JUDGMENT : S. Ravindra Bhat, J.- 1. The Plaintiff, who sues the Defendant for permanent injunctive relief and delivery up in respect of its trademark, claiming infringement, seeks an ad-interim temporary injunction under Order 39, Rules 1 and 2 CPC (CPC). This Court had granted ex-parte injunction; the counsel for parties were heard on the question of confirmation of that order, made on 11.3.2005. This order disposes off that application. 2. According to averments in the suit, the trademark DIGEPLEX was adopted by the Plaintiffs predecessor in title, Teddington Chemical Factory Private limited, in 1958 in India. The Plaintiff avers that, the said Teddington Chemical Factory Private limited, applied for and obtained registration of the trade mark DIGEPLEX under Trade Mark Registration No. 186228 in Class 5 for pharmaceutical preparations containing vitamins. Pursuant to an order dated 21st June, 1962, by the Registrar of Trade Marks, Rallis India Limited was recorded as a subsequent proprietor of the trade mark with effect from 1st May. 1962. A copy of the Trade Mark Registration certificate along with certificate for use in legal proceedings is enclosed with the plaint. 3. The Plaintiff avers that by Deed of Assignment of Trade Marks dated 29th March, 2001, entered into between Rallis India Limited and Shreya Impex Private Limited, the right, title and interest in and to the said trade mark was assigned by Rallis India Limited to the Plaintiff. With effect from 6th June, 2001, the name of "Shreya Impex (P) Limited" changed to Shreya Life Sciences Private Limited, the Plaintiffs. The Plaintiffs thus claims ownership of the registered trade mark DIGEPLEX. Documents in support have been filed. 4. The Plaintiff claims that it filed the necessary Applications for recording itself as subsequent proprietor of the trade mark DIGEPLEX, which is pending with the Trade Marks Registry. The Plaintiff avers that the registration of the said trade mark was renewed from time to time and it is valid and subsisting. The Plaintiff claims that the goods bearing the trade mark DIGEPLEX have been openly, continuously and extensively used by it and its predecessor-in-title for the more than 35 years in India. Due to long and extensive use, the said trade mark is been exclusively associated with the Plaintiffs concern only. The goods bearing the mark DIGEPLEX is sold and available in the market in various dosage forms and packs. Due to long and extensive use, the said trade mark is been exclusively associated with the Plaintiffs concern only. The goods bearing the mark DIGEPLEX is sold and available in the market in various dosage forms and packs. DIGEPLEX Liquid (100 and 200 ml glass bottle), DIGEPLEX Double Strength (in 100 ml glass bottle), DIGEPLEX drops (in 15 ml glass bottle), DIGEPLEX-T (in tablet forms), DIGEPLEX preparations which are available in their liquid form contain digestive enzymes and they are recommended for digestive disorders or in order to help them with better digestion. The DIGEPLEX-T which is available in tablet forms contain PANCREATIN IP 500 mg and are used in treatment acute and chronic pancreatitis. The Plaintiffs products are allopathic medicines. The brand DIGEPLEX is a legend in itself. 5. The Plaintiff urges that on account of the superior quality and expertise, of the preparations manufactured and marketed by it and its predecessors-in-title under the trade mark DIGEPLEX, the goods command huge reputation and goodwill in the market, both among the doctors and the consuming public. The long, extensive and continuous use of the mark DIGEPLEX has resulted in its acquiring a unique and enviable reputation and goodwill among the trade and public. 6. The growth of the Plaintiffs' business is claimed by the significant growth in sales of their preparation bearing the trade mark DIGEPLEX. The Plaintiffs claims that it sold the said preparation with the mark DIGEPLEX to the extent of Rs. 34.18.Crores (Rupees Thirty Four Crores Eighteen lakhs only) during September, 2001 to December, 2004. The Plaintiff has enclosed copies of invoices to show large scale use of its goods under the trademark DIGEPLEX. 7. The Plaintiff alleges that in July 2004, it, for the first time came across the preparations bearing the trade mark DYGEX of the Defendants. The Defendants' preparations are available over the counter and are on OTC drug. The trade mark DYGEX is it is alleged, phonetically, visually and structurally similar to registered trade mark DIGEPLEX. Both the marks are deceptively and/or confusingly similar to each other. There is every likelihood of confusion and deception between the two preparations because of the similarity in the trade marks. 