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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 ..... ods 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. - LPA No. 679 of 2011 - - - Dated:- 18-5-2012 - A.K. Sikri, Actg. C.J. and Rajiv Sahai Endlaw, J. For the Appellant: Ms. Sangeet Goel, Mr. Mohit Goel, Mr. Sidhant Goel and Mr. Yawar, Advocates. For the Respondents: Mr. S. Santhanam Swaminathan with Ms. Clady Daniels, Advocates for respondent No. 1 and Mr. D. Tomar, Advocate for respondent No.3 JUDGMENT A.K. Sikri, Actg. C.J. 1. The appellant herein got registration of trademark FORZID under No.1144258 dated 18.10.2002 in Class - 5 questioning this registration in favour of the appellant, the respondent herein filed application for removal of the aforesaid trademark FORZID or rectification of register under Sections 9, 11, 18, 57 and 125 of the Trademarks Act, 1999 (hereinafter referred to as 'the A ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... `800 Crores; has achieved a turnover of US$163 million and a world leadership in the pharmaceutical bulk actives in a short period of time. The respondent also claims to have two modern state of art manufacturing plants and a one of its kind R D centre. It was awarded the prestigious ISO 9001:2000, ISO 14001 and OHSAS 18001 certificates for its world class quality management, environmental management and occupational health and safety management system. It was also claimed by the respondent that it is the pioneer in establishing 'zero discharge' facilities in the Indian pharmaceutical industry. In the year 1999, it adopted the trademark ORZID which is used with respect to the appellant's pharmaceutical preparations having active ingredient CEFTAZIDINE and the said mark became popular among the medical fraternity. On 06.9.1999, the appellant filed application No.874808 for registration of trade mark ORZID with respect to medical and pharmaceutical preparations. This application was advertised in the Trade Marks Journal No.1291 (S) dated 13.3.2003 and got registration of the mark unopposed. The appellant commenced use of the trademark upon goods with effect from May, 19 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e, several manufacturers of Ceftazidime injections were using trademarks with the suffix 'ZID', such as OZID, IZID, INDOZID, KEMZID, MANZID, MEGZID, MID, NICZID, etc. Moreover, the appellant's product FORZID injection is aYZ Schedule 'H' drug, which can be sold only on the written prescription of a registered medical practitioner. The appellant's product FORZID is always prescribed by a doctor based on the ailments suffered by a patient and is dispensed with by a qualified druggist and chemist. This fact was also wrongly not considered in favour of the appellant. 4. The appellant had also narrated about the orders passed by the Madras High Court whereby ex parte stay was granted in favour of the respondent was vacated by way of speaking order and the appeal against that order was also dismissed by the Division Bench of the Madras High Court and the plea of delay was taken up. 5. The IPAB was, however, not convinced with the defence put by the appellant herein. It held that the trademark FORZID was deceptible similar to the earlier trademark ORZID in respect of some pharmaceutical products. Position in law was stated, viz., a trademark cannot be registe ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ot in our opinion is such as would enable the buyers in our country to distinguish the one mark from the other. In the case of Amritdhara Pharmacy, the Court held Amritdhara and Lakshmandhara were likely to deceive or to cause confusion based on the facts of the case. The Court observed that the use of the word 'dhara' which is literally meant 'current or stream' is not by itself decisive of the matter. A critical comparison of the two names may disclose some points of difference but an unwary purchaser of average intelligence and imperfect recollection would be deceived by the overall similarity f the two names having regard to the nature of the medicine he is looking for with somewhat vague recollection that he had purchased a similar medicine on a pervious occasion with a similar name. The Court further observed that each case must be decided on its own facts. In the case on hand due to overall close structural and visual similarity the unwary purchaser will be deceived or confused. It is a settled principle that while ascertaining two rival marks, as to whether they are deceptively similar or not, it is not permissible to dissect the words to the two marks. It i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... erged the trade mark of the applicant in its entirely in the impugned trade mark. The trade mark of the applicant has been in use since 1999. Therefore, the adoption of trade mark FORZID by the respondent No.1 subsequent to the use of the trade mark by the applicant gives serious doubts about the bona fide adoption of the impugned mark by the respondent No.1. The documents filed by the applicant proves beyond doubt that it is the prior adopter and user of the trade mark ORZID. When that be so, the respondent No.1 ought to have explained the reasons for adoption of such deceptively similar mark. It is not the case of the respondent No.1 that it was not aware of the existence of the registered trade mark of the applicant. Besides this, the respondent No.1 has also not averred or pleaded that it has made any application to the Registrar of Trade Mark in search of a conflicting mark registered or pending registration. In the case of dishonest adoption no amount of user makes the adoption honest. As per section 18 of the Act, being the subsequent adopter of the mark, the respondent NO.1 cannot claim to be the proprietor of the impugned trade mark. When the respondent No.1 is hit by sect ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ited (supra) case, viz., more