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TMI Blog2011 (7) TMI 1317X X X X Extracts X X X X X X X X Extracts X X X X ..... icence 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 injections. It does so under the trade mark ORZID. ORPL, the licencee of UBPL, purchases the b ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 OCPL would not be entitled to an injunction as prayed for despite the fact that the Plaintiff (OCPL) i ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... aken 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 standi to maintain the rectification application. The IPAB allowed the rectification application and directed the removal of the impugned trade mark FORZID under No. 1144258 in Class 5 from the Register of Trade Marks. The findings of the IPAB may be summarised thus: ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. Singh that the IPAB erred in ignoring the order dated 30th April 2008 of the learned Single Judge of the Madras High Court refusing OCPL interim injunction. The said judgment has since been affirmed by the Division Bench of the Madras High Court on 25th November 2008. He submitted that the impugned order of the IPAB, therefore, be set aside and the case remanded to the IPAB for a fresh hearing. ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... k 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 held a prior registration in respect of identical goods for a label mark of which the word ORZID forms an integral part and further when admittedly OCPL is the prior user. A further issue that arises is whether the defences of acquiescence and honest and concurrent user are available to UBPL? 20. The word ZID which is common to both ORZID and FORZID is undoubtedly derived from the active pharmaceutical ingredie ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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 similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. 22. There is no need to multiply precedents since the law explained in the above passage has been consistently followed in several subsequent cases. The test of deceptive similarity has to be applied from the point of view of men of average intelligence and imperfect recollection . Thus v ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... rs 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 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. The Cadila Health Care test 25.1 That these marks are used in respect of Schedule H drugs raises the threshold for comparison. The ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... ed. 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 an ordinary consumer to confuse one product for another due to similarity of marks and other surrounding factors. What is likely to cause confusion would vary from case to case. However, the Appellants are right in contending that where medicinal products are involved, the test to be applied for adjudging the violation of trade mark law may not be at par with cases involving non-medicinal products. A stricter approach should be adopted while applying the test to Judge the possibility of confusion of one medicinal product for another by the consumer. While confusion in the case of non-medicinal ..... X X X X Extracts X X X X X X X X Extracts X X X X ..... 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. In forming an opinion whether an interim injunction should be granted in a suit for passing off or infringement, the High Court invariably arrives at a prima facie conclusion on the basis of the materials placed on record at that stage. It is by no means a final determination which would have to await the completion of evidence. In fact Courts have emphasised that their conclusions at the stage of interim injunction are tentative and would not bind the Court at the stage of final determination of the suit. What is significant is that the two findings of the learned Single Judge - that the two competing marks we ..... X X X X Extracts X X X X X X X X Extracts X X X X
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