Full Judgment Text
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ LPA No.679 of 2011
Reserved on: December 01, 2011
% Pronounced on: May 18, 2012
UNITED BIOTECH PVT. LTD. . . . APPELLANT
Through: Mr. Gaurav Pachnanda with
Ms. Sangeet Goel, Mr. Mohit
Goel, Mr. Sidhant Goel and
Mr. Yawar, Advocates.
VERSUS
ORCHID CHEMICALS & PHARMACEUTICALS
LTD & ORS. . . .RESPONDENTS
Through: Mr. S. Santhanam
Swaminathan with Ms. Clady
Daniels, Advocates for
respondent No.1.
Mr. D. Tomar, Advocate for
respondent No.3.
CORAM :-
HON’BLE THE ACTING CHIEF JUSTICE
HON’BLE MR. JUSTICE RAJIV SAHAI ENDLAW
A.K. SIKRI (ACTING CHIEF JUSTICE)
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 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 the respondent herein was accepted by
LPA No.679 of 2011 Page 1 of 40
the Intellectual Property Appellate Board („IPAB‟ for brevity)
vide decision dated 14.10.2008. The IPAB allowed the
rectification application with direction to the Registrar of the
Trademarks to remove the trademark FORZID belonging to the
appellant from the register. The appellant field Writ Petition
challenging the said order of the IPAB which has been
dismissed by the learned Single Judge vide orders dated
04.7.2011 thereby affirming the order of the IPAB. The
appellant filed the instant intra-Court appeal questioning the
validity of the said order of the learned Single Judge.
2. When this appeal came up for hearing on 30.8.2011, counsel
for the appellant had inter alia urged that the respondent has
filed the rectification application without leave being obtained
under Section 124(1)(B)(ii) of the Trademarks Act, 1999 from
the Madras High Court and therefore, rectification application
before the IPAB was not maintainable. It was noted by the
Division Bench that this plea urged by the appellant had not
been dealt with by the learned Single Judge. It was not known
as to whether the same was even pressed or not, liberty was
granted to the appellant to move an application before the
learned Single Judge in this behalf. The application 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.
LPA No.679 of 2011 Page 2 of 40
3. 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 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, 1999.
It was, thus, claimed that being prior user and prior registered
proprietor, the use by any person, an identical or any other
mark deceptively similar thereto would amount to infringement
of the appellant‟s registered trademark. As per the
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respondent, it came to know about the trademark FORZID of
the appellant in respect of medicinal and pharmaceutical
preparations in September, 2007 which according to the
respondent was slavish imitation of the respondent registered
trademark. The respondent No.1, thus, filed a civil suit in C.S.
No.1027 2007 in the High Court of Madras seeking permanent
injunction restraining the appellant to use that trademark
which amounted to infringement of registered trade mark and
from passing off its goods as that of respondent. Ex parte
injunction was granted on 22.11.2007. However thereafter,
this the respondent filed OA No.187 of 2008 seeking interim
injunction against passing off. While this application was
pending adjudication, the respondent also filed the aforesaid
application for rectification before the IPAB. In the reply filed
by the appellant to the said application, the appellant also
claimed to be part of the famous United Group of Companies
and is one of the fastest growing companies in the Indian
Pharmaceutical Industry, incorporated under the Companies
Act, 1956 in the year, 1997 and had established a great
reputation by adopting latest manufacturing 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.
4. 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
LPA No.679 of 2011 Page 4 of 40
` 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 FORceftaZIDime, 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, MYZID,
NICZID, etc. Moreover, the appellant‟s product FORZID
injection is a 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.
5. 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.
6. 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 or it is similar with an
earlier trade mark and goods covered by the trademark are
LPA No.679 of 2011 Page 5 of 40
similar, the IPAB quoted from the judgment of the Supreme
Court in Amritdhara Pharmacy Vs. Satya Deo Gupta, AIR
1963 SC 449 and Cadila Health Care Limited Vs. Cadila
Pharmaceuticals Limited , 2001 (1) CTMR 288 (SC) and on
the application of principles in those judgments, position in the
instant case was analysed in the following manner:
“16. In the present case, the applicant contended that
the two marks ORZID and FORZID are structurally,
visually and phonetically similar to each other. There is
no doubt that in both the marks the syllables „ZID‟ have
been taken from the pharmaceutical composition
Ceftazidime and in the prefix „OR‟ and „FOR‟ the only
uncommon syllable is „F‟. It is difficult to hold that
FORZID is phonetically altogether dissimilar to ORZID.
