R. C. LAHOTI ( 1 ) THS defendants have come up in appealteclh^ a^gr. tived by the ordw dated 12-7-^c- passed by a learnedsingle Judat, of this Court (Onginal Side) confirming the ex parteorder of iahjnctionandreie:wgthe defendants applicahoil forvac . ition of the ex parts order of injunction dated 23-5-96 in alrxie mark -case. ( 2 ) THE plaintiff Himalaya Drug Co. is engaged in the manufacture and sale of Ayurvedic medical preparations since 1930. Oneof the preparations manufactured and marketed by the plaintiff isunder the trade mark Liv. 52. It is a liver tonic prescribed forliver disorder and to protect the liver against various dysfunction,damage and hepatotoxins. It is also advised for promoting appetiteand gn. wth. The trade mark Liv. 52 is registered since 10-7-57 inclass 5 as medical preparation for the treatment of disorders ofliver. The Liv. 52 label is also registered in class 5 as medicalpharmaceutical and Ayurvedic preparation and substances since25-2-87. ( 3 ) THE grievance of the plaintiff is against the use by the defendant of the trade mark LIV-T for its similar product the defendants are also manufacturers and merchants of Homoeopathic pharmaceutical preparations. ( 4 ) ACCORDING to the plaintiff the mark Liv. 52 is a coined word. It has acquired tremendous goodwill in the market and is associatedexclusively with the plaintiff. The defendants have come to themarket in 1996 with the mala ride and fraudulent intention of utilising the goodwill earned by the plaitiff The mark LIV-T isdeceptively similar with the mark Liv. 52 of the plaintiff and islikely to mislead or confuse those who are likely to purchase suchpreparations in the market. The plaintiff complains of infringementof its trade mark as also passing off by the defendants. ( 5 ) ACCORDING to the defendants they are renowned manufacturesof Homoeonathic and Ayurvedic preparations. They have a collaboration with BIRON Lab of France from whom they have obtainedthe technical know-how for many of its Homoeopathic formulations. They obtained a drug licence to manufacture its LIV-T formulationin the year 1987. They also applied for registration of the trademark LIV-T together with bits packaging carton in April, 1988. The application No. 490010 is pending with the Registrar of thetrade Marks. Ever since 1989 they have been marketing theirpreparations under their trade mark and figures of sales have risenfrom Rs. 96,843 in the year 1988-89 to Rs. 46,68,614 in 1995-96. 5. They also applied for registration of the trademark LIV-T together with bits packaging carton in April, 1988. The application No. 490010 is pending with the Registrar of thetrade Marks. Ever since 1989 they have been marketing theirpreparations under their trade mark and figures of sales have risenfrom Rs. 96,843 in the year 1988-89 to Rs. 46,68,614 in 1995-96. 5. 1 The defendants have also submitted that the word liv isan abbreviation of Liver, a human organ. There are a good numberof medicines already in the market associated with treatment of liverailments/disorders using the word Liv as suggestive of liver andprefixing or suffixing words or figures so as to confer a distinctionon the name associated with the manufacturer or trade". It is submitted by the defendant that mark LIV-T is neither similar to nordeceptive with the plaintiff s mark Liv-52. Such medicines cannotbe manufactured without a drug licence nor sold in retail withoutany medical prescription. It is not likely that the prosepective customer would be deceived or confused. The defendants have alsopleaded as their defence the delay in bringing the action by theplaintiff. 5. 2 The defendants have filed a certificate issued by Charteredaccountant certifying the figures of sales relied on by them. Thedefendants have also filed search report dated 31-5-96 which goesto show hundreds of medical/pharmaceutical preparations availablein the market with trade marks, one of the components whereof is liv, used in association with other wolds or figures. It is not necessary to reproduce entire result of search. It would suffice to mentiona few trade marks which are already in the market being used byseveral companies. LIV as an abbreviaiton of LIVER is a genericterm or a descriptive word its use suggesting reference of the preparation to liver. It has become public juris on which no one canclaim proprietary rights or right to exclusive use. 5. 3 Yet another plea raised by the defendants in their application seeking vacation of exparte order of injunction was based onnon-compliance by the plaintiff with the mandatory provisions oforder 39 Rule 3 Civil Procedure Code demanding instantaneous vacating of the orderof injunction. ( 6 ) THE learned single Judge has held against the defendants onall the relevant issues. This is how the defendants are in appeal. ( 7 ) THE following questions arise for decision : (1) Whether thetrade mark LIV-T can be said to be. ( 6 ) THE learned single Judge has held against the defendants onall the relevant issues. This is how the defendants are in appeal. ( 7 ) THE following questions arise for decision : (1) Whether thetrade mark LIV-T can be said to be. deceptively similar toorconfusing with the trade mark Li 7. 52; (2) Whether the provisionsof Order 39 Rule 3 are mandatory ? If so, what is the effectof non-compliance therewith ? ( 8 ) BEFORE dealing with he contentions of the parties we may refer to a few statutory provisions and settled principles in the filedof trade marks. In particular let us refer to what is a trade mark?how the rights are acquired therein? What is the effect of use ofcommon descriptive or generic words as trade mark or as one of theconstituents of the word or phrase constituting a trade mark? Howthe same principles Would apply and operate in the field of medicinaland pharmaceutical preparations with which we are concerned ? Whatamounts to infringement of a trade mark and passing off goods asthe goods of another person ? ( 9 ) FIRST, we may refer to a few provisions of the Trade andmerchandise Marks Act, 1958. A trade mark is a mark used orproposed to be used in relation to good s for the purpose of indicatingor so as to indicate a. connection in the course of trade between thegoods and some person having the right to use the mark, [section2 (V)]. A mark shall be deemed to be deceptively similar to anothermark if its so nearly resembles that other mark as to be likely todeceive-or cause confusion [section 2 (d)]. Name includes anyabbreviation of a name [section 2 (k)]. A mark the use of whichwould be likely to deceive or cause confusion is prohibited from;being registered. (Section 11) Use of a trade mark which is identicalwith or deceptively similar to a registered trade mark amounts toinfringement of trade mark (Section 29 ). The statutory remedy ofaction for infringement does not take away the Common Law remedyof an action for passing off, which in substance is an action fordeceit (Section 27 ). ( 10 ) IN Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 (1) their Lordships have setout the distinction between action for passing off and action forinfringement of a trade mark. ( 10 ) IN Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories AIR 1965 SC 980 (1) their