Who Is An Aggrieved Person? The Intellectual Property Appellate Board Answers

Author:Ms Sonam Lhamu Bhutia
Profession:LEX ORBIS

In the case of Okasa Pharma Pvt. Ltd v Win- Medicare Limited, the issues before the Intellectual Property Appellate Board (IPAB) were two-fold. The first being the question of who is an aggrieved person? And secondly, the issue of non-user.

This case involved an application filed by Okasa Pharma (Applicant) for the removal of the trademark "AZIMAX" from the Register of Trademarks under the provisions of the Trademarks Act, 1999.

The applicant is a research-intensive pharmaceutical company incorporated under the provisions of the Indian Companies Act, 1956 and is well known name in the pharmaceutical industry. It was the desire of the applicant company to manufacture pharmaceutical preparations containing the pharmaceutical combination of Azithromycin and Zithromax and adopt the mark "AZIMAX" honestly and bonafidely coined by combining the first three alphabets of the two chemical compounds, as is the common practice in pharmaceutical trade. However, upon a trademark search conducted by the applicant, it was found that the aforementioned mark was already registered as a proposed to be used mark in the name of Win- Medicare Limited (Respondent).

The applicant prayed that the impugned mark should be removed from the register as per the provisions of sub-section 2 of Section 47 of the Act, on the grounds that Win- Medicare had never obtained any manufacturing licence as is the requirement in manufacture of pharmaceutical products. Further, although the mark was registered in the respondent's name, it had not been used by them from the date of its registration or atleast for the statutory period prescribed under law prior to the filing of the present application.

The applicant substantiated its claim of being the 'aggrieved person' stating that they had bonafidely coined the term "AZIMAX" and also that they were in the same trade as the respondent, as such the presence of the impugned trademark in the register was interfering with their legitimate right to use the mark. The grounds stated by the applicant for rectification were:-

The registration was obtained fraudulently by making false statements. The claim of proprietorship by the Respondent was false. The impugned mark was registered without sufficient cause and is thus existing wrongly in the register. The registration offends the provisions of Section 9, 18(1), 47 and 57 of the Act. The defendant in their counter statement stated that they were incorporated in 1981, and had coined the impugned mark in...

To continue reading