Madras High Court
(Oa/13/2018/Tm/Chn) vs Ipca Laboratories Pvt. Ltd on 8 December, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2023:MHC:5325
(T)CMA (TM) No. 72 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Judgment reserved on 27.09.2023
Judgment pronounced on 8.12.2023
CORAM
The Hon'ble Mr. Justice SENTHILKUMAR RAMAMOORTHY
(T) CMA (TM) No.72 of 2023
(OA/13/2018/TM/CHN)
M/s.Indian Immunologicals Ltd.,
A company duly organized and
existing under the laws of India,
Road No.44, Jubilee Hills,
Hyderabad – 50033, Telangana. ... Appellant
vs.
1. IPCA Laboratories Pvt. Ltd.
At 48, Government Industrial Estate,
Kandivli (West), Bombay – 400067.
2. Deputy Registrar of Trademarks,
Intellectual Property Building,
G.S.T. Road, Guindy,
Chennai – 600032.
...Respondents
PRAYER: This Civil Miscellaneous Appeal is filed under Section 91
of the Trademarks Act,1999, praying to set aside the order dated
March 10, 2015, passed by the learned Deputy Registrar of Trade
Marks which is contrary to the law and facts of the case at hand;
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Page No.1 of 32
(T)CMA (TM) No. 72 of 2023
grant interim stay on the operation of the order dated March 10, 2015,
during the pendency of this appeal; and to pass any other order
which this Hon'ble Court deems fit.
For Appellant : Ms.Vindhya S.Mani,
Mr.Kiran Manokaran,
Ms.Krithika Jaganathan,
Mr.Vishal Sundar,
for M/s.Lakshmikumaran
and Sridharan
For Respondent No.1 : Mr.Yatin Khochare,
Ms.Preeta Panthaki,
for M/s.Krishna and
Saurastri Associates.
For Respondent No.2 : Mr.Rajesh Vivekananthan,
Deputy Solicitor General.
JUDGMENT
The appellant assails an order dated 10.03.2015 (wrongly
written as 10.03.2014 in the impugned order) by which Opposition
No.MAS-164458 was allowed and, consequently, Application
No.839370 for registration of the trade mark “INIMOX” was rejected.
2. The appellant applied for registration of the word mark
“INIMOX” on 02.02.1999 in relation to medicinal and pharmaceutical
preparations for veterinary use on a “proposed to be used” basis. The
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application was accepted for advertisement and such advertisement
was published in Trade Marks Journal Mega 2 dated 25.09.2003 at
page No.256.
3. Upon noticing such advertisement, on 25.02.2004, the first
respondent lodged a notice of opposition objecting to the registration
of the above-mentioned mark on the ground that it is the prior user
and registered proprietor of the trade mark “IMOX” under Trade
Mark No.461167B in class 5 in respect of pharmaceutical and
medicinal preparations with effect from 06.10.1986, and that the
impugned mark “INIMOX” is deceptively similar to its mark. The
appellant filed the counter statement dated 28.09.2004 in response to
the notice of opposition by contending that the two marks are
visually, structurally, and phonetically different. Both parties filed
evidence in support of the opposition and application, respectively.
Pursuant to the conclusion of the hearing on 10.09.2014, the
impugned order was issued allowing the opposition and,
consequently, refusing the application for registration of the mark
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“INIMOX”. The present appeal arises in the said facts and
circumstances.
Counsel and their contentions
4. Oral submissions on behalf of the appellant were
advanced by Ms.Vindhya S.Mani, learned counsel; on behalf of the
first respondent by Mr.Yatin Khochari, learned counsel; and
Mr.Rajesh Vivekananthan, learned Deputy Solicitor General,
represented the second respondent.
5. Ms.Vindhya S.Mani, learned counsel, submitted that the
appellant conceived and adopted the mark “INIMOX” in February
1999. The appellant applied for the registration of the said mark on
02.02.1999 under Application No.839370 in class 5 on a “proposed to
be used” basis. The appellant started using the said mark shortly
after filing the application.
