GLAXO GROUP LTD Vs. UNION OF INDIA

JUDGEMENT

(1.) This petition by Glaxo Group Limited (Glaxo) challenges the order dated 15th March 2006, passed by the Intellectual Property Appellate Board (IPAB), Circuit Bench sitting at Delhi, dismissing the Petitioner's appeal (TA/224/2004/TM/DEL).

(2.) Glaxo filed an application for registration of the trademark VOLMAX in Class 5 of Schedule-I of the Trade & Merchandise Marks Act, 1958 ('TM Act 1958') stating that the mark was proposed to be used in respect of "pharmaceuticals and veterinary preparations and substances. for the alleviation and prevention of respiratory ailments and disorders. Respondent No. 4 Voltas Limited (Voltas) filed an objection contending that it was using a series of names, namely, VOLTAS, VOLFRUIT, VOLFARM, VOLPUMP, VOLDRILL, VOLITA, VOLTRION, VOLDRUM, VOLLAM, VOLRAM, VOLBIT, VOLSEAFOOD, VOLFAN AND VOLPHOR. In particular it held a registration for the mark 'VOLTAS. in Class 5 which included pharmaceutical substances and preparations, biological food products (for infants and veterinary). The Assistant Registrar of Trademarks, Delhi by an order dated 4th February 1998 upheld the objection of Voltas and rejected the Glaxo's application for registration of the trademark 'VOLMAX'.

(3.) Affidavits by way of evidence were filed both by Glaxo and Voltas before the Assistant Registrar. It was contended before the Assistant Registrar by Glaxo that if the mark 'VOLMAX. was compared as a whole, with the mark 'VOLTAS', there was no similarity much less deceptive similarity. It was submitted that Voltas could not claim monopoly over the prefix 'VOL'. Further, Glaxo held a registration for the trademark 'VOLMAX' in several other countries in the world. On the other hand, Voltas contended that the registration of the mark 'VOLMAX' was prohibited in terms of Section 12(1) of the TM Act, 1958 and that while considering deceptive similarity the fact that the Voltas was the registered proprietor and user of a series of trademarks with the prefix 'VOL' had to be considered. Voltas contended that there would be confusion among the consumers as to the origin of the goods if a trademark with the prefix 'VOL' was permitted to be registered in favour of Glaxo. A consumer with imperfect recall would think that the goods originate from the house of 'Voltas' or are connected with.