Case Note & Summary
The dispute concerned pharmaceutical trademarks OFLOMAC and OFRAMAX. Macleods Pharmaceuticals Limited, the petitioner, challenged an order of the Intellectual Property Appellate Board (IPAB) that allowed Sun Pharmaceutical Limited's rectification application and directed removal of the petitioner's registered trademark OFLOMAC from the Register of Trade Marks under Section 57 of the Trade Marks Act, 1999. The writ petition was filed under Articles 226 and 227 of the Constitution of India. Sun Pharmaceutical had applied for registration of OFRAMAX on 30 August 1989, obtained registration on 13 May 1994, and claimed use since July 1991 in Class 5 for pharmaceutical products. Macleods had applied for OFLOMAC on 28 January 1999, obtained registration on 12 December 2005, and claimed use since April 1999 for medicinal and pharmaceutical preparations. Sun Pharmaceutical filed Civil Suit No. 882 of 2000 before the Delhi High Court for infringement and passing off, but no injunction was granted. In that suit, the written statement was filed on 14 January 2008, issues were framed on 29 April 2008, and the infringement issue was deleted by consent on 29 July 2011. Sun Pharmaceutical then filed a rectification application before the IPAB on 29 October 2013, which resulted in the impugned order dated 30 December 2020 cancelling Macleods' registration. The core legal issues centred on the maintainability of the rectification application in view of the pending civil suit and the absence of a plea of invalidity under Section 124 of the Trade Marks Act, 1999; the application of the test of deceptive similarity under Sections 9(2)(a) and 11(1)(b); and the protection of prior user or honest concurrent user under Sections 34 and 12. Macleods argued that OFLOMAC was a combination of Ofloxacin and Macleods, that it had continuous use since April 1999, that Sun Pharmaceutical failed to prove use of OFRAMAX before May 1999, and that Sun Pharmaceutical abandoned the invalidity plea by not raising it under Section 124 in the Delhi suit. Macleods relied on Patel Field Marshal Agencies v. P.M. Diesels Limited to argue that the IPAB's jurisdiction was contingent on the civil court's prima facie tenability finding, and on Neon Laboratories Ltd. v. Medical Technologies Ltd. for first-in-market protection. Sun Pharmaceutical contended that OFRAMAX was a prior registered mark for identical goods in Class 5, that the matter concerned registrability rather than infringement or passing off, and that the IPAB, being an expert tribunal comprising judicial and technical members, should not be lightly interfered with. The provided judgment excerpt includes only the parties' submissions and does not set out the Court's final reasoning and decision. Therefore, the final holding and operative directions are not mentioned.
Headnote
A) Trade Marks Law - Rectification of Register - Section 57 Trade Marks Act, 1999 - Cancellation of registered trade mark on ground of prior registration and deceptive similarity - IPAB allowed Respondent No.4's rectification application ORA/66/2014/TM/MUM and directed deletion of Petitioner's registered trade mark OFLOMAC (Registration No. 838726) from the register for medicinal and pharmaceutical preparations in Class 5 - Petitioner challenged the order under Articles 226 and 227 of the Constitution of India (Paras 1-4).
B) Trade Marks Law - Maintainability of Rectification Application - Sections 124, 47, 57 Trade Marks Act, 1999; Sections 46/56 Trade and Merchandise Act, 1958 - Requirement to raise plea of invalidity in pending suit - Petitioner contended that Respondent No.4 never raised plea of invalidity before Delhi High Court and filed rectification via Section 151 CPC instead of Section 124, and that jurisdiction of IPAB was contingent on civil court's prima facie tenability finding as per Patel Field Marshal Agencies v. P.M. Diesels Limited (Para 6(v)-(vi)).
C) Trade Marks Law - Prior User and Concurrent User - Sections 34, 12, 47 Trade Marks Act, 1999 - Protection of honest and concurrent user and first-in-market principle - Petitioner claimed first use of OFLOMAC since April 1999 and honest concurrent use, and relied on Neon Laboratories Ltd. v. Medical Technologies Ltd. to assert first-in-market protection over first registrant - IPAB allegedly overlooked these aspects (Paras 6(vii), 6(x)).