6. Learned counsel submitted that the appellant applied for
registration of the trade mark “INIMOX” in relation to medicinal/
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pharmaceutical products for veterinary use, specifically for the
treatment of respiratory infections in cows and buffaloes. In view of
the fact that both the appellant's and first respondent's marks are
derived from the name of the active pharmaceutical ingredient (API),
amoxycillin, learned counsel contended that any registered trade
mark derived in this manner is weak. Consequently, no protection is
extended unless the marks are nearly identical. As long as the later
mark may be differentiated from the earlier mark, as is the case when
“IMOX” is compared with “INIMOX”, she contended that the
proprietor of the earlier mark cannot object to and prevent the
registration of the later mark. Learned counsel pointed out that the
pharmaceutical product sold under the mark “INIMOX” is meant for
administration to animals by way of injection, whereas the product
sold under the first respondent's mark “IMOX” is a capsule meant for
human consumption. Therefore, she contended that the trade
channels and consumer base of the respective goods are different. By
referring to Rule 97 of the Drugs and Cosmetics Rules, 1945, which
stipulates that important particulars of the drug have to be
conspicuously written on the packaging or container, which is also
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required to contain a pictorial depiction of an animal, she contended
that such statutory mandate eliminates any likelihood of confusion
among the public.
7. By relying on the annual reports of the appellant for the
financial years 2003-2004 and 2012-2013 and copies of invoices
bearing the mark “INIMOX”, she contended that there is evidence of
use from the year 2000. She also relied on search reports from the
Trade Marks registry and the packaging of medicines with the suffix
“MOX” to contend that the word “MOX” is common to trade.
8. By inviting my attention to the impugned order,
Ms.Vindhya S.Mani, learned counsel, contended that the order is
perverse because of the following reasons: first, the finding that both
products are a combination of amoxycillin and cloxacillin is factually
incorrect; secondly, the finding that “INIMOX” is used for human
consumption is contrary to the evidence on record; and thirdly, in the
examination report, the Registrar did not cite the first respondent's
mark as being deceptively similar to the impugned mark.
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9. In support of the above contentions, learned counsel for
the appellant referred to and relied upon the following judgments:
(i) Syngenta Limited v. Hyderabad Chemical Supplies
Limited & Deputy Registrar of Trade Marks (Syngenta),
OA/33/2008/TM/CH, Order dated 13.06.2011, Intellectual
Property Appellate Board (the IPAB), where, at the
interlocutory stage, in the context of two marks used
for pesticides/insecticides, the proprietor of the trade
mark Icon was held to be not entitled to relief in
respect of the trade mark Imicon.
(ii) Corona Remedies Private Limited v. Franco-Indian
Pharmaceuticals Private Limited (Corona Remedies),
Commercial Appeal No.46 of 2021, Judgment dated
20.01.2023, Bombay High Court (DB), where the
proprietor of the trade mark Stimuliv was held to be
not entitled to relief in respect of the trade mark
Stimu-let.
(iii) Orchid Chemicals & Pharmaceuticals Ltd. v.
Wockhardt Limited (Orchid Chemicals), 2013 (3) CTC 841,
where, at the interlocutory stage, the proprietor of the
trade mark Meto was held to be not entitled to relief in
respect of the trade mark Metox.
(iv) Apex Laboratories Ltd. v. Zuventus Health Care Ltd.
(Apex Laboratories), 2006 SCC OnLine Mad 1238,
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where, at the interlocutory stage, the proprietor of the
trade mark Zincovit was held to be not entitled to
relief in respect of the trade mark Zinconia.
(v) Sanjay Kumar Singh v. The State of Jharkhand,
MANU/SC/0305/2022, where the scope of Order
XLI,Rule 27 CPC was discussed.