Lordships have setout the distinction between action for passing off and action forinfringement of a trade mark. Their Lordships have then stated thelaw for the Courts faced with an action for fringement of a trademark and laid down the following principles : " (1) Where the two marks are identical, no further questions arise for, then the infringement is made out; (2) When the two marks are not identical, the plaintiffwould have to establish that the mark used by thedefendant so nearly reseambles the plaintiff s registeredtrade mark as is likely to deceive or cause confusionand in relation to goods in respect of which it isregistered; (3) The onus Would be on the plaintiff; (4) The Court has to compare the two marks the degree ofresemblance which is necessary to exist to cause deception not being capable of definition by layingdown objective standard. The persons whowould be deceived are of course the purchaser s of thegoods and it is the likelihood or their being deceived thatis the subject for consideration. The purchase of thecomparison is for determining whether the essential features of the plaintiff s trade mark are to be found usedby the defendant. The ultimate test is whether themark: used by the defendant as a whole is deceptivelysimilar to that of the rgistered mark of the plaintiff; (5) The resemblance may be phonetic, visual or in thebasic idea represented by the plaintiff s mark; (6) The identification of the essential features of the markis in essence a question of fact and depends on thejudgment of the Court based on evidence led before itas regards the usage of the trade. " ( 11 ) THE principles deducible from Ruston and Hornby Ltd. Vs. Zamindara Engineering Co. , AIR 1970 SC 1649 (2) are :- (I) Where the infringing trade mark is not identical withthe complaining trade mark on the Register, but something similar to it, the test of infringement is the sameas in action for passing off. (II) In a passing oil action the issue is : Is the defendantselling goods so marked as to be designed or calculatedto lead purchasers to believe that they are the plaintiff sgoods ? (II) In a passing oil action the issue is : Is the defendantselling goods so marked as to be designed or calculatedto lead purchasers to believe that they are the plaintiff sgoods ? (III) In an infringement action the issue is : Is the defendant using a mark which is the same as or which iscolourable imitation of the plaintiff s registered trademark ? (IV) The element of deception or confusion becomes irrelevant in the second issue (as the same is implicit, inherentor presumed to be present ). ( 12 ) IN Parle Products (P) Ltd. , Vs. J. P. and Co. Mysore, AIR19-72 SC 1359 (3), their Lordships have laid emphasis on the test ofoverall similarity. The broad and essential features of the two areto be considered. One need not place side by side the two to find out if there are any differences in the design, and if so, whetherthey are of such character as to prevent one from being mistakenfor the other. The livelihood of a person usually dealing with theone being mislead to accept the other if offered to him, would beenough. Their Lordships have held that an ordinary purchaser isnot gifted with the powers of observation of a Sherlock Homes andcited with approval the following statement from Karly s Law oftrade marks and Trade Names, (9th edition, Paragraph 838) : "two marks, when placed side by side, may exhibit manyand various differences, yet the main idea left on themind by both may be the same. A person acquaintedwith one mark, and not having the two side. by side forcomparison, might well be deceived, if the goods wereallowed to be impressed with the second mark, into abelief that he was dealing with goods whichbore thesame mark as that with which he was acquainted. Thus, for example, a mark may represent a game offootball ; another mark may show players in a differentdress, and in very different positions, and yet the ideaconveyed by each might be simply agame of football. It could be too much to expect that persons dealing178with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember [theexact details of the marks upon goods with which theyare in the habit of dealing. Marks are rememberedrather by general impressions or by some significantrecollection of the whole. It could be too much to expect that persons dealing178with trade marked goods, and relying, as they frequently do, upon marks, should be able to remember [theexact details of the marks upon goods with which theyare in the habit of dealing. Marks are rememberedrather by general impressions or by some significantrecollection of the whole. Moreover, variations indetail might well be supposed by customers to havebeen made by the owners of the trade mark they arealready acquainted with for reasons for their own. " ( 13 ) WHAT is property in trade mark and how it is lost, was default with by their Lordships in National Bell Co. and Gupta Industrial Corporation v Metal goods Mfg. Co. (P) Ltd. and Anr. AIR 1971sc 898 (4 ). Their Lordships have so stated the law :- "the property in a trade mark exists so long as it continuesto be distinctive of the goods of the registered proprietor in the eyes of the public or a section of thepublic. If the proprietor is not in a position to use themark to distinguish his goods from those of others orhas abandoned it or the mark has become, so commonin the market that it has ceased to connect him withhis goods, there remains no justification in retaining iton the register. The distinctiveness of the trade markin relation to the goods of a registered proprietor ofsuch a trade mark may be lost in a variety of ways, e. g. by the goods net being capable of being distinguishedas the goods of such a proprietor or by extensive piracyso that the marks become publicity juris. " ( 14 ) MC. Carthy on Trade marks and Unfair Competition, (Third Edn. Vol. 2) (5) states :- "the names of a product or service itself what it is-is thevery antithesis of a mark. In short, a generic name ofa product can never function as a trade mark to indicateorigin. The terms generic" and "trade mark" aremutually exclusive. . . . The concept of "generic name"and "trade name" are mutually exclusive. Thus, if infact a given term is "generic", it can never function asa mark to identify and distinguish the products of onlyone seller (para 12. 01 ). An abbreviation of a generic name which still conveys tothe buyer the original generic connotation of the abbreviated name, is still, "generic". . The concept of "generic name"and "trade name" are mutually exclusive. Thus, if infact a given term is "generic", it can never function asa mark to identify and distinguish the products of onlyone seller (para 12. 01 ). An abbreviation of a generic name which still conveys tothe buyer the original generic connotation of the abbreviated name, is still, "generic". "acronyms of generic names are often used interchangeablywith the full generic name and recognised as equivalent. . . . . . ". "if the abbreviation is not recognisable as that originalgeneric term, then the abbreviation is like a fancifulmark and protectable. (para 12. 