w w w . L a w y e r S e r v i c e s . i n


Orchid Chemicals & Pharmaceuticals Ltd. v/s United Biotech Pvt. Ltd. & Another.

    ORA/39/2008/TM/DEL
    Decided On, 14 October 2008
    At, Intellectual Property Appellate Board
    By, THE HONOURABLE MR. JUSTICE Z.S. NEGI
    By, VICE-CHAIRMAN & THE HONOURABLE MR. S. USHA
    By, TECHNICAL MEMBER
    For The Applicant: Ms. Gladys Daniel, Advocate. For The Respondent No. 1: Shri A.A. Mohan, Advocate.


Judgment Text
Z.S. Negi, Chairman:

1. This application is filed by the applicant for the removal of trade mark FORZID under No. 1144258 as of 18th October, 2002 in class 5 from the Register of Trade Marks or rectification of the Register under sections 9, 11, 18, 57 and 125 of the Trade Marks Act, 1999 (hereinafter referred to as the Act).

2. It is averred that the applicant, a company under the Companies Act, 1956, is the manufacturer and marketer of various pharmaceutical products under a large number of its trade marks. The company starting with a modest Rs. 12 crore infrastructure in 1994-95 has grown at a remarkable pace to achieve a capital base of Rs. 800 crores; has achieved a turn over of US$ 163 million and a world leadership in the pharmaceutical bulk actives in a short period of time. It is today the largest manufacturer-exporter of cephalosporin bulks actives in India and ranked amongst the top five cephalosporin manufacturing companies in the world. Its formulations are manufactured and marketed in India and abroad through its exclusive divisions, Orchid Healthcare and Mano Pharma. The applicant has two modern state-of-the-art manufacturing plants and a one-of-its-kind R&D Centre and the applicant has been awarded the prestigious ISO 9001:2000, ISO 14001 and OHSAS 18001 certificates for its world class quality management, environmental management and occupational health & safety management systems. The applicant is also the pioneer in establishing `zero discharge' facilities in the Indian pharmaceutical industry. The applicant, equipped with very sophisticated analytical and chemical laboratory supported by a good infrastructure, is focusing as a key value deriver with aims to become a partner of choice to select global pharma companies in terms of new chemical entity development, novel drug delivery systems development, custom synthesis and R & D services.

3. It is further averred that the applicant in the year 1999 adopted the trade mark ORZID which is used with respect to the applicant's pharmaceutical preparations having active ingredient CEFTAZIDIME and the said mark became popular among the medical fraternity. On 6.9.1999, the applicant filed application No. 874808 for registration of trade mark ORZID with respect to medicinal and pharmaceutical preparations, the application was advertised in the Trade Marks Journal No. 1291 (S) dated 13.3.2003 and got registration of the mark unopposed. After obtaining manufacturing license for product under the trade mark for export sale on 8.12.1998 and for sale in India on 8.1.1999, the applicant commenced use of the trade mark upon goods with effect from May, 1999. Thus the applicant 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 applicant's registered trade mark.

4. It is claimed that the applicant in September, 2007 came across the use of deceptively similar trade mark FORZID in respect of medicinal and pharmaceutical preparations by the respondent No. 1 and aggrieved by the slavish imitation of the applicant's registered trade mark, a Civil Suit in C.S. No. 1027 of 2007 was filed on the file of High Court of Madras seeking permanent injunction restraining the respondent No. 1 from infringing the registered trade mark and from passing off its goods. The applicant, during the pendency of the aforesaid suit, filed O.A. No. 1275 of 2007 in C. S. No. 1027 of 2007 for an interim injunction restraining the respondent No. 1 from infringing the registered trade mark of the applicant, which was granted exparte on 22.11.2007. Later on, the exparte injunction was vacated on the ground that respondent No. 1 is the registered proprietor of the impugned mark but the Hon'ble High Court held in its order that this would not bar the relief with regard to passing off. In view of this order, the applicant filed O.A. No. 187 of 2008 in C.S. No. 1027 of 2007 seeking interim injunction against passing off and the same is pending adjudication.