(vi) Astrazeneca UK Ltd & Anr v. Orchid Chemicals &
Pharmaceuticals Ltd (Astrazeneca), ILR (2007) I DELHI
874, where, at the interlocutory stage, the proprietor of
the trade mark Meronem was held to be not entitled to
relief in respect of the trade mark Meromer.
(vii) Elyon Pharmaceuticals Pvt Ltd v. The Registrar of
Trade Marks, 2023: DHC: 6074, where the Delhi High
Court held that the refusal to register the trade mark
Elmentin on the basis of the cited trade mark
Elemental warranted interference.
(viii) Toyota Jidosha Kabushiki Kaisha v. Prius Auto
Industries Ltd, (2018) 2 SCC 1, where the territoriality
principle was applied and Toyota was held to be not
entitled to prevent the use of the trade mark Prius by
the respondent in India.
(ix) S. Syed Mohideen v. P. Sulochana Bai, (2016) 2 SCC
683, where the centrality of use in trade mark law was
underscored.
(x)Macleods Pharmaceuticals Ltd v. Swisskem Healthcare
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and another (Swisskem), 2019 SCC OnLine Bom 1186,
where the proprietor of the trade mark Panderm was
held to be not entitled to relief in respect of the trade
mark Polyderm.
(xi) Schering Corporation & Anr v. United Biotech (P) Ltd
(Schering Corporation), (2010) (7) Mh.L.J.611, where, at
the interlocutory stage, the proprietor of the trade
mark Netromycin was held to be not entitled to relief
in respect of the trade mark Netmicin.
10. In response to these contentions, Mr.Yatin Khochari,
learned counsel, opened his submissions by pointing out that
additional documents were submitted to the Court at the appellate
stage without leave of the Court and, therefore, he submitted that
such additional documents should not taken into consideration by
the Court.
11. On merits, learned counsel submitted that the first
respondent's mark “IMOX” was adopted in the year 1982 and was
registered under Trade Mark No.461167B in class 5 in respect of
pharmaceutical and medicinal preparations with effect from
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06.10.1986. He also relied on the findings of the Registrar to that
effect and contended that the first respondent is the prior user of the
mark. He further submitted that the appellant manufactures a
vaccine for human consumption and that the contention that the
appellant does not manufacture drugs for human consumption is
contrary to fact. Regarding the plea that the element “MOX” is publici
juris in the pharmaceutical industry, he submitted that such a plea
was not taken earlier, and that the appellant has not discharged the
burden of establishing publici juris. On the contention that the right to
exclusive use of a mark originating from a common generic name is
limited, learned counsel submitted that the only difference between
the appellant's mark and that of the first respondent is the addition of
the letters 'NI' after the initial letter 'I' and that the impugned mark
infringes even if allowance is made for the common generic source.
More importantly, he submitted that allowing such a mark to be
entered on the register would cause confusion and deception among
the public.
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12. In support of these contentions, learned counsel relied
upon the following judgments:
(i) Associate Builders v. Delhi Development Authority,
(2015) 3 SCC 49, particularly paragraphs 31 and 32, as
to what constitutes perversity.
(ii) Macleods Pharmaceuticals Ltd v. Union of India and
Others (Macleods Pharmaceutical), 2023 SCC Online
Bom 408(DB), particularly paragraph 25, on the
criticality of ensuring that the slightest risk of
confusion should be prevented as regards
pharmaceutical products.
(iii) E. Griffiths Hughes v. Vick Chemical Co.,
MANU/WB/0180/1959, with regard to the
determination of the rights of parties as on the date of
application.
(iv) A. Andisamy Chettiar v. Subburaj Chettiar, (2015) 17
SCC 713.
(v) K.R Mohan Reddy v. Network Inc., (2007) 14 SCC
(vi) Sanjay Kumar Singh v The State of Jharkhand, Civil
Appeal No. 1760 of 2022.
(vii) Bal Pharma v Centaur Laboratories, 2001 SCC
Online Bom 1176, regarding the importance of
conducting a search of the register of trade marks
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before adoption of a mark.
