Judgment :- Appellants are engaged in the business of marketing medicinal and pharmaceutical preparations. The first appellant is the registered proprietor of the Trade mark 'EMULGEL' in India which stands registered in its name with effect from 4.11.1987. Pursuant to the licence granted by the first appellant, the second appellant is manufacturing and marketing medicines under the Trade Mark 'EMULGEL' in India. The appellants claimed that they have acquired a common law right in the said trade mark 'EMULGEL'. In and around November, 1992, they came to know that the respondent is manufacturing and marketing a product called 'EMUGEL'. On 4.11.1992, the appellants caused a letter to be issued to the respondent to cease and desist from using the trade mark 'EMUGEL'. In their letter dated 12.11.1992 the respondent repudiated the claim of the appellants. A further letter was sent to the respondent on 2.7.1993. Thereafter, in his letter dated 7.7.1993 the respondent assured the appellant that he would stop using the name 'EMUGEL' and switch over to an alternative brand name. However, the alternative brand name he adopted is 'EUGEL' by which he has only dropped the letter M from the expression 'EMUGEL'. What is significant is that while the respondent changed over to 'EMUGEL' by dropping the letter 'M' from 'EUGEL' he also simultaneously changed the colour scheme and geometric design of the carton and tube similar to those of the appellants. The usage of the name 'EUGEL' with the said colour scheme and geometric design would create deception or confusion to the appellants' product 'EMULGEL', Besides, products under the Trade Mark 'EMUGEL' manufactured by the respondent are still available in the market and the respondent continues to solicit orders and supply goods under the trade mark 'EMUGEL'. The use of the said trade name is prohibited under Sections 28 and 29 of the Trade and Merchandise Marks Act, 1958. On the original side of the High Court, the appellants laid C.S. No. 896 of 1994 seeking permanent injunction restraining the respondent from manufacturing, marketing, distributing or selling any pharmaceutical or allied goods by the use of the mark 'EMUGEL', 'EUGEL' or any other mark or name deceptively similar thereto or otherwise infringing the applicants' aforesaid trade mark 'EMULGEL'. 2. On the original side of the High Court, the appellants laid C.S. No. 896 of 1994 seeking permanent injunction restraining the respondent from manufacturing, marketing, distributing or selling any pharmaceutical or allied goods by the use of the mark 'EMUGEL', 'EUGEL' or any other mark or name deceptively similar thereto or otherwise infringing the applicants' aforesaid trade mark 'EMULGEL'. 2. During the pendency of the suit, the appellants sought and obtained an ad-interim injunction restraining the respondent and his men from in any manner infringing the appellants' trade mark 'EMULGEL' and selling the goods under the 'EMUGEL' and or 'EUGEL' or any other mark deceptively similar to the appellants' mark 'EMULGEL', pending disposal of the suit. 3. The respondent pleaded that he is also a reputed manufacturer and seller of pharmaceutical medicinal preparations of various kinds. In the early part of the year 1992, he adopted the trade mark 'MOBINAK EMUGEL' for one of such preparations containing DICLOFENAC DIETHHYL AMMONIUM EMULSION in Aqueous Gel Base. In keeping with the well accepted practice in the pharmaceutical trade to indicate that the preparation is formulated as an emulsion in gel base, he coined EMUGEL by combining parts of the partly descriptive and generic words 'Emulsion' and 'Gel'. Production of preparations bearing the said trade mark MOBINAK EMUGEL, commenced in July 1992. After the respondent's mark MOBINAK EMUGEL was in use for several months, the appellants issued a notice dated 4.11.1992 calling upon him to desist from using the word EMUGEL. To this notice, the respondent sent a reply dated 12.11.1992, declining to comply the requirements of the appellants, pointed out that there was no conflict. The respondent continued the use of the mark MOBINAK EMUGEL. However, after a lapse of eight months, the appellants chose to issue a notice dated 2.7.1993. With a view to purchase peace, the respondent decided to go in for an alternative mark and informed the appellants accordingly. And pursuant to the afore-mentioned letter, the respondent did change over from MOBINAK EMUGEL to MOBINAK EUGEL and commenced marketing the said preparation bearing the alternative mark from October, 1993 openly and exclusively to the knowledge of the appellants. The respondent has sold its preparation bearing the mark MOBINAK EUGEL from October, 1993 upto July, 1994 to the value of Rs. 49 lakhs. Substantial amounts have also been spent by them in promoting the sale of this product. The respondent has sold its preparation bearing the mark MOBINAK EUGEL from October, 1993 upto July, 1994 to the value of Rs. 49 lakhs. Substantial amounts have also been spent by them in promoting the sale of this product. The appellants are guilty of laches in not coming forward with any action for about eight months thereafter. Besides, a mere glance at the two products VOVERAN EMULGEL of the appellants and MOBINAK EUGEL of the respondent would establish that they are distinct and different from each other. 4. By his order dated 9.12.1994 a learned single Judge of this Curt (Lakshmanan, J.) has dismissed the injunction application and vacated the ad-interim injunction granted, holding that the appellants have not made out a prima facie case not they have shown any injury muchless irreparable injury. Besides, the balance of convenience is also not in their favour. This appeal is directed against the said order. 