In the case of Okasa Pharma Pvt. Ltd v Win- Medicare Limited, the issues before the Intellectual Property Appellate Board (IPAB) were two-fold. The first being the question of who is an aggrieved person? And secondly, the issue of non-user.
This case involved an application filed by Okasa Pharma (Applicant) for the removal of the trademark "AZIMAX" from the Register of Trademarks under the provisions of the Trademarks Act, 1999.
The applicant is a research-intensive pharmaceutical company incorporated under the provisions of the Indian Companies Act, 1956 and is well known name in the pharmaceutical industry. It was the desire of the applicant company to manufacture pharmaceutical preparations containing the pharmaceutical combination of Azithromycin and Zithromax and adopt the mark "AZIMAX" honestly and bonafidely coined by combining the first three alphabets of the two chemical compounds, as is the common practice in pharmaceutical trade. However, upon a trademark search conducted by the applicant, it was found that the aforementioned mark was already registered as a proposed to be used mark in the name of Win- Medicare Limited (Respondent).
The applicant prayed that the impugned mark should be removed from the register as per the provisions of sub-section 2 of Section 47 of the Act, on the grounds that Win- Medicare had never obtained any manufacturing licence as is the requirement in manufacture of pharmaceutical products. Further, although the mark was registered in the respondent's name, it had not been used by them from the date of its registration or atleast for the statutory period prescribed under law prior to the filing of the present application.
The applicant substantiated its claim of being the 'aggrieved person' stating that they had bonafidely coined the term "AZIMAX" and also that they were in the same trade as the respondent, as such the presence of the impugned trademark in the register was interfering with their legitimate right to use the mark. The grounds stated by the applicant for rectification were:-
- The registration was obtained fraudulently by making false statements.
- The claim of proprietorship by the Respondent was false.
- The impugned mark was registered without sufficient cause and is thus existing wrongly in the register.
- The registration offends the provisions of Section 9, 18(1), 47 and 57 of the Act.
The defendant in their counter statement stated that they were incorporated in 1981, and had coined the impugned mark in 1994 and had been working on the viability of manufacturing and marketing of the product under the trademark 'AZIMOX'. They stated that the applicant was not the person aggrieved as per sections 47 and 57 of the Act and as such the application of the applicant ought to be dismissed. The contention of the applicant that the mark lacked distinctiveness was refuted by the respondent stating that they had taken proper measures to maintain the marks distinctiveness, further the mark does not exclusively indicate the kind, quality and characteristics to which it is applied. They admitted that the drug licence was obtained in 1996 but due to postponement of manufacturing they had surrendered it, however, it was their intention to procure a fresh drug licence in the near future.
After close consideration, the Board started by stating that in an application for revocation, the main issue to be examined is to see if the applicant for rectification is a person aggrieved to file and maintain such application. The board said that an 'aggrieved person' is a person who is really affected by the wrong entry on the register of trademarks. The Board relied on the case of Hardie Trading Ltd & Anr. v Addison Paint & Chemical Ltd, wherein it was held that in order to be aggrieved a person must show that in some possible way he may be damaged or injured if the trademark was allowed to stay in the register, 'possible' means possible in some practical sense and not in a fantastic view. Based on the above, the Board opined that in the present case the applicant was the aggrieved person and they therefore had the locus standi to file and maintain the application.
With regard to the second issue of "non user", the Board relied on the Supreme Court's decision in American Products Case, where it was held 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". Further, the process of manufacturing and marketing will be after a certain period. In such cases, the intention of the party is to be considered. The Board observed that the respondents had applied for registration of the impugned mark in 1994 as a proposed to be used mark and obtained the registration in 2002, however, as per an inter office communication dated 22.3. 2007, it was still in the stage of proposal for launching. In view of these facts the Board opined that the intention of the respondents were doubtful.
With these above mentioned observations, the Board held that the impugned mark should not be allowed to continue on the register as it affects other manufacturers from adopting or using similar or identical marks.
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