(viii) Cadila Health Care Ltd. v Cadila Pharmaceuticals
Ltd,( Cadila),(2001) 5 SCC 73, particularly paragraphs
22, 25, 27 and 32 thereof, regarding the greater need
to be strict about the likelihood of confusion in the
context of pharmaceutical products.
(ix) Milmet Oftho Industries and Ors v Allergan Inc,
(2004) 12 SCC 624.
(x) Cadila Pharmaceuticals Ltd v Sami Khatib (Sami
Khatib), 2011 SCC Online Bom 484, where it was held
that the proprietor of a trade mark applied in India
for export is entitled to protect such mark.
(xi) Kirorimal Kashiram Marketing & Agencies Private
Limited v Sachdeva & Sons Industries Pvt. Ltd, 2008
SCC Online Del 1328.
(xii) UFO Contemporary, INC v Creative Kids Wear
(India) Pvt Ltd and Ors, MANU/DE/2108/2020.
(xiii) Charak Pharma Pvt Ltd v Glenmark
Pharmaceuticals Ltd, 2014 SCC Online Bom 98.
(xiv) Corn Products Refining Company v Shangrila Food
Products Ltd, AIR 1960 SC 142, for the proposition that
the onus is on the person alleging extensive use of the
common element in the relevant marks to establish
the same.
(xv) Sun Pharmaceuticals Industries Ltd and Ors. v
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Kinetic Lifescience (OPC) P. Ltd and Ors – 2022 SCC
Online Del 4793.
(xvi) Charak Pharmaceuticals v M.J Exports Pvt Ltd,
1992 SCC Online Bom 534 : (1993) 13 PTC 309.
(xvii) Ranbaxy Laboratories v Vets Farma Pvt Ltd and
Ors., 2004 SCC Online IPAB 86, where the IPAB
concluded that refusal to register the trade mark
Levasol was justified although the mark was used for
veterinary products whereas the opponent's mark
Lemasol was intended for human consumption.
(xviii) Solvay and Cie v Mexin Medicaments Pvt Ltd and
Ors. (Solvay and Cie), 2004 SCC Online IPAB 34, where
the IPAB concluded that refusal to register the trade
mark Solvay was justified although the mark was
used for veterinary products whereas the opponent's
mark Solvin was intended for human consumption.
(xix) Glaxo Group Limited v Neon Laboratories, 2003
SCC Online Bom 1126.
(xx) Glaxo Smith Kline Pharmaceuticals Ltd v Biovet
Formulations, 2004 SCC OnLine Del 139.
(xxi) Himalaya Drug Co. v S.B.L Limited, 2012 SCC
Online Del 5701, where it was held that the person
raising the defence of publici juris should prove the
same.
(xxii) National Sewing Threading Company Limited v
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James Chadwick & Brothers Ltd., (1953) 1 SCC 794,
particularly paragraph 28 thereof, where it was held
that the likelihood of deception and confusion should
be looked at from the perspective of the public and
not only the opponent.
(xxiii)Ciba Ltd., Basle, Switzerland v. M. Ramalingam &
S.Subramaniam trading in the name of South Indian
Manufacturing Co., Madura and another, 1957 SCC
OnLine Bom 45(DB), particularly paragraph 5 thereof,
where the Court held that the duty to protect the
public should outweigh any inconvenience to a
particular party.
Discussion, analysis and conclusions
13. In light of the rival contentions, the first question that
falls for consideration is whether the additional documents sought to
be relied on by the appellant can be admitted at the appellate stage
and I deal with the said issue first.