D) Trade Marks Law - Deceptive Similarity - Sections 9(2)(a), 11(1)(b) Trade Marks Act, 1999 - Likelihood of confusion in pharmaceutical products - Respondent No.4 challenged OFLOMAC registration as deceptively similar to prior registered OFRAMAX for identical Class 5 goods and submitted that the issue was registrability rather than infringement/passing off (Paras 7(i)-(iii)).
E) Constitutional Law - Scope of Writ Jurisdiction - Articles 226, 227 Constitution of India - Review of expert tribunal decisions - Respondent No.4 argued that IPAB comprised judicial and technical members and its expert decision should not be interfered with lightly in writ jurisdiction (Para 7(iv)).
Issue of Consideration
Whether the writ petition under Articles 226 and 227 of the Constitution challenging the IPAB order allowing rectification of OFLOMAC trademark registration is maintainable and meritorious; whether the rectification application before IPAB was maintainable in view of pending civil suit and failure to raise plea of invalidity under Section 124; whether IPAB correctly applied test of deceptive similarity and considered prior user/concurrent user under Sections 9(2)(a), 11(1)(b), 34 and 12
Law Points
- Rectification jurisdiction contingent on civil court prima facie tenability
- Prior user protection under Section 34
- Honest concurrent user protection under Section 12
- First-in-market protection over first registrant
- Deceptive similarity test for pharmaceutical trademarks
- Expert tribunal decisions deserve deference
Case Details
2023 LawText (BOM) (01) 188
Writ Petition No. 1517 of 2022
S.V. Gangapurwala, Madhav J. Jamdar
Alankar Kirpekar, Archana Sahadeva, Rajas Panandikar, Shekhar Bhagat for Petitioner; Rajesh G. Singh, Carina Xavier for Respondents 1 and 3; Virag Tulzapurkar, Hiren Kamod, Anees Patel, Aishwarya Ambardekar for Respondent 4
Macleods Pharmaceuticals Limited
Union of India, Deputy Registrar of Intellectual Property Appellate Board, Registrar of Trade Marks, Sun Pharmaceutical Ltd
Subscribe to unlock Case Details (Citation, Judge, Date & more)
Subscribe Now
Nature of Litigation
Civil writ petition under Articles 226 and 227 of the Constitution of India challenging an order of the Intellectual Property Appellate Board (IPAB) that allowed a rectification application and directed removal of a registered trademark from the Register.
Remedy Sought
Petitioner sought to quash and set aside the IPAB order dated 30 December 2020 and to protect its registered trademark OFLOMAC (Registration No. 838726) from deletion under Section 57 of the Trade Marks Act, 1999.
Filing Reason
Petitioner was aggrieved by the IPAB order allowing Respondent No.4's rectification application and directing deletion of Petitioner's OFLOMAC trademark for medicinal and pharmaceutical preparations in Class 5.
Previous Decisions
IPAB order dated 30 December 2020 in ORA/66/2014/TM/MUM and MP No. 193/2015 allowed the rectification application of Respondent No.4 and directed deletion of Petitioner's trademark OFLOMAC. Delhi High Court Civil Suit No. 882 of 2000 filed by Respondent No.4 for infringement and passing off was pending with no injunction; infringement issue was deleted by consent on 29 July 2011.
Issues
Whether the rectification application filed by Respondent No.4 before IPAB was maintainable in view of the pending Delhi High Court civil suit and failure to raise plea of invalidity under Section 124 of the Trade Marks Act, 1999.
Whether IPAB correctly allowed rectification on grounds of deceptive similarity under Sections 9(2)(a) and 11(1)(b) despite Petitioner's claim of prior user or honest concurrent user under Sections 34 and 12.
Whether the IPAB order warrants interference under Articles 226 and 227 of the Constitution of India.
Submissions/Arguments
Petitioner adopted OFLOMAC as combination of OFLOXACIN and MACLEODS, with date of application 28 January 1999, registration 12 December 2005 and first use 28 April 1999; continuous use and drug license obtained.