While pronouncing, both the marks give only slightly
different sound but structurally and visually the marks
ORZID and FORZID have close resemblance to each
other. Judicial pronouncements have been made by
various Courts holding that the prefix of the word should
be given due weightage and importance in case where
the suffix is common [see Jagsonpal Pharmaceuticals v.
Jagson Parenterals (P) Ltd., 1997 PTC (17)] and in view
of this the close structural and visual similarity should be
given due weightage in the present case. It is also well
settled that the competing marks should be compared as
a whole without 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
LPA No.679 of 2011 Page 6 of 40
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 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
products are Schedule „H‟ drug is no guarantee that
there will be no confusion or deception. We agree with
the contention of the applicant that there will be adverse
effect if a patient mistakenly gets injected 1000mg
instead 250mg of injection. The trade channel of both
goods/products are same and the consumers are
patients of the same/common ailment. In the same
judgment the Court further observed that the marks in
every case in determining what is likely to deceive or
cause confusion must depend on its‟ own particular facts,
and the value of authorities lies not so much in the
actual decision. The reliance placed upon several
judgments by the learned counsel for respondent No.1 to
bring home his contention that both the competing
marks are dissimilar will be of no help in furthering such
contention as in most of the cases the findings of the
Courts are prima facie . For instance, in the Astrazeneca
UK ltd. And Anr (supra) the Court has expressedly stated
that needless to mention, the view expressed are
tentative and prima facie conclusion which shall not be
treated as expression of any final opinion of the final
merits of the case.“
LPA No.679 of 2011 Page 7 of 40
7. 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 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 section 9(1)(a) and (2)(a) and
section 11(1) and (2)(a) of the Act. The submission of
the respondent No.1 that the ZID is common to trade is
not sustainable in the absence of any proof that the
names/marks occurring in the Drugs Today 2005 are at
all in use or if in use, the extent of their use.
19. We consider that there is considerable force in the
contention of the appellant that the respondent No.1 has
obtained registration on false claim of user date. In the
LPA No.679 of 2011 Page 8 of 40
application for registration dated 18.10.2002 and in the
advertisement issued in the Trade Marks Journal the date
of user is shown as 01.01.2001. The claim of respondent
No.1 that it had adopted the trade mark and had been
using the same since 01.01.2001 for which there is no
material placed on record by the respondent No.1 to
substantiate its claim. The respondent No.1 entered into
an agreement for manufacturing of its product with its
licensee on 30.01.2001 and thereafter the licensee
obtained licence on 13.05.2002 and launched FORZID on
April 25, 2002. In view of these facts, it is certain that
the respondent No.1 has claimed the use date falsely and
hence not entitled for obtaining the impugned
registration. Therefore, the allegation that the
registration is wrongly remaining without sufficient cause
on the register is proved beyond doubt.”
8. Consequently, the rectification application was allowed.
9. 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 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:
LPA No.679 of 2011 Page 9 of 40
“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 of deceptive similarity, the
reasoning and conclusion of the IPAB does not call for
interference.”
10. 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:
“…………(i) the licensing does not result in causing
confusion or deception among the public; (ii) it does not
destroy the distinctiveness of the trade mark, that is to
say, the trade mark, before the public eye, continues to
distinguish the goods connected with the proprietor of the
mark from those connected with others; and (iii) a
connection in the course of trade consistent with the
definition of trade mark continues to exist between the
goods and the proprietor of the mark…….”