14. In view of sub-rule 7 of Rule 7 of the Intellectual
Property Rights Division Rules, 2022 (the 2022 Rules), this Court has
the power to grant leave to produce additional documents in an
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appeal. Sub-rule 9 of Rule 7 of the 2022 Rules makes it clear that
Order XLI, Rule 27 of the Code of Civil Procedure, 1908 (the CPC),
shall apply to the extent that it is not inconsistent with the 2022
Rules. According to Order XLI, Rule 27 of the CPC, parties to an
appeal are not entitled to produce additional evidence, oral or
documentary, except upon obtaining leave of the Court. Such leave
may be obtained if the party applying for leave establishes that the
additional evidence could not be produced in spite of the exercise of
due diligence when the matter was conducted before the court of first
instance or if the court is of the view that such additional evidence is
necessary for the adjudication of the appeal.
15. In the case at hand, apart from the application, counter
statement and requisite forms, the appellant filed the affidavit of
Mr.K.Suryanarayana, its then Company Secretary & Legal Manager,
by way of evidence in support of its application before the Registrar
of Trade Marks. The appellant annexed two exhibits to the said
affidavit: Exhibit A being an abstract indicating the turnover from the
sale of products bearing the trade mark "INIMOX" from the year
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2002-2005; and Exhibit B being a series of advertisements bearing the
trade mark "INIMOX". In the appeal filed before the Intellectual
Property Appellate Board (the IPAB), the appellant filed about 14
exhibits along with a miscellaneous application for leave to rely on
additional documents.
16. The documents in the appeal paperbook include
documents forming part of the prosecution history, such as the
certified copy of the impugned order (Exhibit-1); true copy of Form
TM-70 filed before the second respondent(Exhibit-4); true copy of
Form TM-1 pertaining to the impugned mark "INIMOX" (Exhibit-5);
journal advertisement of the impugned mark "INIMOX"(Exhibit-6);
notice of opposition(Exhibit-7); counter statement filed in response to
the notice of opposition(Exhibit-8); the evidence in support of the
opposition(Exhibit-9); evidence in support of the application(Exhibit-
12); and evidence in reply filed by the first respondent (Exhibit-13).
Since all the above documents clearly formed part of the record
before the Registrar of Trade Marks, they are not additional
documents within the meaning of Order XLI, Rule 27 of the CPC.
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17. The appeal paper book also includes the annual reports
of the appellant(Exhibit-2); copies of invoices showing use of the
trade mark "INIMOX"(Exhibit-3); a search report from the trade mark
registry's website (Exhibit-10); the original packaging of products
containing the suffix "MOX" along with invoices(Exhibit-11); and
records pertaining to Trade Mark No.461167 for the mark
"IMOX"(Exhibit-14). These documents were not part of the evidence
adduced by the contesting parties before the Registrar of Trade
Marks.
18. The appellant had two prior opportunities to place on
record all relevant evidence, i.e. either along with the application, or
in response to the notice of opposition. Besides, since the trade mark
application was made on a "proposed to be used" basis, evidence of
use does not advance the case for registration with effect from
02.02.1999. Therefore, I am unwilling to permit reliance on Exhibits-2,
3 and 11. I would, however, permit reliance on Exhibits-10 & 14
because they are documents in the public domain and would be of
value in the adjudication of this appeal.
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Whether the rejection of registration was justified?
19. On the merits of the dispute, the first question that arises
is whether the decision of the Registrar is liable to be interfered with.
The impugned order of the Registrar, in relevant parts, is extracted
below:
"I have heard the arguments of both the counsels and gone
through the evidences filed in the instant proceedings. It is
found that the opponent's mark is in use since 1982 and it
is being used for the purpose of curing lower respiratory
tract infections, ENT infections, Skin & soft tissue
infections and Dental infections in human beings. The
opponent's herein mark IMOX was registered under
No.461167 and it is valid upto 6/10/2017. The said
registered mark was applied on 6/10/1986 with a proposed
to be used mark. The IMOX is a combination of
Amoxycillin + Cloxacillin. On the other hand, it is found
that the applicant's mark 'Inimox' is also a combination of
Amoxycillin + Cloxacillin Injection....The applicant has
not filed invoices in support of use of the mark. The
opponent has filed invoices from 1982 in support of use of
the mark. But, the applicants have applied their mark
'INMOX' with a proposed to be used mark. Therefore, it is
clear from the evidences that both the mark is used for the
same purposes and the opponent is the prior user of the
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mark. The applicant is the subsequent user of the mark
applied for. The intention of the applicant, it appears that
the applicant is wanted to ride upon the opponent's
reputation in absence of establishing honest adoption and
as rightly pointed out by the opponent's counsel that the
prefix 'IN' has been added to make it 'INIMOX'. It is also
clear that the mark of applicant is used both for the human
and animal purposes to treat the respiratory tract
infections. Definitely, it will cause confusion and/or
deception amongst the consumers by virtue of likelihood of
slurring of prefix 'in' at the time of purchase."
