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Bombay High CourtIndian Cases

Burroughs Wellcome (I) Ltd. vs American Home Products And Anr. on 3 October 2001

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Bombay High Court
Burroughs Wellcome (I) Ltd. vs American Home Products And Anr. on 3 October, 2001
Equivalent citations: 2002(25)PTC747(BOM)
Author: F.I. Rebello
Bench: F.I. Rebello
JUDGMENT

F.I. Rebello, J.

1. By the present petition the Petitioners impugn the order of the second Respondent dated 5.8.1992. By the said order, the second respondent has rejected the notice of opposition filed by the Petitioners opposing registration of the Trade Mark “ACTICEPH” as applied for by the Respondent in Class 5 in respect of Medicinal & Pharmaceutical preparations included in Class 5. The mark on the date of the application was proposed to be used.

Few dates and events may be set out for the purpose of effectively deciding the issues that arise in this petition. On 12.4.1960 M/s. Welcome Foundation Ltd. filed an application for registration of trade mark “ACTIFFD” for restricted specification of Goods. A medicinal preparation for the treatment of allergies, common cold and congestion of the respiratory tract. On 16.4.1961 the trade mark ACTIFFD was advertised in the Trade Marks Journal No. 283 dated 16.4.1961 at page 2833 as proposed to be used. It was granted registration. The petitioner’s are the subsequent registered proprietors on assignment of the mark in their favour and notified in Journal No. 723. The mark is renewed and subsisting. On 26.11.1986 respondent No. 1 herein filed an application for registration of their trade mark “ACTICEPH”. On 13.12.1988 the Registrar of Trade Marks issued examination report in respect of Respondent No. 1’s ACTICEPH mark setting out therein that no mark (whether registered or pending) was cited as conflicting with the trade mark ACTICEPH. The second respondent raised no objection whatsoever. Accordingly on 16.2.1989, mark ACTICEPH of Respondent No. 1 was advertised as accepted in Trade Marks Journal No. 953 dated 16.2.1989 at Page 1286. On 8/13.6.1989, notice of opposition No. BOM 7553 was filed by the Petitioners. In opposition the grounds raised were under Sections 9, 11, 12(1) and 18(1) of the Trade and Merchandise Marks Act, Respondent No. 1 filed counter statement on 29,12.89. They set out therein that no trade mark whatsoever was cited by the Registrar as conflicting with Respondent No. 1’s trade mark ACTICEPH. No objection was also raised by Respondent No. 2 to registration “ACITFED” i.e. Petitioner’s mark is registered for restricted specification of goods ACTI is common to the Pharmaceutical trade. There were numerous trade marks registered in India having the common prefix ‘ACT’ and “ACTI”. While comparing rival marks much more regard should be paid to the suffix of the mark namely “CEPH” and “FED” than to the prefix “ACTI” which is common to the trade. It was further contended that there was no likelihood of confusion.

2. The Petitioners in support of their opposition filed affidavit of Mr. D.C. Tanna. Some correspondence was exchanged between the Attorneys for the Respondent No. 1 and Petitioner’s Attorneys. On behalf of the Respondent No. 1 Mr. Egon E. Berg, Assistant Secretary of Respondent No. 1 filed affidavit in support of their application. With the affidavit, examination Report was annexed as Exh. A and Exh. B1 were the list of registered (17+1) and pending trade marks (20) in India having common prefix “Act” & “ACTI” Exh. C is the list of trade marks from Indian Pharmaceutical Guide 1990 edition having prefix “ACT/ACTI” which are actually being sold in the market (19 in number). Exh. D1 and D-2 is the International Index of Pharmaceutical Trade Marks (1989/90, 13th Edition) published by IMS which contains nearly 280 trade marks with the common prefix “ACTI” as registered in various countries of the world. To the said affidavit, Mr. Tanna on behalf of the petitioners has filed his affidavit in rejoinder on 29.6.1991. On 20.9.1991 Respondent No. 1 filed an application in Form TM-16 in the Trade Marks Registry to amend the specification of goods in respect of the Trade Mark “ACTICEPH” to read as follows:

“An Antibiotic medicinal preparation in Class-5 containing cephalosporins to be dispensed on the written prescription of registered medical practitioner only.”
3. The second Respondent by his order dated 5.8.1992 dismissed the opposition filed by the petitioners herein. On 30.11.1992, the petitioners herein filed present petition. The trademark ACTICEPH of the Respondent No, 1 herein has been put on the Register of Trade Marks and first renewal for 7 years was allowed and for further 7 years has been filed and is pending with the Registrar of Trade Marks. Second Renewal Certificate is awaited.