5. The applicant claiming to be the person aggrieved, in view of the dilution of its registered trade mark and on economic loss suffered on account of the use of the impugned mark by the respondent No. 1, has filed the present rectification application on the grounds, inter alia, that the impugned registration has been granted contrary to law and wrongly remaining on the register without sufficient cause; cause; that the applicant is the prior registered proprietor of the mark ORZID and that the mark of the respondent No. 1 being deceptively similar to ORZID, the impugned registration ought not to have been granted; that the applicant is prior user from the year 1999 and the use by respondent No. 1 is subsequent, since 2001, and the date of user claimed by the respondent No. 1 is false; that the use of the trade mark FORZID from 2002 is an infringement of the applicant's trade mark and as such the impugned registration is contrary to law and liable to be rectified and that the impugned trade mark is being used with respect to identical goods through identical trade channels, which tantamounts to passing off and such use would be detrimental to public health and safety.

6. The respondent No. 1 filed counter-statement denying the material averments and stating that it is 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. It is stated that within the span of ten years the respondent No. 1 has established a great reputation by adopting latest manufacturing techniques, introducing world-class quality products, ground breaking R&D efforts in association with its foreign counterparts and for setting new standards of customer service. The respondent No. 1 further states that during the course of business, it has adopted the trade mark FORZID in 2001 for its pharmaceutical preparations and obtained registration of the trade mark unopposed under No. 1144258 dated 18.10.2002 in class 5 which is valid and subsisting. Since adoption of the mark, the respondent No. 1 is continuously and extensively using the same and its approximate sale of goods under the trade mark for the period of 2006-07 is Rs. 229.51 lakhs. Respondent No. 1 in its counter-statement has, apart from parawise comments to the application, made certain averments, inter alia, that the trade mark FORZID is an invented word coined from the word FOR and ZID from the generic name CEFTAZIDIME and the suffix ZID is common to trade; that the product FORZID injection is Schedule `H' drug always to be prescribed by a doctor and dispensed with by a qualified druggist; that the labels/cartons of respondent No. 1 is completely different in its colour scheme, get up and layout from applicant's ORZID labels/cartons: that the statutory right vested in the respondent No. 1 is protected in the registered trade mark FORZID by the provisions of sections 30, 31, 32, 33 and 34 of the Act; that the applicant is guilty of delay, latches, acquiescence and consent and that the applicant has not explained how it became aware about respondent No. 1's claimed user from 2001 only in September, 2007 and the applicant which has been sleeping by its right has allowed the respondent No. 1 to grow and has now chosen to enter into this litigation and has wrecked havoc by obtaining exparte orders from Courts, though the same were vacated. The application, therefore, deserves to be dismissed in limine.

7. The applicant filed reply to the counter-statement stating, inter alia, that the respondent No. 1 has obtained registration in violation of provisions of sections 9, 11, 18 and 29 of the Act; that the respondent No. 1 is disentitled to registration on account of mala fides in the adoption of trade mark; that the trade mark FORZID is deceptively, phonetically, visually and structurally similar to the applicant's registered trade mark ORZID which is admittedly used three years after the use of ORZID, that provisions of section 33 and 34 of the Act do not apply and that the applicant is not guilty of delay, acquiescence or latches.