As correctly pointed out by learned counsel for the appellant, some
conclusions in the impugned order are clearly untenable. For
instance, the conclusion that both products contain 'amoxycillin' and
'cloxacillin' is contrary to the factual position that the first
respondent's product bearing the trade mark "IMOX" contains only
'amoxycillin', whereas the appellant's product bearing the trade mark
"INIMOX" contains both 'amoxycillin' and 'cloxacillin'. Although the
first respondent manufactures and markets a product bearing the
trade mark, IMOX-CLO, which contains both amoxycillin and
cloxacillin, the opposition was filed on the strength of the mark
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"IMOX" and not "IMOX-CLO". The conclusion that both products are
used for humans and animals is completely untenable in view of the
admitted position that the first respondent's product is intended for
human consumption, whereas the appellant's product is intended to
be administered only to animals. Even so, the fundamental basis of
the impugned order is that there is likelihood of confusion among the
public if the appellant's mark is entered on the register. In order to
examine whether this conclusion calls for interference, I turn first to
the relative grounds for refusal of registration.
20. The relative grounds for refusal of registration of a trade
mark, other than a well-known trade mark, are contained in Section
11(1) of the Trade Marks Act, which is set out below:
"11. Relative grounds for refusal of registration.
(1) Save as provided in section 12, a trade mark shall
not be registered if, because of--
(a) its identity with an earlier trade mark and
similarity of goods or services covered by the trade
mark; or
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(b) its similarity to an earlier trade mark and the
identity or similarity of the goods or services
covered by the trade mark,
there exists a likelihood of confusion on the part of
the public, which includes the likelihood of
association with the earlier trade mark.”
Section 11 indicates that the first question to be examined is: who is
the prior user of the mark? The first respondent has placed on record
invoices evidencing use of its mark from 1982 and provided evidence
of incurring promotional expenditure from the financial year 1982-83.
This was, however, countered by learned counsel for the appellant on
the ground that such use was outside India. The evidence on record
indicates that the first respondent's mark was applied to goods in
India since 1982, albeit the said goods were exported from India in
the early years. Under Section 56 of the Trade Marks Act, such use is
tantamount to use in India. The judgment of the Bombay High Court
in Sami Khatib, which was cited by the first respondent, also supports
this position. Thus, the position that emerges is that the first
respondent's use pre-dated use by the appellant by several years. The
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next question to be examined is whether the goods of the first
respondent and appellant are similar.
21. The admitted position is that the rival marks are used in
relation to pharmaceutical products. In order to decide whether
goods are similar, the primary considerations are: the nature of
goods; the origin; whether the goods may be used as substitutes;
whether the goods are complementary; and whether the trade
channels are common. Being pharmaceutical products,
notwithstanding the fact that the goods of the appellant are intended
for veterinary use whereas the goods of the first respondent are
intended for human use, the goods are similar in nature and origin.
Therefore, I conclude that they are similar. This leads to the question
whether refusal under Section 11(1) of the Trade Marks Act was
justified.