The Second Respondent while passing the order has recorded amongst others, the following findings :

(a) The contention of the first respondent that “ACTI” is commonly used in Pharmaceutical and medicine trade in India and abroad and as such common to the trade, the Respondent No. 2 held that Respondent No. 1 has not led any independent evidence from the trade to show that the prefix ACTI/ACT is common to trade and hence, expressed no views.
(b) The goods in respect of which registration is sought would be available only on Doctor’s prescription. The goods as such being medicinal preparations dispensed by the chemist and supplied on Doctor’s prescription, there is little possibility of confusion.
(c) The dissimilarity in suffix “CEPH” AND “FED” between the two is so patent and obvious that it needs little comment.
(d) The marks compared as a whole both in sound and appearance are completely different and dissimilar.
(e) The prefix “ACTI” must be having some medical significance having some descriptive meaning.
(f) Considered structurally, visually, phonetically, textually and materially, there is no resemblance between the competing marks.
(g) In view of the finding that the rival marks are not deceptively similar, question of confusion under Sections 11(a) does not arise.
(h) Respondent No. 1 is lawful proprietor of the trade mark “ACTICEPH” within the meaning of Section 18(1) of the Act.
(i) The opposition therefore as raised under Sections 11(a) & 12(1)
stood rejected.

4. At the hearing of the petition, on behalf of the Petitioners, their counsel has restricted his argument to the objections as raised under Sections 12(1) and 11(a) of the Act. Learned counsel has formulated his objections to the order of Second Respondent as under:
(a) Second Respondent in deciding the questions under Sections 12(1) and 11(a) of the Act has committed grave error by not applying the correct principles of comparison in as much as, has not applied the principles of comparison as laid down by the Apex Court considering that the mark is a word mark to be used in medicinal preparations.
(b) Considering the finding of the second Respondent, that there is no evidence by the first Respondent that the Word ACTI or ACT is common to trade, the subsequent finding the word ACTI must be having some medical significance having some descriptive meaning, is not based on any evidence and is a mere conjecture and is contrary to his own findings that the first Respondent had led no evidence to show that the word “Act” or “Acti” is common to trade.
The second Respondent has committed error by placing greater emphasis on the suffix “FED” and “CEPH” and not comlying the words “”Actifed”” and “Acticeph” as a whole.

(c) The second Respondent in holding that the goods which be available only on the Doctors prescription and dispensed by the Chemist/Pharmacists ought not to have placed great emphasis on that aspect in view of the conditions in India and considering the ratio of the Judgment of the Apex Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd., 2001 PTC 541. The first respondent’s did not discharge the burden cast on them by leading evidence to show that the word “ACTI” has become common to the trade. In the absence of any evidence, it was not proper to ignore terms and marks and to held that the marks are totally different because suffixes were patently different. The mark has to be considered as a whole. There is always tendency to abbreviate and first syllable is always important.

(d) The second respondent has ignored the proper import of Section 11(a) of the Act. Under Sec. 11(a) what is required to be considered is whether the use of the mark is likely to deceive or cause confusion. Such confusion and deception may arise not only as to the goods themselves but also as to the source of origin of the goods. The Petitioners had established extensive user of the mark. They had also established reputation by incurring expenses on advertisements etc. They had therefore, established reputation. The Apex Court in Cadila case (supra) has held that it is possibility of confusion that is required to be considered and not probability in respect of medicinal preparations. This aspect has been ignored by the second respondent. This was an important aspect under Section 11(a) of the Act and second Respondent is not required to consider possibility of confusion by similarity of marks alone. The second respondent has taken a truncated view of the provisions of Section 11(a) of the Act.

