The main legal point established in the judgment is the application of the anti-dissection rule and the Cadila Health Care test to determine deceptive similarity of trade marks for pharmaceutical products.

S. Muralidhar, J.

1. The challenge in this petition by United Biotech Pvt. Ltd. ("UBPL?) is to an order dated 14th October 2008 passed by the Intellectual Property Appellate Board ("IPAB?) allowing an application filed by Respondent No. 1 Orchid Chemicals and Pharmaceuticals Ltd. ("OCPL?) seeking removal of the trade mark FORZID registered under No. 1144258 as of 18th October 2002 in Class 5 from the Register of Trade Marks.

Background facts

2. The Petitioner UBPL states that it is, inter alia, engaged in the manufacturing and selling of pharmaceutical preparations including injections bearing the trade mark FORZID. UBPL claims that since 2002 it took steps to launch CEFTAZIDIME injections in the market under the trade mark FORZID. It entered into a licence agreement with M/s. Oscar Remedies Pvt. Ltd. ("ORPL?), Haryana for manufacturing FORZID injections. UBPL made an application for registration of the said trade mark under No. 1144258 dated 18th October 2002 in Class 5. The said mark was advertised in Journal Mega dated 25th November 2003. The registration was granted unopposed. The sales figures of UBPL's products under the trade mark FORZID for the years 2002-03 till 2006-07 have been set out in the writ petition.

3. According to UBPL the mark FORZID is adopted from the words "FOR? and "ZID?, the latter being derived from the generic drug ceftaZI Dime. UBPL claims that there are several manufacturers of CEFTAZIDIME injections using trade marks with the suffix "ZID? which is stated to be common to trade. UBPL states that FORZID is an invented word coined by it. The mark is unique and identifies exclusively with the products manufactured by UBPL. FORZID injection is a Schedule H drug and can be sold only on the written prescription of a registered medical practitioner.

4. Respondent No. 1 OCPL also manufactures CEFTAZIDIME injections. It does so under the trade mark ORZID. ORPL, the licencee of UBPL, purchases the bulk drug CEFTAZIDIME from OCPL to manufacture FORZID injections for UBPL. It is stated that CEFTAZIDIME sterile powder is the basic bulk drug for manufacture of UBPL's FORZID injection and OCPL's ORZID injection. UBPL claims that OCPL was aware, at least from 2003, that UBPL was marketing CEFTAZIDIME injections using the trade mark FORZID. UBPL further states that its FORZID product and OCPL's ORZID product were listed on the same page of the annual pharmaceutical book "Drug Today" continuously in 2005, 2006 and 2007.

5. UBPL claims that the colour scheme, getup and layout of the UBPL's FORZID labels are completely different from those of OCPL's ORZID labels. Further, it is claimed that UBPL's FORZID injections are sold to various hospitals and central government organisations and there is no single instance of actual or potential confusion being reported anywhere.

6. OCPL claims that in the course of its business in 1999 OCPL coined and adopted the unique trade mark ORZID with respect to a pharmaceutical preparation containing the active pharmaceutical ingredient CEFTAZIDIME. OCPL obtained manufacturing licence for the product marketed under the trade mark ORZID on 18th December 1998 and on 8th January 1999 with respect to export sale and domestic sale respectively. OCPL states that it commenced manufacture and sale of CEFTAZIDIME formulation under the trade mark ORZID in May 1999. On 6th September 1999 OCPL applied for and obtained registration of the trade mark ORZID under No. 874808 in Class 5 in respect of medicinal and pharmaceutical preparations claiming use of the mark since May 1999. The application was advertised in the Trade Mark Journal No. 1291 (S) dated 13th March 2003. There was no opposition to this application.

7. OCPL states that when it became aware of the use of the deceptively similar trade mark FORZID by UBPL in the month of September 2007, it filed CS No. 1027 of 2007 in the High Court of Madras to seek a permanent injunction to restrain UBPL from infringing OCPL's registered trade mark ORZI