5. There is no dispute that the product manufactured by both the parties is DICLOFENAC DIETHYL AMMONIUM. While the appellants market their product under the trade name VOVERAN EMULGEL, the respondent uses the trade name MOBINAK EUGEL. The first is described as "percutaneous anti inflammatory anaigesic"; the second is shown as "topical analgesic and anti inflamatory" in their respective tubes and cartons. It is the grievance of the appellants that the use by the respondent of the words EMUGEL/EUGEL alongwith the colour scheme and packing design adopted by him for his product infringes upon their copyright. However, learned single Judge has negatived the claim of the appellants for these reasons. The marks in actual use are VOVERAN EMULGEL and MOBINAK EUGEL. They are not what the appellants have made out in their affidavit and plaint. Neither the word EMULGEL nor the world EUGEL is ever used in isolation. The word VOVERAN is also used in conjunction with the word EMULGEL. Similarly the word EUGEL is prefixed by the word MOBINAK. This is demonstrated by the specimens of the actual products produced by the respondent in court and the product literature contained inside the cartons. Any one seeing the cartons and the tube would only see the prominent words VOVERAN and MOBINAK respectively and there is no deception or confusion since the marks are distinguishable by the prominent words. This is demonstrated by the specimens of the actual products produced by the respondent in court and the product literature contained inside the cartons. Any one seeing the cartons and the tube would only see the prominent words VOVERAN and MOBINAK respectively and there is no deception or confusion since the marks are distinguishable by the prominent words. The well-known pharmaceutical publications such an DRG and the Indian Pharmaceutical Guide list the products as VOVERAN and MOBINAK and not as VOVERAN EMULGEL and MOBINAK EUGEL. The products in question are to be administered under the medical supervision and are not purchased by the patients over the counter. The products can be dispensed only under the Doctor's prescription and sold by the licensed dealers. Therefore, the possibility of deception is totally negatived. The marks are in fact 'EU' and 'EMUL' with the suffix GEL attached, the suffix itself being purely descriptive and open to the trade to use. The suffix GEL is a generic term which refers to one of the ingredients in the product. No one can claim a monopoly for the word GEL. It is used in the pharmaceutical and the consumer product industry in its ordinary dictionary meaning. In the Trade Marks Register there are many Marks with their suffix GEL. So the word GEL has no Trade Mark character. The word GEL being both descriptive and common to the trade, the effective distinguishing features of the two marks in this case of MOBINAK and VOVERAN . In the words EUGEL and EMULGEL, the distinguishable features are 'EU' on the one hand and the 'EMUL' on the other, which are totally different from each other. 6. The word GEL being both descriptive and common to the trade, the effective distinguishing features of the two marks in this case of MOBINAK and VOVERAN . In the words EUGEL and EMULGEL, the distinguishable features are 'EU' on the one hand and the 'EMUL' on the other, which are totally different from each other. 6. At the outset, we may point out that under Section 28 of the Trade and Merchandise Marks Act, 1958, the registration of a trade mark shall give to the registered proprietor of the Trade mark the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act and under Section 29 of the Act, a registered mark is infringed by a person who, not being the registered proprietor of the trade mark or a registered user thereof using by way of permitted use, uses in the course of trade a mark which is identical with, or deceptively similar to, the trade mark, in relation to any goods in respect of which the trade mark is registered and in such manner as to render the use of the mark likely to be taken as being used as a trade mark. This section gives an absolute protection to the appellants. Once a trade mark is violated, the proof of intention becomes immaterial. In an action for infringement of a trade mark relief shall not be granted to the plaintiff if the defendant establishes that the use of the mark is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered and some person having the right, either as registered proprietor or as registered user, to use the trade mark. In RUSTON AND HORNBY LIMITED V. ZAMINDARA ENGINEERING CO., the Supreme Court brought out the distinction between passing off and infringement. In RUSTON AND HORNBY LIMITED V. ZAMINDARA ENGINEERING CO., the Supreme Court brought out the distinction between passing off and infringement. When action for passing off is a common law remedy being in substance an action for deception that is passing off a person of his own goods as those of another, an action for infringement is a statutory remedy conferred on the registered proprietor of a registered trade mark for the vindication of the exclusive right to the use of the trade mark in relation to those goods. In a passing off action, the issue is, whether the defendant is selling goods so marked as to be designed or calculated to lead purchasers to believe that they are the plaintiff's goods ? But in an infringement action the issue is whether the defendant is using a mark which is the same as or which is a colourable imitation of the plaintiff's registered trade mark ? It very often happens that although the defendant is not using the trade mark of the plaintiff, the get-up of the defendant's goods may be so much like the plaintiff's that a clear case of passing off would be proved. It is on the contrary conceivable that although the defendant may be using the plaintiff's mark the get-up of the defendant's goods may be so different from the get-up of the plaintiff's goods and the prices also may be so different that there would be no probability of deception of the public. Nevertheless, in an action on the trade mark, that is to say, in an infringement action, an injunction would issue as soon as it is proved that the defendant is improperly using the plaintiff's mark. The action for infringement is dependant upon the validity of the registration and subject to other restrictions laid down in sections 30, 34 and 35 of the Act. On the other hand the gist of a passing off action is that A is not entitled to represent his good as the goods of B but it is not necessary for B to prove that A did this knowingly or with any intent to deceive. It is enough that the get-up of B's goods has become distinctive of them and there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. 7. It is enough that the get-up of B's goods has become distinctive of them and there is a probability of confusion between them and the goods of A. No case of actual deception nor any actual damage need be proved. 