5. The question that firstly has to be considered is whether the view of the second respondent in rejecting the opposition to registration of the first respondent’s mark under Section 12(1) is liable to be interfered with. What second respondent had to consider while hearing the objection under Section 12(1) was whether the mark sought to be registered was identical or deceptively similar to the petitioner’s mark which was registered in respect of some of the goods or description of goods. On the facts of this case, we are not concerned with goods, mark in respect of which are identical. We are concerned whether the mark sought to be registered is deceptively similar to the petitioner’s mark. There is no dispute that the goods are similar to petitioner’s goods. The specification of the goods of the petitioner’s trade mark “ACTIFED” is as follows :

“Medicinal preparations for the treatment on allergies, common cold and congestion of respiratory track.”
The amended application in respect of the goods of Respondent No. 1 of “ACTICEF” is as under:

“An antibiotic medicinal preparation falling in Class-5 containing Cephalosporous to be dispensed on the written prescription of a registered medical practitioner only.”
In Halsbury’s Law of England, 4th Edition, 1945, principles of comparison of word mark are set out in Para 282. The same are reproduced hereunder :

“282. Rules for comparison. The rules for comparison of word marks have been summarized as follows :
“(1) the two words must be taken and judged both by their look and by their sound.
(2) the goods to which the marks are to be applied and the nature and kind of customer who is likely to buy these goods must be considered ; and (3) all the surrounding circumstance must be considered and also what is likely to happen if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.” All these three rules must be considered and not one of these three rules by ignoring others. These principles have been followed in Pianotist Co’s Application (1906) 23 R.P.C. 774 in U.K. and in India “Amritdhara” case . The Division Bench of this Court mAstra-TDL Limited v. TTK Pharma Ltd., has observed as under :
“16. As held in the case (Supra) the totality of the mark is required to be considered to hold as to whether or not the mark is deceptively similar.”
The Apex Court in Cadila Health Care Ltd, v. Cadila Pharmaceuticals Ltd., 2001 PTC 541 (SC) has laid down the test to be considered, as to when it was sufficient to hold that the mark is likely to deceive or cause confusion. The matter came before the Apex Court from refusal by the District Court and the High Court of Gujarat in granting an injunction to restrain the Respondents from using the trade mark “Falcitab”. The trade mark of the appellant company was “Falsigo”. The tablets were for the treatment of the same disease namely “Falcipharum Malaria”. The Apex Court did not interfere with the orders passed by the Lower Courts but proceeded to examine the principles of which these cases have to be decided and are required to be decided. In the Cadila Case (a) the test for comparison of the two marks as formulated in the PIANOTIST Case, (b) the doctrine of first impression and of imperfect recollection ; (c) that marks have to be compared as whole ; (d) the PROTOVIT v. DROPOVIT case as decided by the Supreme Court; (e) the fact that merely because two rival drugs are sold which require doctor’s prescription but this fact alone is not sufficient to prevent confusion if it is likely to occur ; (f) English cases proceedings on the English way of pronouncing as English word by Englishmen is not always the same and may not be of much assistance in our country in deciding questions on phonetic similarity;

have all been reiterated.

The principles as set out and which can be spelt out from Cadila Judgment are as under:

(i) In the field of medicinal remedies, the Courts may not speculate as to whether there is a probability of confusion between similar names. If there is a possibility of such confusion, in the case of medicines, public policy requires that the use of the confusingly similar names be avoided;
(ii) Physicians and Pharmacists are human and in common with the rest of the mankind are subject to human frailties;
(iii) In view of the varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic urban, semi urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.
(iv) In hospitals, drugs can be required verbally and/or under critical/ pressure situations. Many patients may be elderly, infirm or illiterate. They may not be in a position to differentiate between the medicine prescribed and bought which is ultimately handed over to them.
(v) Public interest would support lesser degree of proof showing confusing similarity in the case of trade mark in respect of medicinal products as against other non-medicinal products.
(vi) There is a difference in the situations prevailing in England and the situations prevailing in India and the English principles cannot be applied in their entirety in India.
(vii) In India where there is no single common language, a large percentage of population is illiterate and a small fraction of people know English, to apply the principles of English law regarding dissimilarity of the marks and the customer’s ability of distinguishing between the goods, seems to overlook the ground realities in India. While setting out the said principles, the Apex Court also added a word of caution by observing as under:
“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.”
It is true as submitted on behalf of Respondent No. 1 that from the judgement it is not possible to spell out that Doctor’s prescription aspect must not be considered at all or that it is not one of the surrounding circumstances which should be considered.

