Judgment Prabir Kumar Majumdar 1. THIS is an application taken out by the plaintiff/petitioner for an order of injunction restraining the defendant, its servants, and agents from in any way using the impugned mark Sulphacetamide Eye Drops 20% B.P. or any other mark which is deceptively and/or confusingly similar to the petitioner's registered trade mark Locula Sulphacetamide Eye Drops 10%, 20% or 30%; an order of injunction restraining the defendant, its servants or agents from in any way using the cartons with the get-up, its colour combination, style or writing, picture, letter-press, or in any other cartons or packages which may be deceptively similar to labels, packages, cartons used by the petitioner for their aforesaid product bearing the registered trade mark Locula 10%, 20% or 30% B.P.; an order of injunction restraining the defendants or its agents from selling or offering for sale the said Eye Drops or any other products sharing the impugned mark Sulphacetamide Eye Drops 20% B.P. or any other marks similar or deceptively similar to the cartons, packages used by the plaintiff for its products under the trade mark Locula 20% B.P. The plaintiff/petitioner has also asked for other reliefs, appointment of special Officer etc. 2. THE case of the petitioner is that the petitioner's said product Sulphacetamide Eye Drops B.P. 20% has been registered under Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) being No. 309056 dated 8th October, 1975 in respect of medicinal preparations for the treatment of inflammatory diseases relating to eyes, ears, nose and throat of human beings. THE petitioner has been selling and marketing the said preparation under the caption Sulphacetamide Eye Drop B.P. 20% with brand name 'Locula' in different parts of India. It is also the petitioner's case that the petitioner sold the said product Sulphacetamide Eye Drops B.P. 20% in 10Ml. Phial with a dropper and a label pasted under the colour scheme and combination of yellowish and pink with the style of writing Sulphacetemide Eye Drops B.P. 20% with pictures inside the pink square block showing the pictures of capsules, drop and a mule. Phial with a dropper and a label pasted under the colour scheme and combination of yellowish and pink with the style of writing Sulphacetemide Eye Drops B.P. 20% with pictures inside the pink square block showing the pictures of capsules, drop and a mule. It is the further case of the petitioner that sometime in May, 1989 the petitioner came to know through various marketing agents that the respondent has been selling eye drops at Calcutta, Delhi, Punjab and other places under the trade name of Sulphacetamide Eye Drops B.P. 20% affixing the label on the said product confusingly or deceptively similar to the registered trade mark of the petitioner. It is alleged that the respondent has also copied the colour combination, get up, style of writing, type of writing including the logo, design and also used the words "Eye- Drops 20%" confusingly similar to the get-up and colour combination with its logo of the petitioner to cause confusion or the same is likely to mislead the people at large. It is further alleged that the said get-up, logo, design, colour combination, style of writing, and type of writing have been so similar to the registered trade mark of the petitioner that the people are likely to be confused and/or deceived by such colour combination, get up, logo, design, type of writing and style of writing used by the respondent. 3. ON 17th May, 1989, the petitioner served notice under registered post upon the respondent at Delhi stating inter alia, that the said preparation of Eye Drops manufactured and marketed by the respondent in respect of the eye drops for inflammation, irritation, in respect of the eye, nose, ear and throat is so visually and confusingly similar to the trade mark of the petitioner that it is bound to mislead and to cause confusion in the mind of the people purchasing the same. 4. IT is also alleged that the respondent has been infringing the petitioner's trade mark with malafide intention at the cost of the petitioner's goodwill and reputation. IT is also alleged that upon enquiry the petitioner came to know that the respondent has been marketing the said preparation in the form of lotion in 10 Ml. 4. IT is also alleged that the respondent has been infringing the petitioner's trade mark with malafide intention at the cost of the petitioner's goodwill and reputation. IT is also alleged that upon enquiry the petitioner came to know that the respondent has been marketing the said preparation in the form of lotion in 10 Ml. Phial through various retailers at Calcutta, specially through shops and druggists of Lindsay Street, New Market, College Street, Bentink Street and other places in Calcutta as also in Delhi, Punjab and other places. It is also alleged that the respondent has been and still is passing off the said Sulphacetamide B.P. 20% Eye Drops preparation both at Calcutta and other places. The impugned labels or cartons of the respondent are deceptively similar to the labels or cartons of the petitioner and are likely to cause deception or confusion amongst the customers, users or purchasers of said Sulphacetamide Eye Drops preparation of the petitioner. It is also alleged that the respondent is wrongfully continuing to infringe the trade mark or pass off the said Sulphacetamide B.P. 20% Eye Drops preparation containing the deceptively similar marks with the offending labels in spite of demand. 5. THE respondent's case as it appears from its affidavit in opposition filed in this proceeding is that the said preparation of Sulphacetamide B.P. 20% with perspectives is a well known medicinal preparation and is commonly available and is common to the trade and marketed by various concerns both in India and abroad. It is also the case of the respondent that the documents disclosed by the petitioner do not show that the petitioner is the sole or exclusive manufacturer of sulphacetamide eye drops B.P. 20%. It is also alleged by the respondent that registration certificate forming annexure "B" to the petition does not show that the petitioner's product Sulphacetamide Eye Drops B.P. 20% has been registered under the Trade and Merchandise Marks Act, 1958. Further, it is alleged by the respondent that the said certificate was issued on 8th October, 1975. THEre is nothing to show that the said registration has been renewed thereafter. In the premises, no reliance can be placed on the said certificate. 