2003 PLP 794 (CLD)

REGD. MARK No. KRUA TOVAR-UN CIPRINOL REGD. MARK No.106551 The descriptive word "Ciprofloxacin" or "Quinlones" from which Trade Mark word Ciproquine is coined or invented appear in Trade description/generic name or material of various national and international pharmaceutical publications. Their plea was that the trade mark in pharmaceutical usually use such prefixes which signify or indicate to doctors, purchasers or traders the disease, generic name, or illusory description of character or quality of products or raw material used in it and the Registrar of Trade Marks usually allows registration having common prefix so derived as doctors can only prescribe such drug or medicines and purchasers can distinguish such trade marks and not by prefixes thereof. They have also denied that doctors frequently slur in termination of trade mark and maintained that doctors in case of antibacterial medicinal preparation of various manufacturers having common prefixes, pay more attention to fully write such medicine and do not scribble the same as alleged. The prefix Cipro having been derived by plaintiff from generic name of trade description Ciprofloxacin, to indicate component or ingredient or quality or character of the said anti-bacterial medicine and in the game manner bonafidely adopted by other manufacturers with different terminations in their trade marks to distinguish their products and hence it is the complete word Mark "Ciproxin" or "Ciproquein", which is used to sell and prescribe the product and not word "Cipro" and no confusion has ever prevailed till this date or is likely to prevail in future if the said different Mark Ciproxin and Ciproquine having common prefix Cip or Cipro but different terminations are used in the market of Pakistan. They maintained that bonafidely they adopted the different Mark Ciproquine with label packet in the year 1991 for the said drug and got the said drug registered from Ministry of Health, Islamabad in the year 1993. Since then the defendant continued to manufacture and sell their said Ciproquine product in Pakistan without causing any confusion and deception and without any objection from plaintiffs and the said mark for the said high quality pharmaceutical preparations has acquired great goodwill, reputation, and exclusively to signify to purchasers, traders and doctors that said products are originating from defendant's company alone. They have also given annual sales figures as under:-- Year Annual sales 1993 Rs.2499758 1994 Rs.4220929 1995 Rs.12815374 1996 (up to August) Rs.9481985 Affidavits of different doctors and traders engaged in medicine and pharmaceutical have been filed wherein they have maintained that they usually prescribe Ciproquine of defendant-company to their patients, as the same is very effective and of high standard and quality and other anti-bacterial medicines are available with prefix CIP or "CIPRO". Affidavit of Chemist and Druggist to the effect are, also filed that they never supply Ciproxin or Ciproquine without doctor's prescription and doctor never abbreviate Ciproquine or Ciproxin as Cipro on their prescription.

9. The defendant Epla Laboratories (Pvt.) Ltd. (in Suit No.885 of 1996) contested the application by filing affidavit of Muhammad Tariq Siddiqui, Chief Executive of the defendant in Suit No.885 of 1996. They have taken almost same pleas with additional pleas that they have Registered Mark Cipromax and their year-wise sales have been claimed as under:-- Year Actual Sale in Rs. 1993 8.335.00 1994 4,586.785.00 1995 2,478,614.89 1996 2,018,888.55 Affidavit in rejoinder was filed denying the averments of the counter-affidavit and maintained that they have filed the suit against the infringement of their trade mark against the manufacturers/ traders shown in the counter-affidavit.

10. The main ground of the plaintiffs is that the name "Ciproquine", "Ciprocide" and "Ciproxin" are phonetically similar, as such the products of the defendants are likely to pass off as that of the plaintiffs' goods. On the other hand, counsel for the defendant maintained that the trade mark of the defendants are not phonetically similar to that of plaintiffs.

11. The grievance of the plaintiffs in their suits is about the phonetic similarity. Before going into the contentions of the parties relating to the question of phonetic similarity between the words Ciproquine. Ciproxin and Ciprocide, let me refer the following sections of the trade mark and settled principles as laid down by various authorities in the field of trade marks.

12. What is a trade mark? 'How the rights are acquired therein? What is the effect of use of common descriptive or generic words as trade mark or as one of the constituents of the word? What amounts to infringement of a trade mark and passing of goods as the goods of another person? The answers of these questions are contained in the following sections:-- "(a) Under section 2(c) of the Act, a trade mark is a mark used or proposed to be used in relation to goods for the purpose of indicating or so as to indicate a connection in the course of trade between the goods and some person having the right, to use the mark. Under section 8(A) of the Act, a mark shall be deemed to be deceptively similar to another mark if it so nearly resembles that other marks as to be likely to deceive or cause confusion. (b) Under section 10(1) of the Act, a mark the use of which would be likely to deceive of cause confusion is prohibited from being registered. (c) Under section 21 of the Act, the registration of a trade mark shall give to the registered proprietor of the trade mark, the exclusive right to the use of the trade mark in relation to the goods in respect of which the trade mark is registered. (d) Under same section of the Act, the use of a trade mark by a person who not being a registered proprietor of the trade mark or a registered user thereof which is identical with, or deceptively similar to a registered trade mark amounts to the infringement of trade mark and the registered proprietor can take action or obtain relief in respect of infringement of trade mark.