8. The Plaintiff contends that the Defendants have, merely with a view to trade upon its reputation and goodwill, (in the trade mark DIGEPLEX), adopted and commenced using the similar trade mark DYGEX for their preparations. There is every likelihood of confusion and deception between the two preparations because of the similarity in the trade marks. 8. The Plaintiff contends that the Defendants have, merely with a view to trade upon its reputation and goodwill, (in the trade mark DIGEPLEX), adopted and commenced using the similar trade mark DYGEX for their preparations. The compositions of the Plaintiffs' preparations and the Defendants' preparations are different. By using the impugned trade mark DYGEX, the Defendants have not only infringed the registered trade mark DIGEPLEX of the Plaintiffs but also passed off and are attempting to pass off their preparations as the preparations of the Plaintiffs. The Plaintiff avers that it issued a cease and desist notice dated 27th July, 2004 to the 1st Defendant and called upon it to stop using the trade mark DYGEX. Yet, instead of complying with the legitimate and reasonable requirements of that notice, the Defendants filed a suit being Civil Suit No. 5104 of 2004 in the Court of the 6th Joint District Judge at Ahmedabad against the Plaintiffs on 23rd August, 2004 for permanent mandatory injunction restraining the Plaintiffs from carrying out groundless threats of action and declaration. The District judge has not granted any relief against the Plaintiffs till date. 9. The Plaintiffs submit that the Defendants have adopted and used trade mark "DYGEX" which is phonetically and visually similar to its well known trade-marks "DIGEPLEX". The Defendants have merely deleted the letters "PL" from the Plaintiffs' trade mark DIGEPLEX and copied the first four letter DIGE and the last letter of the Plaintiff's trade mark DIGEPLEX for their preparations. It is alleged that the Defendants admit that their preparation is available over the counter. The Plaintiffs further aver that it is common knowledge that the drug which is subject of this suit is sold over the counter and often the chemists and druggists dispense it without a doctor's prescription. 10. The Plaintiffs' medicinal and pharmaceutical preparation bearing the trade mark "DIGEPLEX" is being sold throughout India, including Ahmedabad, place of Defendants herein. In the circumstances, before adopting the trade mark "DYGEX", the Defendants were fully aware of and/or ought to have been aware of the Plaintiffs' drug sold under the trade mark "DIGEPLEX" and the wide and enviable reputation acquired by the Plaintiffs' said drug. In the circumstances, before adopting the trade mark "DYGEX", the Defendants were fully aware of and/or ought to have been aware of the Plaintiffs' drug sold under the trade mark "DIGEPLEX" and the wide and enviable reputation acquired by the Plaintiffs' said drug. The Defendants have therefore knowingly, deliberately and dishonestly adopted the impugned trade mark "DYGEX" and are not entitled to use the trade mark "DYGEX" in respect of pharmaceutical preparations. 11. The Plaintiffs allege that they are the proprietor of the registered trade mark "DIGEPLEX" in respect of medicinal and pharmaceutical preparations. The use of the impugned mark "DYGEX" by the Defendants amounts to infringement of the Plaintiffs' registered trade mark "DIGEPLEX". The Defendants' impugned trade mark "DYGEX", it is alleged, is so closely similar to the Plaintiffs' trade mark "DIGEPLEX" that confusion and deception in the minds of chemists, traders and consumers between the rival preparations is inevitable. It is further submitted that the Defendants' medicinal and pharmaceutical preparation bearing the trade mark "DYGEX" are bound to be passed off as and for the Plaintiffs' said well known preparations. The Plaintiffs say that member of the trade and public who are acquainted with the Plaintiffs' preparations bearing the trade mark "DIGEPLEX" is bound to associate the Defendants' preparation with the Plaintiffs and are bound to be misled in buying the Defendant's preparation as and for the Plaintiffs' preparation. The composition of both the products is different. This can also be a source of medical problems and complications if a wrong product is consumed on account of confusion. The consequences of such deception or confusion will be serious. Any adverse reaction may prove to be irreversible. 