Case Note & Summary
The dispute arose from a civil suit filed by Schering Corporation and Fulfort (India) Limited (appellants) against United Biotech (P) Ltd. and Oscar Remedies Pvt. Ltd. (respondents) seeking permanent injunction for trademark infringement and passing off. The appellants held the registered trade mark 'NETROMYCIN' and alleged that the respondents' use of 'NETMICIN' along with similar packaging and copy constituted infringement and passing off. In the suit, the appellants moved Notice of Motion No.3459 of 2004 for interim reliefs. At the hearing, they pressed only the passing off claim. The learned Single Judge of the Bombay High Court dismissed the notice of motion on 14 July 2006, holding that the appellants failed to prove distinctiveness of their mark or packaging, the marks were not deceptively similar, there was no likelihood of confusion because the respondents' goods were sold in bulk to hospitals whereas the appellants' goods were sold over the counter, the essential features of the marks differed, the consumer would not be adversely affected since both products used common chemicals, and numerous medicines in the market ended with 'Mycin', 'Micin', or 'Cin'. Aggrieved, the appellants filed Appeal No.548 of 2007. Before the Division Bench, the appellants argued that the Single Judge applied an incorrect test for deceptive similarity by comparing syllables microscopically instead of viewing the marks as a whole, contrary to Supreme Court precedents in Cadila and Corn Products. They contended that phonetic similarity exists, bulk purchase does not eliminate confusion as physicians are not infallible, packaging differences cannot outweigh the strong similarity of the word marks as held in Girnar Tea, and the respondents' adoption was dishonest which itself warrants injunction without further enquiry. They also argued that the respondents' registration of 'Netmycin' estops them from claiming that 'Net' or 'Mycin' is generic. The respondents countered that both marks were derived from the generic name 'Netilmicin Sulphate' and that the common suffix reduced confusion. The judgment text is incomplete, cutting off during the respondents' submissions, and the final decision of the Division Bench is not available.
Headnote
A) Intellectual Property - Trade Marks - Deceptive Similarity - Trade Marks Act, 1999 - The appeal challenged the Single Judge's finding that 'Netromycin' and 'Netmicin' are not deceptively similar. Appellants contended that the correct test requires comparing the marks as a whole, not syllable by syllable, relying on Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. and Corn Products Refining Co. v. Shangrila Food Products Ltd. (Paras 1-2). The court examined the submissions and the authorities. B) Intellectual Property - Trade Marks - Likelihood of Confusion in Pharmaceutical Products - Trade Marks Act, 1999 - The Single Judge held that bulk purchases by hospitals and the technical expertise of purchasers eliminated the possibility of confusion. Appellants argued that this view contradicts Supreme Court authority in Cadila, which states that physicians are not infallible and confusion can still occur despite specialized purchasers. (Paras 1-2). The court noted these arguments. C) Intellectual Property - Trade Marks - Passing Off and Added Matter - Trade Marks Act, 1999 - The Single Judge distinguished the marks based on essential features and packaging. Appellants contended that the similarity of the word marks cannot be outweighed by packaging differences, citing Girnar Tea v. Brooke Bond. The principle that added matter must outweigh the impression created by the similarity of the marks was argued. (Para 3). The court considered these precedents. D) Intellectual Property - Trade Marks - Dishonest Adoption and Estoppel - Trade Marks Act, 1999 - The appellants argued that the respondents' adoption was dishonest and that their registration of 'Netmycin' estops them from claiming that 'Net' or 'Mycin' is generic. Cases such as Automatic Electric Ltd. v. R.K. Dhawan were cited. The court examined the contention regarding dishonest intention and its effect on the defense. (Paras 4-5). E) Intellectual Property - Trade Marks - Generic Derivation and Common Trade Suffix - Trade Marks Act, 1999 - The respondents argued that both marks derive from 'Netilmicin Sulphate' and that many marks end with 'Mycin'/'Micin'/'Cin', reducing confusion. Appellants countered that once marks are registered and distinctive, such common derivations do not avoid confusion, and respondents cannot approbate and reprobate. The court considered these submissions. (Para 4). F) Intellectual Property - Trade Marks - Variables Affecting Likelihood of Confusion - Trade Marks Act, 1999 - The appellants asserted that factors like price differential and limited present usage are variable and cannot form a safe basis to deny injunction, especially where dishonest adoption is prima facie shown. (Para 6). The court noted the argument.
Issue of Consideration
Whether the learned Single Judge correctly refused interim injunction on grounds that marks 'Netromycin' and 'Netmicin' are not deceptively similar, and surrounding circumstances negate confusion?
Final Decision
Not mentioned - judgment text incomplete.
Law Points
- test of deceptive similarity requires whole-word comparison
- not microscopic examination
- phonetic similarity not dependent on number of syllables
- physicians not infallible regarding confusion
- dishonest adoption vitiates defence
- registration estoppel against claiming genericness
- added matter in packaging must outweigh similarity of marks
- surrounding circumstances like bulk purchase do not automatically rule out confusion
