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TMI Blog2012 (5) TMI 775X X X X Extracts X X X X X X X X Extracts X X X X ..... pondent 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 known as to whether the same was even pres ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ademark. 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 reputation by adopting latest manufacturing techn ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... harmacy 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 view of this the close structural and visual similarity ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 Astrazeneca UK ltd. And Anr (supra) the Court has expressl ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e 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 application was allowed. 8. Before the learned Single Judge, arguments were sub ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 Single Judge observed that the judgment by the Supreme Court in the case of Ramdev Food Products Ltd. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n 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 mark, the court trying the suit (hereinafter referred to as the court), shall,-- (i) if any proceedings for rectification of the register i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he 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 proceedings. In case the application for rectification or any such proceeding is not pending, then a party seeking rectification can apply for rectification subject to prima facie satisfaction ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 are twofold. In case, the party concerned, makes an application for rectification within the time allowed, under sub Clause (ii) of sub Clause (b) of sub section (1), whether originally specified or extended lat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d 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 eventualities under which a party may not be able to initiate the proceedings for rectification before the institution of the suit, but that will not give them a right to circumvent the prima facie satisfaction of his ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... n 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, the requirements of "raising an issue", "adjourning the case" and a "prima facie satisfaction" spelt out in Section 124(1)(b)(ii) should be read as the requirements for the grant of a stay of the suit and not as a requirement or ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ent 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 the Act by filing application in the Madras High Court. We have to keep in mind that the suit is pending in Madras High Court and it is only the Madras High Court which would have considered such an application. However, even if such ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t 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 each of its constituent part. To buttress this submission, reference was made to Section 15 of the Act which permits a proprietor of a trade mark to apply for parts of a trade mark, if he claims to be entitled to the exclusive use of any part thereof separately. It was argued that since t ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 the case of P.P. Jewellers (supra) decided by the same Judge who has rendered the impugned judgment, protection in the parts of the trade mark, when only the whole had been registered, was disallowed in Para 14 of THAT judgment which reads as under: 14. In the instant case, PPJPL and LR Builders claim that PP is a "house mark" and has been ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... eature 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 resisting the disclaimer in this particular case was that the Company thought, erroneously no doubt but quite seriously, that the registration of the trade mark as a whole would, in the circumstances of this case, give it a right to the exclusive use of the word "Shree" as if separately and by itself it was also its registered trade mark and that it would be easie ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 Chemicals & Pharmaceuticals Ltd., 2006 (32) PTC 733 (Del.) where the marks MEROMER and MERONEM were held to be not deceptively similar. Affirmed in Astrazeneca UK Ltd. Vs. Orchid Chemicals & Pharmaceuticals Ltd., 2007 (34) PTC 469 (DB) (Del.). (vi) Aviat Chemicals Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd., 2001 PTC 601 (Del.) where the marks LIPICARD and LIPICOR were held to be not deceptively similar. (vii) Indo-Pharma Pharmaceuticals ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... is 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 to him. In the process, difference between the confusion and deception is to be understood. This difference was explained by Lord Denning in "Difference: Confusion & Deception" in the following words: Looking to the natural meaning of the words, I would make two observations: first, the offending mark must 'so nearly resemble' the registered mark as to be 'likely' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intend ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 public mind from other goods; (iii) Because of the reputation of the goods, there is goodwill in the name; (iv) The Plaintiff is a member of the class selling the goods is the owner of goodwill which is of substantial value; (v) He has suffered or is likely to suffer damage. 33. While comparing the few marks in order to see as to whether there is likelihood of confusion or not, following words of wisdom of the Supreme Court in Laxmikant V. Patel Vs. Chetanbhai Shah and Another, (2002) 3 SCC 65 also need to be kept in mind: 10. A person may sell h ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e. 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. After taking note of these provisions, the learned Single Judge observed as under: 20. The word ZID which is common to both ORZID and FORZID is undoubtedly derived from the active pharmaceutical ingredient CE ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... t 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 infringer will emphasize the differences. The point is that the two marks should not be examined with a microscope to find the differences, for this is not the way the average purchaser views the marks. To the average buyer, the points of similarity are the more important that minor points of difference. A court should not engage "technical gymnastics" in an attempt to find some minor differences between conflicting marks. However, where there are both similarities and differences in the marks, there must be weighed against one another to see which predominate. 24. The dissection of the marks as suggested by learned coun ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 fact arrived at by the IPAB and the learned Single Judge. 39. The appellant could not successfully pierce through the approach of the two authorities below, which had taken into consideration of the judgments and the test laid down therein and application of the said test in the facts of the present case. In the present LPA, we do not find any cause to take a different view or interfere with these findings of the fact. 40. The orders of the learned Single Judge and the Division bench of the Madras High Court were relied upon by the learned counsel for the appellant to contend that it was already held that there was no deceptive similarity ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. v. Rockwell Mfg. Co., 342 F.2d 1922, 52 CCPA 1173 (1965)]. Thus, the mere fact that purchasers may be sophisticated or discriminating is not sufficient to preclude the likelihood of confusion. "Being skilled in their own art does not necessarily preclude their mistaking one trademark for another when the marks are as similar as those here in issue, and cover merchandise in the same general field" [Id].Having regard to the above discussion prima facie I am of the opinion that the word Baker occurring in the corporate name of the second defendant suggests its connection or nexus with 'Baker', which depicts a wrong picture as from February, 1995 'Ba ..... X X X X Extracts X X X X X X X X Extracts X X X X
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