7. Thiru C.A. Sundaram, learned counsel for appellants challenges the reasonings of learned single Judge stating that the word EMULGEL is one invented by the first appellant for the unique formulation of emulsion on cream base used for the development of topical formulations. The respondent was selling an identical product under the mark EMUGEL. When the first appellant brought to the notice of the respondent of the infringement of his trade mark right, the respondent by its letter dated 7th July, 1993 undertook to stop production of MOBINAK EMUGEL and that he would switch over to alternative brand name. Thereafter, he adopted the mark EUGEL. What the respondent had done was to remove the letter 'M' from the word EMUGEL, and change the colour scheme and geometrical design of carton and tube to one that is deceptively similar to that of the appellants. Learned Judge took the view that after the change, the products of the parties are sold with the trade names VOVERAN EMULGEL and MOBINAK EUGEL, and therefore, there could not be any confusion Learned Judge has failed to notice that the registration was only for the mark EMULGEL and not VOVERAN EMULGEL. So, he should have considered whether the use by the respondent of the mark EUGEL is an infringement of the appellants' mark EMULGEL. 8. Learned counsel first submits that in BAYER PRODUCTS LTD. v. A. WANDER LTD., (1947 R.P.C. Volume 64, page 125) relied on by learned Judge the product therein was in respect of pharmaceutical preparation for internal use and for application to wound and the skin. The appellant therein applied for registration of the Trade Mark DIASIL. The application was opposed by the proprietor of the mark ALASIL already registered in respect of chemical substances prepared for use in medicine and pharmacy. The Court held that there was no reasonable probability of confusion between the two brand names. There was no risk or visual confusion or any risk of phonetic confusion by mishearing on the telephone or otherwise. The Court held that there was no reasonable probability of confusion between the two brand names. There was no risk or visual confusion or any risk of phonetic confusion by mishearing on the telephone or otherwise. There one product was in respect of a pharmaceutical preparation for internal use and for application of the wounds and the skin, whereas the other preparation was similar to Asprin. Besides the court also took the view that there was no reasonable probability of confusion if the registration were limited to SULPHADIAZINE preparation. And registration was ordered in respect of those goods. And the court considered it as utmost importance that only a Doctor can order SULPHADIAZINE, that he must give a written prescription and that a Chemist cannot supply it without such a prescription. And that it is ensured that the article in question is only going to pass at that stage through the hands of skilled persons, who by their training, their experience and their knowledge would be most unlikely to refer to that drug in a way which would admit of any reasonable possibility of confusion. And there was no risk that a Doctor or the Chemist or the two of them in combination, by some carelessness in expression, some obscurity in handwriting, some ship of recollection or some careless mistake which would refer to the product in such a way as well lead the court to say that there is a reasonable probability of confusion. One would not expect the highly trained professional people to fall into that error. So we do not think that the ratio laid down therein is applicable to the facts of the present case. 9. The next decision which weighed with learned Judge in negativing the appellants' claim is ROCHE AND COMPANY v. MANNERS AND COMPANY . The appellant therein, a manufacturer and seller of pharmaceutical and chemical products, supplied for the registration of the Trade mark PROTOVIT in respect of multi vitamin preparation in liquid and tablet forms. Some six years later, respondent applied for registration of its PROTOVIT in respect of medicinal and pharmaceutical preparations and substances. It was urged on behalf of the appellant who opposed the registration that the respondent's mark so nearly resembled his mark as to be likely to deceive or cause confusion. The Supreme Court negative the plea holding that on comparison, they are not deceptively similar. 10. It was urged on behalf of the appellant who opposed the registration that the respondent's mark so nearly resembled his mark as to be likely to deceive or cause confusion. The Supreme Court negative the plea holding that on comparison, they are not deceptively similar. 10. In this connection, learned counsel for appellants point out that the ratio has been stated by the Supreme Court in para 11 in this manner : "The tests for comparison of the two word-marks were formulated by Lord Parker in Planotist Com. Ltd's. application (1906) 23 RPC 774 at p. 717 as follows :" * You must take the two words. You must Judge of them, both by their look and by their sound you must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances ; and you must further consider that is likely to happen if each of those trade marks is used in a normal was as a trade mark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be a confusion that is to say, not necessarily that one man will be injured and the other will gain illicit benefit, but that there will be a confusion in the mind of the public which will lead to confusion in the goods - then you may refuse the registration, or rather you must refuse the registration in that case. "It is necessary to apply both the visual and phonetic tests. In Artistoo Ltd. v. Rysta Ltd., 1945 RPC 65 at p. 72, the House of Lords was considering the resemblance between the two words "Aristoo" and "Rysta". The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. In Artistoo Ltd. v. Rysta Ltd., 1945 RPC 65 at p. 72, the House of Lords was considering the resemblance between the two words "Aristoo" and "Rysta". The view taken was that considering the way the words were pronounced in English, the one was likely to be mistaken for the other. Viscount Maughum cited the following passage of Lord Justice Luxmoore in the Court of Appeal, which passage, he said, he completely accepted as the correct exposition of the law :" * The answer to the question whether the sound of one word resembles too nearly the sound of another so as to bring the former within the limits of Section 12 of the Trade Marks Acts, 1951, must nearly always depend on first impression, for obviously a person who is familiar with both words will neither be deceived nor confused. It is the person who only knows the one word and has perhaps an imperfect recollection of it who is likely to be deceived or confused. Little assistance, therefore, is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllable, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. "It is also important