6. IT is also the case of the respondent that the respondent has been manufacturing the said Sulphacetamide eye drops B.P. 20% since April, 1989 with the knowledge of the petitioner. THEre is nothing to show that the said registration has been renewed thereafter. In the premises, no reliance can be placed on the said certificate. 6. IT is also the case of the respondent that the respondent has been manufacturing the said Sulphacetamide eye drops B.P. 20% since April, 1989 with the knowledge of the petitioner. IT is also alleged by the respondent that it will be evident from the documents disclosed by the petitioner that the areas of operation of the petitioner and the respondent do not overlap and are totally different. IT is also the case of the respondent that product of the respondent is being manufactured in accordance with the licence of drug manufacturing granted by the State Drug Controller. IT is also the case of the respondent that the products of the respondent are being mainly marketed in northern India. Mr. Dipankar Gupta, the learned Counsel for the petitioner submits that in the case of infringement of trade marks or passing off the product, the court should enquire as to the features of the respective marks which strikes the eye of the members of the public. In case like this, the court has to take the consumer as a person of average intelligence and also with imperfect recollection. 7. MR. Gupta has also submitted that the test as to likelihood of confusion or deception arising from similarity of marks is the same both in infringement and passing off actions. In an action for infringement where the defendant's trade mark is identical with the plaintiff's mark the Court will not enquire whether the infringement is such as is likely to deceive or cause confusion. But where the alleged infringement consists of using not the exact mark on the Register, but something similar to it, the test of infringement is the same as in an action for passing off. MR. Gupta has referred to a decision of Supreme Court in Ruston and Hornby Ltd. v. Zamindara Engineering Co., AIR 1970 SC 1649 . 8. MR. Gupta has referred to Section 2(1) (d) of the said Act where the expression "deceptively similar" has been defined. It says that 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. MR. 8. MR. Gupta has referred to Section 2(1) (d) of the said Act where the expression "deceptively similar" has been defined. It says that 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. MR. Gupta has also referred to Section 2 (1) (j) which defines the expression "Mark." This has been defined as including a device, brand, heading, label, ticket, name, signature, word, letter or numeral or any combination thereof. It has been submitted by MR. Gupta that the marks must be compared as whole. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing mark. MR. Gupta makes this reference in reply to the respondent's contention that the two marks are not similar to each other in all respects. According to the respondent, the petitioner's mark also contains the brand name "Locula" which brand name is absent in the respondent's marks. MR. Gupta submitted on behalf of the petitioner that the true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistake in the minds of the persons accustomed to the existing trade mark. MR. Gupta relies on another decision of the Supreme Court in F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Pvt Ltd., AIR 1970 SC 2062 . Mr. Gupta submits that looking at two marks, one used by the petitioner and other used by the respondent and considering the colour margin, the get up and other features, the customer would be taking the respondent's mark as the mark of the petitioner and he will purchase the same with this belief that he has purchased the petitioner's brand, "Locula Eye Drop". He also submits that looking at the two marks the consumer of petitioner's product would be easily misled by the respondent's product taking it as the petitioner's product, even though that particular brand name "Lacula" is not there on the respondent's marks. He says that while considering this, one has to take essential features which strike the eye of the member of the public accustomed to such mark. 9. MR. He says that while considering this, one has to take essential features which strike the eye of the member of the public accustomed to such mark. 9. MR. Sudipto Sarkar appearing for the respondent submits that the respondent has been marketing the product from April, 1989 and there has been no objection on the part of the petitioner until this application is taken out. It may be noted, however, that the petitioner instituted a suit challenging the respondent's mark being Suit No. 79 of 1989 in this Court and the petitioner also took out a similar interlocutory application as the present one in the said suit. The petitioner, however, pleaded that a part of cause of action arose within the jurisdiction and a part of the cause of action arose outside the jurisdiction. But unfortunately the petitioner omitted to ask for leave under Clause 12 of the Letters Patent before instituting the said suit. The petitioner, however, was advised to withdraw the said suit and with leave of the Court has instituted the present suit on the self same cause of action with leave under Clause 12 of the Letters Patent. The earlier petition taken out by the petitioner was for the same relief as has been asked for in this petition and was taken out in January, 1990. 