8. Learned counsel for the applicant contended that the trade mark of the respondent No. 1 is deceptively, phonetically, visually and structurally similar to the prior registered trade mark of the applicant and the same ought not to have been granted registration under sections 9 and 11 of the Act. The applicant is prior in time in using the trade mark and prior in obtaining registration thereof and overall the respondent No. 1 has obtained registration on the basis of false date of user. A mere addition of `F' before the applicant's mark ORZID by the respondent No. 1 does not make a difference to the average purchaser, who looks at the mark ORZID would assume that the injection FORZID sold by the respondent No. 1 emanates from the same source as the injections manufactured by the applicant, both injections being sold across the same counter. The confusion or deception in this case is not only likely but almost certain, having regard to the manner in which the mark has been copied by the respondent No. 1. The respondent No. 1 has submerged or absorbed the entire mark of the applicant in its mark FORZID. Placing reliance upon the Judgment in Amritdhara Pharmacy v. Satya Deo Gupta, AIR 1963 SC 449 : PTC (Suppl)(2) 1(SC), Cadila Health Care Limited v. Cadila Pharmaceuticals Limited, 2001 (1) CTMR 288 (SC) : 2001 (1) CTMR 288 (SC), Needle Industries (India) Limited, Chennai v. Sanjay Jaiswal & Others, 2002 (24) PTC 646 (DB) (Mad), the mark used by the respondent No. 1 is certain to deceive or cause confusion as the same is slavishly copied and both the trade marks are in the same class and the goods covered by them are of same description that is to say medicinal preparations and such deception or confusion can be harmful to human health. Learned counsel relying on the observation of Courts about of Schedule `H' drugs, contended that confusion or mistake in filling a prescription for either product could produce harmful effects as frequently handwriting is not unmistakably legible and even prescriptions are telephoned to the pharmacist. She contended that medical practioners are not infallible and if a person requiring to be injected for 250 mg is injected 1000 mg, the consequences can be well imagined.

9. Learned counsel contended that the applicant had always been vigilant to protect its intellectual property rights and in the present case also it initiated appropriate remedial action soon after it came across the use of deceptively similar trade mark by the respondent No. 1. The applicant became aware of the trade mark of the respondent No. 1 when it filed its counter affidavit in the application for an interim injunction and contested the said application before the High Court of Madras claiming to be the registered proprietor of the trade mark FORZID. The plea of the respondent No. 1 about delay, acquiescence or latches is not sustainable in the present application. Learned counsel relied on the Judgment in case of Needle Industries (India) (supra), Midas Hygiene Industries P. Ltd. & Anr. v. Sudhir Bhatia & Ors., 2004 (26) PTC 121 (SC), Ramdev Food Products Pvt. Ltd. v. Arvindbhai Rambhai Patel & Ors., AIR 2006 SC 3304 and Power control Appliance and Others v. Sumeet Machines Pvt. Ltd., AIR 1994 (2) SCC 448 : 1995 (15) PTC 165 (SC).

10. It was contended that the impugned trade mark has been registered contrary to the law and wrongly remaining on the Register of Trade Marks without sufficient cause. The learned counsel also submitted that the respondent No. 1 is not a lawful proprietor of the impugned trade mark as it has not been explained as to how it settled on the impugned mark so deceptively similar to the appellant's trade mark when it was aware that the appellant's well reputed mark was in use. It is not the case of the respondent No. 1 that it was not aware of the applicant's mark being in use or it has made any attempt to obtain search report about the conflicting mark registered or pending registration. In the absence of any plausible explanation the only possible inference is that the respondent has adopted the deceptively similar trade mark with mala fide and dishonest intention and ulterior motive to encash upon the reputation and goodwill attached to the applicant's trade mark ORZID.

