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Judgment
S. Jagadeesan, J
This appeal arises out of the order of the Assistant Registrar of Trade Marks, dated 01.02.1995, rejecting the application of the appellant for
registration of their trade mark 'SOLVAY'.
The appellant herein filed an application No. 462584 B, with the second respondent herein for registration of the label mark consisting of the word
'SOLVAY' in Class 5 for the goods (veterinary substances). The said application was filed by the appellant on 03.11.1986. The mark was proposed to
be used as on the date of application. The second respondent accepted the application in Part B of the Register and advertised the same in the Trade
Marks Journal No. 1011, dated 16.07.1991 at page 504. The first respondent herein filed their opposition on 18.11.1991, objecting to the registration of
the impugned mark on the ground that they are using the trade mark ""SOLVIN"" in respect of medicinal preparations for several years and thus, their
trade mark enjoys excellent reputation and goodwill in the market on account of extensive use and publicity and that their trade mark ""SOLVIN"" has
become distinctive and is exclusively identified and associated with the first respondent vis-a-vis their goods. The appellant deceptively wants to adopt
the trade mark ""SOLVAY"", the use of which would create confusion in the trade. The registration of the impugned mark would contravene Sections
9, 11(a), 11(e) and 18(1) of the Trade and Merchandise Marks Act, 1958. The appellant filed their counter refuting the averments made by the first
respondent and further stated that the word ""SOLVAY"" is adopted after the famous ""Solvay process"" in the name of famous Chemist Ernst Solvay,
the founder of the appellant company. The appellant further stated that the impugned mark was registered in many countries of the world and India in
other classes. After completion of the process, the respective counsel were heard. Thereafter, the Assistant Registrar of Trade Marks, by the
impugned order, allowed the opposition filed by the first respondent in DEL-7463 and rejected the application No. 462584/5 of the appellant for
registration of the word mark ""SOLVAY"".
Aggrieved by the same, the appellant preferred an appeal in the High Court of Delhi, at New Delhi, in CM(M) 261/1995, which was transferred to
this Board in view of Section 100 of the Trade Marks Act, 1999, and the same was numbered as TA/113/2003/TM/DEL.
Shri Sanjay Jain, the learned counsel for the appellant, contended that the Assistant Registrar of Trade Marks, had rejected the application of the
appellant for registration of the word label mark ""SOLVAY"", mainly on the ground that the impugned mark ""SOLVAY"" and the first respondent's
trade mark ""SOLVIN"" are phonetically similar and as such, there may he some confusion in the trade. The contention of the learned counsel for the
appellant is that the Assistant Registrar had committed an error in coming to such a conclusion. Both the marks cannot he said to be phonetically
similar. The pre-fix word ""SOL"" may be the same, but, the suffix word ""VAY"" in the appellant's mark and ""VIN"" in the first respondent's mark would
make the difference as the pronunciation is totally different. He also relied upon the judgments of the Delhi High Court in the case of Sami Khatib and
Anr. v. Seagull Labs (I) Pvt. Ltd. and Anr., 2002 (24) PTC 165 (Del )and the case of SBL Ltd. v. Himalaya Drug Co., 1997 PTC (17) (DB. )He also
contended that the appellant's goods are related to veterinary products, whereas, the first respondents, medicinal preparations are for human
consumption and as such, there cannot be any contusion.
Shri. Ajay Sahani, the learned counsel for the first respondent, contended that though the appellant has sought the registration of the word mark
SOLVAY"" as a proposed user, in the year 1986, till date, they have not used the said mark. Hence, there is absolutely no bona fide intention on the
part of the appellant to use the impugned trade mark. Insofar as the finding of the Assistant Registrar is concerned, the learned counsel contended that
the Assistant Registrar has rightly found that both the marks are phonetically similar. He also contended that though the appellant's mark may be for
veterinary products, but, still both the products of the appellant as well as the first respondent are to be distributed in the same counter in a medical
store and hence, there will be every possibility for deception and confusion in the trade. He relied upon the judgment of the Supreme Court in the case
of Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 Supreme Court 14 2and the judgment of this Board in the case of
American Home Products Corporation New York v. K.V. Chennamallu, 2004 (28) PTC 154 (IPAB). He also relied upon the judgment of the Apex
Court in the case of Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., 2001 PTC 541 (SC).
We have considered the contentions of both the counsel.
Though the learned counsel for the appellant has relied upon the Division Bench judgment of the Delhi High Court reported in 1997 PTC 17,
wherein, it was held that ""Liv. 52"" is not similar to that of the other trade mark ""LIV-T"", we are of the view that the said principle cannot be made
applicable in this case, as that case is arising out of an infringement action, the Apex Court in its judgment reported in AIR 1960 SC 142, has clearly
laid down that the principles governing the law of infringement and passing off cannot be made applicable in a case for registration of a trade mark.
