TaxTMI 
TaxTMI 
2011 (7) TMI 1317
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....in the market under the trade mark FORZID. It entered into a licence agreement with M/s. Oscar Remedies Pvt. Ltd. ("ORPL?), Haryana for manufacturing FORZID injections. UBPL made an application for registration of the said trade mark under No. 1144258 dated 18th October 2002 in Class 5. The said mark was advertised in Journal Mega dated 25th November 2003. The registration was granted unopposed. The sales figures of UBPL's products under the trade mark FORZID for the years 2002-03 till 2006-07 have been set out in the writ petition. 3. According to UBPL the mark FORZID is adopted from the words "FOR" and "ZID", the latter being derived from the generic drug ceftaZI Dime. UBPL claims that there are several manufacturers of CEFTAZIDIME injections using trade marks with the suffix "ZID" which is stated to be common to trade. UBPL states that FORZID is an invented word coined by it. The mark is unique and identifies exclusively with the products manufactured by UBPL. FORZID injection is a Schedule H drug and can be sold only on the written prescription of a registered medical practitioner. 4. Respondent No. 1 OCPL also manufactures CEFTAZIDIME i....
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....parte interim injunction in the aforementioned O.A. No. 1275 of 2007. 8. OCPL claims that only when UBPL filed a counter affidavit to OCPL's application for interim injunction that OCPL became aware that the registration for the trade mark FORZID has been granted in favour of UBPL. Taking note of this fact, the High Court of Madras by an order dated 15th February 2008 dismissed OCPL's application for interim injunction as far as infringement of the trade mark ORZID was concerned. The High Court noted that "as on date, there is no application taken out by the Plaintiff (OCPL) for an interim order of injunction restraining the Defendant (UBPL) from passing off." In the said order, the High Court also noted that in view of the statement made by UBPL, OCPL intended to initiate proceedings for rectification of the mark FORZID. The order of the Madras High Court refusing OCPL interim injunction 9. OCPL then filed OA No. 187 of 2008 seeking to restrain UBPL from passing off its pharmaceutical preparation using the trade mark FORZID. By a detailed order dated 30th April 2008, learned Single Judge of the High Court of Madras dismissed OA No. 187 of 2008 and held that OC....
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....pted by all of them had been derived from the active ingredient CEFTAZIDIME: they had taken "CEF" or "CEFTA" or "ZID" or "DIME" as part of the trade mark. 10. At the time when OCPL's application for rectification was taken up for hearing by the IPAB, the appeal, OSA No. 290 of 2008, filed by OCPL was pending before the Division Bench of the Madras High Court. It was argued before the IPAB on behalf of UBPL that in view of the rejection by the learned Single Judge of the Madras High Court of OCPL's prayer for interim injunction, OCPL's application for rectification of UBPL's trade mark FORZID should also be rejected. The IPAB in its impugned order, appears to have erroneously noted that OA No. 187 of 2008 filed by OCPL seeking interim injunction in the Madras High Court was "pending" when in fact it was the appeal against the order dated 30th April 2008 of the learned Single Judge dismissing the aforementioned OA No. 187 of 2008 which was pending before the Division Bench of that High Court. The impugned order of the IPAB 11. The IPAB in its impugned order dated 14th October 2008 first held that OCPL had the locus ....
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....ot; (g) UBPL had obtained registration on a false claim that it had been using mark FORZID since 1st January 2001. There was no material placed on record by UBPL to substantiate this claim. 12. Aggrieved by the said order, UBPL filed the present petition. On 1st December 2008, this Court stayed the operation of the impugned order dated 14th October 2008 of the IPAB. The said interim order has continued. Submissions of counsel 13. Mr. Hemant Singh, learned Counsel appearing for the Petitioner first contended that the similarity in respect of the generic feature "ZID" will not make UBPL's mark FORZID deceptively similar to OCPL's ORZID. Further, OCPL held a registration for the label mark of which the word ORZID formed part. Mr. Singh urged that ZID was not the essential feature of the trade mark ORZID and that for the purposes of the test of deception similarity must exist in respect of a feature other than the generic part. In particular, he submitted that if the word ZID was replaced by some other word like "TIS" or "BES" and then the two marks were compared as a whole they would not be deceptively similar. 14. It was next urged by Mr. S....
