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2012 (5) TMI 775

orrect 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 p .....

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n was accordingly moved before the learned Single Judge. This application has also been dismissed vide orders dated 09.9.2011. Thereafter, leave was given to include challenge to this order as well. It is in this backdrop we are called upon the deal with the orders dated 04.7.2011 passed in the writ petition and orders dated 09.9.2011 passed in the Miscellaneous Application. Arguments were heard on these aspect, which are submitted vide written submissions of the parties as well. 2. In the application for rectification filed by the respondent before the IPAB, it was claimed that the respondent was the manufacturer and marketer of various pharmaceutical products under a large number of trademarks. The company which had a modest 12 Crores of infrastructure in 1994-95 has grown at a remarkable pace to achieve a capital base of 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 .....

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setting new standards of customer service. 3. The plea of the appellant regarding trademark FORZID was that this trademark was adopted in the year, 2001 and the registration of trademark for its pharmaceutical preparations and obtained registration of the trademark unopposed under No.1144258 dated 18.10.2002. It was stated that the appellant is continuously and extensively using the same and in the year 2006-07, the sale of goods under this trademark was 229.51 lacs. According to the appellant, the trademark FORZID is an invented word coined by the appellant. The mark is adopted from the words FOR ceftaZIDime, where the suffix 'ZID' was adopted from the word Ceftazidime, which is the medicinal ingredients of the drug and thus and such an adoption ought to have been also protected under Section 35 of the Act. Furthermore, 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 appe .....

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ut dissecting the same. In the Cadila Health Care Limited (supra), the Supreme Court with approval referred the observation of Farwell, J. in William Baily (Birmingham) Ltd.'s Application, (1935) 52 RPC 136: "It is well recognized that in deciding a question of similarity between two marks, the marks have to be considered as a whole. So considered, we are inclined to agree with Desai, J., that the marks with which this case is concerned are similar. Apart from the syllable 'co' in the appellant's mark, the two marks are identical. That syllable is not in our opinion such as would enable the buyers in our country to distinguish the one mark from the other" in the present case also apart from the letter 'F' in the mark of respondent No.1, the two marks are identical and the letter 'F' is not 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 'c .....

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expression of any final opinion of the final merits of the case. 6. It was also held that the appellant adopted the trademark FORZID with dishonest and mala fide intention and had even set up a false claim of user date. The IPAB also rejected the plea on delay, laches and acquiescence. Discussion on these aspects is as under: 18. Now we would take up the issue that the respondent No.1 is not the proprietor of the trade mark and its adoption is dishonest with mala fide intention. The respondent No.1 has stated that it has coined the trade mark FOR plus ZID. Being taken from the bulk drug CEFTAZIDIME but the respondent No.1 has not explained as to why it has adopted FOR, as it is neither the name of the company nor indicating or relating anything to the respondent No.1. The impugned trade mark of the respondent No.1 has submerged 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 .....

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and ORZID. According to the learned Single Judge, no doubt, the word 'ZID' which was common to both FORZID and ORZID was derived from active pharmaceutical ingredient CEFTAZIDIME. However, while comparing the two trademarks as a whole, it was clear that FORZID is nothing but ORZID prefixed by a soft consonant 'F'. This meant prefixing of the letter 'F' failed to distinguish FORZID sufficiently from ORZID so as not to cause deception or confusion in the mind of an average customer holding that the two competing marks were to be compared as a whole which was the rule of dissection of mark is an exception which is not generally permitted, in the present case, IPAB applied a correct test. The learned Single Judge also discussed in detail the principle of law laid down in Cadila Health Care Limited (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 .....

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ge also rejected the contention of the appellant that in view of orders of the Madras High Court vacating the interim injunction, IPAB has passed the impugned order on the principles of comity of jurisdiction, observed that in forming an opinion at the time of deciding interim injunction only prima facie conclusion is arrived at. 12. Dismissing the application for modification preferred by the appellant, vide orders dated 09.9.2011, the learned Single Judge, in the first instance, clarified that the plea of prior permission of the High Court of Madras High Court was not pressed when the writ petition was finally heard. However, counsel for the appellant had necessitated that this plea be taken on merits as it goes to the root of the matter. It was noted by the learned Single Judge that when the application for interim injunction 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 r .....

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suit pending the final disposal of such proceedings; (ii) if no such proceedings are pending and the court is satisfied that the plea regarding the invalidity of the registration of the plaintiffs or defendant's trade mark is prima facie tenable, raise an issue regarding the same 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 concerned to apply to the Appellate Board for rectification of the register. (2) If the party concerned proves to the court that he has made any such application as is referred to in Clause (b) (ii) of Sub-section (I) within the time specified therein or within such extended time as the court may for sufficient cause allow, the trial of the suit shall stand stayed until the final disposal of the rectification 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 .....