regress test in deciding the matters relating to pharmaceuticals with preparations and observed as under: 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 250mg CEFTAZIDIME injection (ORZID) is administered a 1000mg 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. It if 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 o ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ion was dismissed and ex parte stay vacated by the Madras High Court as far as infringement of trademark ORZID, the appellant thereafter filed application to restrain the appellant from passing off its pharmaceutical preparation using the trade mark FORZID. This application as dismissed by the learned Single Judge on 30.4.2008. Prior thereto on 11.3.2008, the respondent filed a rectification application before the IPAB. Consequently, when the respondent filed appeal before the Division Bench, the rectification application was already pending before the IPAB. The appellant, at this stage, could not point out to the Division Bench that the rectification application could not have been filed by the respondent before the IPAB to dispose of the rectification application on or before 16.10.2008. From this, the learned Single Judge has drawn the inference with the appellant accepted the maintainability of respondent's rectification application before the IPAB and in any case, the aforesaid order of the Division Bench amounted to imply permission for the purposes of Section 124 (1)(b)(ii) of the Act. That was a reason, this point was not urged by the IPAB or even before the learned Sin ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ectification proceedings. (3) If no such application as aforesaid has been made within the time so specified or within such extended time as the court may allow, the issue as to the validity of the registration of the trade mark concerned shall be deemed to have been abandoned and the court shall proceed with the suit in regard to the other issues in the case. (4) The final order made in any rectification proceedings referred to in Sub- section (1) or Sub-section (2) shall be binding upon the parties and the court shall dispose of the suit conformably to such order in so far as it relates to the issue as to the validity of the registration of the trade mark. (5) The stay of a suit for the infringement of a trade mark under this section shall not preclude the court from making any interlocutory order (including any order granting an injunction directing account to be kept, appointing a receiver or attaching any property), during the period of the stay of the suit. 14. This provision deals with stay of proceedings in civil suit where validity of registration of trademark is questioned. However, proceedings for rectification in this behalf are pending before the Registrar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... tion of the suit under Section 111(1)(i) of the earlier Act. The Learned Single Judge had held as under: 19. The defendant cannot file an application subsequent to the institution of the suit under Section 111(1)(i) and claim that the plaintiff suit for infringement must be stayed. If not proceeding for rectification of the register is pending on the date of the institution of the suit by the plaintiff then Section 111(1)(ii) is attracted and the Court may adjourn the case for a period of three months in order to enable the defendant to apply to the High Court for rectification of the register. In that case the court must be satisfied that the contention as to validity of the defendant's registration is bona fide and prime facie sustainable. In the present case I am not satisfied that the contention as to validity and raised by the defendant is bona fide and prima facie sustainable. No material has been placed on the record to prove a prime facie case that the plaintiff's registration is invalid or that the defendant has been carrying on business since 1952 as alleged by him.' Reliance can also be placed on Patel Field marshal Agencies v. P.M. Diesels Ltd. 1999 IPLR ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... already pending before raising the plea of an invalidity, that is to say, the attention of an appropriate forum having already been invited to that issue, those proceedings must first be continued, decision thereon to be obtained and then civil suit for infringement can proceed in the light of that decision. In case, no such proceedings for rectification are pending at the time of raising the plea of invalidity, the prosecution of such plea by the reason raising it depends on prima facie satisfaction of the Court, about the tenability of this plea. If the plea has been found to be prima facie tenable and an issue is raised to that effect then the matter is to be adjourned for three months at least to enable the person raising such plea to approach the High Court concerned, with a rectification application. In case, the rectification proceedings are not already pending, and the Court is not even prima facie satisfied about the tenability of the plea raised before it, the matter rests there. 32. The Learned counsel for the plaintiffs has tried to distinguish these cases. According to him on the date of filing of the present suit, no application seeking invalidity of the registrat ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... e is liable to be adjourned or stayed for three months in terms of Section 124(b)(i) of the Act to await the outcome of the rectification proceedings initiated by the plaintiffs before the Appellate Board. 15. We may also record that the Gujarat High Court in the case of Patel Field Marshal Agencies Vs. P.M. Diesels Ltd., 1999 PTC (19) 718 has taken the same view. Even the aforesaid view has been upheld by the Division Bench of this Court and the judgment is reported as Astrazeneca UK Limited and Anr. Vs. Orchid Chemicals and Pharmaceuticals Ltd. 2007 (34) PTC 469. 