12. The Plaintiffs rely on a table showing the difference in composition of both the products as could be found from the label on the Defendants product's is as follows: Composition of Plaintiffs and Defendants Product: DIGEPLEX-T (Plaintiffs Mark) DYGEX (Defendants Brand) In Tablet Form In Capsule Form Pancreatin I.P. 500 mg Aspergillus Niget Aspergillus Oryzae Collodal Silicon Dioxide Gelatin Magnesium Sidarate Hydro Oxypropyl Methyl Cellulose 13. The Plaintiff further submits that use of the trademark DYGEX will eventually dilute the distinctiveness of its well known trademark. It will erode the immense value attached with the mark. The Plaintiff further submits that use of the trademark DYGEX will eventually dilute the distinctiveness of its well known trademark. It will erode the immense value attached with the mark. In the circumstances, the Plaintiffs are entitled to an injunction of this Court restraining the Defendants from manufacturing, selling, offering or exhibiting for sale or otherwise dealing in medicinal or pharmaceutical preparation bearing the trade mark "DYGEX" or any other trade mark deceptively similar to the Plaintiffs' well known trade mark "DIGEPLEX" so as not to infringe the Plaintiffs' registered trade mark as well as pass off their preparation as the Plaintiffs' or in any other manner whatsoever. 14. The Defendant avers that it has filed a suit, before the present action by the Plaintiff, at Ahmedabad seeking declaration that its trademark DYGEX is not (Sic)milar to the Plaintiff's. According to the Defendant, the Plaintiffs present suit (Sic)ffers from delay and laches, because even after allegedly discovering, in 2004 (Sic) the so-called infringement, the Plaintiff slept over its right, and moved the (Sic)urt almost a year later, thus disentitling it to relief. 15. According to the Defendant, its product DYGEX is a food product, not a (Sic)edicinal preparation or drug; it is available across the counter, widely and is used (Sic)r unspecified indigestive disorders. The Defendants deny allegations of (Sic)fringement or passing off by them of the Plaintiffs marks; they aver that the two (Sic)val marks pertain to different goods, in separate classes of he Trademarks Act, 1999. The Defendant avers about price differential of the two products; its six tablets (Sic) available for Rs. 24/- whereas the Plaintiff's product in 200 ml syrup form costs Rs. 36/-; its 10 tablets cost Rs. 25/-. This fact is even averred in the plaint; as also (Sic)hat its products are prescription drugs, as against over the counter availability of (Sic) Defendant's goods. 16. The Defendant alleges that DIGIPLEX is not a distinctive word. Registration of its mark, DYGEX was sought for in 2005, in class 30. The Plaintiff's, goods bearing the DIGIPLEX mark are medicinal allopathic preparations, whereas (Sic)he Defendant's products are food supplements, prepared from Papaya extract. The channels of trade for the two product are separate. 16. The Defendant alleges that DIGIPLEX is not a distinctive word. Registration of its mark, DYGEX was sought for in 2005, in class 30. The Plaintiff's, goods bearing the DIGIPLEX mark are medicinal allopathic preparations, whereas (Sic)he Defendant's products are food supplements, prepared from Papaya extract. The channels of trade for the two product are separate. The Defendant also avers about other products in the market such as DIGENE, DIPEP, DIACALCIPLEX and RADIPLEX, which too are food supplements containing similar or identical letters as those of the parties in this suit. 17. It is evident from the above narrative that the Plaintiffs claim is premised upon continuous by it and by its predecessors of the Trade Mark DIGEPLEX for more than 35 years. This, its Counsel Mr. Mahipal, submits, has led to association of the mark with the Plaintiffs product alone. DIGEPLEX is sold and is available in the market in various dosage forms and packs. DIGEPLEX liquid is available in 100-200 ml glass bottles; DIGEPLEX Double strength is available in 100 ml glass bottles. DIGEPLEX drops are available in 15 ml glass bottles and DEGEPLEX-T are available in Tablet form. DEGEPLEX-T contains Pancreatip, used for treatment of acute and chronic pancreatitis. The Plaintiff claims that its DIGEPLEX formulation sales accounts for Rs. 34.18 crores during the period September 2001 to December 2004. The Defendants product "DYGEX" according to the Plaintiff, has copied the DIGEPLEX trade mark and is attempting to pass it off as their preparation. The Plaintiff issued legal notice to the Defendant; the latter in retaliation filed a suit seeking permanent injunction against the Plaintiff from carrying out groundless threat of action and declaration. That suit is pending. 