’s Chartered Account’s Certificate certifies Franco’s Annual Sales Figures for STIMULIV from 2010 to 2020. Pertinently Franco has failed to show its sales figures prior to the year 2010. (b) Franco’s Chartered Account’s Certificate certifies Franco’s annual promotional expenses for all its products from 2010 to

2020. Pertinently Franco has failed to show its promotional expenses prior to the year 2010. Also, Franco has not disclosed a break-up of its promotional expenses and there is nothing to show what proportion of the promotional expenses are made towards Franco’s products bearing the STIMULIV mark. c. Franco has produced intermittent and isolated invoices for the year 1976, 1982, 1985 and 1998 prior to the year 2010 to show its use of the mark STIMULIV. d. In the name of promotional material Franco merely relies upon 4 undated flyers / pamphlets.

33 Hence, the learned Single Judge failed to consider that Franco’s entire case of it having acquired goodwill and reputation as of the year 2010 is hinged on intermittent and isolated invoices and 4 undated flyers produced by it. Franco’s annual sales figures and annual promotional expenses as stated by Franco, are of no assistance to Franco’s case since they are not prior to Corona’s user, i.e., the year

2010. In the absence of goodwill or reputation, Franco’s case of passing off against Corona certainly cannot be accepted at the interim stage at least.

34 It is settled law the test of infringement is the same as in an action for passing off. Thus, the principles of / tests for determining the likelihood of confusion or deception arising from similarity of marks shall be the same. Reliance was placed by Mr. Kamod upon the decisions of the Hon’ble Supreme Court in the cases of Ruston & Hornsby Ltd. vs., and Kaviraj Pandit Durga Dutt Sharma vs. Navaratna Pharmaceutical Laboratories19. Also Meso Private Limited vs. Liberty Shoes Ltd. and Ors.20, 35 The principles for determining the deceptive similarity between two marks was set out in the landmark judgment of Cadila Health Care Ltd. vs. Cadila Pharmaceuticals Ltd.21. The Hon’ble Supreme Court has set out several relevant factors in para 42 of this judgment for determining the likelihood of deception. “42. Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the following factors to be considered: 18 [1970] 2 SCC 222 a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. c) The nature of the goods in respect of which they are used as trade marks. d) The similarity in the nature, character and performance of the goods of the rival traders. e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. f) The mode of purchasing the goods or placing orders for the goods and g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks.”

36 In the case of Kaviraj Pandit Durga Dutt Sharma vs., the Hon’ble Supreme Court has considered the parameters which merit consideration while determining whether a mark is “likely to deceive”. In para 29 the apex court held: “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 s. 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, in deceptively similar. This has necessarily to be ascertained by a comparison of the two marks-the degree of resemblance which is necessary to exit 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.”

37 In view of the aforesaid principles, it is relevant to note that the rival marks are neither visually, nor structurally or phonetically similar. Corona is registered proprietor of its STIMU-LET label mark. In addition thereto, the labels, packaging, get up and colour combination of the rival products are completely different.

38 Corona has been openly and extensively using its registered mark from the year 2010 as could be seen from Corona’s sales invoices, promotional materials and chartered accountant’s certificate annexed to the memo of appeal. Considering those materials, one may safely say that Corona has also acquired distinctiveness in it’s trade mark and there is no likelihood of confusion or deception caused by Corona’s use of it’s trade mark. Mr. Kamod submitted that vide a notification dated 12th October 2011 published in the Gazette of India, the Government of India suspended the manufacture, sale and distribution of the drug Letrozole in respect induction of ovulation in anovulatory infertility, viz., the ailment for which Corona’s product was used. Subsequently, vide a notification dated 17th February 2017, the Government of India revoked the said suspension on the drug Letrozole. Hence, despite Corona’s bona fide intention to use its registered trade mark, it was unable to manufacture, sell or distribute its products bearing its registered trade mark during the suspension period. Mr. Kamod Submitted that the non-use of its mark during this period was only due to the change of the rules and regulations by the Government of India and as such is not attributable to any fault on part of Corona.