The objects of consideration in both the cases are distinct and different and not similar. Even otherwise in the trade marks in that case there is clear
phonetic difference.
Similarly, the cases relied upon by the learned counsel for the appellant in 2002 (24) PTC 165 (Del) and 2002 (24) PTC 510 (Bom), are also the
cases of passing off and the words used by both the parties are generic in nature. The Supreme Court in a later case in the case of ""Cadila Healthcare
Ltd. v. Cadila Pharmaceuticals Ltd., AIR 2001 SC 1952 - 2001 PTC (21) 300 (SC h)as clearly laid down the principles in considering the similarity of
the trade marks, especially, in the medicinal preparations, wherein, it was held that ""FALCITAB"" was similar to ""FALCIGO"", the good being
medicines. We think it will be better to extract the relevant passage from the above judgment which is as under:
Broadly stated in an action for passing off on the basis of unregistered trade mark generally for deciding the question of deceptive similarity the
following factors to be considered:
(a) The nature of the marks, i.e., whether the marks are work marks or label marks or composite marks, i.e., both words and label works.
(b) the degree of resemblances 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 when may be relevant in the extent of dissimilarity between the competing marks.
Also while dealing with deceptive similarity with respect to pharmaceuticals and medicines with respect to the earlier decision of the Supreme Court,
the learned Judges in the Cadila Healthcare case had made some observations. From this, it can be concluded that among other thins, the following
factors have to be considered in deciding similarity between the marks:-
The class of purchasers and in case of medicines, it is purchased by both literate and illiterate residing in villages and towns and also by a man of
average intelligence and imperfect recollection.
Potential harm may be far more serious in case of medicines than in the case of other consumable products.
Even in case of prescription drugs prescribed by doctors and dispensed by chemists, confusion and mistakes are likely when marks which look like
and sound like are marketed.
Medicines are sometimes ordered over telephone. Hence, if there is phonetic similarity, it enhances the chances of confusion or mistake by the
pharmacists. Sometimes, in hospitals, drugs may be requested verbally under critical conditions to treat patients.
Prescriptions are handwritten and many times it is not unmistakably legible if the rival marks appear too much alike then there are chances of
confusion or mistake by the pharmacists while dispensing the medicine.
The drugs have a marked difference in the composition with completely different side effects. Even if the rival drugs are for curing the same
ailment, there is possibility of harm resulting from any kind of confusion and the consumer can have unpleasant if not disastrous results.
Even though the physicians and pharmacists and trained people yet they are not infallible and in medicines, there can be no provision for mistake
since even a possibility of mistake may prove to be fatal.
In case of medicines, whether there is any probability of confusion should not be speculated, but that if there is any possibility of confusion the use
of confusingly similar marks should be enjoined.
Confusion by the use of similar marks which are used for different diseases for medicinal products could have disastrous effect on health and in
some cases life itself.
In a country like India, where a small fraction know English and for whom different words with slight difference in spelling may sound phonetically
same and who cannot pronounce the marks correctly, the use of deceptively similar marks could cause confusion.
From the above principle, it is clear that the duty of the Court is to approach the issue from the point of view of a man of average intelligence and of
imperfect recollection. Though, the learned counsel for the appellant made an effort to support his contention with the suffix word in both the trade
marks as totally different, relying upon the judgment reported 2002 (24) PTC 510 (Bom), where the learned Judge of the Bombay High Court had held
that the mark 'ZANOCIN' is not similar to the mark 'ZENOXIM', we are unable to agree with the learned counsel for the appellant in view of the
judgment of the Apex Court in Cadila Healthcare case.
In fact, this Board had an occasion to deal with an identical issue elaborately in the judgment reported in 2004 (28) PTC 154 (IPAB), wherein, this
Board has held the trade mark ""PREMARIN"" is similar to the trade mark ""PREXMIN"".
Even though the appellant's products is related to veterinary, we are of the view that the same may not make any difference and virtually it will
worsen the case of the appellant when the trade marks are similar with regard to the consumption by human beings and for veterinary products and if
any mistake happens in the distribution, as per the judgment of the Apex Court held in Cadila Healthcare case that the human life is in danger and the
courts must be very careful in finding the dissimilarity, especially, in medicinal products. If the same principle is followed here, we are of the view that
the marks of the appellant as well as the first respondent are similar to each other and as such, the appellant's mark ""SOLVAY"", cannot be permitted
to be registered.
Accordingly, we confirm the order of the Assistant Registrar of Trade Marks and dismiss the appeal. However, with no order as to costs.