13. Thus the reading of the above sections would reveal that the registered proprietor of a trade mark has been in given an absolute protection as against the infringement and passing off. In an infringement action, the issue is whether the defendant is using a mark which is the same as or which is a colourable imitation of the plaintiffs trade mark. In a passing off action, the issue is whether the defendant is selling the goods so marked as by design or calculated to lead the public to believe that they are the plaintiffs goods. The element of deception or confusion becomes irrelevant in this issue, as the same is implicit inherent or presumed to be present, in an action for infringement of a trade mark. Relief shall not be granted to the plaintiff if the defendant establishes to the satisfaction of the Court that the use of the mark which, the plaintiff complains is not likely to deceive or cause confusion or to be taken as indicating a connection in the course of trade between the goods in respect of which the trade mark is registered.

14. The ultimate test is whether the mark used by the defendant as a whole is deceptively similar to that of the registered mark of the plaintiff. The Court has to compare the two marks with the degree of resemblance which is i necessary to exist to cause deception not being capable of definition by laying down objective standard. The persons who would be deceived are of course the purchasers of the goods and it is the likelihood of their being deceived that is the subject for consideration. The purpose of comparison is for determining whether the essential features of the plaintiffs trade mark are to be found 'used by the defendant. When two marks are not identical, the plaintiff would have to establish that the marks used by the defendant so nearly resembles with the plaintiff is registered trade mark is likely to deceive or cause confusion in relation to the goods in respect of which it is, registered.

15. The test for judging the case of infringement and/or passing off 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 who have special knowledge or expertise in the field. The manner in which trade in such medicines is carried on that is, the patients advised by doctors, chemists and druggists, these two facts assume significance and shall have to be kept in view by the Courts.

16. To sum up correctly test to be applied for judging an infringement action or action in the field of medicinally and pharmaceutical preparation remains the same as are applicable to other goods. However, in case of preparation trading whereof is governed by the statutory rules or regulations, additional consideration becomes relevant they are (i) mariner in which trade is carried on, such as sales should have been made only, by authorized or licensed vendor, who will be also having supplied all medicine, (ii) class of person, who would be purchaser whether they would be accompanied by doctors prescription and would in all probability attaches with the doctor. Let me now refer to some of the passage from various books by famous authors: (a) Mc. Cathy on Trade Marks and Unfair Competition (3rd Edition) states; the names of the product or service itself, what it is, they very antithesis of a mark. In short, a generic name of a product can never function as a trade mark to indicate origin. The terms "generic" and "trade mark" are mutually exclusive. Thus if, in fact, a given term is generic", it can never function as a mark to identify and distinguish the product as a mark to identify and distinguish the products of only one seller. An abbreviation of a generic name which still, conveys to the buyer the original generic connotation of the abbreviated name, is still generic. (b) P. NARYANAN in law Trade Marks (1963 Edition) at page 101 says that generic non-proprietary term published by the General Medical Council in England and included in the British, India, American and other standard pharmacopoeia are open to the trade and no person could claim a monopoly in any of them. (c) In Kerly in Law of Trade Marks and Trade Names (12th Edition) deals with proof of likelihood of deception as under:-- The Court must in the common case be satisfied that the defendant's conduct is calculated to pass of other goods as those of the plaintiff, or at least, to produce such confusion in the minds of probable customers or purchasers or other persons with whom the plaintiff has business relations as who, would be likely to lead to the other goods being bought and sold for him. This is the foundation of the action. (d) In Halsbury's Laws of England (4th Edition), Vol. 48. it has been dealt with as under:-- "In arriving at the conclusion of fact as to whether deception or confusion is likely, the Court will have regard to-- (i) the nature and extent of reputation relied upon; (ii) the closeness or otherwise of the respective fields of activity in which the plaintiff and the defendant carry on business; (iii) the similarity of the mark, name, etc. used by the defendant to that of the plaintiff; (iv) the manner in which the defendant makes use of the name, mark, etc. complained of and collateral factors, and (v) the manner in which the particular trade carried on the class of person it is alleged is likely to be deceived and all other surrounding circumstances.

17. Keeping these settled principles in my mind, I shall now deal with the question posed before me in this case. Now the action is sought for by seeking relief as against the infringement and passing off as pointed out by the learned counsel for the plaintiff mainly on the basis of phonetic similarity.

18. Learned counsel for the plaintiff cited several authorities to establish that the Trade Mark Ciprocide, Ciproquine, Ciproxin have phonetic similarity.

19. From the above discussion, the- question of grant of injunction at the present moment should arise as, according to the plaintiff, the use and abuse of similar marks of the defendant has caused irreparable loss and damage as they are misleading the public at large into believing that the marks of the defendants are not identical to those of the plaintiff and, therefore, the defendants can use the same without causing any loss or injury to the plaintiff.