In Astra-TDL Limited v. TTK Pharma Limited (supra) in the matter of Doctor’s prescription this Court observed as under :

“In my view, in the present circumstances, doctor’s prescription factor has lost its importance since the reality of the situation cannot be ignored. In India scheduled drugs which are to be sold under doctor’s prescription are even sold without production of doctor’s prescription and as such reduces the weightage that can be given to this aspect of the matter while considering the question of deceptive similarity. The Court cannot close its eyes to the existing circumstances and judicial notice of the factual aspects in existence has to be taken. In case where the fact of the medicines being sold on doctor’s prescription has been taken into consideration for deciding there was no likelihood of confusion being created, the marks were not visually, phonetically and structurally similar. In the instant case the two marks “Betaloc” and “Betalong” being visually, phonetically and structurally similar and so close to each other that it outweighs the weightage to be given to the factor that the goods are scheduled drugs. The two marks are to be compared as a whole and the prefix “Beta” cannot be ignored in the matter of such comparison.”
A perusal of the said observation will indicate that the doctor’s prescription has not been rejected as a factor to be considered. All that has been observed is that it is not a factor on which great emphasis can be placed. As set out earlier in Cadila’s judgment, the issue of prescription including other aspects was also considered and as rightly contended on behalf of the respondent No. 1, the Apex Court in Cadila has not stated that it is not one of the surrounding circumstances which should be considered.

We have already earlier noted the settled law for comparison of the word marks in Halasbury’s Law of England. The law as it emerges is that the full word has to be compared and word cannot be split. The Petitioners for that have relied on the decision in the matter of application of William (Birmingham) (LD) 52 R.P.C. 136. Justice Farwell considered the decision of the Assistant Registrar to compare the word Erectiko with word Erector by dividing them into two and eliminating “Erect” on the ground that “Erect” is a dictionary word and then proceeded to compare the suffix “or” in “Erector” with “iko” in “Erectiko”. Mr. Justice Farewel observed “In my judgment, that is a wholly wrong attitude to adopt in considering a case of this kind. I do not think it is right to take a part of the word and compare it with a part of the other word ; One word must be considered as a whole and compared with the other word as a whole. In my judgment, it is quite wrong to take a portion of the word and say that, because that portion of the word differs from the corresponding portion of the word in the other case, there is no sufficient similarity to cause confusion. There may be two words which in their component parts are widely different but which, when read or spoken together, do represent something which is so similar as to lead inevitably to confusion. I think it is a dangerous method to adopt to divide the word up and seek to distinguish a portion of it from a portion of the other word.”

The said principle was applied in the case of “Accutron” reported in 1966 RFC 152. In that case, an application to register the word “Accutron” in respect of clocks and watches was opposed by the registered proprietors of the marks “Accurist” registered in respect of watches and the mark “Accularm” registered in respect of alarm clocks. The Assistant Registrar found the two words similar and refused registration. On appeal to the High Court, the Applicants contended that the Opponents could not obtain any monopoly in the word “Accurate” and that, therefore, distinctiveness of the Opponents marks ought to be found other than in the first letter “Accu”. It was held by the High Court that it was not proper to disregard such elements of the words which were descriptive and, therefore, the question of likelihood of confusion had to be decided by a comparison of the marks as a whole.”

Baileys case was dealt with by the Division Bench of this Court in CIPLAMTNA v. COMPLAMINA, 1984 IPLR 26.

6. It has been contended on behalf of the Petitioners that the first respondent having failed to show that the word “Acti” was common to trade, it was not proper for the learned Additional Registrar to ignore prefixes in the two marks. The burden of showing that the word “Acti” is common to trade was on the first respondents and they have failed to discharge the said burden. That finding of the Assistant Registrar is not challenged and cannot be disturbed. In view of the decision of the Supreme Court in Com Products Refining Co. v. Shangrila Food Products Ltd., it is clear that if the applicant wants to contend that the mark or a part of the mark is common to trade, he must show extensive use of that mark or part of the mark. In the present case, no such user has been established and some illustration of the marks containing the letters “Act” is of no relevance.

