Glaxo Group Ltd. vs Union Of India & Ors.
2010 Latest Caselaw 648 Del

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*     IN THE HIGH COURT OF DELHI AT NEW DELHI

30

+                    W.P.(C) 9478/2006 & CM 7072/2006


      GLAXO GROUP LTD.                           ..... Petitioner
                   Through Mr. Sushant Singh with
                   Mr. Prakash Chandra Arya, Mr. Tejender
                   Singh and Ms. Parveen Radhi, Advocates.

                     versus


      UNION OF INDIA & ORS.                   ..... Respondents
                    Through Mr. Amarjeet Singh with
                    Ms. Supreet Kaur, Ms. Navneet Momi and
                    Mr. Dhruva Bhagat, Advocates

      CORAM:
      HON'BLE DR. JUSTICE S. MURALIDHAR

                              ORDER

% 05.02.2010

1. This petition by Glaxo Group Limited (Glaxo) challenges the order

dated 15th March 2006, passed by the Intellectual Property Appellate

Board (IPAB), Circuit Bench sitting at Delhi, dismissing the Petitioner‟s

appeal (TA/224/2004/TM/DEL).

2. Glaxo filed an application for registration of the trademark VOLMAX

in Class 5 of Schedule-I of the Trade & Merchandise Marks Act, 1958

(„TM Act 1958‟) stating that the mark was proposed to be used in respect

of "pharmaceuticals and veterinary preparations and substances‟ for the

alleviation and prevention of respiratory ailments and disorders.

Respondent No.4 Voltas Limited (Voltas) filed an objection contending

that it was using a series of names, namely, VOLTAS, VOLFRUIT,

VOLFARM, VOLPUMP, VOLDRILL, VOLITA, VOLTRION,

VOLDRUM, VOLLAM, VOLRAM, VOLBIT, VOLSEAFOOD,

VOLFAN AND VOLPHOR. In particular it held a registration for the

mark `VOLTAS‟ in Class 5 which included pharmaceutical substances

and preparations, biological food products (for infants and veterinary).

The Assistant Registrar of Trademarks, Delhi by an order dated 4 th

February 1998 upheld the objection of Voltas and rejected the Glaxo‟s

application for registration of the trademark `VOLMAX‟.

3. Affidavits by way of evidence were filed both by Glaxo and Voltas

before the Assistant Registrar. It was contended before the Assistant

Registrar by Glaxo that if the mark `VOLMAX‟ was compared as a

whole, with the mark `VOLTAS‟, there was no similarity much less

deceptive similarity. It was submitted that Voltas could not claim

monopoly over the prefix `VOL‟. Further, Glaxo held a registration for

the trademark `VOLMAX‟ in several other countries in the world. On the

other hand, Voltas contended that the registration of the mark

`VOLMAX‟ was prohibited in terms of Section 12(1) of the TM Act,

1958 and that while considering deceptive similarity the fact that the

Voltas was the registered proprietor and user of a series of trademarks

with the prefix `VOL‟ had to be considered. Voltas contended that there

would be confusion among the consumers as to the origin of the goods if a

trademark with the prefix `VOL‟ was permitted to be registered in favour

of Glaxo. A consumer with imperfect recall would think that the goods

originate from the house of `Voltas‟ or are connected with.

4. The Assistant Registrar, on an analysis of Section 12(1) of the TM Act

1958, was of the view that the second condition for prohibiting

registration of a trademark which was that it was either identical to or

deceptively similar to another trademark registered in respect of the same

goods stood satisfied inasmuch as the goods in respect of which Glaxo

was seeking registration and the goods in respect of which Voltas held the

mark, namely Class 5 goods, "are the same". Having come to this

conclusion, it was observed that "the only question now remains whether

the trademark `VOLTAS‟ is deceptively similar to the mark applied for,

namely, `VOLMAX‟. The Asst. Registrar observed that all the trademarks

of the Voltas have to be kept in mind in determining whether the mark

applied for, i.e., `VOLMAX‟ was deceptively similar to the series of

marks of the Voltas. He concluded that "keeping in view of the series of

trademarks owned by the opponents having the common prefix `VOL‟,

the similarity between the trade mark applied for and the opponents

registered trade mark VOLTAS become so near as to likely to deceive or

cause confusion in the minds of a purchaser who already know the

opponents trademarks with the prefix VOL". It was also held that in

terms of Section 11(a) of the TM Act, 1958 a case of sufficient likelihood

of confusion or deception was made out by Voltas. Further it was held that

Glaxo could not be allowed to have any claim in the property of the mark

applied for as it was not in conformity with the Section 18(1) of the TM

Act, 1958 which required the applicant to possess a definite claim to be

the proprietor of the mark as on the date of the application. Glaxo then

filed an appeal in this Court which later stood transferred to the IPAB.