10. MR. Sarkar says that even then there has been a delay on the part of the petitioner in taking out the application. MR. Sarkar has submitted that apart from this technical objection, on merits as well as the petitioner has no cause. MR. Sarkar submits that the two marks are completely different and again relying on the Supreme Court decision referred to above, says that the marks must be compared as a whole and it is not right to take a portion of the word or mark for the purpose of making a comparison. Mr. Sarkar has also cited several decisions. First, on the question of delay he has cited an English decision Bravington v. Barrington, 1957 RPC 183. It appears that the court did not dispose of the application only on the ground of the delay but also on consideration of merits as well. Mr. Sarkar has also cited the decision of Bombay High Court reported in AIR 1951 Bom. 147 , House of Lords decisions reported in 22 RPC 601, 34 RPC 63. It appears that the court did not dispose of the application only on the ground of the delay but also on consideration of merits as well. Mr. Sarkar has also cited the decision of Bombay High Court reported in AIR 1951 Bom. 147 , House of Lords decisions reported in 22 RPC 601, 34 RPC 63. He has also cited few other decisions, 1976 RPC 653, 1981 RPC 61. 11. MR. Sarkar, however, on the facts of the case has argued that in the present case the consumer asking for petitioner's products will ask for "Locula" Eye Drop. He will not ask for eye drop manufactured by the petitioner. Similarly, in case of respondent's mark the people will ask for Eye Drop and, if offered the consumer will purchase the same taking it as eye drops of particular description. According to MR. Sarkar, in the present case the essential features is the brand name "Locula" and not the colour or design or set-up as alleged by the petitioner. 12. MR. Sarkar has also argued that on the petitioner's own showing the mark was in force upto period prior to April, 1989 and the same has not yet been renewed. MR. Sarkar has also submitted that in any event, the respondent's product is only confined in the markets in Delhi and Punjab and only one consignment has been sent to Calcutta recently. According to MR. Sarkar, the petitioner's product is not, however, that popular in the northern India or in Delhi and Punjab. I have heard and considered the respective submissions of the parties. At this stage, without any further evidence, it is not possible to say exactly whether the marks are deceptively or confusingly similar to each other, or that the carton and labels are also deceptively or confusingly similar. It may be noted that the colour combination may look same or similar and also the logo, not exactly. But in the petitioner's marks the brand name "Locula" 20%, 10% or 30% is very prominent. It appears to be very prominent, striking the eye of the persons accustomed to the mark of the petitioner. The people asking for petitioner's eye drops would ask for 'Locula' eye drops, and when he finds this brand name on the carton or the label, he would take it as the brand he was asking for. 13. It appears to be very prominent, striking the eye of the persons accustomed to the mark of the petitioner. The people asking for petitioner's eye drops would ask for 'Locula' eye drops, and when he finds this brand name on the carton or the label, he would take it as the brand he was asking for. 13. THE Privy Council in case of Thomas Bear and Sons (India) Ltd. v. Prayag Narain and another, AIR 1940 Privy Council 86, has, inter alia, observed that the test of comparison of the marks side by side is not a sound one, since a purchaser will seldom have the two marks actually before him when he makes his purchase; the marks with many differences may yet have an element of similarity which will cause deception, more especially if the goods are in practice asked for by a name which denotes the mark or the device on it. 14. IN the present case, as I feel, the purchaser accustomed to or familiar with the petitioner's product or mark will ask for it by the name 'Locula', which denotes the petitioner's mark, and when he will have that brand 'Locula' eye-drops, he will take it to be the petitioner's products and of no others. I have already indicated above, that this brand name 'Locula', to my mind is an essential feature of the petitioner's product, which is conspicuously absent on the respondent's mark. Therefore, prima facie, it does not appear, taking the two marks side by side, that one is deceptively similar to the other. This is, however, a first impression. The points raised by the petitioner will have to be investigated on the basis of further evidence at the trial of the suit. 15. AT this stage, I think that for ends of justice, the respondents should be restrained from marketing the products under the said label or colour combination in any place other than the States of Delhi, Punjab and Haryana. 16. I therefore, dispose of this application by making the following order. There will be an order of injunction restraining the respondents from marketing the said products under the said label and colour combination being Sulphacetamide Eye Drops 20% B.P. or any other percentage in any part of the country except in the State of Delhi, Punjab and Haryana. 16. I therefore, dispose of this application by making the following order. There will be an order of injunction restraining the respondents from marketing the said products under the said label and colour combination being Sulphacetamide Eye Drops 20% B.P. or any other percentage in any part of the country except in the State of Delhi, Punjab and Haryana. The respondents will submit a statement of account in respect of the sales of the products in the said States to its Advocate on record and such statement is to be furnished once a month until further order. 17. THERE will be no order as to costs. 18. LEARNED counsel for the respondents asked for stay of operation of this judgement and such prayer is refused. All parties to act on a signed copy of the operative part of this judgement and order on the usual undertaking.