TaxTMI 
TaxTMI 
2012 (5) TMI 775
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....standing registered in the name of the respondent No.1 in Class - 5. The plea of the respondent herein was accepted by the Intellectual Property Appellate Board ('IPAB' for brevity) vide decision dated 14.10.2008. The IPAB allowed the rectification application with direction to the Registrar of the Trademarks to remove the trademark FORZID belonging to the appellant from the register. The appellant field Writ Petition challenging the said order of the IPAB which has been dismissed by the learned Single Judge vide orders dated 04.7.2011 thereby affirming the order of the IPAB. The appellant filed the instant intra-Court appeal questioning the validity of the said order of the learned Single Judge. When this appeal came up for hearing on 30.8.2011, counsel for the appellant had inter alia urged that the respondent has filed the rectification application without leave being obtained under Section 124(1)(B)(ii) of the Trademarks Act, 1999 from the Madras High Court and therefore, rectification application before the IPAB was not maintainable. It was noted by the Division Bench that this plea urged by the appellant had not been dealt with by the learned Single Judge. It was not ....
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....ngement of the appellant's registered trademark. As per the respondent, it came to know about the trademark FORZID of the appellant in respect of medicinal and pharmaceutical preparations in September, 2007 which according to the respondent was slavish imitation of the respondent registered trademark. The respondent No.1, thus, filed a civil suit in C.S. No.1027 2007 in the High Court of Madras seeking permanent injunction restraining the appellant to use that trademark which amounted to infringement of registered trade mark and from passing off its goods as that of respondent. Ex parte injunction was granted on 22.11.2007. However thereafter, this the respondent filed OA No.187 of 2008 seeking interim injunction against passing off. While this application was pending adjudication, the respondent also filed the aforesaid application for rectification before the IPAB. In the reply filed by the appellant to the said application, the appellant also claimed to be part of the famous United Group of Companies and is one of the fastest growing companies in the Indian Pharmaceutical Industry, incorporated under the Companies Act, 1956 in the year, 1997 and had established a great reput....
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.... the judgment of the Supreme Court in Amritdhara Pharmacy Vs. Satya Deo Gupta, AIR 1963 SC 449 and Cadila Health Care Limited Vs. Cadila Pharmaceuticals Limited, 2001 (1) CTMR 288 (SC) and on the application of principles in those judgments, position in the instant case was analysed in the following manner: 16. In the present case, the applicant contended that the two marks ORZID and FORZID are structurally, visually and phonetically similar to each other. There is no doubt that in both the marks the syllables 'ZID' have been taken from the pharmaceutical composition Ceftazidime and in the prefix 'OR' and 'FOR' the only uncommon syllable is 'F'. It is difficult to hold that FORZID is phonetically altogether dissimilar to ORZID. While pronouncing, both the marks give only slightly different sound but structurally and visually the marks ORZID and FORZID have close resemblance to each other. Judicial pronouncements have been made by various Courts holding that the prefix of the word should be given due weightage and importance in case where the suffix is common [see Jagsonpal Pharmaceuticals v. Jagson Parenterals (P) Ltd., 1997 PTC (17)] and in....
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..... On seeing the two marks, the first impression one gets is that both marks are same unless the person meticulously compares or he has been gifted with Sherlockholm's eyes. In view of paras 15 and 16 of the Apex Court's judgment in the Cadila Health Care Limited (supra), both products are Schedule 'H' drug is no guarantee that there will be no confusion or deception. We agree with the contention of the applicant that there will be adverse effect if a patient mistakenly gets injected 1000mg instead 250mg of injection. The trade channel of both goods/products are same and the consumers are patients of the same/common ailment. In the same judgment the Court further observed that the marks in every case in determining what is likely to deceive or cause confusion must depend on its' own particular facts, and the value of authorities lies not so much in the actual decision. The reliance placed upon several judgments by the learned counsel for respondent No.1 to bring home his contention that both the competing marks are dissimilar will be of no help in furthering such contention as in most of the cases the findings of the Courts are prima facie. For instance, in the A....
