Okasa Pharma Pvt. Ltd. vs Win-Medicare Limited

S. Usha, J

Application for removal of the trade mark 'AZIMAX' registered under No. 627519 in class 5, from the Register of Trade Marks under the

provisions of the Trade Marks Act, 1999. (hereinafter referred to as the Act).

The applicant is a company incorporated under the provisions of the Indian Companies Act, 1956. The applicant is a well known pharmaceutical

manufacturer committed to reduce health care costs by manufacturing world class products with competitive pricing. The applicant is a research-

intensive pharmaceutical company and currently manufactures and distributes more than 800 pharmaceutical products in core therapeutic categories

including medicinal aerosols and devices, oncology products, antiretrovirals, cardiovascular drugs, anti-infectives, anti fungals, anti allergics,

dermatologicals, drugs for pain management and psychotherapeutics. It has designed superior quality control labs to ensure that products meet the

highest standards.

The manufacturing activities of the applicant are carried out in ultra-modern GM-conforming plants by trained and experienced staff using modern,

fully-validated production equipment. The plants are equipped to manufacture drugs of various therapeutic categories in almost any form with large

production capacities. The applicant has well equipped laboratories which ensure full quality control testing and process monitoring in accordance with

product and customer requirements. In fact the applicant's world class facilities are approved by various statutory authorities located world over

including USFDA,MHRA UK, TGA Australia, MCC South Africa, PIC Germany, NIP Hungary, ANVISA Brazil, INVIMA Colombia, MOH

Malawi/Namibia/Zambia.

The applicant over the years has steadily expanded its world wide presence and the products of the applicant are in huge demand in a lot of

countries. The applicant is desirous of manufacturing pharmaceutical preparations containing the pharmaceutical combination of 'Azithromycin' and

'Zithromax' for which the applicant proposed to adopt the mark 'AZIMAX' honestly and bonafidely coined from the first three alphabets of the

chemical compounds AZITHROMYCIN and ZITHROMAX as is the practice in the pharmaceutical trade.

Prior to adoption of the trade mark AZIMAX the applicant conducted a search in the Trade Marks Registry and came to know that the trade mark

'AZIMAX' was registered under No. 627519 in class 5 which was a proposed to be used mark as on the date of application in the name of the

Respondent. The application for registration has been made in the year 1994 and registered in the year 2002. The registration is violative of the

provisions of Section 9 of the Act.

On enquiry, the applicant came to know that the Respondent had never obtained any manufacturing licence which is the mandatory requirement for

manufacture of pharmaceutical products. The mark though registered has not has not been used by the Respondent from the date of its registration or

atleast for the statutory period prescribed under law prior to the filing of the present application. On this ground alone, the impugned trade mark

'AZIMAX' is liable to be taken off the record as per the provisions of Sub-Section 2 of Section 47 of the Act. There has been no bonafide use of the

trade mark upto three months before the date of the present application and is liable to be removed under Sub-Section 1 of Section 47 of the Act.

The applicant is a person aggrieved as they are in similar trade as that of the Respondent as also they are desirous of using the trade mark

'AZIMAX' bonafidely coined by them and that the presence of the impugned trade mark in the register is interfering with their legitimate right to use

the trade mark.

The grounds of rectification are as under:

(a) The registration has been obtained fraudulently by making false statements;

(b) the claim of proprietorship by the Respondent is false;

(c) the impugned trade mark has been registered without sufficient cause and is wrongly remaining on the register;

(d) the said registration offends the provisions of Section 9, 18(1), 47 and 57 of the Act.

The applicant therefore prayed that the application for removal / cancellation be allowed and the mark be removed from the register of trade marks.

The Respondent filed their counter-statement to the application for rectification. The Respondent company was incorporated in the year 1981.

they coined the trade mark 'AZIMAX' in the year 1994 and applied for registration of the trade mark. They had been working on the viability of

manufacturing / marketing / sale of the product under the trade mark AZIMAX.

The Respondent has been very cautious in maintaining the distinctiveness of the trade mark and had been opposing registration of similar / identical

trade marks. The applicants have filed this rectification application with ulterior motive. They are not dealing with branded products. The applicant's

claim of being aggrieved is contrary. The applicants on the one hand alleges that the trade mark is not distinctive and on the other hand state that they

are desirous of adopting the identical trade mark.

The applicant is not a person aggrieved under Sections 47 and 57 of the Act and as such the present application ought to be dismissed.

The averments made in the application for rectification are wrong, contradictory and concocted to mislead the present proceedings. They are

made without any justification or documented evidence. The adoption -a proposed one is absolutely illogical, baseless and wrong. The averment that

the trade mark is devoid of distinctive character and prohibited under Section 9 of the Act is baseless. The trade mark is distinctive and does not

exclusively indicate the kind quality and characteristics of the goods to which it is applied.

It is an established practice in the pharmaceutical trade that the majority of the marks are coined from part of the ingredient drug, therapeutic use,

dosage form, trade name, etc. The marks in general are registered which contain part of the word from the name of the basic drug contained in the

product.

The trade mark AZIMAX was registered and has been renewed till date. The Respondent had obtained drug licence in the year 1996, but

surrendered the drug licence as the manufacturing was postponed. The Respondent plans to procure fresh drug licence for manufacturing the product

under the said trade mark in near future. The Respondent has been working on the viability of manufacturing the product. The introduction of the

product has been discussed in various meetings of the company.