18. Counsel's submission is based on phonetic similarity as well as attempt by the Defendant to dilute its mark. It is claimed that the Defendants have merely deleted the letters PL and have copied the four letters DIGE. The Defendants are also alleged to have copied essential features of the Plaintiffs trade mark. 19. The Defendants claim is one of dissimilarity of products. It is alleged and urged on its behalf by Mr. Kher, learned senior counsel, that DYGEX contains extracts of plants and the product is used for treatment of non-specific indigestion. The Defendant premises is refutation of the Plaintiff's case of dissimilarity of the trade-marks as well as of the product. 19. The Defendants claim is one of dissimilarity of products. It is alleged and urged on its behalf by Mr. Kher, learned senior counsel, that DYGEX contains extracts of plants and the product is used for treatment of non-specific indigestion. The Defendant premises is refutation of the Plaintiff's case of dissimilarity of the trade-marks as well as of the product. The Plaintiff's product or formulation is used for acute pancreatitis and the mark is also used for allopathic products. The Defendants products, on the other hand, it is alleged are, are available over the counter and are in the nature of generic products. 20. The Plaintiffs have relied on the rulings of the Supreme Court in Midas Hygiene Industries P. Ltd. and Another Vs. Sudhir Bhatia and Others, (2004) 3 SCC 90 ; the judgment of this Court and M/s. Syncom Formulations India Ltd. v. M/s. SAS Pharmaceuticals 2004 (28) PTC 632 and also the decision in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 . The Defendants, on the other hand, rely upon the judgments in F. Hoffmann-la Roche and Co. Ltd. Vs. Geoffrey Manner and Co. Pvt. Ltd., AIR 1970 SC 2062 ; SBL v. Himalaya Drug Co. AIR 1998 Del 126 , Khandelwal Laboratories Ltd. Vs. FDC Limited, (2001) 94 DLT 141 and Cadila Laboratories Ltd. v. Dabur India Ltd. 1997 3 (AD) Del (750). 21. The action in this case is one for alleged infringement of the Plaintiff's trade mark, DIGEPLEX. The basis for what constitutes infringement was indicated in Ruston and Hornsby Ltd. Vs. The Zamindara Engineering Co., AIR 1970 SC 1649 . The Court held that in a passing off action the issue which requires determination is whether the Defendant's goods are so marked to be designed or calculated to lead purchasers to believe that they are the Plaintiff's goods. However, in the case of infringement action the issue required to be addressed is whether the Defendant uses a mark which is the same as, or which is a colourable imitation of the Plaintiff's trade mark. The Court also held that although the Defendant may not be using the trade mark of the Plaintiff, the get up of its goods may be so like the Plaintiff's that a clear case of passing off would proved. The Court also held that although the Defendant may not be using the trade mark of the Plaintiff, the get up of its goods may be so like the Plaintiff's that a clear case of passing off would proved. Conversely even in the case of complete dissimilarity in get up, prices and nature of goods, in an infringement action, injunction would issue if it is proved that the Defendant is improperly using the Plaintiffs mark. 22. This fundamental distinction is necessary and has to be borne in mind in all such cases since a claim for infringement is based on statutory rights. The Court also significantly held that where the alleged infringement consists of using not the exact mark but something similar to it, the test of infringement is the same as an action for passing off. There the test is as to likelihood of confusion or deception arising from similarity of marks. 23. The Supreme Court in Midas Hygiene had to consider whether the Plaintiffs mark Laxman Rekha was infringed by the Defendant which too used the same words in identical packaging with similar colour combination. The Defendant was unable to give any explanation about the similarity. The Court held that infringement had been established. In Syncom this Court considered two rival marks Regon Forte and Regue-30. The Court held that the Defendant's mark infringed the Plaintiffs as the drug was used for the same purpose; the trade channels were the same as also the consumers of the product. The Court also observed that the class of purchasers included literate and semi-literate women including those living in the rural country-side. Therefore having regard to the use of the rival products and its properties, the Defendant's marks were held to be, prima facie, deceptively similar and ensnare an unwary customer into believing them to be the Plaintiffs products. Ad