Trade mark confusion in medicines: FORZID and ORZID held deceptively similar, with prior user rights defeating the later mark.

In a medicinal trade mark dispute, the Court found FORZID and ORZID deceptively similar on phonetic, structural, and overall comparison from the standpoint of an average purchaser with imperfect recollection, and the shared descriptive suffix did not avoid confusion. Prior registration and prior use of ORZID weighed against the later mark, especially because prescription medicines require a stricter approach where confusion may affect health and dosage. The pleas of acquiescence and honest concurrent use also failed for want of supporting material. The rectification order was therefore upheld and the petitioner's mark remained removed from the register.

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Issues: (i) whether the marks FORZID and ORZID were deceptively similar and likely to cause confusion, (ii) whether the registration of FORZID could be sustained despite the prior registration and prior use of ORZID, and (iii) whether the pleas of acquiescence and honest concurrent use were available to the petitioner.

Issue (i): whether the marks FORZID and ORZID were deceptively similar and likely to cause confusion

Analysis: The governing standards under the Trade Marks Act, 1999 required a mark not to be registered if it was deceptive or confusing, or if its similarity to an earlier mark and identity of goods created a likelihood of confusion. The comparison had to be made from the standpoint of a purchaser of average intelligence and imperfect recollection, and the essential feature of the rival marks had to be examined in context. Although the suffix ZID was derived from the pharmaceutical ingredient, the petitioner had taken the whole of ORZID and merely added the prefix F. The phonetic, structural, and overall resemblance was therefore substantial, and the anti-dissection approach did not assist the petitioner.

Conclusion: FORZID and ORZID were deceptively similar and likely to cause confusion.

Issue (ii): whether the registration of FORZID could be sustained despite the prior registration and prior use of ORZID

Analysis: Prior registration and prior use in respect of the same medicinal product weighed heavily against the later mark. The fact that the earlier right was in a label mark did not prevent protection of the word element itself where the word formed an integral part of the registered device. The Court also noted that the medicines were prescription drugs, their dosages differed, and confusion could have serious health consequences, which required a stricter approach in medicinal products disputes.

Conclusion: the registration of FORZID could not be sustained against the prior rights in ORZID.

Issue (iii): whether the pleas of acquiescence and honest concurrent use were available to the petitioner

Analysis: The record did not establish knowing inaction by the prior user so as to amount to acquiescence. Nor was there sufficient material to justify honest concurrent use or bona fide adoption of the later mark. The petitioner's reliance on the earlier interlocutory order of the High Court did not bind the specialised tribunal in final rectification proceedings.

Conclusion: the pleas of acquiescence and honest concurrent use were not made out.

Final Conclusion: the rectification order was upheld and no interference was warranted with the removal of the petitioner's mark from the register.

Ratio Decidendi: In disputes over medicinal trade marks, overall phonetic and structural similarity assessed from the viewpoint of an average purchaser, together with prior user rights, can justify refusal or rectification even where a common descriptive element is shared, and the later adoption of a mark that substantially incorporates an earlier mark is not protected by dissection or by unproven pleas of acquiescence or honest concurrent use.

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