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....ny proof that the names/marks occurring in the Drugs Today 2005 are at all in use or if in use, the extent of their use. 19. We consider that there is considerable force in the contention of the appellant that the respondent No.1 has obtained registration on false claim of user date. In the application for registration dated 18.10.2002 and in the advertisement issued in the Trade Marks Journal the date of user is shown as 01.01.2001. The claim of respondent No.1 that it had adopted the trade mark and had been using the same since 01.01.2001 for which there is no material placed on record by the respondent No.1 to substantiate its claim. The respondent No.1 entered into an agreement for manufacturing of its product with its licensee on 30.01.2001 and thereafter the licensee obtained licence on 13.05.2002 and launched FORZID on April 25, 2002. In view of these facts, it is certain that the respondent No.1 has claimed the use date falsely and hence not entitled for obtaining the impugned registration. Therefore ,the allegation that the registration is wrongly remaining without sufficient cause on the register is proved beyond doubt. 7. Consequently, the rectification appli....
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....jarat Bottling Co. Ltd. and Others Vs. Coca Cola Co. and Others, (1955) 5 SCC 545 also brings home the point candidly: (i) the licensing does not result in causing confusion or deception among the public; (ii) it does not destroy the distinctiveness of the trade mark, that is to say, the trade mark, before the public eye, continues to distinguish the goods connected with the proprietor of the mark from those connected with others; and (iii) a connection in the course of trade consistent with the definition of trade mark continues to exist between the goods and the proprietor of the mark 10. Section 11 of the Act becomes significant in the process. It uses the expression earlier "trademark" and not "earlier registered trademark". As per Section 2 (z) (b) of the Act, therefore, phonetic similarity could be compared while examining the case of the confusion. It is for this reason, we have earlier observed that the arguments proceed on wrong premise. 11. Brushing aside the arguments of the learned counsel for the appellant that the respondent could not have successfully asked for rectification, as respondent's registration was only for a label mark, the learned Singl....
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....ion 124 is to ensure that there are no parallel proceedings concerning validity of a trademark registration before two different fora. In the present case, the IPAB decide the issue with no conflicting opinion on the point simultaneously arrived at by the High Court in the suit. Therefore, the purpose of Section 124 TM Act was not defeated. On the other hand, accepting the plea of UBPL at this stage would mean reverting to a stage anterior to the rectification proceedings and that would neither be expedient not in the interests of justice. Re: Maintainability of Rectification Petition without obtaining specific permission of the Madras High Court under Section 124(1)(b) of the Trademark Act: 13. Section 124 of the Act reads as under: 124. Stay of proceedings where the validity of registration of the trade mark is questioned, etc.- (1) Where in any suit for infringement of a trade mark (a) the defendant pleads that registration of the plaintiffs trade mark is invalid; or (b) the defendant raises a defense under Clause (e) of Sub-section (2) of Section 30 and the plaintiff pleads the invalidity of registration of the defendant's trade mar....
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.... no such proceedings are pending and the Court is satisfied that plea regarding the invalidity of the registration of the plaintiffs or defendants trademark is prima facie tenable, the Court has to first to frame the issue and adjourn the case for a period of three months from the date of the framing of the issue in order to enable the party to apply to the Appellate Board for rectification of the register. Under sub-section (2) of Section 124 of the Act, stay of the suit can be extended until the final disposal of the rectification proceedings. Interpreting this provision, a learned Single Judge of this Court in the case of Astrazeneca UK Ltd. & Anr. Vs. Orchid Chemicals & Pharmaceuticals Ltd., 2006 (32) PTC 733 (Del.) held that application for rectification could not be filed without showing and obtaining prima facie satisfaction of the Court about their plea of the invalidity of the registration of the mark. The discussion in this behalf is in Paras 28 to 32. We may reproduce Paras 30 to 32 for out benefit. These paras are as under: 30. Under Section 124(b) if the application for rectification is already pending the suit can be stayed pending final disposal of such proc....
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.... plea regarding invalidity of registration of the mark is raised, the Court trying the suit is to be prima facie satisfied about tenability of the issue. The Division bench of the Gujarat High Court had held: 10. As we notice, under Section 107, it has been provided that on such plea being raised, the plea can be decided only in an appropriate rectification proceedings. In conformity with that provision, Section 111 envisages that if proceeding for rectification of the register in relation to plaintiff or defendant's trademark, as the case may be, are pending before the registrar or the High Court, further proceedings in the suit shall be stayed, until final disposal of rectification proceedings. If proceeding are not pending, and the plea regarding invalidity of registration of concerned mark is raised, the Court trying the suit is to be prima facie satisfied about tenability of the issue, and if it is so satisfied, it shall frame an issue to that effect and adjourn the case for three months, from the date of framing of the issue, in order to enable the party concerned to apply to the High Court for rectification of register. The consequences of the raising of issue a....