interim injunction was therefore confirmed. In Cadila the Supreme Court emphasized on the need to examine all the circumstances including the phonetic and visual tests while considering whether a trademark used in a product infringed or seeks to pass off another. The Court held that all classes of products were/are purchased by literate as well as illiterate folk, and the test of confusion or deceptively similarity was from the point of view of men of average intelligence and imperfect recollection. The Court held that all classes of products were/are purchased by literate as well as illiterate folk, and the test of confusion or deceptively similarity was from the point of view of men of average intelligence and imperfect recollection. The Court also held that judicial scrutiny should be closer if there is a confusion over marks of drugs and medicinal products. The Courts should be vigilant where the passing off or infringement is claimed in respect of drugs meant for curing the same ailment as the Plaintiffs medicine but whose composition may be different. The confusion, it was held, is more likely in such cases and error in incorrect intake of medicines can lead to serious consequences. 24. The Supreme Court had, in an earlier decision (F. Hoffmann-La Roche and Co. Ltd.) where the rival marks were "DROPOVIT" and "PROTOVIT" held that there was a radical difference between deception and causing confusion; in the former an attempt to lie about a state of affairs of exists whereas in the letter the element of false representation is missing. The Court held that while considering word marks the following features or elements would have to be weighed: (1) the look and the sound of the words (2) the goods for which the words are to be applied (3) the nature and kind of customer likely to buy the goods (4) all the surrounding circumstances. (5) What is likely to happen, if each of the trademarks is used in a normal way as a trade mark for the goods of their respective owners. The Supreme Court also considered the test of phonetic similarity which is to be based on first impression and emphasized that marks should be compared as whole and it would not be correct to take portions of word and claim that they were different from the corresponding portion to say that there was no similarity to cause confusion. 25. The Division Bench ruling in SBL Ltd. is instructive and luminous on this score. The Plaintiffs trade mark in LIV-52 was held not to be infringed by the Defendants, marketing Homeopathic pharmaceuticals preparation LIVE-T. The Court held that the first part of the word LIV was descriptive in nature and in a abbreviation for liver. An interesting discussion appears in Paras 23.2 to 23.6 of the judgment, where apart from the Roche and Co. The Plaintiffs trade mark in LIV-52 was held not to be infringed by the Defendants, marketing Homeopathic pharmaceuticals preparation LIVE-T. The Court held that the first part of the word LIV was descriptive in nature and in a abbreviation for liver. An interesting discussion appears in Paras 23.2 to 23.6 of the judgment, where apart from the Roche and Co. case, other instances from reported decisions were considered (DeMeth Ltd. for registration of a trade mark (1948) 65 RPC 342 where "SEDASELTZER" as opposed "ALKA-SETZER"); Bayor Products Ltd. v. A. Wander Ltd. (1947) 64 RPC 125 (where ALACIL was juxtaposed with BIASIL); Stadmed Pvt. Ltd. v. Hind Chemicals AIR 1965 P&H 17 where the concerned trade-marks were ENTROZYME and ENTOZIME; E.R. Squibb and Sons Inc. Vs. Curewel India Limited, AIR 1987 Delhi 197, (where the rival marks were "Curechlor" and "Reclor" both pharmaceutical preparations of identical formulation); Mount Mettur Pharmaceuticals (P.) Ltd. Vs. A. Wander, AIR 1977 Mad 105 , (the marks in question being ASHEMIX and ASMAC, both Schedule H drugs for treatment of Asthma); Geigy A.G. v. Chelsea Drug and Co. Ltd. 1966 RPC 64 (the trade marks here being BUTAZOLIDIN and BUTAZONE containing the same formulation) and Helena Rubstoni's Ltd. Application 1960 RPC 229 (the competing marks being Skin and Skin Deep). In each reported case the claims of deceptive similarity or likelihood of confusion on the basis of visual or phonetically similar words were turned down. 26. The facts of this case show that the Plaintiff's products are all allopathic drugs for specific disorders. They are prescription drugs, not expected to be sold across the counter. No doubt in Cadila the Supreme Court cautioned the Courts that the test of similarity should not be stretched too far having regard to the nature of customer base in India and also the likelihood of confusion by medical practitioners and pharmacists. The Courts have to factor in the likelihood of mistakes. One important factor which led the Court conclude as they did was that the rival marks apart from being similar were also in relation to the same drugs or products. 