22. On this issue, learned counsel for the appellant
contended that both the trade marks are derived from the generic
name 'amoxycillin'; that a mark derived from a generic name is weak;
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and that the claim to exclusive use may be defeated by pointing to
even minor differences between the marks. The judgments in
Astrazeneca, Swisskem, Schering Corporation, Orchid Chemicals,
Syngenta and Apex Laboratories were relied on in support of this
proposition. Learned counsel for the first respondent did not disagree
with the principle that a claim to exclusive use may be relatively
easier to defeat when the relevant marks trace their origin to a
generic name, but contended that the degree of similarity is so
striking, in this case, that the appellant cannot be permitted to
register the later mark. By relying on the Supreme Court's judgment
in Cadila and the judgment of the Division Bench of the Bombay High
Court in Macleods Pharmaceuticals, learned counsel for the first
respondent contended that, as regards marks relating to
pharmaceutical products, the necessity to avoid the slightest risk of
deception or confusion on the part of the public should be accorded
the highest importance because the consequences of confusion may
be dire.
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23. Many related questions arise from the discussion in the
preceding paragraph. To what extent does the origin of a mark from
a generic name impact its strength? Does the extent of impact depend
on how much of the mark is appropriated from the generic name?
Does the extent of impact depend on how much is added to the mark
by the proprietor to the material appropriated from the generic
name? To what extent does it depend on how much of the later mark
is appropriated from the generic name? How do you reconcile the
weakness of marks derived from a generic name or source with the
vital need to protect the public from the likelihood of confusion,
including by association, especially in the context of pharmaceutical
products? In order to answer these questions, it is instructive to look
closely at cases cited at the bar. I focus on those cases next.
24. By way of caveat, it should be noticed that most of the
judgments were in interlocutory proceedings. In Astrazeneca, in the
context of both the earlier and later mark being derived from the
generic name Meropenem, the Division Bench of the Delhi High
Court refused to interfere with an order dismissing the application
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for interim injunction filed by the proprietor of the trade mark
Meronem against use of the trade mark Meromer. It is noticeable
that the proprietor of the earlier mark merely omitted the letters 'pe'
from the generic name Meropenem while coining its mark. In Orchid
Chemicals, in the context of both the earlier and later mark being
derived from the generic name Metoprolal, the Division Bench of this
Court refused to interfere with an order dismissing the application
for interim injunction filed by the proprietor of the trade mark Meto
against use of the trade mark Metox. In this case, the earlier mark,
Meto, was formed merely by appropriating the first four letters from
the generic name.
25. In Schering Corporation, in the context of both the earlier
and later mark being derived from the generic name Netilmicin, the
Division Bench of the Bombay High Court refused to interfere with
an order dismissing the application for interim injunction filed by the
proprietor of the trade mark Netromycin against use of the trade
mark Netmicin. It is noticeable that the proprietor of the earlier mark
appropriated both the prefix 'Net' and the suffix 'micin', albeit by
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replacing the 'i' in 'micin' with 'y' to form 'mycin'. Besides, the letters
'il' in the middle of the generic name were replaced by the letters 'ro'.
In Corona Remedies, in the context of both the earlier and later mark
being derived from the English word 'stimulate', the Division Bench
of the Bombay High Court interfered with an order of interim
injunction granted against use of the mark 'Stimu-let' at the instance
of the proprietor of the trade mark 'Stimuliv'. Here, the earlier mark
combined an abbreviation of stimulate and liver and the later mark
combined an abbreviation of stimulate and the generic 'letrozol'.
26. By drawing on the above cases but without intending to
be exhaustive of relevant considerations, I reach the following
conclusions. Undoubtedly, the strength of a trade mark that is coined
by appropriating from a generic name or API is weaker than an
arbitrary or invented mark. In my view, the extent of appropriation
from such generic name matters and, other things being equal, the
greater the appropriation, the weaker the mark. Apart from the
extent of appropriation, the extent of addition by the proprietor of the
mark matters. Other things being equal, the greater the addition to
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the generic name by the proprietor, the stronger the mark. Needless
to say - be it in infringement or passing off actions, or in the context
of an application for registration and objections being raised on
relative grounds - the visual, phonetic and structural similarity
between the later and earlier marks will, as in all cases, play a
significant role. The likelihood of deception and confusion on the
part of the public also cannot be underestimated and this assumes
relatively greater significance when an application to enter a mark on
the register is under consideration because no infringement action
would lie against a proprietor upon registration of the relevant mark.
