JUDGMENT 1. This appeal, under Order XLIII, Rule 1(r) of the Code of Civil Procedure the Code has been preferred against the order dated 17-8-2011 (hereinafter referred to as 2011 passed by XIX Additional District Judge, Jabalpur in Civil Suit No. 86-A/2011. By that order, the appellant application, under Order 39, Rule 1 & 2 read with Section 151 of the Code, for grant of temporary injunction, restraining the respondents from using the trade DEXOLAM or any trade name/trade mark, which is identical or name/trade mark deceptively similar or resembling to the appellant registered trade mark DEXOLAC, was dismissed. 2. The suit was filed, under Section 134 of the Trade Marks Act, 1999 (for short DEXOLAC registered in the name Act for infringement of Trade Mark appellant-Company and also for passing off arising out of the use of trade name of DEXOLAM by defendants/respondents. The plaintiff/appellant also prayed for relief of permanent injunction to the aforesaid effect together with ancillary reliefs including rendition of accounts of profits earned by the defendants by manufacturing and selling pharmaceutical preparation under the trade name of DEXOLAM. 3. As pleaded by the appellant – (i) It is a company registered under the Companies Act, 1956, and its predecessors had started manufacturing and marketing of pharmaceutical and medicinal preparations in India way back in the year 1963. It has earned a wide reputation and goodwill of being one of the leading manufacturers of pharmaceutical and medicinal preparations of high quality. It is the registered proprietor of various trade marks including DEXOLAC, which is used by it in respect of food supplements for infants and invalids included in Class 5 of the Fourth Schedule to the Trade Marks Rules, 2002 under the Act. The trade mark has been openly, continuously and extensively used since 1982 and in the meanwhile, it had introduced several line (sic) extensions to the DEXOLAC brand such as DEXOLAC 1, DEXOLAC 2, DEXOLAC 3 and DEXOLAC SPECIAL CARE etc. Thus, the said trade mark has a distinctive character and has come to be identified exclusively with the medicinal and pharmaceutical preparations manufactured by it. Thus, the said trade mark has a distinctive character and has come to be identified exclusively with the medicinal and pharmaceutical preparations manufactured by it. (ii) Somewhere in the month of February, 2011, it was brought to the notice of its office bearers that one BMW Pharmaco have been India Ltd. (for brevity manufacturing medicinal and pharmaceutical preparation under the mark DEXOLAM the suit mark and after making further enquiries, it was hereinafter referred to as found that the respondents are the subsidiaries of the BWM. The medicine DEXOLAM contains the molecule, which is a Scheduled H Drug used in the treatment of hypertension and none of the other products manufactured by BMW contains the prefix DEXO. It was further noticed that the application moved on behalf of the respondents for registration was pending before the Registrar of Trade Marks. (iii) Adoption and use of the suit mark is going to create confusion in the mind of public and is likely to result dangerous to the public health particularly of infacts and invalids, as even the doctors and physicians are not infallible and any mistake in administering the drug having a different composition and notified as Scheduled H Drug, may result in disastrous results. 4. The respondent No. 1 did not prefer to contest the injunction application whereas the respondent No. 2 fairly admitted use of the suit mark in respect of its product. However, it pleaded ignorance of the fact that the appellant is the registered holder of the Trade Mark DEXOLAC and submitted that there was no reasonable ground for believing that such a trade mark was registered and was in use. 5. While denying the allegations regarding infringement of the Trade Mark or passing off as false and baseless, the respondent No. 2 has raised preliminary objection that the suit was without cause of action and was premature as the appellant had an alternative remedy of appeal, under Section 91 of the Act, against the order of decision of the Registrar, upon his application for registration of trade mark DEXOLAM. In this regard, attention has been invited to the fact that after filing notice of opposition on 7-3-2011, the appellant had filed the suit, even without waiting for the decision of the Registrar. 6. In this regard, attention has been invited to the fact that after filing notice of opposition on 7-3-2011, the appellant had filed the suit, even without waiting for the decision of the Registrar. 6. In support of the explanation that there is nothing in the use of suit mark that can mislead or deceive the consumers, it had not only pointed out that colour, get-up and price of both the products are totally different but has also highlighted the following distinctive dissimilarities trade mark as given in clause of Section 2(1) of the Act includes amongst other trade mark is best expressed word also. Meaning of or between DEXOLAC and the suit mark viz. DEXOLAM. 7. Scope of the appeal against the order refusing injunction in the case of infringement of the trade mark is well defined. Accordingly, the question is as to whether the discretion exercised by trial Court in refusing to entertain the prayer for temporary injunction is vitiated by an error apparent or perversity resulting in manifest injustice (Skyline Education Institute (Pvt.) Ltd. v. S. L. Vaswani, AIR 2010 SC 3221 referred to). 