Cadila Laboratories Limited vs Burroughs Wellcome India Ltd. And Anr.

Raghbir Singh, J

Appeal No. 5 of 1995 filed in the High Court of Gujarat at Ahmedabad has been transferred to this Board in terms of Section 100 of Trade Marks

Act, 1999 and has been numbered as TA. No. 254/2004.

Appellant M/s Cadila Laboratories Ltd., Ahmedabad filed an application for registration of trade mark 'CYCLOVIR' in Part A of the Register of

Trade Marks vide Application No. 483818 on 5.1.88 in respect of pharmaceutical and medicinal preparations included in class 5. The applicant

claimed user of the mark applied for as proposed to be used. In due course of time the application was advertised in the Trade Mark Journal No. 1026

dated 1.3.92 at page 1479. M/s Burroughs Wellcome India Limited, Bombay the first respondent herein filed an opposition to oppose the registration of

the mark applied for on the ground of its violation of Sections 9, 13 and 18(1) of the Trade and Merchandise Marks Act, 1958 (hereinafter referred to

as the Act). Respondent submitted that 'CYCLOVIR' is confusingly similar to the word 'ACYCLOVIR' which is an international non- proprietary

name in respect of a particular pharmaceutical substance. Respondent further submitted that the word 'CYCLOVIR' is phonetically and visually as

good as 'ACYCLOVIR' on which there cannot be any monopoly right of a single proprietor. Hence the mark applied for is not registrable being totally

a non-distinctive trade mark. Respondent further submitted that the mark applied for is close to the chemical name of a drug and its registration is

itself prohibited under Section 13 of the Act. Respondent also submitted that the applicants cannot claim to be proprietor of the mark applied for and it

is similar to a generic name. Hence it violates the provisions of Section 18(1) of the Act. Appellant contradicted all the submissions made by the

respondent. Appellant further contended that it is the general practice in the pharmaceutical trade that the trade marks are derived from the generic

names.

Learned Assistant Registrar heard the parties and held that the impugned mark does not meet the requirements of Section 9 of the Act, 1958. It is

not distinctive of the goods, that is, not adapted to distinguish the goods of its proprietor from that of the goods of the other proprietors during the

course of the trade. The word 'ACYCLOVIR' is a non- proprietary name for the pharmaceutical substance which as per its chemical nomenclature is

9-(-2-hydroxyethoxymethye) guanine having its chemical emperial formula C8H11N5O3, as per the list of international non-proprietary names for

pharmaceutical substances published by the World Health Organisation. Assistant Registrar put his reliance upon certain judgements including one

from the Federal Supreme Court of Germany (1980 IPLR 64) and a few more from RPC and the Indian Journals and held that the mark is violative of

provisions of Section 9 of the Act being phonetically as well as visually equivalent of the word 'ACYCLOVIR' which is a generic name of a

pharmaceutical substance. The learned Assistant Registrar held that the registration also does not qualify for the benefit of Section 18(1) of the Act.

Since the mark is not a distinctive trade mark, there cannot be any ground justifying the claim in favour of the applicant to be the proprietor of the

mark applied for. Thus, under Section 18(1) of the Act he held against the appellant. Section 13(1) of the Act prohibits registration of a trade mark

which is the name of a chemical compound or chemical element. Assistant Registrar held that since 'CYCLOVIR' in itself is not the name of a

chemical, the mark applied for is not violative of the provision of Section 13 of the Act. In conclusion, he ordered for refusal of the registration.

The appeal came up for hearing on 28.7.2004 before the Board at Ahmedabad. Learned counsel Shri R.R. Shah appeared for the appellant and

learned counsel Shri Girish N. Shah appeared for the respondent.

Learned counsel for the appellant argued that the mark is not objectionable under Sections 9, 13 and 18(1) of the Act as held by the Assistant

Registrar. He submitted that many marks on the Register derive their names from the generic names of the pharmaceuticals. He stated the example

of 'Ampicilin' having been registered as 'Campicilin' He cited the Dropovit case (F. Hoffimann La Roche and Co. Ltd. v. Geoffrey Manners and Co.

Ltd., 1982 PTC 335) in support of his claim. Learned counsel for the respondent vehemently opposed the contention of the learned counsel for the

appellant. 'CYCLOVIR' and 'ACYCLOVIR' are phonetically, visually and textually similar to each other with only variation of a single word and that

too occurs as a prefix of 'ACYCLOVIR'. The important feature of the variation is that the single letter dropped from the non- proprietary name of a

medicine, that is, 'ACYCLOVIR' with a view to coin the new word CYCLOVIR too is a prefix and a vowel. It is well recognised fact that vowels

make a variable sound according to the context where those are used and always are phonetically softer in pronunciation. 'A' out of all the vowels is

most likely to be confused and is likely to be slurred while pronouncing a word. In view of this, the appellant has no claim for the distinctiveness of the

impugned mark with a view to qualify for the same under Section 9 of the Act, the mark being phonetically, visually and textually similar to the non-

proprietary name of a medicine. Hon'ble Supreme Court's warning in the Cadila case reported in MANU/SC/0199/2001 : AIR 2001 SC 1952, to have

a stricter scrutiny of the marks for drugs and pharmaceuticals further puts dampness upon easy claim for distinctiveness in this area. In view of this,

we feel that the Assistant Registrar was correct in his assessment that the mark does not qualify for distinctiveness under Section 9 of the Act. Since

the mark to begin with itself has no distinctive character, the applicant does not get any proprietary rights thereupon under Section 18(1) of the Act.

Since the mark fails the test of eligibility under Sections 9 and 18(1) of the Act, passing the scrutiny under Section 13(1) of the Act in no way helps it

for registration. Under the circumstances, we uphold the order of the Assistant Registrar and dismiss the appeal with no order as to costs.