11. Section 11 of the Act becomes significant in the process. It
uses the expression earlier “trademark” and not “earlier
registered trademark”. As per Section 2 (z) (b) of the Act,
therefore, phonetic similarity could be compared while
examining the case of the confusion. It is for this reason, we
LPA No.679 of 2011 Page 10 of 40
have earlier observed that the arguments proceed on wrong
premise.
12. Brushing aside the arguments of the learned counsel for the
appellant that the respondent could not have successfully
asked for rectification, as respondent‟s registration was only for
a label mark, the learned Single Judge observed that the
judgment by the Supreme Court in the case of Ramdev Food
Products Ltd. Vs. Arvindbhai Rambhai Patel , AIR 2006 SC
3304 was a complete answer to this argument. The learned
Single Judge 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.
13. 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 respondent filed a rectification application
LPA No.679 of 2011 Page 11 of 40
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 Single Judge in the first instance. Another reason
given by the learned Single judge is as under:
“7……….. Viewed from another angle, the purpose of
Section 124 is to ensure that 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 interests of justice.”
Re: Maintainability of Rectification Petition without
obtaining specific permission of the Madras High Court
under Section 124(1)(b) of the Trademark Act:
14. Section 124 of the Act reads as under:
“124. Stay of proceedings where the validity of
registration of the trade mark is questioned, etc.- (1)
Where in any suit for infringement of a trade mark-
LPA No.679 of 2011 Page 12 of 40
(a) the defendant pleads that registration of the
plaintiffs trade mark is invalid; or
(b) the defendant raises a defense under Clause
(e) of Sub-section (2) of Section 30 and the
plaintiff pleads the invalidity of registration of the
defendant's trade mark, the court trying the suit
(hereinafter referred to as the court), shall,--
(i) if any proceedings for rectification of the
register 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 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 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.
LPA No.679 of 2011 Page 13 of 40
(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.”
15. 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
pending and the Court is satisfied that plea regarding the
invalidity of the registration of the plaintiffs or defendants
trademark is prima facie tenable, the Court has to first to
frame the issue and adjourn the case for a period of three
months from the date of the framing of the issue in order to
enable the party to apply to the Appellate Board for
rectification of the register. Under sub-section (2) of Section
124 of the Act, stay of the suit can be extended until the final
disposal of the rectification proceedings. Interpreting this
provision, a learned Single Judge of this Court in the case of
Astrazeneca UK Ltd. & Anr. Vs. Orchid Chemicals &
Pharmaceuticals Ltd. , 2006 (32) PTC 733 (Del.) held that
application for rectification could not be filed without showing
and obtaining prima facie satisfaction of the Court about their
plea of the invalidity of the registration of the mark. The
discussion in this behalf is in Paras 28 to 32. We may
reproduce Paras 30 to 32 for out benefit. These paras are as
under:
“30. Under Section 124(b) if the application for
rectification is already pending the suit can be stayed
pending final disposal of such proceedings. In case the
application for rectification or any such proceeding is not
pending, then a party seeking rectification can apply for
LPA No.679 of 2011 Page 14 of 40
rectification subject to prima facie satisfaction of the
Court regarding invalidity of the registration of the mark
of the opposite party. In the present case the plaintiffs,
however, 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
Section111(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 1425 where it 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
LPA No.679 of 2011 Page 15 of 40
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
proceeding for rectification of the register in
relation to plaintiff or defendant's trademark,
as the case may be, are pending before the
registrar or the High Court, further
proceedings in the suit shall be stayed, until
final disposal of rectification proceedings. If
proceeding are not pending, and the plea
regarding invalidity of registration of
concerned mark is raised, the Court trying the
suit is to be prima facie satisfied about
tenability of the issue, and if it is so satisfied,
it shall frame an issue to that effect and
adjourn the case for three months, from the
date of framing of the issue, in order to enable
the party concerned to apply to the High Court
for rectification of register. The consequences
of the raising of issue are twofold. In case, the
party concerned, makes an application for
rectification within the time allowed, under sub
Clause (ii) of sub Clause (b) of sub section (1),
whether originally specified or extended later
on, the civil Court trying the suit has to stay
the further proceedings of the suit until
disposal of the rectification proceeding. At 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
LPA No.679 of 2011 Page 16 of 40
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 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 registration of the defendant's trade mark was
pending as the trade mark of the defendant has been
registered during the pendency of the suit and the
certificate of registration was issued after filing of the suit
and Therefore, the application for rectification could not
be filed prior to the institution of the suit. The plea of the
plaintiffs Therefore, is that their application for
rectification filed before the Appellate Board is
maintainable without prima facie satisfaction of the
tenability of their plea by the Court. If the application for
rectification of the defendant's trade mark is maintainable
without prima facie satisfaction of this Court, then this
suit is also liable to be stayed as claimed by the plaintiffs
under Section 124(b) of the Act, though under Section
of 124(5) of the Act, the application for injunction and for
vacation or modification of an ex parte order can be
considered and decided by this Court. The distinction
between Section 124(b)(i) and 124(b)(ii) is on the basis
of pendency of the proceedings for rectification of the
register and not on the basis of whether the party
initiating the proceedings for rectification could initiate
such proceedings before the institution of the suit or not.