5. Before the IPAB it was contended on behalf of Glaxo that the house

name VOLTAS was totally different from the Appellant‟s mark

`VOLMAX‟ and therefore there could not be any confusion in the mind of

the purchaser or the trader. Apart from the fact that the marks VOLMAX

and VOLTAS were not deceptively similar, the goods in respect of which

they were to be used were totally different. On the other hand, Voltas

contended that the marks were deceptively similar and that the order of

the Asst. Registrar did not suffer from any illegality.

6. In para 3 of the impugned order, the IPAB formulated the question that

arose for consideration as "whether the impugned mark VOLMAX is

deceptively similar to that of the registered house mark of the first

respondent herein, namely, VOLTAS and it attracts the prohibition under

Section 11(a) of the TM Act 1958?" Thereafter the Tribunal appears to

have proceeded to examine the issue of deceptive similarity and in para 7

concluded that "Here, the appellant‟s mark VOLMAX and the

respondent‟s mark VOLTAS, in our view, do not make much difference

especially when both are put to use in the pharmaceutical business". After

quoting passage from the judgment of the Supreme Court in Cadila

Health Care Limited v. Cadila Pharmaceuticals Limited (2001) 5 SCC

73, the IPAB concluded that "the impugned mark `VOLMAX‟ is

phonetically, visually or structurally similar to that of the first

respondent‟s rival mark, which is in trade much earlier". Therefore the

registration of the appellant‟s mark "would definitely cause confusion not

only in the trade but also in the minds of the consumer". Accordingly, the

appeal was dismissed.

7. The submissions of Mr. Sushant Singh, the learned counsel for the

Petitioner and Mr. Amarjeet Singh, the learned counsel for the

respondents have been heard.

8. On behalf of the Petitioner, it is submitted that the concept of a family

of trademarks in trademark law required examination of what the position

was in the market place. Merely because a large number of marks were

registered as was evident from the register of trademarks, did not by itself

support the contention that the mark in question belonged to a family of

marks and was therefore distinctive. Reliance was placed on Kerly's Law

of Trade Marks and Trade Names, 14th Edition (Sweet & Maxwell)

2007 @ p. 257. A reference was made to an affidavit dated 4th October

2008 filed by Glaxo in these proceedings to state that there are numerous

medicines being sold in the market with the prefix `VOL‟. These included

"VOLINI of Ranbaxy, VOLITRA of Ranbaxy, VOLTAFLAM of

Novartis; VOLIX of Ranbaxy and many others". As regards the concept

of family of marks, reliance is placed on Torremar Trademark, [2003]

RPC 4 in which it was observed that in each case, "the question to be

determined is whether there are similarities (in terms of marks and goods)

which would combine to create a likelihood of confusion if the earlier

trade mark and the sign subsequently presented for registration were used

concurrently in relation to the goods for which they are respectively

registered and proposed to be registered". It is submitted that the IPAB

erroneously did not apply this test in coming to this conclusion. Reliance

has also been placed on the judgments in Astranzeneca UK Ltd. v. Orchid

Chemicals & Pharmaceuticals Ltd. 2006 (32) PTC 733.

9. It is pointed out that a comparison of the marks as a whole, i.e.,

VOLMAX and VOLTAS did not indicate phonetical or visual or

structural similarity. Morever, it had to be in respect of the same goods in

terms of Section 12(1) TM Act, 1958. It is contended that although the

Voltas had a registration in Class 5 which was a broad class of goods in

respect of which Glaxo was also seeking registration of its mark

`VOLMAX‟, the goods in respect of which the mark were proposed to be

used, were not the same. In other words, Voltas was using its mark

VOLTAS for bulk drugs, whereas Glaxo proposed to use VOLMAX for a

medicine for respiratory ailments.

