KEKy

IN THE
HON’BLE
HIGH COURT OF MADRAS

Case Concerning
THE TRADEMARKS ACT, 1999

INDO-PHARMA PHARMACEUTICAL WORKS LTD

(Appealant)
Vs

CITADEL FINE PHARMACEUTICALS LTD.

(Respondents)

MEMORANDUM FOR THE APPEALANT

COUNSEL ON BEHALF OF THE APPEALANT

SHALKI TIWARI
ROLL NO. 117

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 Rajasthan State Road Transport Corporation v. Gopal Singh & Anr

TABLE OF CONTENTS

 LIST OF

ABBREVIATIONS..................................................................................iii

 TABLE OF

AUTHORITIES...................................................................................iv

o TABLE OF CASES......................................................................................iv
o BOOKS.......................................................................................................v
o ACTS, LEGISLATIONS AND STATUTES.........................................................v

 STATEMENT OF JURISDICTION..................................................................................vi

 SYNOPSIS OF

FACTS.........................................................................................vii

 ISSUES

RAISED.................................................................................................viii

 SUMMARY OF ARGUMENTS..............................................................................ix

 WRITTEN

PLEADINGS…………………………………………………….........1

 PRAYER...............................................................................................................9

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MEMORANDUM ON BEHALF OF APPELLANT
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LIST OF ABBREVIATIONS

A.I.R. All India Reporter.

Addl. Additional
Anr. Another
A.P. Andhra Pradesh
Bom. Bombay
CO. Company
C.J. Chief Justice
Dy. Deputy
ed. Editor(s)
Edn. Edition
Etc. et cetra
Govt. Government
H.C. High Court
Hon’ble Honorable
I.L.R. Indian Law Reporter
J. Justice
Ltd. Limited
M.P. Madhya Pradesh
Mad. Madras
Ori Orissa
Ors. Others
p. Page
Para. Paragraph
Rep. Report(s)
S.C. Supreme Court
S.C.C. Supreme Court Cases
SCR Supreme Court Review
Sec. Section
Spl. Special
Supp. Supplement
UOI Union of India
v. versus
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Vol. Volume
www World Wide Web
& And

TABLE OF AUTHORITIES

CASES:

Cadila Pharmaceuticals Ltd. v. Sami Khatib of Mumbai AIR 2001 SC 1952

Amritdhara Pharmacy v. Satya Deo [1963] 2 SCR 484
K. Krishna Chettiar v. Ambal & Co. AIR 1970 SC 147
K.R.C. Chetty v. K.V. Mudaliar , AIR 1974 Mad 7
Corn Products Refining Co. v. Shangrila Food Products Ltd. AIR 1960 SC 142

BOOKS:
1. LIONEL BENTLY & BRAD SHERMAN, INTELLECTUAL PROPERTY LAW, OXFORD.

2. B.L. WADEHRA, LAW RELATING TO INTELLECTUAL PROPERTY, UNIVERSAL LAW

PUBLISHING CO.

ACTS / STATUTES / LEGISLATIONS:

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MEMORANDUM ON BEHALF OF APPELLANT
 Rajasthan State Road Transport Corporation v. Gopal Singh & Anr

 THE TRADEMARKS ACT, 1999

STATEMENT OF JURISDICTION

The Petitioners moved to the Honourable Supreme Court of India under the Jurisdiction of
Article 32 of the Constitution of India.

