Cadila Health Care Ltd. v. Cadila pharmaceuticals Ltd. (2001) 5 SCC 73 : 2001 PTC 300 (SC)

Cadila Health Care Ltd. v. Cadila Pharma. Ltd. 2001||Case Summary/Interpretation||Trade Marks Act

Introduction

Although the Trade Marks Act, of 1999 does not provide for a specific section regarding the "passing off" concept, it is recognized and applied by Courts in India based on common law principles and judicial precedents. It is a well-established legal doctrine to protect unregistered trademarks and other intellectual property rights.

Facts of the Case

1. A suit was filed on the allegation that the use of the mark "Falcitab" by the respondents was deceptively similar to his unregistered mark "Falcigo" and hence would cause confusion to the general public and pass off his drug. 
2. Both the mark was used for a drug to be used for the treatment of "Falciparum Malaria", though with a different composition.
3. The suit was dismissed by the trial Court on the grounds that their packing and appearance were different and also that their only customers were the hospitals and not the general public. 
4. The High Court affirmed the order of the trial Court. 
5. Hence this appeal was raised.

Issues

1. Whether the earlier Court was right in its decision.

Ratio Decidendi

1. This Court did not interfere with the order of the Court due to the requirement of evidence on the merit of the case at this stage.
2. S.9(2) of the Act of 1999 and S.8 of the Act of 1940 debars the registration of a mark which is likely to cause confusion or deceive.
3. National Sewing Thread Co. Ltd. v. James Chadwick and Bros. Ltd. 1953-
1. To determine the likelihood of deceiving and confusing nature of a trademark, the Registrar or the Court shall consider from the point of view of the purchaser, as an average man of ordinary intelligence, by his:-
1. Reaction to the trademark 
2. Thought made by the look of the trademark
3. Consideration of the relationship between the two marks
4. Corn Products v. Shangrila Food Products Ltd., 1960-
1. To determine the similarity between two marks, the marks have to be considered as a whole.
2. Whether the two marks are likely to create confusion or not is a question of first impression.
3. The approach to the above question should be made from the point of view of a man of average intelligence.
5. Amritdhara Pharmacy v. Sanjay Deo Gupta, 1963- 
1. The burden of proof in an action for passing off lies with the applicant that the proposed trademark is not likely to deceive or cause confusion.
2. The similarity must be considered by their look as well as their sound.
3. The practice of distinguishing a part of the two trademarks is dangerous. It must be distinguished from the whole word.
6. The resemblance of sound nearly always depends on the first impression.
7. Durga Dutt Sharma v. Navratna Pharmaceutical Laboratories, 1965-  Difference between action for passing off and action for infringement.

Decisions

1. In an action for passing off on the basis of the unregistered trademark, the Registrar or the Court to determine the deceptive similarity, he shall consider:-
1. Nature of the marks i.e. whether they are word marks or label marks or composite marks
2. Degree of resemblance, phonetical similarity, and similarity in idea
3. Nature of the goods to which these marks are to be used
4. Similarity in the nature, character, and performance of the goods of the rival traders
5. Class of purchasers, their education, intelligence, and degree of care used for purchasing or using the goods.
6. Mode of purchasing
7. Other circumstances related to the extent of dissimilarity.