10. It is submitted by counsel for the petitioner that if the test of similarity

had to be determined by splitting the mark into a prefix and suffix even

then there was no phonetic similarity if one focused on the similarities in

the two words. The descriptive part VOL in the mark VOLMAX connoted

`VOLUME‟ and the distinctive part MAX connoted „maximum‟ volume

for lung capacity. Phonetically, as well, VOL in VOLMAX would sound

similar to "Volume" whereas MAX would sound similar to "maximum".

On the other hand VOL in VOLTAS was pronounced as in "voltage" and

TAS would sound similar to "bus." So pronounced there would be no

phonetical similarity as well. It is submitted that the IPAB has not focused

on the different aspects of comparisons between two marks in order to

determine if they are deceptively similar. Reliance is placed on the

judgment in Schering Corporation v. Alkem Laboratories Ltd. 165

(2009) DLT 474 (DB) where it was held that the mark TEMODAL and

TEMODAR were not deceptively similar with the mark `TEMOGET‟ and

`TEMOKEM‟ used by the Defendants.

11. It is submitted that the question of law that arose was whether Section

12(3) could be said to be an exception both to Section 12(1) as well as

Section 11(a) of the TM Act 1958. The IPAB does not appear to have

approached the question from this angle at all.

12. Relying on the judgment in Vishnudas Trading v. Vazir Sultan

Tobacco Co. Ltd. AIR 1996 SC 2275, it is submitted that although the

broad class of goods (Class 5) in which the registration was granted to

Voltas may be the same as the class for which Glaxo was seeking

registration for its mark, that class would subsume a number of goods and

articles which were separately identifiable. Therefore, the comparison has

to be made of the goods and when such comparison is made in the instant

case, it could not be said that there was deceptive similarity. Relying on

the observations of the Supreme Court in Raghunathe Jew At Bhapur v.

State of Orissa JT 1998 (8) SC 483, it is submitted that the IPAB has not

taken into account the material evidence available on record before it, and

therefore, this Court would be justified under Article 226 in interfering

with its impugned order.

13. Appearing for the Voltas, Mr. Amarjeet Singh submitted that as long

as Voltas held a registration for the mark VOLTAS in Class 5 of goods

and the registration was not challenged by Glaxo by filing a rectification

application, it was not open to Glaxo to contend that the question of

deceptive similarity was not to be ascertained by comparing the mark as

applied to bulk drugs manufactured by Voltas with the mark as proposed

to be applied to the medicines to be manufactured by Glaxo. Both did

occur in the same class of goods. Moreover, Voltas has successfuly

established that it held a series or family of marks of which VOLTAS was

a prominent house mark. He placed reliance on the observations in Corn

Products Refining v. Shangrila Food Products AIR 1960 SC 142 to

submit that Glaxo could succeed only if it was able to show that the

individual marks in a series of marks were in fact owned by different

persons. As long as the marks in the entire series begin with the prefix

`VOL‟ which were predominantly registered in favour of Voltas, there

was no case made out by Glaxo. In this respect, he also placed reliance on

the judgment of this Court in Century Traders v. Roshan Lal Duggar

AIR 1978 Delhi 250 and of the Supreme Court in Amrit Dhara Pharmacy

v. Satya Deo Gupta AIR 1963 SC 449. Reliance is also placed on the

judgment in Amar Singh Chawal Wala v. Shree Vardhman Rice & Genl.

Mills 2009 (40) PTC 417 (Del) (DB).

14. As regards the jurisdiction of this Court under Article 226, it is

submitted by Mr.Amarjeet Singh that given the limited scope of the

jurisdiction of this Court it ought not to interfere with the impugned order.

It is further submitted that Glaxo was advancing contentions for the first

time in this Court which were not advanced by it earlier either before the

Assistant Registrar or the IPAB. No new evidence could be led now by

Glaxo to show the position in the market as regards the use of trademarks

with the prefix `VOL‟.

15. Given the wide canvas of the arguments advanced by the learned

counsel for both sides, it appears to this Court that the impugned order of

the IPAB does not at all deal with the complexity of the issue presented

before it. In the first place, after noting that there were two distinct

contentions advanced by Glaxo before it viz., that the goods in respect of

which the registration being sought were not similar to the goods being

produced and marketed by Voltas and secondly that there was no

deceptive similarity, the IPAB appears to have confined itself only to the

second issue of deceptive similarity. The IPAB in particular did not advert

to the concept of the same broad class of goods subsuming different goods

and articles which when sold under the competing marks would give rise

to deceptive similarity. In other words the purport of the judgment of the

Supreme Court in Vishnudas Trading v. Vazir Sultan Tobacco Co. Ltd.,

was not discussed by the IPAB with reference to the facts of the present

case. This discernment of the goods in respect of which the competing

goods were to be used was important for the purposes of Section 12(1) of

the TM Act, 1958.