27. I apply the above principles to this case. The first
respondent admits that it coined the trade mark "IMOX" by
appropriating the letters 'mox' from amoxycillin. In view of such
admission, the contention that publici juris was not proved becomes
immaterial. The first respondent has thus appropriated three letters
from the generic name. The addition thereto is, however, limited to
the alphabet 'I' at the beginning. The appellant also appropriated the
letters 'mox' from amoxycillin and added the letters "Ini" at the
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beginning. In my view, the appropriation from a generic name and
the limited addition thereto render the first respondent's mark weak.
While it may still be sufficient if the later mark turns out to be
identical or if the later mark did not trace its origin to a common
generic name, which is the active pharmaceutical ingredient in the
relevant products, in the facts and circumstances, the first respondent
is not entitled to prevent registration of the later mark. Whether the
registration of the later mark was, nonetheless, liable to be refused in
public interest by the Registrar because of the likelihood of deception
and confusion, especially in the context of a pharmaceutical product
in light of principles laid down in Cadila and Macleods
Pharmaceuticals, falls for consideration next.
28. The factual position is that the appellant's product is an
injection administered to animals whereas the first respondent's
product is a capsule for human consumption. Rule 97(3) of the Drugs
and Cosmetics Rules, 1945, which was relied on by learned counsel
for the appellant, provides as under:
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"97(3) The container of a medicine made
up ready only for treatment of an animal shall be
labelled conspicuously with the words 'Not for
human use; for animal treatment only' and shall
bear a symbol depicting the head of a domestic
animal."
While learned counsel for the first respondent placed reliance on
documents indicating that the appellant is also engaged in the
production of human vaccines, there is clearly no evidence of the use
of the trade mark "INIMOX" in relation thereto. More importantly,
learned counsel for the appellant submitted, on instructions, that the
appellant agrees to restrict use of the trade mark "INIMOX" to drugs
intended for veterinary use. The fact that the first respondent has
admittedly not initiated any action for infringement or passing off
against the appellant although the appellant asserts use since 1999
does not operate as an estoppel against an opposition by the first
respondent, but it is indicative prima facie of the absence of actual
deception or confusion. The absence of evidence of actual confusion
or deception, in these type of cases, is not a condition precedent for a
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successful opposition, but cannot be construed as irrelevant. The
search report from the Trade Marks Registry's website also discloses
that several marks with the element 'MOX' were registered, including
'MOX', 'UMOX', and 'IDIMOX'.
29. By taking into account the following: the administration
of the drug only in the injection form and, therefore, only by doctors
or nurses trained in veterinary medicine; the use of the impugned
mark only in relation to veterinary drugs at present; the statutory
prescription regarding packaging; the existence of many registered
marks with the element 'MOX'; and the fact that most pharmacies in
India do not combine human and animal drugs, I conclude that there
is no likelihood of deception or confusion provided a condition is
imposed that the mark should not be applied to products for human
consumption. I am not inclined to endorse the conclusion of the
IPAB, in this regard, in Ranbaxy Laboratories and Solvay and Cie.
30. For reasons discussed above, the conclusion of the
Registrar on the fundamental issue of likelihood of confusion among
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the public also calls for interference. Consequently, the impugned
order is set aside and it is directed that the appellant's mark
"INIMOX" shall be registered subject to the condition that the mark
shall be used only in respect of products intended for veterinary use
and shall not be used in relation to pharmaceutical products intended
for human use.
31. (T) CMA(TM) 72 of 2023 is allowed on the above terms
without any order as to costs.
08.12.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation : Yes/No
kal
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SENTHILKUMAR RAMAMOORTHY J.
kal
Pre-Delivery Judgment made in
08.12.2023
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