16. Thus, insofar as this Court is concerned, it has taken the view that the permission under Section 124 (b) of the Act is mandatory and if the proceedings are filed without obtaining such a permission, those would not be maintainable. 17. The situation as hand, of course, is not that simple. The matter has been complicated because of the reason that the Division Bench of Madras High Court has taken contrary vie in the case of B. Mohamed Yousuff Vs. Prabha Singh Jaswant Singh, rep. by its Power of Attorney Mr. C. Raghu and Ors., MIPR 2007 (1) 107 holding that neither any such leave of the Court was required nor ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... the Appellate Board if a suit for infringement was already pending. Apart from these restrictions, we do not see any other restriction with regard to the filing of an application for rectification. To interpret Section 124(1)(b)(ii) to mean that an order should be obtained from the civil Court for filing an application for rectification, regarding prima facie satisfaction, would amount to imposing one more restriction upon the right of a person to seek rectification of the Register. We do not find any such restriction or requirement of the leave/permission of the court, under Section 124(1)(b)(ii). Therefore, with great respect to the learned Judges who were parties to the decisions of the Gujarat and Delhi High Courts, relied upon by the Delhi Party, we are of the considered view that the Tindivanam Party was right in filing an application for rectification, without obtaining the leave of this Court or without getting an issue framed and prima facie satisfaction recorded, in C.S. No. 726 of 2004. 18. In normal circumstances, the answer to be given was simple, viz., this Division Bench is bound by the view taken by the coordinate Bench of this Court and not the Madras High Cour ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... respondent No.1 in the word ORZID (per se) 20. It was submitted by the learned counsel for the appellant that the respondent No.1's assertion of claiming statutory rights in the word ORZID (per se) is contrary to the express mandate of Section 17 of the Trademark Act. Argument proceeded on the basis that the registration of respondent No.1 is in respect of trademark ORZID (label mark) and it is only a label which is protected. Section 17 of the Trademark Act reads as under: 17. Effect of registration of parts of a mark: (1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole. (2) Notwithstanding anything contained in sub- section (1), when a trade mark (a) contains any part (i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or (ii) which is not separately registered by the proprietor as a trade mark; or (b) contains any matter which is common to the trade or is otherwise of a non- distinctive character, the registration thereof shall not confer any exclusive right in the matter forming only a ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... d under the Trade and Merchandise Marks Act, 1958 which did not have a provision analogous to Section 17 of the Trade Mark Act, 1999. The distinction between the Ramdev Food Products Ltd. (supra) and cases under Section 17 of the Act has been elaborately dealt with in Aravind Laboratories (supra) from Para 25 to 28 of the said judgment. Observations in Para 27 of the impugned judgment is contrary to law. Para 27 of the impugned judgment discusses the argument that the label mark of respondent No.1 does not confer rights over the word ORZID to respondent No.1. However, while dealing with this argument, the learned Single Judge wrongly relied upon Ramdev Food Products Ltd. (supra). The learned Single Judge also wrongly relied upon the case of Registrar of Trade Marks Vs.Ashok Chandra Rakhit, AIR 1955 SC 558. The learned Single Judge failed to read paras 16 17 of Ashok Rakhit (supra), where it was held as under: 16. It is true 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. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... nto v. Badman 8 RPC 181 were quoted with approval: The truth is that the label does not consist of each particular part of it, but consists of a combination of them all. 24. The entire arguments are on the wrong premise and it proceeds on the basis of common feature of the two marks suffix ZID and since the respondent has registration and trade mark ORZID , it cannot bare a part of it, i.e., ZID . What has been seen in a case like this is as to whether the mark FORZID is deceptively similar to ORZID . That is the test which is to be applied and in a process, it is to be seen as to whether the two marks are structurally and phonetically similar and would cause deception in the minds of consumers. When we judge the matter from this angle, we find ourselves in agreement with the view taken by IPAB as well as the learned Single Judge. Although the mark ORZID is a label mark, the word mark ORZID is an essential feature which has been covered by the registration. Therefore, the learned counsel for the respondent appears to be right in his submission on this aspect, which is predicated on the Supreme Court decision in Ramdev Food Products Ltd. (supra). Following dicta on th ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... in is also worthy of protection. The learned Single Judge has rightly observed that the judgment of the Supreme Court in Ramdev Food Products Ltd. (supra) is the complete answer. This aspect is considered and the argument of the appellant is rejected in the following words: 27. On whether the OCPL could successfully ask for rectification for UBPL's word mark FORZID notwithstanding that OCPL held registration only for a label mark, the judgment 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. 