16. Secondly even while the IPAB undertook the exercise of determining

whether there was deceptive similarity, either phonetically, visually or

structurally between the two competing marks, it does not appear to have

specifically adverted to the elements of the two marks that admitted of

comparison on these parameters. It appears to have made a sweeping

conclusion that the two marks, on all three parameters, were deceptively

similar. Prima facie, this appears to be a cursory approach. A comparison

of the two competing marks for determining their phonetical similarity in

the manner suggested by counsel for Glaxo was required t be undertaken

but not so undertaken either by the Assistant Registrar or the IPAB.

Likewise, even on the basis of structural similarities, the IPAB does not

appear to have considered whether the comparison could be made of the

two marks as a whole or on the basis that VOLTAS belonged to a series

or „family‟ of marks with a similar prefix in which event the marks would

have to be split to determine which is the generic portion and which the

distinctive portion. The impugned order of the IPAB does not reflect any

such detailed examination of the two competing marks at all.

17. That brings up the point concerning the extent of judicial review of the

IPAB‟s order that is permissible to be undertaken in proceedings under

Article 226 of the Constitution. The IPAB is a specialised tribunal set up

exclusively for IPR cases. The appeal before it is both on facts and on law

just as a first appeal against the judgment of a civil court. The IPAB is

therefore expected to analyse the evidence on record intensively and

determine the issues arising before it. This Court finds that the impugned

order does not bring out any analysis of the available evidence on the

above lines. Even the questions of law, viz., whether Section 12 (3) of the

TM act 1958 is an exception to Section 12 (1) and 11(a) thereof has not

been formulated, much less addressed by it. In the above circumstances

where the IPAB has failed to consider the materials before it and address

the legal issues, a case has been made out for interference by this Court

under Article 226 of the Constitution. The appeal requires to be restored

to the file of the IPAB to be considered afresh by it on merits.

18. As regards the objection raised by counsel for the Respondent that the

Petitioner should not be permitted to raise points that were not raised

before the Asst. Registrar or the IPAB, this court is of the view that the

affidavit now tendered by the Petitioner to show the position in the market

as regards the number of medicines being sold under the trademarks with

the prefix `VOL‟ is not in the nature of a new submission being made for

the first time. It supplements the contention of Glaxo in response to

Voltas‟ assertion that the mark VOLTAS belongs to a series or a family of

marks and is therefore distinctive. Since this is one of the bases on which

both the Asst. Registrar and IPAB have proceeded, it cannot be said that

the Petitioner is trying to urge a point which was not urged earlier. No

prejudice can be said to be caused if Glaxo‟s aforementioned affidavit is

taken on record. However, it will be open to Voltas to ask Glaxo to

produce the deponent before the IPAB for his cross-examination.

Additionally, Voltas will also be permitted by the IPAB to place evidence

before the IPAB by way of a further affidavit or documents to counter the

above affidavit of Glaxo and not for any other purpose..

19. This Court makes it clear that it has not by this order expressed any

view on the rival contentions of the parties on merits. The contentions of

both parties are left open to be raised before the IPAB which will decide

the appeal afresh uninfluenced by anything said earlier by it in the

impugned order or by this Court in the present order.

20. Accordingly, the impugned order of the IPAB is set aside.

Consequently Glaxo‟s appeal before the IPAB, TA/224/2004/TM/DEL,

stands restored and the said appeal will be decided afresh by the IPAB,

preferably within a period of six months, in the manner indicated

hereinbefore. The contentions of both the parties on all issues are kept

open to be urged before the IPAB. The materials which form part of the

record of the present case will be looked into by the IPAB and it will give

a reasoned order on all the issues arising for determination after hearing

both the parties.

21. The writ petition and application are accordingly disposed of in the

above terms. A certified copy of this order will be delivered to the IPAB

within five days. Order dasti to the parties.

S. MURALIDHAR, J.

FEBRUARY 05, 2010 ak