On the other hand it is contended on behalf of the first respondent that the Registrar has compared the rival marks as a whole as well and has come to the conclusion that there is no similarity between the two marks. The Respondent have placed reliance on the following judgments :

(1) Mount Mettur Pharmaceutical (P) Ltd. v. Dr. A. Wander and Anr., 1977 IPLR 167 : PTC (Suppl)(2) 714(Mad)(DB), Asmac v. Asthmix, (2) Indo Pharma Pharmaceutical Works Ltd. v. Citadel Fine Pharmaceutical Ltd., AIR 1998 Madras 347 (D.B.) : 1998 PTC (18) 775(Mad)(DB), Enerjex v. Enrjase, (3) S.B. Limited v. Himalaya Drug Co. Liv 52 v. Lit. T, (4) Pfizer International Inc. & Pfizer A/s. v. Durascan Medical Products, 1997 ETMR 86. VIBRAMYCIN v. VIBRADOX, (5) Tornado Trade Mark, 1979 RPC 155 TORNA v. TORNADO.
We will now proceed to consider what amount of resemblance is likely to deceive. See Kerly 17-07, p. 438. It is not possible to discover from the decided cases any standard as to the amount of resemblance which may suffice to deceive or cause confusion. As Lord Cranworth said in Seixo v. Provezende, (1895) L.R. 1. Ch. 192, cited by Luxmoore L.J. in Rysta (1943) 60 R.P.C. 87 at 108 “What degree of resemblance is necessary … is from the nature of things incapable of definition a priori.”. (This passage is quoted with approval in Amritdhara case and the Cadila Case by Supreme Court of India). “Nor is the standard always the same ; thus in the case of pharmaceutical products, in the absence of restrictions upon their distribution,, it is all the more important that the public should be protected from the consequences of deception and confusion.”

Harker Stagg (1953) 70 R.P.C. 205, See also Vitamins (1956) R.P.C. 1 at 13. The position is otherwise where restrictions upon distribution do exist (see e.g. Gaigy v. Chelsea Drug (1966) R.P.C, 64); unless it can be shown that the public will be deceived despite such restrictions. Hoffman-La Roche v. D.D.SA. (1969) R.S.R. 410 (illus, 3, 16-30). Furthermore, where there is a possible doubt, a pharmacist will normally check ; Glaxo v. Pharmax, (1976) F.S.R. 278. Even so, the special risk to patients may make even minimal confusion unacceptable, Sterwin v. Brocades (Danol, “De-NOI”) (1979) R.P.C. 81.

We may now consider one of the test namely importance of the first syllable, considering that many Indians whilst speaking English or Indian words emphasis the suffix even more than the prefix. English authorities state “that the first syllable of a word mark is generally the most important. It has been observed in many cases that there is a “tendency of persons using the English language to slur the termination of words.”

However, in Com Products Refining Co. v. Shangrila Food Ltd., quoted with approval by the Apex Court in the Cadila Case in it has been observed as follows :-

“We think that the view taken by Desai, J. is right. It is well known that the question whether the two marks are likely to give rise to confusion or not is a question of first impression. It is for the Court to decide that question. English cases proceeding on the English way of pronouncing an English word by Englishmen, which it may be stated is not always the same, may not be of much assistance in our country in deciding questions of phonetic similarity. It cannot be overlooked that the word is an English word which to the mass of the Indian people is a foreign word.”
7. With the above, let us compare the rival marks Actifed and Acticeph. Let us take first principle of comparison of rival word marks, namely, that the two words must be taken and judged both by their look and by their sound. The first test would be the phonetic test. Phonetically the two rival marks in my opinion are dissimilar when considered as a whole. Though the prefix Act is common, in one case suffix is “Ceph” and in other “Fed”. Using two words, it is not possible phonetically to hold that they are similar. It was further urged by the Respondents that it is the petitioner who had raised objection. No evidence has been led of any customers as to how they will pronounce the rival word marks, nor has any evidence been led of chemists or traders to prove that the customers orally ask them for the medicines and how they pronounce the word Actifed. At this stage it may be submitted that this test which is sought to be applied for by the respondents who contend that there is no evidence may really not arise as Ac-ticeph is not still in the market and, therefore, the question of leading of evidence of pronouncing of words Actifed by the petitioners really would not arise. However, phonetically it is not possible to holo that the word Actifed and Acticeph when pronounced would be similar.

We now come to the visual comparison. In visual comparison, are the two marks are similar or dissimilar. Both having prefix “Acti” but suffix in one case it is “Fed” and other is “Ceph”. If the two first words are entered in block letters, the test of confusion or deception does not exist at all, even if hastily written. Fed and Ceph are bound to be dissimilar. The Registrar has given a finding to that effect by holding that in his view structurally, visually, phonetically, textually and materially, there is not an iota of resemblance between the competing marks. This is a finding of fact based on material before the second respondent. This is not a finding based on no material or no evidence or by applying a wrong legal principle. The second respondent on the material has come to that view. It is not possible therefore, to upset the said finding.