11. Learned counsel for the respondent No. 1 at the out set vehemently opposed the application on the ground that the application on hand is not maintainable either in law or on fact as it is nothing but an abuse of process of law to harass the respondent No. 1. He submitted that the trade mark FORZID is an invented word coined by the respondent No. 1 adopted from the words FOR CEFTAZIDIME. Learned counsel claimed that there are several manufacturers of Ceftazidime injunctions using the trade marks with suffix ZID and such suffix, which is generic word, is common to trade and as such no one can claim monopoly over the word which is common to trade. In any event the trade marks ORZID and FORZID are different especially as, as already said, there are several Ceftazidime products manufactured with the suffix ZID by different manufacturers. The prefix of the applicant's mark is `OR' prefix `FOR' is to the mark of respondent No. 1 The FORZID product of respondent No. 1 is a Schedule `H' drug having completely different colour scheme, get up and lay out of cartons from that of the cartons of ORZID products and there is a vast price difference between the two completing products. To bring home these submissions, learned counsel relied upon the Judgments in Astrazeneca U.K. Ltd. & Anr. v. Orchid Chemicals & Pharmaceuticals Ltd., 2006 (32) PTC 733 (Del.), Astrazeneca U.K. Ltd. & Anr. v. Orchid Chemicals & Pharmaceuticals Ltd., MPR 2007 (2) 0001 : 2006 (32) PTC 733[Del.], Cadila Laboratories Ltd. v. Dabur India Limited, 1997 (17) PTC 417 (Del), USV Limited, Chennai v. Systopic Laboratories Limited, Chennai, (2004) 2 M.L.J. 301, Mount Mettur Pharmaceuticals Ltd. v. Ortha Pharmaceuticals Corporation, AIR 1975 Madras 74, S.B.L. Limited v. Himalaya Drug Co., AIR 1998 Delhi 126 : 1997 (17) PTC 540 (Del) (DB), Aviat Chemicals Pvt. Ltd. & Anr. v. Intas Pharmaceuticals Ltd., 2001 PTC 601 (Del), Biofarma & Anr. v. Sanjay Medical Stores & another, 1998 PTC (18) (DB), Indo-Pharma Pharmaceutical Works Ltd., Mumbai v. Citabel Fine Pharmaceuticals Ltd., Madras, 1998 (18) PTC 775 (DB), Khoday Distilleries Limited (Now known as Khoday India Ltd.) v. Scotch Whisky Association & Ors., 2008 (37) PTC 413 (SC) and Creative Travels (P) Ltd. v. Creative Tours and Travels (P) Ltd., 2006 (33) PTC 430 (Del.).

12. Learned counsel submitted that the present application of the applicant is hit by grave delay, latches, and acquiescence and ought to be dismissed in limini. He took the plea that the applicant ought to have known the existence of respondent No. 1 as the respondent No. 1 has been using the trade mark since the year 2002 and challenged that the applicant has not at all explained as to how the applicant only in September 2007 became aware of the user claimed since 2001 by the respondent No. 1. To stress the said plea he drew our attention to a copy of invoice dated 19.6.2003 evidencing that Oscar Remedies Pvt. Ltd. purchased the bulk drug Ceftazidime from the applicant on purchase order issued by the respondent No. 1 on behalf of Oscar Remedies Pvt. Ltd. and stated that the applicant was well aware of the manufacture of FORZID injections by the licensee of the respondent No. 1, namely Oscar Remedies Pvt. Ltd. and sale of the said products by the respondent No. 1 at least from June 2003. Apart from that, in Drug Today Year book of the year 2005, the applicant's ORZID product and FORZID product of respondent No. 1 have been listed together on the same page. Learned counsel reiterated that the applicant is guilty of delay and latches and the applicant has itself acquiesced in the matter.

13. Learned counsel submitted that the respondent No. 1 is the honest adopter and the registered proprietor of the trade mark and it has the legal right to adopt and use the trade mark since the same has been registered under the Act. It cannot be said that registration of trade mark of the respondent No. 1 is granted contrary to law and is wrongly remaining on the register without sufficient cause. He submitted that both parties have adopted `ZID' as part of their mark from the pharmaceutical composition Ceftazidime and as per trade practice the applicant cannot claim any monopoly over the same. The prefix `OR' in the applicant's mark and prefix `FOR' in the mark of respondent No. 1 are phonetically and visually different. Many other companies are using marks having `ZID' as suffix such as OZID, IZID, INDOZID, KEMZID, MANZID, MEGAZID, MYZID, NICZID, etc. for the same preparation. The mark of the respondent No. 1 is rightly remaining on the register and with sufficient cause is remaining thereon.

