IPAB rules in Wockhardt's favour in trade mark dispute

Board orders cancellation of a mark by Kamaron Labs after Wockhardt claimed the property is deceptively similar to its trademark Zedex

The Intellectual Property Appellate Board (IPAB) has directed  bvthe Registrar of Trademarks to cancel a trademark registered by Gujarat-based Kamaron Laboratories Ltd, on a rectification application filed by Wockhardt Pvt Ltd, claiming the mark was deceptively similar to their trademark Zedex.

Wockhardt, which has a cough syrup brand named 'Zedex', has filed a rectification application with the IPAB for removal of the trademark 'Zecodex' registered under Class 5 -- a classification for pharmaceutical products -- by Kamaron Laboratories.

IPAB vice-chairman S Usha and technical member (trademarks) V Ravi said, "The respondents (Kamaron Laboratories) have not denied the statement of non-user nor have they produced any evidence to prove their use of the trademark. The mark ought to be cancelled on this ground alone."

"The respondents have not given any details about the obtaining of drug licence for manufacturing the drugs nor have they produced the drug licence issued by the authorities concerned. A licence from authorities concerned is necessary for manufacturing drugs and it ought to have been obtained.  For this reason, the trademark deserves to be cancelled," it added.

"In view of the above reasons, the application for rectification is allowed with a direction to the registrar to cancel trademark 'Zecodex' registered under No. 713669 in Class 5," ordered IPAB.

The board also observed that Kamaron Laboratories ought to have conducted a search in the Trademarks Registry before applying for registration and the registrar should have also carried out a search and issued a report as similar marks were already on the register.The well-settled principles of law is that as regards medicinal and pharmaceutical goods, the officer concerned has to be more cautious while granting a registration.

The Apex Court has held that in case of medicinal products, the confusion and deception will not only be a monetary loss but also a great hazard to ones life, it added.

Wockhardt said, it adopted the name 'Zedex' in the year 1983 and the drug licence was obtained on November 12, 1982. It has also registered trademarks Zedex, Zedex T, Bro-Zedex and Zedex P in the later years. It said, it came to know about the trademark 'Zecodex' in February, 2011. It argued that Kamaron Laboratories has never used the trademark Zecodex for the goods for which they were applied and obtained.

Kamaron Laboratories argued that it applied for registration in August, 1996 and obtained registraton as there was no opposition by any party and it has not found any mark pending for registration when it made a search in the trademark registry.

Besides, it added that Wockhardt did not oppose the trademark when the same was advertised in the Trade Marks Journal and it is not an aggrieved person and cannot now file an application for rectification. It also said that the company had been using the trademark since 1988 and has filed the application for registration in the year 1996.

The IPAB observed: "In our considered view, no steps were taken for opposition does not bar a person from filing an application for rectification. The application for registration has been filed in the 1996 and the mark was granted registration in 2004. The application for rectification was filed in 2011 after the requisite period of five years. Therefore the delay since 1996 does not hold good."