12 (1 ). " "as with misspelling of descriptive terms, a misspelling of ageneric name which does not change the generic sinificance to the buyer, is still "generic". ( 15 ) THE decision has to be left with the court, as already noticed in Kaviraj Pandit Durga Dutt Shanna s case (supra ). So is the view taken, by the Supreme Court of judicature in Electrolux Ld. Vs. Electrix Ld. and Anr. (1954) (6) 71 RPS 23, by House of Lordsin GE Trade Mark case (1973) (7) RPC 297 and also in. Nationalcarbon Co. (Inc.) Vs. Ser Sin and Co. AIR 1939 (8) Rangoon US. 15. 1 In GE Trade Mark case (supra) Lord Diploc (8) said) thatthe question does not cease to be a "jury question". He (the judge)too, would be a potential buyer of the goods. He should, of course,be- alert to the danger of allowing his own idiosyncratic knowledge oftemperament to influence his decision, hut the whole of his trainingin the practice of the law should have accustomed him to this andthis should provide the safety which in the case of a jury is providedby their number. That in issue of this kind jadges are entitled togive effect to their own opinions as to the likelihood of deceptioncr confusion and, in doing so, are not confined to the evidence of witnesses called at the trial. 15. That in issue of this kind jadges are entitled togive effect to their own opinions as to the likelihood of deceptioncr confusion and, in doing so, are not confined to the evidence of witnesses called at the trial. 15. 2 In National Carbon Co s case (supra) Baguley J. said theeye of the Judge is the final arbiter, but the judge must not use, ifthe expression be allowed, his own eyes : he has got to look at thearticles with the eyes of the public who may be expected to buy thosearticles, especially when, the people who buy those articles includepeople of all classes including many persons living in the jungle,uneducated, illiterate, and who may be regarded as equivalent to theincautious, ignorant or unway up-country purchasers. ( 16 ) IN Halsbury s Laws of England (4th Edn. Vol. 48, pars163) (9) the subject has been dealt with as under :__ "163. Establishing Likelihood of Deception or Confusion. Toestablish a likelihood of deception or confusion in anaction for passing off where there has been no directmisrepresentation generally requires the presence, of twofactual elements : (1) that a name, mark or other distinctive feature used by the plaintiff has acquired a reputation among a relevant class of persons; and (2) thatmembers of that class will mistakenly infer from thedefendant s use of a name, mark or other feature whichis the same or sufficiently similar that the defendant sgoods or business are from the same source or are connected. While it is helpful to think of these two factualelements as two successive hurdles which the plaintiffmust surmount, consideration ofthese two aspects cannot be completely separated from each other, as whether deception or confusion is likely is ultimately a singlequestion of fact. IN arriving at the conclusion of fact as to whether deceptionor confusion is likely, the court will have regard to (a)the nature and extent of the reputation relied upon (b)the closeness or otherwise of the respective fields ofactivity in which the plaintiff and the defendant carry onbusiness (e) the similarity of the mark, name etc. usedby the defendant to that of the plaintiff, (d) the mannerin which the defendant makes use of the name, marketc. complained of and collateral factors and (o) themanner in which the particular trade is carried on theclass or persons who it is alleged is likely to be deceivedand all other surrounding circumstances. usedby the defendant to that of the plaintiff, (d) the mannerin which the defendant makes use of the name, marketc. complained of and collateral factors and (o) themanner in which the particular trade is carried on theclass or persons who it is alleged is likely to be deceivedand all other surrounding circumstances. IN assessing whether confusion or deception is likely, thecourt attaches importance to the question as to whetherthe defendant can be shown to have acted with a fraudulent intent, although a fraudulent intent is not a necessary part of the cause of action. " ( 17 ) KERLY in Law of Trade Marks and Trade Names (12th Edn,)deals with proof of likelihood of deception as under (vide paral6-72 at p. 407 ) (10) : "the court must in the common case be satisfied that thedefendant s conduct is calculated to pass off other goodsas those of the plaintiff, or, at least, to produce suchconfusion in the minds of probable customers or purchasers or other persons with whom the plaintiff has business relations as would be likely to lead to the othergoods being bought and sold for his. This is the foundation of the action. " "the question of likelihood of deception is for the court (not the witnesses) to decide "looking at the documentsand evidence, before him. " Evidence may be called onthe point, but is not essential except in cases of doubtand the assistance it gives to the court will be of a limited nature unless it indudes evidence of actual deception. " ( 18 ) VIDE para 17. 05 Keriy (supra) deals with "whom the markmust be calculated to deceive" as under : "the persons to be coasidered in estimating whether the resemblance betweea the marks in question is likely todeceive are all of those who are likely to become purchasers of the goods upon which the marks are usedprovided that such persons use ordinary care and intelligence. In some cases confusion that matters to thoseconcerned may be irrelevant in law since it docs notlead the public into receiving the wrong goods orservices. " ( 19 ) THE learned counsel for the defendant-appellant submittedthat there are two very important relevant considerations which mustbe kept in view in deciding the case at hand. 19. 1 Fustly, he submitted that liv is an abbreviation of liver. " ( 19 ) THE learned counsel for the defendant-appellant submittedthat there are two very important relevant considerations which mustbe kept in view in deciding the case at hand. 19. 1 Fustly, he submitted that liv is an abbreviation of liver. This abbreviation has been used in over 100 registrations as a constituent of the name under which the products relating to treatmentassociated with liver in the field of medicinal and pharmaceutical preparations-Hemceopathic and Ayurvedic are being marketed. Thelord liv is, therefore, generic and common to trade as describingthe medicines associated with the treatment of liver. It has becomepublici juris. In the field of medicines and pharmaceuticals, it iscommon practice that the drugs are named either by the name ofthe organ which it treats or by the principal ingredients or the nameof the ailment. This enables a doctor to associate a particular tradename with the organ, ingredient or ailment, thereby reducing chancesof error. No trader can therefore restrain another trader from usingthe description of the organ, ingredients or ailment. The learnedcounsel has cited a host of authorities in support of his submissionthat a word or its abbreviation having become publici juris ceasesto be subject matter of proprietorship, also ceases to be source ofdeception or confusion, for the person likely to deal with such goodswould ignore the publici juris and go distinguishing the products bythe prefixes and/or suffixes. 