8. We now come to the nature of the goods. For that purpose, following factors may be considered :

(1) Goods to which the marks are to be applied ;

(2) Nature and kind of customers who is likely to buy these goods ; and

(3) All the surrounding circumstances, must be considered and ought not to be ignored or glossed over. The goods in this case are medicines and not toys or soap or a match box.

Where there is restriction as to distribution of drugs possibility or likelihood of any confusion or deception diminishes. See Geigy AG v. Chelsea Drug and Chemical Company Limited, 1966 RPC Page 64. In that case, comparison of the words BUTAZONE and BUTAZOLDIN showed that the possibility of confusion was almost non-existent.

On the facts of the present case, the restriction on the distribution of the rival products exists because the Drug of the first respondent would be sold under the prescription of a registered medical practitioner only. The preparation of petitioners under the trade mark ACTIEFD is a scheduled Drug and can be dispensed only under stringent indications prescribed by the Drugs & Cosmetics Act and Rules framed thereunder by a skilled chemist. Hence, the chances of confusion or deception or likelihood thereof would be greatly diminished. In Cadila case (supra) the Apex Court referred to the judgement in F. Hoffmann-La Roche and Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd., and has quoted with approval the tests that the Supreme Court had taken in that case where it is observed as under :

“In the High Court, counsel for the respondent made a statement that the respondent was willing that the court should direct in exercise of its powers under Section 56(2) that the Registrar should limit the respondent’s trade mark “DROPOVIT” to medicinal and pharmaceutical preparations and substances containing principally vitamins and that the appeal should be decided on this basis. The question of deceptive similarity must therefore be decided on the basis of the class of goods to which the two trade marks apply subject to the limitation agreed to by the respondent. From the nature of the goods it is likely that the most of the customers would obtain a prescription from a doctor and show it to the chemist before the purchase. In such a case, except in the event of the handwriting of the doctor being very bad or illegible the chance of confusion is remote. As we have already observed the evidence shows that there are as many as 57 trade marks in the Register of Trade Marks with the suffix “VIT”. Therefore, even an average customer would know that in respect of Vitamin preparations the word “VIT” occurs in large number of trade marks and because of this he would naturally be on his guard and take special care against making a mistake. In this connection the provisions of the Drug Rules, 1945 are also relevant. Under Rule 61(2) Vitamin preparations would be covered by Item 5 in Schedule C(1) to the Rules and a licence would be required to stock such vitamin preparations and to sell or retain them. The question of confusion must hence, be determined on the basis that the goods with one of the two rival trade marks would be sold only by such a licenced dealer and would not be available in any other shop. The fact that the vendor would be a licensed dealer also reduced the possibility of confusion to a considerable extent.” The Registrar has held as follows :
“The extent of dissimilarity between the two suffixes herein is so patent and obvious that it needs little comment. Compared as a whole both in sound and appearance the rival marks are so completely different and dissimilar. In view of the fact the prefix must be having some medical significance having some descriptive meaning. The dispensing chemist will distinguish various such marks solely and wholly by reading the suffix. In my view structurally, visually, phonetically, textually and material, there is no an iota of resemblance between the competing marks.”
As noted earlier, the petitioners have critised that finding on two counts firstly that no evidence to that effect was led by the first respondent and that the said finding has not been challenged and secondly that the Registrar should not decide the issue on assumption, presumption and conjecture. At this stage, it may be pointed out that the Respondent who has succeeded could not have preferred appeal against the finding. It will be still open to the said respondent to come before this Court and point out material on record in support of said finding. Considering that, we may now proceed to consider that aspect of the matter. In Butterworths Medical Dictionary, Second Edition, 1978 i.e. much earlier to the application by the first respondent for registration, the part of the word Acticeph namely “Act” has been defined. There are several words having prefix “Act” and “Acti” which are chemical preparations and which are defined in the said dictionary. Similarly in Butterworths Medical Dictionary, printed at least eight years before petitioner adopting their trade mark Acticeph, the prefix “Act” and “Acti” occurs prominently. There were atleast 60 words. The word “Act” and “Acti” have medicinal significance and some descriptive meaning and to that extent the Registrar was right in coming to the conclusion. The trade mark ACTWADERM (179851) in the list of Trade Marks having the prefix ACT and ACTI are given and which were registered in the Register of Trade Marks much prior to the date on which the trade mark ACTIFED (195419) of Petitioners was applied for and are given in Exhibit B to the affidavit of Mr. Egon E. Berg dated 14.2.1991 in support of application for “ACTICEPH”. At Exh. “C” there are brand names with prefix ACT and ACTI as appearing in the Indian Pharmaceutical Guide and at Exh. “B” the list of trade marks registered with common prefix ACT and ACTI are given. The International Index of Pharmaceutical Trade Marks 1989-90, 13th Edition published by INS list many trade marks (including some of those of the petitioners) having the prefix ACT and ACTI.

