2012 (5) TMI 775 - HC - Companies Law

Label mark registered - whether it cannot be said that the word mark contained therein is not registered - Held 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 the trade mark, there exists a likelihood of confusion on the part of the public, which included the likelihood of association with the earlier trade mark. It is only honest concurrent use or other special circumstances shown by the applicant that which may provide exception to the aforesaid Rule as for the provisions of Section 12 of the Act permits the Registrar to register such a mark.

Issues Involved:
1. Registration and deceptive similarity of trademarks FORZID and ORZID.
2. Maintainability of rectification application without permission under Section 124(1)(B)(ii) of the Trademarks Act, 1999.
3. Claim of the respondent No.1 in the word "ORZID" (per se).
4. Deceptive similarity between the two competing marks FORZID and ORZID.

Detailed Analysis:

1. Registration and Deceptive Similarity of Trademarks FORZID and ORZID:
The appellant registered the trademark FORZID, which was challenged by the respondent on the grounds of deceptive similarity to the respondent's earlier registered trademark ORZID. The Intellectual Property Appellate Board (IPAB) found FORZID deceptively similar to ORZID, causing potential confusion among consumers, especially considering both are pharmaceutical products. The court upheld this view, emphasizing that both marks were structurally, visually, and phonetically similar, with only a minor difference in the prefix 'F'. The court applied the principles from the Supreme Court judgments in Amritdhara Pharmacy Vs. Satya Deo Gupta and Cadila Health Care Limited Vs. Cadila Pharmaceuticals Limited, concluding that the overall similarity of the marks would likely deceive an average consumer with imperfect recollection.

2. Maintainability of Rectification Application Without Permission Under Section 124(1)(B)(ii) of the Trademarks Act, 1999:
The appellant argued that the rectification application was not maintainable as it was filed without obtaining leave from the Madras High Court under Section 124(1)(B)(ii) of the Trademarks Act, 1999. The court noted that this plea was not pressed during the initial writ petition hearing. The learned Single Judge clarified that the purpose of Section 124 is to avoid parallel proceedings regarding the validity of trademark registration. Since the IPAB decided the issue without conflicting opinions from the High Court, the purpose of Section 124 was not defeated. The court held that the application could not be dismissed as non-maintainable in the absence of specific permission from the Madras High Court, especially since the Madras High Court would have likely deemed such permission unnecessary.

3. Claim of the Respondent No.1 in the Word "ORZID" (Per Se):
The appellant contended that the respondent's statutory rights were limited to the label mark and did not extend to the word "ORZID" per se. The court referred to Section 17 of the Trademarks Act, which states that registration confers exclusive rights to the use of the trademark as a whole. However, the court found that the word "ORZID" was an essential feature of the registered label mark and was thus protected. The court cited the Supreme Court decision in Ramdev Food Products Ltd. Vs. Arvindbhai Rambhai Patel, concluding that the registration of a label mark includes protection for the word mark contained therein.

4. Deceptive Similarity Between the Two Competing Marks:
The court upheld the IPAB's finding that FORZID and ORZID were deceptively similar. The court emphasized that the marks should be compared as a whole, without dissecting them into parts. The court noted that the entire word mark ORZID was subsumed in FORZID, with only the addition of the letter 'F', which was insufficient to distinguish the two marks. The court applied the "Cadila Health Care Test," highlighting the potential health risks and confusion that could arise from the similarity of the marks, especially since both are prescription drugs. The court dismissed the appellant's reliance on interim orders from the Madras High Court, noting that those orders were based on prima facie views and did not bind the IPAB's final determination.

Conclusion:
The court dismissed the appeal, upholding the IPAB's decision to remove the trademark FORZID from the register due to its deceptive similarity to the respondent's trademark ORZID. The court also affirmed that the rectification application was maintainable without specific permission from the Madras High Court and that the respondent's rights extended to the word "ORZID" contained in the registered label mark. The court emphasized the importance of considering the overall impression of the marks and the potential for consumer confusion, particularly in the context of pharmaceutical products.

← Previous Next →