14. After having heard counsel for both the parties, we would have first to consider whether the applicant is the person aggrieved as application for rectification can be filed only by a person aggrieved within the meaning of Section 57 of the Act. The expression person aggrieved has not been defined but the expression has received liberal construction from the Courts. The test to determine a person aggrieved is the one propounded in Powell's Trade Mark 1894 (11) RPC 4. A person aggrieved includes the rivals in the same trade who are aggrieved by the entry of the rival's mark in the register or person whose legal rights would or might be limited if the mark remains on the register, he could not lawfully do that which, but for the existence of the mark on the register he could lawfully do. The applicant in the present case is in the business of manufacturing and trading in medicinal and pharmaceutical preparations like the respondent No. 1. The registration of trade mark obtained by the respondent No. 1 is prima facie in restraint to the legal rights of the applicant and in view of the dilution of its registered trade mark and on economic loss suffered by the applicant on account of the use of the impugned mark by the respondent No. 1. Applying the above referred propounded test, the applicant is prima facie the person aggrieved and can file the rectification application on hand.

15. The next issue to be considered is whether the two trade marks are deceptively similar, likely to deceive or cause confusion to public. 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 trade mark are similar. Judicial pronouncements have laid several tests to determine the similarity or otherwise of a mark. The marks are not to be compared placing them side by side but overall structural and phonetic similarity be considered from the point of view of an unary purchaser of average intelligence and imperfect recollection. The question whether the two marks are likely to give rise to confusion or not is a question of first impression and it is well recognized that in deciding the question of similarity between two marks, the mark have to be considered as a whole (see Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142 : PTC (Suppl)(1) 13(SC)). In Amritdhara Pharmacy (supra), the Apex Court at para 8 of the Judgment held as under:-

"8. Let us apply these tests to the facts of the case under our consideration. It is not disputed before us that the two names `Amritdhara' and `Lakshmandhara' are in use in respect of the same description of goods, namely, a medicinal preparation for the alleviation of various ailments. Such medicinal preparation will be purchased mostly by people who instead of going to a doctor wish to purchase a medicine for the quick alleviation of their suffering, both villagers and townsfolk, literate as well as illiterate. As we said in Corn Products Refining Co. v. Shangrila Food Products Ltd., (1960) 1 SCR 968 : PTC (Suppl)(1) 13(SC). The question has to be approached from the point of view of a man of average intelligence and imperfect recollection. To such a man the overall structural and phonetic similarity of the two names `Amritdhara' and `Lakshmandhara' is, in our opinion, likely to deceive or cause confusion. We must consider the overall similarity of two composite words `Amritdhara' and `Lakshmandhara'. We do not think that the learned Judges of the High Court were right in saying that no Indian would mistake one for the other. An unwary purchaser of average intelligence and imperfect recollection would not, as the High Court supposed, spilt the name into its component parts and consider the etymological meaning thereof or even consider the meaning of the composite words as `current of nectar' or `current of Lakshman'. He would go more by the overall structural and phonetic similarity and the nature of the medicine he has previously purchased, or has been told about, or about which has otherwise learnt and which he wants to purchase. Where the trade relates to goods largely sold to illiterate or badly educated person, it is not answer to say that a person educated in the Hindi language would go by the etymological or ideological meaning and see the difference between `current of nectar' and `current of Lakshman'. `Current of Lakshman's in a literal sense has no meaning; to give it meaning one must further make the reference that the `current of stream' is as pure and strong as Lakshman of the Ramayana. An ordinary Indian villager or townsman will perhaps known Lakshman, the story of the Ramayana being familiar to him; but we doubt if he would etymologise to the current of seeing the so-called ideological difference between `Amritdhara and `Lakshmandhara'. He would go more by the similarity of the two names in the context of the widely known medicinal preparation which he wants for the ailment."

In Cadila Heath Care Limited (supra), the Supreme Court observed a held as under:-

`15. It will be useful to refer to some decisions of American Courts relating to medicinal product. In case of American Cynamid Corporation v. Connaught Laboratories Inc., 231 USPQ 128 (2nd Cir. 1986), it was held as under:

"Exacting judicial scrutiny is required if there is a possibility of marks on medicinal products because the potential harm may be far more dire than that in confusion over ordinary consumer products."

