India: Casing Out The Deceptive Similarity: The USV-Cadila Litigation

Last Updated: 23 October 2008

The well known dicta of trademarks, deceptive similarity and the akin, have been recounted time and again, to resolve various disputes that appear forth the courts. The Intellectual Property Appellate Board answering an appeal [USV Ltd. v. Cadila Pharmaceuticals 2008(37) PTC 637 (IPAB)] filed under S. 92 of the Trade Marks Act, 1999 dealing with the procedure and powers of the Appellate Board, dealt with the trademark PIOZULIN and an application for its removal filed in the name of Cadila Pharmaceuticals Ltd. Averring of its reputation and recognition in the market, they stated that an honest adoption of the mark PIOZ was made in the year 2000 in respect of medicinal and pharma products. They averred that the mark with constant usage had become a recognizable trade mark owing to the long, open, extensive and continuous use, and had become inalienably recognizable in the course of trade with them.

Speaking of the previous applications made by Cadila, they stated that registration had been obtained on a proposed to use basis, and that USV in its initiative to be vigilant about its mark, filed a suit for passing off, just as it had taken action against several other deceptively similar marks. They prayed that in view of S. 57 (Power to cancel or vary registration and to rectify the register) read with S.9 (Absolute grounds for Refusal), S. 11(Relative Grounds for refusal) and S. 18 (Application for Registration) of the Trade Marks Act 1999, the Appellate Board ought to cancel the trademark. To these averments counter statements and affidavits were filed. Further, the counsel for USV averred that if the impugned mark is not expunged from the register, the same would restrain their legal rights as alongside damaging its reputation and goodwill. On the distinctiveness having been, they stated that the same did not hold good, since on the date of application, no consumer existed. The counsel for USV stated the mark to cause deception and that the Registrar without sufficient cause had wrongly allowed the same. Further, stating to be a prior adopter, user as well as applicant of the mark PIOZ, USV contraverted the plea of Cadila, as to PIO being common to the trade as being without any basis. They stated that in the lack of any evidence of being an extensive prior user and having acquired reputation vide its use in the market.

Both parties citing a plethora of judgments in favour of their arguments and the court lending due consideration to the dicta laid in these, the Court found the marks under question to be closely resembling and structurally similar. Looking at the composition of the words, the Court opined that to a common man, the similarity was likely to deceive or cause confusion. The goods covered being of similar nature and for similar ailments (although USV' mark was for veterinary preparations), the Court stated that unpleasant, if not harmful results may follow from the wrongful usage of medications, owing to the confusion that may occur.

On the question of non-disclosure of pending registration and obtaining of registration by Cadila vide concealment of relevant facts, the Registrar was ordered to expunge the mark from the Register, as also allowed the rectification application moved in the pursuance.

© Lex Orbis 2008

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