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IPAB Rules On Pharmaceutical Trade Marks

The use of a trade mark that is identical or deceptively similar to another’s trade mark leads to economic loss to the original proprietor as well as dilution of the mark and passing off. If the use of deceptively similar mark is in respect of pharmaceutical products falling in the same description, concerns of public health and safety also arise.

Recently, the Intellectual Property Appellate Board in India (IPAB) upheld the registration of an earlier mark in respect of pharmaceuticals as against the later mark in Orchid Chemicals and Pharmaceuticals v United Biotech and the Registrar of Trade Marks 2008(38) PTC 691 (IPAB) under section 9 and 11 of the Trade Mark Act, 1999. Orchid Chemicals and Pharmaceuticals (Orchid) fled for the removal of United Biotech’s registered trade mark Forzid, citing that it was a slavish imitation of the applicant’s registered trade mark Orzid in respect of pharmaceutical preparations falling in the same class for the goods of the same description.

Orchid had earlier filed a suit for passing off of the trade mark in the Madras High Court, and obtained an interim injunction. The interim injunction was, however, subsequently vacated by the court on the ground that the respondent was registered proprietor of the mark Forzid.

Orchid contended that the registration of the mark Forzid was granted contrary to law and was wrongly remaining on the register without sufficient cause. Moreover, argued the applicant, the respondent’s said mark was deceptively phonetically, visually and structurally similar to the applicant’s mark Orzid. And therefore, the impugned registration ought not to have been granted. It was also noted that Orchid was the prior user from the year 1999 while respondent used the impugned mark only from 2001. It was further asserted that the adoption of the mark by the respondent was made in bad faith. On the basis of these grounds, the rectification application was filed.
The IPAB noted that it was not the case of the respondent 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 in bad faithe and with dishonest intention, and the ulterior motive to take advantage of the reputation and goodwill attached to the applicant’s trade mark. the case of Glenwood Laboratories, Inc v American Home Products Corporation 173 USPQ 19 (1972) 455 F Report 2s 1384 (1972) was cited by the IPAB, in which it was held that “it is necessary for obvious reasons, to avoid confusion or mistake in the dispensing of the pharmaceuticals.”

In the circumstances, the rectification application was allowed with the direction to the Registrar of Trade Marks to remove the trade mark Forzid from the Register Trade Marks.