It may here be noticed that Schedule "H" drugs are those which can be sold by the chemist only on the prescription of the Doctor but Schedule "L" drugs are not sold across the counter but are sold only to the hospitals and clinics.

Nevertheless, it is not uncommon that because of lack of competence or otherwise, mistakes can arise specially where the trade marks are deceptively similar. In Blansett Pharmaceuticals Co. v. Carmick Laboratories Inc. 25 USPQ 2nd 1473 (TTAB 1993), it was held as under:

"Confusion and mistake is likely, even for prescription drugs prescribed by doctors and dispensed by pharmacists, where these similar goods are marketed under marks which look alike and sound alike".

In the case of Glenwood Laboratories Inc. v. American Home Products Corp. 173 USPQ 19(1972) 455 F. Report 2d, 1384 (1972), the Court of the United States had held that:

"The fact that confusion as to prescription drugs could produce harm in contrast to confusion with respect to non-medicinal products as an additional consideration for the Board as is evident from that portion of the opinion in which the Board stated.... "The products of the parties are medicinal and applicant's product is contraindicated for the disease for which opposer's product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals".

The board's view that a higher standard be applied to medicinal products finds support in previous decisions of this Court, Clifton v. Plough 341, F 2d 934, 936, 52, CCPA 1045, 1047 (1965) ("t is necessary for obvious reasons, to avoid confusion in the dispensing of pharmaceuticals"), Campbell Products, Inc. v. John Wyeth & Bor. Inc., 143, F. 2d 977, 973, 31 CCPA 1217 (1944), it seems to us that where ethical goods are sold and careless use is dangerous, greater care should be taken in the use of registration of trade marks to assure that no harmful confusion results".

In the case of R.J. Strasenburgh Co. v. Kenwood Laboratories, Inc., 106 USPQ 379 (1955), as noted in the decision of Morgenstern Chemical Company's case (supra), it had been held that:

"Physician's are not immune from confusion or mistake. Furthermore it is common knowledge that many prescriptions are telephoned to the pharmacists and others are handwritten, and frequently handwriting is not unmistakably legible. These facts enhance the chances of confusion or mistake by the pharmacists in filling the prescription if the marks appear too much alike when handwritten or sound too much alike when pronounced."

The drugs have a marked difference in the compositions with completely different side effects, the test should be applied strictly as the possibility of harm resulting from any kind of confusion by the consumer can have unpleasant if not disastrous results. The Courts need to be particularly vigilant where the defendant's drug, of which passing off is alleged, is meant for curing the same ailment as the plaintiff's medicine but the compositions are different. The confusion is more likely in such cases and the incorrect intake of medicine may even result in loss of like or other serious health problems. In this regard reference may usefully be made to the case of Glenwood Laboratories, Inc. v. American Home Products Corporation (supra), where it was held as under:

"The products of the parties are medicinal and applicant's product is contraindicated for the disease for which opposer's product is indicated. It is apparent that confusion or mistake in filling a prescription for either product could produce harmful effects. Under such circumstances, it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals.

It was further submitted on behalf of the appellant that although the possibility of confusion in a drug being sold across the counter may be higher, the fact that a drug is sold under prescription or only to physicians cannot by itself be considered a sufficient protection against confusion. The physicians and pharmacists are trained people yet they are not infallible and in medicines, there can be no provisions for mistake since even a possibility of mistake may prove to be fatal.

16. As far as the present case is concerned, although both the drugs are sold under prescription but this fact alone is not sufficient to prevent confusion which is otherwise likely to occur. In view of varying infrastructure for supervision of physicians and pharmacists of medical profession in our country due to linguistic, urban, semi-urban and rural divide across the country and with high degree of possibility of even accidental negligence, strict measures to prevent any confusion arising from similarity of marks among medicines are required to be taken.'