27. The Plaintiffs state that in so far as the product DIGEPLEX-I is concerned as stated above it contains pancreatin I.P. 500 mg., and is a specific therapy for acute and chronic pancreatitis, a life threatening condition. 27. The Plaintiffs state that in so far as the product DIGEPLEX-I is concerned as stated above it contains pancreatin I.P. 500 mg., and is a specific therapy for acute and chronic pancreatitis, a life threatening condition. DIGEPLEX-T and DIGEPLEX in liquid form are medicines belonging to the Allopathic System of medicine. 28. On the other hand, DYGEX contains extracts of three medicinal plants and is useful for treatment of non specific indigestion. It is a herbal medicine and does not belong to Allopathic System of medicine. DIGEPLEX and DYGEX are according to the Plaintiff phonetically and visually similar and there is a high probability that DYGEX may get dispensed in place of DIGEPLEX or vice versa. It is submitted that both the products are sold in the same shop, fromt eh same shelf besides each others. 29. In this case the Defendant has averred that there are several products available in the market which the prefix DI/DIG " and suffix LEX or EX such as (Sic), DIPEP, DIACAL, CIPLEX, RADIPLEX etc. It also claims that the Plaintiffs mark does not connote a distinctive word. The Defendants had applied under registration Clause 30; its products are used as a food supplement, extracted from Papaya enzym and widely sold across the counter. DIGIPLEX is a medicinal preparation administered according to Physicians directions. 30. On an analysis of the various decisions this Court feels that an overall Comparison of both the marks, without undue emphasis on points similarity or dissimilarity should be first undertaken. The Plaintiffs mark and get up which is compared with that of the Defendant have been both made available in the documents. The Plaintiffs tablets, as available on the records, are in a light blue foil strip with the words DIGIPLEX set in a narrow red strip. Immediately above the mark the expression "Pancreatin tablets" are used. The Defendant's products i.e DYGEX, on the other hand, are marketed through tablet form with a different get up. The size-off the strip is different. The colour combination is different; it is pale green. Likewise, the get up as also the size of the fonts are different. The Defendants documents contains a copy of the suit filed in Ahmedabad which discloses that other products containing similar names are available in the market such as DIZEC, DIZYME, DIGEST, CALPLEX, DIAGEL etc. The colour combination is different; it is pale green. Likewise, the get up as also the size of the fonts are different. The Defendants documents contains a copy of the suit filed in Ahmedabad which discloses that other products containing similar names are available in the market such as DIZEC, DIZYME, DIGEST, CALPLEX, DIAGEL etc. The Plaintiff has not denied that the Defendants products DYGEX are sold for non-specific indigestion disorders. On the other hand, the Plaintiffs formulations are different and are used as medicinal remedies for particular ailments. These two factors are significant pointers in addition to the broad dissimilarity of the get up, colour combination and general features of the two marks. Keeping all these in mind it is apparent that the use of the expression DIG - (by the Plaintiff) and the use of the work DYG (by the Defendant) is broadly descriptive of digestion; that is where the similarity ends. The Plaintiffs products are used for entirely different purposes than those of the Defendant. The latter products look and sound different from the Plaintiff's. 31. On an overall consideration of all the facts this Court is of the opinion that the use of the word DYGEX by the Defendant in its products does not prima facie amount to infringement; the Plaintiff also have not been able to prima facie show that any passing off can be discerned. The special considerations that the Defendant's products though in a different class, can also be registered as a pharmaceutical product and that it may amount to dilution of the Plaintiff's mark too have not been shown. In the circumstances this Court is of the opinion that the ex parte injunction granted on 11.3.2005 should not be continued. The said order is accordingly vacated. I.A No. 1962/2005 is, therefore, dismissed.