LPA No.679 of 2011 Page 17 of 40
There can be other eventualities under which a party may
not be able to initiate the proceedings for rectification
before the institution of the suit, but that will not give
them a right to circumvent the prima facie satisfaction of
his 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
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. ”
16. 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.
17. 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.
18. 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
LPA No.679 of 2011 Page 18 of 40
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‟ter 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 provision. Sub clause (i) and Sub
clause (ii) of Clause (b) of Sub-section (1) of
Section 124 operates at two different levels for two
different situations. While Sub clause (i) deals with a
situation where any proceeding for rectification is already
pending, Sub clause (ii) deals with a situation where any
proceeding for rectification is not pending. Both the sub
clauses focus their field of operation only in relation to the
stay of the civil suit. The conditions laid down in Sub
Clause (ii) are intended to enable a party to obtain stay of
the suit and not intended to provide for a discretion for
the Court to permit or not to permit any application for
rectification. Such a position is made clear by Sub
sections (2) to (5) of Section 124 , which deals with the
consequences of filing and not filing an application for
rectification and of the ultimate outcome of such
application for rectification. In other words, the
requirements of "raising an issue", "adjourning the case"
and a "prima facie satisfaction" spelt out in
Section 124(1)(b)(ii) should be read as the requirements
for the grant of a stay of the suit and not as a
requirement or pre-condition for filing an application for
rectification. The plain reading of
Section 124(1)(b)(ii) shows that 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
125
restriction under Section , in that such an application
LPA No.679 of 2011 Page 19 of 40
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 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.”
19. 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 Court.
However, the matter becomes complicated because of the
reason that the respondent has filed a suit in the Madras High
Court. Had the respondent approached the Madras 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 appellant also referred to the reasoned
judgment of IPAB with the Circuit Bench sitting in Delhi in the
case of Kamadhenu Realtors Pvt. Ltd. Vs. Kamadhenu
LPA No.679 of 2011 Page 20 of 40
Ispat Limited & Anr. , 2011 (46) PTC 93 (IPAB) where the
IPAB followed the decision of this Court in Astrazeneca UK
ltd. And Anr (supra) .
20. Taking into consideration the position mentioned in the
preceding paragraph, even when we proceed on the basis that
IPAB was bound to follow the Division Bench judgment of this
Court, the effect of that would have been to insist the
respondent to seek compliance of Section 124(b) of the Act by
filing application in the Madras High Court. We have to keep in
mind that the suit is pending in Madras High Court and it is
only the Madras High Court which would have considered such
an application. However, even if such 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 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)
LPA No.679 of 2011 Page 21 of 40
21. 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
part of the whole of the trade mark so registered.”