that the marks must be compared as whole. It is not right to take a portion of the word and say that because that portion of the word differs from the corresponding portion of the word in the other case there is no sufficient similarity to cause confusion. The true test is whether the totality of the proposed trade mark is such that it is likely to cause deception or confusion or mistaken in the minds of persons accustomed to the existing trade mark. Thus, in Lavroma case, Tokalon Ltd. v. Davidson and Co., 32 RPC 133 at p. 136, Lord Johnson said :" * ..We are not bound to scan the words as we would in a question of comparation literatum. It is not a matter for microscopic inspection, but to be taken from the general and even casual pointed of view of a customer walking into a shop. It is not a matter for microscopic inspection, but to be taken from the general and even casual pointed of view of a customer walking into a shop. "However, in arriving at their conclusion in that case, the Supreme Court in para 12 has observed as under : "In order to decide whether the word" DROPOVIT"is deceptively similar to the word" PROTOVIT" * each of the two words must, therefore, be taken as a whole word. Each of two words consists of eight letters, that the last three letters are common, and in the uncommon part of the first two are consonants, the next is the same vowel 'o', the next is a consonant and the fifth is again a common vowel 'o'. The combined effect is to produce an alliteration. The affidavit of the appellant indicate that the last three letters "VIT" is a well-known common abbreviation used in the pharmaceutical trade to denote Vitamin preparations. In this affidavit dated January 11, 1961 Frank Murdooh, has referred to the existence on the Register of about 57 trade marks which have the common suffix "VIT" indicating that the goods are vitamin preparations. It is apparent that the terminal syllable "VIT" in the two marks is both descriptive are common to the trade. If greater regard is paid to the uncommon element in these two words, it is difficult to hold that one will be mistaken for or confused with the other. The letters 'D' and 'P' in "DROVIT" and the corresponding letters 'P' and 'T' in "PROTOVIT" cannot possibly be slurred over in pronounciation and the words are so dissimilar that there is no reasonable probability of confusion between the words either from the visual or phonetic point of view. "According to learned counsel, what is prohibited in paragraph 11 appears to have been adopted in paragraph 12. 11. However, a three Judges Bench of the Supreme Court has held in KAVIRAJ PANDIT DURGA DUTT SHARMA v. NAVARATNA PHARMACEUTICAL LABORATORIES 29 that" 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. 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 some times been raised as to whether the words "or cause confusion" introduced any element which is not already covered by the words "likely to deceive" and it has some times 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 evidenced 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. In that case, the mark of the respondent which is stated to have been infringed by the appellant is the mark of Navaratna Pharmaceutical Laboraties. In that case, the mark of the respondent which is stated to have been infringed by the appellant is the mark of Navaratna Pharmaceutical Laboraties. The mark of the appellant which the respondent claimed as a colourable imitation of that mark is "Navaratna Pharmacy". It was argued that "Navaratna" which constituted an essential part or feature of the Registered Trade Mark was a descriptive word in common use and that if the use of this word in the appellant's mark were disregarded, there would not be enough material left for holding that the appellant had used the Trade mark which was deceptively similar to that of the respondent. The Supreme Court pointed out that the Trade Mark to be compared with that used by the appellant is the entire registered mark including the word 'Navaratna'. Where common marks are included in the trade marks to be compared or in one of them, the proper course is to look at the marks as a whole and not to disregard the parts which are common. Their Lordships have only reiterated the ratio that has been laid down by the Three Judges Bench in these terms : "You must take the two words. You must Judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. It is necessary to apply both the visual and phonetic tests. Little assistance is to be obtained from a meticulous comparison of the two words, letter by letter and syllable by syllabus, pronounced with the clarity to be expected from a teacher of elocution. The Court must be careful to make allowance for imperfect recollection and the effect of careless pronunciation and speech on the part not only of the person seeking to buy under the trade description, but also of the shop assistant ministering to that person's wants. It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and any that because that portion of the word differs from the corresponding portion of word in the other case there is no sufficient similarity to cause confusion. It is also important that the marks must be compared as a whole. It is not right to take a portion of the word and any that because that portion of the word differs from the corresponding portion of word in the other case there is no sufficient similarity to cause confusion. The true test it whether the totality of the proposed Trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the existing Trade mark. We are not bound to scan the words as we would in a question of comparatio literarum. It is not a matter of for microscopic inspection, but to be taken from the general and even casual point of view of a customer walking into a shop." * While so, the meticulous comparison of the two rival Trade Marks herein ignoring the common word "GEL" by learned Judge on the authority of the Judges Bench of the Supreme Court in para 12 of ROCHE AND COMPANY v. MANNERS AND COMPANY does not appear to be correct. 