2011 (7) TMI 1317 - HC - Companies Law

Summary

Issues Involved:
1. Deceptive similarity between the trademarks FORZID and ORZID.
2. Validity of the registration of the trademark FORZID.
3. Prior user rights and registration of ORZID.
4. Acquiescence and honest concurrent use defenses.
5. Impact of the prior interim injunction refusal by the Madras High Court.

Detailed Analysis:

1. Deceptive Similarity:
The court examined whether the trademarks FORZID and ORZID are deceptively similar. It held that "FORZID is nothing but ORZID prefixed by a soft consonant F." The court emphasized that the entire word mark ORZID is being used as part of the word mark FORZID, with only an addition of a single letter "F." This minimal change does not sufficiently distinguish FORZID from ORZID to avoid deception or confusion among average customers with imperfect recall. The court applied the "essential feature" test from Durga Dutt Sharma v. N.P. Laboratories, concluding that the entire word mark ORZID is subsumed in UBPL's mark FORZID, making them deceptively similar.

2. Validity of the Registration:
The court referenced Section 9(2)(a) and Section 11(1)(b) of the Trade Marks Act, 1999, which prohibit the registration of marks likely to deceive the public or cause confusion. It was found that the registration of FORZID by UBPL was invalid due to its deceptive similarity to ORZID. The IPAB's decision to remove FORZID from the Register of Trade Marks was upheld, as the registration was hit by Section 9 (1)(a) and (2)(a) and Section 11 (1) and 2(a) of the Trade Marks Act, 1999.

3. Prior User Rights and Registration:
OCPL was the prior user of the trademark ORZID since 1999 and had obtained registration for it. The court noted that UBPL's adoption of FORZID subsequent to OCPL's registration gave rise to serious doubts about the bona fide adoption of the impugned trade mark by UBPL. The court held that OCPL's prior registration and use of ORZID entitled it to seek rectification of the later mark FORZID.

4. Acquiescence and Honest Concurrent Use Defenses:
The court found that UBPL's defenses of acquiescence and honest concurrent use were unconvincing. There was no evidence to show that OCPL had knowledge of UBPL's use of FORZID and took no steps to seek an injunction against UBPL. The court emphasized that the plea of acquiescence was not supported by the facts.

5. Impact of the Prior Interim Injunction Refusal by the Madras High Court:
The court addressed the argument that the IPAB should have considered the Madras High Court's refusal of an interim injunction to OCPL. It clarified that the IPAB is not bound by the High Court's interim orders, which are tentative and not final determinations. The IPAB is expected to form an independent view on the matter. The court noted that the IPAB's decision was based on a thorough analysis of the facts and law, and it was not invalidated by the prior interim injunction refusal.

Conclusion:
The court upheld the IPAB's order dated 14th October 2008, directing the removal of the trademark FORZID from the Register of Trade Marks. The writ petition and the pending application were dismissed with costs of Rs. 5,000 to be paid by UBPL to OCPL within four weeks. The interim order was vacated.