The averment that the Respondent had no bonafide intention to use the mark or that there has been no bonafide use of the said trade mark is

denied. The applicant is required to justify as to what prompted the applicant for the selection of an identical mark which is a registered trade mark of

the Respondent. The application for rectification has been filed with malafide intention to avoid any legal action and is merely to gain time. The

application therefore be dismissed.

We have heard Shri Ajay Sahni learned Counsel for the applicant and Shri D.K. Lalwani learned Counsel for the Respondent in the Circuit Bench

Sitting at Delhi on 27.10.2010.

The applicant had filed a miscellaneous petition No. 36/10 along with the main application for staying the effect of the registered trade mark under

No. 627519 in class 5 till the disposal of the rectification application. The matter was listed for hearing the miscellaneous petition but as the pleadings

were complete, both the parties requested for main matter to be heard and disposed of. Therefore, the main matter was heard

Learned Counsel for the applicant contended that the trade mark application was made on 9.5.1994 and the certificate for registration was issued

on 31.10.2002. The marks when applied for in the year 1994 was only proposed to be used and not used till date and on this ground alone the trade

mark ought to be removed from the register. The Respondent's own admission that they have obtained drug licence and surrendered the same as they

had not manufactured the product. The counsel finally relied on the Judgments reported in 2010 (43) PTC 185 (IPAB) Thayar Food Products v. M.

Sundaram and 2005 (30) PTC 353 (Del ) Fedders Lloyd Corporation Ltd. and Anr. v. Fedders Corporation.

Learned Counsel for the Respondent contended that the application for registration was made in the year 1994. the drug licence was obtained in

the year 1996 and the same was surrendered as they had not manufactured the product. The counsel relied on the judgment reported in 2003 (27)

PTC 241 (SC). The Respondent has initiated necessary action against various registrants as well as persons filing applications of similar trade marks.

The rectification application has been filed with malafide intentions. The applicants have not filed any documents in support of their case.

The counsel for the applicant in rejoinder submitted that the impugned trade mark ought to be removed on the ground of Respondent's admission of

not using the trade mark.

We have heard both the counsel and have considered the same and have gone through the documents carefully.

In an application for revocation / rectification, the main issue to be considered is to see if the applicant for rectification is a person aggrieved to file

and maintain an application. Aggrieved person is a person who really is affected by the wrong entry on the register of trade marks. The term

aggrieved person has been defined by the Supreme Court in Hardie Trading Ltd. and Anr. v. Addison Paint & chemicals Ltd. 2003(27)PTC 241(SC)

But if the ground for rectification is merely based on non-user i.e. under Section 46 of the Act, that is not really on account of any public mischief by

way of an incorrect entry. The non-user does not by itself render the entry incorrect but it gives a right to a person whose interest is affect to apply

for its removal. An applicant must therefore show that ""in some possible way he may be damaged or injured if the trade mark is allowed to stand; and

by ""possible' it is meant possible in a practical sense, and not merely in a fantastic view......... All cases of this kind, where the original registration is

not illegal or improper, ought to be considered as questions of common sense, to a certain extent , at any rate; and the applicants ought to show

something approaching a sufficient or proper reason for applying to have the trade mark expunged. It certainly is not sufficient reason that they are at

loggerheads with the Respondents or desire in someway to injure them.

In view of the above observation, we are of the view that the applicant is a person aggrieved as per the provisions of Section 47 of the Act and the

applicants have the locus standi to file and maintain an application for rectification. That apart, the applicant and the Respondent are in the same field

of business. The application is based on the ground of non-user. The application for registration was made in the year 1994 as proposed to be used and

registered in the year 2002 and the applicant's contention is that the mark has not been put to use. The mark is, therefore, wrongfully remaining on the

register and thereby the applicant is affected by the entry and is a person aggrieved.

We shall now consider the issue of non-user. The Apex Court has held in American Products Case 1986 (1) SCC 465 that, ""a person who intends

to manufacture and market the goods is entitled to have the mark registered as a proposed to be used mark."" It has also been held that the process for

manufacturing and marketing will be after a certain period. In such circumstances the intention of the party is only to be considered.

Based on the observations, we will have to see if the Respondent had the intention to use the trade mark on the goods. The Respondent had filed

their inter office communication dated 14.11.2006, 03.01.2007 and 22.3.2007 wherein even in the last communication dated 22.3.2007 it is mentioned

only as proposed to launch. This again raises a doubt in our minds as to whether their intention is bonafide or to restrain others from adopting or using

the trade mark. It is also an admitted statement in the counter statement by the Respondent that the drug licence was obtained and surrendered and

the Respondents plan to procure fresh drug licence in near future. It is worth mentioning the fact that the Respondent had applied for registration of

the trade mark 'AZIMAX' in the year 1994 as a proposed to be used mark and obtained the registration in the year 2002. As seen from the inter

office communication dated 22.3.2007 it is only in the stage of proposal for launching i.e. after a period of nearly four years from the date of

registration 31.10.2002.

On perusal of the facts and on admissions made by the Respondent, we are of the opinion that the impugned trade mark cannot be allowed to

continue on the register which really affects or injures the other manufacturers in adopting or using the similar or identical trade mark. The

Respondent though has obtained registration as early as 2002 has not used the mark for nearly eight years.

In view of the above mentioned reasons, the application for rectification is allowed. Consequently the impugned trade mark 'AZIMAX' registered

under No. 627519 in class 5 stands removed with a direction to the Registrar of Trade Marks to remove the entry from the Register of Trade Marks.

As the main application has been allowed M.P. No. 36/10 for stay becomes infructuous. There shall be no order as to costs.