Intellectual property appellate board
INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
WEDNESDAY, THIS THE 31ST DAY OF JULY, 2013
Hon'ble Smt. Justice Prabha Sridevan
Hon'ble Ms. S. Usha
M/s. HAB Pharmaceuticals & Research Limited,
Dewan & Shah Industrial Complex No.1
Unit No.18, Sativali Road,
Waliv Phata, Vasai (East)
Thane – 401 208.
(Represented by Shri. S.K. Bansal and Shri Saurabh Kapoor)
VEE EXCEL DRUGS &
Pharmaceuticals Pvt. Ltd.,
G-16 Preet Vihar, Vikas Marg,
Delhi – 110 092.
(Represented by Shri. S.K. Bansal and Shri Saurabh Kapoor)
M/s. HAB Pharmaceuticals & Research Limited, Dewan & Shah Industrial Complex No.1 Unit No.18, Sativali Road, Waliv Phata, Vasai (East) Thane – 401 208.
ORDER (No.169 of 2013)
Hon’ble Ms. S. Usha, Vice-Chairman:
The original rectification application is filed for removal of the trade
mark VEGA ASIA registered under No.1079405 in Class 5.
The applicants conceived and adopted the trade mark
VEGA/VEGAH, VEGA 50, VEGA 100 in respect of pharmaceuticals and
medicinal preparations in or about the 2001 and used the same since
then. The applicants are the registered proprietors of the trade mark
VEGAH Tablets under No.1098288 in Class 5. The applicants are the
proprietors of the trade marks VEGA 50, VEGAH TABETS, SUPER
VEGA, VEGA, VEGA 100 (L), VEGA, VIGA, VEEGA, VIGORA, VIGORA.
The artistic labels VEGA 50 and VEGA 100 are registered under
Nos.A-73948/05 and A-71710/05 respectively.
The registered trade mark VEGA ASIA is similar to the applicants
trade mark VEGA, VEGA 50, VEGA 100 and VEGAH. The impugned
registration has been registered fraudulently as the applicants are
registered proprietors of the trade mark VEGAH. On account of long and
continuous use, the applicants goods bearing the trade mark VEGA has
come to be associated with the applicants only, among the public. The
impugned trade mark was not inherently adopted to distinguish nor
capable of being distinguished on the date of application for registration as
it was proposed to be used and therefore contrary to the provisions of
Section 9 of the Act. The respondents have no reason for the adoption of
The registration is in contravention of the provisions of the Act. The
registration was made without sufficient cause and the mark is wrongly
remaining on the register. The trade mark is therefore liable to be
The respondents filed their counter statement denying the various
averments and allegations made in the application for rectification. The
respondent, a pharmaceutical company manufacturing tablets, capsules,
dry syrups etc. is an internationally reputed company exporting and selling
the medicine under the trade mark VEGA ASIA to various countries in the
The trade mark VEGA ASIA was bonafidely conceived and adopted
by the respondent in the year 2002. The drug under the trade mark VEGA
ASIA has become widely used for treatment of Erectile Dysfunction. The
annual sales turnover in the year 2002-03 was Rs.39,82,759 and it
increased to Rs.1,25,65,498 in the year 2004-05. They have spent a
substantial amount of money on the publicity of the trade mark.
The respondent had disclosed all the material facts to the Registrar
and obtained the registration, therefore the validity cannot be challenged.
The applicant is not the bonafide user of the trade mark. The respondent
is the prior user of the trade mark. The applicant is not the proprietor of
the trade mark VEGA. The rest of the contentions were denied.
Application to remove/rectify/expunge the trade mark VEGAH TABLETS
The applicant is engaged in the business of manufacturing and marketing
of pharmaceuticals and medicinal preparations ie. tablets, capsules etc. The
applicant carries on business in India and abroad. They have introduced huge
range of allopathic and non-allopathic medicines for the treatment of various
In the year, 2000, the applicant adopted and started using the expression
VEGA and VEGA formative trade marks. Over a period of time, the applicant
has been using the mark VEGA ASIA and Device of Rocket in a stylized and
artistic manner. In the year 2002, the applicant adopted the trade mark Vega,
VEGA 100 and VEGA ASIA. In 2002, the applicant adopted and started using
the trade mark VEGA 100 and VEGA ASIA. In 2003, the applicant adopted and
started using the trade mark VEGA ASIA alongwith the Device Rocket. The
mark VEGA, VEGA ASIA, VEGA 100 and Device of Rocket forms the essential
key material and distinguishing feature of the applicant’s trade mark label.