19. 2 Secondly he submitted that the goods, trade marks whereofare under scrutiny, are medicnces They are sold by the licensedchemists and drugists and that too under prescription by medicalpractitioners. It is not that any man in the street would just reachthe counter in a shop, ask for the goods by spelling of the trademark and the salesman would hand over one or the other of the twogoods which would be carried away by the unwary castomer unmindfulof what he intended to purchasers and what he in fact got into hishands. Attention was invited to certain provisions of the Dungs andcosmeties Rules 1945 framed under the Drugs and Cosmetics Act1940. No drug may be sold without a licence. A licence to sell. stock, exlubit or offer for dale or distribute Homoeopathic medicinesby retail or by wholesale has to he under a licence under Rule 67c. Attention was invited to certain provisions of the Dungs andcosmeties Rules 1945 framed under the Drugs and Cosmetics Act1940. No drug may be sold without a licence. A licence to sell. stock, exlubit or offer for dale or distribute Homoeopathic medicinesby retail or by wholesale has to he under a licence under Rule 67c. One of the conditions of the licence as provided by clause (2) ofrule 67g is that the sale of homoeopathic medicine shall be conducted under the supervistion of a person competent to (leal withhemoeopathic medicines. So are the previsions for sale etc. of drugsother than Homoeopathic medicines. 19. 3 We find merit in both the contontions so advanced. ( 20 ) A mark is said to be common to the trads when (i) it is incommon use in the trade, or (2) when it is open to the trade to use. Any symobl, word or get up commonly used by traders in connections with their trade and in respect of which no particular tradercan claim an exclusive right to use may be considered common tothat particular trade, or public juris. Further words, expressions, ordevices which are descriptive of particular goods are open to useby all persons engaged in the trade. Such matters which are generallyof a non-distinctive character may or may not be in actual useat any particular time. What is important is that the trading publichas a right to use them in connection with their business. ( 21 ) WHETHER a matter is or is not common to the trade is a question of fact. A feature which is common to one tde may nut beso to a difierent trade. Similarly a mark may continue to be trademark in some countries and publijurs in others. A mark whichwas common to the trade at on; lime may in course of time becomedistinctive and vice versa. A word or words used by a number offirms as part of their designation may be considered as words incommon use (See : Law of Trade Mark and Passing Off. P . Narayanan. 4th Edn. para 14 (2) (11), ( 22 ) WE would first deal with the cases generally associated withthis aspect and then pass over to the medicinal cases arising in thefield of medicinal and pharmaceutical preparations. 22. 1 Corn Products Refining Co. P . Narayanan. 4th Edn. para 14 (2) (11), ( 22 ) WE would first deal with the cases generally associated withthis aspect and then pass over to the medicinal cases arising in thefield of medicinal and pharmaceutical preparations. 22. 1 Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142 (12) (vide para 14) their Lordships have citedwith approved the following statement of law from In re : Harrod sapplication (1935) 52 RPC 65 (13) :now it is well recognised principle, that has to be taken intoaccount in considering the possibility of confusion arising between any two trade mark that where those twomarks contain a common element which is also contained in a number of other marks in use in the samemarket such a common occurrcnee in the market tendsto cause purchasers to pay, more attention to the otherfeatures of the respective marks and to distinguishbetween them by those features. This principle clearlyrequires that the marks, comprising the common clementshall be in fairly extensive use and as I have mentionedin use in the market in which the marks under consideration are being or will be used". 22. 2 In J. R. Kapoor v. Micronix India, 1994 Supp (3) SCC215 (14) MICROTEL wanted to restrain. MICRONIX. The twotrade marks were used in respect of electrical and electronic apparatus. Their Lordships held that micro-chip technology being thebase of many of the products the word micro has much relevance in describing the products. It was descriptive of the microtechaology used for production of many electronic goods which dailycome to the market. No on; can claim monopoly over the use ofthe said word. Anyone producing any product with the use of microchip technology would be justified in using the said word as a prefiixto his trade, name. It was further held : these who are familiar" with the use of electronic goodsknow fully and well and are not likely to be misguided orconfused merely by the prefix micro in the trade name. Phonetically, the words; tel and nix being totally dassimilar are not going to create any such confusion in themind of the users Secondly, even the visual impressionof the said two trade names is different. In the firstinstance, the respondent s trade name micronix is inblack and white in slimmer letters and, they are ensconced in designs of elongated triangles both above and below the said name. In the firstinstance, the respondent s trade name micronix is inblack and white in slimmer letters and, they are ensconced in designs of elongated triangles both above and below the said name. On the other hand, the appellant strade name microtel is in thick bold letters in redcolour without any design around. There is not eventhe remotest chance of the buyers and users being misguided of confused by the. . two trade names and logos. Same is the case with the carton which merely reprotduces both the trade names and logos. " 22. 3 In the Coca-Cola Co. of Canada Ld. Vs. Pepsi-Colacanada Ld. (1942) LIx RPC 127 the question arising wasif PEPSI-COLA was so similar with COCA-COLA as to belikelyto cause confiusion. It was found that COLA what not the name ofthe drink. It had been adopted for beverages in Canada. PEPSIand COLA joined by a hyphen se also COCA and COLA joinedby a hyphen, were both written in a script form with flourishes. Bothhad been used simutaneously and for sometime with wares of the184same kind. The judicial committee of the Privy Council found thatboth the trade marks had a descriptive flavour to the trade. Onusing the word COLA, on the review of the authorities, their Lordships laid down three fundamental propositions :- (1) In considering similarly comparison must be betweenthe defendant s mark as used and a normally imperfectrecollection of the plaintiff s mark. (2) In making a comparison no regard should be paid to thefact that some part of the mark-common to both markshas a descriptive flavour unless it is proved that suchpart is in common use in the trade. (3) If after applying the aforesaid propositions the conclusion is reached that the marks are similar it is irrelevantthat the defendant had used differentiating features ofget-up. " THEIR Lordships then