Respondent No.4 failed to produce documents proving use of OFRAMAX prior to May 1999; invoices and statements produced only from 2003.
In pending Delhi High Court suit, no injunction was granted; Respondent No.4 never raised plea of invalidity and infringement issue was deleted by consent on 29 July 2011.
Rectification application before IPAB was not maintainable as it was not filed under Section 124(1)(b)(ii) of Trade Marks Act 1999 but under Section 151 CPC, circumventing abandonment of invalidity plea.
Right to raise plea of invalidity accrued on 29 April 2008 and if filed in 2013 under Section 124 would be barred by Article 137 of Limitation Act; no such application was filed.
Petitioner's actual use of OFLOMAC was prior or at least concurrent; entitled to protection under Sections 34 and/or 12 of Trade Marks Act, 1999.
No confusion or deception among trade, public and medical practitioners as marks coexisted for over 20 years; OFLOMAC used for tablets while OFRAMAX for specialised injections.
First in the market should be protected over first registrant in view of Sections 34 and 47; reliance on Neon Laboratories Ltd. v. Medical Technologies Ltd., (2016) 2 SCC 672.
Respondent No.4 challenged OFLOMAC registration on grounds under Section 9(2)(a) and Section 11(1)(b) alleging deceptive similarity with prior registered OFRAMAX for same Class 5 goods.
Respondent No.4 argued this is not a case of infringement or passing off but of registrability of a subsequent mark when prior registered mark exists.
IPAB judgment was based on sound application of deceptive similarity test; no illegality warranting writ interference; relied on Khalil Ahmed Bashir Ahmed v. Tufelhussein Samasbhai Sarangpurwala and Ciba Ltd. v. M. Ramalingam.
IPAB consisted of judicial member and technical members, an expert tribunal; its decision should not be interfered with lightly.
Judgment Excerpts
By the impugned order, the IPAB has allowed the Rectification Application filed by Respondent No.4- Sun Pharmaceuticals Ltd. and directed to delete the entry of registered Trade Mark Registration No. 838726 of OFLOMAC for medicinal and pharmaceutical preparations falling in class-5 in the name of the Petitioner from the Register under the provisions of Section 57 of the Trade Marks Act, 1999
The Petitioner adopted the mark "OFLOMAC" which is combination of its medicine name " OFLO XACIN" and the company name " MAC LEODS".
Relying on the decision of the Supreme Court in the case of Patel Field Marshal Agencies and Another Vs . P.M. Diesels Limited and Others, it is the contention of Mr. Kirpekar that in a situation where a suit is pending (whether instituted before or after filing of the rectification application) the exercise of jurisdiction by the prescribed statutory authority is contingent on a finding of the civil court as regards the prima facie tenability of the plea of invalidity.
Procedural History
Respondent No.4 applied for registration of OFRAMAX on 30 August 1989; registration was granted on 13 May 1994; Respondent No.4 claimed use since July 1991. Petitioner filed trademark application for OFLOMAC on 28 January 1999; registration was granted on 12 December 2005; Petitioner claimed use since April 1999. Respondent No.4 filed Civil Suit No. 882 of 2000 before Delhi High Court for infringement and passing off in May 2000. Petitioner filed written statement on 14 January 2008; issues were framed on 29 April 2008; infringement issue was deleted by consent on 29 July 2011. Respondent No.4 filed Rectification Application ORA/66/2014/TM/MUM and MP No. 193/2015 before IPAB on 29 October 2013. IPAB passed impugned order on 30 December 2020 allowing rectification and directing deletion of Petitioner's OFLOMAC mark. Petitioner filed present writ petition challenging said order.
Acts & Sections
- Constitution of India: Articles 226, 227
- Companies Act, 1956:
- Trade Marks Act, 1999: Sections 57, 30(2)(e), 124, 124(1)(b)(ii), 34, 12, 47, 9(2)(a), 11(1)(b)
- Trade and Merchandise Act, 1958: Sections 46, 56
- Code of Civil Procedure, 1908: Section 151
- Limitation Act: Article 137
- Trade Marks Rules, 2002: Class 5, Fourth Schedule