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er, have sought rectification of the trade mark of the defendant by filing an application first to the Registrar and thereafter to the Appellate Board without seeking prima facie satisfaction of this Court. 31. On plain reading of this provision, it is apparent that the plaintiffs could not file the application for rectification without showing and obtaining prima facie satisfaction of the Court about their plea of the invalidity of the registration of the mark of the Defendant. Section 124 of the Trade Marks Act, 1999 is similar to the Section 111 of the Trade and Merchandise Marks Act, 1958. Under the Trade and Merchandise Marks Act, 1958 AIR1974Delhi12, Kedar Nath v. Monga Perfumery and Flour Mills, this Court had held that an application could not be filed subsequent to the institution 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 plaintif .....

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t the same time, if no such application is made within the time allowed, the party, has raised the plea of invalidity of the opponent's registered mart, is deemed to have abandoned the issue. This provision permitting raising of an issue only on prima facie satisfaction of the Court, with further requirement that the party, at whose instance an issue has been framed, is to apply for rectification before the High Court concerned, and failure to make such application within the time allowed results in deemed abandonment of plea, leads us to conclude that once a suit has been filed, the rectification proceedings at the instance of either party to the suit against the other, must take the course and envisaged under Section 111, that is to say, if proceedings for rectification are 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 inval .....

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can be read into them. The plea of substantial compliance of the requirement of Section 124 by the plaintiffs is also not sustainable. Either there is compliance of the said provision or non compliance in the facts and circumstances. Compliance will be when after the institution of the suit, if an application for rectification is to be filed, prima facie invalidity of the opposing mark is to be demonstrated to the Court. The fact that the application could not be filed prior to the institution of the suit, will not entitle a party to circumvent the prima facie satisfaction of the Court. Consequently the proceedings for rectification of the defendant's mark could not be initiated by the plaintiffs without the prima facie satisfaction of their plea by this Court nor this case 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 .....

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it does not mandate a party to obtain the "leave of the Court" or "an order of the Court", for filing an application for rectification. The right to file an application for rectification is a statutory right conferred upon a party who is aggrieved by an entry made in the Register. The said statutory right cannot be curtailed except by the very provisions of the statute. The said right is circumscribed by certain requirements such as the contravention of the provisions of the Act or failure to observe a condition entered on the Register etc., as spelt out under Sub sections (1) and (2) of Section 57 of the Act. In respect of the "Forum" in which such an application for rectification could be filed, there is a restriction under Section 125, in that such an application could be filed only before 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 sat .....

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have held that no such permission is required. Thus, approaching the Madras High for this reason, before filing the rectification application before IPAB would have been an empty formality. IPAB could not have, therefore, rejected the application on the aforesaid ground as the party cannot be directed to resort to the proceedings which may turn out to be infructuous. Had the case been before some other High Court, position would have been different. In the facts of this case, therefore, we hold that the application could not be dismissed as non-maintainable in the absence of specific permission of the Madras High Court under Section 124(1)(b) of the Trademark Act. This is more so when the plea of prior permission of the High Court of Madras was not even pressed when the writ petition was finally heard. Re: The Claim of the 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 .....

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ndent in the instant case, it was permissible for the respondent to claim statutory right in the word "ORZID" (perse). Many other judgments in the same proposition were relied upon, which are as follows: (a) Three-N Products Pvt. Ltd. Vs. Emami Ltd., 2009 (41) PTC 689 (Cal.) (b) P.P. Jewellers Pvt. Ltd. Vs. P.P. Buildwell Pvt. Ltd., 2009 (41) PTC 217 (Del.) (c) Bhole Baba Milk Food Industries Ltd. Vs. Parul Food Specialities Pvt. Ltd., 2011 (48) PTC 235 (DB) (Del.) (d) Registrar of Trade Marks Vs. Ashok Chandra Rakhit, AIR 1955 SC 558. 22. The learned counsel also argued that at Paragraph 27 of the impugned judgments, the learned Single Judge has wrongly relied upon the case of Ramdev Food Products Ltd. (supra). However, the learned Single Judge has grossly erred in ignoring an important fact that the Ramdev Food Products Ltd. (supra) was decided 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 judg .....

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since 1980 for jewellery and in relation to real estate since 1998. This is what needs to be examined first. PPJPL applied for CS (OS) Nos. 19/05 & 604/2008 Page 9 of 20 and obtained registrations for the marks PP Jewellers and PPJ in Class 14. Those are the marks under which it conducts its jewellery business. PPJPL never used PP alone. Even for the real estate business the brochures of the commercial complexes of the Plaintiffs depict the usage of the mark PP? Towers and the logo PPT. Section 17 (1) of the TM Act states that "when a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to use of the trade mark taken as a whole." This in effect incorporates the law explained by the Supreme Court in Registrar of Trade Mark v. Ashok Chandra Rakhit Limited AIR 1955 SC 558 where the following observations of Lord Esher in Pinto 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 " .....