concluded : IF it be viewed simply as a word mark consisting of COCAand COLA joined by a hyphen, and the fact be bornein mind that COLA is a word in common use incanada in naming beverages, it is plain that the distinctive feature in the hyphenated word is the first word coca and not "cola". "coca" rather than "cola" iswhat would remain in the average memory. "coca" rather than "cola" iswhat would remain in the average memory. It isdifficult, indeed impossible, to imagine that the markpepsi-Cola as used by the defendant, in which the distinctive feature is, for the same reason, the first wordpepsi and not Cola, would lead anyone to confuse itwith the registered mark of the plaintiff. The trademark used by the defendant and the registered mark ofthe plaintiff are not trade marks so nearly resemblingeach other or so clearly suggesting the idea conveyedby each other, that the contemporaneous use of bothin the same area in association with wares of the samekind would he likely to cause dealers in or users ofsuch wares to infer that the same person assumed responsibility for their character or quality, or for theconditions under which or the class of persons by whomthey were produced or for their place of origin. " 22. 4 In Harker Stagg Limited s Trade Mark case, 1954 (16) (Vol LXXI), RPC 136 ALUDROX had sought for cancellationof ALGELOX. Both were intended to be used in connection withaluminum hydroxide and also a substance considered and counted185as a gel ALUDROX contained syllables from aluminium and hydroxide. ALGELOX had reference to aluminum, gel and hydroxide. Their Lordships held :- "when the two words in question in this case are first lookedat and regarded as made-up words, as they in fact are,their reason and virtue may elude the mind; but whenit is recognised that both are intended to be used inconnection with aluminum hydroxide, or a substancesubstantially composed of aluminum hydroxide, and alsoa substance which is considered or counted as a gel, itis seen that both words are intended to convey, by theircharacteristics, and indication of what it is that is beingsold. " IT was concluded that the similarity was not great enough ,to belikely to cause confusion. 22. 5 ANCHOLA and ANCHOVETTE in In the matter of anapplication by F. W. Waide and Co. Ltd. ,to Register a Trade Mark 1916 (XXXIII) RPC 320; (17) MICRONIC and MICROVEE inin the matter of Automotive Products Co. Limited s Application toregister a Trade Mark, 1983 LXX RPC 224, were not found tobe so similar (18) as likely to deceive. ( 23 ) WE may now proceed to notice a few cases in the field ofmedicines and pharmaceuticals. 23. 1 The leading most case is ROCHE and CO Vs. G. MANNERSand CO AIR 1970 SC 2062 (19 ). Limited s Application toregister a Trade Mark, 1983 LXX RPC 224, were not found tobe so similar (18) as likely to deceive. ( 23 ) WE may now proceed to notice a few cases in the field ofmedicines and pharmaceuticals. 23. 1 The leading most case is ROCHE and CO Vs. G. MANNERSand CO AIR 1970 SC 2062 (19 ). The question was whetherdropovit and PROTOVIT are deceptively similar. Vide para12, their Lordships found that the last three letters were common,and in the uncommon part, the first two are consonants, the nextis the same vowel "0". the next is a consonant and the fifth isagain a common vowel "o". The combined effect was to producealliteration. VIT is a well known abbreviation used in pharmaceutical trade to denote vitamin preparation. Thus the terminal syllable vit in the two marks was both descriptive and common to thetrade. Their Lordships held : "if greater regard is paid to the uncommon element in thesetwo words, it is difficult to hold: that one will be mistaken for or confused with the other. The letters d and p in dropovit and the corresponding letters p and T in PROTOVIT cannot possibly be slurredover in pronunciation and the words are so dissimilarthat there is no reasonable probability of confusionbetween the words either from the visual or phoneticpoint of view". 23. 2 In the matter of an application by Demeth Ltd. for theregistration of a trade mark (1948) LXV RPC 342, SEDA- SELTZER was sought to be registered for preparations for use in makingseltzer water. It was opposed by the Proprietor of the mark ALKASELTZER registered for goos of same description. Both werepharmameutical preparations. Evidence was adduced to show thatthe word Seltzer was having general usage in the trade and therewere several trade marks using a prefix to the word Seltzer andavailable in the market. One of the relevant factors relied on bytheir Lordships for holding the word SELTZER as publici juris wasthat both the parties were using it in specification of goods suggesting that the word is one which is descriptive and well understood. It was held: "if the fact be borne in mind that the distinctive feature ofthe mark ALKA-SELTZER is the first word Alka andnot Seltzer. It was held: "if the fact be borne in mind that the distinctive feature ofthe mark ALKA-SELTZER is the first word Alka andnot Seltzer. alka father than SELTZER is what wouldremain in the average memory, It is difficult indeedimpossible to imagine that the mark Seda Seltzer inwhich the distinctive feature for the reason is SEDAand not SELTZER would lead anyone to confuse itwith Alka-Seitzer. ". (Page 347) 23. 3 In Bayer Products Ltd. vs. A, Wander Ltd. (1947) LXIVRPC 125 (20 ). Application to register BIASIL was objected to byproprietor of ALACIL. Both were pharmaceutical preparationsconsisting of sulphadiazine. The plea as to deception or confusionwas turned down. Their Lordship held :- "it is quite obvious that once you get a statutory regulationof the channels of supply, is essential that the Court inconsidering the possibilities of deception should take intoaccount the extent to which such a possibility is minimisedor perhaps obliterated altogether by the statutory regulations". "once you get the position that only a doctor can order sulphadiazine, that he must give a written prescription andthat a chemist cannot supply it without such a prescription, you ensure that the article in question is onlygoing to pass at that stage through the hands of skilledpersons who by their training, their experience andtheir knowledge would be most unlikely to refer to thatdrug in away which would admit of any reasonablepossibility of confusion. Of course, it is impossible toexclude entirely the risk of confusion. What we areconcerned with are not unlikely cases which mayhappen once in one hundred years but reasonable probabilities and we have to ask ourselves in relation tothose fac,ts. Js there such a risk that a doctor or achemist or the two of them. in combination: by somecarelessness in expression, some obscurity in handwriting, some slip of recollection or some carelessmistake which you would not expect highly trained professional people to fall into will refer to the product insuch a way as will lead the court to say that there is areasonable probability of confusion. " IN my opinion, there is not. in combination: by somecarelessness in expression, some obscurity in handwriting, some slip of recollection or some carelessmistake which you would not expect highly trained professional people to fall into will refer to the product insuch a way as will lead the court to say that there is areasonable probability of confusion. " IN my opinion, there is not. It seems to me that if one isreally to give weight to such a risk, it involves attributing to those highly skilled, experienced and carefulpeople to whom the legislature has entrusted and towhom alone the legislature has entrusted the precautionsnecessary under the Poisons Act, qualities of carelessnessor incompetence which, although may exist in a personhere and there on occasions-that, of course cannot bedenied are not usually found in that class of persons,we are not concerned with hypothetical possibilities butwith the ordinary practical business probabilities havingregard to the circumstances of the case. " (Page 137) 23. 