22. The argument was that as per sub-Section (1) of Section 17 of
the Act, the exclusive right of the registered proprietor is to
use the trademark “taken as a whole” and not “in part” which
the respondent was trying to claim. It was argued that from
the reading of the latter part of sub-Section(2) of the aforesaid
provision. It was made abundantly clear that the registration
would not confer any right in the matter forming only art of the
whole of the trade mark was registered and the IPAB had
ignored the words “not” and “in” occurring in this petition
thereby committing a grave error. Relying upon the judgment
LPA No.679 of 2011 Page 22 of 40
in the case of Aravind Laboratories Vs. Modicare (decided
on 05.07.2011), which is a Single Bench judgment of the
Madras High Court. It was argued that the objects & reasons
behind insertion of Section of the Trade Mark Act, 1999 were to
omit the provision relating to requirement of disclaimer under
Section 17 of the Trade and Merchandise Marks Act, 1958 and
to explicitly state the general proposition that the registration
of a trade mark confers exclusive right to the use of the trade
mark taken as a whole and not separately to each of its
constituent part. To buttress this submission, reference was
made to Section 15 of the Act which permits a proprietor of a
trade mark to apply for parts of a trade mark, if he claims to be
entitled to the exclusive use of any part thereof separately. It
was argued that since this was not done by the respondent in
the instant case, it was permissible for the respondent to claim
statutory right in the word “ORZID” (per se). 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.
23. The learned counsel also argued that at Paragraph 27 of the
impugned judgments, the learned Single Judge has wrongly
LPA No.679 of 2011 Page 23 of 40
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
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. 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
Appollinaris 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 &
LPA No.679 of 2011 Page 24 of 40
Company (supra) and finally in the Tudor case referred to
above which was decided by Sargant, J. This
circumstance, however, does not necessarily mean that in
such a case disclaimer will always be unnecessary. It is
significant that one of the facts which give rise to the
jurisdiction of the tribunal to impose disclaimer is that the
trade mark contains parts which are not separately
registered. It is, therefore, clear that the section itself
contemplates that there may be a disclaimer in respect of
parts contained in a trade mark registered as a whole
although the registration of the mark as a whole does not
confer any statutory right with respect to that part. ”
24. The learned counsel concluded his submission on this aspect by
submitting that the case of P.P. Jewellers (supra) decided by
the same Judge who has rendered the impugned judgment,
protection in the parts of the trade mark, when only the whole
had been registered, was disallowed in Para 14 of THAT
judgment which reads as under:
“14. In the instant case, PPJPL and LR Builders claim that
PP is a „house mark‟ and has been used 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."
25. 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
LPA No.679 of 2011 Page 25 of 40
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 the
said decision is pertinent:
“82. In Ashok Chandra Rakhit Ltd. (supra), whereupon
reliance has been placed by Mr. Nariman, this Court was
concerned with a proprietary mark of 'Shree'. It was
claimed that the mark 'Shree' 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 mark to the use of any
particular word or name contained therein apart from the
mark as a whole. This Court in the aforementioned factual
backdrop opined:
"This, as we have already stated, is not quite
correct, for apart from the practice the
Registrar did advert to the other important
consideration, namely, that on the evidence
before him and the statement of counsel it
was quite clear that the reason for resisting
LPA No.679 of 2011 Page 26 of 40
the disclaimer in this particular case was that
the Company thought, erroneously no doubt
but quite seriously, that the registration of the
trade mark as a whole would, in the
circumstances of this case, give it a right to
the exclusive use of the word "Shree" as if
separately and by itself it was also its
registered trade mark and that it would be
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.”
26. 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 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
LPA No.679 of 2011 Page 27 of 40
referred to an earlier decision in Registrar of Trade Marks
v. Ashok Chandra Rakhit AIR 1955 SC 558, which
concerned the proprietory 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.”
27. 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 facts of this case.
Re: Deceptive Similarity Between the Two Competing Marks:
28. Numerous judgments were cited by the learned counsel for the
appellant to contend that there was no deceptive similarity
between the trade mark “ORZID” and trade mark “FORZID”
which are as follows:
(i) USV Limited Vs. Systopic Laboratories , 2004
(1) CLT 418, judgment rendered by the Madras
High Court where the marks PIO and PIOZ were
held to be not deceptively similar.
(ii) Cadila Laboratories Ltd. Vs. Dabur India Ltd. ,
1997 PTC (17) 417, where the marks ZEXATE and
MEXATE were held to be not deceptively similar.