39 Corona’s products are allopathic Schedule-H products which are sold only upon production of a doctor’s prescription, whereas Franco’s products are ayurvedic products which are sold over the counter. The customers of the rival products are also different. Pertinently, Franco’s trade mark registration No. 297201 in Class 5 for the word “STIMULIV” is only for the goods “pharmaceutical preparations for the treatment of liver and allied disorders”. It is settled law that there may be a difference in the goods despite the fact that they fall in the same class. The Hon’ble Supreme Court in the case of Vishnudas Trading as Vishnudas Kishandas vs. Vazir Sultan Tobacco Co. Ltd., Hyderabad and Ors.23, held: “The "class" mentioned in the 4th Schedule may subsume or comprise a number of goods or articles which are separately identifiable and vendible and which are not goods of the same description as commonly understood in trade or in common parlance. Manufactured tobacco is a class mentioned in Class 34 of 4th Schedule of the Rules but within the said class, there are number of distinctly identifiable goods which are marketed separately and also used differently. In our view, it is not only permissible but it will be only just and proper to register one or more articles under a class or genus if in reality registration only in respect of such articles are intended, by specifically mentioning the names of such articles and by indicating the class under which such article or articles are to be comprised. It is, therefore, permissible to register only cigarette or some other specific products made of manufactured tobacco as mentioned in Class 34 of 4th Schedule of the Rules. In our view, the contention of Mr. Vaidyanathan that in view of change in the language of Section 8 of Trade Marks Act as compared to Section 5 of Trade Marks Act 1940, registration of trade mark is to be made only in respect of class or genus and not in respect of articles of different species under the genus is based on incorrect appreciation of Section 8 of the Trade Marks Act and 4th Schedule of the Rules.”

40 In the case of Nandhini Deluxe vs. Karnataka Co-operative, the Hon’ble Supreme Court, inter alia, held that there was no possibility of confusion or deception between the marks “NANDINI” and “NANDHINI”. The Hon’ble Apex Court observed that the marks when compared as a whole, are dissimilar. The Hon’ble Supreme Court observed: “26. Before we answer as to whether the approach of the IPAB and the High Court in the impugned orders is correct, as contended by the Respondent or it needs to be interdicted as submitted by the Appellant, some of the relevant facts about which there is no dispute, need to be recapitulated. These are as follows: (A) Respondent started using trade mark in respect of its products, namely, milk and milk products in the year 1985. As against that, the Appellant adopted trade mark 'NANDHINI' in respect of its goods in the year 1989. (B) Though, the Respondent is a prior user, the Appellant also had been using this trade mark 'NANDHINI' for 12-13 years before it applied for registration of these trade marks in respect of its products.

(C) The goods of the Appellant as well as Respondent fall under the same Classes 29 and 30. Notwithstanding the same, the goods of the Appellant are different from that of the Respondent. Whereas the Respondent is producing and selling only milk and milk products the goods of the Appellant are fish, meat, poultry and game, meat extracts, preserved, dried and cooked fruits and vegetables, edible oils and fats, salad dressings, preserves etc. and it has given up its claim qua milk and milk products.

(D) Insofar as application for registration of the milk and milk products is concerned, it was not granted by the trade mark registry. In fact, the same was specifically rejected. The Appellant was directed to file the affidavit and Form 16 in this behalf to delete the goods 'milk and milk products' which affidavit was filed by the Appellant. Further concession is already recorded above. (E) NANDINI/NANDHINI is a generic, it represents the name of Goddess and a cow in Hindu Mythology. It is not an invented or coined word of the Respondent. (F) The nature and style of the business of the Appellant and the Respondent are altogether different. Whereas Respondent is a Cooperative Federation of Milk Producers of Karnataka and is producing and selling milk and milk products under the mark 'NANDINI', the business of the Appellant is that of running restaurants and the registration of mark 'NANDHINI' as sought by the Appellant is in respect of various foodstuffs sold by it in its restaurants. (G) Though there is a phonetic similarity insofar as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the two parties are altogether different. The manner in which the Appellant has written NANDHINI as its mark is totally different from the style adopted by the Respondent for its mark 'NANDINI'. Further, the Appellant has used and added the word 'Deluxe' and, thus, its mark is 'NANDHINI DELUXE'. It is followed by the words 'the real spice of life'. There is device of lamp with the word 'NANDHINI'. In contrast, the Respondent has used only one word, namely, NANDINI which is not prefixed or suffixed by any word. In its mark 'Cow' as a logo is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare perusal of the two marks would show that there is hardly any similarity of the Appellant's mark with that of the Respondent when these marks are seen in totality. xxxxxxxx

31. We may mention that the aforesaid principle of law while interpreting the provisions of Trade and Merchandise Act, 1958 is equally applicable as it is unaffected by the Trade Marks Act, 1999 inasmuch as the main object underlying the said principle is that the proprietor of a trade mark cannot enjoy monopoly over the entire class of goods and, particularly, when he is not using the said trade mark in respect of certain goods falling under the same class. In this behalf, we may usefully refer to Section 11 of the Act which prohibits the registration of the mark in respect of the similar goods or different goods but the provisions of this Section do not cover the same class of goods.”

41 This Court has held that the fact that a product is available only upon production of a doctor’s prescription is a factor that merits consideration. In Burroughs Wellcome (I) Ltd. vs. American Home Products and Ors.25, the court said: