Intellectual Property Appellate Board
Smithkline And French Laboratories ... vs Eros Pharma (P) Ltd. on 3 September, 2004
Equivalent citations: 2004(29)PTC482(IPAB)
JUDGMENT
Kaghbir Singh, Vice-Chairman
1.This application for rectification of the register was filed by the petitioner in the High Court of Judicature at Madras under Section 56 read with Sections 107 and 108 of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to as the Act) as O.P. No. 686/2000. The same has been transferred to this Board in terms of Section 100 of the Trade Marks Act, 1999.
2. The petitioner is a company registered under the laws of UK engaged in the manufacture of pharmaceuticals. The respondent is a company incorporated under the Companies Act, 1956. It is holding registration of the trade mark ZIFOL-12 under No. 536744 dated 11.9.90. The petitioner is holding the trade mark for FEFOL registered under No. 261202 in class 5 in Part A as from 10.12.69. The petitioner alleges that it had filed a suit in the High Court of Judicature at Madras as CS No. 1581/91 under the Trade and Merchandise Marks Act, 1958 alleging that the use of that trade mark is resulting in the infringement of petitioner's registered trade mark FEFOL. This suit was filed even before the respondent's mark ZIFOL-12 was registered and advertised in the Trade Mark Journal on 1.10.94. Respondent had earlier resisted by O.S. No. 1622 of 91 filed in the City Civil Court, Calcutta the Cease and Desist notice issued by the petitioner with respect to the respondent's use of the trade mark ZIFOL-12 as amounting to groundless threat of legal proceedings. When the CS No. 1581/91 was about to be taken up for trial, counsel for the respondent informed the Court that the trade mark ZIFOL-12 had been accorded registration in favour of the respondent herein and the suit for infringement is liable to be dismissed under Section 30(1) (d) of the Act. The petitioner conducted an investigation and came to know that the respondent had applied for registration of ZIFOL-12 in class 5 for pharmaceuticals on 11.9.90 and the same had been published in the Trade Mark Journal No. 1088 dated 1.10.94. It escaped the petitioner's attention due to inadvertence and in the absence of any opposition, the impugned trade mark proceeded for registration. Respondent's trade mark ZIFOL-12 for pharmaceuticals is deceptively similar to petitioner's trade mark FEFOL dated 10.12.69. Respondent's claim of prior use of registration is false. Respondent being in the same line of business knew about the existence of petitioner's trade mark FEFOL and its reputation. Thus, the adoption and use of the trade mark ZIFOL-12 is only with the object of exploiting the commercial goodwill attached to the petitioner's trade mark FEFOL. On these grounds the petitioner has requested for the rectification of the register by canceling the registered trade mark ZIFOL-12 under No. 536744 standing in the name of the respondent.
3. In the counter statement filed by the respondent, the respondent has denied the averments and allegations contained in the petition filed for rectification of the respondent's registered trade mark. The respondent has submitted that its registered trade mark is neither phonetically nor visually similar to the trade mark of the petitioner. The respondent explained that in the year 1990 it achieved technical breakthrough after years of research and perfected the pellet in pellet technology. It has produced a preparation consisting of zinc ferrous sulphate, folic acid and vitamin B-12. Thus, taking the letters Z, I and FOL from the words zinc, iron and folic acids respectively and the numeral 12 from vitamin B-12 a unique mark ZIFOL-12 has been evolved. It has been honestly conceived and it is according to the standard branding practices of coining a new word. Thus, the coined word ZIFOL-12 was deemed distinctive by the Registrar's office to make its registration. The petitioner also made unsuccessful attempts by filing C.S. No. 1581 of 1991 alleging infringement of the petitioner's mark FEFOL. The respondent submitted that the trade mark ZIFOL-12 was registered after publication in the Trade Mark Journal as admitted by the petitioner itself. The petitioner did not exercise its option of filing an opposition thereto. The composition of two preparations are different. There are numerous other marks ending with 'FOL' like ROKFOL, TYFOL etc. Thus, there cannot be any monopoly for the suffix 'FOX'. The learned counsel for the respondent expressed his resentment for the deliberate attempt of the petitioner to spell the respondent's mark as 'ZEFOL' or 'ZEFOL-12' in the petition filed by the petitioner.
4. The matter was taken up for arguments on 21.07.04 and learned counsel Ms. Gladys Daniel appeared for the applicant and learned counsel Mr. N.S. Sivam appeared for the respondent.
5. Learned counsel for the petitioner at the outset took us to the phonetics and spellings of the respective marks and submitted that the respondent's mark is similar to the mark of the petitioner excepting for the addition of 'Z' at the outset for the element zinc. She submitted that the petitioner's application is with a view to challenge the respondent's mark under Sections 11(a), 11(e) and 12(1) of the Trade and Merchandise Marks Act, 1958. She referred to pages 1 and 2 of the type set of the petitioner describing the registration of the trade mark FEFOL as from 10.12.69. She drew our attention to the Cease and Desist notice given by the petitioner to the respondent placed at page 5 of the type set. She took us to the descriptive literature of medicine covered under the mark FEFOL placed at pages 19, 20, 23, 28 of the type set. She drew our attention to the C.S. No. 1581 of 1981 filed by the petitioner in the High Court of Judicature at Madras against the respondent. She brought to our notice the Trade Mark Journal dated 11.9.90 where notice about the registration of mark ZIFOL-12 under application No. 536744 was published. She drew our notice to the typeset of papers filed by the respondent in matter of literature placed at paged 1,3 and 5 about the mark ZIFOL-12. Her observations were that zinc as an element has no role to play. The certificate of registration No. 536744 effective from 11.9.90 was issued on 30.11.95. She drew our attention to the literature placed at pages 11 and 13 of the type set of the respondent in relation to the products covered under the mark FEFOL and ZIFOL-12 respectively. Her observations were that both the products are of same weight and composition etc. Her observations about the search under Rule 24(1) of the Trade and Merchandise Marks Rules, 1959, for which the necessary papers are placed at page No. 15 onwards of the type set of the respondent were that examiner's report does contain the trade mark FEFOL at page 27 of the type set. Learned counsel for the applicant drew our attention to some cases of the Supreme Court and various High Court in support of her claim for rectification of the register. She drew our attention to Corn Products Refining Co. v. Shangrila Food Products Ltd., AIR 1960 SC 142, para 15 wherein the Hon'le Supreme Court observed that series of marks containing common elements or elements therefor only assist the applicant when these marks are in extensive use in the market. Hon'ble Supreme Court further said in that matter that it is possible that the mark has been registered but not used. It is not permissible to draw any inference as to their user from the presence of the marks on the register. Learned counsel drew our attention to the extensive use and sale figures of the mark of the petitioner which run into crores in contra-distinction to the sale of the product of the respondent for which no worthy evidence has been adduced. She drew our attention to para 3 of the Bombay High Court judgment in Ciba Ltd. v. M. Kama) in gam, AIR 1958 Bom 56 wherein Chief Justice Chagla observed as under:-
"Now in considering both Section 46 and Section 10 it has got to be remembered that the primary duty of the Court is towards the public and maintenance of the purity of the register. When a case is sought to be made out that a particular trade mark is likely to deceive or cause confusion, the contest is not so much between the parties to the litigation as it is a contest between the party defending his right to a particular trade mark and the public, and the duty of the Court must always be to protect the public irrespective of what hardship or inconvenience it may cause to a particular party whose trade mark is likely to deceive or cause confusion. The object of maintaining a trade mark register is that the public should know whose goods they are buying and with whom particular goods are associated. It is therefore essential that the register should not contain trade marks which are identical or which so closely resemble each other that an unwary purchaser may be likely to be deceived by thinking that he is buying the goods of a particular person or a particular firm or a particular industry, whereas he is buying the goods of another person or firm or industry." In Medley Laboratories (P) Ltd. v. Alkem Laboratories Ltd., 2002 (25) PTC 592 (Bom) it was held that the mark SUPAXIN for pharmaceutical preparations is visually, phonetically and structurally very close to the mark SPOXIN. In Torrent Pharmaceuticals Ltd. v. The Wellcome Foundation Ltd., 2002 (24) PTC 580 (Guj), the Gujarat High Court held that the mark 'TROVIREX' in class 5 relating to medicinal and pharmaceutical preparations is having a higher degree of resemblance visually and phonetically to the mark 'ZOVIREX'. In Anglo French Drugs and Industries v. Eisen Pharmaceutical Co. Pvt. Ltd., 1998 PTC (18), Bombay High Court held that the mark LEEPLEX is deceptively similar to ZEEPLEX. The fact that the colours are different, the price is slightly higher and the defendant's packaging is displayed in bold letters shall not make any difference. In a case involving an application for interim injunction, the Bombay High Court in American Home Products Corporation v. Lupin Laboratories Limited, 1996 IPLR 61 held that the mark ROLAC for pharmaceuticals of therapeutic value is of deceptive and confusion similarity to the mark TOROLEC for analgesic. The learned counsel drew our attention to F. Hoffimann-La Roche and Co. Ltd. v. Geoffrey Manners and Co. P. Ltd., AIR 1970 SC 2062 wherein the mark DROPOVIT and PROTOVIT were held not to be deceptively similar. In the end, it shall be worth to refer to the judgment of the Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceutical Ltd., AIR 2001 SC 1952 wherein the Supreme Court has after surveying the relevant cases more particularly relating to drugs and pharmaceutical has laid down certain important factors to be taken into consideration for dealing of passing off matters on the basis of unregistered trade marks for deciding the question of deceptive similarities.
6. In the instant case, the marks to be contrasted is 'ZIFOL-12 vis-a-vis TEFOL'. Phonetically "ZI" makes much of difference to "FE" both in English and vernacular pronunciation. "Z" as a consonant bears phonetically a wide contrast to "F". Further, vowels "I" and "E" added to consonants "Z" and "F" respectively give quite distinguishing phonetic impression. Number "12" is not an insignificant addition to "ZIFOL". It contributes sufficiently to raise the mark to a distinctive level. However, the marks are not without a common feature, that is, "FOL" which of course it has been argued to be found in many other trade marks relating to drugs. Much of the Judgments referred earlier relate to the passing off disputes. In Cadila case, the Supreme Court had at hand a passing off matter and thus the philosophical under current of passing off issues runs through the whole spectrum of the judgment in so much so that the concluding paragraph in specifying the factors to be considered relate those guidelines to passing off matters only. Here we are having in hand a matter where the society at large including the petitioner had an opportunity to oppose the registration when it was taken up for consideration. We do not intend to demean the efficacy of rectification as an instrument of maintaining the purity of the register. Still there has to be somewhere some difference in assessing matters relating to fresh registrations, passing off issues and rectification matters. There has to be difference of emphasis in application of norms of contrasting the features of the mark. We hold that the mark 'ZIFOL-12' meets the requirements of Sections 11(a), 11(e) and 12(1) of the Act.
7. In view of the above, we dismiss the application with no order as to costs.