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....le part. She submitted that the IPAB had rightly compared the two marks as a whole. Deceptive similarity 18. Under Section 9(2)(a) TM Act 1999, a mark shall not be registered as a trade mark if "it is of such nature as to deceive the public or cause confusion." Under Section 11(1)(b) TM Act 1999 a trade mark shall not be registered if because of "its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark." The exception to this is in Section 12 TM Act 1999 which requires the applicant to show "honest concurrent use or other special circumstances" to enable the Registrar to permit the registration by more than one proprietor of the trade marks which are identical or similar in respect of the same or similar goods. 19. In the above background, the issues that require to be considered are whether the two competing marks FORZID and ORZID are deceptively similar; whether registration could have been validly granted of the mark FORZID when admittedly OCPL ....
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....ation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila food Products Ltd. the question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names 'Amritdhara' and 'Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of two composite words Amritdhara' and 'Lakshmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, spilt the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as 'current of nectar" or 'current of Lakshman'. He would go more by the overall structural and phonetic similarit....
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.... dissection of the marks as suggested by learned Counsel for UBPL is an artificial one. He wanted "ZID" which was the generic part of the marks to be substituted by some other word like "TIS" or "BES" and then the two marks to be compared. This submission is based on the decision in Astrazeneca UK Limited where "Mero" was identified as the generic part of the mark derived from the active pharmaceutical ingredient. In the first place, no such submission appears to have been made before the IPAB. Secondly, the type of dissection suggested, i.e. separating "FOR" and "ZID" and then replacing "ZID" with another word "TIS" before comparing the marks does not appear to be permissible in law. As already noticed it is not just the generic part "ZID" that is common to both marks. The further prefix "OR" too is common. In other words, "ORZID" is common to both marks. No parallel can therefore be drawn with the facts in Astrazeneca UK Limited. A person of average intelligence and imperfect recollection seeking to buy CEFTAZIDIME injection would hardly undertake any "dissection&quo....
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....ts. While this is doubtless true to dos not open the door to the adoption by manufacturers of medicines of trade marks or names which would be confusingly similar to anyone not exercising such great care. For physicians and pharmacists are human and in common with the rest of mankind are subject to human frailties. In the field of medicinal remedies the Courts may not speculate as to whether there is a probability of confusion between similar names. If there is any possibility of such confusion in the case of medicines public policy requires that the use of the confusingly similar name be enjoined. 25.4 In conclusion, it was held in para 33 as under: (SCC, p. 94) While examining such cases in India, what has to be kept in mind is the purchaser of such goods in India who may have absolutely no knowledge of English language or of the language in which the trade mark is written and to whom different words with slight difference in spellings may sound phonetically the same. While dealing with cases relating to passing off, one of the important tests which has to be applied in each case is whether the misrepresentation made by the Defendant is of such a nature as is likely to cause a....
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....udgment of the Supreme Court in Ramdev Food Products Ltd. v. Arvindbhai Rambhai Patel AIR 2006 SC 3304 is a complete answer. The Court there referred to an earlier decision in Registrar of Trade Marks v. Ashok Chandra Rakhit AIR 1955 SC 558, which concerned the proprietary mark "Shree" which formed part of the device as a whole and was an important feature of the device. The Supreme Court observed that registration of a trade mark as a whole would give the proprietor "a right to the exclusive use of word "Shree" as if separately and by itself." Therefore it would not be correct for UBPL to contend that the registration held by OCPL does not cover the word mark ORZID. IPAB not bound to follow order of the High Court refusing interim injunction 28. It was urged by learned Counsel for UBPL that on the principles of comity of jurisdiction the IPAB should have at least discussed the judgment of the learned Single Judge of the Madras High Court which was affirmed by a Division Bench. It was submitted that the IPAB further ought to have taken note of one more distinction drawn by the learned Single Judge between the two products, viz., their pricing. 29. I....