12. In AMRITDHARA PHARMACY v. SATYA DEO an application for the registration of trade name "Lakshamandhara" in respect of a medicinal preparation for the alleviation of various ailments was opposed by the proprietors of the trade name "Amritdhara", which was already registered as trade name in respect of similar medicinal preparation of the opponents. On the question whether the trade name "Lakshmandhara" was likely to deceive the public or cause confusion to trade, the Supreme Court pointed out that the Trade Mark Act, 1940 does not lay down any criteria for determining what is likely to deceive or cause confusion. Therefore, every case must depend on its own particular fact, and the value of authorities lies not so much in the actual decision as in the tests applied for determining what is likely to deceive or cause confusion. As per the Apex Court, a Trade Mark is likely to deceive or cause confusion by its resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. As per the Apex Court, a Trade Mark is likely to deceive or cause confusion by its resemblance to another already on the Register if it is likely to do so in the course of its legitimate use in a market where the two marks are assumed to be in use by traders in that market. "For deceptive resemblance two important questions are : (1) who are the persons whom the resemblance must be likely to deceive or confuse, and (2) what rules of comparison are to be adopt in judging whether such resemblance exists. As to confusion, it is perhaps an appropriate description of the state of mind of a customer who, on seeing a mark thinks that it differs from the mark on goods which he has previously bought, but is doubtful whether that impression is not due to imperfect recollection." * Applying the afore-said tests to the facts of that case, the Supreme Court took the view that such medicinal preparation will be purchase mostly by people who instead of going to a Doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literature as well as illiterate. The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two composite words "Amritdhara" and "Lakshmandhara" is, likely to deceive or cause confusion. We must consider the over all similarity of the two composite words "Amridhara" and "Lakshmandhara". The customer would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. And the use of the word "dhara" which literally means "current or stream" is not by itself decisive of the matter. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity of the names having regard to the nature of the medicine he is looking for with a some-what vague recollection that he had purchased a similar medicine on a previous occasion with a similar name. The Trade Mark is the whole thing - the whole word has to be considered. The Trade Mark is the whole thing - the whole word has to be considered. And it is not right to take a part of the word and compare it with a part of the other word ; It is dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word. 13. In PARLE PRODUCTS (P) LTD. v. J.P. AND COMPANY, MYSORE (AIR 1972 Supreme Court-1359) the appellants were manufacturers of biscuits under the registered Trade mark "Gluco". Another registered Trade mark of there is a wrapper with its colour scheme, general get up and entire collection of words registered under the Trade Marks Act. The wrapper was used in connection with the sale of their biscuit "Parle's Gluco Biscuits" printed on the wrapper. They claimed that the respondents therein were selling biscuits in a wrapper which was deceptively similar to their registered Trade mark. The respondents pleaded that there was a good-deal of difference in the design of the wrapper from that of the plaintiffs. Held 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 right are violated. 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 in an action for infringement. Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same. A person acquainted with one mark, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquaintedIt would be too much to except that person dealing with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing. Marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole. Moreover, variations in detail might will be supposed by customers to have been made by the owners of the trade mark they are already acquainted with for reasons of their own. If the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. The words "Gluco Biscuits" in one and "Glucose Biscuits" on the other occupy a prominent place at the top with a good deal of similarity between two writings. Any one in our opinion, may easily the one for the other if it is not careful enough to note the peculiar features of the two marks. "And in view of the Supreme Court to decide the question as to whether the plaintiffs' right to a Trade mark has been infringed in a particular case, the approach must not be that in an action for passing off goods of the defendant as end for those of the plaintiff. In order to come to the conclusion whether one mark is deceptively similar to another, the broad and essential features of the two are to be considered. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. They should not be placed side by side to find out if there are any differences in the design and if so, whether they are of such character as to prevent one design from being mistaken for the other. It would be enough if the impugned mark bears such an overall similarity to the registered mark as would be likely to mislead a person usually dealing with one to accept the other if offered to him. It is of no use to note on how many points there is similarity and in how many others there is absence of it. 14. In CHINNA KRISHNA CHETTIAR v. SRI AMBAL AND COMPANY the parties were manufacturers and dealers in snuff. The registered trade mark of the respondent consisted of a label containing the device and Goddess Sri Ambal seated out a globe floating on water enclosed in a circular frame with the legend "Sri Ambal Parimal Snuff" at the top of the label, and the name and address "Sri Ambal and Co., Madras" at the bottom. The mark of appellant consisted of a label containing three penals. The first and the third panels contained in Tamil, Devanagri, Telugu and Kannada the equivalents of the words "Sri Andal Madras Snuff". The central panel contained the picture of Goddess Sri Andal and the legend "Sri Andal". Held there was a striking similarity of the affinity of the sound between the words "Andal" and "Ambal" and there was a real danger to cause confusion between the two marks. 