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separately and by itself it was also its registered trade mark and that it would be easier for it to be successful in an infringement action than in a passing off action. It was precisely the possibility of such an extravagant and untenable claim that called for a disclaimer for the purpose of defining the rights of the respondent company under the registration. (Emphasis supplied) 83. The said decision has no application to the fact of this case. 84. Mr. Nariman is also not correct in contending that only a label has been registered and not the name 'Ramdev'. Definition of 'mark' as contained in Section 2(j) of the 1958 Act also includes name, signature, etc. 25. We find that the learned Single Judge rightly held that when a label mark is registered, it cannot be said that the word mark contained therein is not registered. We, thus, are of the opinion that although the word "ORZID" is a label mark, the word "ORZID" contained therein 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 argum .....

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d., 2001 PTC 601 (Del.) where the marks LIPICARD and LIPICOR were held to be not deceptively similar. (vii) Indo-Pharma Pharmaceuticals Works Ltd. Vs. Citadel Fine Pharmaceuticals Ltd., 1998 (18) PTC 775 (DB) (Mad.) where the marks ENERJEX and ENERJASE were held to be not deceptively similar. (viii) Kalindi Medicure Pvt. Ltd. Vs. Intas Pharmaceuticals Ltd., 2006 (33) PTC 477 (Del.) where the marks LOPRIN and LOPARIN were held to be not deceptively similar. (ix) Ranbaxy Laboratories Ltd. Vs. Intas Pharmaceuticals Ltd., 2011 (47) PTC 433 (Del.) where the marks NIFTAS and NIFTRAN were held to be not deceptively similar. (x) Schering Corporation Vs. United Biotech Pvt. Ltd., decided on July 14, 2006, where the marks NETROMYCIN and NETMICIN were held to be not deceptively similar, which was affirmed in Schering Corporation Vs. United Biotech Pvt. Ltd. (DB) decided on October 08, 2010. 28. The learned counsel for the respondent argued to the contrary by submitting that but for the 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 misconcepti .....

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9; the registered mark as to be 'likely' to deceive or cause confusion. It is not necessary that it should be intended to deceive or intended to cause confusion. You do not have to look into the mind of the user to see what he intended. It is its probable effect on ordinary people which you have to consider. No doubt if you find that he did intend to deceive or cause confusion, you will give him credit for success in his intentions. You will not hesitate to hold that his use of it is likely to deceive or cause confusion. But if he had no such intention, and was completely honest, then you will look carefully to see whether it is likely to deceive or cause confusion before you find him guilty of infringement. Secondly, 'to deceive' is one thing. To 'cause confusion' is another. The difference is this: when you deceive a man, you tell him a lie. You make a false representation to him & thereby cause him to believe a thing to be true which is false. You may not do it 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. Y .....

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dom 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 his goods or deliver his services such as in case of a profession under a trading name or style. With the lapse of time such business or services associated with a person acquire a reputation or goodwill which becomes a property which is protected by courts. A competitor initiating sale of goods or services in the same name or by imitating that name results in injury to the business of one who has the property in that name. The law does not permit any one to carry on his business in such a way as would persuade the customers or clients in believing that the goods or services belonging to someone else are his or are associated therewith. It does not matter whether the latter person does so fraudulently or otherwise. The reasons are two. Firstly, honesty and fair play are, and ought to be, the basic policies in the world of business. 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 customer .....

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le Judge observed as under: 20. The word ZID which is common to both ORZID and FORZID is undoubtedly derived from the active pharmaceutical ingredient CEFTAZIDIME. However, this is not the only part of ORZID which is used by UBPL as part of its mark FORZID. It is obvious that FORZID is nothing but ORZID prefixed by a soft consonant F. Although it was repeatedly urged by Mr. Hemant Singh, learned counsel for UBPL that the generic part of FORZID and ORZID, viz., ZID had to be ignored while making comparison of the two competing marks, the fact remains 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". In the considered view of this Court, the mere prefixing of the letter F to the mark of OCPL fails to distinguish FORZID sufficiently from ORZID so as not to cause deception or confusion in the mind of an average customer with imperfect recall. The addition as a prefix of the soft consonant F to ORZID 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 .....

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wever, 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 counsel for UBPL is an artificial one. He wanted "ZID" which was the generic part of the marks to be substituted by some other word like 'TIS' or 'BES' and then the two marks to be compared. This submission is based on the decision in Astrazeneca UK Limited where 'Mero' was identified as the generic part of the mark derived from the active pharmaceutical ingredient. In the first place, no such submission appears 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 a .....

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ders 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 between the appellant's trademark and that of the respondent No.1. This argument is rightly brushed aside by the learned Single Judge holding that those orders were passed in application for interim injunction. While passing such orders, the Court only takes prima facie view of the matter. IPAB, on the other hand, determined the issue finally on the basis of evidence produced before it and in this final determination it was not bound by the tentative observations which deciding the application for interim injunction under Order XXXIX Rule 1 and 2 of the Code of Civil Procedure. The learned Single Judge has also remarked that the two findings of the learned Single Judge of the Madras High Court, viz., two competing marks were phonetically similar and that the respondent No.1 was a prior registered 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 .....

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