The submission of the Petitioners are therefore, erroneous considering that there was material before the second Respondent.

9. Lastly, the test of common elements. In Broadhead, Evershed M.R. followed the observations of Lord Russel in Coca Cola Canada v. Pepsi Cola Canada, where he stated:

“Where you get a common denominator, you must on looking at the competing formula pay much more regard to the parts of the formula which are not common-although it does not flow from that that you must treat the words as through the common part was not there at all.”
Where common marks are included in the trade marks to be compared, or in one of them, the proper course is to look at the marks as whole, and not to disregard the parts which are common.

In my opinion, therefore, it is not possible to reverse the finding of the second respondent insofar as objection under Section 12(1) raised by the petitioners herein.

10. We then come to the second objection which was rejected under Section 11(a) namely the use of the mark would be likely to deceive or cause confusion. We have extensively considered some of the aspects while considering objections under Section 12(1). However, what is sought to be contended on behalf of the Petitioners is that under Section 11(a) what is required to be considered as to whether the use of the mark is likely to deceive or cause confusion. Such confusion or deception may arise not only as to the goods themselves but also to the source of origin of goods. The Petitioners, it is contended, have established extensive user of their mark. The Petitioner have contended that they had established extensive use of the mark which can be seen from the sales figures given in Paragraph 5 of the affidavit of Dipak Tana. The Petitioners had established reputation and user of their mark ‘ACTIFED’. Considering the decision of the Supreme Court in Cadila’s case, what is to be considered is possibility of confusion and not probability in respect of medicinal preparations. The confusion as to origin was not only possible but also probate. This aspect has been ignored by the learned Asst. Registrar. Under Section 11(a) of the Trade & Merchandise Marks Act, 1958, this is an important aspect and the learned Assistant Registrar is not required to consider possibility of confusion by reason of similarity of marks alone. Reliance is also placed in the case of William Bayley (Brimingham) Ltd. as also Accutron (supra).

In an enquiry under Section 11 the Tribunal must having regard to the reputation acquired by the opponent’s mark and must satisfy itself that the mark applied for, if used in the normal and fair manner in connection with any cases covered by the proposed registration, there will not be reasonable likelihood of causing deception or confusion amongst substantial number of persons ? The Registrar has given a clear finding that the rival marks are neither visually nor phonetically similar to each other. Having given the said finding the second respondent has held that since the rival marks are not at all similar to each other Section 11(a) need not be considered. As can be seen from the contentions advanced by the petitioners, it is their contention that the second respondent failed to consider the confusion and deception not only as to the goods but as to the source of origin of the goods. If the finding is that the mark itself is not likely to cause deception or confusion, there is nothing wrong in the finding given by the second Respondent that objection under Section 11(a) need not be considered. The Respondents have contended that the Petitioners were bound to lead evidence of traders or customers or chemists on this aspect and no such evidence has been led even if the Registrar has to decide the objection. In my opinion, once having come to the conclusion that there was no possibility of deception or confusion the finding by the second respondent on objection under Section 11(a) cannot be faulted with. Bayleys case has been considered and referred to by this Court in Johann A. Wulfing v. Chemical Industrial & Pharmaceutical Laboratories Ltd. 1984 IPLR 26 : 1984 PTC 81. There has been comparison of the rival marks as whole and on comparison of these marks, the second respondent has come to the conclusion that there is no similarity between the two marks.

In the light of that, following order :

Misc. Petition dismissed.
Parties to bear their own costs.