15. In K.R.C. Chetty v. K.V. Mudaliak, 1974 AIR(Madras) 7, the appellants' application for registration of their snuff "Radha's Sri Andal" manufactured by them was opposed by the respondent who was trading under the name and style of "Sri Ambal Snuff". A Division Bench of this Court has held :" The question of consideration now will be whether by the addition of the word "Radha" to the objected legend makes a vital difference. When the two marks are compared side by side the question will be whether the addition of the word will make any vital difference. As observed by Stamp J. in 1969 RPC 192 at page 109. "Where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion" * . As observed by Stamp J. in 1969 RPC 192 at page 109. "Where imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion" * . We are of opinion that the combination of the two words "Radha's Sri Andal" is likely to be taken by snuff users as the snuff manufactured and marketed by the appellant originally as "Sri Andal". 16. In CORN PRODUCTS REFINING CO. v. SHANGRILA FOOD PRODUCTS LTD., the Supreme Court opined that the "Trade marks" Gluvita"used with reference to biscuits and" Glucovita "used with reference to glucose, were likely to cause deception or confusion." * And Their Lordships laid down the text in such case in this manner : "The question whether the two marks are likely to give rise to confusion or not is a question of first impression It is for the court to decide that question. English cases proceeding on the English way of pronouncing an English word by English man which is not always the name, may not be of much assistance in our country in deciding questions of phonetic similarity. It is well recognised that in deciding a question of similarity between two marks, the marks have to be considered as a whole." * 17. On the basis of the ratio laid down in the cases cited above, we are unable to agree with the view of learned Judge as well as the contention of Mr. Vasuntha Rai, learned senior counsel for respondent that any one seeking the product would notice only the brand names OVERAN and MOBINAK respectively. Considering the way the words EMULGEL and EMUGEL or EUGEL are pronounced and the manner in which they appear on the product, we do not think that one is not likely to be mistaken for the other. In deciding the question of similarity between the two marks we have to approach if from the point of view of a man of average intelligence and of imperfect recollection. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably to cause a confusion between them. Certainly the phonetic, visual and basic idea of the words EMULGEL and EMUGEL resemble too nearly each other. To such a man the overall structural and phonetic similarity and the similarity of the idea in the two marks is reasonably to cause a confusion between them. Certainly the phonetic, visual and basic idea of the words EMULGEL and EMUGEL resemble too nearly each other. Making allowance for imperfect recollection and careless pronunciation and speech, we are inclined to hold that the totality of the respondent's mark is such that it is likely to cause deception or confusion or mistake in the minds of persons accustomed to the Trade mark of the appellant. Besides, Learned Judge has erred is not noticing that the registration was only for the mark EMULGEL and not VOVERAN EMUGEL. After obtaining the registration of the mark EMULGEL in their name, the exclusive statutory right vests with the appellants under section 28 of the Trade and Merchandise Marks Act, 1958. In an infringement action, it is immaterial as to how the registered marks are being used by a registered proprietor. What we are concerned is whether the use of the expression "EUGEL" or "EMUGEL" is deceptively similar to that of EMULGEL. We have to find out whether the word EMULGEL simpliciter has been imitated by the respondent by using the word EUGEL or EMUGEL so as to cause confusion. If what have to be considered is a side by side comparison, the additional word would have a vital significance. When the imperfect recollection is relevant what has to be considered is how far the additional word is significant to prevent imperfect recollection and the resultant confusion. The question which arises is whether the coining of the letter "EUGEL" would still cause confusion, with the appellant's trade mark "EMULGEL". True it is that courts have always set their face against conferring upon the proprietor of a trade mark a monopoly wider than what is justified. However, we have to bear in mind that adoption of a single leading characteristic or essential feature of the plaintiff's trade mark may constitute an infringement, notwithstanding that each mark contains other matter which distinguish one from the other. 18. Learned Judge has refused relief to the appellant on the ground that the term GEL is a generic one which refers to one of the ingredients in the product. No one can claim monopoly for the word GEL. There are many products registered with the suffix GEL. 18. Learned Judge has refused relief to the appellant on the ground that the term GEL is a generic one which refers to one of the ingredients in the product. No one can claim monopoly for the word GEL. There are many products registered with the suffix GEL. So the word GEL has to trade mark character. Learned counsel for the respondent also brought to our notice that the word GEL is a generic term used in medicinal preparations. It refers to ingredient or component and not word coines. It is squarely used in all common place items including tooth pastes, e.g. Colgate Gel, Cibaca Gel, Pirox Gel, Declonac Gel, Nactco Gel, Neodal Gel, Flatugel Magagel, Gastro Gel, Citanta Gel, Alta Planto Gel. It is descriptive and indicates an ingredient in each product. No one can claim monopoly for the word GEL which means a soluble base. There are a number of marks on record in the Trade Marks register with the suffix Gel as above. As the word GEL is common to that trade, the use of the mark EUGEL by the respondent would not infringe the trade mark EMUGEL of the appellant. The respondent's mark originally contained the word EMUGEL. This word was coined from the initial letters of the words Emulsion and Gel, since the respondent's preparation was an Emulsion in Gel form. While GEL means a jelly like substance EMULSION is defined as a fine dispersion of one liquid in another. When one liquid will not mix with another, but is instead suspended in small drops in the second liquid it is called an emulsion. If greater regard is paid to the uncommon elements in these two words, it is difficult to hold that one will be mistaken or confused with the other. He placed reliance in COCA COLA COMPANY OF CANADA LTD. v. PEPSI COLA OF CANADA LIMITED (1942 R.P.C. Volume 59, page 127). There plaintiff's company, owner of the registered trade mark "Coca Cola" took objection for the defendant's company registering its beverage under the trade mark Pepsi Cola in the same area as it is an infringement of