4 In Stadmed Pvt. Ltd. vs. Hind Chemicals AIR 1965 Punjab17 (21), dispute was between ENTROZYME and ENTOZIME. One of the relevant considerations kept in view by the DB (videpara 14) was that the goods being Schedule-H drugs were obtainable only on doctor s prescription. It was further held that therewas no phonetic similarity and there was no cause for confusion. 23. 5 In R. S. Krishna and Co, v. G. R. Gopal and Co. AIR 1981madras 262, (22) there were several medicinal oils using THENNA-MARAKKUDI-a geographical name-as part of trade mark. Itwas held tha,t the word having become publici juris nobody couldclaim any exclusive right to its use. 23. 6 We may briefly refer to several other cases throwing lighton the point. CURECHLOR and RECLOR both being pharmaceutical preparation of CHLOROMPHENICAL, In E. R. Squibb andsons vs. Curewell India Ltd. AIR 1987 DELHI 197; ASHEMIXand ASMAC both being schedule-H drugs for treatment of Asthmain M. M. Pharmaceuticals vs. A. Wander. AIR 1977 Mad 105 , (23) BUTAZOLIDIN and BUTAZONE both brands having thesame drug in Geigy AG v. Chelsea Drug and Chemical Co. Ltd. 1966188rpc 64; SKIN DEW and SKIN DEEP both being toilet creams inhelena Rubinstein Ltd. s Application 1960 RPC 229, were held notliable to cause deception or contusion. ( 24 ) THE test for judging a. case of infringement and or passingoff remains the same when applied to medicines and pharmaceuticals. Ltd. 1966188rpc 64; SKIN DEW and SKIN DEEP both being toilet creams inhelena Rubinstein Ltd. s Application 1960 RPC 229, were held notliable to cause deception or contusion. ( 24 ) THE test for judging a. case of infringement and or passingoff remains the same when applied to medicines and pharmaceuticals. However, a few additional considerations arise when dealing with cases of such drugs which cannot be sold except on prescription of a doctor and which are sold only by such persons whohave special knowledge or expertise in the field. The manner inwhich trade in such medicines is carried on that is, they can be soldonly on prescription and at authorised outlets, only and the class ofpersons who would purchase that is. the patients advised by doctors, chemists and druggists-these two facts assume significanceand shall have to be kept in view by the counts. ( 25 ) TO sum up :- (1) The crucial tests to be applied for judging an infringement action or a passing off action in the Held ofmedicinal and pharmaceutical preparations remainthe same as are applicable to other goods. However,in the case of preparations trading whereof is governed by statutory rules or regulations, additional considerations become relevant. They are : (i) the mannerin which the trade is carried on, such as sales beingmade only by authorised or licensed vendors who willbe educated, also having special knowledge of medicines and pharmacy (ii) the class of persons who wouldaccompanied by doctors prescription and would inall probability remain in touch with doctor whileconsuming the medicine purchased. The court wouldask-Is there such a similarity between the two trademarks that a doctor or a chemist or the both by somecarelessness in expression, some obscurity in handwriting, some slip of recollection or some carelessmistake not expected of a trained professional likedoctor or chemist might lead to the one being confused for the other ? Regard shall be had not tothe hypothetical possibilities but to ordinary practicalbusiness probalities as applied to the circumstancesof an individual case. (2) The decision on the question of likelihood of deception is to be left to the court. (3) Nobody can claim exclusive right to use any word,abbreviation, or acronym which has become publicijuris. In the trade of drugs it is common practiceto name a drug by the name of the organ or ailmentwhich it treats or the main ingredient of the drug. (3) Nobody can claim exclusive right to use any word,abbreviation, or acronym which has become publicijuris. In the trade of drugs it is common practiceto name a drug by the name of the organ or ailmentwhich it treats or the main ingredient of the drug. Such organ, ailment or ingredient being publici jurisor generic cannot be owned by anyone for use astrade mark. (4) Whether such feature is publici juris or generic is aquestion of fact. (5) If the two trade marks by two competing traders usea generic word or an expression publici juris commonto both the trade marks it has to be seen if the customers who purchase the goods would be guided bythe use of such word or expression or would ignoreit and give emphasis to prefixes or suffixes or wordsused in association therewith. The primary questionto be asked is-What would remain in the memoryof customer ? The surrounding circumstances suchas the presentation of goods, colour scheme and lettering style etc. used on the packing also assume significance. ( 26 ) REVERTING back to the facts of the case, from the documentary evidence filed we are satisfied that there are about 100drugs in the market using the abbreviation liv made out of theword Liver-an organ of the human body, as a constituent ofnames of medicinal/pharmaceutical preparations with some prefixor suffix-mostly suffixes-meant for treatment or ailments ordiseases associated with liver. Liv has thus become a genericterm and publici juris. It is descriptive in nature and commonin usage. Nobody can claim an exclusive right to the use of liv as a contituent of any trade mark. The class of customersdealing with medicines would distinguish the names of the medicines by ignoring liv and by assigning weight to the prefix orsuffix so as to associate the name with the manufacturer. Thepossibility of deception or confusion, is reduced practically to nilin view of the fact that the medicine will be sold on medical prescription and by licensed dealers well versed in the field and havingknowledge of medicines. The two rival marks Liv. 52 and LIV contain a common feature Liv which is not only descriptivebut also publici juris; a customer will tend to ignore the commonfeature and will pay more attention to uncommon features i. e. 52 and T. The two do not have such phonetic similarity as tomake it objectionable. The two rival marks Liv. 52 and LIV contain a common feature Liv which is not only descriptivebut also publici juris; a customer will tend to ignore the commonfeature and will pay more attention to uncommon features i. e. 52 and T. The two do not have such phonetic similarity as tomake it objectionable. ( 27 ) THE cartons of the two products respectively of the plaintiff and of the defendant have been filed with the appeal memo atpages 35 and 36 of the paper book. We have carefully examinedthe same. 27. 