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....rade mark of the defendant has been registered during the pendency of the suit and the certificate of registration was issued after filing of the suit and Therefore, the application for rectification could not be filed prior to the institution of the suit. The plea of the plaintiffs Therefore, is that their application for rectification filed before the Appellate Board is maintainable without prima facie satisfaction of the tenability of their plea by the Court. If the application for rectification of the defendant's trade mark is maintainable without prima facie satisfaction of this Court, then this suit is also liable to be stayed as claimed by the plaintiffs under Section 124(b) of the Act, though under Section of 124(5) of the Act, the application for injunction and for vacation or modification of an ex parte order can be considered and decided by this Court. The distinction between Section 124(b)(i) and 124(b)(ii) is on the basis of pendency of the proceedings for rectification of the register and not on the basis of whether the party initiating the proceedings for rectification could initiate such proceedings before the institution of the suit or not. There can be other e....
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....action thereupon, before filing application for rectification. Raison d'etre for holding this view is explained by the Division Bench of the Madras High Court in the following words: (N) In our considered view, Section 124(1)(b)(ii) of the Act is only an enabling provision. Sub clause (i) and Sub clause (ii) of Clause (b) of Sub-section (1) of Section 124 operates at two different levels for two different situations. While Sub clause (i) deals with a situation where any proceeding for rectification is already pending, Sub clause (ii) deals with a situation where any proceeding for rectification is not pending. Both the sub clauses focus their field of operation only in relation to the stay of the civil suit. The conditions laid down in Sub Clause (ii) are intended to enable a party to obtain stay of the suit and not intended to provide for a discretion for the Court to permit or not to permit any application for rectification. Such a position is made clear by Sub sections (2) to (5) of Section 124, which deals with the consequences of filing and not filing an application for rectification and of the ultimate outcome of such application for rectification. In other words....
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....f the reason that the respondent has filed a suit in the Madras High Court. Had the respondent approached the Madras High Court for framing of the issue, recording prima facie view and seeking permission, having regard its own judgment in the aforesaid case, the Court would have said that no such permission is required. On the other hand, the appellant argues that since circuit Bench of IPAB in Delhi dealt with the rectification application, due compliance of Section 124(b) was mandatory, as this Bench would be bound by the decision of this Court in Astrazeneca UK ltd. And Anr (supra). Learned counsel for the appellant also referred to the reasoned judgment of IPAB with the Circuit Bench sitting in Delhi in the case of Kamadhenu Realtors Pvt. Ltd. Vs. Kamadhenu Ispat Limited & Anr., 2011 (46) PTC 93 (IPAB) where the IPAB followed the decision of this Court in Astrazeneca UK ltd. And Anr (supra). 19. Taking into consideration the position mentioned in the preceding paragraph, even when we proceed on the basis that IPAB was bound to follow the Division Bench judgment of this Court, the effect of that would have been to insist the respondent to seek compliance of Section 124(b) of ....
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....he whole of the trade mark so registered. 21. The argument was that as per sub-Section (1) of Section 17 of the Act, the exclusive right of the registered proprietor is to use the trademark "taken as a whole" and not "in part" which the respondent was trying to claim. It was argued that from the reading of the latter part of sub-Section(2) of the aforesaid provision. It was made abundantly clear that the registration would not confer any right in the matter forming only art of the whole of the trade mark was registered and the IPAB had ignored the words "not" and "in" occurring in this petition thereby committing a grave error. Relying upon the judgment in the case of Aravind Laboratories Vs. Modicare (decided on 05.07.2011), which is a Single Bench judgment of the Madras High Court. It was argued that the objects & reasons behind insertion of Section of the Trade Mark Act, 1999 were to omit the provision relating to requirement of disclaimer under Section 17 of the Trade and Merchandise Marks Act, 1958 and to explicitly state the general proposition that the registration of a trade mark confers exclusive right to the use of the trade mark taken as a whole and not separately to ....
