• Dr. Mohan Dewan

The Intellectual Property Appellate Board on 31st July, 2013 passed an order which is the first of its kind. Both the parties succeeded and failed at the same time. Surprised? In cross petitions between HAB Pharmaceuticals & Research Limited (HAB) and VEE EXCEL DRUGS & Pharmaceuticals Pvt. Ltd (Vee Excel), the IPAB passed orders for removal of both the impugned registered marks VEGAH & VEGA ASIA from the Register of Trademarks, albeit for different reasons.

This dispute started when two apparently deceptively similar/confusing marks namely VEGAH and VEGA ASIA were granted registration in the same class i.e. class 5 for similar products. In the year 2005, HAB filed a rectification application for removal of the trademark VEGA ASIA and thereafter in the year 2009, Vee Excel filed an application to expunge the trademark VEGAH TABLETS registered in the name of HAB. The proprietors of the marks claimed bonafide adoption of their respective marks. The IPAB in relation to the mark “VEGAH TABLET” commented that its proprietor failed to produce any documentary evidence to corroborate the prior use of the said trademark since 2001 as claimed in the trademark application. The IPAB held “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 HAB for the trademark VEGA. However, here, we are concerned with the trademark VEGAH TABLETS impugned herein for which there is no user proved. For this reason, we are of the view that the trademark VEGAH TABLET shall not continue on the Register.”

The IPAB in relation to the mark “VEGA ASIA” opined that it is deceptively similar to the mark VEGA that has prior adoption and use. The IPAB stated that the mark VEGA ASIA & VEGA owing to their similarity may cause confusion and deception in the minds of public and held “The trade mark VEGA ASIA as on the date of application i.e. on 08/02/2002 was proposed to be used. The drug license is dated 12/09/2002. The registered proprietor could have manufactured and sold the product only after the drug license was granted that is after 12/09/2002. Vee Excel have admitted user since the year 2002 whereas HAB has been using the mark VEGA since 2001. It’s also an admitted case of Vee Excel that both 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, shall not remain on the register.”

1. The correct date of user is to be provided to the Trademark Registry at the time of applying for the registration of a trademark;

2. In case of confusion as to the date of use, the proprietor must rely upon the documentary evidence available with him;

3. Use of a similar mark does not amount to use of the mark applied for and hence evidence corroborating the use of the impugned mark must be provided by the proprietor.


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