1 The plaintiff s product Liv. 52 is in a carton with acolour scheme consisting of dark brown, dark yellow and white. On the dark brown background Liv. 52/drops 60 ml are printedin white colour. Also these very words are printed in dark brownon the white background. The other matter is printed in darkbrown on yellow background. There is no device used. Thesize of the presentation is less than half of the size of the defendant s presentation. The carton claims it to be an ayurvedic proprietary medicine with the ingredients set out. 27. 2 The packing carton including the distinctive features ofthe defendant-appellants is entirely different. The colour schemeis light yellowsingle colour scheme whereon the entire matter isprinted in black. There is a device of liver also printed. LIV-TLiver Tonic/net 180 ml also appears in print. The printed matterclaims it to be a Homoeopathic medicine with composition setout. 27. 3 The respective packings prominently contain the namesof the two contesting parties written in capital letters in bold andprominent fashion. The defendant s carton clearly mentions itto be the product of SBL Limited collaboration BIORN France. The carton in the middle features an artistic impression of theorgan liver. 27. 4 Each of the two cartons has unique placement of letteringand other features constituting each an original artistic workunderthe Copyright Act. 27. 5 Having examined the two cartons we are clearly of theopinion that there is no possiblity of one being accused of dececptively similar with the other and the likely customer mistakingone with the other, even by recollecting faint impressions. ( 28 ) WE are therefore unhestitatingly of the opinion thatthe proprietor of Liv. 27. 5 Having examined the two cartons we are clearly of theopinion that there is no possiblity of one being accused of dececptively similar with the other and the likely customer mistakingone with the other, even by recollecting faint impressions. ( 28 ) WE are therefore unhestitatingly of the opinion thatthe proprietor of Liv. 52 was not entitled to the grant of an injunction restraining the use of LIV-T. ( 29 ) THE learned counsel for the plaintinff respondent citeda host of authorities which we must catalogue to be fair to him :-1. Wander Ltd. v. Antox India P. Ltd. 1990 (sup) SCC727 (25)2. American Home Products v. Mac Lab Cair 1986sc 137 (26)3. Parle Products v. JP and Co. Mysore AIR 1972 SC1359 (27)4. National Bell Co. v. Metal Goods Mfg. AIR 1971sc 898 (28)5. Kaviraj Pt. Durga Dutta v. Navaratna Pharmacenticals AIR 1972 SC 1359 (29)6, Amritdhara Pharmacy v. Satyadeo Gupta AIR 1963sc 449 (30)7. Cornproducts Refining v. Shangrila Food AIR 1960sc 142 (31)8. Whirlpool Corp. vs. Mr. N. R. Dongre 56 (1994)DLT 304 (32)9. Astra IDL Ltd. v. TTK Pharma Ltd. (1992) 16 Arblr 297 (33)10. Parkash Roadline Ltd. v. Parkash Parcel Service 1992 (2) A. L. R. 174 (34)11. CEAT Tyres of India v. Jai Industrial Services 45 (191) DLT 405 (35)12. Hindustan Pencils v. Indian Stationery AIR 1990delhi 109 (36)13. Amrit Soap Co. v. New Punjab Soap Factory 1989alr 242 (37)14. Chaurasia Tobacco v. Bhagwan Dass 1988 PTC192 (39)15 Shri Swaran Singh Trading as Appliances v. Ushaindustries AIR 1986 DEL 343 (40)16. B. K. Engineering Co. vs. Ubhi Entp. AIR 1985del 210 (41)17. Ellora Industries v. Banarsi Dass AIR 1980 Delhi 254 (42)18. Registrar of Trade Marks v. Hamdard National Foundation AIR 1980 DEL 180 (43)We have perused the cited cases. We do not think that anyof the above cited cases lays down law at variance with the viewwhich we have taken on a review of several authorities as alreadystated. Sufficient it to observe that it was in the facts and circumstances of each of the abovesaid cases that the defendant strade name/trade mark was found to be offending and hencerestrained. ( 30 ) AMRITDHARA Pharmacy s case (supra) is usually cited on behalf of the defendants opposing the prayer for injunction. Sufficient it to observe that it was in the facts and circumstances of each of the abovesaid cases that the defendant strade name/trade mark was found to be offending and hencerestrained. ( 30 ) AMRITDHARA Pharmacy s case (supra) is usually cited on behalf of the defendants opposing the prayer for injunction. Therein also, their Lordships have held :- "the act does not lay down any creteria for determiningwhat is likely to deceive or cause contusion withinthe meaning of Section 8 (a) and Section 19 (1 ). Therefore, every case must depend on its own, particular facts, and the value of authorities lies not somuch in the actual decision as in the tests appliedfor determining what is likely to deceive or causeconfusion. A trade mark is likely to deceive or cause confusion byits resemblance to another already on the Register. if it is likely to do so in the course of its legitimateuse in a market where the two marks are assumed tobe in use by traders in that market. In consideringthe matter, all the circumstances of the case must beconsidered. What degree of resemblance is necessary to deceive or causeconfusion must in the nature of thing be incapableof definition a priori. For deceptive resemblance twoimportant questions are : (1) who are the personswhom the resemblance must be likely to deceive orconfuse, and (2) what rules of comparison are tobe adopted in judging whether such resemblanceexists. As to confusion, it is perhaps an appropriatedescription of the state of mind of a customer whoon seeing a mark thinks that it differs from the markon goods which he has previously brought, but isdoubtful whether that impression is not due to imperfect recollection. " 30. 1 Their Lordships held Amritdhara and Laxamandharalikely to deceive or cause confusion because of the overallstructural and phonetic similarity. The goods were such asare largely sold to Illiterate or badly educated persons. Theirlordships formed an opinion that the use of the word DHARAwas not of itself decisive of the matter, in the facts found inthat case. ( 31 ) IN view of our finding that the defendant s trade markis neither deceptive with nor confusingly similar to the plaintiff s trade mark. Theirlordships formed an opinion that the use of the word DHARAwas not of itself decisive of the matter, in the facts found inthat case. ( 31 ) IN view of our finding that the defendant s trade markis neither deceptive with nor confusingly similar to the plaintiff s trade mark. a case for the "rant of injunction is not madeout, it is not necessary to deal with the plea of the defendantappellant disputing the plaintiff-respondent s entitlement tothe grant of ad interim injunction on the ground of delay inbringing the action. ( 32 ) HOWEVER, we would like to deal with the plea raised onbehalf of the defendant-appellant before us. just as it wasraised before the learned single Judge though unsuccessfully,demanding instantaneous vacating of the ex parte order ofinjunction even without going into the merits of the case solelybecause the plaintiff-respondent had failed to discharge itsobligation mandatorily cast by the proviso to rule 3 of Order39 of CPC. ( 33 ) THE plea was set out in para 4 of the defendant s application under 0. 