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....he mark as a whole. As said by Lord Esher in Pinto v. Badman (8 R.P.C. 181): The truth is that the label does not consist of each particular part of it, but consists of the combination of them all. Observations to the same effect will be found also in In re Apollinaire Company's Trade Marks L.R. [1891] 2 Ch. 186, In re Smokeless Powder Co. (supra), In re Clement and Cie L.R. [1900] 1 Ch. 114 and In re Albert Baker & Company (supra) and finally in the Tudor case referred to above which was decided by Sargant, J. This circumstance, however, does not necessarily mean that in such a case disclaimer will always be unnecessary. It is significant that one of the facts which give rise to the jurisdiction of the tribunal to impose disclaimer is that the trade mark contains parts which are not separately registered. It is, therefore, clear that the section itself contemplates that there may be a disclaimer in respect of parts contained in a trade mark registered as a whole although the registration of the mark as a whole does not confer any statutory right with respect to that part. 23. The learned counsel concluded his submission on this aspect by submitting that th....
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....ts Ltd. (supra). Following dicta on the said decision is pertinent: 82. In Ashok Chandra Rakhit Ltd. (supra), whereupon reliance has been placed by Mr. Nariman, this Court was concerned with a proprietary mark of 'Shree'. It was claimed that the mark 'Shree' was a trade mark apart from the device as a whole and it was an important feature of its device. The respondents were carrying on business in the name and style of Shree Durga Charan Rakshit. It was in the peculiar factual background obtaining therein, this Court, referred to the decision of Lord Esher in Pinto v. Badman [8 RPC 181] to say that where a distinctive label is registered as a whole such registration cannot possibly give any exclusive statutory right to the proprietor of the trade mark to the use of any particular word or name contained therein apart from the mark as a whole. This Court in the aforementioned factual backdrop opined: This, as we have already stated, is not quite correct, for apart from the practice the Registrar did advert to the other important consideration, namely, that on the evidence before him and the statement of counsel it was quite clear that the reason for resist....
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.... 26. We are in agreement with the aforesaid approach. Having regard to the aforesaid discussion, the case laws cited by the appellant will have no applicability to the facts of this case. Re: Deceptive Similarity Between the Two Competing Marks: 27. Numerous judgments were cited by the learned counsel for the appellant to contend that there was no deceptive similarity between the trade mark "ORZID" and trade mark "FORZID" which are as follows: (i) USV Limited Vs. Systopic Laboratories, 2004 (1) CLT 418, judgment rendered by the Madras High Court where the marks PIO and PIOZ were held to be not deceptively similar. (ii) Cadila Laboratories Ltd. Vs. Dabur India Ltd., 1997 PTC (17) 417, where the marks ZEXATE and MEXATE were held to be not deceptively similar. (iii) Unichem Laboratories Ltd. Ipca Laboratories Ltd., 2011 (45) PTC 488 (Bom.) where the marks LORAM and SELORAM were held to be not deceptively similar. (iv) Reckitt d Colman of India Ltd. Vs. Medicross Pharmaceuticals Pvt. Ltd., 1992 (3) BomCr 408 where the marks DISPRIN and MEDISPRIN were held to be not deceptively similar. (v) Astrazeneca UK Ltd. Vs. Orchid Chem....
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....rts are called upon to consider the deceptive similarity between the two marks is firmly engraved in a series of judgments pronounced by the Courts in the last half century or more. Many are cited by the learned counsel for the appellant, note whereof is taken above. Judgment of Supreme Court in the case of Cadila Health Care Limited (supra), which deals with pharmaceutical preparations, is a milestone on law relating to drugs. Application of the principles laid down in this judgment can be found in scores of subsequent judgments of this Court and other High Courts. The position which emerges from the reading of all these judgments can be summarized in the following manner: In such case, the central issue is as to whether the defendant's activities or proposed activities amount to a misrepresentation which is likely to injure the business or goodwill of the plaintiff and cause damage to his business or goodwill. To extend this use to answer this, focus has to be on the aspect as to whether the defendant is making some representation in course of trade to prospective customers which is calculated to injure the business or goodwill of the plaintiff thereby causing damage....
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....at is likely to happen if each of those trade marks is used in a normal way as a trademark for the goods of the respective owners of the marks. If, considering all those circumstances, you come to the conclusion that there will be confusion- that is to say, not necessarily that one man will be injured& the other will gain illicit benefit, but that there will be confusion in the mind of the public which will lead to confusion in the goods- then you may refuse the registration, or rather you must refuse the registration in that case. 31. Following Rules of Comparison can be culled out from various pronouncements of the Courts from time to time. I. Meticulous Comparison not the correct way. II. Mark must be compared as a whole. III. First Impression. IV. Prima Facie view not conclusive. V. Structural Resemblance. VI. Similarity in Idea to be considered. 32.In this process, first, plaintiff is required to prove the following: (i) The business consists of, or includes selling a class of goods to which the particular trade name applies; (ii) That the class of goods is clearly defined & is distinguished in the p....