8. At the outset, it may be observed that in view of the admitted fact that the application moved by the respondent No. 2 for registration of the suit mark was pending before the Registrar on the date of the presentation of the suit, the objection as to its maintainability is apparently misconceived simply because right to appeal, under sub-section (1) of Section 91, is conferred upon the person aggrieved by the order or decision of the Registrar under the Act. 9. Before adverting to the factual aspects of the matter, it may be observed that definition of by Bowen, L.J. (In re, Powell Trade Mark (1893) 10 RPC 2000) in these words trade mark means a mark used in relation to goods for the purpose of indicating a connection in the course of trade between the goods and some person having the right to use that mark. The function of a trade mark is to give an indication to the purchaser or a possible purchaser as to the manufacture or the quality of the goods, that give an indication to his eye of the trade source or the trade hands through which they pass on their way to the market (Quoted with approval by the Apex Court in Sumat Prasad Jain v. Sheojanan Prasad AIR 1972 SC 2488 ). 10. A bare perusal of the pleadings would reveal that, in essence, it is a suit for infringement of the trade mark and not for passing-off. For this, reference may be made to the decision of the Supreme Court in Kaviraj Pandit Durga Dutt Sharma v. Navaratna Pharmaceutical Laboratories, AIR 1965 SC 980 wherein distinction between an action for passing off and that for infringement of trade mark was explained thus. An action for passing off is a Common Law remedy being in substance an action for deceit, that is, a passing off by a person of his own goods as those of another. But that is not, the gist of an action for infringement. The 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. The use by the defendant of the trade mark of the plaintiff is not essential in an action for passing off, but is the sine qua non in the case of an action for infringement. No doubt, where the evidence in respect of passing off consists merely of the colourable use of a registered trade mark, the essential features of both the actions might coincide in the sense that what would be a colourable imitation of a trade mark in a passing off action would also be such in an action for infringement of the same trade mark. But there the correspondence between the two ceases. In an action for infringement, the plaintiff must, no doubt, make out that the use of the defendant mark is likely to deceive, but where the similarity between the plaintiffs and the defendant 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 rights are violated. Expressed in another way, 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; whereas in the case of passing off, the defendant may escape liability if he can show that the added matter is sufficient to distinguish his goods from those of the plaintiff. (Emphasis supplied) 11. Further, in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity, the following factors are required to be considered. (a) The nature of the marks i.e. whether the marks are word marks or label marks or composite marks, i.e. both words and label works. (b) The degree of resembleness between the marks, phonetically similar and hence similar in idea. (c) The nature of the goods in respect of which they are used as trade marks. (d) The similarity in the nature, character and performance of the goods of the rival traders. (e) The class of purchasers who are likely to buy the goods bearing the marks they require, on their education and intelligence and a degree of care they are likely to exercise in purchasing and/or using the goods. (f) The mode of purchasing the goods or placing orders for the goods and (g) Any other surrounding circumstances which may be relevant in the extent of dissimilarity between the competing marks. (Weightage to be given to each of the aforesaid factors depends upon facts of each case and the same weightage cannot be given to each factor in every case) (See Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. AIR 2001 SC 1952 ) 12. Under sub-section (1) of Section 28 of the Act, the proprietor of the Registered Trade Mark gets exclusive right to use 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, which is explained in sub-section (1) of Section 29 of the Act as under. A registered trade mark is infringed by a person who, not being a registered proprietor or a person 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 goods or services 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. It reads thus deceptively similar a mark shall be deemed to be deceptively similar to another mark if deceptively similar have been defined in Clause (h) of Section 2(1) 13. The words it so nearly resembles that other mark is to be likely to deceive or cause confusion; It reads thus – 14. Lord Denning explained the words confusion in Parker Knoll Ltd. v. Knoll International Ltd., 1962 RPC 265 in the following manner cause confusion is another. The to deceive is one thing. To Secondly, difference is this : When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so. [Quoted by the Supreme Court in F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. Private Ltd., AIR 1970 SC 2062 ] 15. The decision in Roche case ( AIR 1970 SC 2062 ) (supra) is an authority for the proposition that the true test to be applied for judging an infringement is whether the offending trade mark is such that it is likely to cause deception or confusion or mistake in the minds of persons, accustomed to the existing registered trade mark. 16. 