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United Biotech Pvt. Ltd. Versus Orchid Chemicals and Pharmaceuticals Ltd & Ors.

2012 (5) TMI 775 - DELHI HIGH COURT

Label mark registered - whether it cannot be said that the word mark contained therein is not registered - Held that:- In the present case, IPAB as well as the learned Single Judge has applied correct 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 .....

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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. - LPA No. 679 of 2011 - .....

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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 Act'). To put it in brief, the removal was sought on the ground that the said trademark FORZID was deceptively similar to an earlier registered trademark, viz., ORZID (label mark), standing registered in the name of the respondent No.1 in Class - 5. The plea of t .....

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he 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 .....

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n 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. .....

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y 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 .....

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d amount to infringement of the appellant's registered trademark. 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 whic .....

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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 techniques introducing world class quality products, ground braking R & D efforts in association with its foreign counterparts and for setting new standards of customer service. 3. The plea of the appellant regarding trademark FORZID was th .....

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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, whi .....

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ing 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 registered if it is of such nature as to deceive the public or cause confusion o .....

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RZID 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 .....

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secting 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 .....

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itdhara 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 .....

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t the words to the two marks. It is also held that the meticulous comparison of words, letter by letter and syllable by syllable, is not necessary and phonetic or visual similarity of the marks must be considered. On seeing the two marks, the first impression one gets 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 pro .....

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t 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 expressly stated that needless to menti .....

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tor 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 tr .....

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uch 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 .....

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lant 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 manuf .....

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llowed. 8. Before the learned Single Judge, arguments were substantially the same. The learned Single Judge first took up the issue of deceptive similarity between the two competing marks FORZID 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 s .....

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ila 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 been prescribed a dosage of 250mg CEFTAZIDIME injection (ORZID) is administered a 1000mg dosage (FORZID). .....

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ed 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. 9. Following dicta from the judgment of the Apex Court in Gujarat Bottling Co. Ltd. and Others Vs. Coca Cola Co. and Others, (1955) 5 SCC 545 also brings home the point candidly .....

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ct 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 rect .....

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on, 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 .....

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ent 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 .....

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t there are no parallel proceedings concerning validity of a trademark registration 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 .....

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r 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 in relation to the plaintiffs or defendant's trade mark are pending before the Registrar or the Appellate Board, stay the suit pending the final disposal of such proceedings; (ii) if no such proceedings are pending and the court .....

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f 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 pr .....

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tory 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 or the IPAB, the Court trying the suit shall stay the suit pending final proceedings. If no such proceedings are .....

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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 .....

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ve 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 Tra .....

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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 registrat .....

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was held that if the proceedings are not pending and the plea regarding invalidity of registration of the mark is raised, the Court trying the suit is to be prima facie satisfied about tenability of the issue. The Division bench of the Gujarat High Court had 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 proce .....

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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 later on, the civil Court trying the suit has .....

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fore 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 hav .....

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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 .....

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late 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 deci .....

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right to circumvent the prima facie satisfaction of his plea for invalidity, by the Court. The distinguishing feature of the two sub clauses is only pendency of the proceedings and nothing more 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 applica .....

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djourned 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 C .....

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uff 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 the Court is to frame issue and record prima facie satisfaction thereupon, before filing application for rectification. Raison d'etre for holding this view is explained by the Division Bench of the Madras High Court in the following words: (N) In our considered view, Section 124(1)(b)(ii) of the Act is only an enabling pr .....

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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&q .....

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n 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 fo .....

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ion, 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, .....

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High Court for framing of the issue, recording prima facie view and seeking permission, having regard its own judgment 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 .....

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at 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 an application has been made by the respondent, the Madras High Court would have held that no such permission is required. Thus, approaching the Madras High for this reason, before f .....

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he 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 .....

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(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 part of the whole of the trade mark so registered. 21. The argument was th .....

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ored 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 an .....

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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 Mar .....

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istinction 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 .....

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ny particular word or name contained therein apart from the mark as a whole. As said by Lord Esher in Pinto v. Badman (8 R.P.C. 181): The truth is that the label does not consist of each particular part of it, but consists of the combination of them all. Observations to the same effect will be found also in In re Apollinaire Company's Trade Marks L.R. [1891] 2 Ch. 186, In re Smokeless Powder Co. (supra), In re Clement and Cie L.R. [1900] 1 Ch. 114 and In re Albert Baker & Company (supra) .....

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ined 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 i .....

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cial 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. B .....

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uot;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 f .....

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was a trade mark apart from the device as a whole and it was an important feature 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 m .....

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o 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 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 t .....

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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 argument of the appellant is rejected in the following words: 27. On whether the OCPL could successfully ask fo .....

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. 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 regard to the aforesaid discussion, the case laws cited by the appellant will have no applicability to the fac .....

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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 & P .....

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B) (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, .....

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t 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 mar .....

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s in the last half century or more. Many are cited by the learned counsel for the appellant, note whereof is taken above. Judgment of Supreme Court in the case of Cadila Health Care Limited (supra), which deals with pharmaceutical preparations, is a milestone on law relating to drugs. Application of the principles laid down in this 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 .....

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dwill 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 i .....

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ll 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 confu .....

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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 thos .....

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se. 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 n .....

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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 result .....

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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. .....

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ity 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 view that in the present case, IPAB as well as the learned Single Judge has applied correct 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 foun .....

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ademark 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 .....

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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 cus .....

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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'. W .....

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IV Ed., Clark Boardman Callaghan 2007] under the sub-heading "Comparing Marks: Differences and Similarities?. The treatise further states: 23.15.... The typical shopper does not 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 li .....

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rity 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 counsel for UBPL is an artificial one. He wanted "ZID" which was the generic part of the marks to be .....

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ith '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 .....

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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 250 mg CEFTAZIDIME injection (ORZID) is administered a 1000 mg dosage (F .....

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t 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 a .....

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ilarity 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 a .....

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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: Agai .....

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of inexpensive merchandise at a newsstand or drug store [Callmann, Unfair Competition Trademarks and Monopolies, (3d ed. 1971)]. The sophistication of buyers, however, does not always assure the absence of confusion [Communications Satellite Corp. Vs. Comcet, Inc., 429 F.2d at 1252]. It is the subliminal confusion apparent in the record as to the relationship, past and present, between the corporate entities and the products that can transcend the competence of even the most sophisticated consum .....

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