A.K. SIKRI (ACTING CHIEF JUSTICE)

1. The appellant herein got registration of trademark FORZID under No.1144258 dated 18.10.2002 in Class – 5 questioning this registration in favour of the appellant, the respondent herein filed application for removal of the aforesaid trademark FORZID or rectification of register under Sections 9, 11, 18, 57 and 125 of the Trademarks Act, 1999 (hereinafter referred to as “the Act”). To put it in brief, the removal was sought on the ground that the said trademark FORZID was deceptively similar to an earlier registered trademark, viz., ORZID (label mark), standing registered in the name of the respondent No.1 in Class – 5. The plea of the respondent herein was accepted by the Intellectual Property Appellate Board (“IPAB”for brevity) vide decision dated 14.10.2008. The IPAB allowed the rectification application with direction to the Registrar of the Trademarks to remove the trademark FORZID belonging to the appellant from the register. The appellant field Writ Petition challenging the said order of the IPAB which has been dismissed by the learned Single Judge vide orders dated 04.7.2011 thereby affirming the order of the IPAB. The appellant filed the instant intra-Court appeal questioning the validity of the said order of the learned Single Judge.

2. When this appeal came up for hearing on 30.8.2011, counsel for the appellant had inter alia urged that the respondent has filed the rectification application without leave being obtained under Section 124(1)(B)(ii) of the Trademarks Act, 1999 from the Madras High Court and therefore, rectification application before the IPAB was not maintainable. It was noted by the Division Bench that this plea urged by the appellant had not been dealt with by the learned Single Judge. It was not known as to whether the same was even pressed or not, liberty was granted to the appellant to move an application before the learned Single Judge in this behalf. The application was accordingly moved before the learned Single Judge. This application has also been dismissed vide orders dated 09.9.2011. Thereafter, leave was given to include challenge to this order as well. It is in this backdrop we are called upon the deal with the orders dated 04.7.2011 passed in the writ petition and orders dated 09.9.2011 passed in the Miscellaneous Application. Arguments were heard on these aspect, which are submitted vide written submissions of the parties as well.

3. In the application for rectification filed by the respondent before the IPAB, it was claimed that the respondent was the manufacturer and marketer of various pharmaceutical products under a large number of trademarks. The company which had a modest Rs.12 Crores of infrastructure in 1994-95 has grown at a remarkable pace to achieve a capital base of Rs.800 Crores; has achieved a turnover of US$163 million and a world leadership in the pharmaceutical bulk actives in a short period of time. The respondent also claims to have two modern state of art manufacturing plants and a one of its kind R & D centre. It was awarded the prestigious ISO 9001:2000, ISO 14001 and OHSAS 18001 certificates for its world class quality management, environmental management and occupational health and safety management system. It was also claimed by the respondent that it is the pioneer in establishing “zero discharge”facilities in the Indian pharmaceutical industry. In the year 1999, it adopted the trademark ORZID which is used with respect to the appellant’s pharmaceutical preparations having active ingredient CEFTAZIDINE and the said mark became popular among the medical fraternity. On 06.9.1999, the appellant filed application No.874808 for registration of trade mark ORZID with respect to medical and pharmaceutical preparations. This application was advertised in the Trade Marks Journal No.1291 (S) dated 13.3.2003 and got registration of the mark unopposed. The appellant commenced use of the trademark upon goods with effect from M