their trade mark right. v. PEPSI COLA OF CANADA LIMITED (1942 R.P.C. Volume 59, page 127). There plaintiff's company, owner of the registered trade mark "Coca Cola" took objection for the defendant's company registering its beverage under the trade mark Pepsi Cola in the same area as it is an infringement of their trade mark right. The Judicial Committee of the Privy Council held that the word "Cola" had been adopted in beverages in Canada and having regard to its facts and all the relevant circumstances the defendant's mark was not similar to the plaintiff's mark and there was no infringement We do not think that the ratio therein applicable to the facts of the present case. For the Privy Council took the view that "Cola" appears to be an expression which might properly be used in association with beverages and in particular with that class of non-alcoholic beverages known by the description soft drinks. Similarly, there is no force in the contention of learned counsel for the respondent that there are a number of products such as Colgate Gel and Cibaca Gel having the letters GEL as their suffixes. It is significant to note that in these cases the expression GEL is a separate word, whereas in EMULGEL and EUGEL they are part and parcel of the product name. The dispute is about the part and parcel of the two rival word marks. In deciding the question of similarity between two rival marks they have to be considered as a whole. One part of the word cannot be taken out and compared with the part of the other word. There may be two words which in their component points are widely differed but which when read or spoken together may represent something which is so similar as to lead inevitably to confusion. The correct method to adopt is not to divide the word and seek to distinguish a portion of it from a portion of the other word. The true test is whether the totality of the proposed trade mark is such that it is likely to cause mistake or deception or confusion in the minds of persons accustomed to the existing trade mark. Where both the words are invented and both contained descriptive element, one cannot disregard such element of the words which are descriptive and compare only with the remaining parts of the words. Where both the words are invented and both contained descriptive element, one cannot disregard such element of the words which are descriptive and compare only with the remaining parts of the words. The question of likelihood of confusion has to be decided by comparison of the mark as a whole. 19. The next factor which weighed with the Learned Judge in negativing the appellants' contention is that both the products in question can be sold only on the prescription of a registered medical practitioner as indicated on the cartons themselves. So the possibility of any deception or confusion is ruled out. For this he relied on the observations of the Court of Appeal in the matter of an Application by Bayer Products Ltd., and in the matter of an Opposition by A. Wander (1947) Reports of Patent, Design and Trade Mark Cases - Volume LXIV page 125): "Once you get the position that only a Doctor can order sulphadiazie, that he must give a written prescription and that a chemist cannot supply it without such a prescription, you ensure that the article in question is only going to pass at that stage through the hands of skilled persons who by their training, their experience and their knowledge would be most unlikely to refer to that drug in a way which would admit of any reasonable possibility of confusion" * . On the other hand, as rightly urged by learned counsel for appellant, we have to bear in mind the circumstances prevailing in our country. Although certain medicines can only be sold on Doctor's prescription, nevertheless, pharmacies sell the said products without insisting on Doctor's prescription. Further, when the Chemists would have to decipher the prescription, there is every likelihood of mistaking one product for the other. 20. In RANBAXY LABORATORIES LTD. v. DUA PHARMACEUTICALS PVT. LTD. the dispute was between the users of two trade marks "CALMPOSE" and "CALMPROSE". It was contended therein that the said medicines can only be sold on the Doctor's prescription and, therefore, there can be little likelihood of confusion. Held - "It is true that the said drugs are supposed to be sold on Doctor's prescription, but it is not unknown that the same are also available across the counters in the shops of various chemist. Held - "It is true that the said drugs are supposed to be sold on Doctor's prescription, but it is not unknown that the same are also available across the counters in the shops of various chemist. It is also not unknown that the chemists who may not have "CALMPOSE" may pass off the medicine "CALMPROSE" to an unwary purchaser as the medicine prepared by the plaintiff. The test to be adopted is not the knowledge of the Doctor, who is giving the prescription. The test to be adopted is whether the unwary customer who goes to purchase the medicine can make a mistake" 20. In ASTRA-IDL LIMITED v. TTK PHARMA LTD. the question arose whether the word "BETALOC" was deceptively similar to the word "BETALONG". BETALOG is used in connection with pharmaceutical preparations. A single Judge of the Bombay High Court has held following the Ranbaxy Laboratories Ltd., that "In the present circumstances, Doctor's prescription factor has lost its importance since the reality of the situation cannot be ignored. In India scheduled drugs which are to be sold under Doctor's prescription are even sold without production of Doctor's prescription and as such reduce the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The Court cannot close its eyes to be existing circumstances and judicial notice of the factual aspects in existence has to be taken. In case where the fact of the medicines being sold on Doctor's prescription has been taken into consideration for deciding whether there was no liklihood of confusion being created, the marks were not visually, phonetically and structurally similar. In the instant case the two marks 'Betaloc' and 'Betalong' being visually, phonetically and structurally similar and so close to each other than it outweighs the weightage to be given to the factor that the goods are scheduled drugs. The two marks are to be compared as a whole and the preffix 'Beta' cannot be ignored in the matter of such comparison" 22. Learned counsel for the respondent sought to sustain the order of learned single Judge by pleading that there are laches on the part of the