26. We are in agreement with the aforesaid approach. Having regar ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... he soft consonant F there is no difference between the rival marks. The marks ORZID and FORZID are structurally and phonetically similar. The marks are nearly identical to each other. It is misconception that the marks are not identical merely because the suffix ZID is taken from CEFTAZIDIME. Learned counsel highlighted that the appellant had taken the trademark of the Respondent No.1 and made a cosmetic change which would not be discernible by the public. He also submitted that it was a mala fide adoption of the mark with a view to encash upon the goodwill and reputation of the respondent No.1, which was clear from the fact that the appellant obtained manufacturing license for the use of trade mark FORZID in march, 2002 and filed an application for registration of the mark on 18.10.2002 under No.1144258 in Class-5. The mark was conceived and adopted by the appellant three years after the adoption and use of the nearly identical mark by the respondent No.1. It was, thus, a mala fide and tainted adoption. 29. The law on this aspect, where the Courts are called upon to consider the deceptive similarity between the two marks is firmly engraved in a series of judgments pronounced ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... knowingly, or intentionally, but you still do it, so you deceive him. But you may cause confusion without telling him a lie at all, without making any false representation to him. You may indeed tell him the truth, the whole truth nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so. 30. While examining the question of misrepresentation or deception, comparison has to be made between the two trademarks as a whole. Rules of Comparison was explained by Justice Parker in the following words: You must take the two words. You must judge of them, both by their look by their sound. You must consider the goods to which they are to be applied. You must consider the nature kind of customer who would be likely to busy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what 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, cons ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... usiness. Secondly, when a person adopts or intends to adopt a name in connection with his business or services which already belongs to someone else it results in confusion and has propensity of diverting the customers and clients of someone else to himself and thereby resulting in injury. 34. We would like to quote from the following passage from the book The Modern Law of Trade Marks authored by Christopher Morcom, Butterworths 1999, which finds approval by the Supreme Court in Ramdev Food Products Ltd. (supra): The concept of distinguishing goods or services of the proprietor from those of others was to be found in the requirements for a mark to be registrable. Essentially, whatever the wording used, a trade mark or a service mark was an indication which enabled the goods or services from a particular source to be indentified and thus distinguished from goods or services from other sources. In adopting a definition of 'trade mark' which 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... D does not dilute the phonetic and structural similarity of the two marks. In the context of similar marks the essential feature test a evolved in Durga Dutt Sharma v. N.P. Laboratories AIR 1965 SC 980 for determining deceptive similarity requires examination whether the essential features of the plaintiff's trade mark are to be found in that used by the defendant. In the instant case the entire word mark ORZID, and not merely its essential feature, is subsumed in UBPL's mark FORZID. 36. The perusal of the judgment of the learned Single Judge would further demonstrate that 'Anti-dissection Rule' is discussed and applied holding that such a dissection is generally not permissible and can be applied only in exceptional cases. After taking note of the law on subject, the dissection of marks as suggested by the appellant is termed as 'artificial one'. We would do nothing but to extract the said discussion from the impugned 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... R' 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' exercise, much less in the manner suggested by learned counsel for UBPL, to discern the fine distinction between the marks. Also, unlike a consumer durable product, the variations in the size of font, colour scheme, trade dress of the label for a medicine would not make much of a difference. In the considered view of the Court, the IPAB has applied the correct test in coming to the conclusion that FORZID is deceptively similar to ORZID. 37. The learned Single Judge also takes note of Cadila Health Care Test , elaborately and based on that judgment, deceptive similarity which arises in the instant case is pointed out as follows: 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 2 ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... user, were affirmed by the Division Bench of the Madras High Court. Moreover, the defence of the appellant herein before the learned Single Judge in the Madras High Court put forth by the appellant herein and the proceedings before the High Court was not accepted. The only factor which weighed, while taking prima facie view and refusing interim injunction was that the dosage of the two drugs and their respective prices were different. We would like to quote from the following judgment in the case of Baker Hughes Limited Vs. Hiroo Khushalani, 1998 PTC (18) 580 where the facet of likelihood of confusion even by the enlightened public was noticed in the following words: Again in Grotrian, Helfferich, Schulz, Th. Steinweg Nachf, a Corporation Vs. Steinway Sons, a corporation, 365 F.Supp. 707 (1973), striking a similar note the Court held as under: Plaintiff argues that purchaser will not be confused because 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 ..... X X X X Extracts X X X X X X X X Extracts X X X X
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