The applicant is the registered proprietor of the artistic labels under the
Copyright Act. The applicant has been continuously, extensively using the trade
mark in the course of their business. The applicant holds a valid and subsisting
license for manufacturing and selling its products.
The trade mark VEGA ASIA is a fanciful and a coined word having no
descriptive meaning. The applicants applied for and obtained registration of the
trade mark VEGA ASIA under application No.1079405 in Class 5.
The respondent has obtained registration of the trade mark VEGAH
TABLETS having full knowledge of the applicants use only with a view to trade
upon the tremendous goodwill and reputation of the said trade mark.
The applicant coming to know of the respondent’s registration impugned
herein had written a letter to the Drugs and Cosmetics Authority. Later had
issued a legal notice to the respondent.
(ORA/59/2005/TM/MUM). On 2008, the respondent filed a civil suit before the
Hon’ble High Court of Mumbai against Saviour Biotech Pvt. Ltd. one of the
licensee of the applicant and obtained an interim order. The applicant filed a suit
against the respondent and obtained an interim order which subsequently came
to be vacated. The applicant preferred an appeal against the order of vacation.
The appeal was withdrawn on the ground that they were moving for amending
The impugned registration is contrary to law. The registration has been
obtained by fraud and concealment of material facts. The impugned registration
The respondent filed the counter statement. In the counter statement, the
respondent had stated that the respondent is one of the leading producers of
medicinal and pharmaceutical preparations and substances in India. The
respondents range of medicinal and pharmaceuticals preparations especially in
the male erectile dysfunction products is one of the widest in the country.
The respondent conceived and adopted the trade mark VEGA in the year
2000 and obtained permission to export the Sildenafil Citrate Tablets under the
trade mark VEGA on 17/08/2001. The first batch was manufactured in October
2001. The goods bearing the trade mark VEGA and VEGAH are being used by
the respondent continuously and extensively. The respondents have registered
their artistic labels under the Copyright Act.
The artistic label was designed by one Mr. Kishor B. Mathkar on behalf of
Mr. Sanjiv Garg, Director of the respondent company. Mr. Sanjiv Garg initially
licenced to the respondent and thereafter assigned all rights in the artistic work to
The respondent is the registered proprietor of the trade mark VEGAH
under No.1098288 in class 5. Aurochem Pharmaceuticals (I) Private Limited is
the owner of the mark VEGA under No.732414 in class 5. The respondent is the
exclusive licensee to use the mark VEGA by virtue of deed of cross licensing
dated 07/11/2007 with Aurochem Pharmaceuticals (I) Private Limited.
The respondent is the honest concurrent user of the trade mark VEGA
and VEGAH since the year 2001 and 2002 respectively.
By virtue of continuous, extensive and long use the trade mark VEGA and
VEGAH have become distinctive with the applicants products and are exclusively
associated with the respondent also and with none else. The respondent had
sold tablets under the trade mark to the tune of Rs.700 lakhs in the year 2007-08.
The respondent filed a civil suit against one “Saviour Biotech Private
Limited” for infringement of trade mark. They also filed an application to take
possession of the infringed goods. The director of Saviour Biotech Private
Limited informed the respondents that they were manufacturing the goods under
the license from the applicant herein. The applicants are therefore impleaded in
The rest of the averments and allegations were denied.
We heard Ms. Pratibha M. Singh, learned counsel for the applicant and
Shri S.K. Bansal, learned counsel for the respondent in ORA/59/2005/TM/DEL
and Shri S.K. Bansal, learned counsel for the applicant and Ms. Pratibha M.
Singh, learned counsel for the respondent in ORA/155/2009/TM/MUM during the
Circuit Bench Sitting at Delhi held on 19/12/2012. Both these matters were cross
rectification applications. As the issues and the parties were one and the same
in both the matters, common arguments were advanced.
The counsel for HAB Ms. Prathiba Singh submitted that the impugned
trade mark under No.1079405 in class 5 was applied for registration on
08/02/2002 as proposed to be used and obtained registration on 31/03/2005.
HAB applied for registration on 24/04/2002 and obtained registration on
19/12/2003. They had claimed user since 01/04/2002, M/s. Vee Excel issued a
cease and desist notice as early as 07/02/2005 where there was no mention of
their use. In fact, HAB has been using since 2001 whereas Vee Excel has
applied for registration in the year 2002 as proposing to use the said mark.
Vee Excel have not given the date of adoption or use. In the counter
statement at para 2 and 3 to the application for rectification they have stated to
be adopted the trade mark in the year 2002 which is subsequent to the HAB use.
HAB in their application have claimed user since 2001.