20. By now, it is well-settled law, both locally and internationally, that in all types of marks which are registered or unregistered, but are used by competing organizations and companies certain similarities are very much evident. These similarities may be in the form and style of the design or over all get-up or they may be phonetically similar to each other. In the instant case, the claim is not on the word or design or the get-up but on the phonetic similarity between the marks of the plaintiff and the defendant. Even phonetic similarity is found only to the extent of word CIP and/or CIPRO. The suffix to this prefix is different not only in spelling but even phonetically.

21. Can, therefore, the plaintiff surely claim to the exclusive use and the benefit derived therefrom of the prefix CIP/CIPRO. It is claimed by them that it is invented word having no meaning, yet from the affidavit and counter-affidavit filed by both sides it emerges that not only is the prefix taken from generic word Ciprofloxacin but over the years by adoption of the prefix not only by the plaintiff for his different marks but also by the defendant and also other pharmaceutical companies, the word CIP or CIPRO is gaining a meaning and in fact it is being identified too and with the prefix of pharmaceutical companies in respect of antibacterial medicinal preparation. Can it, therefore, be said that indeed the plaintiffs have exclusive right, to the use of this mark and that anybody who uses the marks with similar prefixes are barred or should be barred from doing so. To my mind, while granting injunction, I have to keep in mind the well- settled principle adopted by the Supreme Court as to whether the plaintiffs have a prima facie case. Admittedly an arguable case exists but would the arguable case benefit the plaintiff at the cost of causing loss and injury to the defendant? The plaintiff has claimed that their product is superior and indeed it must be. However, that is the case of the plaintiff. The defendants equally insist not only that their marks and products are of high quality but also their use in the market in Pakistan. The affidavits of Muhammad Fayaz and Muddasar Farooq show that in the market in Karachi alone, following are the products available which have prefix CIP/CIPRO. All of them do not belong to the local manufacturers. Some of them are also of multinational:- ROCHE CIPRALAN EPLA CIPAMOX HAKIM SONS CIPRO GLAXO CAPROKOL KRUA TUVARNA CIPRIMOL SWISS PHARMACEUTICAL CIPROK PHARMEDIC CIPRIN PHARMACARE CIPACIN WERRIC CIPRIN The word "CIP/CIPRO" has been used in .the field of medicinal preparation, which has the prefix of generic name of antibacterial medicine "CIPROFLAXIN" common to the trade describing the medicine preparation for antibiotic product. The generic name of a product can never function as trade name to indicate the origin. It has become public juris on which anyone cannot claim proprietary right to exclusive use. In this context, it may be relevant to refer the sentence contained in Mc Cathy on Trade Marks and Unfair Competition: "An abbreviation of generic name which still conveys to the buyer the original generic connotation of the abbreviated name is still generic. Phonetically the words "XIN", "QUINE" and "CIDE" being totally dissimilar are not going to create any confusion in the minds of user, specially in this case when the visual 'impression of the above trade marks is completely different with different label design, get-up and colour scheme." Therefore, the submission made by the learned counsel for the defendant that there cannot be chance of buyer and user being misguided or confused by the above trade name cannot be brushed aside. Therefore there is no difficulty in coming to the conclusion that there is no phonetic or visual resemblance. Moreover, nobody can claim exclusive right to use any abbreviation, which has become public juris. The rival marks "CIPROXIN" "CIPROQUINE" and "CIPROCIDE" contain the common feature "CIPRO", which is not only descriptive but also public juris. Therefore, a customer will bend to ignore the common feature and will pay more to uncommon features i.e. "XIN", "QUINE" "CIDE", which, cannot be said to have such phonetic similarity so as to make it objectionable. In Geigy AG v. Chelsea Drug & Chemical Co. Ltd. (1966) RPC 64, BUTAZOLIDIN and BUTAZONE "both being Medicinal preparations" were not found to be similar. "THEOMINDON" was also held not similar to "THEOMINAL" goods medical preparations. Indo Pharma Pharmaceutical Works Ltd. v. Farberf Abriken Buyer AG (1975)

545. In S.B.L. Limited v. Himalya Drug Co. (AIR 1998 Delhi 126) LIV 52 was not found to be phonetically similar with LIV T goods, medical preparations, and injunction was refused. In fact, I have compared the marks as whole with the eyes of public. I think prima facie that the total sound effect of the words lacks any similarity. So also when these words are written down and compared. They do not have any similarity, which can deceive the eye of a law man. The relief of injunction being discretionary party seeking such relief must come with clean hands. The plaintiff claimed that they have introduced meaningless prefix "CIPRO", though same is prefix of Generic term/name of "CIPROFLOXCIN" thus, plaintiffs have not come with clean hands and the application is liable to be dismissed on this score as well. In view of the above reasons, no case for grant of injunction is made out by the plaintiffs. The applications, in the result, are dismissed. However, it is clarified that the observations made are confined only for the purpose of disposal of the injunction applications and the same would not affect the merit of the respective contentions during the, course of the trial in the suit. M.B.A./B-70/K Order accordingly.