(iii) Unichem Laboratories Ltd. Ipca Laboratories
Ltd. , 2011 (45) PTC 488 (Bom.) where the marks
LORAM and SELORAM were held to be not
deceptively similar.
(iv) Reckitt d Colman of India Ltd. Vs. Medicross
Pharmaceuticals Pvt. Ltd. , 1992 (3) BomCr 408
LPA No.679 of 2011 Page 28 of 40
where the marks DISPRIN and MEDISPRIN were
held to be not deceptively similar.
(v) Astrazeneca UK Ltd. Vs. Orchid Chemicals &
Pharmaceuticals Ltd. , 2006 (32) PTC 733 (Del.)
where the marks MEROMER and MERONEM were
held to be not deceptively similar. Affirmed in
Astrazeneca UK Ltd. Vs. Orchid Chemicals &
Pharmaceuticals Ltd. , 2007 (34) PTC 469 (DB)
(Del.).
(vi) Aviat Chemicals Pvt. Ltd. Vs. Intas
Pharmaceuticals Ltd., 2001 PTC 601 (Del.)
where the marks LIPICARD and LIPICOR were held
to be not deceptively similar.
(vii) Indo-Pharma Pharmaceuticals 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
LPA No.679 of 2011 Page 29 of 40
Schering Corporation Vs. United Biotech Pvt.
Ltd. (DB) decided on October 08, 2010.
29. 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 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.
30. 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 by the
Courts 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
LPA No.679 of 2011 Page 30 of 40
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 summarized in the
following manner:
In such case, the central issue is as to whether the
defendant‟s activities or proposed activities amount to a
misrepresentation which is likely to injure the business or
goodwill of the plaintiff and cause damage to his business or
goodwill. To extend this use to answer this, focus has to be on
the aspect as to whether the defendant is making some
representation in course of trade to prospective customers
which is calculated to injure the business or goodwill of the
plaintiff thereby causing damage to him. In the process,
difference between the confusion and deception is to be
understood. This difference was explained by Lord Denning in
“Difference: Confusion & Deception” in the following words:
“Looking to the natural meaning of the words, I would
make two observations: first, the offending mark must „so
nearly resemble‟ the registered mark as to be „likely‟ to
deceive or cause confusion. It is not necessary that it
should be intended to deceive or 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
LPA No.679 of 2011 Page 31 of 40
& 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. 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.”
31. 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,
considering all those circumstances, you come to the
conclusion that there will be confusion- that is to say, not
necessarily that one man will be injured& the other will
gain illicit benefit, but that there will be confusion in the
mind of the public which will lead to confusion in the
goods- then you may refuse the registration, or rather
you must refuse the registration in that case.”
32. 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.
LPA No.679 of 2011 Page 32 of 40
33. In this process, first, plaintiff is required to prove the following:
(i) The business consists of, or includes selling a class
of goods to which the particular trade name
applies;
(ii) That the class of goods is clearly defined & is
distinguished in the public mind from other goods;
(iii) Because of the reputation of the goods, there is
goodwill in the name;
(iv) The Plaintiff is a member of the class selling the
goods is the owner of goodwill which is of
substantial value;
(v) He has suffered or is likely to suffer damage.
34. While comparing the few marks in order to see as to whether
there is likelihood of confusion or not, following words of
wisdom of the Supreme Court in Laxmikant V. Patel Vs.
Chetanbhai Shah and Another , (2002) 3 SCC 65 also need
to be kept in mind:
“10. A person may sell 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
LPA No.679 of 2011 Page 33 of 40
customers and clients of someone else to himself and
thereby resulting in injury.”
35. 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.”
36. 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 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
LPA No.679 of 2011 Page 34 of 40
the goods or services covered by the trade mark, there exists a
likelihood of confusion on the part of the public, which included
the likelihood of association with the earlier trade mark. It is
only honest concurrent use or other special circumstances
shown by the applicant that which may provide exception to
the aforesaid Rule as for the provisions of Section 12 of the Act
permits the Registrar to register such a mark. After taking
note of these provisions, the learned Single Judge observed as
under:
“20. The word ZID which is common to both ORZID and
FORZID is undoubtedly derived from the active
pharmaceutical ingredient 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 as
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.”