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 Ceftazidimen 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 given only slightly different sound but structurally ad 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 ad 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: "I do not think it is right to take a part of the word and compare it with a part of the other word; one word must be considered as a whole and compared as a whole....I think it is a dangerous method to adopt to devide the word up ad seek to distinguish a portion of it from a portion of the other word." As has been held in the Cadila Health Care Limited (supra) that "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 Amrithdhara Pharmacy, the Court held Amritdhara and Lakshmandhara were likely to deceive or to cause confusion based on the facts of the case.

The Court observed that the use of word `dhara' which is literally means `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 of 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 previous 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 of 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 1000 mg instead of 250 mg 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 it's 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 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.

17. Now we will come to the issue of grave delay, latches and acquiescence. Acquiescence implies positive acts and not merely silence or inaction such as is involved in latches, and the acquiescence is one facet of delay, as has been observed by the Court in the case of M/s. Power Control Appliances v. Sumeet Machines Pvt. Ltd. (supra). In that case the Hon'ble Supreme Court held: `Acquiescence is sitting by, when another is invading the rights and spending money on it. It is a course of conduct inconsistence with the claim for exclusive rights in the trade mark, trade name etc. It implies positive acts; not merely silence or inaction such as is involved in latches. In HarCourt v. White, (1860) 28 Beav 303, Sr. John Romilly said: "It is important to distinguish mere negligence and acquiescence." Therefore, acquiescence is one facet of delay. If the plaintiff stands by knowingly and lets the defendant build up an important trade until it had become necessary to crush it, then the plaintiff's would be stopped by their acquiescence. If the acquiescence in the infringement amounts to consent, it will be a complete defence as was well laid down in Mouson (J.G.) & Co. v Boehm, (1884) 26 Ch.D. 406. The acquiescence must be such as to lead to the inference of a licence sufficient to create a new right in the defendants was laid down in Rogers v. Nowill (1847) 2 De GM & G 614.' The contention of respondent No. 1 that the applicant ought to have knowledge that the respondent No. 1 is using its impugned trade mark since 2002 is not acceptable as there is no material placed on record to show that the respondent No. 1 has widely advertised its mark to come to the notice of the applicant. There is not an iota of advertisement produced by the respondent No. 1.

The reliance placed on the invoice dated 19.6.2003 about purchase of bulk drug by the licensee of the respondent No. 1 from the applicant does not show that the respondent No. 1 had purchased the bulk drug for manufacture of FORZID injections. We agree with the contention of the applicant that it has been selling bulk drugs to various companies and it has no means to know what products under what brand name or trade mark they are manufacturing. In view of these there is no reason to disbelieve the averment made by the applicant that it has come to know of use of the FORZID trade mark in September, 2007 and immediately they filed the suit before the High Court of Madras and also filed rectification application in 2008. In the case of Midas Hygiene Industries Private Limited (supra) it has been held that mere delay in bringing action is not sufficient to defeat grant of injunction in such cases. The applicant did not oppose the application for registration of Trade Mark FORZID also shows that the applicant was not aware of filing of such application. The evidence that FORZID and ORZID appeared on the same page of Drugs Today of 2005 edition does not prove that the applicant was aware of use of

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existence of ORZID trade mark of the respondent No. 1 prior to 2007. In relation to application of limitation, this Appellate Board has held that the provisions of Limitation Act, 1963 do not apply in rectification applications filed before the Appellate Board. In view of this, there is no delay latches or acquiescence. 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 is not only slavish copy of the applicant's trade mark but the respondent No. 1 has submerged the trade mark of the applicant in its entirety 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 has no claim of proprietary right in the trade mark, it would not have filed application for registration of trade mark FORZID. That apart, the registration obtained by 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 applicant 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 manufacturing of its products with its licensee on 30.01.2002 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 user trade 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. 20. In view of the above, we are of the opinion that the applicant has proved the case successfully. Accordingly, the rectification application is allowed with the direction to the Registrar of Trade Marks to remove the impugned trade mark FORZID under No. 1144258 in class 5 from the Register of Trade Marks However, there is no order as to costs.
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