39 Rule 4 Civil Procedure Code in the following words : "by virtue of the order of this Hon ble court dated 23/05/1996 the plaintiff was required to comply withthe provisions of Order 39, Rule 3 within 3 days. The plaintiff till date has deliberately failed to comply with the said order. The defendant throughtheir attorneys have made repeated telephone callsto the office of the attorneys of the plaintiff, despitewhich the plaintiff till date has not supplied thedefendant with a complete set. The defendant sattroneys M/s. Lall and Sethi also sent a fascimile message dated 30/05/1996 to Mr. Hemant Singh, Counsel for the plaintiff, requesting Mr. Singh to supply thecomplete set to enable the defendants to file anappropriate reply, but no reply has been receivedto the same till date. A copy of the said letter wasalsodelivered personally to Mr. Singh s office. Acopy of the facsimile message is attached asannexure-A hereto. Only an incomplete set wasreceived by the defendant by post and that tooas late as on 31/05/1996. The said set does noteven have a complete index and there are only 43pages in the same. The injunction granted in favourof the plaintiff is liable to set aside on this groundalone. Acopy of the facsimile message is attached asannexure-A hereto. Only an incomplete set wasreceived by the defendant by post and that tooas late as on 31/05/1996. The said set does noteven have a complete index and there are only 43pages in the same. The injunction granted in favourof the plaintiff is liable to set aside on this groundalone. " ( 34 ) LOOKING to the scheme of Order 39 Civil Procedure Code it is clear thatordinarily an order of injunction may not be granted ex parte. The opposite party must be noticed and heard before an injunction may be granted. Rule 3 carves out an exception in favourof granting an injunction without notice to the opposite partywhere it appears that the object of granting injunction wouldbe defeated by the delay. Conferment of this privilege on theparty seeking an injunction is accompanied by an obligationcast on the court to record reasons for its opinion and anobligation cast on the applicant to comply with the requirementsof clauses (a) and (b) of the proviso. Both the provisions aremandatory. The applicant gets an injunction without notice butsubject to the condition of complying with clauses (a) and (b)abovesaid. ( 35 ) WE may refer to several observations made by theirlordships of the Supreme Court in Shiv Kumar Chadha Vs. MCD 1993 (3) SCC 161 . Though the observations have been madeprimarily on the obligation of the Court to record the reasonsbut in cur opinion they equally apply to the obligation cast onthe applicant by the proviso. The provisions are mandatory,their Lordships have observed : "the imperative nature of the proviso has to be judged inthe context of Rule 3 of Order 39 of the Code. Before the proviso aforesaid was introduced, Rule 3said the court shall in all cases, except where itappears that the object of granting theinjunction would be defeated by the delay, beforegranting an injunction, direct notice of the applicationfor the same to be given to the opposite-party". The proviso was introduced to provide a condition,where court proposes to grant an injunction without giving notice of the application to the oppositeparty being of the opinion that the subject of granting injunction itself shall be defeated by delay. Thecondition so introduced is that the court "shallrecord the reasons" why an ex parte order of Injunction was being passed in the facts and circumstances of a particular case. Thecondition so introduced is that the court "shallrecord the reasons" why an ex parte order of Injunction was being passed in the facts and circumstances of a particular case. In this background,the requirement for recording the reasons for grantof ex parte injunction cannot be held to be amere formality. This requirement is consistent withthe principle, that a party to a suit, who is beingrestrained from exercising a right which such partyclaims to exercise either under a statute or underthe common law. must be informed why instead offollowing the requirement of Rule 3 the procedureprescribed under the proviso has been followed. The party which invokes the jurisdiction of the courtfor grant of an order of restraint against a party,without affording an opportunity to him of being. heard, must satisfy the court about the gravity ofthe situation and court has to consider briefly thesefactors in the ex parte order. We are quite conseiousof the fact that there are other salutes which containsimilar provisions requiring the court or the authorities concerned to record reasons before exercisingpower vested in them. In respect of some of suchnon compliance therewith will not vitiate the orderso passed. But same cannot be said in respect ofi he proviso to Rule 3 of Order 39. The Parliamenthas prescribed a particular procedure for passing ofan order of injunction without notice to the otherside under exceptional circumstances. Such ex parteorders have far-reaching effect, as such a condition. has been imposed that court must record reasonsbefore passing such order. If it is held that the compliance with the proviso aforesaid is optional andnot obligatory, then the proviso by the Parliamentshall be a futile exercise and that part of Rule 3will be a surplusage for all practical purposes. Proviso to Rule 3 of Order 39 of the Code, attracts theprinciple that if a statute requires a thing to bedone in a particular manner it should be done inthat manner or not all. (pr. 34.)" ( 36 ) WE are of the opinion that if the court is satisfied of noncompliance by the applicant with the provisions contained in. Proviso to Rule 3 of Order 39 of the Code, attracts theprinciple that if a statute requires a thing to bedone in a particular manner it should be done inthat manner or not all. (pr. 34.)" ( 36 ) WE are of the opinion that if the court is satisfied of noncompliance by the applicant with the provisions contained in. the proviso then on being so satisfied the court which was persuaded to grant an ex parte ad interim injunction confiding in theapplicant that having been shown indulgence by the court hewould comply with the requirements of the proviso, it wouldsimply vacate the ex parte order of injunction withut expressingany opinion on the merits of the case leaving it open to Iheparties to have a hearing on the grant or otherwise of the orderof injunction but bi-parte only. The applicant would be toldthat his conduct (mis-conduct to be more appropriate) he hasdeprived the opponent of an opportunity of having an early orurgent hearing on merits and therefore, the ex parte order ofinjunction cannot be allowed to operate any more. ( 37 ) THE appeal is allowed. The impugned order of injunctiongranted by the learned single Judge is set aside. The plaintiff-respondent s application seeking the injunction is dismissed. Defendant-appellants application seeking vacating of the ex parte injunction is allowed. No order as to costs.