appellant in moving the court in enforcement of the trade mark right. Though the appellants were aware that the respondent was continuing the use of mark MOBINAK EMUGEL on 12.11.1992, they sought to issue notice only on 2.7.1993. Though the appellants were aware that the respondent was continuing the use of mark MOBINAK EMUGEL on 12.11.1992, they sought to issue notice only on 2.7.1993. Their inaction for these 8 months constitutes lapse on their part of disentitle them for the equitable remedy for injunction. Whereas, it is the argument of learned counsel for the appellants that they filed the application for registration of the trade mark EMUGEL on 4.12.1987. The application was advertised on 2.2.1993. Under Section 21 of the Trade and Merchandise Marks Act, 1958, a period of 4 months is to be given for any person to object to registration if he so desires. In the present case, there was no opposition and application was registered on 15.9.1993. Under Section 23 of the said Act, the application dates back to the date of filing of the application. Prior to the registration, the only right that was available to the appellants was to file a suit for passing off. It was only after the mark was registered that the appellant could file a suit for injunction as a registered proprietor gets an exclusive statutory right to the use of the registered trade mark under Section 28 of the aforesaid Act. We find merit in this claim of learned counsel for the appellants. And we are not persuaded to hold that there was any laches on the part of the Appellants in seeking their remedy against the infringement of trade mark. 23. In HINDUSTAN PENCILES PVT. LTD. v. M/s. INDIA STATIONERY PRODUCTS CO. for nearly 10 years no action was taken by the plaintiff. Held the plaintiffs were entitled to the relief of injunction. In M/s. POWER CONTROL APPLIANCES v. SUMEET MACHINES PRIVATE LTD., a Division Bench of the Supreme Court points out that "It is important to distinguish negligence and acquiescence. Acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be estopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence. Acquiescence is one facet of delay. If the plaintiff stood by knowingly and let the defendants build up an important trade until it had become necessary to crush it, then the plaintiffs would be estopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendant" Whereas, in this case, it cannot be said that there was any implied consent of the appellants for the user of the impugned trade mark by the respondent. 24. Learned counsel for the respondent pleaded that they are selling their preparations bearing the mark MOBINAK EUGEL from October, 1993. The turn over till July, 1994 was to the value of about Rs. 49 lakhs. Substantive amounts have also been spent by them in promoting the sale of the preparation and so the balance of convenience lies only in their favour. Whereas learned counsel for the appellants urged that the respondent had undertaken in his communication dated 7.7.93 that they have decided to stop production of MOBINAK EMUGEL from 1.8.93 and they would switch over to an alternative brand name. However, thereafter they had adopted the mark EUGEL, which we have seen would infringe the trade mark rights of the appellants. In an action of this nature, in the present circumstances, it would take a long-time for the parties to get the final verdict from ultimate forums. And if for any reasons the infringement has to be perpetuated, the purpose of this action would be defeated even if the appellants succeed some decades later. We are of the view that there is force in the arguments of the learned counsel for the appellants and hold that the balance of convenience lies only in their favour. 25. Yet another grievance of the learned counsel for the appellants is that the Government Analyist, Maharashtra, has held that the product EUGEL of the respondent is substandard and also served a notice on them. Therefore, should the respondent be permitted to use the mark EUGEL it would be against public interest as there is every chance of mistaking the appellants' reputation since persons would mistake the publication regarding the respondent's product being substandard as on reference to the appellants' products. Therefore, should the respondent be permitted to use the mark EUGEL it would be against public interest as there is every chance of mistaking the appellants' reputation since persons would mistake the publication regarding the respondent's product being substandard as on reference to the appellants' products. However, learned counsel for respondent points out that this notice has already been withdrawn. So this factor may not be of much assistance in holding the balance of convenience in favour of the appellants. 26. So we have no hesitation in holding that there is an infringement of the Trade Mark of the appellant and an injunction has to be issued in this case. 27. In the result, the appeal is allowed and the order of learned single Judge dated 9th December, 1994 in O.A. 736 of 1994 and Application No. 4871 of 1994 in C.S. No. 896 of 1994 are set aside. While O.A. No. 736 of 1994 is allowed and temporary injunction prayed for is granted, Application No. 4871 of 1994 seeking to vacate the interim injunction granted on 9.8.94 is dismissed. No cost throughout. Held : That the learned single Judge has failed to n otice that the registration held by the appellants was only for the mark 'EMULGEL' and not 'VOVERAN EMULGEL' so he should have considered whether the use by the Respondent of the mark EUGEL is an infringement of the appellants' mark EMULGEL as the adoption of a single leading characteristic of the plaintiff's trade mark may constitute an infringement, notwithstanding that each mark contains other matter which distinguishes one from the other. The learned single Judge was also wrong in refusing relief to the appellant on the ground that the word 'GEL' in the rival marks is a generic term used in medicinal products, as in deciding the question of similarity between the rival marks, they have to be considered as a whole. The Respondents objection as to delay and laches is also rejected as, the appellants could file a suit for injunction only after the mark is registered as the registered proprietor gets an exclusive statutory right to the use of the registered trade mark under Section 28 of the Act. The balance of convenience is also in favour of the appellants and as such there being infringement of the trade mark of the appellants, temporary injunction as prayed for is granted.