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SYNOPSIS OF FACTS

1. The appellant, Indo-Pharma Pharmaceutical Works Ltd., having its office at

Ahmedabad is engaged in the business of manufacturing and selling
pharmaceutical medicinal preparations, is the plaintiff. The respondent, Citadel
Fine Pharmaceuticals Ltd., having its office at Chennai, who is also engaged in the
business of manufacturing and selling pharmaceutical medicinal preparations, is the
defendant.
2. This plaintiff is the manufacturer of the infants and invalid food products and the said
products are sold under the trademark 'ENERJEX'. The trademark 'ENERJEX' is
associated with the plaintiff for the past 15 years. The defendant is using the
trademark 'ENERJASE' for manufacturing and marketing a similar product of
medicinal preparation which is nothing but an infringement of the plaintiff company's
Trademark. The defendant's mark is an imitation of the plaintiff's mark. The same is
confusingly and deceptively similar to the Trademark used by the plaintiff. The
adoption of the mark 'ENERJASE' by the defendant is neither accidental nor
coincidental, but a deliberate act. hence the suit.
3. The appellant filed the suit for permanent injunction restraining the respondent
from infringing plaintiff's registered trademark in respect of infants and invalid
foods by use of the offending trademark 'ENERJASE' or any other Trademark
which is deceptively or phonetically similar to the plaintiff's Trademark
'ENERJEX'. In the said suit, it is also requested for grant of a permanent injunction
re-straining the respondent from selling or dealing in food articles as those of the
appellant by the use of expression 'ENERJASE' or any other trade name
deceptively and phonetically similar to those of the appellant's trade
name/Trademark 'ENERJEX' or in any other manner to pass of whatsoever.

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4. In the original suit [Link]. 4 of 1997, the appellant filed two applications, viz.,
[Link].4 and 5 of 1997 before the learned Single Judge requesting for the grant
of interim reliefs. After hearing the parties, these applications were dismissed by
the learned Single Judge by the common order dated 25.4.1997.
5. Hence, these appeals.

ISSUES RAISED

I. WHETHER OR NOT THE DEFENDANT IS USING A MARK WHICH IS THE

SAME AS OR WHICH IS A COLOURABLE IMITATION OF THE PLAINTIFF'S

TRADEMARK?

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SUMMARY OF ARGUMENTS

I. THE DEFENDANT IS USING A MARK WHICH IS THE SAME AS OR WHICH

IS A COLOURABLE IMITATION OF THE PLAINTIFF'S TRADEMARK

It is argued on the basis of relevant provisions of the Trademarks Act, 1996 and
relevant case laws that the defendants’ trademark if phonetically similar to that of the
Plaintiff’s and hence is required to be granted permanent injunction .

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WRITTEN PLEADINGS

II. THE DEFENDANT IS USING A MARK WHICH IS THE SAME AS OR WHICH

IS A COLOURABLE IMITATION OF THE PLAINTIFF'S TRADEMARK

It is humbly submitted before the honourable High Court of Madras that, Trademark 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.1 And it is according to section 29 of the Trademarks Act states that the
use of the Trademark by a person who not being a registered proprietor of the Trademark or
a registered user thereof which is identical with, or deceptively similar to a registered
Trademark amounts to the infringement of Trademark and the registered proprietor can take
action or to obtain relief in respect of infringement of Trademark.

Inviting our attention to the term "deceptively similar" in Clause (d) of Sub-section (1) of
Section 2 of the Act, the counsel contended that a mark can be said to be 'deceptively similar'
to another mark, if such mark is likely to deceive or cause confusion, where in the present
case, similarity is of phoneic nature. And in the case of Cadila Pharmaceuticals Ltd. v. Sami
Khatib of Mumbai,2 Broad principle has been set up, in an action for passing off on the basis
of trade mark 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 word marks or label
marks or composite marks, i.e. both words and label works.

1
Section 2(v) of the Act
2
AIR 2001 SC 1952
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 Rajasthan State Road Transport Corporation v. Gopal Singh & Anr

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) Any other surrounding circumstances which may be relevant in the extent
of dissimilarity between the competing marks.

Further, 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.

Phoneic Similarity.

The first decision is Amritdhara Pharmacy v. Satya Deo3 In this decision it is held that to a
man of average intelligence, the overall structural and phonetic similarity of the two names
"Amritdhara" and "Lakshmandhara" was likely to deceive or cause confusion.

In K. Krishna Chettiar v. Ambal & Co. 4, it is held that that there is a striking similarity and
affinity of sound between the words 'Andal' and 'Ambal'. There is a real danger of
confusion between the two marks.

In K.R.C. Chetty v. K.V. Mudaliar5, the appellant's application for registration of their
snuff "Radha's Sri Andal" was opposed by the respondent. The Division Bench of this
Court has held as follows: The combination of the two words "Radha's Sri Andal" is likely
to be taken by snuff users as the snuff manufactured and marketed by the applicant
originally as "Sri Andal".

