Decision set aside in case involving family of VOL marks

India
In the 12-year trademark dispute between Glaxo Group Limited and Voltas Limited, the Delhi High Court has reversed an order of the Intellectual Property Appellate Board (IPAB).
 
Glaxo is a multinational drug company. Voltas, which belongs to the Tata group, owns the registered trademark VOLTAS in India. Glaxo filed an application for the registration of VOLMAX, which it proposed to use with respect to pharmaceuticals and veterinary preparations, and substances for the alleviation and prevention of respiratory ailments and disorders in Class 5 of the Nice Classification.
 
Voltas requested that the assistant registrar of trademarks restrain Glaxo from registering its VOLMAX mark in India. On February 4 1998 the assistant registrar ruled in favour of Voltas. Glaxo appealed to the IPAB, a specialized tribunal set up exclusively for IP cases. 

On March 15 2006 the IPAB upheld the assistant registrar’s order and rejected Glaxo’s application for the registration of VOLMAX. Relying on the judgment of the Supreme Court in Cadila Healthcare Limited v Cadila Pharmaceuticals Limited, the IPAB concluded that the VOLMAX mark was phonetically, visually and structurally similar to the earlier mark VOLTAS. Therefore, the registration of VOLMAX would cause confusion not only in the trade, but also in the mind of the consumer.
 
Glaxo appealed to the Delhi High Court. Before the court, Voltas argued that:
  • it had been using a series of marks beginning with 'vol', such as VOLFRUIT, VOLFARM, VOLPUMP, VOLDRILL, VOLITA, VOLTRION, VOLDRUM, VOLLAM, VOLRAM, VOLBIT, VOLSEAFOOD, VOLFAN and VOLPHOR;  
  • there would be confusion among consumers as to the origin of the goods if a trademark beginning with the prefix 'vol' was registered by Glaxo; and
  • it held a registration for VOLTAS for goods in Class 5, including pharmaceutical substances and preparations, and biological food products (for infants and veterinary).
In response, Glaxo argued that:
  • based on an overall assessment of VOLMAX and VOLTAS, there was no similarity between the marks;
  • due to the differences between the marks, there was no likelihood of confusion or deception among consumers;
  • the goods in respect of which the two marks were used were totally different;
  • Voltas could not claim a monopoly over the prefix ‘vol’;
  • it held a registration for VOLMAX in several other countries; and
  • various other firms had adopted marks beginning with the prefix 'vol' (eg, Ranbaxy with VOLINI, VOLITRA and VOLIX, and Novartis with VOLTAFLAM).
After hearing the submissions of the parties, the Delhi High Court held as follows:
  • With respect to the concept of series or family of marks, the IPAB had failed to apply the test set out in previous case law, under which the issue was whether there were similarities between the marks and the goods which would combine to create a likelihood of confusion if the earlier mark and the mark applied for were used concurrently in relation to the goods for which they were registered or proposed to be registered.
  • The IPAB had not carried out a proper comparison of the marks, either as a whole or on the basis that VOLTAS belonged to a family of marks, in which case the two marks would have to be split to determine which is the generic portion and which is the distinctive portion.
  • Voltas used its VOLTAS mark for bulk drugs, whereas Glaxo proposed to use the VOLMAX mark for a medicine for respiratory ailments.
  • The IPAB had failed to take into account the evidence before it and to address the relevant legal issues. Therefore, the court was justified under Article 226 of the Constitution in interfering with IPAB’s order.
The court thus set aside the order and directed that the IPAB consider the matter afresh on the merits, preferably within a period of six months.

Prerak Hora, Nishith Desai Associates - Legal & Tax Counselling Worldwide, Mumbai

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