From the documents filed by Vee Excel along with the counter statement,
it is seen that the bill is dated 04/10/2002 and not earlier. That apart the drug
license has been issued only on 14/08/2002. In Ex.D of the documents filed
along with reply to counter statement by the applicant the invoice is dated
23/10/2001 which proves use of the trade mark since 2001.
When the mark was applied for registration in the year 2002 by Vee Excel
as proposed to be used then the user claimed since 2000 is false statement.
The counsel in this context referred to the judgment reported in MIPR
2012(1)184 and submitted that the mark ought to be cancelled for wrong date of
In reply learned counsel for Vee Excel Mr. Bansal replied that the marks
are VEGA and VEGA ASIA. The issue would be to see as to who is the prior
user of the trade mark. Though HAB claim to have been using since 2001 there
is no proof of the same. In the invoices relied on by HAB no signature is seen
and therefore they are of no evidentiary value.
Vee Excel had granted license to one Ma Gayathri with an agreement
that Magayathri will have no right in the trade mark. The licensor had filed an
application for registration of the trade mark VEGA which was opposed by HAB
HAB claim user since 2001 for the trade mark VEGAH but have not
produced any document in proof of the same.
The following judgments were relied on :
ILR (1976) 1 Delhi – 278
– L.D. Malhotra Industries Vs. M/s. Ropi
- Registration under the statute does not confer any new right
to the mark claimed or any greater rights than what already existed at
common law and at equity without registration. It merely affords protection under the statute.
2009 (41) PTC 362 (Del)
(DB) – Pioneer Nuts and Bolts Pvt. Ltd. Vs.
– Advertisement in newspaper does not constitute
proof of use of the trade mark.
2009 (39) PTC 358 (Del) (DB)
– Pfizer Enterprises Sarl Vs. Cipla Ltd.
Even in the absence of an admission facts can be proved by means of
In rejoinder, the counsel for HAB submitted that the trade mark VEGAH
was 1st published in 2001 which is seen in the copyright registration certificate
filed on 27/02/2006. Copyright application is a prior documents and it is not
The trade mark, copyright and the civil suit are all prior to HAB. The
judgment relied on by Vee Excel were distinguished and it was submitted that
they were not relevant to this case on hand.
We have heard both the counsel and have gone through the pleadings
We shall first deal with the trade mark VEGA ASIA registered under
No.1079405 in class 5 by Vee Excel. The application has been filed on
08/02/2002 as proposing to use the mark. The respondents have obtained drug
license on 12/09/2002. So the goods ie. the drugs could have been sold after
12/09/2002 only. The bills produced of the year 2000 therefore shall not be
considered for deciding the issue of use as the goods could have been sold only
The other trade mark is VEGAH TABLETS under No.1098288 in class 5
by HAB Pharmaceuticals & Research Limited. The application has been filed on
24/04/2002 claiming user since 01/04/2002. HAB has been using the trade mark
VEGA, VEGA 50 etc. since 2001 whereas this mark namely VEGAH TABLET is
The issue as to whether HAB and Vee Excel are aggrieved and have the
locus standi to file the rectification application has to be decided. The applicants
and the respondents ie. HAB and Vee Excel have filed cross suits against each
other based on the impugned registration granted. The impugned trade marks
are VEGA ASIA and VEGAH TABLET. Both HAB and Vee Excel are aggrieved
and therefore have the locus standi
to file the rectification application.
HAB’s main argument was that they are prior user of the trade mark. On
perusal of the documents it is seen that the trade mark VEGA is alone used and
not VEGAH the impugned trade mark. There is no dispute as regards the date of
user as of the year 2001 by the HAB for the trade mark VEGA. In respect of this
HAB is prior in use. But here, we are concerned with the trade mark VEGAH
TABLETS impugned herein for which there is no user proved.
For this reasons, we are of the view that the trade mark VEGAH TABLET
The trade mark VEGA ASIA as on the date of application ie. on
08/02/2002 was proposed to be used. The first invoice is of the date 04/10/2002.
The drug license is dated 12/09/2002. The registered proprietor could have
manufactured and sold only after the drug license was granted.
The Vee Excel have admitted user since the year 2002 whereas HAB has
been using it since 2001. It’s also an admitted case of Vee Excel that the marks
are deceptively similar and is likely to cause confusion and deception. In such a
case the prior user has the better right. The mark which is in subsequent use
Accordingly, ORA/59/2005 and ORA/155/2009 are allowed with a
direction to the Registrar to remove the trade marks from the register.
(Justice Prabha Sridevan)
REPORTABLE : YES / NO
(Disclaimer: This order is being published for present information and should not be taken as a
certified copy issued by the Board.)
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