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....simply describes the function in terms of capability of 'distinguishing the goods or services of one undertaking from those of other undertakings' the new law is really saying precisely the same thing. 35. We are of the view that in the present case, IPAB as well as the learned Single Judge has applied correct test in arriving at the conclusion that the two marks are deceptively similar and are likely to cause confusion in the mind of an average customer with imperfect recollection. The manner of comparison done by the IPAB can be found in Para 16 which we have already extracted above. The learned Single Judge contains detailed discussion on this aspect. With reference to Section 9(2)(a) of the Act, it is pointed out that the mark if it is of such nature as to deceive the public or cause confusion. It clearly follows that if a mark is deceptively similar to an earlier mark, it is not to be registered. As a fortiori, if it is registered, such a registration can be cancelled. Section 11 (1)(b) of the Act also provides that a trademark shall not be registered if because of its similarity to an earlier mark and the identity or similarity of the goods or services covered by t....
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.... order as we are in agreement with the same: 23. No fault can also be found with the approach of the IPAB in comparing the two competing marks as a whole. That is in fact the rule and the dissection of a mark is an exception which is generally not permitted. The anti-dissection rule is based upon a common sense observation of customer behaviour as explained in McCarthy on Trade Marks and Unfair Competition [J Thomas McCarthy, IV Ed., Clark Boardman Callaghan 2007] under the sub-heading "Comparing Marks: Differences and Similarities?. The treatise further states: 23.15.... The typical shopper does not retain all of the individual details of a composite mark in his or her mind, but retains only an overall, general impression created by the composite as a whole. It is the overall impression created by the mark from the ordinary shopper's cursory observation in the marketplace that will or will not lead to a likelihood of confusion, not the impression created from a meticulous comparison as expressed in carefully weighed analysis in legal briefs." In litigation over the alleged similarity of marks, the owner will emphasize the similarities and the alleged....
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.... 26. Viewed in light of the decision in Cadila Health Care Ltd. admittedly both FORZID and ORZID are prescription drugs. The dosages of FORZID and ORZID are not the same. It would pose a grave risk to health if a person who has been prescribed a dosage of 250 mg CEFTAZIDIME injection (ORZID) is administered a 1000 mg dosage (FORZID). These are injections administered intravenously and can have a direct and immediate impact. In the circumstances, the mere fact that they are priced differently is not sufficient to hold that the unwary average purchaser of the drugs will not be confused into thinking one is as good as the other or in fact both are the same drug. Then there is the other real danger that a prescription written for ORZID may be mistaken by the dispenser at the pharmacy shop to be FORZID or vice versa. If it is asked for verbally the phonetic similarity is likely to cause confusion. The health of a person for whom the medicine is prescribed cannot possibly be put to such great risk. In the considered view of this Court on the question of deceptive similarity, the reasoning and conclusion of the IPAB does not call for interference. 38. These are the findings of....
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....se of the degree of their sophistication and the price (B & L Sales Associates Vs. H. Daroff & Sons, Inc., supra, 421 F.2d at 354). It is true that deliberate buyers of expensive pianos are not as vulnerable to confusion as to products as hasty buyers of inexpensive merchandise at a newsstand or drug store [Callmann, Unfair Competition Trademarks and Monopolies, (3d ed. 1971)]. The sophistication of buyers, however, does not always assure the absence of confusion [Communications Satellite Corp. Vs. Comcet, Inc., 429 F.2d at 1252]. It is the subliminal confusion apparent in the record as to the relationship, past and present, between the corporate entities and the products that can transcend the competence of even the most sophisticated consumer. Misled into an initial interest, a potential Steinway buyer may satisfy himself that the less expensive Grotrian-Steinweg is at least as good, if not better, than a Steinway. Deception and confusion thus work to appropriate defendant's good will. This confusion, or mistaken beliefs as to the companies' interrelationships, can destroy the value of the trademark which is intended to point to only one company [American Drill Busing Co.....