37. 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
LPA No.679 of 2011 Page 35 of 40
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 generally not permitted. The anti-
dissection rule is based upon a common sense
observation of customer behaviour as explained in
McCarthy on Trade Marks and Unfair Competition [J
Thomas McCarthy, 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 likelihood of confusion, not the
impression created from a meticulous
comparison as expressed in carefully weighed
analysis in legal briefs.”
“In litigation over the alleged similarity of
marks, the owner will emphasize the similarities
and the alleged infringer will emphasize the
differences. The point is that the two marks
should not be examined with a microscope to
find the differences, for this is not the way the
average purchaser views the marks. To the
average buyer, the points of similarity are the
more important that minor points of difference.
A court should not engage “technical
gymnastics” in an attempt to find some minor
differences between conflicting marks. However,
where there are both similarities and differences
in the marks, there must be weighed against
one another to see which predominate.”
24. The dissection of the marks as suggested by learned
counsel for UBPL is an artificial one. He wanted „ZID‟
which was the generic part of the marks to be substituted
LPA No.679 of 2011 Page 36 of 40
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 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.”
38. 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 250 mg
CEFTAZIDIME injection (ORZID) is administered a 1000
mg 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. If it is asked for verbally the phonetic similarity is
LPA No.679 of 2011 Page 37 of 40
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.”
39. These are the findings of fact arrived at by the IPAB and the
learned Single Judge.
40. The appellant could not successfully pierce through the
approach of the two authorities below, which had taken into
consideration of the judgments and the test laid down therein
and application of the said test in the facts of the present case.
In the present LPA, we do not find any cause to take a different
view or interfere with these findings of the fact.
41. The orders of the learned Single Judge and the Division bench
of the Madras High Court were relied upon by the learned
counsel for the appellant to contend that it was already held
that there was no deceptive similarity 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.
LPA No.679 of 2011 Page 38 of 40
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 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 consumer.
Misled into an initial interest, a potential
Steinway buyer may satisfy himself that the
less expensive Grotrian-Steinweg is at least
as good, if not better, than a Steinway.
Deception and confusion thus work to
appropriate defendant's good will. This
confusion, or mistaken beliefs as to the
LPA No.679 of 2011 Page 39 of 40
companies' interrelationships, can destroy the
value of the trademark which is intended to
point to only one company [American
Drill Busing Co. v. Rockwell Mfg. Co., 342 F.2d
1922, 52 CCPA 1173 (1965)]. Thus, the mere
fact that purchasers may be sophisticated or
discriminating is not sufficient to preclude the
likelihood of confusion. "Being skilled in their
own art does not necessarily preclude their
mistaking one trademark for another when the
marks are as similar as those here in issue,
and cover merchandise in the same
general field" [Id].
Having regard to the above discussion prima facie I am of
the opinion that the word Baker occurring in the
corporate name of the second defendant suggests its
connection or nexus with 'Baker', which depicts a wrong
picture as from February, 1995 'Baker' has terminated its
relation with the defendants. The continuance of the word
Baker as part of the corporate name of the second
defendant is likely to cause deception and confusion in
the mind of the customers. There would be no
justification for the second defendant to use the word
Baker as part of its corporate name after the ties between
the first plaintiff and the second defendant have ceased to
exist."
This decision was approved by the Supreme Court in the case
of Hiroo Khushlani and Another (Supra) .
42. We are, thus, of the opinion that the impugned judgment of
the learned Single Judge does not call for any interference, as
none of the arguments of the appellant is convincing enough to
shake the correctness thereof. As a result, we dismiss this
appeal being devoid of any merit with cost quantified at
` 25,000/-.
ACTING CHIEF JUSTICE
(RAJIV SAHAI ENDLAW)
JUDGE
MAY 18, 2012/ pmc
LPA No.679 of 2011 Page 40 of 40