16. For a ready reference, relevant extracts of Section 29(4) of the Act may be reproduced as follows Section 29. Infringement of registered trade marks (4) A registered trade mark is in fringed by a person who, not being a registered proprietor or a person using by way of permitted use, uses in the course of trade, a mark which (a) Is identical with or similar to the registered trade mark; and (b) Is used in relation to goods or services which are not similar to those for which the trade mark is registered; and (c) The registered trade mark has a reputation in India and the use of the mark without due cause takes unfair advantage of or is detrimental to, the distinctive character or repute of the registered trade mark. 17. Learned Senior counsel has submitted that the respondents with a deliberate and systematic intent to make wrongful gain by adopting the suit mark even before getting it registered are encashing goodwill and reputation earned by it during a considerable period. He is further of the view that as both the products, having a predominant similarity of DEXOLA deal with human life, the paramount consideration in exercise of discretion is the public interest. According to him, the probability cannot be ruled out that the confusion arising from the marks which are deceptively similar may result in appreciable harm to infants or invalids. 18. Per contra, learned counsel for the respondent No. 2 has strenuously contended that being Scheduled H drug, DEXOLAM cannot be sold without production of prescription of the registered medical practitioner. He is also of the opinion that any chemist is not expected to make such a mistake particularly when both the products are meant to serve altogether different purposes. 19. However, as observed by Mody J. in Himalaya Drug Co. v. Warner-Lambert Pharmaceutical Co., 1969 Bombay Law Reporter 528, though in a different context, after-all, the goods to which both the rival marks are to apply are drugs or pharmaceutical products and not articles like toys or combs or shoes or the like, in which cases, confusing one mark for the other would not result in some appreciable harm. In the case of drugs or pharmaceutical products, the ailing public requires a very great degree of protection and particularly, so when the result of a confusion occurring would be disastrous. In the case of drugs or pharmaceutical products, the ailing public requires a very great degree of protection and particularly, so when the result of a confusion occurring would be disastrous. Reference may also be made to the decisions in the following cases, pertaining to infringement of trade mark, justifying grant of temporary injunction to the plaintiff. (i) Bombay Oil Industries Pvt. Ltd. v. Ballarpur Industries Ltd., AIR 1989 Delhi 77, wherein the marks and were held to be so phonetically similar as to give rise to confusion. (ii) Mumtaz Ahmad v. M/s. Pakeeza Chemicals, AIR 2003 All 114 wherein plaintiff using trade mark super liquid blue on its product of indigo was found entitled to grant of ad interim injunction against defendant using similar trade mark Golden Pakeeza Super Liquid Blue on its product of indigo, while observing that infringement causes injury to goodwill of aggrieved party and it also loses its faith in mind of public and there is also possibility of spurious goods being supplied under that trade mark and such type of injury cannot be compensated in terms of money. (iii) D. R. Cosmetics Pvt. Ltd. v. J. R. Industries, AIR 2008 Bombay 122, wherein the plaintiff manufacturing soap strips consisting of special paper on which a thin coating of soap is applied, was found entitled to injunction against the defendant, who was found using mark for their similar product in view of the fact that defendant commenced business in 2003, well over three decades after commencement. It was also held that plea of delay by plaintiffs in approaching the Court in absence of material on record to show that plaintiffs had acquiesced in use of offending mark by defendant would not be maintainable. (iv) Poddar Tyres Ltd. v. Bedrock Sales Corporation Ltd., AIR 1993 Bombay 237 wherein the contentions that any trader who exclusively sells the goods bearing a registered trade mark, has a right to adopt a trade name which could include the said trade mark and that such adoption would not amount to infringement or passing off, were rejected holding that prima facie, existence of both was established. 20. 20. In the background facts and circumstances of the case as well as the well settled position of law on the subject, it is not possible to hold that exercise of discretion in refusing to grant temporary injunction was based upon objective consideration of the material placed before the Court. Further, in case of infringement, it is for the Court to decide whether the marks are similar and the Court is required to approach it from the point of view of a man of average intelligence and imperfect recollection (Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 . 21. This apart, while summing up the legal position by referring to almost all the earlier decisions and overruling its verdict in S.M. Dyechem Ltd., M/s. v. M/s. Cadbury (India) Ltd., AIR 2000 SC 2114 , the Supreme Court in Cadila case ( AIR 2001 SC 1952 ) (ibid) reiterated the preposition that in a case of infringement of trade mark, dissimilarities cannot be given importance against similarities. 22. To sum up, negative findings on the issues of prima facie case, irreparable injury and balance of convenience deserve to be interfered with for these reasons as. (a) Predominant factor is that both the products concern public health and the ailing public requires protection against use of phonetically similar trade-names. (b) Injury to the appellant cannot be compensated in terms of money and (c) Balance of convenience is in favour of the appellant in view of considerably long user of the trade mark. 23. Accordingly, the appeal is allowed. The respondents are restrained from using the trade DEXOLAC in any of their products. They may, however, carry on their business in any other name insofar as manufacturing of the Alprazolam tablets is concerned as per the terms of the licence granted to them. 24. In order to ensure early decision of the issues involved, it is further directed that the temporary injunction shall remain in force for a period of 6 months and within this period, the trial Court shall decide the suit on merits, in accordance with law. Appeal allowed.