All these decisions rendered by the Apex Court and this Court, on the basis of the facts of
that case and on analysing the materials placed before the court. As pointed out by the Apex
Court in Amritdhara Pharmacy v. Satya Deo6, the Act does not lay down any criteria for
3
[1963] 2 SCR 484
4
AIR 1970 SC 147
5
AIR 1974 Mad 7
6
Supra, 3
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determining what is likely to deceive or cause confusion. Therefore, every case must depend
on its own particular facts and the value of authorities lies not so much in the actual decision
in determining what is likely to deceive or cause confusion.

The Apex Court held in Amritdhara Pharmacy's case 7, that the Trademarks/ names
'Amritdhara' and Laxamandhara' likely to deceive or cause confusion because of the
overall structural and phonetic similarity the goods were such as are largely sold to
illiterate or badly educated persons. The Apex Court in that case however held that the use
of the word 'Dhara' was not of itself decisive of the matter, in the facts found in that case.

Also, the apex Court in the case of Corn Products Refining Co. v. Shangrila Food Products
Ltd.,8 was considering an identical question. It has been observed and quoted thus:

This view was founded on a passage which the learned appellate Judges quoted from Kerly
on Trademarks, 7th Edn. p. 624. That passage may be summarised thus : “Where there are
a "series" of marks, registered or unregistered, having a common feature or a common
syllable, if the marks in the series are owned by different persons, this tends to assist the
applicant for mark containing the common feature. This statement of the law in Kerly's
book is based on In re:an application by Beck, Kollar and company (England) Limited. It
is clear however from that case, as we shall presently show, that before the applicant can
seek to derive assistance for the success of his application from the presence of a number
of marks having one or more common features which occur in his mark also, he has to
prove that those marks had acquired a reputation by user in the market.

In the present case also, apart from similar labels which are placed on record, the
defendants have not produced any material to show that the products on which he is
relying have acquired reputation by user in the market. In that view of the matter and
hence that is also required to be considered.

Moreover, it is humbly submitted that the Apex Court in the case of Cadila
Pharmaceuticals Ltd. v. Sami Khatib9 has observed as under:

7
MANU/SC/0256/1962
8
AIR 1960 SC 142
9
Supra, 2.
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“Public interest would support lesser degree of proof showing confusing similarity in
the case of trade mark in respect of medicinal product as against other non-medicinal
products. Drugs are poisons, not sweets. Confusion between medicinal products may,
therefore, be life threatening, not merely inconvenient. Noting the frailty of human
nature and the pressures placed by society on doctors, there should be as many clear
indicators as possible to distinguish two medicinal products from each other. It is not
uncommon that in hospitals, drugs can be requested 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....”

It is humbly submitted that ENERJEX' has acquired all India reputation as the product of the
plaintiff. The use of the Trademark 'ENERJASE' by the defendant is calculated to mislead
the public into believing that the product of the defendant is that of the plaintiff. The two
Trademarks are phonetically so 'similar that there is bound to be confusion of the origin of
the goods among the users and the traders, particularly as the commercial outlets for the two
goods are the same. The defendant by using 'ENERJASE' are attempting illegally to exploit
the commercial goodwill acquired by the plaintiff with respect to 'ENERJEX'.

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PRAYER FOR RELIEF

Wherefore, in light of the facts stated, arguments advanced and authorities cited, the
Respondents, humbly prays before the Hon’ble High Court of Madras to adjudge and declare
that:

1. To allow the appeal

2. To grant permanent injunction restraining the respondent from infringing plaintiff's
registered trademark in respect of infants and invalid foods by use of the offending
trademark 'ENERJASE' or any other Trademark which is deceptively or
phonetically similar to the plaintiff's Trademark 'ENERJEX'.
3. To grant permanent injunction re-straining the respondent from selling or dealing in
food articles as those of the appellant by the use of expression 'ENERJASE' or any
other trade name deceptively and phonetically similar to those of the appellant's
trade name/Trademark 'ENERJEX' or in any other manner to pass of whatsoever.

The Court may also be pleased to pass any other order, which the Court may deem fit in light
of justice, equity and good conscience.

All of which is most humbly prayed.

COUNSEL ON BEHALF OF PETITIONER

Shalki Tiwari

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